Judge Richard G. Andrews recently denied the parties’ joint motion to vacate the Court’s claim construction order following the parties’ settlement and filing of a stipulation of dismissal. Purdue Pharma LP, et al. v. Acura Pharmaceuticals Inc., et al., No. 15-292-RGA (D. Del. May 24, 2016). The claim construction decision was issued after the Court agreed to an early claim construction of one term. “It was suggested that construing the claim as Defendants requested would expedite the resolution of the case as Plaintiffs would be left with no viable infringement theory.” Id. at 1. Judge Andrews adopted Plaintiffs’ proposed construction. Id. In their joint motion to vacate, the parties offered no argument in support of their request. Judge Andrews denied the request, noting that the Court “should only grant [the request] if there are exceptional circumstances present”; and “no such circumstances have been suggested, and none occur to me.” Id. at 2 (citing Cisco Systems, Inc. v. Telcordia Techs, Inc., 590 F.Supp.2d 828, 830 (E.D. Tx. 2008)).
Judge Sleet’s recent decision in Millenium Pharmaceuticals v. Pharmascience extended the Federal Circuit’s AstraZeneca decision regarding personal jurisdiction in Hatch-Waxman cases, rejecting an argument that AstraZeneca did not apply to certain ANDA applicants without other contacts with Delaware.
PSI, one of the two defendants in the case, asserted that “unlike Mylan [in the Federal Circuit’s decision], the ANDA is PSI’s sole contact with Delaware” and that “in its analysis, the Federal Circuit pointed to other contacts that Mylan had with Delaware.” PSI argued that it was different because it “is a Canadian company with a principal place of business in Montreal. According to PSI, it prepared the ANDA in Canada, the ANDA was submitted to the FDA in Maryland, and PSI sent its Paragraph N Letter to Millennium in Massachusetts. PSI asserts that it is not incorporated in Delaware, is not registered to do business in Delaware, and it has no employees or agents in Delaware, does not maintain a post office box, mail drop, telephone number, office, or any place of business in Delaware. PSI does not have any bank accounts in Delaware, nor does it file taxes in Delaware. PSI claims that it does not have any distribution channels or an agent to accept service of process in Delaware. PSI asserts that it has only defended itself in one Delaware litigation, which was unrelated to this case. Finally, unlike Mylan, PSI claims it does not have an approved and active ANDA, does not import any drug products into the United States, and has no sales of any drug products in the United States, including Delaware.” Millenium Pharmaceuticals, Inc. v. Pharmascience Inc., et al., C.A. No. 15-702-GMS, Memo at 6-7 (D. Del. June 10, 2016).
Rejecting this argument, Judge Sleet explained that “The Acorda court noted that Mylan was incorporated in West Virginia, prepared its ANDA primarily in West Virginia, and filed its ANDA in Maryland. The court also acknowledged that Mylan was registered to do business in Delaware and AstraZeneca and Acorda are incorporated in Delaware, however, the holding in the case was not based upon these facts. Thus, the court must conclude that specific personal jurisdiction over PSI exists in this case based upon PSI’’s ANDA filing. Delaware is a state where PSI will engage in marketing if the ANDA is approved and that marketing is directly related to this suit.” Id. at 7.
Judge Sleet also found, however, that the other defendant in the case, PSL, should be dismissed because Millennium had not supported with reasonable particularity its allegation that PSL collaborated with PSI to file the ANDA in question. Id. at 8-9.
Judge Andrews recently bifurcated a case in which the plaintiff and defendant each asserted one patent against the other into two one-patent trials. Viatech Techs., Inc. v. Microsoft Corp., C.A. No. 14-1226-RGA (D. Del. June 6, 2016). The patents related to the same technology, and the defendant’s asserted patent was referenced as prior art to the plaintiff’s asserted patent. However, the Court decided “that it would likely be better to schedule two trials rather than one,” explaining:
First, patent trials are difficult enough for juries without adding to the degree of difficulty. Trying both patents in one case would involve additional infringement analysis and damages analysis over a trial on just one patent. Extra testimony can lead to confusion. Second, it appears that Defendant’s assertion of its patent against Plaintiff’s product is of lesser importance in the scheme of things. Although there was briefing on asserted claim disputes on both patents, the parties agreed that the ten most important ones all related to Plaintiff’s patent. My judgment is that resolution of the claims involving Plaintiff’s patent will likely resolve the entire case. Depending on the schedule, it may never be necessary to resolve the claim disputes on Defendant’s patent. Thus, I think scheduling separate trials is likely to result in economy.
Judge Richard G. Andrews recently granted a defendant’s motion for certification of partial final judgment under Rule 54(b), finding that the balance of factors under the relevant Third Circuit test favored certification. Interdigital Commc’ns, Inc. v. ZTE Corp., C.A. No. 13-009-RGA (D. Del. June 7, 2016). A jury found in favor of the plaintiff on infringement of three patents, one of which was subsequently deemed unpatentable during inter partes review. The Court deferred ruling on post-trial motions related to that one patent pending the resolution of the plaintiff’s appeal of the PTAB ruling, but ruled on post-trial motions relating to the other two patents (the “power ramp-up patents”). As a result, with respect to the power ramp-up patents, all that remained in the district court was a trial on damages. In analyzing the Third Circuit factors under Berckeley Inv. Grp., Ltd. v. Colkitt, 455 F.3d 195, 203 (3d Cir. 2006), Judge Andrews found: (1) there was no overlap between the power ramp-up patents and the third patent (the patentability of which was currently on appeal); (2) the need for appellate review of liability for infringement of the power ramp-up patents would not be mooted by any further developments in the district court; (3) there was no risk that the Federal Circuit would be asked to consider the same issues with respect to the power ramp-up patents a second time; and (4) appellate review of liability for infringement of the power ramp-up patents could obviate entirely the need for a damages trial on those two patents. On balance, these factors favored granting the defendant’s motion for certification of partial final judgment under Rule 54(b).
In IControl Networks, Inc. v. Zonoff Inc., C.A. No. 15-1109-GMS (D. Del. June 6, 2016), defendant filed a motion to dismiss, contending that plaintiff’s complaint had failed to plausibly state a claim for willful infringement. The Court rejected this argument, noting that plaintiff’s “reliance upon ‘information and belief’ in its pleadings is not deficient given the further information here demanded by [defendant] lies uniquely within the control of the defendant” and that the complaint went “beyond mere legal conclusions and [made] sufficient factual allegations to state a claim.” Id. at 1-2 n.1 (citations and quotation marks omitted). Defendant also argued that plaintiff’s claim for pre-suit damages should be dismissed as not complying with the patent marking statute (35 U.S.C. § 287), but the Court rejected the premise that “the requirements of § 287 are equivalent to the Federal Circuit’s requirements of a ‘statement that the plaintiff has given the defendant notice’ in an infringement complaint. . . . the court sees no reason to dismiss claims for pre-suit damages at this stage.” Id. at 2 n.1 (citations omitted).
Finally, the Court rejected defendant’s argument that plaintiff’s indirect infringement allegations had to enumerate the specific patent claims asserted, citing the District’s Default Standard for Discovery that “contains a procedural mechanism for the identification of specific asserted claims, and the court sees no need to depart from that process here.” Id. Accordingly, the Court denied defendant’s motion to dismiss and for a more definite statement.
In a recent Report and Recommendation, Magistrate Judge Christopher J. Burke construed seven claim terms from U.S. Patent No. RE40,000 (the “’000 patent”), which is directed to a method of using carvedilol to decrease the risk of mortality caused by congestive heart failure (“CHF”). GlaxoSmithKline LLC et al. v. Glenmark Pharmaceuticals Inc., USA, et al., C.A. Nos. 14-877, 14-878-LPS-CJB (D. Del. June 3, 2016). In the course of construing those terms, Judge Burke found that the term “”decreasing mortality caused by congestive heart failure,” which appears in the preamble of claim 1, should limit the claim. In support of this finding, Judge Burke first noted that as in this case, “[t]he Federal Circuit has held that language in the preamble of a claim constitutes a limitation if the preamble sets forth the objective of the method, and the body of the claim directs that the method be performed on someone ‘in need.’” Id. at 14. Second, Judge Burke found that “the term ‘said patient’ in the claim body relies on and derives antecedent basis from ‘a patient in need [of having their risk of mortality decreased]’ in the preamble.” Id. at 15. Third, Judge Burke noted that “[i]t cannot be seriously disputed that, at a minimum, a significant portion of the applicant’s arguments for patentability was that the drug’s usefulness in decreasing mortality of CHF patients was something distinct from its usefulness in treating symptoms of CHF.” Id. at 16.
In support of their argument that the preamble limitation was non-limiting–which was ultimately rejected–defendants had asserted that “GSK’s claims impermissibly recite merely a particular result of a known use.” Id. at 9. Judge Burke concluded, however, that whether “the claims improperly recite a particular result of a known use of carvedilol is more amenable to resolution on a motion for summary judgment of invalidity.” Id. at 17.
UPDATE: On February 17, 2017, Judge Stark considered objections to Judge Burke’s Report and Recommendation. GlaxoSmithKline LLC et al. v. Glenmark Pharmaceuticals Inc., USA, et al., C.A. Nos. 14-877, 14-878-LPS-CJB (D. Del. Feb. 17, 2017). Regarding Judge Burke’s construction of “maintenance” doses, Judge Stark sustained plaintiffs’ objections and construed the term to mean “dosages in the therapeutic amount.” Id. at 2. Judge Stark otherwise overruled the parties’ objections and adopted Judge Burke’s recommended claim constructions.
Judge Sleet’s recent order construing terms of patents in suit in this case between Bristol-Myers Squibb and Merck & Co. includes an interesting discussion of a limiting claim preamble. As Judge Sleet explained, the “parties’ dispute focuses primarily on whether a limitation should be incorporated in the terms that indicates the goal of the treatment” of metastasis of cancer cells using anti-PD-1 antibodies. “In the patents at issue, the claims explain what the method of treatment consists of, yet Merck would also have the court construe treatment to require the attempted result based upon the goal identified in the preamble: suppression of metastasis or proliferation of cancer cells. The court declines to limit the terms in this way.” Bristol-Myers Squibb Co., et al. v. Merck & Co., Inc., et al., C.A. No. 14-1131-GMS, order at 1 n.1 (D. Del. June 6, 2016).
Further, Merck argued that certain “wherein” clauses should be deemed limiting in that they require a particular effect, citing Griffin v. Bertina, 285 F.3d 1029 (Fed. Cir. 2002). Judge Sleet found, however, that although “that case did feature ‘wherein’ clauses like the patents at issue, the court is persuaded that in this case there will not be confusion about the reason for administering anti-PD-1 antibodies.” Id.
Judge Richard G. Andrews recently considered defendants’ motion to dismiss for lack of standing. Acceleration Bay LLC v. Activision Blizzard, Inc., et al., Nos. 15-228-RGA, 15-282-RGA, 15-311-RGA (D. Del. Jun. 3, 2016). Plaintiff claimed it owned the patents-in-suit after purchasing them from Boeing Intellectual Property Licensing Company. Id. at 2. Defendants filed the motion to dismiss after acquiring the purchase agreement between plaintiff and Boeing, pursuant to which Boeing assigned “all right, title and interest” to the patents, subject to certain of Boeing’s “pre-existing licenses.” Id. at 4. Judge Andrews found that, since Boeing conditioned the assignment on the terms of the licenses Boeing retained, Boeing “did not convey ‘entire patent[s], an undivided part or share of [any] patent, or all rights under the patents[s] in a specified geographical region of the United States.'” Id. at 5 (quoting Rite-Hite Corp. v. Kelley Co., Inc., 56 F.3d 1538, 1551 (Fed. Cir. 1995)). Further, Judge Andrews found that the purchase agreement could not convey standing because “Boeing retained the right to sue within its field of use.” Id. at 6. “The Federal Circuit has concluded that an exclusive field of use licensee does ‘not hold all substantial rights in the full scope of the … patent,’ and therefore lacks standing.” Id. at 6-7 (quoting Int’l Gamco, Inc. v. Multimedia Games, Inc., 504 F.3d 1273, 1280 (Fed. Cir. 2007)). Boeing also retained, among other things, the right to practice the patented methods, which also “weigh[ed] against a finding that Boeing transferred all substantial rights.” Id. at 7-8 (citing Abbott Labs. v. Diamedix Corp., 47 F.3d 1128, 1132-33 (Fed. Cir. 1995)).
In sum, having found that plaintiff lacked prudential standing, the Court held that the actions must be dismissed unless Boeing was joined as a plaintiff. Id. at 10. Judge Andrews gave plaintiff 14 days to join Boeing or the cases would be dismissed. Id. at 10-11.
Judge Richard G. Andrews recently rejected the parties’ request to redact a hearing transcript. ViaTech Techs., Inc. v. Microsoft Corporation, No. 14-1226-RGA (D. Del. Jun. 6, 2016). Relying on Mosaid Tech Inc. v. LSI Corp, 878 F. Supp. 2d 503 (D. Del. 2012) and Pansy v. Borough of Stroudsburg, 23 F.3d 772, 786 (3d Cir. 1994), Judge Andrews found that the parties did not establish good cause to seal the designated portions of the transcript. Id. at 1-2. Judge Andrews noted that the parties did not submit an affidavit or declaration showing “why disclosure of the information might cause a clearly defined serious injury to” the parties. Id. at 2. The sole fact that information had been designated as confidential under a protective order was insufficient to establish a “clearly defined and serious injury.” Id. Although there is not much interest in the information in the proposed redactions (i.e., discovery issues), “once [such information] is disclosed in a judicial proceedings [sic], it is in the public interest to be able to understand the proceedings before a judge, and redaction of the transcript hinders that public interest.” Id. Further, even if the information were “redaction-worthy” they were “significantly broader” than appropriate or necessary. Id.
In Inventor Holdings, LLC v. Bed Bath & Beyond Inc., C.A. No. 14-448-GMS (D. Del. May 31, 2016), Judge Gregory M. Sleet considered defendant’s motion for attorneys’ and experts’ fees and costs pursuant to Section 285. The case had been dismissed based on defendant’s Section 101 motion based on the Alice test. The court granted the motion as to attorneys’ fees and costs, but denied it as to experts’ fees and costs.
The Court concluded that plaintiff’s “infringement claims rested on patents whose validity are objectively invalid under current interpretations of [Section 101],” such that “whatever merit [plaintiff’s] claims had at the outset of litigation, by the time of the Alice decision, the business method claims . . . were objectively ineligible under § 101.” Id. at 4-5.
Having found the case to be exceptional based on the above, the Court awarded attorneys’ fees from the time the Alice decision had issued. But the Court declined to award experts’ fees and costs under its inherent authority, finding the award of attorneys’ fees to be “sufficient to achieve the goals envisioned by section 285.” Id. at 7.