Pending Appeal of IPR Involving Similar Technology Renders Decision on § 101 Challenge Premature

The court denied without prejudice defendant's motion to dismiss on the ground the asserted patent claimed unpatentable subject matter because the motion was premature. "The parties do not appear to agree on how certain key terms contained in the Patents In Issue should be construed, and thus the Court cannot address at this juncture whether 'every possible plausible construction of each of the . . . claims asserted . . . render the patent ineligible'. . . . Furthermore, a dispute concerning the area of technology addressed in the Patents In Issue is not conducive to a resolution on a motion to dismiss at the initial stages of litigation. . . . The [PTAB], in addressing similar technology in a petition for inter partes review of certain patents, engaged in extensive claim construction and analysis before addressing whether the patent claims at issue were not patentable. That PTAB decision is now the subject of an appeal before the United States Court of Appeals for the Federal Circuit. This Court would be well-advised to follow the PTAB’s expert lead by refraining from addressing this dispute without the benefit of further analysis."

Synchronoss Technologies, Inc. v. Hyperlync Technologies, Inc., 3-15-cv-02845 (NJD March 7, 2016, Order) (Cooper, J.)

Proposed Construction of “Plain Meaning” Must Indicate Whether Opposing Construction Falls Within Scope of Plain Meaning

The court granted defendants' motion to compel plaintiffs to provide further claim construction briefing in a case involving drug patents. Plaintiffs' proposed construction for each term was "plain meaning" and plaintiffs refused to comment on whether defendants' proposed constructions were within the plain meaning of the terms. "Plaintiffs have countered Defendants’ proposed construction of each of the disputed claim terms with the simple offer, 'plain meaning.' Doing so, without a statement of what Plaintiffs contend the 'plain meaning' to be and without acknowledging whether Defendants’ proposed construction is within the scope of Plaintiffs’ 'plain meaning' is unhelpful to the process and has the potential to unnecessarily burden the Court’s construction efforts. . . . [R]equiring Plaintiffs to either agree that Defendants’ proposed construction is within its so called 'plain meaning' imposes virtually no burden on Plaintiffs. . . . Nothing in this Order is intended to preclude Plaintiffs from advancing the argument in its Markman brief that the 'plain meaning' of any term should control and that, consequently, no construction of that term is necessary. However, to assist the District Judge in resolving claim construction issues, Plaintiff shall be required to specify what it contends the plain meaning to be."

Sucampo AG et al v. Dr. Reddy's Laboratories, Inc. et al, 3-14-cv-07114 (NJD March 4, 2016, Order) (Arpert, M.J.)

Press Release and Form 8-K Did Not Make Invention Available to Public as Required by Post-AIA On Sale Bar

Following a bench trial, the court found that plaintiffs' post-AIA chemotherapy drug patents were not invalid under the on-sale bar because plaintiffs' invention was not available to the public. "[Plaintiffs] and [their licensee] entered into a Supply and Purchase Agreement for the sale of [plaintiff's] commercial [drug] product. . . . It is inapposite that at the time of the agreement, the product was uncertain and awaiting FDA approval, because the appendices to [the license and supply agreements] specified the exact dosages and concentrations that were in the pending FDA filings. Indeed, under a pre-AIA analysis, the Court’s analysis would end here with a conclusion that the . . . Agreement constituted a contract for sale, thus satisfying the 'sale' prong of the on-sale bar. However, the post-AIA on-sale bar also requires that the sale or offer for sale make the claimed invention available to the public. [Defendant] asserts that the Form 8-K and [plaintiffs'] press releases made the existence of the agreement available to the public. However, [plaintiffs' licensee's] Form 8-K was redacted and indicated only that [plaintiffs] and [their licensee] had entered into an agreement to purchase [plaintiffs'] product. . . . [Defendant] has failed to show how [the licensee's] Form 8-K or [plaintiffs'] press releases on the [license] Agreement made [plaintiffs'] claimed invention, i.e., its palonosetron formulation, available to the public."

Helsinn Healthcare SA, et al v. Dr. Reddy's Laboratories, Ltd., et al, 3-11-cv-03962 (NJD March 3, 2016, Order) (Cooper, J.)

Expert’s Failure to Disclose Relied Upon Materials Warrants Mistrial

The court denied defendant's motion to strike the testimony and reports of plaintiff's reverse engineering expert that were based on previously undisclosed EEL and EDS scans, but ordered a mistrial on two patents-in-suit to allow time for curative expert discovery at plaintiff's expense. "At trial, [the expert's] testimony was inconsistent about whether he relied upon the undisclosed scans. . . . The Court finds that [the expert] did rely upon images that were not disclosed with his expert report. . . . It is equally clear that [the expert] did not explain to [plaintiff's] counsel that, in following his usual practice, he had not disclosed all the materials upon which he had relied. . . . Although the nondisclosure was not known by [plaintiff] or its counsel, it is nonetheless the responsibility of counsel to make clear to their experts the scope of applicable disclosure obligations. . . . No sanction less severe than mistrial would give [defendant] what it needs to level the playing field: time. . . . [L]imiting the cost-shifting to the reasonable expenses associated with supplemental expert discovery, rather than to fees and costs related to general preparation for either the first or the second trial, is a relatively limited sanction that takes into account [plaintiff's] good faith."

Samsung Electronics Co., Ltd. v. NVIDIA Corporation, 3-14-cv-00757 (VAED February 29, 2016, Order) (Payne, J.)

Google and Oracle Ordered to Show Cause Why Google User Data and Social Media Should Not be Used to Research Jury

The court ordered the parties to show cause why it should not ban them from accessing user accounts or conducting Internet searches of potential or actual jurors prior to a verdict. "[I]t appears to the Court that both sides intend to email or text the names and places of residences of venire members as soon as they are called forward to waiting squads of Internet investigators, who will feed results to counsel table via reverse text or email. . . . [T]he Court is considering imposing on both sides a ban on any and all Internet research on the jury prior to verdict. . . . [P]lease show cause why such a ban should not or may not be imposed. . . . [B]oth sides shall state the detailed specifics of how far the parties and/or law firms and/or their investigators may go under the law and/or the rules of professional conduct in accessing Facebook, LinkedIn, Twitter, and other social media accounts — as well as Google accounts — to gather information on prospective or actual jurors, including (without limitation) the full extent to which they may use investigators/lawyers with more detailed levels of privacy access than the general public. This should include as well analysis of the extent to which ether side is allowed to review Google, Yahoo!, and/or other Internet searches conducted by prospective or actual jury members in order, for example, to analyze their politics, job searches, shopping habits, evening life, and/or personal interests."

Oracle America, Inc. v. Google Inc., 3-10-cv-03561 (CAND March 1, 2016, Order) (Alsup, J.)

Email Address Directory Patent Invalid Under 35 U.S.C. § 101

The court granted defendant's motion for judgment on the pleadings that the asserted claims of plaintiff’s email system patent encompassed unpatentable subject matter and rejected plaintiff's argument that the claims were not directed toward an abstract idea based on TQP Dev., LLC v. Intuit Inc. (E.D. Tex. Feb. 19, 2014). "[Defendant] contends the [patent-in-suit] is nothing more than a computerized version of the ages old concept of an address directory. . . . [T]he TQP decision does not stand for the proposition that any improvement in computer communication is inherently patent eligible. Rather, the court found patent eligibility because the patent 'involves a method for changing data in a way that will affect the communication system itself, by making it more secure.'. . . [T]he [patent-in-suit] involves a method of doing business (i.e. the idea of using information in a message's destination address to look up the recipient's correct address), but does not involve any data modification in a way that will affect the communication system itself. The limitation of 'email address' as 'a string of characters complying with an addressing format for transmission of an email message by the SMTP protocol' does not effect the first step of the [Alice Corp. v. CLS Bank Int'l, 134 S. Ct. 2347 (2014)] analysis because a field of use limitation does not make an idea non-abstract. The Court is well aware that in many cases it is difficult to distinguish between an abstract idea and its application. . . . [T]he [patent-in-suit] is most accurately characterized as directed to the abstract idea of an address directory."

A PTY Ltd. v. Amazon.com, Inc., 1-15-cv-00154 (TXWD February 29, 2016, Order) (Pitman, M.J.)

Receipt of Marketing Materials Does Not Establish Attorney-Client Relationship Warranting Disqualification of Counsel

The court denied defendant's motion to disqualify plaintiff's counsel and rejected defendant's argument that defendant was a current client. "Although there is no allegation that [counsel] performed any legal work for [defendant] for at least a year before this suit was filed, [defendant's] in-house counsel . . . stated in her declaration that '[e]ven after [an unrelated] action had settled, I considered [counsel] to be [defendant's] intellectual property counsel.' However, the only evidence that [defendant] points to as support for [in-house counsel's] belief is that she continued to receive marketing emails from [plaintiff's counsel], such as announcements of webinars. By itself, the receipt of such marketing materials does not establish the existence of an ongoing attorney-client relationship, but merely indicates that [counsel] was interested in keeping its name before [defendant] in the event that [it] needed representation on another matter."

Erfindergemeinschaft UroPep GbR v. Eli Lilly and Company et al, 2-15-cv-01202 (TXED February 26, 2016, Order) (Bryson, C.J.)