December 18, 2009

New District of Delaware Intellectual Property Case Filings

12/2: Bristol-Myers Squibb Company, Bristol-Myers Squibb Company, Novartis Corporation, et al. v. Teva Pharmaceuticals USA, Inc. (patent infringement)
12/2: Cephalon Inc. and Cephalon France v. Teva Pharmaceuticals USA, Inc. and Teva Pharmaceutical Industries Ltd. (patent infringement)
12/2: Konarka Technologies, DuPont Displays Inc. and The Regents of the University of California v. Plextronics Inc. (patent infringement)
12/2: In re: Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litigation (patent infringement)
12/2: Samsung Electronics Co., Ltd. v. Sharp Corporation, Sharp Electronics Corporation and Sharp Electronics Manufacturing Company of America Inc. (patent infringement)
12/2: Takeda Pharmaceutical Company Ltd. and Takeda Pharmaceutical North America Inc. v. Watson Laboratories, Inc.- Florida, Watson Pharma Inc. and Watson Pharmaceuticals Inc. (patent infringement)
12/3: Pfizer Inc., Pfizer Ireland Pharmaceuticals, Warner-Lambert Company and Warner-Lambert Company LLC v. Kremers Urban LLC and KUDCO Ireland Ltd. (patent infringement)
12/7: Eurand Inc., Cephalon, Inc. and Anesta AG v. Anchen Pharmaceuticals and Anchen Inc. (patent infringement)
12/8: Cephalon Inc. and Cephalon France v. Actavis Group, Actavis Pharma Manufacturing Pvt Ltd. and Actavis, Inc. (patent infringement)
12/8: Delta Airlines Inc. v. Applied Interact LLC (patent infringement)
12/8: Eurand Inc., Cephalon, Inc. and Anesta AG v. Anchen Pharmaceuticals and Anchen Inc. (patent infringement)
12/8: LG Household & Healthcare Ltd. v. Procter & Gamble Company (patent infringement)
12/8: Pfizer Inc., Pfizer Ireland Pharmaceuticals, Warner-Lambert Company and Warner-Lambert Company LLC v. Dr. Reddy's Laboratories Ltd. and Dr. Reddy's Laboratories, Inc. (patent infringement)
12/10: Seattle Children's Hospital, Novartis AG, Novartis Vaccines and Diagnostics, Inc. and Novartis Pharmaceuticals Corporation v. Teva Parenteral Medicines Inc., Teva Pharmaceutical Industries Ltd. and Teva Pharmaceuticals USA, Inc. (patent infringement)
12/11: Cephalon Inc. and Cephalon France v. Mylan Pharmaceuticals Inc., Mylan, Inc., Matrix Laboratories Ltd. and Matrix Laboratories Inc. (patent infringement)

December 17, 2009

Mary Pat Thynge: Obviousness and the Limits of Document Discovery

In document discovery, relevance is broadly construed. But the doctrine has its limits. In a recent decision by magistrate judge Mary Pat Thynge, the Court rejected as irrelevant a request for documents concerning certain properties embodied in two prior art products. According to the Court, the request, made in part to support assertions of obviousness, could not illuminate the sufficiency of the defense:

"That the inherent teaching of a prior art reference is applicable to obviousness does not make the information requested by Mylan relevant since . . . obviousness is an objective legal construct, measured by whether the inherency would have been obvious to one skilled in the art."

As a result, the Court held that, as a matter of law, the requested documents were irrelevant to the issue of obviousness.

Eurand Inc. v. Mylan Pharma. Inc., C.A. No. 08-889-SLR (D. Del. Dec. 9, 2009) (Thynge, M.J.).


December 15, 2009

Joseph J. Farnan: Pre-Patent Commercial Negotiation Leads to On-Sale Bar

In a recent decision, district judge Joseph J. Farnan Jr. helped define the commercial boundaries of the on-sale bar's offer requirement. In the underlying litigation, the accused infringers grounded their invalidity argument on the patentee's alleged offer of the subject technology well before seeking its patent.

According to the patentee, its advances to a potential customer - which included a term sheet entitled "Bidder's Offer" - were inchoate and therefore could not constitute a formal offer capable of acceptance. The Court rejected this position, noting that the patentee's tender satisfied the traditional elements of an offer:

"Honeywell relies on the parties' business relationship and the alleged custom and practice in the industry to argue that the AIMS Proposal could not be a formal offer for sale because further negotiation between the parties was expected. In the Court's view, however, the fact that further negotiations might arise, or even be expected, does not preclude the AIMS Proposal from being an invalidating offer where, as here, the AIMS Proposal contained the essential terms of an offer and Honeywell manifested its intent to make an offer to Boeing." (Slip op. at 10.)

Thus, according to the Court, "[i]n this case . . . we have a definite offer, capable of acceptance, in the contract sense, and such offers have always been sufficient to invoke the on-sale bar." (Slip op. at 12.) With this negotiation history established, the Court entered judgment against the patentee on the defense of the on-sale bar.

Honeywell Int'l Inc. v. Nikon Corp., C.A. No. 04-1337-JJF (D. Del. Dec. 4, 2009) (Farnan, J.).


December 9, 2009

Fed. Cir. Reversal of Judge Robinson Opinion "undoubtedly marks a shift from past declaratory judgment cases."

Last week, the Federal Circuit reversed Judge Robinson's opinion in Hewlett Packard Co. v. Acceleron, LLC, C.A. No. 07-650-SLR, Memo. Op. (D. Del. Mar. 10, 2009), which we posted about earlier this year. The Fed. Circuit's opinion on this case is particularly interesting because, in their words, it "undoubtedly marks a shift from past declaratory judgment cases." Hewlett-Packard Company v. Acceleron LLC, No. 2009-1283 (Fed. Cir. Dec. 4, 2009).

Judge Robinson had dismissed this declaratory judgment action because "[l]itigation was . . . still too speculative a prospect to support declaratory judgment jurisdiction" when the case was filed. Hewlett Packard, C.A. No. 07-650-SLR at 13. At that time Acceleron had sent a letter to HP asking for "an opportunity to discuss" Acceleron's patent that "relates to Blade Servers." Id. at 1-2.

Acceleron's initial letter suggested that declaratory judgment jurisdiction might be an issue by stating that "we ask that you agree that all information exchanged . . . will not be used for any litigation purposes whatsoever, including but not limited to any claim that Acceleron has asserted any rights against any of your ongoing or planned activities, or otherwise created any actual case or controversy regarding the . . . patent." Id. The Court noted, however, that the letter did not include "a statement of infringement, identification of specific claims, claim charts, prior pleadings or litigation history, or the identification of other licensees," or "directly imply[] impending litigation." Id.

In reversing, the Fed. Cir. held that "The facts of this case, when viewed objectively and in totality, show that Acceleron took the affirmative step of twice contacting HP directly, making an implied assertion of its rights under the ’021 patent against HP’s Blade Server products, and HP disagreed. Therefore, we hold that there is declaratory judgment jurisdiction arising from a 'definite and concrete' dispute between HP and Acceleron, parties having adverse legal interests." Id. at 8-9.

The difference between the Fed. Cir. holding and the District of Delaware holding seems to turn on the degree to which a patent troll must "imply" that litigation was pending - Judge Robinson noted that Acceleron did not "direcly imply[] impending litigation," but the the Fed. Cir. held that Acceleron's "implied assertion of its rights," along with HP's disagreement, was enough.

The Fed. Cir. recognized that "it is implausible (especially after MedImmune and several post-MedImmune decisions from this court) to expect that a competent lawyer drafting such correspondence for a patent owner would identify specific claims, present claim charts, and explicitly allege infringement." Id. at 6. The Court also recognized that legitimate business interactions (such as a patent owner attempting to sell a patent) should not invoke declaratory judgment jurisdiction, id. at 6, but that Acceleron's letter here was no such communication. The letter asserted that its patents were "relevant" to one of HP's product lines and imposed a short deadline to respond. Further, the Fed. Cir. emphasized Acceleron's status as a non-practicing entity: Acceleron's implication of litigation was stronger because it was "a non-competitor patent holding company," and "solely a licensing entity, and without enforcement it receives no benefits from its patents." Id. at 3, 8.

In its conclusion, the Fed. Cir. praised Judge Robinson's opinion, and noted that their reversal represents an actual change in the law:

As the district court recognized in its careful opinion analyzing declaratory judgment jurisdiction, there is no bright-line rule for distinguishing those cases that satisfy the actual case-or-controversy requirement from those that do not. See MedImmune, 549 U.S. at 127. Our decision in this case undoubtedly marks a shift from past declaratory judgment cases. However, MedImmune has altered the way in which the Declaratory Judgment Act applies to patent law cases, requiring that legal interests be evaluated in patent cases under the general criteria of the Act. Our jurisprudence must consequently also evolve, and in this case the facts demonstrate adverse legal interests that warrant judicial resolution.

Id. at 9.

Hewlett-Packard Company v. Acceleron LLC, No. 2009-1283 (Fed. Cir. Dec. 4, 2009)

December 9, 2009

Judge Farnan: Markman Opinion on a Medical Patent

Judge Farnan recently issued a claim construction opinion in ICU Medical, Inc. v. RyMed Technologies, Inc., C.A. No. 07-468-JJR (D. Del. Dec. 3, 2009), an infringement case involving patents on intravenous medical connector valves used to connect fluid bags to an IV. The following terms were construed:

  • "Compressed State" - "the state of the seal when a medical implement causes axial compression"
  • "Decompressed State" - "the state of the seal when a medical implement is not causing axial compression"
  • "O-Ring Elements" - "portions having a circular outer surface that is wider at the middle than at the top or bottom."
  • "Resilient Seal" - "wherein, upon compression, the structure changes shape and, upon removal of the compression, the structure returns to its original shape."
  • "Resilient Seal Element" - "a sealing structure wherein, upon compression, the structure changes shape and, upon removal of the compression, the structure returns to its original shape."
  • "Generally Arcuate Segments" - "naturally separated divisions, portions or sections of the walls that are bent, curved like a bow or arc-shaped."
  • "Arcuate Segments Intersecting One Another" - "arcuate segments that meet or touch."
  • "Fills Essentially Completely" - "fills all of or almost all of the cavity adjacent to the opening to prevent fluid from leaking between the seal and the wall structure."
  • "Bearing Against Said Wall Structure Near Said Opening to Seal Said Opening" - "the seal is situated in contact with the wall structure [of the housing] near the opening of the proximal end of the housing to make the opening fluid tight."
  • "Pre-Slit" - "an opening made beforehand."
  • "Horizontal Groove" - "at least one groove which is perpendicular to an axis defined by the proximal and distal ends."
  • "Seated Within the Cavity" - "situated, positioned or located within the cavity."

Although some of the patent terms had been previously construed by another court, Judge Farnan rejected some of those constructions where the prior court had relied on the dictionary definition of some terms (such as "resilient"), because "[c]urrently, dictionary definitions are not favored as a source of ordinary meaning." Id. at 13, 19.

ICU Medical, Inc. v. RyMed Technologies, Inc., C.A. No. 07-468-JJR (D. Del. Dec. 3, 2009)

December 7, 2009

Attorney disqualification in D.N.J vs. D. Del.: Same facts, same rules, different interpretation of the appropriate remedy

Magistrate Judge Bongiovanni of the District of New Jersey recently considered Wyeth’s renewed request for the disqualification of Howry LLP (“Howry) as counsel to Boston Scientific Corporation (“BSC”), based on Howry's representation of Wyeth in another matter. Wyeth and Cordis Corp. v. Abbott Laboratories, et al., C.A. No. 08-230-JAP (D.N.J. Dec. 1, 2009). Judge Bogiovanni originally deferred the issue in light of Wyeth's motion for disqualification pending in the District of Delaware before Judge Robinson in a case involving the same parties and Howry LLP. In August, Judge Robinson found that Howry’s representation of BSC violated Rule 1.7. Boston Scientific Corporation, et al. v. Johnson & Johnson, et al., C.A. No. 07-765-SLR, at 7 (D. Del. Aug. 25, 2009). However, Judge Robinson declined to disqualify Howry due to, among other things, the unrelatedness of the BSC matter and the European matter in which Howry represented Wyeth, the fact that Howry’s Washington, D.C. office was representing plaintiffs here whereas Howry’s Europe-based attorneys were handling the matter in Europe, and that an ethical wall was in place. Id. at 8-9. Judge Bongiovanni, however, disqualified Howry on the sole basis of its Rule 1.7 violation. Judge Bongiovanni indicated that in the District of New Jersey the violation of Rule 1.7 should result in automatic disqualification. Wyeth, C.A. No. 08-0230, at 2 (citing In re Cendant Corp. Securities Litig., 1234 F. Supp. 2d 235, 248-50 (D.N.J. 2000) (“New Jersey simply does not permit concurrent representation when the interests of two current clients are adverse.”).

Wyeth and Cordis Corp. v. Abbott Laboratories, et al., C.A. No. 08-230-JAP (D.N.J. Dec. 1, 2009)

December 7, 2009

Chief Judge Sleet: Complaints Patterned After Form 18 Still Acceptible Post-Iqbal

Chief Judge Sleet recently issued an opinion on a 12(b)(6) motion to dismiss in Mark IV Industries Corp. v. Transcore, L.P., C.A. No. 09-418-GMS (D. Del. Dec. 2, 2009). Defendant Transcore moved to dismiss Mark IV's complaint based mainly on Mark IV's failure to adequately plead its infringement claims under Ashcroft v. Iqbal, 129 S. Ct. 1937 (2009), because the complaint "lacks sufficient specificity and factual support." Id. at 4.

Transcore argued that Iqbal overrode previous Federal Circuit precedent holding that a complaint need only cite the asserted patent as a whole, and not each element of the claims of the asserted patent, and that "a plaintiff is not required to plead specifics as to how an allegedly infringing product works." Id. at 5-6. The Court disagreed, and held that the Federal Circuit precedent remains valid after Iqbal, and that complaints that comply with FRCP Form 18 (setting out the structure of an infringement complaint) are still sufficient. Id. at 6-7.

Transcore also included allegations that the complaint was brought in bad faith (the Court found no bad faith), and that the suit was precluded by a prior agreement between the parties that contained a mediation provision. Id. at 7. The Court held that a 12(b)(6) motion to dismiss was not the proper "avenue[] of attack" such a provision, but kindly directed Transcore towards "a Rule 7(a) counterclaim and a motion to compel" instead. Id. at fn. 1.

Mark IV Industries Corp. v. Transcore, L.P., C.A. No. 09-418-GMS (D. Del. Dec. 2, 2009)

December 3, 2009

Delaware Court of Chancery: Defining the Role of "Delaware Counsel"

In a decision issued yesterday, Vice Chancellor J. Travis Laster offered an insightful view on the role of "Delaware counsel":

"It is of course true that Delaware counsel and forwarding counsel necessarily allocate responsibility for work, and that in some cases, the allocation may be heavily weighted towards forwarding counsel. It is also true that forwarding counsel may have primary responsibility for a matter from the client's perspective . . . . This is perfectly understandable, efficient, and appropriate. But it does not alter the Delaware lawyer's fundamental responsibility for the Delaware proceeding.

* * *

If a Delaware lawyer signs a pleading, submits a brief, or signs a discovery request or response, it is the Delaware lawyer that takes the positions set forth therein."

State Line Ventures LLC v. RBS Citizens N.A., C.A. No. 4705-VCL (Del. Ct. Ch. Dec. 2, 2009) (Laster, V.C.).


December 1, 2009

Magistrate Judge Joel Schneider: Transfer Warranted Despite Defendants' Incorporation in Delaware

A recent venue-transfer decision by Magistrate Judge Joel Schneider illustrates the limits of Delaware courts' deference to a defendant's state of incorporation. In granting a request to transfer the patentee's infringement action to the Northern District of California, the Court noted that five of the nine defendants seeking transfer are incorporated in Delaware. In the District of Delaware, this factor typically weighs against transfer.

The underlying litigation, however, presented no other link to Delaware:

"Plaintiff has not dispelled the key fact that the essence of the case is a dispute between two California companies over patents and products developed in California, and that the key evidence and witnesses are located in California . . . . There is simply no getting around the fact that all key identified witnesses and evidence is located in California." (at 25)

Although the fact of a defendant's domestic incorporation will often persuade a Delaware court to retain the litigation, this decision is an example of how other convenience factors can override that preference.

Teleconference Systems v. Proctor & Gamble Pharma. Inc., C.A. No. 09-200-JBS-JS (D. Del. Nov. 25, 2009) (Schneider, M.J.).

December 1, 2009

New District of Delaware Intellectual Property Case Filings

10/9: Congoleum Corporation v. Metroflor Corporation and Halstead New England Corporation (patent infringement)
10/13: BASF Catalysts LLC v. Johnson Matthey Inc. and Johnson Matthey Catalysts, LLC (patent infringement)
10/13: Stiefel Research Australia Pty Ltd. v. Perrigo Company, Perrigo Israel Pharmaceuticals Ltd. (patent infringement)
10/14: BAE Systems Information and Electronic Systems Integration Inc. v. Aeroflex Incorporated and Aeroflex Plainview Inc. (patent infringement)
10/14: Shelbyzyme LLC v. Genzyme Corporation (patent infringement)
10/15: Tristrata Technology Inc. v. Vivant Pharmaceuticals LLC and betterhealthyskin.com LLC (patent infringement)
10/20: Muthalampet v. North American Hot Breads Inc. (trademark infringement)
10/20: Wyeth v. Intervet Inc. and Boehringer Ingelheim Vetmedica, Inc. (patent infringement)
10/22: Cephalon Inc. v. Barr Pharmaceuticals, Inc., Barr Pharmaceuticals, LLC and Barr Laboratories Inc. (patent infringement)
10/22: Nokia Corporation v. Apple Inc. (patent infringement)
10/23: Alcon Research Ltd. v. Apotex Corporation and Apotex Inc. (patent infringement)
10/26: St. Clair Intellectual Property Consultants Inc. v. Apple Inc. (patent infringement)
10/26: Radio Foods LLC v. Born Free Holdings Ltd. (trademark infringement)
10/27: Mathilda and Terence Kennedy Institute of Rheumatology Trust v. Amgen Inc. and Wyeth (patent infringement)
10/28: Deston Therapeutics LLC, Unigen Pharmaceuticals Inc. v. TriGen Laboratories Inc. and Irisys Inc. (patent infringement)
10/29: Aventis Pharma S.A. and Sanofi-Aventis US, LLC v. Sandoz Inc. (patent infringement)
10/29: Drager Medical AG & Co. KG, Draeger Medical Inc. and Draeger Medical Systems Inc. v. Maquet Inc. and Maquet Critical Care AB (patent infringement)
10/29: Eurand Inc. and Anesta AG v. Teva Pharmaceuticals USA, Inc., Teva Pharmaceutical Industries Ltd. and Barr Laboratories, Inc. (patent infringement)
11/2: Verizon Clinton Center Drive Corp. v. EON Corporation (patent infringement)
11/3: Analog Devices Inc. v. Knowles Electronics LLC (patent infringement)
11/5: Purdue Pharma Products LP and Napp Pharmaceutical Group Ltd. v. Sun Pharmaceutical Industries, Inc., Sun Pharma Global FZE and Caraco Pharmaceutical Laboratories Ltd. (patent infringement)
11/6: NetDeposit LLC v. BServ Inc., Diebold Inc. and Wausau Financial Systems, Inc. (patent infringement)
11/6: Takeda Pharmaceutical Company Ltd. and Takeda Pharmaceuticals North America Inc. v. Teva Pharmaceuticals USA, Inc. and Teva Pharmaceutical Industries Ltd. (patent infringement)
11/10: Accenture Global Services GmbH and Accenture LLP v. Guidewire Software Inc. (patent infringement)
11/10: Chase Bank USA N.A. v. Source Inc. (patent infringement)
11/13: Brinkmeier v. BIC Corporation and BIC USA Inc. (patent infringement)
11/13: Cooper Notification Inc. v. Twitter Inc., Everbridge, Inc. and Rave Wireless Inc. (patent infringement)
11/16: FuzzySharp Technologies Inc. v. Nvidia Corporation, Dell Inc., Sony Electronics, Inc., Sony Computer Entertainment America, Inc. and Matrox Graphics Inc. (patent infringement)
11/17: Edwards Lifesciences AG and Edwards Lifesciences LLC v. Medtronic Inc., Medtronic CoreValve LLC and Medtronic Vascular, Inc. (patent infringement)
11/19: Abbott Laboratories and Wisconsin Alumni Research Foundation v. Teva Parenteral Medicines Inc., Teva Pharmaceuticals USA, Inc. and Teva Pharmacuetical Industries Ltd. (patent infringement)
11/19: Allergan Inc., Allergan USA Inc., Allergan Sales, LLC, Endo Pharmaceuticals Solutions Inc., Supernus Pharmaceuticals Inc. v. Sandoz Inc. (patent infringement)
11/20: Xilinx Inc. v. LSI Corp. and Agere Systems, Inc. (patent infringement- declaratory judgment)
11/20: Transcore LP v. Mark IV Industries Corp. (patent infringement)
11/23: Pfizer, Inc., Pfizer Ireland Pharmaceuticals, Warner-Lambert Company and Warner-Lambert Company, LLC v. Mylan Inc., Matrix Laboratories Limited and Matrix Laboratories, Inc. (patent infringement)
11/25: Daiichi Sankyo Co. Ltd. and Daiichi Sankyo Inc. v. Sandoz Inc. (patent infringement)
11/25: Eleven Engineering Inc. and Eleven Engineering Game Control LLC v. Nintendo Co. Ltd., Nintendo of America Inc., Sony Corporation, Sony Computer Entertainment Inc., Sony Computer Entertainment America, Inc., et al. (patent infringement)
11/25: Schering-Plough Healthcare Products, Inc. v. Perrigo Company (trademark infringement)
11/25: Sidergas SpA v. Lincoln Electric Company, Inc. and Lincoln Global Inc. (patent infringement)