Delaware IP Law Blog

6/18: Abbott Laboratories v. Impax Laboratories, Inc. (patent infringement - Hatch-Waxman)
6/19: QSoft Consulting Limited v. Teddy Tong and tdtong ltd. (trademark)
6/21: Weyerhaeuser Company v. Dow Chemical Company, University of Leeds, BTG International Ltd. and Ian M. Ward (patent infringement)
6/22: MedPointe Healthcare, Inc. v. Sun Pharmaceutical Industries, Ltd. (patent infringement)
6/22: Boston Scientific Corporation and Boston Scientific Scimed, Inc. v. Johnson & Johnson, Inc. and Cordis Corporation (declaratory judgment for patent non-infringement)

The Judicial Panel on Multidistrict Litigation (MDL) has ordered fifteen related patent cases consolidated and transferred to the District of Delaware. Judge Gregory M. Sleet, who had presided over several of the pending cases, will now hear the consolidated action, which involves nine patents related to high-speed internet and "related" services. See Docket, 07-md-1848-GMS (filed June 21, 2007).

By ordering the transfer and consolidation, the MDL rejected the assertion that unique questions of fact predominate over any commonalities: "Transfer under [28 U.S.C] Section 1407 does not require a complete identity or even a majority of common factual or legal issues as a prerequisite to transfer." Indeed, the MDL expressly commented on the benefits of trying the cases in Delaware: "[W]e are assigning this litigation to a seasoned jurist in a readily accessible district with the capacity to handle this litigation."

Read the order here: In re Rembrandt Technologies LP Patent Litigation, No. 1848 (J.P.M.L. June 18, 2007) (Hodges, J.).

Does an attorney have any duties to disclose or for that matter not take a case where they previously represented the parent corporation of an adverse party in prior unrelated litigation?

The District of Delaware recently had on opportunity to opine as to whether such conduct violates Rule 1.9 of the Model Rules of Professional Conduct. In Talecris Biotherapeutics, Inc. v. Baxter International, Inc., C.A. No. 05-349-GMS, Memorandum (D. Del. June 14, 2007), the plaintiff moved to disqualify defendant and counterclaim plaintiff's counsel. This particular attorney had previously represented a parent company of the counterclaim defendant in a previous action fourteen years ago that surrounded infringement claims of a non-asserted patent and product. Id. at 2. The patent that was litigated in the prior litigation, however, has been asserted as prior art rendering the plaintiff's patent invalid. The attorney was only a third-year associate at the time and was a member of a four person trial team. Id.

The Court found that the motion should be denied as the attorney's conduct did not violate Rule 1.9. Rule 1.9 prevents a lawyer from "taking a position adverse to a former client in the same or related matter unless the former client consents after consultation." Id. at 3. The Court considered three factors in determining whether the matters were "substantially related" and therefore the representation would be in violation of Rule 1.9: "(1) the nature and scope of the prior representation; (2) the nature and scope of the current representation; and, (3) during the prior representation, the possibility that the client disclosed confidences to his attorney which could be relevant to the current action and detrimental to the former client in the course of the current litigation." Id. at 4.

The particular attorney in this case, was only a third-year associate during the prior representation and only interacted with the former client during the early stages of discovery in litigation that occurred 15 years ago and lasted only 6 months. Id. at 5. The Court admitted, that the fact that the defendants are now asserting the patent that was at issue in the prior litigation as prior art to the patent at issue in the current litigation does raise some overlap. Id. However, it also noted that this patent appears to have been disclosed during the prosecution of the patent at issue and appears on the face of that patent. Therefore, the Court found it not reasonable to infer that the defendant's current reliance on this prior art patent was as a result of confidential information the attorney received during that prior litigation.

The motion was thus denied as the "substantive relationship between the two litigations is tenuous." Id. at 7.

In a footnote, the Court stated that "the prudent course of action would have been" for the attorney to have provided notice to her client of the potential conflict and request a waiver as soon as identifying them as a potentially adverse party. Id. at 7 n.3.

Therefore, when in doubt, disclose and get a waiver so as to protect yourself from being in violation of the Model Rules.

6/8: Callaway Golf Company v. Acushnet Company (patent infringement)
6/8: Ronald A. Katz Technology Licensing, L.P. v. Citizens Communications Co., et al. (patent infringement)
6/15: Febit Biotech GMBH v. Codon Devices, Inc. (patent infringement)

Magistrate Judge Thynge issued an interesting decision last week that detailed the intersection of patent litigation and the arbitration of commercial disputes. Plaintiff Digene brought an infringement action against one defendant and later added inducement and tortious interference claims against another, Co-Defendant Beckman. The Court stayed the patent case and ordered "all" of Digene's claims against Beckman to arbitration. Following the arbitrator's favorable interpretation of a prior licensing agreement between the parties, Beckman sought to dismiss the inducement and interference claims on res judicata grounds.

The Court agreed that Digene had the opportunity to litigate its commercial and inducement claims before the arbitrator: "In light of Beckman's license under the [agreements], whether it induced infringement . . . by its relationship with Ventana was dependent upon the interpretation of the [agreements between the parties]. Further, because of Beckman's rights under the [agreements], whether it could tortiously interfere with Digene's potential business opportunities also hinged upon the same agreements . . . ."

As a result, Digene's attempts to continue the litigation following the arbitrator's decision could not proceed: "[Digene's claims] have already been evaluated twice by two different forums between the same parties and Digene, in essence, is asking for a third opportunity."

The Court's rationale highlights the importance of avoiding, when dealing with multiple claims of varying subject matter, the prospect of this type of arbitration estoppel.

Digene v. Ventana Medical Systems, C.A. No. 01-752-MPT (D. Del. June 12, 2007) (Thynge, M.J.).

Most commentators agree that the Supreme Court's recent KSR decision effectively broadened the federal courts' inquiry in determining obviousness. But how will this new paradigm affect pending litigation? Chief Judge Sue L. Robinson answered that question in part in a succinct memorandum order on Thursday. At trial, defendants asserted an invalidity defense based on obviousness. The jury disagreed and returned a verdict of infringement. Defendants then moved for judgment as a matter of law, but failed to attack the jury's nonobviousness finding. Herein lies the rub.

When KSR issued several months later, defendants moved for reconsideration of the verdict in light of the Supreme Court's repudiation of the so-called "teaching, suggestion, or motivation" test. The Delaware court declined to reopen the issue, stating that the "question of obviousness in this case was not open for review by this court when KSR issued." Only if the obviousness issue were "still open on direct review" would the Court re-examine the jury's finding in light of the new precedent.

In other words, to preserve the ability to move to reconsider, a party must have put the contested issue before the court in the first place. Relying on the jury's adverse finding alone is insufficient to trigger the retroactive application of new precedent.

Praxair v. ATMI, C.A. No. 03-1158-SLR (D. Del. June 14, 2007) (Robinson, C.J.)

Praxair, Inc. v. ATMI, Inc., C.A. No. 03-1158-SLR (D. Del. June 13, 2007).

In December 2005, a jury returned a verdict in favor of Praxair, finding two of its patents valid and infringed. A bench trial regarding inequitable conduct followed the jury trial. This opinion addresses the inequitable conduct issue.

Praxair asserted three references that were not disclosed to the PTO. The Court found only two of those references were sufficiently material to merit further consideration. Of these two remaining references, only one reference was found to have been intentionally withheld from the examiners of the two patents at issue. Interestingly, the court relied on the high materiality of the omitted reference and the "absence of any explanation for the nondisclosure" to infer an intent to deceive. Op. at 12. The Court found significant the facts that 1) Praxair was using the technology in the omitted reference in its own products for several years before filing the patent applications, and 2) one of the inventors built devices that utilized the technology in the omitted reference. Op. at 12, fn 9.

Moral of the story: If you are a patent prosecutor, this is the type of decision that might make you lose sleep. You ask the inventors to turn over any potentially relevant prior art, but do your words go in one ear and out the other? Maybe the take away is for patent attorneys to put their requests to inventors in writing (if you don't already) – just in case.

6/5: BigBand Networks, Inc. v. Imagine Communications, Inc. (patent infringement)
6/7: Pfizer, Inc., Pfizer Ireland Pharmaceuticals, Warner-Lambert Co., Warner-Lambert Company, LLC, Warner-Lambert Export Ltd. v. Teva Pharmaceuticals USA, Inc. (patent infringement)
6/7: Ronald A. Katz Technology Licensing, L.P. v. Comcast Corporation (patent infringement)

Solvay Chemicals, Inc. v. OCI Chemical Corporation (patent infringement)
Boston Scientific Corporation and Boston Scientific, Scimed, Inc. v. Johnson & Johnson, Inc. and Cordis Corporation (declaratory judgment of patent non-infringement)

On May 17, 2007, Judge Thynge issued a claim construction opinion in Crown Packaging Technology, Inc. and Crown Crok & Seal USA, Inc. v. Rexam Beverage Can Co. C.A. No. 05-608-MPT, Memorandum Order (D. Del. May 17, 2007). Consistent with Phillips v. AWH Corp, 415 F.3d 1303 (Fed. Cir. 2005), the court construed various claim terms set forth in both parties' patents related to beverage can technology.