Delaware IP Law Blog

Plaintiffs filed this patent infringement action against defendants Anchen Pharmaceuticals and Anchen Inc. after the defendants filed their Abbreviated New Drug Application (“ANDA”) to manufacture generic versions of AMRIX®. In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litigation, MDL No. 09-2118 (D. Del. Mar. 12, 2010). Plaintiffs are a Nevada and a Swiss corporation. Defendant Anchen Pharmaceuticals is a California corporation with a principal place of business in California. Id. at 3. Defendant Anchen Inc. is a Delaware corporation, with a principal place of business in California. The relationship between the two entities was not clear to the Court but there was an overlap of senior corporate officers and plaintiffs alleged that the two entities held themselves out in the marketplace as one company. Id.

Defendants argued that the action should be dismissed as to Anchen Pharmaceuticals for lack of personal jurisdiction. Id. at 15. Plaintiffs argued that jurisdiction was proper because the Delaware contacts of Anchen Inc. should be attributed to Anchen Pharmaceuticals under agency theory. Id. at 18. “Because the allegations demonstrate[d] a nearer than arm’s length relationship, the court agree[d].” Id. Defendants did not dispute plaintiffs’ evidence that “both entities share[d] the same address and some of the same employees. Moreover, Anchen Pharmaceuticals’ statements to the United States Patent Office during the prosecution of its mark, [that both defendants, although separate legal entities, constitute a single source to the relevant public], evince exactly this type of relationship.” Id. Although Judge Robinson concluded that Anchen Pharmaceuticals’ activities in Delaware were not sufficient to establish personal jurisdiction, she found general jurisdiction present because submission of the ANDA constituted and act of infringement and because Anchen Pharamaceuticals’ drug sales in Delaware was a “substantial revenue” source for the company. Id. at 19.

In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litigation, MDL No. 09-2118 (D. Del. Mar. 12, 2010)

President Obama nominated Magistrate Judge Leonard P. Stark to fill the District of Delaware vacancy. The position has been empty since 2006 when Judge Kent A. Jordan was appointed to the Third Circuit.

For a copy of the White House Press Release see here.

Magistrate Judge Mary Pat Thynge issued a memorandum order yesterday in Masimo Corp. v. Philips Electronics North America Corp., C.A. No. 09-80-JJF-MPT (D. Del. Mar. 11, 2010), granting a motion by plaintiff Masimo to bifurcate and stay discovery of Philips' antitrust counterclaims. Id. at 10. Magistrate Judge Thynge noted that "Bifurcation of patent and antitrust claims is not mandatory, but is common," id. at 3-4, and that, absent bifurcation, the jury might have comprehension difficulties (from the volume of information, including 24 asserted patents) and might be subject to bias against the plaintiff (from the defendant's allegations of monopolization). Id. at 3. Discovery and related issues were also stayed, because "there is a possibility that a trial on [the] patent claims will potentially eliminate or simplify [the] antitrust counterclaims alleging anticompetitive licensing restrictions." Id. at 8. This opinion mirrors a decision by Judge Robinson that we reported last year.

Masimo Corp. v. Philips Electronics North America Corp., C.A. No. 09-80-JJF-MPT (D. Del. Mar. 11, 2010)

In Leader Technologies, Inc. v. Facebook, Inc., C.A. No. 08-862-JJF (D. Del. Mar. 9, 2010), Judge Farnan recently construed claim terms related to a patent involving “the ‘management and storage of electronic information,’ and specifically relat[ing] to ‘new structures and methods for creating relationships between users, applications, files and folders.’”

Plaintiff asked Judge Farnan to construe five claim terms, whereas defendant put forth three claim terms (down from its initial 31 claim terms, narrowed after the Markman hearing).

The construction of the eight disputed terms are as follows:

Context
“environment”

Judge Farnan found that this construction, proposed by plaintiff, was supported by the specification, and rejected defendants claim differentiation argument stating that “the specification should prevail over claim differentiation principles.” Id. at 10.

Component
“a computer-related entity, either hardware, a combination of hardware and software, software, or software in execution.”

Judge Farnan rejected defendant’s argument that means-plus-function treatment was appropriate thereby construing the term as expressly defined in the specification. Id. at 14.

Ordering
“organizing”

Judge Farnan rejected defendant’s proposed construction because it read in a limitation not supported by the claim or the specification. Id. at 15.

Traversing
“navigation according to a specific path or route”

Many-to-many Functionality
“two or more users able to access two or more data files”

Judge Farnan rejected defendant’s argument that the claim term was indefinite. Id. at 22-24.

Dynamically
“automatically and in response to the preceding event”

Judge Farnan rejected plaintiff’s argument that the claim term required no construction because it is commonly used in the field, “and one of ordinary skill in the art understands its meaning.” Id. at 24.

Metadata
Term given its plain and ordinary meaning

Judge Farnan determined that defendant’s proposed construction “import[ed] unnecessary and unwarranted limitations” into the claim term. Id. at 27. Furthermore, the proposed construction was not supported by the prosecution history. Id. at 28.

Accesses [the data]
Term given its plain and ordinary meaning

Leader Technologies, Inc. v. Facebook, Inc., C.A. No. 08-862-JJF (D. Del. Mar. 9, 2010)

Late last week, Judge Robinson issued a memorandum opinion in Accenture Global Services GMBH v. Guidewire Software Inc., C.A. No. 07-826-SLR (D. Del. Mar. 5, 2010) (in addition to the claim construction opinion that we posted about yesterday, and the order staying the case that we posted about just over a week ago). In this opinion, Judge Robinson denied several motions, including Defendant's motions for summary judgment on anticipation, obviousness, indefiniteness, non-infringement, and trade secret misappropriation, and Plaintiff's motion to strike Defendant's on-sale bar arguments and documents because they were not identified in its invalidity contentions during discovery.

Plaintiff's motion to strike was denied due to a lack of prejudice, and the fact that they had actual notice. Defendants' on-sale bar motion was denied because they provided no "clear and convincing evidence that [supposed on-sale bar product] met all of the limitations of an asserted claim," because it was missing some enabling portions of the specification, and "the (albeit few) missing enabling portions of the specification may have been added" after the critical date. Id. at 19.

Defendant's anticipation motion was denied because there are still issues of fact (as evidenced, according to the Court, by the fact that Defendant submitted over 5000 pages of material to the Court for consideration), and because "defendant's wholesale grouping of limitations [in its anticipation analysis] does not allow for the requisite demonstration of the manner in which the elements of the asserted preior art system are arranged." Id. at 38-41.

One final item of interest was how the Court, in denying Defendant's indefiniteness motion, used Defendant's own anticipation motion against it:

Notably, defendant has moved for summary judgment that claim 6 of the '284 patent is anticipated and obvious in view of the three prior art systems noted supra. Certainly defendant's assertion that the claim can be (positively) contrasted with the prior art is at odds with the assertion that the bounds of the claim are indeterminable.

Accenture Global Services GMBH v. Guidewire Software Inc., C.A. No. 07-826-SLR (D. Del. Mar. 5, 2010)

Eastern District of Pa. chief judge Harvey Bartle, sitting by designation, recently issued a claim construction memorandum opinion in Magsil Corp. v. Seagate Technology, C.A. No. 08-940 (D. Del. Mar. 1, 2010) (memo. op.). The following terms were construed:

• "junction" - The Court held that due to the claims' use of "comprising," and the wording of the dependant claims, the use of "junction" did not mean that the claims were "limited to a three layer system of 'electrode, barrier and counter-electrode.'"
• "a small magnitude of electromagnetic energy" - "that magnitude of electromagnetic energy which is sufficient to reverse the magnetization direction of the electrode or film layer with a lower coercive force (thereby achieving a change in resistance of at least 10%) but less than the amount necessary to reverse the magnetization direction of the electrode or film layer with a higher coercive force."
• "Reverses at Least One of the Magnetization Directions" - "a turning or change of the magnetization direction of at least one of the electrodes or film layers, towards an opposing alignment, to such a degree as necessary to achieve at least a 10% change in resistance."
• "A Change In the Resistance By at Least 10%" - 'a change in the resistance of at least 10% by using the formula ΔR/R = (R1 -R2)/R1, where ΔR/R is the percent change in 1 magnetization direction, R1 is the resistance of the junction 8 before the application of electromagnetic energy reverses at least one of the magnetization directions, and R2 is the resistance of the junction after the application of electromagnetic energy and the resultant reversal of at least one of the magnetization directions."
• "At Room Temperature" - "a device which causes a change in resistance of at least 10% 'at room temperature' is a device capable of achieving such resistance without actively manipulating the temperature of the device, that is, that the device is capable of achieving a 10% change in resistance while operating within a room-temperature environment."
• "Stepping Motor" - "an electric motor that is capable of moving only in small, discrete increments."
• "Linearly Driving the Actuator" - "driving the actuator in a straight line"

Magsil Corp. v. Seagate Technology, C.A. No. 08-940 (D. Del. Mar. 1, 2010)

For those readers litigating insurance patents, district judge Sue L. Robinson recently released a claim-construction decision that interprets the terms of two insurance claims-processing systems. Among the terms construed, several stand out: "policy level," "claim level," "participant level," "event trigger," "field," and the phrase "obtaining a selection of fields of a first set of fields."

Accenture Global Services GMBH v. Guidewire Software Inc., C.A. No. 07-826-SLR (D. Del. Mar. 5, 2010) (Robinson, C.J.).

Negotiating protective orders can be a mundane affair. But the D. Del. litigator may want to take notice of an attorneys-eyes-only provision recently fashioned by a special master appointed by distict judge Sue L. Robinson. In his report and recommendation, the special master adopted the following passage to address the parties' concerns over handling the use of confidential information during the course of both reexamination and separate prosecutions:

"No attorney or other individual who has access to the other parties' [confidential information] . . . shall be involved thereafter in the prosecution or drafting of patent applications, claim language for patent applications, or arguments made in support of patent applications, excluding a patent in reexamination [involving an] . . . opposing party in this case, before the [PTO or foreign agencies], and proceedings related to [the patent-in-suit] . . . . [A]ny individual's participation in reexamination proceedings(s) also is expressly conditioned on his/her/its legal obligation, established by Order of the Court, not to use in any way an opposing party's [confidential information] to draft new claims, or to amend previously existing claims, through the reexamination process. The above conditions and exclusions continue for a period of one year following the final resolution [of the case]."

Apeldyn Corp. v. AU Optronics Corp., C.A. No. 08-568-SLR (D. Del. March 1, 2010) (Poppiti. S.M.).

Delaware IP Law Blog's own Karen Keller was selected yesterday to participate in the District of Delaware's inaugural Federal Trial Practice Seminar, an intensive eight-week instructional program created to hone the skills of the district's litigators. Open by invitation only, the seminar's weekly sessions will be attended by D. Del. judges and a group of program mentors, all of whom have extensive trial practice experience in the district court.

Congratulations Karen!

Preliminary motions, a staple of modern litigation, can sometimes expose larger problems in a party's case. In a recent decision, Chief Judge Gregory M. Sleet explained how a motion in limine over an expert report raised a different question: Did the plaintiff sufficiently identify its Section 271(f) infringement argument in time for trial?

Addressing this broader issue, the Court answered no, thereby eliminating a potential avenue for recovery:

"[T]he only bases [plaintiff] Edwards has asserted for its contention that CoreValve was on notice of such claims are a single sentence in a CoreValve expert report that contains what is, at most, an oblique reference to § 271(f); a formalistic recitation in the original complaint of all possible modes of infringement under § 271 that Edwards might later assert; and an assertion made long after the close of discovery that Edwards 'reserved its rights' to assert § 271(f)."

By doing so, the Court reinforced once again the practice in this district that general statements in pleadings more often than not cause disclosure problems further down the road.

Edwards Lifesciences AG v. CoreValve Inc., C.A. No. 08-91-GMS (D. Del. Feb. 26, 2010) (Sleet, C.J.).