Judge Mitchell S. Goldberg, sitting by designation from the Eastern District of Pennsylvania, recently denied plaintiff Transcend Medical, Inc.’s request to modify the stipulated Protective Order governing the exchange of confidential information in this case “to allow one attorney and one expert from each side to participate in certain Patent and Trademark Office (‘PTO’) proceedings or similar proceedings in other countries[.]” Transcend Medical, Inc. v. Glaukos Corp., C.A. No. 13-830-MSG (D. Del. Aug. 12, 2014). Transcend argued that its counsel had “gained extensive knowledge” over the course of representing Transcend and that counsel would not draft claims or use confidential information. Id. at 2. Further, the significant prejudice to Transcend would outweigh any risk of inadvertent disclosure of confidential information. Id. at 2-3. Glaukos objected noting that both parties knew of the potential of PTO proceedings at the time they agreed to the prosecution bar and that it would be “impossible to meaningfully participate in the [PTO] proceedings without advising or opining on the scope of patents, or without inadvertently using confidential materials.” Id. at 3. Judge Goldberg agreed, noting that the parties acknowledged the risks associated with allowing those with access to confidential information to participate in PTO proceedings when they agreed to the prosecution bar less than six months before Transcend requested the modification. Id. at 3-4.
In W.L. Gore & Associates, Inc. v. C.R. Bard, Inc. and Bard Peripheral Vascular, Inc., C.A. No. 11-515-LPS-CJB (D. Del. Aug. 8, 2014), Magistrate Judge Christopher J. Burke recently issued a Report and Recommendation construing six disputed terms of U.S. Patent Nos. 5,700,285 and 5,735,892, both entitled “Intraluminal Stent Graft.”
The Court construed the following terms:
“tubular, diametrically adjustable stent”/”diametrically adjustable stent”
“multiplicity of openings”
“affixed”/”affixing” and “the first tubular covering of porous expanded polytetrafluoroethylene is affixed to the second tubular covering of porous expanded polytetrafluoroethylene film through openings through the wall of the stent”
“collapsed diameter”/”enlarged diameter”
UPDATE: On September 28, 2015, Chief Judge Stark issued a Memorandum Order adopting Judge Burke’s Report and Recommendation on claim construction and on various summary judgment and Daubert motions, rejecting only one of Judge Burke’s various conclusions. See W.L. Gore & Associates, Inc. v. C.R. Bard, Inc., et al., C.A. No. 11-515-LPS (D. Del. Sept. 28, 2015).
Judge Robinson recently considered motions arising from Mylan’s at risk launch of a generic version of Anesta’s Amrix product. In 2011, Judge Robinson held a bench trial and determined that although the generic products infringed the patents-in-suit, certain asserted claims were obvious. Mylan launched its generic product the next day. A week later, Judge Robinson granted Anesta’s motion for a temporary restraining order and later issued a preliminary injunction pending appeal to the Federal Circuit. A few days later, Mylan filed an emergency motion with the Federal Circuit, seeking to stay the injunction pending briefing. The Federal Circuit granted the motion and Mylan began selling its generic product again. When it reached the merits of the motion shortly over a month later in July 2011, the Federal Circuit denied the motion in part, prohibition sale of Mylan’s product during the appeal, and granted it in part, staying a portion of Judge Robinson’s preliminary injunction that required Mylan to “take all reasonable steps to recall” its product. In April 2012, the Federal Circuit reversed the finding of invalidity and dismissed the appeal of the preliminary injunction. In April 2012, Judge Robinson entered a final judgment and permanent injunction. Against this background, Judge Robinson recently reviewed motions by Mylan for summary judgment of no lost profits and partial summary judgment of no willfulness. Anesta AG, et al. v. Mylan Pharms., Inc., et al., C.A. No. 08-889-SLR, Memo. Or. at 1-2 (D. Del. Aug. 14, 2014).
Her Honor denied the motion as to plaintiff’s claim for lost profits. Mylan’s argument was “that plaintiffs should be precluded from claiming lost profits because their expert . . . failed to consider price elasticity in his lost profits analysis. When asked at his deposition about price elasticity, [plaintiffs’ expert] explained that price elasticity under the circumstances at bar was ‘relatively modest’ and ‘offset’ by other factors.” Id. at 4. Judge Robinson explained that the Federal Circuit’s “demand for a ‘credible economic analysis’ can be met by a variety of evidence – both fact and expert – depending on the facts of the case and the nature of the markets at issue . . . [and] plaintiffs have presented plausible evidence that the case at bar presents an unusually complex set of facts vis a vis calculating lost profits, due in part to the unique nature of the relevant market and due in part to the brevity of the damages period. Having rejected defendants’ proposition that there are rigid standards applicable to every case, I decline to take the issue of lost profits damages away from the jury.” Id. at 6.
Judge Robinson granted Mylan’s motion for summary judgment of no willful infringement, however, stating “I agree with defendants that, although their launch was at risk, it was not illegal when it took place and, absent a directive from the Federal Circuit to recall their generic products, defendants had no legal obligation to do so. Having committed no illegalities vis a vis the launch, and willfulness generally being irrelevant in the context of ANDA cases, I grant defendants’ motion for partial summary judgment” of no willfulness. Id. at 4.
Finally, Judge Robinson denied Mylan’s motion to exclude a Dr. Steiner. Dr. Steiner had been allowed to testify during the liability phase of the bifurcated trial because it was recognized that he possessed clinical expertise regarding the products at issue. Accordingly, this expertise was relevant and admissible in the damages phase of the trial as well. Id. at 7.
Judge Richard G. Andrews recently considered the parties’ dispute over the terms of a Protective Order regarding source code print-outs. Infinite Data LLC v. Intel Corp, et al., C.A. No. 14-391-RGA (D. Del. Aug. 8, 2014). Defendants proposed that source code would be made available on a standalone computer at any of the offices of Defendants’ outside counsel, but that any print-outs be kept only at the office of Plaintiff’s counsel. Id. Alternatively, Defendants proposed that Plaintiff could choose to use an escrow agent, as set forth in the D. Del. Default Standard for Access to Source Code. Plaintiff objected arguing that it would be unfairly burdensome to require its experts to travel to review source code at another location and then travel again to review print-outs. Judge Andrews disagreed finding that Defendants’ proposals would protect confidentiality without “unfairly burdening” Plaintiff. Id. Judge Andrews further held that if Plaintiff chose to use an escrow agent, any associated expenses would be shared by the parties. Id.
In a recent memorandum order, Judge Sue L. Robinson denied a defendant’s motion for reconsideration of an earlier denial of a motion for judgment on the pleadings. Poly-America, L.P. v. API Indus., Inc., Civ. No. 134-693-SLR (D. Del. Aug. 6, 2014). In its earlier motion for judgment on the pleadings, the defendant argued that its household product design was “plainly dissimilar” to the plaintiff’s design such that it could not, as a matter of law, infringe the plaintiff’s design patent. The Court disagreed in a decision discussed here. In its motion for reconsideration, the defendant argued that the “ordinary observer” to whom an accused design may appear “substantially the same” is not an observer of the finished product sold in a store, as the Court believed, but instead is “the industrial purchaser that uses that packaging component to assemble a finished retail product with content.”
The Court disagreed, relying on Supreme Court precedent from 1871 explaining that “ordinary observers of a patented design [are] ‘the principle purchasers of the articles to which designs have given novel appearances,’ i.e., ‘those who buy and use’ the article bearing the design in question.” Id. at 2 (quoting Gorham Mfg. Co. v. White, 81 U.S. 511 (1871)). The Court acknowledged that later cases in the Federal Circuit had not specifically addressed the factual scenario at issue here (where the design patent covers a box containing product that the consumer purchases based at least in part on the design of the retail presentation), but disagreed with the defendant that the previous ruling was erroneous as a matter of law. Id. at 5.
In Immersion Corporation v. HTC Corporation, C.A. No. 12-259-RGA (D. Del. Aug. 7, 2014), Judge Richard G. Andrews granted defendants’ motion to compel in part. Judge Andrews had ordered that Immersion Corporation (“Immersion”) provide a “supplemental privilege log regarding all documents in its control relating to” Stout Risius Ross, Inc. (“SRR”), the “financial consulting firm hired by Immersion’s counsel to conduct royalty and licensing analysis.” Id. at 1 & n.1. Considering whether the documents in question were protected by the attorney-client privilege or work product immunity, Judge Andrews noted that Immersion’s business “is the licensing of patents” and that “[a]ll of the requested documents were created by a financial consultant in aid of Immersion’s licensing program.” Id. at 4.
Judge Andrews concluded that several e-mails from an RSS advisor to Immersion’s counsel that included draft slides from SRR were not protected by the attorney-client privilege given that the documents were “primarily for business purposes as [they] provide factual information about licensing/royalty rates, the primary purpose of the Plaintiff’s business.” Id. at 4-5. Judge Andrews also concluded that other documents that included draft slides that were incorporated in the slides in the advisor’s e-mails were not protected by work product immunity given that the documents were “created for business purposes (licensing).” Id. at 5-6. Judge Andrews ordered that the foregoing documents be produced. Id. at 6.
Regarding a document that provided a summary of Immersion’s mobile licensing agreements, Judge Andrews noted that “the Court is not convinced that there is an evidentiary basis to conclude it is protected by work product.” Id. at 5. Judge Andrews concluded, however, that there was no need to produce this document, as “it merely factually summarizes license agreements that have already been produced.” Id.
Chief Judge Stark, considering a defendant’s motion to transfer a patent infringement case to the Southern District of Ohio, recently issued a memorandum order granting the motion because all but one factor of the transfer analysis were either neutral or weighed in favor of transfer. Nalco Co. v. AP Tech Group Inc., C.A. No. 13-1063-LPS, Memo. Or. at 1 (D. Del. Aug. 8, 2014). Judge Stark explained that only the choice of forum of the plaintiff disfavored transfer and the “amount of deference to be given to [the plaintiff’s] choice of forum is somewhat reduced given that Delaware is not [the plaintiff’s] ‘home turf.’” Id. at 1-2 (citing In re Link_A_Media Devices Corp., 662 F.3d 1221, 1223 (Fed. Cir. 2011)). By contrast, the defendant’s choice of forum, relative convenience of the parties, location in which the claims arose, and location of books and records all weighed in favor of transfer. Id. at 2-3. Accordingly, Judge Stark found that the defendant had “met its heavy burden of demonstrating that this case should be transferred to the Southern District.” Id. at 3.
Judge Richard G. Andrews recently issued a second supplemental claim construction order construing one disputed claim term. Interdigital Commc’ns, Inc., et al., v. ZTE Corp., et al., C.A. No. 13-00009-RGA (D. Del. Aug. 8, 2014). The Court previously issued a claim construction order that reserved judgment on the term “[re-]synchroniz[ed/ing] to the/a pilot signal” (discussed here, and original claim construction order discussed here). In this second supplemental order, Judge Andrews construed the term to mean “establish a timing reference with a pilot signal.”
Judge Richard Andrews recently issued his construction of several disputed claim terms of patents related to capturing images on mobile devices for document management, particularly processing checks. Mitek Sys., Inc. v. TIS America Inc., et al., C.A. No. 12-1208-RGS, Memo. Op. at 1 (D. Del. Aug. 6, 2014). Judge Andrews construed the following disputed terms:
– “smaller color image”
– “adapted to be recognized by at least one financial processing system”
– “entering the extracted financial content from identified the at least one field into a new financial document with at least one corresponding field”
Interestingly, with respect to the last term, which defendants asserted was insolubly ambiguous, Judge Andrews explained that “[t]he dispute here is that the term recites ‘from identified the,’ rather than ‘from the identified.’ Claim 9, on which claim 10 depends recites ‘from the identified.’ Clearly this term is a typo. It is within my power to correct it, and I therefore do so.” Id. at 4 (citing Novo Industries, L.P. v. Micro Molds Corp., 350 F.3d 1348 (Fed. Cir. 2003)).
In Vehicle Interface Technologies, LLC v. Jaguar Land Rover North America, LLC, C. A. No. 14-339-RGA (D. Del. Aug. 6, 2014), Judge Richard G. Andrews recently denied defendant’s motion to dismiss plaintiff’s complaint. In a prior action between the parties, plaintiff had named additional accused products toward the close of fact discovery; this Court had granted defendant’s request to preclude these additional products from the suit, and on the same day plaintiff filed a new lawsuit including these additional accused products. Id. at 1. Defendant now moved to dismiss this second lawsuit, arguing plaintiff was barred by the doctrine of claim splitting and because the suit was a collateral attack on the Court’s previous order. Id.
In denying the motion as to claim splitting, the Court pointed out that, in the prior suit, defendant “previously relied on the differences between the accused products” to argue plaintiff could not add them, whereas now it pointed out the “similarities between the Plaintiff’s description of the products in the initial and present suit.” Id. at 2 (emphasis added). The Court explained that “[t]his Court denied the Plaintiff’s attempt to amend its [infringement contentions] because the Defendant argued that functional differences between the previously accused product and the newly accused products would cause it undue prejudice. The Defendant cannot have its cake and eat it too. The Court thus does not find the doctrine of claim splitting to bar the current claim against the Defendant.” Id. at 2-3.
As to the collateral attack argument, the Court did not interpret cases cited by defendant as barring plaintiff’s suit because the cases were factually distinguishable. See id. at 3-5. Instead, “[t]he Court’s previous order precluding the Plaintiff from amending its [infringement contentions] was applicable to that case only. The cases cited by the Defendant involve situations where the second action would have the effect of reversing the court’s decision in previous cases. This is not the case here. It therefore follows that this Court does not find the Plaintiff’s current action to be an impermissible collateral attack.” Id. at 5.