Judge Richard G. Andrews recently denied defendants’ motion to preclude plaintiff’s expert “from testifying about ‘written description’ and that ‘a solution is a solvate[,]’ . . . in advance of a bench trial in which the expert [was] going to testify in any event.” GlaxoSmithKline LLC v. Anchen Pharms. Inc., et al., C.A. No. 11-46-RGA (D. Del. Dec. 11, 2012). Judge Andrews noted that “live testimony and cross examination” would better able him to reach a “correct decision” on whether the expert’s testimony was appropriate. Id. Judge Andrews also added that defendants’ submission sounded “like cross-examination material[,]” and were he a “cynic” he would think that defendants filed their motion to ensure he was “paying attention when this cross-examination happens.” Id. n.1.
In a recent order, Judge Andrews granted two patent infringement declaratory judgment defendants’ motions to dismiss. See Sony Electronics Inc. v. Digitech Image Techs. LLC, C.A. No. 12-980-RGA, Order (D. Del. Dec. 7, 2012). Defendant Digitech originally filed an infringement action against Sony in the Central District of California. The California Court dismissed the suit because it joined several unrelated defendants in violation of the America Invents Act. Digitech refiled the suit against Sony alone on the same day the previous suit had been dismissed. Between the filing of the original suit and the refiled suit, however, Sony brought a declaratory judgment action against Digitech and its parent Acacia in the District of Delaware. Id. at 1-2.
Digitech argued that the original California suit was the “first-filed” suit and the “second-filed” Delaware suit should therefore be dismissed. Sony responded that the original California suit was “legally infirm” and should not be treated as the first-filed suit. Judge Andrews found that the original California suit had not been legally infirm, especially given that the original California suit had been permitted to proceed against the first-named defendant, while the suits against the other defendants were refiled. Accordingly, he granted Digitech’s motion to dismiss based on the first-filed status of the original California suit. Id. at 1-2.
Acacia argued that the declaratory judgment case against it should be dismissed because it did not own the patent-in-suit. Because Acacia could not bring suit on the patent, it argued, there could be no case or controversy between it and Sony. Citing Fina Research S.A. v. Baroid Drilling Fluids, Inc., 98 F.3d 1357 (Fed. Cir. 1996), Judge Andrews found this logic “compelling.” He rejected the argument that declaratory judgment jurisdiction existed because Acacia is a controlling parent of Digitech, who could and did bring a patent infringement suit, and pointed out that Acacia “presumably could not bring a counterclaim for patent infringement.” Judge Andrews therefore found the declaratory judgment suit against Acacia lacking in subject matter jurisdiction and granted Acacia’s motion to dismiss. Id. at 2-3.
In a recent memorandum opinion, Judge Richard G. Andrews denied a motion to dismiss filed by a sublicensee of the plaintiff’s soybean technology. Bayer Cropscience AG v. Dow Agrosciences LLC , C.A. No. 12-256-RGA (D. Del. Dec. 6, 2012). The sublicensee first argued that dismissal was appropriate pursuant to Rule 12(b)(7) because the plaintiff failed to join a necessary and indispensable party – the plaintiff’s licensee who was permitted use of the technology for certain purposes not including commercialization, and who in turn sublicensed the use of the technology to the defendant who sought to commercialize the technology. Id. at 2-3, 4. The Court agreed that, at first glance, it appeared that the plaintiff’s licensee was an “absent party [who] will suffer some loss or be put at risk of suffering such loss if not joined.” Id. at 4-5 (quoting Koppers Co., Inc. v. Aetna Cas. & Sur. Co., 158 F.3d 170, 175 (3d Cir. 1998)). The Court found, though, that the defendant’s interests were aligned with the plaintiff’s licensee such that it was “perfectly capable of protecting their joint interests.” Id. at 5-6. Moreover, because the agreement between the plaintiff and the plaintiff’s licensee included an arbitration provision, the Court found it unlikely that joining the plaintiff’s licensee would result in the Court ever ruling on the dispute between the plaintiff and the plaintiff’s licensee, anyway, which the Court found “mitigates the harm or risk of harm that would flow from [the plaintiff’s licensee’s] absence.” Id. at 6-7.
The Court also rejected the argument that the plaintiff’s complaint failed to state a claim because the defendant’s “actions in connection with the soybean technology are validly licensed, and therefore, it cannot infringe . . . .” Id. at 3. As the Court explained, “[t]his argument . . . asserts a factual defense. It is not an attack on the pleadings and is misplaced within the context of a 12(b)(6) motion.” Id.
In a recent memorandum order, Judge Sue L. Robinson granted patent infringement defendants Lupin Limited and Lupin Pharmaceuticals’ Rule 12(c) motion for judgment on the pleadings as to one claim of plaintiffs’ patent, and denied the motion as to other claims. See Senju Pharmaceutical Co., et al. v. Lupin Limited, et al., C.A. No. 11-271-SLR (consolidated), Slip Op. (D. Del. Dec. 7, 2012).
Plaintiffs alleged that defendants’ ANDA infringed two of their patents. Id. at 2. The parties had previously stipulated to the dismissal of all claims and counterclaims related to one patent, and defendants moved for judgment on the pleadings as to certain claims of the remaining patent (“the ’045 patent”). The ’045 patent “is directed to aqueous liquid pharmaceutical compositions comprising gatifloxacin and disodium edtate [(“EDTA”)], as well as various methods utilizing these compositions.” Plaintiffs had previously filed a request for reexamination of various claims of the ’045 patent and amended their complaint to allege infringement—by two of defendants’ ANDA applications—of the ’045 patent as reexamined. Id. at 2-3. The reexamination had resulted in, inter alia, an amended claim 6 and the addition of claims 12-16. See U.S. Patent No. 6,333,045 Ex Parte Reexamination Certificate.
In their motion, defendants alleged that the “narrower reexamined claims 6 and 12-16 of the ’045 patent are invalid for obviousness and that plaintiffs should be collaterally estopped from relitigating these claims based on this court’s findings in Senju Pharmaceutical Co. Ltd. v. Apotex Inc., 717 F. Supp. 2d 404, 419-27 (D. Del. 2010).” Senju Pharma., Slip Op. at 5. In this prior decision (“Apotex”, discussed here), the Court had construed “the EDTA concentration limitation [in “original claim 6”] to be from 0.001 to 0.2 w/v%.” Id. at 5 (citing Apotex at 419 & n.26, 421-23). Plaintiffs countered that the “reexamined claims [had] not been previously litigated and decided, because this court did not consider or determine the validity of a claim limited to 0.01 w/v% [EDTA]” in Apotex. Id. (internal citations and quotation marks omitted).
The Court accepted plaintiffs’ argument as to reexamined claims 6 and 12-16 after summarizing Apotex. Id. at 7. In Apotex it had held that “original claim 6 was obvious in light of the prior art as it ‘would lead one of ordinary skill in the art to reasonably expect that’” EDTA would be combined with gatifloxacin at the concentrations in original claim 6. Id. at 5-6 (quoting Apotex at 423). However, the Court now concluded that “[a]lthough in the ’045 patent the concentration of EDTA is limited to from 0.001 to 0.2 w/v%, this court did not specifically make findings for a claim with a limitation of 0.01 w/v% EDTA [in Apotex ] . . . . Moreover, plaintiffs did not fully litigate a claim with a limitation of 0.01 w/v% EDTA and [defendants have] not shown sufficient evidence that this limitation does not lend patentable significance to reexamined claims 6 and 12-16.” Id. at 7. In support of its conclusion, the Court cited 35 U.S.C. § 282 for the proposition that “a narrower claim is not rendered invalid by the invalidity of a broader claim.” Id. at 7 n.5. Accordingly, the Court denied the motion for judgment on the pleadings as to these reexamined claims.
The Court also rejected plaintiffs’ argument that its 2012 decision in the same Apotex case, discussed here, precluded the application of collateral estoppel, explaining that “[t]his court stated that claim preclusion applied to that case, not that issue preclusion could never apply.” Id. at 5 n.2.
Judge Leonard P. Stark recently issued a claim construction opinion construing disputed claim terms of U.S. Patent No. 5,610,059 entitled “Etiological Agent for Porcine Enteritis.” Intervet Inc. d/b/a Merck Animal Health, et al., v. Boehringer Ingelheim Vetmedica, Inc., C.A. No. 11-595-LPS (D Del. Dec. 7, 2012). Judge Stark construed the following terms:
“a biologically pure culture of a mammalian host cell”
“an obligate intracellular bacterium that causes porcine proliferative enteritis after inoculation into pigs”
“Porcine Proliferative Enteritis”
“having all of the identifying characteristics of ATCC Accession No. 55370″
Judge Richard G. Andrews recently issued an order in Taser International, Inc. v. Karbon Arms, LLC, C.A. 11-426-RGA (D. Del. Nov. 28, 2012), construing over twenty disputed claim terms across four patents related to “the technology of electronic control devices.” Id. at 1. The following claim terms of U.S. Patent Nos. 6,999,295; 7,782,592; 7,602,597; and 7,800,885 were construed:
-“a dual operating mode”
-“a first mode”
-“a second mode”
-“sourcing, for a first period, electricity”
-“reducing an output voltage magnitude capability of the source”
-“sourcing electricity for a second period longer than the first period”
-“a stimulus signal”
-“series of pulses”
-“a particular pulse of the series”
-“after ionization of air in the circuit”
-“generating a first compliance signal of the current”
-“a first maximum amplitude”
-“generating a second compliance signal of the current”
-“being less than”
-“a second maximum amplitude”
-“a respective effective duration”
-“a sequence [of compliance signals]”
-“a series of compliance signal groups”
Id. at 2-3. Judge Andrews reserved decision on one term, “tailoring a compliance signal group,” pending further briefing. Id. at 3.
Judge Leonard P. Stark recently construed seven of nine disputed claim terms of U.S. Patent No. 7,831,690, entitled “Appliance Metaphor For Adding Media Function To A Webpage.” Augme Technologies, Inc. v. Pandora Media, Inc., C.A. No. 11-379-LPS (D. Del. Dec. 5, 2012). Judge Stark construed the following terms:
• “media appliance metaphor”
• “Web page”
• “adding a media function to a Web page”
• “processor platform”
• “server system”
• “automatically provided”
• “customized by said server in accordance with information content of said Web page”
Id. at 5-13.
Judge Stark found that it was unnecessary to construe the remaining two disputed terms because subparts of those terms already had established constructions that rendered the meanings of the two larger terms self-evident. Id. at 10-11. For example, he found that it was unnecessary to construe the following claim term: “formed by a server system as a service response in response to information provided by said processor platform to said server system.” Id. at 11 (emphasis added). The terms “server system,” “service response,” and “processor platform,” had established constructions, and it was therefore unnecessary to provide a “separate construction of [the] larger term.” Id.
Judge Leonard Stark recently issued a claim construction opinion in patent infringement litigation related to the active ingredients in the drug Nuedexta and the use of those ingredients to treat neurological disorders. See Avanir Pharmaceuticals, Inc. v. Actavis South Atlantic LLC, C.A. No. 11-704-LPS, slip op. (D. Del. Dec. 3, 2012). Judge Stark construed the following terms of the patents-in-suit:
– “A method for treating pseudobulbar affect or emotional lability”
– “Dextromethorphan in combination with quinidine”
– “A unit dosage formulation for treatment of chronic or intractable pain”
– “A debrisoquin hydroxylase inhibitor”
– “A combined dosage which renders the dextromethorphan therapeutically effective in substantially reducing chronic or intractable pain without causing unacceptable side effects”
In construing the last of these claim terms, Judge Stark rejected the Defendants’ attempt to “limit the term to a numerical range that may appear in the written description or in other claims” when the “claim term is expressed in general descriptive words.” Id. at 9 (citing Conoco, Inc. v. Energy & Envtl. Int’l, L.C., 460 F.3d 1349, 1358 (Fed. Cir. 2006)). This was particularly incorrect because “adopting the Defendants’ proposed dosage of quinidine of between 50 mg/day to 300 mg/day would lead to the improper result of independent claim 18 having narrower claim scope than dependent claim 21, which depends from claim 18.” Id.
Judge Leonard Stark recently issued a claim construction opinion in a patent dispute related to an assembly for mounting a mirror to a motor vehicle. See Rosco, Inc. v. Velvac Inc., C.A. No. 11-117-LPS, slip op. (D. Del. Dec. 4, 2012). Judge Stark construed the following terms of the patent-in-suit:
– “a structural portion of the vehicle”
– “attachment to”
– “connection to” and “connected to”
– “engine bay”
– “inside the engine bay”
– “below the hood of the vehicle”
– “positioned below the hood when the hood is in a closed position”
– “vehicle bulkhead” or “bulkhead”
Each of these terms related to the manner in which the mirror assembly was connected to the vehicle and what portion of the vehicle it was connected to. For each term, Judge Stark either sided with the Plaintiff, in one case adding one clarifying limitation, or gave the term is plain and ordinary meaning. Id. at 7-16.
In a recent memorandum opinion, Judge Leonard P. Stark ruled that a defendant was barred by issue preclusion from arguing that the patent at issue is invalid or unenforceable, under any theory, because the defendant’s parent company had controlled an affiliate’s earlier litigation which resulted in a ruling that the same patent was not invalid or unenforceable. Astrazeneca UK Ltd., et al. v. Watson Laboratories, Inc. (NV), et al., C.A. No. 10-915-LPS (D. Del. Nov. 14, 2012). The Court agreed with the plaintiffs that invalidity and unenforceability represent “single issues” for purposes of issue preclusion—such that the defendant was not only barred from litigating the same invalidity and unenforceability theories that the affiliate had argued unsuccessfully in the earlier litigation, but was barred from asserting any invalidity or unenforceability theories. Id. at 11-12. The Court rejected the plaintiffs’ argument, though, that another generic manufacturer and co-defendant was a proxy of the issue precluded defendant who also should be barred from arguing invalidity and unenforceability. Id. at 13-14.
The Court also considered the defendant’s motion for summary judgment of non-infringement under the doctrine of equivalents, which argued that “because the patentees used narrow claim language, Plaintiffs are precluded from relying on the doctrine of equivalents to expand the patent’s scope.” Id. at 4. The plaintiffs responded that “the doctrine of equivalents applies and protects patentees from infringers who make insubstantial changes to the claimed invention.” Id. The Court denied the motion without prejudice, finding that “the most appropriate course is to hear all of the evidence at trial and make a conclusion on the doctrine of equivalents thereafter.” Id. at 9.