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Judge Christopher J. Burke recently issued a recommendation that a plaintiff’s complaint alleging direct and willful infringement be dismissed, without prejudice.  Mayne Pharma Int’l Pty Ltd. v. Merck & Co., Inc., et al., C.A. No. 15-438-LPS-CJB (D. Del. Dec. 3, 2015).  Reviewing the allegations against Form 18 (because defendant did not argue that Twombly/Iqbal applied under the amendments to the Federal Rules that took effect on December 1), Judge Burke found that the complaint adequately alleged infringement against the two U.S. defendants.  However, Judge Burke found that the allegation that a third (and non-U.S.) defendant manufactured and “injected” the infringing products “into the stream of commerce with knowledge that those products will be sold throughout the United States” was insufficient, since it was not clear from the allegations that the non-U.S. defendant actually imported the accused products into the U.S.  Judge Burke also “easily” found that the willfulness allegations were insufficient, because there were no facts supporting a willfulness claim.  Rather, the plaintiff simply alleged that “[u]pon information and belief, Defendants infringement has been with knowledge of the ’745 patent and has been willful.”

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In Arcelormittal France v. AK Steel Corp., et al., C.A. Nos. 10-050, 13-865-SLR (D. Del. Dec. 4, 2015), Judge Sue L. Robinson granted defendants’ motion for summary judgment of no infringement and invalidity, and denied plaintiffs’ motion to dismiss for lack of subject matter jurisdiction in C.A. No. 10-050. As Judge Robinson noted, “[t]he above captioned litigation has a convoluted procedural history.” Id. at 2 (full procedural history summarized on pages 2-5). Following a jury verdict in defendants’ favor in C.A. No. 10-050, plaintiffs appealed. The Federal Circuit (i) upheld the claim construction in part and reversed in part; (ii) reversed the jury’s verdict of anticipation; and (iii) with respect to obviousness, concluded that a new trial was required because the claim construction error prevented the jury from properly considering plaintiffs’ evidence of commercial success (“ArcelorMittal I”). Id.

During the appeal, plaintiffs obtained U.S. Patent No. RE44,153E (“the RE153 patent”). Id. at 3. Plaintiffs subsequently filed a complaint for patent infringement of the RE153 patent in C.A. No. 13-685 against defendant AK Steel Corp., and filed a motion for leave to file a second amended complaint in C.A. No. 10-050, substituting the RE153 for the originally asserted patent, U.S. Patent No. 6,296,805 (“the ‘805 patent”). Id. Defendants then moved for entry of summary judgment in C.A. No. 10-050, arguing that the RE153 patent was invalid pursuant to 35 U.S.C. § 251(d). Id. at 4. The court granted that motion, having concluded that RE153 patent was improperly broadened. Id. The Federal Circuit affirmed and reversed that ruling in part (“ArcelorMittal II”), finding that “district court properly concluded that claims 1 through 23 of the RE153 patent were improperly broadened under § 251 and therefore invalid,” but “erred in invalidating claims 24 and 25, which the parties concede maintain the same scope as the original claims.” Id. at 5. The Federal Circuit remanded the case for further proceedings. Id.

Here, plaintiffs argued that C.A. No. 10-050 should be dismissed for lack of subject matter jurisdiction because (1) claims 24 and 25 were never at issue in C.A. No. 10-050; (2) all of the asserted claims of the RE153 patent have been held invalid; and (3) the absence of any case or controversy requires dismissal. Id. at 6. Judge Robinson rejected plaintiffs’ argument, first explaining that “Claims 24 and 25 of the RE153 patent are ‘substantially identical’ to claim 1 of the ‘805 patent, as established by the Federal Circuit in ArcelorMittal II and consistent with the parties’ concession.” Id. at 7. Thus, according to Judge Robinson, “claims 24 and 25 of the RE153 patent were asserted in Civ. No. 10-050 as a matter of law,” and plaintiffs’ motion to dismiss must be denied. Id. at 7-8. Judge Robinson noted that the “RE153 patent simply took the place of the ‘805 patent upon its surrender.” Id.

In their motion for summary judgment, defendants argued in general that “because claims 24 and 25 of the RE153 patent have the same scope as claim 1 of the ‘805 patent, the motions are appropriately resolved consistent with the 2011 trial record and the mandate of the Federal Circuit in ArcelorMittal I.” Id. at 6. Judge Robinson agreed. First, Judge Robinson granted defendants’ motion for summary judgment of no infringement, noting that following ArcelorMittal I, plaintiffs had “conceded – by not addressing – the fact that the trial record had no evidence of past infringement of claim 1 of the ‘805 patent as construed by the Federal Circuit.” Id. at 9. Judge Robinson thus reasoned that “[g]iven the fact that I would not allow the record to be opened on remand if the ‘805 patent were still at issue, and given that plaintiffs are not asserting pre-trial acts of infringement, I find that there are no genuine issues of material fact as to infringement of claims 24 and 25 of the RE153 patent.” Id.

Judge Robinson also granted defendants’ motion for summary judgment of invalidity. Judge Robinson observed that “[t]he question once again is whether, under the circumstances at bar, I should allow plaintiffs to start with a clean slate, as though no trial and no appeal had ever occurred in Civ. No. 10-050.” Id. at 11. Judge Robinson “decline[d] to do so, and confine[d] [the Court’s] analysis to the scope of the Federal Circuit’s mandate in ArcelorMittal I.” Id. Judge Robinson concluded “plaintiffs have not identified any genuine issues of material fact sufficient to overcome defendants’ prima facie case of obviousness.” Id. Specifically, Judge Robinson explained that “defendants contend (and plaintiffs concede by not addressing)” that there was not a sufficient nexus between commercial success and the patented invention. Id.

Judge Robinson did grant plaintiffs’ motion to amend in C.A. No. 13-865, which sought “permission to assert yet another patent against AK Steel – U.S. Reissue Patent No. RE44,940 (“the RE940 patent”), a continuation of the patent application that issued as the RE153 patent and which itself issued on June 10, 2014.”  Id. at 5.

 

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In a recent Memorandum Order, Judge Richard G. Andrews construed the terms (i) “zolmitriptan” and (ii) “buffer,” “buffered,” and “in a buffered,” from U.S. Patent Nos. 6,750,237 and 7,220,767, which are directed to pharmaceutical formulations containing zolmitriptan, an intranasal administration device containing a pharmaceutical formulation containing zolmitriptan, and an aqueous solution of zolmitriptan. Impax Laboratories, Inc., et al. v. Lannett Holdings, Inc., et al., C.A. No. 14-984-RGA (D. Del. Dec. 1, 2015).

Notably, Judge Andrews also found the preamble “[a] pharmaceutical formulation suitable for intranasal administration” to limit the pharmaceutical formulation claims. While Judge Andrews found that the preamble did not provide antecedent basis for the terms in the claim bodies, it still did “more than state an intended use for the formulations.” Id. at 6. As Judge Andrews explained, the preamble “informs the meaning of those formulations—they must possess features making them appropriate for intranasal use.” Id. Judge Andrews also observed that the fact that the “patentees did not rely on the preambles to distinguish prior art during prosecution does not suggest that the preambles are non-limiting because the patent examiner cited only intranasal art,” which provides some indication that the examiner “acknowledged that the patents claim intranasal formulations.” Id.

Judge Andrews went on to further explain why the “the entire preamble gives ‘life, meaning, and vitality’ to the pharmaceutical formulation claims.” Id. at 6-7. First, Judge Andrews observed that “the patents repeatedly refer to the invention as a pharmaceutical formulation for use in intranasal administration.” Id. at 6. Second, Judge Andrews noted that “the specifications identify issues with prior art formulations and explain that the ‘inventors devised an intranasal formulation of zolmitriptan that provided effective and improved fast relief for migraine sufferers.’” Id. at 6. Third, Judge Andrews found “Examples 1-8 of the patents are directed to intranasal formulations and Example 9 of both patents describes a method for administering such intranasal formulations.” Id. at 7. Judge Andrews thus concluded that the foregoing disclosures “demonstrate that the claimed formulation is an improved pharmaceutical formulation of zolmitriptan suitable for intranasal administration.” Id. Judge Andrews finally noted that the “specifications nowhere suggest that the invention relates to formulations not suitable for intranasal use.” Id.

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Several defendants in these cases filed motions to dismiss on the basis that the asserted patent claims are invalid for lack of written description. In briefing, the parties each pointed out that neither side had provided case law addressing whether a District Court does or does not have authority to resolve a written description dispute on the pleadings. Judge Andrews agreed with the “valid concerns” raised by the Plaintiff and denied the motions without prejudice: “Adequate written description is a question of fact. Patent claims are presumed to be valid. In order to invalidate a patent claim on the basis of inadequate written description, I would have to find, by clear and convincing evidence, that the patent specification does not describe the claimed invention sufficiently to reasonably convey to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date. Typically, to make such a finding requires claim construction and expert testimony about what those skilled in the art would understand from the specification. At this stage of the proceeding, there has been no claim construction, and, of course, on a motion to dismiss there will be no expert testimony. I do not believe that it is appropriate at this time to consider inadequate written description on these motions to dismiss.” Blackbird Tech LLC v. Service Lighting and Electrical, et al., C.A. No. 15-53-RGA, Memo. Or. at 1-2 (D. Del. Dec. 1, 2015) (internal quotations omitted).

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Judge Andrews recently granted a motion to quash a deposition and document subpoena served on a third party, Hill Dermaceuticals. The subpoena sought information about the Hill’s Derma-Smoothe products, where were alleged to be prior art to the patents-in-suit. Judge Andrews first determined that the information sought should be afforded trade secret status both because the defendant, Perrigo, had not seriously disputed the point and because Hill “produced considerable evidence regarding the requested information’s trade secret status and the harm that may result from disclosure to a competitor” such as the defendant. Taro Pharmaceuticals U.S.A., Inc., et al. V. Perrigo Israel Pharmaceuticals Ltd., C.A. No. 14-989-RGA, Memo. Or. at 3 (D. Del. Nov. 30, 2015).

Next, Judge Andrews turned to whether the information sought was relevant to the litigation. His Honor explained, “[t]he secret nature of Derma-Smoothe does not foreclose its relevance to the§ 103 inquiry. Whether in connection with § 102(b) or § 103, [i]f a device was in public use or on sale before the critical date, then that device becomes a reference under section 103 against the claimed invention. . . . Hill’s argument that Derma-Smoothe may not anticipate Taro’s invention under§ 102 does not belie its relevance to an obviousness inquiry under§ 103. Therefore, I find that the requested information is relevant.” Id. at 4 (internal quotations omitted).

Perrigo was unable, however, to convince the Court that the information sought was necessary to its case, leading Judge Andrews to conclude that the subpoena should be quashed. “Perrigo may be correct that detailed information about the Derma-Smoothe prior art reference may be uniquely available from Hill. That does not mean, however, that Hill is uniquely positioned to provide Perrigo with information relevant to its obviousness defense. . . . Perrigo has listed twenty-two prior art references in its Invalidity Contentions, most of which are printed publications or patents. Perrigo has made no showing as to how Hill’s Derma-Smoothe, among these, is uniquely necessary to proving its invalidity case. . . . The possibility of obtaining relevant information from alternative sources weighs against a finding of need. . . . Perrigo has in its possession numerous sources relevant to proving the same legal theory. That Perrigo seeks only to supplement its theory with Hill’s trade secrets cuts against a finding that the requested information is ‘reasonably necessary for a fair opportunity to develop and prepare the case for trial.’” Id. at 5-6.

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Chief Magistrate Judge Mary Pat Thynge recently granted a motion for summary judgment of invalidity under § 101 filed by Google relating to the Plaintiff’s search method patent.  Collarity, Inc. v. Google Inc., C.A. No. 11-1103-MPT (D. Del. Nov. 25, 2015).  Judge Thynge agreed with Google that the plaintiff’s patent claimed an abstract idea—“refining search queries . . . by switching some used words in the query but not others”—that could be performed on a general purpose computer or even by a human with pen and paper.  The Court also found that the patent claimed no inventive concept.  While the Plaintiff argued that the claims were specific to improving internet searching, Judge Thynge noted that the claims, themselves, never mentioned the internet at all.  Finally, Judge Thynge disagreed with the Plaintiff’s argument that the PTO’s issuance, post-Alice, of a continuation patent that included nearly identical claim language showed that the Plaintiff’s patent was valid.  As the Court explained, if the Plaintiff’s argument was correct, “any patent issued post-Alice would be inoculated from invalidity under Section 101.  That is not the case.”

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In St. Clair Intellectual Property Consultants, Inc. v. Toshiba Corp., et al., C.A. No. 09-354-KAJ (D. Del. Nov. 23, 2015), Judge Kent A. Jordan denied Defendants’ motion for fees and costs under Section 285 and 28 U.S.C. § 1927. The Court explained that “[w]hile it is true that [Plaintiff] did not present a strong case, and that is position appeared to be weaker in light of certain rulings in limine and at trial, the case for infringement was not so weak as to be ‘exceptional’ . . . nor does the record support a finding that the actions of its attorneys . . . were taken in bad faith.” Id. at 1.

Defendants claimed that Plaintiff did not have sufficient proof of infringement. When its technical expert’s opinion was limited by the Court, Plaintiff had “attempted, improperly, to enter additional, unauthenticated Toshiba schematics into the record using its damages expert . . . [the Court] rejected that maneuver, and [the gap in Plaintiff’s case] remained.” Id. at 6. But the Court observed that, while difficult, “a victory was not impossible” as the technical expert could still testify generally and could have persuaded the jury of infringement, thus there was “a straight-faced basis for arguing for a finding of infringement.” See id. at 6-7. The Court similarly rejected Defendants’ contention that a key limitation was missing from the accused products, as the Court had previously rejected Defendants’ position on this issue. See id. at 7.

Defendants also pointed to Plaintiff’s “behavior before the court,” specifically that it had “shifted litigation positions . . . to avoid summary judgment,” and “presented false royalty calculations.” Id. at 4, 7. Judge Jordan, having been “present for the latter portions of pretrial proceedings and the trial itself,” saw no “evidence of the bad motives [Defendants have] ascribed to [Plaintiff].” Id. at 7. “Royalty calculations, especially in cases with variable and sometimes overlapping infringement theories against large suites of products, may be expected to have a degree of imperfection. That [Defendants] found and successfully exploited such imperfections . . . does not mean that [Plaintiff] was a bad actor. In the same vein, [Defendants’] success in forcing [Plaintiff] to change positions in the course of litigation does not make this case exceptional. Parties should abandon positions or claims when it appears they are unlikely to prove fruitful. . . . [The Court has] no desire to encourage parties to hold on to and litigate discredited positions out of a fear that abandoning them will result in an attorneys fee award[.]”

The Court denied the motion as to 28 U.S.C. § 1927 under the same bases as its Section 285 denial. See id. at 9.

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In Two-Way Media Ltd. v. Comcast Cable Communications, LLC, et al., C.A. Nos. 14-1006, 14-1212-RGA (D. Del. Nov. 17, 2015), Judge Richard G. Andrews resolved two disputes regarding the parties’ proposed protective orders. First, Judge Andrews found that Plaintiff should not “be allowed to share Highly Confidential Information received from a defendant in one of the above-captioned cases with a defendant in the other case.” Id. at 1-3. Specifically, Judge Andrews pointed to the fact that “¶6(C) permits disclosure of Highly Confidential Information to outside counsel ‘of the receiving party’ in particular, and therefore does not contemplate disclosure to counsel for another party.” Id. at 3. Moreover, Judge Andrews found that Defendants showed good cause to prevent Plaintiff from sharing Highly Confidential Information across cases. Specifically, Judge Andrews found that if Plaintiff were permitted to disclose the Highly Confidential Information of one defendant to outside counsel and experts in the other case, “Defendants would suffer prejudice.” Id. Judge Andrews provided the following example: “If Plaintiff were allowed to use . . . Comcast’s Highly Confidential Information in its expert report in the Verizon case, Verizon’s in-house counsel would be prohibited from viewing those portions of Plaintiffs expert report. Such a circumstance would impair Verizon in its defense.” Id. On the other hand, the parties seemed to agree that “if the Protective Order permitted disclosure of one defendant’s Highly Confidential Information to in-house counsel of defendants in the other case, that information would be unacceptably compromised.” Id.

Second, Judge Andrews found that the prosecution bar should not extend to post-grant proceedings. Judge Andrews explained that “[i]nvolvement in post-grant proceedings does not raise the same risk of competitive misuse as does involvement in prosecution.” Id. at 4. Judge Andrews further noted that “[p]ost-grant proceedings, including reexamination, inter partes review, and covered business method review, all involve assessing the patentability of existing claims.” Id. In addition, “only narrowing claim amendments may be made during post-grant proceedings.” Id. Judge Andrews therefore concluded that “[t]here is . . . little risk that confidential information learned in litigation will be competitively used to draft claims that read on Defendants’ products” and that “Defendants have not recited any circumstances specific to proceedings related to these patents that suggest otherwise.” Id. Accordingly, “[t]he risk of inadvertent disclosure or competitive use of Defendants’ confidential information [was] outweighed . . . by the potential harm to Plaintiff by denying its choice of counsel in post-grant proceedings.” Id. at 5.

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In a recent Report and Recommendation, Magistrate Judge Christopher J. Burke recommended that the court grant plaintiff’s motion for summary judgment of no invalidity based on (i) non-enablement and (ii) insufficient written description for U.S. Patent No. 5,735,892 (“the ‘892 patent”), which is directed to thin-wall intraluminal graft devices. W.L. Gore & Associates, Inc. v. C.R. Bard, et al., C.A. No. 11-515-LPS-CJB (D. Del. Nov. 16, 2015).

First, Judge Burke found that defendants failed to present evidence sufficient to raise a genuine issue of fact regarding whether plaintiff failed to satisfy the enablement requirement. Id. at 17. As Judge Burke observed, “[t]he crux of the parties’ dispute with respect to enablement is whether the ‘892 patent enables the full scope of the claimed ‘tubular covering’ of ePTFE.” Id. at 8. Defendants argued that “because the covering limitation is not limited to those made from films, the ‘892 patent fails to enable the skilled artisan to practice the full scope of the claimed invention because it does not teach the use of coverings made from extruded tubes.” Id. As Judge Burke explained, however, “where a product claim does not limit a component part to the method of making (as here), it is irrelevant whether an alternative method requires undue experimentation—since . . . only one method of making the invention need be enabled.” Id. at 16. Accordingly, “[i]n circumstances like these—where a material difference has not been demonstrated in an end product made by two different methods—the method of constructing the claimed covering using extruded tubes simply amounts to an improved mode of achieving the claimed invention that need not be enabled by the patent.” Id. at 16-17.

Defendants raised a similar argument as to the written description requirement, contending that the ‘892 patent “does not convey that the inventors had possession of any embodiment of the invention that used extruded tubes to achieve the claimed device.” Id. at 18. Judge Burke found this argument failed “[f]or the same reasons that [defendants’] arguments failed with respect to enablement.” Id. at 18-19. Judge Burke thus found defendants failed to raise a genuine issue of fact as to whether plaintiff failed to satisfy the written description requirement. See id.

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Judge Sue L. Robinson recently found several claim terms indefinite in a claim construction order relating to coffee brewing machines.  Courtesy Prods., L.L.C. v. Hamilton Beach Brands, Inc., Civ. No. 13-2012-SLR (D. Del. Nov. 18, 2015).  Specifically, Judge Robinson found that the following claim terms indefinite:

  • “sufficiently large to hold one of the filter packs and the heated water while brewing without a level of the heated water rising above and overflowing the open top”
  • “sufficiently large to hold at least one of the filter packs and the heated water while brewing without a level of the heated water rising above and overflowing the open top”

These terms were found indefinite because the specification provided no information about “the variables involved (such as flow of water into and out of the reservoir and the impact of the filter pack permeability.”  “Without any detail on such variables that would influence the ‘level of the heated water,’ the court concludes that the disputed limitations are not precise enough to afford clear notice of what is claimed and do not provide reasonable certainty as to the scope of the invention.”  Id. at 5 (internal quotation marks omitted).

The Court also found the following terms indefinite:

  • “the brew baskets being inserted into the location in the beverage brewing machine”
  • “the brew baskets being individually inserted into the location during an associated brewing operating”
  • “the brewing machine heating water from the water reservoir”

These terms were found indefinite for reciting both an apparatus and a method of using that apparatus.  See IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005).  Here, Judge Robinson found that “a person of ordinary skill in the art would not understand whether the claims at bar are infringed by an apparatus capable of heating water and having brew baskets inserted or when a person actually uses the beverage brewing system to heat water and inserts a brew basket.”  Id. at 11.  The Court found five more claim terms indefinite for the same reason.

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