John C. Lifland

This case involved a patent infringement dispute in which Mars, Inc. had already been awarded $14,376,062 in damages based on a 7% reasonable royalty for Coin Acceptors, Inc.'s infringement of two Mars patents. The court addressed Mars's request for prejudgment interest on that award, rejecting Coinco's arguments that interest should be denied due to the case's complexity, the length of litigation, or other factors. The court held that prejudgment interest is required under 35 U.S.C. § 284 to fully compensate the patent owner for the lost use of money from the time of infringement, following Supreme Court precedent in General Motors Corp. v. Devex Corp. and Federal Circuit guidance that the strength of the infringer's challenge or litigation delays not caused by the plaintiff are not grounds for denial. It decided the interest should be calculated at the 52-week Treasury Bill rate, compounded annually, accruing from the dates when hypothetical royalty payments would have been made, resulting in an additional award of $12,429,088 and a total judgment of $26,805,150.

business & regulatoryprocedure

This case concerns an application by the prevailing plaintiffs for an award of attorneys’ fees and expenses under California Code of Civil Procedure § 1021.5 following a prior ruling that the 25 California-citizen plaintiffs were entitled to such fees from defendant DaimlerChrysler. The plaintiffs sought approximately $11.46 million based on over 6,350 hours of work by four law firms, a lodestar of about $3.23 million, and a requested multiplier of 3.5, while the defendant contended that only about $95,000 was reasonable. Applying the lodestar adjustment method, the court first determined reasonable hours and prevailing hourly rates to calculate the lodestar, then adjusted it with a multiplier after considering factors such as the contingent nature of the representation, results achieved, and time spent on fee litigation versus merits work. The court ultimately awarded a total of $4,654,433.14 in fees and expenses after reducing claimed hours for work not directly advancing the relief obtained and applying a multiplier of 2.0 to the merits portion and 1.0 to the fee portion of the lodestar.

procedure

In this case, Coin Acceptors, Inc. (Coinco) counterclaimed against Mars, Inc. for contributory and induced infringement of Claims 13 and 16 of U.S. Patent No. 4,034,839, which covers a vending machine control circuit with specific elements including a price accumulator and vend price establishing devices. Mars sold coin changers for use in certain vending machines, but Coinco did not allege direct infringement because the full claims require elements present only in the completed vending machines. The court construed claim limitation [c.3] to require a one-to-one relationship between selection switches and vend price establishing devices, based on the claim language, patent figure, and lack of contrary evidence from Coinco. Because Mars' accused changers lacked this relationship, the court held there was no direct infringement and therefore no contributory or induced infringement of the claims. Claim 16, being dependent on Claim 13, was also not infringed.

business & regulatoryprocedure

This case involved a patent infringement dispute between Mars, Inc. and Coin Acceptors, Inc. (Coinco) over Coinco's U.S. Patent No. 4,254,857, which covers a metal detection device using oscillating circuits and timed bursts to identify coins in coin acceptors. Mars's TRC series coin changers were accused of infringing claims 1-3, 5, and 9 through their coin tube sensors that measure the height of stacked coins. The court construed the patent claims and held that there was no literal or equivalent infringement because the accused sensors lack the required "means for positioning" a moving object in the inductor's field and instead test static coin stacks for height, performing a different function than the claimed detector. Dependent claims were also not infringed as a result. The patent had already expired in 1998, so invalidity defenses were not addressed.

business & regulatory

This consolidated Hatch-Waxman patent infringement case involved Ortho-McNeil's U.S. Patent No. 5,336,691, which covers a pharmaceutical composition of tramadol and acetaminophen in a weight ratio of about 1:5 (Claim 6), used in the pain-relief drug Ultracet. Generic manufacturers Kali, Teva/Barr, and others filed ANDAs seeking to market equivalent products and asserted non-infringement and invalidity defenses. The court granted Kali summary judgment of non-infringement, granted Ortho-McNeil summary judgment of infringement against Teva/Barr, denied summary judgment on certain invalidity grounds such as indefiniteness and public use, but granted summary judgment of invalidity to the defendants on Claim 6, finding it anticipated and obvious in light of prior art references disclosing tramadol combinations and routine optimization of ratios for synergistic effects.

business & regulatoryhealthcare

The case involved a counterclaim by Coin Acceptors against Mars for contributory and induced infringement of claims in U.S. Patent No. 3,828,903, which describes a vending machine control circuit using a selection monitor to enable dual-use of electrical lines for selection detection and power transmission. The court decided that Mars' 5900-series coin changers, when used in certain vending machines, do not infringe the asserted claims under the court's claim construction. The reasoning centered on detailed analysis of the patent's embodiments, such as relay and optical isolator selection monitors, claim construction of terms like 'in circuit' and 'selection monitor,' and comparisons showing no infringement; alternatively, the claims were found invalid due to lack of enablement, anticipation, or obviousness based on prior art and disclosure requirements.

business & regulatory

This case involves Pfizer suing Teva for patent infringement regarding U.S. Patent Nos. 5,466,823, 5,563,165, and 5,760,068, which cover celecoxib (the active ingredient in Celebrex), related compounds, pharmaceutical compositions, and methods of use as COX-2 selective anti-inflammatory drugs. The court found that Teva failed to prove by clear and convincing evidence that the patents were invalid or unenforceable on grounds of obviousness, inequitable conduct, violation of the best mode requirement, or obvious-type double patenting. As a result, the court held the patents valid and enforceable and determined that Teva infringed them under 35 U.S.C. § 271(e)(2). The core reasoning examined the development of NSAIDs and COX-2 inhibitors, the sufficiency of prior art and disclosures during prosecution, and Teva's lack of adequate evidence to meet the required standard for invalidity.

business & regulatoryhealthcare

The case involved plaintiffs filing a class-action complaint against Chrysler alleging defects in Bendix 9 and 10 anti-lock braking systems in certain vehicles, asserting claims under the Magnuson-Moss Warranty Act and state common law for fraud and breach of warranties. After Chrysler voluntarily recalled the affected vehicles, ending related NHTSA investigations, and after the court denied class certification, plaintiffs sought attorneys' fees under California Code of Civil Procedure § 1021.5 on the ground that their lawsuit was a catalyst for the recalls. The court decided that plaintiffs were entitled to the fees, concluding that the suit was a material factor motivating Chrysler's remedial actions. The core reasoning relied on evidence of the timing of the litigation relative to Chrysler's internal meetings and decisions, as well as admissions in Chrysler's own documents acknowledging the role of pending class actions.

proceduretorts & liability

This case involves Pfizer's claims that Teva infringed patents covering celecoxib, the active ingredient in Celebrex, and related compounds, compositions, and methods. Pfizer filed a motion in limine to exclude testimony from four of Teva's expert witnesses—an economist, a rheumatologist, an attorney, and a gastroenterologist—arguing that their opinions failed to meet the qualification, reliability, or fit requirements of Federal Rule of Evidence 702. The court applied the Third Circuit's standards for expert testimony and found that most of the proposed testimony rested on sufficient data, established methods, and relevance to issues like commercial success and non-obviousness. It granted the motion only as to certain portions of the rheumatologist's testimony lacking a reliable basis, denied it as moot regarding cardiovascular issues, and denied it in all other respects.

business & regulatoryprocedure

This case is a patent infringement action brought by Pfizer against Teva over U.S. patents covering celecoxib, the active ingredient in Celebrex, and related compounds, compositions, and methods. The specific issue before the court was Teva's in limine motion to exclude evidence of secondary considerations of non-obviousness, such as commercial success, long-felt need, unexpected results, and failure of others, on the ground that the evidence was temporally remote from the date of invention. The court denied the motion, holding that secondary considerations must be considered in the obviousness analysis under Federal Circuit precedent even though they arise after the invention, and that evidence relating to benefits contemplated at the time of invention or otherwise probative under established law remains relevant. The court addressed specific categories of evidence, including medical benefits, licensing, long-felt need, failure of others, and commercial success, rejecting Teva's temporal and other challenges while incorporating prior rulings on related motions.

business & regulatoryprocedure

This case involves Pfizer's suit against Teva for alleged infringement of patents covering celecoxib, the active ingredient in Celebrex, and related compounds, compositions, and methods. Teva filed an in limine motion to bar Pfizer from introducing evidence comparing Celebrex to Vioxx and certain Searle internal compounds (SC-58125 and SC-58236) to show unexpected results rebutting obviousness. The court denied the motion, holding that SC-58125 may qualify as prior art under 35 U.S.C. § 102(g) if Pfizer proves the statutory requirements at trial, and that comparisons to the other compounds are permissible via indirect evidence of superiority over the closest prior art. The reasoning relied on Federal Circuit precedents allowing such indirect comparisons when direct comparison to prior art is impractical or when the non-prior-art compound is structurally closer or functionally equivalent to the relevant prior art reference.

business & regulatoryprocedure

This case is a patent infringement suit brought by Pfizer against Teva over U.S. Patent Nos. 5,466,823, 5,563,165, and 5,760,068, which cover celecoxib (the active ingredient in Celebrex) and related compounds, compositions, and methods. Teva filed an in limine motion to preclude five experts from testifying on secondary considerations of non-obviousness, including failure of other companies to reach market, licensing activity, and safety profiles. Applying Federal Rule of Evidence 702 and the Third Circuit's requirements of qualification, reliability, and fit, the court evaluated whether the proposed testimony was based on sound methodology and relevant to the issues. The court found that using FDA approval and market entry as the benchmark for assessing failure of others was a reliable and appropriate approach given the unmet need addressed by the patents, and it addressed related arguments about additional factors and relevance to specific claims.

business & regulatoryprocedure

This case involved Janssen Pharmaceutica's U.S. Patent No. 4,804,663 claiming the compound risperidone, the active ingredient in its schizophrenia drug Risperdal. Generic drug manufacturers Mylan and DRL, seeking to market generic versions, conceded infringement but argued the patent was invalid as obvious under 35 U.S.C. § 103 and, alternatively for Mylan, unenforceable due to Janssen's alleged inequitable conduct before the PTO. After a bench trial, the court held that the defendants failed to prove obviousness by clear and convincing evidence, as the prior art did not render the specific claimed compounds obvious, and that Mylan failed to prove inequitable conduct. The court therefore concluded the patent was valid and enforceable, resulting in a finding of infringement under 35 U.S.C. § 271(e)(2).

business & regulatoryhealthcare

The case concerns claims by cigar retailer 800-JR Cigar, Inc. against search engine operator GoTo.com, Inc. (now Overture) for trademark infringement, unfair competition, dilution, and related state-law violations arising from GoTo's sale of bids on search terms such as "jr cigar" and variants to JR Cigar's competitors, which affected the ranking of paid search results. JR Cigar sought summary judgment on liability for all counts, while GoTo cross-moved for summary judgment dismissing the claims. The court denied JR Cigar's motion in full and granted GoTo's cross-motion in part and denied it in part, after examining whether GoTo directly used the marks, its role in suggesting terms to advertisers, its relevancy guidelines and editorial processes, and standards for secondary liability under trademark law. The decision turned on application of federal Lanham Act provisions (15 U.S.C. §§ 1114, 1125(a), 1125(c)) and analogous New Jersey statutes to the pay-for-priority search model and the specific facts regarding revenue, advertiser representations, and lack of control over third-party sites.

business & regulatoryprocedure

This case involves a motion for reconsideration in multidistrict patent infringement litigation over the drug gabapentin. Plaintiffs sought to reverse an earlier order disqualifying the law firm Kaye Scholer from representing them because two of its attorneys had previously worked on a joint defense agreement for one of the defendants while at another firm, creating an imputed conflict under professional conduct rules. The court denied the motion, finding that the attorneys' receipt of confidential information and the resulting fiduciary obligations outweighed the plaintiffs' interest in selecting their preferred counsel. It noted that the plaintiffs had access to other qualified firms without conflicts and that strict application of ethics rules supports public confidence in the profession. Other arguments for reconsideration were rejected as not meeting the standard of overlooked controlling facts or law.

business & regulatoryprocedure

This case involved a motion by First-Wave Defendants in a multidistrict patent infringement action to disqualify the law firm Kaye Scholer LLP from representing plaintiff Pfizer, based on the recent hiring of two attorneys who had previously represented defendant Ivax in the same litigation while at another firm. The court granted the motion and barred Kaye Scholer from appearing for plaintiffs. The attorneys had primary responsibility for Ivax's defense, participated in joint defense meetings, and gained access to confidential work-product and privileged information shared among all First-Wave Defendants under a joint defense agreement. This prior representation created an imputed conflict under New Jersey Rule of Professional Conduct 1.10(c) that could not be cured by screening or waivers limited to Ivax, as the matter was the same proceeding and no waivers were obtained from the other defendants.

procedurebusiness & regulatory

The case concerned a patent infringement suit by Warner-Lambert against generic drug manufacturers over U.S. Patent No. 6,054,482, which claims processes and compositions for producing stable gabapentin containing less than 20 ppm of mineral acid anions to prevent formation of a toxic byproduct. Defendants moved for summary judgment to invalidate the patent claims as indefinite under 35 U.S.C. § 112, ¶ 2, citing alleged ambiguity in the 20 ppm limitation relative to prior art and measurement methods. The court denied the motion, holding that the claim language sets a defined range outside the cited prior art example of 22 ppm and that any measurability limitations do not render the claims indefinite.

business & regulatoryhealthcareprocedure

In this patent infringement case, Warner-Lambert sued Purepac alleging that Purepac's gabapentin products infringed U.S. Patent No. 6,054,482, which covers stable pharmaceutical compositions of gabapentin containing less than 20 ppm of an anion of a mineral acid to prevent formation of toxic lactam. Purepac moved for summary judgment of noninfringement, arguing its products did not meet the patent's limitations under the doctrine of equivalents. The court denied the motion, first construing the claim term "anion of a mineral acid" to mean chlorides derived from mineral acids (such as hydrochloric acid) rather than total chloride content, and then finding that Purepac had not shown its products fell outside the claims under that construction.

business & regulatoryprocedure

The case involved Warner-Lambert (Pfizer) suing Teva Pharmaceuticals for alleged infringement of U.S. Patent No. 6,054,482, which covers stable pharmaceutical compositions of gabapentin in anhydrous crystalline form with limited lactam impurity and specific adjuvants that do not promote lactam formation during storage. Teva moved for summary judgment of noninfringement on claims 7-11, arguing that its formulations used adjuvants excluded by the patent, such as titanium dioxide. The court denied the motion, construing the claims to focus on the functional limitations of adjuvants in the claimed compositions and finding that Teva's use of certain ingredients, particularly as colorants, did not necessarily place its products outside the patent's scope as a matter of law. The decision rested on the patent's specification distinguishing between adjuvants that promote or do not promote lactam conversion and the requirement for a genuine issue of material fact regarding infringement.

business & regulatorypropertyhealthcare

Warner-Lambert sued multiple generic drug manufacturers for infringing U.S. Patent No. 6,054,482, which claims processes and compositions for stable gabapentin containing less than 20 ppm of an anion of a mineral acid to prevent formation of toxic lactam. The defendants jointly moved for summary judgment of noninfringement. The court granted the motion, concluding that Warner-Lambert could not prove literal infringement and was barred by prosecution history estoppel from asserting infringement under the doctrine of equivalents for the 20 ppm limitation.

business & regulatoryprocedurehealthcare