The jury reached a verdict on Wednesday in this litigation involving holographic printing patents. After Rolling Optics suffering a series of setbacks in orders leading up to the trial, the jury determined that Rolling Optics actively induced infringement on all of the accused products, which were imported into the United States by third parties, that Crane had provided actual notice of the infringement in April 2010, and that the infringement was willful. The jury further found that none of the asserted claims were invalid over the prior art admitted at trial, and that the on-sale bar did not apply to any of the claims. Finally, damages were pegged at $119,186. Defenses based on inequitable conduct were previously bifurcated, and remain to be determined.
Judge Sorokin precluded Rolling Optics from offering testimony that certain asserted claims are invalid. Defendants did not offer expert opinion that the claims were anticipated by Rowland Technologies patents or products, but sought to elicit non-expert fact testimony from a Rowland representative. The Court determined that the technology at issue (described briefly here) was too complicated for a jury to understand without expert assistance, and precluded Rolling Optics from presenting any evidence, opinions or argument to the jury on the Rowland technology. This case is in its fourth day of trial, so I expect to see more from this courtroom.
Judge Young issued findings of fact, rulings of law, and an order for judgment following the bench trial in this litigation involving Abhai’s Abbreviated New Drug Application for a generic version of the extended-release ADHD drug Adderall XR. Judge Young found Abhai infringed Shire’s RE42,096 and RE41,148 patents, and that the patents were valid. He also determined that Abhai had conducted litigation misconduct in failing to reveal errors in its stability dissolution testing or supplement its discovery responses with the corrected data in a timely fashion. Abhai’s 30(b)(6) witness, Dr. Namburi, was deposed in October, 2016, and was questioned at length about the dissolution data, showing how much drug dissolved over time. This questioning triggered concerns in Dr. Namburi’s mind over the veracity of the test results (and thus of his testimony). Over the next several days, he and others at Abhai determined that the testing was conducted improperly, as a result of ambiguities in the written protocol Abhai was using. By the end of the month, the protocols had been revised and the samples retested. Abhai withheld this revised protocol in discovery responses made in November, and Dr. Namburi did not make note of this error when signing an errata report for his deposition that month. Abhai also failed to supplement its prior discovery responses to include the revised protocol or new test data, apparently because no one at Abhai informed Abhai’s attorneys of these errors. Abhai’s attorneys were not notified until March 31, 2017, of the mistakes; the notified the court (and, for the first time, the FDA) the following business day, after five trial days had occurred. Judge Young determined that Dr. Namburi knew of the importance of the dissolution data to the case, as he was central in assisting Abhai’s attorneys in preparing for the trial, and that as a member of Abhai’s management, his actions were attributable to the company as a whole. Judge Young ordered sanctions in the form of attorney’s fees for time Shire spent dealing with the inaccurate data and other alleged litigation misconduct, and for dealing with the revised dissolution data that Abhai sought to introduce mid-trial. He further sanctioned Abhai $30,000 to be paid to the court as a sanction for wasting five days of the court’s valuable time and resources. Finally, he ordered the clerk to send a certified copy of his opinion to the General Counsel of the FDA for their further consideration.
Milk Street Cafe, a café and catering business located on Milk Street in Boston, sued CPK Media when the latter opened the “Craig Kimball’s Milk Street Kitchen” (they have since dropped the word “Kitchen”), a cooking school also located on Milk Street. Judge Casper last year denied Milk Street Café’s motion for preliminary injunction, finding it had not shown a reasonable likelihood of success. After a bench trial, the court concluded that the defendant had rebutted the presumption of secondary meaning that came with the registration of the mark “Milk Street Café,” based largely on the fact that only the defendant offered consumer survey evidence on this issue. The court also determined that there was no likelihood of confusion, in part because the only real similarity of the marks was the phrase “Milk Street” in which Milk Street Café had no trademark rights and because the goods and services – breakfast and lunch restaurant and corporate catering by Milk Street Café versus cooking demonstrations and classes by the defendant – were not similar. Judge Casper found no trademark infringement, no false association, and no unfair competition. He did, however, refuse to cancel Milk Street Café’s trademark registration, finding the defendant had not shown that it would be damaged by the continued registration of the mark.
Judge Zobel entered final judgment in accordance with the December 14, 2016 jury verdict and her April 24, 2017 Order. The final judgment included:
- direct and indirect willful infringement of U.S. Patent 5,229,137;
- ‘137 patent valid over the prior art of record;
- Perrigo was not entitled to a laches defense because plaintiffs knew or should have known of infringement only as of August 2008, too recent for laches to apply;
- Damages of $10,210,071;
- Attorneys’ fees were not awarded, as the defense, while not successful, was not frivolous or vexatious, as Perrigo had investigated infringement and invalidity before filing its ANDA application ad Brigham’s corporate witness testified that it did not immediately bring suit for fear of losing royalties should the claims be found invalid; and
- Enhanced damages would not be applied, despite the jury’s finding of willfulness, in part because the awarded damages were at the high end of those sought.
Judge Zobel’s April order was interesting in that she found that final judgment had previously been entered, triggering the timelines of Fed R. 50(b) and 59(e), which could not be expanded by the district court, despite her having granted a joint motion to extend the deadline. Thus, Perrigo’s renewed motion for judgment as a matter of law was not timely filed, and its notice of appeal was also late.
A jury verdict was reach in the case of Koninklijke Philips Electronics N.V. v. Zoll Medical Corp. The jury awarded Philips $8,900,000 as a reasonable royalty for infringement of the ‘374 patent and $1,500,000 for infringement of the ‘454 and ‘905 patents, but also awarded Zoll $3,300,000 for Philips’ infringement of Zoll’s ‘526 and ‘187 patents. Neither side was found to willfully infringe.