Delaware IP Law Blog

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.

Rochester Drug Co-operative v. Braintree Laboratories, C.A. No. 07-142-SLR (D. Del. May 18, 2010)

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.

IGT v. Bally Gaming Int’l Inc., C.A. No. 06-282-SLR (D. Del. April 28, 2010)

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.

Robert Bosch, LLC v. Pylon Manufacturing Corp. C.A. No. 08-542-SLR, Verdict Sheet (D. Del. April 23, 2010).

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."

Continue reading "Judge Robinson: Lanham Act Opinion Involving Neutrogena and Coppertone Sunscreens" »

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).

Robert Bosch, LLC v. Pylon Manufacturing Corp., C.A. No. 08-542-SLR, Memo. Order (D. Del. Mar. 30, 2010).

In Fuzzysharp Technologies, Inc. v. Nvidia Corp. et al., C.A. No. 09-872 (D. Del. April 6, 2010), Plaintiff filed suit after filing seven separate patent infringement actions, involving the same patents, against multiple defendants in the Northern District of California. Id. at 1. Defendants moved for transfer to the Northern District of California after, in one of the cases, the district judge decided summary judgment invalidating the patents-in-suit under In re Bilski, 545 F.3d 943 (Fed. Cir. 2009). Judge Robinson considered “whether it makes sense for this court to keep the case at bar, necessarily imposing a stay pending the Supreme Court’s review of In re Bilski and/or the Federal Circuit’s Review of [plaintiff’s related case].” Id. at 2. Judge Robinson determined that due to the prior filings in the Northern District of California and the “unusual circumstances[,]” transfer was warranted. Id.

Fuzzysharp Technologies, Inc. v. Nvidia Corp. et al., C.A. No. 09-872 (D. Del. April 6, 2010)

Yesterday, Judge Robinson issued an opinion in Pernod Ricard USA LLC v. Bacardi U.S.A., Inc., C.A. No. 06-505-SLR (D. Del. Apr. 5, 2010). Plaintiff Pernod alleged that Bacardi "made false and misleading representations concerning the geographic origin of its 'Havana Club'-branded rum in violation of Section 43(a) of the Lanham Act." Id. at 1. The Court noted the lack of caselaw regarding the meaning of "geographic origin," and that the term is susceptible to two interpretations: place of present production, or place of historical origin / "heritage." In other words, does a "Havana Club" rum have to be presently manufactured in Cuba, or merely manufactured using a Cuban recipe by a company with Cuban roots?

After a brief discussion of the caselaw, the Court avoided the issue, holding that the Bacardi rum is not misleading on either count. It accurately displays "Puerto Rican Rum" or "crafted in Puerto Rico" on both sides of the bottle, id. at 16-19, and the Bacardi company and its rum recipe both have a Cuban heritage. Id. at 19-20. Plaintiffs argued that Bacardi had changed the recipe, negating the Cuban heritage; the Court recognized that there had been minor modifications to the recipe, but that the resulting product was almost identical. Id. at 21. Regarding any minor taste differences in the resulting product, according to the Court, "As the expression goes, 'if it looks like a duck, swims like a duck and quacks like a duck, then it probably is a duck.'" Id. at fn. 23. The Court also twice noted, on pages 20 and 21, that "The First Amendment protects defendant's ability to accurately portray where its rum was historically made - as opposed to claiming that the product is still made there."

Pernod Ricard USA LLC v. Bacardi U.S.A., Inc., C.A. No. 06-505-SLR (D. Del. Apr. 5, 2010)

Last August, we wrote about Judge Robinson's reversal a 2002 inequitable conduct decision in one of the Cordis Corp. v. Boston Scientific cases. Judge Robinson had initially found the two asserted patents invalid for inequitable conduct. Cordis appealed, won on appeal, and then prevailed again on remand. Boston Scientific then filed a motion for reconsideration, and Judge Robinson issued a memorandum opinion on Thursday addressing the motion. Cordis Corp. v. Boston Scientific Corp., C.A. No. 98-197-SLR (D. Del. Mar. 31, 2010)

Boston Scientific asserted that "the Federal Circuit's mandate clearly limited the court's inquiry on remand 'only to supplement and explain its prior findings on deceptive intent and taint," id. at 4, and that the Court "did not address all of the questions posed by the Federal Circuit," id. at 6. The Court disagreed on both counts, essentially holding that if the Federal Circuit had mandated that it review its prior findings, it must also be able to change its prior conclusion; a contrary interpretation would "leave the court in the untenable position of submitting for appellate review a factual record which is starkly inconsistent with the court's previous legal determinations." Id. The Court further held, as far as addressing individual questions, that its analysis did not deviate from the Federal Circuit's mandate.

Boston Scientific further argued that reversal as to one of the two patents was improper, because Cordis had failed to appeal the holding as to that patent. The Court again disagreed, holding that "Irrespective of Cordis' failure to explicitly place the enforceability of the . . . patent at issue [on appeal], the Federal Circuit's mandate directing the court to engage in a factual inquiry regarding deceptive intent - relevant to the enforceability of [both] patents - implicitly does so." Id. at 6-7.

Cordis Corp. v. Boston Scientific Corp., C.A. No. 98-197-SLR (D. Del. Mar. 31, 2010)

On remand from the Federal Circuit for re-trial on the issues of obviousness and anticipation, Judge Robinson denied defendant Acushnet Company’s renewed motion for summary judgment and Daubert motion, she granted in part and denied in part Acushnet Company’s motions in limine and granted plaintiff Callaway Golf Company’s motions in limine. Callaway Golf Company v. Acushnet Company, C. A. No. 06-091-SLR, Memo. Op. (D. Del. Mar. 3, 2010). The technology at issue in this case was Acushnet’s Titlest Pro V1, Pro V1* and Pro V1x golf balls. The Federal Circuit reversed the court’s entry of summary judgment of no anticipation, vacated the obviousness judgment based on irreconcilably inconsistent jury verdicts, and remanded for a new trial.

The court denied defendant’s motion for summary judgment on anticipation finding that the asserted piece of prior art known as the “Nesbitt” patent does not explicitly anticipate plaintiff’s patent. Defendant’s argument was that certain measurements taken on balata balls would “teach a person of skill in the art that a polyurethane cover must invariably have the same Shore D hardness.” The court found that “[a]side from attorney argument, no evidence (let alone Nesbitt) cited by Achushnet makes that causative leap, to wit, that if A equals B, and A equals C, then C equals B.” Id. at 7.

On remand, Acushnet renewed its Daubert motion to exclude the expert testimony of plaintiffs’ damages expert, Brian Napper. Defendant moved to disqualify Mr. Napper for (1) failing to create the “but for” world of lost profits starting at the first date of infringement; and (2) failing to account for what players using the infringing balls would play with in the absence of that ball (the so-called “premium market”). Specifically, Acushnet argued that the expert did not include in his analysis what defendant would have offered at the first date of infringement if the Pro V1 ball was not available, how the market would have responded to that offering or what the market would have looked like if they withdrew the Pro V1 in 2003. Id. at 12. Judge Robinson stated that “[t]o credibly demonstrate that Acushnet would have had viable, non-infringing alternatives to offer in 2001 – as well as to predict how the market would have responded to these alternatives by 2003 – is an exercise that may be appropriate, but certainly is not one that is mandatory in light of its speculative nature.” Id. at 13. The court further found the reasoning in Mr. Napper’s report to be grounded on “real world facts, and therefore, acceptable.” Id. “For any economic hypothesis to account for all variables is not possible, let alone required.” Id. (emphasis in original).
Defendant also argued that the expert calculated lost profits on sales by companies that do not own the patents-in-suit. In response, the court held that “where the profits of a wholly-owned subsidiary flow up to the parent, inclusion of such profits is appropriate.” Id.

The court granted defendant’s motion to exclude evidence of defendant’s new Pro V1 balls, which defendant offered as a non-infringing alternative, and therefore, defendant argued was relevant to commercial success and damages. The court found this evidence lacks foundation since it was not vetted through discovery and therefore the use of such evidence would be unduly prejudicial to plaintiff. Id. at 13 n.14.

Frequently, parties dispute how far a plaintiff can go in “bolstering” the validity its own patents. Plaintiff in this case, agreed that it would not reference the fact that three PTO examiners considered the patents-in-suit. The court further held that plaintiff should not make any reference to the on-going reexam of the patents-in-suit and that plaintiff cannot speculate as to the extent to which prior art that was before the PTO was actually considered. Id. at 14.

Callaway Golf Company v. Acushnet Company, C. A. No. 06-091-SLR, Memo. Op. (D. Del. Mar. 3, 2010).

Gauging "finality" for purposes of appeal can be tricky. Add to that inquiry the disqualification of a party's counsel, and the complexity only increases. District judge Sue L. Robinson shed light on the intersection of these two topics in a recent decision on a motion for reconsideration.

The Court earlier disqualified Apeldyn's counsel due to a conflict of interest. Apeldyn then sought reconsideration, or, alternatively, permission to appeal. The Court declined to reopen its earlier decision and, notably, foreclosed two opportunities for immediate appellate review.

On certifying an interlocutory appeal, the Court noted that "a reversal here . . . would leave the underlying substantive claims between the parties undisturbed" and that Apeldyn had failed to identify a "controlling question of law as to which there is a substantial ground for difference of opinion." As a result, resolving the disqualification issue now could not "materially advance the ultimate termination of the litigation" and thus could not give rise to interlocutory relief.

On certifying a final judgment, the Court similarly rejected the notion that disqualification presented an issue ripe for appeal: "The resolution of a collateral issue, such as the disqualification of counsel, cannot properly be considered a 'final judgment' with respect to an assertion of patent infringement."

With this decision, we can add disqualification of counsel to the collateral-order lexicon.

Apeldyn Corp. v. Samsung Electronics Co. Ltd., C.A. No. 08-568-SLR (D. Del. Mar. 12, 2010) (Robinson, J.).