June 14, 2010

Chief Judge Gregory M. Sleet: Markman Opinion

In an order construing the terms of a patent related to the substance mannitol, the Court defined the following terms:

- "pulverulent mannitol"
- "according to a Test I of between about 40% and about 80%"
- "mechanical action in a ERWEKA TAP friabilimeter"
- "the test on a sieve with mesh size of 100 microns"
- "a rate of dissolution according to a Test II of between about 0 and 30 seconds"
- "introducing into about 150 g of demineralized and degassed water maintained at about 20 degrees C and subjected to stirring at 200 rpm in a 250 ml low form beaker, exactly 5 g of a particle size cut, within the range of about 100 and 200 microns, of the powder to be tested"
- "perfect visual clarity of the suspension thus prepared"
- "comprising a mannitol richness... greater than approximately 90%
- "atomizing"
- "granulating by a wet route"

Roquette Freres v. SPI Pharma, Inc., C.A. No. 06-540-GMS, Order Construing the Terms of U.S. Patent No. 5,573,777 (D. Del. June 11, 2010).

Of note, the court gave a narrow definition of the term "pulverulent mannitol" based on the patent's written description which referred to "relatively pure pulverulent mannitol" as "the present invention" or the "invention" throughout the specification and did not "indicate that 'relatively pure pulverulent mannitol' is merely a preferred embodiment." Id. at 1-2 n. 1.

Roquette Freres v. SPI Pharma, Inc., C.A. No. 06-540-GMS, Order Construing the Terms of U.S. Patent No. 5,573,777 (D. Del. June 11, 2010).

June 14, 2010

Judge Joseph J. Farnan, Jr.: Motions in Limine

In an order addressing various motions in limine filed by the parties, Judge Farnan granted plaintiff's motion to preclude defendant from introducing any evidence or argument related to plaintiff's pre-suit investigation and testing "as it relates to the use of evidence of the attorney-cleient privilege to create a negative inference." The Dow Chemical Company v. Nova Chemicals Corp., C.A. No. 05-737-JJF, Order, at 1 (D. Del. May 30, 2010). The court denied the motion in part, however, and allowed testimony and evidence for the purpose of impeaching or "showing internal doubt on the part of Dow that Nova's product infringed the patents-in-suit." Id. at 2.

The court also denied the plaintiff's motion in limine to preclude the defendants' damages expert from relying on licensing agreements found through the Royaltysource database. Id.

On a trial practice note, the Court granted the plaintiff's motion to preclude the defendants from using excerpts of deposition testimony during opening statements. Id. at 3.


The Dow Chemical Company v. Nova Chemicals Corp., C.A. No. 05-737-JJF, Order, at 1 (D. Del. May 30, 2010).

June 11, 2010

Judge Joel A. Pisano: Another Motion to Transfer GRANTED Where Only "Delaware Connection" Was Defendant's Incorporation

Earlier this week Judge Pisano, sitting by designation, granted another motion to transfer a patent infringement suit to the Northern District of California, based again on the fact that the sole connection to Delaware, for Defendants or Plaintiffs, is Defendant's incorporation in Delaware. The Court held that that connection alone was not enough, especially given the inconvenience of litigating in this forum for both of the parties and for the potential witnesses (Plaintiffs are located in Tokyo, Japan, and the Defendants and potential witnesses are within the Northern District of California), and the fact that any infringing conduct took place at Defendant's headquarters in Palo Alto, California. Mekiki Co., Ltd., v. Facebook, Inc., C.A. No. 09-975 (JAP), at 5-7 (D. Del. June 7, 2010).


Mekiki Co., Ltd., v. Facebook, Inc., C.A. No. 09-975 (JAP), at 6 (D. Del. June 7, 2010)

June 10, 2010

Judge Robinson: Motion to exclude evidence DENIED where prejudice could be cured with limited additional discovery

In Intermec Technologies Corp. v. Palm Inc., C.A. No. 07-272-SLR (D. Del. June 7, 2010), Judge Robinson denied defendant/counter plaintiff Palm’s motion to exclude evidence related to plaintiff/counter defendant Intermec’s “Trakker” product, which was disclosed as prior art invalidating Palm’s patent. Id. at 1. Although the disclosure was untimely, per the terms of the scheduling order, “the failure to make earlier Trakker disclosures was related to [Intermec’s expert’s] belief that the search for prior art which would invalidate the ’803 patent needed to be responsive to Palm’s infringement contentions.” Id. at 4. Judge Robinson permitted Palm to take additional discovery related to the Trakker disclosure, which can “cure” any lack of clarity in Intermec’s expert’s expert opinion. Id. at 4-5.

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June 4, 2010

Judge Farnan: Attorney's Fees Denied in Microsoft v. WebXchange

Last year, we posted about a declaratory action brought by Microsoft against WebXchange, which Judge Farnan dismissed for lack of subject matter jurisdiction. There was no case or controversy, because WebXchange had not accused Microsoft of infringement, even though WebXchange has a pending infringement action against several Microsoft customers involving the same patents.

WebXchange then sought fees, based on the fact that Microsoft had brought an earlier declaratory judgment action in the Northern District of California regarding the same patents, which was dismissed for the same reason. WebXchange alleged that, by bringing the Delaware action, Microsoft had acted in bad faith to multiply the proceedings, and that WebXchange is therefore entitled to attorney's fees under 28 U.S.C. § 1927, FRCP 41(d), and 35 U.S.C. § 285. Last week, Judge Farnan issued a memorandum opinion denying WebXchange's motion. Microsoft Corp. v. WebXchange, Inc., C.A. No. 09-484-JJF (D. Del. May 31, 2010). Judge Farnan held that Microsoft's second case was not frivolous, because it was based on different products, and the products in the second case are related to products that WebXchange has accused Microsoft's customers of infringing in the related case.

Microsoft Corp. v. WebXchange, Inc., C.A. No. 09-484-JJF (D. Del. May 31, 2010)

June 1, 2010

Chief Judge Gregory M. Sleet: Markman Opinion

In a case involving a patent covering high performance diodes (electronic components), Chief Judge Sleet construed the following terms:

- "semiconductor substrate of a first conductivity type"
- "pedestal"
- "on [the first substrate of] the substrate"
- "side regions"
- "channel region in the substrate below the first oxide layer under the side regions"
- "a buried layer of a second conductivity type under and between the side regions"
- "the substrate between the side regions"

Integrated Discrete Devices, LLC v. Diodes Incorporated, C.A. No. 08-888-GMS, Order Construing the Terms of U.S. Patent No. 5,825,079 (D. Del. May 26, 2010).

Of note was the Court's comment that it "adopted the defendant's proposed construction of [the term "semiconductor substrate of a first conductivity type"]...as a sanction for the plaintiff's failure to follow its Markman procedures." Id. at 1, n.1.


Integrated Discrete Devices, LLC v. Diodes Incorporated, C.A. No. 08-888-GMS, Order Construing the Terms of U.S. Patent No. 5,825,079 (D. Del. May 26, 2010).

May 28, 2010

Judge Stark: Failure to disclose intent to file rebuttal expert report results in finding of undue prejudice

In Biovail Laboratories International SRL v. Cary Pharmaceuticals Inc., C.A. No. 09-605-JJF-LPS, Judge Stark considered defendant’s motion to strike a supplemental expert declaration filed in support of plaintiff’s answering claim construction brief. Defendant argued that the supplemental declaration contained new opinions that should have been disclosed earlier and that Defendant would be prejudiced at the Markman hearing because it would not have had the opportunity to depose the expert on the new opinions or to have its expert prepare a rebuttal. Id. at ¶7. Plaintiff responded that the Scheduling Order did not preclude supplemental expert declarations, which are the norm, and did not contain a deadline for deposing experts. Id. at ¶8. Judge Stark denied defendant’s motion to strike. However, Judge Stark provided a less extreme remedy for defendant, noting that plaintiff’s conduct was far from laudable. Id. at ¶11. “While [plaintiff] has not engaged in willful deception, its silence as to its intent to file a rebuttal report and its failure to in any way disclose [its expert’s] rebuttal opinions at a time when [defendant] could test and/or respond to them appears to have had the consequence of deceiving [defendant] into believing that the record with respect to the opinions of claim construction experts was complete.” Id. Judge Stark also noted that plaintiff did file the supplemental expert declaration after the time for expert depositions had passed—such conduct being “inconsistent with the intent of the Scheduling Order. Id. Because defendant would be unduly prejudiced at the Markman hearing, Judge Stark delayed the hearing by four weeks and permitted defendant to take a second deposition of plaintiff’s expert, and provided that defendant could file a reply claim construction brief. Id. at ¶12. Furthermore, Judge Stark provided that defendant could file a motion for monetary sanctions after the Markman hearing if defendant “believe[d] that any unfair prejudice caused by [plaintiff’s] conduct ha[d] not been adequately ameliorated[.]” Id. at ¶13.

Biovail Laboratories International SRL v. Cary Pharmaceuticals Inc., C.A. No. 09-605-JJF-LPS

May 21, 2010

Judge Farnan: Motion to Strike Declaration of Expert Not Disclosed During Discovery DENIED

In The Dow Chemical Company v. Nova Chemicals Corp., C.A. No. 05-737-JJF (D. Del. May 20, 2010), after defendants' filed their motion for summary judgment, plaintiff submitted expert declarations in support of its counterstatement statement of facts opposing summary judgment. Id. at 3. Defendants subsequently filed a motion to strike the declarations because the expert declarations constituted "additional expert opinions that should have been filed before the end of discovery." Id. at 5. Judge Farnan disagreed. Judge Farnan agreed with plaintiff that the declarations were not "newly conceived arguments[,]" but were "appropriate elaborations of prior opinions and statements." Id. at 5-7.


May 20, 2010

Judge Robinson: Motion to Dismiss DENIED in case alleging that a prior patent litigation was sham litigation

Judge Robinson recently considered a motion to dismiss a complaint in an antitrust action that stemmed from a patent litigation that was voluntarily dismissed in 2004. Rochester Drug Co-operative v. Braintree Laboratories, C.A. No. 07-142-SLR (D. Del. May 18, 2010). Plaintiffs filed suit alleging that the prior patent litigation brought by defendant was a “sham litigation” “designed to delay FDA’s approval of [a generic drug] and to improperly maintain monopoly power with respect to its pioneer drug.” Id. at 2. Defendant subsequently filed a motion to dismiss under Fed. R. Civ. P. 12(b)(6). In order to resolve defendant’s 12(b)(6) motion, Judge Robinson analyzed whether plaintiffs adequately pled the “sham litigation” exception to Noerr-Pennington immunity that typically protects a patent owner asserting its rights from antitrust liability. Id. at 10-11. First, Judge Robinson determined that plaintiffs adequately pled antitrust injury. Although defendant argued that plaintiffs suffered no direct injury, Judge Robinson determined that plaintiffs’ claim was based upon an overall scheme. “It is sufficient, therefore, for plaintiffs to allege injuries that occurred as a result of the entire scheme, rather than any particular component therein.” Id. at 13. Judge Robinson next determined that the overall scheme plaintiffs’ alleged sufficiently pled that defendant attempted to forestall competition, including filing what plaintiffs describe as the “objectively baseless” litigation. Id. at 14-15. Notably, Judge Robinson declined to accept defendant’s argument that she should find that the previous litigation was not a sham as a matter of law, due to the court’s previous finding that Noerr-Pennington barred a counterclaim in the previous litigation. Id. at 18. Judge Robinson noted that the court made that determination based upon the record before it at the time, and that the plaintiffs in this action were not represented in the previous litigation. Id. at 18-19.

Rochester Drug Co-operative v. Braintree Laboratories, C.A. No. 07-142-SLR (D. Del. May 18, 2010)

May 19, 2010

Judge Leonard P. Stark: Claim Construction (Report & Recommendation)

Magistrate Judge Stark construed the claim terms below in an ANDA patent infringement case related to the brand name Oracea® doxycycline capsules. The Resesarch Foundation of State University of New York v. Mylan Pharmaceuticals, L.P., C.A. No. 09-184-JJF-LPS, Report and Recommendation Regarding Claim Construction (D. Del. May 12, 2010). A main feature of the invention is that the patented drug compounds "achieve a therapeutic result through non-antimicrobial mechanisms." Id. at 2.

(1) "tetracycline compound"
Construction: compound within the class of which tetracycline is the parent compound
and is characterizied by a unique four-ring structure
(2) "antibiotic tetracycline compound"
Construction: a compound having antibiotic activity within the class of which tetracycline
is the parent compound and is characterized by a unique four-ring structure
(3) "the tetracycline compound has substantially no antibiotic activity"
Construction: the tetracycline compound has been modified chemically to reduce or
eliminate its antibacterial activity, or the tetracycline compound possesses
antibacterial activity but is employed in an amount which has substantially
no antibacterial effect
(4) "minimum antibiotic serum concentration"
Construction: the lowest concentration known to exert a signficant antibiotic effect
(5) "chronic inflammatory condition"
Construction: an inflammatory condition lasting for days to weeks or longer, and is
associated histologically with the presence of lymphocytes and
macrophages and with proliferation of blood vessels and connective tissues

This claim construction order was subsequently adopted. The Resesarch Found. of State Univ. of New York v. Mylan Pharmaceuticals, L.P., C.A. No. 09-184-JJF-LPS (D. Del. June 24, 2010) (order).


The Resesarch Foundation of State University of New York v. Mylan Pharmaceuticals, L.P., C.A. No. 09-184-JJF-LPS, Report and Recommendation Regarding Claim Construction (D. Del. May 12, 2010).