Posted On: September 30, 2008

Sue L. Robinson: Fees Motion Incorrect Vehicle for Analyzing Enforceability

On Friday, District Judge Sue L. Robinson resolved an atypical motion for attorney fees. By its motion, a prevailing defendant sought reimbursement on the ground that plaintiff alleged inequitable conduct rendered the subsequent litigation frivolous. The catch? The Court never actually ruled on the unenforceability issue:

"Given the fact that plaintiff's claims of infringement asserted against defendants have been dismissed with prejudice, defendants are asking me to make a substantive determination as to the validity of a patent, under the guise of a motion for attorney fees, when a court would not otherwise have jurisdiction to do so. I decline to undertake such an analysis."

Novo Nordisk A/S v. Sanofi-Aventis, C.A. No. 05-645-SLR (D. Del. Sept. 26, 2008) (Robinson, J.).

Posted On: September 29, 2008

Joseph J. Farnan: $3 Million Plaintiff's Verdict Entered

Following a plaintiff's jury verdict and post-trial proceedings, including sanctions motions, District Judge Joseph J. Farnan Jr. has entered a final judgment in the St. Clair/Fuji infringement litigation. The Court entered judgment for St. Clair in the amount of $3,003,465.00, with interest and costs.

St. Clair Intellectual Property Consultants Inc. v. Fuji Photo Film Co. Ltd., C.A. No. 03-241-JJF (D. Del. Sept. 25, 2008) (Farnan, J.).

Posted On: September 29, 2008

Jury Verdict for Plaintiff Siemens Medical Solutions, USA, Inc.

Last week, a jury returned a verdict for Plaintiff Siemens Medical Solutions, USA, Inc. finding that Saint-Gobain Ceramics & Plastics infringed U.S. Patent No. 5,525,905 related to technology used in PET scanners (medical imaging scanners). Although the jury did not find willful infringement, the total compensatory damages awarded were $52.3 million. Siemens Medical Solutions, USA, Inc. v. Saint-Gobain Ceramics & Plastics, C.A. No. 07-190-SLR, Jury Verdict (D. Del. Sept. 25, 2008).

Another plaintiff's verdict in the District of Delaware...

For a copy of the verdict form see here.

Posted On: September 25, 2008

Joseph J. Farnan: Failure to Disclose Does Not Always Equate to Inequitable Conduct

Resolving a charge of inequitable conduct requires a close reading of an often conflicting factual record for clues that evince an intent to deceive. In a post-trial opinion released yesterday, District Judge Joseph J. Farnan Jr. acknowledged that fine evidentiary line by reluctantly refusing to find a patentee defrauded the PTO by summarizing, instead of naming, the controlling prior art.

Although labeling the mode of disclosure suspicious, the Court, based on these findings, ultimately declined to hold the patent-in-suit unenforceable:

"[T]he Court is troubled by the fact that Dr. Eklund possessed known material prior art references but did not disclose the actual references themselves. However, absent a bright line rule by the Federal Circuit that non-disclosure of possessed, material art equates with inequitable conduct, the Court is unwilling to strike a patent in the circumstances of a plausible explanation for that non-disclosure."

This decision underscores the importance of the standard of proof in patent litigation: to demonstrate an inequity clearly and convincingly requires more than arguing that the patentee neglected to choose the optimal vehicle for disclosure.

Power Integrations Inc. v. Fairchild Semiconductor Int'l Inc., C.A. No. 04-1371-JJF (D. Del. Sept. 24, 2008).

Posted On: September 22, 2008

Joseph J. Farnan: Invalidity Holding Trumps Infringement Reference in Final Judgment

Following post-trial decisions on invalidity and evidentiary matters earlier this year, District Judge Joseph J. Farnan Jr. has entered a final judgment in the Boehringer/Mylan Pharmaceuticals ANDA litigation. In its June 2008 decision, the Court held the patent-in-suit infringed but invalid. In negotiating the subsequent final judgment, the parties disputed whether the Court should memorialize its finding of infringement. After the parties submitted competing proposals, the Court, without comment, chose to omit any reference to its infringement finding.

Boehringer Ingelheim Int'l GMBH v. Barr Labs. et al., C.A. No. 05-700-JJF (D. Del. Sept. 18, 2008) (Farnan, J.).

Posted On: September 19, 2008

Young Conaway to Host INTA Roundtable: "Internet Enforcement - Who, What, and Where Are We to Search?"

Young Conaway Stargatt & Taylor, LLP will host the International Trademark Association’s Wilmington, Delaware roundtable on Wednesday, October 22, from noon to 2 p.m. The topic is “Internet Enforcement – Who, What, and Where Are We to Search?” and lunch will be served. Young Conaway Associate Sara Beth Reyburn Kohut will chair the discussion that will address laws applicable to trademark issues and the internet, selecting and registering trademarks and domain names, domain name piracy, metatags and keyword use, hyperlinking and framing, cybersmearing, and strategies for protecting and enforcing trademarks and other intellectual property on the internet.

We expect it to be an interesting discussion that will benefit those who have experience with these issues, as well as those who want to learn more about them.

Membership in INTA is not required to attend the roundtable, but all attendees must register and there is a $45 fee. For more information, visit or contact Sara Beth Reyburn Kohut at or 302 571 5004.

Author: Sara Beth Reyburn Kohut

Posted On: September 16, 2008

Judge Sue L. Robinson: Calculating Pre-Judgment Interest, and Other Damages-Related Inquiries

District Judge Sue L. Robinson has issued a decision in the long-running Cordis/Medtronic litigation clarifying the standards and procedures surrounding several damages issues common to patent litigation.

In yesterday's memorandum opinion, the Court first addressed pre-judgment interest, holding that the proper measure is the prime rate of interest, rather than the U.S. treasury-bill rate, compounded quarterly. The Court also considered the award's tax treatment, noting that because "taking into account the tax consequences of a damages award best reflects reality," the final interest award should be based on the "after tax amount of damages."

Finally, the Court rejected a request for a new damages trial based on an intervening arbitration decision that recognized the defendant as a licensee. According to the Court, an earlier stipulation of infringement in the litigation precluded such a request: "The Court declines to allow [defendant] out of its agreement based on later, business-related proceedings of which it was not a part."

Cordis Corp. v. Medtronic Vascular Inc., C.A. No. 97-550-SLR (D. Del. Sept. 15, 2008).

Posted On: September 15, 2008

Chief Judge Gregory M. Sleet: Premature to Reconsider Claim Construction While Reexam Ongoing

District court litigation, reexamination, and agency adjudication are only some of the pitfalls that accompany the life of a patent. When proceeding simultaneously, these procedural avenues only increase the risk of contradictory rulings, especially in the area of claim construction. Perhaps sensing this risk, District of Delaware Chief Judge Gregory M. Sleet has, in a recent decision, refused to consider a PTO claim construction on the ground that reexamination is ongoing.

In the underlying post-trial litigation, the patentee had obtained a favorable claim construction from the Court. The infringement defendant then sought reexamination in the PTO, and ultimately won a different claim construction. Based on this development, defendant sought a new trial. The Court declined, noting that defendant's motion was simply a request for reconsideration of the Court's claim construction:

"Insofar as Tyco's most recent bite at the apple raises the patent examiner's recent final office action construing the [claim in issue], this information is not ripe for consideration. As Tyco aptly notes in its brief, '[t]he reexamination procedure is not necessarily over, as [the patentee] has the right to appeal.' Thus, the prosecution history remains incomplete and the court, therefore, denies Tyco's newest motion for reconsideration of its claim construction ruling."

Becton Dickinson & Co. v. Tyco Healthcare Group LP, C.A. No. 02-1694-GMS (D. Del. Sept. 11, 2008) (Sleet, C.J.).

Posted On: September 10, 2008

New District of Delaware Intellectual Property Filings

8/20: Chase Bank U.S.A. N.A. v. Source Inc. (patent infringement)
8/21: CIMA Labs Inc., Azur Pharma Ltd. and Azur Pharma International III Ltd. v. Barr Laboratories, Inc. and Barr Pharmaceuticals, Inc. (patent infringement)
8/22: Endo Pharmaceuticals Inc. and Penwest Pharmaceuticals Co. v. Sandoz, Inc.
8/25: Robert Bosch LLC v. Pylon Manufacturing Corp. (patent infringement)
8/27: Velcro Industries B.V. and Velcro USA Inc. v. Taiwan Paiho Ltd. and Radio Shack Corp. (patent infringement)
8/29: Glaxo Group Ltd. and SmithKline Beecham Corp. v. Lupin Ltd. and Lupin Pharmaceuticals, Inc. (patent infringement)
9/3: Hopkins & Sons, Inc. v. Delaware Moving & Storage, Inc. (trademark infringement)
9/4: 326 Associates LP v. ReturnSide LLC (trademark infringement/anti-cybersquatting)
9/8: Apeldyn Corporation v. AU Optronics Corp., AU Optronics Corp. America, Chi Mei Optoelectronics Corp., Chi Mei Optoelectronics USA, Inc., Samsung Electronics Co. Ltd., et al. (patent infringement)

Posted On: September 5, 2008

Federal Bar Association (Delaware Chapter): Upcoming CLE

On September 11, 2008 at 3:00 p.m., the Delaware Chapter of the Federal Bar Association in conjunction with the Bankruptcy Court for the United States District Court of Delaware will be presenting a CLE entitled "Intersections of Bankruptcy and Intellectual Property." The keynote speaker will be Mr. Wilbur Ross, a renowned American investor known for restructuring failed companies in industries such as steel, coal, telecommunications, foreign investments and textiles and specializing in leveraged buyouts. In addition to a variety of local Delaware practitioners, panelists will include the Chief Judge Gregory M. Sleet, Judge Mary F. Walrath, Judge Brendan L. Shannon, Susan Hackett, Esq. (Senior Vice President and GC, Association of Corporate Counsel) and Dana Hayter (Director of Licensing, Intel Corporation).

Topics to be addressed include:
- Attorney/client privilege issues in bankruptcy and intellectual property
- Treatment of licenses and other intellectual property interests in bankruptcy

2.0 hours of Delaware CLE credits are available (including 1.0 hours of enhanced ethics). The cost is $75.00 and checks should be made payable to the FBA. If interested, please see the attached flyer for more information.

See flyer here.

Posted On: September 3, 2008

Judge Joseph J. Farnan, Jr.: There Are Limits to Discovery

Parties to litigation, and particularly high stakes patent litigation, spend a lot of time and money discovering facts that may prove their case or defense. Judge Farnan in a recent opinion has made clear, however, that there are limits to what a party can obtain under the rules. Purdue Pharma Products, L.P. v. Par Pharmaceuticals, Inc., C.A. No. 07-255-JJF, Memo. Order (D. Del. Aug. 26, 2008).

The Court in Purdue Pharma, granted a third party's motion to quash a subpoena which sought documents related to an opposition to the European counterpart of the patent-in-suit and documents related to the knowledge a non-party foreign individual that was working on similar technology. In deciding to grant the motion, the Court found that the foreign patents and printed publications sought from the subpoenaed party are available without the defendants burdening the courts, the parties or foreign individuals. Id. at 5. The information related to a foreign individual's potential "knowledge or use" of the patented product is not prior art and is "too peripherally relevant to the matter at issue to justify issuing a letter request under the Hague Convention." Id.

Lesson learned: Parties seeking to burden both the district courts, foreign tribunals and foreign individuals in the quest for documents and testimony should be able to demonstrate that the information is sufficiently relevant to the litigation to "justify the burden and expense." Id. at 6.

For a copy of the opinion see here.

Posted On: September 3, 2008

Judge Sue L. Robinson: A Party Cannot Use Confidential Information as "both a shield and a sword"

In a recent simple, and straightforward opinion, Judge Robinson granted a plaintiff's motion to exclude expert testimony where the expert report relied on knolwedge of work done for a government agency which was not able to be disclosed. Siemens Medical Solutions USA, Inc. v. Saint-Gobain Ceramics & Plastics, Inc., C.A. No. 07-190-SLR, Memo. Order (D. Del. Aug. 20, 2008).

A constant theme in opinions resolving disputes over discovery is fairness and this opinion was no exception. Judge Robinson stated that her analysis need only "start and end" with the "fundamental principle of fairness." Id. at 2. The expert in this case was employed by a government agency and prohibited from producing his work product. His expert report in the litigation, however, relied on his recollection of some of this government work. The court found that the expert cannot rely on the recollection of this work product where the work product itself is otherwise shielded from discovery. Id.

For a copy of the opinion see here.