WilmerHale Intellectual Property Litigation Experience Report 2013

WilmerHale Intellectual Property Litigation Experience Report 2013


In February 2013, the Federal Circuit issued a favorable decision on behalf of our client Cephalon, reversing a district court decision invalidating two patents covering the company's cancer pain medication Fentora. In particular, the Federal Circuit found that the defendant, generic drug manufacturer Watson Pharmaceuticals (now Actavis), "failed as a matter of law to show with clear and convincing evidence that Cephalon's patents require undue experimentation to practice the invention." The court's precedential opinion, written by Judge Wallach and joined by Judges Bryson and Reyna, provides a useful description of the law of enablement, including a very detailed discussion of what is and is not enough to show undue experimentation. The Court also held that there is NO burden-shifting framework when addressing the issue of enablement.

In February 2013, WilmerHale obtained a significant victory for Becton, Dickinson and Company (BD) in a patent reexamination when the US Patent and Trademark Office (PTO) denied a request for rehearing of an appeal decision in an inter partes reexamination, which had been decided in a manner favorable to BD. This case is the first time BD had used inter partes reexamination as a strategic IP procedure to assure freedom to operate in their desired syringe market.

The case began in 2010 when BD performed a freedom to operate search for a significant new catheter product to be launched called Insyte Autoguard BC and identified a patent with claims relevant to the proposed new product. BD's discussions with the patent owner, Mr. Vaillancourt, showed that his expectations for a license were beyond what BD thought the patent was worth. When further licensing talks proved unproductive, WilmerHale on behalf of BD requested an inter partes reexamination at the PTO. Tracking closely to the grounds of invalidity identified by WilmerHale, the PTO ordered reexamination of the patent and rejected all of the claims. Mr. Vaillancourt's continued arguments to the PTO proved unsuccessful, so he then appealed the PTO Board of Appeals in April 2011. While the case was on appeal, with all the claims rejected, Mr. Vaillancourt transferred ownership of the patent to VLV, and then filed an infringement suit in New Jersey. WilmerHale was able to get an administrative stay of the litigation because all of the claims were rejected and on appeal at the PTO. On June 29, 2012 the Board of Patent Appeals affirmed the examiner's rejection of the claims. VLV then requested a rehearing before the Board alleging that there were errors in the Board’s decision, which led to the February 2013 decision in BD’s favor.

On April 3, 2013, Mr. Vaillancourt filed an appeal at the Federal Circuit without naming VLV, the patent owner, as the appellant. WilmerHale drafted a motion to dismiss as well as an argument in the Reply brief that the appeal should be dismissed because Mr. Vaillancourt was not the patent owner and thus did not have standing to bring the appeal. On April 24, 2014 the Federal Circuit agreed and dismissed Mr. Vaillancourt's appeal. Mr. Vaillancourt's request for rehearing en banc is currently pending.

2:12-cv-06643-GAF-PLA, US District Court, Central District of California
In April 2013, the firm achieved victory when Judge Gary Allen Feess of the Central District of California dismissed Classen Immunotherapies, Inc.'s ("Classen") patent infringement claims against our client Somaxon Pharmaceuticals with prejudice. The two asserted Classen patents purport to claim methods of gathering, analyzing, and commercializing adverse event data. The Court dismissed Classen's claims on the grounds that Somaxon's collection and analysis of clinical data for its insomnia medication Silenor® fell within the "safe harbor" of 35 U.S.C. § 271(e)(1), which does not permit infringement suits for activities that are reasonably related to submission of information to the Food and Drug Administration. The Court also credited Somaxon's arguments that Classen could not prove infringement of its claimed methods by improperly conflating the proof required to demonstrate infringement under 35 U.S.C. § 271 with proof required to obtain a provisional patent rights remedy under 35 U.S.C. § 154(d).

In May 2013, WilmerHale secured a victory for client Precision BioSciences, Inc., a leader in the field of genome engineering, in a patent infringement lawsuit against Cellectis SA. A jury found that all of the claims of Cellectis’ US Pat. No. 7,897,372 (the "'372 patent") that were asserted against Precision are invalid both as obvious and for failure to meet the written description requirement and that Precision did not literally infringe the asserted claims. This litigation was the third infringement action brought by Cellectis against Precision since 2008. To date, every patent claim asserted by Cellectis against Precision has been (a) held invalid by a US District Court judge, (b) found invalid by a jury in a US District Court trial, (c) held invalid by the US Patent and Trademark Office, or (d) dismissed by Cellectis in the relevant litigation.

3:11-cv-01341, US District Court, District of New Jersey
In June 2013, WilmerHale obtained a favorable final judgment in the US District Court for the District of New Jersey for Braintree Laboratories, Inc. (Braintree) in its patent infringement case against Novel Laboratories (Novel). The matter involved SUPREP ®—Braintree's small volume sulfate-based colonoscopy preparation product—and Novel's proposed plan to make a generic version of the drug.

Braintree, a privately owned pharmaceutical company, sued Novel for patent infringement in March 2011 after it received a Paragraph IV letter. Following a six-day bench trial in February 2013, Judge Peter Sheridan found that Novel had not proven by clear and convincing evidence that the asserted claims of the patent at issue, US Patent No. 6,946,149, are invalid for obviousness, anticipation, or indefiniteness. In his opinion, Judge Sheridan evaluated over 15 pieces of prior art asserted by Novel and concluded that Braintree's expert was more credible than Novel’s expert in explaining why the asserted claims were neither anticipated nor obvious. The Court had earlier entered summary judgment for Braintree on its infringement claim and dismissed Novel’s counterclaims. Injunctions implementing the Court's rulings were entered on June 19. The judgment is currently on appeal to the Court of Appeals for the Federal Circuit.

In June 2013, our client Pfizer (formerly Wyeth) announced a $2.15 billion settlement with Teva Pharmaceuticals Industries and Sun Pharmaceutical Industries, which occurred during the trial of Pfizer's and Nycomed's (formerly Altana Pharma AG, and now part of Takeda) claims for patent-infringement damages resulting from Teva's and Sun's "at-risk" launches of generic Protonix® in the United States. The settlement of the damages claims came after a nearly 10-year legal battle in which Pfizer and Nycomed sought to enforce the patent covering Pfizer’s blockbuster acid reflux medicine. Prior to the damages trial, Teva and Sun admitted to infringing the patent, and the patent was held not invalid in a 2010 jury trial on liability issues.

In July 2013, WilmerHale obtained a zero-dollar walk away settlement on behalf of our client Intel in a patent infringement suit brought by Microlinc, a patent troll, in the Eastern District of Texas. After eight years of litigation, four patent reexaminations, four judges, two lawsuits, and one decisive Markman order, we obtained a statement in the stipulation of dismissal that Microlinc was unable to assert any infringement based on the Court’s claim construction.

In July 2013, we obtained a significant victory for Research In Motion (now known as BlackBerry) against non-practicing entity St. Clair Intellectual Property Consultants, Inc. when the Federal Circuit summarily affirmed the district court's summary judgment of non-infringement in RIM's favor. The decision from the Court of Appeals brought to an end a decade-long litigation campaign by St. Clair in which it had won over $100 million in jury verdicts and settlements.

WilmerHale recently achieved a significant victory for client Permobil, Inc. in defense of claims of patent infringement asserted by Pride Mobility Products Corp. in the US District Court for the Eastern District of Pennsylvania. In April 2013, Pride filed suit against Permobil alleging infringement of certain claims of Pride's US Patent No. 8,408,343 (the "'343 patent") and US Patent No. 8,408,598 (the "'598 patent"), which relate to an anti-tip system for a power wheelchair. In response, we filed petitions for inter partes review of the '343 and '598 patents with the US Patent and Trademark Office (PTO), citing numerous prior art references and arguing that these references show that the claims of the '343 and '598 patents are not patentable, and that Pride did not invent the subject matter claimed therein. In August 2013, the district court issued an order granting Permobil’s motion to stay litigation pending the conclusion of the PTO's inter partes review of the '343 and '598 patents.

We achieved a complete victory for our client, Verizon, as the direct result of an extremely favorable claim construction in a large, multi-defendant patent litigation in the Southern District of New York. The plaintiff in the litigation was Richard Williamson, in his capacity as Trustee for the @Home Bondholders' Liquidating Trust. One of the key assets of the bankrupt company was a series of patents directed to the high-speed delivery of media content over existing cable TV systems through the use of hierarchical caching, multicasting, and the customization of regional content. In an effort to maximize the assets for the bondholders from the liquidated company, the Trustee in bankruptcy ultimately commenced a series of patent infringement litigations asserting the @Home patents. The accused product and services for Verizon encompassed its entire FiOS network, with revenues approaching $20 billion, and a "reasonable royalty" figure of nearly $600 million. In mid-August 2013, Judge Swain issued her claim construction ruling, and we achieved a clean sweep: the Judge adopted the defendants' proposed construction on each of the disputed seven terms. The case settled on terms very favorable to Verizon.

On April 2012, W.L. Gore & Associates, Inc. filed suit against our client Atrium Medical Corporation in the US District Court for the District of Arizona, asserting three patents related to stents covered with expanded polytetrafluoroethylene (ePTFE). During its previous litigation against Medtronic, Gore's counsel successfully persuaded the district court to adopt several claim constructions that were favorable for Atrium. In this case, Gore, represented by different counsel, tried to walk away from those positions. At the Markman tutorial and hearing presentations on July 9 and 26, 2013, Atrium argued that Gore's successful representations to the court in the Medtronic case judicially estopped Gore from taking different positions in this case. Atrium also argued for broad constructions of its own asserted patents. Just before Judge Teilborg was expected to issue its his Markman opinion, Gore settled favorably with our client, for an amount considerably less than its original demand. A written agreement was finalized and a stipulation of dismissal with prejudice was filed on October 8, 2013.

In October 2013, a jury in SDNY returned a verdict in favor of our client Kodak, resulting in a damages award of $75.8 million. Prior to trial, the Kodak team obtained summary judgment that Ricoh owed royalties on point and shoot cameras. On the eve of trial, Ricoh stipulated to $53 million in damages on point and shoot cameras. That left one issue to be tried—whether Ricoh also owed royalties on Digital Single Lens Reflex ("DSLR") camera bodies sold in the same box as a DSLR lens. On that issue, the jury found in Kodak's favor, increasing the damages by $22.8 million.

In October 2013, we achieved a victory for client Broadcom when the Federal Circuit affirmed the district court's issuance of a permanent injunction against Emulex and underlying findings of infringement and validity of Broadcom's '150 patent, which relates to high-speed network communication circuitry. Writing for a unanimous panel, Chief Judge Rader rejected each of Emulex's arguments and concluded that the permanent injunction represented "an exemplary exercise of discretion in crafting a tailored equitable remedy." Broadcom Corp. v. Emulex Corp., 732 F.3d 1325, 1139 (Fed. Cir. 2013). In addition to the proceedings on the '150 patent, Emulex paid Broadcom $58 million in July 2012 to settle several other claims raised at trial.