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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.

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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.

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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”

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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”
-“power supply”
-“sourcing, for a first period, electricity”
-“reducing an output voltage magnitude capability of the source”
-“after reducing”
-“sourcing electricity for a second period longer than the first period”
-“a stimulus signal”
-“series of pulses”
-“a particular pulse of the series”
-“determining”
-“stage”
-“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”
-“differ”
-“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.

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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.

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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.

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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.

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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.

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Due to problems encountered in conforming to the PDF/A standard, the District of Delaware has indefinitely suspended the requirement that was to take effect January 1, 2013, that all documents filed into CM/ECF conform with the PDF/A standard.

The Court has announced that the filing of documents in PDF Standard format will remain acceptable until further notice.

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Judge Leonard P. Stark recently granted defendants’ motion to exclude the testimony of plaintiffs’ legal expert, who was offered to testify as to substantive issues regarding the patent-in-suit, U.S. Patent No. RE37,314. He also granted defendants’ motion to exclude the testimony of plaintiffs’ technical expert to the extent that the expert would be offered to provide testimony as to “state of mind.” AstraZeneca UK Limited v. Watson Laboratories, Inc., C.A. No. 10-915-LPS (D. Del. Nov. 14, 2012).

Regarding plaintiffs’ legal expert, Judge Stark noted that the District of Delaware has a “well-established practice of excluding the testimony of legal experts, absent extraordinary circumstances.” Id. at 2. Despite the legal expert’s experience as a PTO examiner, a Special Program Examiner, and an Administrative Patent Judge on the Board of Patent Appeals and Interferences, Judge Stark found “no reason to depart from” the District of Delaware’s well-established practice in this case. Id. at 2-3. Turning to plaintiffs’ technical expert, Judge Stark noted that “[g]enerally, expert witnesses are not permitted to testify regarding intent, motive, or state or mind, or evidence by which such state of mind rnay be inferred.” Id. at 4. He therefore excluded the testimony of plaintiffs’ technical expert to the extent that the expert would offer opinions regarding what the inventors or corporate plaintiff “knew” about the prior art or what they “intended.” Id. Defendants’ motion to exclude was denied, however, to the extent that the expert would provide “testimony as to what one of ordinary skill in the art would understand about rosuvastatin zinc or other zinc salts in the context of the patent-in-suit.” Id. Judge Stark noted that “[s]o long as [the expert’s] focus is on what one of ordinary skill in the art would understand – and not on what the inventors or [corporate plaintiff] knew or intended – [the expert’s] testimony will be permitted.” Id.

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