Delaware Patent Litigation Report

Delaware Patent Litigation Report

Summary judgment and Daubert motion rulings issue regarding patent for cleaning concentrate packets.

Posted in Daubert/Experts, Infringement, Invalidity, Motion to Strike/Preclude, Summary Judgment

Cot’n Wash, Inc., et al. v. Henkel Corporation, et al., C.A. Nos. 12-650– SLR; 12-651– SLR, August 26, 2014.

Robinson, J. Defendant Henkel’s motion for summary judgment of invalidity is denied; its motion to exclude expert testimony and opinions is granted in part and denied in part; its motion to strike supplemental expert reports is denied as moot; and its motion for summary judgment of non-infringement is granted in part and denied in part.  Defendant Sun’s motion for summary judgment of non-infringement is granted; its motion for summary judgment of invalidity is denied; and its motion to exclude testing is granted.

The disputed technology relates to water-soluble packets containing liquid cleaning concentrates.  Defendant  Henkle reformulated its product after the litigation began and under the court’s current claim construction these products would not infringe. The parties dispute whether plaintiff has placed this new product at issue although it has requested injunctive relief and conducted discovery of the product. Plaintiff is given the option of providing a covenant not to sue on this product or the court will enter judgment on the current evidence. Summary judgment is denied as to the original product. With respect to dismissing two Henkle entities, an issue of fact remains as to one and plaintiff agrees to dismiss the other. The question of double recovery based on claims of both direct and induced infringement is left for the damages phase.  The record shows that Defendant sun’s products are non-infringing, and summary judgment is granted. As for invalidity, the court finds issue of fact as to whether samples were publicly demonstrated and whether they embody the claimed invention. Issues of fact likewise preclude summary judgment as to obviousness.  The court excludes the testimony of experts Drs. Kong and Dr. Gering regarding commercial success, industry praise and licensing because no nexus has been shown between these factors and the claimed invention. Dr. Kong’s copying opinions are also excluded because no evidence supporting copying was provided to the court.

Spoliation and noninfringement motions are denied.

Posted in Infringement, Sanctions, Spoliation, Summary Judgment

St. Clair Intellectual Property Consultants, Inc. v. Toshiba Corporation, et al., C.A. No. 09-354 – LPS, August 27, 2014.

Stark, C.J. Defendants’ motions for summary judgment of noninfringement and spoliation are denied. Oral argument on the pending motions was held on March 27, 2013 and August 6, 2014.

Defendants claim that their accused products are not sold with pluggable cards inserted in the systems. Plaintiff’s expert testified that the pluggable card element is satisfied even without the card as long as it is able to receive such a card. Thus there is a genuine issue of disputed fact and summary judgment is denied, as is also the case with respect to alternate theories of non-infringement.  With respect to spoliation, the parties dispute whether the destruction of evidence occurring between 1998 and 2010 by two prior owners of the patents-in-suit, rises to the level of spoliation of evidence meriting sanctions.  There is evidence that 12,000 pounds of documents were destroyed from 1998 to 1999,  68 boxes were destroyed in 2004, and an unknown quantity was destroyed in 2005 when there was a move in location, and finally a box of back-up media was destroyed.  Defendants contend that litigation was anticipated as early as 1996 and plaintiff had a duty to preserve it.  The court finds that with the exception of the back-up media, there is no evidence of intent to suppress evidence, and that a benign explanation is more plausible, the documents having aged out of retention requirements. With respect to the back-up media, some missing documents likely would be relevant, for example as to marking. The duty to preserve is uncontested, but user manuals and schematics produced are sufficient to determine if there was a marking obligation. However, there is no evidence of bad faith to warrant sanctions for spoliation, although the near complete destruction of historic documents is worrying and possibly negligent.

Claim terms are construed relating to liquid cleaning concentrates

Posted in Claim Construction

Cot’n Wash, Inc., et al. v. Henkel Corporation, et al..2, C.A. Nos. 12-650– SLR; 12-651– SLR, August 26, 2014.

Robinson, J. Claim construction order with respect to five terms.  Oral argument was held on May 30, 2014.

he following terms were construed:

  1. Less than 7.5 wt. % water/ Less than 5.0 wt. % water
  2. Liquid cleaning concentrate
  3. Water soluble
  4. Film
  5. A polyvinyl alcohol film

Claims are construed regarding chromatography technology

Posted in Claim Construction

Alltech Associates, Inc. v. Teledyne Instruments, Inc., C.A. No. 13-425– RGA, August 25, 2014.

Andrews, J. The court construes 15 terms from six patents. Oral argument was held on July 8, 2014

The terms construed include the following:

  1. During a/the/said chromatographic run
  2. Collecting the one or more components from the stream in a fraction collector during the chromatographic run in response to a change in the composite signal during said chromatographic run/ a fraction collector operatively adapted to collect a fraction in response to a change in the composite signal during said chromatographic run
  3. Collecting the one or more components from the stream in a fraction collector during the chromatographic run in response to a change in at least one of said signals during said chromatographic run/ a fraction collector to collect at least one fraction corresponding to one of said components in response to a change in at least one of said signals during said chromatographic run
  4. Composite signal
  5. Obliterate
  6. Actively controlling fluid flow
  7. Active splitter
  8. Actively moving
  9. Solvent-level indicating signal
  10. Initiating a replenishment process
  11. Immersing a solvent compatible portion of a pressure sensor or bubbler for generating the solvent-level indicating signal in the solvent reservoir before the chromatographic run
  12. Target time of run resolution
  13. Gradient profile
  14. Performing chromatography on the sample with the at least one gradient run for samples in which the target resolution and target time of run resolution were met with the at least one gradient run

Pilot run

Defendants no not infringe propofol patents

Posted in Infringement

Fresenius Kabi USA, LLC v. Dr. Reddy’s Laboratories, Ltd, et al., C.A. No. 13-925– RGA, August 25, 2014.

Andrews, J. Court issues opinion after a two-day bench trial  on June 2-3, 2014 finding non-infringement in ANDA case.

The disputed patent relates to a propofol injectable emulsion product marketed as Diprivan. The differences between the brand and generic products are the antimicrobial agents sued. Plaintiff concedes there is no literal infringement, but claims DOE infringement.  Plaintiff failed to prove that dipropofol is the preservative in the defendants’ ANDA products.  Plaintiff’s lack of testing weighed against plaintiff’s DOE arguments. Also, dipropofol does not function in substantially the same way as edetate claimed in the patent.

Magistrate recommends dismissing counterclaims

Posted in Dismissal, Infringement, Invalidity

Idenix Pharmaceuticals, Inc., et al. v. Gilead Sciences, Inc., et al., C.A. No. 13-1987 – LPS, August 25, 2014.

Burke, M.J.   Report and Recommendation that plaintiffs’ motion to dismiss various counterclaims be granted.

The disputed technology relates to sofosbuvir, a drug used to treat the hepatitis C virus. At issue are counterclaims seeking declaratory judgments of non-infringement and invalidity. Plaintiffs claim the court lacks subject matter jurisdiction  because of the absence of a case or controversy. The court finds this to be a close issue. Plaintiffs have pointed to differences between the patents which defendants have added and the patents plaintiffs asserted.  In the cases where subject matter jurisdiction was found, the patentee took far clearer hostile action.  Plaintiffs further move to dismiss invalidity counterclaims under Twombly and Iqbal.  The court agrees these invalidity counterclaims are insufficiently plead. While there are references to interference proceedings, there is no explanation of what types of invalidity defendants attempt to assert.  Finally, defendants fail to allege facts sufficient to support an interference claim.

Claims are construed regarding HVAC technology

Posted in Claim Construction

Carrier Corporation v. Goodman Global, et al. (2), C.A. No. 12-930 – SLR, August 14, 2014.

Robinson, J. The court construes 10 terms from one patent.

The following terms are construed:

  1. HVAC units
  2. Indoor unit/ outdoor unit
  3. Data bus
  4. Central control
  5. Control algorithms
  6. Optimal control strategy
  7. Determining an optimal control strategy for said indoor unit and said outdoor unit, selecting a particular one of said optimal control strategies, selecting one of said plurality of control algorithms and determine optimum control algorithms
  8. Characteristic(s) and characteristic information
  9. Said control
  10. Connectivity kit

Defendants’ late direct infringement defense precludes summary judgment

Posted in Infringement, Invalidity, Motion to Strike/Preclude, Sanctions

Carrier Corporation v. Goodman Global, et al., C.A. No. 12-930 – SLR, August 14, 2014.

Robinson, J. Defendants’ motions for summary judgment of non-infringement and invalidity are denied. Defendants’ motion to strike and exclude certain expert testimony is granted in part and denied in part. Plaintiff’s motions for summary judgment of no invalidity are denied.

The disputed technology relates to controls for HVAC systems.  Defendants argue that since they sell only individual units and not systems, it cannot be liable for direct infringement of systems. Defendants’ failure to articulate this defense with clarity so plaintiff could respond and the schedule adjusted if necessary results in denial of its motion. This issue should have been vetted through discovery. The court will address at the pretrial conference whether defendant will be precluded from presenting such a defense at trial. Issues of fact preclude summary judgment regarding indirect infringement. With respect to invalidity based upon anticipation, the court disagrees with defendants that no expert testimony is required.  Plaintiff’s cross-motion is denied since the court is left without the essential analysis. Both parties’ motions with respect to obviousness are denied due to disputed issues of material fact.  Defendants are precluded from relying on prior art disclosed nine months after the deadline since it was not properly vetted through discovery. The motion to strike opinions of Blackburn and Henze with respect to commercial success is granted only in part.

At risk launch before invalidity reversal was not willful

Posted in Damages, Daubert/Experts, Exceptional Case/Willfulness, Sanctions, Summary Judgment

Anesta AG, et al. v. Mylan Pharmaceuticals, Inc., C.A. No. 08-889 – SLR, August 14, 2014.

Robinson, J. Defendants’ motions for summary judgment of no lost profits is denied and of no willfulness is granted. Defendants’ motion to exclude expert testimony is denied.

The court previously found that defendants infringed but that the patents-in-suit were invalid.  Defendants launched at risk and the court enjoined sales pending appeal and required a recall.  The Federal Circuit reversed the injunction order only as to the recall.  On appeal, the invalidity determination was reversed. The subject motions relate to damages.  Defendants committed no illegalities during the launch and judgment of no willfulness was granted. With respect to lost profits, price elasticity was not discussed by plaintiff’s expert Dr. Maness in his report.  Plaintiffs may present a lost profits analysis and the expert will be limited to the evidence of record.

Case is transferred to Ohio

Posted in Jurisdiction/Venue/Standing, Transfer

Nalco Company v. AP Tech Group Inc., C.A. No. 13-1063 – LPS, August 8, 2014.

Stark, J. Defendant’s motion to transfer to the Southern District of Ohio is granted.

All but one of the Jumara factors are either neutral or weigh in favor of transfer.  Plaintiff’s choice of forum weighs against transfer.  However, since Delaware is not plaintiff’s home turf, that factor is entitled to less deference. Plaintiff is an Illinois corporation with its principal place of business in Illinois. Defendant is a small regional company with only12 employees,  all employed in Ohio. Defendant is a Delaware corporation but that fact is not dispositive. Its headquarters is 450 miles closer to plaintiff’s principal place of business than is Wilmington, Delaware.