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In Genetic Technologies Limited v. Laboratory Corporation of America Holdings, et al., C.A. No. 12-1736-LPS-CJB (D. Del. Sept. 3, 2014), Magistrate Judge Christopher J. Burke recommended the grant of defendants’ motion to dismiss for failure to state a claim. The Court determined that the single asserted claim of U.S. Patent No. 7,615,342, entitled “ACTN3 Genotype Screen for Athletic Performance,” was directed to non-patent-eligible subject matter under Section 101.

“The methods claimed in the ‘342 Patent embody findings that the presence of certain genes is correlated with elite sprinting, strength, or power performance.” Id. at 3. The asserted claim included steps for “analyzing” a sample obtained, “detecting” the presence of certain alleles at a certain location, and then “predicting the potential sprinting, strength, or power performance of the human” where the presence of the two alleles would be positively associated with these attributes.

The Court first concluded that defendants’ motion to dismiss was not premature because (i) “[p]laintiff has failed to articulate why there are any disputed areas of fact relevant to resolution of the Motion,” id. at 10, and (ii) the Court concluded that claim construction was not necessary to resolve the Section 101 question, see id. at 11-13. The Court also prefaced its analysis with an examination of the holdings of decisions it found “especially instructive:” Mayo Collaborative Servs. v. Prometheus Labs. Inc., 132 S. Ct. 1289 (2012) (“Prometheus”), PerkinElmer, Inc. v. Intema Ltd., 496 F. App’x 65 (Fed. Cir. 2012), and Assoc. for Molecular Pathology v. Myriad Genetics, Inc., 698 F.3d 1303 (Fed. Cir. 2012). See id at 14-20.

Applying the Supreme Court’s two-part test for patent eligibility of patent-ineligible concepts (such as laws of nature), see id. at 9-10, the Court first identified the patent’s “link between a particular genetic variation and the potential for elite athletic performance” to be a natural law. Id. at 20-21. Next the Court assessed whether the elements of the claim transformed it into a patent-eligible application of the natural law because they contained an inventive concept. The Court concluded that this was not the case; rather, the elements of the claim that applied the law of nature – the “analyzing,” “detecting,” and “predicting” steps – utilized methods that were already well-known and/or were merely instructions on how to apply the natural law. See id. at 22-28. The Court came to the same conclusion when looking at these elements “as a whole” and found that “the steps in combination do not make the natural law and insignificant post-solution activity into patent-eligible subject matter.” Id. at 28. The Court concluded that the claims were similar to those rejected in Prometheus where the claimed steps “amount[ed] to nothing significantly more than an instruction to [testers] to apply the applicable laws.” Id. at 29 (internal citations omitted). The Court also rejected plaintiff’s argument that the claim was patentable because it may meet the machine-or-transformation test because “the Supreme Court has held that the machine-or-transformation test is non-dispositive in these types of cases – a claim can still pass the test, but fail the Section 101 law of nature inquiry.” Id. at 29 n.14 (citing Prometheus).

Finally, the Court observed that “[t]he presence here of the basic underlying concern that [claim 1 of the ‘342 Patent] tie[s] up too much future use of laws of nature simply reinforces [the Court’s] conclusion that the process[] described in [claim 1] [is] not patent eligible.” Id. at 30 (alternations in original) (citing Prometheus).

As a result, the Court recommended that plaintiff’s complaint be dismissed as to claim 1 and that, should the District Court adopt this recommendation, the District Court direct the plaintiff to provide “notice as to whether any other claims of the patent-in-suit will be asserted here, or whether the case should be closed.” Id. at 30.

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Judge Robinson recently considered a defendant’s motion in a patent infringement case to dismiss claims of joint and willful infringement. With regard to joint infringement, the question presented was whether the plaintiff had adequately pled joint liability based on an agency relationship between two defendants who were corporate parent and subsidiary. The complaint made allegations regarding the corporate structure and operations of the defendant, Toshiba. Judge Robinson found the allegations of infringement based on agency sufficient to withstand a motion to dismiss, taking “plaintiffs’ factual allegations as true, especially where, as here, the information resides with defendants who, in turn, have provided only a general denial of infringement rather than facts about the organization and relationships between the various defendant entities.” Intellectual Ventures I LLC, et al. v. Toshiba Corp., et al., C.A. No. 13-453-SLR, Memo. Op. at 4-6 (D. Del. Sept. 3, 2014).

Judge Robinson granted, however, the motion to dismiss as to allegations of willful infringement. Her Honor explained that “all the information relating to notice is in the hands of plaintiffs and it is a matter of public knowledge that plaintiffs own hundreds of patents, [therefore] a general allegation about ‘discussions’ or ‘a presentation’ is insufficient to withstand a motion to dismiss. Moreover, notice of the infringement risk via the letter written only one day before the complaint was filed does not constitute a showing of objective recklessness on the part of the defendants.” Id. at 8.

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Judge Andrews recently considered several motions in limine in advance of trial in Interdigital Communications, Inc., et al. v. Nokia Corp., et al., C.A. No. 13-10-RGA (D. Del. Aug. 28, 2014).  Of note, the Court explained that evidence relating to inventors’ alleged dishonesty before the PTO would be inadmissible during the jury trial, under Rule 403, except to the extent it arose in cross-examination to challenge inventors’ credibility pursuant to Rule 608(b), or potentially as it related to an obviousness inquiry. In the latter case, the Court ordered that the defendants must disclose how they intended to use such evidence in connection with obviousness before trial.  The Court also precluded the defendants from referring to the plaintiff as a “troll, non-practicing entity (NPE), patent assertion entity, or extortionist.”   The Court also excluded evidence of a rejected IPR petition, explaining that “[a] PTO non-merits decision not involving Defendants has little or no probative value, and would require a lot of explanation for the jury to be able to understand. … [any] minimal probative value … would be substantially outweighed by the danger of unfair prejudice to the Defendants, and the risk of jury confusion from the complexity added by such testimony.”

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Following her decision last summer granting Butamax’s motion for summary judgment of non-infringement and invalidity of certain patent claims in its ongoing litigation with Gevo, Judge Robinson recently considered Butamax’s request for a Section 285 exceptional case determination and award of attorneys fees. Applying the guidance set out in Octane Fitness, Judge Robinson found that this was not an exceptional case. Gevo, Inc. v. Butamax Advanced Biofuels LLC, et al., C.A. No. 13-576-SLR, Memo. at 2-4 (D. Del. Aug. 26, 2014).

Butamax characterized the claims resolved by summary judgment as a “scenario where a plaintiff is offered the opportunity to investigate and verify facts before filing an infringement action, and instead refuses that offer and immediately files a baseless suit, and loses on summary judgment.” Id. at 3. Judge Robinson explained, however, that the “parties at bar are involved in a race to develop a commercial isobutanol recovery process, a complex and unpredictable technology” and that “Gevo’s scepticism of Butamax’s representations regarding non-infringement and its research and commercialization plans” was therefore justifiable. Id. Accordingly, “Gevo’s conduct in the case at bar was not unreasonable, nor is there evidence of ‘subjective bad faith.’” Id. at 4.

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In a recent order, Judge Sue L. Robinson ruled on several issues following the parties’ pretrial conference. Carrier Corp. v. Goodman Global, Inc., et al., C.A. No. 12-930-SLR (D. Del. Aug. 28, 2014). First, Judge Robinson denied defendants’ expert’s proffer related to anticipation, where the expert’s report merely referenced a series of claims charts “which were never explained or even specifically endorsed by the expert.” Judge Robinson concluded that defendants should not be permitted “to assert essentially new opinions through [their] expert declaration submitted in connection with [their] proffer of anticipation.” Id. at 2.

Second, Judge Robinson considered whether to admit as evidence opinions of counsel and reexamination proceedings that post-dated the alleged period of induced infringement, which was alleged to be between November 2009 and September 2012. See id. at 2-4. Judge Robinson found that the “request for reexamination,” which was filed in September 2012 following a prior art search, was “circumstantial evidence of [defendants’] intent during the relevant time.” Id. at 3. Judge Robinson would allow such evidence to be admitted, but would provide a limiting instruction for the jury and restrict the scope of examination. Id. On the other hand, Judge Robinson found that defendants failed to establish a “sufficient nexus between the August 2013 opinions of counsel and [defendants’] intent in September 2012.” Id. at 3-4. Noting that such evidence would present “an even greater risk of undue prejudice,” defendants would not be permitted to introduce that evidence at trial.

Third, Judge Robinson found that defendants failed to “timely identify, for purposes of full and fair discovery, its contention that it never sells its components as a ‘system’” and was therefore precluded from presenting such a defense. Id. at 4. Fourth, defendants had argued that there remained an issue of fact for the jury to determine, namely, whether a particular limitation “would be understood with reasonable certainty by a person of ordinary skill in the art.” Id. Judge Robinson explained, however, that the Court had already rejected defendants’ indefiniteness argument with respect to the limitation and provided a construction for the term. Id. Given that it is the Court’s responsibility to “construe claim language consistent with the understanding of a person of ordinary skill in the art,” Judge Robinson rejected defendants’ argument. Id.

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In Interdigital Communication v. ZTE Corp., C.A. Nos. 13-009, 13-10-RGA (D. Del. Aug. 28, 2014), Judge Richard G. Andrews ruled on several motions for summary judgment filed by plaintiff and defendants. First, Judge Andrews addressed plaintiff’s motions that an asserted patent was not unenforceable due to inequitable conduct, and that the asserted claims of certain asserted patents were not invalid as anticipated, obvious, or for lack of enablement and written description. Id. at 3-6. Judge Andrews granted plaintiff’s motion regarding enablement, explaining that to demonstrate a lack of enablement, it is “necessary to show that one cannot practice the invention without undue experimentation,” and that defendants failed to “raise any evidence in their briefing” regarding undue experimentation. Id. at 5-6. Judge Andrews also granted plaintiff’s inequitable conduct summary judgment motion in part, explaining that while “there [was] a sufficient factual dispute as to the Siemens 004 reference,” the defendants did “not address the other five references.” Id. at 4. Accordingly, Judge Andrews found that defendants “waived their defense of inequitable conduct” as to those five references. Id. Judge Andrews denied plaintiff’s motion for summary judgment as to anticipation, obviousness, and lack of written description. Id. at 3-6. Judge Andrews also denied plaintiff’s Daubert motion. Id. at 8. Defendants had also filed summary judgment motions addressing various non-infringement and anticipation arguments. Id. at 6-7. Judge Andrews found a genuine issue of material fact to exist with respect to each of these issues and thus denied defendants’ motions. Id.

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Judge Richard G. Andrews recently considered GeoTag, Inc.’s motion to dismiss Microsoft and Google’s (“Plaintiffs”) amended complaint for lack of subject matter jurisdiction.  Microsoft Corp. et al. v GeoTag, Inc., C.A. No. 11-175-RGA (D. Del. Aug. 29, 2014).  Judge Andrews considered an earlier motion on similar grounds but gave Plaintiffs leave to amend their complaint.  GeoTag renewed its motion in opposition to Plaintiffs’ amended complaint.  Id. at 1.  This declaratory judgment action was filed by Plaintiffs in response to GeoTag’s suits filed in the Eastern District of Texas against Plaintiffs’ customers.  Plaintiffs argued that the Court had subject matter jurisdiction  because “‘GeoTag’s Texas lawsuits implied an assertion of both indirect and direct infringement against Google and Microsoft, and a live controversy therefore existed as to the Google and Microsoft products accused by GeoTag’s Texas lawsuits against their customers.'”  Id. at 2.  Under MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007), this implied assertion of infringement “created a justiciable dispute.”  Id. at 3.

GeoTag disputed “Plaintiffs’ implied assertion of direct infringement,” arguing that it “‘would mean that the patentee made incorrect allegations of direct infringement against a customer that, unbeknownst to the patentee, would constitute implied assertions of direct infringement against the supplier.'”  Id.  Judge Andrew disagreed because, under 35 U.S.C. § 271, a customer and vendor can both directly infringe a patent based on the same conduct.  Id.  3-4.  Judge Andrews determined that subject matter jurisdiction was present because an express accusation need not occur, only whether there was “‘a reasonable potential that such a claim could be brought.'”  Id.  at 4. (quoting Microsoft Corp. v. DataTern, Inc., 755 F.3d 899, 905 (Fed. Cir. 2014)).  Because “reasonable potential” existed, Judge Andrews denied GeoTag’s motion as to direct infringement.  Judge Andrews also determined that subject matter jurisdiction existed based upon an implied assumption of induced infringement because, despite being aware of allegations against its customers, Google provided articles to customers on how to create store locators.  Id. at 5.  In Judge Andrews view, Plaintiffs’ actions “established a ‘reasonable potential’ GeoTag could have brought induced infringement claims.”  Id.

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Judge Richard G. Andrews recently issued a post-trial opinion in Novartis’s suit over the generic version of its Exelon® transdermal patch.  Novartis Pharmaceuticals Corp., et al. v. Par Pharmaceutical, Inc., et al., C.A. No. 11-1077-RGA (D. Del. Aug. 29, 2014).  Novartis alleged that Par’s Abbreviated New Drug Application (“ANDA”) for a “rivastigmine transdermal system” infringed its U.S. Patent Nos. 6,335,031 and 6,316,023.  Id. at 1.  After a two-day bench trial the Court determined that Novartis failed to prove that Par’s ANDA infringed the patents-in-suit.  Id. at 2.  Because defendant’s counterclaim of invalidity was “based upon a finding of infringement,” the Court did not reach the issue of invalidity.  Id. at 2 n.5.

Click through to read the Novartis opinion.

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Following a two day bench trial in Fresenius Kabi USA, LLC v. Dr. Reddy’s Laboratories Ltd. et al., C.A. Nos. 13-925, 13-1015-RGA (D. Del. Aug. 25, 2014), Judge Richard G. Andrews found that plaintiff failed to prove that defendants’ ANDA products infringe claims 1, 16, 36, an 37 of the patents-in-suit. Defendants certified that the only differences between plaintiff’s brand drug, Diprivan, and defendants’ ANDA products are the “antimicrobial agents” (i.e., “the preservatives”). Id. at 3. Additionally, plaintiff conceded that “there is no literal infringement, but claim[ed] that Defendants ANDA products infringe under the doctrine of equivalents.” Id. While plaintiff argued that “dipropofol” was the equivalent, Judge Andrews concluded that dipropofol was not actually the preservative in defendants’ ANDA products. Id. at 6-8. To this end, Judge Andrews noted that while plaintiff “was not under an obligation to prove that the ANDA products contained dipropofol, it would have been probative of whether the identified preservatives were responsible for antimicrobial activity.” Id. at 8 n.3. Judge Andrews also concluded that dipropofol does not function in substantially the same way as edetate, the preservative appearing in the asserted claims, and thus concluded that defendants’ ANDA products do not infringe. Id. at 8-11.

 

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In Art+Com Innovationpool GmbH v. Google, Inc., C.A. No. 14-217-RGA (D. Del.), Judge Richard G. Andrews had previously denied plaintiff’s motion for judgment on the pleadings as to defendant’s laches defense.  D.I. 33.  The Court now denied plaintiff’s motion to certify the case for interlocutory appeal.  Slip Op. (Aug. 26, 2014).

The Court explained that, even if the Federal Circuit accepted the Court’s certification (which was “seriously doubt[ful]”), the Court’s decision would either be affirmed or, if reversed, “the case would continue with only 91% of the asserted defenses.”  Id. at 1.  Therefore, the Court did not find the disputed issue “a controlling question of law,” nor would interlocutory appeal “materially advance the ultimate termination of the litigation.”  Id.

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