Posted On: May 30, 2008

New District of Delaware Intellectual Property Filings

5/19: S.O.I. TEC Silion On Insulator Technologies, S.A., Commissariat a l'Energie Atomique v. MEMC Electronic Materials, Inc. (patent infringement)
5/20: Smartrac NV, Smartrac IP BV, Smartrac Technology Inc. v. On Track Innovations Ltd., OTI America, Inc. (patent infringement)
5/21: Unilin Beheer BV, Flooring Industries Ltd. sarl v. Pergo (Europe) AB, Pergo LLC (patent infringement)
5/21: Finjan Software Ltd. v. Aladdin Knowledge Systems Inc., Aladdin Knowledge Systems Ltd., Does 1-100 (patent infringement)
5/22: AstraZeneca LP, Aktiebolaget Draco, KBI Inc. and KBI-E Inc. v. Barr Laboratories, Inc., Barr Pharmaceuticals, Inc. (patent infringement)
5/23: Power Integrations Inc. v. Fairchild Semiconductor International, Inc., Fairchild Semiconductor Corp. and System General Corp. (patent infringement)
5/28: Oxford Gene Technology IP Limited v. BioArray Solutions Ltd. (patent infringement)

5/28: Wyeth v. Sandoz Inc. (patent infringement)

Posted On: May 30, 2008

Judge Sleet on Civil Contempt

Civil contempt. Not an issue that comes up frequently in patent litigation, but something the District of Delaware has shown it will take very seriously. The Court in Fisher-Price, Inc. v. Safety 1st, Inc., found that even inadvertent or insignificant sales of an infringing product will not excuse a violation of a court-ordered injunctive order. C.A. No. 01-051-GMS, Memorandum, at 5-6 (D. Del. May 5, 2008). Furthermore, when an injunctive order requires a party to "make every reasonable effort possible" to retrieve infringing products from retail shelves, the Court found that hiring another company to retrieve the products did constitute "reasonable effort", however, inconsistent behavior with different retailers and delayed retrieval efforts will not constitute "reasonable effort". Id. at 6-7.

See a copy of the opinion here.

Posted On: May 20, 2008

New District of Delaware Intellectual Property Case Filings

5/5: J&J Sports Productions Inc. v. Lynn Tran, TRJAL LLC (copyright - cable system piracy)
5/5: J&J Sports Productions Inc. v. Jeff Haslow, Fenway Barr LLC (copyright - cable system piracy)
5/5: Hesco Bastion Limited v. ACS Holdings USA LLC (patent infringement and trademark infringement)
5/5: Edgecraft Corporation v. Luckyman Enterprise Co. Ltd. (patent infringement)
5/6: TRW Vehicle Safety Systems Inc., TRW Automotive GmbH v. Takata Corporation, TK Holdings, Inc., Takati Petri AG (patent infringement)
5/8: Autism Society of America Inc. v. Autism Society of Delaware, Lisa Albany, Karen Bashow, Yolanda Flanigan, Robert Gilsdorf, et al. (trademark infringement)
5/9: Kenexa BrassRing Inc. v. Vurv Technology, Inc. (patent infringement)
5/14: Apple Inc. v. Atico International USA Inc., New Atico International Limited Corporation (patent infringement, trademark infringement and unfair competition)
5/16: Hilite International Inc. v. BorgWarner Inc., BorgWarner Morse Tec Inc. (patent infringement)
5/16: Genetics Institute, LLC v. Novartis Vaccines and Diagnostics, Inc. (adjudication of priority of interfering patents)
5/16: Forest Laboratories, Inc., Forest Laboratories Holdings, Ltd., Merz Pharma GmbH & Co. KGaA, Merz Pharmaceuticals GmbH v. Orgenus Pharma, Inc. (patent infringement)

Posted On: May 14, 2008

D. Del. Judges Discuss Patent Litigation Pet Peeves

This morning's edition of IP Law360 (subscription) features an informative article on judges' pet peeves in patent litigation. Featured in the piece are two D. Del. judges: Chief Judge Sleet and Judge Farnan.

Of note are the judges' comments on summary judgment motions and the use of experts. On the issue of summary judgment, Chief Judge Sleet noted that:

Generally in these cases, both parties have experts who are ready, willing, and able to come to court and dispute the facts. It can be a significant waste of time and money to bring a summary judgment motion.

Judge Farnan agreed: "The problem is, if I'm a lawyer for a generic and I'm attacking a patent and I think it is obvious because of a combination of two prior pharmaceutical products, there's almost always going to be a dispute of facts."

On the topic of experts, Judge Farnan cautioned litigants against expert overkill:

I pretty much let [litigants] try the case they want, but I talk to them in the pretrial conference about the value [experts] offer. I have to write an opinion, and they want that opinion yesterday. So I tell them, 'the more you put into that trial record, the more I have to consider and address.'

Patent litigation is an aggressive, competitive field of law. The judges' comments today add valuable perspective - that of the decision maker - to how best to champion the causes of our clients.

Posted On: May 7, 2008

Joseph J. Farnan: Earlier D. Del. Litigation Cannot Defeat First-Filed Rule

Can earlier litigation on the same patent and in the same court justify a departure from the well-worn first-filed rule? According to District Judge Joseph J. Farnan Jr., it does not. The DJ plaintiff, who had earlier been sued in the Eastern District of Texas, argued against transfer there based on prior Delaware litigation involving the same patent.

The Court rejected this argument, holding that the earlier case did not constitute a "special circumstance" justifying a departure from the first-filed rule. Because that litigation involved a different Delaware judge, the Court could not be "substantially more familiar" with the patent-in-suit than the Texas district court. With no other aspects of the dispute favoring litigation in Delaware, the Court transferred the case.

Comcast Cable Communications LLC v. USA Video Tech. Corp., C.A. No. 06-407-JJF (D. Del. April 29, 2008) (Farnan, J.).

Posted On: May 6, 2008

Joseph J. Farnan: Subpoena Dispute Leads to Ethics Hearing

District of Delaware Judge Joseph J. Farnan Jr. recently weighed in on a patent-related document subpoena dispute, touching on professional conduct in so-called "rocket docket" litigation. By ordering an evidentiary hearing, the Court reminded the parties (and the reader) of its inherent supervisory power over litigants:

In the Court's experience, lawyering in fast paced, high stakes litigation can sometimes wander from the professional standards expected. . . . In order to resolve the legal issues presented by the petition and the professional issues presented by the briefing, the Court will conduct an evidentiary hearing.

To reinforce its point, the Court ordered that even if the "subpoena issues are fully resolved, the hearing must still go forward to resolve the professional issues." Patent litigators take note: in this district, allegations of unprofessionalism will be fully vetted.

Digacomm LLC v. Vehicle Safety & Compliance LLC, C.A. No. 08-MC-063-JJF (D. Del. April 29, 2008) (Farnan, J.)

Posted On: May 2, 2008

Motion to Dismiss Foreign Corporation Denied by District of Delaware

A foreign corporation manufactures in a foreign country products alleged to infringe a U.S. Patent. They provide modules to original equipment manufacturers here in the U.S. who then incorporate them into products sold to consumers through retailers across the country and on the Internet. The foreign corporation also owns directly and indirectly subsidiaries which are Delaware corporations. Are these contacts with Delaware enough to establish personal jurisdiction over the foreign corporation? Judge Farnan recently answered that question in the affirmative in his decision denying a motion to dismiss filed by defendants in LG.Philips LCD Co., Ltd. v. Chi Mei Optoelectronics, Corp., et al., C.A. Nos. 06-726-JJF, 07-357-JJF, Memo. Op. (D. Del. Apr. 29, 2008).

Jurisdiction under the Delaware Long-Arm Statute was proper because the foreign corporation, Chi Mei Optoelectronics, "acted in consort" with the original equipment manufacturers here in the United States to place products containing the allegedly infringing modules into a national distribution network which ultimately allowed some products to be sold in Delaware. Id. at 12. The fact that there was a "middle man" through which the defendant sold its product did not protect it from the possibility of being subject to jurisdiction of the Delaware court. Id. Furthermore, the plaintiff, LG.Philips provided "sufficient evidence" of revenues from sales of the accused products in Delaware. Id. The Court noted and "found instructive" the defendant's failure to provide any evidence rebutting the "factual presumption that a portion of [their] large revenues from the United States market are the result of products incorporating its ... module sold in Delaware..." Id.

Jurisdiction also comports with Due Process, because given the defendant's contract with its original equipment manufacturers (and one major one in particular), the substantial quantities of modules it ships to the U.S. to be incorporated into end products and sold in retail stores here, and the size of its business, Judge Farnan found it "far from a stretch to conclude" that the modules would end up in Delaware. Id. at 14.

For a copy of the opinion click here.