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Dear Colleague,
Managing IP, in association with Delaware IP Law Blog, invites you to attend the second annual US Patent Forum March 19, 2013 at the Willard InterContinental in Washington D.C. www.managingip.com/USPatentForum2013
Free for in-house patent counsel, academics and R&D professionals.

One year on from the AIA, we will assess the patent landscape in the United States and look at strategies to achieve maximum value from your patent portfolio.

On the agenda:

• Two keynote addresses by USPTO’s Teresa Stanek Rea and WIPO’s James Pooley
• AIA and NPEs: one year on
• Lessons from Canadian reforms
• Monetization of patents: strategies for deriving maximum value from your patent portfolio
• Life sciences & ITC industries focus
• Doing business in China: how to ensure your patented assets in China are making you money
Speakers:
• James Pooley, deputy director general for innovation and technology, World Intellectual Property Organization
• Teresa Stanek Rea, acting director general, United States Patent & Trademark Office
• Jim Crowne, director of legal affairs, AIPLA
• Paul R Michel, Chief Circuit Judge (retired)
• Vanessa Bailey, IPR litigation, Nokia Siemens Networks
• Richard Rainey, executive counsel and IP litigation, GE
• David L Marcus, VP, deputy general counsel, Comcast Cable Communications
• Joseph G Contrera, patent counsel, Johns Hopkins Technology Transfer
• Andrew Hirsch, general counsel, Fuelcor
• Heather Boussios, senior intellectual property counsel, Emergent BioSolutions
• Henry Hadad, VP, deputy general counsel, IP, Bristol-Myers Squibb Company
• Vaishali Udupa, IP litigation counsel, Hewlett-Packard
• Camille-Remy Bogliolo, lawyer, international legal affairs, European Patent Office
• Raymond Niro, senior partner, Niro Haller & Niro
• Sherry Knowles, principal, Knowles Intellectual Property Strategies
For more details, visit http://www.managingip.com/stub.aspx?stubid=20311

Testimonials:

“Excellent overviews of AIA from those who wrote it, those who will implement it, and those who must live with it” – Graham Douglas, IDDEX (2012)

“Assessments and points of view you won’t find any place else” – Jim Farmer, Georgetown University (2012)

You will network with:

Accuray Inc, Americas Bankers Association, Boeing Company, CIENA, Department of Homeland Security, Eldelman, El Cap Ventures, Eli Lilly & Company, Embassy of Canada, Emergent BioSolutions, Ex-Nokia, George Washington University, Google, IC2 Institute – University of Texas, Intel, Intellectual Property Owners Association, INVISTA, IPXI, JDSU Corporation, JLG Industries, Johns Hopkins Technology Transfer, Johns Hopkins University, Magna International, Nestle, Nokia Siemens Networks, Palo Alto Research Center, Panasonic, Personalized Media Communications, Privaris, Sharp, Siemens Enterprise Communications, Supernus Pharmaceuticals, Tredegar Corporation, USPTO, US International Trade Commission, US International Trade Commission, Widener Law School and many more.
________________________________________
EASY WAYS TO REGISTER:
Register online: http://www.euromoneysecure.com/orders/gen/start.asp?cIndex=1731
Email: mfabri@euromoneyplc.com
________________________________________
We look forward to meeting you on March 19.

Kind regards,
James Nurton
Managing editor
www.managingip.com
Pilar Kraman
Managing editor
www.delawareiplaw.com

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Judge Leonard P. Stark recently issued rulings on a host of discovery disputes and, in the process, criticized the parties for abusing his discovery dispute procedure. Softview LLC v. Apple Inc., et al., Consol. C.A. No. 10-389-LPS (D. Del. Feb. 22, 2013). At issue were letters submitted by the parties in connection with the Court’s scheduling of a late afternoon teleconference to resolve various discovery disputes. Specifically, the plaintiff “filed nine separate letters seeking assistance from the Court on more than twenty discovery disputes[,]” and the defendants “filed an additional nine separate letters seeking assistance from the Court on more than ten additional discovery disputes.” Id. at 2 (emphasis in original). All told, including the responsive letters that were filed, Judge Stark explained that the Court received and reviewed a “mass of filings” totaling “36 letters presenting argument on at least 30 discovery disputes.” Id. at 3 (emphasis in original). Judge Stark viewed the volume of material submitted as revealing “that the parties have failed to reasonably communicate with one another or to put forth the expected and required good faith efforts towards resolving discovery disputes.” Id. “[M]ore troubling” to Judge Stark was “that the parties have utterly failed to exercise common sense, inundating the Court with far more than could possibly be addressed during a teleconference that the parties understood (or should have understood) would last only 45 to 60 minutes.” Id.

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Chief Judge Sleet recently issued an Order of Judgment in which he found that plaintiff was in contempt of court for failing to comply with the Court’s September 2010 Amended Order (D.I. 31). Huntley, L.L.C. v. Monteray Mushrooms Inc., C.A. No. 08-377-GMS (D. Del. Feb. 14, 2013) (“Order of Judgment”). There the Court ordered plaintiff to pay $27,831.63 in attorney’s fees. For background, see here for the Court’s 2009 memorandum granting defendant’s motion to dismiss.

In May 2012, defendant filed a Motion for Contempt, alleging that plaintiff was in violation of the Court’s 2010 order because it had not made payments toward the balance owed, even though the parties had negotiated a payment plan. (D.I. 35). Defendant requested sanctions in addition to the fees it was due. Id. The Court ordered payment of the $27,831.63 in attorney’s fees. Order of Judgment at 1.

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Magistrate Judge Burke recently issued a Report, recommending that defendant’s motion to dismiss plaintiff’s complaint as to direct infringement be denied but that the motion to dismiss plaintiff’s complaint as to indirect infringement be granted. Pragmatus AV, LLC v. TangoMe, Inc., C.A. No. 11-1092-LPS-CJB (D. Del. Feb. 13, 2013). Judge Burke previously made the same recommendation, and applied substantially similar analysis, in Pragmatus AV, LLC v. Yahoo! Inc., C.A. No. 11-902-LPS-CJB (D. Del. Nov. 13, 2012) (Yahoo), discussed here. This was a related case in which the patents-in-suit included the three at issue in this decision, and the plaintiff made similar allegations in that case as well.

As in Yahoo, plaintiff did not plead joint infringement and the primary question as to direct infringement was whether plaintiff’s allegations could only implicate a theory of joint infringement, and thus should be dismissed. See id. at 8. Here Judge Burke similarly concluded that “Defendant’s arguments as to dismissal [were] premature” because “the challenged claims do not so clearly and explicitly require the work of joint infringers so as to warrant dismissal.” Id. at 19, 14.

As to induced infringement, “Plaintiff assert[ed] that [defendant] ha[d] notice and knowledge of its infringement via a notice letter sent by [Plaintiff].” Id. at 22 (internal citations and quotation marks omitted). Unlike in Yahoo, “this allegation [did] indicate when that notice was provided,” but it still “[did] not allege any facts regarding the substance of that notice.” Id. at 23. Therefore, “[t]he Court [was] left to speculate as to what it was about that notice that could have plausibly provided [defendant] with the requisite knowledge of its users’ infringement.” Id. The allegations regarding the notice also provided the Court with “no basis to infer that Defendant, after receiving the notice, could have specifically intended for its users to continue infringing the patents. The law requires more.” Id. at 24. Finally, as in Yahoo, Judge Burke found that “the mere allegation that [defendant’s products] may be used to infringe is not sufficient to allow a reasonable inference that, inter alia, these services and products have no substantial noninfringing uses.” Id. at 26-27. Judge Burke therefore recommended that plaintiff’s complaint as to both induced and contributory infringement be dismissed. Id. at 27.

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Judge Sleet recently denied defendant Cree, Inc.’s motion to transfer venue of plaintiff E. Fred Schubert’s action to the Middle District of North Carolina. Schubert v. Cree Inc., C.A. No. 12-922-GMS (D. Del. Feb. 14, 2013). Schubert, a resident of New York, filed this action against Cree, a resident of North Carolina, along with two other actions alleging infringement of U.S. Patent No. 6,294,475. Judge Sleet determined that the Jumara factors weighed against transfer. Because Delaware was not Schubert’s “home forum,” Judge Sleet noted that Schubert’s forum selection was not “deserving of ‘paramount’ consideration.” Id. at 5. But, Schubert’s forum choice was entitled to “some degree of heightened deference given its underlying rational and legitimate basis — namely, the desire to litigate in a district approximately halfway between the parties and in which Schubert intends to litigate two related cases.” Id. The court determined that defendants’s forum preference, where the claim arose and the location of books and records weighed in favor of transfer, but all other factors were either inapplicable or weighed against transfer. Id. at 5-10. Regarding the convenience of the parties, Judge Sleet noted the financial disparity between the parties and concluded that Cree had “far deeper pockets” and was better able to “bear any increased costs.” Id. at 6-7. Also, the “practical considerations,” factor weighed strongly against transfer considering that two related cases were currently pending in Delaware. Id. at 8-9.

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Chief Judge Gregory M. Sleet recently considered defendants’ motion to dismiss in which the defendants argued that in light of the Court’s prior construction of certain claims of the patent-in-suit, defendants’ ANDA product could not infringe. Endo Pharms. Inc. v. TWI Pharms., Inc., C.A. No. 12-848-GMS (D. Del. Feb. 11, 2013). Judge Sleet denied the motion determining that, at this early stage of the case, the court could not find plaintiffs’ claims “without merit or facially implausible.” Id. at 2 n.1. Citing Third Circuit precedent on the issue of collateral estoppel, Judge Sleet noted that it was not clear that the Court would be bound by the prior claim construction when the parties reached a settlement before the court issued a decision. Id. at 2 n.1 (citing Russo v. City of Phila., 459 F. App’x 176, 178-79 (3d Cir. 2012) (outling the four elements of issue preclusion)). The court also determined that even if the court adopted its prior claim construction ruling, “the ANDA product could infringe the [patent-in-suit] under the doctrine of equivalents]; and because the claim limitation at issue was preceed by “consisting essentional of,” the possibility existed that the ANDA product “could contain more than one of the Markush group members.” Id.

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In a recent memorandum opinion, Judge Sue Robinson denied a patent infringement defendant’s motion to transfer venue to the Northern District of Texas. Plaintiff Cradle IP was incorporated in Delaware and headquartered in California, while Defendant Texas Instruments was incorporated in Delaware and headquartered in Texas. See Cradle IP, LLC v. Texas Instruments, Inc., C.A. No. 11-1254-SLR, Memo. Op. at 1-2 (D. Del. Feb. 13, 2013).

Referring to her opinion on a similar motion in Helicos Biosciences Corp. v. Illumina, Inc., 858 F. Supp. 2d 367 (D. Del. 2012) (discussed here), Judge Robinson began with “the premise that a defendant’s state of incorporation has always been ‘a predictable, legitimate venue for bringing suit’ and that ‘a plaintiff, as the injured party, generally ha[s] been ‘accorded [the] privilege of bringing an action where he chooses.’’” Cradle IP, LLC v. Texas Instruments, Inc., Memo. Op. at 2. At the same time, Judge Robinson recognized that “the Federal Circuit expects an analysis of all the Jumara factors in connections with any transfer decision,” and proceeded to address each factor in turn. Id. at 3.

Judge Robinson found that the only factor favoring transfer was the “practical considerations that could make the trial easy, expeditious, or inexpensive,” because “trial in the Northern District of Texas would be easier and less expensive for [Texas Instruments, but it] is not evident that trial in Delaware would be easier and less expensive for Cradle IP.” Id. at 8. Every other factor either weighed against transfer or was neutral (the remaining factors were: choice of forum, where the claims arise, the parties’ relative size, convenience of the witnesses, location of books and records, relative administrative difficulty, local interest in deciding local controversies, enforceability of a judgment, public policies of the fora, and the familiarity of the judge with state law). Ultimately, she found, Texas Instruments did not meet its burden of showing that Cradle IP’s choice of forum should be disturbed. Id. at 5-9.

Perhaps most significantly, Judge Robinson declined Texas Instruments’ invitation to “‘accord[] little weight [to the plaintiff’s choice of venue] because [Cradle IP’s] recent incorporation in Delaware is an article of litigation’ and . . . ‘simply a litigation vehicle for [Cradle IP’s parent corporation], designed to give it an anchor, however tenuous, to this District.’” Id. at 4. Judge Robinson explained: “many businesses and academic institutions enforce their patent rights through private companies (like Cradle IP); such a business strategy is not nefarious. The court declines to treat such non-practicing entities as anything less than holders of constitutionally protected property rights, those rights having been legitimized by the Patent & Trademark Office.” Id.

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Judge Sue L. Robinson recently denied defendant’s motion “seeking to amend its answer and counterclaims to include an affirmative defense and counterclaim of inequitable conduct.” Butamax™ Advanced Biofuels LLC v. Gevo, Inc., C.A. No. 11-54-SLR, at 2 (D. Del. Feb. 13, 2013). Because defendant filed its motion three months after the scheduling order’s deadline to amend the pleadings, defendant was required to show “good cause under Rule 16(b) for its delay.” Id. at 4. Judge Robinson found that defendant had shown good cause, as the information relevant to its inequitable conduct defense and counterclaim was not produced until March 29, 2012—one day before the deadline to amend the pleadings—and defendant was required to sift through the large volume of documents produced to confirm with “particularity” its inequitable conduct theory. Id. at 5-6. Judge Robinson further found that plaintiff would not be prejudiced by this amendment, as “[i]nformation regarding its own inequitable conduct lies largely with plaintiff.” Id. at 6.

Despite these findings, Judge Robinson ultimately concluded that defendant failed to plead inequitable conduct with sufficient particularity and defendant’s amendment was therefore futile. Id. at 7-9. When pleading inequitable conduct, as Judge Robinson explained, the heightened pleading standard of Fed. R. Civ. P. 9(b) applies, which requires a party to identify “the specific who, what, when, where, and how of the material misrepresentation or omission committed before the PTO.” Id. at 4 (quoting Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1327 (Fed. Cir. 2009)). This standard requires the “knowledge” and the “intent to deceive” elements of inequitable conduct to be attributed to a specific individual. See id. at 7-8. Judge Robinson found that the “relationship between the general knowledge allegedly depicted on internal presentation slides” upon which defendant intended to rely “and the named individuals is too tenuous to show ownership of the knowledge or attribute a specific intent to deceive.” Id. at 9. That the named individuals did not withhold this general knowledge was corroborated by “the availability of such general knowledge in other publications, at least one of which was cited in the patent specifications.” Id. Accordingly, defendant’s motion for leave to amend its pleading was denied. Id.

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Chief Judge Gregory M. Sleet recently denied a motion to transfer a case to the District of Massachusetts, where one defendant maintained its headquarters and records, based on an analysis of the Third Circuit’s Jumara factors. Schubert v. Osram AG, et al., C.A. No. 12-923-GMS (D. Del. Feb. 14, 2013). In the process, the Court explained that it was less than clear that transfer would be statutorily permitted even if the Jumara factors weighed heavily in favor of transfer. Id. at 3. As Judge Sleet explained, a case may be transferred to “any other district or division where it might have been brought.” Id. at 3 (quoting 28 U.S.C. § 1404(a)). In this case, it was unclear to the Court whether the plaintiff could have brought his case in the District of Massachusetts, since two of the defendants were German entities with no evident operations in Massachusetts. Id. The defendants argued that the District of Massachusetts would have been an appropriate forum because “all defendants consent to jurisdiction in Massachusetts,” but the Court rejected that argument, explaining “the fact that all of the defendants here consent to jurisdiction in Massachusetts is irrelevant” because “the personal jurisdiction requirement cannot be satisfied by a hypothetical waiver.” Id. at 4 (quoting Guzzetti v. Citrix Online Holdings GmbH, No. 12-01152-GMS, 2013 WL 124127, at *3 n.2 (D. Del. Jan. 3, 2012)). Although it was unclear to the Court whether it could transfer the case to the District of Massachusetts under § 1404(a), the Court did not resolve that issue because it found that the Jumara factors weighed against a transfer anyway. Id. at 5.

With regard to the Jumara factors, Judge Sleet explained that the issue was a close one, but that the defendants failed to carry their “burden to demonstrate that the balance of convenience strongly favors transfer” even though, the Court acknowledged, “Massachusetts may well present a more convenient venue for this litigation . . . .” Id. at 14 (emphasis in original). The Court rejected the argument that the plaintiff’s choice of forum was entitled to little weight because he was not a Delaware resident, explaining that because he had rational and legitimate reasons to choose Delaware, his choice still “is given significant weight in the convenience analysis.” Id. at 7. Further, while accepting that the defendants (two of which were Delaware corporations) preferred litigating in the District of Massacusetts, the Court explained that they faced an “uphill battle in contending that Delaware represents an inconvenient forum” because “the court has recognized that a defendant incorporated in Delaware should generally not be heard to argue that litigating in this district is inconvenient.” Id. at 9. The Court also believed that the existence of related, co-pending lawsuits in Delaware weighed against transfer, explaining that “[t]he time invested by the court in a case is one . . . [public interest factor], and [plaintiff] rightly notes that keeping this action in Delaware, along with the two related cases, will likely allow the court to develop some degree of familiarity with the ‘475 Patent, the underlying technology, and the relevant industry[,]” which weighs against transferring the case. Id. at 12.

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In September 2010, plaintiff Bristol-Myers Squibb Company (“BMS”) commenced this ANDA litigation against defendant Teva Pharmaceuticals in response to Teva’s filing of Abbreviated New Drug Application No. 202122, which sought “approval to market a generic version of Baraclude.” BMS markets Baraclude to treat adults with certain types of “chronic hepatitis B virus infections.” The Orange Book lists U.S. Patent No. 5,206,244 (the “’244 Patent”) “in connection with BMS’s Baraclude Product,” and BMS sought to enforce claim 8 of that patent, which “covers the chemical compound entecavir.” However, in a recent post-trial opinion, Magistrate Judge Christopher J. Burke held that claim 8 of the ‘244 Patent is invalid as obvious under 35 U.S.C. § 103. Bristol-Myers Squibb Company v. Teva Pharmaceuticals USA, Inc., C.A. No. 10-805-CJB, at 1-4 (D. Del. Feb. 11, 2013).

In reaching his obviousness determination, Judge Burke first relied on a two-prong test specific to chemical compounds and found that Teva met its burden in proving a prima facie case of obviousness. See id. at 88, 131. Addressing the test’s first prong, Judge Burke concluded that Teva proved by clear and convincing evidence that a “chemist” of ordinary skill in the art would have selected 2′-CDG—a compound similar to entecavir—as a “lead compound” at the alleged time of invention. Id. at 112. Judge Burke explained that a “lead compound” is a prior art compound that “would be most promising to modify in order to improve upon [that compound’s activity] and obtain a compound with better activity.” Id. at 91 (quoting Takeda Chem. Indus., Ltd. v. Alphapharm Pty., Ltd., 492 F.3d 1350, 1357 (Fed. Cir. 2007)) (internal quotation marks omitted). Judge Burke’s conclusion that a chemist of ordinary skill in the art would have chosen 2′-CDG as a lead compound was supported by the following findings: (1) By the late 1980s, carbocyclic analogs, a class of compounds to which 2′-CDG belongs, had “generated excitement” among researchers, including researchers from BMS; (2) 2′-CDG and entecavir were structurally similar; (3) 2′-CDG had demonstrated “positive attributes,” including high potency and good activity in certain applications; (4) Researchers during the relevant time period “were actually treating and using 2′-CDG as a lead compound.” See id. at 94-112.

Turning to the second prong of the prima facie obviousness test, Judge Burke concluded that Teva demonstrated by clear and convincing evidence that the “ordinary medicinal chemist, having selected 2′-CDG as a lead compound, would have had reason to and been motivated” to alter 2′-CDG to create entecavir, and that chemist would have “reasonably expect[ed] to be successful in synthesizing [that] new compound.” Id. at 126, 131. Addressing the “reason” or “motivation” to create entecavir, Judge Burke explained that the chemist of ordinary skill in the art would have been motivated to make “small, conservative changes” to the “2 prime or 5 prime positions” of 2′-CDG, and one of the most conservative changes would have been the “addition of a carbon.” Id. at 119. Such changes were reflected in entecavir’s structure, which was essentially 2′-CDG with a “carbon” added to the “5 prime position.” See id. at 98. With respect to the “reasonable expectation of success,” Judge Burke found the structural similarity between 2′-CDG and entecavir significant, as it is “well-settled that structurally similar compounds ‘often have similar properties.’” Id. at 127 (quoting Takeda, 492 F.3d at 1356). Judge Burke also cited expert testimony that explained that all the “tools” necessary to synthesize entecavir were “in the literature.” Id. at 130.

After concluding that Teva established a prima facie case of obviousness, Judge Burke considered “objective indicia of nonobviousness.” Id. at 131. The evidence with respect to objective considerations, as Judge Burke explained, “was mixed.” Id. at 152-53. However, as Judge Burke’s decision reflects, secondary objective indicia of nonobviousness do not necessarily control the obviousness conclusion. See id. Judge Burke ultimately concluded that “in light of the significant force of Teva’s prima facie case” in addition to the fact that the “PTO was not able to consider certain material prior art references regarding 2′-CDG during prosecution of the patent,” Teva had “demonstrated by clear and convincing evidence that claim 8 of the ‘244 Patent is invalid as obvious under Section 103.” Id. at 153.

Teva also claimed inequitable conduct, arguing that a named inventor on the ‘244 Patent and two prosecuting attorneys intentionally failed to disclose 2′-CDG to the PTO despite their awareness of the similarity between entecavir and 2′-CDG. Id. at 155. Judge Burke held, however, that Teva failed to demonstrate this claim by clear and convincing evidence. Id. at 171. Judge Burke explained that it was “reasonable, if not more reasonable, to infer that these men had made a determination that the most important feature of entecavir was the addition of an exocyclic methylene group . . . and that because they were focused on that feature, they went on to cite prior art to the PTO that referred to compounds containing that type of substitution.” Id. at 170. Judge Burke further explained that with regard to at least the two prosecuting attorneys, it was “just as reasonable, if not more reasonable, to infer that another reason why they did not cite these references was because the references had not been brought to their attention by the inventors, and these men would have had little reason to have identified the prior art as relevant on their own.” Id.

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