Delaware Patent Litigation Report

Delaware Patent Litigation Report

JMOL motion is granted in part and denied in part after trial ending in hung jury

Posted in Infringement, Invalidity, JMOL/New Trial

Intellectual Ventures I, LLC, et al. v. Motorola Mobility, LLC., C.A. No. 11-908- SLR, October 28, 2014.

Robinson, J.  Renewed JMOL motion on invalidity and non-infringement after a hung jury verdict is granted in part and denied in part.  A nine-day jury trial took place from January 24 to February 4, 2014.

The disputed technology reflected in the six patents-in-suit relates to information processing, computing and mobile phones, portable processor devices, computer-implemented methods of distributing software, and products for transferring data over a network.  The court denies defendant’s renewed motion for judgment as a matter of law with respect to invalidity of the ’462 patent, concluding that a jury could properly credit the testimony of plaintiff’s expert above over that of defendant’s expert. The court further denies judgment as a matter of law with respect to the invalidity of claims 16 and 17 of the ’464 patent, concluding that a reasonable jury could properly find a lack of motivation to combine disputed prior art references.  In addition, the court denies defendant’s motion for judgment as a matter of law with respect to invalidity and non-infringement of the ’054 patent. There was sufficient evidence for the jury to credit plaintiff’s expert’s testimony.  Finally, the court grants defendant’s motion for a judgment as a matter of law with respect to invalidity of claims 1 and 8 of the ’464 patent where no substantive rebuttal evidence was provided.

Paricalcitrol product does not infringe plaintiff’s patent.

Posted in Estoppel, Infringement, Obviousness

AbbVie Inc. v. Hospira, Inc., C.A. No. 11-648-GMS, October 24, 2014.

Sleet, J.  After a two-day bench trial on November 12 to 13, 2013, the court issues its findings of facts and conclusions of law finding that the disputed claims are not invalid due to obviousness and that they are not infringed by defendant’s NDA.

The disputed products are paricalcitrol injection products used for the treatment of secondary hyperthyroidism associated with chronic kidney disease. The court finds that the prior art references cited by defendant teach away from the patent-in-suit, and that a POSIT would not have found it obvious to use cosolvents rather than a surfactant to solubilize the active ingredient Vitamin D.  Plaintiff’s secondary considerations – unexpected results, commercial success and copying – support the non-obvious determination. The infringement analysis turns on the range encompassed by the term “about” found in the asserted claims.  Defendant’s NDA product has 40% (v/v) ethanol and 10% (v/v) propylene glycol. The patent-in-suit calls for “about 15% to about 30%” ethanol and “about 20% to about 35%” propylene glycol, which terms had been construed to have their plain and ordinary meaning to skilled formulators.  The expert testimony and prosecution history support a finding on non-infringement.

Asserted claims relating to sunitinib malate compound are found to be not obvious

Posted in Invalidity, Obviousness

Pfizer Inc., et al. v. Mylan Pharmaceuticls Inc., C.A. No. 10-528-GMS, October 22, 2014.

Sleet, J.  Court issues port-trial findings that none of the asserted claims are invalid due to obviousness, plaintiffs’ Rule 52(c) motion is granted, and defendant’s Rule 52(c) motion is denied.

The court held a four-day bench trial on November 26 – 29, 2012.  The court was not convinced that the steps needed to go from prior art dimethyl sunitinib   ultimately to sunitinib malate constituted “routine optimization” of the sort described in the Merck  and Pfizer Federal Circuit opinions.  The court finds that the process of going from the prior art compound to the patented compound would have required significant guesswork and variations of parameters. Defendant’s argument that one skilled in the art would have selected dimethyl sunitinib  from approximately 1200 combinations noted in the prior art because of the common core structure it shared with three lead compounds, and because it would have addressed metabolism and solubilization problems, did not persuade the court that the claims were obvious. In addition, the court finds that secondary considerations support a determination of non-obviousness.

Reargument on fee application is granted in part and denied in part.

Posted in Exceptional Case/Willfulness, Reconsideration/Reargument, Sanctions

Technology Innovations, LLC v. Amazon.com, Inc., C.A. No. 11-690-SLR, October 23, 2014.

Robinson, J.  Defendant’s motion for reconsideration is granted to clarify reasoning but denied as to the relief requested.

Defendant seeks reargument regarding the award of attorney fees.  Defendant was right to move to dismiss at the outset of this case, and the court has adjusted its case management procedures to accommodate such requests in the future. The court mistakenly had erred in changing the character of the relief requested by defendant from that available under section 285 for exceptional cases to that derived from Rule 11. A court may award fees in the rare case in which a party’s unreasonable conduct, while not necessarily independently sanctionable, is so exceptional as to justify an award of fees.  The award of fees  is to be imposed against plaintiff and not its counsel.

Morris James Leads Delaware Today “Top Lawyers” Edition with 25 Recognitions

Posted in News

Morris James LLP is pleased to congratulate the lawyers listed below, who were most recommended by their professional peers in a survey of Delaware attorneys conducted by Delaware Today magazine. Morris James received more “top lawyer” peer recognitions and had more “top vote-getters” than any other law firm. Top vote-getters are listed in bold below and a number following a name indicates the number of recognitions this year. Continue Reading

TRO is granted with respect to colchicine products indicated for prophylaxis of gout flares

Posted in Evidence, Infringement, Sanctions, TRO

Takeda Pharmaceuticals USA, Inc. v. West-Ward Pharmaceutical Corporation, et al., C.A. No. 14-1268-SLR, October 9, 2014.

Robinson, J.  Plaintiff’s motion for a temporary restraining order is granted.

Defendants have launched a branded product, Mitigare, and intended to launch a generic version, for prophylaxis of gout. Defendants had not filed an ANDA with the FDA.  Defendants’ product has the same active ingredient, route of administration, and strength as plaintiff’s patented product.  Defendants omitted from their label mention of uses for which plaintiff has patent protection.  The court concludes that it is not limited to patented uses approved by the FDA but may consider the realities of the marketplace in which the parties compete.  In particular, the court considers the permissive attitude of the FDA toward the promotion of off-label uses of drugs. The court found there was sufficient evidence to allege direct and induced infringement. There is also sufficient evidence that a generic launch will significantly impact plaintiff’s market share. The balance of hardships weighs in plaintiff’s favor because defendants have “effectively side-stepped the ANDA regime in an effort to get its generic product to market without appropriate legal underpinnings.”

Claim construction R & R issues in ANDA case relating to Natazia©

Posted in Claim Construction, Indefiniteness

Bayer Pharma AG, et al. v. Watson Laboratories, Inc., C.A. No. 12-1726 – LPS- CJB, September 30, 2014.

Burke, M. J. Report and recommendation regarding claim construction. Five terms are construed, and the court finds two disputed claims are not indefinite.

The Magistrate construed the following terms:

1. “multiphase product”

2. “multiphase oral contraception product”

3. “phase”

4. “daily dosage units”

5. “daily oral dosage units”

In addition, the court also recommended that defendant’s request for an order finding claims 1 and 2 invalid as indefinite be denied.

Claim construction opinion issues regarding display screen technology

Posted in Claim Construction, Indefiniteness

Grpahics Properties Holdings, Inc. v. ASUS Computer International, Inc., et al., C.A. Nos. 12-210 – LPS; 12-213 – LPS; 12-214 – LPS; 12-1394 – LPS; 12-1395 – LPS; 12-1397 – LPS; 13-864 – LPS, September 29, 2014.

Stark, C. J.  The court construes 30 terms from 6 patents after a Markman hearing held on April 24, 2014 with one term found to be indefinite.

The parties submitted technology tutorials and expert reports in addition to claim construction briefing, which was completed on March 7, 2014.  The following terms were construed:

  1. Hardwired
  2. hardwired supercomputer
  3. instruction fetch means for providing an instruction stream of two

parcel items in sequence, wherein each two parcel item has a bit length of 2n

  1. instruction decode means responsive to each two parcel item for determining in one clock cycle whether the two parcel item is a single two parcel instruction having a bit length of 2n bits or two one parcel instructions, each having a bit length of n bits
  2. one clock cycle
  3. said one clock cycle
  4. instruction issue means responsive to the instruction decode means for issuing each two parcel instruction for execution during said one clock cycle, and for issuing one then the other of the two one parcel instructions for execution in sequence during said one clock cycle and the next succeeding clock cycle
  5. rasterization circuit
  6. rasterization process which operates on a … floating point format
  7. frame buffer
  8. color
  9. per-fragment operations
  10. logic
  11. geometry processor
  12. scan converter
  13. large area
  14. optical compensation film
  15. air gap
  16. monitor
  17. digital computer system/information originating source
  18. high resolution
  19. high information content [indefinite]
  20.  gamma profile
  21. gray scale resolution
  22. software controller
  23. adjustment circuit
  24. gamma value
  25. grayscale resolution
  26. graphics controller
  27. image data

Court finds personal jurisdiction based on stream of commerce theory

Posted in Jurisdiction/Venue/Standing

Robert Bosch LLC v. Alberee Products, Inc., et al., C.A. No. 12-574 – LPS, September 29, 2014.

Stark, C. J. Defendants’ motions to dismiss for lack of jurisdiction over the person are denied; plaintiff’s request for jurisdictional discovery with defendant API is granted.

The disputed technology relates to windshield wiper components. Plaintiff asserts personal jurisdiction exists under a dual jurisdiction or stream of commerce theory pursuant to Delaware’s long-arm statute 10 Del. C. § 3104(c)(1) and (4). The court concludes that the Delaware Supreme Court would hold that the stream of commerce theory provides a basis for personal jurisdiction although not expressly authorized under the long-arm statute. A non-resident’s intent to serve the U.S. market is sufficient unless there is intent to exclude.

Factual issues prevent patent misuse claim from being summarily resolved

Posted in Motion for Judgment on the Pleadings, Patent misuse, Summary Judgment

Intellectual Ventures I LLC, et al. v. Symantec Corp., C.A. No. 13-440 – LPS, September 24, 2014.

Stark, C. J.  Plaintiffs’ motions for judgment on the pleadings and for leave to file motion for summary judgment regarding patent-misuse defense are denied.

Defendant alleges that plaintiffs have monopolized relevant markets for patent portfolios that it asserts are indispensable for making, selling, and using Internet security, antivirus, storage, monitoring, and replication products.  The patent misuse claim stems from plaintiffs’ aggregation in the relevant market, which patents are asserted against alleged infringers in order to maintain a monopoly with anticompetitive results.  The court finds that whether these allegations can be proven under a rule of reason analysis requires resolution of factual and legal questions and can not be resolved at this stage. Similarly, there is a factual dispute as to whether plaintiffs improperly tied licensing the patents-in-suit with unrelated patents, making the issue not amenable to summary judgment at this time.