By Memorandum Opinion entered by The Honorable Leonard P. Stark in Novartis AG, et al. v. Ezra Ventures, LLC, Civil Action No. 15-150-LPS (D.Del. September 22, 2016), the Court denied Defendant’s motion for judgment on the pleadings which argued that U.S. Patent No. 5,604,229 (“the ‘229 patent) should be ruled invalid, or otherwise terminally disclaimed for the time past the expiration date of unasserted U.S. Patent No. 6,004,565 (“the ’565 patent).

Defendant’s motion challenged the validity of the patent term extension (“PTE”) of the ‘229 patent. Id. at *2.  Defendant argued that extension of the ‘229 patent, a compound patent, beyond the life of the ‘565 patent, a method patent, was impermissible because it:  (1) de facto extends the life of the ‘565 patent and, thus, violates the provision of 35 U.S.C. § 156 requiring that “in no event [may] more than one patent be extended  .  .  .  for the same regulatory review period for any product;” (2) violates the bedrock principle that the public may practice an expired patent; and (3) renders the ‘229 patent invalid for statutory and obviousness-type double patenting. Id. at *2-3.

The Court rejected Defendant’s arguments finding that (1) the Federal Circuit’s decision in Merck & Co. v. Hi-Tech Pharmacal Co., 482 F.3d 1317, 1323 (Fed. Cir. 2007) suggests that 35 U.S.C. § 156(c)(4) permits the “de facto” patent term extension to which Defendant objects; (2) the expiration of a patent does not grant the public an affirmative right to practice a patent – it merely ends the term of the patentee’s right to exclude others from practicing the patent; and (3) the “same invention” and “obviousness” inquiries that are necessary for a double patenting analysis raise issues of fact that cannot be resolved at the judgment on the pleadings stage of the case. Id. at *3-6.  Accordingly, the Court concluded that Defendant’s arguments did not provide a meritorious basis to grant it judgment on the pleadings.

A copy of the Memorandum Opinion is attached.

By Memorandum Opinion entered by The Honorable Richard G. Andrews in Nice Systems Ltd. et al. v. Clickfox, Inc., Civil Action No. 15-743-RGA (D.Del. September 15, 2016), the Court granted Defendants’ motion to dismiss for lack of patentable subject matter after finding that (1) the asserted claims of the patent-in-suit, U.S. Patent No. 8,976,955 (“the ‘955 patent”) are directed to the abstract idea of cross-channel customer service; and (2) the independent claims of the ‘955 patent do not add any “inventive concept” to the abstract idea of cross-channel customer service.

A copy of the Memorandum Opinion is attached.

By Memorandum Order entered by The Honorable Sue L. Robinson in Intellectual Ventures I LLC, et al. v. Toshiba Corp., et al., Civil Action No. 13-453-SLR (D.Del. September 7, 2016), the Court granted defendants’ motion to amend their answer to include a defense of improper inventorship with respect to U.S. Patent No. 5,938,742 (“the ‘742 patent”) more than one year after the deadline in the Court’s Scheduling Order for the filing motions to join parties and/or to amend the pleadings and more than seventeen years after the issuance of the ‘742 patent.  Defendants moved to amend to include the defense of improper inventorship based on information obtained during the June 1, 2016 deposition of the individual the defendants claim is a co-inventor that was not named in the ‘742 patent. Id. at *1-2.

Despite the facts that the case was filed in 2013 and trial is scheduled to start on January 17, 2017, the Court recognized the importance of proper inventorship and granted the motion to amend. Id. at *5.  However, the Court also noted that it “recognizes the extraordinary delay between the issuance of the ‘742 patent and the assertion of improper inventorship, as well as the fact that, in most instances, the remedy for improper inventorship is a certificate of correction, not invalidation.” Id. Thus, the Court bifurcated the newly-added defense to allow for additional discovery and a separate motion practice and trial. Id.

A copy of the Memorandum Order is attached.

By Memorandum Order entered by Chief Judge Leonard P. Stark in Cosmo Technologies Ltd. et al. v. Actavis Laboratories FL, Inc., Civil Action No. 15-164-LPS (D.Del. September 2, 2016) (consolidated), the District Court granted Defendants’ Motion for the Issuance of a Letter of Request for International Judicial Assistance Pursuant to the Hague Convention on Taking Evidence Abroad (“Rogatory Motion”) over Plaintiffs’ objections to the motion.  Defendants’ motion requested the Court to seek the assistance of Italian authorities in compelling the testimony of an Italian citizen residing in Italy, who is the named inventor on all of the patents-in-suit, regarding his role in the conception and reduction to practice of the patented inventions and development of Plaintiffs’ drug product that allegedly embodies the patents-in-suit. Id. at *2.

Plaintiffs opposed the Rogatory Motion arguing that it was untimely and that it would prejudice Plaintiffs if granted by requiring Plaintiffs to devote additional time and money to conducting a deposition in Italy after the close of fact discovery as well as the need to prepare to address the deposition during trial. Id. at *4.  The Court rejected Plaintiffs’ objections and found that the Rogatory Motion was not untimely and that the prejudice to Defendants if they were denied the opportunity to take the inventor’s deposition outweighed the potential prejudice about which Plaintiff complained, particularly given that the parties agreed to extend certain dates such that fact discovery only recently ended and trial is not scheduled until May 2017. Id. at *4-5.

A copy of the Memorandum Order is attached.

By Memorandum Opinion entered by The Honorable Gregory M. Sleet in Vanda Pharmaceuticals Inc., et al. v. Roxane Laboratories, Inc., Civil Action No. 13-1973-GMS (D.Del., August 25, 2016) (consolidated), the Court, following a five-day bench trial and having considered the entire record in the case (including but not limited to the parties’ post-trial proposed findings of fact and post-trial briefs), directed the Clerk of Court to enter final judgment in favor of plaintiffs.  In reaching its decision, the Court concluded that (1) all asserted claims of the patents-in-suit are valid; (2) Roxane’s proposed products induce infringement of the asserted claims of the ‘610 patent; and (3) Roxane’s proposed products do not contributorily infringe the asserted claims of the ‘610 patent. Id. at *2.

Among other things, the Court rejected Roxane’s argument that the ‘610 patent claimed a patent ineligible subject matter – namely, a law of nature that it applies in a way that is routine and conventional. Id. at *17.  The Court reasoned that, although the ‘610 patent depends upon the laws of nature, the specific dosage step in the ‘610 patent was not routine or conventional and provided sufficient inventive elements to ensure the claims amounted to significantly more than just a natural law. See id. at *18-20.  Thus, the Court found that the ‘610 patent is not invalid for lack of patentable subject matter.

Copies of the Memorandum Opinion and Order are attached.

By Memorandum Order entered by The Honorable Leonard P. Stark in Masimo Corp. v. Philips Electronic North America. Corp. et al., Civil Action No. 09-90-LPS-MPT (D.Del., August 15, 2016), the Court denied Defendants’ motion to strike the reply expert report of Plaintiff’s reply expert, Dr. Quill.  The Court reasoned that Dr. Quill’s reply expert report addressed issues concerning non-infringing alternatives that were raised for the first time in Defendants’ rebuttal expert reports. Id. at *4.  The Court also noted that Plaintiff had been diligent and its opening reports were adequate and did not unreasonably withhold arguments or opinions for presentation in a future report. Id.

It is also worth noting that the Court had addressed an earlier iteration of the dispute during a discovery teleconference on April 14, 2016. See id. at *3.  During that teleconference, “the Court ruled that ‘there’s nothing, per se, improper in . . . us[ing] a different expert in a reply report’ than was used in the opening reports and, hence, Dr. Quill could file a report – subject to a motion to strike.” Id.

A copy of the Memorandum Order is attached.

Through Order entered by Chief Judge Leonard P. Stark and pursuant to the authority vested in the Court by Rule 83 of the Federal Rules of Civil Procedure, the United States District Court for the District of Delaware amended its Local Rules of Civil Practice and Procedure. The revised Local Rules become effective on August 1, 2016.

Copies of the Revised Local Rules of Civil Practice and Procedure of the United States District Court for the District of Delaware and the implementing Order are attached.

By Memorandum Opinion entered by The Honorable Leonard P. Stark in GN Netcom, Inc. v. Plantronics, Inc., Civil Action No. 12-1318-LPS (D.Del., July 12, 2016) (redacted), the Court granted in part Plaintiff’s Motion for Sanctions arising from the deletion of emails by a senior executive of Defendant who was responsible for all domestic sales functions and ultimately responsible for the execution and implementation of the Plantronics Only Distributor (“POD”) program and agreements which are the focus of the claims asserted in the antitrust action.  The record contained evidence that, after the filing of the lawsuit and despite Defendant promptly issuing a litigation hold to relevant employees upon receiving Plaintiff’s demand letter, updating the litigation hold after the lawsuit was filed, providing training sessions and sending quarterly reminders to ensure compliance, the senior executive of Defendant deleted certain emails that should have been preserved in the anticipation or conduct of litigation, instructed others in the company to delete certain emails, and Defendant otherwise engaged in spoliation of electronically stored information (“ESI”). Id. at * 1-18.  The Court found that (1) Defendant, due to its senior executive’s deletion of emails and his instructing others to delete certain emails, failed to take reasonable steps to preserve ESI which cannot be restored or replaced; (2) Defendant did so in bad faith with the intent to deprive Plaintiff from using the information contained in the emails; and (3) Plaintiff is prejudiced by the loss of the emails. Id. at *18-26.

The Court next evaluated the appropriate sanctions to impose and decided to impose against Defendant the following: (1) monetary sanctions in the form of the reasonable fees and costs incurred by Plaintiff in connection with the spoliation disputes; (2) punitive sanctions in the amount of $3 million dollars; (3) possible evidentiary sanctions during trial, if requested in the future by Plaintiff and found by the Court to be warranted; and (4) sanction instructions to the jury that it “may” – as opposed to that it “must” – draw an adverse inference that emails destroyed by Defendant would have been favorable to Plaintiff’s case and/or unfavorable to Defendant’s defense. Id. at *26-30.

A copy of the redacted public version of the Opinion is attached.

Of particular note is the fact that, in rendering its ruling in the Opinion, the Court applied Federal Rule of Civil Procedure 37(e) as revised by the December 1, 2015 amendment.

By Memorandum Opinion entered by The Honorable Richard G. Andrews in Idexx Laboratories, Inc. v. Charles River Laboratories, Inc., Civil Action No. 15-668-RGA (D.Del., July 1, 2016), the Court denied Defendants’ motion to dismiss for failure to state a claim after concluding that the representative claim, claim 1 of U.S. Patent No. 8,927,298 (“the ‘298 patent”), includes the “inventive concept” of using DBS technology to monitor the health of rodent populations by analyzing blood for biomarkers of infectious disease.  The Court noted that “[t]he advances over the prior art are clear.  The invention permits one to monitor the health of rodent populations without euthanizing animals, waiting for blood to clot in a centrifuge, or shipping blood serum overnight in a refrigerated container.” Id. at *12.  Thus, the Court concluded that “[t]his inventive concept is sufficient to ‘transform the abstract idea . . . into a patent-eligible application of that idea.’” Id.

 A copy of the Memorandum Opinion is attached.

The general take away is that, under the Mayo/Alice analysis, the fact that a patent claims are drawn to a patent-ineligible concept such as an abstract idea does not end the inquiry.  One must then ask whether the claims provide an inventive concept.  An inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces.

By Memorandum Order entered by The Honorable Sue L. Robinson in Adtile Technologies, Inc. v. Perion Network Ltd., et al., Civil Action No. 15-1193-SLR (D.Del., June 23, 2016), the Court denied plaintiff Adtile Technologies, Inc.’s motion for preliminary injunction after concluding that Adtile had not shown likelihood of success on the merits of the claims asserted:  Delaware statutory misappropriation of trade secrets, common law misappropriation of confidential information, copyright infringement, and Lanham Act false designation of origin and unfair competition.  In reaching its conclusion, the court determined that Adtile’s trade secrets and confidential information were not sufficiently delineated from what is either publicly available or discernable from visual details of published Motion Ads. Id. at *13.  The Court also noted that the fact that Adtile included, without attribution, the handphone image in two ads provided to Undertone as deliverables under the License Agreement weakened Adtile’s copyright and trademark infringement arguments. Id.

A copy of the Memorandum Order is attached.

The general take away is the granting of a preliminary injunctions is considered an “extraordinary remedy” that will only be granted in limited circumstances. Parties seeking preliminary injunctions must demonstrate the fundamental requirements of likelihood of success on the merits and irreparable harm if relief is not granted to have any chance of obtaining a preliminary injunction.