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).


October 8, 2009

Judge Sue L. Robinson: Belated Discovery Justifies New Defense

A recent memorandum order by district judge Sue L. Robinson illustrates the importance of supplementing discovery - and the risks of discovery delay. In response to certain allegedly late-produced discovery, the defendants supplemented their contention-interrogatory responses to assert enablement and written-description defenses. The plaintiff objected and moved to strike the new defenses, which came after the supplementation deadline in the scheduling order.

The Court refused to strike the Section 112 defenses on the ground that "[t]he evidentiary basis for the defense rests, in large part, on information within the plaintiff's control." Plaintiff, therefore, "has the opportunity to respond within the context of expert discovery." Although unaddressed in the Court's order, perhaps defendants' explanation that the defenses could not be asserted until they received the belated discovery carried the day.

Smithkline Beecham Corp. v. Barr Pharmaceuticals Inc., C.A. No. 08-112-SLR (D. Del. Sept. 23, 2009) (Robinson, J.).

October 7, 2009

Chief Judge Sleet: Brief Markman Order

In a brief Markman order, Chief Judge Sleet construed the following terms:

  • "Controlled release pellet formulation," construed to mean "an oral composition formulated to ensure that the active compound is released preferentially at the site of the disease to be treated." Id. at 1-2.

  • "A core consisting of a non-pareil seed," construed to mean "the innermost part of the pellet consisting of a non-pareil seed and optionally one or more pharmaceutically acceptable excipients." Id. at 2.

  • "A core consisting of ... a seed in which a glucocorticosteroid as defined in this claim is homogenously distributed," construed to mean "the innermost part of the pellet consisting of a non-pareil seed and optionally one or more pharmaceutically acceptable excipients.'" Id. at 2-3.
  • "A layer surrounding said core," construed to mean "a coating enclosing on all sides said core." Id. at 3. Chief Judge Sleet further defined "coating" as synonymous with "layer" in the context of this claim.

  • "About," construed to mean "approximately." Id. at 3. Chief Judge Sleet noted that "[t]he court is mindful that the word 'about' cannot be read out of a claim that cites a numeric range," but held that "any deviation from the recited range must be minimal" in this case due to restrictions in the prosecution history and the specification. Id. at fn. 7.

  • "A membrane surrounding both said core and said surrounding layer," construed to mean "a coating enclosing on all sides both said core and the layer surrounding said core." Id. at 4.

  • "Crohn's disease in the small intestine as relapse preventing therapy," construed to mean "Crohn’s disease of the small intestine, where treatment is used to maintain symptom control once remission has been achieved." Id. at 4.

  • "Controlled release pharmaceutical formulation," construed to mean "an oral composition formulated to ensure that the active compound is released preferentially at the site of the disease to be treated." Id.

AstraZeneca LP v. Mylan Pharmaceuticals Inc., C.A. No. 08-305-GMS (D. Del. Oct. 5, 2009)

08-305_08-453

October 7, 2009

Magistrate Judge Stark: Report and Recommendation Regarding Claim Construction

Magistrate Stark recently issued a Report and Recommendation Regarding Claim Construction in Fujinon Corp. v. Motorola, Inc., C.A. No. 07-533-GMS-LPS (D. Del. Sept. 11, 2009). The disputed terms construed by Magistrate Judge Stark and his recommendations are as follows:

“A stop”Although Judge Stark noted that Plaintiff’s process to reach their proposed construction was flawed, he adopted their construction thereby recommending “‘an element with a hole or opening that blocks or limits light.” Id. at 8. Judge Stark rejected Defendant’s limited construction of “an aperture stop” because to limit the claim would be contrary to the Federal Circuit’s warning against limiting claims to specific embodiments in the specification. Id. at 10.

“Near the optical axis”Construed as “‘a central region that surrounds the optical axis but excludes a substantial peripheral region surrounding the central region.’” Id. at 16-17.

“Within an effective aperture range of the single focus lens”Although Judge Stark was “concerned” with Plaintiff’s construction, Defendant offered no alternative, therefore Judge Stark recommended a construction of “‘within an effective aperture range of the single focus lens.” Id. at 17-18.

“Center”Construed as “‘the center region, including the geometric center.” Id. at 18.

“Peripheral region”Judge Stark agreed with Defendant that the term was ambiguous, over Plaintiff’s objection that the term need not be construed. Id. at 18. Judge Stark, adopting part of Defendant’s proposed construction modified to be consistent with the specification, recommended the Court construe the term as “‘any portion of the region that begins outside 70% of the radius of the third lens.’”

Fujinon Corp. v. Motorola, Inc., C.A. No. 07-533-GMS-LPS (D. Del. Sept. 11, 2009)

07-533

October 7, 2009

Judge Sue L. Robinson: Bifurcation of patent infringement action from defendants’ antitrust counterclaims and patent misuse affirmative defense

In Eurand Inc. et al. v. Mylan Pharms. Inc. et al., C.A. No. 08-889-SLR (D. Del. Oct. 1, 2009), Judge Robinson recently granted plaintiffs’ motion to sever and stay discovery on defendants' antitrust and patent misuse counterclaims and affirmative defenses. Although Judge Robinson recently clarified her stance as to bifurcation of damages and willfulness in patent cases, Judge Robinson granted plaintiffs’ motion here because the request was “supported by the promotion of judicial economy and avoiding the injection of complex, unrelated and perhaps unnecessary issues into the patent infringement case.” Id. at 3.

Eurand Inc. et al. v. Mylan Pharms. Inc. et al., C.A. No. 08-889-SLR (D. Del. Oct. 1, 2009)

October 7, 2009

Chief Judge Gregory M. Sleet: Aggressive Markman Tactics Backfire

Chief Judge Gregory M. Sleet recently issued a claim-construction opinion notable for what it did not construe. On review of a magistrate judge's recommendation, the Court rejected the defendants' attempts to argue issues beyond the scope of the Markman proceeding:

"The defendants have also made a number of claim differentiation . . . and other invalidity arguments, though they couched these arguments as claim construction objections. Such validity arguments are not properly resolved at the claim construction stage."

The Court's decision stands as a warning to D. Del. practitioners: aggressive Markman tactics will not succeed in this district. (See also footnote 5 of the Court's opinion.)

Forest Laboratories Inc. v. Cobalt Laboratories Inc., C.A. No. 08-021-GMS-LPS (D. Del. Sept. 21, 2009) (Sleet, C.J.).

October 2, 2009

Chief Judge Sleet: Final Honeywell Opinion Deals with Costs

In what looks to be the final opinion in a patent infringement case that has continued since 1999, Chief Judge Gregory M. Sleet partially affirmed a decision by the Clerk of Court not to grant costs requested by defendant Hamilton Standard, whose trial victory was affirmed by the Federal Circuit in April. Hamilton sought trial costs of $431,200.47, but the Clerk granted only $2,410. Hamilton appealed that decision to the District Court, which affirmed, except as to bond premiums for a bond Hamilton posted to stay execution of judgment pending post-trial motions (in the amount of $36,540). Chief Judge Sleet affirmed the denial of Hamilton’s other costs, including:

  • Transcripts: Under Local Rule 54.1(b)(2), transcript costs are taxable only "when requested by the Court or prepared pursuant to stipulation," neither of which was the case here. Id. at 2.

  • Depositions: Under 54.1(b)(3), deposition costs are "taxable only where a substantial portion of the deposition is used in the resolution of a material issue in the case," which did not occur here: the witnesses testified live, and mere use of the deposition transcript to prepare the witnesses was "scarcely relevant." Id. at 3. Chief Judge Sleet also found it insufficient that "some portion of" one deposition was "played or read at trial," and that, for one witness, the Federal Circuit "quoted eight words of the (at least) 278-page deposition in its 21-page opinion affirming [the district] court's ruling on remand." Id.

  • Exhibits: The court rejected the $173,855.77 requested for exhibits under 28 U.S.C. § 1920(4), and Local Rules 54.1(b)(5)-(6) for three reasons: (1) lack of specificity in the documentation of costs, which meant that the Clerk and the Court could not adequately apply the law, id. at 6-7; (2) the costs "relate[d] primarily to graphics design and computer animation work," which is not covered under any of the rules, id. at 7; and (3) "parties may not recover costs for the preparation of animations, graphics design, and other exhibits that serve primarily an argumentative or adversarial function," id. at 8.

What could Hamilton have done differently to recover these costs? Not much. The law regarding taxable transcripts and depositions is plain, and even if Hamilton had provided more detail about the exhibits in its reports, it could only have been awarded the minor costs of the physical copies submitted to the court, not the development and graphics design cost of the exhibits themselves. Id. at 7-8. Note, however, that Judge Robinson suggested in 2006 that "reasonable" fees for exhibit preparation might be taxable, as we covered here.

Honeywell Intl., Inc. v. Hamilton Sundstrand, No. 99-309 (D. Del. Sept. 30, 2009)

99-309