In a recent decision, Judge Sue L. Robinson granted defendants’ motion for a stay pending inter partes review. Peschke Map Technologies, LLC v. J.J. Gumberg, et al., Civ. No. 12-1525-SLR, 12-1527-SLR, 12-1528-SLR, 12-1530-SLR, 12-1572-SLR, 12-1574-SLR (D. Del. Apr. 24, 2014). The PTAB’s decision on the inter partes review is due in November 2014, just 10 days before the pretrial conference was scheduled to be held. Nevertheless, Judge Robinson explained that “it makes more sense to stay litigation pending the decision of the PTAB in November than to try to accommodate plaintiff’s needs for further discovery in the remaining months leading to trial in December. A stay should clarify, if not simplify, the issues for trial and, should the cases not be resolved administratively, the court will set a new trial schedule expeditiously . . . .”
Judge Robinson has issued a supplemental permanent injunction in the Invista v. M&G USA case, which involves resins manufactured by the parties and sold to customers to make containers. Following a jury trial, Judge Robinson had previously granted a permanent injunction. The previous injunction had not, however, addressed sales for exportation outside of the United States under 35 U.S.C. § 271(f). In considering the request for the new injunction, Judge Robinson pointed out that although the plaintiff had not “specifically invoke[d] 35 U.S.C. § 271(f) in connection with the [patent-in-suit], Invista did ask in its complaint for an injunction permanently enjoining [the defendant] from ‘. . . exporting out of the United States any products that infringe any claims of the patents-in-suit . . ., or by supplying or causing to be supplied any products that induce or contribute to the same by others, including third parties outside of the United States.’” Invista N. Am. S.A.R.L., et al. v. M&G USA Corp., et al., C.A. No. 11-1007-SLR-CJB, Order at 1-2 (D. Del. Apr. 21, 2014). Because there are no non-infringing uses of the products found to infringe, Judge Robinson agreed that the plaintiff would be irreparably harmed if the defendant “manufactures such resins, regardless of who the customers are.” Id. Her Honor therefore permanently enjoined the plaintiff “from infringing the [patent-in-suit] by manufacturing, using, importing, selling, and/or offering to sell in the United States, or exporting from the United States” the infringing products until the expiration of the patent-in-suit. Judge Robinson did, however, order that the injunction not take effect for ten days in order to allow an immediate appeal to the Federal Circuit. Id. at 2-3.
Judge Leonard P. Stark recently considered several summary judgment motions and motions to exclude expert testimony, among others, in Intellectual Ventures I LLC v. Check Point Software, et al., C.A. Nos. 10-1067-LPS, 12-1581-LPS (D. Del. Mar. 31, 2014 – public version released Apr. 14, 2014).
Judge Stark largely denied the parties’ motions to exclude experts, including Symantec’s motion to exclude Plaintiff’s expert for applying the Entire Market Value Rule. Id. at 8-25. Judge Stark found that the expert’s opinion was “permissible” in light of the circumstances that the patent-at-issue was “the essence of the ‘security-as-service’ products.” Id. at 13. Judge Stark did strike the portion of Symantec’s infringement expert’s opinion that contradicted the Court’s construction of the term “indication of a characteristic.” Id. at 24. Judge Stark also largely denied the parties’ summary judgment motions finding that “genuine disputes of material fact preclude[d] summary judgment.” Id. at 27. Judge Stark did, however, grant summary judgment of no willful infringement, finding that Plaintiff could not meet the objective prong of Seagate in light of Symantec’s “reasonable claim construction positions, legitimate defenses to infringement, and credible invalidity arguments.” Id. at 37. Judge Stark also granted Plaintiff’s motion for partial summary judgment on Trend Micro’s affirmative defenses, finding that Trend Micro put forth insufficient evidence in support of the defenses. Id. at 38-41.
Judge Stark also denied Symantec’s and Trend Micro’s motions for leave to amend their answers to add an antitrust-related claim. Judge Stark found that the evidence underlying the proposed additional claim was known or should have been known to defendants prior to the deadline to amend pleadings in May 2012. Id. at 41-44. Last, Judge Stark denied Defendants’ motion for sanctions for Plaintiff’s failure to “fulfill its duty to preserve the database created by the inventors” of one of the patents-in-suit. Id. at 44. Judge Stark found that a CD containing the database was misplaced in 2006, but Plaintiff’s “conduct in attempting to locate the CD is inconsistent with a suggestion of bad faith misconduct and intentional destruction of evidence.” Id. at 47. Further, Judge Stark found that no evidence indicated that in 2006 litigation was “either pending or reasonably foreseeable.” Id.
In Interdigital Communications, Inc. et al. v. ZTE Corp., et al., C.A. No. 13-009-RGA and Interdigital Communications, Inc. et al. v. Nokia Corp., et al., C.A. No. 13-010-RGA (D. Del. Apr. 22, 2014), Judge Richard G. Andrews recently construed disputed terms found in U.S. Patent Nos. 7,190,966; 7,286,847; 7,941,151; and 8,380,244:
“generated using [a same/a portion of a/a remainder of the] code”
“successively transmits signals; successively transmitted signals”
“[a/the] same physical downlink control channel”
“utilizing the radio resources for the uplink shared channel or the downlink shared
Channel.” This term appeared in claim 1 and 16 of the ‘151 patent. The Court held that claim 16 was invalid as indefinite: “the Plaintiffs ask the Court to rewrite a method step in an apparatus claim to preserve its validity. The Court finds that this correction is subject to reasonable debate and therefore will not redraft the claim.” Id. 8. The Court did construe this term as used in claim 1 of the same patent. Id. at 7-8.
“channel assignment information”
“configured to communicate with an IEEE 802.11 wireless local area network”
“maintain a communication session with the cellular wireless network in an absence of
the plurality of assigned physical channels”
“assigned physical channels,” “release, ” “allocate,” and “deallocate”
Judge Burke recently considered INVISTA’s motion for contempt and for modification of the protective order. INVISTA N. Am. S.a.r.l., et al. v. M&G USA Corp., et al., C.A. No. 11-1007-SLR-CJB (D. Del. Apr. 25, 2014). Previously, a jury found in favor of INVISTA and, following post-trial motions, Judge Robinson entered judgment in favor of INVISTA and granted INVISTA’s motion for a permanent injunction. In support of its contempt motion, INVISTA argued that M&G filed a petition in Virginia state court seeking an order requiring discovery from INVISTA, that “willfully violated three orders of the Court,” including the protective order Id. at 8 (internal quotations omitted). Judge Burke denied INVISTA’s motion finding that clear and convincing evidence did not demonstrate that M&G “knowingly disobeyed a valid order of this Court.” Id. at 10. For example, while one such order denied M&G’s motion to compel the discovery, that denial was “in the context of ‘this patent infringement action[.]'” Id. at 11 (emphasis and alteration in orginal). Judge Burke also found that M&G did not disobey the protective order in this case when it publicly filed the Virginia petition using information from a confidential document inadvertently produced in this case. Judge Burke found that the protective order’s restrictions did not apply to information that was in the possession of M&G before it was “transmitted” by INVISTA to M&G in the litigation. Id. at 18.
In a recent order, Judge Sue L. Robinson denied a plaintiff’s motion for a 90 day stay to permit it to select new counsel. In re: Automated Transaction LLC Patent Litig., No. 13-MD-2429-SLR (D. Del. Apr. 17, 2014). In its motion to stay, the plaintiff argued that a stay was appropriate and would allow it to retain new counsel who “will prepare a Motion before the Court as to why the forensic examination [of Defendants’ ATMs and networks] should take place before construction of any claim terms . . . .” (D.I. 144) Judge Robinson rejected that argument and explained that, “in light of the age and history of this MDL action, plaintiff’s motion for a stay is denied and defendants’ motion for the claim construction process to move forward promptly is granted.”
Following a jury trial, Judge Richard G. Andrews recently entered judgment on the jury’s verdict, pursuant to Rule 58(b)(2), that Claims 15, 16, 17, 19, 20, 21, 50, 60, 63, 70, 73 and 80 of L-3’s U.S. Patent No. 5,541,654 are valid. L-3 Communications Corp. v. Sony Corp., et al., C.A. No. 10-734-RGA (D. Del. Apr. 21, 2014).
Judge Richard G. Andrews recently considered the parties summary judgment motions in Robocast, Inc. v. Apple, Inc., C.A. No. 11-235-RGA (Apr. 22, 2014). Judge Andrews’ decisions on the parties’ Daubert motions can be read here, here and here.
Apple moved for summary judgment of non-infringement and invalidity and on damages, injunctive relief and indirect infringment; whereas Robocast moved for summary judgment of no unenforceability. Judge Andrews denied Robocast’s motion and Apple’s motion on non-infringement and invalidity finding underlying factual disputes for the jury. Id. at 7-18. Judge Andrews granted in part Apple’s summary judgment motion on damages, injunctive relief and indirect infringement. Regarding damages, Apple argued that because the Court excluded Robocast’s damages expert, summary judgment of no damages was appropriate. Id. at 18. Judge Andrews disagreed. “While Apple envisions a scenario where Robocast cannot prove any damages, much can happen between now and trial. Perhaps this is an exceptional circumstance in which it would be appropriate to allow Robocast to read [Apple’s damages expert’s] deposition into the record [should Apple de-designate its expert].” Id. at 19. Judge Andrews granted Apple’s motion regarding “pre-suit” willful and indirect infringement, finding that Robocast did not make an adequate showing of pre-suit knowledge of the patent-in-suit. Id. at 21-22. Regarding injunctive relief, Judge Andrews denied Apple’s motion, determining that “whether a permanent injunction is an appropriate remedy is better decided after a trial[.]” Id. at 22-23.
There has been a recent flurry of activity surrounding injunctive relief in the Edwards LifeSciences AG v. CoreValve, Inc. case, which involves aortic heart valve replacement technology. Edwards filed suit in 2008, alleging that Defendants Corevalve and Medtronic infringe its patents. In 2010 a jury returned a judgment of infringement in favor of Edwards against Medtronic, awarding lost profits and reasonable royalty damages, and the Federal Circuit later affirmed. In late 2013, Edwards moved for a preliminary injunction to stop what it alleged would be Medtronic’s infringement once Medtronic obtained FDA approval for its new “CoreValve Generation 3” product. Chief Judge Sleet held an evidentiary hearing on the “public interest factor of the preliminary injunction motion” on April 11 and issued a written decision on April 15 explaining his oral order at the hearing granting in part and denying in part the preliminary injunction. Edwards Lifesciences AG, et al. v. CoreValve, Inc., et al., C.A. No. 08-91-GMS, Memo. at 1-2 (D. Del. Apr. 15, 2014).
Edwards and Medtronic both make transcatheter heart valves that allow implanting of prosthetic aortic valves using a catheter thereby avoiding open heart surgery. The two companies are each other’s only competitors in the United States. Each company manufactured an older, predecessor type of transcatheter heart valve, and each company sought FDA approval of a new type of transcatheter heart valve. Although the FDA had not yet approved the product, the 2010 jury verdict of infringement related to Medtronic’s newer product, the CoreValve Generation 3. Before FDA approval of Medtronic’s infringing product, Medtronic had been able to make it available to patients through a continued access clinical trial. In January, however, the FDA approved the sale of the Medtronic product, which ended the continued clinical trial. Accordingly, Medtronic sought to begin commercially selling its CoreValve Generation 3 product. Edwards expected to obtain FDA approval for its new competing product and begin selling it in the near future as well. Id. at 2-4.
Chief Judge Sleet ultimately granted the motion for preliminary injunction in part. In doing so, he faced several legal and practical issues. With regard to the likelihood of success on the merits, Judge Sleet faced a question regarding enforceability, given that the patent-in-suit had expired in the years since the jury verdict. The FDA, however, had granted an interim extension of patent rights under 35 U.S.C. § 156. Medtronic argued that Edwards’ extension was limited to copies of its old product, not to copies of its new product like Medtronic’s CoreValve Generation 3. Therefore, Medtronic argued, even though its Generation 3 product might infringe the patent-in-suit, it is different from the Edwards product on which the term extension of that patent was based. Judge Sleet did not accept this argument, finding that Section 156(b) addressed approved uses, not approved products. Thus, because the accused Generation 3 product had the same use as the original Edwards approved product, the patent term extension covers it. Thus, having prevailed on infringement and had its patent term extended, Edwards had shown a likelihood of success on the merits. Id. at 5-6.
Judge Sleet also concluded that Edwards had shown irreparable harm through potential price erosion and loss of sales, market share, and revenue. Id. at 6-13. The major argument from Medtronic against irreparable harm was that there exists a “countervailing consideration sufficient to trump the mandate that patent rights be enforced.” This public interest consideration is the possibility that enjoining Medtronic would “leave patients so at risk of inferior care or no care at all that the public interest requires Medtronic be allowed to sell the CoreValve Generation 3.” Id. at 13-14. Medtronic essentially argued that its product was a safer, superior alternative to Edwards’ products and that it should be permitted to continue selling its product to a class of patients regarded as “extreme risk” because in some cases those patients could not be helped by Edwards’ existing product or in other cases could not be helped by either Edwards’ existing product or its product being approved by the FDA. Judge Sleet rejected the first extreme risk patient argument because Edwards’ new product should be approved by the FDA in the near future. But Judge Sleet accepted the second argument, finding that “the public interest requires making some accommodation that would grant patients [who can only be treated by Medtronic’s devices] access to the CoreValve Generation 3.” Thus, Judge Sleet granted the motion for preliminary injunction in part, concluding that the injunction must be tailored because “the public interest weighs in favor of granting Edwards a preliminary injunction, subject to an accommodation for Medtronic to sell its devices to those patients who cannot be helped by Edwards’ devices.” Id. at 14-21.
Judge Sleet also granted Medtronic’s request for “a stay of seven business days to ‘seek emergency relief in the Federal Circuit’ and ‘give hospitals some notice of what ha[d] happened.’” Id. at 2 n.4. Medtronic then filed an emergency motion with the Federal Circuit asking the court to stay the injunction. Medtronic urged the same arguments in the Federal Circuit as it had in the District of Delaware: public interest weighs in favor of denying injunctive relief and the patent is not enforceable because it has expired. The Federal Circuit agreed on April 15 to expedite the appeal and issued a decision on Monday, April 21 staying enforcement of the preliminary injunction. The Federal Circuit panel granted Medtronic’s motion to stay “pending further notice by this court” in a 2-1 order that did not further explain its rationale. Circuit Judges Rader, Prost, and Newman sat on the panel, with Judge Newman dissenting. The Federal Circuit will now review the preliminary injunction on the merits.
It is rarely in doubt that a drug-maker has the right to bar generic entry into an exclusive market when the drug-maker’s patent is found valid and infringed by a generic applicant, or when such a finding is deemed reasonably likely by the court.
For this reason, it is somewhat surprising that Chief Judge Roberts denied drug-maker Teva’s request to reinstate an injunction against generic entry against its Copaxone® drug product to treat multiple-sclerosis. Notably, all of Teva’s patents-at-issue will expire at least by September 2015. While the length of remaining patent term could have been a factor in the denial of the request, it is difficult to know. The ruling itself is less than 200 words.
The Chief Justice acknowledged that Teva has shown “a fair prospect of success on the merits,” the prong of the analysis that often trips a patentee’s application for injunctive relief. Instead, this relief was denied because the alleged availability of money damages for past patent infringement was found adequate. Thus, the Chief Justice explained, “the extraordinary relief that Teva seeks is unwarranted.”