In Medicines Company Inc. v. Hospira Inc., C.A. No. 09-750-RGA (D. Del. Nov. 1, 2013), Judge Richard G. Andrews denied defendant’s motion to seal selected portions of the trial transcript and exhibits that related to “the price the Defendant paid for bivalirudin.” Order at 1. While this was “the sort of information that the Court would consider protecting from disclosure,” the potential harm of disclosure to defendant was unclear because its entry into the bivalirudin market was “speculative” and the information was “not current.” Id. The Court further explained that “[h]ad a request to seal been made contemporaneously, it would be a close question. The issue could have been avoided. Among other things, the price was irrelevant to any issue in the case. There was, however, no timely objection. . . . and that argues against redaction. The fact that it is a judicial record – a trial transcript – that Defendant seeks to redact also argues against redaction.” Id.
Judge Sue L. Robinson recently considered plaintiff’s request to strike three supplemental expert reports, and with respect to one report, plaintiff’s alternative request for “follow-up” discovery. Aeritas, LLC v. United Alaska Air Grp., Inc., C.A. No. 11-967-SLR (D. Del. Oct. 25, 2013). With respect to the report for which plaintiff made the alternative request, Judge Robinson denied both plaintiff’s request to strike and the alternative request for follow-up discovery. Id. at 2. Judge Robinson found that plaintiff already had an opportunity to pursue related discovery, noting that “defendants timely shared with plaintiff the information they obtained through their discovery efforts.” Id. Judge Robinson further explained that “without any real indication that plaintiff’s proposed follow-up discovery will yield any substantive results, the court finds the prospect of prejudice too speculative to justify re-opening discovery at this stage of the proceedings.” Id. Judge Robinson also denied plaintiff’s request to strike a different report, noting that it was responsive to another expert’s report. Id. Judge Robinson, however, granted plaintiff’s request to strike one expert’s supplemental report, explaining that it was “nothing more than an effort to rectify his opening report by more clearly articulating his opinions, something he should have done in the first instance.” Id.
Judge Leonard P. Stark recently dismissed two complaints filed by a plaintiff alleging that defendants’ respectively filed ANDA’s infringe U.S. Patent No. 8,148,356. Cumberland Pharm. Inc. v. Innopharma, Inc., C.A. No. 12-618-LPS (D. Del. Nov. 1, 2013); Cumberland Pharm. Inc. v. Sagent Agila LLC, et al., C.A. No. 12-825-LPS (D. Del. Nov. 1, 2013). Judge Stark dismissed the complaints in each action for failure to state claim on the same grounds. That is, Judge Stark found that plaintiff’s asserted claims covered only compositions “free from a chelating agent,” despite the complaints’ allegations that defendants’ products contained EDTA, a chelating agent. Innopharma, C.A. No. 12-618-LPS, at 2-3; Sagent Agila LLC, C.A. No. 12-825-LPS, at 2-3. The “free from a chelating agent” limitation appeared explicitly in the asserted claims and was discussed in the complaints. See Innopharma, C.A. No. 12-618-LPS, at 3-4; Sagent Agila LLC, C.A. No. 12-825-LPS, at 3-4. While plaintiff argued, among other things, that dismissing the complaints would require a premature claim construction, Judge Stark found that no claim construction was necessary “to determine that ‘free from a chelating agent’ means that a claimed composition may not include a chelating agent.” Innopharma, C.A. No. 12-618-LPS, at 3-4; Sagent Agila LLC, C.A. No. 12-825-LPS, at 2-4. Judge Stark also noted that the doctrine of equivalents would be inapplicable in either case, as a “finding of infringement would vitiate the ‘free from a chelating agent’ claim limitation.” Innopharma, C.A. No. 12-618-LPS, at 3-4; Sagent Agila LLC, C.A. No. 12-825-LPS, at 2-4.
Judge Leonard P. Stark recently denied a defendant’s post-trial motion to dismiss an infringement action for lack of subject matter jurisdiction based on the alleged expiration of the patent-in-suit. Avanir Pharmaceuticals, Inc., et al. v. Actavis South Atlantic LLC, et al., C.A. No. 11-704-LPS (D. Del. Oct. 25, 2013). The defendant argued, and the Court agreed, that the original priority application lapsed and was abandoned before a continuation application was filed. The plaintiff attempted to retroactively fix this problem by filing an ePetition through a reissue patent, in an attempt to get behind certain alleged prior art, but the defendant argued that the fix was unsuccessful because the plaintiff failed to file a terminal disclaimer, as required. The Court agreed that a terminal disclaimer was required, and therefore left the plaintiff with a difficult dilemma: “[T]he [reissued] patent may either (i) claim priority back to [the original] application’s filing date – and then its terminal period must be disclaimed, pursuant to § 1.137(d)(2), meaning the [reissued] patent would have expired on June 9, 2012; or (ii) claim priority to [a later] application’s filing date – and would not expire until the end of its full term, on January 26, 2016.” Id. at 21. While the plaintiff argued that neither outcome was dictated by these circumstances, the Court found that the existence of the plaintiff’s option to elect the later priority claim, regardless of how it might ultimately impact the Court’s validity assessment, means “the Court continues to have subject matter jurisdiction over the parties’ disputes relating to the [reissued] patent.” Id. at 22.
Judge Andrews recently ruled on claim construction disputes related to U.S. Patent No. 5,991,885 in litigation between Chalumeau Power Systems and Alcatel-Lucent. The patent-in-suit relates to networking and, more specifically, detecting and providing power to a remote terminal on a network. Judge Andrews construed the following claim terms, picking and choosing constructions from both the plaintiff and defendant:
– “user interface connector”
– “network hub”
– “for identifying the operational protocol of a coupled device that indicates the type of device”
– “for identifying the presence of an adapter of a first type”
– “type of device”
– “operational protocol/operational protocol of a coupled device”
Chalumeau Power Sys. LLC v. Alcatel-Lucent, et al., C.A. No. 11-1175-RGA, Memo. Op. at 3-11 (D. Del. Oct. 30, 2013).
In L-3 Communications Corp. v. Sony Corporation, et al., C.A. No. 10-734-RGA (D. Del. Oct. 30, 2013), the jury returned a verdict finding that defendants had not proven by clear and convincing evidence that the asserted claims of U.S. Patent No. 5,541,654 were invalid. Prior to trial, Judge Andrews had granted plaintiff’s partial motion for summary judgment on that patent’s validity.
Judge Richard G. Andrews recently issued two pre-trial motions in limine in L-3 Communications Corp. v. Sony Corporation, et al., C.A. No. 10-734-RGA (D.I. 232, 233) (D. Del. Oct. 25, 2013). The Court first excluded defendants’ Request for Ex Parte Reexamination in its entirety. D.I. 232 at 2. There was “no reason” why the request should be admitted into evidence, and the parties agreed that it was prejudicial and “does not aid the jury because it is based on claim constructions which were not adopted.” Id. The Court precluded the request in its entirety because “[s]imply removing the prejudicial statements would be a waste of time and effort, as the remaining contents would not be relevant.” Id. Furthermore, “because [defendants] did not participate in the reexamination, except for the initial request, any reference to [it] as the requester is unfairly prejudicial . . . [therefore] any references to [defendants or their trial counsel] as the requester, either in the rest of the file history or by expert testimony, are precluded.” Id.
Plaintiff also moved to exclude slides allegedly involved in a conference presentation and a draft article related to this presentation, as well as defendants’ expert opinion that these materials were prior art. Plaintiff argued that the presentation and article were hearsay. D.I. 233 at 1-2. The Court concluded that only the publication dates of the documents were hearsay because, other than the date, the documents were not being used to assert the truth of their contents. Id. at 3. The Court then concluded that the draft article was not hearsay because the date in its footer was “probably the statement of a machine and not of a human. If it is a statement of a machine, it is not hearsay.” Id. (internal citations omitted). Furthermore, there was “absolutely no circumstances that give rise to any suspicion that the document has been altered.” Id. As to the slides, however, the only evidence defendants presented that they were used at was the declaration of their alleged presenter, and this could not be used to prove the date. Id. at 4. But the Court believed that “a prima facie case has been made that the deck of slides was presented at the conference,” and thus the Court admitted the evidence, but at plaintiff’s request it would give a limiting instruction that the date of the document was not being offered to prove that the slides were actually presented on the alleged date. Id.
Judge Sue L. Robinson recently reconsidered an earlier decision (discussed here) to defer ruling on a motion for attorneys’ fees filed by defendants. Walker Digital, LLC v. Expedia, Inc., et al., Civ. No. 11-313-SLR (D. Del. Oct. 25, 2013); Walker Digital, LLC v. Amazon.com, Inc., Civ. No. 12-140-SLR (D. Del. Oct. 25, 2013); Walker Digital, LLC v. Barnes & Noble, Inc., Civ. No. 12-141-SLR (D. Del. Oct. 25, 2013); Walker Digital, LLC v. Expedia, Inc., Civ. No. 12-142-SLR (D. Del. Oct. 25, 2013). Judge Robinson addressed the merits of the motion and denied it, finding that the defendants did not prevail on the merits for purposes of § 285, but instead had their cases dismissed “based on business arrangements . . . and the resulting consequences of such” after the plaintiff assigned its patents to eBay as part of a settlement. Moreover, Judge Robinson found that the case was not exceptional despite that the plaintiff continued litigating long after assigning the patents away, explaining “[t]he eBay settlement agreement was complex and negotiated in the midst of litigation. The attorneys involved in the litigation were not involved in these negotiations . . . With arguably valuable property rights at stake, it is not surprising that plaintiff chose to have the court resolve the dispute rather than amicably resolve such with defendants.”
Judge Robinson next clarified that the earlier dismissal of the cases (discussed here) for lack of standing was with prejudice. The plaintiff argued that it had not had sufficient opportunity to cure the standing defect, but the Court disagreed, explaining that in its opposition to the motions to dismiss, “plaintiff has offered no evidence that it has a plan to cure the standing defect, stating only that it ‘has been and currently is engaged in continued discussions with eBay regarding ownership of the patents-in-suit.’” Therefore, the Court (by way of clarification for appeal) confirmed that its earlier dismissal was with prejudice.
Judge Sue L. Robinson recently granted defendants’ motions for summary judgment of noninfringement because the Court found a reissue patent invalid under 35 U.S.C. § 251. Arcelormittal France, et al. v. AK Steel Corporation, et al., C.A. No. 10-050-SLR (D. Del. Oct. 25, 2013). In this action, the Federal Circuit had issued a mandate following a jury trial, affirming the district court’s construction of a certain limitation in independent claim 1 of U.S. Patent No. 6,296,805 (“the ‘805 patent”). Id. at 1-2. Following the Federal Circuit’s decision, the USPTO reissued the ‘805 patent as U.S. Patent No. RE44,153E (“the RE153 patent”), allowing a new dependent claim 23 “which effectively broadens the scope of the RE153 patent.” Id. at 2. Independent claim 1 of the RE153 patent included the same claim limitations that had been construed by the Federal Circuit in the ‘805 patent. Id.
Defendants moved for summary judgment of “noninfringement implementing the mandate on remand” and also argued that all of the broadened claims of the reissue patent were invalid under 35 U.S.C. § 251(d) (disallowing reissued patents that enlarge the scope of claims of the original patent unless applied for two years from grant of original, which was not the case here). Id. at 2, 5. There was no evidence that defendants infringed claim 1 of the ‘805 patent as construed by the Federal Circuit. Id. at 6.
Plaintiff argued that the case was now governed by the RE153 patent, and that the Court could revisit the construction of claim 1 of the ‘805 patent, and thus the issue of infringement, “in light of the reissue prosecution history which provides important new intrinsic evidence, which differs materially from the evidence of record when the claim construction was first decided.” Id. at 6 (internal citations and quotation marks omitted). The Court declined to do so, explaining that other courts, including the Federal Circuit, had refused to construe the claims of an original patent in light of a reissue patent. Id. at 7. Instead, the Court concluded that, under Section 251 and its case law, it must “compare the scope of the original claim 1 to the reissued claim 1 (as it must be construed to accommodate new dependent claim 23).” Id. at 7-8. And “[t]hat exercise leads inexorably to the determination that, rather than ‘further limiting’ claim 1, dependent claim 23 broadens the scope of claim 1 in contravention of § 251.” Id. at 8.
Having made this determination, the Court addressed the proper scope of the RE153 patent’s invalidity. Id. at 9. Plaintiff argued that it would be most equitable to only find claim 23 invalid. Id. “Having given this matter considerable thought,” the Court rejected this argument, concluding that “the mandate of the Federal Circuit has been insolubly devitalized by the reissue process. The patent at issue before the Federal Circuit . . . has been surrendered . . . . With the only patent at issue in this case being the RE153 patent, and with said patent having been improperly broadened in violation of § 251(d), the court declines to exercise its inherent equitable powers to resurrect the original scope of the ‘805 patent” Id. at 10. The Court further noted that, because plaintiff attempted to “captur[e] more acts of infringement under the broadening scope of new dependent claim 23 of the RE153 patent” more than two years from the grant of the ‘805 patent, this “intentional strategy to avoid the consequences of this court’s narrow construction” contravened the “fundamental purpose of § 251, that is, repose.” Id. at 10.
As a result, the Court invalidated the RE153 patent under Section 251(d) and granted defendants’ motions for summary judgment. Id. at 11.
Judge Sue L. Robinson recently considered plaintiff’s request to strike portions of defendant’s non-infringement expert report because it was based on modifed source code not made available to plaintiff. Juniper Networks, Inc. v. Palo Alto Networks, Inc., C.A. No. 11-1258 (D. Del. Oct. 28, 2013). Defendant did not dispute plaintiff’s argument, but argued that its actions were justified because “plaintiff did not allude to source code at all until its expert’s initial infringement expert report, and, further, that plaintiff’s expert did not disclose any details about his test environment, nor did he ask for the ability to edit the code while preparing his report. Id. at 1.
Judge Robinson noted that the court could not “discern how much of this controversy [was] attorney-generated, and how much of this controversy truly reflect[ed] prejudicial conduct by either party.” Id. at 2. Therefore, Judge Robinson ordered that, “absent a consensual resolution to this dispute,” the parties’ experts would be expected to testify on November 15, at the hearing previously scheduled for claim construction and summary judgment, regarding “the information the parties would need in order to vet the testing and, coincidentally, the information the court needs to resolve the dispute.” Id. The Court would then decide the dispute, with the losing party to pay the costs of the proceeding. Id.