By Memorandum Opinion entered by The Honorable Richard G. Andrews in Amgen Inc. v. Hospira, Inc., Civil Action No. 15-839-RGA (D.Del., November 30, 2016), the Court issued its claim constructions for the two phrases in dispute in claims 1 and 8 of U.S. Patent No. 5,856,298 (“the ‘298 patent”) and found that claim 8 of the ‘298 patent is invalid under 35 U.S.C. § 112 because it is a dependent claim that contradicts a limitation of the claim from which it depended – claim 1.

In construing the phrase “an isolated . . . isoform” in claims 1 and 8 of the ‘298 patent, the Court adopted Hospira’s proposal that “an isolated . . . isoform” means only one isoform. Id. at *4-6. In doing so, the Court rejected Amgen’s proposal that the phrase “an isolated . . . isoform” allows for mixtures of at least one isoform. Id. The Court reasoned that Amgen’s proposed construction would render the word “isolated” superfluous and would equate the phrase “an isolated . . . isoform” with “an insoform ”, which would violate the principle that “claims are interpreted with an eye toward giving effect to all terms in the claim.” Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006).

In construing the phrase “isolated . . . isoform” in claims 1 and 8 of the ‘298 patent, the Court adopted Amgen’s proposal that “isolated . . . isoform” as referred to in claim 1 means “a group of molecules that has a single isoelectric focusing point and a specific number of sialic acids per molecule, and appears as a single band on an isoelectric focusing gel (an example of which is shown in Figure 1 of the ‘298 patent).” Id. at *6-7.

In finding claim 8 (a dependent claim that depends on independent claim 1) invalid under 35 U.S.C. § 112, the Court explained that claim 1 requires only one isoform. “Claim 8 contradicts claim 1’s limitation that the isoform is ‘isolated’ by requiring a mixture ‘consisting essentially of two or three’ isoforms. Claim 8 thus improperly narrows claim 1.” Id. at *8.

A copy of the Memorandum Opinion is attached.

The general take away is that, where the limitation of dependent claim is logically inconsistent with that of the independent claim, it is a problem under 35 U.S.C. § 112.  In other words, something that infringes a dependent claim should necessarily infringe the independent claim from which the dependent claim depends.  When that is not true, there is something wrong with the claim drafting.

By Memorandum Order entered by The Honorable Leonard P. Stark in Idenix Pharmaceuticals LLC, et al. v. Gilead Sciences, Inc., et al., Civil Action No. 13-1987-LPS (D.Del., November 22, 2016) (consolidated), the Court denied Defendant’s motion requesting a continuance of the scheduled December 2016 trial and issued its ruling on certain motions in limine filed by the parties. The Court also forecasted that it would allocate each side between eighteen (18) and twenty-two (22) hours for its trial presentation, with the specific amount to be discussed further at the pretrial conference. Id. at *3. The Court also instructed the parties that, other than during jury selection, jury instructions, and argument regarding jury instructions, some party will be charged for any time the Court is on the bench. Id. at *2-3.

A copy of the Memorandum Order is attached.

By Memorandum Opinion entered by The Honorable Sue L. Robinson in Merck Sharp & Dohme Corp. v. Teva Pharmaceuticals USA, Inc., Civil Action No. 14-874-SLR (D.Del., November 16, 2016), the Court found the asserted claims of U.S. Patent No. 6,127,353 (“the ‘353 patent”) are valid but that defendant does not infringe the asserted claims of the ‘353 patent with its ANDA product.[1] Specifically, the Court found in favor of plaintiff Merck and against defendant as to defendant’s asserted affirmative defenses of invalidity of the ‘353 patent based on obviousness-type double patenting and alleged lack of an adequate written description of the invention as required by 35 U.S.C. § 112, ¶ 1. Id. at *2-7. The Court found in favor of defendant and against plaintiff Merck as to the infringement of the ‘353 patent after finding that plaintiff had not established, by a preponderance of the evidence, the presence of mometasone furoate monohydrate (“MFM”) in defendant’s ANDA product during its two-year shelf life. Id. at *8-24.

A copy of the Memorandum Opinion is attached.

[1] The ‘353 patent is listed in the Food and Drug Administration’s publication titled Approved Drug Products with Therapeutic Equivalence Evaluations, which is known as the “Orange Book”, for the nasal spray, Nasonex®. This action arose out of the filing of an Abbreviated New Drug Application (“ANDA”) by defendant Teva seeking to produce and market a generic mometasone furoate nasal spray.

By Memorandum Opinion entered by The Honorable Gregory M. Sleet in Forest Laboratories, LLC, et al. v. Apotex Corp., et al., Civil Action No. 15-018-GMS (D.Del., November 8, 2016) (consolidated), the Court rendered its Markman opinion construing seven (7) disputed terms in U.S. Patent Nos. 6,417,175 (“the ‘175 patent”) and 8,247,400 (“the ‘400 patent”). The patents-in-suit relate to new cephem compounds useful for the treatment of bacterial infections and pharmaceutical compositions containing the compounds.

A copy of the Memorandum Opinion is attached.

By Memorandum Opinion entered by The Honorable Leonard P. Stark in United Access Technologies, LLC v. Centurytel Broadband Services, LLC, et al., Civil Action No. 11-339-LPS (D.Del., November 4, 2016) (consolidated), the Court rendered its Markman opinion construing nine (9) disputed terms in U.S. Patent Nos. 5,844,596 (“the ‘596 patent”), 6,243,446 (“the ‘446 patent”) and 6,542,585 (“the ‘585 patent”). The patents-in-suit are directed to systems for transmitting data to residences or businesses over existing telephone wiring without interfering with telephone signals or the switching equipment that is part of the public switched telephone network (“PTSN”).

A copy of the Memorandum Opinion is attached.

By Memorandum Order entered by The Honorable Leonard P. Stark in Vehicle IP, LLC v. AT&T Mobility LLC, et al., Civil Action No. 09-1007-LPS (D.Del. October 20, 2016), the Court granted, in part, the motion of Defendants Telenav Inc. and AT&T Mobility LLC (“the Telenav Defendants”) to sever Plaintiff Vehicle IP’s claims against the Telenav Defendants from the claims against Defendants Telecommunications Systems, Inc., Networks in Motion, Inc., and Cellco Partnership (“the TCS Defendants”). Specifically, the Court granted Defendants’ motion to sever with respect to the patent infringement claims and damages after finding that the six-factor test set forth in In Re EMC Corp., 677 F.3d 1351 (Fed. Cir. 2012) favored severance. Id. at *5. The Court denied Defendants’ motion to sever with respect to invalidity after noting that all defendants (the Telenav Defendants and the TCS Defendants) retained the same invalidity expert and relied on identical invalidity arguments and finding that it was in the interest of judicial economy to consolidate the invalidity trial. Id.

A copy of the Memorandum Order is attached.

By Memorandum Order entered by The Honorable Gregory M. Sleet in Arrowpoint Capital Corp. v. Arrowpoint Asset Management, LLC, et al., Civil Action No. 10-161 (D.Del. October 11, 2016), the Court granted Plaintiff Arrowpoint Capital Corp.’s motion for partial summary judgment in its trademark infringement action against Defendants Arrowpoint Asset Management, LLC, et al. after finding that Arrowpoint Capital is entitled to summary judgment on the issue of ownership of certain marks containing the “ARROWPOINT” element and has valid and legally protectable marks. In the Memorandum Order, the Court also denied the motion for summary judgment of Defendants on Plaintiff’s claims for willful infringement, disgorgement of profits and other matters. Id. at *2-5.

A copy of the Memorandum Order is attached.

By Trial Opinion entered by The Honorable Richard G. Andrews, following a bench trial, in Endo Pharmaceuticals Inc. et al. v. Amneal Pharmaceuticals, LLC et al., Civil Action No. 14-1382-RGA (consolidated) (D.Del. October 7, 2016), the Court ruled that defendants failed to prove their affirmative defenses of obviousness and implied license.

Plaintiffs, Endo Pharmaceuticals Inc. and Mallinckrodt LLC, filed these patent infringement actions against defendants Amneal Pharmaceuticals, LLC, Amneal Pharmaceuticals of New York, LLC (collectively, “Amneal”), Teva Pharmaceuticals USA, Inc. and Barr Laboratories, Inc. (collectively, “Teva”), in 2014 alleging that Abbreviated New Drug Applications (“ANDAs”) filed separately by Amneal and Teva infringe U.S. Patent No. 8,871,779 (“the ‘779 patent”). Id. at *3.  The Court conducted a bench trial on July 11-13, 2016.  Both Amneal and Teva conceded that their proposed products meet all the limitations of the ‘779 patent. Id. at *6.  However, both defendants contended in their defense that the ‘779 patent is invalid as obvious under 35 U.S.C. § 103. Id. Teva also contended in its defense that it obtained an implied license from Mallinckrodt and, thus, does not infringe. Id.

After considering the evidence presented, the Court concluded that both Amneal and Teva failed to prove by clear and convincing evidence that any of the asserted claims of the ‘779 patent are invalid. The Court also concluded that Teva failed to prove its affirmative defense of implied license by a preponderance of the evidence.

A copy of the Trial Opinion is attached.

By Memorandum Opinion entered by The Honorable Leonard P. Stark in United Access Technologies, LLC v. Frontier Communications Corp., Civil Action No. 11-341-LPS (D.Del. September 30, 2016), the Court denied Defendant’s motion for judgment on the pleadings which argued that the doctrine of collateral estoppel barred Plaintiff’s claim for pre-suit damages in the patent infringement action. It is motion, Defendant relied on a prior decision in another action, Inline Connection Corp. v. Earthlink, Civil Action No. 02-00272-MPT (D.Del), where the court granted summary judgment on the grounds that Inline was not to entitled pre-suit damages after finding that Inline had an obligation to mark it products under 35 U.S.C. § 287(a), but had not marked them as of June 4, 2002, the date the Earthlink case was filed. Id. at *2.  Defendant argued that the summary judgment ruling in Earthlink met all of the requirements for collateral estoppel to apply in the United Access action. Id. at *3.

The Court disagreed with Defendant’s argument and found that the issue decided in the Earthlink summary judgment order was not identical to the issue presented in the United Access action. Id. at *4.  The Court noted that the cases involved two different time periods and, as a result, concluded that the issues were not identical and collateral estoppel did not apply. Id. at *5.

A copy of the Memorandum Opinion is attached.

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.