Searching over 5,500,000 cases.


searching
Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.

Horatio Washington Depot Technologies LLC v. Tolmar, Inc.

United States District Court, D. Delaware

August 27, 2019

HORATIO WASHINGTON DEPOT TECHNOLOGIES LLC, Plaintiff,
v.
TOLMAR, INC., TOLMAR PHARMACEUTICALS, INC., and TOLMAR THERAPEUTICS, INC., Defendants.

          MEMORANDUM ORDER

          HONORABLE LEONARD P. STARK UNITED STATES DISTRICT JUDGE

         At Wilmington this 27th day of August, 2019:

         Having reviewed the parties' briefing and other materials (see, e.g., D.I. 130, 134, 138) related to the motion for attorney fees pursuant to 35 U.S.C. § 285 filed by Defendants Tolmar Inc., Tolmar Pharmaceuticals, Inc., and Tolmar Therapeutics, Inc. (together, “Tolmar” or Defendants), IT IS HEREBY ORDERED that Tolmar's motion (D.I. 129) is DENIED.

         I. BACKGROUND

         Plaintiff Horatio Washington Depot Technologies LLC (“Horatio” or Plaintiff) sued Tolmar for infringement of U.S. Patent Nos. 5, 932, 547 (“the ‘547 patent”), 6, 124, 261 (“the ‘261 patent”), and 6, 235, 712 (“the ‘712 patent”). (D.I. 1) The patents-in-suit describe stable non-aqueous formulations that include a peptide and a polar aprotic solvent. (See ‘547 patent, [1]Abstract) These formulations may be used, for example, to treat prostatic cancer. (‘547 patent, 2:29-46) The ‘547 and ‘261 patents claim formulations while the ‘712 patent claims methods for making formulations.

         On September 27, 2017, Tolmar moved to dismiss for failure to state a claim. (D.I. 12) Tolmar argued that the entirety of the Complaint should be dismissed because Horatio had failed to allege plausible claims of direct, indirect, and willful infringement and had also not pled compliance with the marking requirements of 35 U.S.C. § 287. (D.I. 13)

         On November 1, 2018, Magistrate Judge Burke issued a Report and Recommendation (D.I. 77) (“Report”), recommending that Tolmar's motion: (1) be granted with respect to the insufficiency Horatio's allegations of direct infringement and that Horatio be granted an opportunity to file an amended Complaint; (2) be denied with respect to the purported insufficiency of the allegations of Tolmar's knowledge of the patents-in-suit, which is an element of Horatio's indirect and willful infringement claims; and (3) be granted with prejudice with respect to the marking issue. Both parties filed and briefed objections to the Report. (See D.I. 88, 89, 96, 97)

         During the pendency of the motion to dismiss and objections to the Report, the parties and the Court engaged in claim construction. On December 26, 2018, the Court issued its claim construction opinion and order. (D.I. 102, 103) Of the five sets of terms disputed by the parties, the Court agreed with Tolmar's position with respect to four - including for “leuprolide, ” “dissolving, ” and “LHRH antagonist” - and agreed with Horatio's position on one. (D.I. 102 at 4-13)

         On March 15, 2019, the parties stipulated to non-infringement of claim 4 of the ‘547 patent and to claims 4, 8-10, and 12-15 of the ‘712 patent. (D.I. 119) The parties explained that non-infringement of these claims followed from the Court's construction of “LHRH antagonist” and “leuprolide.” (Id. ¶¶ 6, 7) The Court entered the parties' stipulation four days later. (Id.) Thereafter, Horatio continued to assert other claims of the ‘547 and ‘712 patents as well as the asserted claims of the '261 patent. (Compare D.I. 1 with D.I. 119)

         On March 20, 2019, the Court adopted the Report and, accordingly, granted-in-part and denied-in-part Tolmar's motion to dismiss. (D.I. 120) In particular, the Court dismissed all then-asserted claims of infringement pertaining to the ‘547 and ‘261 patents due to the unavailability of damages for such infringement. (D.I. 120) The Court agreed with Judge Burke and Tolmar that: (1) Horatio could not obtain pre-suit damages, since a prior owner of these patents had failed to comply with the marking statute; and (2) Horatio could not obtain post-suit damages, because these patents expired before the Complaint was filed. (See D.I. 13 at 17-20; D.I. 77 at 3-20; D.I. 120 at 1-5) The Court denied the motion to dismiss with respect to purported pleading deficiencies and overruled Tolmar's objections to limited portions of the Report. (See D.I. 120 at 5-6)

         After the Court's ruling, the case could proceed only on the '712 patent. On April 2, 2019, Horatio filed a First Amended Complaint (“FAC”). (D.I. 122) The FAC asserted infringement of only claims 1, 2, and 16 from the '712 patent; it dropped all other claims of the ‘712 patent as well as all claims of the '547 and '261 patents. (Id.)

         “On May 23, 2019, Horatio indicated its intent to stipulate to non-infringement of the [asserted claims of the '712 patent], based on the Court's construction of the term ‘dissolving.'” (D.I. 130 at 10) (citing D.I. 131-1 Ex. 16) On May 31, 2019, the parties stipulated to non-infringement of the remaining asserted claims (claims 1, 2, and 16 of the ‘712 patent). (D.I. 127) The stipulation explained that non-infringement of the remaining asserted claims followed from the Court's construction of “dissolving.” (Id. ¶ 9) The Court entered the stipulation on June 4. (D.I. 128)

         Tolmar filed its motion for attorney fees on June 17, 2019. (D.I. 129) Horatio filed a notice of appeal on July 3, 2019. (D.I. 136) The parties completed briefing on Tolmar's motion on July 8, 2019. (See D.I. 134, 138)

         II. ...


Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.