Judge Richard G. Andrews recently reconsidered a ruling made at trial that the designated deposition testimony of a settled-out defendant’s expert was inadmissible hearsay. Sanofi v. Glenmark Generics Inc. USA, C.A. No. 14-264-RGA (D. Del. June 17, 2016). The Court explained that there was nothing unusual about the settlement that would suggest that it was aimed at procuring the expert’s absence from trial, and that the testimony therefore should have been admitted at least under the Rule 32 analysis. The Court expressed doubt, though, about the admissibility of the testimony under Rule 403, in part because anything helpful in the testimony would likely be “cumulative to whatever [the plaintiff’s own] experts testified to at trial.” However, because the Court’s ruling not to admit the testimony at trial resulted in an undeveloped record for purposes of the Rule 403 analysis, Judge Andrews decided that “the better course at this point is to tentatively admit the testimony. . . . The post-trial briefing will reveal whether it has any significant probative value. If it does not, I will strike it from the record. If it does, I will consider it.”
Judge Richard G. Andrews recently granted a motion by Samsung Display Company (“SDC”) to intervene in two cases where SDC-manufactured components formed the basis of a number of the plaintiff’s claims against the defendants (claims that, if successful, would require indemnification by SDC). MiiCs & Partners America, Inc. v. Toshiba Corp., C.A. No. 14-803-RGA and v. Funai Electric Co., Ltd., 14-804-RGA (D. Del. June 15, 2016). In considering the two elements of Rule 24 that were disputed, the Court found that SDC’s and the defendants’ interests diverged enough that SDC’s interests might not be adequately represented at trial absent intervention, in part because “SDC ‘is uniquely situated to understand and defend its own product.’” Id. at 3 (quoting Honeywell Int’l Inc. v. Audiovox Commc’ns Corp., 2005 WL 2465898, at *4 (D. Del. May 18, 2005)). With respect to the timeliness of SDC’s motion, the plaintiff complained that nearly two years had passed before SDC sought to intervene, warranting a denial of the motion under Rule 24. The Court rejected that argument, explaining that “for nearly eighteen of the twenty-one months after Plaintiffs filed their initial complaints, these cases progressed slowly or not at all. Most importantly, almost no ‘proceedings of substance on the merits have occurred’ in these cases.” Id. at 5 (quoting Mountain Top Condo. Ass’n v. Dave Stabbert Master Builder, Inc., 72 F.3d 361, 369 (3d Cir. 1995)).
In a recent Memorandum Order, Magistrate Judge Christopher J. Burke denied defendants Elekta Holdings U.S., Inc. (“Elekta Holdings”) and defendant Elekta Inc.’s motion to transfer venue to the United States District Court for the Northern District of Georgia. Varian Medical Systems, Inc. v. Elekta AB, et al., C.A. No. 15-871-LPS-CJB (D. Del. June 8, 2016). Plaintiff Varian Medical Systems, Inc. (“Plaintiff”) designs and manufactures medical devices and software for treating cancer and other medical conditions with radiotherapy, radiosurgery, proton surgery and brachytherapy, and is the owner of U.S. Patent No. 6,888,919, which it asserts in this litigation. Plaintiff is a Delaware corporation with its principal place of business Palo Alto, California. Defendant Elekta Holdings is a Delaware corporation with its principal place of business in Atlanta, Georgia. Elekta Inc. is a wholly-owned subsidiary of Elekta Holdings, is a Georgia corporation, and has its principal place of business in Atlanta. Id. at 1-2.
Judge Burke found in this case that a weighing of the Jumara factors “does not produce a result that is ‘strongly in favor of’ transfer.” Id. at 22. Judge Burke explained that “nearly every factor is neutral—a result that simply underscores the reality that this case is one between truly national (and international) entities that have previously litigated against each other all over the globe.” Id. Judge Burke continued: “There is nothing surprising or particularly inconvenient about the fact that this new skirmish will go forward in Delaware: (1) the site of Plaintiff’s corporate home; (2) the site of the corporate home of one of the two U.S.-based Defendants; (3) a location that sits centrally located vis-a-vis the places of business of the various parties; and (4) a location close to some number of possible witnesses.” Id.
In Reckitt Benckiser Pharmaceuticals Inc., et al. v. Watson Laboratories, Inc., et al., C.A. No. 13-1674-RGA; v. Par Pharmaceutical, Inc., et al., C.A. No. 14-422-RGA (D. Del. June 3, 2016), Judge Richard G. Andrews issued a decision following a bench trial, in which the Court held that one patent-in-suit, while the Defendants’ ANDA products would infringe some of its asserted claims, was invalid. The Court further held the other two patents-in-suit were not invalid, that the Defendants’ ANDA products would infringe the asserted claims of only one of those patents. The patents in this case relate to drugs used for maintenance treatment of opioid dependence.
As to the invalidated patent, the Court held that the term “local pH” in certain claims was indefinite, where “there is no evidence as to a standard type of solvent, volume of solvent, or time at which pH is to be measured.” Id. at 15. The Court also held that the other asserted claims were obvious, but it rejected Defendants’ anticipation arguments. See id. at 16-26. The Court also rejected Defendants’ indefiniteness and obviousness arguments as to two other patents-in-suit, and, as noted above, found that the asserted claims of one of those patents to be infringed.
Judge Richard G. Andrews recently denied the parties’ joint motion to vacate the Court’s claim construction order following the parties’ settlement and filing of a stipulation of dismissal. Purdue Pharma LP, et al. v. Acura Pharmaceuticals Inc., et al., No. 15-292-RGA (D. Del. May 24, 2016). The claim construction decision was issued after the Court agreed to an early claim construction of one term. “It was suggested that construing the claim as Defendants requested would expedite the resolution of the case as Plaintiffs would be left with no viable infringement theory.” Id. at 1. Judge Andrews adopted Plaintiffs’ proposed construction. Id. In their joint motion to vacate, the parties offered no argument in support of their request. Judge Andrews denied the request, noting that the Court “should only grant [the request] if there are exceptional circumstances present”; and “no such circumstances have been suggested, and none occur to me.” Id. at 2 (citing Cisco Systems, Inc. v. Telcordia Techs, Inc., 590 F.Supp.2d 828, 830 (E.D. Tx. 2008)).
Judge Sleet’s recent decision in Millenium Pharmaceuticals v. Pharmascience extended the Federal Circuit’s AstraZeneca decision regarding personal jurisdiction in Hatch-Waxman cases, rejecting an argument that AstraZeneca did not apply to certain ANDA applicants without other contacts with Delaware.
PSI, one of the two defendants in the case, asserted that “unlike Mylan [in the Federal Circuit’s decision], the ANDA is PSI’s sole contact with Delaware” and that “in its analysis, the Federal Circuit pointed to other contacts that Mylan had with Delaware.” PSI argued that it was different because it “is a Canadian company with a principal place of business in Montreal. According to PSI, it prepared the ANDA in Canada, the ANDA was submitted to the FDA in Maryland, and PSI sent its Paragraph N Letter to Millennium in Massachusetts. PSI asserts that it is not incorporated in Delaware, is not registered to do business in Delaware, and it has no employees or agents in Delaware, does not maintain a post office box, mail drop, telephone number, office, or any place of business in Delaware. PSI does not have any bank accounts in Delaware, nor does it file taxes in Delaware. PSI claims that it does not have any distribution channels or an agent to accept service of process in Delaware. PSI asserts that it has only defended itself in one Delaware litigation, which was unrelated to this case. Finally, unlike Mylan, PSI claims it does not have an approved and active ANDA, does not import any drug products into the United States, and has no sales of any drug products in the United States, including Delaware.” Millenium Pharmaceuticals, Inc. v. Pharmascience Inc., et al., C.A. No. 15-702-GMS, Memo at 6-7 (D. Del. June 10, 2016).
Rejecting this argument, Judge Sleet explained that “The Acorda court noted that Mylan was incorporated in West Virginia, prepared its ANDA primarily in West Virginia, and filed its ANDA in Maryland. The court also acknowledged that Mylan was registered to do business in Delaware and AstraZeneca and Acorda are incorporated in Delaware, however, the holding in the case was not based upon these facts. Thus, the court must conclude that specific personal jurisdiction over PSI exists in this case based upon PSI’’s ANDA filing. Delaware is a state where PSI will engage in marketing if the ANDA is approved and that marketing is directly related to this suit.” Id. at 7.
Judge Sleet also found, however, that the other defendant in the case, PSL, should be dismissed because Millennium had not supported with reasonable particularity its allegation that PSL collaborated with PSI to file the ANDA in question. Id. at 8-9.
Judge Andrews recently bifurcated a case in which the plaintiff and defendant each asserted one patent against the other into two one-patent trials. Viatech Techs., Inc. v. Microsoft Corp., C.A. No. 14-1226-RGA (D. Del. June 6, 2016). The patents related to the same technology, and the defendant’s asserted patent was referenced as prior art to the plaintiff’s asserted patent. However, the Court decided “that it would likely be better to schedule two trials rather than one,” explaining:
First, patent trials are difficult enough for juries without adding to the degree of difficulty. Trying both patents in one case would involve additional infringement analysis and damages analysis over a trial on just one patent. Extra testimony can lead to confusion. Second, it appears that Defendant’s assertion of its patent against Plaintiff’s product is of lesser importance in the scheme of things. Although there was briefing on asserted claim disputes on both patents, the parties agreed that the ten most important ones all related to Plaintiff’s patent. My judgment is that resolution of the claims involving Plaintiff’s patent will likely resolve the entire case. Depending on the schedule, it may never be necessary to resolve the claim disputes on Defendant’s patent. Thus, I think scheduling separate trials is likely to result in economy.
Judge Richard G. Andrews recently granted a defendant’s motion for certification of partial final judgment under Rule 54(b), finding that the balance of factors under the relevant Third Circuit test favored certification. Interdigital Commc’ns, Inc. v. ZTE Corp., C.A. No. 13-009-RGA (D. Del. June 7, 2016). A jury found in favor of the plaintiff on infringement of three patents, one of which was subsequently deemed unpatentable during inter partes review. The Court deferred ruling on post-trial motions related to that one patent pending the resolution of the plaintiff’s appeal of the PTAB ruling, but ruled on post-trial motions relating to the other two patents (the “power ramp-up patents”). As a result, with respect to the power ramp-up patents, all that remained in the district court was a trial on damages. In analyzing the Third Circuit factors under Berckeley Inv. Grp., Ltd. v. Colkitt, 455 F.3d 195, 203 (3d Cir. 2006), Judge Andrews found: (1) there was no overlap between the power ramp-up patents and the third patent (the patentability of which was currently on appeal); (2) the need for appellate review of liability for infringement of the power ramp-up patents would not be mooted by any further developments in the district court; (3) there was no risk that the Federal Circuit would be asked to consider the same issues with respect to the power ramp-up patents a second time; and (4) appellate review of liability for infringement of the power ramp-up patents could obviate entirely the need for a damages trial on those two patents. On balance, these factors favored granting the defendant’s motion for certification of partial final judgment under Rule 54(b).
In IControl Networks, Inc. v. Zonoff Inc., C.A. No. 15-1109-GMS (D. Del. June 6, 2016), defendant filed a motion to dismiss, contending that plaintiff’s complaint had failed to plausibly state a claim for willful infringement. The Court rejected this argument, noting that plaintiff’s “reliance upon ‘information and belief’ in its pleadings is not deficient given the further information here demanded by [defendant] lies uniquely within the control of the defendant” and that the complaint went “beyond mere legal conclusions and [made] sufficient factual allegations to state a claim.” Id. at 1-2 n.1 (citations and quotation marks omitted). Defendant also argued that plaintiff’s claim for pre-suit damages should be dismissed as not complying with the patent marking statute (35 U.S.C. § 287), but the Court rejected the premise that “the requirements of § 287 are equivalent to the Federal Circuit’s requirements of a ‘statement that the plaintiff has given the defendant notice’ in an infringement complaint. . . . the court sees no reason to dismiss claims for pre-suit damages at this stage.” Id. at 2 n.1 (citations omitted).
Finally, the Court rejected defendant’s argument that plaintiff’s indirect infringement allegations had to enumerate the specific patent claims asserted, citing the District’s Default Standard for Discovery that “contains a procedural mechanism for the identification of specific asserted claims, and the court sees no need to depart from that process here.” Id. Accordingly, the Court denied defendant’s motion to dismiss and for a more definite statement.
In a recent Report and Recommendation, Magistrate Judge Christopher J. Burke construed seven claim terms from U.S. Patent No. RE40,000 (the “’000 patent”), which is directed to a method of using carvedilol to decrease the risk of mortality caused by congestive heart failure (“CHF”). GlaxoSmithKline LLC et al. v. Glenmark Pharmaceuticals Inc., USA, et al., C.A. Nos. 14-877, 14-878-LPS-CJB (D. Del. June 3, 2016). In the course of construing those terms, Judge Burke found that the term “”decreasing mortality caused by congestive heart failure,” which appears in the preamble of claim 1, should limit the claim. In support of this finding, Judge Burke first noted that as in this case, “[t]he Federal Circuit has held that language in the preamble of a claim constitutes a limitation if the preamble sets forth the objective of the method, and the body of the claim directs that the method be performed on someone ‘in need.’” Id. at 14. Second, Judge Burke found that “the term ‘said patient’ in the claim body relies on and derives antecedent basis from ‘a patient in need [of having their risk of mortality decreased]’ in the preamble.” Id. at 15. Third, Judge Burke noted that “[i]t cannot be seriously disputed that, at a minimum, a significant portion of the applicant’s arguments for patentability was that the drug’s usefulness in decreasing mortality of CHF patients was something distinct from its usefulness in treating symptoms of CHF.” Id. at 16.
In support of their argument that the preamble limitation was non-limiting–which was ultimately rejected–defendants had asserted that “GSK’s claims impermissibly recite merely a particular result of a known use.” Id. at 9. Judge Burke concluded, however, that whether “the claims improperly recite a particular result of a known use of carvedilol is more amenable to resolution on a motion for summary judgment of invalidity.” Id. at 17.