Delaware Patent Litigation Report : Delaware Intellectual Property Lawyer & Attorney : Morris James Law Firm : Delaware Patent Litigation Report

The disputed technology concerns a junction which consists of electrodes separated by insulation.  The court agrees with defendants that the plaintiffs are claiming a patent on junctions with resistive changes of 20%, 200%, 2000%, and up to infinity while the specification teaches how to construct junctions with a maximum resistive change of up to 11.8%, over plaintiffs’ argument that the specification need teach only one mode of practicing the invention and not all possible modes.  The patent reveals that the innovators’ best efforts yielded a maximum resistance change of 11.8% and one inventor testified he did not know how to achieve a tunnel junction generating more than a 20% change.  When the inventors created a junction generating resistance at 11.8 %, they still managed to achieve less than half of the maximum resistance predicted 20 years earlier.  An inventor can not claim what was desired but difficult to obtain unless the patent discloses how to make and use it.

This is an ANDA case regarding generic cinacalcet hydrochloride tablets.  The parties had stipulated that the accused tablets would infringe if the patents were found to be valid.  After a 3-day bench trial, the court issued its findings of fact and conclusions of law.  It found that defendants proved by clear and convincing evidence that a prior patent application was material and not disclosed to the examiner.  However, defendants failed to prove there was intent to deceive the examiner.  Thus they failed to prove by clear and convincing evidence that the patent committee or inventors engaged in inequitable conduct.  Defendant’s claim that the court should invalidate two patents for obviousness-type double patenting is also rejected.  In this case, the legal changes to the patent terms, the timing of the applications, and the length of the prosecution caused the species patent to expire before the genus.  Thus, the later-filed, later-issued patent could not create an unjustified timewise extension.  The court further rejected a second inequitable conduct claim where defendants failed to prove that the inventors owed or breached a duty to inquire with respect to a patent application where there was no evidence they were aware of the application.  Finally, defendants’ anticipation argument was rejected where defendants’ expert did not convincingly explain why one skilled in the art would envisage compounds containing two non-preferred right side substituents and ignore the preferred compounds.

The patent-in-suit related to technology to produce and screen recombinant viruses.  Defendant moved to transfer to Southern California where it is undisputed that this action could have been brought.  Plaintiff is a South Korean company with no ties to Delaware except this lawsuit.  Defendant is a Delaware corporation with its principal place of business in Carlsbad, California, where the accused product was researched, developed, tested, sold and manufactures.  At least 10 witnesses as well as the relevant documents are located there.  Applying Jumara factors, the court concludes that California is the appropriate forum.  The critical factors are the convenience of the witnesses and parties.  The court further notes that travel between Korea and California is less onerous than between Korea and Delaware.  The fact that both companies are large and can afford to indulge in litigation in the more expensive forum is no reason for the court to countenance this indulgence.

The patents-in-suit pertain to the pharmaceutical compound cinacalcet hydrochloride, which is used for treating secondary hyperparathyroidism and hypercalcemia, diseases common in patients on dialysis for chronic renal failure.  Defendants maintain that plaintiffs engaged in inequitable conduct during the prosecution of the patents-in-suit when they failed to cite to the respective patent examiners the then pending related application in order to extend unlawfully the patent terms of the patents-in-suit.  Plaintiffs objected to discovery regarding their failure to disclose the application on the ground that such information is protected by the attorney-client privilege.  Defendants contend that plaintiffs have waived the attorney-client privilege as a result of certain discovery responses, which demonstrate a relationship between an inventor and his counsel in which counsel instructed the inventor regarding his duty to disclose material information to the PTO.  The Court notes that although the Federal Circuit has not decided whether an assertion of advice of counsel as a defense to the intent prong of inequitable conduct will result in a waiver of attorney-client privilege, it has done so in the context of a claim of willful infringement.  In such cases, a litigant who asserts reliance of the advice of counsel as a defense waives the attorney-client privilege with regard to all communications pertaining to that advice.  Defendants are therefore permitted to discover all information regarding this issue and may redepose certain individuals to elicit information previously withheld on the ground of attorney-client privilege if necessary.
 

The patent-in-suit pertains to the use of electron tunneling, which is "a quantum phenomenon in which electric current can pass from one electrode through a thin insulating barrier layer into a second electrode."  Following a Markman hearing, the Court issues construction for seven disputed terms of the patent-in-suit.