By Memorandum Opinion entered in Allergan USA, Inc. et al. v. Aurobindo Pharma Ltd., et al., Civil Action No. 19-1727-RGA (D.Del. January 11, 2021), The Honorable Richard G. Andrews construed the five (5) remaining terms in dispute in the six (6) patents-in-suit, U.S. Patent Nos. 8,691,860 (“the ‘860 patent”), 9,115,091 (“the ‘091 patent”), 9,364,489 (“the ‘489 patent”), 9,789,125 (“the ‘125 patent”), 9,675,587 (“the ‘587 patent”) and 10,188,632 (“the ‘632 patent”), in a Hatch-Waxman action concerning Plaintiffs’ VIBERZI® brand (eluxadoline) products for the treatment of irritable bowel syndrome with diarrhea.

A complete copy of the Memorandum Opinion is attached.

By Memorandum Order entered by The Honorable Colm F. Connolly, in Amgen Inc. et al. v. Hospira, Inc. et al., Civil Action No. 20-0561-CFC (D.Del. January 7, 2021), the Court granted in part the motion of Defendants Hospira, Inc. and Pfizer, Inc. to stay Civil Action No. 20-0561 until 14 days after resolution of Amgen Inc. et al. v. Hospira, Inc. et al., Civil Action No. 18-1064-CFC (D.Del. 2018).

In granting the motion, the Court found that all three factors weighed in favor of a stay.  Id. at *3.  Specifically, the Court found that (1) a stay of the action would simplify the issues in question and trial of the case; (2) no discovery had yet started in Civil Action No. 20-0561 and no trial date has been scheduled; whereas, by contrast in Civil Action No. 18-1064-CFC, fact and expert discovery is nearly complete and set to close in less than three weeks, and a jury trial is scheduled for May 17, 2021; and (3) a stay of Civil Action No. 20-0561-CFC pending resolution of Civil Action No. 18-1064-CFC would neither unduly prejudice nor provide a clear tactical disadvantage to the Amgen Plaintiffs.  Id. at *3-5.  The Court did deny the motion in part with respect to Defendants’ request that the stay period include the final resolution of all appeals in Civil Action No. 18-1064-CFC.  Id. at *5.  The Court did not go that far.  Id.

A copy of the Memorandum Order is attached.

 

By Memorandum Opinion entered by The Honorable Colm F. Connolly in ChromaDex, Inc. et al. v. Elysium Health, Inc., Civil Action No. 18-1434-CFC-JLH (D.Del. December 17, 2020), the Court granted in part and denied in part Defendant Elysium Health’s Rule 12(b)(1) motion to dismiss Plaintiff ChromaDex’s patent infringement claims after finding that (1) ChromaDex lacked standing to allege that Elysium infringed the asserted patents after March 13, 2017 – the effective date of the Restated License Agreement; and (2) ChromaDex had standing to allege its infringement claims based on Elysium’s conduct occurring between July 13, 2012 and March 12, 2017.  Id. at *2-12.

In reaching its findings, the Court recognized that the Restated License Agreement granted ChromaDex and Healthspan the ability to sublicense the asserted patents as of March 13, 2017.  Id.at *9-12.  “Because Healthspan had the right to give Elysium a license to practice the asserted patents as of March 13, 2017, ChromaDex did not have the right to exclude Elysium from practicing the patents from that date forward.”  Id.at *11-12.  Thus, ChromaDex lacked standing to allege that Elysium infringed the asserted patents on or after March 13, 2017.  Id. at *12.  There was no evidence and Elysium did not argue that ChromaDex was not an exclusive licensee under the Original License Agreement which became effective on July 13, 2012.  Thus, ChromaDex had standing to allege its infringement claims based on Elysium’s conduct occurring between July 13, 2012 and March 12, 2017.  Id.

A copy of the Memorandum Opinion is attached.

By Memorandum Order entered by The Honorable Richard G. Andrews in Dr. Laskhmi Arunachalam v. Citigroup Inc. et al., Civil Action No. 14-373-RGA (D.Del. December 4, 2020), the Court denied the motion of plaintiff to reconsider its prior order dismissing all counts of the complaint with prejudice.  The order in question held that plaintiff could not assert patent claims previously declared invalid; plaintiff was collaterally estopped from asserting the remaining clams based on the ruling of another district court which was affirmed by the Court of Appeals; and plaintiff was collaterally estopped from arguing that she was not collaterally estopped.  Id. at *1.  Given it did not find any intervening change in the law, new evidence, or clear error of law, the Court denied the motion to reconsider.  Id. at *2.

A copy of the Memorandum Order is attached.

By Memorandum Order entered by The Honorable Colm F. Connolly in Pharmacyclics LLC et al. v. Cipla Limited, et al., Civil Action No. 18-192-CFC/CJB (D.Del. November 10, 2020) (Consolidated), the Court granted Plaintiffs’ request to preclude Defendant Sandoz from maintaining its theory that U.S. Patent No. 10,106,548 (“the ‘548 patent”) is invalid under 35 U.S.C. § 102(f) because the ‘548 patent did not disclose as inventors unidentified employees of Pharmorphix.

The Court granted Plaintiff’s request to preclude Sandoz’s invalidity defense based on the undisclosed inventorship theory because Sandoz failed to disclose the theory in its final invalidity contentions and did not disclose the theory until the eve of trial and almost eight months after it served its final invalidity contentions.  Id. at *2-6.  The Court found that “Sandoz’s disclosure of its inventorship theory on the eve of trial and almost eight months after it served its final contentions was unjustified, prejudiced Plaintiffs, and deprived Plaintiffs of the opportunity to cure any prejudice.”  Id. at *6.  After concluding that the balance of the relevant factors weighed in favor of Plaintiffs’ request to preclude Sandoz from pursuing its inventorship theory, the Court granted the request.  Id.

A copy of the Memorandum Order is attached.

By Memorandum Opinion entered by The Honorable Maryellen Noreika in Mixing & Mass Transfer Technologies, LLC v. SPX Corporation et al., Civil Action No. 19-529-MN (D.Del. November 4, 2020), the Court denied the SPX Defendants’ motion for attorneys’ fees after finding that Defendants were not a prevailing party.

By way of background, between 2005 and 2007, Plaintiff and a division of SPX were involved in litigation.  In 2007, the litigation was resolved by Settlement Agreement between Plaintiff and SPX.  Id.at *1.  The Settlement Agreement contained a general waiver and release and included a provision for attorneys’ fees for the prevailing party in the event any party breached the Settlement Agreement and any other party was required to bring legal proceedings to enforce the Settlement Agreement.  Id.at *2.

In 2019, Plaintiff filed an action against the SPX Defendants asserting patent infringement claims, unfair competition and false advertising claims under the Lanham Act, and other common law claims.  Id. at *2.  In response, Defendants filed a motion to dismiss all claims for failure to state a claim based on the general waiver and release provision contained in the Settlement Agreement.  Defendants contended those provisions in the Settlement Agreement released them from all of the claims asserted by Plaintiff.  Id.  After oral argument on the motion to dismiss, the Court dismissed two of the six claims without prejudice and thereafter Plaintiff voluntarily dismissed without prejudice the remaining four claims.  Id. at * 2-3.  Thereafter, Defendants filed their motion seeking attorneys’ fees.  Id. at *3.

Defendants argued that attorneys’ fees should be granted on two grounds:  (1) the Settlement Agreement; and (2) the alleged exceptional nature of the case.  Id. at *4.  The Court recognized that both grounds required Defendants to be a “prevailing party.”  Id.  Plaintiffs disputed whether Defendants were a prevailing party because the Court only dismissed two of the six claims without prejudice and Plaintiff voluntarily dismissed the remaining four claims without prejudice.  Id. at *5.  Defendants argued that they were a prevailing party because “they prevented [Plaintiff’s] attempts to alter the legal relationship between the parties” and a stipulated dismissal with prejudice entered by the Court can constitute a “judgment” for purposes of a motion for attorneys’ fees under Federal Rule of Civil Procedure 54, citing Keith Manufacturing Co. v. Butterfield, 955 F.3d 936, 939-40 (Fed. Cir. 2020).

After evaluation of both sides arguments, the Court found that neither the Court’s dismissal of two claims without prejudice nor the voluntary dismissals without prejudice would materially alter the legal relationship of the parties.  Id. at *5-6.  The Court reasoned that“[n]either dismissal would prevent Plaintiff from reasserting those same claims against Defendants in another action.”  Id. at *6.  Thus, “in the Court’s view, [a dismissal without prejudice], is not the type of ‘material alteration of the legal relationship of the parties’ that is the touchstone of the prevailing-party inquiry.”  Id. (quoting CRST Van Expedited Inc. v. E.E.O.C., 136 S.Ct. 1642, 1646 (2016)).

Accordingly, having found Defendants were not a prevailing party for purposes of eligibility for attorneys’ fees under the Settlement Agreement or 35 U.S.C. § 285, the Court denied the motion.

A copy of the Memorandum Opinion is attached.

 

By Memorandum Opinion entered by The Honorable Leonard P. Stark in Osseo Imaging, LLC v. Planmeca USA Inc., Civil Action No. 17-1386-LPS (D.Del. October 28, 2020), the Court, inter alia, denied Defendant’s motion for summary judgment of no infringement with respect to literal infringement and granted Defendant’s motion for summary judgment of no infringement with respect to the doctrine of equivalents.

By way of background, Plaintiff Osseo owns a family of patents relating to dental and orthopedic imaging.  Id. at *1.  The Asserted Patents relate to X-ray imaging “that combines ‘densitometry (that is, quantitatively calculated bone density) with tomographic modeling.’”  Id.  Plaintiff accuses Defendant Planmeca’s 3D Imaging Systems with Romexis software (the “Accused Systems”), contending the Accused Systems produce 3D X-ray models of a patient’s dental structure using cone beam computed tomography (“CBCT”).  Id.

Defendant moved for summary judgment of no infringement of the Asserted Claims either literally or under the doctrine of equivalents.  Id. at *4.  In sum, Defendant contended that Plaintiff could not prove literal infringement because its infringement theory includes the incorrect premise that Hounsfield Unit values (“HU values”) used in the Accused Systems are “quantitative calculations of bone density.”  Id. at *5.

The Court, agreeing with Plaintiff, found that, taking the evidence in the light most favorable to Plaintiff, a reasonable fact finder could find that HU values used in the Accused Systems meet the “densitometry” limitation which the Court construed to mean “quantitatively calculated bone density.”  Id.  Thus, the Court denied Defendant’s motion for summary judgment of no literal infringement.  Id. at *7.

The Court granted Defendant’s motion for summary judgment of no infringement under the doctrine of equivalents after finding that Plaintiff merely reasserted its literal infringement arguments as doctrine of equivalent arguments and failed to provide particularized testimony and linking arguments in support of its doctrine of equivalents theory and Plaintiff’s expert failed to provide particularized testimony on a limitation-by-limitation basis.  Id. at *8-9.  In other words, Plaintiff’s repackaged literal infringement theory, without particularized linking evidence on a limitation-by-limitation basis, was insufficient to survive summary judgment of no infringement under the doctrine of equivalents.  Id.

A copy of the Memorandum Opinion is attached.

A general take away for parties asserting infringement claims under the doctrine of equivalents is that simply repackaging your literal infringement theory and its supporting evidence as evidence of your infringement claim under the doctrine of equivalents – without the particularized linking evidence on a limitation-by-limitation basis required to prove a claim of infringement under the doctrine of equivalents – is unlikely to survive summary judgment.