Plaintiff Callaway Golf Company, argues that it was error for the Court “to remove from its final jury instructions language regarding a patent’s presumption of validity.” Callaway Golf Company v. Acushnet Company, C.A. No. 06-091-SLR, Memo. Op., at 15 (D. Del. April 21, 2011). Specifically, in this case, defendant’s counsel argued during closing statements that the examiner spent minimal time on the large amount of references checked as reviewed during examination. Id. at 15-16. This argument was contrary to the Court’s previous ruling that plaintiff could not “improper[ly] bolster[ ] the validity of the Sullivan patents by referring to the number of examiner considering those applications” or “speculate as to the extent to which such prior art was actually considered by the examiners…” Id. at 16 (internal citations omitted). The Court found that it did not commit legal error in excluding the instruction. Id. (Note: plaintiff did not object during the closing or address the statements made by defendant’s counsel in its rebuttal argument.)
Last week, Judge Robinson issued on an opinion and judgment in In Re: Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litigation, C.A. No. 09-2118-SLR (D. Del. May 12, 2011) (an ANDA case). The patents-in-suit covered an extended release version of a drug that was available in the prior art. Interestingly, the Court found the patents invalid as obvious in light of four prior art references which, even when combined, did not actually disclose all of the elements of the patent. According to the Court,
[N]ot every limitation of a claimed invention need be found in the prior art in order for said invention to be obvious. The Graham factors direct the court to look to the scope and content of the prior art, the differences between the invention and the prior art, and the level of skill of one of skill in the art. . . . . While it may be easier to prove obviousness if each limitation of the claimed invention is found in the prior art, the level of skill of one of ordinary skill in the art can, at times, fill in the gap when limitations of the claimed invention are not specifically found in the prior art.
Id. at 26.
The obviousness section of the opinion included some other points of interest:
- The Court gave some weight to the fact that a person of ordinary skill would know that at least one of the elements could be “calculated by a computer program,” based on Federal Circuit precedent that “‘the discovery of an optimum value of a variable in a known process is usually obvious.'” Id. at 28 (citing Pfizer, Inc. v. Apotex, Inc. 480 F.3d 1348, 1368 (Fed. Cir. 2007)).
- In the Court’s obviousness analysis, the fact that one of four references in an obviousness combination had not been considered by the patent office was sufficient to ease the difficulty of proving invalidity: “The court notes . . . that the ‘215 patent, which claims the extended release delivery system used in the patents-in-suit, was not before the PTO during examination of the ‘793 patent. Therefore, while defendants must still prove that the patent is obvious by clear and convincing evidence, they do not have the additional burden of overcoming the presumption that is due a qualified government agency presumed to have properly done its job. Tokai Corp. v. Easton Enters., Inc., Civ. No. 2010-1057, -F.3d -, 2011 WL 308370, at *6 (Fed. Cir. Jan. 31, 2011) (citations omitted).”
- The Court held that commercial success alone is insufficient to prove the presence of a long felt need. Id. at 31.
The Court also addressed a number of other issues, including claim construction, infringement, best mode, and inequitable conduct.
On May 11, 2011 a jury returned a verdict in favor of Boston Scientific Corporation and against Cordis Corporation in the amount of $19,531,492.00 in a patent infringement case involving heart stents.
In Boston Scientific Corp. v. Cordis Corp., C.A. No. 10-315-SLR (D. Del. May 4, 2011), Judge Robinson recently stated that the result of an earlier patent infringement case involving the same parties, the same patent, and the same asserted claim “is relevant to both lost profits and a reasonable royalty analysis[.]” Id. at 1. However, Judge Robinson limited the introduction of evidence of the earlier case to a single statement, to be read at trial, that (1) the earlier case involved the same parties, patent, and asserted claim, (2) the jury found that the defendant’s products infringed and that the claim was not invalid, and (3) that this finding was affirmed on appeal and therefore “the jury verdict and judicial determinations of infringement and validity are final.” Id. at 1-2.
In Shire LLC v. Teva Pharms USA, Inc., C.A. No. 10-329 (D. Del. May 12, 2011), Judge Dalzell, sitting by designation due to the judicial vacancy in the District of Delaware, stayed all proceedings pending confirmation of the President’s nominee to fill the vacancy — Richard G. Andrews.
In Cephalon, Inc. v. Sandoz Inc., C.A. No. 10-123-SLR (D. Del. May 5, 2011), an ANDA case, Cephalon filed a motion to stay pending its appeal of related litigation. In the related case, involving the same patents, the court found that the defendant did not infringe and that the patents were invalid. Id. at 2. Judge Robinson determined that a stay was appropriate because, among other things, Sandoz’s 30-month stay was set to expire in July 2012, which would likely occur after the Federal Circuit disposed of the appeal. Id. at 4. “If the Federal Circuit affirms the court’s invalidity holding, there is no reason for trial and the expenses related thereto.” Id. Judge Robinson found that Sandoz would not be prejudiced because, among other things, it could not enter the marketplace prior to July 2012. Id.
In Oracle Corp. v. Parallel Networks, LLC, C.A. No. 06-414-SLR (D. Del. Apr. 29, 2011), Judge Robinson recently issued an amended memorandum order denying both parties’ motions for summary judgment. After finding that several genuine issues of material fact compelled the denial of Parallel’s motion for partial summary judgment of literal infringement, the court found that “Parallel has proffered sufficient circumstantial and direct evidence [of direct infringement by Oracle customers] to withstand summary judgment as to . . . the issue of induced infringement.” Id. at 28-29. This evidence included a presentation at an Oracle conference and a best practices document, both of which allegedly instructed Oracle customers “‘how to use the Accused Oracle Products in an infringing manner'” and “‘freely and openly strongly encourage[d] them to do so.'” Id. Judge Robinson further denied Oracle’s motion as to contributory infringement, rejecting Oracle’s argument that it had adequately demonstrated “that each of its accused products have significant noninfringing uses[.]” Id. In denying Oracle’s motion, Judge Robinson stated that “[a] reasonable jury could find that the accused products do not meet the definition of a staple article of commerce.” Id. at 29.
Last Thursday, in Boston Scientific Corp. v. Cordis Corp., Civ. No. 10-315-SLR (D. Del. Apr. 28, 2011), Judge Robinson issued a memorandum order allowing the defendant to (1) present clinical trial data as evidence, and (2) present Dr. Campbell Rogers as a fact witness.
Judge Robinson noted that the clinical trial data “may be relevant under the entire market value rule,” and that excluding the data would “parse the actual story of this dispute with too broad a stroke.” Id. at 1. Judge Robinson also limited Dr. Rogers’s testimony regarding the clinical trial data “based upon the determination of the clinical trial data’s relevance[.]” Id. at 2.
Last week, in Fifth Market, Inc. v. CME Group, Inc, C.A. No. 08-520-GMS, Chief Judge Sleet issued a claim construction order construing the following terms:
- trader terminal[s]
- algorithmic . . . orders
- security instrument
- equity market[s]
- independent variable
- dependent variable
- incoming orders
- one security [item]
- which may be used as
- through the use of the external multiple data sources
Last month, Chief Judge Sleet issued a default judgment in a patent and trademark infringement action by Hesco Bastion Limited (Hesco Bastion Limited v. ACS Holdings, USA, LLC, C.A. No. 08-266-GMS). The Court issued a permanent injunction, and awarded Hesco $2 million in damages and $1,954,391.08 in attorney’s fees, plus costs.
How did this happen? Apparently, ACS simply ran out of money to pay its counsel. According to its counsel (during a conference on its counsel’s motion to withdraw), “ACS lacked funds to pay [its counsel], had no cash flow, and . . . shut down its business in Bogata, Columbia.”
ACS had apparently filed an answer, but no expert report on non-infringement, and failed to meet its obligations under the scheduling order to “cooperate with Hesco in connection with required pretrial activities.” On April 16, 2010, ACS’s counsel filed their motion to withdraw due to a failure to receive payment, which was granted, and ACS was unable to obtain substitute counsel. On May 10, 2010, Hesco filed a motion for default.
On January 5, 2011, the Court issued an order to show cause; ACS replied that it lacked the funds to hire substitute counsel. On Feb. 28th the clerk entered default, and on March 30, 2011, the Court held a hearing on the motion for default judgment. Finally, on April 14th, 2011, the Court granted Hesco’s motion for default, and awarded the permanent injunction and damages.