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Magistrate Judge Mary Pat Thynge recently recommended a denial of a defendant’s motion to amend its answer to add a counterclaim for inequitable conduct. Pfizer Inc. v. Sandoz Inc., C.A. No. 12-654-GMS/MPT (D. Del. Nov. 4, 2013). As Judge Thynge explained, “[i]n considering whether the grant the motion under Rule 15(a), the court considers . . . undue delay by the movant, unfair prejudice to the nonmovant, improper purpose and futility. The movant, however, must also satisfy the good cause requirement of Rule 16(b) by demonstrating that the amendment could not have been reasonably sought in a timely manner despite diligence.” Id. at 7-8.

With respect to the defendant’s six month delay in filing a motion to amend, Judge Thynge found that the “timing of defendant’s motion . . . strongly suggests the delay is improper. Defendant had the requisite documents in its possession, at the latest, within a few weeks of the deadline to amend pleadings. In addition, defendant delayed four months from the final deposition to file the present motion.” Id. at 10. Accordingly, Judge Thynge found undue delay for purposes of Rule 15(a). Judge Thynge added that there was no good cause for the delay under Rule 16(b), because all that the defendant provided was the “bare assertion” that the record was “tortuous” as justification for its delay. Id. at 10-11. Further, Judge Thynge found that amendment would be futile, because the proposed amended counterclaim did not meet Rule 9(b)’s pleading requirements for inequitable conduct. Finally, addressing the prejudice an amendment would cause the plaintiff, Judge Thynge explained that the prejudice “is the significantly compressed time frame for developing a response to the [inequitable conduct] allegations prior to trial, while defendant used approximately fourteen months to develop its inequitable conduct defense.” Id. at 12.

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In a recent decision, Judge Richard G. Andrews granted a motion to dismiss on the grounds that the asserted patent claimed an abstract idea that was ineligible for patent protection under 35 U.S.C. § 101. Ubicomm, LLC v. Zappos IP, Inc., C.A. No. 13-1029-RGA (D. Del. Nov. 13, 2013). As Judge Andrews explained, “[a]t the motion to dismiss stage a patent claim can be found directed towards patent ineligible subject matter if the ‘only plausible reading of the patent must be that there is clear and convincing evidence of ineligibility.’” Id. at 3 (quoting Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335, 1339 (Fed. Cir. 2013) (emphasis in original)). Here, between the time the defendant moved to dismiss and oral argument on the motion, the plaintiff submitted its proposed claim constructions at the Court’s request. Id. at 13 n.6. Based on the plaintiff’s own construction of the only independent claim at issue, the Court found that “the abstract idea at the heart of the claim is the very concept of a conditional action.” Id. at 6.

The Court explained that “[t]he fundamental role that the concept of conditional actions play in numerous disciplines is sufficient to warrant it protection as an abstract idea, because its patenting would impede innovation[,] more than it would tend to promote it.” Id. (internal quotation marks omitted). To support its decision, the Court added that the Supreme Court and Federal Circuit both have found ideas less abstract than a conditional action to be ineligible for patent protection. Id. at 7 (referring to hedging in Bilski v. Kappos, 130 S. Ct. 3218 (2010) and processing information through a clearinghouse in Dealertrack, Inc. v. Huber, 674 F.3d 1315 (Fed. Cir. 2012)). The Court then considered whether the rest of the claim included limitations that narrow it so as to avoid covering the full abstract idea, but found no such sufficient limitations. Id. at 7-8. The Court found instead that the limitations “are not more than the incorporation of a generic computer into the claim, which is not sufficient to make an abstract idea patentable.” Id. at 9.

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Judge Leonard Stark recently issued an interesting memorandum order on assertions of attorney-client privilege with respect to documents that evidence a possible breach of a confidentiality agreement. Plaintiffs Galderma Labs and Supernus Pharmaceuticals withheld certain documents from production and listed them on a privilege log. Defendants Amneal Pharmaceuticals sought to have Judge Stark compel the production of the documents in question. Judge Stark reviewed the documents in question in camera and granted the request to compel with respect to some documents, but denied it with respect to others. Galderma Labs. Inc., et al. v. Amneal Pharmas., LLC, et al., C.A. No. 11-1106-LPS, Memo. Order at 1 (D. Del. Nov. 8, 2013).

Judge Stark ordered the production of documents related to Defendants’ unclean hands and breach of contract claims. Each of these documents included one or more of the following items: (1) “litigation counsel communicating with prosecution counsel about prosecution activity” despite the fact that litigation counsel was prohibits from doing so by a defendants’ offer of confidential access and the Court’s protective order, (2) references to “prior communications between litigation counsel and prosecution counsel,” and (3) “litigation counsel being copied on communications among prosecution counsel and the client.” These items in the documents at issue made the documents relevant to Defendants’ determination of whether the offer of confidential information or the protective order was breached. Therefore, Judge Stark found that litigation counsel’s declaration denying any use of Defendants’ confidential information in patent prosecution was sufficient to waive the attorney-client privilege. Id. at 1-3.

Judge Stark, however, did not order production of documents withheld by Plaintiffs that related to Defendants’ inequitable conduct claim. After in camera review, Judge Stark explained that Defendants had not “made a prima facie showing of the applicability of the crime-fraud exception . . . [nor did] the Court find that the testimony of prosecution counsel constitutes a waiver of privilege.” Id. at 3-4.

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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.

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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.

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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.

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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.

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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”
– “adapter”
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).

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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.

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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.

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