IP Law Daily, WORTH NOTING—Other IP law developments, (Aug 15, 2016)

A periodic roundup of other items of interest to the Intellectual Property community:

PATENT—N.D. Cal.: The primary purpose behind 35 U.S.C. § 285: to compensate defendants who are forced to incur significant expenses in the defense of cases that never should have been brought in the first place, required the conclusion that the patent infringement case over Merck’s U.S. Patents Nos. 7,105,499 (the “’499 patent”) and 8,481,712 (the “’712 patent”) related to a drug used to treat chronic Hepatitis C infection in patients is exceptional, the federal district court in San Jose ruled on Friday. Thus, Gilead was entitled to relief from its hefty attorney fee obligation incurred in the dispute and the parties were directed to submit a briefing schedule to the court for the award of attorney fees. The court’s ruling on fees comes after its June 2016 decision that, based on Merck’s numerous unconscionable acts, including lying, unethical business conduct, and litigation misconduct, the doctrine of unclean hands barred Merck from asserting the ’499 and ’712 Patents against Gilead (Gilead Sciences, Inc. v. Merck & Co., Inc., August 11, 2016, Freeman, B.).

PATENT—D. Del.: The federal district court in Wilmington, Delaware, possessed specific personal jurisdiction over Mylan Laboratories Ltd. ("MLL"), and Mylan Pharmaceuticals ("MPI") for purposes of a Pfizer and Wyeth’s suit alleging infringement of three patents related to its injectable antibiotic product TYGACIL. Further, the court permitted jurisdictional discovery for purposes of determining if an agency relationship exists between MLL, Mylan Inc., and Mylan N.V, thus conferring personal jurisdiction over those two entities. The defendants' motion to dismiss for lack of personal jurisdiction and improper venue was denied (Pfizer Inc. v. Mylan Inc., August 12, 2016, Robinson, S.).

COPYRIGHT—W.D. Wis.: Flora, Inc.’s motion to dismiss plaintiff Amy Lee Sullivan’s amended complaint alleging that Flora violated 17 U.S.C. § 101 by improperly using plaintiff’s copyrighted materials was denied. Flora contended that Sullivan’s failure to join Designomotion, Inc., and Eva Kao, who were named as defendants in plaintiff’s original complaint but then were voluntarily dismissed without prejudice, required dismissal because Sullivan created the materials in dispute jointly with these two other parties and those parties were required to determine actual ownership of the materials. The federal district court in Madison, Wisconsin, disagreed. Flora relied heavily on allegations contained in plaintiff’s original complaint, but dropped from her amended complaint, which alleged that Designomotion and Kao both improperly claimed an ownership interest in her materials. However, a since withdrawn allegation of ownership is not enough to establish that either company claimed interest in copyrighted materials. The court was unpersuaded that these dropped allegations alone justified compulsory joinder under Rule 19 (Sullivan v. Flora, Inc., August 12, 2016, Conley, W.).

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