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Defendant Novartis Pharmaceuticals Corporation (“Novartis”) alleged that Plaintiff Plexxikon Inc.’s (“Plexxikon’s”) asserted patent claims are invalid for lack of enablement.  When one skilled in the art can practice the claimed invention only after undue experimentation, the claimed invention is invalid for lack of enablement.  One indication of undue experimentation is failed attempts to practice the invention.[1]

Plexxikon’s own expert, in a bid to argue that the claimed invention was enabled, directed that two compounds be synthesized:

(Figures from Plexxikon expert’s rebuttal report.[2])

However, Plexxikon’s expert then testified in deposition that he had considered “at least half a dozen” different synthetic routes for making one of the compounds, but had not disclosed them or the 33 reactions (some unsuccessful) in his rebuttal expert report.[3]  Stating that “[i]t is not in any way professional practice to write up experimentals on reactions which did not work,” Plexxikon’s expert confirmed that he did not disclose the failed synthetic routes or unsuccessful reactions in his report[4] but that he had considered the rejected synthetic routes in making the second compound[5].

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Continue Reading When Expert’s Failed Experiments are “Facts or Data” to be Produced, Not Protected Communications

The Liqmax 120 (one of the accused products manufactured by AVC and sold by its customer, Enermax).

There is a split in authority as to whether errata may be used to make substantive changes to deposition testimony.  The Ninth Circuit has ruled against making substantive changes.

Asia Vital Components Co., LTD. (“AVC”) ran afoul of that ruling by including nearly two dozen substantive changes in its errata, including changing “yes” to “no,” changing the names of various corporate entities, and changing some key words.[1]  The Court agreed with the opposing party’s assertion that the changes appeared designed “to limit AVC’s exposure in the United States by, for example, presenting AVC’s offices in Fremont as belonging to a separate entity… altering customer names, shipping location (from U.S. to Hong Kong), and the names of the products sold in the U.S., and changing ‘shipped’ to ‘sold’ so that AVC can attempt to escape liability due to importation of the accused AVC products into the U.S.”[2]  But even without any improper motive, the changes were not permissible.[3]  Regardless of intent, errata that contradict the original deposition testimony are not allowed.[4]

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Continue Reading A Deposition Is Not A Take Home Exam

Pharmaceutical Hatch-Waxman litigation proceeds under a unique framework.  In this case, Hatch-Waxman declaratory judgment (“DJ”) defendants Gilead Sciences, Inc. (“Gilead”) and Astellas Pharma US, Inc. (“Astellas Pharma”) sought to dismiss Astellas Pharma for lack of personal jurisdiction and improper venue, and to dismiss pursuant to Federal Rule of Civil Procedure 19 non-joined and “necessary party” Astellas US LLC (“Astellas LLC’), the exclusive licensee.[1]  DJ plaintiff Apotex Inc. (“Apotex”) did not contest dismissing Astellas Pharma, nor seriously contest lack of personal jurisdiction or improper venue of Astellas LLC.  Instead, Apotex sought to apply the plain language of the Hatch-Waxman Act and its specific provisions regarding Hatch-Waxman DJ actions to prevent dismissal under Rule 19 for failure to join a required party.[2]  Thus, the dispute centered on whether Rule 19 of the Federal Rules of Civil Procedure (“FRCP”) applied to Hatch-Waxman DJ actions and, if so, whether Astellas LLC was a required party necessitating dismissal.
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Continue Reading Failure to Join Hatch-Waxman Exclusive Licensee Required Dismissal

A party that stayed silent when served deficient infringement contentions has its silence held against it when later accusing the opposition of not making its case.

MLC Intellectual Property, LLC (“MLC”) sued Micron Technology, Inc. (“Micron”) in August 2014 for infringement of U.S. Patent No. 5,764,571 (“’571 Patent”), which claims a non-volatile memory device.  MLC is accusing Micron’s flash memory devices.  The case is pending before Judge Susan Illston.

In an Order issued on April 25, 2019, Judge Illston granted in part and denied in part Micron’s motion to strike MLC’s technical expert report on infringement.[1]

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Continue Reading In Denying Motion to Strike Expert Report for Disclosing Infringement Theory Absent from Infringement Contentions, Court Notes that Defendant “Never Challenged Those Contentions as Inadequate”

The Liqmax 120 (one of the accused products manufactured by AVC and sold by its customer, Enermax).

In an omnibus decision issued March 15, 2019, Judge Jon S. Tigar ruled on Plaintiff/Counter-Defendant Asia Vital Component Co., Ltd.’s (“AVC’s”) motion for partial summary judgment of non-infringement and Defendant/Counter-Claimant Asetek Danmark A/S’s (“Asetek’s”) motion for partial summary judgment of invalidity and motions to strike expert reports and declarations.  AVC is a Taiwan-based manufacturer of fan coolers and heat sinks for CPUs, laptops, and personal computers.[1]  Defendant Asetek is a Danish company credited with popularizing widely used liquid cooling systems.

At issue in the case are two patents that describe a liquid cooling system for the central processing unit of a computer: U.S. Patent Nos. 8,240,362 (“’362 Patent”) and 8,245,764 (“’764 Patent”).  Mere weeks after the patents issued in August 2012, Asetek successfully asserted them in a lawsuit against CoolIT Systems Inc.[2]  Asetek also asserted these patents against Cooler Master Co., Ltd., winning a permanent injunction in addition to monetary damages.[3]  Asetek initiated licensing negotiations with AVC in April 2014.  After those failed, AVC filed suit for declaratory judgment of non-infringement and invalidity in September 2014.

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Continue Reading Cooling Technology Competitor Suit Winds Down

Two orders recently issued regarding whether district court litigation should be stayed pending inter partes review.  In both cases, the IPR petition had been filed recently, and the institution decision had not yet issued—but the results could not have been more different.  Judge Tigar granted a stay in Uniloc USA, Inc. v. LG Electronics U.S.A. Inc. (Case No. 3:18-cv-06739, “Uniloc”).  Two floors down, Judge Orrick went the other way in J & K IP Assets, LLC v. Armaspec, Inc. (Case No. 3:17-cv-07308, “J & K”).
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Continue Reading Stays Pending IPR: The State of Discovery is Paramount

Defendant Shine Bathrooms had already been hit with an order for default judgment and double damages in a patent case brought by Robern, Inc.  And the hits keep coming for Shine, as it was recently ordered to pay over $250,000 in attorneys’ fees under the “exceptional case” standard of 35 U.S.C. § 285.

Notably, Judge Seeborg awarded attorneys’ fees even though there had been no explicit finding of willfulness.  The opinion explains the relationship between willfulness and exceptional case fees: a finding of willfulness is “a sufficient basis” for awarding exceptional case attorneys’ fees, and “when a trial court denies attorney fees in spite of a finding of willful infringement, the court must explain why the case is not ‘exceptional.’”[1]  An express finding of willfulness is not an absolute prerequisite, however.  In Shine’s case, even though there had not been an explicit finding of willfulness in the order for default judgement, “most of the factors relevant to awarding enhanced damages—including those related to willfulness—weighed heavily against defendant.”[2]

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Continue Reading Half-Hearted Defense Resulted in High Attorneys’ Fees Award Following Default Judgment

The BRAF gene helps human cells produce enzymes for cellular metabolism and growth.  Mutated BRAF genes contribute to the proliferation of cancer cells.  In 2005, Plaintiff Plexxicon Inc. began making compounds that reduce the growth of cancer cells that have the mutated BRAF gene.[1]  The core compound, vemurafenib, was tested in patients with metastatic melanoma with results such as those illustrated in the before-and-after picture shown at right.[2]  Vemurafenib, sold under the brand name Zelboraf®, was approved in 99 countries and enjoyed worldwide sales of over $1.5 billion by 2017.[3]  Plexxicon received U.S. Patent No. 9,469,640 for the compound’s core molecular structure.
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Continue Reading HIGHLY CONFIDENTIAL-AEO Designation Ruled Adequate Protection for Non-Parties

In early 2018, Simpson Strong-Tie Company, Inc. (“Simpson”) filed a declaratory judgement action against Defendant-Patentee OZ-Post International, LLC (“OZCO”).  Simpson had received a “demand letter” from OZCO that identified Simpson’s Outdoor Accents structural wood screw and hex-head washer ([1], [2]):

 

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Continue Reading Patentee Allowed to Amend Infringement Contentions, but Must Pay for “Honest Mistake”

It is a “well-established rule that suits against alien defendants are outside the operation of the federal venue laws.”[1] Judge Gilliam stopped a declaratory judgment plaintiff’s attempt to initiate a parallel lawsuit in California when only the plaintiff’s foreign parent was sued in Texas.

AU Optronics Corporation (“AUO”) was formed in 2001 in Taiwan when Acer Display Technology, Inc. merged with Unipac Optoelectronics Corporation.  In 2002, AUO was listed at the New York Stock Exchange, becoming the first manufacturer of pure TFT-LCDs to do so.

Plaintiff AU Optronics Corporation America (“AUO USA”) has a principal place of business in California. Before AUO USA filed its declaratory judgment action in the Northern District of California, Defendant Vista Peak Ventures, LLC (“Vista Peak”) had filed three lawsuits against AUO USA’s foreign parent corporation in the Eastern District of Texas alleging patent infringement. None of the Texas lawsuits named AUO USA as a defendant.

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Continue Reading One Thing That TC Heartland Didn’t Change: The Alien-Venue Rule