Thursday, September 30, 2010

ANDAs for Generic Yasmin® do not Infringe Bayer Patent

The court granted defendant generic drug manufacturers' motion for judgment on the pleadings that their ANDAs did not infringe the patent-in-suit because the patent did not "claim a use for [plaintiff's name-brand oral contraceptive, Yasmin®] that has been approved by the FDA." While plaintiff's patent claimed "a simultaneous gestagenic, anti-androgenic, and anti-aldosterone effect," FDA approval of plaintiff's drug was for "the prevention of pregnancy in women who elect to use an oral contraceptive." Because defendants' ANDAs sought approval for use as an oral contraceptive and not the use claimed by the patent-in-suit, defendants were entitled to judgment on the pleadings of noninfringement. "Nothing in the proposed labels submitted in connection with Defendants’ ANDA filings indicates that they seek FDA approval to market their generic drugs for the . . . patented use. To the contrary, Defendants’ proposed labeling addresses only an indication for oral contraception."

Bayer Schering Pharma AG et al v. Sandoz, Inc. et al., 1-08-cv-03710 (NYSD September 28, 2010, Memorandum Opinion & Order) (Gardephe, J.)

Wednesday, September 29, 2010

Datatreasury Awarded Enhanced Damages of $26 Million but Denied Attorneys' Fees

The court granted plaintiff's motion for enhanced damages following the jury's finding of willful infringement and increased damages by $26 million, a 100% increase, based on the following Read Corp. v. Portec, Inc., 970 F.2d 816 (Fed. Cir. 1992), factors: (1) "some circumstantial evidence of copying"; (2) one defendant "has about $54 billion to its name" and owns the other defendant; and (3) "Defendants infringed to achieve some undetermined cost savings." However, the court denied plaintiff's motion to declare the case exceptional warranting an award of attorneys' fees. "Defendants have put forth some evidence of good faith beliefs of invalidity and noninfringement. Moreover, this case has been hard-fought, and the joint infringement theory on which Plaintiff succeeded in the Phase I trial only emerged after years of litigation."

Datatreasury Corp. v. Wells Fargo & Co. et al., 2-06-cv-00072 (TXED September 27, 2010, Order) (Folsom, J.)

Tuesday, September 28, 2010

Tardy Claw Back Request Waives Privilege

The court granted defendant's motion to compel the production of allegedly privileged documents that were inadvertently produced. "[Plaintiff's employee] was deposed and asked questions about [the privileged documents] in the presence of [plaintiff's] counsel. During a [later] deposition on June 18, 2010, the deponent was asked questions about [another privileged document]. [Other privileged documents] were used in a [later] deposition . . . Two hours after [that deposition], [plaintiff] sent its claw back demand and requested the return of all the Group B documents. [Plaintiff] did not attempt to claw back [the privileged documents] until over eight months after [the first deposition]. Because [plaintiff] did not promptly seek return of these documents after it learned of their disclosure, any privilege attaching to [the documents] has been waived."

Zapmedia Services, Inc. v. Apple, Inc., 2-08-cv-00104 (TXED September 24, 2010, Order) (Everingham, M.J.)

Monday, September 27, 2010

General Allegations of Deceptive Intent Fail to State a Claim for False Marking

The court granted defendant's motion to dismiss plaintiff's qui tam false marking action for failing to meet the heightened pleading standard of Rule 9(b) with respect to intent to deceive. Allegations that defendant "did not have, and could not have had, a reasonable belief that its [products-at issue] were properly marked," "is a patent-sophisticated company," "knew, or should have known, that many of the patents marked on its [products] do not cover the products on which they are marked," and "marked [its products]. . . with knowledge that the claims of this patent do not cover one or more of the products on which this patent is marked" were insufficient.

Josephs v. Federal-Mogul Corp., 2-10-cv-10617 (MIED September 23, 2010, Opinion & Order) (Cox. J.)

Friday, September 24, 2010

Plaintiff's Choice of Forum for False Marking Claims Given Little Weight Where Plaintiff was Formed Specifically to Pursue Litigation

In granting defendant's motion to transfer venue of plaintiff's qui tam false marking action, the court rejected plaintiff's arguments that convenience factors favored retaining jurisdiction. "[I]t is clear that [plaintiff] anticipated that a motion to transfer these types of cases would be filed. As a result, [plaintiff] created a litigation strategy to bolster its argument that the matter should remain in Ohio. However, its primary arguments revolve around expert witnesses, largely irrelevant fact witnesses, and its own choice of forum. As [plaintiff] was created for the express purpose of pursuing litigation and is largely comprised of local attorneys, the weight given to its litigation strategy is minimal. This Court will not permit the system to be gamed."

Unique Product Solutions, Ltd. v. Otis Products, Inc., 5-10-cv-01471 (OHND September 22, 2010, Order) (Adams, J.)

Thursday, September 23, 2010

May a Patent Law Expert Opine as to the Materiality of Undisclosed Information?

YES -- The court granted, in part, plaintiff's motion to strike defendant's inequitable conduct expert. "[The expert's] actual opinions are on matters within his expertise as a patent examiner and former Commissioner of the USPTO. [The expert] provides testimony as to why [the inventor's] alleged conduct before the USPTO would be important to a reasonable examiner, a key issue in the determination of inequitable conduct. . . . [The expert] will not be permitted to testify about [the inventor's] intent and should limit his testimony on the following issues to that which is necessary to understand his opinions: USPTO policies and procedures, the rules and procedural requirements governing the filing and prosecution of patent applications in the USPTO and the grant of U.S. patents by the USPTO, the duty of candor and good faith and disclosure that those substantively involved in the preparation and prosecution of a patent application owe to the USPTO, and the requirements for establishing equitable conduct."

Phillip M. Adams & Associates, L.L.C. v. Lenovo International, et. al
., 1-05-cv-00064 (UTD September 21, 2010, Memorandum Decision & Order) (Stewart, J.)

NO -- Plaintiffs' motion to strike the report of defendants' inequitable conduct expert was granted "except to the extent that it explains the PTO's practices and procedures." "The law of this district is clear that experts in patent cases may not opine on whether a party engaged in inequitable conduct, discuss whether certain information was material to a pending patent application, or otherwise provide legal conclusions on 'substantive issues of patent law.' Similarly, in this district parties are generally not permitted to explain patent prosecution histories through expert testimony."

Brigham and Women's Hospital Inc. et al v. Teva Pharmaceuticals USA Inc. et al., 1-08-cv-00464 (DED September 21, 2010 Memorandum) (Bartle, J.)

Wednesday, September 22, 2010

Draft Opinion Letter Sinks Induced Infringement Claim

Defendants' motions for summary judgment of no induced infringement were granted because defendants reasonably relied on a draft opinion letter of noninfringement and therefore could not have possessed the requisite intent to induce infringement. "[Counsel] testified at his deposition that he never finalized the draft because [defendant and plaintiff's] predecessor-in-interest came to the conclusion that there was no infringement issue. . . . Beyond their arguments that the Opinion is not a competent opinion letter, [plaintiff] has not presented any other evidence tending to indicate that either [defendant] specifically and knowingly intended to cause direct infringement. Thus, without more, [plaintiff] has failed to show there is a genuine issue of material fact as to whether [the defendants] possessed the specific intent to induce infringement."

Goss International Americas, Inc. v. Graphic Management Associates, Inc., 1-05-cv-05622 (ILND September 14, 2010, Memorandum Opinion & Order) (Kendall, J.)

Tuesday, September 21, 2010

Domestic Use Of Foreign Product Manufactured Using Patented Method Is Not An Act Of Infringement

The court granted defendant's post-trial motion for judgment as a matter of law that certain method claims were not infringed because one or more steps were performed outside the United States. "The asserted claims relate to a method of manufacture and not to an accelerometer or other apparatus which measures a characteristic of motion. The accused process is, therefore, the process employed to manufacture the digital seismic units ('DSUs'). . . . A sale of a product made by a patented process does not itself infringe the patent; it is the unauthorized use of the process that infringes the patent. . . . It is undisputed that the DSUs are manufactured in France by [defendant]. . . . [Further], to the extent that some of the steps of the accused method are performed in the United States, there is no evidence that the entire process is practiced in the United States, which is required by § 271(a)."

Input/Output, Inc. et al v. Sercel, Inc., 5-06-cv-00236 (TXED September 16, 2010, Order) (Folsom, J.)

Monday, September 20, 2010

Domestic Offer for Foreign Sale is not an Act of Infringement

Applying Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractors USA, Inc., --- F.3d ---- (Fed. Cir. 2010), the court granted defendant's motion for judgment as matter of law that plaintiff was not entitled to lost profits for foreign sales arising out of domestic offers for sale and the judge reduced the damages award by $5.421 million. "[I]t is undisputed that the devices implicated by [defendant's] motion were manufactured, sold, and delivered abroad while the offers for those devices were made in the U.S. . . . [T]here is no dispute that the devices were manufactured in Europe and distributed exclusively to Venezuela, Brazil, and Canada without touching U.S. soil. . . . [T]he jury should not have considered those offers for sale as part of its determination of infringement and damages."

Input/Output, Inc. et al v. Sercel, Inc., 5-06-cv-00236 (TXED September 16, 2010, Order) (Folsom, J.)

Friday, September 17, 2010

False Marking Statistics

The chart below lists all plaintiffs that have filed a minimum of 10 False Marking cases. For a full listing of these cases as well as articles discussing them, please see Gray on Claims.

The charts were created by Docket Navigator® and will be updated regularly. Docket Navigator® tracks every patent case in every district court in the United States every day and publishes a daily summary of events in the Docket Report. To learn more or sign up for a free trial, go to

Defendant Cannot Willfully Infringe Claims That Did Not Issue Until After Suit Was Filed

The court granted defendant's motion for summary judgment of no willful infringement. "[T]he bases upon which the Court has found that [the accused product] may infringe [plaintiff's] patents result from the construction given to claim terms which were affected by the prosecution history of the [reissue] patent, and/or relate to changes and additions made to the [original] patent in that reissue. . . . [Plaintiff] filed its Complaint prior to the reissue of the [original] patent. That reissue contains 16 new claims not present in the [original] patent. [Defendant] could not have willfully infringed upon these claims, which did not issue until after this suit was filed."

Advanced Fiber Technologies (AFT) Trust v. J & L Fiber Services, Inc., 1-07-cv-01191 (NYND September 13, 2010, Memorandum-Decision) (Kahn, J.)

Thursday, September 16, 2010

Expert may Testify as to Technical Aspects of Direction and Control but not as to Ultimate Legal Conclusion

Plaintiff's motion in limine to limit expert testimony on direction and control was granted in part. "Defendants’ expert’s testimony regarding 'direction and control' has a valid connection to the pertinent inquiry of joint infringement and has a sufficiently reliable factual basis. . . . The ultimate legal conclusions regarding direction and control, however, are not a proper subject of testimony by a technical expert. A technical expert’s testimony on direction and control, if any, should be limited to the ability of the alleged 'mastermind,' from a technical standpoint, to control another party’s systems, actions, or performance."

Datatreasury Corp. v. Wells Fargo & Co. et al., 2-06-cv-00072 (TXED September 13, 2010, Order) (Folsom, J.)

Wednesday, September 15, 2010

Plaintiff's Failure to Seek Preliminary Injunction Sinks Willfulness Claim as to Post-Filing Conduct

The magistrate judge recommended granting defendant's motion to dismiss plaintiff's willfulness claim for failure to state a claim as to post-filing activities. "Although there are situations where post-filing willful infringement can be alleged without the plaintiff first seeking a preliminary injunction, the procedure for seeking a preliminary injunction tests the reasonableness of a defendant’s non-infringement and invalidity theories at the time that the defendant is relying upon those theories. . . . In the present action, [defendant] is unfairly prejudiced by Plaintiff’s attempt to claim post-filing willful infringement without first seeking a preliminary injunction. Even assuming [In re Seagate Tech., LLC, 497 F.3d 1360 (Fed. Cir. 2007)] may be dicta on this point, the undersigned concludes it accurately reflects the general rule in the Federal Circuit. No extenuating circumstances have been alleged in this case that would justify a departure from that rule. Accordingly, the undersigned recommends that [defendant's] motion to dismiss the portion of Plaintiff’s complaint alleging post-filing willful infringement be granted, and the claim for willful infringement should be dismissed without prejudice."

WebMap Technologies LLC v. City Accommodations Network, Inc. a/k/a U. S. Travel Group, and d/b/a Riverwalk Hotel Map and d/b/a Airport Hotel Guide, and d/b/a Austin Hotel Map et al., 2-09-cv-00343 (TXED September 10, 2010, Report & Recommendations) (Everingham, M.J.)

Tuesday, September 14, 2010

Statements Made in Prior Litigation do not Trigger Recapture Rule

In denying defendant's motion for summary judgment of invalidity of plaintiff's reissue patent based on the recapture rule, the court rejected defendant's argument that statements made during prior litigation concerning the original patent constituted a surrender of claims. "Acceptance of this argument would require an extension of the current law governing the recapture rule. . . . The public is entitled to rely upon the patent’s public record, as set forth in the claims, specifications, and file history to determine the patent’s scope. However, the public is not entitled to rely on any other extrinsic evidence, including trial testimony to find evidence of surrender. To hold otherwise could encourage inventors to seek out obscure statements or other evidence of surrender and would place some knowing members of the public in a more advantageous position than others who were not privy to the same evidence."

Bendix Commercial Vehicle Systems LLC, et al v. Haldex Brake Products Corp., 1-09-cv-00176 (OHND September 10, 2010, Memorandum Opinion & Order) (Nugent, J.)

Monday, September 13, 2010

Inequitable Conduct Pleading Must Allege How Examiner Would Have Used Undisclosed Information

The magistrate judge recommended granting plaintiff's motion to dismiss defendant's inequitable conduct defense. "[Defendant's] inequitable conduct allegations do not satisfy the 'how' and 'why' requirements of [Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312 (Fed. Cir. 2009)] because they do not allege facts sufficient to show specifically why [the inventor's] alleged misstatements were material and how the examiner would have used the information in assessing the patentability of the claims of [one of the patents-in-suit]."

SynQor, Inc. v. Artesyn Technologies, Inc. et al., 2-07-cv-00497 (TXED September 9, 2010, Report & Recommendations) (Everingham, M.J.)

Friday, September 10, 2010

Failure to Mark Not Attributed to Licensor Where Licensee's Rights Arise From "License That Contains an Apparently Unlimited Covenant not to Sue"

Defendants' motion for summary judgment to limit damages for plaintiff's licensee's failure to comply with the marking requirement was denied. "Defendants’ argument on marking requires the court to determine the scope to be accorded the 'for or under' language of § 287(a) when there is a restrictive express license that contains an apparently unlimited covenant not to sue. Neither party has submitted case law directly addressing this issue, which is apparently one of first impression. . . . To focus solely on one phrase of the covenant would render the rest of the language surplusage. Thus . . . the [licensee's] sales of computers containing the allegedly infringing chips cannot be imputed to Plaintiff for purposes of the marking statute."

Phillip M. Adams & Associates, L.L.C. v. Lenovo International, et. al., 1-05-cv-00064 (UTD September 8, 2010, Memorandum Decision and Order) (Stewart, J.)

Delay Attributable to Withdrawn Challenge to Jurisdiction does not Warrant Extension of 30-Month Stay of FDA Approval

The court denied plaintiff's motion to extend the statutory 30-month stay of FDA approval, rejecting plaintiff's suggestion that defendant's unsuccessful and later withdrawn motion to dismiss for lack of personal jurisdiction "unreasonably prolonged the litigation." "While [a defendant's] motion to dismiss was pending for three months before its withdrawal, [plaintiff] has offered no evidence that the mere submission of this motion -- or the limited jurisdictional discovery that the parties conducted -- caused any significant delay in these proceedings. [Plaintiff] has not sought to expedite this litigation."

Bayer Schering Pharma AG et al. v. Sandoz, Inc. et al., 1-08-cv-03710 (NYSD September 2, 2010, Memorandum Opinion & Order) (Gardephe, J.)

Wednesday, September 8, 2010

Location of Court -- Not Counsel's Office -- Determines Reasonableness of Billing Rates

Defendants' motion for sanctions for plaintiff's failure to comply with case deadlines and obligations was granted in part, but the amount of fees awarded as a sanction was reduced because counsel's rates were unreasonably high in light of the court's location. "[T]he court notes that several of the [defense] attorneys, especially [one] rate of $755/hour, bill at a rate above the median according to the 2009 Report of the Economic Survey submitted by [defendants], and that rates in Seattle’s category are significantly lower than rates in Washington, D.C.’s category. . . . [T]he court will thus discount the rates billed by [defendants] attorneys by 35% to approximate rates that would be reasonable in Seattle’s legal market."

Gardner v. Toyota Motor Corp. et al., 2-08-cv-00632 (WAWD September 1, 2010, Order) (Jones, J.)

Tuesday, September 7, 2010

Drug Label May Provide Evidence of Intent to Induce Infringement Even Though Required by the FDA

In granting plaintiff's motion for summary judgment of infringement of its drug patent, the court rejected defendants' argument that "the fact that the FDA required them to use the particular product labels they have proposed negates any finding of specific intent [to induce infringement]. . . . A thief who assaults a man because it was the only possible way to get his wallet from him does not lack specific intent to assault because, under the circumstances, it was a necessary means to accomplish his ultimate goal of robbery. The argument that the thief was just doing what the circumstances required him to do to achieve other ultimate ends does not effectively negate finding specific intent to assault."

Hoffmann-La Roche Inc. v. Genpharm Inc. et al., 2-07-cv-04661 (NJD September 2, 2010, Amended Opinion) (Chesler, J.)

Friday, September 3, 2010

Illinois Courts Grapple With Pleading Standard for Intent to Deceive Element of False Marking Claims

Defendants' motion to dismiss plaintiff's qui tam false marking action for failure to state a claim was granted. "[T]his Court aligns itself with those courts that have applied Fed. R. Civ. P. 9(b) standards to Section 292(b) complaints. That statute invalidates false patent marking 'for the purpose of deceiving the public' -- a quintessential claim of fraud, with its tightened standard of pleading. . . . So the 'information and belief' allegation of intent to deceive now set out in [plaintiff's complaint] does not cut it, particularly when [plaintiff] attempts to rely on a nine-year-old statement on behalf of [one of the defendants] in an FTC proceeding that referred to its having been represented by a lawyer who was a 'well-known expert. . . in the [relevant] industry'. . . ."

McNamara v. Natural Organics, Inc. et al., 1-10-cv-03544 (ILND September 1, 2010, Memorandum Order) (Shadur, J.)

Defendant's motion to dismiss plaintiff's qui tam false marking action for failure to state a claim was denied. "Plaintiff’s complaint alleges that [defendant] 'is a sophisticated company' with 'years of experience applying for, obtaining, and litigating patents.' Plaintiff further alleges that [defendant] has 'in-house attorneys who regularly litigate or oversee litigation of patent infringement cases and who regularly prosecute or oversee patent prosecution.' Plaintiff alleges that . . . [defendant] intentionally included the expired patent on the products for the purpose of deceiving the public. Whether or not the particularity pleading requirement of Federal Rule of Civil Procedure 9(b) applies in this case . . . the Court concludes that plaintiff’s allegations are sufficient at this stage to state a claim."

Simonian v. Irwin Industrial Tool Company, 1-10-cv-01260 (ILND August 27, 2010, Order) (Lindberg, J.)

Defendants' motion to dismiss plaintiff's qui tam false marking action for failure to state a claim was denied. "[D]efendants' argument that Rule 9(b) requires that intent be pleaded with particularity is lacking in merit; the Rule expressly provides that 'intent, knowledge, and other conditions of a person's mind may be alleged generally.'"

Luka v. Revlon, Inc. et al., 1-10-cv-02509 (ILND September 1, 2010, Minute Entry) (Kennelly, J.)

Thursday, September 2, 2010

Bilski Renders Claim for Method of "Computing a Price to Sell Fixed Income Assets and Generating a Financial Analysis" Invalid

The magistrate judge recommended granting defendant's motion for summary judgment of invalidity (filed as a motion to dismiss for failure to state a claim) because the asserted patent did not claim patentable subject matter. "[The asserted claim] is not drawn to patentable subject matter because it recites nothing more than an abstract idea on a general purpose computer -- i.e., computing a price for the sale of a fixed income asset and generating a financial analysis output. . . . [A]ttempting to limit the abstract idea of computing a price for the sale of a fixed income asset to a general purpose computer -- i.e., limiting it to a particular technological field -- will not bestow patentability on the claim. While [Bilski v. Kappos, 130 S. Ct. 3218 (2010)] held that the [machine-or-transformation] test is not an exclusive test for determining whether a claim contains patentable subject matter, it 'is a useful and important clue, an investigative tool, for determining whether some claimed inventions are [patentable] processes under § 101.'. . . [The claim in plaintiff's patent] is not tied to 'a particular machine' because the recited machines do not provide 'meaningful limits' on the process. Thus, failure to meet the machine-prong of the MOT test weighs in favor of the undersigned’s conclusion that [the claim] is attempting to patent an abstract idea."

Graff/Ross Holdings LLP v. Federal Home Loan Mortgage Corp., 1-07-cv-00796 (DCD August 27, 2010, Report & Recommendation) (Kay, M.J.)

Wednesday, September 1, 2010

Proof that Accused Device "Could be Modified to Infringe" is Insufficient to Support Finding of Infringement

Plaintiff's motion for summary adjudication of infringement of its speech recognition patents was denied. "[Plaintiff] argues that it is not necessary for the [accused] platform to actually perform [voice activity detection (VAD)] to infringe. [Plaintiff] argues that the [accused] platform merely needs to be capable of performing VAD in order for the Court to find infringement. . . . Further precedent of the Federal Circuit states that a finding 'that a device is capable of being modified to operate in an infringing manner is not sufficient, by itself to support a finding of infringement.' Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316, 1330 (Fed. Cir. 2001). A finding that the [accused] platform could be modified to infringe is not sufficient to support a finding of infringement. The Court therefore need not reach the issue of the ease or difficulty of modifying the [accused] platform. The law does not support the proposition that a device that is capable of operating differently or capable of being modified is infringing."

Phoenix Solutions, Inc. v. West Interactive Corp., 2-09-cv-08156 (CACD August 25, 2010, Summary Judgment Order) (Pfaelzer, J.)