September 10, 2011

Judge Stark: "Highly Improbable" Claim Construction Not "Impossible"

Last month, Judge Stark issued an opinion following a July bench trial in The Research Foundation of State Univ. of New York v. Mylan Pharma., Inc., C.A. No. 09-184-LPS (D. Del. August 26, 2011). This is a long opinion with a number of interesting points and findings of fact, and which ultimately found that one of the five patents was both valid and infringed. One interesting portion of the opinion discusses a reversal by the Court from an initial position it took in granting a preliminary injunction:

The Court recognizes there is further tension between today's ruling and the following statement in the preliminary injunction opinion: "It follows that Mylan's argument is that Mr. Ashley, the inventor, expressly defined key claim terms in a manner that had the consequence of excluding from the scope of his patent the very embodiment ofhis invention that his employer intended to practice. There is no support in the record for this highly improbable contention."
* * *

As the instant case proves, "highly improbable" does not mean "impossible." At trial, unlike at the preliminary injunction (or claim construction) stage, Mylan presented a significant amount of evidence that demonstrated that a 40 mg daily administration of doxycycline - either 40 mg once-daily or 20 mg twice daily - does not not significantly inhibit the growth of microorganisms. It follows, then, that Oracea® and Periostat®, despite being identified as preferred and "especially preferred" embodiments of the Ashley Patents, respectively, are not actually embodiments ofthe asserted claims. Although unusual, this is the conclusion compelled by the record developed at trial.

Id. at 46-47. View the full opinion after the fold.

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September 10, 2011

Judge Baylson: Motion to Dismiss GRANTED

In Silicon Economics, Inc. v. Financial Accounting Foundation, C.A. No. 11-163 (D. Del. August 17, 2011), Judge Baylson granted a motion to dismiss for lack of standing, after the plaintiff failed to show an actual injury.

The originates from the terms of service of the website of the Financial Accounting Standards Board ("FASB"). The founder of plaintiff Silicon Economics, Inc ("SEI"), Joel Jameson, apparently submitted comments to the FASB via its website; those comments included the idea that resulted in the patent at issue, which covers an accounting "equation." Id. at 2. Later, Jameson realized that the terms and conditions of the website included a clause granting the FASB a license to use information and ideas submitted "for any purpose." Id. at 3.

After noticing the terms, Jameson contacted the FASB; SEI now alleges that the FASB claimed an ownership interest in the patent. In response, SEI filed the present action (after attempting one in California), and asserts Sherman act claims, as well as California law unfair competition claims.

The Court dismissed all of the claims. SEI has no standing, because it cannot show any actual injury -- the only alleged injury was to its reputation, but it provided no specifics. Further, it failed to allege sufficient facts in favor of its anti-trust claim, because it failed to show that the challenged conduct (the seeking of public comment) was commercial in nature. The Court did, however, grant leave to amend the complaint to address these issues.

Interestingly, the Court noted that counsel for the Defendants has "unconditionally renounced any ownership interest" in the patent. Id. at 17-18. Therefore, according to the Court, the "positions of the parties should be amenable to a settlement," and that "prolonged litigation . . . do[es] not seem to be necessary." Id.

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September 7, 2011

Special Master Poppiti Recommends Reduction of Sanctions Award

In Apeldyn Corp. v. AU Optronics Corp., C.A. No. 08-568-SLR (D. Del. Aug. 29, 2011), Special Master Poppiti recently recommended that plaintiff's requested sanctions award be reduced from $89,747.54 to $47,241.54. Id. at 1. In determining the adequacy of documentation of Apeldyn's fees associated with responding to an untimely expert report, the Special Master first noted that although "the descriptor 'worked on' [in attorney timekeeping records] is vague in and of itself, as it fails to convey to the reader the precise task being performed by the timekeeper[,]" the declarations at issue included "[a]mple description of specific tasks[.]" Id. at 14. The Special Master did, however, exclude from the lodestar calculation as inadequately documented all of the hours that "group[ed] together duplicative and non-duplicative tasks[.]" Id. at 16. The Special Master further excluded from the lodestar calculation (1) excessive hours in connection with responding to the untimely expert report in light of the fact "that approximately 70% of the [responsive report] is duplicative--in most instances word-for-word--of [the expert's] earlier reports[,]" and (2) the hours of an attorney whose "role, it seem[ed], was to provide backup support" because the tasks he performed were "entirely duplicative of work already done by [other attorneys]." Id. at 17-19.

Next, addressing Apeldyn's fees in connection with bringing the sanctions motion, Special Master Poppiti stated that the motion "did not involve complex issues of law, and Apeldyn did not cite any case law in its letter briefs, indicating that intensive legal research was not done." Id. at 21. Thus, "[g]iven the straightforward issues involved, the brevity of the letter briefs, and the absence of case law in the briefs," the Special Master excluded all excessive hours from the lodestar calculation. Id. at 21-22.

Finally, Special Master Poppiti stated that "Apeldyn is not entitled to receive reimbursement for fees or costs incurred in connection with preparing the June 27 Bill of Costs" because "Apeldyn did not request such fees in its first submittal on June 27, 2011" and therefore "Apeldyn . . . waived any opportunity it once might have had to seek reimbursement for such fees." Id. at 24. Further, Apeldyn's "June 27 Bill of Costs lacked sufficient documentation[,]" and thus "it would be unfair to reward Apeldyn for preparing what the Special Master concluded to be a deficient submittal." Id. at 24-25.

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September 2, 2011

Magistrate Judge Thynge: Personal Jurisdiction over Pro Hac Vice Counsel

In Ricoh Co. v. Oki Data Corp., C.A. No. 09-694-SLR (D. Del. Aug. 15, 2011), Judge Thynge interpreted Delaware’s long arm statute, which states that “‘any nonresident’ that ‘performs any character of work or service in the state’ is subject to personal jurisdiction[,]” to include counsel’s legal representation in this case — “[e]ven if the contact is as minimal as pro hac vice admission[.]” 8. Judge Thynge nonetheless held that Ricoh’s attempted subpoena of Oki Data’s pro hac vice counsel, a resident of Japan, was unenforceable due to improper service of process.

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September 2, 2011

Judge Leonard P. Stark: Markman Opinion

In Alza Corporation v. Kremers Urban LLC, the Court construed the term "administering" as it appears in the patent-in-suit to mean "administering once daily." C.A. No. 10-23-LPS, Memo. Op. (Aug. 29, 2011). Defendants argued that the claim language supported a construction of multiple dose administration. Id. at 4. The Court found that although the claim language favored a construction of multiple doses, "the remainder of the specification favors Plaintiffs' position. . . ." Id. at 16. Specifically, the patent teaches away from a multiple dose administration by stressing the fact that the once a day treatement solved a problem in the prior art. Id. at 12-13.

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September 1, 2011

Judge Robinson: Plaintiffs' Motion for JMOL on Invalidity and Motion for a New Trial Denied

In Arcelormittal France v. AK Steel Corp., C.A. No. 10-050-SLR (D. Del. Aug. 25, 2011), plaintiffs unsuccessfully moved for JMOL on invalidity and for a new trial. Id. at 18. Plaintiffs' motion for JMOL focused on (1) whether a particular prior art reference qualified as a printed publication, (2) whether that reference disclosed all limitations of the asserted patent, and (3) whether there was a motivation to combine that reference with other asserted prior art references. Id. at 5. After finding that the jury's verdict of anticipation and obviousness was supported by substantial evidence, Judge Robinson rejected plaintiffs' multiple arguments in support of their motion for a new trial. Id. at 11. For example, although "[p]laintiffs argue[d] that defendants' experts improperly testified about two . . . prior art references," the court found that (1) "plaintiffs never objected to this testimony at trial and, therefore, arguments pertaining to said testimony are waived" and (2) "even if objections to said testimony had been preserved, the testimony was merely explanatory in nature, and gave context for defendants' experts' understanding of the level of skill in the art." Id. at 12-13. Thus, "even if the experts' testimony was beyond the scope of the expert report, the error was harmless." Id. at 14. Because the court denied both of plaintiffs' motions, Judge Robinson denied defendants' JMOL of noninfringement as moot. Id. at 18.

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August 29, 2011

Judge Robinson: Motion for Summary Judgment of Invalidity Under §102(g) DENIED and Motion for Summary Judgment of No Willful Infringement GRANTED

Judge Robinson recently decided Honeywell’s renewed summary judgment motion on invalidity of the patent-in-suit and Honeywell’s summary judgment motion of no willful infringement after the Federal Circuit reversed in part the court’s opinion on invalidity under §102(g). Solvay, S.A. v. Honeywell Specialty Materials LLC, C.A. No. 06-557-SLR (D. Del. Aug. 26, 2011). Judge Robinson denied Honeywell’s motion for summary judgment of invalidity under 102(g). The court found that a Russian group, RSCAC, under research contract with Honeywell, qualified as “another inventor” who conceived the invention and reduced it to practice in this country. Id. at 6. The invention was conceived and reduced to practice in Russia and then RSCAC sent instructions to Honeywell who used the instructions to reduce the invention to practice in the United States. Id. However, Solvay raised a genuine issue of material fact as to whether RSCAC suppressed or concealed the invention because a confidentiality agreement between RSCAC and Honeywell precluded RSCAC from disclosing the invention. Id. at 9.

Judge Robinson granted Honeywell’s motion for summary judgment of no willful infringement, finding that Honeywell presented a credible invalidity defense. Id. at 13. It was irrelevant that the Federal Circuit ultimately rejected Honeywell’s 102(g) defense. Id. Judge Robinson also noted that “Solvay discredited its own contentions regarding the baselessness of Honeywell’s invalidity defenses by failing to move for summary judgment of validity or willfulness[.]” Id. at 13-14.

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August 19, 2011

ABA Blawg 100 Nominations

Earlier this month, the ABA Journal began accepting nominations for its annual list of the 100 best legal blogs (“blawg”). They are accepting “Amici Forms” where you can nominate a blog that you read regularly and you think others should know about. The form is extremely simple and aside from some information about the person making the nomination, asks only “Why are you a fan of this Blawg?” Nominations must be submitted by Friday, September 9.

The Delaware IP Law Blog was the first IP Blog in Delaware and we work to keep you up to date with the latest decisions and news from the district court in an unbiased, yet informative way. Although our blog covers only a specific region, our readers span the globe and share one thing – an interest in some of the most interesting and important decisions in intellectual property.

A link to the amici form is provided below.

August 17, 2011

Judge Sleet Claim Construction Order

In a recent ANDA case involving valganciclovir hydrochloride 450 mg tablets, Judge Sleet construed the term "compound 2-(2-amino-l ,6-dihydro-6-oxo-purin-9-yl)methoxy-3-hydroxy-lpropanyl-L-valinate hydrochloride in crystalline form" to mean "valganciclovir hydrochloride in a physical form having molecules arranged in a regularly repeating three dimensional pattern."

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August 17, 2011

Chief Judge Sleet: Post-Trial Motions Denied

On August 11, Chief Judge Sleet denied several post-trial motions in CNH America LLC v. Kinze Manufacturing, Inc., C.A. No. 08-945-GMS (D. Del. Aug. 11, 2011). A jury found in February that all of the claims of the two patents asserted by CNH were invalid as anticipated, and all but two of them were also invalid as obvious.

Patent-holder and plaintiff CNH brought a motion for JMOL or a new trial on invalidity. CNH presented a number of arguments – here are a few of the more interesting ones:

  • CNH argued that it was entitled to a new trial because defendant Kinze presented a previously-undisclosed video at trial. The Court found that this was merely a new copy of a previously-disclosed video, this time with better production values. Id. at 8-9.
  • CNH argued against anticipation and obviousness on various bases; the Court denied all of these, and characterized many of them as attempts by CNH to present late claim construction arguments. Id. at 11-16.
  • CNH argued that the jury must have erred in determining that certain claims were anticipated but not obvious. The Court rejected these arguments based on a statement by the Federal Circuit that a determination of non-obviousness does not necessarily foreclose anticipation. The Court also noted that Third Circuit precedent actually controls this issue, and does not support CNH’s position. Id. at 16-19.

Defendant Kinze also presented two motions:

  • Kinze moved for JMOL of obviousness as to the two claims that were anticipated but not obvious. The Court refused to rule on the substance of this issue, on the grounds that it would not affect the scope of the judgment (the Court did state, however, that the motions could be renewed if the case were reversed or vacated on appeal). Id. at 20-21
  • Kinze moved for attorney’s fees; the Court denied the motion, because there was nothing exceptional about this case. Id. at 21.

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