Chief Judge Sleet recently construed the terms of a pharmaceutical patent related to treatment of dysuria. In re: Alfuzosin Hydrochloride Patent Litigation, MDL Docket No. 08-md-1941-GMS, Order (D. Del. May 20, 2009). The following claim terms were construed:
- "effective dysuria controlling non-toxic amount of alfuzosine"
- "bladder neck disease"
- "neurological disorder"
- "benign hypertrophy of the prostate of alpha-adrenergic origin"
Specifically, the Court rejected certain proposed constructions where the party asked the Court to "import examples from the specification into the claims" as "contrary to Federal Circuit precedent." Id.
The District of Delaware was recently asked to decide a discovery dispute over third party documents related to litigation pending in California and Texas. Software Rights Archive, LLC v. Google Inc., Yahoo! Inc., IAC Seach & Media, Inc., AOL LLC and Lycos, Inc., Misc. No. 09-017-JJF, Opinion (D. Del. May 21, 2009). Specifically, the movants (Google Inc., Yahoo! Inc., IAC Seach & Media, Inc., AOL LLC and Lycos, Inc.) were seeking documents from the third parties (Delaware entities) related to: (1) jurisdiction; (2) "respondent's efforts, if any, to 'monetize' the patents-in-suit"; and (3) the patents and their inventors. Id. at 2.
Judge Farnan held that although the documents may be available from the opposing party, there is no rule that prohibits a party from also requesting those same documents from a third party or requiring them to request them from a party first. Id. at 4. Moreover, to ensure the "completeness" of discovery, "where a party requests documents from a non-party that are likely to be in the possession of an opposing party, production of documents is appropriate where those documents constitute a 'non-well-defined set' 'whose completeness is not readily verifiable.'" Id. at 6. (internal citations omitted). Therefore, the Court ordered the third parties to produce the documents despite the fact that the opposing party might also be in possession of the documents.
Plaintiff Quinstreet Inc. filed a declaratory judgment suit in Delaware against a patent licensing firm EpicRealm for non-infringement of two patents. Quinstreet Inc. v. Parallel Networks, LLC, C.A. No. 06-495-SLR, Memo. Order (D. Del. May 28, 2009). A little over a year later, EpicRealm after its dissolution, in an unopposed motion, substitutes pursuant to Fed. R. Civ. P. 25(c), Parallel Networks as the defendant. Id. at 2. Parallel later moved to dismiss a third party declaratory judgment complaint for lack of personal jurisdiction. The Court found that the Delaware long-arm statute is inapplicable where voluntary substitution occurs under Rule 25(c). Furthermore, where in personam jurisdiction existed over the original party, in this case a Delaware limited partnership, the personal jurisdiction continues so long as service of the motion to substitute was effected. Id. at 5-6.
In a patent infringement action, Magistrate Judge Mary Pat Thynge recently granted defendant SPI Pharma, Inc.’s (“SPI”) motion to amend their answer despite the deadline for amending pleadings having passed in May 2007. Roquette Frère v. SPI Pharma, Inc., C.A. No. 06-540-GMS (D. Del. May 21, 2009). SPI’s motion was hotly contested by plaintiff Roquette Frères (“Roquette”), despite Roquette amending their complaint twice (once after the deadline to do so had passed). Id. at 1. SPI initially responded to Roquette’s second amended complaint on July 13, 2007, but filed the present motion to amend on December 31, 2007, in order to include a defense and counterclaim based on inequitable conduct. Id. at 2. After deposing the inventors of the patent-in-issue in November 2007, testimony was elicited allegedly supporting a claim that “Roquette and/or its agents or representatives knowingly and intentionally misled the PTO regarding the content of prior art described in the . . . patent specification, and withheld material information.” Id. at 2-3. Magistrate Judge Thynge noted that “prejudice to the non-moving party is the ‘touchstone for the denial of an amendment.’” Id. at 12. However, Roquette claimed they would be prejudiced only because they “would have to address a new issue and rework its case, thereby incurring additional costs.” Id. When disregarding Roquette’s argument, Magistrate Judge Thynge stated that the inventors’ knowledge regarding the patent specification and their representations to the PTO were “within the control of Roquette.” Id. Moreover, SPI’s motion to amend was filed four months before the close of discovery and before a trial had been scheduled. Finally, Roquette failed to present evidence that SPI brought the motion in bad faith or that amendment would be futile. Roquette focused only on their disagreement with the merits of the inequitable conduct allegations, while failing to point to deliberate conduct or SPI’s failure to allege facts that could support a finding in its favor. Id.Roquette Frère v. SPI Pharma, Inc., C.A. No. 06-540-GMS (D. Del. May 21, 2009)
In a patent infringement case, Chief Judge Sleet recently denied Defendant’s motion to dismiss for lack of personal jurisdiction despite the fact that Defendant (a Georgia corporation with its principal place of business in Georgia) has never had an office in Delaware, is not licensed to conduct business in Delaware and has never had any employees in Delaware. W.L. Gore & Assoc., Inc. v. Label Tech., Inc., No. 08-111-GMS, at 1 (D. Del. May 15, 2009). Judge Sleet determined that Defendant was subject to specific jurisdiction under Delaware’s long-arm statute because Defendant manufactures and sells automobile parts “knowing that its products would be installed into vehicles at Chrysler’s plant in Newark, Delaware.” Id. at 4 Any injury resulting from introducing Defendant’s product into the Delaware market is “sufficient to permit a Delaware court to exercise jurisdiction over [Defendant] under sections 3104 (c)(1) and (c)(4) of title 10 of the Delaware Code” Id. at 6. Although Defendants “contacts” with Delaware was minimal, due process is satisfied because Delaware’s interest in “discouraging injuries that occur within the state, which extends to patent infringement actions[,] is not outweighed by the burden on [Defendant] of litigating this action in Delaware.” Id. at 6-7.
Last week, district judge Sue L. Robinson rejected a novel argument concerning the evidentiary burden on infringement under the doctrine of equivalents. Defendant claimed that, because it held a license to certain compounds under one patent, plaintiff had to show equivalency under its own patent by clear and convincing evidence. After noting that defendant "freely admits that it cannot cite a case requiring infringement to be proven" under this standard, the Court declined to upset the traditional approach:
"The court finds defendant's position untenable and declines to be the first (and only) court to depart from an extended history of patent infringement jurisprudence applying the preponderance of the evidence standard."
It will be interesting to see whether defendant, as acknowledged by the Court, will pursue its appeal of this novel question.
Yesterday, the District of Delaware came one step closer to obtaining a new district judge. A local newspaper is reporting that three names have been sent to the White House as candidates to fill the 2.5-year-old vacancy on the federal bench. Reportedly named for consideration are: the Honorable Leonard P. Stark, Andre G. Bouchard, and Mary B. Graham. Judge Stark has served as a D. Del. magistrate judge since 2007, while Bouchard and Graham are partners at Wilmington law firms.
Congratulations to Judge Stark, Andre, and Mary on this accomplishment. No matter who is eventually nominated and confirmed, Delaware will be well served by any of these candidates.
The Delaware IP Law Blog's very own Andrew Lundgren was honored by Young Conaway Stargatt & Taylor, earlier this year for his extraordinary pro bono contributions to the community and bar. In recognition of these contributions he was awarded the 2008 William F. Taylor Award (Associate Pro Bono Award).
In 2007 and 2008 Andrew logged almost 300 hours working with Young Conaway Partner John Shaw in a Prisoner Civil Rights matter. This case is a Federal Civil Panel assignment from the District Court and involves First Amendment retaliation claims.
In 2008, Andrew also served as an Associate Board Member for the Delaware Board of Bar Examiners, assisted on a Delaware Volunteer Legal Services matter, and continued to serve on the Board of the St. George's Society. He also recently completed a two year term as the Chair of the DSBA New Lawyers Section. Over all, in 2008 Andrew has devoted over 240 hours to YCS&T's pro bono projects.
Can a plaintiff substitute in the correct party to cure a lack of subject matter jurisdiction once the defendant has moved to dismiss? According to District of New Jersey judge Noel L. Hillman, sitting by designation, the answer is no.
In the underlying litigation, Vianex Delaware LLC brought suit for copyright infringement. The only trouble was that this particular Vianex entity did not own the copyright and thus had no standing to sue.
After defendant moved to dismiss, Vianex sought to amend its complaint to substitute the correct plaintiff. The Court rejected the maneuver, noting that it lacked authority to permit the amendment:
"It has long been the case that the jurisdiction of the court depends upon the state of things at the time of the action brought. This time-of-filing rule is hornbook law (quite literally) taught to first-year law students in any basic course on federal civil procedure."
Thus, "[b]ecause Vianex Delaware LLC did not have standing to assert its claims when it filed suit, the Court does not have subject matter jurisdiction to consider anything filed thereafter."
The dictates of subject-matter jurisdiction are strong enough to withstand what the Court itself acknowledged may be a "technical and wasteful exercise" in dismissing the complaint. Given the strength of this command, there may be a lesson beyond caveats about drafting pleadings. When analyzing a Court's foundational authority to hear our cases, all facets of subject-matter jurisdiction must be at the top our list.
Judge Robinson recently construed the following claim terms in patents related to technology involving casino gaming devices:
- "bonus play period"
- "Issuing a 'command' 'responsive to a predetermined event'"
- "Issuing a 'command' or 'message' 'responsive to a predefined event'"
- "Issuing a command over the network to each of said preselected gaming devicdes responsive to initiation of the bonus play period."
- "Paying 'in accordance with' the 'command' or 'message'"
- "Issuing a command over the network including data establishing criteria to cause a bonus to be paid via one of said selected gaming devices upon the occurrence of a predetermined event."
- "Generating a message including data establishing criteria to cause a bonus to be paid via one of said selected gaming devices upon the occurrence of a predetermined event."
- "Transmitting a pay command from the controller to the gaming device upon the occurrence of the predetermined event."
- "Paying the bonus via the gaming device responsive to the receipt of the pay command."
- "Transferring promotional credit in the account to the gaming device."
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