Posted On: December 28, 2006

New District of Delaware Filings

12/19: Reliant Pharmaceuticals, Inc. v. Par Pharmaceuticals, Inc. (patent infringement)
12/22: Promos Technologies, Inc. v. Freescale Semiconductor, Inc. (patent infringement)

Posted On: December 27, 2006

Judge Greogry M. Sleet: Motion to Transfer to E.D. Michigan in Automotive Seat Technology Dispute DENIED

The Court denied defendants' motions to transfer the action to the Eastern District of Michigan. Analyzing the situation under the public and private interest factors enumerated by the Third Circuit in Jumara, Judge Sleet found ATI's reasons for bringing suit in Delaware (at least one defendant incorporated in DE, no more convenient forum, and a faster docket than E.D. Mich.) to be rational and legitimate. Id. at 3. As to docket speed, the Court noted that the District of Delaware appears to have a lower percentage of cases over three years old than the Eastern District of Michigan. Id. at 4 n.2.


Automotive Technologies Int'l, Inc. v. Am. Honda Motor Co., C.A. No. 06-187-GMS (D. Del. Dec. 21, 2006).


Posted On: December 26, 2006

Judge Sue L. Robinson: No Transfer Where You Enjoy Benefits of Being a Delaware Corporation!

In another transfer decision by the Court, Judge Robinson again stresses that transfer will not be awarded where the moving defendant is a Delaware corporation and has enjoyed the "benefits and protections" of being incorporated here. Pernod Ricard USA, LLC v. Bacardi U.S.A., Inc., C.A. No. 06-505-SLR (D. Del. Dec. 19, 2006). Defendant, Bacardi U.S.A., Inc. (a Delaware corporation) moved to transfer this Lanham Act case to the Southern District of Florida because it alleged that the accused product was sold only in Florida, was distilled in Puerto Rico, the executive offices and business operations of the company are in Miamia and all the press releases at issue in the action originated in Miami. Finally, they argued that individuals with pertinent testimony were elderly and lived in Florida. The plaintiff, an Indiana corporation with its principal place of business in New York, argued that there were commercials done by the defendant that were broadcast into Delaware and the alleged false statements also appeared on internet news sites and in the Wall Street Journal.

The Court denied the motion because "Defendant's complaints about litigating here are outweighed by the fact that Bacardi has enjoyed the benefits and protections of incorporation in Delaware and that the State has an interest in litigation regarding companies incorporated within its jurisdiction." Id. at 7. The Court noted that most of the testimony presented at trial these days is by recorded deposition so that witness inconvenience is not an obstacle to a trial in Delaware and that discovery can be conducted anywhere. Furthermore, expenses and inconvenience incurred for travel to try the case in Delaware will not be overly burdensome where the company conducts a world-wide business. Id. at 8.

Pernod Ricard USA, LLC v. Bacardi U.S.A., Inc., C.A. No. 06-505-SLR (D. Del. Dec. 19, 2006).

Posted On: December 19, 2006

Judge Kent A. Jordan: Phillips Fee Award Revisited Again

In a follow-up to an October 23, 2006 decision in the same case awarding attorneys'; fees to Sullivan and Cromwell, Judge Jordan awarded Potter Anderson and Corroon LLP attorneys; fees in the amount of $66,764.90 for 312.90 hours of work during April 2004. Our write-up of the October decision is available here.

In the October opinion, the Court had asked for documentation to support the amount of fees requested by Potter Anderson. The case had involved multiple patents and multiple defendants, but the fee award only pertained to one defendant and one patent. As such, it was difficult for the attorneys to separate the fees associated with each patent and each defendant. To be conservative, Potter Anderson only submitted records to show the work they did in April 2004, the month of the trial against CMT, which involved one remaining patent. The Court ordered the payment of Potter Anderson's fees by CMT, finding Potter's seeking of fees during the month of trial reasonable given the interrelationships of the technology of the two patents, and the degree to which the defendants were engaged in the litigation. Op. at 6.

Philips Electronics N.A. Corp. v. Compo Micro Tech, Inc., C.A. No. 02-123-KAJ (D. Del. Dec. 12, 2006).


Philips Electronics N.A. Corp. v. Compo Micro Tech, Inc., C.A. No. 02-123-KAJ (D. Del. Dec. 12, 2006).

Posted On: December 15, 2006

New District of Delaware Filings

December 12, 2006
K2 Financial LLC v. K2 Advisors LLC (trademark)

December 13, 2006
Lippert Components Inc. v. Dexter Axle Company (patent)

December 14, 2006
Nesscap Co. Ltd. v. Maxwell Technologies Inc. (patent)

Posted On: December 15, 2006

Judge Farnan Institutes Motion-Day Schedule

Judge Farnan has instituted a new policy, effective immediately, for non-dispositive motions that will affect all pending patent cases. The policy, which sets an in-court schedule for motion practice beginning early next year, supersedes all language to the contrary on previously filed scheduling orders. The first motion day, at which each party will be limited to twenty minutes of oral argument, will be February 2, 2007.

Posted On: December 15, 2006

New Standing Order in Light of J. Jordan's Confirmation to the Third Circuit

In light of J. Jordan's recent confirmation to the Third Circuit, the District Court, today, posted a new standing order on its website reassigning all civil cases, except for bankruptcy cases and proceedings and habeas corpus petitions, to Magistrate Judge Mary Pat Thynge through pretrial proceedings. All cases previously assigned to J. Jordan should now use *** in place of "KAJ" in their civil action number.

Posted On: December 13, 2006

License Payments "Irrelevant" to Marking Statute Provisions

May a patentee escape the Section 287 marking requirement when only its non-exclusive, non-party licensee produced and sold the allegedly infringed product? A Delaware judge considered, and rejected, that contention in an opinion released last week. Magistrate Judge Thynge instead held that, where the licensee sold and failed to mark the invention, the patentee-licensor could recover damages only after the date it filed the underlying infringement action. <%media(20061213-Inline.pdf|Inline Connection Corp. v. AOL Time Warner Inc., C.A. No. 02-272-MPT (D. Del. December 5, 2006) (Thynge, M.J.).)%>

Plaintiff Inline Communication Corp. sued AOL and Earthlink, alleging infringment of its patented high-speed data transfer technology. AOL and Earthlink moved for summary judgment on the marking issue, claiming that Inline failed to mark certain wall jacks associated with its service and that they first received notice of the alleged infringment on the date Inline filed suit. Inline responded by arguing that it never actually sold any products under the patent, and therefore could not have a duty to mark. According to Inline, the company had also "abandoned" its relationship with the licensee by granting it a paid-up, perpetual nonexclusive license.

The Court rejected Inline's assertions, drawing a distinction between payment and sales:

Whether, as a result of that agreement [granting the nonexclusive license], Inline received or continued to receive any payments, royalties or other compensation is irrelevant. It is the right to make, sell, offer for sale or publically use the patented article that triggers the obligation to mark.

The lesson? Licensors must keep track of the marking activities of their licensees - the duty to mark ultimately runs to the patentee, regardless of the presence or absence of a royalty.

Posted On: December 8, 2006

Judge Kent Jordan Confirmed To Third Circuit

By a vote of 91-0 in the U.S. Senate, Judge Kent Jordan was confirmed today to his new post as a Judge on the Third Circuit Court of Appeals. He is expected to start his duties as Circuit Judge very shortly. Stay tuned for updates on when Judge Jordan will assume his new duties and how he will hand off pending matters.

Posted On: December 8, 2006

New District Court Filings

12/5: Polaroid Corp. v. Hewlett-Packard Co. (patent infringement)
12/6: Celgene Corp., Novartis Pharmaceuticals Corp. and Novartis Pharma AG v. Abrika Pharmaceuticals, Inc. and Abrika Pharmaceutical, LLLP (patent infringement)

Posted On: December 6, 2006

Judge Joseph J. Farnan: Five-Month Stay Of Validity Trial In Hopes Of Hearing From The Supreme Court In The Interim GRANTED

Unless you've been living under a rock for the last few months, the KSR case pending before the Supreme Court has probably come across your radar screen several times. The recent oral arguments before the Court in KSR left many observers thinking that a change in the obviousness standard is on its way. In anticipation of a possible new standard for obviousness, Judge Farnan granted a five-month stay of the validity trial in Power Integrations Inc. v. Fairchild Semiconductor Int'l Inc., C.A. No. 04-1371-JJF, 2006 U.S. Dist. LEXIS 87259 (D. Del. Nov. 30, 2006). Judge Farnan also ruled that if the Supreme Court has not issued a decision within five months, then the trial will go forward using modified jury interrogatories and/or instructions, as well as other appropriate measures intended to minimize any post-trial or appellate impact of the Supreme Court's decision in KSR on the issues in this case.

It remains to be seen if other judges, in this district or other districts, will follow suit. (If you hear of other judges following suit in other jurisdictions, please let us know.) I seem to remember some similar rulings when the Phillips claim construction case was before the Federal Circuit. Interestingly, the Federal Circuit has had no problem issuing opinions refining their view of obviousness while the Supreme Court decides KSR!

Power Integrations Inc. v. Fairchild Semiconductor Int'l Inc., C.A. No. 04-1371-JJF, 2006 U.S. Dist. LEXIS 87259 (D. Del. Nov. 30, 2006).

Continue reading " Judge Joseph J. Farnan: Five-Month Stay Of Validity Trial In Hopes Of Hearing From The Supreme Court In The Interim GRANTED " »

Posted On: December 5, 2006

"The court will protect its process"

In a recent non-IP opinion by Judge Sleet, there are a few comments worth taking heed of for future cases you may have before this Court. See Donald M. Durkin Contracting, Inc. v. City of Newark, C.A. No. 04-163, 2006 U.S. Dist. LEXIS 85372 (D. Del. Nov. 27, 2006) (Sleet, J.).


At the close of trial in this case, Judge Sleet directed the parties to submit a stipulated post-trial briefing schedule. Instead of filing such a stipulation the defendant, City of Newark, filed a letter asking the court to make a notation on the docket noting the transcript availability. The Court noted, "For counsel's edification, it is inappropriate and ill-advised to ask the court to expend its limited resources making administrative notations on the docket for the convenience of the parties." Id. at *1.

Instead of filing a form skeletal post-trial motion within the 10 day period prescribed by the Federal Rules, the City filed a two line motion to stay execution of the judgment citing no authority or reasoning for relief and two additional motions that contained 84 pages of argument and exhibits without any citations to the trial transcripts. The Court noted that there is a procedure whereby skeletal motions can be filed during the prescribed period and yet the parties can present well-thought out briefing that cites to the official transcript and record. Of particular note, in dicta, Judge Sleet stated "[T]his court regularly presides over patent litigation, tried by lawyers who regularly appear in federal court. In these cases, the court typically observes that the parties order daily transcripts, which allow them to timely file post-trial motions and coherently argued briefs therewith." Id. at 3 n.2. So a word to the wise, make sure your post-trial briefing includes citations to the transcript and is not simply a recitation of counsel's recollection of the trial.

The Court made note of the inappropriate behavior of the litigants during this case including: "inappropriate telephone calls to chambers, untimely filing of issue-dispositive motions, improper filing of the pre-trial order, untimely submission of completely deficient jury instructions and verdict forms, and discovery abuses that led to motions for sanctions on the eve of, and during trial�", and that such behavior has "created an unacceptable diversion of the court's resources." Id. at 4.

Finally, the Court stated that in light of all this "inappropriate behavior" the Court was faced with an ex parte oral request from the City to vacate a prior order. In response, Judge Sleet stated "[F]or counsel's edification, it is wholly inappropriate to present what should be a formal motion for reconsideration via an ex parte telephone call to chambers." Id.

Take home message�do not disregard court orders or instructions and make sure when litigating in this District to behave civilly and professionally, following all Local and Federal Rules.

Posted On: December 5, 2006

New District of Delaware Filings

11/21: Liquidnet, Inc. v. ITG, Inc. and the MacGregor Group, Inc. (patent infringement)
11/27: Osram GMBH and Osram OPTO Semiconductors GMBH v. Citizen Watch Co., Ltd.; Citizen Elecs. Co., Ltd. and Cecol, Inc. (patent infringement)
12/1: LG.Philips LCD Co., Ltd. v. Chi Mei Optoelectronics Corp.; AU Optronics Corp.; AU Optronics Corp. America; Tatung Co.; Tatung Co. of America, Inc. and Viewsonic Corp. (patent infringement)
12/1: Rembrandt Technologies, LP v. CBS Corp. (patent infringement)
12/1: Rembrandt Technologies, LP v. NBC Universal, Inc. (patent infringement)
12/1: Rembrandt Technologies, LP v. ABC, Inc. (patent infringement)
12/1: Rembrandt Technologies, LP v. Fox Entertainment Group, Inc. and Fox Broadcasting Co. (patent infringement)
12/1: Cameron Int'l Corp. v. Dril-Quip, Inc. (patent infringement)

Posted On: December 1, 2006

New District of Delaware Filings

November 30, 2006:

CoxCom Inc. v. Rembrandt Technologies LP (declaratory judgment of noninfringement, invalidity, and unenforceability).

Samsung Electronics Co. Ltd. v. ON Semiconductor Corp. & Semiconductor Components Industries LLC (declaratory judgment of noninfringment and invalidity).