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

October 2, 2009

Magistrate Judge Leonard P. Stark: Reining In The Complexities of Multi-Venue Litigation

In his recent decision granting a motion to amend, Magistrate Judge Leonard P. Stark offered a new take on whether adding new patents following the close of the pleadings will unduly complicate a case. In the underlying litigation, the parties had filed competing complaints in both Delaware and Maine. The Delaware plaintiff sought to amend its complaint to seek a non-infringement declaratory judgment on several patents asserted against it in Maine.

The Delaware defendant unsuccessfully objected to the alleged added complexity:

"Fairchild also contends that adding two more patents to the eleven patents already at issue in the Delaware Action would unduly complicate this case. Yet Fairchild's own proposal of simultaneously litigating the two cases five hundred miles apart, potentially requiring the services of two juries and at least two judges, as well as two rounds of discovery, two sets of claim construction briefs, two Markman hearings, two summary judgment motions, and the like, seems far more complicated."

Even with thirteen patents at issue, the complexity argument remains a double-edged sword.

Infineon Technologies AG v. Fairchild Semiconductor Int'l Inc., C.A. No. 08-887-SLR-LPS (D. Del. Sept. 30, 2009) (Stark, M.J.).

September 30, 2009

Judge Sue L. Robinson: Reconsidered Claim Construction Affects Prospect for Summary Judgment

A fundamental precept of patent law teaches that a party is liable for direct infringement only when it performs each step of the invention's claims. In a recent decision, District Judge Sue L. Robinson addressed infringement liability for those who perform less than all the claimed steps. The Court concluded that:

"The law of divided infringement . . . does prohibit infringement by defendants. In the circumstances where one party performs only some of the claimed steps, and another entity performs other of the claimed steps, direct infringement will only lie if one party exercises 'control or direction' over the entire process such that every step is attributable to the controlling party . . . ."

Absent this showing of control or direction, the Court held, summary judgment of non-infringement is appropriate.

Notably, the Court reached its conclusion after reconsidering an earlier claim construction. Because it raised the divided infringement issue, the new construction impaired the prospect of direct infringement, which in turn led to an increased likelihood of summary judgment. Litigators take note: this case is another example of how slight alterations to a claim construction can have a dramatic effect on the summary judgment phase.

Girafa.com Inc. v. IAC Search & Media Inc., C.A. No. 07-787-SLR (D. Del. Sept. 25, 2009) (Robinson, J.).

September 25, 2009

Chief Judge Gregory M. Sleet: Alleged Equitable Interest Insufficient for Purposes of Standing

Chief Judge Sleet recently decided a case where plaintiff, a law firm that had helped to prosecute a patent, tried to claim an equitable interest in the patent after their client’s alleged failure to pay their fees. Huntley, L.L.C. v. Monterey Mushrooms, Inc., C.A. No. 08-377-GMS, at 1 (D. Del. Sept. 18, 2009). The firm then tried to make an infringement claim against a subsequent assignee based on the firm’s supposed equitable interest. Id. at 3-4. Chief Judge Sleet denied both claims, noting that the firm’s engagement letter said nothing about a potential assignment of the patent or any equitable interest in it. Id. at 7. While the firm had filed a "Notice of Equitable Claim" with the PTO, that filing was “inconsequential” standing alone, as it was signed only by the firm. Id. The court also rejected Huntley's claim of a "grantor's lien" in the patent, pointing out the lack of legal support for "this rather novel proposition." Id. at 7-8. With plaintiff having no interest in the patent, Judge Sleet granted defendant's motion to dismiss for lack of standing. Id. at 8.


Huntley, L.L.C. v. Monterey Mushrooms, Inc., C.A. No. 08-377-GMS (D. Del. Sept. 18, 2009).