In Eli Lilly & Co. v. Teva Parenteral Medicines, Inc., C.A. No. 08-335-GMS (D. Del. Jul. 28, 2011), Chief Judge Sleet ordered that the plaintiffs’ patent was not invalid for obviousness-type double patenting.
The Order was based on Chief Judge Sleet’s consideration of the parties’ proposed post-trial findings of fact and conclusions of law following a five-day bench trial in November 2010. The defendants argued that the patent at issue was invalid because, inter alia, examples in an earlier patent specification disclosed the utility of a particular compound as it pertained to making the compound in the later patent. Chief Judge Sleet disagreed with this argument for two reasons: (1) this was not a case in which “separate patents are sought for a claim to a compound and a claim to using that compound for the disclosed utility of the original compound[;]” and (2) the defendants impermissibly used examples from the earlier patent’s specification as if the specification were a prior art teaching in the obviousness-type double patenting analysis, which would have constituted “an improper use of hindsight knowledge of [the later compound] in determining whether [the later compound] would have been an obvious variant of [the earlier compound.]” Id. at 4-5.
Additionally, Chief Judge Sleet concluded that a person of ordinary skill in the art would not have “immediately recognized” the earlier compound as an intermediate used to make the later compound. Id. at 6. Nor would a person of ordinary skill in the art have a reason to make the later compound among the many other compounds suggested by the earlier compound because, during the relevant time period, the later compound was not a preferred compound and the changes suggested by the defendants would have yielded an “undesirable” result. Id. at 6-7.
Judge Kent A. Jordan: Summary Judgment of Invalidity Granted; Claim Construction of "Purchase Transaction"
In Stored Value Solutions, Inc. v. Card Activation Technologies, Inc., C.A. No. 09-495-KAJ (D. Del. Jul. 1, 2011), Third Circuit Judge Kent A. Jordan, sitting by designation, issued a memorandum opinion granting the plaintiff’s motion for summary judgment of invalidity due to anticipation and obviousness. Id. at 2. Judge Jordan also granted the plaintiff’s motion for partial summary judgment of invalidity of certain patent claims due to lack of written description, and denied the defendant’s motion for summary judgment of validity and its motion to exclude the testimony of the plaintiff's expert. Id.
The patent at issue disclosed a method for processing electronic transactions using a “Counter-Top Terminal System”—that is, transactions involving “an ATM card, prepaid debit card, or phone card.” Id. at 3. A key term in the patent was “purchase transaction[,]” which the defendant argued should include only transactions “in which goods or services are acquired through the payment of money.” Id. at 18. Judge Jordan disagreed, noting that the plain language of the claims showed that a “purchase transaction” occurred “when the value of a debit card is modified, including when it is increased.” Id. at 19 (emphasis added).
Thus, Judge Jordan construed “purchase transaction” broadly as “a transaction with the intended effect of decreasing the purchasing value of, increasing the purchasing value of, or activating a debit styled card.” Id. at 15. While noting that this construction was "somewhat different than the ordinary meaning of 'purchase,'" Judge Jordan found this construction to be "the most reasonable one that would preserve the scope of the claims in the '859 patent and ensure that each preferred embodiment described in the patent is covered by a claim of the patent." Id. at 25.
Judge Robinson denied Ruckus Wireless' motion to tranfer this patent infringement case to the Northern District of California where another suit (on different, unrelated patents) is pending between the parties. Netgear, Inc. v. Ruckus Wireless, Inc., C.A. No. 10-999-SLR, Memo. Order (D. Del. July 28, 2011). Both parties are Delaware corporations with their principal place of business in California. Therefore the main issue was whether the pending action in California was "related" to the pending Delaware action and therefore warranted transfer. Id. The asserted patents in the Delaware case "originated from different companies, have different inventors, and are of different patent families from patents-in-suit." Id. The Court found the fact that similar technology was at issue "not compelling" to warrant transfer. Id.
In Gian Biologics, LLC v. Biomet Inc., C.A. No. 10-865-LPS (D. Del. Jun. 21, 2011), Judge Stark issued a Memorandum Order staying the case pending resolution of the defendant Biomet, Inc.'s motion to dismiss and the defendant Biomet Biologics, LLC's motion to transfer venue.
In its motion to transfer venue, the defendant argued that the plaintiff had incorporated in Delaware less than four months before filing its lawsuit, which the defendant characterized as creating only a “litigation-contrived and de minimis connection to Delaware.” Id. at 3 (quoting defendant’s opening brief in support of motion to transfer venue). The plaintiff failed to dispute this allegation until oral argument, id. at 4, even after the defendant reiterated the allegation in its reply brief and “reasonably constru[ed] [the plaintiff’s] silence on this point as a concession that [the plaintiff’s] decision to incorporate in Delaware was, indeed, litigation-contrived[.]” Id. at 5.
The plaintiff “belatedly” sought to supplement the record with “evidence of its reasons for incorporating in Delaware[,]” which Judge Stark allowed. Id. Nonetheless, while noting that he had “significant doubt as to whether this case should remain in Delaware[,]” Judge Stark stayed the case until resolution of the motion to transfer venue. Id.
In Intellectual Ventures I LLC v. CheckPoint Software Technologies Ltd., Civ. No. 10-1067-LPS (D. Del. Jun. 22, 2011), Judge Stark denied the defendants' motion to transfer venue to the Northern District of California.
The defendants—all of whom had accused products sold in Delaware—requested transfer under 28 U.S.C. § 1404(a). Id. at 3. After noting that either venue would have been appropriate for the action, Judge Stark applied the Third Circuit’s Jumara factors and determined that transfer was, as usual, inappropriate. See id. at 4 (noting that “[u]nless the defendant ‘is truly regional in character[,]’ . . . transfer is almost always inappropriate”).
The Jumara factors (as set forth in Jumara v. State Farm Insurance Company, 55 F.3d 873, 883 (3d Cir. 1995)) provided an 11-factor framework of both private and public interest factors, each with different weights, that Judge Stark used in reaching his decision. Because the Jumara factors, on balance, weighed against transfer, Judge Stark exercised the Court’s discretion and declined to disturb the plaintiff’s choice of forum. Intellectual Ventures at 23.
In a footnote, Judge Stark recognized that the Federal Circuit has recently issued several opinions finding an abuse of discretion in similar district court denials of motions to transfer venue. Id. at 23 n.7. But those cases arose under Fifth Circuit law, which differs from the Third Circuit’s Jumara analysis in significant ways. Therefore, “these cases . . . do not affect the foregoing analysis.” Id.
In Somaxon Pharms., Inc. v. Par Pharm., Inc., C.A. No. 11-107-SLR (D. Del. July 28, 2011), defendant asserted counterclaims seeking declaratory judgment of invalidity and non-infringement of the patent-in-suit and six unasserted patents covering the drug at issue. Id. at 3. Plaintiffs provided defendant with a covenant not to sue on the six unasserted patents and requested defendant to dismiss its counterclaims as to the unasserted patents. Id. Judge Robinson granted plaintiffs’ motion to dismiss. “[T]he covenants not to sue address the Unasserted Patents in their entirety. There is no case or controversy regarding those patents because the covenant not to sue removes the original subject matter jurisdiction of the court.” Id. at 5.
Judge Robinson: Post-Trial Motion for Reargument Denied Where Defendant Sought to Rely on Summary Judgment Record
In S.O.I.TEC Silicon on Insulator Technologies, S.A. v. MEMC Electronic Materials, Inc., C.A. No. 08-292-SLR (D. Del. July 13, 2011), Judge Robinson decided several post-trial motions, including the defendant's motion for reargument on inequitable conduct. Id. Although the defendant "was scheduled to present its inequitable conduct case to the court following the jury trial[,]" it "did not subpoena any witnesses to call at the bench trial[,]" claiming that its only two witnesses "were adverse and outside of the court's subpoena power." Id. at 10-11. Rather, the defendant "sought to proceed . . . by tendering a box of exhibits and an exhibit list to the court[.]" Id. at 11. The defendant "argued that the court's holding on summary judgment was that [the defendant] had adduced facts from which an intent to deceive could be inferred . . . , and argues post-trial that the law of the case doctrine dictates that the court's summary judgment holding should not have been disturbed." Id. Judge Robinson rejected this argument for two reasons. First, "the court's finding the existence of a genuine issue of material fact on intent is not akin to the court's ruling in [the defendant's] favor on that issue." Id. Second, noting the Court's long-standing guidelines regarding admission of documents and deposition excerpts, Judge Robinson stated that the Court "determined that judgment should be entered in favor of [the plaintiff] because [the defendant] could not move the entry of any evidence absent the aid of witnesses." Id. at 11-12. In short, the defendant "did not seek to participate in a live trial, rather, it simply sought judgment on its proffered box of documents." Id. at 12.
In In re Armodafinil Patent Litigation, C.A. No. 10-md-2200-GMS (D. Del. July 25, 2011), Judge Sleet recently construed the following six claim terms:
- "[a] laevorotatory enantiomer of modafinil in a polymorphic form that produces a powder X-ray diffraction spectrum comprising"
- "intensity peaks at the interplanar spacings"
- "reflections at"
- "[a] Form I polymorph of (-)- modafinil"
- "[a] pharmaceutical composition comprising"
- "[a] pharmaceutical composition consisting essentially of"
In Eon Corp. IP Holdings LLC v. FLO TV Inc., C.A. No. 10-812-SLR (D. Del. July 12, 2011), Judge Robinson recently evaluated the sufficiency of plaintiff’s patent infringement claims under Twombly and Iqbal. Judge Robinson found that plaintiff’s direct infringement claims passed muster. Id. at 5. Plaintiff’s indirect infringement claims, however, did not fare as well. Plaintiff alleged that “users of defendants’ subscription units commit the requisite acts of direct infringement required for indirect infringement liability[,]” and that “defendants knew or should have known of the [patent-in-suit] before the infringing acts occurred because some of defendants entered into licensing agreements with a third party and obtained rights to two patents that cite the [patent-in-suit] as prior art[.]” Id. at 6. Judge Robinson found that plaintiff did not allege sufficient facts to allow the court to infer that defendants had knowledge of the patent-in-suit, because “the link between the [patent-in-suit] and defendants involved in licensing agreements with a third party is too tenuous to sustain an allegation of knowledge.” Id. at 7-8. Plaintiff’s joint infringement claims failed because its complaint “did not provide specific facts explaining any alleged relationships among defendants,” or that “any defendant  exercise[ed] ‘control or direction’ over the allegedly infringing acts of other parties.” Id. at 12.