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Magistrate Judge Christopher J. Burke recently issued a Report and Recommendation Granting-in-Part defendants Glenmark’s and Teva’s motions to dismiss.  GlaxoSmithKline LLC, et al. v. Glenmark Generics Inc., USA, et al., C.A. Nos. 14-877-LPS-CJB, 14-878-LPS-CJB (D. Del. April 22, 2015).  The patent in suit relates to carvedilol which belongs to a class of chemical compounds used to treat high blood pressure or hypertension.  Id. at 2.  Plaintiff received FDA approval of carvedilol also for treatment of chronic heart failure and began marketing and selling it under the brand name COREG®.  Teva holds Abbreviated New Drug Application (“ANDA”) for generic carvedilol, and although it originally sought FDA approval for a use for its generic that was not covered by the patent, Teva eventually amended its label to include treatment for chronic heart failure.  Id. at 4.  Glenmark also holds an ANDA for generic carvedilol, but filed its ANDA with a “Section viii carve out,” excluding the portions of the label relating to the chronic heart failure indication.  Id.  Plaintiff alleges that Glenmark revised its label to include chronic heart failure, but later switched back to the previous of the label.  Id. at 5.

Teva and Glenmark moved to dismiss under Fed. R. Civ. P. 12(b)(6) arguing that Plaintiffs’ claims for inducement and contributory infringement fail to adequately state a claim for a relief.  Id. at 7.  Judge Burke recommended the Court dismiss without prejudice Plaintiffs’ claims for inducement during the time Defendants’ labels did not contain the chronic heart failure indication.  Id. at 8-11.  In short, the complaint focused on “what Defendant knew or what they did not do (or, in some cases, what those other Defendants did).  But, as the Federal Circuit has recognized, a claim for induced infringement requires more: ‘mere knowledge of possible infringement by others does not amount to inducement; specific intent and action to induce infringement must be proven.'”  Id. at 9 (emphases in original) (quoting Warner-Lambert Co. v. Apotex Corp., 316 F.3d 1348, 1364 (Fed. Cir. 2003).  Judge Burke recommended the Court deny the motions as to inducement during the time the chronic heart failure indication was on the labels, and as to contributory infringement.  Id. at 11-20.

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In W.L. Gore & Associates, Inc. v. C.R. Bard Inc. et al., C.A. No. 11-515-LPS-CJB (D. Del. Apr.  7, 2015), Magistrate Judge Christopher J. Burke recommended denying defendants’ (“Bard”) motion for summary judgment of noninfringement as to the “affixing” limitation found in the asserted patents.  As an initial matter, Judge Burke found that “[i]n light of the claim construction issues that have arisen on summary judgment with respect to the language of claim 33 (and the other asserted claims), it is clear to the Court that further clarification as to the ‘affixed’/’affixing’ limitations is required.” Id. at 12. Judge Burke clarified that for the “affixed” or “affixing” claim limitations to be met, “the [ePTFE] covering(s) must contact the stent surface, and must be secured to the stent surface.” Id. at 14. Judge Burke explained that contrary to Bard’s position, “a jury could find the ‘affixed’/’affixing’ limitations satisfied by a stent sufficiently enveloped in coverings (that are themselves bonded together through stent openings) such that those coverings are held sufficiently tight to the stent surface,” as pointed to by plaintiff (“Gore”).  Id. at 16.  Judge Burke ultimately concluded that “the existing, remaining dispute between the parties–whether Gore’s evidence demonstrates that a sufficiently secure connection exists between the accused products’ ePTFE coverings and stent surface–is a fact question that a jury should resolve.” Id. at 17. Additionally, after reviewing the parties’ arguments and drawing all reasonable inferences in the light most favorable to Gore, Judge Burke found that “genuine issues of material fact preclude summary judgment on the basis of the doctrine of equivalents.” Id. at 24.

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In Fairchild Semiconductor Corporation, et al. v. Power Integrations, Inc., C.A. No. 12-540-LPS (D. Del. Apr. 24, 2015), Chief Judge Leonard P. Stark considered Plaintiffs’ motion for reargument as well as their objections to various decisions of the appointed Special Master.

The Court denied Plaintiffs’ motion for reargument on its recent decision to grant summary judgment to Defendant relating to priority on Defendant’s patent.  Plaintiffs argued that the Court’s finding that there was proof of reasonable diligence in reducing the invention to practice after conception was based on a mistake of apprehension not supported by the law or facts.  The Court found no clear error in its decision.  Id. at 1-3.

The Court also overruled Plaintiffs’ objections to the orders of Special Master Terrell.  First, the Special Master granted Defendant’s motion to strike portions of Plaintiffs’ expert report.  The Court observed that the Special Master’s analysis was not deficient and his conclusions were consistent with the Court’s prior orders allowing Plaintiffs to submit revised expert reports with certain parameters.  Id. at 5-7 & n.2.  Second, the Special Master had only granted Plaintiffs’ own motion to strike as to portions of Defendant’s expert reports that were responsive to stricken portions of Plaintiffs’ expert’s opinions.  Id. at 7.  In adopting the Special Master’s order, the Court agreed with the Special Master’s conclusions regarding the scope of Defendant’s expert’s opinions.  Id. at 8.

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Judge Sue L. Robinson recently issued the Court’s Memorandum Order determining the appropriate amount of fees awarded to Amazon.com.  Technology Innovations, LLC v. Amazon.com, Inc., C.A. No. 11-690-SLR (D. Del. April 20, 2015).  The fees were awarded as a result of Judge Robinson’s previous decision sanctioning Technology Innovations for its “objectively unreasonable” claim construction positions.  See previous decisions here and here.   Amazon.com requested over $100,000 in fees.  After reviewing each category of claimed fees, Judge Robinson awarded Amazon.com $51,046.  Among other things, Judge Robinson awarded half the requested amount for briefing a motion to dismiss and Amazon’s reply to the Court’s show cause order, determining that the number of timekeepers used to produce 38 pages of briefing was excessive.  Id. at 2, 3.  Judge Robinson also reduced the requested reimbursement related to invalidity contentions, finding that the Court “ha[d] no basis to award a $470 hourly rate to a third year associate[,]” and lowering the rate to $250.  Id.

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Following a successful inception in 2014, Premier Cercle™ is teaming up with Institutional Investor Magazine  and Managing Intellectual Property to organize a sequel of the IP Finance Conference that will showcase and IPF2015_bann_160x600_v1-1 (1) (2)discuss the best practices from patent holders, entitled, investors, bankers, financiers, Private Equity, firms, regulators, plaintiffs and defendants which make the most of their immaterial assets and intangible capital, and optimize their
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  • What are investors looking for in an IP asset or portfolio?
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  • Patent’s evolving role in financial transactions
  • Disruptive events in IP finance: PTAB proceedings and the Alice decision

Thursday 14th May, 2015, The New York Palace, New York City

IP Finance is offering Delaware IP Law Blog followers a special registration fee of $750 accessible by entering the code “IPFUS” while registering on the website.

For more information and to register: www.ipfinance.us.

 

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In Bayer Intellectual Property GMBH et al. v. Warner Chilcott Co., LLC, C.A. No. 12-1032-GMS (D. Del. Apr. 21, 2015), Judge Gregory M. Sleet considered defendants’ motion for summary judgment, and found U.S. Patent No. 5,980,940 (“the ’940 Patent”) to be indefinite and therefore invalid.  The ’940 Patent claims “an oral contraception regimen in which two hormones are taken at set time points throughout the dosing schedule.” Id. at 1. As Judge Sleet explained, the court found in its October 9, 2014 Claim Construction Order that it was unable to construe the phrase “high contraceptive reliability, low incidence of follicular development, and satisfactory cycle control, with reliable avoidance of intracyclic menstrual bleeding and undesirable side-effects.” Id. at 2. Specifically, the court found that the “words of degree” – i.e., “high,” “low,” “satisfactory,” and “reliable”–“had no standards against which to draw comparisons, and the patent offered no suggestions for how to measure these criteria.” Id. The court therefore indicated that “summary judgment would be the proper avenue to address an indefiniteness challenge.” Id.

Judge Sleet noted that “[t]he court has already explained in its Claim Construction Order that the intrinsic record fails to assign meaning to the words of degree in the disputed term” and that plaintiffs “did not seek reconsideration of this ruling, and the court need not revisit its reasoning.” Id. at 3.  Rather, plaintiffs contended that the disputed term is not indefinite “because one skilled in the art would understand–with reasonable certainty–its meaning, as demonstrated by extrinsic evidence.” Id.  As Judge Sleet explained, plaintiff provided “dozens of pieces of extrinsic evidence, as well as a supplemental declaration . . . , in support of a new argument that the disputed term and the words of degree simply indicate that the claimed invention performs comparably to other oral contraceptives on the market.” Id. at 3-4.

As an initial matter, Judge Sleet took issue with plaintiffs’ “procedure in making [their] arguments,” as the court provided counsel “an opportunity during the Markman hearing to explain why extrinsic evidence was necessary to construe terms,” at which time plaintiffs conceded the evidence was merely for “context.” Id. at 4. Nevertheless, plaintiffs “flooded the court with never-before-seen evidence and expert testimony, supporting a new, ‘clearly established’ meaning of the disputed term.” Id. at. 5. Judge Sleet thus found plaintiffs’ “efforts to reargue claim construction with entirely new evidence at this time . . . improper.” Id.

Judge Sleet went on to explain that even if the court accepted the newly presented extrinsic evidence, it would reach the same result and find the term indefinite. First, as Judge Sleet noted, “the proposed construction (and the underlying extrinsic evidence) conflicts with the intrinsic record of the ’940 Patent, violating a basic tenet of claim construction.” Id. at 5. Further, “the conflicting interpretations of the disputed term offered . . .  in [the] two declarations underscore the fact that the patent ‘fails to inform, with reasonable certainty, those skilled in the art about the scope of the invention.’” Id. at 6. Lastly, Judge Sleet found that even if the court accepted plaintiffs’ new construction (“comparable to other marketed oral contraceptives”), the court would still find the ’940 to be indefinite, as the intrinsic record failed to provide objective boundaries as to the term “comparable.” Id.

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In Interdigital Communications, Inc., et al. v. ZTE Corporation, et al., C.A. No. 13-009-RGA (D. Del. Apr. 17, 2015), Judge Richard G. Andrews considered Defendants’ request to exclude Plaintiffs’ expert’s testimony with respect to certain statistical conclusions, arguing that the relevant testimony had never provided bases for his conclusions.  The Court concluded that “the gist of [the expert’s] testimony was disclosed in his expert reports,” but certain mathematical analysis presented at the Daubert hearing had not been. Id. at 2.  Consequently, the expert could “testify about his theory generally, but cannot engage in mathematical analysis unless asked on cross-examination.”  Id.

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In a recent memorandum opinion, Chief Judge Leonard P. Stark denied a motion to invalidate under § 101 the plaintiff’s U.S. Patent No. 5,987,610 (“Computer virus screening methods and systems”).  Intellectual Ventures I LLC v. Symantec Corp., et al., C.A. No. 10-1067 (D. Del. Apr. 22, 2015).  The Court found that the ’610 patent (unlike the other two patents at issue in the motion) was “Internet-centric” – the “key idea of the patent is that virus detection can take place remotely between two entities in a telephone network,” and “[c]laims that purport to improve the functioning of the computer itself or effect an improvement in any other technology or technical field may be patentable under § 101.” (emphasis in original) (internal quotation marks omitted).  The Court rejected the defendants’ arguments that the patent was akin to “observing individuals for signs of intoxication, reading wartime correspondence, or asking someone if she is having an emergency.”  The Court added that the ’610 patent did not claim an abstract idea because “[t]he concept of detecting a computer virus in installed data (and doing so in a telephone network) does not make sense outside of a computer context.”

However, the Court granted the motion to invalidate two other asserted patents, U.S. Patents. No. 6,460,040 (“Distributed content identification system”) and 6,073,142 (“Automated post office based rule analysis of e-mail messages and other data objects for controlled distribution in network environments”), under § 101.  The Court agreed with the defendants that both patents claimed methods that were abstract ideas capable of being performed by humans and “are not necessarily rooted in computer technology.”  The Court further found that the methods lacked any inventive concept that could salvage patent eligibility.

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Chief Judge Stark recently denied a plaintiff’s motion to stay litigation with respect to a counterclaim for infringement of patent claims that stood rejected by the PTAB.  Fairchild Semiconductor Corp., et al., v. Power Integrations, Inc., C.A. No. 12-540-LPS (D. Del. Apr. 15, 2015).  The Court explained, “[w]hile a stay would minimally simplify the case set for trial, it would also unfairly prejudice [the defendant].  The most prominent and weighty factor under the circumstances is that discovery is completed and the parties and the Court are preparing for trial, which will begin in about six weeks.  Under the totality of the circumstances, the Court concludes that the appropriate exercise of its discretion is to deny [the plaintiff’s] motion to sever and stay.”  Id. at 7-8.

Judge Stark also ruled on cross-motions for summary judgment relating to priority dates.  One of the plaintiff’s defenses to a counterclaim of infringement was invalidity based on one of the plaintiff’s own patents, which it argued was prior art based on filing dates.  Id. at 15-16.  The defendant disagreed that the plaintiff’s patent was prior art, arguing that the defendant’s patent was entitled to an earlier priority date based on pre-filing conception and reduction to practice.  Chief Judge Stark found that the defendant produced corroborating evidence of a conception date that preceded the plaintiff’s patent filing date, and also that the inventors of the defendant’s patent “were continuously diligent in reducing the invention to practice” before the plantiff’s patent filing date.  Id. at 20-21.  As a result, the Court ruled that the plaintiff’s patent could not be invalidating prior art.

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Judge Sue L. Robinson recently dismissed willful infringement claims in two cases filed by Spherix Inc.  Spherix Inc. v. Cisco Sys., Inc., Civ. No. 14-393-SLR (D. Del. Mar. 30, 2015); Spherix Inc. v. Juniper Networks, Inc., Civ. No. 14-578-SLR (D. Del. Mar. 30, 2015).  The willfulness claims were based on the allegation that the defendants had knowledge of the patents-in-suit “from the date of the Nortel patent auction, as each of these patents were part of the patent portfolio for sale.”  Judge Robinson noted that the Nortel patent portfolio “contained more than 6,000 patents” and declined to infer knowledge of the patents-in-suit “from the defendant’s participation in a bidding process on a portfolio containing over 6,000 patents.”   With respect to one patent asserted against Juniper Networks, which was one of thirty-one references cited by the PTO examiner during prosecution of one of Juniper Network’s patents, Judge Robinson found that the allegations willfulness were insufficient, explaining, “the fact that the ‘123 patent was referenced during prosecution of two of defendant’s over 1,700 patents . . . is not compelling evidence of knowledge . . . .”

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