Intellectual Property – Post-Trial
May 27, 2011
Publication| Intellectual Property
Chief Judge Sleet Denies Majority of Post-Trial Motions
In Edwards Lifesciences AG, et al. v. CoreValve, Inc., et al., C.A. No. 08-91-GMS (D. Del. Feb. 7, 2011), plaintiffs Edwards Lifesciences AG and Edwards Lifesciences LLC (together, “Edwards”) alleged that a medical device manufactured by defendants CoreValve, Inc. and Medtronic CoreValve, LLC (together, “CoreValve”) infringed claim 1 of U.S. Patent No. 5,411,552. After an eight-day trial, the jury found that the CoreValve accused product directly infringed the asserted claim and that such infringement was willful. The jury rejected CoreValve’s argument that the asserted claim was not enabled. Judge Sleet denied the parties’ post-trial motions with the exception of Edwards’ motions for pre- and post-judgment interest and for a permanent injunction and an accounting. The Court awarded Edwards pre-judgment and post-judgment interest at the prime rate, compounded quarterly, because it concluded that the prime rate was a reasonable approximation of Edwards’ cost of borrowing money during the relevant period. Judge Sleet denied Edwards’ request for a permanent injunction, but granted its request for an accounting of the number of CoreValve accused products made, used, sold, offered for sale, imported or supplied in or from the United States and corresponding revenue from March 16, 2010 through the date of the order.
Judge Stark Rules on Renewed Motions for Judgment as a Matter of Law
In Leader Technologies, Inc. v. Facebook, Inc., C.A. No. 08-862-LPS (D. Del. Mar. 14, 2011), after a seven-day jury trial, Judge Stark granted defendant Facebook, Inc.’s renewed motion for judgment as a matter of law of no indirect infringement, but denied three other renewed motions for judgment as a matter of law filed by Facebook. Judge Stark also denied Facebook’s motion for summary judgment of invalidity as well as plaintiff Leader Technologies, Inc.’s renewed motion for judgment as a matter of law.
The Court denied Facebook’s Rule 50(b) motions for no direct infringement, no literal infringement or infringement under the doctrine of equivalents, and invalidity of anticipation, finding the evidence presented by Leader was sufficient to sustain the jury’s verdict on these issues. The Court also denied Facebook’s motion for summary judgment by concluding that the Federal Circuit’s decision in IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377 (Fed. Cir. 2005), did not apply here to invalidate the asserted claims as indefinite. But Judge Stark granted Facebook’s Rule 50(b) motion for no indirect infringement, finding that Facebook was entitled to judgment as a matter of law on Leader’s claims of contributory infringement and induced infringement. Lastly, the Court denied Leader’s Rule 50(b) motion, finding that substantial evidence supported the jury’s verdict. The jury had found that Leader publicly used and offered for sale a product embodying the invention claimed in the patent-in-suit for commercial, not experimental, purposes before the critical date, and that Facebook did not direct or control the actions of its users and employees.
Judge Stark Grants Motion to Defer Ruling and Denies Motion to Declare Case Exceptional
In Roche Diagnostics Operations, Inc., et al. v. Abbott Diabetes Care, et al., C.A. No. 07-753-LPS (D. Del. Mar. 3, 2011), Judge Stark granted plaintiffs’ motion requesting that the Court defer ruling on defendant Lifespan’s motion for an award of fees and expenses until the Court of Appeals for the Federal Circuit ruled on plaintiffs’ appeal. Judge Stark also denied defendant Lifespan’s motion for an exceptional case declaration, but granted leave to renew upon the Federal Circuit’s decision on plaintiffs’ appeal, since its outcome could affect the resolution of this motion.
Judge Stark Rules on Post-Trial Motions and Awards Double Damages
In Power Integrations, Inc. v. Fairchild Semiconductor International, Inc., et al., C.A. No. 04-1371-LPS (D. Del. Jan. 19, 2011), Judge Stark denied defendants’ motion to amend the findings of fact, and granted in part and denied in part plaintiff’s motion for an exceptional case declaration. Judge Farnan had earlier concluded that defendants willfully infringed the patents-in-suit. Defendants moved under Rule 52(b) to amend this opinion to include facts about the reexamination proceedings and the purported “closeness” of the case. Judge Stark denied this motion, since the defendants had already presented the evidence in question and these facts were taken into consideration in the opinion on willfulness. On plaintiff’s motion for an exceptional case declaration, the Court was not convinced that this case was sufficiently egregious to justify a full trebling of damages, noting that defendants’ behavior did not appear to have become more culpable and egregious over time. Though not awarding treble damages, the Court doubled the original $6 million award.
Judge Robinson Vacates Order of Dismissal
In Callaway Golf Co. v. Acushnet Co., C.A. No. 06-091-SLR (D. Del. Jan. 13, 2011), Judge Robinson granted plaintiff Callaway Golf Co.’s Rule 60(b) motion to vacate the Court’s earlier order dismissing its breach of contract claim for lack of jurisdiction and to reinstate an order granting summary judgment in Callaway’s favor. Callaway had accused defendant Acushnet Co. of infringing its patent for golf balls. Earlier, Judge Robinson had granted Callaway summary judgment that Acushnet breached a provision of an agreement settling previous litigation between the parties. But after trial, Judge Robinson granted Acushnet’s motion to dismiss Callaway’s contract claim for lack of subject matter jurisdiction, concluding that the settlement agreement did not sufficiently indicate an intent that the Court retain jurisdiction to supervise the agreement.
Callaway sought to reform the agreement in the Delaware Court of Chancery, but both parties returned to the District Court on a joint Rule 60(b) motion asking the Court to reopen the proceedings in which the settlement agreement was filed and stipulating to the cure of any deficiencies, which Judge Robinson did. After the Federal Circuit ruled on Acushnet’s appeal of a separate issue in the case, the parties planned to file a second joint Rule 60(b) motion asking that the contract claim be reheard in a summary proceeding that would allow the Court to re-enter its original grant of summary judgment to Callaway.
Upon remand from the Federal Circuit, a second trial was held, this time concluding in Acushnet’s favor. Though Callaway filed the second 60(b) motion as planned, Acushnet refused to join and objected to it as untimely, arguing that it should have been filed before the second trial to allow for the contract damages to be heard with the patent damages, and that Callaway wrongfully waited more than a year from the date of the remand to renew the motion. Judge Robinson granted Callaway’s motion and reinstated the summary judgment order. The Court held that the language of the previous Rule 60(b) motion, though not clear, created a time for filing the second motion that began on the date of the Federal Circuit’s remand and either remained open, since an appeal of the second trial had not yet concluded, or ended no earlier than the commencement of the remanded trial. Judge Robinson found that, either way, Callaway’s motion was timely, and in addition Acushnet showed no evidence that it undertook any efforts to initiate or cooperate in the filing of the motion.
Judge Robinson Finds No Inequitable Conduct
In Robert Bosch, LLC v. Pylon Manufacturing Corp., C.A. No. 08-542-SLR (D. Del. Mar. 9, 2011), Judge Robinson concluded in this post-trial opinion that Pylon Manufacturing Corp. failed to prove that a patent held by Robert Bosch, LLC was unenforceable for inequitable conduct. Judge Robinson found that the patent applicants withheld material information about inventorship during prosecution, but that Pylon failed to show that they intended to deceive the PTO. The patent was for a triangular spoiler that prevented a certain type of windshield wiper from lifting off the window during use.
The Court stated that the omission of an inventor from an application, without more, does not show intent to deceive, and found that Pylon did not offer evidence suggesting that the listed inventors deliberately excluded the omitted inventor from the application. Nor was intent to deceive the single most reasonable inference to be drawn from the circumstantial evidence: four years had elapsed between a meeting when the listed inventors met with the omitted inventor to discuss the invention and the preparation of the invention disclosure form; it was reasonable to infer that memories may have faded during this time. Notes from the meeting did not clearly attribute inventorship to any of the attendees. Nor could licensing negotiations for unrelated wiper technology and unfulfilled threats of litigation between companies interested in the patent have been expected to shake the listed inventors’ conviction that they first came up with the triangular spoiler idea.
Judge Robinson found that the inventors’ failure to disclose a separate invention that addressed the same problem as the triangular spoiler was not a material omission, and that Pylon again failed to show evidence of intent to deceive. The omission of a memorandum prepared by another omitted inventor discussing the use of a spoiler was found to be material, but the evidence showed that the listed inventors believed that their flexible spoiler was sufficiently different from the rigid spoiler described in the memorandum as to be a different invention, thereby negating the argument that they intended to deceive the PTO.
Judge Robinson Invalidates Patents
In Cephalon, Inc. & CIMA Labs, Inc. v. Watson Pharmaceuticals, Inc., et al., C.A. No. 08-330-SLR (D. Del. Mar. 11, 2011), Judge Robinson invalidated for lack of enablement several claims of patents held by plaintiffs Cephalon, Inc. and CIMA Labs, Inc. for oral transmucosal drug delivery. The Court also found that defendants Watson Pharmaceuticals, Inc., Watson Laboratories, Inc. and Watson Pharma, Inc. did not infringe the patents-in-suit. The defendants had filed an ANDA to manufacture a generic version of Fentora, a drug for the treatment of breakthrough pain in cancer patients.
Judge Robinson Finds Infringement
In Cephalon, Inc. v. Watson Pharmaceuticals, Inc., et al., C.A. No. 08-330-SLR (D. Del. Mar. 24, 2011), Judge Robinson held that defendants Watson Pharmaceuticals, Inc., Watson Laboratories, Inc. and Watson Pharma, Inc. (collectively, “Watson”) infringed a patent held by Cephalon, Inc. (“Cephalon”) for an oral transmucosal drug formulation in a solid solution. Watson had filed an ANDA to manufacture a generic version of Fentora, a drug made by Cephalon for the treatment of breakthrough pain in cancer patients. The Court also found that the patent was not invalid for obviousness.
Judge Robinson Declares Patents Not Infringed
In Medtronic, Inc. v. Boston Scientific Corp., et al., C.A. No. 07-823-SLR (D. Del. Mar. 30, 2011), a declaratory judgment action, Judge Robinson found that plaintiff Medtronic, Inc.’s devices for the treatment of cardiac asynchronization did not infringe defendants’ patents, and that the patents were valid. After construing the preambles to several claims as limitations, Judge Robinson addressed the parties’ infringement positions. Defendants argued that Medtronic, as the plaintiff, had the burden to prove non-infringement. The Court disagreed, stating that the burden of proof for infringement always remains with the party asserting infringement, regardless of whether that party is the plaintiff or the defendant. Furthermore, Judge Robinson found that defendants’ expert never mapped each claim of the patents onto plaintiff’s products. Without this showing, the Court found plaintiff not liable for direct infringement. Judge Robinson also concluded that this same expert’s assertions of insubstantial differences were conclusory and lacked the particularity necessary to show infringement by the doctrine of equivalents; the Court found that defendants failed to show infringement under this theory, as well.
Plaintiff argued that the patents were invalid for anticipation, but Judge Robinson found that its references did not disclose bi-ventricular pacing for the treatment of heart failure, rather than other heart problems, and therefore would not invalidate the patents on this ground. The Court found that plaintiff’s obviousness references likewise failed to address claim limitations about heart failure, and that plaintiff also failed to show a motivation to combine. Plaintiff also argued prosecution laches, but Judge Robinson found that any delays in the prosecution of the patents were reasonable or a result of PTO error. For these reasons, the Court found that the patents were valid.