April 3, 2012

Judge Andrews Issues Claim Construction for Patent Directed to Dynamic Logic Circuit Technology, Rejects Argument That Disputed Claim Terms Are Indefinite

In AVM Technologies, LLC v. Intel Corporation, C.A. No. 10-610-RGA, Judge Andrews recently issued a claim construction opinion construing claim terms for U.S. Patent No. 5,859,547 (“the ‘574 Patent”), which is a patent that claims “an improved dynamic logic circuit ‘that has increased speed and reduced power.’” Id. at 2 (citation omitted). In the opinion, the Court construed the following terms:

“coupled to”
“coupled between”
“couplable to”
“coupling”
“anti-float circuit”
“precharge node”
“dynamic logic circuit”
“dynamic logic block” or “logic block”
“evaluation transistor”
“precharge transistor”
“a delay”
“for simultaneous activating”
“during a major portion of the evaluation phase”
“during a major portion of an evaluation clock phase”
“during a minor portion of the evaluation clock phase”

In both its claim construction briefing and at the Markman hearing, defendant argued that: (a) the “during a major portion of the evaluation phase” language of claim 1 of the patent-in-suit and (b) the “during a major portion of an evaluation clock phase” and “during a minor portion of the evaluation clock phase” language of claim 21 of the patent-in-suit were “not amenable to construction” and thus, “indefinite and . . . invalid under 35 U.S.C. § 112, ¶ 2." Id. at 13. The Court, however, rejected these arguments. Citing to the Federal Circuit’s decisions in Praxair v. ATMI, Inc., 543 F.3d 1306, 1319 (Fed. Cir. 2008) and Honeywell Int’l Inc. v Int’l Trade Comm’n, 341 F.3d 1332, 1338-39 (Fed. Cir. 2003), respectively, for the propositions that “the standard of indefiniteness is high” and that “a claim is indefinite only if the ‘claim is insolubly ambiguous, and no narrowing construction can properly be adopted,’” the Court held that these disputed terms were not indefinite and construed each of them. Id. at 13-15. This opinion is interesting because it provides some insight as to how the Court may handle indefiniteness arguments and other indefiniteness-related issues raised during claim construction.

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April 3, 2012

Judge Robinson Denies Motion to Dismiss Willfulness, Direct and Indirect Infringement Claims, Concludes That the Claims As Pled Satisfied the Pleading Standard of Form 18

In Netgear, Inc. v. Ruckus Wireless, Inc., C.A. No. 10-999-SLR, Judge Robinson denied defendant’s Rule 12(b)(6) motion to dismiss plaintiff’s claims of direct infringement, induced and contributory infringement, and willful infringement. Id. at 1. Plaintiff filed an amended complaint in this action against defendant for infringement of four patents-in-suit relating to wireless communication technology. Id. In the amended complaint, plaintiff alleged that defendant “induces and/or contributes to infringement by third parties, and willfully infringes the patents-in-suit.” Id. at 2. Defendant moved to dismiss these allegations for failure to state a claim. Id. at 1-2. Defendant argued that the amended complaint should be dismissed because it: “(1) lacks basic factual support; (2) fails to comply with Form 18; (3) fails to state a claim for indirect infringement; and (4) fails to sufficiently allege willful infringement.” Id. at 2. The Court, however, disagreed. Regarding the claims for direct infringement, the Court concluded that plaintiff’s amended complaint asserts a cause of action for direct infringement “in a manner sufficient for defendant to formulate a response and defense” and that it “provides sufficient factual support and mimics Form 18.” Id. at 7. In its analysis, the Court noted that because, among other things, the amended complaint mimicked Form 18 and identified, by name, certain of defendant’s products that allegedly infringe the patents-in-suit, it complied with “the level of detail required to satisfy the pleading standard for Form 18.” Id. at 5. Similarly, regarding the sufficiency of plaintiff’s claims for inducement and contributory infringement, the Court held that they too were “facially plausible” and provided “defendant with adequate notice” of plaintiff’s indirect infringement claims. Id. at 10-11. Lastly, regarding the claims for willful infringement, the Court found that plaintiff sufficiently alleged that defendant had “pre-filing knowledge” of at least one of the patents-in-suit and that defendant had “infringed and continues to infringe the patent.” Id. at 11. Moreover, the Court expressly declined “to require more detail with respect to plaintiff’s willful infringement claims than is required by Form 18.” Id. at 11.

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April 3, 2012

Chief Judge Sleet issues findings of fact and conclusions of law invalidating patents

The Court recently issued its findings of facts and conclusions of law following a 7 day bench trial in an ANDA case related to alleged infringement by Watson, Sandoz, and Paddock Laboratories of four patents (the ‘978, ‘359, ‘448, and ‘635 patents) that were listed in the Orange Book in connection with SANCTURA XR®, a once-a-day form of tropsium chloride used to treat overactive bladder. Allergan, Inc., et al. v. Watson Laboratories, Inc.-Florida, et al., C.A. No. 09-511 (GMS) (D. Del. Mar. 31, 2012). The Court directed the Clerk of Court to enter final judgment based on its findings that (1) the asserted claims of the patents-in-suit are invalid due to obviousness; (2) the asserted claims of the patents-in-suit are not invalid due to anticipation; (3) asserted claim 1 of the ‘978 patent and asserted claim 1 of the ‘449 patent are not invalid due to indefiniteness; (4) asserted claim 1 of the ‘359 patent is not invalid for failure to meet the written description requirement; and (5) the defendants’ proposed products infringe the asserted claims of the patents-in-suit assuming, arguendo, they are not invalid.

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April 3, 2012

Special Master White limits plaintiff to 25 asserted claims, reduced from 60 claims

In XPRT Ventures, LLC v. eBay, Inc., et al., C.A. No. 10-595-SLR (D. Del. Mar. 26, 2012), after the completion of discovery and a couple weeks before the deadline for opening claim construction and summary judgment briefs, defendants filed an emergency motion to compel plaintiff to reduce the number of claims asserted in the case from sixty to twenty.  Plaintiff opposed defendants’ motion arguing that, while it can and should reduce the number of claims, defendants’ motion was premature.  Id. at 5. Plaintiff asked that the Court “permit XPRT the time to complete its analysis of the claims and to continue to assert all of the claims that do not contain duplicative issues of infringement or validity.”  Id. at 6.  Special Master White responded with the question, “if not now, then when?  The time has come to present the issues in dispute to the Court in an orderly fashion.”  Id.  Because plaintiff “must know what claims will be pursued before preparing its claim construction brief[,]” Special Master White order plaintiff to disclose no more than 25 asserted claims by noon on the day plaintiff’s opening claim construction brief was due to be filed.  Id.

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April 2, 2012

Judge Andrews Construes Claim Terms in Patent Dispute Involving Semiconductor LED Technology

In Cree, Inc. v. SemiLEDS Corporation, C.A. No. 10-866-RGA, Judge Andrews recently issued a claim construction opinion construing claim terms for five patents-in-suit involving semiconductor light emitting diode (“LED”) technology used for general lighting purposes. In the opinion, the Court construed the following terms:

“dominant wavelength”
“area”
“radiant flux”
“sidewall”
“layer”
“reflector layer”
“ohmic contact layer”
“conductive barrier layer”
“directly on”
“LED structure”
“adjacent to”
“light extraction structures”
“spreader layer”
“non-transparent feature”
“non-ohmic contact”
“wherein the metal contact forms on ohmic contact”
“is aligned with the non-transparent feature”
“in a region other than a reduced conductivity area of the surface of the p-type semiconductor layer”
“photon absorbing wire bond pad”
“contact metal”
“reflective structure”
“substantially congruent”

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March 30, 2012

Judge Stark clarifies pleading standard for willfulness.

In St. Clair Intellectual Property Consultants, Inc. v. Hewlett-Packard Co., C.A. No. 10-425-LPS (D. Del. Mar. 28, 2012), Judge Stark clarified the pleading standard for an allegation of willful infringement. The defendant moved to strike the plaintiff’s willfulness allegations as insufficiently pled, prompting the plaintiff to move to amend its complaint. Id. at 1. The defendant argued that amendment would be futile because the plaintiff’s proposed amended willfulness allegations still failed to allege both the defendant’s “knowledge of the asserted patents and knowledge of the infringement.” Id. at 4. The Court rejected that argument, and clarified that a willfulness allegation is sufficiently pled if it “plead[s] facts giving rise to ‘at least a showing of objective recklessness’ of the infringement risk.” Id. (citing In re Seagate Technology, LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007)). Finding that the proposed amended complaint sufficiently pled willfulness under Seagate, the Court granted the plaintiff’s motion to amend and denied the defendant’s motion to strike as moot. Id. at 6.

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March 29, 2012

Judge Stark denies motion to supplement expert reports, grants summary judgment of non-infringement.

In a recent memorandum opinion, Judge Stark denied a plaintiff’s motion to supplement its expert reports to address new infringement theories, and granted defendants summary judgment of non-infringement. St. Clair Intellectual Property Consultants, Inc. v. Matsushita Elec. Indus. Co., Ltd., et al., C.A. Nos. 04-1436-LPS, 06-404-LPS, 08-371-LPS (D. Del. Mar. 26, 2012). In November 2009, the Court issued a Report and Recommendation construing claims relating to digital camera technology which was consistent with the plaintiff’s proposed construction. The defendants filed objections to the Report and Recommendation, and before a decision was made whether to adopt the Report and Recommendation, the case was stayed pending the resolution of an appeal to the Federal Circuit in a related case where construction of the same claims was to be reviewed de novo. Id. at 4-5.

The Federal Circuit construed the claims consistently with the defendants’ proposals in this case, leading the defendants to move for summary judgment of non-infringement. Id. at 5-6. In response, the plaintiff moved to supplement its expert reports to address why the defendants infringed even under the Federal Circuit's construction. Id. The Court viewed the plaintiff’s motion to supplement as a motion to add infringement contentions far beyond the deadline under the scheduling order. Id. at 8. Accordingly, the Court considered whether the plaintiff should be permitted to add infringement contentions based on the “good cause” standard of Rule 16. Id. at 9.

The Court concluded that the plaintiff could not show good cause, explaining that the plaintiff “made a tactical decision to not assert its infringement theories under Defendants’ proposed claim constructions … despite the fact that … the PTO applied the Defendants’ construction during the reexamination” in the related case, the plaintiff knew that its preferred construction was being appealed to the Federal Circuit in that related case, and claim construction in this case had not been resolved as of the deadline for expert reports or infringement contentions. Id. at 10. The Court explained, in denying the motion to supplement, “[a] strategic mistake does not equate to a showing of good cause under Rule 16.” Id. at 11. The Court next explained that exclusion of the plaintiffs’ expert reports, although an extreme sanction, was appropriate under Rule 37 and Pennypack because “the fact remains that [the plaintiff] violated the Scheduling Orders when it failed to raise all of its infringement contentions at the appropriate time.” Id. at 13. The Court also emphasized the prejudice to the defendants that would result from allowing the plaintiff to assert new infringement contentions at this stage, a prejudice that could not be cured completely, and that allowing supplementation would significantly prolong the litigation. Finally, and perhaps most critically, the Court noted the lack of a valid explanation for the plaintiff’s failure to timely disclose its infringement contentions. Id. at 13-15.

Because the plaintiff included its new infringement contentions in expert declarations filed in response to the defendant's motions for summary judgment, the Court had opportunity to consider them. The Court found that the defendants would have been entitled to summary judgment of non-infringement even under the plaintiff’s new theories, lessening the ultimate severity of the Court's decision. Id. at 23-26.

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March 27, 2012

Motions to Amend Judgment Denied

After a recent bench trial in a Hatch-Waxman infringement suit, the court entered a judgment of infringement with respect to two patents and noninfringement and invalidity with respect to two other patents.  The court then denied cross-motions to amend judgment, finding that the parties had not met the high burden of showing a “manifest error of law or fact.”  Alcon Research Ltd. v. Barr Laboratories Inc., C.A. No. 09-318-LDD (March 16, 2012) at 2.
Looking first at the arguments of Alcon Research, the court rejected the contention that it should not have made findings that neither party’s experts requested.  This position, the court explained, was incorrect because a District Court has discretion to make findings of fact relevant to its decision and it “would not act prudently by merely parroting the position of one expert or another, especially when [it has] concerns about those experts.”  Id. at 3.  The court also refused to amend findings that it found were supported by the facts and rejected arguments that were not advanced at trial, as a motion to amend findings does not allow a party a “second bite at the apple.”  Id. at 4-7.
The court then turned to the arguments of ANDA product manufacturer Barr Laboratories.  Barr argued that, although Alcon had never actively litigated two patents during the course of the trial, Alcon also had not dismissed those patents from its complaint.  The court had denied judgment as a matter of law of noninfringement on these two patents at the close of Alcon’s case because Alcon had never placed them at issue.  Barr argued then and on its motion to amend the judgment that because the patents had never been formally dismissed, it needed a judgment of noninfringement in order to launch its generic.  Despite the “cursory manner” in which the issue was raised at trial, the court reached the merits of the motion and determined that under Tol-O-Matic Inc. v. Proma Produkt-Und Marketing Gesellschaft m.b.H., 945 F.2d 1546 (Fed. Cir. 1991) and 800 Adept, Inc. v. Murex Sec., Ltd., 539 F.3d 1354 (Fed. Cir. 2008), it had been correct to deny Barr’s motion for judgment of noninfringement.  Under these cases, the court found, “a complaint alone cannot support a judgment on claims not actually placed in issue at trial.”  Rather, a counterclaim or declaratory judgment claim is necessary to keep “the involved patent claims ‘at issue’ and give[] the patentee fair notice that he must introduce evidence of infringement at trial or risk an adverse judgment.”  Id. at 13-19.

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March 27, 2012

Judge Andrews’ Claim Construction in ADHD Drug Generic Case

 

Judge Andrews recently issued a claim construction opinion in Shire LLC’s case against Teva Pharmaceuticals regarding a generic form of the pediatric ADHD drug Intuniv.  Shire LLC v. Teva Pharmaceuticals USA Inc., C.A. No. 10-329-RGA (March 22, 2012).  Judge Andrews construed the following terms of the three patents-in-suit:
-    “without inducing excessive sedation”
-    “readministering the dose at an interval required to obtain a desired level and duration of behavioral inhibition”
-    “non-pH dependent sustained release agent”
-    “pH dependent agent that increases the rate of release of said at least one pharmaceutically active agent from the tablet at a pH in excess of 5.5”
-    “enteric agent”
-    “agent that increases the solubility of said at least one pharmaceutically active agent at a pH of greater than 5.5”
-    “agent that maintains an acidic microenvironment in the composition”
-    “reducing the likelihood of side effects associated with the administration of guanfacine”

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March 27, 2012

Judge Stark grants defendants' motions to dismiss in AstraZeneca’s latest litigation over CRESTOR®

In AstraZeneca UK Limited, et al. v. Watson Laboratories, Inc., C.A. No. 10-915-LPS (D. Del. Mar. 13, 2012), Judge Stark recently granted Watson Laboratories, Inc.’s and EGIS Pharmaceuticals  PLC’s motions to dismiss AstraZeneca’s claims of infringement of its ‘618 and ‘152 Patents under Section 271(e)(2).  In a previous suit brought by AstraZeneca against different generic drug manufacturers, the Federal Circuit affirmed the district court’s dismissal of similar claims because the defendants “had not sought FDA approval for the method of use indications covered by the ‘618 and ‘152 patents.”  Id. at 6.  Judge Stark found that Watson had done the same thing here, i.e., “filed a Section 505(b)(2)(B) Statement certifying that it is not seeking FDA approval for the indications covered by the ‘618 and ‘152 patents.”  Id. 

Judge Stark also granted EGIS’s motion to dismiss AstraZeneca’s declaratory judgment claims that EGIS will induce infringement of the patents-in-suit upon FDA approval of Watson’s NDA.  Id. at 10.  Judge Stark found that the there was no substantial controversy of sufficient reality to warrant a declaratory judgment.  Specifically, the “potentially infringing subject,” i.e., Watson’s proposed NDA label, “has not remained substantially fixed over time.”  Id. at 11.  Thus, “Watson’s label . . . does not provide the basis for a justiciable Article III controversy of sufficient ‘reality.’”  Id.

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