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On September 21, 2011, the United States District Court for the District of Delaware and the Delaware Chapter of the Federal Bar Association will present a Continuing Legal Education program on “Trial and Appellate Mediation.” The program will include a trial mediation panel, and appellate mediation panel and a practicum session.

The morning session will feature both panel presentations. The trial mediation panel will include a discussion with U.S. Magistrate Judge Mary Pat Thynge of the United States District Court for the District of Delaware, Vice Chancellor Donald F. Parsons, Jr. of the Delaware Court of Chancery, Andre G. Bouchard of Bouchard Margules & Friedlander, P.A., and David B. Stratton of Pepper Hamilton LLP. The appellate mediation panel will address the appellate mediator’s perspective as well as appellate mediation from the attorney’s point of view. The speakers for the appellate mediation panel include James M. Amend, Chief Circuit Mediator for the U.S. Court of Appeals for the Federal Circuit; Penny Conly Ellison, Circuit Mediator for the U.S. Court of Appeals for the Third Circuit; Frank E. Scherkenbach of Fish & Richardson; and Nancy Winkelman of Schnader Harrison Segal & Lewis LLP.

The afternoon session, featuring a practicum focused on mediation skills, will begin immediately after lunch. As part of this practicum session, Magistrate Judge Thynge will conduct a mock mediation based on a wrongful death case previously mediated by the Court. The practicum is designed to give mid-level associates and other practitioners an opportunity to learn the ins and outs of trial mediation from experienced practitioners, and to ask questions about mediation strategy.

The program has been approved for 6.0 Delaware CLE credits. As always, the program will be free to all members of the Delaware Chapter of the Federal Bar Association. Lunch will be provided at a cost of $15 per person. Space is limited for this program so please email Rocky Kravetz at Robert.kravetz@usdoj.gov if you would like to reserve a spot now.

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Last month, Judge Stark issued an opinion following a July bench trial in The Research Foundation of State Univ. of New York v. Mylan Pharma., Inc., C.A. No. 09-184-LPS (D. Del. August 26, 2011). This is a long opinion with a number of interesting points and findings of fact, and which ultimately found that one of the five patents was both valid and infringed. One interesting portion of the opinion discusses a reversal by the Court from an initial position it took in granting a preliminary injunction:

The Court recognizes there is further tension between today’s ruling and the following statement in the preliminary injunction opinion: “It follows that Mylan’s argument is that Mr. Ashley, the inventor, expressly defined key claim terms in a manner that had the consequence of excluding from the scope of his patent the very embodiment ofhis invention that his employer intended to practice. There is no support in the record for this highly improbable contention.”
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As the instant case proves, “highly improbable” does not mean “impossible.” At trial, unlike at the preliminary injunction (or claim construction) stage, Mylan presented a significant amount of evidence that demonstrated that a 40 mg daily administration of doxycycline – either 40 mg once-daily or 20 mg twice daily – does not not significantly inhibit the growth of microorganisms. It follows, then, that Oracea® and Periostat®, despite being identified as preferred and “especially preferred” embodiments of the Ashley Patents, respectively, are not actually embodiments ofthe asserted claims. Although unusual, this is the conclusion compelled by the record developed at trial.

Id. at 46-47. View the full opinion after the fold.

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In Silicon Economics, Inc. v. Financial Accounting Foundation, C.A. No. 11-163 (D. Del. August 17, 2011), Judge Baylson granted a motion to dismiss for lack of standing, after the plaintiff failed to show an actual injury.

The originates from the terms of service of the website of the Financial Accounting Standards Board (“FASB”). The founder of plaintiff Silicon Economics, Inc (“SEI”), Joel Jameson, apparently submitted comments to the FASB via its website; those comments included the idea that resulted in the patent at issue, which covers an accounting “equation.” Id. at 2. Later, Jameson realized that the terms and conditions of the website included a clause granting the FASB a license to use information and ideas submitted “for any purpose.” Id. at 3.

After noticing the terms, Jameson contacted the FASB; SEI now alleges that the FASB claimed an ownership interest in the patent. In response, SEI filed the present action (after attempting one in California), and asserts Sherman act claims, as well as California law unfair competition claims.

The Court dismissed all of the claims. SEI has no standing, because it cannot show any actual injury — the only alleged injury was to its reputation, but it provided no specifics. Further, it failed to allege sufficient facts in favor of its anti-trust claim, because it failed to show that the challenged conduct (the seeking of public comment) was commercial in nature. The Court did, however, grant leave to amend the complaint to address these issues.

Interestingly, the Court noted that counsel for the Defendants has “unconditionally renounced any ownership interest” in the patent. Id. at 17-18. Therefore, according to the Court, the “positions of the parties should be amenable to a settlement,” and that “prolonged litigation . . . do[es] not seem to be necessary.” Id.

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In Apeldyn Corp. v. AU Optronics Corp., C.A. No. 08-568-SLR (D. Del. Aug. 29, 2011), Special Master Poppiti recently recommended that plaintiff’s requested sanctions award be reduced from $89,747.54 to $47,241.54. Id. at 1. In determining the adequacy of documentation of Apeldyn’s fees associated with responding to an untimely expert report, the Special Master first noted that although “the descriptor ‘worked on’ [in attorney timekeeping records] is vague in and of itself, as it fails to convey to the reader the precise task being performed by the timekeeper[,]” the declarations at issue included “[a]mple description of specific tasks[.]” Id. at 14. The Special Master did, however, exclude from the lodestar calculation as inadequately documented all of the hours that “group[ed] together duplicative and non-duplicative tasks[.]” Id. at 16. The Special Master further excluded from the lodestar calculation (1) excessive hours in connection with responding to the untimely expert report in light of the fact “that approximately 70% of the [responsive report] is duplicative–in most instances word-for-word–of [the expert’s] earlier reports[,]” and (2) the hours of an attorney whose “role, it seem[ed], was to provide backup support” because the tasks he performed were “entirely duplicative of work already done by [other attorneys].” Id. at 17-19.

Next, addressing Apeldyn’s fees in connection with bringing the sanctions motion, Special Master Poppiti stated that the motion “did not involve complex issues of law, and Apeldyn did not cite any case law in its letter briefs, indicating that intensive legal research was not done.” Id. at 21. Thus, “[g]iven the straightforward issues involved, the brevity of the letter briefs, and the absence of case law in the briefs,” the Special Master excluded all excessive hours from the lodestar calculation. Id. at 21-22.

Finally, Special Master Poppiti stated that “Apeldyn is not entitled to receive reimbursement for fees or costs incurred in connection with preparing the June 27 Bill of Costs” because “Apeldyn did not request such fees in its first submittal on June 27, 2011″ and therefore “Apeldyn . . . waived any opportunity it once might have had to seek reimbursement for such fees.” Id. at 24. Further, Apeldyn’s “June 27 Bill of Costs lacked sufficient documentation[,]” and thus “it would be unfair to reward Apeldyn for preparing what the Special Master concluded to be a deficient submittal.” Id. at 24-25.

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In Ricoh Co. v. Oki Data Corp., C.A. No. 09-694-SLR (D. Del. Aug. 15, 2011), Judge Thynge interpreted Delaware’s long arm statute, which states that “‘any nonresident’ that ‘performs any character of work or service in the state’ is subject to personal jurisdiction[,]” to include counsel’s legal representation in this case — “[e]ven if the contact is as minimal as pro hac vice admission[.]” Id.at 8. Judge Thynge nonetheless held that Ricoh’s attempted subpoena of Oki Data’s pro hac vice counsel, a resident of Japan, was unenforceable due to improper service of process.

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In Alza Corporation v. Kremers Urban LLC, the Court construed the term “administering” as it appears in the patent-in-suit to mean “administering once daily.” C.A. No. 10-23-LPS, Memo. Op. (Aug. 29, 2011). Defendants argued that the claim language supported a construction of multiple dose administration. Id. at 4. The Court found that although the claim language favored a construction of multiple doses, “the remainder of the specification favors Plaintiffs’ position. . . .” Id. at 16. Specifically, the patent teaches away from a multiple dose administration by stressing the fact that the once a day treatement solved a problem in the prior art. Id. at 12-13.

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In Arcelormittal France v. AK Steel Corp., C.A. No. 10-050-SLR (D. Del. Aug. 25, 2011), plaintiffs unsuccessfully moved for JMOL on invalidity and for a new trial. Id. at 18. Plaintiffs’ motion for JMOL focused on (1) whether a particular prior art reference qualified as a printed publication, (2) whether that reference disclosed all limitations of the asserted patent, and (3) whether there was a motivation to combine that reference with other asserted prior art references. Id. at 5. After finding that the jury’s verdict of anticipation and obviousness was supported by substantial evidence, Judge Robinson rejected plaintiffs’ multiple arguments in support of their motion for a new trial. Id. at 11. For example, although “[p]laintiffs argue[d] that defendants’ experts improperly testified about two . . . prior art references,” the court found that (1) “plaintiffs never objected to this testimony at trial and, therefore, arguments pertaining to said testimony are waived” and (2) “even if objections to said testimony had been preserved, the testimony was merely explanatory in nature, and gave context for defendants’ experts’ understanding of the level of skill in the art.” Id. at 12-13. Thus, “even if the experts’ testimony was beyond the scope of the expert report, the error was harmless.” Id. at 14. Because the court denied both of plaintiffs’ motions, Judge Robinson denied defendants’ JMOL of noninfringement as moot. Id. at 18.

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Judge Robinson recently decided Honeywell’s renewed summary judgment motion on invalidity of the patent-in-suit and Honeywell’s summary judgment motion of no willful infringement after the Federal Circuit reversed in part the court’s opinion on invalidity under §102(g). Solvay, S.A. v. Honeywell Specialty Materials LLC, C.A. No. 06-557-SLR (D. Del. Aug. 26, 2011). Judge Robinson denied Honeywell’s motion for summary judgment of invalidity under 102(g). The court found that a Russian group, RSCAC, under research contract with Honeywell, qualified as “another inventor” who conceived the invention and reduced it to practice in this country. Id. at 6. The invention was conceived and reduced to practice in Russia and then RSCAC sent instructions to Honeywell who used the instructions to reduce the invention to practice in the United States. Id. However, Solvay raised a genuine issue of material fact as to whether RSCAC suppressed or concealed the invention because a confidentiality agreement between RSCAC and Honeywell precluded RSCAC from disclosing the invention. Id. at 9.

Judge Robinson granted Honeywell’s motion for summary judgment of no willful infringement, finding that Honeywell presented a credible invalidity defense. Id. at 13. It was irrelevant that the Federal Circuit ultimately rejected Honeywell’s 102(g) defense. Id. Judge Robinson also noted that “Solvay discredited its own contentions regarding the baselessness of Honeywell’s invalidity defenses by failing to move for summary judgment of validity or willfulness[.]” Id. at 13-14.

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Earlier this month, the ABA Journal began accepting nominations for its annual list of the 100 best legal blogs (“blawg”). They are accepting “Amici Forms” where you can nominate a blog that you read regularly and you think others should know about. The form is extremely simple and aside from some information about the person making the nomination, asks only “Why are you a fan of this Blawg?” Nominations must be submitted by Friday, September 9.

The Delaware IP Law Blog was the first IP Blog in Delaware and we work to keep you up to date with the latest decisions and news from the district court in an unbiased, yet informative way. Although our blog covers only a specific region, our readers span the globe and share one thing – an interest in some of the most interesting and important decisions in intellectual property.

A link to the amici form is provided below.

http://www.abajournal.com/blawgs/blawg100_submit/

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In a recent ANDA case involving valganciclovir hydrochloride 450 mg tablets, Judge Sleet construed the term “compound 2-(2-amino-l ,6-dihydro-6-oxo-purin-9-yl)methoxy-3-hydroxy-lpropanyl-L-valinate hydrochloride in crystalline form” to mean “valganciclovir hydrochloride in a physical form having molecules arranged in a regularly repeating three dimensional pattern.”

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