Judge Sleet recently reversed a jury's finding of infringement under the doctrine of equivalents, holding that prosecution history estoppel precluded a finding of infringement. Energy Transp. Grp., Inc. v. Sonic Innovations, Inc., C.A. No. 05-422-GMS (D. Del. June 7, 2011). The patent at issue pertained to "a host controller for programmable ditigal hearing aid system." Id. at 23. The court agreed with the accused infringer that "[t]he prosecution history shows that the patentee amended the patent application and introduced new claims that are similar to broader claims previously rejected[,]" and stated that the "newly added limitation that narrows the claim" created "a rebuttable presumption of surrender[.]" Id. at 24. Although the patentee claimed that "the limitation in question was not added to overcome prior art[,]" Judge Sleet found that this "argument is not persuasive and is irrelevant as a matter of law." Id. at 24-25. The patentee attempted to use "this prior art argument in an attempt to rebut the presumption of estoppel based on a 'tangential relation[,]'" but the court stated that the tangential relation exception to prosecution history estoppel is irrelevant "'unless it is 'clear' that the rationale underlying the amendment is only peripheral to the alleged equivalent[.]'" Id. at 25 (citations omitted). Thus, Judge Sleet held that the jury's verdict that the asserted claims "are infringed under the doctrine of equivalents cannot stand." Id. at 26.
Judge Robinson denied a motion for reconsideration of her November 18, 2010 opinion in Kenexa Brassring, Inc. v. Taleo Corporation because the motion was untimely and not effected by the change in law set forth in the Federal Circuit's opinion in Centillion Data Sys., LLC v. Qwest Commc'ns Int'l, Inc. C.A. No. 07-521-SLR, Memo. Order (D. Del. May 26, 2011). The Court found that plaintiff's motion was filed more than five months after her opinion in violation of Local Rule 7.1.5 which requires that motions for reargument be filed within 14 days "after the Court issues its opinion or decision." Id. at 2 (internal citations omitted).
The Court further found that plaintiff's motion failed on the merits. The Federal Circuit's opinion in the Centillion case dealth with "use" for purposes of infringement and found that for "use" to constitute infringement, "a party must put the invention into service . . ." and "use each and every element . . . of a claimed [system]." Id. at 2-3 (internal citations omitted). Here, defendant did not "use" the "entire claimed system" and therefore Centillion does not change the Court's analysis. Id. at 3.
Last week, Judge Robinson issued an opinion in Accenture Global Serv. v. Guidewire Software, Inc., C.A. No. 07-826-SLR (D. Del. May 31, 2011). The case involves patents directed towards the processing of insurance claims. The Court previously stayed the case pending the Supreme Court's decision in Bilski. Last week, Judge Robinson granted the motion for invalidity of the patents at issue because they are directed towards abstract and unpatentable ideas in light of the Supreme Court's decision in Bilski. According to the Court,
The court concludes that the '284 and '111 patents are directed to abstract and, therefore, unpatentable, methods and systems for generating file notes and tasks to be performed for insurance claims. . . . The patents are directed to concepts for organizing data rather than to specific devices or systems, and limiting the claims to the insurance industry does not specify the claims sufficiently to allow for their survival.Id. at 12.
In Abbott Labs. v. Lupin Ltd., C.A. No. 09-152-LPS (D. Del. May 19, 2011) (mem. op.), Judge Stark denied a motion by Abbott to preclude invalidity defenses based on prior art references that were not disclosed until sixteen weeks after the close of fact discovery. Judge Stark stated that
Lupin's failure to supplement its contention interrogatories, in the circumstances of this case, was not unduly prejudicial to Abbott. Abbott had more than three months to respond to Lupin's opening expert reports. . . . Abbott concedes that it was able to address Lupin's tardy invalidity arguments in its rebuttal report.Id. at 8. Judge Stark also noted that there was no potential disruption of the trial date, no evidence of bad faith or willfulness, and that the overall balance does not favor exclusion.
The opinion also used interesting language to address a procedural point regarding motions. During the briefing to exclude, Lupin filed a motion for leave to file a sur-reply brief on Abbott's motion to exclude. Abbott responded by stating that they "do not oppose" the sur-reply, but that they "ask to be permitted to respond to Lupin's surreply." D.I. 134. According to Judge Stark:
The Court will deny Abbott's request. The proper way for Abbott to have made this request would have been in a separate motion. See D. Del. L.R. 7 .1.2( a) ("Unless otherwise ordered, all requests for relief shall be presented to the Court by motion."). The Court should not have to go hunting for hidden motions that are embedded in parties' briefs on other motions.Id. at 9-10.
The Annual Luncheon with the U.S. District Court for the District of Delaware is scheduled for June 17, 2011 from 12 pm to 2 pm at the Hotel du Pont. The luncheon will feature a presentation by The Honorable Gregory M. Sleet of the 2011 Annual Report of the U.S. District Court for the District of Delaware as well as the annual meeting of the Delaware Chapter of the Federal Bar Association and the election of the 2011-2013 Executive Board. Please RSVP by June 8. More information can be found in flyer below.
Special Master Poppiti: Without Bad Faith, Sanction for Untimely Disclosure of Prior Art Limited to Monetary Sanctions
In Apeldyn Corp. v. AU Optronics Corp., C.A. No. 08-568-SLR (D. Del. May 25, 2011), Special Master Poppiti recently addressed a party's failure to disclose five prior art references until it filed an expert report four days after the opening expert report deadline. Id. at 6. Although Special Master Poppiti found that the failure to timely disclose these prior art references was neither "substantially justified" nor "harmless" as required by Fed. R. Civ. P. 37(c)(1), he stated that, absent a showing of bad faith, the appropriate sanction was not a striking of the untimely expert report. Id. at 6-13. Rather, the Special Master found that the appropriate sanction was an award of the costs and fees that the plaintiff would incur in responding to the late-filed expert report, along with the costs and fees incurred in bringing the motion to strike. Id. at 13.
The District Court announced yesterday that Christopher J. Burke, Esq. has been chosen as the newest Magistrate Judge for the District of Delaware. Christopher Burke fills the vacancy left by Judge Stark when he was elevated to fill the vacancy left by Judge Jordan. Mr. Burke is currently an Assistant United States Attorney for the District of Delaware and the chair of the Delaware Chapter of the Federal Bar Association's Federal Trial Practice Seminar.
A link to the District Court announcement is below.
In Oracle Corp. v. Parallel Networks, LLP, Civ. No. 06-414-SLR (D. Del. May 6, 2011), Judge Robinson issued a memorandum order that clarified the court’s construction of “dispatching said request to said page server[.]”
The court originally construed the language to mean “[a]nalyzing a request to make an informed selection of which page server should process the request based on a variety of information (both static and dynamic).” Id. at 1. But the parties questioned whether dispatching could be “based on static information, dynamic information, or both.” Id. Noting that the court’s original construction was “internally inconsistent[,]” the court clarified its construction to allow the claim to be satisfied by “[e]ither a variety of dynamic information about a page server or a variety of both static and dynamic information about a page server[.]” Id. at 2. The court also noted that both its original and clarified constructions excluded dispatchers that dispatch requests based on static information alone. Id. at 2-3.
Today, Judge Robinson denied the defendants' motion for reconsideration of the Court's May 20, 2011 grant of a temporary restraining order in In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litigation, 09-MD-2118-SLR (D. Del. May 24, 2011). In denying the motion for reconsideration, Judge Robinson stated that in the context of a post-trial TRO, the "likelihood of success" factor is "simply . . . one of the four factors to be considered when granting or denying an injunction." Id. at 3. Thus, the plaintiffs were not required to show a likelihood of success on the merits in order to obtain a temporary restraining order. Id. Further, although it is true that the defendants "will suffer harm from the issuance of a TRO" because the defendants already launched their generic product, Judge Robinson found that the balance of harms still weighed in favor of the plaintiffs because "Mylan brought the harm on itself" by choosing to launch its generic before the plaintiffs exhausted their appeals. Id. at 4.
Judge Robinson recently granted the plaintiffs' motion for a temporary restraining order pending appeal in an ANDA case, enjoining the defendants "from manufacturing, using, offering to sell, or selling generic extended release cyclobenzaprine products" as long as "plaintiffs agree to seek an expedited appeal and remove their generic product from the market." In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litigation, 09-MD-2118-SLR (D. Del. May 20, 2011).
First, Judge Robinson found that "plaintiffs' success on appeal is just as likely as not," and therefore the "[likelihood of success] factor marginally supports a temporary restraining order." Id. at 6. Second, the Court stated that "[i]n every ANDA case there is a likelihood of irreparable harm for the name brand manufacturer as the generics have a ready-made market to flood as soon as they receive approval to release their products[,]" and therefore the "[irreparable harm] factor favors plaintiffs." Id. Third, Judge Robinson found that "[t]he harm to the defendants from a temporary restraining order is minimal[,]" and therefore the "[harm to defendants] factor favors plaintiffs" despite the fact that the defendants "claim that they have already launched their products[.]" Id. at 6. "Defendants bore the risk of a restraining order both from this court and the Federal Circuit." Id. at 7. Fourth, the Court found that "[t]he public interest factor is neutral[,]" stating that "[t]he public has both an interest in strong patent protection that encourages innovation as well as the ability to purchase inexpensive drugs." Id. at 7. Thus, Judge Robinson granted the temporary restraining order pending appeal as long as the plaintiffs agreed "to seek an expedited appeal and remove their generic product from the market." Id.