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In a recent Order, Judge Richard G. Andrews denied defendants’ motions to dismiss in three related actions. Blackbird Tech LLC v. LEDWholesalers.com Inc. et al., C.A. Nos. 15-60, 15-61, 15-63-RGA (D. Del. Dec. 3, 2015). As Judge Andrews explained, “[t]he main thrust of the motions is to assert that the complaints do not plausibly assert infringement, because they attach a copy of the patent and web shots of the accused products (which appear to be T8 LED tube lights), and it is clear that the pictured products cannot infringe any claim of the asserted patent.” Id. at 1-2. The parties disputed the meaning of certain claim terms, but Judge Andrews found that the “the terminology of the patent claim (while perhaps clear to a POSITA) is not presently clear to me,” and observed this action “seems like a poor candidate for resolution on a motion to dismiss.” Judge Andrew thus denied the motions to dismiss. Id. at 2.

However, Judge Andrews explained that “I am nevertheless concerned about whether I am allowing what might be frivolous litigation to go forward.” Id. at 2. Judge Andrews therefore directed plaintiff “to provide detailed claim charts to each of the three Defendants charting its infringement theories for all asserted claims against at least one of each Defendant’s accused T8 LED tube lights.” Id. at 3. Judge Andrews further directed “[t]he parties . . . to meet-and-confer after the claim charts are filed,” explaining that the parties should discuss, among other things, “whether they can jointly agree upon a way to present the case to me for early resolution.” Id. Judge Andrews ordered the parties to submit a joint status report three business days before the Rule 16 scheduling conference “regarding any agreements or proposals for a means for early resolution of these cases.” Id.

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Chief Judge Stark recently denied a motion to stay patent litigation while the defendant pursues an appeal of the PTAB’s decision not to institute inter partes review of the sole asserted claim of the patent-in-suit. Of the factors typically considered in the stay analysis, Judge Stark found that each weighed against a stay. Greatbatch Ltd. v. AVX Corp., et al., C.A. No. 13-723-LPS, Memo. Or. at 1 (D. Del. Dec. 10, 2015).

First, “the Court note[d] that Defendants filed their petition for IPR on the last day permitted by statute. Moreover, Defendants delayed moving for a stay until after completion of discovery, after completion of the parties’ briefing for summary judgment and Daubert motions, almost a year after the PT AB instituted IPR, and less than two months before the pre-trial conference. While delay, by itself, is insufficient to find undue prejudice, here Defendants’ delay in combination with the parties’ status as competitors (or potential competitors) persuade that Court that this first factor weighs against a stay.” Id. at 2.

Second, “the IPR was not instituted as to claim 12, and the PTAB’s final written decision did not directly address claim 12. Any appeal from the PTAB’s decision will also not directly address claim 12. . . . Because the Court already has the benefit of the PT AB’ s final written decision, and because any forthcoming insight regarding the validity of claim 12 from the Federal Circuit or reissue proceedings is wholly speculative at this point, the Court determines that this factor weighs against a stay.” Id. at 3.

Finally, “the Court notes that discovery is complete, the Court has construed the disputed claim terms and ruled on the parties’ multitude of motions, the pretrial conference is less than two weeks away, and a jury trial (which has been on the schedule since April 2014) begins in a month (January 11, 2016).” Id. Moreover, “[t]he discovery process involved at least five discovery teleconferences, an indication of the vast amount of party and judicial resources that have been expended on this litigation, factors that in the overall balancing here – favor staying on course and proceeding to trial on all of the remaining patents-in-suit.” Id. at 3 n.3.

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Magistrate Judge Christopher J. Burke recently denied without prejudice a motion to stay pending the PTAB’s resolution of petitions for inter partes review in Toshiba Samsung Storage Technology Korea Corp. v. LG Electronics, Inc., et al., C.A. No. 15-691-LPS-CJB (D. Del. Dec. 3, 2015).  The Court explained that the PTAB decision is expected to issue in early February, and (as of the date of this decision) a scheduling order in the case had not been entered.  As a result, Judge Burke found that the amount of initial discovery disclosures and other case activity likely to occur before the PTAB’s decision was not significant enough to unduly prejudice the defendants.  Judge Burke also found that allowing the case to proceed would allow for a more fully developed record for the Court’s consideration of a motion to stay in the event that the PTAB granted the IPR petitions.  The plaintiff had also “repeatedly stated that it anticipates asserting [in this case] claims of [its] Patents-in-Suit that are not covered by LG’s IPR petitions,” and Judge Burke explained that these claims not potentially subject to IPR “could have an impact on the ‘simplification’ analysis.”  Finally, Judge Burke’s decision took into account Chief Judge Stark’s Revised Procedures for Managing Patent Cases, as well as a recent decision by the Chief Judge, which explained that “[g]enerally, the ‘simplification’ issues does not cut in favor of granting a stay prior to the time the PTAB decides whether to grant the petition for inter partes review.”

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Chief Judge Leonard P. Stark recently issued a Memorandum Opinion adopting the Magistrate Judge’s Report and Recommendation on claim construction and denying defendants’ requests for summary judgment on indefiniteness post-Nautilus.  Masimo Corporation v. Philips Electronics North America Corporation, et al., C.A. No. 09-80-LPS (D. Del. Dec. 1, 2015).  First, defendants argued that the term “said scan” was indefinite because, due to a drafting error, the claim contained no antecedent basis for “said scan.”  Id. at 9.   Masimo argued that “the error [could] be corrected and that, even absent correction, a person having ordinary skill in the art would understand ‘said scan’ to refer to the result of the analysis module.”  Id.  The Court agreed with defendants that the Court cannot fix the drafting error.  But, the Court also found that the error does not render the term indefinite:

The prosecution history makes clear that Plaintiffs amendment did not seek to substantially change the scope of the claim. Indeed, the ‘”scan module” in the original claim has the same functionality as the “analysis module” in the amended claim. Given the identical claim structure and the context of the amendment, the Court concludes that a person having ordinary skill in the art would understand that “said scan” means “the analysis to qualify the plurality of indication values to be considered as possible resulting indications for the physiological parameter. “

Id. at 11.

Defendants also argued that the term “determine a resulting indication that likely most closely correlates to the physiological parameter” was indefinite.  Id. at 12.  The Court disagreed:

The specification explains how to calculate two estimates of the physiological parameter (saturation values) and teaches how the invention uses the two estimates to arrive at a resulting indication. Plaintiff has also submitted an expert declaration, which further supports its position, and which (at minimum) shows a genuine dispute of material fact preventing the Court from granting summary judgment of invalidity due to indefiniteness.

Id.

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Chief Magistrate Judge Thynge recently issued a report and recommendation in which she recommended denial of plaintiffs Astellas Pharma and Celgene Corp.’s motions to dismiss and motions to strike counterclaims, each of which she found to have been adequately plead. The challenged counterclaims and defenses were directed to (1) an improper continuation application under § 102(b) without which, the defendant alleged, the patents-in-suit would not have issued, (2) an improper priority date under § 120 due to failure to name the “true inventors” in the earlier application and an effort to amend inventorship that would result in no common inventors, and (3) improper inventorship under § 256 because the original patent was disclaimed under § 253 before any effort to correct inventorship, which Judge Thynge found to involve “sufficient facts to support improper inventorship, which warrants discovery on this issue.” Celgene Corp., et al. v. Fresenius Kabi USA, LLC, C.A. No. 14-571-RGA, Report and Recommendation at 6-8 (D. Del. Dec. 7, 2015).

Judge Thynge also rejected challenges to the defendant’s corresponding affirmative defenses, which were “neither improperly plead nor redundant. Affirmative defenses differ from counterclaims and are governed by Fed. R. Civ. P. 8, rather than Rule 13. Generally affirmative defenses must be initially pled or be subject to waiver of the defense. A counterclaim is governed by Rule 13. The party raising either an affirmative defense or a counterclaim bears the burden of proof. Counterclaims and affirmative defenses that raise the similar contentions are not improper.” Id. at 8. Additionally, because “[m]otions to strike under Rule 12(f) require a showing of prejudice” and the plaintiffs had not “alleged nor demonstrated any prejudice due to the analogous nature between defendants’ counterclaims and affirmative defenses,” Rule 12 provided no basis to strike the affirmative defenses. Id.

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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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