August 6, 2012

Joinder proper for claims stemming from defendants' use a third-party's gene expression system in their manufacturing processes

Judge Sue L. Robinson recently denied defendant Alexion's motion to dismiss Novartis's complaint for improper joinder. Novartis Vaccines & Diagnostics, Inc. v. Medimmune, LLC, et al., C.A. No. 11-084-SLR (D. Del. Aug. 2, 2012). Novartis's complaint alleged that defendants infringed its patent by, among other things, the use of "a commercial gene expression system manufactured by non-party Lonza Group AG . . as a common step in what may otherwise be divergent manufacturing processes." Id. at 2-3. Alexion argued that joinder was improper because the defendants use differing manufacturing processes that result in different drug products. Id. at 5. Judge Robinson noted, however, that because defendants modify and incorporate Lonza's system into their own manufacturing processes, "there is necessarily some degree of overlap in defendants' manufacturing processes[.]" Id. at 6. Judge Robinson acknowledged that defendants didn't have a "tangible business or legal relationship[,]" but noted that the absence of such a relationship is "just one of several considerations when determining whether defendants' actions are part of the same transaction, occurrence, or series of transactions or occurrences." Id. In addition, the court found that it would be inefficient "to construe claims and determine invalidity separately for each defendant[,] and the parties' stipulated protective order would alleviate any concerns that defendants would have to disclose sensitive business information to co-defendants who are also potential competitors. Id. at 7.

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August 3, 2012

Judge Robinson grants-in-part plaintiff’s motion to strike finding affirmative defense of invalidity inappropriate due to assignor estoppel

In Juniper Networks, Inc. v. Palo Alto Networks, Inc., C.A. No. 11-1258-SLR (D. Del. Aug. 2, 2012), Judge Robinson granted-in-part plaintiff’s motion to strike defendant’s affirmative defense of invalidity finding that the doctrine of assignor estoppel barred such a defense as to one of the patents-in-suit. Plaintiff argued that the inventors of the patents-in-suit were issued the patents while employed by plaintiff. Id. at 2-3. They subsequently left plaintiff to start another company (the defendant) and brought to defendant “the very same technology that they had previously developed and then assigned to [plaintiff] during their employment.” Id. at 3. Defendant disputed these facts arguing, among other things, that the inventors were not officers or founders of defendant. Id. at 2.

Judge Robinson noted that the Federal Circuit “reaffirmed the existence of the doctrine of assignor estoppel” in Diamond Scientific Co. v. Ambico, Inc., 848 F.2d 1220 (Fed. Cir. 1988). In Diamond, the Federal Circuit explained that assignor estoppel “is an equitable doctrine that prevents one who assigned the rights to a patent (or patent application)[, or other parties in privity with the assignor,] from later contending that what was assigned was a nullity” Id. at 4 (quoting Diamond, 848 F.2d 1224).

As to four of the patents-in-suit, Judge Robinson denied plaintiff’s motion because the issue of privity between the inventors and defendant could not be determined at “the pleadings stage” and that summary judgment was a “more appropriate venue[.]” Id. at 8-9. “Because the determination of privity . . . with respect to these four patents is a fact-sensitive inquiry that must be resolved outside the pleadings, and given the standard of review applicable to motions to strike, the court denies plaintiff’s motion at this time.” Id. at 9. Judge Robinson similarly denied plaintiff’s motion as to the fifth patent-in-suit because only one of the two inventors assigned his rights to plaintiff, which would require plaintiff to prove assignment by other means. Id. at 9-10. But, as to the sixth patent-in-suit, the sole inventor indisputably assigned the patent to plaintiff and he acknowledged being a founder of defendant, thereby establishing privity. Judge Robinson, therefore, granted plaintiff’s motion striking defendant’s invalidity defense as to that patent. Id. at 10.

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July 9, 2012

Judge Robinson grants motion to maintain status quo ante pending appeal of order denying preliminary injunction.

Judge Robinson recently granted a Rule 62(c) motion to maintain the status quo ante pending the appeal of an order denying a preliminary injunction. Butamax Advanced Biofuels LLC v. Gevo, Inc., C.A. No. 11-54-SLR (D. Del. July 6, 2012). The Court considered four factors in deciding whether to grant the motion, and added that the factors need not be given equal weight: “(1) whether the stay applicant has made a strong showing that he is likely to succeed on the merits; (2) whether the applicant will be irreparably injured absent a stay; (3) whether issuance of the stay will substantially injure the other parties interested in the proceeding; and (4) where the public interest lies.” Id. at 2 (citing Hilton v. Braunskill, 481 U.S. 770, 776 (1987); Standard Havens Prods., Inc. v. Gencor Indus., Inc., 897 F.2d 511, 512 (5th Cir. 1990)). Although the Court previously found that a preliminary injunction was not warranted because the plaintiff was unlikely to succeed on its infringement claim in light of the Court’s construction of certain claim terms, (see June 19, 2002 memorandum opinion), Judge Robinson explained that “the court readily acknowledges that the Federal Circuit could disagree with the court’s construction of these [terms] and, consequently, its ultimate conclusions.” Id. at 3. Further, the Court explained, “if the Federal Circuit reverses and finds the ‘899 patent valid and infringed, plaintiff will suffer irreparable harm…” Id. at 4. In addressing the equities, the Court considered that the defendant had argued previously that an injunction was unnecessary because “the parties were not head to head competitors in the automotive fuel blending industry.” Id. at 5 (internal quotation marks omitted). Under the circumstances, the Court explained, “it does not strike the court as inequitable to require defendant to restrict its business efforts pending appeal consistent with its representations in this litigation.” Id. at 5. The Court granted the plaintiff’s motion, “conditioned on plaintiff’s seeking … an expedited appeal … and posting a bond with the court.” Id. at 6 (emphasis in original).

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June 27, 2012

Special Master Denies Plaintiff’s Motion to Permit Corporate Representatives Access to Defendants’ “Attorneys’ Eyes Only” Information

In Apeldyn Corp. v. AU Optronics Corp., et al., C.A. No. 08-568-SLR (D. Del. June 13, 2012), the Special Master recently issued a Report and Recommendation recommending that plaintiff’s motion to modify the protective order to permit plaintiff’s corporate representatives to have access to information designated Attorneys’ Eyes Only be denied. Id. at 1. In the motion, plaintiff sought modification of the protective order to permit two of its corporate representatives access to “CONFIDENTIAL – ATTORNEY’S EYES ONLY” information relating to defendants’ motions for summary judgment of non-infringement. Id. at 3. Plaintiff argued that such access was necessary for, among other reasons, its corporate representatives to: (1) “assist fully in the preparation of the briefs in the appeal of summary judgment”; (2) “manage outside litigation counsel”; and (3) “assist with the case as it progresses.” Id. at 3. The Special Master disagreed. In its analysis, the Special Master cited and applied the 3d Cir.’s decision in Pansy v. Borough of Stroudsburg, 23 F.3d 772, 790 (3d Cir. 1994) for determining whether modification of the protective order was warranted. Id. at 4. In applying the Pansy test, the Special Master concluded that permitting disclosure of defendants’ attorneys’ eyes only information to plaintiff’s corporate representatives would not “promote fairness and efficiency” in this case and was “outweighed” by the injury to the defendants that might result from such disclosure. Id. at 8, 12. The Special Master also concluded that plaintiff’s need for the information and plaintiff's stated reasons for modification of the protective order did not outweigh and were insufficient to overcome the “risk of inadvertent disclosure of Defendants’ Attorneys’ Eyes Only information to third parties which might result in competitive harm to Defendants.” Id. at 16.

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June 27, 2012

Judge Robinson: Summary Judgment of Non-Infringement for Boston Scientific

With a July trial looming in the ongoing “stent wars” between Johnson and Johnson affiliate Cordis and Boston Scientific, Judge Robinson recently granted summary judgment of non-infringement to Boston Scientific. Cordis Corp. v. Boston Scientific Corp., C.A. No. 10-39-SLR (D. Del. June 19, 2012).

The Court construed the claim terms in question in accordance a previous finding that Boston Scientific did not infringe related patents with similar claim terms, which was affirmed by the Federal Circuit. The Court then granted Boston Scientific’s motion for summary judgment on the grounds that Cordis could not “show that the . . . stent meets the ‘undulating’ or ‘circumferentially extending turn back portion’ limitations of the asserted patents” under a construction consistent with the Federal Circuit’s opinion. Id. at 26.

Boston Scientific also moved for summary judgment that Cordis’s patent rights were exhausted because Cordis licensed the use of its patents to Abbott Laboratories, and Abbott’s subsequent sales of stents to Boston Scientific for resale were authorized. Resolution of this issue depended on interpretation of the terms “merger” and “consolidation” in the license agreement between Cordis and Abbott, which provided that Cordis could terminate the license if Abbott was involved in a merger or consolidation with a “major competitor.” Abbott subsequently acquired ACS, a division of Guidant. Although ACS was a major competitor under the license agreement, the Court applied the Delaware statutory definition of the terms “merger” and “consolidation” and found that no such merger or consolidation had occurred between Abbott and ACS. Id. at 17. The Court, therefore, also granted Boston Scientific’s motion for summary judgment on the grounds of patent exhaustion, finding that Abbott’s rights to the patents had not been extinguished and Abbott was authorized to sell the stents to Boston Scientific.

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June 26, 2012

Judge Robinson denies motion for preliminary injunction

Judge Robinson recently denied a motion for a preliminary injunction, finding that the proper construction of a disputed claim term rendered the plaintiff unlikely to prevail on its infringement claim, and finding further that the defendant raised a substantial question concerning validity. Butamax Advanced Biofuels LLC v. Gevo, Inc., C.A. No. 11-54-SLR (D. Del. June 19, 2012). The Court rejected the plaintiff’s argument that the disputed term “acetohydroxy acid isomeroreductase” should be given its plain and ordinary meaning, and instead construed the term consistently with the narrower definition given to it in the definitions section of the patent. Id. at 10. In light of that construction, the Court explained that the plaintiff likely could not prove infringement at trial. Id. at 12. Further, the Court explained that to obtain a preliminary injunction, “the patentee must demonstrate that a defendant’s invalidity defense ‘lacks substantial merit.’” Id. at 17-18 (quoting Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1350-51 (Fed. Cir. 2001)). The Court explained, “the fact that the ‘889 patent has been rejected on reexamination, combined with the finding by the court that plaintiff’s likely claim construction is too narrow, demonstrate that defendant’s invalidity defenses do not lack substantial merit.” Id. at 20. The Court issued another opinion in this case two days later addressing various motions.

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June 25, 2012

Judge Robinson: Counterclaims and Inequitable Conduct Claims Allowed to Proceed

Judge Robinson recently considered various motions related to counterclaims in Butamax Advanced Biofuels LLC v. Gevo, Inc., C.A. No. 11-54-SLR (D. Del. June 21, 2012). She first denied Butamax’s motion for judgment of non-infringement on the pleadings, declining “to tackle the issues of claim construction and infringement without the benefit of any introductions to the technology or to the accused ‘product’ but for Butamax’s assertions regarding same. If, however, there are a limited number of critical claim limitations, the court would entertain a course of focused discovery in order to encourage an expedited resolution of the counterclaims.” Id. at 2-3.

Judge Robinson also granted Butamax’s motion to sever counterclaims and try them separately, id. at 3, and Butamax’s motion to amend the pleadings to add allegations of inequitable conduct. She rejected Gevo’s argument that the amendments were intended “to delay the adjudication of Gevo’s counterclaims” and found that Butamax had pled inequitable conduct with sufficient particularly and that its allegations were not futile. Because the “proposed amendment satisfies the . . . pleading standard by identifying the ‘who,’ the ‘what,’ the ‘when,’ the ‘where,’ and the ‘how,’” Judge Robinson allowed the amendment. Id. at 4-6.

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June 25, 2012

Judge Robinson precludes presentation of willfulness evidence in damages phase of case.

In a recent memorandum order, Judge Robinson rejected the plaintiff’s efforts to present willfulness evidence in the damages phase of trial. IGT v. Bally Gaming Int’l, Inc., et al., C.A. No. 06-282-SLR (D. Del. June 20, 2012). Inconsistently with Judge Robinson’s typical practice, the plaintiff had requested that it be permitted to try willfulness during the liability phase of the case. The Court permitted the plaintiff to do that, but, thereafter, the plaintiff failed to include any information about its willfulness allegations in its interrogatory responses, and the parties engaged in no discovery regarding willfulness at any time. Id. at 1-2. After the Court’s summary judgment rulings largely disposed of the liability phase of the case, the plaintiff sought to present willfulness evidence in the damages phase. Judge Robinson explained, “Plaintiff, over defendants’ objection, requested permission to pursue the issue of willfulness during the liability phase of the case. Although the court generally separates the resolution of liability from the resolution of willfulness and damages, the court granted plaintiff’s request. Plaintiff never brought up the issue of willfulness again until the April 2009 pretrial order. In seeking a second opportunity to pursue its willfulness claim, plaintiff is requesting a second bite at the apple. The court is not inclined to make two exceptions for plaintiff.” Id. at 3.

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May 9, 2012

Judge Robinson Denies Several Motions to Dismiss but Indicates that She Might Consider Early Claim Construction

Judge Robinson recently issued a memorandum order in Cyberphone Systems, LLC v. Cellco Partnership, et al., C.A. Nos. 11-827-SLR through 11-835-SLR (D. Del. Apr. 30, 2012), denying various motions of certain defendants to dismiss the claims against them.  Among these were motions based on the argument that, although CyberFone filed its complaints on the day before the America Invents Act took effect, these pre-AIA complaints violated Federal Rule of Civil Procedure 20 because they did not “allege joint infringement, or any relationships or common activities among the individual defendants.”  Id. at 2.  Judge Robinson initially noted that “severance, not dismissal, is the correct remedy for misjoinder.”  She then refused to exercise her discretion to sever the claims.  Id. at 2-3.  Similarly, she refused to sever claims against cellular carriers from claims against cellular handset manufacturers based on the customer suit exception.  Id. at 3-4.


Judge Robinson also denied several motions to dismiss “improper” infringement allegations, finding that they complied with Form 18, and denied several motions to dismiss that related to the adequacy of CyberFone’s direct infringement allegations.  She stated:  “[t]he court is not prepared to engage in the claim construction exercise at this stage of the proceedings, with no context whatsoever provided by discovery or a motion practice.”  Id. at 4.  “The court will discuss with the parties, however, the need for an early claim construction of dispositive limitations, once a full and fair exchange of fundamental documents has been accomplished.”  Id. at 4 n.6.


Finally, Judge Robinson reaffirmed her recent decision in Walker Digital that “a defendant’s receipt of the complaint and decision to continue its conduct despite the knowledge gleaned from the complaint satisfies the requirements of Global-Tech [that the defendant have knowledge of the patent].”  On this basis, she refused to dismiss various claims of indirect infringement.  Id. at 6.

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May 8, 2012

Motion for fees by defendants who prevailed on summary judgment denied without prejudice.

Judge Robinson recently denied, without prejudice, a motion for fees (and motion for joinder) filed by defendants who prevailed on summary judgment. Apeldyn Corp. v. AU Optronics Corp., et al., C.A. No. 08-568-SLR (D. Del. May 3, 2012). The Court noted that under Rule 54(b)(2)(B), it had discretion either to rule on the motion, to defer ruling on the motion, or to deny the motion without prejudice. Id. at 3. Here, because the defendants prevailed on summary judgment and the plaintiff subsequently appealed the decision to the Federal Circuit, the Court exercised its discretion and denied the motion without prejudice, explaining that “[i]f the Federal Circuit affirms, defendants may request a briefing schedule on a joint motion for fees.” Id. at 4.

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