By Memorandum Opinion entered by The Honorable Gregory M. Sleet in Genentech, Inc. et al. v. Amgen Inc., Civil Action No. 17-1407-GMS (D.Del. April 17, 2018), the Court granted defendant Amgen’s motion to dismiss the claim of plaintiffs Genetech and City of Hope (collectively “Genetech”) requesting a declaratory judgment that Amgen cannot market Mvasi™ before December 18, 2018.

Mvasi™ is a biosimilar version of Genetech’s Avastin®. During the “patent dance” prescribed by the Biologics Price Competition and Innovation Act (“BPCIA”), 42 U.S.C. § 262(l), Amgen made a statement pursuant to 42 U.S.C. §262(l)(3)(B) that it did not intend to begin commercial marketing of Mvasi™ before December 18, 2018. Id. at *1. Amgen later provided notice that it would not start commercial marketing of Mvasi™ before April 4, 2018 – eight months earlier than the date it previously provided. Genetech filed its claim requesting a declaratory judgment seeking to enforce Amgen’s earlier representation that it would not commence the commercial marketing of Mvasi™ before December 18, 2018. Id. at *3. Amgen moved to dismiss Genetech’s commercial marketing claim asserting that it failed to state a claim and that the Court lacked subject matter jurisdiction under Federal Rules of Civil Procedure 12(b)(6) and 12(b)(1). Id. at *1.

Upon review, the Court determined there was not yet an “actual controversy” to warrant the Court exercising jurisdiction over Genentech’s commercial marketing claim under the Declaratory Judgment Act. Id. at *4. In other words, because it was already beyond April 4, 2018 and, other than the notice of commercial marketing, there was no indication that Mvasi™ had actually launched or would be launched before December 18, 2018, the commercial marketing claim was not of “sufficient immediacy” to warrant the issuance of a novel declaratory judgment. Id. The Court noted that, if the claim ripens into an “actual controversy” – meaning Amgen launches Mvasi™ before December 18, 2018 – there would be an opportunity for Genentech to seek a temporary restraining order or preliminary injunction at that time. Id.

A copy of the Memorandum Opinion is attached.

By Order entered by The Honorable Gregory M. Sleet in Alarm.com, Inc., et al. v. Securenet Technologies, Civil Action No. 15-807-GMS (D.Del. April 6, 2018), the Court rendered its Markman ruling construing three (3) disputed terms and certain variants of one term in U.S. Patent Nos. 7,885,635 (“the ‘635 patent”), 8,073,931 (“the ‘931 patent”), 8,473,619 (“the ‘619 patent”), and 8,478,844 (“the ‘844 patent”).

A copy of the Markman Order is attached.

By Memorandum Opinion entered by The Honorable Richard G. Andrews in IPA Technologies, Inc. v. Amazon.com, Inc. et al., Civil Action No. 16-1266-RGA (D.Del. March 31, 2018) (consolidated), the Court granted Defendants’ motions to dismiss as to claim 1 of U.S. Patent No. 6,742,021 (“the ‘021 patent”), claim 1 of U.S. Patent No. 6,523,061 (“the ‘061 patent”), and claim 1 of U.S. Patent No. 6,757,718 (“the ‘718 patent”) after finding that those claims are each drawn to an abstract idea and that none of them provide an inventive concept. In reaching its findings, the Court noted, among other things, that the subject claims are “aspirational in nature and devoid of any implementation details or technical description” that would permit the Court to conclude that any of the subject claims as a whole are directed to something other than the abstract idea of retrieving electronic data in response to a spoken request, and transmitting the retrieved data to a user. Id. at *18.

A copy of the Memorandum Opinion is attached.

By Memorandum Opinion entered by The Honorable Leonard P. Stark in 3G Licensing, S.A. et al. v. Blackberry Ltd. et al., Civil Action No. 17-82-LPS-CJB (D.Del. March 22, 2018) (consolidated), the Court granted Defendants’ motion pursuant to Federal Rule of Civil Procedure 12(c) for judgment on the pleadings that all the claims of U.S. Patent No. 6,212,662 (“the ‘662 patent”) are invalid under 35 U.S.C. § 101. The ‘662 patent is entitled “Method and Devices for the Transmission of Data with Transmission Error Checking” and “[t]he invention relates to a method for the transmission of data with transmission effort checking.” Id. at *1. In short, upon conducting the two step Alice/Mayo analysis, the Court found that the claims of the ‘662 patent were directed to an abstract idea and did not contain an inventive concept. Id. at *11-18. Thus, the Court held that the ‘662 patent is not patent eligible and granted motion for judgment on the pleadings on invalidity in favor of Defendants. Id. at *18.

A copy of the Memorandum Opinion is attached.

By Memorandum Opinion entered by The Honorable Leonard P. Stark in Fairchild Semiconductor Corp. et al. v. Power Integrations, Inc., C.A. No. 12-540-LPS (D.Del. March 16, 2018), the Court denied Defendant Power Integrations, Inc.’s motion for entry of final judgment pursuant to Rule 58 of the Federal Rules of Civil Procedure as to induced infringement of its U.S. Patent No. 7,995,359 (“the ‘359 patent”) by Plaintiffs Fairchild Semiconductor Corporation and Fairchild (Taiwan) Corporation (collectively, “Fairchild”) and ordered a new trial on the issues of induced infringement and damages for that infringement. The Court did so after concluding that the induced infringement jury instruction that it gave the jury during the trial constituted plain error, was a miscarriage of justice and the only option left was to order a new trial on induced infringement pursuant to the Court’s inherent authority. See id. at *11-12.

A copy of the Memorandum Opinion is attached.

By Memorandum Opinion entered by The Honorable Gregory M. Sleet in Green Mountain Glass LLC & Culchrome LLC v. Saint-Gobain Containers, Inc. d/b/a Veralla North America, Civil Action No. 14-392 (D.Del. March 8, 2018), the Court, subsequent to a five-day jury trial after which the jury returned a verdict in favor of Plaintiffs on the issue of infringement with respect to all claims of U.S. Patent No. 5,718,737 (“the ‘737 Patent”) and willful infringement of certain claims of the ‘737 patent and after considering the entire record in the case, the substantial evidence in the record, the parties’ post-trial submissions, and the applicable law, decided to deny Defendant’s motion for judgment as a matter of law and all other motions besides Plaintiffs’ motion for prejudgment interest.

A copy of the Memorandum Opinion is attached.

By Memorandum Opinion entered by The Honorable Leonard P. Stark in American Axle & Mfg., Inc. v. Neapco Holdings LLC et al., Civil Action No. 15-1168-LPS (D.Del. February 27, 2018), the Court granted Defendants’ Motion for Summary Judgment of Invalidity of U.S. Patent No. 7,774,911 (“the ‘911 patent”) after finding that it was directed to patent ineligible subject matter under 35 U.S.C. §101.

The ‘911 patent relates generally to shaft assemblies for transmitting rotary power in a driveline and more specifically to a method for attenuating driveline vibrations transmitted through a shaft assembly. Id. at *1-2. Many of the prior art liners attenuated the shell mode vibrations but did not also attenuate bending or torsion mode vibrations. Id. at *2. “The ‘911 patent purports to provide ‘an improved method for damping various types of vibrations in a hollow shaft,’ which facilitates the damping of shell mode vibration as well as bending mode vibration and/or torsion mode vibration.” Id.

In applying the two-part framework of the Alice test to the ’911 patent, the Court agreed with Defendants that (1) the claimed methods are simply the application of laws of nature, Hooke’s law, with the result of friction damping; and (2) the claims do not contain an inventive concept. Id. at *9-16. Thus, the Court found that the asserted claims of the ‘911 patent are not patent-eligible under 35 U.S.C. §101. Id. at *15.

A copy of the Memorandum Opinion is attached.

The takeaway is that drafters of patents for processes claiming patent ineligible subject matter – laws of nature, physical phenomena, and abstract ideas – should be mindful that their patent claims contain some additional features or inventive concept that provide practical assurances that the process is more than a drafting effort designed to monopolize the law of nature itself. Parties sued for infringement of patents that arguably involve laws of nature, physical phenomena and/or abstract ideas should carefully evaluate those patents to determine whether they meet the Alice test.

By Opinion entered by The Honorable Leonard P. Stark in Idenix Pharmaceuticals LLC et al. v. Gilead Sciences, Inc., Civil Action No. 14-846-LPS (D.Del. February 16, 2018), the District Court granted in part Defendant Gilead Sciences, Inc.’s renewed motion for judgment as a matter of law (“JMOL Motion”) after finding that the asserted claims of the patent-in-suit, U.S. Patent No. 7,608,597 (“the ‘597 patent”) are invalid for failure to meet 35 U.S.C. § 112’s enablement requirements. The Court denied Defendant’s JMOL Motion as to damages and written description. Id. at *2 and 51.

By way of background, the science involved in this case involves groundbreaking work by both parties in the field of treatments for the Hepatitis C virus infection. The ‘597 patent is entitled “Methods and Compositions for Treating Hepatitis C Virus. It was issued on October 27, 2009. Id. at *1. Prior to trial, Defendant Gilead stipulated that, under the Court’s claim construction, its accused products, Harvoni and Sovaldi, infringe the asserted claims of Idenix’s ‘597 patent. Id. At the end of a two week trial in December 2016, the jury found that Gilead failed to prove that the asserted claims are invalid and awarded Idenix $2.54 billion in damages. Id. Thereafter, Gilead renewed its JMOL motion, which the Court had taken under advisement during trial and later denied as moot and with the opportunity to renew following entry of judgment. Id.

In its JMOL motion, Gilead asked the Court to set aside the jury’s verdict on grounds that Idenix’s asserted patent claims are invalid for failure to meet 35 U.S.C. §112’s written description and enablement requirements. Id. Alternatively, Gilead requested the Court to reduce the $2.54 billion damages award as unsupported by the evidence. Id.

After reviewing the record and evaluating the JMOL motion, the Court found that “a reasonable jury, even taking all the evidence in the light most favorable to Idenix and drawing all reasonable inferences in favor of Idenix, could only have concluded that Idenix’s ‘597 patent is invalid due to lack of enablement. The only reasonable finding, based on the trial record, is that Gilead met its burden to prove nonenablement by clear and convincing evidence. The trial revealed that there are no genuinely disputed material facts with respect to enablement.” Id. at *50-51. Accordingly, the Court concluded that Gilead is entitled to judgment as a matter of law that the asserted claims of the ‘597 patent are invalid for lack of enablement. Id. at *51.

The effect of the Court’s Order will be the setting aside of the jury’s $2.54 billion damages award to Idenix.  A copy of the Opinion is attached.

 

The United States District Court for the District of Delaware has announced new procedures for assignment of cases to Senior Judge Gregory M. Sleet in light of Judge Sleet’s retirement from the bench during the fall of 2018 and two current District Judge vacancies on the Court. With respect to new civil cases, for the time being, Senior Judge Sleet will continue to draw a share of new civil cases equal to that of the Court’s active District Judges. The Court has begun the process of reassigning a portion of the civil cases currently on Judge Sleet’s docket – primarily those scheduled for trial in 2018. With respect to criminal cases, Judge Sleet will no longer be assigned new criminal matters beginning sometime in the spring of 2018. At and after that time, all new criminal cases will be assigned to the Court’s active District Judges.

In the announcement, the Court clarified that the procedures for the assignment of cases to the Vacant Judgeship docket (“VAC”) remain unchanged and no new visiting judges have been added to the list since the September 2017 announcement.

A copy of the Announcement is attached.

By Memorandum Opinion entered by The Honorable Gregory M. Sleet in Genentech, Inc. et al. v. Amgen Inc., Civil Action No. 17-1407-GMS (D.Del. January 22, 2018), the Court denied defendant Amgen Inc.’s motion to transfer two patent infringement actions from the United States District Court for the District of Delaware to the United States District Court for the Central District of California where Amgen has a declaratory judgment action pending. Both Plaintiff and Amgen are incorporated in Delaware with their principal places of business in California. Id. at *1.

In support of its motion, Amgen argued that the Jumara factors weighed heavily in favor of transfer and that transfer was warranted under the first-to-file rule. Id. at *4. In weighing the Jumara factors, the Court found that Amgen’s choice of forum weighed in favor of transfer, but not as strongly as Plaintiff’s choice of forum weighed against transfer. Id. Two factors weighed slightly in favor of transfer: where the claims arose and the convenience of the witnesses. Id. The remaining factors weighed against transfer or were neutral. Id. Thus, because the balance of the Jumara factors did not strongly weigh in favor of transfer, the Court found that Amgen did not carry its burden of demonstrating the transfer was warranted under those factors. Id.

With respect to the first-to-file rule, the Court found that the California action was anticipatory in nature, and there are convenience factors that weigh against transfer in addition to the Jumara factors weighing against transfer. Id. at *13-15. Therefore, the Court refused to apply the first-to-file rule in favor of transfer. Id. at *15.

A copy of the Memorandum Opinion is attached.