November 12, 2010

Sue L. Robinson: No Exception to Policy that Prohibits Testifying Patent-Law Experts

A recent decision by district judge Sue L. Robinson further develops her policy of prohibiting patent-law experts from testifying. As part of a wide-ranging summary judgment opinion - which covers infringement, validity, and enforceability on a number of patents - the Court emphasized that the case presented "no grounds for exception" to this practice:

"The court denies MEMC's motion to admit the expert testimony of [Gooklasian] regarding: (1) 'the context of when and under what circumstances an applicant may make amendments after receiving an [sic] notice of allowance;' (2) 'procedurally how these amendments are evaluated by the [PTO];' and (3) 'how the applicants here avoided substantive examination of the broad claim scope covering all 'ions' by misuing these two types of post-allowance/post-issuance amendment procedures.' "

The Court continued that it "does not allow patent law experts to testify; this case presents no grounds for exception to the court's practice in this regard. As described by MEMC, Gooklasian offers only general guidance about PTO practice. He has no specific knowledge regarding the '516 or '601 applications or either the PTO's or [examiner's] treatment of the same." (See op. at 26-27 n.16.)

S.O.I.TEC Techs., S.A. v. MEMC Elec. Mat. Inc., C.A. No. 08-292-SLR (D. Del. Oct. 13, 2010) (Robinson, J.).

November 10, 2010

Judge Robinson: Jury Verdict of Invalidity Reversed

Last week, Judge Robinson issued a lengthy memorandum opinion in Robert Bosch, LLC v. Pylon Man. Corp., C.A. No. 08-542-SLR (D. Del. Nov. 3, 2010), granting in part a motion for judgment as a matter of law and overturning jury verdicts on the issue of invalidity of several patent claims (and denying other motions including a motion for a permanent injunction).

The jury's invalidity findings were reversed for lack of substantial evidence. Judge Robinson had previously granted motions in limine which, "viewed in light of the options available on the jury's verdict sheet, precluded a finding of obviousness based on any single prior art reference or any combination of prior art references that did not include the '564 patent." The Jury found the four claims invalid based on references other than the '564 patent. Judge Robinson held that, because Defendants had been precluded from offering evidence on these references, the jury's verdict could not be supported by substantial evidence.

Judge Robinson also denied Plaintiff's motion for a permanent injunction, under the eBay standard, because of "[Plaintiff]'s failure to define a relevant market, the existence of additional competitors and the non-core nature of [Plaintiff's sale of the relevant products] in relation to its business as a whole."

Robert Bosch, LLC v. Pylon Man. Corp., C.A. No. 08-542-SLR (D. Del. Nov. 3, 2010)

November 10, 2010

Judge Thynge Denies Defendant's Motion to Trifurcate Infringement, Damages, and Anti-Trust Issues

Recently, Judge Thynge issued a memorandum order on a motion to bifurcate in Masimo Corp. v. Philips Elec. North Am. Corp., C.A. No. 09-80-LPS-MPT (D. Del. Oct. 6, 2010). Judge Thynge previously granted Plaintiff's motion to bifurcate Defendant's anti-trust and patent misuse counterclaims. Now, Defendant moved to trifurcate the trial into separate sections for invalidity/infringement, anti-trust issues, and damages -- or, in the alternative, to bifurcate the case into invalidity/infringement and damages/anti-trust. Judge Thynge rejected both alternatives, holding that the usual issues of judicial economy, prejudice, and juror comprehension weighed in favor of trying invalidity, infringement and damages together.

The extent to which the previous bifurcation affected Judge Thynge's decision is unclear. The previous bifucation is discussed in the order, but not as one of the factors cutting against further bifurcation. On the other hand, judicial economy was a big factor weighing against further bifucation, including the overlap of evidence between damages and infringement, and Defendant's low likelihood of success at proving non-infringement or invalidity. This stands in contrast with Judge Robinson, who usually grants bifurcation in the interest of judicial economy.

In any case, Judge Thynge included a footnote leaving the door open, at least, to a stay on the presentation of damages evidence at trial until the jury renders a verdict on liability.

Masimo Corp. v. Philips Elec. North Am. Corp., C.A. No. 09-80-LPS-MPT (D. Del. Oct. 6, 2010)

November 9, 2010

Special Master Bechtle: Deposition of In House Counsel

Special Master Bechtle recently addressed plaintiff’s motion to compel the deposition of in-house counsel for a defendant, the same person who signed the verification for that defendant’s interrogatory responses. Xpoint Technologies, Inc. v. Intel Corp., et al., C.A. No. 09-00026-SLR, Special Master Order No. 20 (D. Del. Oct. 28, 2010). The Special Master found that if in-house counsel is a person “with knowledge of the facts” in the responses or has “possession or control of the documents that contain the facts” the deposition is granted. Id. at 2-3. If, however, he does not have personal knowledge of the facts or control of the documents then the motion is denied and defendant is required to serve a declaration under oath that counsel does not have that personal knowledge and identify the people that do. Id. at 3-4.

Xpoint Technologies, Inc. v. Intel Corp., et al., C.A. No. 09-00026-SLR, Special Master Order No. 20 (D. Del. Oct. 28, 2010).

November 9, 2010

Judge Sleet decides issue of first impression: Do the prior art rules of the Patent Act apply to defendants’ obviousness-type double patenting defense?

In Eli Lilly and Co. v. Teva Parenteral Medicines, Inc., C.A. 08-335-GMS (D. Del. Nov. 5, 2010), Judge Sleet recently decided an issue of first impression -- what is the date the court should use to determine what constitutes prior art for purposes of defendants’ obviousness-type double patenting defense? Plaintiffs argued that while 35 U.S.C. § 102 governed what references constituted prior art, § 102 did not resolve “for purposes of an obviousness-type double patenting (“OTDP”) analysis the question . . . in light of the prior art as of what date?” Id. at 2 (emphasis in original). Judge Sleet rejected plaintiffs’ distinction between “the questions of ‘what’ and ‘when’” because adopting plaintiffs’ argument would “require the court to view some portions of [§ 102] as controlling while viewing others as irrelevant in the OTDP context.” Id. If the Federal Circuit intended such a result – excepting prior art in the OTDP context from the rules found in § 102 – it would have done so explicitly. Id. at 4-5.

Eli Lilly and Co. v. Teva Parenteral Medicines, Inc., C.A. 08-335-GMS (D. Del. Nov. 5, 2010)

November 8, 2010

Sue L. Robinson: Overlooking "Basic Principle of Science" Warrants Rule 59 Relief

Rarely does a party get to revisit discovery following a post-trial decision on the merits. In a recent memorandum order that affects an earlier invalidity holding, however, District Judge Sue L. Robinson did just that.

Finding that both parties overlooked a "basic principle of science" in discovery, the Court refused to order a new trial. Instead, the Court opened the record to admit further expert evidence:

"Ultimately, defendants bear the burden of demonstrating the invalidity of claim 7 by clear and convincing evidence. However, the Court will not grant a new trial on the validity of claim 7 based solely on defendants' failure of proof with respect to a basic principle of science. Due to the errors made by both parties, the court concludes that it is instead appropriate to open the record pursuant to Fed. R. Civ. P. 59(a)(2) to allow further evidence on the relationship between precipitation and solubility."

Whether the additional evidence cures the underlying failure of proof remains to be seen. But of more immediate importance is the precedent this decision establishes for reopening the trial record to address discovery deficiencies.

Senju Pharma. Co. Ltd. v. Apotex Inc., C.A. No. 07-779-SLR (D. Del. Nov. 3, 2010) (Robinson, J.).

November 8, 2010

Chief Judge Gregory M. Sleet: Markman Opinion

In a case involving certain chemical analogs and optical isomers, Chief Judge Sleet construed the following terms:

- "S-(+)-4-amino-3-(2-methylpropyl) butanoic acid as a single optical isomer"
- "4-amino-3-(2-methylpropyl) butanoic acid"

Pfizer, Inc. v. Teva Pharmaceuticals USA, Inc., C.A. No. 09-307-GMS, Order (D. Del. Oct. 13, 2010).

November 5, 2010

Judge Thynge: Motion of issuance of letters rogatory for discovery into prosecution of an unrelated patent DENIED

In a recent discovery dispute before Judge Thynge in a sham litigation case, plaintiff filed a motion to issue letters rogatory seeking discovery related to the prosecution of defendants’ patents. Ethypharm S.A. France v. Abbott Laboratories, C.A. 08-126-SLR-MPT (D. Del. Nov. 2, 2010). Defendant asked that the court insert a restriction that plaintiff may not seek discovery about possible inequitable conduct during the prosecution of a patent not at issue in the litigation. Id. at 6. Plaintiff argued that possible inequitable conduct relating to the unrelated patent was relevant to “whether the patent applicant was simultaneously engaging in inequitable conduct in connection with other patents for a different version of the same product,” and whether “the history of the [unrelated patent] motivated [defendant and its non-party subsidiary] to engage in inequitable conduct in the prosecution of the [patents at issue].” Id. at 10. Judge Thynge denied plaintiff’s request, however, because plaintiff did not plead or argue in its briefs that the unrelated patent “bears such an immediate and necessary relation to the enforcement of the [patents at issue] that a demonstration of inequitable conduct in the prosecution of the [unrelated patent] will render the [patents at issue] unenforceable.” Id. at 11. Allowing discovery into any inequitable conduct during the prosecution of the unrelated patent, “would authorize a fishing expedition beyond that which is nominally permitted by the Federal Rules.” Id.

Ethypharm S.A. France v. Abbott Laboratories, C.A. 08-126-SLR-MPT (D. Del. Nov. 2, 2010)

October 15, 2010

Judge Thynge: Motion to Transfer Denied

Earlier this week, in Carl Zeizz Meditec, Inc. v. Xoft, Inc., C.A. No. 10-308-LPS-MPT (D. Del. Oct. 13, 2010), Judge Thynge issued a report and recommendation that defendant Xoft's motion to transfer be denied. According to Judge Thynge, "Xoft is incorrect to suggest that mere incorporation in Delaware represents insufficient public interest to litigate in Delaware. As stated earlier, 'Delaware has an interest in litigation regarding companies incorporated within its jurisdiction.'" Id. at 9. Thus, because defendant is incorporated in Delaware, and the other factors "do not strongly favor transfer," the motion was denied. Id. at 9-10.

This is consistent with the actions of other Delaware judges, who generally hold that a defendant's incorporation here is enough to deny a motion to transfer, absent other factors. Other judges, sitting by designation, seem to hold the other way. See, for example, Judge Pisano's two grants of motions to transfer, and his statement that "the lack of connection to Delaware deems the [Defedant's incorporation here] of less significance." Mekiki Co., Ltd., v. Facebook, Inc., C.A. No. 09-975 (JAP), at 7 (D. Del. June 7, 2010))

Carl Zeizz Meditec, Inc. v. Xoft, Inc., C.A. No. 10-308-LPS-MPT (D. Del. Oct. 13, 2010)

October 6, 2010

Chief Judge Sleet: Post-Trial Briefs Must Only Contain Evidence Presented at Trial

In a recent post-trial opinion, Chief Judge Gregory M. Sleet touched on a host of issues, including obviousness, indefiniteness, inequitable conduct, double patenting, and infringement. Beyond the substantive analysis of the patents-in-suit, the Court also answered an equally important procedural point for the litigator: which evidence may be included in post-trial proposed findings of fact and conclusions of law.

According to the Court, only the evidence presented at trial:

"The court notes for the benefit of future parties . . . that the court's pre-trial order that all objections to exhibits are overruled without prejudice - thus allowing each party to object in real-time - was not intended to have the effect that the plaintiffs assert. The parties' post-trial briefs should be based only on evidence actually presented at trial, and not any evidence that could have been presented at trial."

See Order, at n.1.

Aventis Pharma S.A. v. Hospira Inc., C.A. No. 07-721-GMS (D. Del. Sept. 27, 2010) (Sleet, C.J.).