Posted On: March 30, 2007

Texas Hold 'Em: Incorporation and plaintiffs' choice of forum beats pending, related cases and witness convenience

<%media(20070330-Oracle 06-414 3-26-07.pdf|Oracle Corp. v. Epicrealm Licensing, LP, 06-414-SLR (lead case) (D. Del. March 26, 2007).)%>

The Court denied defendant's motion to transfer venue to E.D. Texas and to consolidate. In 2005, Epicrealm filed three infringement actions in Texas against numerous defendants involving the same patents implicated in this Delaware action. Epicrealm, a patent holding company based in Richardson, Texas but incorporated in Delaware, argued that transferring these two Delaware actions to Texas would save time, money, and judicial resources. In addition, Epicrealm alleged that five nonparty, Texas resident witnesses would be unavailable to testify in Delaware. Oracle, a Delaware entity, is not a party to the Texas litigation. In denying the motion to transfer venue, the Court noted that �it is appropriate for Delaware courts to resolve this dispute between two of its corporate citizens.� Op. at 8. As to Epicrealm�s argument that witnesses could not be compelled to testify live, the Court noted that �much of the testimony presented at trial these days is presented via recorded depositions."

Posted On: March 26, 2007

New District of Delaware Filings

3/15: ING Bank and ING Direct Bancorp v. Everbank, Everbank Financial Corp. and Stone & Ward, Inc. (trademark infringement)
3/15: Optium Corp. v. Emcore Corp. and JDS Uniphase Corp. (patent infringement declaratory judgment)
3/16: PDL BioPharma, Inc. v. Alexion Pharms., Inc. (patent infringement)
3/20: Bank of America, N.A. v. SIP Assets, LLC and Every Penny Counts, Inc. (patent infringement declaratory judgment)
3/23: Interdigital Communications Corp. and Interdigital Technology Corp. v. Samsung Elecs. Co., Ltd., Samsung Elecs. America, Inc. and Samsung Telecommuns. America, LLC (patent infringement)
3/23: Samsung Telecomms. America LLP and Samsung Elecs. Co., Ltd. v. Interdigital Communs. Corp., Interdigital Tech. Corp. and Tantivity Communs., Inc. (patent declaratory judgment, breach of contract, unfair business practices)
3/23: CIF Licensing, LLC v. Agere Systems Inc. (patent infringement)
3/23: Smarter Agent Inc. v. uLocate Communs. (patent infringement)

Posted On: March 26, 2007

Triggering the "Three Day Rule" - Hand Delivery is "Gratuitous"?

District of Delaware Local Rule 7.1.2 provides that an answering brief be filed within 10 days (excluding intermediate weekends and legal holidays as provided by Fed. R. Civ. P. 6(a)) after the opening brief. But how does e-filing and service by electronic mail effect this rule? Judge Farnan recently answered that in the opinion <%media(20070326-cherry line 03-199.pdf|Cherry Line, S.A. v. Muma Services)%>, C.A. No. 03-199 (D. Del. Mar. 13, 2007) (Farnan, J.). The defendant in this case served plaintiff with its motion by hand delivery as well as electronically and therefore defendant argued that the service by hand delivery did not trigger the "three day rule" set forth in Fed. R. Civ. P. 6(e) which provides that service by electronic means adds three days to the period set forth in 6(a). Id. at 4. The Court found that "electronic service controls" and is "generally preferable to mail and hand delivery." Id. The Court further went on to state that "[W]hen a party chooses electronic means or mail delivery, separate hand delivery is gratuituous and has no effect on response times." Id. Hence, the plaintiff's response was timely filed.

Posted On: March 15, 2007

Round 1: Affymetrix Wins $16.7 Million Jury Verdict in Patent Case

A Delaware jury yesterday returned a $16.7 million verdict in favor of Affymetrix in its suit against rival Illumina. Judge Farnan had previously bifurcated the proceedings, so invalidity, wilfullness, whether to grant a permanent injunction, and other issues are still yet to be decided. However, Round 1 clearly goes to Affymetrix - the jury awarded a royalty rate that was even higher than what Affymetrix had asked for!

Posted On: March 14, 2007

Conspiracy to Infringe - Not a Separate Cause of Action

In <%media(20070314-Digene Ventana 01-752-MPT - 3-6-07.pdf|Digene Corp. v. Ventana Medical Systems, Inc. and Beckman Coulter, Inc.)%>, Magistrate Thynge found that federal patent claims preempt any separate claim alleging conspiracy to infringe a patent. C.A. No. 01-752 (D. Del. Mar. 6, 2007) (Thynge, J.).

Ventana moved to dismiss Digene's count for civil conspiracy which alleged:

65. The foregoing allegations of this amended complaint
are incorporated by reference.
66. Ventana and Beckman have combined and conspired
for an unlawful purpose, i.e., patent infringement and inducement to infringe the '332 and '331 patents
and to evade their discovery obligations, with the intent to injure Digene.
67. As a direct and proximate result of the civil
conspiracy, Digene has been injured by Ventana and
Beckman in an amount to be proven at trial.

(D.I. 174, Paras. 65-67). Digene separately alleged a count for tortious interference with Digene's business opportunities. The Court chose not to rely on two non-precedential cases cited by the Plaintiff that they argued found that the Federal Circuit has allowed separate claims for civil conspiracy to commit patent infringement. Instead, the Court relied on the Federal Circuit's decision in Rodime PLC v. Seagate Tech., Inc., 174 F.3d 1294 (Fed. Cir. 1999) which held that patent law claims will not preempt other state law causes of action if they "include additional elements not found in the federal patent law cause of action and if they are not an impermissible attempt to offer patent-like protection to subject matter addressed by federal law." Id. at 10. The Court also found persuasive various other district court cases that found that although the conspiracy issue may be relevant to a damages claim, it is not a separate ground for recovery. Id. at 10-11. Digene's claim for civil conspiracy did not contain any additional elements outside their cause of action for patent infringement and therefore the court found that the federal patent laws preempt any such claim. Id. at 12. As a side note, the Court found the fact that the Plaintiff's incorporated by reference all earlier allegations in their Complaint, including the claim for tortious interference with business opportunity, was a "shotgun" attempt to bootstrap its allegations regarding tortious interference into its civil conspiracy count. Id. at 7n.36. Furthermore, their allegation that Defendants' conspired to evade their discovery obligations was also dismissed because "the Federal Rules of Civil Procedure do not create a private cause of action." Id. at 14.

Note to plaintiffs out there: do not rely on incorporation by reference to get prior allegations into a specific count and know that your separate claim for civil conspiracy of patent infringement will not stand up in Delaware without any other additional grounds outside those included in the federal patent laws.

Posted On: March 9, 2007

New District of Delaware Filings

3/6: Warner Bros. Records Inc.,; Capitol Records, Inc.; and UMG Recordings, Inc. v. Carol Chaires (copyright infringement)
3/6: Sony BMG Music Entertainment; Arista Records LLC; UMG Recordings, Inc.; and Fonovisa, Inc. v. Luz Jimenez (copyright infringement)
3/7: Sun Optics, Inc. v. FGX Int'l Inc. (patent infringement)
3/9: Pfizer Inc., Pfizer Pharmaceuticals, LLC, Pfizer Ltd., C.O. Pharmaceuticals Int'l C.V., Pfizer Ireland Pharmaceuticals, Warner-Lambert Company, Warner-Lambert Company, LLC and Warner-Lambert Expert, Ltd. v. Ranbaxy Laboratories Ltd., and Ranbaxy Inc. (patent infringement)

Posted On: March 2, 2007

Clawback Motion Denied in Part, Granted in Part

Judge Robinson issued an order today denying a motion for the return or destruction of a privileged document where the document was "used" in a deposition and the protective order provided that the producing party has 3 weeks from the date of disclosure at the deposition to provide notice of inadvertant production. <%media(20070302-In re 318 patent litigation - 05-356-SLR.pdf|In re '318 Patent Infringement Litigation)%>, C.A. No. 05-356 (D. Del. Mar. 1, 2007) (Robinson, C.J.). The movants argued that although they waited until after the three weeks set forth in the protective order to attempt to claw back the document, the delay was excused because the document was not really "used" at the deposition as the protective order requires. The Court held that it does not matter whether the "allegedly privileged portions" of the document are used at the deposition, so long as the document itself it used because notice is the purpose of this type of a provision in a protective order. Id. at 2.

The Court granted the motion, however, as it pertained to a draft licensing agreement written by counsel. Judge Robinson states: "I have consistently held that draft licensing agreements written by counsel are not subject to disclosure." Id.

Posted On: March 2, 2007

District of Delaware New Filings

3/1: Safety Braking Corp., Magnetar Techs. Corp. and G&T Conveyor Corp. v. Six Flags, Inc., Six Flags Theme Parks Inc., SF Partnership, Tierco Maryland, Inc., Busch Entertainment Corp., Cedar Fair LP, Paramount Parks, Inc., NBC Universal, Inc., Universal Studios, Inc., Blackstone Group L.P., The Walt Disney Co., and Walt Disney Parks and Resorts, LLC (patent infringement)