May 17, 2011

Judge Robinson: Result of Earlier Patent Infringement Case Relevant to Lost Profits and Reasonable Royalty Analysis

In Boston Scientific Corp. v. Cordis Corp., C.A. No. 10-315-SLR (D. Del. May 4, 2011), Judge Robinson recently stated that the result of an earlier patent infringement case involving the same parties, the same patent, and the same asserted claim "is relevant to both lost profits and a reasonable royalty analysis[.]" Id. at 1. However, Judge Robinson limited the introduction of evidence of the earlier case to a single statement, to be read at trial, that (1) the earlier case involved the same parties, patent, and asserted claim, (2) the jury found that the defendant's products infringed and that the claim was not invalid, and (3) that this finding was affirmed on appeal and therefore "the jury verdict and judicial determinations of infringement and validity are final." Id. at 1-2.

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May 6, 2011

Judge Sue L. Robinson: Motion to Stay an ANDA case pending appeal of litigation involving the same patents GRANTED

In Cephalon, Inc. v. Sandoz Inc., C.A. No. 10-123-SLR (D. Del. May 5, 2011), an ANDA case, Cephalon filed a motion to stay pending its appeal of related litigation. In the related case, involving the same patents, the court found that the defendant did not infringe and that the patents were invalid. Id. at 2. Judge Robinson determined that a stay was appropriate because, among other things, Sandoz’s 30-month stay was set to expire in July 2012, which would likely occur after the Federal Circuit disposed of the appeal. Id. at 4. “If the Federal Circuit affirms the court’s invalidity holding, there is no reason for trial and the expenses related thereto.” Id. Judge Robinson found that Sandoz would not be prejudiced because, among other things, it could not enter the marketplace prior to July 2012. Id.

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May 6, 2011

Judge Robinson: Cross-Motions for Summary Judgment DENIED

In Oracle Corp. v. Parallel Networks, LLC, C.A. No. 06-414-SLR (D. Del. Apr. 29, 2011), Judge Robinson recently issued an amended memorandum order denying both parties' motions for summary judgment. After finding that several genuine issues of material fact compelled the denial of Parallel's motion for partial summary judgment of literal infringement, the court found that "Parallel has proffered sufficient circumstantial and direct evidence [of direct infringement by Oracle customers] to withstand summary judgment as to . . . the issue of induced infringement." Id. at 28-29. This evidence included a presentation at an Oracle conference and a best practices document, both of which allegedly instructed Oracle customers "'how to use the Accused Oracle Products in an infringing manner'" and "'freely and openly strongly encourage[d] them to do so.'" Id. Judge Robinson further denied Oracle's motion as to contributory infringement, rejecting Oracle's argument that it had adequately demonstrated "that each of its accused products have significant noninfringing uses[.]" Id. In denying Oracle's motion, Judge Robinson stated that "[a] reasonable jury could find that the accused products do not meet the definition of a staple article of commerce." Id. at 29.

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May 5, 2011

Judge Robinson: Admitting Clinical Trial Data and Allowing Fact Witness

Last Thursday, in Boston Scientific Corp. v. Cordis Corp., Civ. No. 10-315-SLR (D. Del. Apr. 28, 2011), Judge Robinson issued a memorandum order allowing the defendant to (1) present clinical trial data as evidence, and (2) present Dr. Campbell Rogers as a fact witness.

Judge Robinson noted that the clinical trial data "may be relevant under the entire market value rule," and that excluding the data would "parse the actual story of this dispute with too broad a stroke." Id. at 1. Judge Robinson also limited Dr. Rogers's testimony regarding the clinical trial data "based upon the determination of the clinical trial data's relevance[.]" Id. at 2.

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April 23, 2011

Judge Robinson: Defendant’s Motion to Stay Pending Reexamination DENIED; Plaintiffs’ Motion for Summary Judgment of Infringement GRANTED; Sua Sponte Grant of Partial Summary Judgment

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.

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April 12, 2011

Judge Sue L. Robinson: Sua Sponte Enjoins Generics

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).

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March 31, 2011

Sue L. Robinson: The Overlapping Worlds of Science and Litigation

In a recent opinion, District Judge Sue L. Robinson commented on the nature of expert testimony in patent cases. In particular, the Court highlighted the important distinction between scientific "truth" and the role of the judiciary in the decidedly non-scientific legal system:

"[Expert] Matzger's testimony is, of course, only reliable to the extent [Expert] Bates's data (and Bates's testimony thereupon) is also reliable. That two scientists at the top of their field could disagree on their reading of 'hard' data is, unfortunately, neither surprising nor a rare occurrence in this court. The court is not tasked with determining the scientific 'truth' with respect to infringement, to the extent one exists, only weighing the parties' evidence and resolving their business dispute according to established burdens of proof. Consequently, the court does not deem Bates's evidence more or less credible insofar as Matzger also relied upon it but ultimately disagreed as to its import."

For those of you interested in the Court's findings in the companion infringement action, click here.

Cephalon Inc. v. Watson Pharma. Inc., C.A. No. 09-724-SLR (D. Del. Mar. 24, 2011) (Robinson, J.).

March 30, 2011

Judge Robinson: Medtronic v. Boston Bench Decision

Judge Robinson recently issued an opinion following a bench trial in Medtronic v. Boston Scientific Corp., C.A. No. 07-823-SLR (Mar. 30, 2011). This was a declaratory judgment action by plaintiff Medtronic, Inc.

One interesting aspect of the case was the way that the parties treated the burden of proof regarding infringement. The parties each argued that the other side bore the burden due to the procedural nature of the case (a declaratory judgment action). The patentee (defendant) argued that the alleged infringer (plaintiff) had the burden of proof on non-infringement because "the plaintiff usually has the burden of proof," and because prior agreements between the parties overrode caselaw that says that the patentee always bears the burden of proof. Id. at 16-17. Judge Robinson, however, held that "'[t]he burden is always on the patentee to show infringement,'" and the burden never shifts to the other party. Id. at 17. Thus, the patentee defendants bore the burden of proving non-infringement.

The patentee's expert, however, had focused only on rebutting the plaintiff's expert's allegations of non-infringement, rather than setting forth his own allegations of infringement. Judge Robinson held that the plaintiff had therefore failed to offer affirmative evidence that all limitations of the patents at issue were met by the accused products, either literally or through the doctrine of equivalents, and found that the defendant had failed to show infringement.

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March 22, 2011

Judge Robinson: Defendant’s motion for summary judgment of noninfringment GRANTED and motion for summary judgment of invalidity GRANTED-IN-PART

In Automated Transactions LLC v. 7-Eleven, Inc. et al., C.A. No. 06-043-SLR (D. Del. March 9, 2011), Judge Robinson recently decided defendants and plaintiff’s cross motions for summary judgment. Judge Robinson granted defendants’ summary judgment motion because she construed the terms “internet” and “an internet interface” to require connection to a public network. Id. at 9-15. Because the accused products utilized a private network and did not connect to the internet, defendants did not infringe the patents in suit. Id. Judge Robinson found that defendants could not infringe literally or under the doctrine of equivalents because “construing ‘Internet’ to mean any network [public or private] would read the limitation out of the patent.” Id. at 12 (emphasis in original). Moreover, a finding that the private network was the equivalent of the Internet would read on prior art thereby violating the ensnarement doctrine. Id. at 13. Judge Robinson also granted-in-part defendants’ summary judgment motion on invalidity because the term “an Internet interface” in the mean’s plus function claims “d[id] not provide sufficient structure for performing the function of providing the customer with access to the Internet in order to complete the retail transaction.” Id. at 20.

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March 18, 2011

Judge Robinson: Defendants' Motions to Dismiss GRANTED (Limiting Plaintiff's Damages)

Two days ago, in Minkus Electronic Display Systems Inc. v. Adaptive Micro Systems LLC, Civ. No. 10-666-SLR (D. Del. Mar. 16, 2011), Judge Robinson granted Defendants' motions to dismiss for failure to state a claim, limiting Plaintiff's damages as to each Defendant unless Plaintiff amends its complaint to allege facts lacking in its original complaint. Id. at 7.

Plaintiff alleged that Defendants had directly infringed, contributorily infringed, and actively induced infringement of its patent disclosing a remotely-controlled electronic display system. Id. at 2-3. Defendants argued that Plaintiff had failed to satisfy the pleading requirements for indirect infringement because, inter alia, Plaintiff failed to allege facts sufficient to establish Defendants' knowledge and intent to indirectly infringe. Id. at 4. The court agreed, finding that Plantiff's pleading "resorts to a mere recitation of the elements for indirect infringement, which is insufficient." Id. at 7 (quoting Xpoint Techs. v. Microsoft Corp., 730 F. Supp. 2d 349, 357 (D. Del. 2010)).

Judge Robinson noted that, because Defendants "will be deemed to have knowledge of [Plaintiff's] patent as of the date the complaint was filed," and because "the only consequence (I believe) of this decision is limiting plaintiff's damages to the period dating from a defendant's first knowledge of [Plaintiff's] patent, the court will so limit plaintiff's damages as to each defendant unless plaintiff chooses to amend its complaint to allege sufficient facts as to an individual defendant's knowledge." Id. at 7.

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