The plaintiff, in arguing against allowing the amendment, did not in fact argue prejudice, but instead argued that defendant’s one theory of inequitable conduct “is not necessary to practice the patents-in-suit or for the best mode” and that the other theory rests on a patent that is not prior art or material to other patentability requirements. Id. at 3. The Court will not weigh evidence when deciding a motion to amend and therefore the plaintiff’s reliance on factual contentions in opposing the amendment were unsuccessful. Id. at 7. Furthermore, in order to satisfy Federal Rule of Civil Procedure 9(b), the defendant need only allege the relevant material information and the acts of alleged fraud to “permit responsive pleading” and defendant disclosed “at least that much in its twenty-eight paragraph amendment.” Id. at 7-8.
Parker-Hannifin Corporation v. Zippertubing (Japan), Ltd., Memo. Order (D. Del. Sept. 24, 2008).
On the trade secret count, the Court rejected as insufficient the assertion that defendant, after exposure to plaintiff's product via a customer, "seemed to develop the [new] product surprisingly quick[ly]." Similarly, the intentional interference count - and, by extension, the unfair competition claims - could not survive: "Accenture was not required to plead the precise nature of Guidewire's interference with its business opportunity, but it was required to allege some wrongful or improper conduct vis-a-vis . . . the only customer mentioned in Accenture's complaint."
The lesson? When considering whether to add state-law claims to an infringement complaint, make sure the details, independent of the infringement, are there.
]]>In recognizing the licensee's standing to sue, however, the Court made explicit its thoughts on determining exclusivity:
"Defendant argues that the intent of the parties is not dispositive. I agree. Intent is but one factor a court looks to in determining whether a license agreement confers to the licensee a legally protected interest in the patent. The license at issue is an expression of plaintiffs' intent to grant . . . an exclusive license . . . ; therefore it is a factor that weighs in favor of finding standing."
Accordingly, it is the "entire license agreement," not just the parties' characterizations, that controls the inquiry.
"It is apparent from the papers submitted that the appropriate method of calculating prejudgment interest based on after-tax damages is fraught with opportunities for mischief. Indeed, each party has employed a different analysis in computing this aspect of the damages award. Under the circumstances, the court has determined that its attempt to adjust for taxes was ill conceived and, therefore, will adopt Cordis' computation of prejudgment interest, which (according to Medtronic) is consistent with a pre-tax assessment."
]]>An interesting aspect of the decision, however, is its procedural posture: defendant chose to employ the the pre-answer motion to strike under FRCP 12(f). By granting this type of "disfavored" motion - especially when defendant had already filed its answer - the Court signaled that the willfulness argument, in a typical ANDA scenario, will no longer succeed in D. Del.
Sepracor Inc. v. Dey L.P., C.A. No. 06-113-JJF (D. Del. Sept. 26, 2008) (Farnan, J.).
The result? Just as in the Delaware case, a prevailing party could not raise enforceability via a fees motion.
Euclid Chem. Co. v. Vector Corrosion Techs., Inc., C.A. No. 01:05 cv 80 (N.D. Ohio Sept. 24, 2008).
]]>"Given the fact that plaintiff's claims of infringement asserted against defendants have been dismissed with prejudice, defendants are asking me to make a substantive determination as to the validity of a patent, under the guise of a motion for attorney fees, when a court would not otherwise have jurisdiction to do so. I decline to undertake such an analysis."
Novo Nordisk A/S v. Sanofi-Aventis, C.A. No. 05-645-SLR (D. Del. Sept. 26, 2008) (Robinson, J.).
Another plaintiff's verdict in the District of Delaware...
For a copy of the verdict form see here.
]]>Although labeling the mode of disclosure suspicious, the Court, based on these findings, ultimately declined to hold the patent-in-suit unenforceable:
"[T]he Court is troubled by the fact that Dr. Eklund possessed known material prior art references but did not disclose the actual references themselves. However, absent a bright line rule by the Federal Circuit that non-disclosure of possessed, material art equates with inequitable conduct, the Court is unwilling to strike a patent in the circumstances of a plausible explanation for that non-disclosure."
This decision underscores the importance of the standard of proof in patent litigation: to demonstrate an inequity clearly and convincingly requires more than arguing that the patentee neglected to choose the optimal vehicle for disclosure.
]]>We expect it to be an interesting discussion that will benefit those who have experience with these issues, as well as those who want to learn more about them.
Membership in INTA is not required to attend the roundtable, but all attendees must register and there is a $45 fee. For more information, visit www.inta.org or contact Sara Beth Reyburn Kohut at sreyburn@ycst.com or 302 571 5004.
Author: Sara Beth Reyburn Kohut