Request for Permanent Injunction Precluding ANDA Infringer’s Pre-Launch Commercialization Activities Denied​

Following a bench trial, the court denied plaintiffs' motion for a permanent injunction precluding infringement of its contraceptive drug patent because plaintiff failed to establish irreparable harm or inadequate remedies at law. "The parties agree . . . that the relief the Court provides Plaintiffs must include an order that the [FDA] reset the approval date of Defendant's [ANDA] until after the expiration of the [patent-in-suit. The parties disagree as to whether the Court should additionally enter an order enjoining Defendant from infringing the patent-in-suit before it expires. . . . Effectively, the parties' dispute seems to be whether to limit Defendant solely to research activities that are within the Hatch-Waxman Act's 'safe harbor,' 35 U.S.C. § 271(e)(l), or whether instead to allow Defendant to engage in all research and pre-commercialization activity that could precede a launch of a generic product. . . . [Plaintiff’s] position largely relies on a series of speculations as to ‘illegal activity’ [defendant] might undertake if the Court does not grant [plaintiff] its full requested relief, such as ‘manufacture, importation, offers to sell, or the use of its generic ANDA product’ and ‘working with and licensing with a third party for purposes of facilitating a second ANDA filing behind the veil of the third party company. . . . It is true . . . that [defendant] seeks to be a direct competitor of [plaintiffs] in the market for [plaintiff's drug product] and has committed an 'act of infringement' (albeit an 'artificial' act) by filing an ANDA. But these facts alone are insufficient to establish irreparable harm in all ANDA cases. . . . While Defendant's launch of a generic product during the life of the patent is the type of activity that could result in irreparable harm to [plaintiffs], Plaintiffs' speculation that Defendant will risk criminal sanctions by launching its generic product into the market without FDA approval strikes the Court as entirely unfounded, and FDA approval will not happen until after the expiration of the patent. Moreover, the possible necessity of future litigation with Defendants is slight, and litigation costs cannot support a finding of irreparable harm."

Bayer Pharma AG et al v. Watson Laboratories Inc., 1-12-cv-01726 (DED December 28, 2016, Order) (Stark, USDJ)

Proposed Disclosure Objection Procedure for Protective Order Rejected as Revealing Counsel's Work Product

The court denied defendant's motion to include an objection procedure for disclosure of confidential material to foreign counsel in the protective order because such provision would reveal counsel's work product. "[Defendant] proposed the addition of Paragraph 7.5(b), which the parties now dispute: 'Prior to disclosure of Protected Material to Designated Foreign Counsel, the Party seeking disclosure shall provide written notice to the Producing Party identifying (i) the names of the Designated Foreign Counsel and (ii) the specific Protected Material sought to be disclosed to the Designated Foreign Counsel.'. . . The procedure described in Paragraph 7.5(b) would reveal which documents are important to Plaintiffs, and therefore disclose information that is considered work product. . . . [Defendant] argues that Paragraph 7.5(b) is modeled after a provision in [another case's] protective order. However, the [other order's] provision upon which Paragraph 7.5(b) is modeled relates to the use of documents in foreign actions. Whereas, in the present case, there is no pending request to use the documents in foreign litigation."

Boston Scientific Corporation et al v. Edwards Lifesciences Corporation, 1-16-cv-00275 (DED December 27, 2016, Order) (Fallon, MJ)

Defendant’s Decision to Initiate Reexamination Instead of IPR Warrants Denial of Stay​

The court denied defendant's motion to stay pending its request for ex parte reexamination because the lack of potential simplification of issues and undue prejudice to plaintiff weighed against a stay. "Even if the PTO grants the request for an ex parte reexamination of [plaintiff's] patent, the case will not be stayed during that reexamination process. . . . [Defendant] had a choice of applying for ex parte reexamination or inter partes review. The choice of ex parte reexamination was strategically advantageous to [defendant] because the result of the reexamination will have no estoppel effect on [defendant's] arguments here. . . . Thus, the ex parte reexamination process is much less likely to advance the ball in this case. Meanwhile, [plaintiff], which is a direct competitor of [defendant], would be prevented from asserting its patent rights in court for as long as two years, with [defendant] having effectively pressed the pause button on the litigation while hardly needing to lift a finger."

Pro-Troll, Inc. v. Shortbus Flashers, LLC, 3-16-cv-04062 (CAND December 23, 2016, Order) (Chhabria, USDJ)

Digital Media Synchronization Patents Not Invalid Under 35 U.S.C. § 101​

The court denied defendant's motion to dismiss on the ground that plaintiff’s digital media synchronization patents encompassed unpatentable subject matter because the claims were not directed toward an abstract idea. "The claims, like those in [Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)] and [McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299 (Fed. Cir. 2016)], are directed on their face to an improvement to computer functionality: a more-efficient mechanism for synchronizing data between systems connected to a network by updating only changed data (or 'difference information'), rather than recopying all information. . . . As the specifications explain, the claims are directed to improving the manner in which computers synchronize data between devices connected to a network, by making that process faster, reducing the amount of bandwidth and storage space used, enabling synchronization across different data formats, and enabling synchronization without requiring devices to be physically connected."

Synchronoss Technologies v. Dropbox Inc, 3-16-cv-00119 (CAND December 22, 2016, Order) (Gilliam, USDJ)

RFID Tracking Patents Ineligible Under 35 U.S.C. § 101​

The court granted defendant's motion for judgment on the pleadings that the asserted claims of plaintiff’s RFID tracking patents encompassed unpatentable subject matter and found that the claims were directed toward an abstract idea. "According to [plaintiff], because all of the asserted claims 'require specialized physical hardware components as well as software,' the hardware elements necessarily make the claims 'in better standing than those found eligible in [Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)].'. . . While both representative claims require physical components -- the RFID 'transponder,' 'reader,' and 'antenna' -- the specification makes clear that the recited physical components merely provide 'an environment in which to carry out the abstract idea.'. . . The specification does not address how the RFID technology itself is improved: it does not describe a new or improved RFID transponder, a new or improved RFID reader, or a new or improved RFID antenna. . . . Here, the focus of the claims is on certain abstract process for which computers are invoked merely as a means to achieve the ends. While the RFID technology employed by the invention was a rapidly developing technology at the time of the invention, the use of a conventional or generic computer in a nascent environment does not make the claims any less abstract."

Automated Tracking Solutions, LLC v. ValidFill, LLC et al, 1-15-cv-04348 (GAND December 21, 2016, Order) (Duffey, USDJ)

IPR Estoppel Does Not Apply to Obviousness Grounds Based on Public Documents That Could Have Been Raised at the Outset of the IPR​

The court granted plaintiff's motion for summary judgment "to prevent [defendant] from asserting invalidity challenges" due to IPR estoppel as to references raised during a prior IPR, but denied the motion with respect to references that could have been raised in the IPR, but were not. "Although [plaintiff's] argument in this regard is perfectly plausible, in the sense that [defendant] certainly could have raised these additional obviousness grounds based on public documents at the outset of their IPR petition, the Federal Circuit has construed the above language quite literally. More specifically, the Court determined in [Shaw Indus. Grp., Inc. v. Automated Creel Sys., Inc., 817 F.3d 1293 (Fed. Cir. 2016)] that, because the PTAB rejected a certain invalidity ground proposed by the IPR petitioner, no IPR was instituted on that ground and, therefore, petitioner 'did not raise -- nor could it have reasonably raised -- the [rejected] ground during the IPR.' Although extending the above logic to prior art references that were never presented to the PTAB at all (despite their public nature) confounds the very purpose of this parallel administrative proceeding, the court cannot divine a reasoned way around the Federal Circuit's interpretation in Shaw. [Defendant] may not raise obviousness based on [3 references raised during IPR] against the relevant claims of the [patent] in the case at bar. However, [defendant] may present the additional invalidity grounds at trial."

Intellectual Ventures I LLC et al v. Toshiba Corporation et al, 1-13-cv-00453 (DED December 19, 2016, Order) (Robinson, USDJ)

No Disqualification of Plaintiff’s Counsel for Simultaneous Representation of Defendant in Unrelated Litigation​

The court denied defendant's motion to disqualify plaintiff's new counsel for simultaneously representing defendant in an unrelated state case because disqualification would impose a substantial hardship on plaintiff. "By undertaking representation of [defendant] in the California case while undertaking representation against [defendant] in this case, [plaintiff’s counsel] plainly violated Rule 4-1.7. But an inadvertent input error -- not a deliberate disregard of the duty of loyalty -- caused that violation. The case has been pending for more than two-and-a-half years -- much longer than the 12- to 18-month goal set by the Court for this type of case -- and disqualification would further delay a merits decision. . . . [Plaintiff] played no part in causing the violation. Insofar as [plaintiff’s counsel] had undertaken 'hundreds of hours of document review' and 'numerous depositions (in Florida and Tennessee),' [plaintiff] would suffer a substantial hardship by having to retain new counsel to repeat or review that work. . . . With no sharing of [defendant's] confidences and able counsel on both sides, the violation will not diminish counsel’s effectiveness. And [counsel's] active representation of [defendant] lasted less than a month, during which it was not [defendant's] primary counsel."

Lanard Toys Limited v. Toys "R" Us, Inc. et al, 3-15-cv-00849 (FLMD December 16, 2016, Order) (Barksdale, MJ)