Delaware IP Law Blog

4/29: Mosaid Technologies, Inc. v. Shoretel Inc. (patent infringement)
4/29: Pfizer Inc., Warner Lambert Company, LLC, CP Pharmaceuticals International CV and Northwestern University v. Actavis Elizabeth LLC and Actavis Inc. (patent infringement)
4/29: Pfizer Inc., Warner Lambert Company, LLC, CP Pharmaceuticals International CV and Northwestern University v. Alphapharm Pty Ltd. and Mylan Pharmaceuticals Inc. (patent infringement)
4/29: Pfizer Inc., Warner Lambert Company, LLC, CP Pharmaceuticals International CV and Northwestern University v. Cobalt Laboratories Inc. and Cobalt Pharmaceuticals, Inc. (patent infringement)
4/29: Pfizer Inc., Warner Lambert Company, LLC, CP Pharmaceuticals International CV and Northwestern University v. Lupin Ltd. and Lupin Pharmaceuticals Inc. (patent infringement)
4/29: Pfizer Inc., Warner Lambert Company, LLC, CP Pharmaceuticals International CV and Northwestern University v. Sandoz Inc. (patent infringement)
4/29: Pfizer Inc., Warner Lambert Company, LLC, CP Pharmaceuticals International CV and Northwestern University v. Sun Pharma Global Inc., Sun Pharmaceutical Industries Ltd. and Sun Pharmaceutical Industries Inc. (patent infringement)
4/29: Pfizer Inc., Warner Lambert Company, LLC, CP Pharmaceuticals International CV and Northwestern University v. Teva Pharmaceuticals USA, Inc. and Teva Pharmaceutical Industries Ltd. (patent infringement)
4/29: Pfizer Inc., Warner Lambert Company, LLC, CP Pharmaceuticals International CV and Northwestern University v. Wockhardt Limited and Wockhardt USA, LLC (patent infringement)
4/29: Pronova BioPharma Norge AS v. Apotex Corp. and Apotex Inc. (patent infringement)
4/29: Pronova BioPharma Norge AS v. Par Pharmaceutical Inc. and Par Pharmaceutical Companies, Inc. (patent infringement)
4/30: Alcon Research Ltd. v. Barr Laboratories Inc. (patent infringement)
4/30: Hologic Inc. and Suros Surgical Systems Inc. v. Ethicon Endo-Surgery LLC and Ethicon Endo-Surgery Inc. (patent infringement)
5/4: ePlus Inc. v. Perfect Commerce Inc., SciQuest Inc. and Lawson Software Inc. (patent infringement)
5/6: YMax Communications Corp. v. Globalstar Inc. and Spot LLC (patent infringement)
5/7: Allergan Inc. v. Barr Laboratories Inc. (patent infringement)
5/12: Netstal-Maschinen AG v. Davis-Standard, LLC (trademark infringement)

Judge Farnan recently construed the claim terms in a patent related to a combination of "(1) the (-) -enantiomer of an antiviral agent known as BCH-189...and (2) the well-known HIV antiviral agent AZT." Glaxo Group Ltd. v. Teva Pharmaceuticals USA, Inc., C.A. No. 07-713-JJF, Memo. Order (D. Del. Apr. 30, 2009). The following claim terms were construed:

- "method for the treatment of a mammal including man, suffering from or susceptible to infection by HIV" (the Court found no construction necessary)
- "form of dosage unit"
- "pharmaceutically acceptable carrier"

The parties also submitted the terms "comprises" and "includes" for construction. The Court chose to adopt a standard jury instruction either prepared by the AIPLA or one agreed upon by the parties as to the meaning of those terms. Id. at 3-4.

Glaxo Group Ltd. v. Teva Pharmaceuticals USA, Inc., C.A. No. 07-713-JJF, Memo. Order (D. Del. Apr. 30, 2009).

A plaintiff's place of residence will not excuse the reasonable diligence requirement to discover a trade secret claim under 6 Del. C. Section 2006. In fact, a foreign plaintiff will be deemed to be on notice once a patent is filed in the United States containing the trade secret and therefore any trade secret claim must be brought within three years following the filing date of that patent. Raza v. Siemens Medical Solutions USA, Inc., C.A. No. 06-132-JJF, Memo. Op. (D. Del. Apr. 16. 2009).

Raza v. Siemens Medical Solutions USA, Inc., C.A. No. 06-132-JJF, Memo. Op. (D. Del. Apr. 16. 2009).

Judge Farnan found an English professor's declaration opining on the proper function of a comma to be admissible under Rule 702 as part of the claim construction process. To the extent a party argues that it contradicts the intrinsic evidence or the expert does not have relevant technical expertise, however, it will impact the weight the Court gives the opinion. American Patent Development Corporation, LLC v. Movielink, LLC, C.A. No. 07-605-JJF, Memo. Op. (D. Del. Mar. 27, 2009).

The Court also construed the following terms found in the patent-in-suit that relates to a "simple, inexpensive system for limiting the use of a downloaded video program purchased by a customer":

- "a digital data stream comprising said video product, and data establishing a limit for authorized viewing of said video product"
- "a digital data stream comprising said video product, data establishing a time period during which viewing of said video product is authorizied"
- "central station"
- "decoding said data establishing a limit"
- "comparing an output of a local clock signal generator with said result of said decoding step"
- "storing a result of said decoding step"
- "erasing said video product"
- "user site" (the Court found no construction necessary)
- "video product" (the Court found not construction necessary)
- "data establishing a limit for authorized viewing of said video product" (the Court found no construction necessary)

Of note, plaintiff based some proposed constructions on dictionary definitions that postdated the filing of the patent and the Court refused to adopt constructions based on those proposed definitions. Id. at 28.

American Patent Development Corporation, LLC v. Movielink, LLC, C.A. No. 07-605-JJF, Memo. Op. (D. Del. Mar. 27, 2009).

Errata Order

Chief Judge Sleet recently granted, in part, plaintiff’s motion to enforce the parties’ settlement agreement to dismiss the case. Rohm and Haas Electronic Materials, LLC v. Honeywell International, Inc., C.A. No. 06-297-GMS, Memo. (D. Del. Apr. 16, 2009). The settlement agreement was the product of much negotiation. Id. at 2-6. Counsel for both parties advised the Court of the agreement and that signed agreements were being exchanged. Id. at 6. Finally, the agreement was memorialized by a joint letter filed with the Court whereby counsel also stated that a stipulation of dismissal would be submitted. Id. Before entering into settlement negotiations, the PTO granted defendant’s request to have plaintiff’s patents reexamined. Id. at 2. Amidst the negotiations for settlement, plaintiff met with the PTO to discuss the pending reexaminations. Subsequently, the PTO sent a copy of the “interview summary” to defendant at the address they had on file. Id. at 4. Defendant’s refusal to honor the settlement agreement stemmed from plaintiff’s interview with the PTO and failure to disclose the interview. Id. at 8. Chief Judge Sleet determined that a final settlement agreement had been reached based on the extensive negotiations, and the communications with the Court that the agreement had been “finalized.” Id. 10-11. The fact that the agreement had not been signed did not mean the agreement was not finalized, the parties conduct was evidence that the agreement was intended to be a final agreement. Moreover, plaintiff had no duty to disclose the PTO interview to defendant because the interview was a “non-event.” Id. at 13-14.

Rohm and Haas Electronic Materials, LLC v. Honeywell International, Inc., C.A. No. 06-297-GMS, Memo. (D. Del. Apr. 16, 2009).

4/4: Mallinckrodt Inc., Liebel-Flarsheim Co. v. E-Z-EM Inc. and ACIST Medical Systems, Inc. (patent infringement)
4/6: Perren-Vibes Music, Inc., Universal Polygram International Publishing, Inc., Roger Ball, Alan Gorric and Owen McIntyre D/B/A Average Music, Stone City Music, Bleu Disque Music, Co., Inc., WB Music Corp., Webo Girl Publishing Co., Sons of K'OSS Music, Inc., Girlsongs and Music Sales Corporation v. 32 Paws, Inc. and John Berdini (copyright infringement)
4/7: Eidos Communications LLC and Message Routes LLC v. Skype Technologies, SA and Skype Inc. (patent infringement)
4/9: Wyeth v. Cadila Healthcare Limited and Zydus Pharmaceuticals (USA) Inc. (patent infringement)
4/9: Meda Pharmaceuticals Inc. v. Sun Pharmaceutical Industries Ltd. (patent infringement)
4/13: Neev v. Therative Inc. (patent infringement)
4/20: Brinkmeier v. Graco Children's Products Inc. (patent infringement)
4/21: Tyco Healthcare Group v. C.R. Bard, Inc. and Davol, Inc. (patent infringement)
4/21: Schering-Plough Healthcare Products Inc. v. Neutrogena Corp. (patent infringement)
4/22: Eli Lilly & Co. and The Trustees of Princeton University v. Barr Laboratories, Inc. (patent infringement)
4/23: JPMorgan Chase Bank, N.A. v. LML Payment Systems Corp. and Beanstream Internet Commerce Inc. (patent infringement)
4/23: Bone Care International LLC and Genzyme Corp. v. Eagle Pharmaceuticals, Inc. (patent infringement)
4/23: Pronova BioPharma Norge AS v. Teva Pharmaceuticals USA, Inc. and Teva Pharmaceutical Industries Ltd. (patent infringement)
4/24: HRP Creative Services Co., LLC v. FPI-MB Entertainment, LLC (trademark infringement and unfair competition)
4/24: Novartis Pharmaceutical Corp., Novartis International AG and Novartis International Pharmaceutical Ltd. v. Teva Pharmaceuticals USA, Inc. (patent infringement)
4/24: Novartis Pharmaceutical Corp., Novartis International AG and Novartis International Pharmaceutical Ltd. v. Watson Pharmaceuticals Inc. and Watson Laboratories, Inc. (patent infringement)
4/24: Novartis Pharmaceutical Corp., Novartis International AG and Novartis International Pharmaceutical Ltd. v. Anchen Pharmaceuticals, Inc. (patent infringement)

In a recent case, Defendant Tivo, Inc. (“Tivo”), moved the Court to dismiss Plaintiffs’ (collectively, “Echostar”) case pursuant to the Court’s power under the Declaratory Judgment Act. Dish Network Corp. v. Tivo, Inc., C.A. No. 08-327-JJF, Memorandum Opinion (D. Del. Mar. 31, 2009).

The backstory … Tivo successfully sued Echostar for patent infringement before Judge Folsom in the Eastern District of Texas. Echostar redesigned its products and alleged that its redesigned products no longer infringed Tivo’s patents. Tivo disagreed and pursued a contempt action before Judge Folsom in Texas. Id. at 2. Meanwhile, Echostar brings this action in the District of Delaware to “remove the ‘cloud’ of uncertainty” surrounding its products.

The conflict begins … Judge Farnan begins his analysis of Tivo’s motion to dismiss with a hint of foreshadowing. Judge Farnan points out that Tivo “only” argues the Court should “exercise its discretion to decline jurisdiction over the instant declaratory judgment suit.” Id. at 6. Nevertheless, the Court is “unpersuaded” by Tivo’s arguments for dismissal stating that the only issue is whether there is enough of a difference between Echostar’s redesigned products and the original infringing products so that the proper forum for adjudication is the contempt proceedings before Judge Folsom in Texas. Id. at 7-8.

The plot thickens … Judge Farnan denies Tivo’s motion because whether Tivo can show a “colorable difference” between the products is a decision best made by Judge Folsom but not an “adequate basis” upon which the case can be dismissed. Id. at 9. The story climaxes when Judge Farnan, sua sponte, raises the idea to transfer the case to the Eastern District of Texas, reminding Tivo that the idea of “an alternative motion to transfer” should have been raised by them “with the instant [m]otion.” Id. at 10.

Moral of the story … never forget to give the Court the basis to find in your favor.

Dish Network Corp. v. Tivo, Inc., C.A. No. 08-327-JJF, Memorandum Opinion (D. Del. Mar. 31, 2009).

In a recent decision, district judge Joseph J. Farnan rejected a "colloquial" claim definition in favor of the "textbook" meaning:

"[T]he dispute between the parties primarily centers around whether 'power' should be interepreted according to its ordinary, 'textbook' definition or whether it should be interpreted according to a 'colloquial' definition, proposed by Plaintiff . . . . Plaintiff contends that a person of ordinary skill in the art, upon reading the specification . . . , would understand that the patent embraces the colloquial definition of 'power' . . . . Although Plaintiff correctly notes that the specification does not explicitly adopt the textbook definition of 'power,' the intrinsic record also does not clearly reject this textbook definition."

Moreover, even Plaintiff's own expert used the term in its "classic sense." As a result, the Court rejected the colloquial use and adopted the textbook meaning.

Symbol Techs. Inc. v. Janam Techs. LLC, C.A. No. 08-340-JJF (D. Del. Mar. 31, 2009) (adopting in part magistrate's report and recommendation).

Chief Judge Sleet recently granted defendant Rymed Technologies, Inc.'s motion to dismiss a patent infringement suit, where Rymed had previously filed a declaratory judgment suit against the plaintiff in another district. Vygon v. Rymed Technologies, Inc., C.A. No. 08-172-GMS, Memo. Order (D. Del. March 31, 2009). Specifically, the other district court had already found that the other action was first-filed, that defendant had connections to that other forum and that its connections to Delaware were tenuous. Therefore, Judge Sleet adopted the findings of the Tennessee Court's Order and dismissed the case so as to avoid economic waste and duplicative litigation.

Vygon v. Rymed Technologies, Inc., C.A. No. 08-172-GMS, Memo. Order (D. Del. March 31, 2009).

Businesses continue to struggle with the "post-MedImmune" environment and determining when a sufficient "case or controversy" exists to file a declaratory judgment suit against a patentee. Judge Robinson recently provided some further guidance on this issue in an even more particular area of interest--where the patentee is a patent troll. Hewlett Packard Co. v. Acceleron, LLC, C.A. No. 07-650-SLR, Memo. Op. (D. Del. Mar. 10, 2009).

As with every declaratory judgment suit, the factual scenario is highly relevant, so I wil lay out some of the most important facts here:

- The initial contact was made by the patentee "patent troll's" president to the declaratory judgment plaintiff's excecutive vice president/general counsel/secretary. The letter did not identify a particular product by tradename but did mention the patent by number and its relevance to a certain type of product.

- Shortly thereafter, an attorney for the declaratory judgment plaintiff responded by asking for a mutual standstill.

- The patentee would not agree to this standstill request and shortly thereafter this declaratory judgment suit was filed.

Hewlett Packard asked the Court to take judicial notice of a complaint Acceleron filed in another district eleven days after the Delaware suit asserting infringement of the same patent against HP. Because that suit "post-dated" the filing of the Delaware suit it does not relate to the whether declaratory judgment jurisdiction existed at the time this lawsuit was filed and therefore the Court would not consider it. Id. at 7.

The Court found that although Acceleron did identify the product line and provided a correspondence deadline, that these factors alone were insufficient for jurisdiction where the defendant's direct contact with plaintiff did not reference or directly imply litigation and there was no history of litigation by this defendant regarding this patent. Id. at 13.

Judge Robinson noted that courts should "take defendant's business model into consideration" and appreciated that correspondence from a so-called "patent troll" may evoke a different reaction than from a direct competitor but that the facts in this case showed that litigation was "too spectulative" to find jurisdiction appropriate. Id.

Hewlett Packard Co. v. Acceleron, LLC, C.A. No. 07-650-SLR, Memo. Op. (D. Del. Mar. 10, 2009).