March 3, 2010

Judge Farnan: Failure to amend expert report to include opinion testified to at trial results in opinion being stricken from the record

In a post-trial evidentiary opinion of phase I of a bench trial in which defendants asserted patents against plaintiff, Judge Farnan recently determined that certain testimony should be excluded because plaintiff failed to make adequate disclosure pretrial. LG Display Co., Ltd., v. AU Optronics Corp., et al., C.A. 06-726-JJF (D. Del. Feb. 16, 2010). One of plaintiff’s experts offered opinions at trial that were not disclosed in prior expert reports or depositions. Id. at 1. Plaintiff argued that the testimony was proper rebuttal testimony and should be considered, despite not being disclosed until the third day of trial. Id. at 2. Judge Farnan disagreed because plaintiff’s expert had one month to review defendant’s expert before submitting his rebuttal report and then another month before his deposition was taken. Id. at 3. “[Defendant] AUO and its expert were given no advance notice of [plaintiff’s expert’s] testimony, and [plaintiff] made no attempt to amend its expert report prior to allowing [their expert] to take the stand and reveal what [plaintiff] acknowledges were undisclosed, new opinions. In the Court’s view, this is precisely the type of attorney conduct that is prohibited by the Federal Rules of Civil Procedure.” Id. at 4. Judge Farnan also precluded plaintiff from asserting a license defense because plaintiff failed to disclose the defense prior to trial, as required by Federal Rule of Civil Procedure 26(e). Id. at 8.

LG Display Co., Ltd., v. AU Optronics Corp., et al., C.A. 06-726-JJF (D. Del. Feb. 16, 2010)

March 3, 2010

Judge Sue L. Robinson: Case Stayed Pending Supreme Court Decision in Bilski

Judge Robinson in Accenture Global Services GMBH v. Guidewire Software, Inc., has decided to stay the case and deny defendant's motion for partial summary judgment of invalidity based on unpatentable subject matter until after the U.S. Supreme Court issues its ruling in the Bilski matter. C.A. No. 07-826-SLR, Memo. Order (D. Del. Feb. 26, 2010). The patents in this case relate to software used to perform insurance-related transactions and tasks. Id. at 2. The court stated that it "believes that the claims of the Accenture patents would not meet the 'transformation" prong' of the Federal Circuit's current machine or transformation test under Bilski as it currently stands. Id. at 3. However, the patents "raise substantial questions under the 'machine' prong." Id. Therefore, the court stated, "[i]nsofar as the Supreme Court may illuminate, or drastically alter, the framework of such a determination, the court believes that it is prudent to postpone the subject matter inquiry under 35 U.S.C. Section 101 until such time as a decision is issued in Bilski v. Doll." Id.

Accenture Global Services GMBH v. Guidewire Software, Inc., C.A. No. 07-826-SLR, Memo. Order (D. Del. Feb. 26, 2010).

February 26, 2010

Mary Pat Thynge: "Expected" Change in Federal Circuit Precedent Cannot Control JMOL Inquiry

A recent decision by Magistrate Judge Mary Pat Thynge puts to rest the notion that a district court will follow an anticipated change in the law when considering a post-verdict motion for judgment as a matter of law. In its decision, the Court acknowledged that, just last month, the Federal Circuit heard argument on whether Section 112 contains a written-description requirement distinct from the enablement requirement. The resulting "expected intervening change in the law," however, was insufficient to warrant immediate judicial recognition:

"It is the court's opinion that an expectation of change does not constitute an intervening change. . . . The court recognizes that the Federal Circuit has heard oral argument in Ariad Pharms., Inc. v. Eli Lilly & Co. and that the Federal Circuit's forthcoming decision in that case may alter the scope and purpose of the written description requirement. However, this court . . . is constrained to follow existing standards under Federal Circuit law, and Federal Circuit precedent 'clearly recognizes a separate written description requirement.' " (slip op. at 19)

Cordance Corp. v. Amazon.com Inc., C.A. No. 06-491-MPT (D. Del. Feb. 22, 2010) (Thynge, M.J.).

February 25, 2010

Judge Robinson: No Interference in Genetics Institute

Judge Robinson issued a memorandum opinion yesterday in Genetics Institute, LLC v. Novartis Vaccines and Diagnostics, Inc., C.A. No. 08-290-SLR (D. Del. Feb. 24, 2010). Plaintiff Genetics Institute, LLC filed a 35 U.S.C. § 291 action seeking a determination of priority for their patent over two patents owned by Novartis Vaccines and Diagnostics, Inc. Id. at 1-2. To satisfy § 291, the plaintiff must show interference-in-fact; part of that showing is the "two way test," which means that the second patent must be either anticipated by or obvious in light of the first patent. Id. at 10-12. Defendants brought a motion to dismiss, arguing that plaintiffs had failed to meet the standard.

The Court's application of the anticipation and obviousness tests was relatively straightforward. It turned on the Federal Circuit's holding that "[t]he disclosure of a range 'is only that of a range, not a specific [point] in that range[, i.e.] the disclosure of a range is no more a disclosure of the end points of the range than it is each of the intermediate points." Atofina v. Great Lakes Chemical Corp., 441 F.3d 991 (Fed. Cir. 2006). The patents involved amino acid gaps in a protein to assist in blood clotting; because the range of gaps did not line up properly under Atofina, the court held that the prior patent did not anticipate the subsequent ones. Id. at 18-24.

Along the way, the court also clarified that patent term extensions under the Hatch-Waxman Act apply to the patent itself, not to specific claims within the patent. Id. at 16.


08-290a

February 25, 2010

Judge Sue L. Robinson: Complaint Must Set Forth Allegedly Infringing Product or Method

Amend your complaint or face dismissal of your action. This is what Judge Robinson informed the plaintiffs in Eidos Communications, LLC v. Sype Technologies SA, C.A. No. 09-234-SLR, Memo. Op. (D. Del. Feb. 24, 2010), where the complaint failed to allege that any specific product or category of products infringe the patents-in-suit. Plaintiffs in this case alleged that defendants’ “communication system products and/or methodologies” infringe the patents-in-suit. Id. at 2. There are no specific products or methods described in the complaint and the only language that even comes close to such a description is a general description of the technology found in the background section of the complaint. Even that general description, however, “does not indicate whether a product or method (or both) are at issue or whether the suit is directed to the transmission of or to the control of either voice or message data.” Id. at 5. The Court ordered plaintiffs to amend their complaint, finding that “[P]laintiffs were obligated to specify, at a minimum, a general class of products or a general identification of the alleged infringing methods.” Id. at 5.

Eidos Communications, LLC v. Sype Technologies SA, C.A. No. 09-234-SLR, Memo. Op. (D. Del. Feb. 24, 2010).


February 25, 2010

Judge Joseph J. Farnan, Jr.: What is "Unpatented" for Purposes of a False Marking Claim?

Is a product “unpatented” for purposes of pleading a false marking claim under Section 292 where it is covered by at least one claim of one of the patents listed on the product’s label? The District of Delaware, following the Federal Circuit decision in Clontech Labs, Inc. v. Invitrogen Corp., 406 F.3d 1347 (Fed. Cir. 2005), found that the for a product to be “unpatented” the product must “not be covered by at least one claim of each patent with which the article is marked.” Brinkmeier v. Graco Children’s Products Inc., C.A. No. 09-262-JJF, Memo. Op., at 7-8 (D. Del. Feb. 16, 2010) (internal citations omitted). Along the same line, marking a product with expired patents can still constitute “actionable mismarking” even if the product is “actually patented.” Id. at 8-9. Therefore, the Court found that plaintiff adequately pled that defendant’s products are “unpatented.” Id. at 9.

Brinkmeier v. Graco Children’s Products Inc., C.A. No. 09-262-JJF, Memo. Op. (D. Del. Feb. 16, 2010).



February 25, 2010

Judge Robinson: Claim construction

In Genetics Institute, LLC v. Novartis Vaccines and Diagnostics, Inc., C.A. No. 08-290-SLR (D. Del. Feb. 24, 2010), Judge Robinson recently construed the following claim language of plaintiff's patent:

"truncated Factor VIII Protein which is an active procoagulant"
A Factor VIII protein that promotes blood coagulation and lacks a portion of the amino acid sequence of the human Factor VIII protein.

"having a peptide sequence of human factor VIII:C but lacking a peptide region selected from the group consisting of"
Having the amino acid sequence of the human Factor VIII protein lacking only the particular segment of the human Factor VIII protein in one of the specified alternatives (a), (b) or (c).

Here, plaintiff had argued for a broad interpretation of the claim (i.e., "lacking a peptide region of at least the regions identified in (a), (b) or (c)."). Id. at 3. Plaintiff argued, among other things, that the PTO's granting of a term extension for its patent based on its construction of the relevant claim be given great deference. Id. However, Judge Robinson noted that "[c]laim construction is a matter of law and, therefore, does not fall within the PTO's technical expertise (assuming that the PTO went through the claim construction exercise in the first instance)." Id. at 4.

In Genetics Institute, LLC v. Novartis Vaccines and Diagnostics, Inc., C.A. No. 08-290-SLR (D. Del. Feb. 24, 2010)

February 22, 2010

Magistrate Judge Stark: Permissible discovery against defendant may be objectionable as to third party

In ITT Manufacturing Enterprises, Inc. v. Cellco Partnership (d/b/a Verizon Wireless), et al., C.A. 09-190-JJF-LPS (D. Del. Feb. 17, 2010), Judge Stark recently overruled the objections of defendant LG, ordering LG to produce to plaintiff ITT "all non-privileged discovery responsive to ITT's non-CDMA document requests and interrogatories that had previously been withheld on the grounds of lack of good faith factual basis," because the information was relevant to infringment clalims against LG, a manufacturer of phones that operate on CDMA and non-CDMA cellular networks. Id. at 2-3. ITT had also subpoened third party AT&T, operator of a non-CDMA cellular network, seeking the same discovery. Id. at 2. However, Judge Stark granted AT&T's motion to quash because AT&T was not a party and ITT had not alleged infringment of the patent-in-suit. Id. at 3. Moreover, the discovery may be available from LG or other defendants. Id.

ITT Manufacturing Enterprises, Inc. v. Cellco Partnership (d/b/a Verizon Wireless), et al., C.A. 09-190-JJF-LPS (D. Del. Feb. 17, 2010)

February 18, 2010

Judge Joseph J. Farnan, Jr.: Privilege Issues

Privilege disputes are often a hot topic of intellectual property litigation. In WebXChange Inc. v. Dell, Inc., Judge Farnan ruled on a number of disputes sounding in the assertion of the attorney-client privilege, attorney work product doctrine and clergy-communicant privilege. C.A. Nos. 08-132-JJF, 08-133-JJF, Memo. Op. (D. Del. Feb. 16, 2010). One dispute involved the assertion of the attorney client privilege as to documents that were described in plaintiff’s privilege log as “notes memorializing confidential communications with counsel.” Id. at 7 (internal citations omitted). The court did not find a waiver of privilege, however, it did require the plaintiff to “supplement its privilege log entries” for all documents that are “drafts of confidential communications made to any attorney, or notes of memos to counsel regarding confidential communications.” Id. Further, plaintiff must “identify the actual communication to an attorney (listed within the privilege log) to which the drafts, notes and memos pertain.” Id. at 8.

Another dispute, involved the plaintiff’s assertion of the clergy-communicant privilege for certain emails that were sent to two Hindu gurus to allegedly obtain legal and spiritual advice concerning the litigation. Id. at 10. Plaintiff further argued that they copied certain third parties on the email “in furtherance of the blessings.” Id. at 11. The court accepted plaintiff’s representations and denied defendants’ motion to compel.

Finally, the court found the crime-fraud exception inapplicable to patent-prosecution documents that were withheld by plaintiff because defendants had not made a prima facie showing of fraud. Specifically, the court found that a mere restatement of the defendants’ inequitable conduct allegations is not sufficient to overcome the assertion of the attorney-client privilege based on this exception. Id. at 12-13.

WebXChange Inc. v. Dell, Inc., C.A. Nos. 08-132-JJF, 08-133-JJF, Memo. Op. (D. Del. Feb. 16, 2010).


February 17, 2010

New District of Delaware Intellectual Property Case Filings

1/3: Brinkmeier v. Bayer Healthcare LLC (patent infringement)
1/5: Cephalon Inc. and Cephalon France v. Watson Pharmaceuticals Inc., Watson Laboratories Inc. and Watson Pharma Inc. (patent infringement)
1/5: Enova Technology Corp. v. Initio Corp, Initio Corp. (California) and Western Digital Corporation (patent infringement)
1/5: Southco Inc. v. Penn Engineering & Manufacturing Corp. (patent infringement)
1/6: Zodiac Pool Care Inc. v. Aquatron Inc. and Aqua Group LLC (patent infringement)
1/7: AstraZeneca Pharmaceuticals LP, AstraZeneca UK Limited and AstraZeneca AB v. Teva Parenteral Medicines Inc., Teva Pharmaceuticals USA Inc. and Teva Pharmaceutical Industries Ltd. (patent infringement)
1/8: Allergan Inc. v. Sandoz Inc. (patent infringement)
1/8: Alza Corporation and Ortho-McNeil-Janssen Pharmaceuticals Inc. v. Kremers Urban LLC and KUDCO Ireland Ltd. (patent infringement)
1/14: Boram Pharm. Co. Ltd. v. Life Technologies Corp. (patent infringement)
1/14: Daiichi Sankyo Inc.and Genzyme Corporation v. Impax Laboratories Inc. (patent infringement)
1/15: Cordis Corp. v. Boston Scientific Corp. and Boston Scientific Scimed Inc. (patent infringement)
1/15: Pfizer Inc., Pharmacia Corp., Pharmacia & Upjohn Co., Pharmacia & Upjohn LLC, Pharmacia & Upjohn Company LLC, et al. v. Teva Parenteral Medicines Inc., Teva Pharmaceuticals USA Inc. and Teva Pharmaceutical Industries Ltd. (patent infringement)
1/21: Galderma Laboratories LP, Galderma SA and Galderma Research and Development SNC v. Tolmar Inc. (patent infringement)
1/21: Infineon Technologies AG v. Volterra Semiconductor Corp. (patent infringement)
1/21: Purdue Pharma Products LP and Napp Pharmaceutical Group Ltd. v. Lupin Ltd. and Lupin Pharmaceuticals Inc. (patent infringement)
1/22: Abbott Laboratories and Abbott Respiratory LLC v. Teva Pharmaceuticals Industries Ltd. and Teva Pharmaceuticals USA, Inc. (patent infringement)
1/22: Cephalon Inc. and Cephalon France v. Sandoz Inc. (patent infringement)
1/25: PCT International Inc. v. John Mezzalingua Associates Inc. (patent infringement)
1/26: Tarkus Imaging Inc. v. Adobe Systems, Inc., Canon USA, Inc., Nikon Americas Inc. and Nikon Inc. (patent infringement)
1/27: Kwikset Corp. and Newfrey LLC v. Schlage Lock Company LLC (patent infringement)
1/28: Broadridge Financial Solutions, Inc. v. Inveshare Inc. (patent infringement)
1/29: St. Clair Intellectual Property Consultants Inc. v. Google Inc. (patent infringement)
2/1: Armstrong World Industries Inc. v. Congoleum Corp. (patent infringement)
2/2: Carl Zeiss Meditec Inc. and University of Miami v. Optovue Inc. (patent infringement)
2/3: Pfizer Inc., Pfizer Pharmaceuticals LLC, Pfizer Ireland Pharmaceuticals, Pfizer Limited and CP Pharmaceuticals International CV v. Mylan Pharmaceuticals Inc. (patent infringement)
2/4: MAM Babyartikel GmBH, Bamed AG and MAM USA Corporation v. Sesame Workshop (patent infringement)
2/5: QVC Inc. and QHealth Inc. v. Your Vitamins Inc. and Andrew Lessman (trademark infringement)
2/9: Pfizer Inc., Pfizer Pharmaceuticals LLC, Pfizer Ireland Pharmaceuticals, Pfizer Limited and CP Pharmaceuticals International CV v. Sandoz Inc. (patent infringement)
2/9: Sandoz Inc. v. Pfizer Inc., Pfizer Pharmaceuticals LLC, Pfizer Ireland Pharmaceuticals, Pfizer Limited and CP Pharmaceuticals International CV, Warner-Lambert Company and Warner-Lambert Company LLC (patent infringement)