October 23, 2009

Judge Robinson Claim Construction/Validity Opinion

On Monday, Judge Robinson issued a thorough, lengthy opinion resulting from a patent infringement bench trial where Judge Robinson found in favor of plaintiff Alcon, despite several claim construction and validity arguments by defendant Teva. Alcon, Inc. v. Teva Pharmaceuticals USA, Inc., Civ. No. 06-234-SLR (Oct. 19, 2009). Teva had filed an Abbreviated New Drug Application (“ANDA”) “to market a generic version of the antibacterial drug VIGAMOX® proprietary to plaintiffs.” Id. at 1. VIGAMOX is an antibiotic, and its active ingredient, moxifloxacin hydrochloride, is protected by Patent No. 6,716,830, according to Alcon. Teva’s submission of an ANDA is an act of infringement, id. at 14, so the two issues in this case were (1) claim construction (whether the Teva’s generic is covered by the Alcon’s patent) and (2) validity.

Claim construction turned solely on the definition of “moxifloxacin” as used in claim 1 of Alcon’s ‘830 patent. Id. at 14-15. Both Teva’s generic and Alcon’s patent include “moxifloxacin” as the active ingredient, but Teva argued that Alcon’s patent had redefined “moxifloxacin” to mean something narrower than the ordinary industry understanding of that term. According to Teva, “because the specification . . . provides an alternate meaning for the claim term ‘moxifloxacin’ in the form of the depiction of a structurally different compound, the ordinary meaning of moxifloxacin has been displaced.” Id. at 18. Teva further argued that the specification referred to a “new class of antibiotics,” and that quinolones, the class to which moxifloxacin belongs, “were not a new class of antibiotics; therefore, the subject matter of the ‘830 patent must be directed to a different family of compounds.” Id. The court rejected each of these arguments, because “[t]he record before the court is replete with instances in which Teva’s proposed construction is at odds with the specification of the ‘830 patent so as to cause an absence of the . . . clarity, deliberateness and precision” required for a patentee to “act as his own lexicographer.” Id. at 18-19.

The validity analysis started with anticipation, which focused on a prior patent. Id. at 21-26. The prior patent disclosed a similar moxifloxacin composition, but at a different concentration range. Id. at 24-25. The ‘830 patent claimed a concentration range of “0.1 to 1.0 wt%,” while the prior patent’s range was “0.5 to 99.5 wt%.” Id. The court held that the prior patent did not anticipate the ‘830 patent, based on a genus/species analysis of the “range disparity” between the claimed and disclosed concentration numbers. Id. at 25. The court also rejected Teva’s argument that the prior patent had an “inherent range” that extended below the explicitly disclosed range. Id. at 26.

The court then addressed obviousness. Teva argued “that a motivation to combine exists inasmuch as moxifloxacin would have been ‘obvious to try’ in a topical ophthalmic composition, due to both market pressure and the existence of ‘a finite number of identified, predictable solutions’ to treat ophthalmic infections,’” and further that a person of ordinary skill in the art would have expected the combination to have desirable properties. Id. at 28. The court rejected each of these arguments, holding that “the record indicates anything but a finite number of identified, predictable solutions,” and that even if the result of substitution was predictable, that “provides little insight” into the “crucial” question of “whether the prior art motivated a person of ordinary skill to even select moxifloxacin for use in a . . . composition.” Id. at 30. In particular, the court focused on the fact that “the prior art consistently taught away from the use of moxifloxacin” in such compounds, due to its toxicity, poor performance, and ineffectiveness against certain “key” pathogens. Id. at 36, 30-33. Secondary considerations also supported non-obviousness, including initial skepticism by other experts in the field, the long felt need for a compound like this, the commercial success of VIGAMOX(r) (which achieved hundreds of millions of dollars in sales), and some unexpected properties of the invention. Id. at 35-36.

Finally, the court addressed the form requirements for validity, including best mode, written description, and enablement. Teva argued that the inventor had known, but failed to disclose, that the salt form of moxifloxacin was more effective, thus failing the best mode requirement; the court held that the inventor was not subjectively aware of the increased effectiveness of the salt form, and even if he had been, the salt form provides no material improvement anyway. Id. at 39-41. Regarding the written description requirement, Teva claimed that the specification called for a preservative, but the composition claimed did not include one; the court held that the specification encompassed embodiments that did not include a preservative, and thus met the requirement. Id. at 41-44. Finally, as to enablement, Teva asserted that the claim required undue experimentation, based on a lack of process steps in the specification; the court held that a person of ordinary skill in the art could determine appropriate steps and practice the invention.

Alcon, Inc. v. Teva Pharmaceuticals USA, Inc., Civ. No. 06-234-SLR (Oct. 19, 2009)

October 22, 2009

Sanctions Ordered in Honeywell v. Nikon

In Honeywell International, Inc. v. Nikon Corp., C.A. No. 04-1337-JJF (Oct. 14, 2009), Judge Farnan, adopting the recommendation of Special Master Vincent J. Poppiti, ordered $18,000 in sanctions against InnoLux, a defendant in a patent infringement case, for its discovery behavior. Id. at 2. These sanctions resulted from a November 25, 2008 order requiring InnoLux to give plaintiff Honeywell an opportunity to re-depose the InnoLux's 30(b)(6) witness, because at the original deposition InnoLux rased multiple groundless objections, improperly instructed the witness not to answer questions allegedly outside of the scope of the discovery order, and possibly failed to adequately prepare the witness.

According to the Court's original order, "each and every objection and ensuing instruction not to answer on the grounds of work product was improper, and each is hereby stricken." Nov. 25th Order, at 3. Further, "It is inappropriate to instruct a 30(b)(6) witness not to answer a question, unless there is an appropriate claim of privilege." Id. Honeywell raised concerns about the witness's lack of preparation, and the number of times that the witness answered "I don't know"; the Court found that each of the questions that elicited an "I don't know" or to which an objection was raised were actually within the scope of the 30(b)(6) notice. Id. at 4-5. Due to the InnoLux's behavior, the Court ordered that the 30(b)(6) witness be re-deposed, and that the firm bear the costs of the deposition, including attorney's fees. Id. at 5. Although the court did not characterize these costs as "sanctions" in the original order, the Oct. 14 order referred to them as "sanctions," and set the amount at $18,000. Oct. 14 Order, at 2.

Continue reading "Sanctions Ordered in Honeywell v. Nikon" »

October 22, 2009

Joseph J. Farnan: Transfer Denied After Movant Filed Its Own Suit in Delaware

A recent decision by district judge Joseph J. Farnan Jr. reaffirms the difficulty parties often have in transferring actions out of the District of Delaware. In considering defendant Hologic's motion to transfer venue, the Court recognized that nearly identical litigation between the same parties was already pending in the transferee jurisdiction. But, unlike most other transfer scenarios, Hologic had also filed a third action in Delaware, seeking to enforce its own patents on the same technology.

According to the Court, Hologic's decision to affirmatively litigate its own patents in Delaware weakened its position on transfer:

"The fact that Hologic initiated suit against Ethicon in this District - even though the parties were involved in other patent litigation concerning similar technology in the Southern District of Ohio - indicates that Hologic does not consider this District to be an inconvenient forum."

As a result, Hologic could not justify a transfer out of Delaware. This case stands as a reminder that first-filed pending litigation among the parties, which usually favors a transfer, can also stand as an impediment to obtaining a new forum.

Ethicon Endo-Surgery Inc. v. Hologic Inc., C.A. No. 09-580-JJF (D. Del. Oct. 15, 2009) (Farnan, J.).

October 21, 2009

Judge Robinson: Motion to amend complaint to add inequitable conduct claim DENIED under new Exergen standard

In Robert Bosch LLC v. Pylon Manufacturing Corp., C.A. No. 08-542-SLR (D. Del. Oct. 19, 2009), Judge Robinson applied the Federal Circuit Exergen decision to Plaintiff’s motion to amend its complaint to add a claim of inequitable conduct. Plaintiff based its motion to amend on the assertion that one of the patent-in-issue’s inventors submitted an affidavit to the PTO containing a misrepresentation regarding the affiant’s review of the related application. Id. at 3. While agreeing with Plaintiff that submitting a false affidavit to the PTO “establishes at least a threshold level of materiality,” Judge Robinson noted that “there was no allegation that the affiant at bar did not contribute to the invention, or that the application that matured into the ‘380 patent contains otherwise false representations.” Id. at 4. Judge Robinson denied Plaintiff’s motion to amend because, under Exergen, she will not allow an inequitable conduct claim “to be pursued after the close of discovery when there are insufficient allegations of underlying facts from which [she] may reasonably infer that the material misrepresentation was made with a specific intent to deceive the PTO.” Id. (emphasis added).

October 20, 2009

Chief Judge Gregory M. Sleet: Limits Disputed Claim Terms Per Patent to 10 in All Future Patent Actions

In an order issued in Grape Technology Group, Inc. v. Jingle Networks, Inc., Chief Judge Sleet pronounced in a footnote that the Court will impose a limit of 10 disputed claim terms per patent for claim construction in all future patent actions. Specifically, he noted:

"Although disinclined to do so in the past, the court - regrettably - will impose a limit of 10 disputed terms per patent for claim construction in this and all future patent actions." Grape Technology Group, Inc. v. Jingle Networks, Inc., C.A. No. 08-408-GMS, Order, at n. 1 (D. Del. October 20, 2009).

Grape Technology Group, Inc. v. Jingle Networks, Inc., C.A. No. 08-408-GMS, Order (D. Del. October 20, 2009).



October 15, 2009

Judge Hillman: Registration Requirements for Image Published on Foreign Website

This opinion, by Judge Hillman (sitting by designation from the District of New Jersey pursuant to the standing order in this Court), addreses an issue of first impression for the Court related to subject matter jurisdiction over copyrighted images on the Internet. Moberg v. 33T LLC, C.A. No. 08-625-MLH-JS, Opinion (D. Del. Oct. 6, 2009). Pursuant to the Copyright Act, a plaintiff alleging infringement os a U.S. work must have registered the work. Id. at 5. The work plaintiff alleged was infringed was posted on a German website. Defendant argued the work was a U.S. work that plaintiff failed to register and therefore this Court lacked jurisdiction to hear any infringement action. Id. at 5-7. The Court, therefore, needed to decide whether a photograph posted to a foreign website is simultaneously "published" everywhere and therefore is a U.S. work and must be registed. Id. at 6-7.

The Court found that this work was not "published simultaneously" worldwide and therefore is not a U.S. work subject to registration. Id. at 14-15. A different finding would be contrary to the Berne Convention, would "allow American citizens to infringe on foreign copyrighted works without fear of legal retribution," and the United States copyright laws "provide for protection of foreign works in the United States without requiring the artists to undetake any formalties in the United States." Id.

Moberg v. 33T LLC, C.A. No. 08-625-MLH-JS, Opinion (D. Del. Oct. 6, 2009).

October 12, 2009

Special Master Poppiti Denies Plaintiffs’ Motion to Dismiss Defendant InnoLux Without Prejudice

In Honeywell International Inc. et al. v. Apple Computer, Inc. et al., C.A. 04-1337-JJF (D. Del. Oct. 5, 2009), Honeywell filed a motion to dismiss Defendant InnoLux without prejudice under Fed. R. Civ. P. 41, while InnoLux, in addition to previously filing a motion for summary judgment, requested that InnoLux be dismissed from the litigation with prejudice. Id. at 1-2. Special Master Poppiti denied both requests for dismissal. Instead, Special Master Poppiti gave Honeywell two days to decide whether they would “either (1) accept dismissal of InnoLux with prejudice or (2) withdraw the Motion and proceed to a resolution of InnoLux’s pending Motion for Summary Judgment.” Id. at 2, 14. Special Master Poppiti reasoned that the factors evaluated to determine whether voluntary dismissal without prejudice would prejudice the dismissed defendant weighed in InnoLux’s favor. Id. at 6-12.

Honeywell International Inc. et al. v. Apple Computer, Inc. et al., C.A. 04-1337-JJF (D. Del. Oct. 5, 2009)

October 9, 2009

New District of Delaware Intellectual Property Case Filings

9/9: Warner Chilcott Company LLC v. Lupin Limited and Lupin Pharmaceuticals Inc. (patent infringement)
9/15: Bayer Schering Pharma AG, Bayer Healthcare Pharmaceuticals Inc., Schering Corporation v. Teva Pharmaceuticals USA, Inc. and Teva Pharmaceutical Industries Ltd. (patent infringement)
9/16: Dorman Products Inc. v. Gates Corporation (trademark infringement)
9/16: Fair Isaac Corporation v. Actimize Inc. and NICE Systems Ltd. (patent infringement)
9/17: US Philips Corporation v. Samsung Electronics Company Ltd. and Samsung Electronics America Inc. (patent infringement)
9/18: Research Foundation of State University of New York, New York University, Galderma Laboratories, Galderma Laboratories LP v. Impax Laboratories (patent infringement)
9/18: Ricoh Company Ltd. and Ricoh Americas Corporation v. Oki Data Corporation and Oki Data Americas Inc. (patent infringement)
9/18: St. Clair Intellectual Property Consultants Inc. v. Apple Inc., Toshiba Corporation, Toshiba America Information Systems, Inc. and Tohsiba America, Inc. (patent infringement)
9/21: Life Technologies Corporation, Applied Biosystems LLC, Institute for Protein Research, Alexander Chetverin, Helena Chetverina, et al. v. Illumina Inc. and Solexa Inc. (patent infringement)
9/21: WhoGlue Inc. v. Facebook Inc. (patent infringement)
9/23: Eurand Inc. and Anesta AG v. Anchen Pharmaceuticals Inc. and Anchen Inc. (patent infringement)
9/25: Cephalon Inc. v. Watson Pharmaceuticals Inc., Watson Laboratories, Inc. and Watson Pharma Inc. (patent infringement)
10/5: Fairchild Semiconductor Corporation v. Infineon Technologies AG, Infineon Technologies North America Corporation (patent infringement)
10/6: Elan Pharma International Ltd. and Jazz Pharmaceuticals Inc. v. Actavis Elizabeth LLC, Anchen Pharmaceuticals Inc. and Anchen Incorporated (patent infringement)
10/6: Pfizer Inc., Pfizer Pharmaceuticals LLC, Pfizer Ireland Pharmaceuticals, Pfizer Limited and CP Pharmaceuticals International CV v. Sandoz Inc. (patent infringement)
10/7: Mekiki Co. Ltd. and Mekiki Creates Co. Ltd. v. Facebook Inc. (patent infringement)
10/8: The Medicines Company v. PLIVA-HRVATSKA d.o.o, PLIVA d.d., Barr Laboratories Inc., Barr Pharmaceuticals Inc., Barr Pharmaceuticals, LLC, et al. (patent infringement)

October 9, 2009

Chief Judge Gregory M. Sleet: Markman Order

In Aventis Pharma S.A. v. Hospira, Inc., Judge Sleet construed several terms related to three patents on technology involving taxane (an anti-cancer drug) derivatives. C.A. Nos. 07-721-GMS, 08-496-GMS, Amended Order (D. Del. Oct. 5, 2009).

- "stock solution": The Court construed this term consistent with its plain meaning to mean "a concentrated solution."

- "essentially free or free of ethanol": The Court construed this term to mean "no more than 5% ethanol by volume" for a stock solution" and "the same amount of ethanol as a stock solution with no more than 5% ethanol by volume" for a perfusion.

-"dissolved": The Court gave this term its plain and ordinary meaning.

-"consisting essentially of": The Court construed this common claim term to mean "composed of the listed ingredients and may include other ingredients that do not affect the basic and novel properties of the invention."

-"which contains": The Court foundt his term to be an open ended term which does not exclude additiona ingredients and therefore construed the term mean "comprising."

-"Taxotere": The Court construed this term to mean the chemical compound "docetaxel."

-"capable of being injected without anaphylactic or alcohol intoxication manifestation": The Court construed this term to mean "having reasonable expectation of being injected without causing anaphylactic or alcohol intoxication manifestation."

Aventis Pharma S.A. v. Hospira, Inc., C.A. Nos. 07-721-GMS, 08-496-GMS, Amended Order (D. Del. Oct. 5, 2009).

October 9, 2009

Judge Joseph J. Farnan: Supplemental Claim Construction Order

In the Court's Order construing some of the claim terms at issue in this infringement action, Judge Farnan requested supplemental briefing for the disputed claim term "homogeneously branched linear ethylene/ά-olefin interpolymers." See The Dow Chemical Company v. Nova Chemicals Corporation (Canada), C.A. No. 05-737-JJF, Order (D. Del. June 25, 2009).


The parties submitted additional briefing and the Court has construed the term to mean the following:

- "homogeneously branched linear ethylene/ά-olefin interpolymers": "ethylene ά-olefin interpolymer in which the comonomer is randomly distributed within a given interpolymer molecule and wherein substantially all of the interpolymer molecules have the same ethylene/comonomer ratio within that interpolymer. Such interpolymer has no long chain branching."

The Dow Chemical Company v. Nova Chemicals Corporation (Canada), C.A. No. 05-737-JJF, Memorandum Opinion and Order (D. Del. September 24, 2009).