In Pragmatus Telecom, LLC v. AT&T, Inc., et al., C.A. No. 12-1533-RGA (D. Del. July 7, 2014), Judge Andrews recently ordered each defendant to reduce the number of prior art references it was asserting to 5 per patent. The plaintiff was also ordered to reduce the number of claims it was asserting to 8. In a handwritten footnote, Judge Andrews explained that “upon a showing of diligence, and with due consideration for prejudice, a party may seek to modify this order for good cause shown. A failure to seek such modification will constitute acquiescence to the limits contained in this Order.”
Judge Sue L. Robinson recently considered plaintiff Antares Pharma, Inc.’s amended motion for preliminary injunction filed the same day it amended its complaint for infringement of the three patents-in-suit. Antares Pharma, Inc. v. Medac Pharma, Inc., et al., C.A. No. 14-270-SLR (D. Del. July 10, 2014). Judge Robinson denied the motion on the basis that Antares did not meet its burden of showing likelihood of success on the merits. Id. at 3-15. Prior to reaching this decision, Judge Robinson found that the patents-in-suit claim a jet injector, as opposed to “an autoinjector or hand-powered syringe.” Id. at 3. Judge Robinson construed a “jet-injector” as “a powered injector used to achieve the delivery of medicaments in a high speed stream, that is, at a pressure, force, and speed sufficiently high so that the medicament exits the needle tip as a fluid jet and not as a bolus. The critical difference between a jet injector and autoinjectors or hand-powered syringes is how the medicament is delivered – dispersed remotely from the needle-tip Uet) rather than deposited in a locus near the needle tip (bolus).” Id. at 4. While Antares presented expert testimony that defendant’s accused device is a jet injection device, Judge Robinson concluded that likelihood of success on the merits was not established on the record before the Court. Notably missing was any “comparison of Antares’ jet injector with either a hand syringe or [defendant’s] autoinjector,” or any illustration of “the ‘rapid spray’ dispersion of a jet injector.” Id. at 4-5.
Judge Robinson did find that Antares met its burden of establishing irreparable harm because it “has the only available subcutaneous injector for methotrexate on the market, with [defendant] set to launch its competing produce as early as July 10, 2014.” Id. at 15. Judge Robinson found the balance of harms neutral, however, because delaying defendant’s launch would cause monetary damages to defendant. Id.
In a recent oral order, Chief Judge Leonard P. Stark granted defendants’ request for an extension of time to comply with the Court’s Order granting a permanent injunction, entered June 30, 2014. Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., et al., C.A. No. 08-309-LPS, D.I. 798 (D. Del. July 3, 2014) (permanent injunction discussed previously here). In a letter to the Court, defendants asserted that they “simply cannot implement this type of system level change immediately as required by the Court Order, and would prefer to comply rather than to risk immediately violating the Order.” (D.I. 795 at 1.) Judge Stark permitted defendants until July 31, 2014 to fully comply with the permanent injunction. (D.I. 798.)
Further, Paragraph 8 of the permanent injunction order required defendants “to include a copy of this Order Granting Permanent Injunction with any product that [defendants] deliver outside the United States” in addition to a notice provision specified by the Court. (D.I. 794.) Judge Stark found that defendants “may comply with Paragraph 8 of the injunction order by clearly printing the Court’s notice on the cover of every box of infringing products so long as the notice includes a URL to the Court’s order and all customers are provided with a copy of the Court’s injunction order prior to their purchasing any of the enjoined products outside of the U.S.” (D.I. 798.) Judge Stark reasoned that “[a]lthough the Court is troubled that [defendants] did not raise this notice issue prior to the Court’s granting the injunction, and the Court today provides [defendant] [their] belatedly requested relief reluctantly, the Court is persuaded that the purpose of the notice provision in Paragraph 8 will be satisfied so long as [defendants] compl[y] with the foregoing obligations.” Id.
Magistrate Judge Christopher J. Burke recently issued a report and recommendation construing several claim terms in U.S. Patent No. 6,500,829, entitled “Substantially Pure Diastereoisomers of Tetrahydrofolate Derivatives”. Spectrum Pharmaceuticals, Inc., et al. v. Innopharma, Inc., et al., C.A. No. 12-260-RGA-CJB (D. Del. July 3, 2014).
The parties agreed on the proper construction of the following claim terms:
• “the balance of said compound consisting of the (6R) diastereoisomer”
• “the balance of said composition consisting of the (6R) diastereoisomer”
• “A pharmaceutical composition for therapeutic use”
• “A pharmaceutical composition for therapeutic use for the treatment of human beings”
• “for therapeutic use for the treatment of human beings”
• “a pharmaceutically acceptable compound”
• “a pharmaceutically acceptable composition”
• “a polar solvent”
• “said mixture of (6S) and (6R) diastereoisomers is present in said composition in an amount of at least about 10 grams”
Magistrate Judge Burke then construed the following disputed claim terms:
• “said composition being of a quantity at least sufficient to provide multiple doses of said mixture of (6S) and (6R) diastereoisomers in an amount of 2000 mg per dose”
In a recent memorandum order, Judge Leonard P. Stark granted a plaintiff’s motion for a permanent injunction. Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., et al., C.A. No. 08-309-LPS (D. Del. June 30, 2014). The Court found that the plaintiff demonstrated irreparable harm in the form of lost sales and price erosion resulting from the defendants’ (the plaintiff’s biggest competitor) infringement, and that the damage to the plaintiff’s “reputation as an innovator” as well as the “incumbency effects of” the defendants’ taking sales from the plaintiff through its infringement could not adequately be remedied by money damages. The infringing sales also accounted for only a fraction of the defendants’ annual revenue, whereas the plaintiff’s revenue was based largely on its patented products, such that the balance of hardships weighed in favor of an injunction. Finally, the Court found that an injunction would serve the public interests of encouraging innovation and protecting property rights. The Court therefore enjoined the defendants from selling the products found to infringe at trial, as well as “those products ‘not colorably different’ from them.”
Chief Judge Stark recently denied cross-motions for reargument or reconsideration of the Court’s order finding certain claims of the patents-in-suit infringed and certain claims not infringed. Judge Stark denied the Defendants’ motion because “the Court did not misunderstand [Defendant’s] argument, but instead rejected it” and denied Plaintiff’s motion because the clarification Plaintiff had requested was unnecessary. Thus, neither of the parties had met the “heavy burden” of showing that “the Court has patently misunderstood a party, made a decision outside the adversarial issues presented by the parties, or made an error not of reasoning but of apprehension.” Masimo Corp. v. Philips Elec. N. Am. Corp., C.A. No. 09-80-LPS-MPT, Memo. Order at 2-3 (D. Del. July 2, 2014).
In HBAC Matchmaker Media, Inc. v. CBS Interactive Inc., C.A. No. 13-428-SLR, et al. (D. Del. June 30, 2014) Judge Sue L. Robinson addressed plaintiff’s motion for clarification/reargument regarding the Court’s June 3, 2014 claim construction order (discussed previously here). Judge Robinson denied plaintiff’s motion for reargument, finding that plaintiff failed to demonstrate any of the grounds that would justify reargument. Id. at 2. Judge Robinson did, however, clarify the Court’s construction of “head end system,” construing that term as follows: “[T]he point in a TV system at which all programming is collected and formatted for placement on the TV system. ‘TV system’ necessarily utilizes a conventional television set and/or set-top box for selecting from (and displaying) multiple channels of TV programming.” Id. Judge Robinson reasoned that “[t]his further construction clarifies that the ‘head end system’ and the invention of the ‘393 patent are directed to the specific technology platforms disclosed in the specification, i.e., conventional television systems, especially cable TV systems and other multichannel TV systems.” Id.
In Evonik Degussa GmbH v. Materia Inc., C.A. No. 09-636-NLH/JS (D. Del. June 30, 2014), Judge Noel L. Hillman, sitting by designation, considered plaintiff’s motion for partial summary judgment, arguing that defendant was precluded from raising claims or defenses in this case that had been previously litigated and decided in an interference proceeding before the USPTO. Plaintiff argued that both claim and issue preclusion applied to issues of priority and validity.
Having first concluded that the PTO’s decision in an interference proceeding can be subject to claim or issue preclusion, id. at 14, the court denied the motion in most respects, largely because the claims at issue in the litigation recited broader subject matter than those at issue in the interference proceeding. See, e.g., id. at 20-24. The Court did grant the motion in part and precluded defendant from asserting invalidity under sections 102 and 103 based on issue preclusion. Plaintiff argued the defendant was precluded from raising these arguments “because it chose not to assert such claims earlier out of self-interest.” Id. at 30. Applying case law from Delaware and other districts holding that patent validity is a single issue for purposes of issue preclusion, see id. at 31-32, the Court explained that since defendant “raised a validity challenge in the Interference, and validity is a single issue [for purposes of issue preclusion], [defendant] cannot later assert additional validity challenges under alternative theories of validity.” Id. at 33.
Chief Judge Leonard P. Stark recently made a ruling related to a protective order dispute in Andover Healthcare, Inc. v. 3M Company, C.A. No. 13-843-LPS, Oral Order (D. Del. June 29, 2014). The Court denied plaintiff’s request that it be permitted to use defendant’s highly confidential information in related German proceedings. The Court explained that both German and U.S. law “provide other, appropriate mechanisms for Plaintiff to seek the relief it is requesting. Given the sensitivity to Defendant of the information Plaintiff seeks to use in Germany, and given that Plaintiff may have opportunities to present the evidence at issue to the German proceeding even after Plaintiff files a brief in Germany due June 30, it is reasonable to require Plaintiff to pursue the other mechanisms for the relief it is seeking.”
In September 2012, plaintiff Joao Bock Transaction Systems filed suit against Jack Henry & Associates for infringement of U.S. Patent No. 7,096,003, which relates to security for financial transactions and wireless communication device authorization. Following briefing and oral argument, Judge Robinson issued her construction of several disputed claim terms:
– “At least one of . . . and”
– “Communication device”
– “Banking Transaction”
– “Central Transaction Processing Computer”
– “Electronic mail message”
– “Network computer”
– “Processing device”
– “Real time”
– “Transaction security apparatus”
– “Communication device associated with an individual account holder”
– “Containing information for authorizing or disallowing the transaction”
– “Determines whether the banking transaction is allowed or disallowed”
– “Information regarding a banking transaction”
– “Internet transaction”
– “Automated teller machine account”
– “[A] transmitter, wherein the transmitter transmits a second signal to the communication device or to a second communication device associated with the individual account holder, wherein the second signal contains information regarding the banking transaction”
– “[A] transmitter, wherein the transmitter transmits a periodic transaction record to the communication device or to a second communication device associated with the individual account holder, wherein the periodic transaction record shows a transaction or transactions on the checking account for a time period, wherein the periodic transaction record is transmitted to the communication device or to the second communication device at least one of automatically and in response to a request for the periodic transaction record”
– “[A] transmitter, wherein the transmitter transmits a second signal to the communication device or to a second communication device associated with the individual account holder, wherein the second signal contains information regarding the transaction”
Joao Bock Transaction Systems, LLC v. Jack Henry & Associates, Inc., C.A. No. 12-1138-SLR, Memo. Order at 5-20 (D. Del. June 30, 2014).
Important to her construction of these terms, Judge Robinson explained that the patentees “assert that the ‘003 patent should be recognized as having a priority date of August 8, 1996, the earliest filing date of its related patents, thus also establishing the temporal perspective for those of skill in the art. Without addressing in this order the question of whether the definitions constitute new matter and, therefore, support a later priority date, the court will address the extent to which, if at all, the court is bound by the multiple definitions the patentees choose to give certain claim language during the claim amendment process that took place in the PTO from October 2004 to September 2005. The definitions were not included in the specification, were not the subject of any commentary by the examiner, were made years after the earliest priority date, and were added for litigation purposes, that is, to differentiate the ‘003 patent from a related patent. Most significantly, the definitions added through the auspices of 37 C.F.R. 1.115 are worded in the disjunctive and, rather than narrowing the scope of the claim language or adding clarity to such, instead obscure the scope of the claims, thus confounding the public notice requirement of§ 112, ¶ 2. Given that the definitions are not ‘clearly stated,’ see Vitronics, 90 F.3d at 1582, the court rejects plaintiff’s argument that the court is obligated to embrace them for purposes of the claim construction exercise.” Id. at 4-5.
Because Judge Robinson’s constructions resulted in a narrower claim scope of the patent-in-suit than the scope of a related patent that had been the subject of a separate suit, she found that “the issue of invalidity common to each action [was not] substantially identical” and denied the defendant’s motion for summary judgment of invalidity based on collateral estoppel. Id. at 20 n.34.