In a comprehensive opinion addressing a multitude of pretrial motions, district judge Sue L. Robinson offered a key insight into her practice admitting the PTO's reexamination record at trial.
As part of its analysis on a motion for summary judgment of invalidity, the Court explained why this record is inadmissible, at least when a jury is the factfinder:
"It is generally not the court's practice to admit the reexamination record as trial evidence. As the rejections on reexamination are not binding, they are generally not relevant to the issues to be tried. Almost always, such evidence is more prejudicial than probative, and creates jury confusion vis a vis the complex invalidity standards they are asked to apply - for example, that patents enjoy a statutory presumption of validity." (slip op. at 33, n.31)
It will be interesting to see whether the Court also follows this practice in non-jury trials.
The Court construed the following claim terms in a case involving patented telecommunications technology:
- a “connection” or “communications connection”
- “changing over…during the existing transfer” and “changing over…without interruption of the communications connection”
- “changing over…without interruption of a setup procedure”
- “means responsive to a control signal for changing over”
- The Court found the term “[a] device that provides access by said switching apparatus [to a mobile (phone) packet-switching network/through a line-switching network] through which data packets can be sent for delivery to a destination end terminal” indefinite for reasons set forth in a separate opinion.
Sigram Schindler Beteiligungsgesellschaft mbH v. Cisco Systems, Inc., C.A. No. 09-72-SLR, Memo. Order (D. Del. July 26, 2010).
Of note, the court construed only the “most essential” terms based on the parties’ infringement contentions and deferred consideration of additional terms related to the parties’ invalidity contentions based on a stay of the merits of validity pending reexamination. Id. at 2 n.2.
Judge Robinson recently issued an opinion in Senju Pharmaceuitical Co. v. Apotex, Inc., C.A. No. 07-779-SLR (D. Del. June 16, 2010), holding that the patent at issue was infringed, but also invalid as obvious.
Senju had asserted several claims of U.S. Patent No. 6,333,045, which covered the use of a "Gatifloxacin ophthalmic solution containing disodium edetate [("EDTA")]," sold as the antibiotic eye-drop "ZYMAR." Apotex filed an abbreviated new drug application ("ANDA") with the FDA, seeking approval to market a generic version of the drug -- Gatifloxacin by itself was covered by a recently expired patent. Id. at 1. The patent at issue in this case, however, was filed later, and claimed the combination of Gatifloxacin and EDTA, as well as the method and uses of combining the two. Id. at 1-2.
The Court found that it would have been obvious to one of ordinary skill in the art to combine Gatifloxacin with EDTA. Id. at 22-33. As described by the Court, both Gatifloxacin and EDTA were known in the prior art, as were the uses and benefits of EDTA combined with compounds similar to Gatifloxacin. Id. at 4-9. The original Gatifloxacin patent recognized the similarity of Gatifloxacin and these other compounds, and also recognized that the "pharmaceutical formulations of Gatifloxacin would follow 'the routes well known ... ' with respect to 'oral[] and parenteral[]' administration.'" Id. At the time, such "routes well known" included combinations with EDTA. Id. Thus, it was obvious to one of ordinary skill to combine the substances.
The Court also evaluated the secondary considerations of non-obviousness, but found that they did not weigh in favor of either party. Id. at 33-37. The Court did not give much weight to the product's commercial success, because the prior Gatifloxacin patent blocked the entry of any generic competitors into the market. Id. Senju also argued that a contemporaneous invention had occurred, but the Court determined that the second inventor "did not recognize or appreciate the invention," and discounted this factor as well. Id. at 33-35. All in all, this was a fairly clear-cut obviousness opinion.
In a recent summary-judgment opinion, District Judge Sue L. Robinson expounded on an interesting doctrinal nuance in the field of indirect infringement. Accused infringer Tellme Networks argued, among others, that its semi-automated telephone directory-assistance service did not, either directly or indirectly, infringe the patentee's system of processing spoken information. In particular, in an effort to stave off a claim of inducement, Tellme argued that it "innocently" entered into certain customer contracts without knowledge of the patent-in-suit.
The Court rejected this innocence theory, and, in the process, explained the facts adequate to potentially defeat its application in future proceedings:
"Tellme has continued to operate, maintain, and update its directory assistance platform. Tellme has evinced no intention of ceasing such activity. Most significantly, evidence of record demonstrates that . . . Tellme has revised, amended and extended its contractual obligations to provide its hosted services. . . . Tellme has, under certain contracts, a right to modify its hosted services to avoid infringement."
Although the Court ultimately entered judgment in favor of Tellme, the Court's inducement discussion should nonetheless not be overlooked by litigators and those drafting service contracts.
In Intermec Technologies Corp. v. Palm Inc., C.A. No. 07-272-SLR (D. Del. June 7, 2010), Judge Robinson denied defendant/counter plaintiff Palm’s motion to exclude evidence related to plaintiff/counter defendant Intermec’s “Trakker” product, which was disclosed as prior art invalidating Palm’s patent. Id. at 1. Although the disclosure was untimely, per the terms of the scheduling order, “the failure to make earlier Trakker disclosures was related to [Intermec’s expert’s] belief that the search for prior art which would invalidate the ’803 patent needed to be responsive to Palm’s infringement contentions.” Id. at 4. Judge Robinson permitted Palm to take additional discovery related to the Trakker disclosure, which can “cure” any lack of clarity in Intermec’s expert’s expert opinion. Id. at 4-5.
Judge Robinson recently considered a motion to dismiss a complaint in an antitrust action that stemmed from a patent litigation that was voluntarily dismissed in 2004. Rochester Drug Co-operative v. Braintree Laboratories, C.A. No. 07-142-SLR (D. Del. May 18, 2010). Plaintiffs filed suit alleging that the prior patent litigation brought by defendant was a “sham litigation” “designed to delay FDA’s approval of [a generic drug] and to improperly maintain monopoly power with respect to its pioneer drug.” Id. at 2. Defendant subsequently filed a motion to dismiss under Fed. R. Civ. P. 12(b)(6). In order to resolve defendant’s 12(b)(6) motion, Judge Robinson analyzed whether plaintiffs adequately pled the “sham litigation” exception to Noerr-Pennington immunity that typically protects a patent owner asserting its rights from antitrust liability. Id. at 10-11. First, Judge Robinson determined that plaintiffs adequately pled antitrust injury. Although defendant argued that plaintiffs suffered no direct injury, Judge Robinson determined that plaintiffs’ claim was based upon an overall scheme. “It is sufficient, therefore, for plaintiffs to allege injuries that occurred as a result of the entire scheme, rather than any particular component therein.” Id. at 13. Judge Robinson next determined that the overall scheme plaintiffs’ alleged sufficiently pled that defendant attempted to forestall competition, including filing what plaintiffs describe as the “objectively baseless” litigation. Id. at 14-15. Notably, Judge Robinson declined to accept defendant’s argument that she should find that the previous litigation was not a sham as a matter of law, due to the court’s previous finding that Noerr-Pennington barred a counterclaim in the previous litigation. Id. at 18. Judge Robinson noted that the court made that determination based upon the record before it at the time, and that the plaintiffs in this action were not represented in the previous litigation. Id. at 18-19.
In IGT v. Bally Gaming Int’l Inc., C.A. No. 06-282-SLR (D. Del. April 28, 2010), a patent infringement action, Judge Robinson considered plaintiff’s renewed motion to dismiss defendants’ counterclaims related to antitrust, the Lanham Act and intentional interference with business relationships. These counterclaims were stayed due to Judge Robinson’s practice of bifurcating antitrust counterclaims (in addition to damages) because “they generally do not survive unless there is a finding of no infringement.” Id. at 1. Subsequently, Judge Robinson construed disputed claim terms and decided seven summary judgment motions, finding that defendant’s accused products infringe certain claims of the patents-in-suit. Id. at 2. The only remaining allegations for trial were plaintiff’s claim of willful infringement and defendants’ counterclaim of invalidity of one of the patents-in-suit. Id. Trial was canceled after defendants dismissed their counterclaim and the parties agreed to try willfulness with plaintiff’s claim for damages post-appeal. Id.
Plaintiff filed the pending motion to dismiss arguing that the stayed counterclaims “pose an impediment to moving the case to appellate review pursuant to 28 U.S.C. § 1292(c)(2). Id. at 3. Defendants argued that “the stay should be maintained for purposes of judicial economy, and reserved their right to address their claims substantively should the Federal Circuit find in their favor on appeal.” Id. at 5. Considering that defendants’ counterclaims likely do not survive if they don’t succeed on appeal, Judge Robinson granted plaintiff’s motion to dismiss the stayed counterclaims, without prejudice. Id. at 6. “Should the court’s opinion be reversed and the case remanded, the court will consider defendants’ request for further discovery and take up the merits of defendants’ claims in due course.” Id.
A jury returned a mixed verdict on Friday, April 23, in the patent infringement suit between Robert Bosch, LLC v. Pylon Manufacturing Corp. C.A. No. 08-542-SLR, Verdict Sheet (D. Del. April 23, 2010).
There were three patents-in-suit, all relating to wiper blade technology. The first patent asserted by plaintiff is entitled "Glass Wiper Blade for Motor Vehicles" (U.S. Patent No. 6,292,974). The jury found that the asserted claims were invalid in light of two prior art references. It also found this patent invalid because one or more of the named inventors did not himself invent the subject matter but learned of it from another.
The jury found that the accused Bosch products infringed certain claims of the second patent entitled "Wiper Blade for the Glass Surfaces of Motor Vehicles with an elongated, spring-elastic support element" (U.S. Patent No. 6,675,434). It also found, however, that one claim was not infringed. The jury found that two of infringed claims were obvious in view of two U.S. patents and that one of the remaining infringed claims and the non-infringed claim were valid.
The jury found the third patent, U.S. Patent No. 6,944,905, entitled "Wiper blade for cleaning screens in particular on motor vehicles." to be infringed and valid.
Of note in this case, the verdict form contained quite a bit of detail compared to a typical verdict form in this district. The redacted form is set forth below.
Plaintiffs Schering-Plough HealthCare Products, Inc. (makers of Coppertone-brand sunscreen) brought an action under Section 43 of the Lanham Act against Neutrogena Corporation (makers of Neutrogena-brand sunscreen) for releasing advertisements containing false and misleading statements. Defendants counter-claimed under the Act based on advertisements by Plaintiffs.
Defendant's advertisements involved a bar graph showing "UVA" and SPF ratings for the competing products:
Plaintiffs argued that the graphs were misleading, and the Court agreed, based on the literal falsity of the graph's "double-counting" of UVA protection. The upper, yellow portion of the graph represents the sunscreen's UVA protection, while the bottom, red portion of the graph represents the SPF rating. According to the Court, however, the red portion of the graph is based on an SPF measurement that already accounts for UVA protection. Thus, by adding the yellow portion of the graph, Defendants were double-counting their UVA protection, which was literal falsity. The Court was unpersuaded by Defendants' argument that the falsity affected the graphs of both products: "While it is true that these errors are present with respect to both products compared in the graph, the absence of bias caused by the double-counting does not eliminate the falsity of the message." Id. at 12.
Defendants asserted a counterclaim based on claims made in Plaintiff's TV ads. The ads involved an establisment claim that Plaintiff's sunscreen provided "better coverage," as well as text apparently asserting that Defendant's spray sunscreen consisted of "28% Propellant":
The Court held in favor of Defendants on both claims. For the establishment claim, the Court held that Plaintiffs had failed to actually test the properties of the products in the ad, and that "[t]his type of unsubstantiated 'scientific' claim is precisely what the Lanham Act seeks to prevent." For the "28% Propellant" statement, the Court held that
"The overlay of the words "Neutrogena" and "28% propellant" on the (bare) chest of one of the athletes (as compared to, for example, pictures of the respective cans) reinforces the message that 72% sunscreen and 28% propellant is applied to the body, rather than merely contained inside the can. There is no qualifying statement or language from which a consumer could conclude that the propellant is not deposited onto the skin in this amount or, alternatively, that the sunscreen (lotion) expelled by the can is 100% (and not 72%) sunscreen. This is an unambiguous message conveyed by necessary implication and, therefore, is literally false."
In a case involving technology relating to wiper blades, Judge Robinson recently issued a claim construction order construing the terms set forth below:
- "component"
- "mounted to said concave surface of said support element"
- "mounted directly to the convex surface of said support element"
- "a leading edge face"
- "wherein each crosspiece disposed at the end sections of the two spring stripes is provided with a covering cap"
- "groove-like construction"
- "a wiper blade part"
- "wind deflection strip is disposed between and in contact with each respective end cap and the device piece"
- "base body"
- "bracing itself on the wiper blade"
- "detent shoulder"
- "pointing toward the other end portion"
- "cavities"
- "protrusions protuding;" "a protusion protruding"
- "long sides;" "long sides of the support element"
- "hook legs"
- "detent tooth that protrudes from the long side of the support element"
- "recess"
- "the face of the end of the support element"
- "inside wall"
- "pin passage"
- "tail space"
- "forwardmost free end"
- "rearward of said pin passage and said rivet passage"
- "rail-free hook insertion space"
- "cavity"
- "engagement tab"
- "outward lateral extent"
Interestingly, the court refused to construe the phrase "wherein said leading edge face is disposed on a face of said support element which faces away from the window" because the "phrase is unsupported by the specification and has no apparent plain meaning. Robert Bosch, LLC v. Pylon Manufacturing Corp., C.A. No. 08-542-SLR, Memo. Order, at 3 (D. Del. Mar. 30, 2010).
