Judge Gregory M. Sleet recently denied Merck’s motion to transfer a case to federal court in New Jersey. Bristol-Myers Squibb Co., et al. v. Merck & Co., Inc., et al., C.A. No. 14-1131-GMS (D. Del. Apr. 29, 2015). Notably, the Court rejected Merck’s argument that the convenience of witnesses favored transferring the case to New Jersey, explaining that Merck’s “laundry list of its own employees . . . ‘are not considered by a court conducting venue transfer analysis because the parties are obligated to procure the presence of their own employees at trial.'” Id. at 2 n.1 (quoting Nilssen v. Everbrite, Inc., 2001 WL 34368396, at *2 (D. Del. Feb. 16, 2001)). The Court discounted the value of time-to-trial statistics on the basis that they are “somewhat speculative due to the inherent unpredictability in patent litigation,” but found that statistics showing that the time to trial in New Jersey would be longer than in Delaware weight slightly against transfer.
In Triplay, Inc., et al. v. Whatsapp Inc., C.A. No. 13-1703-LPS (D. Del. Apr. 28, 2015), Magistrate Judge Christopher J. Burke considered recommended that Defendant’s motion to dismiss due to lack of patentable subject matter be granted as to one claim of the patent-in-suit, and denied without prejudice as to the remaining claims. The patent-in-suit is U.S. Patent No. 8,332,475 and entitled “Messaging System and Method,” and is directed to “a field of electronic messaging and, in particular, to cross-platform messaging.” Id. at 2.
As a threshold issue, while Defendant sought to invalidate all claims of the patent-in-suit, the Court declined to address claims that had not been the focus of argument and that had not been “clearly asserted” against Defendant. Id. at 12. The Court rejected Defendant’s position that it need not separately evaluate the invalidity of every claim “as long as the Court analyzes one claim that is ‘sufficiently similar’ to others,” observing that Defendant had not shown the key claims (namely, claims 1 and 12) to be “representative” and that “Defendant bears the burden to demonstrate that its asserted Section 101 defense is well taken as to each claim.” Id. at 13.
The Court concluded that claims 1 and 12 were directed to an abstract idea. Similar to the claims in Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed Cir. 2014), “the majority of the limitations of the claims at issue . . . describe only an abstract idea . . . lacking any concrete or tangible application, and their articulation accounts for much of the claim’s language and limitations overall.” Id. at 20 (internal quotation marks omitted). The Court found the case distinguishable from DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), explaining that “the clear majority of the claim language that is at issue here is not ‘necessarily rooted in computer technology[,]’ nor in the technology of electronic communications devices. Instead, the majority of that claim language speaks to an abstract idea (converting and forwarding messages, so that the messages are sent in a format and layout in which they can be received by a recipient) that has long been used to resolve problems in the area of communications (electronic and otherwise), and that can potentially be applied in just about any communications context, depending on the means of communication.” Id. at 25.
As to the method claim (12), the Court then concluded that this claim was invalid as lacking an inventive concept. See id. at 28-36. However, the Court found that the system claim (1), although it “largely mirrors the structure of claim 12,” required claim construction on its additional “access block” and “media block” elements, which the Court determined could add significant limitations to render the claims patent eligible, before determining patent eligibility under Section 101. See id. at 38-40.
Accordingly, the Court recommended that the motion be granted as to claim 12 and denied without prejudice as to the remaining claims of the patent-in-suit.
Update: On August 10, 2015, Chief Judge Leonard P. Stark adopted Magistrate Judge Burke’s Report and Recommendation over the parties’ objections, with the exception of the recommendation to deny the Motion to Dismiss without prejudice to renew as to all claims other than claim 12. The Court granted the motion as to claim 12, and the motion “remain[ed] pending” as to all remaining claims. Memorandum Order at 2. Defendant had objected to Judge Burke’s findings that claim 1 had to be construed before determining patent ineligibility and that “the other claims of the ‘475 patent could not be assessed given the parties’ lack of attention to them.” Memorandum Order at 1. To that end, the Court overruled these objections, and further instructed the parties to submit letter briefs to address any claim construction issues to address before Defendant renewed its motion as to claim 1, and also requested letter briefing on “whether any of the dependent claims of the ‘475 patent include limitations that would make it inappropriate to analyze claims 1 and 12 as representative claims for purposes of deciding Defendant’s Motion to Dismiss.” Id. A copy of Chief Judge Stark’s Order is below.
Judge Robinson recently denied a motion to dismiss filed by a declaratory judgment defendant and patent owner. The plaintiff, Corning Inc., filed a declaratory judgment suit in Delaware seeking judgment that it does not infringe the defendant’s, DSM, patents and that those patents are invalid. DSM responded with a motion to dismiss, arguing that Corning’s claims arise from the parties’ supply agreement, which contained an Illinois forum selection clause. Corning responded to the motion by arguing that its patent claims do not relate to the supply agreement and are therefore not governed by that clause. DMS then filed a suit asserting both breach of contract and patent infringement claims in the Northern District of Illinois. Corning Inc. v. DSM Desotech, Inc., et al., C.A. No. 14-1081-SLR, Memo. Or. at 1-2 (D. Del. Apr. 16, 2015).
Judge Robinson denied the motion to dismiss, finding “no dispute that the breach of contract claims belong in Illinois . . . [or] that Corning filed its declaratory judgment action in Delaware first and that, as such, DSM’s patent infringement claims are compulsory counterclaims in the Delaware case.” Id. at 2. Thus, there were “no overlapping substantive issues between the breach of contract claim and the patent infringement and invalidity claims . . . [and the] mere possibility of . . . a factual overlap . . . supports neither a motion to dismiss nor a motion to transfer.” Id. at 3.
In Fairchild Semiconductor Corporation, et al. v. Power Integrations, Inc., C.A. No. 12-540-LPS (D. Del. Apr. 23, 2015), Chief Judge Leonard P. Stark concluded that Defendant could not relitigate the validity and direct infringement of one of the patents asserted against it by Plaintiffs, due to prior proceedings in this Court between these parties, where a jury found infringement and no invalidity against Defendant (Fairchild II, C.A. No. 08-309-LPS).
Having concluded in a prior opinion that the accused products at issueas well as the scope of the asserted claims were essentially the same in the two actions, the Court now concluded that issue preclusion existed here. As to infringement, Plaintiffs argued Defendant was precluded from re-litigating whether a certain product infringed “when used in power supplies with transformers.” Id. at 2. This “identical issue” had come before the jury in Fairchild II and the Court had upheld the verdict post-trial. Id. at 2-3. Defendant argued that Plaintiffs made “different and contradictory arguments . . . which purportedly raise new factual questions, but [the Court observed that] the scope of claims 6 and 18 as consistently construed by this Court have not changed . . . and the Court perceives no reason . . . why a new argument in this context should prevent application of issue preclusion.” Id. at 4.
As to validity, “[t]he only dispute appear[ed] to be whether the identical issue of validity was adjudicated, given the ‘minor’ change in the Court’s claim construction.” Id. at 5 (emphasis in original). But the Court concluded that [i]n the present case, the issue of validity is necessarily identical to that in Fairchild II because [Defendant] has actually brought the same validity challenges, with the exception of an additional obviousness challenge (which cannot succeed as the claim scope has narrowed). Thus…[Plaintiffs have] met [their] burden to show that the identical issue of validity was previously adjudicated.” Id. Defendant countered that it was “was unfairly prejudiced by [Plaintiffs’] concealment of its presently asserted position [in Fairchild II based on its expert’s testimony] that the ‘972 invention does not, in fact, provide substantially constant current control.” Id. at 5. Defendant “support[ed] this argument by pointing out that the asserted claims have been finally rejected by the Examiner, and that in rejecting the asserted claims, the Examiner stated, ‘[a]ll we are doing is preventing the patent owner from making one argument to the court and making a different argument to the Office.’ . . . However . . . [Defendant] had every opportunity to try (and did try) to dissuade the jury in [Fairchild II] from relying on evidence [Defendant] contends has always been unreliable.” Id. at 5-6 (citations omitted). Therefore, the Court disagreed that “preclusion is inappropriate here because otherwise [Defendant] will have been deprived of a full and fair opportunity to litigate.” Id. at 5.
Having made the above conclusions, the Court did not reach whether claim preclusion existed, id. at 2, and itgranted Plaintiffs’ motion for judgment on the pleadings to the extent it sought to apply collateral estoppel to preclude Defendant from relitigating the above issues.
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.
UPDATE: On August 10, 2015, Chief Judge Stark overruled objections and adopted Judge Burke’s Report and Recommendation.
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.
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.
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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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.