aquinlan@morrisjames.com's Recent Articles from LexMonitor

Discovery rulings issue in ANDA case

aquinlan@morrisjames.com (aquinlan@morrisjames.com) — Tue, 15 Dec 2009 00:50:24 GMT

Eurand, Inc., Cephalon, Inc. and Anesta AG v. Mylan Pharmaceuticals, Inc., et al., C.A. No. 08-889-SLR-MPT; Eurand, Inc., Cephalon, Inc. and Anesta AG v. Impax Laboratories, Inc., C.A. No. 09-18-SLR-MPT, December 9, 2009.

Thynge, M.J. Defendant’s request for lab notebooks and other R&D documents relating to a product other that covered by the patent-in-suit is denied. Defendant’s request for disclosure of secondary considerations evidence is granted.

The patent relates to an extended-release formulation of cyclobenzaprine. Defendant claims inequitable conduct based on the claim that the patentee failed to disclose a patent with the same extended-release technology, making that patent material. The fact that the inherent teaching of a prior art reference is applicable to an obviousness analysis as in Schering does not necessarily make the information relevant. Disclosure of factual evidence upon which plaintiffs may rely concerning secondary considerations is not unreasonable. Interrogatory responses are required to be supplemented.

Markman decision issues relating to intravenous medical connector valves

aquinlan@morrisjames.com (aquinlan@morrisjames.com) — Tue, 15 Dec 2009 00:36:27 GMT

ICU Medical, Inc. v. Rymed Technologies, Inc., Civil Action No. 07-468-JJF, December 3, 2009.

Farnan, J. The court issues claim constructions.

Sixteen claims of four patents are in dispute. Several terms have been construed by other courts in prior proceedings concerning this family of patents. Although collateral estoppel does not apply, those constructions are persuasive authority. The court construes 12 terms relating to needleless intravenous medical connector valves.

On-sale bar invalidates Honeywell's patent

aquinlan@morrisjames.com (aquinlan@morrisjames.com) — Fri, 11 Dec 2009 23:07:45 GMT

Honeywell International, Inc., et al. v. Nikon Corporation, et al., C.A. No. 04-1337-JJF, December 4, 2009.

Farnan, J. Defendants’ motion for summary judgment of invalidity is granted.

The patent relates to a directional diffuser for a flat panel LCD as used in aircraft cockpit displays. The action against the customer defendants has been stayed. Trial was temporarily adjourned after this ruling issued, and since the parties could not reach agreement on the propriety of continuing trial, the trial was cancelled on outstanding issues. The court finds that by clear and convincing evidence the patent is invalid because Plaintiff sold an embodiment more than one year before the filing date of the patent-in-suit. Plaintiff submitted a proposal in response to a Request for Proposal with provisions sufficiently firm and definite as to constitute a commercial offer of sale. Acceptance of the offer is not required. The court also found that the product offered for sale was the patented invention taking into consideration the evidence submitted. The final requirement of being ready for patenting was satisfied by Plaintiff’s admissions and documentation regarding reduction to practice.

Amended and supplemental pleadings are permitted

aquinlan@morrisjames.com (aquinlan@morrisjames.com) — Fri, 11 Dec 2009 22:57:14 GMT

Mallinckrodt Inc., et al. v. E-Z-EM Inc. and Acist Medical Systems, Inc., C.A. No. 09-228-JJF, December 3, 2009.

Farnan, J. Plaintiffs’ motion for leave to file an amended and supplemental complaint is granted; Defendants’ motion to strike is denied as moot.

The amended complaint attached to the motion is permitted and is deemed to be filed. Defendants oppose the relation back of the new pleadings seemingly in the belief that, if granted, Plaintiffs would lose the first-to-file status in this case where forum is contested. However, the court’s denial of dismissal with respect to the direct infringement claims moots that issue. While Plaintiff might have amended as of right, the court makes a ruling since a motion was filed. Supplementation of the pleading is also permitted since leave to supplement is freely granted and there are no contentions of undue delay.

Iqbal does not require increased pleading specificity in patent cases

aquinlan@morrisjames.com (aquinlan@morrisjames.com) — Fri, 11 Dec 2009 22:33:56 GMT

Mark IV Industries Corp. v. Transcore, L.P., et al., C.A. No. 09-418-GMS, December 2, 2009.

Sleet, C. J. Defendants’ motion to dismiss for failure to state a claim and for bad faith and breach of a settlement agreement is denied.

The court concludes that the complaint contains sufficient specificity and declines to dismiss on that ground. It rejects the contention that the Supreme Court decision Ashcroft v. Iqbal heightened the requirements for pleading direct infringement. Rule 12(b) does not provide for a dismissal based on violation of a settlement agreement. In addition, both parties agreed that their actions to comply with the terms of the settlement agreement had been met. Bad faith motion is denied due to efforts to comply with agreement, dearth of authority provided, and the presumption in favor of good faith.

Transfer motion is denied despite pending related action where defendants are Delaware corporations

aquinlan@morrisjames.com (aquinlan@morrisjames.com) — Fri, 11 Dec 2009 22:20:09 GMT

Mallinckrodt Inc. and Liebel-Flarsheim Co. v. E-Z-EM Inc. and Acist Medical Systems, Inc., C.A. No. 09-228-JJF, November 20, 2009.

Farnan, J. Defendants’ Motion To Dismiss For Failure To State A Claim Under Rule 12(b)(6) is granted as to the indirect infringement claims, but denied as to the direct infringement claim. Plaintiffs will be given leave to amend. Defendants’ Motion to Transfer is denied.

The patent-in-suit relates to remotely powered magnetic resonance (“MR”) injectors. All four parties are incorporated in Delaware. The parties are also involved in an ongoing infringement suit brought by plaintiff in Texas involving a different patent. The accused devices in the Texas action injector systems used in connection with computerized tomography (“CT”) procedures, as well as the EmpowerMR injector system. Discovery has begun in the Texas Action and case is set for trial in June 2010. Defendants contend this action should be dismissed for failure to state a claim for a patent infringement claim. The Court finds as to the direct infringement claims that the allegations are sufficient to put Defendants on notice. However, the Court concludes that plaintiffs have failed to properly state indirect infringement claims in light of plaintiffs’ failure to allege the requisite intent and knowledge needed to state a claim for inducing infringement. Plaintiff’s contributory infringement claim must also fail since requisite knowledge of the patent-in-suit was not alleged.
Transfer to the Eastern District of Texas is not warranted. First, the private interest factors mitigate against transfer to the Eastern District of Texas. Although Delaware is not its “home turf,” plaintiffs’ decision to litigate in Delaware is still accorded significant deference because Plaintiffs' choice of Delaware as a forum relates to their legitimate, rational concerns as Delaware corporations. The remaining private interest factors either weigh against transfer, or are neutral. The present action and the Texas Action indisputably involve the same parties. The two patents share two of the same inventors, but they are not part of the same patent family and the applications were filed years apart. EmpowerMR, the accused device in the present action, is also one of several accused devices in the Texas Action. However, the extent to which the cases involve a common field of prior art and/or similar technologies is unclear. Accordingly, the Court is not persuaded that the present action is so related to the Texas Action that a transfer is required in the interests of justice.

Consolidated cases are transferred to California

aquinlan@morrisjames.com (aquinlan@morrisjames.com) — Tue, 08 Dec 2009 22:40:17 GMT

Teleconference Systems v. Proctor and Gamble Pharmaceuticals, Inc., Civil No. 09-200-JBS/JS, November 25, 2009.

Schneider, M. J. Cisco's request to stay the Cisco action until its California declaratory judgment action is concluded is denied. Furthermore, Cisco and H-P’s requests to stay and sever plaintiff's customer claims and only transfer plaintiff's claims against Cisco and H-P to California are denied. Except as to the individual defendant, Cisco and H-P’s request to transfer the entirety of these actions to California is granted. Plaintiff's claim against the individual defendant will be severed and stayed and will remain in Delaware.

These lawsuits concern the TelePresence product or system. The Delaware complaint was filed on March 27, 2009, against eight of Cisco’s customers (the “Cisco Action”). Thereafter, Cisco filed an action in the Northern District of California seeking a declaratory judgment of non-infringement naming plaintiff and the owner of the patent-in-suit (the “California Action”). The Delaware Complaint was amended to add Cisco as a defendant after Cisco moved to intervene and to stay the Cisco Action. Cisco moved to transfer to the Northern District of California. An additional action against Hewlett-Packard (“H-P”) and its customers was filed alleging infringement of the patent-in-suit and the cases were consolidated. Cisco argues that the Delaware action should be stayed until the declaratory judgment action in California is decided. Cisco’s arguments that: (1) the first-filed action is a customer suit and the second filed action involves the manufacturer and (2) the California declaratory judgment suit will streamline and possibly moot the Delaware proceeding are rejected. The customer exception does not apply here because plaintiff alleges that Cisco's customers are not mere resellers but are direct infringers. In addition, Cisco was not prevented from bringing a claim here. Moreover, while a first-filed suit can be stayed if it would resolve all charges against the customers in the stayed suit, Cisco's California declaratory judgment action will not resolve all issues. Thus the motion to stay is denied.
Cisco’s motions that the Court should transfer the action to California and sever and stay plaintiff's claim against individual defendant (over whom California does not have personal jurisdiction) are granted. Due to the parties' significant contacts with California and minimal contacts with Delaware, the Court finds that California is more convenient for the parties and witnesses. Cisco is incorporated and has its principal place of business in California. Its California employees are most likely to have relevant information. In addition, plaintiff and its key witnesses have significant contacts with California. The fact that plaintiff has not identified a single material witness who resides in Delaware rather than California is telling and weighs in favor of transfer. The ability of potential witnesses to be subject to compulsory process is also a factor that weighs heavily in the “balance of convenience” analysis. Plaintiff’s argument that Delaware is not inconvenient since Cisco and several of its customers filed patent infringement lawsuits in Delaware holds no weight since plaintiff provided no meaningful details regarding the referenced Delaware lawsuits. Cisco and Hewlett Packard’s request to stay the customer claims pending resolution of the California action are rejected as the Court finds that the interests of justice and judicial economy are furthered by the complete transfer of this action to California, except as to the individual defendant, rather than a piecemeal transfer.

Delaware forum is upheld despite related cases in Illinois

aquinlan@morrisjames.com (aquinlan@morrisjames.com) — Tue, 08 Dec 2009 22:31:30 GMT

Stored Value Solutions Inc. v. Card Activation Technologies Inc., C.A. No. 09-495-JJF, November 20, 2009.

Farnan, J. Defendant’s motion to transfer to the Northern District of Illinois is denied.

Defendant moves to transfer this case to the Northern District of Illinois. After considering private and public factors, the Court finds that plaintiff’s choice to file in Delaware should be upheld where both plaintiff and defendant are incorporated here. Defendant contends that transfer is proper so that the case can be heard by the same court that has heard the other cases stemming from the alleged patent infringement at issue in this case. While efficiency may be had where a single judge presides over similar cases, such is not the case here where multiple judges in the Illinois court preside over the various cases. Thus this factor does not weigh in favor of transfer.

New trial application fails; pre and post judgment interest is awarded

aquinlan@morrisjames.com (aquinlan@morrisjames.com) — Thu, 03 Dec 2009 23:23:19 GMT

St. Clair Intellectual Property Consultants, Inc. v. Fuji Photo Film Co., Ltd., et al., Civ. Act. No. 03-241-JJF, November 19, 2009.

Farnan, J. Plaintiff’s Motion For New Trial On Damages Pursuant To Fed.R.Civ.P. 59, Or In The Alternative, Motion For Prejudgment And Post-Judgment Interest will be denied to the extent a new trial is sought and granted to the extent that prejudgment and post-judgment interest is sought. In addition, Plaintiff’s Motion For A New Trial On Infringement will be denied because the Court has not modified it claim construction. The Final Judgment Order in this case will be amended to reflect the Court's prejudgment and post-judgment interest rulings.

A jury verdict was entered in favor of plaintiff on October 25, 2004. This action was stayed pending the outcome of other related litigation in California concerning ownership. The stay was lifted after the California litigation was resolved. Plaintiff contends that the Court erred during trial in excluding evidence of the California verdict and evidence of plaintiff’s license agreements. However plaintiff failed to offer any case law supporting the argument that a previous jury verdict may be admitted into evidence to support a patentee's damages claim, and the Court remains persuaded that any probative value of the prior verdict was substantially outweighed by the potential for undue prejudice to defendant. In the alternative, plaintiff requests the Court to award prejudgment and post-judgment interest on the jury's award. Defendant has not disputed plaintiff's argument that an award of post-judgment interest is appropriate. Accordingly, the Court will award post-judgment interest at the statutory rate. As for prejudgment interest, the Court rejects defendant’s contention that the Court should postpone a determination on prejudgment interest in light of defendant's filing of a Notice of Appeal. Further, the Court has previously awarded prejudgment interest in cases despite a party's stated intention to appeal. It further rejects the contention that prejudgment interest is not warranted because plaintiff unduly delayed in prosecuting this action. The withholding of prejudgment interest based on delay is the exception, not the rule and will not bar an award of prejudgment interest unless the delay causes prejudice. Defendant bore at least some responsibility for the delay due to stipulating to the stay, the Court cannot conclude that these delays warrant the denial of prejudgment interest. Prejudgment interest should be based on pre-tax damages calculated at the Prime Rate.

Noninfringement contentions ordered prior to date set in scheduling order

aquinlan@morrisjames.com (aquinlan@morrisjames.com) — Tue, 01 Dec 2009 01:57:40 GMT

B. Braun Melsungen AG, et al. v. Terumo Medical Corporation, et al., C.A. No. 09-347-JJF-LPS, November 18, 2009.

Stark, M.J. Plaintiff’s request for non-infringement contentions in advance of the deadline in scheduling order is granted. Plaintiff’s request for supplementation of Defendant’s interrogatory responses is denied. Defendant’s request for supplementation of infringement contentions is denied. Its request for discovery relating to conception and reduction to practice is denied.

Plaintiff’s requested relief is granted in part and defendant is directed to answer non-infringement contentions by a date certain notwithstanding a later date in the scheduling order. The scheduling order does not override the 30-day rule for responding to interrogatories. The remaining relief requested by plaintiff is denied for failure to identify the interrogatories challenged. Defendant’s request that plaintiff be directed to supplement its infringement contentions is denied since plaintiff has already done so on two occasions. Defendant’s additional request for discovery related to conception and reduction to practice is denied as premature.

24 terms from six patents are construed regarding digital camera technology

aquinlan@morrisjames.com (aquinlan@morrisjames.com) — Tue, 01 Dec 2009 01:50:08 GMT

St. Clair Intellectual Property Consultants, Inc. v. Matsushita Electrical Industrial Co., Ltd., et al., Civil Action No. 04-1436-JJF-LPS, November 13, 2009.

Stark, M.J. The Magistrate makes recommendations regarding the construction of 24 disputed terms for the six patents-in-suit.

The Magistrate makes recommendations as to seven groupings of disputed terms for the six patents-in-suit. Tutorials and claim construction arguments were presented on June 11, 2009. The patents relate to digital camera technology. Some of the terms were previously construed by the Court in earlier litigation. The Magistrate agrees with defendants that those rulings are not dispositive here since there is no res judicata or collateral estoppel bar. He conducts his own analysis and ultimately agrees with Judge Farnan’s conclusions. In addition the reexamination history must be taken into consideration. The court construes the terms de novo without according any deference to the PTO, which may have erred.

Fast-track schedule is bumped for provisional damages and willfulness discovery

aquinlan@morrisjames.com (aquinlan@morrisjames.com) — Wed, 25 Nov 2009 00:32:40 GMT

Arendi Holding Ltd. v. Microsoft Corporation, et al., Civ. No. 09-119-JJF-LPS, November 4, 2009.

Stark, M. J. The court will enter a new scheduling order to accommodate new discovery needed on provisional damages. Discovery issues are resolved.

Plaintiff seeks provisional damages as a result of infringing products subsequent to the date Defendant was aware of Plaintiff’s patent application. The provisional damages theory includes discovery needs and the fast track schedule can no longer be accommodated. The parties believe they can work out a source code dispute. They are to outline their positions in a joint letter if any issues remain. Defendant’s licensing documents, including protocol license agreements, are discoverable as relevant to a reasonable royalty calculation. Defendant is not required to produce all other patent license agreements since the request is overbroad. Defendant’s offer to produce agreements between 2003 and 2009 which involved five or fewer U.S. patents was ordered. The court permitted plaintiff to add a claim of willful infringement which had not previously been asserted in order to obtain the fast-track schedule which is no longer operative. Defendant’s proposed schedule extension of 4 months is adopted to allow for additional discovery needed. The court notes defendant’s proposal contains a summary judgment provision relating to provisional damages.

Fees are awarded in 30(b)(6) spat

aquinlan@morrisjames.com (aquinlan@morrisjames.com) — Wed, 25 Nov 2009 00:26:13 GMT

Innovative Patents, LLC, et al. v. Brain-Pad, Inc., C.A. No. 07-680-MPT, November 4, 2009.

Thynge, M. J. Defendant’s motion for fees and costs relating to the deposition of a 30(b)(6) corporate representative is granted in part.

The court found that the representative could not respond on a number of topics listed in the deposition notice and orders costs and fees in the amount of $15,000 notwithstanding the fact that the witness was already scheduled to be redeposed.

Limited discovery on damages is permitted during liability phase in bifurcated cases

aquinlan@morrisjames.com (aquinlan@morrisjames.com) — Tue, 24 Nov 2009 01:19:29 GMT

Teles AG Informationstechnologien v. Quintum Technologies, LLC, C.A. No. 06-197-SLR-LPS, October 30, 2009.

Stark, M. J. The Magistrate orders defendants to produce certain damages information within 20 days of the Order.

The Magistrate considers discovery on damages during liability phase of these related cases which have been bi-furcated for trial. The defendants have asserted defenses of invalidity due to obviousness. In response, plaintiff seeks discovery from defendants regarding commercial success of the patented invention – a secondary consideration for non-obviousness. The Magistrate declines to follow any of the parties’ recommendations and takes a takes a middle-of-the road approach directing defendants to produce certain limited information.

Declaratory Judgment Action is dismissed for lack of actual controversy

aquinlan@morrisjames.com (aquinlan@morrisjames.com) — Tue, 24 Nov 2009 01:10:04 GMT

Microsoft Corporation v. Webxchange Inc., C.A. No. 09-484-JJF, October 30, 2009.

Farnan, J. Defendant’s motion to dismiss the complaint for lack of subject matter jurisdiction is granted.

The patents-in-suit are directed to methods and systems for enabling transactions on a web or other networks. Related cases are currently pending in the Delaware District Court wherein defendant has alleged infringement of the same patents-in-suit against certain entities which are not parties here (the “Related Cases”). Defendant moves to dismiss for lack of subject matter jurisdiction, or in the alternative, to transfer the case to the Northern District of California. The Court finds that none of the controversies cited by plaintiff give rise to a controversy here. First, there are no direct allegations of infringement against plaintiff, although at least one of the defendants in the Related Cases seeks indemnification from plaintiff based upon its use of Virtual Earth. Next, no controversy exists based on alleged accusations against plaintiff’s customers’ use of Virtual Earth or MapPoint. There is no indication that defendant is engaging in “scare-the-customer” tactics or using plaintiff’s customers to get to them. Moreover, only three of plaintiff’s many customers are involved in the Related Cases which does not constitute an imminent future threat. Finally, defendant’s refusal to execute a covenant not to sue, while relevant, is not dispositive. Defendant’s motion to dismiss is granted.

Jurisdictional discovery is ordered

aquinlan@morrisjames.com (aquinlan@morrisjames.com) — Tue, 24 Nov 2009 01:00:40 GMT

Gannett Satellite Information Network, Inc. v. Office Media Network, Inc., et al., C.A. No. 08-96-GMS, October 23, 2009.

Sleet, C. J. Defendant’s motion to dismiss is held in abeyance pending jurisdictional discovery. Defendant’s request to take jurisdictional discovery is granted.

The defendant subsidiary moved to dismiss for lack of jurisdiction. The court finds that there is enough competent evidence to demonstrate that there may be personal jurisdiction over this defendant. In particular, the court permits discovery on the issue of the subsidiary defendant’s role in formation, investment or contribution to certain Delaware entities.

Defendant's obvious and new trial motions are denied

aquinlan@morrisjames.com (aquinlan@morrisjames.com) — Sat, 14 Nov 2009 00:13:22 GMT

Linear Technology Corporation v. Monolithic Power Systems, Inc., C.A. No. 06-476-GMS, November 12, 2009.

Sleet, C.J. The Court denies defendant’s post-trial motions that the patents-in-suit are obvious, or alternatively for a new trial.

The patents-in-suit relate to a high efficiency switching regulator. A jury trial was held from June 23, 2008 to July 1, 2008. At no time before the jury verdict did defendant move for JMOL. The jury found plaintiff proved infringement and defendant failed to prove obviousness. The court found that the failure to move for JMOL was fatal to its motion for judgment as a matter of law on obviousness. The court further found that the jury’s verdict of non-obviousness was not remotely against the clear weight of the evidence and declined to order a new trial. The court further rejects the argument that fraudulent testimony requires a new trial. The testimony was found to be consistent with the facts, and defendant’s failure to clarify the contested testimony can not now be the basis for a new trial.

Court clarifies earliest launch date for generic product

aquinlan@morrisjames.com (aquinlan@morrisjames.com) — Sat, 14 Nov 2009 00:02:06 GMT

Takeda Pharmaceutical Company Ltd., et al., v. Teva Pharmaceuticals USA, Inc., et al., Civ. No. 06-33-SLR, November 9, 2009.

Robinson, J. The court grant’s plaintiff’s request for clarification with respect to the court Final Judgment Order.

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.

Generic company prevails on one patent after bench trial in lansoprazole litigation

aquinlan@morrisjames.com (aquinlan@morrisjames.com) — Fri, 13 Nov 2009 23:50:32 GMT

Takeda Pharmaceutical Company Ltd., et al., v. Teva Pharmaceuticals USA, Inc., et al., Civ. No. 07-331-SLR, November 9, 2009.

Robinson, J. The court finds after a bench trial that the defendant does not infringe U.S. Patent No. 5,464,632.

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.

Transfer motion is denied

aquinlan@morrisjames.com (aquinlan@morrisjames.com) — Tue, 03 Nov 2009 01:56:37 GMT

Personalized User Model LLP v. Google, Inc., Civil Action No. 09-525-JJF, October 27, 2009.

Farnan, J. Defendant’s motion to transfer venue to the Northern District of California is denied.

After considering both private and public factors, the Court finds both Delaware and the Northern District of California to be appropriate. However, because the plaintiff chose to file in Delaware and defendant is incorporated and resides in Delaware, defendant cannot argue that it would be unfair to litigate this matter here. Therefore, transfer is not warranted.