Attorney Argument to PTO May Constitute Inequitable Conduct

In a recent memorandum order, District Judge Sue L. Robinson summarily rejected a request to jettison a party’s inequitable conduct defense. Recognizing that “arguments made to the PTO can form the basis for inequitable conduct defenses under certain circumstances,” the court denied a motion to dismiss without prejudice to renew. At least at the motionContinue reading “Attorney Argument to PTO May Constitute Inequitable Conduct”

Decision Clears Way for Four New Stent Cases to Go Forward

In the ongoing battle between Boston Scientific Corporation, Johnson & Johnson Inc. and Cordis Corporation, the District of Delaware recently handed BSC a victory, allowing it to proceed in four declaratory judgment actions each seeking a judgment on invalidity on one of four patents related to drug-eluting coronary stent technology. Boston Scientific Corporation v. JohnsonContinue reading “Decision Clears Way for Four New Stent Cases to Go Forward”

Delaware Judge Examines, Then Defers, Separate Patentability Argument

An accused device infringes under the doctrine of equivalents when, among others, the alleged equivalent represents an “insubstantial” change from the claim language. Uncertainty arises, however, when the equivalent is itself patented. Would a finding of equivalence amount to a declaration that the patent covering the accused device is invalid? Perhaps to avoid this outcome,Continue reading “Delaware Judge Examines, Then Defers, Separate Patentability Argument”

Judge Robinson Sanctions Violation of Model Rule 4.2

Microsoft Corp. v. Alcatel Bus. Sys., C.A. No. 07-090 (D. Del. Dec. 18, 2007). This case dealt with a violation of Model Rule of Professional Conduct 4.2 by two attorneys from a prominent national firm. The attorneys purchased, on the open market, an Alcatel Communications System that contained certain features at issue in the patentContinue reading “Judge Robinson Sanctions Violation of Model Rule 4.2”

Admitting Evidence of Commercial Success After KSR

As part of the “broad inquiry” into obviousness mandated by the Supreme Court in KSR v. Teleflex, commentators have speculated over the continuing viability of so-called “secondary considerations.” Some commentators predict that such considerations are now “elevated in importance.” Others question the rubric’s continuing relevance, specifically pointing to the Federal Circuit’s treatment of a caseContinue reading “Admitting Evidence of Commercial Success After KSR”

Declaratory-Judgment Plaintiff Not “True” Plaintiff Under First-Filed Rule

One party files an infringement action at 12:01 a.m. in New Jersey. Also at 12:01 a.m., the infringement defendant, precluded from lodging its Delaware declaratory-judgment action by a local rule requiring paper filing of complaints, files instead a motion to consolidate the forthcoming declaratory-judgment action with an earlier-filed action. Under the first-filed rule, which actionContinue reading “Declaratory-Judgment Plaintiff Not “True” Plaintiff Under First-Filed Rule”

Court finds PTO’s findings with regard to contractual obligations not controlling

Can a dispute resolution provision in a contract between two parties that states that “any dispute arising out of or relating to patents” shall be resolved through negotiations and mediation and should mediation fail to reach a result, either party may institute legal proceedings “but only in the United States District Court of Delaware, andContinue reading “Court finds PTO’s findings with regard to contractual obligations not controlling”

Misrepresentations in Expert Report Lead to Exclusion of Evidence

An expert witness represents in his expert report that he/she “personally directed” testing and that he/she “prepared and tested” the product when in fact the testing was actually done by personnel of the defendant — what happens with the evidence? Based on a recent ruling by Judge Robinson in Callaway Golf Company v. Acushnet Company,Continue reading “Misrepresentations in Expert Report Lead to Exclusion of Evidence”

“Claim Domination” and Double-Patenting

In the statutory double-patenting context, claim domination arises where one patent’s claim reads on an invention defined by a more specific claim in another patent. The former dominates the latter because the narrow claim cannot be practiced without infringing the broader claim. Although domination is not per se double-patenting, the doctrine does have its boundaries:Continue reading ““Claim Domination” and Double-Patenting”

Mapping Antitrust Remedies in the District of Delaware

Ever since the early seventeenth century, when Lord Coke condemned a playing-card patent for reducing those in the subject trade to “idleness and beggary,” the judiciary has been charged with discerning the line between property rights and monopoly. So for patent practitioners, an antitrust decision, even if outside Title 35’s domain, is worth noting. DelawareContinue reading “Mapping Antitrust Remedies in the District of Delaware”