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In this issue: Second Magistrate Judge selected; Judge Sleet dismisses ANDA lawsuit; Judge Farnan case management ruling post-KSR; Judge Robinson upholds stent verdict; recent jury verdicts, Markman hearings and new patent infringement suits filed. Assistant United States Attorney Selected As Second Magistrate Judge The Court recently announced the selection of Leonard P. Stark to serve as a second Magistrate Judge for the District of Delaware, along with current Magistrate Judge Mary Pat Thynge. Mr. Stark has been an Assistant United States Attorney for the District of Delaware since 2002. He received his law degree from Yale Law School in 1996, and also earned a Ph.D. from Oxford University as a Rhodes Scholar after receiving bachelor’s and master’s degrees from the University of Delaware. Following law school, Mr. Stark clerked for Judge Walter K. Stapleton of the U.S. Court of Appeals for the Third Circuit and worked as an associate at Skadden Arps in Wilmington. Judge Sleet Holds That ANDA Filer Is Not Entitled To Keep Infringement Lawsuit Alive In The Face Of A Covenant Not To Sue And Cannot Assert Antitrust Counterclaims Merck & Co. v. Apotex, Inc., C.A. No. 06-230-GMS (May 21, 2007) Merck filed a patent infringement action under the Hatch-Waxman Act based on Apotex’s Paragraph IV letter stating its intention to market a generic version of Merck’s Fosamax® drug. After being given further information about Apotex’s generic, Merck gave Apotex a covenant not to sue and sought to dismiss the action with prejudice for lack of subject matter jurisdiction. Apotex opposed, arguing that a dismissal would deny it a “triggering event” under the Hatch Waxman Act, which it needed because it was not the first ANDA filer to be sued, and thereby delay its entry into the market. Granting Merck’s motion to dismiss, Judge Sleet held that there was no justiciable controversy and that Merck’s covenant not to sue “removes any cause for concern that Apotex could be held liable for infringement,” distinguishing the case from Teva v. Novartis, 482 F.3d 1330 (Fed. Cir. 2007). Judge Sleet further noted that “as unfortunate as it may be for Apotex, this is the framework that the Hatch-Waxman Act created.” Judge Sleet also rejected Apotex’s argument that dismissal would impede “its right to compete with Merck for want of a ‘triggering event,’” and denied Apotex’s motion to add an antitrust counterclaim on grounds of futility because it failed to establish antitrust injury. Judge Sleet noted that “not every business disadvantage is appropriately deemed legal injury” and “[t]he existing law does not provide an absolute right of a generic drug company to enter the market in which a pioneer drug company and a first-filing generic applicant have legally achieved some market exclusivity.” Morris Nichols is co-counsel for Merck. Judge Farnan Denies Request To Delay Trial Because Of KSR Decision Bridgestone Sports Co. v. Acushnet Co., C.A. No. 05-132-JJF (May 22, 2007) Bridgestone sued Acushnet for patent infringement. Shortly after the Supreme Court decision in KSR Int’l Co. v. Teleflex Inc., 550 U.S. __ (April 30, 2007), and six weeks before trial was scheduled to begin, Acushnet moved to modify its expert reports and summary judgment briefing to assert obviousness under the KSR standard, and to delay trial to permit the modifications. Judge Farnan denied the request, stating that the newly announced standard should be applied to the obviousness contentions already developed by the parties. Morris Nichols is co-counsel for Bridgestone. Judge Robinson Upholds Verdict And Rejects Inequitable Conduct Defense Following Stent Trial Advanced Cardiovascular Sys., Inc. v. Medtronic Vascular, Inc., C.A. No. 98-80-SLR (March 30, 2007) A jury found that several ACS patents related to coronary stents were valid and infringed. Medtronic moved for JMOL and a new trial. Judge Robinson denied the motions, affirming the Court’s earlier claim construction and its exclusion of several witnesses’ testimony on obviousness. Judge Robinson also held a two-day bench trial on Medtronic’s inequitable conduct defense. She held that a prior art patent application was material prior art, but that it was cumulative to prior art that was disclosed. As a result, she did not address intent to deceive, and rejected Medtronic’s inequitable conduct defense. Morris Nichols is co-counsel for Medtronic. Jury Verdicts and Markman Hearings Since March 2007, there have been jury verdicts in two patent infringement trials in the District of Delaware. Both were for the patentees. There have been Markman hearings or decisions in at least seven cases during that time. The following cases were filed since March 14, 2007:
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