Inequitable conduct claims survive but false marking claims are ruled untimely

Venetec International, Inc., v. Nexus Medical, LLC, C.A. No. 07-57-MPT, March 28, 2008.

Thynge, M.J.  Court denies plaintiff’s motion for partial judgment on the pleadings and grants defendant’s motion in part to amend its answer and counterclaim to expand on its unenforceability defense.


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No infringement, invalidity or inequitable conduct found after bench trial

Takeda Pharmaceutical Company Ltd., et al., v. Teva Pharmaceuticals USA Inc., C.A. No. 06-033-SLR, March 31, 2008.

Robinson, J.  Following a bench trial, the Court finds that plaintiff failed to show infringement and is not persuaded by defendant’s claims of invalidity for obviousness and unenforceability due to inequitable conduct.

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Inequitable conduct defense withstands motion to dismiss

Elan Corporation, PLC et al. v. Teva Pharmaceuticals USA, Inc., C.A. No. 07-552-SLR, March 7, 2008.

Robinson, J.  Court denies plaintiffs’ motion to dismiss counterclaims and affirmative defenses relating to claims of inequitable conduct with leave to renew at a later date.

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Motion to amend and to supplement an inequitable conduct counterclaim is granted over futility argument

Post-trial briefing is limited to trial record

TruePosition, Inc. v. Andrew Corporation, C.A. No. 05-747-SLR, January 23, 2008.

Robinson, J.  Plaintiff’s motion to register judgment is denied.  Plaintiff’s motion to strike certain evidence referenced in post-trial briefing is granted.  Defendant’s motion to reopen the record on equitable issues is denied.

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Motion for a preliminary injunction denied in infringement case

Defendant is enjoined from marketing its DHA products

Martek Biosciences Corporation v. Nutrinova Inc., et al., C.A. No. 03-896-GMS, October 30, 2007.

Sleet, C.J.  The court denies defendant’s motions for JMOL of noninfringement of one patent and invalidity of a second patent .  It granted in part JMOL of invalidity of a third patent.  It further grants plaintiff’s motion for JMOL of infringement of the first patent and for a permanent injunction.


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Summary judgment in antitrust action is denied; jurisdictional and venue defenses are upheld

Howard Hess Dental, et al., v. Dentsply International, Inc., C.A. Nos. 99-255-SLR and 01-267, September 26, 2007.

Robinson, J.  Plaintiff’s motion for summary judgment is denied.  Defendants’ motion to dismiss for lack of personal jurisdiction and improper venue is granted.

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Unfair competition claim is defeated in summary adjudication; other motions are denied

TruePosition, Inc. v. Andrew Corporation, C.A. No. 05-747-SLR, August 23, 2007.

Robinson, J.  Defendant’s motion for summary judgment of non-infringement is denied. Defendant’s motion for summary judgment of invalidity due to indefiniteness is denied.  Plaintiff’s motion to dismiss five “standards-based” counterclaims is denied.  Defendant can not present its fraud theory at trial because it cannot prove damages.  Plaintiff’s motion for summary judgment relating to unfair competition is granted in part but denied as to fraud, equitable estoppel, implied license and promissory estoppel.

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Dueling attempts to preliminarily enjoin and to dismiss complaint both fail

Sun Optics, Inc. v. FGX International, Inc., C.A. No. 07-137- SLR, August 2, 2007.

Robinson, J.  Plaintiff’s motion for a preliminary injunction and defendant’s motion to dismiss are denied.

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Failure to mark results in dismissal; laches evidence to be presented to jury

Crown Packaging Technology, Inc., et al., v. Rexam Beverage Can Co., C.A. No. 05-608-MPT, July 24, 2007.

Thynge, M.J.  Plaintiffs’ motion to dismiss counterclaim based on failure to mark is granted. Plaintiffs’ motion to dismiss counterclaims based on laches is denied.  Evidence of laches is relevant to willfulness and can be presented to the jury.  A portion of the trial may be allocated to make a record for the Court on laches if there is additional evidence to be presented on laches.

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Patents invalidated due to inequitable conduct due to nondisclosure

Praxair, Inc. et al., v. ATMI, Inc. et al., No. 03-1158-SLR, June 13, 2007.

Robinson, C.J.  After a bench trial on inequitable conduct held on December 12, 2005, the Court concluded the prior art withheld was not cumulative and that the individuals accused of inequitable conduct were aware of that art.  Intent to deceive was based on the high materiality of the art.

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Preliminary injunction denied where plaintiff failed to establish likelihood of success on the merits and irreparable harm

Digene Corporation v. Ventana Medical Systems, et al., No. 01-752-MPT, May 9, 2007.

Thygne, J.  Court denied preliminary injunction against defendant asserting a license defense notwithstanding decision by an arbitration panel that the assignment between co-defendants of rights violated terms of a cross licensing agreement.

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Reconsideration of a permanent injunction was denied but damages will increase.

IMX, Inc. v. Lendingtree, LLC, No. 03-1067-SLR, Apr. 25, 2007.

Robinson, C.J. Motion for reconsideration of the denial of a permanent injunction based on newly identified evidence was granted in part.

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No inequitable conduct was found after bench trial.

Defendant's summary judgment motions were denied; unfair business practices claims were bifurcated.

Affymetrix, Inc. v. Illumina, Inc., No. 04-901 JJF, Mar. 30, 2007.

Farnan, J. Plaintiff’s motion for summary judgment regarding claims of intentional interference with economic advantage and unfair business practices was denied.  Defendant’s motions for summary judgment of invalidity and inequitable conduct were denied.  Claims of unfair business practices were bifurcated from the infringement trial.

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Permanent injunction was denied after infringement verdict

Praxair, Inc. et al. v. ATMI, Inc. et al., No. 03-1158-SLR, Mar. 27, 2007.

Robinson, J.  A motion for permanent injunction following infringement verdict was denied with leave to renew following appellate review of the jury verdict.

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Patent misuse defense was sufficiently pled

JMOL and new trial were denied as the court awarded enhanced damages

IMX, Inc. v. LendingTree, LLC, No. 03-1067-SLR, Jan. 10, 2007.

Robinson, J.  Defendant’s motion for JMOL and new trial was denied.  Plaintiff’s motion for enhanced damages was granted.  Plaintiff’s motion for a permanent injunction was denied with leave to supplement briefing.

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No inequitable conduct found where withheld art was not material

IMX, Inc. v. LendingTree, LLC, D. Del. No. 03-1067-SLR, Jan. 10, 2007.

Robinson, J.  After bench trial on inequitable conduct, the court found the patent was not unenforceable due to failure to disclose prior art.

 

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Cross motions for summary judgment of inequitable conduct denied

Ampex Corp. v. Eastman Kodak Co. et al., No. 04-1373-KAJ, Oct. 30, 2006.

Jordan, J.  Plaintiff’s motion for summary judgment that the patent-in-suit is not unenforceable due to alleged inequitable conduct is denied; defendants’ motion for summary judgment of inequitable conduct is denied.

 

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No infringement in camera patent dispute

"Advancis" mark cancelled as confusingly similar to "Aventis"

Sanofi-Aventis et al., v. Advancis Pharmaceutical Corp., No. 03-1083-SLR, Sept. 26, 2006.

Robinson, J.  After a bench trial in May, 2005, the court issued findings of fact and conclusions of law and ruled in favor of Aventis in this trademark infringement action.  The court will order a permanent injunction and cancellation of defendant’s trademark.

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No inequitable conduct found where withheld art was cumulative

Becton Dickinson and Co. v. Tyco Healthcare Group LP, No. 02-1694 GMS, Sept. 25, 2006.

Sleet, J.  The court held a bench trial on inequitable conduct while jury deliberated on infringement and willfulness.  After a willful infringement verdict, the court ruled that the patents were not unenforceable due to inequitable conduct.

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Pretrial rulings favor patentee after court adopts broader claim constructions

Pharmacia & Upjohn Co. v. Sicor Inc. et al., No. 04-833-KAJ, Aug. 17. 2006.


Jordan, J.  The Court construed claims regarding patent disclosing a “sterile, pyrogen-free, ready-to-use solution of anthracycline glycoside” used for treating tumors.  Defendants’ motions for summary judgment of non-infringement and invalidity for lack of written description were denied.  The Court granted plaintiff’s motion regarding defendants’ anticipation defense, and denied defendants’ motion on anticipation.  Plaintiff’s motion regarding defendants’ unclean hands defense was denied.

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Novozymes' patent was found to be enforceable and infringed

Novozymes A/S v. Genencor International, Inc. et al., No 05-160-KAJ, Aug. 24, 2006.

Jordan, J.  Defendants were found to infringe an enforceable patent relating to alpha-amylase enzymes after bench trial.  A bench trial on willfulness and damages will follow.  The 64-page opinion also addresses claim construction.

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Untimely amendment allowed to assert prosecution laches defense, but not inequitable conduct

Inline Connection Corp. v. AOL Time Warner Inc., et al., Nos. 02-272-MPT and 02-477-MPT (consolidated), Aug. 23, 2006.

Thynge, M.J.  The court granted defendants’ motion to amend their pleadings to assert prosecution laches defenses and counterclaims, and denied the motion with respect to three additional inequitable conduct allegations.

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Jury verdict against ATMI stands and court denies JMOL and new trial application

Praxair, Inc. et al. v. ATMI, Inc. et al., No. 03-1158-SLR, Aug. 17, 2006

Robinson, J.  Motion for judgment as a matter of law, or alternatively for a new trial, is denied. Defendant’s argument that no reasonable jury could have found that defendant’s products infringe was rejected.  Expert’s unrebutted yet conclusory testimony failed to persuade the jury and does not meet the necessary clear and convincing standard.  New trial unwarranted since excluded evidence resulted from trial by ambush tactics.

 

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Inequitable conduct relief denied in part and deferred in part pending additional proof as to intent

Praxair, Inc. et al. v. ATMI, Inc. et al., No. 03-1158-SLR, Aug. 17, 2006.

Robinson, J.  The Court finds Defendant failed to prove inequitable conduct by clear and convincing evidence after a bench trial with respect to some art, but with respect to others, it deferred ruling pending additional proof as to intent.  Trial testimony waived attorney client privilege with respect to communications between the attorney and the inventors, which will be reviewed in camera for evidence of intent.

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Plaintiff's DOE claims barred by prosecution history estoppel

Honeywell International, Inc. et al. v. Hamilton Sundstrand Corp., No. 99-309 (GMS), Aug. 14, 2006.

Sleet, J.  After en banc remand, and two day bench trial the court holds that prosecution history estoppel bars plaintiff from asserting the doctrine of equivalents.

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Judgment against generic pharmaceutical company IVAX after bench trial

Forest Laboratories, Inc., et al., v. IVAX Pharmaceuticals, Inc. et al., No. 03-891-JJF; July 13, 2006.

Farnan, J.   After 5-day bench trial, court finds defendants have not established that the patents-in-suit are invalid as anticipated, obvious, or impermissibly broadened upon reissue, nor that a patent is unenforceable for inequitable conduct.


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Plaintiff's choice of forum upheld despite suit with additional patents filed only hours later in another forum

Thales Airborne Systems S.A. et al. v. Universal Avionics Systems Corp., No. 05-853-SLR, June 21, 2006.

Robinson, J.  Defendant’s motion to transfer is denied.  A motion to enjoin a New Jersey suit with additional patents in dispute filed hours after the Delaware suit is granted with respect to patents already part of the Delaware action and denied with respect to patents first filed in New Jersey.


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Antitrust component of patent dispute withstands motion to dismiss

Defendants' counsel permitted to share summary of "highly confidential" licensing information with their clients

Commissariat A L'Energie Atomique v. Samsung Electronics Co., Ltd., No. 03-484-KAJ, Apr. 18, 2006.

Jordan, J.  Redacted opinion regarding Defendants’ motion to disclose material designated as highly confidential pursuant to the protective order to defendants.  The motion was granted.

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Court rules on issues argued at pretrial conference

Fact issues preclude summary judgment on equitable defenses

McKesson Information Solutions LLC v. The Trizetto Group, Inc., No. 04-1258-SLR, Apr. 5, 2006.

Robinson, J.  Cross motions for summary judgment of laches are denied due to genuine issues of material fact.  Plaintiff’s motion for summary judgment on defendant’s equitable defense is denied.

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No inequitable conduct found, injunction issues

Corning Incorporated, et al. v. SRU Biosystems, et al., No. 03-633-JJF, Mar. 7, 2006.

Farnan, J.  No inequitable conduct found.  SRU is permanently enjoined from engaging in infringing activity.

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Patent unenforceable due to inequitable conduct; no attorneys fees awarded

eSpeed, Inc. et al. v. Brokertec USA, L.L.C., et al., No. 03-612-KAJ, Feb. 22, 2006.


Jordan, J.  Post-trial rulings finding inequitable conduct.  No attorneys’ fees awarded despite exceptional case.

 

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