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Morris James Blogs

Chambers USA Recognizes 14 Morris James Attorneys and 5 Practice Areas Among the Nation’s Best

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Morris James is pleased to announce that fourteen of its partners and five practice areas have been recognized by Chambers USA 2016.  More ›

Motion to dismiss is granted due to unpatentable subject matter of the patent-in-suit

Device Management LLC v. Amazon.com, Inc., C.A. No. 15-762 - SLR, May 17, 2016.

Robinson, J. Defendant’s motion to dismiss is granted.

The patent-in-suit is titled "Method and System for Operating Applications for Remote Terminal Devices."  Defendant challenged the patentability of the patent-in-suit pursuant to section 101 and Alice.  The court notes the Federal Circuit in DDR, § 101 jurisprudence has evolved from the complete rejection of patentability for computer programs, to the almost complete acceptance of such, to the still difficult-to-discern requirements of the Alice analysis. Furthermore, that the method at bar may be described as the abstract idea of division of labor does not provide the answer to step one of the Alice inquiry.  The claimed method, then, generally provides for the installation of a generic client-side application on the terminal device and the installation of a corresponding remote application on the server (which handles most of the graphical processing). It appears that the '683 patent pre-empts virtually all possible ways of performing the claimed method because the very steps of the method comprise nothing more specific than the underlying idea itself.

Stay pending resolution of motion for judgment on the pleadings is denied

Alstom Grid LLC v. Certified Measurement, LLC, C.A. No. 15-72-LPS-CJB, May 16, 2016.

Burke, C. J. Plaintiff’s motion to stay is denied.

Declaratory judgment plaintiff seeks a stay pending resolution of its motion for judgment on the pleadings.  It contends that 23 contested claims from 3 patents-in-suit are not patent-eligible pursuant to section 101.  With respect to simplification, the number of patents makes it more likely that some will survive the Alice motion. However, because the three patents have the same inventors, claim priority to the same application, and have similar specifications this factor weighs slightly in favor of the stay. The status of the litigation slightly disfavors a stay since the parties are well into the claim construction process.  As for undue prejudice, plaintiff opposed an earlier stay pending IPR, but the case has already been stayed once to little beneficial effect.

Reargument motion regarding royalty rate is denied

Invista North America S.A.R.I., et al. v. M&G USA Corporation, et al., C.A. No. 11-1007 - SLR, May 13, 2016.

Robinson, J. Plaintiff’s motion for reconsideration is denied.

Plaintiff’s motion is not directed at the court’s decision to stay an injunction but rather at the amount and manner of payment of the royalty rate to be paid by defendants pending the outcome of administrative proceedings.  The parties had agreed on a lump sum payment of $556,000 for past infringement, or one cent per pound of the accused product sold. Plaintiffs now urge the court to award four cents per pound. The court did not intend its December 28, 2015 memorandum order to be the final word on damages and assumed that if the validity of the patent is preserved the parties would resolve the issue of future damages by settlement or litigation.  The status quo is maintained in the meantime.

Claims are construed in azelastine case

Meda Pharmaceuticals Inc., et al. v. Apotex Inc., et al., C.A. No. 14-1453 – LPS, May 12, 2016.

Stark, C. J.   Claim construction opinion issues regarding one term from three patents.  A Markman hearing took place on April 29, 2016.

The disputed technology relates the pharmaceutical ingredients azelastine and fluticasone. The following term was considered:

  1. “conditions”

Judgment issues for plaintiffs in ANDA case

Genzyme Corporation, et al. v. Dr. Reddy’s Laboratories, Ltd., et al., C.A. No. 13-1506 - GMS, May 11, 2016.

Sleet, J. The court issues findings of fact and conclusions of law and rules on post-trial motions.  A 4-day trial took place between November 9-13, 2015.

The disputed product is generic forms of plerixafor, which is marketed as Mozobil®.  The parties had previously stipulated to infringement.  The court finds that defendants have not proven that the patents-in-suit is obvious.  Defendants’ expert’s relevance analysis is colored by hindsight.  Furthermore he relies on his own testing rather than prior art. Secondary considerations further support the conclusion of non-obviousness.  The court enjoins defendants from commercially manufacturing, using, offering for sale, selling or importing their generic versions prior to the expiration of the patent-in-suit.

Claims are construed in DNA testing case

Cornell University, et al. v. Illumina Inc., C.A. No. 10-433 – LPS-MPT, May 6, 2016. 

Claim construction opinion issues regarding thirty-three terms from eleven patents.  A Markman hearing took place on February 22, 2016.

Thynge, C.M. J. The disputed technology relates to methods for determining whether a certain DNA sequence is present in a sample. The following terms were considered:

  1. “oligonucleotide probe set(s)”
  2. “primer-specific portion”
  3. “ligation product sequence(s)” “ligation products”
  4. “composite oligonucleotide”
  5. “solid support”
  6. “an array of positions”
  7. “linker”
  8. “immobilized”
  9. “attached”
  10. “suitable for attachment”
  11. “coupled to”
  12. “capture oligonucleotide probes” “capture oligonucleotide(s)”
  13. “capturing said one or more amplification products to a solid support”
  14. “each [type of] capture oligonucleotide hybridizes to a nucleic acid molecule comprising a complementary nucleotide sequence the capture oligonucleotides hybridize to complementary portions of the target nucleic acid molecules”
  15. “one or more target nucleic acid molecules hybridized [to complementary portions of the capture oligonucleotides on the solid support]”
  16. “each type of capture oligonucleotide . . .hybridizes to its complement”
  17. “wherein the zip code portion of each of the composite oligonucleotides . . .hybridizes to its complement”
  18. “the capture oligonucleotides hybridize to the complementary portions of the nucleic acid molecules”
  19. “each capture oligonucleotide probe of the array differs in sequence from its adjacent capture oligonucleotide probe, when aligned to each other by at least 25%”
  20. “each capture oligonucleotide probe of the array differs in sequence from its adjacent capture oligonucleotide probe, when aligned to each other by at least 25%”
  21. “each type of capture oligonucleotide . . .differs in nucleotide sequence, when aligned to another type of capture oligonucleotide that is located on an adjacent position of said solid support, by at least 25%”
  22. “each type of capture oligonucleotide . . .differs in nucleotide sequence, when aligned to another type of capture oligonucleotide, by at least 25%” “each type of capture oligonucleotide . . . differs by at least 25% in nucleotide sequence, when aligned to another type of capture oligonucleotide” “comprises a nucleotide sequence that differs from the nucleotides sequence of other types of capture oligonucleotides in the collection by at least 25% when aligned each type of capture oligonucleotide . . . comprising nucleotide sequence that differs from the nucleotide sequence of other types of capture oligonucleotide of the collection by at least 25% when aligned each type of capture nucleotide . . . with a nucleotide sequence that differs from the nucleotide sequence of other types of capture oligonucleotides on the solid support by at least 25% when aligned”
  23. “uniform hybridization conditions”
  24. “addressable array specific portion”
  25. “address-specific portion”
  26. “zip code portion”
  27. “unique nucleotide sequence” “unique nucleotide portion”
  28. “ligase detection reaction”
  29. “suitable for ligation together”
  30. “ligase detection reaction cycles”
  31. “ligase detection reaction mixture” “ligation detection reaction mixture” “reaction mixture”
  32. “polymerase chain reaction (PCR) mixture PCR mixture”
  33. “target-specific portion(s)”

Claims are construed in pharmaceuticals case

Pfizer Inc., et al. v. Mylan, Inc., et al., C.A. No. 15-26 - SLR, May 5, 2016.

Robinson, J. Claim construction opinion issues regarding one term from one patent. 

The disputed technology relates to a form of tigecycline. The following term was considered:

  1. “Form I tigecycline having X-ray powder diffraction peaks at about ...”

Court declines to certify appeal

Improved Search LLC v. AOL Inc., C.A. No. 15-262 - SLR, May 5, 2016.

Robinson, J. Defendant’s motion to certify the court’s decision on invalidity for interlocutory appeal is denied.

On March 22, 2016 the court denied defendant’s motion to dismiss, finding that the patents-in-suit are directed to section 101 patent-eligible subject matter.  While the court acknowledged the uncertainty of the law under section 101, that cannot be the basis for certifying each district court opinion on a 101 motion for review as it would surely cause piecemeal litigation. It therefore denies the motion to certify an appeal.

Discovery dispute regarding key word searches is granted in part and denied in part

Posted In Discovery

AVM Technologies, LLC v. Intel Corporation, C.A. No. 15-33 – RGA-MPT, May 3, 2016.

Thynge, C. M. J. Plaintiff’s request for documents in discovery is granted in part and denied in part.

Plaintiff requests that defendant search its database for documents containing the following terms: charge sharing, power race, contention, and short circuits and their synonyms.  Plaintiff justifies this discovery on the basis of defendant’s reliance on a particular processor as prior art. It seeks documents on products that are not accused and that predate the accused products. Plaintiff accepted defendants offer to further search a previously searched database. Defendant is transferring potentially searchable contents of this database to a search capable platform to perform the keyword searches requested.  Plaintiff’s request for defendant to search databases devoted to specific projects is denied since there are no known databases that contain comprehensive documents for prior  art.

Summary judgment motions regarding written description and enablement are denied

Johns Hopkins University v. 454 Life Sciences Corporation,  C.A. No. 13-1853 - LPS, May 2, 2016.

Stark, C. J.  Plaintiff’s motion for partial summary judgment is granted in part and denied in part. Briefing was completed on February 16, 2016.

Plaintiff filed this action to review the final decision and judgment of the Board of Patent Appeals and Interferences.  Plaintiff’s motion for summary judgment that its priority date with respect to the count is no later than June 5, 2003 is granted.  Its motions that certain patent applications fail to comply with written description and enablement requirements are denied. Its motion that a certain patent application is anticipated is denied. Defendant’s motion for partial summary judgment regarding written description and enablement is denied.  The court finds material issues of fact preclude summary judgment regarding written description and enablement.

Patents-in suit in ANDA trial are non-obvious

Bayer Pharma AG, et al. v. Watson Laboratories Inc., et al., C.A. No. 12-517 - GMS, May 2, 2016.

Sleet, J. Post-trial opinion holding that the asserted claims in two patents-in-suit are not invalid due to obviousness.

A 6-day bench trial was held from April 6-14, 2015.  After trial, the court entered stipulations and orders regarding infringement of certain claims of the ‘178 and ‘206 patents. The court rejected defendant’s claim that the patents-in-suit were obvious and further rejected defendant’s indefiniteness defense. After post-trial briefing, plaintiff contends that a POSA would not have selected sildenafil as a lead compound as a starting point in designing a new PDE5 inhibitor. The court agrees, and finds that defendant’s expert is impacted by hindsight bias. The court also agrees with plaintiff that modifying sildenafil was not a matter of trying a finite number of identified, predictable solutions.  The court further finds that the secondary objective indicia point to a finding of non-obviousness.

Counterclaim case is stayed pending IPR appeal

Novartis AG, et al. v. HEC Pharm Co., Ltd., et al., C.A. No. 15-151 - LPS, May 2, 2016.

Stark, C. J. Plaintiff’s motion to stay proceedings pending appeal of an IPR is granted in part. The court heard argument on April 19, 2016. 

This action was filed in February, 2015. In May, defendant counterclaimed for a declaratory judgment that a patent (‘283 Patent) which plaintiff had not asserted was invalid. In September, the PTAB found the ‘283 Patent to be invalid as obvious.  Defendant was not involved in that proceeding and opposes the stay. The court finds that the stage of the litigation with respect to the ‘283 Patent and the status of the IPR appeal favor the stay, as does the lack of prejudice to defendant. The court stays the case with respect to the ‘283 Patent until the earlier of November 1, 2016 or the issuance of a decision on the Federal Circuit appeal.

Request for attorneys’ fees is denied

YYZ, LLC v. Pegasystems, Inc., C.A. No. 13-581 - SLR, May 2, 2016.

Robinson, J. Defendant’s motion for attorneys’ fees is denied.

Defendant claims this is an exceptional case and seeks attorney fees pursuant to section 285  because it allegedly knew its claims were objectively invalid over the prior art.  The court disagrees.  Defendant relies on arguments presented in its summary judgment briefing, and the court expended considerable effort in reaching its invalidity determination.  Defendant’s characterization of plaintiff’s arguments as “reckless” contradicts the court’s position that the section 101 analysis is an evolving state of the law and a difficult exercise which does not lend itself to shifting fees.

Claims are construed in wearable medical devices case

Zoll Medical Corporation v. Respironics, Inc., C.A. No. 12-1778-LPS, April 29, 2016.

Stark, C. J. Claim construction opinion issues for 8 terms from one patent-in-suit.  A claim construction hearing took place on February 29, 2016.

The disputed technology relates to methods and systems for the collection and transmission of data from wearable medical devices that monitor and treat patients.

  1. "wearable medical device"  "worn by the patient"
  2. " information database"  "patient database”
  3. "storage means"
  4. "means for monitoring and storing"
  5. "means for connecting the medical device" "means for downloading device parameter software to the medical device"
  6. "means for connecting the patient database to the communication network"
  7. "means for exchanging" "means for transmitting"
  8. "means for accessing the patient database via the communication network"