By Memorandum Order entered by The Honorable Leonard P. Stark in Yodlee, Inc. v. Plaid Technologies Inc., Civil Action No. 14-1445-LPS-CJB (D.Del. January 27, 2017), the Court overruled the objections of both parties and adopted in full the Report and Recommendation previously entered by United States Magistrate Judge Christopher J. Burke concluding that defendant’s motion to dismiss the asserted patent infringement claims should be granted in part and denied in part for the reasons set forth in Judge Burke’s detailed 35 U.S.C. § 101 analysis. The Court also granted in part and denied in part defendant’s motion for summary judgment seeking judgment of patent ineligibility with respect to all asserted claims of the seven patents in suit. Id. at *3.

A copy of the Memorandum Order is attached.

By Memorandum Opinion entered by The Honorable Gregory M. Sleet in Quest Licensing Corp. v. Bloomberg L.P. et al., Civil Action No. 14-561-GMS (D.Del., January 19, 2017), the Court granted Defendants’ Motion for Summary Judgment of Non-Infringement of U.S. Patent No. 7,194,468 (“the ‘468 patent”).

By way of background, the ‘468 patent discloses an apparatus and method enabling a subscriber to receive via mobile telecommunications network information that is updated in real time such as financial market information. Id. at *2. Significantly, all of the asserted claims of the ‘468 patent require receiving and/or supplying “changing information.” Id. In its claim construction order, the Court construed the term “changing information” to mean “only [price] data that has changed.” Id. at *5.

Defendants moved for summary judgment of non-infringement asserting that the defendants’ accused systems do not receive or supply “only data that has changed” as required by all of the asserted claims of the ‘468 patent. Id. at *3. Defendants argued that “it is undisputed that defendants’ accused systems receive and supply transaction information – such as stock trades, bids and quotes – that always includes non-changing information such as the stock symbol.” Id. at *5. Plaintiff Quest argued that there exists a material factual dispute as to whether sending non-repeating price data along with a ticker symbol or other identifier falls within the scope of the claims. Id. Quest also argued that, under the Court’s construction of “changing information”, the attachment of the stock symbol or other identifier does not preclude a finding of infringement. Id.

Ultimately, the Court agreed with Defendants. Given the record, the Court found, as a matter of law, that Defendants’ accused systems receive and supply financial exchange transaction information that always includes a unique identifier that does not change. Id. at *5-6. Thus, the Court concluded that Defendants’ accused systems do not infringe the ‘468 patent. Id. at *5-8. The Court found important the fact that, in an explanation provided to the Patent Trial and Appeal Board (“PTAB”) in its Preliminary Response to the Covered Method Patent Review (“CBMR”), Quest stated that the “claims also provide for an apparatus whereby only changed information of interest to the subscriber is sent to that subscriber’s mobile device.” Id. at *6.

A copy of the Memorandum Opinion is attached.

By Memorandum Order entered by The Honorable Leonard P. Stark in Kraft Foods Group Brands LLC v. TC Heartland, LLC et al., Civil Action No. 14-28-LPS, the Court denied the Heartland defendants’ motion to stay all case-dispositive matters in the patent infringement action, including dispositive pre-trial rulings and the trial, pending the ruling by the U.S. Supreme Court on the venue issue before it through its granting of the Heartland defendants’ petition for a writ of certiorari on December 14, 2016.

In denying the motion for partial stay, the Court found important the facts that the case has been pending for three years and the Heartland defendants had never before requested a stay or expressed concern about the case moving forward, Kraft and the Heartland defendants are competitors and any delay would be prejudicial to Kraft, and denying the stay would enable the parties to complete the remaining discovery and get the case ready for trial later in 2017, regardless of which District the trial is held. Id. at *4-5. The Court noted that the directive of Federal Rule of Civil Procedure 1 of securing a “just, speedy and inexpensive determination” is better served by the Court deciding the ripe motions before it rather than possibly leaving for some judge in another District to have to untangle. Id. at *5. The Court, however, did move the trial date from May to October 2017 to allow time for the parties to receive the Supreme Court’s decision before trial. Id. at *5-6.

A copy of the Memorandum Order is attached.

By Memorandum Opinion 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., December 30, 2016), the Court granted defendants Telecommunication Systems, Inc., Networks in Motion, Inc., and Cellco Partnership (collectively, the “TCS Defendants”) motion for partial summary judgment of no willful infringement and denied a number of other motions to exclude and motions for summary judgment or partial summary judgment filed by the parties.

In evaluating the TCS Defendants’ motion for partial summary judgment of no willful infringement, the Court recognized that the “willfulness inquiry asks whether a party has engaged in ‘conduct warranting enhanced damages,’ under 35 U.S.C. § 284, behavior the Supreme Court has described as ‘willful, wanton, malicious, bad-faith, deliberate, consciously wrongful, flagrant, or [] characteristic of a pirate.’” Id. at *15. In granting the motion, the Court found that Vehicle IP did “not identify evidence, beyond pre-suit knowledge of the patent, that could show that the TCS Defendants’ infringement was ‘egregious’, ‘deliberate,’ wanton,’ or otherwise characteristic of the type of infringement that warrants the Court exercising its discretion to impose the ‘punitive’ sanction of enhanced damages.” Id. at *17. The Court noted that a party’s pre-suit knowledge of a patent is not sufficient, by itself, to find willful misconduct of the type that may warrant an award of enhanced damages. Id. Therefore, based on the record before it, the Court concluded that “no reasonable jury could find willful infringement” of the patent-in-suit by the TCS Defendants. Id.

A copy of the Memorandum Opinion is attached.

The general take away is that, in order to make a showing of willful infringement, the patentee must prove, among other things, that the accused infringer acted with a specific intent to infringe. In making that showing, the patentee must present some evidence beyond the accused infringer’s pre-suit knowledge of the patent to show that the accused infringer’s conduct was egregious, deliberate, wanton, or otherwise characteristic of the type of infringement that warrants the Court exercising its discretion to impose the punitive sanction of enhanced damages. For example, in making its showing, the patentee should consider presenting evidence to show that (1) the accused infringer intentionally and specifically relied on the pre-suit knowledge of the patent in developing its infringing products; and/or (2) the accused infringer hired a specific employee who previously worked for the patentee because of his or her specific knowledge of the patented invention. The patentee should be mindful of the record and make sure that it contains sufficient evidence of the infringer’s specific intent to infringe and “willfulness” in order to survive a partial motion for summary judgment of no willfulness and to get the issue to the jury.

By Memorandum Order entered by The Honorable Sue L. Robinson in Takeda Pharmaceuticals U.S.A., Inc. v. West-Ward Pharmaceutical Corp., Civil Action No. 14-1268-SLR (D.Del., December 14, 2016), the Court granted plaintiff Takeda Pharmaceuticals U.S.A., Inc.’s motion filed pursuant to Rules 59(e) and 15(a) of the Federal Rules of Civil Procedure seeking to (1) reopen the judgment of dismissal of the action previously entered under Rule 12(b)(6) for failure to state a claim and (2) to amend the complaint.

In evaluating Takeda’s motion, the Court recognized that, “[w]hen a plaintiff files a Rule 59(e) motion accompanied by a Rule 15(a) motion after the dismissal of a complaint under Rule 12(b)(6), ‘the appropriate manner to dispose of th[e] issue is to consider the motions together and determine what outcome is permitted by consideration of the Rule 15(a) factors.’” Id. at *1-2 (quoting Burtch v. Milberg Factors, Inc., 662 F.3d 212, 231 (3d Cir. 2011)). Under Rule 15(a), leave to amend a complaint is freely granted in the absence of undue delay, bad faith, dilatory motive, unfair prejudice, or futility of amendment. Id. at *2.

In applying the applicable standard, the Court found that Takeda’s motion was timely, and that there was no evidence of bad faith or dilatory motive. Id. at *4. The Court also explained that, although the proposed second amended complaint[1] did not contain all of the who, what, when and where’s of the communications identified therein for Takeda’s asserted claim against Hikma for induced infringement, given the Third Circuit’s standard for reviewing the sufficiency of a complaint that rests upon “information and belief” and given that Hikma would be the actual source of the requisite factual information, the proposed second amended complaint did contain sufficiently detailed allegations to plausibly give rise to a claim for inducement of patent infringement and did give Hikma fair notice of such claim. Id. at *5. Thus, the Court found that amendment of the complaint was not futile. Id. Lastly, because the action had not progressed past the initial pleading, the Court found that there was no undue prejudice to Hikma. Id. Therefore, the Court granted Takeda’s motion.

A copy of the Memorandum Order is attached.

[1] In addition to having previously dismissed Takeda’s original complaint, the Court had previously dismissed Takeda’s first amended complaint after concluding, among other things, that Takeda’s first amended complaint failed to satisfy the pleading standard found in Twombly and Iqbal – i.e., Takeda had failed to provide adequate factual allegations to state a plausible claim for induced infringement. Id. at *3.

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.