* Indicates a required field.

Morris James Blogs

Patent Covering Safyral® and Beyaz® Found to Be Valid

Merck & CIE, et al. v. Watson Laboratories, Inc., C.A. Nos. 13-978 – RGA; Merck & CIE, et al. v. Watson Laboratories, Inc., C.A. No. 13-1272 - RGA, August 31, 2015.

Andrews, J.  Findings of fact and conclusions of law upholding validity of plaintiff’s patent.

The defendant sought to engage in the commercial exploitation of generic versions of Safyral® and Beyaz®, which are covered by plaintiff’s U.S. Patent No. 6,441,168 (the ‘168 patent).  The parties stipulated to infringement of the ‘168 patent if the Court found the patent valid.  On May 18 through May 21, 2015, the Court held an invalidity bench trial.  Defendant maintained that the ‘168 patent is invalid (a) under the on-sale bar of §102(b), as anticipated under §102(a), for lack of written description under §112, and/or as obvious under §103.  The Court disagreed.  Defendant did not prove that there was an invalidating commercial sale.  The asserted prior art patent did not anticipate as the structures are different and the experiment conducted did not follow the prior art procedure alleged to inherently anticipate.  Defendant’s written description defense is unpersuasive since a specification is not required to describe each and every embodiment of the claim.  Finally, the asserted claim is not obvious as defendant did not demonstrate that a person of ordinary skill in the art would have a reasonable expectation of success in producing the claimed compound when combining the prior art.

Patent Is Not Invalid for Obviousness or Obviousness-Type Double Patenting

Novartis Pharmaceuticals Corporation, et al., v. Noven Pharmaceuticals, Inc., C.A. Nos. 13-527 – RGA; Novartis Pharmaceuticals Corporation, et al., v. Noven Pharmaceuticals, Inc., C.A. No. 14-111 – RGA (Consolidated), August 31, 2015.

Andrews, J.  Findings of fact and conclusions of law upholding the validity of plaintiff’s patent.

Plaintiff asserted infringement of U.S. Patent No. 6,335,031, which is directed to a pharmaceutical composition containing a compound to rivastigmine.  The parties stipulated to infringement if the patent was valid.  Defendant maintained that the asserted claims were obvious under §103(a) and invalid under obviousness-type double patenting.  The Court disagreed.  Defendant did not prove by clear and convincing evidence that the asserted claims were obvious.  A person of ordinary skill in the art would not have known rivastigmine was susceptible to oxidative degradation in January 1998.  The asserted claims also are not invalid under obviousness-type double patenting.  The prior art does not disclose rivastigmine’s susceptibility to oxidative degradation.  Alternatively, obviousness-type double patenting fails as a matter of law because the common ownership requirement is not met. 

Court Construes Pharmaceutical Claims Directed to Dronedarone

Sanofi, et al. v. Glenmark Pharmaceuticals Inc., et al., C.A. No. 14-264 - RGA, August 28, 2015.

Andrews, J.  Claim Construction Opinion

The Court construed the following claim terms found in U.S. Patent Nos. 8,318,800; 7,323,493; and 8,410,167:

  1. solid pharmaceutical composition
  2. nonionic hydrophilic surfactant
  3. a method of decreasing a risk of cardiovascular hospitalization in a patent; a method of decreasing a risk of hospitalization for atrial fibrillation in a patient having a history of atrial fibrillation or atrial flutter
  4. effective amount
  5. to a patient in need thereof
  6. prevents

Court Construes Claims Directed to Data Communication Application

Celebrate International, LLC v. Leapfrog Enterprises, Inc., et al., C.A. No. 14-261 - RGA, August 28, 2015.

Andrews, J.  Claim construction opinion.

The Court construed the following claim terms found in U.S. Patent Nos. 6,256,398 and 6,819,776:

  1. pixel value(s)
  2. said pattern of pixels constituting a foreground visual image that conveys [recognizable]/[understandable] information to an observer
  3. binary value(s)
  4. determining binary values via comparing pixel values of selected pixels to the pixel values of pixels neighboring thereto
  5. receiving light from a display
  6. address information
  7. data communication application

Claims are construed after interference proceedings

Johns Hopkins University v. 454 Life Sciences Corporation, C.A. No. 13-1853-LPS, August 24, 2015.

Stark, J.  The court considers 4 terms from pending patent applications following final judgment of the Board of Patent Appeals and Interferences

The court first determines that when a party is challenging a claim’s compliance with the written description requirement during an interference, the originating disclosure provides the meaning of the pertinent claim language.  The following terms are construed:

  1. generating a plurality of molecules of a fragment of deoxyribonucleic acid
  2. delivering the plurality of molecules of the fragment of deoxyribonucleic acid into aqueous microreactors in a water-in-oil emulsion such that a plurality of aqueous microreactors comprise a single molecule of the fragment of deoxyribonucleic acid, a single bead capable of hybridizing to the fragment of deoxyribonucleic acid, and regents necessary to perform deoxyribonucleic acid amplification
  3. deoxyribonucleic acid I DNA
  4. a single bead capable of hybridizing to the fragment

Rule 54(b) Final Judgment Entered On Indefinite Patents

Cox Communications Inc., et al. v. Sprint Communications Company, L.P., et al., C.A. No. 12-487 - SLR, August 27, 2015.

Robinson, J.  Request for entry of final judgment is granted.

The Court found patents indefinite through partial summary judgment motion practice.  Patent owner requested entry of judgment under Fed. R. Civ. P. 54(b) in writing and orally.  Accused infringer objected, contending that the request must be made by motion.  The Court disagreed, citing Federal Circuit precedent and reasoning that accused infringer had the opportunity to respond already.  The parties are ordered to submit a proposed order.

Best Lawyers® 2016 Recognizes 21 Morris James Attorneys

Posted In News

Twenty-one Morris James attorneys in twenty-six practice areas were selected by their peers for inclusion in The Best Lawyers in America 2016 edition. Additionally, three of those attorneys were named “Lawyer of the Year” for their respective practices, including Richard Galperin for Personal Injury Litigation – Defendants, Gretchen S. Knight for Family Law, and Mark D. Olson for Tax Law.  More ›

Court Construes Claims Directed to Microsurgery Methods and Equipment

Sarif Biomedical LLC v. Brainlab, Inc., et al., C.A. No. 13-846-LPS, August 26, 2015.

Stark, C.J.  Claim construction opinion.

The following terms of U.S. patent No. 5,755,275 were construed:

  1. microsurgery
  2. tool
  3. An articulated tool support
  4. A reference frame Rp of a patient/patient reference frame Rp
  5. A function of the position of a reference frame Rp of a patient in the fixed reference from reference frame Rc
  6. Control position and displacements of the tool as a function of control signals originating from a control unit, where the fixed reference frame Rc is independent of the patient reference frame Rp and the image reference frame Ri
  7. determine correspondence of a reference frame Ro of the tool with the     patient reference frame Rp and the image reference frame Ri  as a function of the signal from the at least two sensors
  8. visualization of position of the tool in the image reference frame Ri
  9. means for determining coordinates of the tool in the fixed reference system Rc based on date from the image data base

Judgment on the pleadings is granted due to unpatentable claims

Inventor Holdings, LLC v. Bed Bath & Beyond Inc., C.A. No. 14-448-GMS, August 21, 2015.

Sleet, J.  Defendant’s motion for judgment on the pleadings is granted. Patent-in-suit is invalidated.

The disputed patent describes a method and system for processing payments for remotely purchased goods.  Defendant claims the patent is invalid because the claims at issue embody the abstract idea of paying for remote orders at local retailers.  Plaintiff’s argument is that the motion should be denied because the court previously denied similar motions in related cases.  The court disagreed with plaintiff in light of the intervening Alice decision issued from the Supreme Court. The core invention is a fundamental economic or conventional business practice and is therefore an abstract idea. Additionally, the claims at issue lack meaningful limitations on the abstract idea. The claims are not patentable under 35 U.S.C. § 101.

Gaming method patent is held invalid on motion to dismiss

Everglades Game Technologies, LLC v. Supercell, Inc., C.A. No. 14-643-GMS, August 21, 2015.

Sleet, J.  Defendant’s motion to dismiss for failure to state a claim is granted. The patent-in-suit is invalidated.

Defendant claims the patent-in-suit claims ineligible subject matter and is therefore invalid under § 101.  The invention uses computer technology for promotional gaming methods.  Applying the 2-step Alice step, The court finds that all 26 claims of the patent are invalid as they claim the abstract concept of using promotional games, such as collect-to-win or match-to-win, without reciting meaningful limitations to render the idea patent eligible.  Additionally, the “machine or transformation” test fails to support the claim that the patent is valid.

Asserted claims in ANDA case are invalid due to obviousness

Millenium Pharmaceuticals, Inc. v. Sandoz Inc., et al., C.A. No. 12-1011-GMS, August 20, 2015.

Sleet, J.  Post-trial memorandum opinion finding the patent-in-suit is obvious and therefore invalid under 35 U.S.C § 103

This ANDA case  concerns generic versions of bortezomib, marketed as Velcade® and used to treat multiple myeloma and mantle cell lymphoma.  One prior art patent identifies bortezomib as a potent anti-cancer drug.  The parties dispute whether lyophilization of the drug, a technique well-known in the field of formulation, would have been obvious.  The decision to lyophilize bortezomib with mannitol was not inventive.  It was a suitable option from which the prior art did not teach away. Defendants further argue that a bortezomib-mannitol ester is an inherent result of that combination and the court agrees.  It is an inherent property that falls under the rare exception to the rule that every limitation of a claim must have been known to the inventor at the time of the alleged conception.  Defendants’ prima facie case of obviousness is clear and convincing and is not overcome by secondary considerations of unexpected results, commercial success and long-felt need.

Court compels production of core technical documents but declines to correct claims in the patents

Parallel Networks Licensing, LLC v. International Business Machines Corporation, C.A. No. 13-2072-SLR-SRF, August 20, 2015.

Fallon, M. J.  Plaintiff’s motion to compel documents is granted in part and denied in part. Its motion to correct and amend its motion to compel is denied as moot. Its motion to amend its complaint is denied as moot. Its motion to correct claims of the patents-in-suit is denied.

The disputed technology relates to systems and methods for managing dynamic web page generation requests.  After reexam proceedings, the PTO issued an ex parte certificate cancelling claims 1-11 and adding new claims 12 – 49. Those new claims as printed in the certificate were the wrong set of claims and a certificate of correction issued in October, 2012.  With respect to the second patent-in-suit, the PTO cancelled all 29 of the original claims and confirmed patentability of new claims 30 – 85, which were also incorrect.  A certification of correction issued in September 2012. Defendant argues that the information sought in discovery requests served in 2014 prior to 2012 is irrelevant as to infringement but it produced information relating to knowledge of the patents-in-suit but refused to produce financial documents. Judge Robinson ruled that she could not correct the errors in the patents and held that plaintiff may not recover damages occurring prior to the issuance of the certificates of correction.  Plaintiff’s motion to compel discovery prior to 2012 is denied to the extent it is based on arguments already raised. However, the motion is granted to the extent it seeks core technical documents and design and development documents pre- or post-2012. Pre-2012 discovery is not relevant to defendant’s laches defense.  A request for financial documents for 6 years prior to infringement is too broad and denied.

Motion to transfer to California is denied

Elm 3DS Innovations LLC v. SK Hynix Inc., et al., C.A. No. 14-1432-LPS-CJB, August 20, 2015.

Burke, M. J.  Defendants’ motion to transfer venue to the Northern District of California is denied.

Plaintiff is a Delaware LLC with its principal place of business in Carmel, California. Plaintiff was formed in June 2014 and the complaint was filed in November 2014.  One defendant is located in Korea, and the others located in California. Two are California corporations and one is a Delaware corporation.  Plaintiff has 2 additional suits pending in Delaware filed on the same day.  The court is not convinced that plaintiff engaged in venue manipulation.  Defendants’ choice of forum and place where the claim arose weigh in favor of transfer. The convenience of the parties and the witnesses weigh slightly in favor of transfer as does the location of books and records. The efficiencies of the case staying in Delaware where two related cases are pending weigh against transfer. Administrative difficulties and local interest factors are neutral. This is a close call, and while the balance of convenience favors defendants, it does not weigh strongly in their favor.

Case is partially stayed while motion to dismiss is decided

International Business Machines Corporation v. The Priceline Group Inc., et al., C.A. No. 15-137-LPS-CJB, August 18, 2015.

Burke, M. J.  Defendants’ motion to stay pending resolution of defendants’ motion to dismiss based on patent ineligibility is granted in part and denied in part.

The case is in its infancy and no schedule has yet been entered.  The parties are not competitors and there is no evidence of an inappropriate tactical advantage tied to the motion.  Plaintiff's argument that it will be prejudiced as a result of the negative impact on licensing efforts is not particularly strong. A delay in the resolution of the case could be significant enough to plaintiff’s detriment.  This is a close call and requires a middle ground solution. The court permits the exchange of initial disclosures and postpones further discovery until the motion to dismiss is decided.  A limited schedule is put into place.

Plaintiffs’ motion to amend the complaint to reassert willfulness is granted

Intellectual Ventures I LLC, et al. v. Toshiba Corporation, et al., C.A. No. 13-453-SLR-SRF, August 17, 2015.

Fallon, M. J.  Plaintiffs’ motion to amend the complaint is granted; defendants’ motion to amend their amended answers, defenses or counterclaims is denied as moot.

The court previously dismissed plaintiffs’ willful infringement claims. The motion was filed before the deadline for filing amended pleadings and fact discovery closes in February, 2016.  Although plaintiffs do not explain the 8-month delay in filing the motion to amend, that delay is insufficient to deny the motion.  The case is still in its early stage and defendants are not prejudiced.  Defendants claim the amendment would be futile in that the amended complaint fails to sufficiently plead objective recklessness. The court finds that the allegations that defendants disregarded the risk of infringement by continuing to disseminate the allegedly infringing products after receiving notice of the patents is sufficient to infer that defendants knew or should have known that the conduct would likely infringe a patent. Plaintiffs note that defendants have not provided any bases for their assertions of non-infringement in response to a presentation of one of the patents.