Patent Disclosing 8.589 x 1042 Possible Inventions is not Invalid as Lacking Written Description

Defendants' motion for summary judgment of invalidity of plaintiffs' alpha-amylases patent for lack of written description was denied. "It is not without hesitation that I am denying defendants’ motion. Plaintiffs do not contradict defendants’ observation that, if plaintiffs’ position is accepted, it means that plaintiffs disclosed 8.589 x 10⁴² possible inventions in their specification. However, to the extent the specification would require undue experimentation before a person of ordinary skill in the art could discover the claimed invention, that may suggest a lack of enablement rather than a problem with the written description."

Novozymes A/S, et. al. v. Danisco A/S, et. al., 3-10-cv-00251 (WIWD February 4, 2011, Order) (Crabb, J.)

Court Precludes Jury Argument "Extolling Benefits of Generic Drug Pricing" But Permits Evidence of Generic and Name Brand Pricing

Plaintiffs' motion in limine to exclude certain arguments that would ask the jury to nullify patents in favor of lowering the cost of generic drugs was granted in part. "Plaintiffs ask this Court to preclude Defendant from informing jury (1) that generic drugs are less expensive, (2) the purpose of Hatch-Waxman is to balance the rights of the innovator with those of generic drug manufacturers, (3) Plaintiff has a patent monopoly, and (4) the expected role of generic drugs in the healthcare reform. . . . Plaintiffs’ motion with regard to precluding references to a patent monopoly or the role of generic drugs in healthcare reform is granted; Defendants are precluded from extolling the benefits of generic drug pricing, but testimony regarding the difference in prices between generic and brand name drugs is allowed since the experts have relied on such costs in their respective damages analysis; and Defendants are allowed to present an initial and limited presentation of Hatch-Waxman and the generic approval process."

Sanofi-Aventis Deutschland GMBH, et. al. v. Glenmark Pharmaceuticals Inc., USA, et. al., 2-07-cv-05855 (NJD February 3, 2011, Order) (Cavanaugh, J.)

Bilski Does Not Invalidate Patent Claiming "Electronic Payment System" Involving a Non-Cash "Spending Vehicle"

Following the Supreme Court's decision in Bilski v. Kappos, 130 S.Ct. 3218 (2010), the magistrate judge issued a new report recommending that defendant's motion for summary judgment of invalidity be denied as to claims directed to an electronic payment system that involved a "spending vehicle." "Although an abstract intellectual concept -- collateralized loans -- certainly underlies the [patent-in-suit], it differs in important ways from the patent at issue in Bilski. Where the Bilksi patent’s independent claims disclosed the abstract idea of hedging, [the patent-in-suit] describes a particular application of an abstract idea, particularly, the application of collateralized loans to the field of assignable government payments in exchange for something of value. . . . The [patent-in-suit] clearly provides that a spending vehicle is an '[a]lternative to cash payments,' thereby limiting the applicability of the [patent-in-suit] to the use of non-cash collateralized loans in the field of assignable government payments in exchange for something of value. . . . [T]he spending vehicle limitation is meaningful because it does not preempt all uses of collateralized loans in the particular field of assignable government payments in exchange for something of value."

H&R Block Tax Services, Inc. v. Jackson Hewitt Tax Service, Inc., 6-08-cv-00037 (TXED February 2, 2011, Order) (Davis, J.)

Product Marked with Patent Previously Deemed Unenforceable is "Unpatented" for Purposes of False Marking Claim

The magistrate judge recommended denying defendant's motion to dismiss plaintiff's qui tam false marking action for failure to state a claim. "An article that is no longer protected by a patent -- because it is held unenforceable via inequitable conduct -- is not 'patented,' and it is more aptly described as 'unpatented.'. . . Similarly, an article marked with an unenforceable patent imposes that same cost on the public. Such cost is at least part of the reason why the false marking statute was created by Congress."

Promote Innovation LLC v. Medtronic, Inc., 2-10-cv-00233 (TXED February 2, 2011, Order) (Everingham, M.J.)

Loss of Market Share to Infringing Competitor During Six Year Reexamination Warrants Denial of Stay

Defendants' motion to stay pending inter partes reexamination was denied where plaintiffs claimed irreparable harm if the case was delayed for six years or more. "[Plaintiff] asserts that the alleged infringement has cost it roughly a billion dollars in annual sales, and has forced it to lay off key employees and reduce its research and development programs. As such, [plaintiff] asserts that its very existence as a competitor in the drug-eluting stent field is threatened. The Court agrees that [plaintiffs] will be prejudiced by the imposition of a stay. [Plaintiff] alleges it has suffered significant decline in its market share, and if it is required to wait for the Patent Office to complete its reexamination it may be harmed further. Moreover, a significant delay in this litigation may result in evidence becoming more difficult to access as witnesses may become unavailable and memories fade. . . . [T]he possibility that some of the issues in this case may be resolved or narrowed weighs only slightly in favor of staying this action, and is not significant enough to outweigh the other considerations . . . "

Wyeth, et. al. v. Abbott Laboratories, et. al., 3-09-cv-04850 (NJD February 1, 2011, Order) (Pisano, J.)

Timing of Invalidity Opinion Key to Willfulness Analysis

The court denied defendant's motion for summary judgment of no willful infringement of plaintiff's cargo trailer patents. "[G]enuine fact disputes exist as to whether [defendant] proceeded with bidding and building the allegedly infringing trailers before performing a sufficient analysis to determine whether [defendant] had a reasonable invalidity defense. The timing of the invalidity opinion matters because 'timely consultation with counsel may be evidence that an infringer did not engage in objectively reckless behavior.' If, however, [defendant] did not evaluate its potential defenses as to the Patents until after it began bidding and manufacturing the allegedly infringing trailers -- despite knowing about the Patents -- then such a course of action could suggest objective recklessness."

Great Dane Limited Partnership v. Stoughton Trailers, LLC, 3-08-cv-00089 (GAMD January 28, 2011, Order) (Land, J.)

Statutory Mandate to Conduct Reexamination "With Special Dispatch" Afforded "Minimal Weight" in Stay Analysis

Defendants' motion to stay pending inter partes reexamination was denied based upon the progress of the reexamination compared with the case. "Although some district courts justify staying a patent case based on the federal statute requiring that PTO reexaminations be 'conducted with special dispatch,' this court affords minimal weight to such statutory provision as the undeniable reality is that even if the PTO promptly responds to all filings, the parties often request extensions and the reexamination process frequently takes several years to complete. . . . Here, the PTO reexamination was filed less than six months ago, and the PTO reexaminer has only recently issued a 'first office action.'. . . As for the instant litigation, the complaint was filed nearly a year ago, a Markman hearing has been conducted, significant discovery has been completed. . . and a trial is scheduled to begin in approximately three months."

Osmose, Inc. v. Arch Chemicals, Inc., et. al., 2-10-cv-00108 (VAED January 28, 2011, Order) (Friedman, J.)