Published on:

By

In CIMA Labs Inc. v. Mylan Pharmaceuticals, Inc., C.A. No. 10-625-LPS (D. Del. Apr. 18, 2011), Judge Stark granted the plaintiffs’ motion to stay pending resolution of the PTO’s reexaminations of the patents-in-suit.

The plaintiffs held patents covering orally-disintegrating clozapine tablets in certain dosages. In July 2010, the plaintiffs initiated this Hatch-Waxman patent infringement action against the defendants after the defendants filed an ANDA seeking approval to market a generic orally-disintegrating clozapine product. Id. at 1-2.

Judge Stark noted that “[w]hether or not to stay litigation pending reexamination by the PTO of the patents-in-suit is a matter left to the Court’s discretion” and typically requires an evaluation of three factors: “(1) whether a stay will simplify the issues and trial of the case, (2) whether discovery is complete and a trial date has been set, and (3) whether a stay would unduly prejudice or present a clear tactical disadvantage to the non-moving party.” Id. at 4.

Applying these factors, Judge Stark found that (1) a stay would simplify the issues and trial of the case because, inter alia, all disputed claims “currently stand rejected in the reexaminations[,]” id. at 5-6, (2) no discovery had taken place and no “milestone dates” had been set (“the instant lawsuit is in its infancy”), id. at 6-7, and (3) “a stay would impose no undue prejudice to Mylan sufficient to outweigh the other considerations[,]” id. at 7. On balance, the court found that these factors “tip the interests against proceeding at this time with this litigation.” Id. at 7-8.

Continue reading

Published on:

Judge Stark recently decided defendant Nikon Americas, Inc.’s motion to dismiss for failure to state a claim. Tarkus Imaging, Inc. v. Adobe Systems, Inc., et al., C.A. No. 10-63-LPS (D. Del. Apr. 21, 2011). Nikon Americas’ motion was premised on the fact that because Nikon Americas was a holding company, it could not infringe the patent-in-suit. Id. at 1. Specifically, Nikon Americas’ argued that because it does not “make, use, offer to sell, sell, or import into the United States the allegedly infringing products or, in fact, any products whatsoever[,]” it cannot be found to infringe the patent-in-suit. Id. at 3 (internal quotations omitted). Judge Stark found that plaintiff had alleged facts sufficient to survive Nikon Americas’ motion to dismiss and that Nikon Americas’ “general denial” of infringement “does not provide a basis to dismiss this case.” Id. at 4. “Accepting [plaintiff’s] well-pleaded allegations as true, this Court finds that it is at least plausible to believe that [Nikon Americas] infringes the [patent-in-suit].” Id. at 5.

Continue reading

Published on:

By

In Boston Scientific Corp. v. Cordis Corp., C.A. No. 10-315-SLR (D. Del. Apr. 13, 2011), a patent infringement case dealing with cardiovascular stents, Judge Robinson recently decided several motions and granted partial summary judgment sua sponte on the date of hypothetical negotiation. Judge Robinson denied the defendant’s motion to stay the trial on damages and willfulness pending reexamination, finding that all of the Dentsply factors weighed against staying the litigation: (1) discovery is complete and trial is imminent, (2) “[a] final determination by the PTO could take years,” (3) the request for reexamination was filed “several years after the end of the jury trial” establishing liability, (4) the motion to stay was not filed until almost a year after the request for reexamination, (5) the reexamination proceedings are still in their early stages, and (6) the parties involved are direct competitors. Id. at 7-10. The court then granted the plaintiffs’ motion for summary judgment of infringement, finding that the accused stent “has the same stent architecture as the [other] stents that were found to infringe” in an earlier trial. Id. at 10-12. Finally, before deciding two Daubert motions related to expert opinions on royalties, Judge Robinson granted summary judgment sua sponte on the date of hypothetical negotiation. Id. at 15, 18. The court found that although the defendant marketed infringing cardiovascular stents in 1999, the new “stent is distinct from the [architecturally equivalent] stents previously marketed by Cordis.” Id. at 12-14. Thus, the marketing of the new stent “constituted a separate act of infringement” and the date of hypothetical negotiation was September 2009, the date when the new stent was first sold in the United States. Id. at 14-15.

Continue reading

By
Posted in: Sue L. Robinson
Published on:
Updated:
Published on:

In Xpoint Technologies, Inc. v. Toshiba Corp., et al., C.A. 09-628-SLR (D. Del. Apr. 8, 2011), Special Master Bechtle recently order plaintiff to supplement its infringement contentions, following the well-settled practice in this District that a plaintiff must specifically identify what products are accused in response to a properly served contention interrogatory. Plaintiff had previously refused to update its claim charts because it needed time to analyze recent discovery and confer with its experts. Id. at 3. Special Master Bechtle noted that “Toshiba is entitled to know what Toshiba products are contended by Xpoint to be infringement of Xpoint’s patents.” Id. If Xpoint has already specifically identified which Toshiba products are at issue in the litigation, “it should say so[, and if] it has not made those contentions yet, it should, and it should do so now.” Id. at 4. Special Master Bechtle also found that while plaintiff had an obligation to respond to Toshiba’s contention interrogatory with what products infringe and what claims and claim elements are infringed, plaintiff’s precise theory of infringement is “left to another day when the plaintiff includes in it’s expert reports and exert discovery the reasons, opinions and theories whey the identified productions and components of the defendant infringe on the patent or patents of the plaintiff.” Id. at 5.

Continue reading

Published on:

By

In Carl Zeiss Meditec, Inc. v. Xoft, Inc., C.A. No. 10-308-LPS-MPT (D. Del. Apr. 5, 2011), Judge Thynge recently granted the plaintiffs’ motion for leave to amend their complaint. After the defendant, Xoft, answered plaintiffs’ first amended complaint, Xoft was acquired by iCAD. Id. at 1-2. Xoft opposed the motion to amend, claiming (1) that it was an incorrectly filed Rule 15(d) motion to supplement and (2) that it failed to allege facts sufficient to add iCAD as a defendant. Id. at 6. Although Judge Thynge treated the motion to amend as a motion to supplement, she granted the motion, noting that the standard for a Rule 15(d) motion to supplement is essentially the same as a Rule 15(a) motion for leave to amend a complaint. Id. at 7. Judge Thynge further held that the facts alleged in the supplemental complaint in support of the plaintiffs’ inducement claim were sufficient to meet the pleading requirements of Iqbal and Twombly. Id. Allegations that the merger agreement between Xoft and iCAD permitted the sale of accused infringing products, that Xoft directly infringed the plaintiffs’ patents, and that iCAD had knowledge of these alleged facts, were sufficient “to apprise iCAD of the claims against it.” Id. at 8.

Continue reading

Published on:

By

In Ladatech, LLC v. Illumina, Inc., No. 09-627-SLR (D. Del. Mar. 29, 2011), Special Master David A. White required defendants Illumina, Inc. and Solexa, Inc. (collectively “Illumina”) to produce witnesses pursuant to Rule 30(b)(6) to testify on its behalf as to three topics set forth in LadaTech’s notice of deposition.

Illumina had objected to the topics on grounds of legal privilege and relevance (and, for one of those topics, vagueness and ambiguity).

The first topic concerned Illumina’s decision to purchase Solexa. The scope of this topic was limited by the Special Master to inquiries “reasonably calculated to lead to the discovery of admissible evidence.” Id. at 7.

The second topic concerned “(a) the date Illumina first became aware of the patent-in-suit; (b) any prior art searches related to the patent-in-suit; (c) any analysis of the validity or enforceability of the patent-in-suit; (d) any analysis of possible infringement of the patent-in-suit . . . ; and (e) any communications with customers related to the patent-in-suit or this litigation.” Id. at 8. The Special Master required Illumina to produce a witness for this topic despite Illumina’s contention of “burden and expense[.]” Id. at 9.

The third topic concerned reexamination of the patent-in-suit. Illumina argued that this topic concerned the issue of willfulness — an issue bifurcated from issues of infringement and invalidity by the Court’s Scheduling Order. While the Special Master agreed that the topic may concern willfulness, the topic’s “relevance to the initial phase of this litigation cannot be ignored.” Id. at 10.

Continue reading

By
Posted in: Special Master
Published on:
Updated:
Published on:

By

In an order dated April 8, 2011, after learning that the 30 month stay in the case was reaching its end, Judge Sue L. Robinson issued a sua sponte injunction of several generic defendants that prohibits the defendants from launching generic versions of the drug at issue until the court issues its opinion in the case. In Re Cyclobenzaprine Hydrochloride Extended Release Capsule Patent Litigation, C.A. No. 09-MD-2118-SLR, Order (D. Del. April 8, 2011).

Continue reading

Published on:

By

Sadly, we say goodbye to one of the Delaware IP Law Blog’s co-creators and authors, Andrew Lundgren, as he leaves YCST to start a new path in his legal career as in-house counsel. Andrew played a pivotal role in the creation and maintenance of the blog and has authored countless posts since the blog’s first day back in September 2006. I know I can speak for all of us when I say he will be sorely missed. We wish Andrew all the best in his new endeavor!

By
Posted in: Featured
Published on:
Updated:
Published on:

By

A recent decision by District of Delaware Special Master David A. White offers a rare precedent for disputes concerning the sequence of discovery. In the underlying infringement litigation, eBay objected to XPRT’s 30(b)(6) notice on the ground that it prematurely sought a deposition before document discovery concluded. XPRT insisted that the deposition proceed, and appeared at the noticed time.

eBay did not appear, and XPRT followed with a motion to compel eBay to designate a witness. The Court agreed that, absent a request for judicial intervention, eBay should have produced its witness:

“While one party may prefer that discovery be taken in a specific manner, the Federal Rules provide otherwise, and the objecting party bears responsibility for seeking appropriate relief. . . . Similarly, where the parties disagree as to the orderly management of discovery and discussions have reached an impasse . . . , the objecting party must seek relief from the requested discovery. eBay took no affirmative action in this instance, thereby depriving the Court of the opportunity to determine whether such arguments warranted relief.”

In other words, the party objecting to the deposition notice must preserve that objection by doing more than simply boycotting the deposition.

XPRT Ventures LLC v. eBay Inc., C.A. No. 10-595-SLR (D. Del. Mar. 30, 2011) (White, S.M.) (Letter Op.).

By
Posted in: Special Master
Published on:
Updated:
Published on:

By

In Mylan Pharmaceuticals Inc. v. Galderma Laboratories, Inc., Civ. No. 10-892-LPS (D. Del. Mar. 24, 2011), Judge Stark construed two claim terms:

Term 1: “steady state blood levels of doxycycline of a minimum of 0.1 μg/ml and a maximum of 1.0 μg/ml”
Meaning: “steady state plasma concentrations of doxycycline of a minimum of 0.1 μg/ml and a maximum of 1.0 μg/ml”
Term 2: “steady state blood levels of doxycycline of between 0.3 μg/ml to 0.8 μg/ml”
Meaning: “steady state plasma concentrations of doxycycline of between 0.3 μg/ml to 0.8 μg/ml”

Continue reading

Contact Information