March 25, 2010
Judge Robinson Holds Patent Unenforceable for Laches and Inequitable Conduct
In Cancer Research Technology, et al. v. Barr Laboratories, Inc., et al., C.A. No. 07-457-SLR (D. Del. Jan. 26, 2010), Judge Robinson issued an opinion approximately nine months after trial and concluded that the patent was unenforceable due to prosecution laches because of sufficiently egregious conduct, including “eleven patent applications, ten abandonments, and no substantive prosecution for a decade.” The Court found no objectively reasonable justification for the delay. The Court also found that one of the inventors committed inequitable conduct by failing to disclose highly material data that directly contradicted statements in the patent’s specification. The Court noted that “something was awry, as not a single piece of data or prior art, positive or negative, was provided to the PTO in over eleven years (despite over a decade’s worth of research on the technology).”
Judge Farnan Denies Plaintiff’s Motion for a New Trial on Damages
In St. Clair Intellectual Property Consultants, Inc. v. Fuji Photo Film Co., Ltd., et al., C.A. No. 03-241-JJF (D. Del. Nov. 19, 2009), Judge Farnan denied plaintiff’s motion for a new trial on damages, but granted in the alternative its request for pre- and post-judgment interest. At trial, plaintiff secured a verdict that defendants had infringed the patents-in-suit and that the patents were not invalid. The parties had stipulated to a stay pending the outcome of related litigation elsewhere. After settlement of the related litigation, the parties lifted the Delaware stay and agreed to proceed with post-trial motions. On the motion for a new trial, plaintiff argued that Judge Farnan improperly excluded evidence of its licensing agreements for the patents-in-suit and of a verdict in its favor from a related case, resulting in prejudice and jury confusion. Judge Farnan concluded under Fed. R. Evid. 403 that the danger of prejudice to the defendants outweighed the licensing agreements’ probative value, especially since liability and damages were tried together. The Court noted that plaintiff cited no authority to support the proposition that a previous jury verdict can be admitted into evidence to support a claim for damages in a later case. Judge Farnan also explained that he had already addressed this issue twice in pre-trial motions and during trial. For these reasons, Judge Farnan denied the motion for a new trial.
Defendants offered several arguments against an award of pre-judgment interest. First, they argued that it was premature to award pre-judgment interest since an appeal had been noticed. Judge Farnan noted that defendants cited no authority for this argument. Defendants also argued, citing Crystal Semiconductor Corp. v. TriTech Microelectronics International, Inc., 246 F.3d 1336, 1362 (Fed. Cir. 2001), that pre-judgment interest should not be awarded because plaintiff had allegedly delayed bringing suit. Judge Farnan wrote that, unlike in Crystal, defendants produced no evidence that delay in bringing suit was a litigation tactic. Defendant also challenged the use of the prime rate rather than the risk-free T-Bill rate to calculate interest. Defendant argued that plaintiff had amply recouped its investment in the patents from successful litigation and favorable settlements. Judge Farnan held that the purpose of pre-judgment interest is to place the patent owner in as good a position as he would have been in had the infringing party paid a proper fee to license the patent, and the prime rate better reflected plaintiff’s risk of nonpayment and hence harm suffered. Judge Farnan awarded pre-judgment interest and granted the unchallenged request for post-judgment interest.
Judge Sleet Denies Defendant’s Post-Trial Motion for Judgment and New Trial
In Linear Tech. Corp. v. Monolithic Power Sys., Inc., C.A. No. 06-476-GMS (D. Del. Nov. 12, 2009), Judge Sleet denied defendant’s post-trial motion for judgment as a matter of law (JMOL) on the issue of obviousness or, in the alternative, for a new trial on the issue of invalidity. Judge Sleet held that defendant failed to file a pre-verdict JMOL motion, and any grounds for a post-verdict JMOL must be denied because none of the issues raised in defendant’s post-verdict JMOL motion were raised in the pre-verdict JMOL motion. The Court further held that a reasonable jury was entitled to reject defendant’s obviousness theory. Judge Sleet also denied a post-trial motion for a new trial on the issue of invalidity because defendant failed to demonstrate how the alleged fraud or misrepresentation in plaintiff’s witness’s testimony prevented defendant from fully and fairly presenting its case. Judge Sleet noted that defendant had been free to clarify during further examination at trial any potential fraudulent statements or misrepresentation that had been made.