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Morris James Blogs

Inequitable conduct is sufficiently pled

Quest Integrity USA, LLC v. Clean Harbors Industrial Services, Inc., et al., C.A. Nos. 14-1482- SLR; Quest Integrity USA, LLC v. Cokebusters USA Inc., C.A. No. 14-1483- SLR, July 22, 2015

Robinson, J. Plaintiff’s renewed motion to dismiss and strike inequitable conduct allegations against Clean Harbors is granted as unopposed. Plaintiff’s renewed motion to dismiss and strike inequitable conduct allegations against Cokebusters is denied.

Portions of the publicly available prosecution history attached to the motion do not convert the motion to dismiss into a summary judgment motion.  Plaintiff argues that defendant has failed to plead facts sufficient to show but-for materiality or intent to deceive. The allegations that the invention was not new, was obvious and had been sold before the bar date, taken as true at this stage, meet the but-for materiality requirement.  With respect to intent to deceive, Cokebusters alleges that a particular individual was a central figure for the development of the technology and could not claim his misrepresentations were mistakes, and despite numerous opportunities to correct the record, this individual made false statements repeatedly, each time intended to increase the likelihood the patent would issue and obscure pre-bar date sales. Additionally, a strong incentive to misrepresent facts so that the patent would issue was due to oncoming competition and the individual’s opportunity as inventor and shareholder to personally gain from the issuance of the patent. These alleged facts sufficiently plead intent to deceive.

Number of asserted claims and prior art references are limited

Greatbatch Ltd. v. AVX Corporation, et al., C.A. No. 13-723 – LPS, July 28, 2015.

Stark, C.J. Case management order regarding narrowing claims and prior art references and addressing summary judgment page limits.

The parties filed letter briefs regarding narrowing the number of claims and references. The court found that narrowing is proper in light of the complexity of the subject matter, the number of patents, and the parties’ competing proposals.  The court limited the number of asserted claims to 15 from any or all of the five patents at issue.  The prior art references were limited to 20, and to 60 with respect to prior art combinations. Elections will not be  adjusted based on any IPR decisions.  The parties are ordered to adhere to page limits for summary judgment briefing as found in the scheduling order, meaning a combined total for briefs relating to all such motions of 40 pages for opening and answering briefs, and 20 for replies.

JMOL of infringement is granted following bench trial

Pfizer Inc., et al. v. Alkem Laboratories Ltd., et al., C.A. No. 13-1110- GMS (consolidated), July 21, 2015

Sleet, J. Plaintiff’s motion for JMOL is granted. Defendant’s motion for JMOL is denied

Following a bench trial on July 13 through 16, 2015, defendant challenged plaintiff’s infringement claims and both sides moved for JMOL. Defendant argued unsuccessfully that plaintiff’s expert’s testimony was improper as beyond the scope of his report in that he did not offer a standard for one of ordinary skill in the art and could therefore not offer an opinion as to the plain and ordinary meaning of the terms, and further than the expert’s testimony amounted to untimely claim construction argument.  The court found these arguments unavailing due to the fact that defendant had the opportunity to discuss this issue at the pretrial conference and waived it. The court agreed that JMOL of infringement was warranted based on the testimony of plaintiff’s expert Dr. Leonard Chyall.

Court construes claims in pharma case.

Salix Pharmaceuticals, Inc., et al., v. Novel Laboratories, Inc., C.A. No. 14-213 - GMS, July 10, 2015

Sleet, J. The court construes three terms from the four patents-in suit.

The following terms were considered:

  1. Core
  2. Without food
  3. Remission

The court finds that the patentee expressly surrendered the full scope of the term “core” during prosecution.

Claim construction opinion issues

Cornerstone Biopharma Inc., et al.  v Exela Pharma Sciences LLC, et al., C.A. No. 13-1275 - GMS, July 9, 2015

Sleet, J. The court construes 4 terms in a case with four patents in suit.

The following terms are construed:

  1. A pre-mixed aqueous solution (The court adopts the TTAB’s     construction)
  2. Buffer
  3. Buffer in an amount to maintain PH from about 3.6 to about 4.7
  4. One year or three months “at room temperature”

Court construes various means plus function terms

Lifeport Sciences LLC  v. Endologix, Inc., C.A. No. 12-1791 - GMS, July 9, 2015

Sleet, J. The court considers 10 terms for construction from four patents.

The following terms are construed:

  1. first expandable attachment means
  2. second expandable attachment means
  3. dividing means
  4. joining means
  5. connecting means
  6. attaching means
  7. to contain
  8. first introducer
  9. second introducer
  10. engages and becomes secured within (plain and ordinary meaning)

Teva Pharmaceuticals USA, Inc., et al. v. Forest Laboratories, Inc., C.A. No. 13-2002 - GMS, July 9, 2015

Teva Pharmaceuticals USA, Inc., et al.  v. Forest Laboratories, Inc., C.A. No. 13-2002 - GMS, July 9, 2015

Sleet, J. The court considers 6 terms from on patent-in-suit.

The patent-in-suit relates to a method of preparing an analgesic pharmaceutical composition for the administration of an NMDA receptor antagonist.

The following terms are considered:

  1. wind-up
  2. diminish or     abolish wind-up
  3. for the     administration . . . to a human or animal subject for the treatment of     pain (preamble construed not to be limiting)
  4. immediate     release form/ immediate release
  5. sustained     release form/ sustained release
  6. immediate     release for and sustained release form being present in sufficient amounts

Motion to transfer is denied both as a sanction and on the merits

AT&T Intellectual Property I, L.P., et al.  v. Cox Communications, Inc., et al., C.A. No. 14-1106 - GMS, July 9, 2015

Sleet, J. Defendants’ motion to transfer venue to the Northern district of Georgia is denied.

Although defendants claim in a sworn statement that all of the Cox entities is Cox’s headquarters in Atlanta, Georgia, plaintiff has produced several inconsistent statements in this District that their principle places of businesses are located in their regional homes where they are licensed.  The court finds defendant acted in bad faith in taking inconsistent positions and narrowly tailors the remedy to denying the motion to transfer.  Even without applying judicial estoppel, the court reaches the same result.

Motion to dismiss for failure to claim patent-eligible subject matter is granted in part

Pragmatus Telecom, LLC v. Genesys Telecommunications Laboratories, Inc., et al., C.A. No. 14-26 - RGA, July 9, 2015

Andrews, J. Defendants’ motion to dismiss amended complaints for failure to claim patent-eligible subject matter pursuant to § 101 is granted in part. The court heard oral argument and considered plaintiff’s proposed claim constructions it urged the court to focus on for this motion.  The court also received letters from both parties relating to background information regarding the history of call centers.

The disputed technology relates to controlling communications between customers and organizations using certain computer systems.  Plaintiff asserts that defendants infringe four patents, continuations from a single patent which share a common specification.  The court restricts its decision to the claims asserted in the ‘314 patent and declines to dismiss claims from other patents since defendants have not shown that the ‘314 patent claims are representative of the asserted claims from the other patents.  The court finds that the claims are directed to the abstract idea of connecting customers to call centers. Additionally, there is no inventive concept under Alice.

Transfer of venue motion is denied

Quest Integrity USA, LLC v. Clean Harbors Industrial Services, Inc., et al., C.A. Nos. 14-1482 – SLR; Quest Integrity USA, LLC v. Cokebusters USA Inc., C.A. No. 14-1483 – SLR, July 8, 2015

Robinson, J. Defendants’ motion to transfer venue to the Southern District of Texas is denied.

Plaintiff is a Texas LLC with its principal place of business in Seattle. Defendants are Delaware corporations with their businesses located in Massachusetts and Texas.  Plaintiff does not argue that venue would be improper in Texas.  The court rejects the argument that the best measure of infringing activity is where the customers and jobs are located, noting that defendants admit to engaging in infringing activity in Delaware.  Although Texas may be a more convenient forum for some witnesses, there is no record that a witness would be unwilling to travel to Delaware.  Defendants fail to show how the location of books and records will negatively impact the trial.  While trial may be less expensive for defendants and not burdensome for plaintiff, the factor is not afforded significant weight since less than 10% of cases are resolved through trial.  The local interest factor is not a dispositive factor since in most cases patent litigation is not a local controversy.  The remaining Jumara factors are mostly neutral or largely irrelevant to patent cases.