July 1, 2011

Judge Robinson: ANDA Defendant Enjoined from Launching Generic Drug Until Court's Decision Issues

In OSI Pharmaceuticals, Inc. v. Mylan Pharmaceuticals, Inc., C.A. No. 09-185-SLR (D. Del. June 30, 2011), Judge Robinson recently issued an order enjoining an ANDA defendant "from launching its generic drug until the court's decision issues" because the stipulated post-trial briefing schedule would exceed "what the court estimates to be the expiration of the 30-month stay invoked by operation of the filing of this lawsuit[.]" Id.

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June 29, 2011

Judge Sleet warns parties that a condescending tone in court submissions is inappropriate and unhelpful to the court

After a 3-day bench trial in an ANDA case, Judge Sleet recently found that defendant’s proposed product did not infringe plaintiffs’ patent. Astrazeneca LP v. Mylan Pharms. Inc., C.A. No. 08-453-GMS (D. Del. June 23, 2011). In the Memorandum, Judge Sleet warned future parties about the tone they take in submissions to the court. In its post-trial brief, Astrazeneca mocked Mylan’s expert for failing to produce evidence in support of an analogy comparing ethycellulose to pasta, criticizing the analogy as a ‘“creative explanation [that] was supported by no experimental results or scientific observations (from either the laboratory or the kitchen).”’ Id. at 11 n.8. (alteration in original). Mylan mocked Astrazeneca’s expert’s explanation of material he examined by stating in their reply brief ‘“In their excitement to hear that Dr. Davies found something in the bottom of his Petri dish . . .”’ Id.

Judge Sleet warned future parties “that such condescension is unbecoming an attorney appearing before a federal court, and is in no way constructive or beneficial to the court’s task of weighing the evidence presented at trial and reaching its findings of fact and conclusions of law.” Id.

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June 20, 2011

Special Master White: Discovery Opinion in XPRT Ventures

Last week, Special Master David A. White issued an opinion on a number of discovery issues relating to a motion to compel in XPRT Ventures, LLC. v. eBay, Inc., C.A. No. 10-595-SLR (D. Del. June 15, 2011). The motion sought to expand the scope of document discovery by increasing the applicable time period and number of custodians. Special Master White granted the motion in part, based on the potential relevance of the evidence, but refused to order document production from individuals not employed by the defendants. Id. at 26-27. Documents of former employees that are still in the possession, custody or control of the defendants, however, are subject to discovery. Id. at 30.

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June 20, 2011

Judge Robinson: Motion to Transfer Denied

On June 8th, Judge Robinson denied two motions to transfer. We reported on one last week -- Marvell International Ltd. v. Link_A_Media Devices Corp., C.A. No. 10-869-SLR (D. Del. June 8, 2011). The second denial, in XPRT Ventures, LLC v. eBay, Inc., C.A. No. 10-595-SLR (D. Del. June 8, 2011), again emphasized that (1) the defendants are Delaware corporations, (2) that judicial congestion in the District of Delaware is not a factor, and (3) that "[i]n this electronic age, there are no substantial burdens associated with discovery or witness availability that support the need to transfer." Id. at 6-7.

One interesting wrinkle in this second denial is that the plaintiff in XPRT had previously disclosed some of the subject matter to the defendants under a confidentiality agreement with a forum selection clause. The Court held, however, that the "Agreement's forum selection clause controls only breaches of confidentiality," due to language in the clause stating that it applied to breaches "arising out of this Agreement" and because "the Agreement explicitly states that there is no bar from bringing patent infringement cases." Id. at 6.

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June 20, 2011

Judge Robinson: Motion to Consolidate Cases and Lift Stay DENIED

In Ricoh Company, Ltd. v. Oki Data Corporation, Civ. No. 09-695-SLR (D. Del. Jun. 9, 2011), Judge Robinson denied the plaintiffs' request to consolidate cases and lift stay.

The plaintiffs had represented that the asserted patents were "clearly related" to asserted patents in an earlier suit between the parties. In response, Judge Robinson noted that, even if the court were to assume that the plaintiffs' representations were correct, the court could not accommodate the plaintiffs' request to have additional time for discovery in the court's present 2012 trial calendar. Id. at 1. Judge Robinson also noted that consolidating cases would have turned a six-patent case into an eight-patent case, which would have required even more trial time. Id.

Judge Robinson then denied the plaintiffs' request to lift stay because the "plaintiffs intend to pursue its appeal of the ITC's adverse ruling to the Federal Circuit absent consolidation." Id. at 1-2.

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June 20, 2011

Judge Robinson: Motion to Transfer to N.D. Cal. DENIED

In Everglades Interactive, LLC v. Playdom, Inc., Civ. No. 10-902-SLR (D. Del. Jun. 8, 2011), Judge Robinson denied the defendants' motion to transfer the case from the District of Delaware to the Northern District of California.

The defendants argued, inter alia, that the Northern District of California was "the more convenient and appropriate venue" because Northern California was the principal place of business for the U.S. defendants as well as the plaintiff. Id. at 5. But after noting that all of the U.S. defendants were incorporated in Delaware, id. at 2, the court reiterated -- "consistent with its usual mantra" -- that defendants who choose to incorporate in Delaware "must also bear the burden of being eligible to be haled to Delaware for lawsuits[,]" id. at 6.

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June 20, 2011

Judge Stark: Withdrawal of Motion for Recusal Accepted

In St. Clair Intellectual Property Consultants Inc. v. Matsushita Electronic Industrial Co., Ltd., C.A. No. 04-1436-LPS, C.A. No. 06-404-LPS (D. Del. Jun. 1, 2011), Judge Stark accepted the moving parties' withdrawal of their Motion for Recusal.

Originally, the related cases had been assigned to Judge Stark in his capacity as a magistrate judge for discovery and ADR. Judge Stark had then conducted ADR-related conferences with the parties, some involving ex parte discussions about the merits of the case and the parties' litigation strategies. Id. at 1-2.

As of June 2010, several items were outstanding: the parties had not consented to the jurisdiction of a magistrate judge, "numerous case-dispositive motions" were pending, and there was uncertainty as to which district judge was available to preside at trial. Id. at 2. So Judge Stark stayed the cases and "directed the parties to provide the Court with their views as to how these cases should proceed" -- including whether Judge Stark should recuse himself from presiding at trial as a district court judge due to his participation in ADR-related conferences as a magistrate judge. Id. at 2. One or more of the defendants felt that recusal was appropriate. Id. at 2-3.

In the meantime, on January 10, 2011, the U.S. Court of Appeals for the Federal Circuit decided St. Clair Intellectual Property Consultants, Inc. v. Canon, Inc., Nos. 2009-1052, 2010-1137, 2010-1140 (Fed. Cir. Jan. 10, 2011), rejecting the U.S. District Court for the District of Delaware's construction of disputed claim terms in the same patents asserted in the related cases. Id. at 4.

As a result of the Federal Circuit's decision, the parties in the related cases had agreed that the related cases's posture had changed significantly enough to warrant withdrawal of the moving defendants' Motion for Recusal. Id. at 5-6. Judge Stark accepted the moving parties' withdrawal of their Motion for Recusal, noting that "a judge's duty to not recuse when he or she need not do so is as strong an imperative as a judge's duty to recuse in those limited situations in which recusal is warranted." Id. at 8.


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June 17, 2011

Judge Robinson: Motion to Transfer ANDA Case Granted Where Identical Case Filed in SDNY

In Medicis Pharm. Corp. v. Nycomed US Inc., C.A. No. 10-1099-SLR (D. Del. June 16, 2011), the "plaintiff filed two identical actions against defendant" in the District of Delaware and the Southern District of New York. Id. at 2. The "defendant moved to transfer the instant action to the Southern District of New York[,]" and Judge Robinson granted this motion. Id. at 2. Although the court noted that "plaintiff's choice of forum is given paramount consideration," Judge Robinson stated that "the case at bar shares common questions of law and fact with the first [previously transferred] actions, which are now proceeding in the Southern District of New York." Id. at 4-5. "Thus, it is in the interest of judicial economy to transfer the current lawsuit to the Southern District of New York so that both courts may avoid redundant efforts and the possibility of inconsistent results." Id. at 5.

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June 13, 2011

Judge Robinson: Motion to Transfer DENIED

In Marvell International Ltd. v. Link_A_Media Devices Corp. , C.A. No. 10-869-SLR (D. Del. June 8, 2011), Judge Robinson recently denied defendant’s motion to transfer the action to the Northern District of California. Defendant argued that transfer was appropriate because its principal place of business was in California, the events surrounding the litigation arose outside Delaware, defendant was a regional corporation, relevant documents and non-party witnesses were in California, the court congestion in Delaware, and that plaintiff did not sue on its home turf. Id. at 2. Plaintiff disagreed that transfer was appropriate because defendant was a Delaware corporation, because Delaware court’s have expertise in patent litigation and because defendant has not specified any document or witness that cannot be produced in Delaware. Id. Judge Robinson noted that “plaintiff’s choice of forum is of paramount consideration” and defendant’s burden to prove that transfer is warranted remains unchanged even though plaintiff chose to sue in a forum other than its home turf. Id. at 3. Judge Robinson also noted that “because [defendant] is a Delaware corporation, it has no reason to complain about being sued in Delaware.” Id. at 4. Judge Robinson also found that defendant was an international company, rather than regional, evidenced by its offices around the globe. Id. Furthermore, the congestion of the court was a “non-issue”; and defendant’s argument about the location of discovery was not persuasive because “[i]n this electronic age, there are no substantial burdens associated with discovery or witness availability that support the need for transfer.” Id. at 5.

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June 11, 2011

Special Master Poppiti: Motion to Compel De-Designation of Non-Confidential Information GRANTED

Defendant APP Pharmaceuticals moved to compel the de-designation of information redacted in its motion for leave to file an amended answer and counterclaims of unenforceability and unclean hands. The Medicines Company v. Teva Parenteral Medicines, et al., C.A. No. 09-750-ER, Special Master Order (D. Del. June 30, 2011). Special Master Poppiti granted the motion and held that the disputed redactions were not covered by the "Highly Confidential" or "Confidential" provisions of the case protective order. Id. at 12 and 15. Plaintiff argued that the information was properly redacted because it was "information or data derived from Highly Confidential information." Id. at 12. Although this clause "would certainly encompass a direct quote (or a paraphrase of a direct quote)" from a highly confidential document, "that protection does not extend to general allegations, legal arguments, and factual assertions that do not in any way reveal any such information." Id. at 12-13.


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