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In Galderma Labs., L.P., et al. v. Tolmar Inc., et al., C.A. No. 10-45-LPS, Judge Stark construed the following disputed claims and claim terms of U.S. Patent Nos. 7,579,377 (the “’377 patent”), 7,737,181 (the “’181 patent”), 7,834,060 (the “’060 patent”), 7,838,558 (the “’558 patent”) and 7,868,044 (the “’044 patent”):

“a thus effective amount” and “effective amount”
“effective for the treatment of”
“an anti-acne effective amount”
“useful for the treatment of”
“pharmaceutical composition which is a gel of”
“poloxamer 124”
“carbomer 940”
Claim 5 of the ’060 patent
Claim 24 of the ’060 patent
Claim 35 of the ’181 patent
Claim 36 of the ’181 patent
Claim 40 of the ’044 patent
Claim 41 of the ’044 patent

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In Bayer CropScience AG v. Dow Agrosciences LLC, C.A. No. 10-1045 (RBK-JS) (D. Del. Feb. 27, 2012, Magistrate Judge Schneider, sitting by designation, recently granted defendant’s motion to supplement its contentions.  Defendant moved to supplement its contentions one week after the parties exchanged their claim construction positions.  Defendant wanted to add detail to its previously pled defenses and add additional defenses in light of plaintiff’s proposed constructions.  Id. at 2.  Judge Schneider found that good cause existed to grant defendant’s motion because “defendant did not recognize the amendments were necessary and appropriate until it received [plaintiff’s] proposed constructions[,]” and that the proposed amendments “flow from’ the constructions the parties exchanged . . . .”  Id. at 4.  Plaintiff argued that it would be prejudiced by the proposed amendments because it filed an early motion for partial summary judgment based on defendant’s one invalidity contention.  Id. at 6.  The court was not persuaded, however, because plaintiff’s motion would still be decided on the merits.  “The fact that [plaintiff] decided to file its dispositive motion early was the result of its strategic decision.  Surely, [plaintiff] could not have anticipated that its motion for summary judgment would automatically ‘lock’ [defendant’ into its contentions.”  Id.

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In a recent memorandum order, Judge Robinson rejected an ANDA defendant’s argument that the Court lacked subject matter jurisdiction over the parties’ dispute because the defendant’s ANDA did not include a Paragraph IV certification relating to the patents-at-issue. Cephalon, Inc. v. Sandoz, Inc., Civ. No. 11-821-SLR (D. Del. Mar. 1, 2012). The plaintiff originally listed two patents in the Orange Book in connection with its approved NDA for FENTORA®. The defendant then filed an ANDA, which included a Paragraph IV certification addressing those two patents. Id. at 1-2. Litigation followed, but was stayed pending the resolution of an appeal of a related case involving the validity of the same patents. Id. at 2.

Meanwhile, on January 4, 2011, the plaintiff was issued two new patents, which the plaintiff waited almost three months to list in the Orange Book in connection with FENTORA®. The Court noted that the defendant did not, and under 21 C.F.R. § 314.94(a)(12)(vi)(1995) was not required to, file an amended Paragraph IV certification because the plaintiff did not list the two new patents within 30 days of their issuance. Id. at 2. The plaintiff then sought to amend the pleadings in the stayed action to assert the two new patents, but the defendant declined to stipulate to such an amendment. Id. As a result, the plaintiff filed a new complaint against the defendant alleging infringement of the two new patents. Id. at 2-3.

In this second action, the defendant argued that the Court lacked subject matter jurisdiction because its ANDA did not include a Paragraph IV certification with respect to the two new patents, and there was, therefore, no artificial act of infringement under § 271(e)(2) creating jurisdiction. Id. at 3. Judge Robinson disagreed, explaining “Where, as here, the jurisdictional trigger was properly pulled by the filing of an ANDA and the initial Paragraph IV certification . . ., the court’s jurisdiction should not be confined simply because [the defendant] was not required to file[] an amended Paragraph IV certification. Clearly, [the defendant] was put on notice of the ‘832 and ‘833 patents.” Id. at 10. The Court “decline[d] to elevate form over substance where the purpose of the administrative process has been served and conclude[d] that jurisdiction under § 271(e)(2) [was] established.” Id. at 10-11. Moreover, the Court explained that it could still exercise jurisdiction over the dispute under the Declaratory Judgment Act if the defendant’s argument relating to § 271(e)(2) were accepted, finding that nothing in the Hatch-Waxman Act precludes a court from exercising jurisdiction based solely on the Declaratory Judgment Act. Id. at 11.

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Earlier this week, a jury reached a decision in the longstanding dispute between LadaTech LLC and Illumina Inc, finding that Illumina’s DNA sequencing products infringe LadaTech’s genome technology patent. The case has been pending since August 2009 and began a week-long jury trial on February 21. The jury returned a verdict on the same day that the trial ended, finding direct infringement, infringement by the doctrine of equivalents, indirect infringement by inducement, and that the patents are valid. Damages are bifurcated and have not yet been determined.

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Judge Andrews recently considered defendants’ motions to transfer in cases brought by patent owner Robocast against both Apple and Microsoft. See Robocast, Inc. v. Apple, Inc., C.A. No. 11-235-RGA (D. Del. Feb. 24, 2012). Although the cases are separate, both complaints alleged infringement of the same patent, and Microsoft admitted that its transfer motion “rises or falls with Apple’s.” Robocast was a Delaware corporation, but neither Robocast nor Apple had a principal place of business in Delaware. Robocast was headquartered in New York, and Apple sought transfer to the Northern District of California, where it was headquartered. Considering the Third Circuit’s Jumara factors, Judge Andrews found that those factors supported denying the motions to transfer.

The plaintiff’s forum preference and the convenience of the parties as indicated by relative physical and financial condition each supported the plaintiff’s position that the case should not be transferred. Id. at 3-4. Because infringement occurred “all over the United States, including Delaware . . . the claims arise in every judicial district.” Id. at 5. Furthermore, “Apple is omnipresent in everyday life. It is a large and powerful corporation. Robocast consists of its President and two employees. Its founder was at the oral argument on the present motion. Its financial condition pales in comparison to that of Apple.” Id. Because “[t]here is no reason to doubt that if this litigation turns into a war of attrition, Apple will have the upper hand,” the plaintiff’s choice of forum “significantly disfavors transfer.” Id. Apple also argued that “Robocast’s connection with Delaware is entitled to less weight because it is a ‘non-practicing entit[y],’” a characterization and conclusion which Robocast disputed. Id. at 9. Judge Andrews found, however, that while Robocast “has no physical connection to Delaware, its corporate citizenship is of long standing. There might be cases in which a nonpracticing entity’s connections to Delaware suggest reasons to discount that connection, but this is not one of them.” Id. (citations omitted).

The factors that did favor transfer included defendant’s forum preference, the convenience of the witnesses, the location of books and records, and practical considerations that could make the trial easy, expeditious, or inexpensive. Id. at 3-4. None of these, however, overwhelming supported transfer. The convenience of witnesses was largely speculative, and the location of books and records was “of marginal weight given that it is likely that Apple’s records can be produced at trial wherever trial is held.” Id. at 6-7. In reaching this conclusion, Judge Andrews distinguished In re Link_A_Media Devices Corp., 662 F.3d 1221 (Fed. Cir. 2011), noting that he “[did] not understand the Federal Circuit to have altered the Third Circuit’s focus on the issue being not so much where the witnesses and evidence are, but whether they can be produced in court.” Id. at 7 n.10. He continued, “I have considered In re Link_A_Media Devices Corp. . . . but I do not think it is particularly helpful in assessing the transfer request in this case, as its facts were very different.” Id. at 10.

The other Jumara factors were either inapplicable or did not favor one side or the other. Id. at 4. Judge Andrews therefore concluded: “In the present case there is a greater connection to Delaware, as the plaintiff is a Delaware corporation with its principal place of business close to Delaware but not to California, and, also of considerable significance, the plaintiff would be inconvenienced by transfer. Under Third Circuit law, considerable deference is given to the plaintiffs’ choice of forum. I think that when the plaintiff is a three-person corporation with Delaware as its longstanding corporate home, and the defendant is Apple, there ought to be a compelling reason to overcome plaintiff’s choice of forum.” Id. at 10 (citations omitted).

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Chief Judge Sleet recently issued a claim construction order in Pfizer Inc. v. Mylan Pharm., Inc., C.A. No. 10-528-GMS (D. Del. Feb. 21, 2012). Judge Sleet construed the following terms:
– “Catalytic activity” was given the meaning of the “inventor’s lexicography” in the patent specification.
– “Contacting” was also given the meaning given by the patentee in acting as its own lexicographer.
– “Abnormal condition” was given the meaning agreed to by the parties before the hearing.
In construing these terms, Judge Sleet rejected the defendant’s attempts to add a limitation that the method or effect must be in vitro. When the patentee wanted such an in vitro limitation in the patents-in-suit, it had expressly included one. Furthermore, the definitions in question clearly stated that an in vitro measurement method is merely one example among several possibilities.

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In Cooper Notification, Inc. v. Twitter, Inc., et al., C.A. No. 09-865-LPS (D. Del. Feb. 17, 2012), Judge Stark construed the following terms of U.S. Patent No. 7,409,428 entitled Systems and Methods for Messaging to Multiple Gateways:

“first message”
“gateway message”
“second message”
“communication gateway”
“message group”
“alert originator”
“reformat”
“form an address”

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In a recent Report and Recommendation in Wyeth Holdings Corp., et al. v. Sandoz, Inc., C.A. No. 09-955-LPS-CJB, Judge Burke concluded that plaintiffs’ motion to dismiss defendant’s inequitable conduct counterclaim and to strike defendant’s affirmative defense based on inequitable conduct should be denied. Id. at 1, 30. In this case, plaintiffs initially filed a complaint against defendant for patent infringement arising from defendant’s filing of an ANDA seeking to market a generic version of an injectable antibiotic drug. Id. a 1-2. In the complaint, plaintiffs alleged that defendant’s generic product infringed two of their patents, and sought a permanent injunction to bar defendant from the manufacture, sale, use or importation of that product in the U.S. Id. at 2. Defendant conceded (and actually stipulated to) infringement, but challenged both the validity and enforceability of the patents-in-suit, including counterclaiming that one of the patents-in-suit was “unenforceable based on several acts of inequitable conduct” and asserting “unenforceability based on inequitable conduct” as an affirmative defense. Id. at 2. In part, as bases for its allegations of inequitable conduct, defendant alleged that during prosecution of one of the patents-in-suit, plaintiffs “deceived the Examiner” by, among other things, “misrepresent[ing] the teachings of the prior art” and “omitt[ing] key information regarding experimental error and discrepancies in data.” Id. at 6.

In response to these allegations, plaintiffs filed a motion to dismiss defendant’s counterclaim for inequitable conduct and to strike the accompanying inequitable conduct affirmative defense. Id. at 2. Plaintiffs argued that, in light of the Fed. Cir.’s decision in Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir 2011), defendant’s inequitable conduct defense should be dismissed because defendant “did not plead any facts that would allow the Court to conclude that the single most reasonable inference from the applicants’ alleged conduct is that the applicants had the specific intent to deceive the PTO.” Id. at 11 (emphasis in original). Defendant countered that the “single most reasonable inference” language from Therasense did not apply and is not the appropriate standard. Id. at 12. Rather, in assessing the sufficiency of the intent prong of defendant’s inequitable conduct defense, the “whether deceptive intent could be ‘reasonably inferred’ from the facts as pled” standard articulated by the Fed. Cir. in Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312 (Fed. Cir. 2009) should be applied. Id. at 12 (brackets omitted). The Court agreed, holding that “in order to adequately plead the intent prong of an inequitable conduct defense, the claimant need only allege facts from which the Court could reasonably infer that the patent applicant made a deliberate decision to deceive the PTO.” Id. at 13-14 (emphasis in original).

Reconciling the Fed. Cir.’s language in Therasense and Exergen, the Court held that the single most reasonable inference requirement of Therasense was an “evidentiary standard that must be satisfied at the proof stage, not a pleading standard.” Id. at 14. In its analysis, the Court found that defendant had pled inequitable conduct with sufficient clarity to survive dismissal, satisfying both the “but-for” materiality and the specific intent to deceive prongs of the standard. Regarding the “but-for” materiality prong, the Court found: (1) that defendant had “properly and specifically identified the ‘who, what, where, when and how’ of the alleged material misrepresentations” id. at 17 (citation omitted) and (2) that there was a reasonable inference that one of the patens-in-suit would not have issued “but for the alleged misrepresentations” as pled by defendant. Id. at 19. Likewise, regarding the specific intent to deceive prong, the Court found that defendant had, indeed, “pled sufficient facts, with sufficient particularity, to give a reasonable inference that [plaintiff’s] representatives deliberately acted to deceive the PTO during the prosecution of [one of the patents-in-suit].” Id. at 25.

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Today, Judge Andrews issued a memorandum opinion finding that the Court could not exercise personal jurisdiction over seven of eight defendants. Serverside Group Limited, et al. v. CPI Card Group – Minnesota Inc., et al., C.A. No. 11-559-RGA (D. Del. Feb. 17, 2012). The plaintiffs in the case were an English company and a New York corporation, neither of which had business operations in Delaware. The first group of defendants was comprised of two Iowa corporations with principal places of business in Iowa and no operations in Delaware. The second group was comprised of six defendants, only one of which was a Delaware corporation and none of which had business operations in Delaware. The plaintiffs alleged that the Court should exercise personal jurisdiction over all eight defendants under Delaware’s long-arm statute, based on their allegation that each defendant “made, used, sold, and/or offered for sale infringing technology in Delaware.” The Court was not persuaded by the plaintiffs’ “boilerplate” jurisdictional allegations, and emphasized that despite attaching to their brief the results of a seemingly exhaustive scouring of the Internet for evidence that the defendants had sold or offered to sell infringing products in Delaware, no such evidence appeared to exist. In reaching this determination, the Court noted that “offers to sell” are defined by traditional contract analysis, and the plaintiffs’ suggestion that “advertisements that are in trade magazines that circulate in Delaware . . . [that] invite a call ‘for more information’ are not an offer to sell under a contract analysis.” Id. at 6 n.3. Similarly, “a webinar put on by one of the defendants that will discuss the advantages of [purportedly infringing technology] is not an ‘offer to sell.’” Id. at 6 n.3. Accordingly, the Court found that seven of the eight defendants were not subject to Delaware’s long-arm jurisdiction. Id. at 8. Finally, finding that the plaintiffs’ request for jurisdictional discovery was made without any citation of authority supporting their request, and mostly sought information the Court viewed as irrelevant to the long-arm jurisdiction analysis, Judge Andrews denied the plaintiffs’ request for jurisdictional discovery, explaining that the case would be transferred to the Northern District of Iowa under 28 U.S.C. § 1406(a) (as to the Iowa defendants), and indicating that further factual support would be needed to justify transferring the case against the remaining defendants to the District of Colorado to ensure that venue was one where the case “might have been brought.”

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The jury recently reached a verdict of validity and willful infringement against the defendants in Sunovion Pharmaceuticals Inc. v. Dey Pharma, L.P., C.A. No. 06-113-LPS (D. Del. Feb. 14, 2012). Judge Stark then entered the judgment of $18 million damages, subject to possible enhanced damages, post-judgment damages, and other relief as well as other claims and requests remaining pending before the court.

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