Posted On: November 26, 2008

Magistrate Judge Mary Pat Thynge: Markman Opinion

In the case of Parker-Hannifin Corporation v. Zippertubing (Japan), Ltd., Magistrate Thynge construed the following claim terms found in five patents related to flame-retardant, electrically conductive materials:

(1) "which is not V-0 rated"
(2) "exterior surface"
(3) "thickness dimension"
(4) "coating at least a portion of the interior surface"
(5) "being/is effective to afford said gasket a flame class rating of V-0"
(6) "penetrating...such that the exterior surface remains electrically conductive"
(7) "between about 30-50% by weight"
(8) "at least about 30% by weight"
(9) "at least about 50% by dry weight"

Despite defendant's arguments that the claim terms describing the weights should be held indefinite, effectively arguing that summary judgment on indefininteness was appropriate at this stage of the litigation, the Court adopted the proposed construction proffered by the plaintiff, but implied that the defendant may be able to raise their indefiniteness argument again during the summary judgment phase of the case. Id.

Parker-Hannifin Corp. v. Zippertubing (Japan), Ltd., C.A. No. 06-751-MPT, Memo. Order (D. Del. Nov. 18, 2008).

Posted On: November 26, 2008

Chief Judge Gregory M. Sleet: Motion to Set Aside Default Judgment Denied

A defendant cannot complain to have a default judgment set aside where plaintiff would be prejudiced, there is no meritorious defense and their conduct in defaulting was culpable. Amazon.com, Inc. v. Citi Services, Inc., Citi Services, Ltd., Theochari and Smith, C.A. No. 99-543-GMS, Memorandum (D. Del. Nov. 21, 2008). In this case, plaintiff brought suit against the defendants for trademark and copyright infringement, unfair competition and dilution. Id. The defendants moved to dismiss the complaint and prior to the completion of briefing on that issue, defense counsel moved to withdraw. Id. at 2. The court granted the motion to withdraw and ordered the defendants to obtain new counsel and respond to outstanding discovery or expose themselves to the possibility of a default judgment being entered against them. Id. After multiple orders reminding the defendants of their obligation to respond and to attend a conference with the Court, the Court entered default judgment against all defendants including an award of monetary and injunctive damages to the plaintiff. Id. at 3. Over six years later, the individual defendants (Smith and Theochari) moved to set aside the default judgment and order.
The Court declined to set aside the judgment. In his decision, Judge Sleet found that lifting the default judgment would be extremely prejudicial to the plaintiff whose judgment would be at risk and would have to re-litigate its claims. Furthermore, the lapse of over six years would impact the evidence and witnesses available to plaintiff to prove their case and there may be additional issues regarding the statute of limitations among others. Id. at 5. The defendants failed to show a meritorious defense because the Court previously entered an order denying defendants’ motion to dismiss for lack of personal jurisdiction. Id. at 6. Finally, defendants’ “repeated failure to respond to discovery request and the court’s order to secure new counsel” demonstrates their culpability. Id.

Amazon.com, Inc. v. Citi Services, Inc., Citi Services, Ltd., Theochari and Smith, C.A. No. 99-543-GMS, Memorandum (D. Del. Nov. 21, 2008).

Posted On: November 26, 2008

Judge Joseph J. Farnan, Jr.: No Jurisdiction Over Section 291 or 146 Claims Where Patentee Files Disclaimer

Once a patentee files a disclaimer, any cause of action related to an interference proceeding is mooted and therefore the federal court lacks jurisdiction to hear a declaratory judgment dispute. 3V, Inc. v. CIBA Specialty Chemicals Corp., C.A. Nos. 06-593-JJF, 06-629-JJF, 06-672-JJF, Opinion, at 10 (D. Del. Nov. 19, 2008). If a party wishes to continue to address the priority date of the claims or whether a disclaimed patent constitutes prior art, they can assert those claims in any future litigation surrounding potential infringement, but it is not appropriate for the court to address them in the context of an appeal from the Board of Patent Appeals and Interferences once one of the patents involved in the underlying interference has been disclaimed. A priority dispute must exist to establish federal jurisdiction over a Section 291 or Section 146 action and interfering patents are a prerequisite to any priority dispute. Id. at 12.

The court also denied defendant’s motion for leave to discover documents related to the plaintiff’s disclaimer and decision to file the disclaimer. Id. at 14. Defendant sought such documents because, they argued, the plaintiff purposefully withheld their intent to file a disclaimer from the defendant in order to drive up litigation costs and therefore defendant should be entitled to exceptional case damages. Id. at 5. The court found such information to likely constitute work-product or be subject to the attorney-client privilege. Id. at 14-15. Furthermore, the fact that defendant spent money and time engaging in discovery was not sufficient to justify the burden of additional discovery. Id. at 15.

3V, Inc. v. CIBA Specialty Chemicals Corp., C.A. Nos. 06-593-JJF, 06-629-JJF, 06-672-JJF, Opinion (D. Del. Nov. 19, 2008).

Posted On: November 21, 2008

Magistrate Judge Mary Pat Thynge: What are "Reasonable" Attorneys' Fees?

What are reasonable attorneys’ fees when a court finds a plaintiff pursued litigation in bad faith as to 29 of 33 claims in a total of 3 patents? That was the question raised by the parties and addressed by Magistrate Judge Thynge in a recent opinion, Microstrategy Inc. v. Crystal Decisions, Inc. d/b/a Business Objects Americas, C.A. No. 03-1124-MPT, Memo. Order (D. Del. Nov. 19, 2008). After the Court awarded defendant’s motion for fees and expenses pursuant to 35 U.S.C. 285, (see earlier blog posting here), the defendant submitted its request for approximately $2 million in fees and expenses and additional fees incurred in submitting the original motion for fees and the submission supporting their fee request. Id. at 3. Plaintiff argued that the only fees that should be awarded are those where the invoices detail that the time was spent specifically on defending the 29 claims that were found invalid and not infringed, and that the block-billed invoices that defendant submitted were therefore inadequate. Id. at 4.

The Court found that “[a]lthough many of the entries do not address a specific patent, they describe conduct and tasks consistent with and necessary in patent litigation.” Id. at 9. Following the District of Maryland’s opinion in Beckman Instruments Inc. v. LKB Produkter AB, 17 U.S.P.Q.2d 1190 (D. Md. 1990), aff’d, 930 F.2d 37 (Fed. Cir. 1991), Magistrate Judge Thynge further held that it was not necessary for the defendant or the Court to determine “precisely what fees and expenses are solely attributable to defending those patent claims made in bad faith.” Id. The legal work performed must be related in some way to the bad faith not that it flow solely from the bad faith or misconduct. Id. at 10.

Therefore, defendant was entitled to $2,249,387.22 in fees and costs less the overhead costs charged. Id. at 11. The Court awarded an additional $138,399.02 for fees and costs related to the fee application and related briefing. Id. at 13.

As a procedural note, this case was a fee petition after an award of summary judgment and not after a full trial on the merits.

Microstrategy Inc. v. Crystal Decisions, Inc. d/b/a Business Objects Americas, C.A. No. 03-1124-MPT, Memo. Order (D. Del. Nov. 19, 2008).

Posted On: November 20, 2008

District of Delaware New Intellectual Property Filings

10/30: Sequenom Inc. v. Ibis Biosciences (patent infringement)
10/31: Belden Technologies Inc. v. LS Corp., LS Cable Ltd., LS Cable America, Inc., Superior Essex Inc., Superior Essex Communications LP (patent infringement)
11/4: Purdue Pharma Products LP, Napp Pharmaceutical Group Ltd., Ortho-McNeil-Janssen Pharmaceuticals Inc. v. Impax Laboratories, Inc. (patent infringement)
11/5: LG Electronics, Inc. v. ASKO Appliances Inc., ASKO Cylinda AB, ASKO Appliances Holding AB, Antonio Merioni Spa, Daewoo Electronics Corp. (patent infringement)
11/6: Rembrandt Technologies LP v. Fox Television Stations, Inc. and MyNetworkTV Inc. (patent infringement)
11/12: Synthes (USA) v. Spinal Kinetics Inc. (patent infringement)
11/17: Ameranth, Inc. v. Marc D. Kessman, TeknoWidgets, LLC (misappropriation of trade secrets)
11/17: Media Technologies Licensing LLC v. Printroom, Inc. (patent infringement)
11/19: Eli Lilly and Company and The Trustees of Princeton University v. Teva Parenteral Medicines, Inc. (patent infringement)

Posted On: November 11, 2008

Federal Circuit: Judge Robinson Liability Determination Affirmed

The Federal Circuit has affirmed a liability determination by District of Delaware Judge Sue L. Robinson. In the underlying litigation, the district court rejected all parties' claims: the patentee failed to demonstrate infringement, and the defendants came up short in their invalidity and unenforceability cases. Without discussion, the Federal Circuit agreed.

Takeda Pharma. Co. Ltd. v. Teva Pharma. USA Inc., No. 2008-1314 (Fed. Cir. Nov. 7, 2008) (per curiam).

Also see the district court decision: Takeda Pharma. Co. Ltd. v. Teva Pharma. USA Inc., C.A. No. 06-033-SLR (D. Del. Mar. 31, 2008) (Robinson, J.).

Posted On: November 7, 2008

Sue L. Robinson: How to Introduce an Adverse Expert's Deposition Testimony

For those contemplating the introduction of an adverse expert's deposition testimony, District of Delaware Judge Sue L. Robinson has issued a roadmap. In its memorandum order, the Court adopted, by reference to another Delaware court, the following theory of expert testimony:

[T]he fact that a party has control over whether or not to introduce the expert and [the] testimony supported by him, and the fact that a party has the right to choose the expert in the first place, certainly adds credence to the theory that an agency relationship exists between the expert and his supporting party. Given that dynamic, it is unclear why a statement made by an expert in the course of his testifying on behalf of a party, which is adverse to that party, should not be admissible against that party.

Although as a result "there are no absolute evidentiary obstacles" to the use of these expert depositions at trial, the Court cautioned that other barriers remain. As enumerated in the decision, included among these are a variety of considerations under FRE 403 and 802.

Teva Pharma. USA Inc. v. Abbott Labs., C.A. No. 02-1512-SLR (D. Del. Nov. 5, 2008) (Robinson, J.).