Posted On: August 24, 2007

Request for Injunctive Relief in Complaint, Not Briefing, Controls "Final Judgment" Inquiry

The principle that the complete adjudication of a patent dispute requires that both liability and remedy be fully established is well-settled. If a court has entered judgment on one, but not the other, any appeal is likely premature. But what if a party that has sought injunctive relief in its complaint declines to brief the issue following a liability judgment and instead seeks an immediate appeal?

According to the Federal Circuit, the appeal remains premature. By granting a motion to dismiss an appeal from a District of Delaware jury's decision on infringement and invalidity, the appellate court characterized the unbriefed issue as an "unadjudicated request for injunctive relief" that "remains pending before the district court." Accordingly, it is a party's pre-judgment request, not its later abandonment, that controls the jurisdictional inquiry on appeal.

ACS Inc. v. Guidant Sales Corp., No. 2007-1365 (Fed. Cir. Aug. 1, 2007).

Posted On: August 20, 2007

Federal Circuit Decides On New Standards For Willfulness Waiver of A/C Privilege and WP Immunity

In re Seagate

The Federal Circuit dropped a bomb today with this unanimous decision. Here's the quick and dirty:

1) To prove willfulness, patentees now must show "objective recklessness. The Federal Circuit abandoned any affirmative duty of care on alleged infringers in relation to willfulness.

2) Waiver of the attorney-client privilege when asserting an opinion of counsel as a defense to a charge of willfulness does not, as a general rule, extend to trial counsel - although courts continue to have discretion as to waiver.

3) Waiver of work product immunity associated with the assertion of an opinion of counsel does not extend to trial counsel, unless there are exceptional circumstances.

Here in Delaware, this decision should bring uniformity to the waiver issues as to trial counsel, an issue that had received differing treatment in the past. We will keep and eye out for decisions applying this precedent in the coming months.

Posted On: August 6, 2007

New District of Delaware Filings

7/27: Lonza Group AG v. Northwest Biotherapeutics, Inc. (patent infringement)
7/27: ICU Medical, Inc. v. Rymed Technologies, Inc. (patent infringement)

Posted On: August 3, 2007

Delaware Judge Issues First Post-Bell Atlantic Pleading Decision in Patent Context

For the first time in the patent context, the District of Delaware has addressed the dismissal framework recently established in the Supreme Court's Bell Atlantic decision.

In a memorandum order issued yesterday, district judge Sue L. Robinson emphasized that although a complaint "does not need detailed factual allegations," the stated entitlement to relief requires "more than labels and conclusions" or a "formulaic recitation of the elements of a cause of action." Relying on both the fact that plaintiff had already successfully sought to amend its complaint and on plaintiff's declaration in response to the motion to dismiss, the Court found that plaintiff pleaded the requisite level of specificity to survive defendant's invalidity contention. The Court also rejected defendant's enforceability and "judge-shopping" rationales.

Beyond the pleading issue, the decision also contributes to the growing body of post-eBay injunction decisions. Addressing the irreparable harm element for preliminary injunctions, the Court definitively put to rest the question of whether, following a finding of likelihood of success on the merits, a presumption of irreparable harm should arise. Rejecting that analysis, the Court concluded that "such a presumption [does] not survive the Supreme Court's analysis in eBay. . . ." As a result, "it remains the moving party's burden to establish that monetary damages could not suffice."

Sun Optics v. FGX, C.A. No. 07-1347-SLR (D. Del. Aug. 2, 2007) (Robinson, J.).