Thursday, April 17, 2014

Sale of Infringing Heart Valves Preliminarily Enjoined Subject to Carve-Out for “Patients Who Cannot be Helped” by Plaintiff’s Devices

Following a jury verdict of willful infringement, the court granted plaintiffs' motion for a preliminary injunction to preclude defendant from selling its heart valves, subject to certain conditions to address the public interest. "The expert testimony suggests that patients with large annulus sizes must be allowed ongoing access to [defendant's valves]. The testimony also indicates that [defendant's valves] may be to some degree the safer, better option for most patients. . . . Nevertheless, the court cannot downplay the strong public interest favoring enforcement of patent rights. . . . [Defendant] disregarded the law in infringing [plaintiffs'] patent and boldly continued to thumb its nose at the law by continuing its conduct even after being found to be a willful infringer. The court cannot ignore the fact that it would serve as a reward of sorts to [defendant] and an incentive for onlookers to behave as [defendant] has should the court permit [defendant] to freely commence sales of its device. In light of all the relevant considerations, the court finds that the public interest weighs in favor of granting [plaintiffs] a preliminary injunction, subject to an accommodation for [defendant] to sell its devices to those patients who cannot be helped by [plaintiffs'] devices." Edwards Lifesciences AG et al v. Corevalve Inc., et al, 1-08-cv-00091 (DED April 15, 2014, Order) (Sleet, J.)

Wednesday, April 16, 2014

Turbo Coding Patent Not Invalid for Claiming Unpatentable Subject Matter

The court denied defendant's motion for summary judgment that plaintiff's turbo coding telecommunications patent was invalid for claiming unpatentable subject matter. "[Defendant] argues that Claims 1 and 10 do not meet the transformation prong of the MOT test because the 'mere manipulation of data' is insufficient to do so. . . . To characterize the methods disclosed in Claims 1 and 10 as 'calculations' based on well-known formulae misunderstands the fact that the claims in the [patent] are 'inventive application[s] of [ ] principle[s that] may be patented.' The claims explain how to perform a particular method of error correction and decoding -- they do not simply identify an abstract idea and instruct the reader to apply the idea. . . . the purpose of the [patent-in-suit] is to disclose a method for more accurate and efficient data transmission. . . . [The challenged claims] meet the eligibility standard under the patent laws."

France Telecom S.A. v. Marvell Semiconductor, Inc., 3-12-cv-04967 (CAND April 14, 2014, Order) (Orrick, J.)

Tuesday, April 15, 2014

Infringement Contention Identifying Products by “Standard” or “Series” is Insufficient

The court granted plaintiff's motion to strike the reports of defendant's infringement experts as to newly identified products. "[I]dentifying products 'that include DDR3 SDRAM memory' or otherwise practice the JEDEC standard is not sufficient to specifically identify products that may fall into those categories. Although identifying that a component practices a standard may be useful for proving an infringement theory across several products that contain that component, identifying a standard is not sufficient to specifically name an accused product. . . . Although [defendant] argues that identifying the standard was sufficient to put [plaintiff] on notice of the accused products practicing the standard, the Local Rules required [defendant] to do the work of identifying those products. . . . Similarly, the Court finds that identifying a product that has a different name, but which [defendant] claims is substantially similar to a named product, is not sufficient identification under the Local Rules. . . . [A]lthough somewhat more specific than identifying a product based on practicing a standard, [defendant's] identification of a 'series' of products was not sufficient under the Local Rules to identify the products within a series, as the infringement contentions did not identify each accused product as specifically as possible."

ASUS Computer International v. Round Rock Research, LLC, 3-12-cv-02099 (CAND April 11, 2014, Order) (Cousins, M.J.)

Monday, April 14, 2014

“Implicit” Instruction May Support Induced Infringement Claim

The court denied defendant's motion for summary judgment that it did not induce infringement of plaintiff's drug buffer patent because there was a question of fact regarding deliberate indifference. "In order not to infringe or induce infringement, [defendant] 'has carved out any instruction in its label to dilute its product with the sterile diluent [that implicates the patent-in-suit] or any other high pH glycine buffer.'. . . [Plaintiff] argues that [defendant's] label implicitly instructs to use the sterile diluent [that implicates the patent-in-suit]. . . . [T]hat language alerts a practitioner to research those bloodstream infections for precautionary measures. In fact, [defendant's] label refers to a CDC survey about such infections and the CDC survey easily leads practitioners to review the medical research concerning the CDC survey. One such article found in the research . . . recommends using the FLOLAN® diluent to prevent bloodstream infections. Hence, the label circuitously leads the practitioners to infringe the ‘007 patent. This argument by [plaintiff] presents a fact question as to whether [defendant] is implicitly inducing infringement through deliberate indifference."

United Therapeutics Corporation v. Sandoz, Inc., 3-12-cv-01617 (NJD April 10, 2014, Order) (Sheridan, J.)

Friday, April 11, 2014

Triggering First ANDA Filer’s 180-Day Exclusivity Period Supports Declaratory Judgment Counterclaim of Noninfringement

The court denied plaintiffs' motion to dismiss defendant's noninfringement counterclaims for lack of an actual case or controversy after plaintiffs provided a covenant not to sue. "Plaintiffs’ argument is premised on the assumption that without the actual threat of an infringement lawsuit concerning the [patents-in-suit], [defendant] has no cognizable legal interest in seeking judicial review of whether it has infringed these patents. But this argument fails to account for the reality that as a later ANDA filer, the FDA cannot approve [defendant's] ANDA to market a generic version of [plaintiffs' drug product] until the first filer’s 180-day exclusivity period is either forfeited or runs out. . . . [Defendant's] counterclaims could potentially trigger the first ANDA filer’s 180-day exclusivity period. This would have the effect of expediting [defendant's] ability to market its generic version of [plaintiffs' drug product]. Accordingly, this Court holds that [defendant's] counterclaims present a substantial controversy appropriate for judicial review."

Purdue Pharmaceutical Products LP. et al v. Actavis Elizabeth LLC, 2-12-cv-05311 (NJD April 9, 2014, Order) (Linares, J.)

Thursday, April 10, 2014

Unreasonable Claim Construction Supporting Infringement Claim Warrants Rule 11 Sanctions

The court granted defendant's renewed motion for Rule 11 sanctions against plaintiff for its frivolous assertion of one of the patents-in-suit. "[Defendant] argues that [plaintiff's infringement claim] is objectively baseless because: (1) the specification states that digital information is 'non-printed'; and (2) the specification disclaims 'electronic books.'" . . . [T]here is a threshold below which a claim construction is 'so unreasonable that no reasonable litigant could believe it would succeed,' and thus warrants Rule 11 sanctions.' In the present case . . . although [plaintiff's] proposed definition for the term 'book' is reasonable, its definition for 'printed' -- to encompass 'any configuration in which information is presented for direct human perception' -- is astonishingly broad. [Plaintiff] argues this construction based on a single sentence in the specification which recites, '[p]rinted work may be a work of any configuration in which information is presented for direct human perception.' The next sentence, however, reads that, '[t]hus, for example, in addition to a cloth- (or other hard-) bound, or soft-bound book, work may be a magazine, or other paper based media sufficient to carry an electronic memory device as memory chip and allow its operable interconnect to access unit.' This passage does not equate 'printed works' with electronic media in support of [plaintiff's] infringement position. . . . [Plaintiff] was not 'objectively reasonable under the circumstances.' Sanctions, therefore, are warranted."

Technology Innovations LLC v. Amazon.com Inc., 1-11-cv-00690 (DED March 31, 2014, Order) (Robinson, J.)

Wednesday, April 9, 2014

Hatch-Waxman Bars Declaratory Relief Claim Against ANDA Applicant's Prospective Supplier

The court granted defendant's motion to dismiss for lack of subject matter jurisdiction with respect to plaintiff's claim that a drug manufacturer defendant would infringe plaintiff's drug patent if another defendant's ANDA was approved. "[W]hether [movant] actually manufactures the generic [drug product] is speculative because the FDA has not approved the ANDA product; and secondly, the Court may rule in [plaintiff's] favor in this case. Both outcomes are unknown at this time, and it is premature to speculate as to [movant's] future role. . . . While the safe harbor provision protects [movant] from being sued, the Declaratory Judgment Act, if one accepts [plaintiff's] argument, would allow suit. When interpreting two conflicting statutes, the 'more specific statute controls over the more general one'; hence the Hatch-Waxman provision controls."

United Therapeutics Corporation v. Sandoz, Inc., 3-12-cv-01617 (NJD March 31, 2014, Order) (Sheridan, J.)