Tagged: Patent Infringement

Citing Need for Claim Construction, DNJ Court Denies Defendant’s Motion for Judgment on Pleadings

In Tolmar Therapeutics, Inc. v. Foresee Pharmaceuticals Co., Ltd., the United States District Court for the District of New Jersey recently denied the defendant’s motion for judgment on the pleadings, reasoning that the motion could not be decided without claim construction. The plaintiff alleges that the defendant’s product CAMCEVI® infringes the plaintiff’s patent, which also covers the plaintiff’s Eligard® product. Both products are approved prostate cancer medications. Claim 1 of the patent-in-suit is directed to a controlled release composition that includes a polymer with an alkane diradical that comprises “about 4 to about 8 carbons.” The defendant moved for judgment on the pleadings pursuant to Fed. R. Civ. P. 12(c) arguing (1) that the term “about 4 to about 8 carbons” in the patent-in-suit meant that the defendant’s use of 12 carbons (see, e.g., ECF No. 39 at 1) in its product could not literally infringe; and (2) that the plaintiff could not rely on the doctrine of equivalents, because the use of the term “about” in the claims limited the applicability of the doctrine of equivalents and because of the disclosure-dedication rule. In denying the defendant’s motion, United States District Judge Evelyn Padin reasoned that both the plaintiff’s literal infringement and doctrine of equivalents theories required the court to construe the term “about 4...

DNJ Court Denies Request for Early Summary Judgment Finding Motion Made Mid-Fact Discovery Premature

In Metacel Pharmaceuticals LLC v. Rubicon Research Private Limited, the United States District Court for the District of New Jersey recently denied the defendant’s request for leave to file a motion for summary judgment with respect to patent infringement. The plaintiff opposed the motion arguing that discovery was ongoing, and, in particular, the defendant had not yet produced certain samples necessary for the plaintiff to evaluate infringement. The plaintiff also argued there were also claim construction issues in the case that had not been resolved. The defendant’s motion was filed approximately two months before the parties’ opening claim construction briefs were due and, per the case’s scheduling order (ECF No. 25), fact discovery was to conclude 30 days after the court’s claim construction opinion. Agreeing with the plaintiff’s position, United States Magistrate Judge José R. Almonte found the defendant’s motion was “premature” and concluded that motions for summary judgment should be filed after claim construction. Gibbons will continue to monitor and report developments in Hatch-Waxman litigation in the District of New Jersey.

Artificial Intelligence System Cannot Be Listed as Inventor

On Friday, the Federal Circuit held that the Patent Act requires an inventor to be a natural person, in response to a patent applicant who alleged that an artificial intelligence system was the inventor of a patent application. Thaler v. Vidal, No. 2021-2347, 2022 WL 3130863 (Fed. Cir. Aug. 5, 2022). The patent applicant, Stephen Thaler, asserted that he develops and runs artificial intelligence systems that generate patentable inventions. Mr. Thaler then sought patent protection through two patent applications and listed the artificial intelligence system as the inventor. After the U.S. Patent and Trademark Office (USPTO) denied the patent applications for failure to identify a valid inventor, Mr. Thaler and the USPTO adjudicated the matter in the U.S. District Court for the Eastern District of Virginia. The District Court found that the Patent Act requires an inventor to be a natural person. Thaler v. Hirshfeld, 558 F. Supp. 3d 238, 249 (E.D. Va. 2021), aff’d sub nom. Thaler v. Vidal, No. 2021-2347, 2022 WL 3130863 (Fed. Cir. Aug. 5, 2022). In affirming the District Court’s decision, the Federal Circuit first indicated that it need not perform an “abstract inquiry into the nature of invention or the rights, if any, of AI [artificial intelligence] systems.” Rather, the court began and ended on the “applicable definition in...

Increasing Patent Damage Awards with Pre-Judgment Interest

In VLSI Technology LLC v. Intel Corporation, the United States District Court for the Western District of Texas recently awarded pre-judgment and post-judgment interest on a jury’s damage award in a patent infringement case. An issue examined by the court was whether the patentee was entitled to pre-judgment interest during periods in which the patentee did not own the patent. The defendant argued that since the patentee only acquired the patent rights in December 2018 and was not formed as an entity until 2016, pre-judgment interest from 2013 would be a windfall. The court dismissed this argument and indicated that the patentee “acquired the Asserted Patents and is therefore entitled to all the rights associated with patent ownership, including the rights to collect damages and interest from infringers.” The court then awarded pre-judgment interest beginning on the date of infringement (i.e., 2013) to the date of judgment. In support of this holding, the court cited the Federal Circuit’s decision in Energy Transp. Grp., Inc. v. William Demant Holding A/S, 697 F.3d 1342, 1358 (Fed. Cir. 2012) stating that “award of pre-judgment interest is the rule, not the exception.” The court also noted that there was no exceptional circumstances such as an undue delay in filing the lawsuit that would warrant denying pre-judgment interest in this...

District of New Jersey Denies Motion to Amend Invalidity Contentions, Citing Defendant’s Lack of Diligence and Timeliness in Filing Motion

In Razor USA LLC v. DGL Group, Ltd., the United States District Court for the District of New Jersey recently denied a defendant’s motion to amend its invalidity contentions to include an additional written description argument. The case involves utility and design patents pertaining to a hoverboard. After learning that the design patent issued with drawings had previously been rejected by the Patent and Trademark Office (PTO) (as opposed to those that the PTO later approved), the defendant sought to add an argument that the design patent was invalid pursuant to 35 U.S.C. § 112(a) for the same reasons that the PTO had previously rejected the published drawings. The defendant asserted that it learned about this “new” defense after the plaintiff’s expert stated in a declaration that he had reviewed the prosecution history of the design patent, which prompted the defendant’s own investigation of the prosecution history. In evaluating whether the defendant’s application met the requirements of Local Patent Rule 3.7, the court looked to the defendant’s diligence and the timeliness of the motion. The court concluded that both were lacking. With respect to diligence, the “dominant consideration” in the motion to amend, the court concluded that the defendant had failed to act with the requisite diligence in discovering the information it sought to add...

The Russo-Ukrainian War’s Implication on Intellectual Property Rights

Following the 2014 so-called “Ukrainian Revolution of Dignity” and the Russian Federation’s annexation of Crimea, a major escalation of the ongoing Russo-Ukrainian War occurred in 2022, culminating in the Russian invasion of Ukraine on February 24. The invasion triggered Europe’s largest refugee and humanitarian crisis since World War II, causing an unprecedented amount of human suffering and countless civilian casualties.

Northern District of California Relies on the Safe Harbor Defense of Section 271(e)(1) to Resolve Infringement Cases Early

Two recent decisions from the Northern District of California show courts’ willingness to dispose of cases early in litigation through the safe harbor defense. The safe harbor of Section 271(e)(1) allows competitors, before the expiration of a patent, to engage in otherwise infringing activities if the use is “reasonably related to” obtaining regulatory approval. These two decisions provide pre-litigation and litigation guidance for life science companies that manufacture regulated products such as drugs and medical devices. The Supreme Court has construed the safe harbor to apply to drugs as well as medical devices and other products subject to Food and Drug Administration (FDA) approval. Section 271(e)(1) of the Patent Act provides that: “It shall not be an act of infringement to make, use, offer to sell, or sell within the United States or import into the United States a patented invention … solely for uses reasonably related to the development and submission of information under a Federal law which regulates the manufacture, use, or sale of drugs or veterinary biological products.” In Carl Zeiss Meditec v. Topcon Medical Systems, the N.D. Cal. granted with prejudice a motion to dismiss the plaintiff’s patent infringement claim based on product testing as barred by the safe harbor of § 271(e)(1). Carl Zeiss alleged that software testing by Topcon...

28 Days to Amend Contentions Following Disclosure of Preliminary Claim Constructions

In an interesting decision applying California’s Local Patent Rules, Northern District of California District Court Judge William Alsup held that “after receiving the other side’s preliminary claim construction disclosure under Rule 4-2, a party in a patent litigation must move promptly to disclose any back-up contentions it may wish (or eventually wish) to make for its infringement or invalidity case, in the event the other side’s claim construction is thereafter adopted or else any such back-up contentions will be deemed waived. Promptly means within 28 days at the latest.” Fluidigm Corp., et al. v. IONpath, Inc. at 4. Judge Alsup’s decision was his answer to “the question of the extent to which our patent local rules require infringement and invalidity contentions to set forth not only a party’s primary theory but also its backup theory in case its opponent’s claim construction prevails.” Id. at 1. In answering that question, Judge Alsup provided a brief exposition on California’s Local Patent Rules. “Before our local patent rules, parties struggled to determine the opposing party’s theory of liability via discovery requests, such as contentions interrogatories.” Id. at 6. The adoption of local patent rules “replaced the bone-crushing burden of scrutinizing and investigating discovery responses with the parties’ infringement and invalidity contentions.” In alleviating that burden, local patent rules...

Paragraph IV to Paragraph III Conversion Does Not Deprive a District Court of Subject Matter Jurisdiction in Hatch-Waxman Cases

In a significant Hatch-Waxman decision, a Delaware District Court recently denied the defendants’ motion to dismiss under Federal Rule of Civil Procedure 12(b)(1), rejecting the argument that the conversion of the defendants’ Paragraph IV certifications to Paragraph III certifications deprived the court of subject matter jurisdiction, but granted the defendants’ motion for partial judgment on the pleadings under Federal Rule of Civil Procedure 12(c). In H. Lundbeck A/S v. Apotex Inc., the defendants converted their Paragraph IV certifications for certain patents at issue to Paragraph III certifications. Under 21 U.S.C. § 355(j)(2)(A)(viii), an ANDA filer must make any one of four (I-IV) certifications for each Orange Book listed patent. A Paragraph IV certification is an ANDA filer’s statement that it intends to market its bioequivalent pharmaceutical product before the expiration of a patent listed as covering that product because the ANDA filer believes such patent is either not infringed or invalid. A Paragraph III certification is an ANDA filer’s statement that it will not market its bioequivalent product until after the expiration of a patent listed as covering that product. The Court reasoned that in a Hatch-Waxman action, subject matter jurisdiction exists when a patent owner alleges that the filing of an ANDA infringes its patent under 35 U.S.C. § 271(e)(2) and conversion from a...