In the latest AIPLA Report (sorry, AIPLA membership is required to read the article), it was reported that the House of Representatives agreed to a Senate amendment regarding H.R. 683 (trademark dilution) and H.R. 1036 (copyright), clearing the bills for White House approval. A copy of H.R. 683 is available here . H.R. 683's changes to the Federal Trademark Dilution Act (FTDA) are a direct response to the Supreme Court's decision in <%media(20060929-Victoria's Secret.pdf|Moseley v. V Secret Catalogue, Inc.)%> While Moseley interpreted the FTDA to require proof of actual dilution, <%media(20060929-HR 683 EAS.pdf|H.R. 683 )%> would only require claimants under the FTDA to show that the defendant's use is "likely to cause dilution by blurring or dilution by tarnishment." The bill then goes on to define "famous," "dilution by blurring," and "dilution by tarnishment" and to provide for fair use of famous marks.
Danish company Novozymes A/S scored a big victory recently in protecting its commercial enzymes used in the fuel-ethanol industry. Coming on the heels of an expedited bench trial, District Judge Kent A. Jordan issued a 64-page opinion finding that a competing product, manufactured by Genencor International, infringed a Novozymes patent granted in 2005. At issue were the parties' alpha-amylase enzymes - proteins that break down starches for use in ethanol fuel - and the effect deletions to their amino-acid sequences had on patentability and validity.
The Court concluded that Genencor's manipulation of the sequence mirrored Novozymes's similar efforts. A must read for those in or contemplating litigation in the areas of peptide sequencing and protein engineering. Stay tuned for the damages trial, which will occur this fall.
No "Reasonable Apprehension of Suit" Where Patents Issued, Statements Made By Defendant and Previous Litigation
In a decision further defining what constitutes "reasonable apprehension of suit" sufficient to confer jurisdiction under the Declaratory Judgment Act, 28 U.S.C. 2201(a), the District Court held that the combination of the company's history of filing lawsuits not directly related to the patents-in-suit, a lawsuit brought by the declaratory judgment defendant against a former employee for trade secret misappropriation and statements made by the company during a quarterly earnings conference were not sufficient to create a reasonable apprehension of suit. Angiodynamics, Inc. v. Diomed Holdings, Inc., C.A. No. 06-02 (D. Del. Sept. 7, 2006) (Sleet, J.).
The Court followed the two-part test set forth in the Federal Circuit opinion Goodyear Tire & Rubber Co. v. Relasomers, Inc., 824 F.2d 953 (Fed. Cir. 1987) which requires: "(1) an explicit threat or other action by the patentee which creates a reasonable apprehension on the part of the declaratory judgment plaintiff that it will face an infringement suit; and (2) present activity by the declaratory judgment plaintiff which could constitute infringement, or concrete steps taken by the declaratory judgment plaintiff with the intent to conduct such activity." Angiodynamics, at 4. There was no dispute among the parties that the second requirement was satisfied. The Court then analyzed whether Angiodynamics met its burden of demonstrating under the totality of the circumstances a "reasonable apprehension of imminent suit." Id. First, the Court noted that although it is relevant to the analysis, previously filed lawsuits by the declaratory judgment defendant on patents other than the patent-in-suit, do not cause reasonable apprehension of suit. Judge Sleet then goes on to distinguish two Federal Circuit cases (Vanguard Research, Inc. v. PEAT, Inc. and Goodyear Tire & Rubber Co. v. Relasomers, Inc.) which held that prior lawsuits for trade secret misappropriation can create reasonable apprehension of suit. In both the Federal Circuit cases the lawsuits were filed against the declaratory judgment plaintiff, whereas here, the misappropriation actions were filed against a former employee of the declaratory judgment defendant. Finally, a statement made by the declaratory judgment defendant during a quarterly earnings call that the plaintiff's products are "embraced by" the patents-in-suit falls within those terms that the Federal Circuit has found insufficient to create a reasonable apprehension of suit.
Hopefully, this case will clarify for potential declaratory judgment plaintiffs just what does create a "reasonable apprehension of suit" if not by any other way than by telling us what does NOT constitute reasonable apprehension.
It is reported out of Washington today (and also in the Congressional Record ) that the Senate Committee on the Judiciary voted in favor of the nomination of United States District Court Judge Kent A. Jordan to fill a vacancy on the Third Circuit Court of Appeals. Judge Jordan currently sits on the United States District Court for the District of Delaware, and President Bush nominated him to fill a seat on the Court of Appeals that became available when the Honorable Jane R. Roth moved to senior judge status. The favorable committee vote sets up a vote in the full Senate later this week.
In the latest twist to the post-Echostar waiver debate, Judge Farnan has issued an opinion stating that a party asserting the advice-of-counsel defense to willful infringment waives the attorney-client privilege concerning communications with both opinion counsel and trial counsel. In the July 28th decision, the Court noted that, based on the Federal Circuit's recent In re Echostar decision, 2006 U.S. App. LEXIS 11162 (Fed. Cir. May 1, 2006), a defendant's advice-of-counsel defense effects a waiver of "communications with all counsel related to the same subject matter." This waiver extends to "litigation counsel[ ] and any other counsel." Affinion Net Patents Inc. v. Maritz Inc., C.A. No. 04-360 (D. Del. July 28, 2006) (Farnan, J.), slip op. at 2-3.
Interestingly, the Court bypassed the plaintiff's argument that the waiver extends to all counsel because the defendants here had retained opinion and trial counsel from the same law firm. Instead, the Court relied exclusively on Echostar for its broad statement. Contrast this with another Delaware decision issued only a few weeks earlier, which read Echostar more narrowly. Ampex Corp. v. Eastman Kodak Co., 2006 U.S. Dist. LEXIS 48702, at *11 (D. Del. July 17, 2006) (Jordan, J.) ("Echostar did not even address the issue of communications with trial counsel.").
Ultimately, the Court denied the underlying motion to compel documents, finding that the communications in issue were never disclosed to the client and did not discuss any communication between attorney and client. Nonetheless, the Court's message is explicit: An Echostar waiver extends to both opinion and trial counsel.
In Becton Dickinson and Co. v. Tyco Healthcare Group LP, the Court again demonstrated the difficulty of being successful raising an inequitable conduct defense. After a jury finding of willful infringement and validity, the Court held a bench trial on Tyco's inequitable conduct defense. Tyco's defense was grounded in the argument that Becton Dickinson failed to disclose prior art references that effect, not an asserted claim of the patent, but instead an element of an independent claim that was not asserted during the infringement trial. Tyco further alleged that the inventors improperly represented to the PTO that they were the original inventors of every element of the claimed invention. The Court following the criteria set forth in the Federal Circuit decision FMC Corp. v. Manitowoc Co., Inc., 835 F.2d 1411 (Fed. Cir. 1987) found that the prior art was not material because it was cumulative of art that was already before the Examiner and that there was no evidence of an intent to deceive the Patent Office.
The District of Delaware has long been a center for intellectual property litigation, drawing parties and law firms from across the nation to the federal courthouse in Wilmington. In 2005, intellectual property filings - patent, copyright, and trademark - outpaced all non-prisoner civil filings in Delaware. Nearly fifteen percent of the dockets of Delaware's four district judges involve disputes over intellectual property. With this volume comes experience and a large body of locally developed case law, especially patent-focused case law. Opinions and orders issue frequently.
The flow of patent cases also gives rise to a local patent litigation bar expert in the substantive and procedural nuances of practice in the District of Delaware. To complement that body of knowledge, three of those practitioners have created this blog. Dedicated to informing the intellectual property bar of the latest developments in the Delaware courts, we will bring you commentary on the latest decisions the moment they are handed down, as well as links to the actual opinions. From time to time, we will also post commentary on past decisions of note. Registered visitors will also be able to post their own comments.
The nature of litigation constantly evolves. If you are litigating an intellectual property case in the District of Delaware, or contemplating litigation, this blog will keep you up-to-date on what you need to know about what is happening in the Delaware courts.