Wednesday, November 26, 2008

Wholly-owned subsidiary of a foreign ANDA applicant, who signs the ANDA as agent for such applicant, is proper defendant in action under Hatch-Waxman

Because the Hatch-Waxman Act does not define the term "submit" as applied to an ANDA, the courts must look at congressional intent. Considering such intent, "a wholly-owned subsidiary of a foreign ANDA applicant, which signs an ANDA as the agent of its parent-applicant, and which intends to benefit directly if the ANDA is approved -- by participating in the manufacture, importation, distribution, and/or sale of the generic drug [constitutes] one who has 'submitted' an ANDA. . . . To hold that a patentee may not rely on the agent's signature on the ANDA, but must instead determine before filing suit [within the 45 day window to do so following receipt of notice] the precise role such signatory had in the preparation of the ANDA, could regularly deprive patentees of the automatic stay Congress provided for, thus imposing a burden on patentees that would be inconsistent with the Hatch-Waxman framework."

AstraZeneca Pharmaceuticals LP v. Teva Pharmaceuticals USA, 1-08-cv-00426 (DED November 24, 2008, Report & Recommendation).

Tuesday, November 25, 2008

Section 253 disclaimer deprives the court of jurisdiction to hear challenge to PTO's ruling in interference

Defendant's statutory disclaimer pursuant to 35 USC § 253, disclaiming all claims of the patent and dedicating to the public its entire right, title, and interest, deprived the court of subject matter jurisdiction over plaintiff's actions under 35 USC §§ 146 and 291, challenging the decision by the PTO that certain claims of plaintiff's application were deemed invalid because they were not entitled to the benefit of plaintiff's EPO filing date. "At this stage, [Plaintiff] merely asks the Court to correct what it perceives to be an erroneous decision on the part of the [PTO], which is not a party to any of the actions before the Court. This, however, would be inappropriate for the Court to do."

CIBA Specialty Chemicals Corporation v. 3V Inc., 1-06-cv-00672 (DED November 19, 2008, Opinion)

Monday, November 24, 2008

Court may approve fee award based on counsel's block billing

"Although under the block billing format, most fees and expenses are not expressly linked to a specific patent, the court, in its discretion, can determine the appropriate award. Case law only requires that 'the penalty imposed must in some way be related to bad faith and misconduct.' It does not require that the legal work performed solely resulted from a party’s misconduct."

Microstrategy Inc. v. Crystal Decisions, 1-03-cv-01124 (DED November 20, 2008, Memorandum Order)

Friday, November 21, 2008

No joint infringement from third party's use of defendant's website

Defendant was entitled to summary judgment of noninfringement because at least one step of the claimed method was performed by users of defendant's website and plaintiffs "failed to raise a triable issue of fact that [defendant] 'controls or directs' the users such that it is appropriate to hold [defendant] vicariously liable for the acts of the users." Defendant "allows users access to its websites, but does not cause those users to access any particular information."

Keithley v. The Home Store.Com, Inc., 3-03-cv-04447 (CAND November 19, 2008, Order)

Thursday, November 20, 2008

Use of unregistered engineers or engineers without college degrees is not probative of willfulness

"[Plaintiff] argues that [defendant's] engineers are more likely to engage in willful patent infringement because they lack college degrees or are not registered engineers. It is not obvious to the Court that a college degree or a registration certificate makes one more honest. Absent some evidence or authority to the contrary, the lack of a degree or the lack of a registration is not probative of willfulness."

The GSI Group Inc. v. Sukup Manufacturing Co., 3-05-cv-03011 (ILCD November 18, 2008, Opinion)

Wednesday, November 19, 2008

Court's injunction may prohibit more than infringing conduct

"[Defendant] is incorrect in asserting the proposition that infringement is the sine qua non for violation of an injunction. Where infringement has been proven, the Court has the power to enjoin conduct that would further infringement but that falls short of infringement."

Broadcom Corp. v. Qualcomm Inc., 8-05-cv-00467 (CACD November 17, 2008, Order)

Tuesday, November 18, 2008

KSR did not change the law of obviousness such that invalidating prior art was not material as of the application date

"While KSR [Int’l Co. v. Teleflex, Inc., 127 S.Ct. 1727 (2007)] may have changed the manner in which the Federal Circuit’s teaching, suggestion, motivation test is applied, the Federal Circuit has stated, on numerous occasions, that it did not announce a new rule of law. . . . Consequently, the court does not believe that the materiality analysis is affected."

B K Lighting Inc. v. Vision3 Lighting, 2-06-cv-02825 (CACD November 14, 2008, Order)

Monday, November 17, 2008

Claim construction required before ruling on divided infringement defense

The court denied the accused infringer's motion for summary judgment of noninfringement on the ground that no one party could perform all steps of the method claim, since certain steps were performed on the accused infringer's server and other steps were performed by third-party users. "[The accused infringer] has not established whether the computer server itself is an independent actor, or is merely functioning as a piece of technology used or controlled by another actor. . . . To determine whether the users perform all the elements of the claim with the assistance of the server, or whether the users perform some of the elements and then direct or control the server in its performance of the remaining elements of the claims at issue, this Court must first determine what the elements are via a claim construction hearing."

kSolo, Inc. v. Gary Catona, 2-07-cv-05213 (CACD November 10, 2008, Minutes of Motion Hearing)

Friday, November 14, 2008

Plaintiff was not entitled to defendants' customer lists and customer-specific sales data

"[T]he identity of all of defendants’ U.S. customers and the sales associated with each U.S. customer" was not necessary "to determine convoyed sales or inducement of infringement" or "to arrive at defendants' monitoring revenues. . . . [T]the Court finds no reason to compel detailed customer information to [plaintiff] simply for it to arrive at defendants’ monitoring revenues. As the defendant points out, there are other means of calculating this revenue accurately."

Paradox Security Systems, Ltd. v. ADT Security Services, Inc., 2-06-cv-00462 (TXED November 12, 2008, Order)

Thursday, November 13, 2008

Permanent injunction warranted despite plaintiff's concession that it would have entertained the possibility of a license to defendant

"Although plaintiff's willingness to forgo its patent rights (generally) for compensation may be inconsistent with the notion that money damages are inadequate, it is certainly not a dispositive factor. . . . [Rather], the utmost import in the context of evaluating irreparable harm and the adequacy of money damages is the nature of the competition between plaintiff and defendant in the [relevant] market. . . .This case presents the unique situation in which defendant, by its launch of an infringing product, gained market entry in a critical period."

Callaway Golf Co. v. Acushnet Co., 1-06-cv-00091 (DED November 10, 2008, Memorandum Opinion)

Wednesday, November 12, 2008

Claim construction order vacated in connection with settlement retains "nonbinding persuasive value"

A vacated claim construction order "may be used for whatever authority this court or another court may deem appropriate" and has "the same nonbinding persuasive value any non-vacated opinion has in a case where no final judgment is ever entered."

Cisco Systems, Inc. v. Telcordia Technologies, Inc., 9-06-cv-00160 (TXED November 7, 2008, Order)

Monday, November 10, 2008

"Mere doubt" does not trigger patent attorney's duty to investigate truthfulness of patent application

"A patent attorney has no duty to investigate the circumstances of the patent application when he does not have notice of the likely existence of material information. That is, the attorney must know of specific information, the materiality of which may be ascertained with reasonable inquiry, before he has a duty to inquire. . . . Mere doubt in the attorney’s mind raised by the circumstances does not appear to be sufficient; rather, the counsel must know of specific information that must be disclosed."

DESA IP, LLC v. EML Technologies LLC, 3-04-cv-00160 (TNMD November 6, 2008, Memorandum)

Friday, November 7, 2008

Declaratory judgment plaintiff cannot create substantial controversy via covert telephone calls with non-decision-making employees

"[A] potential infringer should not be able to create subject matter jurisdiction [for a declaratory relief claim] sub rosa (in this case, by initiating telephone conversations to employees of the patentee who were not in decision-making positions and who were not informed of the real purpose behind the conversations)."

Innovative Therapies Inc. v. Kinetic Concepts Inc., 1-07-cv-00589 (DED November 5, 2008, Memorandum Order)

Thursday, November 6, 2008

Failure of plaintiff's expert to opine as to infringement of certain accused products rendered the case exceptional as to those products

"[W]hen [plaintiff's] own expert declined to state that the twenty products contained phase change materials that would infringe the [patent-in-suit], [plaintiff's] claims against those products ceased to be colorable, and it was vexatious for [plaintiff] not to withdraw the infringement claims then as to those products."

Baychar Inc. v. Salomon / North America, Inc., 1-04-cv-00136 (MED November 4, 2008, Decision and Order)

Wednesday, November 5, 2008

Jury called on to calculate ongoing royalty

"Without minimizing the importance of intellectual property rights, it seems that if we can submit death penalty cases to juries, we should also be able to trust them to determine a royalty rate that will be paid by a corporation if it chooses to make sales of an infringing product."

Cummins-Allison Corp v. Shinwoo Information & Telecomm. Co., Ltd., 9-07-cv-00196 (TXED November 3, 2008, Order)

Tuesday, November 4, 2008

Production of defense counsel's "non-discoverable work product" ordered as a sanction for "poor judgment" in interviewing plaintiff's former Canadian

Defense counsel was ordered to produce interview notes of meetings with plaintiff's former Canadian attorney as a sanction for "the poor judgment exercised by [defendant's] attorneys in eliciting [the information reflected in the notes]." "It was [defense] counsel’s duty not to solicit, either directly or indirectly, privileged information from [plaintiffs' former counsel] . . . " Thus, although the notes were "properly classified as non-discoverable work product," production of the notes was "warranted as a sanction" because of "the conduct of [defendant's] counsel in dealing with [the plaintiff's] former-now-adverse attorney."

Mass Engineered Design, Inc., v. Ergotron, Inc., 2-06-cv-00272 (TXED October 31, 2008, Memorandum and Opinion and Order)

Monday, November 3, 2008

Damages accrued during plaintiff's delay, even if easily avoided, do not qualify as economic prejudice for laches defense

"[Defendant] . . . argues . . . that "[plaintiff] should not be allowed to wait silently while $5.3 million in alleged damages accrue where [defendant], upon notice of infringement, quickly and easily changed to a non-infringing [device]. . . . The accrued liability from the infringement is not economic prejudice for purposes of [a] laches defense."

The GSI Group Inc v. Sukup Manufacturing Co., 3-05-cv-03011 (ILCD October 29, 2008, Opinion).