Posted On: March 31, 2008

New District of Delaware Filings

3/24: Pfizer Inc., Pfizer Ireland Pharmaceuticals, Warner-Lambert Company, Warner-Lambert Company, LLC and Warner-Lambert Export, Ltd. v. Ranbaxy Ltd., Ranbaxy Inc. and Ranbaxy Pharmaceuticals, Inc. (patent infringement)
3/24: Innocent Bystander, Write Treatage Music, Universal Polygram Int'l Publishing, Inc., Mighty UnderDog Music, Sony/ATV Tunes, LLC, EMI April Music Inc., Lellow Productions, Desmoblie, Inc., Bon Jovi Publishing and Aggressive Music v. Waltzing Matilda's Inc. and Lee Buznick (copyright infringement)
3/25: Kwikset Corp. and Newfrey LLC v. Master Lock Co. LLC (patent infringement)
3/25: Human Genome Sciences Inc. v. Genentech Inc. (patent infringement)
3/26: Vygon v. Rymed Technologies Inc. (patent infringement)

Posted On: March 28, 2008

Earlier Licenses Do Not Negate Exclusive Licensee's Standing

A recent report and recommendation from Magistrate Judge Stark found that the existence of pre-existing nonexclusive licensees does not prohibit a company from granting an exclusive license subject to those pre-existing licenses. TV Guide Online, Inc. v. Tribune Media Services, C.A. No. 05-725-SLR/LPS, Report and Recommendation Concerning Defendant Tribune's Motion to Dismiss Plaintiff TV Guide Online, Inc. for Lack of Standing (D. Del. March 26, 2008 (Public Version)). Defendant in this case moved to dismiss one of the plaintiffs (TV Guide Online, LLC) who was likely to be the party on which plaintiffs' claim for lost profits was based. Id. at 2 n.2. Tribune argued that TV Guide Online lacked standing to pursue this patent infringement action because they are not in fact an exclusive licensee. Id. at 2. The License Agreement between the two plaintiffs granted TV Guide Online "an exclusive license to the '078 patent, including the right to sue and recover for past infringement." Id. at 3 (internal citations omitted). Tribune argued that because 19 other entities also had licenses for the same patent, and further, because an additional license was issued by the parent company of the plaintiffs after TV Guide Online obtained its license, TV Guide Online could not be an exclusive licensee. Id. at 3.

Magistrate Judge Stark found that the parties "intended" the license agreement to be an "exclusive license" as it provided TV Guide Online with the right to practice the invention, the right to exclude others (except for pre-existing licensees) and the right to grant sublicenses. Id. at 7. Furthermore, the existence of prior non-exclusive licenses "does not prevent a patentee from granting an 'exclusive license' going forward." Id. at 8. Finally, Magistrate Judge Stark found that the record evidence at this stage in the proceedings (by way of a declaration and deposition testimony by the senior vice president of intellectual property for the parent company and TV Guide Online) was enough to show that the subsequent license did not defeat defendant's exclusive licensee status. Id. at 10.

For a copy of the opinion see here.

Posted On: March 25, 2008

U.S. Supreme Court Denies Cert in PharmaStem/ViaCell Dispute

On March 17, 2008, the United States Supreme Court denied PharmaStem's writ of certiorari in the case of PharmaStem Therapeutics, Inc. v. Viacell, Inc., et al. This case involved various cord blood storage patents and was originally filed in the District of Delaware. A jury originally reached a verdict for PharmaStem and against Viacell Inc., Cyro-Cell Inc., Corcell Inc. and CBR Systems Inc. in an amount of $7,124,333.92; and entered judgment on Viacell's antitrust counterclaim in favor of PharmaStem and against Viacell. Judge Sleet later overturned the infringement verdict (see a copy of the opinion here). The Federal Circuit opinion affirmed the District Court's finding of non-infringement but reversed the District Court on the issue of obviousness, finding the patents invalid and entered judgment for the defendants. (See Federal Circuit opinion here.)

Posted On: March 25, 2008

Reexam Statistics

Our fellow blogger at 271patent.blogspot recently had an interesting post discussing the statistics on reexamination in 2007 as set forth in a USPTO Report.

The latest statistics on Ex Parte Reexamination (through December 2007) have been released by the PTO. As expected, the number of reexamination requests continue to climb:

2002 - 272 filings
2003 - 392 filings
2004 - 441 filings
2005 - 524 filings
2006 - 511 filings
2007 - 643 filings
2008 - 165 filings

The success rate for requestors has not changed, and continues to favor requestors. Overall, all claims are confirmed in 26% of reexams, claims are changed in 64% of reexams, and 10% of reexams result in all claims being cancelled.

Average pendency of an ex partereexamination is 2 years, and median pendency is just over a year-and-a-half (18.6 months).

For full post see here.

Posted On: March 20, 2008

New District of Delaware Filings

3/4: Music Choice v. Viacom, Inc., Viacom International, Inc. and MTV Networks (patent infringement)
3/5: WebXchange Inc. v. The Allstate Corporation, Allstate Insurance Co., Allstate Life Insurance Co., Allstate Financial Services LLC and Allstate Financial LLC (patent infringement)
3/5: WebXchange Inc. v. Dell Inc. (patent infringement)
3/5: WebXchange Inc. v. FedEx Corporation, FedEx Kinko's Office & Print Services, Inc. and FedEx Corporate Services Inc. (patent infringement)
3/7: FlashPoint Technology, Inc. v. AT&T Mobility, LLC, d/b/a Cingular Wireless, HTC America, Inc., HTC Corp., Kyocera Wireless Corp., Kyocera Corp., LG Electronics USA, Inc., LG Electronics, Inc., Motorola, Inc., Nokia, Inc., Nokia Corp., Palm, Inc., Research In Motion Corp., Research In Motion Ltd., Sprint Spectrum L.P., d/b/a Sprint PCS, T-Mobile USA, Inc., Cellco Partnership, d/b/a Verizon Wireless (patent infringement)
3/10: FlashPoint Technology, Inc. v. Aiptek, Inc., Argus Camera Co., LLC, Bushnell Inc., DXG Tech. (USA) Inc., DXG Tech. Corp., General Electric Co., Int'l Norcent Tech., Leica Camera, Inc., Leica Camera AG, Minox GmbH, Minox USA, Inc., Mustek, Inc. USA, Musetek, Inc., Oregon Scientific Inc., Polaroid, Inc., Ritz Interactive, Inc., Ritz Camera Centers Inc., Sakar Int'l Inc. d/b/a Digital Concepts, Tabata USA, Inc., VistaQuest Corp., VuPoint Solutions, Inc., Walgreen Co., Wal-Mart Stores, Inc. (patent infringement)
3/12: Wyeth v. Watson Laboratories, Inc. and Watson Pharmaceuticals, Inc. (patent infringement)
3/14: Sanofi-Aventis and Sanofi-Aventis U.S. LLC v. Wockhardt Ltd. and Wockhardt USA, Inc. (patent infringement)
3/17: Grotto Pizza, Inc. v. Grottino, Inc. and Gianluca Arienzo (trademark infringement)

Posted On: March 12, 2008

Licensor's Ephemeral Retention of Right to Sue Defeats Licensee's Standing

In weighing a patent licensee's standing to sue for infringement, Courts often look to whether the license is exclusive and conveys all substantial rights, including the privilege to sue. But what happens when the license in question apportions the litigation right between licensor and licensee? According to District of Delaware Judge Sue L. Robinson, the licensee alone has no standing to bring suit.

The contract in question required the licensee to notify the licensor of any third-party infringement. If the licensor did not file suit within ninety days, then the licensee would be free to initiate its own action against the third party. Therein lies the problem:

While the License clearly gives [licensor] the exclusive right to sue during the first 90-day period, there is no specific, reciprocal language giving [licensee] the exclusive right to sue after the first 90-day period.

Because the licensor failed to transfer "all substantial rights" in the patent, the licensee lacked standing to sue alone. Ultimately, however, the Court suggested a cure: add the licensor as a named plaintiff.

Siemens Medical Solutions USA Inc. v. Saint-Gobain Ceramics & Plastics Inc., C.A. No. 07-190-SLR (D. Del. March 7, 2008) (Robinson, J.).

Posted On: March 11, 2008

Attorney Argument to PTO May Constitute Inequitable Conduct

In a recent memorandum order, District Judge Sue L. Robinson summarily rejected a request to jettison a party's inequitable conduct defense. Recognizing that "arguments made to the PTO can form the basis for inequitable conduct defenses under certain circumstances," the court denied a motion to dismiss without prejudice to renew.

At least at the motion to dismiss stage, the defendant's claim that attorney argument made to the examiner involved intentional falsehoods about a material reference must stand.

Elan Corp. v. Teva Pharma. USA Inc., C.A. No. 07-552-SLR (D. Del. March 7, 2008) (Robinson, J.).

Posted On: March 9, 2008

D. Del. in 2007: Twenty Percent IP Caseload

With all the talk of the economy's woes and the renewed prospect of substantial patent reform, many commentators predict bleak times ahead for IP litigators. Amid this sea of gloom, it's good to know that Delaware, home to over half the country's Fortune 500 companies and an experienced judiciary accustomed to hearing those firm's disputes, remains one of the leading patent jurisdictions in the country.

In 2007, IP plaintiffs filed 181 cases, 30 more than in 2006. These 2007 IP cases (patent, trademark, and copyright) filled nearly 20 percent of the District of Delaware's entire civil docket. To put the number of IP cases our judges handled in perspective, consider that in all of last year, the Court received only 46 non-IP tort complaints. Of all civil categories, only prisoner petitions exceeded IP filings, and not by much: 202 to 181.

By comparison, the Eastern District of Texas's 338 IP cases filed in the twelve-month period ending March 2007 (the latest stats available) represented 11 percent of its civil docket. The 144 IP cases filed in the Eastern District of Virginia in the same period comprised only 4 percent of that Court's civil filings.

Coupled with a low reversal rate, Delaware is indeed a good place to be. While the "rocket dockets" shift in and out of favor (see IP Law 360's recent take on this development), Delaware will continue business as usual.

Posted On: March 8, 2008

Nationwide Internet-Marketing Campaign Confers Personal Jurisdiction in Delaware

Continuing a long tradition of interpreting Delaware's long-arm statute broadly, Judge Joseph J. Farnan Jr. recently rejected an attempt by an Illinois company, Emulgen, to escape jurisdiction in Delaware. In the underlying infringement suit, Emulgen contended, among others, that its miniscule revenues from Delaware sales and its lack of knowledge that Delaware customers would receive its marketing emails could not confer personal jurisdiction. The Court rejected these assertions out of hand:

Emulgen contracted with a third-party to conduct a national e-mail marketing campaign, intending to reach the entire United States . . . . There is no evidence in the record that Emulgen attempted to limit its [marketing e-mails and shipments] to certain states only.

As a result, "Emulgen's use of the internet as a marketing tool and its decision to contract with a third-party to market its product through a nationwide e-mail broadcast are sufficient to establish specific jurisdiction" under the long-arm statute. The Court also rejected Emulgen's sales argument, finding that although potentially de minimis, the fact that some sales occurred in Delaware sufficiently triggered long-arm jurisdiction.

This case not only reaffirms the far reach of Delaware's long-arm statute, but it puts the bar on notice that a company's nationwide internet activity will likely impart jurisdiction in Delaware.

Tristrata Tech. v. Emulgen Labs. Inc., C.A. No. 06-652-JJF (D. Del. Feb. 25, 2008) (Farnan, J.).

Posted On: March 8, 2008

Delaware Judge Interprets KSR in Obviousness Decision

In a recent opinion, Judge Joseph J. Farnan Jr. had the opportunity to reflect on the reach of the Supreme Court's KSR decision. In its post-trial opinion on the issue of invalidity, the Court examined a claim of obviousness in light of the high court's mandate:

The Supreme Court [ ] explained that there is no necessary inconsistency between the underlying idea of the teaching, suggestion, or motivation test and the Graham analysis so long as the teaching, suggestion, or motivation test is not applied as a rigid and mandatory formula. In other words, the Supreme Court has acknowledged that the teaching, suggestion, or motivation test can provide helpful insight to an obviousness inquiry. (internal quotation marks omitted)

Accordingly, the Court held that, at least in chemical-compounds cases, it "remains necessary to identify some reason that would have led a chemist to modify a known compound in a particular manner to establish prima facie obviousness of a new claimed compound." The result? Judgment of no invalidity for the patentee.

The Proctor & Gamble Co. v. Teva Pharmaceuticals USA, Inc., C.A. No. 04-490-JJF (D. Del. Feb. 28, 2008) (Farnan, J.).

Posted On: March 7, 2008

Scheduling with Magistrate Stark

A recent order from the district court's new magistrate, Magistrate Judge Stark, sheds some light on his case scheduling process. Power Integrations, Inc. v. BCD Semiconductor Corp., C.A. No. 07-633-JJF-LPS, Memo. Order (D. Del. Feb. 11, 2008). Of particular note, Magistrate Stark is following the same discovery dispute procedure as Judge Jordan previously used, and Magistrate Thynge continues to use. When the parties have a dispute, they should contact chambers to arrange for a teleconference. Forty-eight hours prior to the teleconference the party seeking relief files a 3 page letter setting forth the issues and its position and then 24 hours later, the opposing party files its 3 page opposition letter. (Note: a copy of any sealed letter or exhibit must be provided to the Court within 1 hour after e-filing.) After the teleconference the judge will decide whether to order further briefing.

The Memorandum Order also clarifies Magistrate Stark's position on the "3-day rule" regarding service. The Order states that "Fed. R. Civ. Proc. 6(e) provides for three extra days for responding to documents electronically filed, whether or not e-mailed and/or hand-delievered as well."

Finally, Magistrate Stark's tutorial process is different than the other sitting judges in this district. Pursuant to this Order, each party files under seal a thirty minute CD or video of their tutorial with no discussion or argument about claim construction. Each party within 10 days can then submit a five page written response commenting on the opposing party's tutorial.

We will continue to watch to see if the schedule in this case translates into a future form Rule 16 schedule for his patent docket.

For a copy of the opinion: Power Integrations Inc. v. BCD Semiconductor Corp.

Posted On: March 6, 2008

Magistrate Thynge Reappointed

On February 1, 2008, Mary Pat Thynge was reappointed as a full-time magistrate judge for the District Court of the District of Delaware. The order states that her new eight-year term will begin on June 17. Until last August, Magistrate Thynge was the district's only magistrate and many patent litigators will know her for her reputation in successfully mediating patent cases. Last August, she was joined by Magistrate Leonard P. Stark

See a copy of the order here: Magistrate Thynge Reappointment Order

Of note, our colleague, Monté T. Squire of Young Conaway Stargatt & Taylor was appointed to the Merit Selection Panel which was charged with reviewing the Magistrate's prior service, receiving and reviewing comments from the Bar and public and making a recommendation to the Court regarding the Magistrate's reappointment.

For a copy of Mr. Squire's biography

Posted On: March 5, 2008

CLE Entitled "Federal Practice in the District of Delaware: Openings, Closings and Case Themes" to be held March 18th

The Delaware Chapter of the Federal Bar Association, in conjunction with the District Court of Delaware, will be presenting the first in a series of trial advocacy CLE programs entitled "Federal Practice in the District of Delaware: Openings, Closings and Case Themes" on March 18, 2008 at 1:00 p.m. Registration is currently limited to members of the FBA, however, registration will open up to non-members on Monday, March 10th for anyone else who would like to attend. Space is limited.

Posted On: March 5, 2008

A Quiet February…

A quick perusal of our blog for the month of February might cause one to think that the three of us left for a month long ski trip in the Rockies. Rest assured, we were here in Delaware following the few district court opinions that issued. We are speculating that small number of opinions may be due to the case reassignments and readjusting of dockets based on the order issued by the Court in late January regarding the vacant judicial position. If that's the case, things are working their way out as quite a few opinions have issued in the last week or so. Postings to come in the near future…

Posted On: March 5, 2008

U.S. Attorney Colm Connolly Nominated for Vacant Judicial Position

The White House announced last Tuesday it has nominated U.S. Attorney Colm F. Connolly to fill the vacant judicial position in the District Court for the District of Delaware. The position was left vacant when former district court judge Kent A. Jordan was elevated to a position on the Third Circuit Court of Appeals. Judge Jordan was confirmed to the Third Circuit on December 8, 2006. The nomination of Colm Connolly will now proceed to the U.S. Senate for confirmation.

Posted On: March 5, 2008

New District of Delaware Filings

2/8: SWIMC Inc. v. Hy-Tech Thermal Solutions (trademark infringement)
2/12: Edwards Lifesciences AG and Edwards Lifesciences LLC v. CoreValve, Inc. (patent infringement)
2/14: Gannett Satellite Information Network, Inc. v. Office Media Network, Inc. (patent infringement)
2/22: W.L. Gore & Associates, Inc. and Gore Enterprise Holdings, Inc. v. Valeo-Sylvania L.L.C. and Label Technologies, Inc. (patent infringement)
2/25: L'Athene, Inc. v. Earthspring LLC and GreekIsland Labs LLC (trademark infringement, unfair competition)
2/25: SmithKline Beecham Corporation d/b/a GlaxoSmithKline v. Barr Pharmaceuticals, Inc. and Barr Laboratories, Inc. (patent infringement)
2/26: Ribbit Corporation v. Rates Technology Inc. (declaratory judgment for patent non-infringement)
2/26: JSA Technologies, Inc. v. Data Futures, Inc. (patent infringement)
2/29: Arysta LifeScience North America Corporation v. AXSS USA, LLC (patent infringement)
3/3: CRS, LLC v. Turner Broadcasting System, Inc. (patent infringement)