For over 65 years, the New Jersey Intellectual Property Law Association (NJIPLA) has annually presented the Jefferson Medal to someone who has made exceptional contributions to the field of intellectual property law. On June 10, 2016, the NJIPLA will present the 2016 Jefferson Medal to The Honorable Sue L. Robinson, United States District Court Judge for the United States District Court for the District of Delaware. Additional information is below.
In the post-trial opinion in Genzyme Corporation, et al. v. Dr. Reddy’s Laboratories, et al., C.A. No. 13-1506-GMS (Cons.) (D. Del. May 11, 2016), Judge Gregory M. Sleet found that the single asserted claim of the patent-in-suit was not obvious. Plaintiffs’ brand drug “is an accepted standard of care for a patient who fails to mobilize the minimum number of stem and/or progenitor cells needed for transplant.” Id. at 10.
Included in the Court’s post-trial findings of fact was the conclusion that a reference relied on by Defendants (“Hendrix”) was not prior art. The reference focused on “evaluating the safety and pharmacology of . . . a drug for treating HIV,” and had been considered by the Examiner during prosecution of the patent-in-suit and rejected as not prior art. Id. at 15. The Court concluded that “[w]hile from today’s perspective the relationship between Hendrix [the asserted claim] may seem clear . . . Defendants’ relevance analysis is colored by hindsight.” Id. at 16. For example, Defendants’ expert “improperly based his opinion on his own experiments . . . not prior art.” Id. at 16. And the same expert was conducting research relevant to the subject matter of the prior art when Hendrix was published but did not remember reading it. Id. Further, “the USPTO Examiner thoroughly considered Hendrix and concluded that it was non-analogous art . . . . There is a presumption that decisions made by the PTO Examiner are valid. These decisions are particularly pertinent because they were made contemporaneously with full view of the art at the time and not tainted by hindsight.” Id. at 17.
Magistrate Judge Christopher J. Burke recently considered declaratory judgment Plaintiff Alstom Grid LLC’s request to stay this case pending the Court’s resolution of its Motion for Judgment on the Pleadings based on lack of patentability under 35 U.S.C. § 101. Alstom Grid LLC v. Certified Measurement, LLC, C.A. No. 15-72-LPS-CJB (D. Del. May 16, 2016). Judge Burke considered the three factors governing stay motions and ultimately denied the requested stay. Regarding the simplification factor, Judge Burke noted that due to the number of asserted patents and claims, there is a likelihood that “at least some number of claims will survive the motion to dismiss[,]” even if it is granted. Id. at 2. Regarding the status of the litigation, Judge Burke noted that the stay was requested 14 months into the litigation and well into the claim construction process. Id. at 2-3. Finally, regarding undue prejudice to the non-moving party, Judge Burke noted that Alstom may be seeking “an inappropriate tactical advantage” by requesting the stay now, rather than when it filed its § 101 motion in September 2015. Id. at 3. In fact, Alstom opposed Certified Measurement’s motion to stay pending inter partes review proceedings. Id. at 3. In denying the stay request, the Court also noted that the case had already “been stayed once, to little beneficial effect.” Id. at 4 n.3.
Judge Richard G. Andrews recently provided guidance on the redaction of public hearing transcripts in ruling on an unopposed motion to redact. Delaware Display Group, LLC v. Lenovo Holding Co., et al., C.A. Nos. 13-2018-RGA, -2109-RGA, -2112-RGA (D. Del. May. 10, 2016). Judge Andrews explained that the fact that information is designated as attorneys’ eyes only under a protective order is not determinative of whether it is appropriately redacted from a public hearing transcript. That is because once the information is revealed in a public hearing, “it is in the public interest to be able to understand the proceedings before a judge, and redaction of the transcript hinders that public interest.” The Court recognized that there are exceptions, such as where the information contains “pricing terms in license agreements, some other non-public financial information, trade secrets, and other proprietary technology[,]” but added that this type of information can be hinted at during a hearing without threatening a “clearly defined and serious injury” that would justify redacting it from the public record under Third Circuit law. Judge Andrews added that even this type of information is less likely to warrant redaction where it “is old, or general, or already in the public record, and was relevant to the judicial proceeding.”
In a recent Memorandum Order, Judge Sue L. Robinson denied defendant’s motion for attorney fees. YYZ, LLC v. Pegasystems, Inc., C.A. No. 13-581-SLR (D. Del. May 2, 2016). The court previously issued an opinion and order granting defendant’s motion for summary judgment of invalidity and denying plaintiff’s cross-motion for summary judgment of validity.
First, Judge Robinson rejected defendant’s argument that that this is an exceptional case because plaintiff “knew its claims were objectively invalid over the prior art.” Id. at 3. Defendant focused on plaintiff’s “articulation of the ‘inventive concept’ in its 35 U.S.C § 101 briefing, arguing that such concept identified ‘claim elements that [plaintiff] had already conceded were known in the prior art, many of which were not even recited in the patent claims.’” Id. Judge Robinson noted, however, that the court expended “considerable effort in reaching its invalidity determination and analyzed those very [invalidity] arguments in its opinion.” Id. Judge Robinson found that defendant’s “characterization of plaintiff’s arguments as ‘reckless’ and its claims as ‘clearly invalid’ is in contradiction to the court’s position that the § 101 analysis is an evolving state of the law and a difficult exercise, which does not lend itself to, e.g., shifting fees pursuant to 35 U.S.C. § 285.” Id.
Defendant also argued “that the applicant made material misrepresentations to the PTO to procure the patents-in-suit (which may or may not rise to the level of inequitable conduct) adding to the exceptionality of the case at bar.” Id. at 4. In addition, defendant argued that “plaintiff also failed throughout the litigation to ‘clearly point out how [defendant] could possibly infringe the claims.’” Id. Judge Robinson rejected both of these arguments. First, Judge Robinson noted that the Court had granted plaintiff’s request that the parties brief the motion for invalidity pursuant to § 101 early and that the court stay all deadlines pending the court’s decision. Id. Judge Robinson explained that “[a]t the attorney fee stage, the court will not evaluate the parties’ arguments regarding inequitable conduct (not asserted by defendant as a defense)” or “the sufficiency of plaintiff’s infringement contentions.” Id. According to Judge Robinson, defendant’s arguments “would have the court resolve the issue of infringement of an invalid patent on an incomplete record.” Id.
Judge Sue L. Robinson recently decided various evidentiary disputes during trial. SRI Int’l Inc. v. Cisco Sys., Inc., C.A. No. 13-1534-SLR (D. Del. May 9, 2016). Judge Robinson previously decided motions for summary judgment and pre-trial evidentiary disputes. Judge Robinson precluded Cisco from presenting its §102(g) defense to the jury because, prior to the letters submitted regarding this dispute, Cisco had failed to “provide its allegations as to the full breadth” of its §102(g) defense. Id. at 1-2. Judge Robinson also decided the permissible scope of a late-disclosed fact witness who was also the designated corporate representative sitting at counsel table during trial. Judge Robinson limited the witnesses’ testimony based on the fact that plaintiff was prejudiced by the insufficient disclosure of the bases for the witness’ testimony, as well as the fact that the witness was not sequestered. Id. at 2-3.
Judge Richard G. Andrews recently denied defendants’ motion to exclude plaintiffs’ expert from testifying at a bench trial regarding nonobviousness. Sanofi, et al. v. Glenmark Pharmaceuticals Inc., USA, et al., No. 14-264-RGA (D. Del. May 12, 2016). Judge Andrews first noted that the “gate-keeper function” of a trial judge is not as important when a judge, rather than a jury, is the trier of fact. Id. at 1. In support of their motion, defendants argued that plaintiffs’ expert was not a person of ordinary skill in the art (“POSA”) and, therefore, could not “opine as to whether the E/A post-hoc analyses would lead a POSA to reasonably expect that dronedarone would reduce cardiovascular hospitalization.” Id. at 2. Judge Andrews disagreed because plaintiffs’ expert had “technical expertise on a relevant aspect of the pertinent art” and was qualified “to testify on how medical professionals interpret clinical trial data.” Id. Defendants also argued that the expert’s testimony would be duplicative of the testimony of another of plaintiffs’ experts. Id. at 3. Judge Andrews noted that while the Court does not permit duplicative testimony from experts, defendants can make an appropriate objection at trial, and, therefore, denied defendants’ motion without prejudice to renew upon a properly preserved objection. Id.
Following Judge Robinson’s decision in March that the patents-in-suit in this case were not invalid under Section 101, the defendant, AOL, filed a motion to certify the validity decision for interlocutors appeal. Judge Robinson denied the motion, finding that the issue presented was a controlling question of law and could advance the ultimate termination of the litigation, but exercising her discretion not to certify the question. Judge Robinson explained that “the same may be said of many other grounds of invalidity that are questions of law” and certification “is not meant to provide early review of difficult rulings in hard cases.” Improved Search LLC v. AOL Inc., C.A. No. 15-262-SLR, Memo. Or. at 3 (D. Del. May 5, 2016) (internal quotations omitted). Moreover, the fact that Judge Robinson “acknowledged the uncertainty in the developing law under § 101 cannot be the basis for certifying each district court decision on a § 101 motion to the Federal Circuit for review. Given the current popularity of such motions, the certification of each denied motion would surely cause more harm than good and would certainly result in piecemeal litigation.” Id. at 3-4.
In Integra Lifesciences Corp., et al. v. Hyperbranch Medical Technology, Inc., C.A. No. 15-819-LPS-CJB (D. Del. Apr. 20, 2016) (public version released May 4, 2016), Magistrate Judge Christopher J. Burke denied Defendant’s motion to transfer to the Middle District of North Carolina, even where the Court concluded that many Jumara factors favored transfer and few affirmatively disfavored it. Plaintiffs were Delaware companies with principle places of business in New Jersey and Massachusetts, and Defendant was also a Delaware company with its headquarters, and all of its thirteen employees, in or around North Carolina.
In evaluating the Jumara factors, the Court concluded that most of the private interest factors did weigh in favor of transfer (some squarely, such as Defendant’s forum preference, and some minimally, such as convenience of the parties), that all public interest factors were neutral, and “acknowledge[d] that [Defendant] has pointed to a number of connections between the Middle District of North Carolina and the facts or people involved in this case. . . . And yet a close examination of at least some of those factors indicates that they may not actually have much of a practical impact here.” Id. at 21. Additionally, the Court distinguished cases cited by Defendant where transfer was granted as being situations where, inter alia, the plaintiffs were not incorporated in Delaware. Id. at 22. The Court summarized its findings as follows:
[i]n the end, the Court is prepared to say that the balance of convenience is in favor of [Defendant]. But the Court cannot conclude that this balance “is strongly in favor of” [Defendant]. . . . Even a quick read of the Complaint renders it understandable why this case was brought in Delaware. If Plaintiffs did not wish to file the suit in the district where [Defendant] has its headquarters, they would almost certainly choose the District where all five parties to the litigation are incorporated or formed – a District that is a neighbor to New Jersey, where the principle places of business of three of the four Plaintiffs can be found. In light of the entire record, the Court finds that denial of [Defendant’s] Motion is warranted.
Chief Magistrate Judge Mary Pat Thynge recently found that a plaintiff’s motion to compel sought discovery that was disproportional under Rule 26. AVM Technologies, LLC v. Intel Corp., C.A. No. 15-33-RGA/MPT (D. Del. May 3, 2016). Specifically, the plaintiff sought discovery of “products that are not accused and pre-date the accused products because documents created when features were introduced would more likely address their purpose and the problems to be resolved.” Such information, the plaintiff argued, “would refuse Intel’s defense of lack of utility, noninfringing technology and also Intel’s arguments of accidental occurrence.” Intel argued in response that it had produced a substantial number of documents relating to, among others, the immediate predecessor generations of products not accused.” Intel added that the plaintiff’s motion, if granted, would require Intel to search and produce “a range of documents covering over 20 years” relating to “nearly every microprocessor made by Intel.” Judge Thynge focused on the proportionality requirement of Rule 26, and explained that the Court is required to “evaluate the parties’ arguments and reasoning for or against the requested production on the bases of the production sought, the other production to date, the degree of the requested production’s relevance, and the burdens imposed on the party from whom the production is requested.” In post-hearing submissions, the plaintiff accepted Intel’s compromise offer to search a high level database, and to then search across hits from that database using the search terms requested by the plaintiff. As a result, Judge Thynge denied the plaintiff’s motion but ordered Intel to perform the agreed upon searches.