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

The disputed technology relates to DNA sequencing.  A hearing was held 11/4/11 and trial is to commence 2/21/12.  Defendants contend that “pre-TruSeq” and Tru-Seq forked adapters and “Nextera” products used alone or with “cluster generation” products cannot infringe.  Defendants’ non-infringement motion is denied as it was based on defendants’ proposed claim construction of “double strand linker” and the court adopted plaintiff’s proposed construction.  Nextera products were acquired by defendant after the close of document production and are not at issue.  Damages are limited to infringing products.  Defendant’s cluster generation products cannot infringe alone, and plaintiff fails to provide evidence of customers’ use of particular kits with such products.  Summary judgment of non-infringement is granted with respect to these products.  Defendants’ argument that the patent expired due to failure to timely pay the maintenance fee was rejected under Federal Circuit precedent where the PTO accepted a deficiency fee payment.  Defendants’ written description argument is rejected for failure to provide evidence that a person skilled in the art would not have understood that the inventors had possession of one or more primers in the claimed method.  The court grants summary judgment of no anticipation.

The disputed technology involves DNA sequencing.  The court finds that the preamble is limiting in that each of the steps of the method claim must be performed on fragments in a mixture.  “A primer” means one or more primers.

This patent infringement case involves claims to an automated system for retrieving packages containing medication to fill prescription orders in a pharmacy.  A six-day jury trial commenced on March 21, 2011.  The jury found the patents valid but not infringed; and the court entered judgment in accordance with the verdict.  Plaintiff thereafter filed a renewed motion for JMOL on the issue of infringement and a motion for new trial, or alternatively to alter or amend the judgment.  Both motions were denied.  Plaintiff’s argument misconstrues the court’s claim construction.  A new trial is not necessary because a particular term was not construed.

Defendant in this patent case involving DNA sequencing technology moved to stay or sever.  Defendant asserted that stay was appropriate because it does not commercialize the technology accused of infringement but, instead, the infringement claims arise from a presentation, which it asserted is not an offer to sell.  Defendant also asserted that sever was appropriate because the other defendants are direct competitors and, absent any allegation that its product overlap, the Fed. R. Civ. P. 20(a) “common transaction” requirement is not met.  The motion to stay or sever was denied.  The record is incomplete at this juncture to determine if the defendant’s actions amounted to an offer to sell.  Common questions of fact and law resulting from commonalities in the accused technologies warranted joinder.

Plaintiff in this ANDA case moved for a new trial or, alternatively, to amend the judgment and findings regarding claim 7 of its patent.  The court had found the claim obvious.  Plaintiff asserted defendants’ improper reliance on certain evidence at trial as a basis for its motion.  The court reopened the record and conducted a further hearing to determine whether the inverse relationship between solubility and precipitation was obvious to a person of skill in the art.  Following the hearing, the Court again found that defendants had proven the obviousness of claim 7.  The record reflected wide acceptance of the scientific principle that solubility and precipitation are inversely related.

Plaintiff argued that the court erred in finding Defendant CMO failed to provide evidence in opposition to Defendant’s motion for summary judgment on noninfringement.  The court clarifies its claim construction of the terms “first retarded means” and “first control means.”  Based on these constructions, the court finds the patent is not identical to the accused product.  Plaintiff’s expert fails to provide the limitation by limitation discussion of equivalence; thus the DOE argument fails.  The court agreed with AUO’s reargument that its noninfringement motion should be reconsidered and granted in order to allow plaintiff to go forward on legally insufficient evidence.  Again, there is no DOE evidence.

On September 15, 2011, the Court issued an opinion denying plaintiff’s motion of no invalidity and noninfringement as to certain claims of defendant’s patents.  Plaintiff moved for reconsideration.  The Court denied the motion, reasoning that plaintiff asserted the same evidence and issues seeking a different weighing of the facts.  Reconsideration is not appropriate where a party only maintains that the Court did not weigh the facts as that party might have wanted.

The defendants in this patent infringement case involving Liquid Crystal Displays moved for summary judgment on the issues of invalidity, no inducement, and non-infringement.  One of the defendant’s noninfringement motions was denied as not supported by the record, the other defendant’s motion was granted under the court’s claim construction.  The defendants’ motions on the issue of no inducement were granted.  Plaintiff’s “transitive knowledge” theory (constructive knowledge based on patents listed on the face of another patent) is not supported by the case law.  A theory of willful blindness is not supported.  At best, the defendants were reckless or negligent.  A question of fact remains as to the issue of whether the patent is invalid based on the inherent teaching of a prior art reference.  The court declined to invalidate the patent for obviousness on summary judgment, and facts in dispute remain on the issue of whether it is invalid for failing to comply with the best mode requirement.

In this patent infringement case involving U.S. Patent 5,347,382 directed to Liquid Crystal Displays, the render its construction of a disputed 35 U.S.C. § 112, ¶6 means-plus-function claim term.  Of significance, the court did not adopt plaintiff’s proposed construction of the term “eigen-axes” in the disputed means-plus-function phrase because it embraced a concept that was not supported by the specification.

Defendant moved in this patent case to exclude plaintiff’s expert testimony as to testing of Liquid Crystal Display panels and sales activities.  Defendant asserted that the expert’s opinion regarding the testing did not satisfy Fed. R. Evid. 702 under plaintiff’s proposed claim construction.  The testimony was allowed.  The court did not adopt plaintiff’s proposed construction.  The expert may also offer testimony regarding marketing and sales activities in support of secondary considerations of nonobviousness.  An expert may rely on the testimony of others to the extent it is reliable in forming his opinions.

A pretrial conference was held in this patent infringement case involving computer security technology.  Following an infringement verdict a trial on damages now follows.  The defendant maintained, inter alia, that sales to the U.S. government are not infringing sales and, even if so, the government is licensed.  The sales will be included because defendant did not move for JMOL on this non-infringement issue during the liability trial.  Prior art was shown to be available at the time of invention and relevant to the Georgia Pacific factors.  Products found to be noninfringing or those not accused of infringement are relevant to damages and admissible upon a proper foundation at trial.  On the facts presented, however, products the jury found to be infringing are not admissible even though the court later reversed the verdict as to these products.  Expert testimony as to an available design-around is excluded as speculative.  Evidence regarding the defendant’s patents and product development is admissible through lay testimony but its expert may not offer an opinion based solely on a reiteration of that testimony.  The defendant’s expert also may not testify as to an asserted groundbreaking technology in the area because there was no substantive comparison to the invention and thus no foundation for admission.  Further, the expert may not testify as to what features of the accused product are covered by the patents-in-suit, as the testimony offered was conclusory and did not account for the evidence during the liability trial.  Similarly, testimony that the patents-in-suit provided minimal value in the industry is excluded, as the testimony is conclusory and not based on use of the patented technology.  Plaintiff may not rely on inaccurate sales data and ask the jury to weigh it against data corrected later during discovery.  Defendant’s purchase price for a related technology is excluded because there was no apportionment to the value of the accused product.  Evidence showing a decline in the market is admissible.  The verdict form should specify a royalty rate.  The parties may not discuss the reexamination proceeding.

On August 26, 2004, Plaintiff initiated this patent case against defendants.  During summary judgment the patents were later held invalid as anticipated.  The Federal Circuit affirmed as to one patent and remanded as to the others.  A jury trial commenced on September 2, 2008. Reexamination proceedings were also initiated.  On August 11, 2011, following an appeal of the jury’s verdict, Symantec filed a motion to amend its answer and counterclaims to add allegations of inequitable conduct.  The motion was denied.  A sufficient basis to review the record of a concurrent (and now-concluded) reexamination proceedings was not presented.

Asahi Glass Co., Ltd. and AGC Flat Glass North America, Inc. assert infringement of U.S. Patent Nos. 3,664,938 and 6,193,856 directed to technology for applying thin film coatings to glass. Guardian Industries Corp. denied infringement an asserted the invalidity of the patents.  Plaintiffs moved to exclude defendant’s non-infringement and invalidity expert testimony.  Supplemental information was required to make a finding as to whether the expert’s report adequately addressed enablement, written description, anticipation, and obviousness.

Plaintiffs assert infringement of patents directed to technology for applying thin film coatings to glass.  Defendant denied infringement and asserted the invalidity of those patents.  Summary judgment of infringement was granted under the court’s claim construction as to certain product claims but was denied as to process claims.  Defendant’s motion for summary judgment of non-infringement was granted in part regarding a method claim for making targets where it was undisputed that the defendant did not make the accused sputtering targets.  The court noted that plaintiffs have a cause of action against the target manufacturers, declining to apply 35 U.S.C. § 271(g) to domestically-manufactured goods.  The remaining portion of the non-infringement motion was denied.  The court also denied summary judgment as to invalidity under 35 U.S.C. § 112, ¶1 for lack of enablement and under 35 U.S.C. § 103 for obviousness, as both rested on facts in genuine dispute involving complicated technology.  Defendants’ motion to file supplemental briefing in support of its invalidity motion was denied.

Intermec filed this patent case on May 18, 2007.  Palm asserted two of its patents directed to portable or handheld computing devices, U.S. Patent Nos. 6,665,803 and 7,096,049 (collectively, “the Palm patents”), in its third amended answer.  On summary judgment, Intermec moved for a finding of invalidity and noninfringement of the Palm patents.  Palm moved for a finding of no invalidity and infringement of those patents.  The court corrected typographical errors in the patents and then construed the claims. Intermec failed to demonstrate that certain claims were invalid for lack of enablement or written description, as the claims were amenable to construction.  Similarly, it failed to meet its burden of showing anticipation.  Palm pointed to no evidence to establish infringement of certain claims, however.

This patent case involves generic versions of Lumigan® (bimatoprost ophthalmic solution) used to treat intraocular pressure in people with glaucoma.  The defendants did not dispute infringement following claim construction and the evidence at trial support a finding of infringement.  The patents-in-suit, U.S. Patent Nos. 5,688,819 and 6,403,649 were not inherently anticipated.  Defendants waived certain obviousness arguments by failing to present them at trial and otherwise failed to meet their burden because their expert’s testimony was not credible.  The patents are valid.

Honeywell moved to strike Solvay’s Daubert motion directed to Honeywell’s patent damages expert.  Honeywell maintained that at a previous teleconference the Court precluded further Daubert motions.  The motion was denied, as the previous statement by the Court was directed to further patent law expert Daubert motions.  Solvay’s Daubert motion was granted in part and denied in part.  The methodology employed to demonstrate a causal nexus met the standard set forth in Fed. R. Evid. 702 and Honeywell sufficiently complied with discovery request.  However, as Honeywell’s second supplemental damages report was not contemplated by the court’s amended scheduling order, the motion is granted and this report is stricken because Solvay has not had the opportunity to conduct discovery.

The patented process relates to non-ozone depleting hydrofluorocarbons.  Following remand, Honeywell renewed its motion for summary judgment of invalidity pursuant to 35 U.S.C. § 102(g)(2).  The motion was denied.  Conception and reduction to practice outside this country followed by communication of the invention to and performance of the process in the U.S. qualified as prior invention.  However, genuine issues of material fact exist as to whether the prior invention was “concealed.”  Honeywell’s motion for summary judgment of no willfulness is granted.  “Honeywell presented a credible invalidity defense, precluding a finding of objective recklessness despite the Federal Circuit’s ultimate rejection of the defense.”

This case involves patented technology directed to coated hot- and cold-rolled steel sheets.  Following a January 11-14, 2011 trial, the jury returned a verdict of no infringement and found the patent-in-suit invalid.  Plaintiff moved for JMOL of no anticipation and no obviousness and for a new trial.  The motions were denied.  Substantial evidence supported the jury’s finding that alleged prior art publication anticipated the asserted claims, as well as its finding of motivation to combine on the issue of obviousness.  A new trial is not warranted.

Ethypharm brought this antitrust action alleging that Abbott interfered with the marketing and selling of Ethypharm’s fenofibrate product, called Antara®, under an exclusive licensing agreement with a U.S. distributor.  Abbott moved for summary judgment to dismiss the allegations of anticompetitive conduct and sham litigation.  The motions were granted.  Ethypharm did not proffer evidence showing a causal connection between the alleged antitrust violation and antitrust injury.  Similarly, the record lacked evidence to support a finding of sham litigation regarding Abbott’s infringement, invalidity, and inequitable conduct theories.

This is a patent case involving several patents directed to high performance data cables and methods of making such cables. Infringement issues were resolved before trial.  A trial on the remaining validity issues was held September 7-15, 2010.  The jury returned a verdict finding some asserted claims valid and others invalid.  Before the court are plaintiffs’ renewed motion for JMOL of no anticipation and no obviousness or for a new trial; defendants’ renewed motions for JMOL of anticipation, for amendment of the judgment, or for a new trial; and plaintiffs’ motion for a permanent injunction.  A new invalidity trial at defendants’ expense was granted in accordance with the court’s trial practice guidelines.  Defendants violated those guidelines by presenting an obviousness defense over plaintiffs’ objection that was not previously vetted during discovery.  Defendants’ regarding invalidity of a claim due to obviousness is granted; defendants’ other motions were denied.  Plaintiffs were not entitled to a permanent injunction because they failed to demonstrate irreparable harm and inadequacy of damages and the harm to defendants outweighed the harm to plaintiffs.

This is a February 2, 2011 ANDA case involving a generic version of Silenor®.  Defendants replied seeking declaratory judgment of invalidity and non-infringement of the patent-in-suit and an additional six unasserted but related patents.  Plaintiffs thereafter covenanted not to sue defendants as to these six patents and moved to dismiss the associated counterclaims for lack of subject matter jurisdiction.  The motion was granted.  “There is no case or controversy regarding those patents because the covenant not to sue removes the original subject matter jurisdiction[.]”  The possibility of a future impediment to defendants’ ability to market Silenor® because of these patents is a non-issue.

This is a patent infringement case between NETGEAR, Inc. and Ruckus Wireless, Inc. concerning wireless and wired local area network technology that plaintiff NETGEAR initiated on November 19, 2010.  On May 6, 2011, Defendant Ruckus moved to transfer the case to California where an earlier filed case is pending between the parties.  Both parties are Delaware corporation each having a principal place of business in California.  The first-filed California case is stayed for inter partes reexamination.  The motion to transfer was denied.  The defendant is not a regional enterprise, is a Delaware corporation, and the patents at issue in the first-field California case are unrelated.

Plaintiffs S.O.I.TEC Silicon On Insulator Technologies, S.A. and Commissariat à L’Énergie Atomique (herein collectively, “Soitec”) filed this patent case involving silicon wafer technology against MEMC Electronic Materials Inc. (“MEMC”) on May 19, 2008.
MEMC thereafter answered and asserted counterclaims for infringement.  A jury trial commenced October 25, 2010.  The parties filed post-trial motions in December 2010.  MEMC’s motion for reargument on inequitable conduct was denied.  MEMC “could not move the entry of any evidence absent the aid of witnesses . . . and [t]he court’s civil trial guidelines have long provided that ‘[d]ocuments shall not be admitted except through the testimony of a witness’ . . . ‘[u]nless otherwise permitted upon application by the parties[.]’”
Soitec’s motion for reconsideration of denial of its earlier emergency e-mail request was denied.  Soitec chose to utilize the court’s emergency e-mail procedure to obtain a speedy resolution and “cannot now complain that it was denied the opportunity for further argument[]” due to the inherent limitations imposed by that procedure.
Soitec’s motion for JMOL or, in the alternative, a new trial on invalidity was denied.  The jury could have reasonably found that Soitec failed to meet its clear and convincing burden of proof.  Interestingly, Soitec’s motion was filed untimely pursuant to the parties’ joint stipulation and proposed order extending the deadline to file motions and post-trial briefs.  Thereafter, MEMC argued that Fed. R. Civ. P. 6(b)(2) precluded an extension of the 28-day deadline imposed by Rules 50(b) and 59(b).  Although the court agreed, the motion was considered on the merits pursuant to the “unique circumstances” doctrine.  Under this doctrine, as determined by the Supreme Court in Bowles v. Russell, 551 U.S. 205 (2007), jurisdictional rules cannot be waived, “while compliance with [non-jurisdictional or claims-processing rules] may be waived where the equities permit.”
MEMC’s motion for JMOL or, in the alternative, for a new trial on enablement and obviousness was denied.  As to “first substrate,” “the jury had before it sufficient information from which to reasonably conclude that a person of ordinary skill in the art could perform mono-implantation of hydrogen into a first substrate without undue experimentation.”  As to “mechanical cleaving,” “the jury could have found that MEMC did not meet its high burden of proof[.]”  Similarly, on the issue of obviousness, the jury could have reasonably credited rebuttal testimony to find that “MEMC did not meet its clear and convincing burden[.]”
Soitec’s motion for a permanent injunction and a lift of the stay on damages was denied.  “[I]t is unclear at this juncture what damages discovery will reveal . . . [and] the appropriateness of a permanent injunction cannot be weighed on this record.”  Damages discovery and a schedule will not be set until after the Federal Circuit’s review of the verdict.
Soitec’s motion for leave to file a reply in support of its motion for reargument and to strike MEMC’s reply brief in support for its JMOL/new trial motion was denied as moot.
 

This is a patent infringement case filed September 23, 2010 by Eon Corp. IP Holdings LLC seeking damages and injunctive relief against defendants regarding U.S. Patent No. 5,663,757, which is entitled “Software Controlled Multi-Mode Interactive TV Systems.”  Defendants moved to dismiss for failure to state a claim, arguing, inter alia, that plaintiff’s second amended complaint fails to satisfy the pleading requirements for direct infringement, indirect infringement, and joint infringement.  The motion was denied as to direct infringement because plaintiff’s allegations satisfy Fed. R. Civ. P. Form 18.  However, the motion was granted as to indirect infringement because plaintiff “fail[ed] to allege sufficient facts that would allow the court to infer that defendants had any knowledge” of the patent-in-suit.  Similarly, plaintiff’s joint infringement claim was dismissed because the “complaint does not provide specific facts explaining any alleged relationships among defendants . . . [and] [p]laintiff fail[ed] to identify any defendant as exercising ‘control or direction’ over the allegedly infringing acts of other parties.”

This is an antitrust class action brought by drug wholesalers on March 12, 2007 alleging that they paid overcharges on their purchases on Miralax® and generic polyethylene glycol 3350 as a result of defendant, Braintree Laboratories’, monopoly prior to July 2004.  Braintree’s U.S. Patent 5,710,183 covering Miralax® was found anticipated in 2004 in a prior patent case after the inventor provided “that the clinical trials for Miralax® were not done under confidentiality agreements.”  Following the denial of its motion to dismiss the instant case, Braintree sent a letter to plaintiffs stating that it would cease selling them products, including Miralax®.  Thereafter, plaintiffs moved to return the status quo, which was granted.

This is a patent infringement case involving U.S. Patent No. 6,049.835, entitled “System for Providing Easy Access to the World Wide Web Utilizing a Published List of Preselected Internet Locations Together With Their Unique Multi-Digit Jump Codes.”  Plaintiff, Internet Media Corporation, initiated the case on August 16, 2010.  Defendant, Hearst Newspapers, LLC, moved to dismiss under Fed. R. Civ. P. 12(b)(6), asserting, inter alia, that the asserted means-plus-function claims are indefinite under 35 U.S.C. § 112, ¶ 6 because the specification fails to disclose an algorithm by which the computer performs the recited function.  The motion was denied because it “would require the court to construe said claims, an action that is not appropriate in connection with a motion to dismiss.”

On November 13, 2009 and on January 3, 2010, plaintiff initiated false marking cases against defendants, BIC Corporation and BIC USA Inc., and Bayer Healthcare LLC, respectively.  The defendants each moved for dismissal asserting plaintiff’s failure to properly plead fraud with particularity, as required by Fed. R. Civ. P. 9(b).  The motions were granted in a consolidated opinion and plaintiff moved for reconsideration arguing, inter alia, a failure to analyze the Federal Circuit’s standard set forth in Pequignot v. Solo Cup Company, 608 F.3d 1356 (Fed. Cir. 2010).   The motion for reconsideration was denied.  The Federal Circuit’s unanimous decision after Solo Cup in In re BP Lubricants USA, Inc., 637 F.3d 1307 (Fed. Cir. 2011), “resolved the split among district courts and held that Rule 9(b)’s particularity requirement applies to false marking claims.”  Plaintiff failed to proffer a factual basis in support of its false marking allegations.

This is an ANDA litigation involving fluocinonide cream.  Plaintiff, a Delaware corporation, is the assigned of four patents covering a composition or method for enhancing the potency of fluocinonide hydrochloride cream.  On May 19, 2010, plaintiff filed identical actions against defendant, a New York corporation, in Delaware (Civ. No. 10-419) and in New York with respect to three of the four related patents.  Defendant’s motion to transfer that action was granted because the New York litigation had progressed further.  Plaintiff then initiated the instant action in Delaware as to the fourth patent, a continuation of one of the patents already at issue in the New York litigation.  Defendant then moved for transfer, which was granted, inter alia, because the instant case and the first New York action “share common questions of law and fact and plaintiff’s claim in this case is based on the same ANDA.”

This is a patent litigation involving technology relating to disk drives and other data storage devices.  On October 11, 2010, plaintiff, a Bermuda company having its principal place of business in Bermuda, initiated litigation.  Thereafter, defendant, a Delaware corporation, with a principal place of business in California moved to transfer the litigation asserting, inter alia, that it was a regional enterprise.  The motion was denied.  Although defendant asserts that it is a regional enterprise, the facts of this case are distinguishable from Synthese USA, LLC v. Spinal Kinetics, Inc., Civ. No. 08-838-SLR, 2009 WL 463977 (D. Del. Feb. 24, 2009).  Here, defendant “has offices not only in California, but also in Minnesota, the United Kingdom, and Japan.”  Thus, defendant is “not only a national player, but more of an international one, displacing it from regional enterprise status.”  The other private and public factors also did not favor defendant.

This is a patent litigation involving technology relating to the production of video games.  All of the U.S. defendants are Delaware corporations.  Two of the defendants have related Western European corporations named as defendants.  The plaintiff is a California corporation.  On October 21, 2010, plaintiff initiated the case.  On February 1, 2011, the defendants moved to transfer the case to the Northern District of California because, inter alia, “Northern California is ‘a national hub for development of online multiplayer computer games[.]’”  The motion was denied.  “[T]he court reiterates, consistent with its usual mantra, that because all U.S. defendants are Delaware corporations, they have no reason to complain about being sued in Delaware.”  No defendant was a regional company, and no compelling reasons existed for transfer.  The Western European defendants “are in fact closer to this district than to the Northern District of California[.]”

This is a patent litigation involving patents related to electronic commerce.  The plaintiff and defendants are each a Delaware corporation with a respective principal place of business outside of Delaware.  Four of the five defendants have a principal place of business in California.  On December 10, 2010, plaintiff filed an amended complaint.  The defendants thereafter moved to transfer the case to the Northern District of California.  The motion was denied, inter alia, “because all defendants are Delaware corporations, [and] they have no reason to complain about being sued in Delaware.”  The asserted forum selection clause only controlled the parties’ confidentiality agreement and the other private and public factors did not favor defendants.

Accenture initiated this patent infringement and state law tort action against Guidewire on December 18, 2007.  The patents-in-suit are directed to a computer program for developing component-based software capable of performing tasks relating to insurance transactions, such as claim processing.  Guidewire filed supplemental briefing in support of partial summary judgment of invalidity under 35 U.S.C. § 101, asserting that the patents-in-suit fail under Bilski.  The court, which had previously determined that the claims failed the machine-or-transformation test, reasoned further that they also failed to satisfy § 101 under the broader standard adopted by the Supreme Court in Bilski.  Guidewire alleged no change in controlling law, offered no new evidence, and did not show clear error of law or fact to support a reargument of its previously denied summary judgment motion of invalidity for indefiniteness or the on-sale bar and a disagreement over claim construction did not support Guidewire’s requests for interlocutory appeal.  However, the court clarified its claim construction that one of the patents-in-suit did not contain a Markush group.  Accenture’s motion to strike portions of a reply brief was denied, without comment, as moot.

This is an ANDA litigation involving generic extended release cyclobenzaprine products.  From September 29 to October 7, 2010, a bench trial was held on infringement, invalidity, and inequitable conduct.  On May 12, 2011, the court issued its opinion finding that defendants’ generic extended release cyclobenzaprine products infringed the patents-in-suit, and that the patents-in-suit were obvious.  After trial, one defendant began selling its generic products in the market, thus triggering its 180-day exclusivity period under the Hatch-Waxman Act.  Plaintiffs moved for a TRO to enjoin the defendant from continuing to manufacture, use, offer to sell, or sell generic extended release cyclobenzaprine products during the pendency of plaintiffs’ appeal to the Federal Circuit.  The court granted plaintiffs’ motion for a TRO on the condition that plaintiffs seek an expedited appeal and remove their authorized generic from the market.  The court held a hearing to consider a motion for reconsideration on May 23, 2011, and issued an order denying the motion the following day.  The court then entered an order specifying the terms of the injunction to maintain the status quo.  In summary fashion, the terms are as follows:  (1) the generic launcher is enjoined from commercializing or using the generic extended release cyclobenzaprine products; (2) plaintiffs and those in concert with them shall not commercialize or use an authorized generic of the product; (3) the generic launcher shall recall generics they launched “at risk” and shall issue a letter explaining the terms of the TRO; (4) plaintiffs shall post a bond in the amount of $10 million in the event defendants prevail on appeal; (5) plaintiffs shall seek an expedited appeal; (6) plaintiffs and all defendants in this multidistrict litigation are required to give 10 days notice of any intended launch of their respective generic cyclobenzaprine extended-release products; and (7) the injunction shall remain in place until the earliest of a further order from this court, an order from the Federal Circuit, or affirmance of the court’s invalidity opinion.

This is an ANDA litigation involving generic extended release cyclobenzaprine products.  From September 29 to October 7, 2010, a bench trial was held on infringement, invalidity, and inequitable conduct.  On May 12, 2011, the court issued its opinion finding that the generic extended release cyclobenzaprine products infringed the patents-in-suit, and that the patents-in-suit were obvious.  After trial, one defendant began selling their generic products in the market, i.e., the defendant engaged in an “at risk” launch of their product, thus triggering their 180-day exclusivity period under the Hatch-Waxman Act. Plaintiffs moved for a temporary restraining order to enjoin the continued manufacture, use, offer to sell, or selling of the generic extended release cyclobenzaprine products during the pendency of plaintiffs’ appeal to the Federal Circuit.  The court granted plaintiffs’ motion for a TRO on the condition that plaintiffs seek an expedited appeal and remove their authorized generic from the market.  The generic launcher then moved for reconsideration.  The court held a hearing on the motion for reconsideration on May 23, 2011, and issued an order denying the motion the following day.  The generic launcher argued that it was error for the court to grant a TRO while concluding that the likelihood of success on the merits weighed equally for both parties.  The court agreed that in the normal course, i.e., at the start of the case, that a showing of likelihood of success is a prerequisite to entry of a TRO.  However, the court disagreed that this factor controlled the analysis in the post-trial setting of the current dispute between the parties.  The court reasoned that here “this factor switches from having a gate-keeping function to simply being one of the four factors to be considered when granting or denying an injunction.”  The court reasoned further that, at minimum, plaintiffs demonstrated a “substantial case on the merits,” which the Federal Circuit has found sufficient for an injunction pending appeal.  The court also dismissed the generic launcher’s contention that the balance of harm favored it by reasoning, inter alia, that it brought the harm on itself by launching “at risk” even though it could have preserved the180 day exclusivity period throughout the appeal to the Federal Circuit by not launching and because the court required the posting of a bond should the generic launcher prevail on appeal.

This is an ANDA  litigation involving generic extended release cyclobenzaprine products.  From September 29 to October 7, 2010, a bench trial was held on infringement, invalidity, and inequitable conduct.  On May 12, 2011, the court issued its opinion finding that defendants’ generic extended release cyclobenzaprine products infringed the patents-in-suit, and that the patents-in-suit were obvious.  After trial, defendants began selling their generic products in the market, i.e., defendants engaged in an “at risk” launch of their product, thus triggering their 180-day exclusivity period under the Hatch-Waxman Act.   Plaintiffs moved for a temporary restraining order to enjoin the defendants from continuing to manufacture, use, offer to sell, or sell generic extended release cyclobenzaprine products during the pendency of plaintiffs’ appeal to the Federal Circuit.   The Court granted plaintiffs' motion for a TRO on the condition that plaintiffs “agree to seek an expedited appeal and remove their generic product from the market.”   The Court reasoned that (1) plaintiffs and defendants were equally likely to prevail on appeal; (2) plaintiffs would be irreparably harmed, as defendants admitted, and, despite defendants' assertion that the “at risk” launch already harmed plaintiffs, plaintiffs could recover some of their monopoly pricing if the court enjoined the defendants and plaintiffs removed their generic product from the market; (3) harm to the defendants is minimal even though, as defendants assert, that their “at risk” launch triggered the 180-day exclusivity period because the defendants launched despite a finding of infringement at trial and knowing they bore a risk of a TRO from the court and the Federal Circuit; and (4) the public interest fact was neutral.   The parties were then ordered to submit a proposed form of order on May 23, 2011.

This case is multi-district consolidated ANDA litigation involving a generic version of the muscle relaxant drug AMRIX®, which has the active ingredient cyclobenzaprine hydrochloride in extended release formulation.  A bench trial was held September 29 to October 7, 2010. On May 12, 2011, the Court issued its findings of fact and conclusions of law.  The Court found the patents-in-suit infringed and not invalid for failure to disclose the best mode. However, the Court found the patents-in-suit invalid for being obvious.  The Court reasoned, inter alia, cyclobenzaprine existed in immediate release form well before the issuance of the patents-in-suit, the delivery system and claimed dissolution profile were disclosed in the prior art, and the optimization of the immediate release profile into the claimed extended release form was routine for one of ordinary skill in the art at the time of the invention.  The failure of ALIZA to make an extended release version of cyclobenzaprine is not evidence of failure of others because that company’s goals were different from those of plaintiff.  Plaintiff failed to prove commercial success where its costs exceed sales by more than $55 million despite an aggressive marketing campaign.  Fulfillment of long-felt need was not established where plaintiffs relied on the immediate release version of the drug rather than disputed extended release version.  With respect to inequitable conduct, the court holds that it cannot find intent to deceive when the only evidence is the fact that a particular patent, although material, was not disclosed to the examiner.

This is a Hatch-Waxman litigation concerning fentanyl buccal tablets for the treatment of cancer pain.  The defendant is the second generic filer with an unapproved ANDA FDA application.  In an earlier litigation between plaintiff and the first generic filer, the Court found the underlying patents invalid for lack of enablement.  That invalidity issue is pending before the Federal Circuit. Plaintiff moved the Court in the instant case to stay litigation pending the Federal Circuit’s review.  The Court granted the motion.  The Court reasoned that the Federal Circuit’s decision would simplify the issues for trial, and might obviate the need for a trial if the Court’s invalidity finding is upheld.  The Court reasoned further, inter alia, that without an approved ANDA the defendant would suffer no prejudice because it could not enter the market.

Plaintiff alleges infringement of various claims of four golf ball patents.  Defendant stipulated to infringement following claim construction but maintained that the asserted claims were invalid as anticipated and obvious.  The case was remanded from the Federal Circuit for retrial on the validity issues.  Following retrial in March 2010 in which claims at trial were found invalid, plaintiff moved for JMOL of no anticipation and no obviousness or for a new trial.  The court found no improper conduct of counsel or circumstances evidencing a miscarriage of justice sufficient to grant plaintiff’s motion for a new trial.  The court further found that substantial evidence supported the jury’s verdict as to obviousness and, therefore, denied plaintiff’s motion for JMOL (or for a new trial) as to validity.  The court amended the judgment to enforce the parties’ earlier stipulation whereby a finding of invalidity as to the patent claims at issue in the retrial would also apply to the claims defendant had stipulated to infringement.

This is a declaratory judgment action where the disputed technology relates to a system for creating and managing custom web sites.  In December, 2008, plaintiff’s motion for summary judgment of noninfringement on two patents was granted on the grounds that the accused products did not meet the “releasing” limitation of the claims.  The court also found no anticipation.  The Federal Circuit vacated the non-infringement rulings.  This motion addresses noninfringement based on “intercepting” and “dispatching” limitations and indirect and literal infringement of one patent. Defendant’s DOE argument fails as untimely and also because it is merely a restatement of literal infringement arguments.  The court finds that plaintiff’s non-infringement argument fails under the court’s claim construction and that issues of fact remain for the jury.  Genuine issues of material fact precluding the grant of defendant’s motion for summary judgment of literal infringement.  The court further leaves the issue of contributory infringement for the jury.  Defendant has proffered sufficient proof to withstand summary judgment on induced infringement.

**On April 29, 2011, the Court amended this opinion to reflect that earlier the Court had denied plaintiff’s motion for summary judgment of obviousness.

The disputed technology relates to cardiovascular stents.  In 2005, a jury found for plaintiff on infringement and validity.  The district court upheld the verdict in 2007, and the Federal Circuit affirmed in March, 2009.  A trial on damages and willfulness was set for February 2010.  Defendant filed an ex parte reexam in October 2009. No amendment to the claim language resulted.  Defendant filed a second reexam proceeding January, 2011.  In February, 2011, the PTO issued a non-final rejection of one claim (found to have been infringed by defendant) as anticipated and obvious.  The court denied the motion to stay pending reexam, finding the request to stay untimely and noting the parties are direct competitors.  The accused stent in this action has the same stent architecture as the stents found to infringe in the previous litigation.  Plaintiff contends that collateral estoppel bars defendant from claiming the accused stent does not infringe, and defendant does not dispute infringement.  The parties dispute whether the hypothetical negotiation for damages purposes should date from the time the first stent was first marketed in the U.S. or from the time the stent actually at issue in this suit was first marketed.  The court agrees with plaintiff that the stents are separate and distinct and the later date applies as a matter of law.  The court grants summary judgment sua sponte in favor of plaintiff regarding the date of the hypothetical negotiation.  Defendant’s Daubert motion fails, and expert testimony regarding the early proposed hypothetical negotiation dates which were rejected by the court will not be admitted at trial.

The disputed technology is the generic version of Fentora (fentanyl buccal).  Trial was held in May, 2010.  The court finds that the balance tips in favor of plaintiffs on the issue of whether the ANDA product contains a solid solution, and finds plaintiffs have proved infringement of 4 claims of the ‘981 patent.  The court rejects the argument that the claims are obvious, noting a failure to proffer a motivation to combine and failure to establish the prior art provides a product containing a solid solution, such as required for inherency.  The court concurrently enters judgment for Watson on other patents addressed in a memorandum opinion in Civ. No. 08-330.

The disputed technology relates to devices to treat ventricular asynchrony and for treating hemodynamic dysfunction by using electrodes to stimulate the heart ventricles.  Plaintiff filed this declaratory judgment complaint in December, 2007.  A Markman hearing took place in January, 2010, and a bench trial was held In January and March, 2010 on validity and enforceability.  Post-trial briefing was completed on February 22, 2011.  The court interprets certain disputed claims, and determines that the preambles of 2 claims are limiting.  The parties dispute who has the burden to prove infringement.  The court holds that the burden is always on the patentee. Defendants failed to prove literal or DOE infringement.  Plaintiffs have also failed to prove anticipation and obviousness.  Finally, the court rejects a prosecution laches defense, finding no unreasonable or unexplained delay.

This litigation is an ANDA dispute regarding Fluocinonide cream and is the mirror image of litigation pending in New York.  The New York action was filed on the same day as the Delaware action, but it is not known which was filed first.  Therefore the first-filed analysis is inconclusive.  Normally, plaintiff’s choice of forum should be given due consideration, especially where plaintiff is a Delaware corporation and the proximity to New York causes no undue burden.  However, in this case, the New York suit has progressed faster than the suit in Delaware, which tips the balance in favor of transfer.  New York is the center of the dispute and there is no compelling reason for both suits to proceed or for this one to be the one to survive.

This patent case was filed against 50 parties.  The disputed patent concerns an electronic display system.  It is not necessary at the pleading stage for plaintiff to identify a third party who directly infringes in order to state a claim for indirect infringement, such being a proper question for discovery.  However, plaintiff failed to allege defendants had actual notice of the patent at the time of the alleged infringement.  Plaintiff’s statement that defendants had actual notice of infringement of the patent before the filing of the complaint is insufficient.

This action arises out of an ANDA filing by defendant for a generic version of Fentora® used to treat breakthrough pain in cancer patients.  As a result of the ANDA filing, plaintiffs filed an infringement suit (relating to the ‘605 and ‘509) patents and amended the complaint to seek a declaratory judgment of infringement of the ‘981 which is directed to a method for oral transmucosal drug delivery.  Defendants assert defenses and counterclaims of noninfringement and invalidity.  Following a bench trial, the court finds that plaintiffs have failed to prove that defendant infringes the patents-in-suit and that the claims for the patents-in-suit are not enabled.  In reaching the decision, the Court construes three disputed terms.

The Court considers plaintiff’s motion for a preliminary injunction based on trademark and false advertising claims, and defendant's partial motion to dismiss for failure to state a claim.  Plaintiff manufactures a popular line of single-serve coffee machines under the "Keurig" brand name, along with the corresponding coffee filled cartridges for use in said machines.  Defendant manufactures and sells coffee filled cartridges for use in plaintiff's machines under the "Grove Square" brand name.  Defendant's product's package contains small text on the bottom left hand corner of the front of the package that reads "For use by owners of Keurig® coffee makers."   Also, on the bottom of the package, a disclaimer to the left of the directions reads “Sturm Foods, Inc. has no affiliation with Keurig, Incorporated."   Defendant used the smallest amount of the mark possible.  It printed the mark in plain text without the accompanying color pattern, font, or stylized background indicative of plaintiff's normal use of the mark.  This minimalist use, coupled with a disclaimer on the bottom, strongly favors defendant's use of the mark.  Because plaintiff has failed to show a likelihood of success on the merits on the remainder of its trademark and false advertising claims, plaintiff's motion for a preliminary injunction is denied.  Defendant’s motion to dismiss is denied without discussion.

The technology at issue involves systems and methods for enabling a user to complete a retail transaction over the Internet via a combination and Internet kiosk.  Before considering the parties’ competing motions on invalidity and infringement, the Court construes certain disputed terms.  The Court finds that defendants' products do not infringe the asserted claims of the patents-in-suit under the court's claim construction.  In addition, claim 1 of the '457 patent is invalid for indefiniteness, as are the asserted claims that are dependent on it.  Therefore, defendants' motion for summary judgment of noninfringement is granted, defendants' motion for summary judgment of invalidity is granted in part, plaintiffs’ motion for summary judgment of validity is granted in part, and plaintiff’s motion for summary judgment of infringement is denied.

The parties are manufacturers of automotive windshield wiper blades.  The Court considers defendant’s claim of unenforceability of the ‘974 patent on the basis of inequitable conduct following bench trial.  Defendant contends that plaintiff failed to list an inventor and disclose certain prior art to the PTO.  Although styled as a motion, the Court does not consider motions for summary judgment on inequitable conduct claims, but instead held a bench trial on the issue.  The Court denies defendant’s claim finding that evidence is lacking on the requisite intent to deceive.

The disputed technology involves surgical fasteners used in medical procedures.  The court agrees with plaintiff that defendants' obviousness-type double patenting defense is moot in view of a terminal disclaimer filed August 5, 2010.  Plaintiff moved to strike portions of Dr. Alexander Slocom’s expert report.  The court finds the motion to be an attempt to avoid trial on inequitable conduct and denies the motion, the inequitable conduct case to be tried as a bench issue.  Plaintiff proceeded on the assumption that false marking was not in the case until the court ruled on the motion to bifurcate that claim.  It obtained no expert opinion prior to the close of discovery nor filed a 56(f) motion requesting discovery in response to defendants’ motion.  The court notes that the doctrine of equivalents is inapplicable to a false marking analysis.  The motion for leave to serve a supplemental report was untimely – 3 months after defendants filed their motion for summary judgment, and over 2 months after the answering papers were filed.  The court construes a disputed term such that there can be no literal infringement of one asserted claim.  The court finds no presumption that estoppel bars an equivalence claim.  Disputed terms not addressed in the summary judgment motions, consistent with the court’s practice, will be presented by the parties during the trial and the court will make its claim construction prior to the case going to the jury.

The parties reached a settlement in this patent dispute, the agreement containing a dispute resolution clause which provided that the District of Delaware Court would be the sole venue for disputes arising out of the patents.  The parties stipulated that the court would retain jurisdiction for disputes arising out of the agreement but did not include a “so ordered” line.  After unsuccessful mediation, defendant filed reexamination requests and plaintiff amended the complaint to add a breach of contract claim.  The court granted plaintiff’s breach of contract motion and a jury trial was held, the jury upholding the validity of all but one claim.  Defendant moved to dismiss the breach of contract claim and vacate the earlier opinion based on lack of subject matter jurisdiction.  This court reluctantly granted that motion.  Plaintiff then pursued the contract claim in Chancery Court, which suggested a joint motion to the District Court, which reopened the matters and entered modified dismissals dealing with the jurisdictional issues.  The Federal Circuit reversed in part, remanded, and a second trial was held resulting in a defense verdict.  The issue now is the timeliness of the Rule 60 motion.  The court finds it is timely, vacates the order dismissing the breach of contract claim, and reinstating the opinion granting plaintiff’s motion for summary judgment on breach of contract.

The disputed technology relates to patents directed to systems and methods for managing wireless networks.  The complaint filed on October 8, 2008, alleges three patents are infringed.  The court first construes four disputed claim terms in accordance with defendant’s proposed constructions.  Since all of defendant’s invalidity arguments were based on plaintiff’s proposed claim constructions, defendants’ arguments are rejected and the invalidity motion is denied.  The court finds that because defendant’s products directly set stations, maximum transmit power value, they do not infringe the asserted claims as a matter of law.  Here, the patent's prosecution history overcomes the presumption found in the doctrine of claim differentiation.  Plaintiffs statement during prosecution limited the transmit power backoff to an attenuated value based on the maximum transmit power of the access point.  Because defendant's accused product does not specify the amount by which the access points transmit power level has been reduced, but instead specifies its current maximum transmit power levels, defendant's products do not literally infringe the asserted claims as a matter of law.

This qui tam action was brought for alleged violations of the false marking statute regarding certain thermometers with expired patent numbers.  Violations of the Lanham Act and Delaware Deceptive Trade practices Act were subsequently added.  Defendant moved to transfer the action to Massachusetts.  Plaintiff, a Pennsylvania resident, filed in Delaware due to the court’s extensive experience with patent law and close proximity to her residence.  Plaintiff corporation is an Italian corporation and a direct competitor of defendant.  Plaintiff corporation has sold thermometers in Delaware but alleges defendant caused its products to no longer be sold in Delaware.  Defendant is a Massachusetts corporation selling thermometers in Delaware and numerous states.  Its offices and manufacturing facility are in Massachusetts.  The court grants the transfer motion, noting there is litigation in Massachusetts involving the same subject matter and four patents, although it is not a related first-filed action.  Also, defendant is not a Delaware corporation and Delaware represents a very small market for defendant’s products.

This case began in Texas where defendants produced substantial documents before this case was transferred to Delaware.  Defendant objects to producing the contested documents at this time because they relate to damages, which has been bifurcated from this first trial.  Plaintiff argues that by withholding customer data defendants have prevented it from acquiring evidence of customer configurations of the accused products.  The court finds that additional discovery under Rule 56(f) is not justified because plaintiff did not diligently pursue discovery necessary to prove the elements of its claims.  The court reserves the right to review this matter again in the context of summary judgment briefing.

This case was brought in January 2010 and is set for trial in January 2011, the parties having chosen to forgo summary judgment motions in return for an expedited schedule.  The disputed technology related to steel processing.  One of the disputed claims, “hot-rolled steel sheet” involves a product-by-process claim.  Plaintiff’s argument to enlarge the scope of the claim through the broad term “comprising” so as to include sheets which were also cold-rolled was rejected.  The court further construed “steel sheet has a very high mechanical resistance” in terms of tensile strength.

This dispute centers on the use of the trademark THE AFFORDABLE HOUSE and the Anticybersquatting Consumer Protection Act.  Defendants were accused of using plaintiff’s mark in their domain name www.theaffordablehouse.com.  The court previously granted in part plaintiff’s motion for summary judgment and denied defendants’ cross motions.  Plaintiff has proved his mark is distinctive and that defendants’ mark is confusingly similar.  It now considers whether defendants acted in bad faith, and finds that they did under the nonexclusive factors identified in section 43(d)(1)(B)(I) of the Lanham act.  The court finds that defendants insisted on using the disputed domain name even though it bore no relation to their legal names and had only a tenuous relation to the subject matter of the website.  The court awarded statutory damages in the amount of $25,000 in light of the bad faith infringement of plaintiff’s mark.

Prior to this suit, a non-party filed an ex parte request for reexamination of two of the three patents-in-suit on February 16, 2010 on the grounds of obviousness.  The PTO thereafter issued office actions that rejected each of the patents’ claims as obvious. Defendants then moved to stay this case pending reexam.  The court refers to Belden (D.Del. 9/2/10) for recently-iterated factors which bear upon whether there is a fair possibility that the stay would work damage on another party.  Here, the case is in its infancy with no discovery having been conducted and no final scheduling order.  One motion was filed within a month after this suit was filed. Issues for trial d not completely overlap those to be resolved on reexamination, yet this is not a situation where the PTO declined to review one or more of the asserted claims, nor is there an inequitable conduct allegation, both of which would disfavor a stay.  After considering the status of the litigation, the timing of the request to stay, the status of the reexam proceedings, and the relationship of the parties (they do not compete in this case), the court finds that the facts weigh in favor of a stay in this case, a decision which the court may revisit if it is not satisfied the reexam is proceeding as promptly as would be otherwise achieved through litigation. Parties will file a status report on the reexam proceedings June 15, 2011.

The disputed technology relates to systems and methods for accurately entering information into a highly structured database from multiple non-uniformly formatted data sources, in particular systems and methods for collecting and maintaining information about job applicants.  Plaintiff filed suit on august 27, 2007.  Based on a challenged contention interrogatory response and 30(b)(6) testimony, plaintiff argues that defendants should be estopped from making the argument that the accused products operate differently.  The court agrees that defendants’ interrogatory responses serve as an admission in this case that their products meet the claim limitations.  The court additionally issues claim construction on disputed terms.  After construing those terms, defendants are found to infringe all but three claims.  The invalidity analysis turns on the priority date as plaintiff attempts to swear behind the prior art references cited by defendants.  Plaintiff fails to prove conception by clear and convincing evidence earlier than the priority date of the ‘939 patent, establishing a priority date of December 21, 1997.  The court determines that the resolution of invalidity issues is best left for trial.

The disputed technology concerns semiconductor films (wafers) used in the manufacture of microelectric devices.  The court previously bifurcated willfulness and damages for both discovery and trial, but declined to bifurcate the issues of intervening rights and inequitable conduct.  Defendant’s motion for summary judgment of noninfringement is granted with respect to the Bruel patent; plaintiff’s motion that the patents in suit satisfy the written description requirement is granted with respect to the Bruel patent.  On cross motions regarding the ‘396 patent, the court finds the patent to be invalid, noting the disarray in the prosecution history, and finding the argument that the patent is valid to border on being frivolous.  The court finds that claim 24 of the ‘234 patent is not amenable to construction since there is no disclosure how diffusion of free gas from the wafer is to be measured, and is, therefore, indefinite as a matter of law.  Challenges to plaintiff’s ‘009 patent based on anticipation, obviousness, and written description fail.  Defendant also fails to convince the court on a best mode challenge based on the argument that the inventors failed to disclose a pre-cleaning step in a bonding technique.  The court denies plaintiff’s motion regarding no inequitable conduct, finding an inference of intent to deceive is justified.  Defendant did not file a cross motion on the topic of inequitable conduct.  A bench trial on inequitable conduct will be held but stayed pending expected guidance from the Federal Circuit in the pending matter of Therasense, Inc. v. Becton, Dickinson & Co.  With respect to Defendant’s ‘812 patent, Plaintiff’s lack of enablement defense fails because Plaintiff’s own expert admitted the patent is enabled.  The court denied Plaintiff’s motion regarding obviousness due to the cursory treatment of those issues and lack of expert opinion.  As for Plaintiff’s non-infringement motion, the court finds that Defendant did not narrow its claim as Plaintiff argues.  Plaintiff’s motion as to non-infringement of one claim of defendant’s patent is granted.  A motion to admit the testimony of patent law expert John T. Goolkasian is denied.

The court previously ordered plaintiffs to file an amended complaint.  The amended complaint is the subject of this second motion to dismiss.  The defendant challenges whether plaintiff has included a statement that the defendant has been infringing the patent “by making, selling, and using [the device] embodying the patent.”  Plaintiff has removed the conditional language which led to the dismissal of the original complaint and specified “Skype’s Software version 3.8.0.188 and other versions” in the amended pleading.  The court finds defendants’ argument that this pleading still provides no guidance on the scope of relevant discovery to be unpersuasive since only voice mail technologies are in dispute.  The court finds under Iqbal that the complaint contains sufficient factual matter to state a claim for relief.  Defendants’ argument that plaintiffs must allege that every step of any accused voice mail method is used by someone in the U.S. is rejected.  The allegation that the action arises un § 271 is found to be sufficient.  The court does not consider allegations in defendants’ affidavit stating that server “farms” are located outside the U.S. since they do not fall within the narrow category of documents properly considered on a motion to dismiss.  Parties should resort to Rule 26 to 37 for more particular information rather than the more cumbersome Rule 12(e).

In this ANDA case the disputed technology relates to aqueous liquid pharmaceutical compositions comprising gatifloxacin and disodium edetate as well as methods for using those compositions.  After a bench trial held from January 12 – 14, 2010, the court issued an opinion on June 14, 2010 finding claim 7 of the patent-in-suit invalid as obvious.  Plaintiff moved for relief on the basis that defendant’s expert, Dr. Paul Myrdal, relied on arbitrary solubility curves prepared for trial which were not properly vetted though discovery despite the court’s caution against citing such evidence as foundational in an invalidity theory.  The court will not grant a new trial based solely on defendants’ failure of proof with respect to a basic principle of science (that solubility and precipitation bear, to some extent, an inverse relationship to each other) due to errors made by both parties. Instead, the court opens the record to allow further evidence on the relationship between precipitation and solubility.

The disputed patents relate to windshield wiper beam blade technology.  A jury found two claims of the ‘974 patent obvious, two claims from the ‘434 patent were obvious, but found three claims valid.  The jury found infringement for at least one claim of both patents.  Plaintiff’s motion for JMOL and new trial is conditionally granted with respect to obviousness of two claims of the ‘974 patent; two claims of the ‘434 patent and the derivation of one claim of the ‘974 patent.  The motion is denied as to other claims of these two patents.  Defendant’s motion for JMOL and or to amend judgment or for a new trial are denied.  Defendant’s motion for a permanent injunction is denied due to failure to define the relevant market and the existence of additional competitors.  The court finds that the jury’s obviousness verdict on two claims of the ‘974 patent and two claims of the ‘434 patent because it was not based on substantial evidence in that it was not supported by expert testimony (as a result of an in limine ruling).  The court found substantial support for the jury verdicts challenged by defendant and denies JMOL or new trial for defendant.

The court considers defendants’ renewed motion to dismiss for lack of personal jurisdiction and improper venue following the conclusion of jurisdictional discovery.  Plaintiff is a Delaware corporation with its principal place of business in St. Louis.  The patents in suit relate to data and communications cables. Defendant LS Korea is a Korean manufacturer of, inter alia, the category 6 communications cables accused of patent infringement in this action.  Defendant LS America sells its cable products directly to customers or through non exclusive, independent sales representatives to regional distributors.  Neither defendant has any physical presence in Delaware.  Defendants never had any offices, employees, agents or bank accounts in Delaware.  Nor is there any evidence that defendants ever maintained any inventory, owned any property, executed any contract, performed any service or litigated any legal action in Delaware.  LS America, through its sales agent made at least four sales to Delaware customers.  While LS America did not specifically target Delaware it did not take any action to prevent future sales in Delaware.  Therefore, plaintiff has met both (c)(1) and (c)(4) of Delaware’s Long Arm Statute as to LS America.  However, it cannot show the same intent to serve the Delaware market by LS Korea since there is no evidence that LS Korea sent any cable to Delaware.  As for due process, there is no doubt that LS America placed the accused category 6 cables into the stream of commerce.  However plaintiff fails to show that LS America completed an act "purposefully directed toward the forum State.  LS America has not designed any products.  There is no indication that it advertises in Delaware and LS America has no office, agents, employees or property in Delaware.  Although LS America did provide warranties on the Delaware sales, there is nothing to indicate that the contact was regular.  Therefore, there is no jurisdiction as to LS America.  Plaintiff’s allegations of general jurisdiction over LS Korea must also fail.  There is no evidence that LS Korea sent any cable to Delaware and the warranties issued on the Delaware sales are not sufficient to confer jurisdiction.  Absent personal jurisdiction over defendants, the court finds that the interests of justice are satisfied by the transfer of the instant case to New Jersey.

Plaintiff filed this infringement action and defendant responded by, among other things, asserting counterclaims of infringement of defendant’s patents-in-suit.  Plaintiff seeks to dismiss the counterclaims and asks the court to take judicial notice of certain documents which it alleges is all that is needed to dismiss the claims.  Specifically plaintiff urges the court to take judicial notice of the contents of the license translation and notice letter translation, interpret their contents as giving plaintiff a license to the defendant’s patents, disregard the confirmation translation as being parol evidence, and dismiss the counterclaims pursuant to Rule 12(b}{6) based on plaintiff’s affirmative license defense.  Plaintiff’s motion fails on numerous counts including that the license and notice letter “do not come close” to meeting the standard of F.RE. 201 (b) as they are neither generally known within the territorial jurisdiction of the trial court nor capable of accurate and ready determination by resort to sources whose accuracy cannot reasonably be questioned.

Plaintiff filed infringement this action on two sets of patents (the “System patents” and the “Terminal patents” collectively the “Intermec patents”).  The court considers several cross motions for summary and partial summary judgment on infringement and invalidity.  The Intermec patents relate to data capture systems, data capture terminals, and bar code readers.  Plaintiff accuses two groups of defendant’s products of infringing the Intermec patents: Palm's Treo 750, Treo 700w, and 700wx products, based on Microsoft's Windows Mobile ™ operating system and Palm's Treo Centro, Treo 680, Treo 700p and Treo 755p products, based on the Palm Operating System ™  The cross motions on infringement are largely premised on differing claim constructions of the key limitations which the court finds to be dispositive.  Applying the construed terms, the court finds that there is no evidence of direct infringement.  After reviewing the evidence adduced, the court grants in part plaintiff’s motions for partial summary judgment on the validity of both the System and Terminal patents.  As to the ‘678 patent, the court finds that the terms are ambiguous and therefore the claims are invalid as indefinite but finds the ‘499 patent not invalid as indefinite.  Defendant has asserted that eight prior art references anticipate one or more claims of the System patents. Plaintiff’s motion as to no anticipation of the System patents is granted as to Billings Sojka, Danielson and Rhoades.  Plaintiff’s motion is also granted as to no anticipation of certain claims of the ‘678, ‘645 and the ‘499 patents by Delaney and Helferich.  Similarly, defendant has asserted six prior art references that anticipate the Terminal patents.  Plaintiff argues that given proper claim construction, no question of fact remains and it is entitled to summary judgment of validity. Plaintiff’s motion as to no anticipation of the Terminal Patents is granted-in-part with respect to the Federal Express Tracker, Mizzi, Gombrich ‘716 and Culp and as to certain claims of the ‘971 patent by Crossman.  Defendant’s motion that certain claims of the ‘499 patent are invalid for violation of the best mode requirement, lack of enablement or inadequate written description is denied.  Next plaintiff moves for partial summary judgment on defendant’s inequitable conduct defense with respect to the System patents.  Defendant asserts that two of the inventors of the System patents as well as plaintiff’s attorneys were aware of certain prior art.  Defendant has failed to produce sufficient evidence of intent to deceive.  Therefore plaintiff’s motion is granted.  Plaintiff’s motion for summary judgment as to defendant’s inequitable conduct defense regarding the Terminal patents is also granted.
Finally, plaintiff moves for summary judgment that the Terminal patents are not unenforceable for failure to join inventors.  The court is unable to find support for defendant’s proposition that mere failure to name a co-inventor renders a patent unenforceable.
 

The Court construes twelve disputed terms for the five of the patents-in-suit (the “Intermec Patents”).  Although the parties have identified dozens of disputed terms, the court has construed the terms most essential in view of the parties' infringement positions and positions regarding the validity of the Intermec patents and stays construction of the remaining terms pending completion of discovery regarding those patents.

Plaintiff's motion to stay pending appeal of the PTO's final rejections of all claims of the patents in suit is denied.  The status of the present litigation and nature of the issues at bar disfavor a stay.  Fact and expert discovery in this case have been completed for two years.  Claim construction and summary judgment have been completed and the court's opinion has been vetted through the Federal Circuit.  With respect to prejudice, the timing of plaintiff’s requests for reexamination and this motion weigh against a stay.  Plaintiff filed the requests for reexamination about nine months after it filed suit. Moreover plaintiff moved to stay only after the Federal Circuit’s remand and more than a year after the final rejections.  In addition, the parties' are direct competitors which factor weighs in favor of a stay.  Conversely, the potential prejudice to defendant is mitigated by its own conduct in prosecuting the patents-in-suit on reexamination.  On balance, however, the factors weigh against a stay.  Therefore, plaintiff’s motion to stay litigation is denied.

The patents-in-suit are generally directed to telecommunications cables.  After the suit was commenced, defendant filed a request with the PTO for inter partes reexamination of the '095, '537, '999, and '641 patents, and ex parte reexamination of the '491 and '503 patents.  The PTO, determining that a substantial new question of patentability existed for each patent, granted the requests and initiated reexamination proceedings.  The CRU issued an ACP in rejecting all of the asserted claims with the exception of the’503 patent for which it noticed its intent to issue a reexamination certification confirming the patentability of the claims of the '503 patent.  On August 24, the court ruled upon the parties' cross motions for summary judgment.  Only validity remains to be decided in the jury trial.  At the pretrial conference 11 days before trial, defendant orally moved to stay litigation with respect to the patents at issue and proceed to trial only with respect to the validity of the '503 patent.  Defendant’s request for a stay is untimely.  It has known about the ACPs rejection of the other patents for several months but did not request a stay until after issuance of the memorandum opinion.  The late request is prejudicial and is therefore denied.

The technology patented involves high performance data cables and methods for making such cables.  The court finds compliance with the marking statute is amenable to summary judgment.  Defendant’s package marking does not comply where it has not identified a factual issue with respect to inability to mark the product itself.  Defendant’s motion is granted except with respect to the method patent.  Defendant’s knowledge of the patents is insufficient.  Plaintiff must show an affirmative communication of a specific charge of infringement.  The court finds that certain claims have been infringed and plaintiff has not made the requisite showing as to others.  Defendant’s motion for summary judgment is granted in part and denied in part.  The parties are directed to advise the court which patents and accused products remain in suit.

Plaintiff seeks a declaratory judgment that defendants BIC and Bayer falsely marked their respective products with expired patent numbers in violation of § 292.  Defendants moved to dismiss for failure to state a claim upon which relief may be granted and under Rule 9(b).  Defendant BIC is a leading manufacturer and seller of lighting products including pocket lighters while Bayer is one of the largest marketers of over-the-counter medications and nutritional supplements in the world. Courts are split as to whether the heightened pleading requirements of Rule 9(b) apply to §292 claims.  Following the Eastern District of Pennsylvania, and other districts, the Court applies the standard of Rule 9(b) and holds that the allegations that BIC "intentionally included expired patents in the patent markings" with the "intent to deceive the public" do not meet the heightened pleading standard.  Plaintiff has provided no indication there was litigation on any of these patents that would imply a working knowledge of the patents, conscious knowledge of the scope and expiration date.  Similarly, plaintiff pleads no facts to support her contentions that Bayer included the expired patent numbers on any products with the intent to deceive the public.  Therefore, the actions are dismissed.

The Court issues claims construction of 14 terms for six of the seven patents-in-suit.  The Court finds it has no jurisdiction over the seventh patent based on a covenant not to sue between the parties as to this patent.  Defendants’ claim that a case or controversy exists as to the seventh patent solely by virtue of the covenant not extending to future products is too speculative a basis for jurisdiction.

McZeal held that for a direct infringement claim the plaintiff need plead only (1) jurisdiction); (2) ownership; (3) defendant has been infringing by “making, selling, and using [the device] embodying the patent; (4) notice; and (5) demand for injunction and damages.”  Defendants argue that the complaint does not meet the third element in that it provides no detail but states defendants infringe by “making, selling, and using electric motors that embody the patented invention.”  The court holds it is not necessary to identify specific products, i.e. model names, but must identify a general category of products.  General categories of accused products – i.e. processors, chipsets and/or motherboards – are alleged with respect to specific defendants.  The indirect infringement claims are dismissed with respect to certain defendants because the plaintiff failed to allege sufficient facts that would allow the court to infer that defendants had any knowledge of the patent-in-suit at the time they were committing the allegedly infringing activities.  The motion was denied with respect to another defendant since detailed factual assertions allege the requisite knowledge.  Mere recitation of the elements of indirect infringement is insufficient.  Motion to dismiss willfulness claim for lack of detail was denied.

A topical ophthalmic solution comprised of moxifloxacin hydrochloride is the subject of this ANDA case.  In an opinion dated 10/19/09, the court found the patent-in-suit was valid and infringed but did not order injunctive relief.  Plaintiff is entitled to a declaration that the FDA may not approve defendant’s ANDA prior to 2020. Plaintiff has failed to prove irreparable harm, however.  Its argument that any deprivation of its statutory right to exclude others constitutes irreparable harm is unavailing.  The court notes that defendant will not be able to market its product until six month after the patent expires.

Defendant, a Canadian entity, previously asked the court to postpone judgment until plaintiff proved the validity of the patent-in-suit, claiming defendant could not afford representation in the U.S.  The court subsequently determined that certain claims were indefinite.  In addition, the court’s claim construction resulted in a requirement of multiple parties’ participation in order to infringe, finding the law of divided infringement prohibits infringement by defendants.  The case was dismissed as to all other defendants.  The remaining defendant complaints if improper service of process since the process was not served via the Central Authority.  The court finds that service by mail of untranslated copies of the complaint was sufficient since Canada did not object to service by mail.  The court declines to enter default judgment because plaintiff has failed to show prejudice, and defendant presents facially meritorious defenses.  Defendant’s delay is furthermore not attributable to bad faith.  The court requires defendant to answer by September 15 through counsel, but if it cannot retain U.S. counsel, it may proceed without Delaware counsel.  If it cannot afford any counsel, upon the filing of an affidavit to that effect the court will refer this to the Federal Civil Panel to find volunteer counsel.

The court considers ten motions in two related infringement actions.  The patents-in-suit relate to voice over internet protocol ("VoIP") telephony.  Teles is the listed owner by assignment of the patents-in-suit.  Teles transferred ownership of the '453, '902 and '431 patents by assignment to SSBG, a German corporation owned solely by inventor and founder of Teles.  Two of the patents, ‘453 and ‘902 have been subject to an inter partes reexamination requested by defendant which has proceeded concurrently with this litigation.  Each of the '453 and ‘902 claims on reexamination were rejected as anticipated and/or obvious.  The parties have since appealed both final actions to the Board of Patent Appeals and Interferences. The court first denies as moot defendant's Motion to Dismiss since the parties agree that SSBG should be substituted for Teles in this case.  Plaintiff’s attempt to add to the list of accused products is also denied since over 200 had already been listed and additional time had been grated to delete from not add to the list. In light of the concurrent ruling on construction, the court grants defendant’s motion for summary judgment of noninfringement and denies plaintiff’s motion for partial summary judgment of infringement.  Defendant seeks judgment that two patents are invalid in view of the same references it has advanced in the reexaminations.  The BPAI and Federal Circuit have not affirmed the rejection of any of the claims on reexamination and, consequently, the PTO's findings at this stage are not binding.  However, due to the unique posture of this case, the court will stay the issue of validity of the '453 and '902 patents pending appeal of the rejections on the reexaminations.  Daubert motions relating to validity are denied as moot. Defendant’s inequitable conduct claim, defendant asserts that the prosecuting attorney for the '431 patent application who also acted as lead counsel for SSBG in the '453 and '902 reexaminations, committed inequitable conduct by knowingly and intentionally failing to disclose information about those reexaminations to the examiner of the copending '431 patent application.  In light of the similarity of rejected and copending claims in related applications, counsel’s involvement with both the reexaminations and the '431 application, counsel's failure to specifically inform the examiner of the rejections on reexamination, and the lack of any indication that the Examiner excused counsel from his duty of disclosure - an intent to deceive on the part of counsel is readily inferrable.  Plaintiff’s motion for summary judgment of no inequitable conduct is denied because in view of the high level of materiality of the withheld information in this case, an intent to deceive by a named inventor on both the rejected patents and new '431 patent application is inferable.  Defendant’s motion for summary judgment on the invalidity of the ‘431 patent is granted.  The Court finds that it is indefinite and that the written description requirement is not satisfied by the '431 patent disclosure.

Plaintiffs' claims under the Lanham Act and State law consumer fraud and deceptive trade practices act stem from a series of internet posts relating to plaintiff’s and defendant’s respective dietary supplement products.  Four days after filing their complaint, plaintiffs filed a motion for a TRO, a preliminary injunction and sought expedited discovery requesting that the court compel defendants to withdraw the material at issue.  Looking at the statements at issue in defendant’s blog, the court finds that none of them warrant injunctive relief at this time without any expert testimony or consumer surveys to support plaintiffs’ claims.  To the extent plaintiffs address implied falsity, they offer responsive posts to defendant’s blogs as evidence of actual confusion.  Though many of these are negative as to plaintiff, only a few correlate a decision not to buy plaintiff’s product with particular statements on the blog.  Plaintiffs' motion to supplement the preliminary injunction record by reference to the parties' 1997 agreement is also denied.  The accompanying papers have not yet been filed and it is not clear how facts related to a potential breach of the contract could supply evidence of actual consumer confusion.

The Court issues its Markman decision construing five terms for the three patents-in-suit.  The parties had identified dozens of disputed terms.  However, the Court construed only the terms most essential in view of the parties' infringement positions and positions regarding the validity.  Because the court elected to stay its consideration of the validity of the '453 and '902 patents pending a final determination on the merits of the reexaminations of those patents, the court did not construe every term identified by the parties.

Plaintiff alleged that defendant engaged in false advertising in violation of Section 43(a) of the Lanham Act and the Uniform Deceptive Trade Practices Act stemming from defendant's varying use of the term "Helioplex®" in its advertising.  Defendant moved for reconsideration on the grounds that, even if the advertisement were literally false, plaintiff must prove that the falsity materially influenced consumers' purchasing decisions.  It also disagreed with the court's finding of literal falsity.  The court finds no basis to amend its ruling.

The product in dispute is a generic version of ZYMAR (0.3% gatifloxacin ophthalmic solution) used for the treatment of bacterial conjunctivitis.  This action was filed 11/29/07.  With respect to the obviousness arguments, the court declines to accept the characterization of the prior art disclosure as among a “laundry list” of excipients compatible with quinolones.  While the Federal Circuit has predicated a finding of nonobviousness on a sheer number of variable combinations, the Court did so in the face of a prior art disclosure of “potentially infinite genus.”  Here, since disodium edentate is listed among eight “conventional ingredients” in one patent-in-suit and a similarly small number in the other, this case does not approach an infinite genus.  Secondary considerations favor neither party.  Here there is evidence of contemporaneous invention with respect to certain claims.  The inference of nonobviousness by the commercial success of the branded drug is weakened where, as here, an earlier patent precludes the market entry of a generic and the patentee attributes commercial success to the later patent.  Defendants have failed to demonstrate lack of enablement.  Further, the court concludes that the applicants did not make material misstatements or withhold material information and does not reach intent to deceive.

Plaintiff first asserted invalidity of defendant’s patent-in-suit at the deposition of its expert.  At that time, plaintiff offered documents to defendant purportedly relating to plaintiff’s Trakker product, and offered to have the expert testify about the documents, the Trakker, and his opinions regarding invalidity of the patent-in-suit relative to the Trakker.  The Court denies defendant’s motion to exclude evidence and argument relating to the Trakker.  First, plaintiff’s disclosures regarding invalidity were untimely and constituted prejudice and surprise.  Plaintiff’s argument that its delay was justified by the alleged changing of defendant’s infringement contentions is not persuasive.  At no point was plaintiff precluded from proposing claim constructions that would encompass the Trakker as relevant prior art and, thus, could have proffered the Trakker disclosures within the time allotted.  However, disruption of the trial is unlikely as it is not currently scheduled.  In addition, exclusion of the Trakker disclosures would be an extreme and unwarranted sanction in this case.  Plaintiff has offered to provide any additional discovery sought on the issue of the Trakker, including producing the expert for an additional deposition.  Moreover, there is no evidence of bad faith or intention to violate the Court’s order.

Plaintiff filed this action alleging violations of the Lanham Act and the Uniform Deceptive Trade Practices Act.  The specific advertising at issue in this litigation concerns defendant's new "Ultra Sheer Dry-Touch Sunblock SPF 100+" sunscreen (hereinafter, the "100+ Product").  Plaintiff contends that advertising falsely claim that the 1 00+ Product contains "Helioplex®" - a photostabilizing agent proprietary to defendant.  On May 18, 2010, the Court granted partial summary judgment that the challenged advertisements are literally false.  Defendant now moves for reconsideration on the basis that it was deprived of the opportunity to present a full response to plaintiff’s motion.  Insofar as the court's prior order limited defendant's response to plaintiffs’ motion, the defendant will be permitted to submit evidence that its representations that the 100+ Product contained Helioplex® during the period at issue were not false on their face.  Plaintiff will be permitted a response as to its position on the evidence and representations presented.

Plaintiffs are direct purchasers of MiraLax or the generic PEG, products which are used to treat constipation.  Plaintiff claims the earlier ANDA litigation was a sham designed to delay the FDA’s approval of GlycoLax and improperly maintain monopoly power.  The ANDA case was voluntarily dismissed on June 3, 2004, and the FDA issued its approval for GlycoLax shortly thereafter.  The court had earlier concluded that even an admittedly weak patent enjoys a presumption of validity and previously held that Braintree was immune from antitrust liability under Noerr-Pennington.  The court finds that the amended complaint sufficiently conveys a causal nexus between the injury alleged and Braintree’s monopolistic behavior.

The patents-in-suit claim automated systems for selecting and delivering packages to fill orders, such as patient prescriptions.  Plaintiff alleges infringement through the manufacture and sale of the Pill Pick Automated Drug Management System.  The Court rules on objections to the Magistrate’s Report and Recommendation on claim construction and the parties' motions for summary judgment, as well as the disposition of certain evidentiary disputes.  The Court adopts the Magistrate’s findings that plaintiff has resolved any issue of ownership of the patents-in-suit and therefore has standing to sue.  The Court also agrees with the Magistrate’s conclusion that plaintiff failed to properly mark its Robot-Rx system.  Therefore, plaintiff’s potential damages are limited beginning when defendant received a cease and desist letter.  The Court upholds the Magistrate’s denial of defendant’s Motion to Exclude Expert Testimony finding no error of law under Daubert.  Next the Court adopts all but two of the Magistrate’s recommendations as to claims construction.  Finally, the Court adopts the recommendation of no inequitable conduct, concluding that defendant has failed to demonstrate either that the patentees knew or should have known of the materiality of the references, or that they intended to deceive the PTO.

The Court considers plaintiff's motion for partial summary judgment as to liability for false advertising against defendant.  The Court finds that the labeling and advertising at issue, linking DEHN-free 100+ Product and Helioplex®, is literally false and, therefore, violates section 43{a) of the Lanham Act and the Uniform Deceptive Trade Practices Act.  However, the scope and duration of defendant's violation is unclear since there has been no discovery.  Therefore, plaintiff’s request for injunctive relief and for an order compelling defendant to publish corrective advertising or a press release and attorney fees is deferred until after discovery and briefing on the issue is complete.

The parties previously entered into a settlement agreement with a covenant not to sue with respect to E-911 geolocation.  Defendant’s Geometrix geolocation product was later found to infringe plaintiff’s patent and the court entered a permanent injunction which did not address E-911.  The court considered whether defendant disclosed control channel capability timely and prior to the accounting phase of this litigation.  The court finds insufficient evidence of fraud or other misconduct which prevented plaintiff from pursuing its case.  Plaintiff’s request for a contempt hearing for what are essentially new infringement claims strains the limited resources of the court and is denied.  The court previously apprised counsel that costs would be imposed if it found the matters are not worthy of a contempt motion.  Having determined that to be the case, defendant is entitled to costs in defending this motion.

Defendant asserted Sherman Act, Lanham Act and state law counterclaims in this patent infringement case.  The court noted its practice of bifurcating antitrust counterclaims since they generally do not survive in the absence of a finding of noninfringement.  In 2008, the parties agreed to dismiss 2 of the 5 patents-in-suit.  In April, 2009, the court construed claims and addressed seven motions for summary judgment, finding 2 patents valid and denying an invalidity motion as to the third remaining patent.  All three patents were found to have been infringed.  A trial was set to take place in June, 2009, but defendants agreed to drop their invalidity counterclaim without prejudice and the parties agreed to try willfulness with damages after appeal.  The court denied a motion to issue a permanent injunction.  Defendants admit that the antitrust counterclaims do not survive if they do not prevail on appeal.  The court therefore dismisses the counterclaims without prejudice and enters final judgment pursuant to Rule 54(b).

The Court denies defendant’s motion for reconsideration of its earlier decision regarding the entitlement to equivalents of one of the claims of one of the patents-in-suit.  The prosecution history did not result in a narrowing of the claim so as to effect an estoppel under Festo against a later assertion of the doctrine of equivalents.  The patents-in-suit relate to improvements over conventional bracketed windshield wiper blades.  Plaintiff is not barred from relying on the doctrine of equivalents.

The patent-in-suit is directed to methods and systems for processing spoken information.  Defendant is accused of infringement through the provision of telephonic directory assistance services.  This dispute concerns the field of computerized speech recognition and, within this field, the application of speech recognition to telephone-based systems.  The court finds that calling the accused services may constitute an infringing act.  However, there is insufficient evidence that defendant is liable for direct infringement based on the acts of its employees.  However, a reasonable jury could find defendant’s customers liable for direct infringement due to the level of contractual control present.  Defendant’s knowledge and specific intent to induce infringement can be from the record before the court.  Defendant’s provision of hosted services does not support a contributory infringement claim under Pharmastem.  Defendant is entitled to judgment that the patent-in-suit is anticipated by prior art with respect to 3 of 5 claims at issue.  Plaintiff has failed to rebut defendant’s prima facie case of obviousness in view of demonstrably available techniques for reliable recognition with respect to the two claims found not to anticipate.

The patents-in-suit relate to improvements over conventional bracketed windshield wiper blades.  Defendant is accused of infringing through the manufacture and sale of various wiper blade products that embody the patented inventions and plaintiff is accused of infringing defendant’s patent.  Both sides move for summary judgment on various grounds.  Several material issues prevent the court from granting defendant’s motion that the asserted claims of the '974 patent are invalid as anticipated and obvious.  With respect to Plaintiff’s claim its patents are not invalid for derivation, defendant has met Rule 8 requirements in pleading.  Defendant’s evidence of derivation as to two of the patents-in-suit fails.  Turning to inequitable conduct, the court finds that material issues persist as to inventorship and whether there was intent to deceive the PTO.  On infringement, the Court grants plaintiffs’ summary judgment on infringement as to claims 1 and 8 of the '974 patent but not as to claim 2, and grants plaintiff’s motion as to noninfringement of the ‘380 patent.  Defendant’s motion of noninfringement as to the ‘512 patent is granted.  The remaining motions are denied.  Finally, plaintiff’s motion to strike defendant’s expert report is denied as moot.

The Court construes 29 disputed terms for the 5 patents-in-suit which relate to improvements over conventional bracketed windshield wiper blades.

The parties are manufacturers of sunscreen products: plaintiff manufactures Coppertone®-branded sunscreens; and defendant manufactures Neutrogena®-branded sunscreens.  Plaintiff alleges that defendant has released multiple advertisements containing false and misleading statements in violation of the Lanham Act and the Delaware Deceptive Trade Practices Act.  Defendant counterclaims that plaintiff has released similar print advertisements and television commercials containing false and misleading claims in violation of the Lanham Act and the DTPA.  Having the benefit of a bench trial, the Court reverses its initial finding stated in its preliminary injunction opinion on literal falsity with respect to the differentials between the combined SPF and UVA bars correlating to Coppertone Sport® and Neutrogena Ultimate Sport®.  Due to the predominancy of UVB in the SPF measurement, SPF is commonly understood to refer to UVB rays.  There is no dispute, however, that at least 10% of a "SPF" measurement correlates to UVA protection.  Defendant's ad does not equate SPF with UVB alone, but it is literally false because it provides a separate "UVA" quantification which is neither an accurate description of protection nor completely independent of the SPF value.  Turning to defendant’s claims, the Court agrees with defendant that the "better coverage" claim of the Coppertone Sport® commercial is an establishment claim that is not supported by sufficiently reliable tests.  The information conveyed in the commercial is derived from testing of other product lines and did not represent actual data regarding the products in the advertisement.  The Court finds that there are too many problems with plaintiff's testing for it to meet the "sufficiently reliable" standard.  Having found both parties’ advertisements to violate the Lanham Act and the DTPA the Court notes that “it is the American consumer who ultimately ends up the real loser in these advertising wars.”

The Court makes certain findings of fact and law following bench trial in this action alleging false advertising under the Lanham Act.  Specifically, plaintiff asserts that defendant's "use of Havana Club for a rum not produced in Cuba and [its] statements that its Havana Club rum is the rum that was made in Cuba and sold in the United States before 1960 are false and misleading representations concerning the geographic origin of [defendant's] rum" in violation of 15 U.S.C. § 1125(a).  The case turns on the question of whether "geographic origin" is more akin to "heritage" or to the "source of production".  While defendant concentrates on its rum's Cuban history, plaintiff's focus is on defendant's Puerto Rican production site.  The Havana Club label clearly and truthfully provides the origin of defendant's rum, and is not deceptive.  The Court also finds that the record clearly demonstrates that Havana Club rum has a Cuban heritage and, therefore, depicting such a heritage is not deceptive nor do Defendant's formula and manufacturing alterations annul the Cuban heritage of defendant's Havana Club rum, which is derived primarily from the Arechabala Family recipe.

Defendants move for reconsideration of the judgment that the patents-in-suit are enforceable.  Following remand for additional findings of fact relating to inequitable conduct, the Court concluded that the record did not support a finding of deceptive intent and that defendants had failed to prove, by clear and convincing evidence, that the non-disclosure of certain information to the PTO during the prosecution of the '312 patent tainted the ‘370 prosecution.  Defendant’s request to reconsider that ruling is denied.

Before the Court is plaintiff’s motion for a preliminary injunction in this case of competing claims of false advertising and violations under DPTA.  Both parties are manufacturers of sunscreen products.  Plaintiff seeks to enjoin defendant's use of the Helioplex® illustration in its advertising on the grounds that it conveys the message that sunscreen products without Neutrogena's Helioplex® do not provide protection from the sun's UVA rays.  The Court finds that while a fact-finder could ultimately conclude that the illustration is misleading, the message conveyed is not unambiguous, and injunctive relief is not warranted.  Plaintiff also seeks to enjoin defendant's use of the bar graph, which it contends conveys the false implication that the Coppertone Sport® line of sunscreen products only provides half the sunburn protection when compared to Neutrogena's Ultimate Sport® line of sunscreen products.  The parties have presented conflicting evidence, presented by equally credible experts, regarding what information the "SPF" measurement imparts to consumers.  Thus, the Court finds no literal falsehood in defendant's representation of approximately 100% more combined UVNSPF protection for its Neutrogena Sport® line.

This is a domain name dispute.  Plaintiff is an architect who secured U.S. Trademark and Service Mark THEAFFORDABLE HOUSE for “architectural plans and specifications" and "on-line retail store services featuring books and sets of blue prints" on January 4, 2005, certifying use of the mark in commerce since March 15. 1996.  The registration issued on February 14, 2006.  Plaintiff published the book "The Affordable House" in 1994, and registered the domain name www.affordablehouse.com on July 20, 1998.  Defendants are a residential design company focused on the application of autoclaved aerated concrete ("MC"), a lightweight building material.  In May of 2004, defendants registered the domain name www.theaffordablehouse.com and began using it to post information on MC in December of 2004.  Defendants used the slogan on their website, as well as on booths at renewable energy conferences held between 2005 and 2007. 
The court finds that defendants' domain name is identical or confusingly similar to his mark and rules in favor of Plaintiff on summary judgment.  But the court finds that a genuine issue exists on the question of bad faith.  Because it is improper to weigh these factors on summary judgment, plaintiff’s motion is denied on this ground and the issue of bad faith must proceed to trial.
 

The court previously granted Samsung’s motion and plaintiff moved for reconsideration.  Plaintiff’s counsel, R. Tyler Goodwyn IV had represented Samsung in prior litigation while at another law firm.  The court found that the failure to segregate Goodwyn from the instant litigation constituted and unavoidable imputed conflict.  The court finds a substantial relationship between the subject matter of the two litigations.  The court declines to certify an interlocutory appeal or to enter judgment under Rule 54(b).

A bench trial was held from January 4 to 7, 2010.  The disputed advertisements relate to Coppertone and Neutrogena sunscreen products.  The court noted that the contested advertisements were essentially meaningless and, therefore, of no help to the consuming public who is finally paying attention to the health concerns presented by overexposure to the sun.  It reasoned that both parties failed in their efforts to walk that fine line between literal truthfulness and consumer deception in advertising.  Finally, it lamented that it is the American consumer who ultimately ends up the real loser in these advertising wars.

The disputed technology relates to computer software for the insurance industry.

The parties are competitors in the consulting and technology services industry.  The patents-in –suit relate to a computer program for developing component based software for the insurance industry.  The court finds that notice of the on-sale bar defense was sufficient.  The evidence to date on that defense does not meet the clear and convincing standard and if additional evidence exists it should be established at trial.  Whether the plaintiffs could have discovered defendant’s purported misconduct relating to trade secret misappropriation prior to 2006 is a matter for the jury.  The court has determined that defendant’s invalidity motion raises significant issues under Bilski and denied the motion for summary judgment without prejudice to renew after the supreme Court issues its ruling on the Bilski appeal.  The court denies defendant’s motion on anticipation or obviousness without prejudice to renew upon consideration of the court’s claim construction issued contemporaneously.  Defendant’s indefiniteness arguments are at odds with prior art assertion that the bounds of the claim are determinable.  The motion on non-infringement is denied without prejudice to renew with the benefit of the court’s claim construction upon lifting of the stay currently in place.

This matter was remanded for re-trial on the issues of obviousness and anticipation.  The Federal Circuit reversed the entry of summary judgment of no anticipation and vacated the nonobviousness judgment as based upon irreconcilably inconsistent jury awards.  The court declines to enter summary judgment on anticipation noting the high burden of clear and convincing evidence in order to prevail.  The court concludes that attorney argument and testing that has not been fully vetted through the discovery process is insufficient.  With respect to defendant’s in limine motions, no reference to the fact that three examiners considered the patents and no reference to re-examination proceedings are allowed.

This is an action to determine the priority of certain patents assigned to defendants vis-à-vis plaintiff’s ‘112 patent.  The patents are directed to procoagulant proteins.  Plaintiff contends that certain claims of the defendants’ patents interefere with certain claims of the ‘112 patent.  Defendant’s claim that plaintiff lacked standing to sue is rejected but preserved for appeal.  The parties frame the anticipation analysis as an inquiry into whether the ‘620 patent discloses a species within the genus provided by the ‘112 patent.  The Court applies instead a comparison analysis noting that there is a lack of homology between the amino acid deletion ranges contemplated by each patent.  Accordingly, the invention of the '112 patent is not the invention of the '620 patent.  The two-way test is not satisfied with respect to the '112 and '620 patents on anticipation.  With respect to obviousness, the court concludes that a person of ordinary skill in the art would not have appreciated the importance of amino acids 1649-1689 based on the disclosure of the' 112 patent, which permitted deletions of that region.  The court's conclusions regarding anticipation and obviousness are buttressed by the fact that the '112 patent is listed on the face of the '620 and '447 patents.  Insofar as there is no interference-in-fact, the court need not make a priority determination.  Therefore, defendants’ motion to dismiss for lack of subject matter jurisdiction is granted.

The Court rejects plaintiff’s construction of two disputed terms for the patent-in-suit.  Given the well-known purpose of Markush groups, the court interprets the analysis as one limiting, not expanding, the scope of the claim to more specifically define the operative regions of a particular protein known to the applicant at the time.  Plaintiff’s claim construction is supported by neither the case law nor the intrinsic record.

The patents are all directed to methods of controlling the transmission of telephonic voice messages or information via voice mail systems.  Plaintiffs claim that defendants' communication system products and/or methodologies meet each and every limitation of at least one claim of each patent.  Defendants filed a motion to dismiss for failure to state a claim or, in the alternative, for a more definite statement.  The complaint does not provide a general product category.  Plaintiffs allege that defendants' "communication system products and/or methodologies" infringe its patents, without settling conclusively on whether they are targeting either a product or a method.  Plaintiffs were obligated to specify, at a minimum, a general class of products or a general identification of the alleged infringing methods.  The court concludes that Rule 8 requires plaintiffs to provide more information.  Plaintiffs are directed to amend their complaint, or face dismissal of their action.

This is an ANDA case involving the generic version of the brain cancer drug Temodar©. A bench trial took place between March 30, 2009 and April 2, 2009 on the prosecution laches and inequitable conduct defenses.  As for laches, the court found that CRCT also did nothing "to further the prosecution of [its] application toward the issuance of any claims" for nearly a decade and, instead, preserved its rights through a series of continuations and abandonments.  The court concluded that the "ends" - commercialization of a very successful cancer drug - do not justify the "means" employed by CRCT in this case.  Taken in the totality, this case involves eleven patent applications, ten abandonments, and no substantive prosecution for a decade.  The court further concluded with respect to the inequitable conduct claim that the withheld information directly contradicts statements made in the '291 patent's specification regarding the utility of the claimed compounds, and directly contravenes the patentability of (broadly-written) claim.  For these reasons, the withheld inactivity data is highly material.  Finally, the court notes that plaintiff's assertions that certain (nondisclosed) positive studies are “cumulative to the disclosure in the specification” are misplaced.  Materiality is not adjudged by whether the withheld information is "positive" or "negative;" to the extent CRCT had positive phase II data (regarding malignant melanoma and/or small cell carcinoma of the lung), it was also information that "may have influenced the patent examiner in the course of prosecution."  As for intent, the court determined that the information withheld from the PTO was highly material, and that (at least) the inventor knew of the information.  He should have appreciated the materiality of the data and his conclusions as they expressly contradicted the disclosure of the pending applications.  Under these circumstances, the court finds the inventor’s publications to the scientific community a sufficient basis upon which to infer intent to deceive.

In discussing the application of Seagate to a trial setting, the court notes discomfort in characterizing administrative and court decisions as “objective evidence” for presentation to a jury, since a jury is likely to give such evidence great weight, even when the bases for those decisions are not apparent to the jury.  Thus generally only evidence regarding the prelitigation landscape of the dispute will be admitted.  Proposed evidence must still pass muster under Fed. R. Civ. P. 403.  The parties’ stipulation expanding the trial record to include “the entire record in the above-captioned action” and “[a]ll decisions by this court or by the Federal Circuit” is denied.  The court agrees to summarize the procedural history of this case as set forth in the order.  No statements issued in any re-examination proceedings will be admitted.  The court further provides guidance as to damages.  With respect to royalty rates, consistent with the court’s past practice, royalty rates for litigation settlement agreements will not be admitted. A proffer on the issue of copying will be permitted.

The patents-in-suit relate to drug-eluting coronary stents which are used in the treatment of coronary artery disease.  Plaintiff sells the alleged infringing product, the Promus stent.  Because the Court has declined to adopt each of plaintiff’s proffered claim definitions, plaintiff’s motion for summary judgment of non-infringement is denied.  Next the Court considers plaintiff’s claim that the ‘3286, ‘7286 and ‘473 patents (the “1997 patents”) are obvious.  Plaintiff failed to cite any expert testimony in support of its motion.  The Court notes that plaintiff’s strategic decision has hindered its position as the Court finds that plaintiff’s evidence does not rise to the level of clear and convincing and denies the motion.  Plaintiff’s motion for summary judgment that the asserted claims of the patents-in-suit are invalid for nonenablement is denied.  The Court finds that the 1997 and ‘662 patents’ specifications are sufficiently definite.  As for the written descriptions for the 1997 patents, the Court notes that the precise mechanism of rapamycin was still under investigation at the time that the patents were filed.  Besides the requirements that the compounds be structurally similar to rapamycin, the patents’ specifications provide no further guidance regarding the claimed analogs.  Defendant can point to no evidence that the inventors had possession of the full scope of the invention as claimed.  Rather defendants simply contend that a person of ordinary skill in the art could use the disclosed functionality to identify acceptable analogs.  Therefore, the Court finds the written description requirement to be lacking.  Similarly, having found that there is no direction or guidance disclosed in the patents and no working examples, the claims are moderately broad, the invention concerns a very complex chemical and biochemical art germane to highly skilled cardiologists and that the patents were filed on the heels of a decade marked by failed attempts to reduce restenosis, the Court concludes that the limitations at issues are not enabled.  Similarly, the ‘662 patent specification contains no distinguishing information regarding the identity of the claimed analogs.  Thus, the ‘662 patent specification’s description of the claimed analogs’ function does not suffice.  The inventors were required to describe at least one representative macrocyclic triene analog.  Having failed to do so, the ‘662 patent is invalid for lack of written description.  The Court does not consider enablement for the ‘662 patent.

The Court construes 26 disputed terms for the four patents-in-suit.  The patents-in-suit relate to drug-eluting coronary stents which are used in the treatment of coronary artery disease.

The patents-in-suit relate to slot machine technologies.  The court earlier found that defendants infringe two of the three patents-in-suit, leaving two issues for trial: willfulness and counterclaim for invalidity of one patent.  Trial was canceled, willfulness will be tried with damages after appeal, and the counterclaim was dismissed without prejudice.  Plaintiff then moved for a permanent injunction.  Courts typically enter permanent injunctions where plaintiff practices the invention and is a direct competitor.  The evidence presented does not establish that this is a clear case of a two-supplier market such that a sale by defendant is necessarily a loss to plaintiff.  The court finds insufficient evidence of the market or link between infringing sales and a change in the market landscape.  Furthermore, there is no clear indication that money damages cannot be calculated.  Thus the plaintiff has not met the burden of establishing irreparable harm or insufficiency of money damages.

The parties are in the business of manufacturing and selling automated pharmaceutical retrieval and distribution systems to hospitals.  The patents-in-suit relate to automated systems for selecting and delivering packages to fill orders such as patient prescriptions.  The accused device is a patented system for dispensing medications in hospitals.  Defendant moves to dismiss based on its contention that plaintiff has failed to establish that it holds all rights, title, and interest to the patents-in-suit.  This issue (whether a 1990 transaction plaintiff’s predecessor-in-interest and several investors did not involve an assignment of patent rights to the investors but, instead, only gave the investors a security interest in the patent rights) was previously considered and the motion denied by the Magistrate.  Plaintiff objected and Judge Robinson declined to adopt the recommendation to deny the earlier motion to dismiss on the merits and instead denied it without prejudice to renew.  Revisiting the issue, the Magistrate again finds that plaintiff holds all right, title, and interest in the patent rights and denies the motion.

The Court next considers the construction of the disputed claims following a Markman Hearing. Eight terms are construed for the two patents-in-suit.

Also decided are several competing motions for summary judgment.  The Magistrate recommends granting plaintiff’s motions on inequitable conduct and validity as well as plaintiff’s equitable motion as it relates to the defenses of unclean hands, waiver, laches, and equitable estoppel.  The Magistrate also recommends that defendant’s motion with respect to failure to mark be granted.  The parties are granted leave to refile certain motions after the liability phase, including plaintiff’s equitable motion as it relates to the defense of patent misuse and defendant’s motions on willfulness.  The remaining motions are denied including the parties respective motions to exclude expert testimony.

The Court rules that the effective date for any FDA approval of defendants’ ANDAs shall be no earlier than November 11, 2009.  The patent expired on May 10, 2009, but the FDA granted an additional 6 months extending plaintiff’s exclusivity through November 10, 2009. The patent-in-suit is directed to lansoprazole, a compound in the family of proton pump inhibitors.  Defendant contends it is entitled to launch on November 10, 2009 in line with the 180-day marketing exclusivity period to which defendant is entitled.  The court concludes there should be no overlap between the expiration of a patent’s exclusivity period and the commencement of a generic’s period of marketing exclusivity, and that the patentee should have the benefits of its exclusive rights until the patent expires.

Plaintiff holds the NDA for lansoprazole delayed released tablets marketed as PREVACID®Solutab™.  A bench trial was held from March 9 – 10, 2009 to determine whether the accused ANDA products infringe claim 1 of the ‘632 patent.  The court construes “disintegrating agent” to require a causal relationship.  Experts Dr. Chambliss and Dr. Reza Fassihi disputed the mechanism of disintegration.  The court concludes that plaintiffs failed to prove which component induces the disintegration and rules in favor of the defendant.

Court denies plaintiff’s motion to reconsider its prior ruling granting defendant’s motion to dismiss defendant’s Lanham Act claim.  Citing to the Federal Circuit’s opinion in Baden Sports Inc. v. Molten USA, Inc., the Court upholds its prior ruling that plaintiff’s claim of false attribution does not constitute a misrepresentation of the nature, characteristics and qualities of a good. 
Next, plaintiff seeks to amend its complaint to add a claim of inequitable conduct based on its assertion that one of the inventors of defendant’s ‘380 patent did not review the related application but submitted an affidavit to the PTO that he had.  The Court declines to permit the amendment after the close of discovery where there are insufficient facts from which to conclude that the material misrepresentation was made with the specific intent to deceive the PTO.

This action arises out of the filing of an ANDA by defendant to market a generic version of the antibacterial drug VIGAMOX®, a topical ophthalmic solution comprised of the active ingredient moxifloxacin hydrochloride, which is claimed by the patent-in-suit (the”’830 patent”).  Plaintiff brought this suit on April 5, 2006, alleging infringement of the ′ 830 patent.  The parties agree that defendant's ANDA product contains every limitation of the ′830 patent with the exception of one point of dispute as to whether the ANDA product contains “moxifloxacin” as it is used in claim 1.  The court's construction of “moxifloxacin” is dispositive of plaintiffs' infringement claim.  Following a bench trial the Court construes “moxifloxacin” according to its ordinary and accustomed meaning and finds that the generic moxifloxacin product described in defendant’s ANDA infringes claim 1 of the ′830 patent.
As for defendant’s validity claim, defendant argues that the ′830 patent is invalid as anticipated by the ′942. Specifically, defendant contends that the ′942 patent discloses each limitation of claim 1 of the ′830 patent.  The parties agree that the ′942 patent discloses a “topical ophthalmic pharmaceutical composition.”  In light of the construction of “moxifloxacin”, the Court finds that the '942 patent also discloses “moxifloxacin or a pharmaceutically useful hydrate or salt thereof.”  However, the Court finds that the defendant has failed to show that the ′942 patent discloses the relevant concentration range and the “pharmaceutically acceptable vehicle” of claim 1 and therefore the ′830 patent is not invalid for anticipation.  Next, considering defendant’s obviousness arguments, the Court that the prior art consistently taught away from the use of moxifloxacin in ophthalmic treatments.  Several secondary considerations of nonobviousness demonstrate that it was not obvious to incorporate moxifloxacin into such a composition.  Therefore, the Court finds that defendant has failed to adduce clear and convincing evidence that the invention of the ′830 patent is obvious. Finally, defendant has failed to produce clear and convincing evidence that plaintiff violated the best mode, written description or enablement requirements of 35 U.S.C. § 112, ¶ 1.
 

The patent-in-suit discloses a web browser as being the mechanism by which an annotated web page is provided to a user.  After further review, the Court revises earlier Markman decision dated September 15, 2009 based upon its conclusion that the invention is directed to the display of images as compared to the rendering of images for a user’s viewing.  The Court further reverses its prior determination that the reference to “home page” forecloses an invalidity argument based on indefiniteness.  No universal definition of “the home page exists and two claims are invalid as indefinite.

The invention relates to cyclobenzaprine hydrochloride capsules used as a skeletal muscle relaxant.  The Court finds that bifurcation of the antitrust case, which defendants do not oppose, results in judicial economy.  The patent misuse issues are closely aligned with antitrust issues as both inquire into anticompetitive behavior.  The Court notes the absence on evidentiary overlap in the infringement and validity issues on the one hand, and the patent misuse and antitrust issues on the other.

Plaintiff’s damages and willfulness claims for two patents will be tried separately from Defendant’s damages and willfulness claims for its patent.  Due to passage of time discovery will be updated.  The Court declines to permit discovery on failure to commercialize a non-infringing alternative since this ignored previously.  Claim for pre-verdict lost profits is similarly denied since it had not been pursued previously.  Discovery on post-verdict royalties is permitted where no permanent injunction is requested.  It is equitable relief and therefore not subject to the right of a jury trial.  Plaintiff’s capacity to meet market demand is hotly contested and will not be considered on summary judgment but will be tried.  Discovery of Plaintiff’s lost profits claim is permitted, but request for discovery of profits made by Plaintiff’s related entities is denied based upon an agreement in the pretrial stipulation.

Defendants moved to disqualify plaintiff’s attorneys R. Tyler Goodwyn IV and McKenna Long & Aldridge.  Goodwyn joined MLA in 2006.  Prior to that time he was a partner at Morgan Lewis, which firm began representing Samsung in 2001 in litigation relating to dynamic random access memory chips.  Goodwyn was actively involved in that litigation.  MLA concluded there was no reason to prevent Goodwyn from working on the case at bar because the DRAM chips and liquid crystal technologies were unrelated.  After an evidentiary hearing on July 30, 2009, the Court concludes there is a substantial relationship between the subject matter of the two lawsuits and grants the motion to disqualify.

The Court finds that the defense was timely pled, and that the evidentiary basis for the claim rests in large part in plaintiff’s control.  Plaintiff has the opportunity to respond in the context of expert discovery, and to the extent there is additional factual discovery needed concerning those with skill in the art at the relevant time, it can forward those requests to the court and defense counsel.

The technology relates to providing a preview thumbnail image of a web page.  Defendants assert that the patent is invalid because “home page” and “the most representative image” as used in the claims are subjective terms not defined in the specification.  Defendants argue invalidity based on indefiniteness.  The court finds there is general understanding of the term “home page” in the art.  Some “objective anchor” exists for each term.  Defendants’ definitions adequately resolve the ambiguity of the claim terms.  This is an example of the rare situation in which resort to the validity maxim (construing terms to preserve validity) is appropriate.  As for obviousness, Defendants cite eleven prior art references.  A grant of summary judgment based on obviousness is a rare occurrence, and the more references asserted (hundreds of supporting pages submitted in this case), the more attenuated is the argument.  The Court notes that many documents submitted on CDs were not searchable or hyperlinked to exhibits.  Factual issues preclude summary judgment.  Yahoo’s motion for summary judgment of noninfringement based on the fact that it does not supply the browser required by the claims is denied.  The “divided infringement” argument fails because use of a separately installed web browser does not implicate action by a separate party.

The technology relates to presenting information (via thumbnail images) to the user.  The term “a web server separated from said image server” was construed narrowly under the doctrine of prosecution disclaimer.

After taking jurisdictional discovery, plaintiffs amended their complaint to add an additional defendant, Cardio Holdings LLC (“Cardio”).  Defendants WCT and Cardio move to dismiss the amended complaint arguing lack of personal jurisdiction because WCT has insufficient contacts with Delaware and cannot have Cardio’s contacts attributed to it under an alter ego theory; lack of subject matter jurisdiction over the declaratory judgment claims against Cardio because it does not own the patent-in-suit; and the “first to file” rule mandates dismissal in favor of a prior-filed action pending in the Eastern District of Texas.  Plaintiffs are a Delaware corporation with its principal place of business in Massachusetts and a Minnesota corporation also domiciled in Minnesota.  WCT is an LLC organized and domiciled in Texas.  WCT has two members, Cardio, a Delaware LLC with its principal place of business in Texas and a Georgia LLP.  Each member owns 50%. One of Cardio’s director’s serves as WCT’s Managing Director and Cardio has been the sole source of funding for WCT to date.  WCT’s contacts with Delaware are not sufficient to establish jurisdiction.  Correspondence from and negotiations for a license with an out-of-state patentee cannot, without more, support personal jurisdiction.  Nor is their evidence to show some fraud, injustice or inequity between WCT and Cardio to support an alter ego theory.  Finally, citing to Carlton Investments v. TLC Beatrice Int’l Holdings, Inc., the Court concludes that WCT is a separate jural entity not subject to the personal jurisdiction of its members.  The simple presence in this jurisdiction of a person with management authority with respect to the entity will not itself subject the entity to jurisdiction.  In addition, because the court has determined that WCT is not an alter ego of Cardio, plaintiffs have also failed to demonstrate the existence of a substantial controversy with respect to Cardio.  As an aside, the Court notes that even if jurisdiction did exist, the first-to-file rule would be grounds for dismissing the action.

Defendant moves to disqualify law firm from representing plaintiffs.  Defendant is a global pharmaceutical company with multiple divisions and subsidiaries among which many have similar names.  The law firm has handled several matters for defendant and its companies.  Throughout those representations it has not always been clear which entity was included in the representation nor does it appear that the law firm differentiated between the entities.  Currently, the firm is involved in a representation of one of those entities.  When the law firm informed the defendant that it planned to represent plaintiffs in the instant suits, defendant objected.  Nonetheless, the firm has sought permission to appear pro hac vice as counsel for the plaintiffs.  Pursuant to this Court’s Local Rule 83.6(6) attorneys admitted to practice before the Court are governed by the ABA’s Model Rules of Professional Conduct (the “Model Rules”).  Noting that the firm’s representation of plaintiffs in the instant suits violates Model Rule 1.7, the Court concludes that disqualification is not the appropriate remedy under the circumstances and is decided on a case by case basis in the Third Circuit.  In this case, the firm’s representations are unrelated and being done out of different offices in different cities.  There is also an ethical wall in place between the two matters.  Moreover, the firm’s failure to comply with Model Rule 1.7 is, in part, due to defendant’s conduct.  The use of its confusing naming convention and failure to identify to the firm which entity is involved created significant confusion for the firm as to which entity or entities it was representing.  Defendant should not now benefit from such obfuscatory conduct.

With 89 patent cases pending before this judge, the court notes that limited damages discovery may be appropriate for settlement and the issue of commercial success, but discovery disputes and Daubert motion practice relating to damages are a drain on scarce judicial resources.  The juries are similarly burdened.  Bifurcation of damages has the advantage of (1) allowing the parties the first opportunity to translate the final legal decision into commercial consequences, or (2) giving a subsequent damages jury a focused dispute to resolve.  Without bifurcation, the time to reach trial on the merits is extended.  The Court further rejects the argument that willfulness discovery should be allowed because such evidence is relevant as to whether plaintiff may be entitled to a permanent injunction.  Such intrusive discovery can be pursued in a focused manner after the liability trial if the plaintiff prevails.  Finally, the Court finds attorney client privilege was properly asserted and not waived after reviewing the depositions of two inventors, noting that the contested responses given provided no more information than a privilege log would give.

With 89 patent cases pending before this judge, the court notes that limited damages discovery may be appropriate for settlement and the issue of commercial success, but discovery disputes and Daubert motion practice relating to damages are a drain on scarce judicial resources.  The juries are similarly burdened.  Bifurcation of damages has the advantage of (1) allowing the parties the first opportunity to translate the final legal decision into commercial consequences, or (2) giving a subsequent damages jury a focused dispute to resolve.  Without bifurcation, the time to reach trial on the merits is extended.  The Court further rejects the argument that plaintiff is entitled to the same jury on infringement and willfulness, citing Voda v. Cordis.  The Court notes the willfulness case requires qualitative and quantitative differences in proof from the infringement case, and points out that willfulness is of no moment until the court chooses to increase damages by reason of willfulness.  Willfulness is an intrusive and inflammatory issue to discover and try and the court queries whether the right to a jury trial is so broad as to trump a court’s right to manage its caseload.

The patents-in-suit relate to monitoring and surveillance of computer networks for intrusion detection.  This Court’s prior determination of invalidity as to certain patents was remanded. A jury trial began September 2, 2008.  The jury found defendants infringed two patents, and that ISS did not infringe a third patent, and that all three patents are valid.  The plaintiff presented no substantial evidence that the combination of SGS and Manager Products infringed and the Court granted Symantec’s motion for JMOL.  Symantec did not challenge jury’s finding that its ManHunt products infringe, and the judgment for plaintiff is affirmed.  The Court finds the jury’s verdict of noninfringement by ISS of the ‘338 patent is supported by substantial evidence.  However, as to another patent, because there is a non-infringing use of the accused product, plaintiff was required to demonstrate that a customer installed the feature and operated it in an infringing manner.  Since no substantial evidence supported this claim of infringement, ISS’s motion for JMOL is granted.  Substantial evidence supports the jury’s findings that defendants failed to demonstrate anticipation by clear and convincing evidence.

Court reconsiders prior decision after matter is remanded and concludes that defendants have not proven by clear and convincing evidence that the patents-in-suit are unenforceable by reason of inequitable conduct.  Upon further reflection, the Court concludes that the evidence of record that tends to support a finding of deceptive intent is not more compelling than the evidence cited in support of not finding inequitable conduct.

Court concludes that it does not have jurisdiction to resolve the dispute over the assertion of the work product protection for patent prosecution activities in a deposition of a nonparty witness taken outside of this jurisdiction.  FRCP 37(a)(2) provides that a motion for an order to a nonparty must be made in the jurisdiction where the discovery is to be taken.  In this case, the nonparty deposition was taken outside the jurisdiction, although the witness was represented by plaintiff’s counsel and it was that same counsel that instructed the witness not to answer.  However, because the protection belongs to the witness, the Court has no jurisdiction to resolve the dispute.  In so ruling, the Court suggests in a footnote that the outcome would likely be different had the dispute arisen over the attorney client privilege since, in that instance, the privilege belongs to the client.

The disputed technology relates to axially flexible stents.  The complaint was filed October 17, 2008 alleging infringing activities “are about to begin.”  Plaintiff alleges that since a jury found in prior litigation before FDA approval to market in the United States, that res judicata dictates that the Taxus Liberté stents infringe the patent-in-suit.  The Court finds that issue preclusion does not apply to plaintiff’s prior claim of infringement where there had been only an assertion that the Taxus Liberté stents infringe.  The court in the prior litigation dismissed the claims regarding the Taxus Liberté stents without prejudice on the basis of lack of jurisdiction due to no evidence they were made, used, or sold in the U.S.  Nor does claim preclusion bar these claims since the conduct in this litigation occurred after the first judgment and since patent infringement is a continuing tort, and a plaintiff may sue based on any infringing act, not merely the first.  The finding in the first trial that the Liberté stent infringed does not necessitate a finding that the Taxus Liberté stents infringe since the latter have a drug/polymer coating.  Discovery is warranted regarding axial flexibility is warranted and the court declines to order summary judgment on the current record.

Plaintiff issued a subpoena out of the District of Delaware for a deposition to take place in Philadelphia and argued that the 100-mile rule makes the subpoena valid.  The Court rules that the subpoena is unenforceable since the subpoena must issue from the district where the deposition is to take place.

Plaintiff brings suit for infringement and false advertising under the Lanham Act.  Plaintiff alleges that defendant’s products infringe four of its patents-in-suit which relate to frameless windshield wiper blades.  Additionally, plaintiff alleges that defendant uses false and misleading descriptions of fact in marketing its product.  Defendant seeks to dismiss plaintiff’s false advertising claims.  Plaintiff alleges that defendant’s use of the words “new and improved,” “innovative” and “development” constitute false advertising because it developed the technology, and therefore, defendant did not develop the products, and the products cannot be “new and improved” or “innovative.”  However, false attribution of inventorship is not actionable under the Lanham Act.  Additionally, statements like “new and improved” and “innovative” are mere puffery and do not constitute factual statements actionable under the Lanham Act.  Therefore, plaintiff fails to state a claim for false advertising.

The plaintiff offers computer software and consulting services aimed at helping insurance companies optimize their claims handling.  The court declines to dismiss the tortious interference claim at this stage; however, if after development it is grounded in the same facts as the trade secret misappropriation claim, it will be preempted by the Delaware Uniform Trade Secrets Act.  The plaintiff does not oppose the motion to amend to add the trade secret misappropriation claim on the basis of undue prejudice, bad faith or dilatory motives, undue delay, repeated failures to cure deficiencies or futility.  The motion is therefore granted.  The motion to unseal the amended answer is denied because it recites hearsay not merely for litigation strategy but also for a larger public relations fight.  The court reasons that the content is meant to inflame and the use of the judicial process to that end is not to be tolerated.  This interest overcomes the presumption of public access.  Leave to refile with more general allegations is granted.

In this antitrust action, Plaintiff’s have not limited their damages to the difference between the cost of TriCor versus the hypothetical cost of AB-rated generic substitutes. I nstead, they claim that their general economies have been injured due to defendants’ anti-generic strategy.  Since plaintiffs exercise a substantial degree of control over their economies, information about the rebates negotiated is relevant.  Information about drugs not on the market at the time of the conduct at issue is not discoverable.  Pre-suit investigations are privileged.  Absent extraordinary circumstances, the court generally does not order disclosure of settlement agreements.

Plaintiff served discovery on October 23, 2008 for which no responses have been filed after the parties conferred.  Plaintiff filed a motion to compel on March 31, 2009 asking the court to compel defendants to respond, to rule that any objections have been waived, and to award expenses for bringing the motion.  Defendants have not provided any grounds to excuse their failure to respond, and the court grants the motion.  Plaintiff is to file an affidavit in support of its reasonable expenses.

Plaintiff is a Delaware corporation with its principal place of business in St. Louis, Missouri and asserts infringement of its patents, which relate to data and communications cable.  Defendants are related corporations, one of which is Korean with its principal place of business in Korea.  The American company is a New Jersey corporation with its principal place of business in New Jersey.  Defendants contest personal jurisdiction and venue in Delaware because the defendants do not reside in Delaware.  Defendants further allege that plaintiff’s attempt to serve process on the Korean corporation was inadequate.  According to plaintiff, defendants have ongoing business relationships with numerous regional distributors in the United States and have entered into multi-million dollar contracts with large United States corporations to supply and service their cable products within Delaware and throughout the United States.  Furthermore, plaintiff alleges that defendants have embarked on an aggressive marketing effort to distribute their products throughout the United States.  Applying the dual jurisdiction analysis the Court finds that while plaintiff's arguments concerning defendants' distribution agreements and contracts might establish an intent on defendants' behalf to serve the Delaware market, plaintiff fails to satisfy the second prong - to show with reasonable particularity that any of the accused products ended up in Delaware.

Plaintiff also argues for specific jurisdiction based on defendants' acquisition of a Delaware corporation, and based on defendants' distribution agreements.  However, apart from ownership of a Delaware corporation and the distribution agreements, plaintiff presents no competent evidence of any specific activity or contacts by defendants in Delaware.  Mere ownership of a Delaware corporation is not sufficient to confer personal jurisdiction over a non-resident defendant.  Plaintiff merely advances general assertions that the distributors with whom defendants have contracted service Delaware customers.  Therefore, plaintiff has failed to satisfy the specific jurisdiction prong of Delaware's long-arm statute.  Plaintiff has advanced sufficient factual allegations to justify jurisdictional discovery.  In addition, because venue hinges on the resolution of the personal jurisdiction question and in light of the Court's determination to allow jurisdictional discovery, the defendants' motion to dismiss for improper venue is denied without prejudice.  Finally, the court grants an extension of time to address service of process of the Korean entity.
 

Having previously adjudicated defendant’s conduct as willful in its Memorandum Opinion dated April 30, 2009 [see], the Court seeks to compensate plaintiff for consequences of defendant’s inappropriate post-verdict shipments of infringing product.  Plaintiff has submitted its bill of costs averring that it expended over $890,000 in attorney fees and over $91,000 in expert fees.  The Court finds the expenditure excessive vis-a-vis the time period and awards the plaintiff fees and costs in the amount of $500,000 without interest.

Plaintiff seeks a declaration that it does not infringe the patents-in-suit which disclose systems for efficiently managing dynamic web page generation requests.  Defendant counterclaimed for infringement and, in addition, filed an unopposed motion to substitute the real party in interest consented to jurisdiction.  Thereafter, plaintiff filed a third party complaint seeking indemnification from the third-party defendant based on a previous agreement to defend any patent infringement claims on plaintiff’s behalf (the “Agreement”).  Third-party defendant moved to dismiss the indemnification claims and simultaneously filed for a declaratory judgment of patent invalidity and noninfringement.  Plaintiff and defendant’s joint motion to dismiss the claims between them with prejudice is granted.  Third-party defendant’s motion to dismiss the indemnity complaint on the basis of a forum selection clause is denied as the complaint states a basis upon which relief may be granted and the dispute is properly framed as a transfer motion.  Plaintiff is directed to address its intent to pursue the indemnity claim.  Defendant’s motion to dismiss the third-party claims for lack of personal jurisdiction is denied.  Rule 25 provides that where in personam jurisdiction has been previously acquired of the original party, the in personam jurisdiction continues over the substituted party.  Moreover, defendant’s concessions to personal jurisdiction in its answers to plaintiff’s amended complaints would have extended to third-party defendant’s declaratory judgment action as well since personal jurisdiction is not claim-specific.

Plaintiff and defendant are competitors in the market for package leak testing products.  Plaintiff moves to dismiss defendant's counterclaims of inequitable conduct and tortious interference with business relations.  Defendant’s claims arise from certain communications made by plaintiff to a third party concerning a presentation that was to be given at an upcoming conference by an expert in the field of leak testing in which the expert was to endorse defendant's method as “more sensitive” and “more reliable.”  Prior to the presentation plaintiff sent an email to organizers of the conference notifying them of the infringement action.  Noting that state tort claims against a patent holder, including tortious interference claims, are preempted by federal patent laws unless the claimant can show that the patent holder acted in bad faith in the publication or enforcement of its patent, the court finds that defendant's pleading does not contain enough factual matter to suggest bad faith.  Defendant failed to allege that the statements were made with some disregard for the truth or falsity of those statements.  Even if preemption did not apply, however, defendant failed to plead a valid business relationship or expectancy and an interference with that relationship by plaintiff.  Next defendant alleges that the patents-in-suit are unenforceable due to plaintiff’s failure to disclose one or more prior art references which were known to it during the prosecution of the applications.   Although defendant does not specifically mention intent, it has satisfied the pleading requirements of Rule 9(b), as it states, with reasonable particularity, the prior art reference and instances of fraud to which it is referring.  Plaintiff is on notice of the misconduct alleged.

Defendant moves for JMOL or for a new trial and remittitur following a jury verdict for infringement in the amount of $52.3 million.  The technology at issue relates to PET nuclear medicine imaging.  The critical issue at trial was whether defendant’s 10% Y LYSO crystals represent a substantial difference over the claimed LSO crystals so as to infringe under the doctrine of equivalents.  Defendant claims that the Court’s denial of its request for an instruction that the ‘420 patent was valid and that plaintiff’s ability to demonstrate equivalency requires clear and convincing evidence was erroneous under Festo.  The Court disagrees noting that no case has applied a higher standard of proof in such circumstances.  Additionally, the exclusion of certain expert testimony regarding the manufacturing process where such evidence is not relevant to the infringement analysis was proper.  Next, referencing the expert testimony of Jarosz and Woodford, the Court finds that sufficient evidence supports the jury’s findings on lost profits.  Plaintiff did not meet its burden as to the sale of 18 scanners prior to the expiration of the patent and the award is reduced accordingly.  Prejudgment interest compounded quarterly at the prime rate is awarded.  Post-judgment interest equal to the weekly average 1-year constant maturity Treasury yield, as published by the board of Governors of the Federal Reserve System for the calendar week preceding is awarded.

The Court enters a scheduling order permitting limited discovery on the issues of claims construction and jurisdiction to determine whether it has subject matter jurisdiction to hear plaintiff’s §291 claims.  Plaintiff seeks a declaration of priority of its patent due to expire at the end of February, 2010.  Defendant has asserted infringement of two patents-in-suit over plaintiff’s parent, and plaintiff seeks to invalidate those patents.  Defendant contests plaintiff’s ownership of the patent plaintiff claims is prior art to defendant’s patents.  Oral argument is set for September 3, 2009 after defendant renews its motion to dismiss.

The technology at issue relates to Geometrix® Wireless Location System, a system for locating cellular telephones.  On September 14, 2007 a jury found defendant willfully infringed the patent-in-suit.  The court finds that defendant’s counsel falsely represented that phase 3 accused products had not shipped prior to trial and did not alert the court or plaintiff to a 6/16/08 shipment in breach of a duty to inform plaintiff of continuing and post-trial shipments.  The lack of copying is the only Read factor which now tips against enhanced damages.  The court find this case to be exceptional based upon defendant’s continued shipment of infringing products and the lack of condor forcing a post-trial discovery period which delayed plaintiff’s recovery.  It awards attorneys fees and costs in connection with the motions at bar.  Defendant is required to remit (1) $428,046 for additional phase 2 infringing products, (2) $9,626,707 in lost profits for all phase 3 systems, (3) prejudgment interest compounded quarterly at the prime rate, (4) post-judgment interest on the award and prejudgment interest at a rate equal to the weekly average 1-year constant maturity Treasury yield, (5) $9,626,707 in punitive damages, and (6) reasonable attorneys fees and costs to be determined.

This suit relates to casino slot machine technology and player rewards.  Casino slot machines may be networked together.  Networking allows for advantages such as the casino's ability to monitor patrons' slot play and to extract accounting data from individual machines.  Plaintiff alleges that defendants' “Bally Power Bonusing®” slot machine technology infringes one or more claims of the asserted patents.  The Court first construes several disputed claims relating to the motions.  Based upon the construed terms, the Court finds that Plaintiff’s infringement claims are appropriate as to certain claims but not as to others.  Defendants have failed to demonstrate that summary judgment on invalidity as to anticipation and obviousness is appropriate but plaintiff’s motion on validity as to certain claims is granted.  Defendants concede that their affirmative defense to infringement based on the existence of a license as to two of the patents-in-suit must fail given that no such license, either express or implied, exists.  Defendant’s motion regarding a license defense on the third patent is moot based upon the Court’s finding of noninfringement.

The claimed invention relates to casino slot machine technology and player rewards.  The Court construes 13 disputed terms for the patents-in-suit.

The court will transfer matters to other districts only (1) there is no bona fide relationship between Delaware and the defendant; (2) there is a related first-filed case in another district; or (3) the defendant is truly a regional enterprise.  None of these situations is present in this case.  Defendant is a Delaware corporation.  The New York litigation was resolved within months and did not involve the same substantive claims.  Delaware’s close proximity to New York makes the argument that the defendant is a regional enterprise not compelling.  Although defendant’s arguments of inconvenience are unpersuasive, depositions are to take place in the city where the witnesses work.

Plaintiff markets and sells blade servers under its trademark portfolio.  Defendant does not market or sell any products but rather is a “patent troll” whose company is “dedicated to accelerating the value of intellectual property worldwide.”   Plaintiff filed this action seeking a declaration of non-infringement and invalidity after receiving certain letters from defendant which are the heart of this dispute. Defendant moved to dismiss alleging that there is no case or controversy.  The letters do not contain mention of infringement, identification of specific claims, claims chart, prior pleadings or litigation history, or the identification of other licensees.  Although defendant’s status as a “patent troll” and its failure to request a confidentiality agreement or to accept plaintiff’s 120-day standstill proposal weighs in favor of jurisdiction, the Court finds that, under the particular circumstances of this case, the plaintiff “jumped the gun” in filing this action.

Defendants seek to amend their answer to assert a new defense under 28 U.S.C. § 1498 and to add a counterclaim of unenforceability due to inequitable conduct during the patent prosecution.  Plaintiff opposes on the basis of futility.  The Court permits timely and well pled amendments, noting its tendency to reject futility arguments where, as here, there is a substantive dispute that warrants discovery.

European declaration disclosed in foreign patent proceedings is not material to this action where declaration was not subject to the discovery process nor was it found sufficient to invalidate the European counterpart.

Defendant requests to transfer venue to the Northern District of California, where it has filed a declaratory judgment action which is a mirror image of the case at bar.  The California action is not first-filed.  However, even though defendant is incorporated in Delaware, it is more akin to a regional enterprise than it is a national player.  Therefore, defendant’s motion is granted.

Parties are pharmaceutical companies that manufacture and sell through certain licensing agreements competing brand name fenofibrate products.  Defendant owns the exclusive rights to market Tricor in the United States.  Plaintiff asserts, among other things, that Defendant wrongfully interfered with its agreement with Reliant, a company licensed for Plaintiff’s IP rights in the United States who agreed to market fenofibrate in the United States.  Defendant asserted a counterclaim of infringement against reliant, which Plaintiff claims is a sham.  Plaintiff alleges Sherman Act violations as well as unfair competition; tortious interference and common law restraint of trade.  The motion, as framed by the Court, poses whether a foreign name-brand drug manufacturer, which does not itself market and distribute its product in the United States but does so through an exclusive United States distributor, is entitled to avail itself of the protection of the antitrust laws for the purpose of challenging the conduct of a manufacturer of a competing brand name drug.  It finds that the injury alleged is intertwined with the injury Defendant allegedly sought to inflict on the fenofibrate market and declines to dismiss the Sherman Act claims.  It further finds unfair competition and tortious interference claims sufficiently pled.  Plaintiff fails to refute Defendant’s contention that the Delaware legislature has codified an unlawful restraint of trade in the Delaware Antitrust Act which dissolved the private action at common law.  Thus the count for common law restraint of trade is dismissed without prejudice.  The motion to dismiss is denied as to all other counts.

Plaintiff filed this action seeking adjudication of priority of invention.  Defendant moves to dismiss on the grounds that Wyeth, and not Plaintiff, is the owner of the patent-in-suit.  Alternatively, Defendant asserts the Court may not adjudicate priority issues because the patent is expired but for its extension period.  If the motion is denied, Defendant seeks to transfer the action to Texas.  Plaintiff has provided uncontroverted documentary evidence of ownership and the motion is denied with leave to renew if discovery proves otherwise.  Defendant argues that there is no interference-in-fact because the claims of the patent-in-suit have expired.  It claims Section 156 provides exclusivity only for approved uses of a product, but not for the now-expired claims of the patent.  The Court does not read section 156 so narrowly.  The Court further denies the motion to transfer venue because the priority issue in dispute is distinct from infringement claims in Texas litigation.

The technology at issue is a process for the production of thin semiconductor material films.  Plaintiffs allege that on information and belief, Defendant manufactures products using a method which infringes Plaintiffs’ patents, and that Defendant makes, sells and/or offers for sale silicon on insulator products in the United States.  Plaintiffs further allege Defendant’s infringement is willful.  The Court finds the notice provided in the complaint is sufficient under Fed. R. Civ. P. 18 and Twombly.

Plaintiff, as part of his business, distributes sales leads to automobile dealers and other companies.  Defendant has sued several companies in the sales leads business for infringement of its patent.  Plaintiff argues that Defendant’s public statements that it intends to enforce its intellectual property rights and its pattern of litigation against sales leads companies, including Plaintiff’s customers, manifests its intent to enforce its rights against Plaintiff, thus establishing am actual controversy.  The Court finds Plaintiff has failed to meet its burden to show the existence of an actual controversy because there are no facts adduced which establish that Defendant believes Plaintiff to be infringing its patent, nor is there any evidence that an infringement suit is imminent.

Dispute arises over the meaning of certain wording set forth in the protective order entered in this case which states that receiving parties “shall not prepare or prosecute, or assist in the preparation or prosecution of, any patent application” relating to the technology at issue in this suit.  Court finds that the order does not prohibit receiving parties-on either side-from participating in reexamination proceedings.  Defendant had previously rejected specific language relating to “reexaminations.”

Court amends award of post-judgment interest consistent with Third Circuit’s holding in Sun Ship Inc. v. Matson Navigation Co. that post-judgment interest should be calculated on amount of the district court’s judgment plus prejudgment interest in order to reduce any incentive for delay.   Post-judgment interest will accrue from date of August 1, 2008 Order and will not apply to the enhanced damages award.

Plaintiff brings this §256 action against the defendant seeking to add three scientists employed by plaintiff as co-inventors of defendant’s patents-in-suit.  The Court holds that conception of a chemical compound requires conception of the specific compounds being claimed with all of their component substituents.  Plaintiff’s purported contribution constitutes no more than a specific portion of a claimed compound.  There is no evidence to suggest that the claimed inventors communicated to defendant a compound of general structure of the patents-at-issue.  Because there is no evidence that the claimed inventors conceived of the specific structure of the compound claimed or the compound with all of its components, or communicated that compound to defendants, plaintiff has failed to demonstrate by clear and convincing evidence that the claimed inventors are co-inventors of the patents-in-suit.

This infringement case was trifurcated and a bench trial held on the issues of defendant’s alleged spoliation of evidence and unclean hands.  The record demonstrates that defendant implemented litigation strategy which included adoption of a new document retention policy that resulted in the destruction of material documents.  Evidence supports conclusion that destroyed documents were relevant to plaintiff’s asserted defenses.  Thus plaintiff is prejudiced by the loss of evidence.  In addition, the litigation record reveals several significant misrepresentations by defendant regarding, among other things, the involvement and knowledge of certain key witnesses.  Court finds that the extensive nature of the spoliation when combined with the bad faith litigation conduct warrants imposition of dispositive sanctions and declares patents-in-suit unenforceable.

Court construes three essentially identical terms of two claims for the patent-in-suit.  The claimed invention is directed to providing to users of the World Wide Web portion of the Internet a specialized web site which can be used in conjunction with published jump codes to readily and automatically access other web sites or internet locations, without the user having to remember or input the URL of the desired web site.

Plaintiff seeks review in the District Court of adverse decisions issued by the Board of Patent Appeals and Interferences having failed to seek a rehearing by the Board of its adverse rulings.  Defendant moves to dismiss the action for lack of subject matter jurisdiction and for failure to state a claim.  The District Court may only review a final judgment by the Board, disposing of all issues that were, or by motion could have properly been raised and decided.  The likelihood that the Board would have issued an adverse decision does not relieve plaintiff from a statutory or regulatory requirement that it exhaust administrative remedies before filing for relief.  Having failed to seek reconsideration by the Board prior to filing this action, the Court declines to review the decisions as a matter of judicial economy since doing so would allow the litigants to circumvent the Board’s prior rulings without first going through the appropriate administrative channels.

Defendant’s objection to the Magistrate’s Memorandum Order dated April 8, 2008 resolving certain discovery disputes is overruled and the Order is affirmed and adopted.  Defendants had asserted that because an interference proceeding was terminated prior to briefing and decision on priority, priority was not before the court and discovery should not be allowed.  The Magistrate found that priority had been adequately raised below sufficiently to allow the district court’s review under 35 U.S.C. § 146.

The patent-in-suit discloses a process for the manufacture of HFC-245fa -- one of a group of non-ozone depleting hydroflourocarbons that were legislatively mandated to replace ozone depleting chloroflourocarbons and hydrochloroflourocarbons.  Plaintiff accepts that defendants are the first inventor but contends that defendants abandoned, suppressed or concealed their invention in a competing patent and therefore defendants cannot be considered the first inventor of the subject matter claimed by the patent-in-suit.  Plaintiff argues that defendants’ abandonment, suppression or concealment is demonstrated through their alleged policy to suppress inventions for commercial reasons when their value is unknown, defendants’ change in attitude about market predictions for HFC-245fa as the predictions correspond to the Department of Energy’s (“DOE”) regulatory activity and defendant’s failure to disclose the invention in their patent.  In support of its motion, plaintiff points to certain language in a Request and Authority for Patent Application Preparation (RAFPAP) which defendants completed in 1995, arguably disclosing defendants’ corporate policy to suppress inventions.  While general policy can be relevant to a determination of whether defendant abandoned, suppressed or concealed the invention, plaintiff offers no evidence from which a reasonable jury could conclude that defendants intentionally abandoned, concealed or suppressed their invention in this case and no evidence of delay.

At issue are cross motions for summary judgment on the issue of infringement of claim 1 and non-infringement of claim12 of the patent-in-suit.  The patent-in-suit discloses a process for the manufacture of HFC-245fa by reacting HCC-240fa with hydrogen fluoride in the presence of a hydroflourination catalyst.  HFC-245fa is one of a group of non-ozone depleting hydroflourocarbons that were legislatively mandated to replace ozone depleting chloroflourocarbons and hydrochloroflourocarbons.  Defendant produces HFC-245fa by reacting HCC-240fa with hydrogen fluoride in the presence of a hydroflourination catalyst at one of its plants.  It argues that the process does not infringe because the process does not isolate from the reaction mixture the HFC-245fa and the HCl as they are being formed as required by the claim.  Applying the broad construction of claims (see), the Court concludes that defendant’s process infringes claim 1 but not claim 12 of the patent-in-suit.

Court construes the disputed claim language of the patent-in-suit which discloses a process for the manufacture of HFC-245fa by reacting HCC-240fa with hydrogen fluoride in the presence of a hydroflourination catalyst.  HFC-245fa is one of a group of non-ozone depleting hydroflourocarbons that were legislatively mandated to replace ozone depleting chloroflourocarbons and hydrochloroflourocarbons.

The patent-in-suit claims priority to a provisional application dated December 6, 1999.  The inventors sought to provide an improvement to user interfaces for search engine technology using thumbnail visual images of the hyperlinked web pages along with the hyperlink.  The court finds that there are substantial questions concerning both infringement and validity, rejecting Plaintiff’s proposed claim construction.  Plaintiff has failed to show a likelihood of success on the merits.  With respect to irreparable harm, Plaintiff has failed to show that its loss of business is clearly related to defendants’ competitive conduct, noting that Plaintiff sought the injunction several years after defendants began providing the accused services.

The Court construes 12 terms.  It declines to construe the single word “releasing” as great mischief comes of construing words in a vacuum as opposed to in context.  The Court concludes that the page server does not “release” the web server unless the Web server is free to process other requests, a construction consistent with the specification.  It rejects a limitation (adopted by the Texas court as confusing and unnecessarily complex.  The term “web server” is not limited to “HTTP-compliant server software, adopting a broader interpretation because this is a software patent.  If this had been a mechanical device patent and there was truly only one embodiment of the device described in the specification, the broader language of the claims should be limited to that one device.  Given the mutable nature of the technology here, the court declines to impose the HTTP-compliant restriction.

In 1996, defendant entered into a settlement agreement with plaintiff’s predecessor-in-interest and a related party to resolve patent-related claims in two actions brought in the District of Delaware.  The agreement contains a dispute resolution clause and procedures involving negotiations.  Thereafter, the parties engaged in two unsuccessful mediations following which defendant filed inter partes reexamination requests with the PTO.  Plaintiff filed the instant action and unsuccessfully attempted to stop the PTO’s consideration of the reexamination based on the agreement.  Plaintiff then obtained leave to amend its complaint to assert breach of contract.  Defendant answered that plaintiff lacked standing. Both parties moved for summary judgment.  The parties jointly submitted a proposed pretrial order that included a statement that the Court has jurisdiction over the breach of contract claims pursuant to 28 U.S.C. 1367 and that the Court retained jurisdiction to enforce the settlement agreement based on its jurisdiction over the underlying case.  Thereafter, the Court granted plaintiff’s motion for summary judgment of breach of contract.  A jury returned a verdict for plaintiff on validity.  Defendant now contends that the Court lacks subject matter jurisdiction to hear the breach of contract claim because there can be no supplemental jurisdiction where the patent infringement claims and the breach of contract claim do not share a “common nucleus of operative facts.”  The Court agrees and rejects plaintiff’s assertion that a stipulation of dismissal that specifically references a settlement agreement is sufficient to retain federal jurisdiction.  The Court finds that the parties’ obligation to comply with terms of the settlement agreement was not made part of an order of dismissal.  Kokkonen v. Guardian Life Insurance Company of America requires a court order incorporating the terms of a settlement agreement for jurisdictional purposes.  Absent any affirmative indication of the Court’s intent to retain jurisdiction in the record, jurisdiction is lacking.  No authority permits the affirmative exercise of supplemental jurisdiction based on equitable principles alone. Supplemental jurisdiction is therefore improper although defendant should have raised this earlier.

The patents-in-suit relate to golf ball technology.  Prior to trial, defendant stipulated that its golf balls infringe certain claims of the ‘293 ‘156, ‘130 and ‘873 patents.  Following trial, the jury returned a verdict in plaintiff’s favor on validity with the exception of one claim of the ‘293 patent. JMOL and new trial motions followed; as well as plaintiff’s motion for a permanent injunction and defendant’ s motion to stay any permanent injunction issued by the Court pending appeal.  On defendant’s JMOL motion, the Court finds that substantial evidence supports the jury’s verdict of nonobviousness.  Defendant’s argument that a new trial is warranted because the jury’s findings on validity are inconsistent is rejected.  Inconsistency alone is insufficient to warrant a new trial absent an effect on defendant’s substantial rights, and given the likelihood that the Federal Circuit may reverse or remand any of the underpinnings upon which trial in this matter proceeded, the Court declines to order a new trial without more compelling circumstances.  The Court finds that plaintiff has made a sufficient showing on each of the four traditional factors and will grant the injunction by separate order.  In light of the significant public interest concerns (that an injunction would disturb many golfers loyal to the infringing brand, including professional, who have about two months left on their 2008 contract), the Court adopts plaintiff’s proposal allowing professional golfers to play the infringing brand through the end of the 2008 calendar year. Defendant’s motion to stay the injunction pending appeal is unfounded and is therefore denied.

After reviewing the Report and Recommendation issued July 14, 2008 and the plaintiff’s objections, the Court dismisses this action for lack of subject matter jurisdiction or in the exercise of her discretion.  Acknowledging the lenient standard for determining the existence of subject matter jurisdiction announced in Medimmune, the Court observes it fosters a forum-seeking race to the courthouse, noting defendants subsequently filed suit against plaintiff in North Carolina.  Plaintiff’s arguments that defendants were actively investigating it and that defendants had sued competitors and further that defendants indicated in telephone calls between the parties’ employees that defendants would sue if plaintiff launched an infringing product, taken as true, did not persuade the Court to exercise jurisdiction.  A potential infringer should not be able to create subject matter jurisdiction by initiating telephone conversations to the patentee’s employees who were not in decision-making positions and who were uninformed as to the real purpose behind the conversations.  Where plaintiff failed to make known its concerns of uncertainty and delay presuit the Court is not convinced the objectives of the Declaratory Judgment Act are served.  The Court acknowledges that such a holding keeps the odds in the race to the courthouse in a patentee’s favor.

The Court declines to adopt the Report and Recommendation whereby the Magistrate had first recommended that defendants’ motion to dismiss be granted based on an assignment, but on reconsideration Magistrate Judge Stark concluded that plaintiff holds 100% interest in the patents-in-suit.  Judge Robinson declines to allow the litigation to go forward without plaintiff’s having resolved the question of ownership either through agreement or in a court with jurisdiction over the non-party investors who are alleged to have an interest in the patents.  If plaintiff has not resolved ownership within six months defendants’ motion to dismiss will be granted.

Departing from her pervious view of experts as impartial witnesses, finding support for an agency relationship between the expert and the supporting party.  It is therefore unclear why a statement adverse to the supporting party should not be admissible against that party.  The Court outlines factors to consider under Fed. R. Evid. 403 to determine whether the prejudice substantially outweighs the probative value of the testimony, including whether the testimony is cumulative. Mischief can be minimized by allowing the party to use the transcript without identify the expert as associated with the opposing party and/or requiring the party to pay the costs of the deposition.  The Court was without sufficient information to rule and required the parties to identify designations.

The parties are competitors in the consulting and technology services industry.  Among other things, the parties provide computer software and consulting services to help design tools and to aid insurance companies in their management and processing of information.  Plaintiffs brought action against defendant on December 18, 2007 alleging that defendant has infringed on the ‘284 patent which describes a computer program for developing component-based software capable of performing tasks relating to insurance transactions such as claims processing.  Plaintiffs also assert claims for trade secret misappropriation, unfair competition and violations of the Delaware Trade Practices Act, common law unfair competition and tortuous interference with business relations.  Defendant asserts several affirmative defenses including, invalidity, unenforceability, failure to mark, unclean hands and patent misuse.  Defendant also brings counterclaims for declaratory judgments of non-infringement, invalidity, and unenforceability, breach of contract as well as claims of bad faith litigation under the Lanham Act.  This is the Court’s decision on defendant’s motion to dismiss plaintiffs’ state law claims and trade misappropriation claims and plaintiffs’ motion to dismiss or in the alternative to bifurcate and stay plaintiffs’ bad faith counterclaims.  With respect to the trade secret misappropriation claims, the Court notes that it is not common for a plaintiff to know prior to discovery the details surrounding the purported theft.  That being said, the Court must strike a balance between the notice required by Rule 8 with the reality that plaintiffs may have minimal facts available to them at the pleading stage.  However, in this case the Court finds that the complaint presents nothing more than conclusion and a formulaic recitation of elements of a cause of action.  Notably there is no allegation that defendant obtained the information by improper means or the nature of such means.  Moreover, there is no allegation that defendant either disclosed or used the secrets in developing its product.  Thus the Court dismisses defendant’s DUTSA claims.  The Court also finds that plaintiffs have failed to sufficiently plead their tortuous interference claim. Specifically the complaint does not allege that defendant interfered with plaintiffs’ dealings with its customer.  Nor have plaintiffs alleged that its customer elected to terminate its relationship with plaintiffs due to any wrongful or improper conduct on defendants’ part.  Similarly, plaintiffs’ unfair competitions claims which are derived from their interference claims must fail for the same reason.  In addition, because plaintiffs fail to allege that defendant has made false or misleading representations of fact or created confusion in the marketplace, their DPTA claims must also be dismissed.
With respect to the defendant’s bad faith claims, defendant’s claims are based on allegations that plaintiffs, in a press release, made misleading statements regarding defendant’s infringement of the ‘284 patent and misappropriation of trade secrets.  The Court finds that defendant has failed to allege facts sufficient to make plausible its contentions that the statements at issue, when analyzed in context, were literally false.  Similarly, defendant has failed to allege that any of its customers or potential customers were actually misled by these statements or that the statements constitute commercial speech under U.S. v. Edge Broad Co.  Defendant also contends that plaintiffs’ statements violate the DPTA but fails to plead facts sufficient to make a plausible claim. Specifically, the statements do not discuss the characteristics of defendant’s product, express only plaintiffs’ opinion as to the alleged infringement, and defendant offers no facts to support its contention that the statements likely caused confusion or misunderstanding in the marketplace.  Defendant’s common law unfair competition claim is dismissed for the same reason.
 

This case involves antitrust claims asserted against the defendant companies involved in the sale of the pharmaceutical product Tricor©.  A notice administrator is appointed and a Tricor© Litigation webpage is to be created providing access to the class of indirect purchasers of Tricor© along with other notice requirements.

Plaintiff manufactures high-quality polyethylene terephthalate (“PET”) resin under the tradename PermaClear®.  Plaintiff sells its PermaClear® resin to manufacturers of plastic beverage bottles and other food packaging throughout North and South America.  Plaintiff owns the related ‘863 patent.  Defendant is the largest manufacturer of PET resins in the U.S. In November 2006, defendant launched a product called ParaStar® PET resin.  Defendant’s ParaStar® 4000 and 7000 products are accused of infringing the ‘863 patent.  Plaintiff filed for bankruptcy protection in February 2008.  Plaintiff cites defendant’s infringement as among the events necessitating the bankruptcy filing.  The Court finds that defendant has not raised a substantial question concerning infringement by its ParaStar® 4000 resin.  However, with respect to the issue of invalidity, the Court finds that defendant has raised a substantial question as to whether claim 15 of the ‘863 patent is obvious and, therefore, invalid.  In addition, Court concludes that plaintiff has not demonstrated that it will “likely prove” that ParaStar® 7000 infringes claim 15 of the ‘863 patent or that claim 15 will “likely withstand” defendant’s challenges to the validity of the ‘863 patent.  Therefore, plaintiff has failed to carry its burden of proving likelihood of success on the merits.  Moreover, the Court finds that plaintiff has failed to establish irreparable harm and concludes that monetary damages should suffice to address any injuries ultimately found to be attributable to infringement by defendant of the ‘863 patent.

This is a consolidated antitrust action brought by various plaintiffs asserting that defendants impeded the market entry of the generic version of TRICOR®, a brand name drug used to treat high levels of cholesterol and tryglycerides.  Specifically, plaintiffs assert that defendants instituted a multi-faceted scheme, manipulating the Hatch Waxman Act statutory framework, consisting of sham litigation, product conversions, and other intentional wrongful acts designed to further a monopoly.  The Court granted summary judgment in favor of defendants with respect to the sham litigation claims based on inequitable conduct and the Walker Process claim, which accuses defendants of asserting a patent with knowledge that it is unenforceable due to inequitable conduct.  It denied defendants’ motion with respect to sham litigation claims based on lack of probable cause for asserting patent infringement, noting that not one court reviewing defendants’ proposed construction found it tenable.  Thus a jury could find defendants’ infringement allegations objectively baseless, such as to render the capsule litigation a sham.

This remand follows the Federal Circuit’s affirmance of the entry of judgment against defendant Medtronic.  Boston Scientific Corporation, argues on remand that a new invalidity trial is warranted based on the Federal Circuit’s changed construction of certain claims.  The Court, however, finds that the proof of nonobviousness offered at an earlier trial was so substantial as to not be affected by the change.  In addition, the Court finds that BSC has twice waived its invalidity claim based on co-inventorship by failing to offer evidence at an earlier trial and the waiver is unaffected by any change in claim construction.  Damages awarded include interest calculated at the prime rate, compounded quarterly; the parties are to submit a final prejudgment interest calculation based on an after-tax amount of damages.  Next, the Court denies BSC’s motion for a new trial on damages based on a prior stipulation notwithstanding a later conflicting arbitration decision.  The Court declines to allow BSC out of its earlier agreement based on later, business-related proceedings of which it was not a part.  Finally, the Court considers Medtronic’s JMOL on damages arguing that Cordis has failed to carry its burden to prove entitlement to lost profits.  The Court denies the motion having concluded that there is substantial evidence to support the jury’s verdict.

Plaintiffs are the exclusive licensees of the ‘318 patent claiming the treatment of Alzheimer’s disease with galanthamine and the holders of the approved NDA for galanthamine hydrobromide tablets sold under the trade name Razadyne.  In 2005, several generic drug manufacturers filed with the FDA certain ANDAs containing paragraph IV certifications for generic galanthamine hydrobromide.  Defendants’ argument on anticipation is based on a 1974 article published by Dr. Bhasker which defendants contend discloses the use of galanthamine to treat AD or related dementias as defined by the Court.  The Court disagrees and finds that claims 1 and 4 are not invalid due to anticipation.  As to obviousness, defendants contend that Bhasker, alone or in combination with a variety of prior art references disclosed all of the limitations of claim 1 of the ‘318 patent.  Defendants assert that galanthamine would have been obvious to try for AD insofar as there was a finite number of identified, predictable solutions for treating AD during the time in question, and galanthamine’s central cholinergic effects were well-known.  They also claim that a person of ordinary skill in the art would have been led directly to galanthamine because success in improving cognitive function had been reported with use of compounds in the same class, and prior art disclosed that galanthamine had a better side effect profile and longer duration of action. The Court finds defendants’ evidence, though not insubstantial, does not rise to level of clear and convincing required to invalidate the ‘318 patent.  Next, applying Genetech, Inc. v. Novo Nordisk A/S, the Court notes that to satisfy the enablement requirement, a specification must teach those skilled in the art how to make and to use the full scope of the claimed invention without undue experimentation.  Defendants assert, in view of the minimal disclosure of the specifications, that the ‘318 patent cannot be both non-obvious and enabled.  The Court agrees.  Therefore, given that the ‘318 patent only surmises how the claimed method could be used, rather than teach one of skill in the art how to use the claimed method, the Court finds that the ‘318 patent is invalid for lack of enablement.

Plaintiff brought suit against defendants charging infringement of four patents (‘203, ‘212, ‘338 and the ‘615 patents).  The patents in suit relate to the monitoring and surveillance of computer networks for intrusion detection.  In particular the patents teach a computer-automated method of hierarchical event monitoring and analysis within an enterprise network that allows for real-time detection of intruders.  Upon detecting any suspicious activity, the network monitors generate reports of such activity.  The Court’s initial summary judgment determination was affirmed in part, and vacated and remanded –in-part by the Federal Circuit.  With respect to anticipation, the Court rejects defendants’ argument that the JiNao Report (issued as part of a collaborative project aimed at protecting certain network infrastructure) anticipates independent claims 1 and 24 of the ‘338 patent.  Although plaintiff concedes that there are some similarities, the Court finds that the scale of the JiNao Report is arguably different than that of the ‘338 patent and declines to find through motion practice that the functions of the two systems are exactly the same.  With respect to obviousness, in October 1997, the Emerald 1997 (an overview of the Event Monitoring Enabling Responses to Anomalous Live Disturbances) was published on plaintiff’s behalf and was before the patent examiner during the prosecution of the ‘338 patent from which the remaining patents in suit were derived.  The Emerald 1997 lists twenty-four citations to outside references including the Intrusive Activity 1991 reference (a publication entitled “A Method to Detect Intrusive Activity in a Networked Environment).  Defendants argue that Emerald 1997, in combination with an internally cited reference to Intrusive Activity 1991, renders obvious the asserted claims of the ‘203 and ‘615 patents.  According to defendants, it would have been obvious in light of the express teaching in Emerald 1997 to analyze particular network traffic categories based upon the citation to Intrusive Activity 1991.  The Court denies defendants’ motion having found that a genuine issue of material fact exists regarding what a person having ordinary skill in the art would interpret the disclosures in Intrusive Activity 1991 to convey.

The Court grants plaintiff’s motion to exclude portions of the opinion of defendant’s expert Dr. Kenneth J. McClellan.  The expert is a research scientist working in the field of Materials Science and Engineering.  His work deals with homeland protection and national security and his opinion is based, in part, on certain work performed at the Los Alamos National Laboratory (“LANL”).  He is not permitted to use any work related materials for anything related to the case, nor is he permitted to produce any documents to the parties in the instant litigation.  Plaintiff moves to strike that part of his report relating to his work done or reviewed at LANL for which there is no supporting documentation that is publically available.  The Court agrees on the basis of fairness.  Plaintiff’s motion to strike the affirmative defense of estoppel is held in abeyance.  Because the record created by the parties relating to the affirmative defense is unclear, the Court defers ruling on the motion until certain information has been exchanged by the parties including the proffer of evidence that defendant intends to admit at trial and the prejudice plaintiff will suffer if defendant is permitted to pursue the defense.

A full copy of the opinion is available here.

This litigation began as a patent infringement ANDA case with respect to Tricor®, a drug used for treatment of high cholesterol.  It is now the subject of antitrust counterclaim litigation.
The issues to be determined by Direct Purchasers’ Class are:  whether the challenged conduct is an anticompetitive scheme under the Sherman Act; whether the conduct caused injury-in fact in the nature of overcharges; and the amount of any overcharge damages under the Clayton Act.
The issues to be determined by Indirect Purchasers’ Class are:  whether the challenged conduct is an anticompetitive scheme under the Sherman Act; whether the conduct caused injury-in fact in the nature of overcharges; and whether the class is entitled to injunctive relief.
 

A full copy of the opinion is available here.

This litigation began as a patent infringement ANDA case with respect to Tricor®, a drug used for treatment of high cholesterol.  It is now the subject of antitrust counterclaim litigation.  Various state law claims brought by indirect purchasers and counterclaim plaintiffs are stayed in the interests of judicial economy.  Defendants’ motion for summary judgment on state law claims is likewise denied without prejudice.  Defendants’ motions for summary judgment on relevant market definition are denied, as the record demonstrates the existence of genuine issues of material facts.  Defendants’ motion for leave to file a motion for summary judgment on the issue of antitrust injury is denied.  It distinguishes Walgreen Co. v. AstraZeneca Pharmaceuticals L.P., 534 F. Supp. 2d 146 (D.D.C. 2008) because defendants at bar were charged with “eliminating choices available to the consumer” by “repurchas[ing] all existing prior formulations” of Tricor®, thus precluding competition by generic substitutions of the older formulations.

A full copy of the opinion is available here.

Plaintiff alleges trademark infringement, unfair competition under the Lanham Act and common law infringement.  Defendants moved for dismissal based on lack of personal jurisdiction and improper venue or in the alternative for a transfer to the District of Arizona.  The Court denies the motion to dismiss but grants defendants’ request to transfer for the following reasons.  Both plaintiff and defendants are in the business of manufacturing and selling skin care products.  Plaintiff is a Delaware corporation with its principal place of business in South Carolina.  Defendants are both Arizona limited liability companies which maintain their principal place of business in Arizona.  Defendants have no offices, bank accounts or property in Delaware.  All of their officers and employees reside in Arizona and none has ever traveled to Delaware to conduct business for defendants.  However, plaintiff argues that defendants have “geographically indiscriminate” internet marketing efforts and have been selling the product line in Delaware for the past five years.  The court finds such contacts to be sufficient to establish jurisdiction under Delaware’s long-arm statute and to meet the minimum contacts.  As for transfer, the Court finds that defendants have overcome the strong presumption against transferring the action.  The Court finds persuasive that none of defendants’ nine employees are in Delaware and the absence of these officers and/or employees would be incredibly damaging to its business.  By contrast plaintiffs are principally located in South Carolina.  Having already chosen a foreign forum, the additional inconvenience of going from South Carolina to Arizona, instead of to Delaware, would be minimal.

A copy of the full opinion is available here.

This case involves a patented system for locating cellular telephones using signals which are transmitted from a cellular telephone to a cell site over reverse control channels.  A jury trial was held 9/4/07 to 9/14/07.  The jury decided in favor of plaintiff, found willful infringement, and rejected defendant’s fraud and promissory estoppel defenses.  It awarded damages in the amount of $45.3 million to compensate for lost profits for all five phases, fulfilled and unfulfilled, of a contract to supply a cell phone geolocation system to a foreign company.  The court remits the damages to $18.6 million based on the speculative nature of the future damages assessed.  Defendant’s equitable defenses remain pending.  At the close of plaintiff’s case-in chief, defense counsel moved for JMOL based on (1) no proof of offer to sell within US; (2) damages should be limited to equipment actually shipped abroad; no means-plus-function elements due to failure of proof of corresponding structures.  In addition counsel noted there were “plenty of other detailed motions” that could be made regarding claim terms, construction, and infringement but focused on three. Defendant’s statement that it would move for JMOL in all the claims, for all the accused products, and for damages” was insufficient.  The court found insufficient detail for other bases including willfulness, non-infringing alternatives, “government use,” fraud, and promissory estoppel, and ruled the defendant was precluded from bringing JMOL motion as to those claims.  The court rejected the argument that defendant was not required to move for JMOL with respect to its own claims, i.e. invalidity.

A full copy of the opinion is available here.

This is an ANDA case regarding a generic version (GLYCOLAX®) of MIRALAX®, a drug to treat constipation.  Infringement complaint was voluntarily dismissed on June 3, 2004, invalidity counterclaim was moot, and 30-month stay period on FDA approval was waived.  A 5-day bench trial took place beginning January, 2007 on unfair competition, tortious interference, and antitrust counterclaims.  The court found no clear and convincing evidence that plaintiff was not entitled to Noerr-Pennington immunity.  The court is not persuaded that the litigation is objectively baseless, despite plaintiff’s appreciation of the fact that the patent is weak, noting that even a weak patent enjoys a presumption of validity.  The court finds that plaintiff offered a colorable claim and its proposed claim construction is not frivolous.  Defendant’s unjust enrichment counterclaim fails also.

A full copy of the opinion is available here.

This dispute arises from a 1999 Manufacturing and Purchase Agreement regarding universal remote control units.  AAA arbitration was held whereby the arbitrator ruled in favor of the respondent in the amount of $482,067.50.  The arbitrator issued a preliminary ruling.  The parties did not request a final order and petitioner unsuccessfully challenged the sufficiency of the opinion. The court upheld the arbitrator’s award.

A full copy of the opinion is available here.

Plaintiff seeks review of a decision and final judgment by the Board of Patent Appeal and Interferences.  During the interference process, plaintiff conceded priority based on the Board’s decision on preliminary motions.  Defendants moved to dismiss the action.  Defendants assert that the Court lacks subject matter jurisdiction over the present action because plaintiff, through its request for adverse judgment, has conceded priority, rendering the subject matter of this appeal moot.  The Court concludes that a concession of priority before the Board does not, as a matter of law moot an appeal pursuant to §146.  Because an interference is such a unique administrative proceeding and there is little guiding case law, the Court examines jurisdiction in light of the record.  The purpose of an interference is to give the Board a full and fair opportunity to determine priority.  The Court finds that plaintiff presented little more than conclusory arguments and failed to develop the record.  Allowing an appeal on priority would constitute an effective usurpation of the Board’s original jurisdiction.

A full copy of the opinion is available here.

This action arises out of the filing of an ANDA to market a generic version of the antibacterial drug PREVACID®.  Plaintiff filed this suit alleging infringement of its ‘098 and ‘321 patents, which relate to the active ingredient in PREVACID® -- or lansoprazole.  Defendant concedes that its generic drug infringes the ‘098 patent but contests infringement as to the “321 patent.  It argues that both patents are invalid and unenforceable.  The Court construes five terms, including “a pharmaceutical composition” and “granule.”  The central issue is the combination of lansoprazole and magnesium carbonate (an inorganic salt which stops lansoprazole from degrading in the stomach) and whether the distribution is “even” as the claims require.  The Court finds that plaintiff’s experts failed to present evidence that the accused molecules have an even, or uniform, distribution in the granule.  On validity the Court finds unpersuasive defendant’s arguments that the components of the ‘098 and ‘321 patents were disclosed by prior art in that defendant failed to identify a sufficient suggestion in the art for moving the 2,2,2-trifluoroethoxy group to the pyridine ring.  Evidence of secondary considerations, including annual sales of over $1 billion and superior properties compared to omeprazole is found in evidence of non-obviousness.  The Court also finds no inequitable conduct.  While plaintiff withheld data during prosecution, the materiality of that data was not “high.”  In addition, the Court finds no evidence of a high level of intent.  Defendant does not dispute that the data plaintiff submitted in its application was correct, only that additional data possibly would have brought the patentability of the claims into question.  The Court finds that because plaintiff had not overcome any rejections posed by the examiner based on the data it included in the application, or in reliance on any absence of additional data, plaintiff had made no misrepresentation to the PTO.

Experts referenced in the opinion include Dr. David Bugay, Dr. Stephen R. Byrn, Dr. Drew Hirt, Dr. Christopher Lipinski, Dr. George Lenz, and Dr. Chambliss.

A copy of the full opinion is available here.



 

Following pre-trial ruling that defendant’s equitable defenses of equitable estoppel and implied license would be tried to the Court and not the jury, defendant informed the Court that no additional evidence was warranted past that which was submitted at jury trial.  Following trial, the jury entered a verdict in favor of plaintiff.  The Court grants plaintiff’s motion to strike certain rebuttal evidence submitted by defendant during post-trial briefing on the basis that it was not part of the factual record created at trial and denies defendant’s motion to open the record for the same reason.  The motion to register judgment is denied because the judgment is not final.  The docket will be clarified to note that the jury verdict is subject to equitable defenses.

A copy of the full opinion is available here.

The Court concludes that the testimony offered to explain or explain away law is neither needed nor appropriate.  Plaintiff was not required to pay the costs of the expert discovery since, prior to the pretrial conference, the defendant had not stipulated to the process undertaken by the PTO in reviewing inventorship.

A copy of the full opinion is available here.

 

The court declines to reconsider its summary judgment ruling adverse to defendant on the eve of trial and the decision stands as law of the case.  Defendant is precluded from trying its anticipation defense, but may try its obviousness defense.  Since the parties have stipulated to infringement, news articles containing defendant’s praise of the accused products (and related commercial success) are admissible as admissions.  No other articles relating to the accused products are admissible. Given Plaintiff’s representation that it will not assert certain claims, the court lacks jurisdiction over those claims and Defendant may not address invalidity of such claims.  A document crafted by the parties trying to resolve disputes which addresses a defense the court has dismissed is inadmissible.


A copy of the full opinion is available here.
 

Court denies motion to reconsider prior rulings: (1) that consent not to sue divested court of its jurisdiction; and (2) granting J&J’s motion to dismiss based on prior filed action. 

A copy of the full opinion is available here.

Following court’s denial of plaintiffs’ motion for summary judgment in one of two consolidated antitrust actions and dismissal of several of plaintiffs’ counts in the other, the court considered plaintiffs’ motions to supplement the record to add additional evidence and for a certificate of appealability with respect to the dismissal of its exclusive dealing claims in the second action and for a stay of the proceedings pending that appeal.  Court denied motion to supplement because plaintiffs failed to show relevance of proposed additional evidence to the case as litigated by plaintiffs.  Court agreed to certify the appeal. 

A copy of the full opinion is available here.

The patent-in-suit relates to a gamma or x-ray detector that incorporates a particular scintillator. Plaintiff asserts that Philips’ sale of its scanners and defendant’s supply of certain crystals directly, and/or contributorily infringes on the patent-in-suit.  Court denies motion finding that plaintiff failed to demonstrate likelihood of success or irreparable harm given that monetary damages should offer sufficient relief.

A copy of the full opinion is available here.

The Plaintiff accuses Alcatel’s OmniPCS Enterprise and OmniTouch Unified Communications software suite of infringing its patents.  Plaintiff’s counsel, Fish and Richardson, arranged for the installation of the accused system in its Washington D.C. office.  An employee of Acatel-Lucent, one of the originally named defendants, identified himself as such and worked on the installation and provided training on the administration, use and configuration of the system to two F&R lawyers, who engaged him in ongoing conversations about the system.  Defendants assert that F&R’s conduct violated Model Rules 4.1, 8.4(c), and 4.3.  The Court finds that given the employee’s position and level of responsibility, and because he was directed (as an employee of a represented party) to engage in conduct directly relevant to the subject matter of the litigation by F&R, that F&R violated Model Rule 4.2.  The Court finds no prejudice in that no confidential information was disclosed; and F&R managed only to get objective information about the accused products without the “glaze of litigation stratagems that usually accompanies the discovery process.”  The Court sanctioned Plaintiff by ruling F&R must pay the costs of this motion practice.  In addition, Plaintiff may not use the fruit of F&R’s conduct, i.e. its expert may not serve as a consultant or expert witness, nor may the two F&R lawyers who oversaw the installation be involved in the litigation, nor may the information be given to any other witness for use in this litigation.

A copy of the full opinion is available here.

The patents-in-suit relate to drug-eluting coronary stents.  The first complaint was filed September 26, 2006 involving three patents.  On May 15, 2007, Plaintiffs (1) moved at 12:01 a.m. to supplement the complaint by adding a patent newly-issued to Cordis; and (2) filed a second action against Johnson & Johnson at 8:30 a.m. regarding the new patent.  On the same day at 12:01 a.m., Johnson & Johnson filed an action in New Jersey regarding the same newly-issued patent.  On May 29, another patent issued, at 12:02 J&J filed a New Jersy action, and at 12:20 Abbott moved to supplement the Delaware action, to amend the complaint in the second Delaware action or to consolidate.  On June 12, 2007, a third new patent issued.  At 12:03 J&J filed in New Jersey and at 12:19 Abbott filed in Delaware.  On August 30, 2007, Cordis executed a covenant not to sue Abbott with respect to the earlier three patents and moved to dismiss the first Delaware action for lack of subject matter jurisdiction.  A September 27, 2007 opinion held that the covenant not to sue divests the court of jurisdiction.  Therefore, jurisdiction depends on whether Abbott is permitted to supplement its complaint.  On November 27, 2007, a fourth patent issued and Abbott filed a supplemental motion to amend or consolidate at 12:14.  The court concluded that J&J was the first to file the first new patent, rejecting the argument that the first Delaware action controlled because the actions were "inextricably intertwined."

A copy of the full opinion is available here.

Evidence regarding defendant’s test golf balls may be admitted under specified circumstances.  They may not be referred to as “prior art” balls or “hybrid” balls.  Professional golfers Greg Norman and Phil Mickelson were timely identified, however their testimony is more appropriately the subject of expert testimony.  They may not testify generally as to the characteristics of the patented golf balls.  The issue of willfulness will be bifurcated, to be tried with damages.  Injunctive relief, if implicated, is to be resolved through the course of post-trial briefing.


A copy of the full opinion is available here.




 

The Court excludes the expert testimony of Dr. William J. MacKnight regarding certain “hybrid golf balls.”  The deposition testimony reflects that the statements “I personally directed the preparation and testing of such golf balls” and “I prepared and tested the golf balls” are not accurate in that defendant’s personnel directed every aspect of these tests.  Defendant’s motion to exclude the testimony of plaintiff’s expert Garth L. Wilkes is granted in part.  He included no written analysis and instead offers conclusions and cites to purported record evidence in various claim charts.  He performed no testing, relying instead on testing documents created by defendant.  His analysis is permitted to the extent it is based on “on the ball” measurements.

A copy of the full opinion is available here.





 

The technology in dispute relates to golf balls.  The prior art referenced by defendant does not describe the use of polyurethane or blends of ionomer resins with sufficient particularity to effectuate an incorporation by reference.  Defendant’s inherency theory is found to be too attenuated and unsubstantiated to prove anticipation.  A genuine issue of material fact exists as to motivation to combined claimed elements, precluding summary judgment based on obviousness. The Court finds that plaintiff is a “successor” under an agreement between Spalding and defendant.  Defendant violated the Agreement by filing inter partes reexaminations to contest the validity of the patents in suit.

A copy of the full opinion is available here.





 

The court construes “cover layer having a Shore D hardness” and “core.”  The Court rejects an agreed-upon construction of the limitation “modulus” as not helpful to the jury and directs the parties to work towards agreement on clearer language.

A copy of the full opinion is available here.




 

This action seeks a declaratory judgment that two patents are invalid and not infringed by plaintiffs. Defendants made statements to industry analysts threatening to sue plaintiffs regarding the launch of a new drug-eluting coronary stent called “Xience V.”  Defendants petitioned the PTO to make special continuation applications, stating that, if issued, they could immediately assert against Plaintiffs.  Defendants filed a complaint in S.D.N.Y. alleging tortious interference presumably to interfere with plaintiff’s imminent launch.  Defendants moved to dismiss for lack of controversy. Cordis executed a covenant not to sue regarding Xience V and moved to dismiss again for lack of controversy.

A copy of the full opinion is available here.

A jury found infringement and no willfulness and awarded damages of over $153 million.  The Federal Circuit affirmed but remanded for calculation of damages from foreign sales.  Plaintiffs sought additional prejudgment interest from date of district court opinion through final judgment after appeal.  Prejudgment interest was awarded at the prime rate up to the date of the original district court judgment.

 

Court finds Defendant raises a material issue of fact with respect to certain limitations after reviewing the correct exhibit 23.  Summary judgment for plaintiff remains granted with respect to other limitations.  Plaintiff must show a specific alleged act that is a wrongful interference, as opposed to a series of events, for its unfair competition claim.  The court declined to take a broad approach to this tort, and found certain specified acts insufficient as a matter of law.  Plaintiff may not supplement the record at trial as to such acts.  The allegation of misleading potential customers regarding the financial stability of plaintiff and the buy-back program remains for trial.  The testimony of plaintiff’s lead counsel is excluded.

The technology at issue involves cardiac resynchronization therapy for treatment of congestive heart failure.  The recapture rule does not apply because the challenged subject matter was not surrendered.  The recapture rule does not apply in the absence of evidence that an amendment or cancellation was ‘”an admission that the scope of that claim was not in fact patentable.’”
 

The recapture rule requires a three step process:  (1) The court must determine whether and in what ‘respect’ the reissued claims will broaden the patent claim; (2) The court must determine whether the broader aspects of the reissued claim related to surrendered subject matter; and (3) The court must determine whether the reissued claims were materially narrowed in other aspects to avoid recapture. Without surrender of subject matter, there cannot be recapture of subject matter.
 

The technology involves wireless communication.  Terms construed include: network, network layer, datalink layer, hop, packet, data packet, data communication session, router, dynamically routing data, dissimilar networks, parallel networks, transmission.