Delaware Intellectual Property Litigation : DE Intellectual Property Lawyer & Attorney for Patents & Antitrust Litigation in Wilmington, Dover & Newark

By Order dated June 24, 2010, Chief Judge Gregory M. Sleet adopted the Report and Recommendation Regarding Claim Construction entered by Magistrate Judge Leonard P. Stark on May 12, 2010 in The Research Foundation of State of New York, et al. v. Mylan Pharmaceuticals, L.P., Civil Action No. 09-184-GMS-LPS.  In doing so, the Court adopted the constructions of the five  terms in dispute, "tetracylcline compound", "antibiotic tetracycline compound", "the tetracycline compound has substantially no anti-microbial activity", "minimum antibiotic serum concentration", and "chronic inflammatory condition", as used in the asserted claims of United States Patent Nos. 7,232,572, 7,211,267, 5,789,395 and 5,919,775 in accordance with Judge Stark's recommended constructions in his Report and Recommendation.  The Court also adopted the constructions of the six terms that the parties agreed to among themselves as set forth in Judge Stark's Report and Recommendation.  Copies of Judge Stark's Report and Recommendation Regarding Claim Construction and Judge Sleet's Order adopting it are attached.   

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By Memorandum Opinion and Order entered by The Honorable Leonard P. Stark, in Leader Technologies, Inc. v. Facebook, Inc., Civil Action No. 08-862-LPS (D.Del., June 24, 2010), the Court granted in part and denied in part defendant Facebook’s Motion for Leave to Amend Its Responsive Pleading to Add a Defense and Counterclaim of Inequitable Conduct and to Amend Its False Marking Counterclaim. Specifically, the Court’s Order allowed Facebook to add an affirmative defense of inequitable conduct and a declaratory judgment counterclaim, but did not permit Facebook to amend its existing false marking counterclaim. Id. at 10.

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In Senju Pharmaceutical Co. Ltd., et al. v. Apotex Inc., et al., Civil Action No. 07-779-SLR, the U.S. District Court for the District of Delaware, by and through a memorandum opinion entered by The Honorable Sue L. Robinson on June 14, 2010, entered judgment in favor of defendants, Apotex Inc. and Apotex Corp. (“Apotex”), and against plaintiffs, Senju Pharmaceutical Co. Ltd (“Senju”), Kyorin Pharmaceutical Co. Ltd. (“Kyorin”) and Allergan, Inc. (“Allergan”). The case is an infringement action that was tried by bench trial on January 12-14, 2010. In rendering judgment in favor of defendants, the Court concluded among other things that, although plaintiffs had demonstrated by a preponderance of the evidence that defendants’ ANDA product infringed claims 1-3, 6,7, and 9 of the patent in dispute, U.S. Patent No. 6,333,045 (“the ‘045 patent”), defendants demonstrated by clear and convincing evidence that those claims are invalid based on obviousness given the asserted prior art. Id. at 15-21 and 37.

A complete copy of the Court’s Memorandum Opinion is attached.
 

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In Life Technologies Corporation, et al. v. Illumina, Inc., et al., Civil Action No. 09-706-RK (D.Del., June 7, 2010), the Court , by opinion entered by Senior Judge Robert F. Kelly, denied plaintiff Life Tech's motion to stay defendants' patent counterclaims pending re-examination of defendants' patents-in-suit by the United States Patent and Trademark Office ("USPTO").  In support of their motion, plaintiffs asserted that the re-examinations by the USPTO would likely to result in cancellation or changes of the asserted patent claims, that a stay would streamline issues in the action and promote judicial economy, and proceeding with Life Tech's invalidity case against defendant Illumina's patents in this action could be contradictory to the result of the re-examination of those patents by the USPTO.  Id. at 2-4.  Defendants countered by asserting that the delay in the re-examination process will be much longer than plaintiff suggests, the subject matter underlying plaintiffs and defendants infringement and invalidity claims are related, plaintiffs and defendants are direct competitors in the technology, and that it would be highly unlikely that proceeding in this action could produce a contradictory result in the re-examination proceeding before the USPTO because of the mandates of 35 U.S.C. § 317(b).  Id.

In denying plaintiffs' motion to stay, the Court reasoned that, although the re-examinations before the USPTO have the potential for simplifying the issues pertaining to the counterclaim patents in the case, the potential benefit would be at the expense of placing the counterclaim on hold for years while the plaintiffs' case continues.  Id. at 5.  Also, the patents in plaintiffs' case and the patents in defendants' counterclaim overlap at least to a certain extent and ,when one further considers that the claims at issue involve parties who are in direct competition, the potential for irreparable harm caused by a stay of the counterclaim far outweighs the possibility of simplifying some of the claims at issue.  Id. at 5-6.  Further, it is highly unlikely that a contradictory result could be reached in this Court and the USPTO in its re-examination proceeding because 35 U.S.C. § 317(b), which is applicable to inter-partes re-examinations, mandates that, if the Court proceeds in this action and Life Tech fails to prove that Illumina's patent claims are invalid, that result would be binding in the re-examinations.  Id. at 4.  Thus, the Court denied plaintiffs' motion to stay the counterclaim action.

A complete copy of the opinion is attached. 

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In Integrated Discrete Devices, LLC v. Diodes Incorporated, C.A. No. 08-888-GMS (D.Del., May 26, 2010), The Honorable Gregory M. Sleet, Chief Judge, issued the Court's Markman Order construing seven disputed terms in a patent action.  Of particular note in the Court's Order is the first footnote which notes that the Court adopted the defendant's proposed construction of the term "semiconductor substrate of a first conductivity type" to mean "bottom semiconductor material of a first conductivity type, upon which layers may be deposited or grown" .  .  .  "as a sanction for the plaintiff's failure to follow its Markman procedures."  Id. at 1, n.1.

A copy of the Court's Markman Order is attached.

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On April 30, 2010, The Honorable Joseph J. Farnan, Jr. issued the opinion setting forth the Court's findings of fact and conclusions of law in the second phase of the patent infringement action captioned LG Display Co., Ltd. v. AU Optronics Corp., C.A. No. 06-726-JJF (D.Del.).  In the second phase, the claims at issue were those asserted by LG Display Co., Ltd. ("LGD") alleging infringement of four patents against AU Optronics Corporation ("AUO") as well as AUO's invalidity defense.  In its latest opinion, the Court defined the disputed terms in the asserted patents and concluded that LGD did not establish by a preponderance of the evidence that AUO infringes the asserted patents.  The Court also concluded that AUO did not establish by clear and convincing evidence that the asserted patents are invalid.

Readers may recall that, in February 2010, Judge Farnan issued the opinion setting forth the Court's findings of fact and conclusions of law in the first phase of this patent infringement action which addressed AUO's patent infringement claims against LGD and LGD's invalidity defense.  See Blog Posting of February 21, 2010.  In the first phase opinion, the Court concluded that AUO did establish by a preponderance of the evidence that LGD infringed the patents asserted by AUO in this action, and LGD did not establish by clear and convincing evidence that such patents were invalid.

Thus, the Court ruled in favor of AUO in both phases of the action following the bench trial that took place in June 2009.  A complete copy of the second phase opinion is attached. 

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In Biovail Laboratories Int'l SRL v. Cary Pharmaceuticals Inc., C.A. No. 09-605-JJF-LPS (D.Del., May 26, 2010), Judge Stark denied Defendant Cary Pharmaceuticals ("Cary") motion to strike plaintiff Biovail expert's supplemental declaration that was submitted by plaintiff in connection with the filing of its answering brief on claim construction.  However, given plaintiff's conduct in submitting its expert's supplemental declaration after the deadline set forth in the Scheduling Order agreed to by the parties for depositions of experts who submitted declarations, Judge Stark, among other things, postponed the Markman hearing for four weeks and allowed Cary to conduct a second deposition of plaintiff's expert directed solely to his supplemental declaration and to file a reply brief in support of its proposed claim construction if it so desired.  Id. at 5-7.

In his Order, Judge Stark noted that, "[w]hile Biovail has not engaged in willful deception, its silence as to its intent to file a rebuttal report and its failure to in any way disclose Hopfenberg's rebuttal opinions at a time when Cary could test and/or respond to them appears to have had the consequence of deceiving Cary into believing that the record with respect to the opinions of claim construction was complete. . . . Biovail's conduct, if unaddressed, will unduly prejudice Cary's ability to advocate its position at the Markman hearing."  Id. at 5.

A copy of the Order is attached hereto.  

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In The Dow Chemical Company v. Nova Chemicals Corp., C.A. No. 05-737-JJF (D.Del., May 20, 2010), Judge Farnan entered the Court's Memorandum Opinion and Oder denying the motion of defendant Nova Chemicals ("Nova") seeking to strike the expert declarations submitted by plaintiff Dow Chemical ("Dow") in support of its counterstatement of facts in opposition to Nova's motion for summary judgment.  Nova contended that the expert declarations relied upon in Dow's counterstatement were improper, untimely and should be stricken because they purportedly constituted additional expert opinions that should have been filed before the end of discovery and were improperly molded to meet Dow's legal challenges in responding to the summary judgment motions and, thus, Nova allegedly was unduly prejudiced.  Id. at 3-5.  The Court disagreed with Nova and refused to strike the expert declarations.   Id. at 5-7.

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On Thursday, May 13, 2010, the Senate Judiciary Committee unaminously approved the nomination of U.S. Magistrate Judge Leonard P. Stark to become a district judge.  Thus, Judge Stark's nomination now moves to the full Senate for consideration.  Judge Stark has been serving as a Magistrate Judge on the U.S. Court for the District of Delaware since 2007.  

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