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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March 26, 2012

Judge Stark construes claim terms and denies motions for summary judgment in the most recent dispute between between Power Integrations and Fairchild Semiconductor

In Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., et al., C.A. No. 08-309-LPS (D. Del. Mar. 13, 2012), Judge Stark construed the following claim terms of the patents-in-suit:

“a feedback circuit coupled to receive a feedback signal”

“a control circuit coupled to generate a control signal in response to an output of the comparator and in response to an output of the feedback circuit”

“an oscillator for generating a signal having a switching frequency, the oscillator having a control input for varying the switching frequency”

“a controller to generate the switching signal in response to a first feedback signal associated with a voltage control loop and a second feedback signal associated with a current control loop in the primary-side of the transformer”

 

Judge Stark also denied plaintiff’s motion for summary judgment of infringement and defendants’ motions for summary judgment of non-infringement and invalidity because the Court concluded that there were genuine issues of material fact as to each motion.

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March 26, 2012

Court finds "actual controvery" based on discovery in another forum, but transfers to that forum for lack of personal jurisdiction.

In a recent opinion, Chief Judge Simandle of the District of New Jersey, sitting by designation pursuant to 28 U.S.C. § 292(b), held in connection with a motion to dismiss a declaratory judgment action for lack of subject matter jurisdiction that discovery requests in a case between the parties in another forum created an actual controversy. W.L. Gore & Assocs., Inc. v. AGA Medical Corp., C.A. No. 11-539 (JBS-KMW) (D. Del. Mar. 13, 2012). AGA filed suit against Gore in the District of Minnesota alleging that Gore’s occluder device for treating heart defects infringed the ‘738 patent. In that action, AGA sought discovery relating to a new Gore occluder device that was not accused in the Minnesota action. Id. at 5. Gore responded by filing a declaratory judgment action in the District of Delaware seeking a declaration that its new occluder device did not infringe the ‘738 patent, or the related ‘552 patent. Id. at 6. The Court found, with respect to the ‘738 patent, that “a substantial controversy existed at the time the action was commenced” because AGA served a discovery request in the Minnesota action relating to Gore’s new device and expressly told the Minnesota court that the discovery was justified because AGA might need to amend its complaint to include a claim based on the new device. Id. at 16. However, the Court held it lacked subject matter jurisdiction with respect to the '552 patent because it was not at issue in the Minnesota action and was not the subject of AGA's discovery requests there. Id. at 15-16. Finally, the Court found it could not exercise personal jurisdiction over AGA because its Delaware sales amounted to less than 0.5% of its total sales, and it otherwise lacked continuous contacts with Delaware. Id. at 22. The Court rejected Gore's argument that AGA was subject to specific personal jurisdiction in Delaware because it filed suit against Gore, a Delaware corporation, in Minnesota. The Court distinguished the situation before it from others where, for example, the patentee sends cease and desist letters into the forum state satisfying the forum’s long-arm statute. Here, in contrast, AGA did nothing to enforce its patent against Gore "in Delaware." Id. at 24. As an alternative to dismissal under Rule 12(b)(2), the Court transferred the case to the District of Minnesota, AGA’s home state where the parties were litigating over the same patent. Id. at 25.

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March 23, 2012

Judge Robinson Denies Defendant’s Renewed JMOL Regarding Lost Profits Damages, Awards Plaintiffs Enhanced Damages Under § 284

In Boston Scientific Corp. v. Cordis Corp., C.A. No. 10-315-SLR, Judge Robinson recently denied defendant’s renewed motion for judgment as a matter of law regarding lost profits damages and granted plaintiffs’ motion for enhanced damages -- ultimately doubling the jury’s award. Id. at 37. Following the Court’s grant of summary judgment of infringement in favor of plaintiffs in a patent dispute involving cardiovascular stents, the Court held a jury trial on willfulness and damages. Id. at 3-4. Following that trial, the jury awarded plaintiffs nearly $18.5 million in lost profits damages and $1.0 million in reasonable royalties based on defendant’s infringement. Id. at 4. In post-trial submissions, defendant filed a renewed motion for judgment as a matter of law challenging the jury’s award of lost profits damages. Id. at 7. Defendant argued that the award was not supported by “substantial evidence” because, among other things, plaintiffs had not proven that the defendant’s infringing product was the “but-for cause” of the decline in plaintiffs’ sales. Id. at 7. The Court disagreed. Id. at 25. The Court found that the jury’s award of lost profits was, indeed, supported by sufficient evidence. Id. at 25. Specifically, in its analysis, the Court concluded that there was sufficient evidence to support that a “specific market” existed for defendant’s infringing product and that the demand for defendant’s infringing product and plaintiffs’ product was “interchangeable.” Id. at 23. The Court further concluded that sufficient evidence was presented that, for example, the “doctors’ demand” for defendant’s infringing product would have transferred to plaintiffs’ product in the absence of defendant’s infringing product. Id. at 23.

In addition to denying defendant’s renewed motion for judgment as a matter of law, the Court concluded that, although the case was not necessarily an exceptional one under 35 U.S.C. § 285, plaintiffs were nonetheless entitled to an award of enhanced damages under § 284 and that doubling the jury’s award was “reasonable under the circumstances.” Id. at 36. The Court determined that there existed “clear and convincing evidence that [defendant’s] conduct [was] sufficiently culpable to justify enhanced damages.” Id. at 36. The Court noted that the “Read factors” favoring enhancement included: (1) the extent to which defendant was aware of and investigated the scope of the patent-in-suit, (2) defendant’s litigation conduct, (3) defendant’s financial condition, (4) defendant’s motivation for harm, (5) the non-closeness of the case, and (6) the lack of remedial action on the part of the defendant. Id. at 36. The Court also noted that none of the Read factors specifically weighed against enhancement. Id. at 36.

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March 15, 2012

Magistrate Judge Thynge orders response to contention interrogatory seeking claim charts

In Quantum Loyalty Systems, Inc., et al. v. TPG Rewards, Inc., C.A. No. 09-022-SLR/MPT (D. Del. Mar. 6, 2012), Magistrate Judge Thynge resolved a discovery dispute relating to a defendant's contention interrogatory seeking claim charts showing why the defendant's older, unaccused products would not infringe the patent at issue. The defendant’s interrogatory sought “for the 1993 product . . . a claim chart countering [the defendant’s] chart explaining why this product is not prior art[,]” and “regarding the 2002 product . . . a claim chart showing why it does not meet the limitations of the claims being asserted against the later [2008 product]” (the defendant asserted that the 2002 product was the same as the 2008 product in relevant part, and therefore if the accused 2008 product were found to infringe, the 2002 product would be invalidating prior art). Id. at 4. The plaintiff objected to the interrogatory, asserting that it was a “veiled effort to require [the plaintiff’s] counsel to divulge its work product” and “since [the plaintiff] does not accuse either product of infringement, the interrogatory does not seek relevant evidence . . .” Id. at 3. The Court distinguished the situation from a case relied upon by the plaintiff, explaining that the defendant “is not seeking a comparison between the claim terms at issue with unaccused products of the patentee; rather [the defendant] is requesting discovery from [the plaintiff] related to its invalidity defense . . .” Id. at 5. The Court added, “seeking why the 1993 and 2002 products are not prior art [is] neither a unique nor unusual discovery request.” Accordingly, the Court ordered that the plaintiff respond to the interrogatory and provide the requested claim charts. Id. at 5-6.

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March 9, 2012

Managing IP's US Patent Reform Forum, Washington, D.C. March 27, 2012

Dear Colleague,

As a supporter of the event, Delaware IP Law Blog invites you to attend the US Patent Reform Forum on March 27th in Washington D.C.

** Limited complimentary places left **

New speaker additions at the forum include Douglas Graham, executive director of IDDEX. Douglas is a fervent IP expert and author of books and many articles on Intellectual Assets. He also has had three patents granted and has two further patents pending. Douglas will be giving insight into the ways in which SME's will be affected by the reforms, confronting an issue which often doesn't see much coverage but which will affect many business owners and their counsel.

You will also be hearing from Teresa Stanek Rea, deputy under secretary of commerce for intellectual property and deputy director of the USPTO. Teresa will be giving the rule making overview and delivering perspective of the USPTO in a discussion which is to be chaired by the AIPLA's Todd Dickinson.

The forum’s exciting finale will consist of a debate between Daniel McCurdy and Raymond P. Niro who will be discussing the contentious topic of NPEs or Patent Trolls. Going head to head and engaging directly with this matter from opposing perspectives, these charismatic speakers will provide a unique opportunity to hear from both sides of the fence in the wake of the AIA.

Dan McCurdy, CEO of PatentFreedom, is devoted to the protection of companies against NPEs. His conviction in this defence against the trolls passionate and Dan plays a key role in collating and sharing relevant intelligence with the ‘operating companies’ which he strives to defend.

Conversely, Raymond Niro is known to some as an ‘Original Troll’. Raymond is devoted with equal fervour to the advancement of the NPE cause and can speak with charm and eloquence on the controversial stance which he takes. Together these men will offer a unique opportunity to scrutinise the issues at stake allowing time for audience participation and discussion with the floor also. This is an opportunity not to be missed.

Other speakers include:

• David Kappos, undersecretary of commerce for intellectual property and director, USPTO
• Judge Paul Michel
• Gary Griswold, president and chief intellectual property counsel, 3M Innovative Properties Company and former chairman, 21st Century Patent Reform
• Bob Stoll, former commissioner, USPTO and partner, Drinker Biddle & Reath
• Robert Armitage, senior VP and general counsel, Eli Lilly
• Steven Wood, patent licensing associate, Brookhaven National Laboratory
• Phil Johnson, chief intellectual property counsel, Johnson & Johnson
• Sherry Knowles, principle, Knowles Intellectual Property Strategies
• David T. Beck, Patent Attorney, JDS Uniphase Corporation
• F. Scott Kieff, professor of law, George Washington University
• Brent Bellows, Knowles Intellectual Property Strategies
• Steven I. Weisburd, partner, Dickstein Shapiro
• Gene Quinn, president & founder, IPWatchdog, Inc

For more information about the agenda, please see the brochure here: http://www.managingip.com/pdfs/USPatentForum.pdf.

Easy ways to register
Visit www.managingip.com/USPatentforum2012
Email mfabri@euromoneyplc.com
Call +1 212 901 3828

* Please note that complimentary places are allocated on a first come, first served basis.

We look forward to meeting you on March 27th.

Kind regards,

James Nurton
Managing editor
www.managingip.com

Pilar Kraman
Managing editor
www.delawareiplaw.com

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March 7, 2012

Plaintiff not required to supplement responses to defendant’s requests for admissions until after Court’s Markman ruling

In Bayer CropScience AG v. Dow Agrosciences LLC, C.A. No. 10-1045 (RBK-JS) (D. Del. Mar. 1, 2012), defendant asked the court to compel plaintiff to supplement its responses to defendant’s requests for admission.  Defendant argued that plaintiff’s responses were inappropriate because plaintiff “substituted its own definitions for those [defendant] supplied.”  Id.  Plaintiff responded that it simply qualified its responses and that the definitions were “misleading and vague[.]”  Id.  The requests at issue address monooxygenase enzymes and dioxygenase enzymes.  Id.  The court held that plaintiff did not have to further respond to defendant’s requests until after the Court issues its claim construction ruling because the court’s construction of those terms are, “[i]f not the most important issue in the case, . . . undoubtedly a central issue in the litigation.”  Id. at 2. 

 

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March 7, 2012

Judge Stark Adopts Report and Recommendation, Denies Plaintiffs' Motion to Dismiss Inequitable Conduct Counterclaim and Affirmative Defense

Judge Stark recently issued an Order in Wyeth Holdings Corp., et al. v. Sandoz, Inc., C.A. No. 09-955-LPS-CJB, adopting an earlier Report and Recommendation of Magistrate Judge Burke, and denying plaintiffs’ motion to dismiss defendant’s inequitable conduct counterclaim and to strike defendant’s affirmative defense based on inequitable conduct. Id. at 1-2. In the Order, Judge Stark noted that neither party had filed an objection to the Report and Recommendation. Id. at 1. This ruling and the underlying Report and Recommendation are significant because they address the implications of the Fed. Cir.’s recent decisions in Therasense, 649 F.3d 1276 (Fed. Cir 2011) and Exergen, 575 F.3d 1312 (Fed. Cir. 2009), and the impact that the Therasense and Exergen decisions might have on the analysis of and pleading standard for allegations of inequitable conduct going forward.

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March 7, 2012

Judge Stark Construes Claims Directed to Pharmaceutical Compositions Used for Treating Acne

In Galderma Labs., L.P., et al. v. Tolmar Inc., et al., C.A. No. 10-45-LPS, Judge Stark construed the following disputed claims and claim terms of U.S. Patent Nos. 7,579,377 (the “’377 patent”), 7,737,181 (the “’181 patent”), 7,834,060 (the “’060 patent”), 7,838,558 (the “’558 patent”) and 7,868,044 (the “’044 patent”):

“a thus effective amount” and “effective amount”
“effective for the treatment of”
“an anti-acne effective amount”
“useful for the treatment of”
“pharmaceutical composition which is a gel of”
“poloxamer 124”
“carbomer 940”
Claim 5 of the ’060 patent
Claim 24 of the ’060 patent
Claim 35 of the ’181 patent
Claim 36 of the ’181 patent
Claim 40 of the ’044 patent
Claim 41 of the ’044 patent

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March 6, 2012

Judge Schneider grants defendant’s motion to amend invalidity contentions

In Bayer CropScience AG v. Dow Agrosciences LLC, C.A. No. 10-1045 (RBK-JS) (D. Del. Feb. 27, 2012, Magistrate Judge Schneider, sitting by designation, recently granted defendant’s motion to supplement its contentions.  Defendant moved to supplement its contentions one week after the parties exchanged their claim construction positions.  Defendant wanted to add detail to its previously pled defenses and add additional defenses in light of plaintiff’s proposed constructions.  Id. at 2.  Judge Schneider found that good cause existed to grant defendant’s motion because “defendant did not recognize the amendments were necessary and appropriate until it received [plaintiff’s] proposed constructions[,]” and that the proposed amendments “flow from’ the constructions the parties exchanged . . . .”  Id. at 4.  Plaintiff argued that it would be prejudiced by the proposed amendments because it filed an early motion for partial summary judgment based on defendant’s one invalidity contention.  Id. at 6.  The court was not persuaded, however, because plaintiff’s motion would still be decided on the merits.  “The fact that [plaintiff] decided to file its dispositive motion early was the result of its strategic decision.  Surely, [plaintiff] could not have anticipated that its motion for summary judgment would automatically ‘lock’ [defendant’ into its contentions.”  Id.

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