January 26, 2010

Breaking News: District Judge Joseph J. Farnan to Retire

District judge Joseph J. Farnan Jr. has announced that he will retire from the bench on July 31st:

"After 25 years of dedicated service as a United States District Judge for the District of Delaware, and being fully eligible for retirement on June 15, 2010, the Honorable Joseph J. Farnan, Jr. today submitted his letter of retirement to President Barack Obama. Judge Farnan plans to leave his office on July 31, 2010 and return to the practice of law. During his tenure on the bench, Judge Farnan was pivotal in cementing the Court's reputation as a national venue for complex litigation. His wit and unique perspective will be sorely missed by his colleagues, Court personnel and federal practitioners alike."

The announcement can be found on the D. Del. website.

January 26, 2010

Joseph J. Farnan: Demonstrating "Good Cause" to File an Untimely Amended Pleading

A recent decision by district judge Joseph J. Farnan Jr. highlights the expedited schedule a party must pursue to successfully amend a pleading past a discovery deadline. Under FRCP 16(b)'s "good cause" standard, unlike the more lenient amendment standard in FRCP 15(a), an untimely amendment "hinges on [the] diligence of the movant." According to the Court, the following discovery schedule - implemented to uncover a new inequitable-conduct defense - satisfied the good-cause standard:

June 5: Subpoena issued to witness
June 15: Documents produced by witness
June 16, 23, 24, 26: Depositions
June 30: Motion to amend filed

Under the circumstances of this case, a one-month window from subpoena to motion demonstrated the necessary diligence for amending a pleading outside the scheduling order's confines.

ICU Medical Inc. v. Rymed Tech. Inc., C.A. No. 07-468-JJF (D. Del. Dec. 16, 2009) (Farnan, J.).

January 25, 2010

Judge Robinson: Plaintiffs’ motion for summary judgment of invalidity of all patents at issue GRANTED.

Plaintiffs Boston Scientific Corporation and Boston Scientific Scimed Inc. (“BSC”) brought four patent infringement actions against Johnson & Johnson Inc. and Cordis Corporation (“J&J”) seeking a judgment of invalidity for four coronary stent patents. Boston Scientific Corporation, et al. v. Johnson & Johnson Inc., et al., C.A. No. 07-333-SLR (D. Del. Jan. 20, 2010) (consolidated). BSC moved for summary judgment of invalidity. Judge Robinson granted BSC’s motion on the basis that J&J’s patent specifications contain insufficient written descriptions. For example, three of the patents contained “no definitions, examples, or experimental models provided for determining whether a compound is a structurally similar analog as contemplated by the patentees.” Id. at 24. Because, based on the disclosure, a person skilled in the art would not recognize a description of the claimed analogs, “no reasonable jury could find that the written description requirement has been met with respect to the claimed analogs.” Id. at 26. In addition, Judge Robinson found non-enablement because a person with ordinary skill in the art could not make the claimed invention without undue experimentation. Id. at 27.

Judge Robinson also determined that the fourth patent was invalid due to failures in the written description. Id. at 30. Specifically, the relevant analogs were not “named, structurally depicted, exemplified, or otherwise described in the ‘662 patent specification.” Id. Moreover, “although limited by function, the claims of the ‘662 patent are drawn to a genus of [certain] analogs without any description of any species within the genus. The Federal Circuit has required the identification of ‘sufficient species’ to show that the totality of the genus was invented and disclosed.” Id. at 31 (citing Carnegie Mellon Univ. v. Hoffman-LaROche Inc., 541 F.3d 1115, 11261 (Fed. Cir 2008)).

Boston Scientific Corporation, et al. v. Johnson & Johnson Inc., et al., C.A. No. 07-333-SLR (D. Del. Jan. 20, 2010)

January 21, 2010

Judge Robinson: claim construction order construing terms of four patents relating to coronary stents

In Boston Scientific Corp., et al. v. Johnson & Johnson, Inc., et al., C.A. No. 07-333-SLR (D. Del. Jan. 20, 2010), Judge Robinson construed the following terms as follows:

1. Stent
A device for providing support for a lumen in the body.

2. Biocompatible
Able to perform its function in the body with an acceptable biological response.

3. Therapeutic agent
A substance administered to treat or prevent a disease or condition.

4. Drug
A substance administered to treat or prevent a disease or condition.

5. Polymer
A material formed by polymerization and comprising repeating units of the same (homopolymer) or different (copolymer) types of monomers.

6. Copolymer
A polymer having two or more different types of monomers.

7. Polymeric carrier
A material comprised of at least one polymer that is formulated with the therapeutic agent.

8. Polymeric coating; coating
Covering layer(s) comprising a mixture of both a polymer and the therapeutic agent or drug.

9. Acrylate-based polymer or copolymer
A polymer in which at least one of the types of monomers is based on the structure of a salt or ester of acrylic acid.

10. Fluorinated polymer
A polymer containing one or more fluorine atoms.

11. Poly(ether-ester) copolymer
A polymer containing one monomer that includes an ether and another monomer that includes an ester.

12. Rapamycin or a macrocyclic lactone analog thereof
Sirolimus or a macrocyclic lactone molecule with a striction similar to sirolimus.

13. Rapamycin
Sirolimus and all analogs, derivatives and congeners that bind FKBP12 and possess the same pharmacologic properties as sirolimus.

14. Macrocyclic triene analog
A macrocyclic triene molecule with a structure similar to rapamycin and that binds FKB12.

15. An amount effective to inhibit neointimal proliferation
An amount sufficient to diminish neointimal proliferation.

16. Provides a controlled release of said therapeutic agent over a period of several weeks
Therapeutic agent is discharged gradually over the course of several weeks.

17. Releases
Discharges

18. Mixture; mixture thereof; blend thereof; incorporated into
Combination of two or more substances, or the act of combining said materials.

19. Applied; applied thereto; onto the stent; affixed to the intraluminal stent
Attached to the stent.

20. In-stent late loss
The minimal lumen diameter within the stent immediately following implantation minus minimal lumen diameter within the stent at a specified time following implantation.

21. In-stent diameter stenosis
100 X [1 – minimal lumen diameter/reference vessel diameter].

22. Quantitative coronary angiography
A test to measure the lumen diameter of coronary vessels.

23. Mean in-stent loss
The average of in-stent late loss values.

24. Human population
A class of people distinguished by particular traits or characteristics.

25. Mean in-stent diameter stenosis
The average of in-stent diameter stenosis values.

26. About
Approximately.

Boston Scientific Corp., et al. v. Johnson & Johnson, Inc., et al., C.A. No. 07-333-SLR (D. Del. Jan. 20, 2010)

January 21, 2010

Joseph J. Farnan: Paperless Event Ticketing Claims Construed

For those with clients in the entertainment industry, district judge Joseph J. Farnan Jr. recently issued a notable decision construing claims related to paperless event ticketing. In particular, the Court construed the following claims:

"Personalized Physical Material"
"Paperless Ticket"
"Authentication Data"
"Exchanging"
"Data Center"
"Asks"
"Bid"
"Ask Quantity," "Ask Price," "Bid Quantity," and "Bid Price"
"Comparing the Bid to the Asks"
"Completing a Transfer of the Paperless Tickets When the Bid Price Equals the Ask Price and the Ask Quantity is Equal to or Greater than the Bid Quantity"
"The System"
"Access to the Venue Upon Presentation of the Buyer Authentication Data to an Access Device"

The Court also construed seven means-plus-function terms:

"Means for Associating the Paperless Tickets with Authentication Data of the Ticket Seller"
"Means for Reassociating the Paperless Tickets with Authentication Data of the Ticket Buyer"
"Means for Receiving from Ticket Sellers Electronic Asks"
"Means for Receiving from a Ticket Buyer an Electronic Bid"
"Means for Granting Access to the Event Upon Presentation of the Buyer Authentication Data of the Paperless Ticket"
"Means for Comparing the Bid to the Asks"
"Means for Completing a Transfer of the Paperless Tickets When the Bid Price Equals the Ask Price and the Ask Quantity is Equal to or Greater Than the Bid Quantity"

Flash Seats LLC v. Paciolan Inc., C.A. No. 07-575-JJF (D. Del. Jan. 19, 2010).


January 21, 2010

Magistrate Judge Thynge: On remand from Federal Circuit motion for summary judgment based on laches GRANTED

In Crown Packaging Technology, et al. v. Rexam Beverage Can Co., C.A. No. 05-608-MPT, D. Del. Jan. 15, 2010, Magistrate Judge Thynge recently granted counterclaim-defendant Crown’s motion for summary judgment based on laches. This case returned to Judge Thynge after the Federal Circuit reversed the Court’s grant of Rexam’s summary judgment motion of noninfringement and the Court’s grant of Crown’s motion for summary judgment for failure to mark, thereby dismissing Rexam’s counterclaim. Id. at 2. After the parties stipulated to dismiss Crown’s claim of infringement, the only issue remaining in dispute was Rexam’s counterclaim of infringement. Id. at 3.

The parties are in the business of manufacturing and selling aluminum cans. Pursuant to its summary judgment motion, Crown argued that Rexam impermissibly delayed in filing its counterclaim because more than six years had passed between any infringement and the filing. Id. at 12. Finding in Crown’s favor, the court noted that “[a]lthough can manufacturing is squarely within Rexam’s field of endeavor, a field populated by very few competitors, and Crown’s activities in that field were open, pervasive, and notorious, Rexam never undertook any investigation of the circumstances associated with Crown’s alleged infringing activities. . . . Further, because Rexam delayed more than six years before filing its counterclaim, this court presumes that the delay was both unreasonable and prejudicial.” Id. at 17 (emphasis in original). Furthermore, Rexam failed to produce sufficient evidence that its delay was reasonable or whether any prejudice exists. Id. at 18-21.

Crown Packaging Technology, et al. v. Rexam Beverage Can Co., C.A. No. 05-608-MPT, D. Del. Jan. 15, 2010

January 21, 2010

Magistrate Judge Mary Pat Thynge: Markman Order

Magistrate Judge Mary Pat Thynge issued a claim construction order in the Innovative Patents, L.L.C. v. Brain-Pad, Inc. matter which involves a patent for an apparatus that enhances absorption and dissipation of impact forces for sweatbands (U.S. Patent No. 7,234,174). C.A. No. 07-680-MPT, Memorandum Order (D. Del. Jan. 13, 2010). The following claims were construed consistent with Phillips v. AWH Corp.:

- "sweatband"
- "relatively thin in nature"
- "curved in configuration"
- "intended area"
- "consistent memory"
- "semi-rigid"
- "apertures"

Of interest, for each claim term, the Court declined to adopt the parties' proposed construction and instead adopted its own meaning.


Innovative Patents, L.L.C. v. Brain-Pad, Inc., C.A. No. 07-680-MPT, Memorandum Order (D. Del. Jan. 13, 2010).

January 12, 2010

Chief Judge Gregory M. Sleet: Motion to Sever and Stay Denied

Chief Judge Sleet recently denied a party's motion to stay and sever proceedings related to two patents-in-suit where an interference was pending at the USPTO. LG Electronics U.S.A., Inc. v. Whirpool Corp., C.A. No. 08-234-GMS, Order (D. Del. Jan. 6, 2010). The Court denied the motion on the grounds that it was filed "after the close of discovery and after a trial date had been set" and because "resolution of the interference proceeding may not resolve all of the asserted claims or issues" with respect to those two patents. Id. at 3. (Only certain claims of the two patents were before the PTO as part of the interference.)

LG Electronics U.S.A., Inc. v. Whirpool Corp., C.A. No. 08-234-GMS, Order (D. Del. Jan. 6, 2010).

January 5, 2010

Joseph J. Farnan: Overlapping Evidence Stalls Bid to Bifurcate Inequitable-Conduct Defense

A recent decision by district judge Joseph J. Farnan Jr. serves to remind litigators that bifurcation is not always a sure bet. In the underlying litigation, the Court rejected an attempt to carve out an inequitable-conduct defense:

"Defendants must meet a high burden to be successful [in proving the defense]. In light of this burden, the potential that duplicative evidence regarding the alleged prior art will be presented at an inequitable conduct trial and at subsequent trials on infringement and invalidity weighs against bifurcation . . . . Accordingly, bifurcating trial on the issue of inequitable conduct will not promote judicial efficiency."

The winning argument? Plaintiff's assertion that it would have to present "much of the same background testimony" in both proceedings to describe the scope of the patents-in-suit and contrast the prior art.

WebXchange Inc. v. Dell Inc., C.A. No. 08-132-JJF (D. Del. Dec. 30, 2009) (Farnan, J.).


December 31, 2009

Magistrate Judge Leonard P. Stark: Discovery Issues in Judge Robinson Bifurcated Case

In December of 2009, Judge Robinson amended her form scheduling order in patent cases to provide for bifurcation of the issues of liability and damages/willfulness for both discovery and trial. In one of the cases in which these issues are bifurcated, the parties were referred to Magistrate Stark to resolve certain discovery-related issues. Teles AG Informationstechnologien v. Cisco Systems, Inc., C.A. No. 09-72-SLR-LPS, Order (D. Del. Dec. 28, 2009).

First, the court denied plaintiff's request to remove the confidential designation from certain documents related to defendant's commercial success so that it may submit the information to the PTO as part of the reexamination of its patents. Id. at 2. The Court found that plaintiff did not provide any authority to support its position that defendant had an obligation to provide the information to the PTO nor that it "suppressed" this evidence. Id.

Second, the court denied plainitff's motion for an additional deposition of defendant's 30(b)(6) witness on certain topics where the defendant properly objected to the testimony as outside the scope of limited damages discovery in the bifurcated case. Id. at 2-3. Specifically, plaintiff inquired about two routers that it says are accused products but were not identified in its infringement contentions and defendant's "cost of sales" which was not mentioned in plaintiff's submission to the Court addressing what commercial success evidence should be permitted. Id. at 3.

Teles AG Informationstechnologien v. Cisco Systems, Inc., C.A. No. 09-72-SLR-LPS, Order (D. Del. Dec. 28, 2009).