Delaware IP Law Blog

4/4: Mallinckrodt Inc., Liebel-Flarsheim Co. v. E-Z-EM Inc. and ACIST Medical Systems, Inc. (patent infringement)
4/6: Perren-Vibes Music, Inc., Universal Polygram International Publishing, Inc., Roger Ball, Alan Gorric and Owen McIntyre D/B/A Average Music, Stone City Music, Bleu Disque Music, Co., Inc., WB Music Corp., Webo Girl Publishing Co., Sons of K'OSS Music, Inc., Girlsongs and Music Sales Corporation v. 32 Paws, Inc. and John Berdini (copyright infringement)
4/7: Eidos Communications LLC and Message Routes LLC v. Skype Technologies, SA and Skype Inc. (patent infringement)
4/9: Wyeth v. Cadila Healthcare Limited and Zydus Pharmaceuticals (USA) Inc. (patent infringement)
4/9: Meda Pharmaceuticals Inc. v. Sun Pharmaceutical Industries Ltd. (patent infringement)
4/13: Neev v. Therative Inc. (patent infringement)
4/20: Brinkmeier v. Graco Children's Products Inc. (patent infringement)
4/21: Tyco Healthcare Group v. C.R. Bard, Inc. and Davol, Inc. (patent infringement)
4/21: Schering-Plough Healthcare Products Inc. v. Neutrogena Corp. (patent infringement)
4/22: Eli Lilly & Co. and The Trustees of Princeton University v. Barr Laboratories, Inc. (patent infringement)
4/23: JPMorgan Chase Bank, N.A. v. LML Payment Systems Corp. and Beanstream Internet Commerce Inc. (patent infringement)
4/23: Bone Care International LLC and Genzyme Corp. v. Eagle Pharmaceuticals, Inc. (patent infringement)
4/23: Pronova BioPharma Norge AS v. Teva Pharmaceuticals USA, Inc. and Teva Pharmaceutical Industries Ltd. (patent infringement)
4/24: HRP Creative Services Co., LLC v. FPI-MB Entertainment, LLC (trademark infringement and unfair competition)
4/24: Novartis Pharmaceutical Corp., Novartis International AG and Novartis International Pharmaceutical Ltd. v. Teva Pharmaceuticals USA, Inc. (patent infringement)
4/24: Novartis Pharmaceutical Corp., Novartis International AG and Novartis International Pharmaceutical Ltd. v. Watson Pharmaceuticals Inc. and Watson Laboratories, Inc. (patent infringement)
4/24: Novartis Pharmaceutical Corp., Novartis International AG and Novartis International Pharmaceutical Ltd. v. Anchen Pharmaceuticals, Inc. (patent infringement)

In a recent case, Defendant Tivo, Inc. (“Tivo”), moved the Court to dismiss Plaintiffs’ (collectively, “Echostar”) case pursuant to the Court’s power under the Declaratory Judgment Act. Dish Network Corp. v. Tivo, Inc., C.A. No. 08-327-JJF, Memorandum Opinion (D. Del. Mar. 31, 2009).

The backstory … Tivo successfully sued Echostar for patent infringement before Judge Folsom in the Eastern District of Texas. Echostar redesigned its products and alleged that its redesigned products no longer infringed Tivo’s patents. Tivo disagreed and pursued a contempt action before Judge Folsom in Texas. Id. at 2. Meanwhile, Echostar brings this action in the District of Delaware to “remove the ‘cloud’ of uncertainty” surrounding its products.

The conflict begins … Judge Farnan begins his analysis of Tivo’s motion to dismiss with a hint of foreshadowing. Judge Farnan points out that Tivo “only” argues the Court should “exercise its discretion to decline jurisdiction over the instant declaratory judgment suit.” Id. at 6. Nevertheless, the Court is “unpersuaded” by Tivo’s arguments for dismissal stating that the only issue is whether there is enough of a difference between Echostar’s redesigned products and the original infringing products so that the proper forum for adjudication is the contempt proceedings before Judge Folsom in Texas. Id. at 7-8.

The plot thickens … Judge Farnan denies Tivo’s motion because whether Tivo can show a “colorable difference” between the products is a decision best made by Judge Folsom but not an “adequate basis” upon which the case can be dismissed. Id. at 9. The story climaxes when Judge Farnan, sua sponte, raises the idea to transfer the case to the Eastern District of Texas, reminding Tivo that the idea of “an alternative motion to transfer” should have been raised by them “with the instant [m]otion.” Id. at 10.

Moral of the story … never forget to give the Court the basis to find in your favor.

Dish Network Corp. v. Tivo, Inc., C.A. No. 08-327-JJF, Memorandum Opinion (D. Del. Mar. 31, 2009).

In a recent decision, district judge Joseph J. Farnan rejected a "colloquial" claim definition in favor of the "textbook" meaning:

"[T]he dispute between the parties primarily centers around whether 'power' should be interepreted according to its ordinary, 'textbook' definition or whether it should be interpreted according to a 'colloquial' definition, proposed by Plaintiff . . . . Plaintiff contends that a person of ordinary skill in the art, upon reading the specification . . . , would understand that the patent embraces the colloquial definition of 'power' . . . . Although Plaintiff correctly notes that the specification does not explicitly adopt the textbook definition of 'power,' the intrinsic record also does not clearly reject this textbook definition."

Moreover, even Plaintiff's own expert used the term in its "classic sense." As a result, the Court rejected the colloquial use and adopted the textbook meaning.

Symbol Techs. Inc. v. Janam Techs. LLC, C.A. No. 08-340-JJF (D. Del. Mar. 31, 2009) (adopting in part magistrate's report and recommendation).

Chief Judge Sleet recently granted defendant Rymed Technologies, Inc.'s motion to dismiss a patent infringement suit, where Rymed had previously filed a declaratory judgment suit against the plaintiff in another district. Vygon v. Rymed Technologies, Inc., C.A. No. 08-172-GMS, Memo. Order (D. Del. March 31, 2009). Specifically, the other district court had already found that the other action was first-filed, that defendant had connections to that other forum and that its connections to Delaware were tenuous. Therefore, Judge Sleet adopted the findings of the Tennessee Court's Order and dismissed the case so as to avoid economic waste and duplicative litigation.

Vygon v. Rymed Technologies, Inc., C.A. No. 08-172-GMS, Memo. Order (D. Del. March 31, 2009).

Businesses continue to struggle with the "post-MedImmune" environment and determining when a sufficient "case or controversy" exists to file a declaratory judgment suit against a patentee. Judge Robinson recently provided some further guidance on this issue in an even more particular area of interest--where the patentee is a patent troll. Hewlett Packard Co. v. Acceleron, LLC, C.A. No. 07-650-SLR, Memo. Op. (D. Del. Mar. 10, 2009).

As with every declaratory judgment suit, the factual scenario is highly relevant, so I wil lay out some of the most important facts here:

- The initial contact was made by the patentee "patent troll's" president to the declaratory judgment plaintiff's excecutive vice president/general counsel/secretary. The letter did not identify a particular product by tradename but did mention the patent by number and its relevance to a certain type of product.

- Shortly thereafter, an attorney for the declaratory judgment plaintiff responded by asking for a mutual standstill.

- The patentee would not agree to this standstill request and shortly thereafter this declaratory judgment suit was filed.

Hewlett Packard asked the Court to take judicial notice of a complaint Acceleron filed in another district eleven days after the Delaware suit asserting infringement of the same patent against HP. Because that suit "post-dated" the filing of the Delaware suit it does not relate to the whether declaratory judgment jurisdiction existed at the time this lawsuit was filed and therefore the Court would not consider it. Id. at 7.

The Court found that although Acceleron did identify the product line and provided a correspondence deadline, that these factors alone were insufficient for jurisdiction where the defendant's direct contact with plaintiff did not reference or directly imply litigation and there was no history of litigation by this defendant regarding this patent. Id. at 13.

Judge Robinson noted that courts should "take defendant's business model into consideration" and appreciated that correspondence from a so-called "patent troll" may evoke a different reaction than from a direct competitor but that the facts in this case showed that litigation was "too spectulative" to find jurisdiction appropriate. Id.

Hewlett Packard Co. v. Acceleron, LLC, C.A. No. 07-650-SLR, Memo. Op. (D. Del. Mar. 10, 2009).

Reminding parties that the Court disfavors motions to strike pursuant to Fed. R. Civ. P. 12(f), Judge Farnan, granted in part and denied in part plaintiffs’ motion to strike portions of the defendant’s answer, defenses and counterclaims in Symbol Technologies, Inc. v. Aruba Networks, Inc., C.A. No. 07-519-JJF, Memo. Op. (D. Del. Mar. 30, 2009).

• Equitable Estoppel - Defendant alleged that Plaintiff Symbol was equitably estopped from asserting its patents because during merger negotiations between Symbol and Defendant they never suggested they may assert the patents against Defendant. Judge Farnan denied plaintiffs’ motion because equitable estoppel is so driven by the underlying facts and the factual record at this stage of the proceeding was so “sparse.” Id. at 6.

• Laches – Noting that defendant pled a “garden variety” laches defense, and finding a difference between putting a plaintiff on notice of a typical laches defense and a prosecution laches defense, Judge Farnan granted plaintiffs’ motion as to that defense giving defendant leave to amend in order to put “Plaintiffs on fair notice of their alleged ‘prosecution laches’ defense.” Id. at 8.

• Inequitable Conduct - Defendant alleged that plaintiff Wireless Valley committed inequitable conduct when it “buried” a highly material reference in a disclosure to the patent examiner. Plaintiffs moved as to this defense and counterclaim because the reference was cited to the examiner. In granting plaintiff’s motion, Judge Farnan noted that dicta in the Molins court may support the contention that “burying” a reference is indicative of bad faith, this is contradicted by the decision of that case and the Federal Circuit decisions in Scripps and Fiskars. The Court followed the Federal Circuit precedent in Fiskars, that held “An applicant can not be guilty of inequitable conduct if the reference was cited to the examiner.” Id. at 8-9. (internal citations omitted).

• Introduction and Summary – In an interesting portion of their motion, plaintiffs’ asked the Court to strike defendant’s introduction and summary to their answer as non-responsive to the complaint and potentially prejudicial. Judge Farnan granted plaintiffs’ motion on this issue concluding that the “surplusage” contained therein was irrelevant to defendant’s equitable defenses. Id. at 10-12.

Symbol Technologies, Inc. v. Aruba Networks, Inc., C.A. No. 07-519-JJF, Memo. Op. (D. Del. Mar. 30, 2009).

Over a year after filing a lawsuit alleging infringement of five patents, the plaintiffs decided to voluntarily move to dismiss the case against the defendant with prejudice and proceed against a group of different defendants. After the Court granted that motion the defendant filed a motion to declare the case exceptional pursuant to 35 U.S.C. Section 285 and award defendant its fees and expenses. Parker-Hannifin Corp. v. Seiren Co., C.A. No. 07-104-MPT, Memorandum Opinion (D. Del. Mar. 31, 2009). Magistrate Judge Mary Pat Thynge, citing Judge Farnan’s recent decision in Prism Techs. LLC v. VeriSign, Inc., found that plaintiffs’ analysis of defendant’s product, using an electron micrograph to identify coverage by its patents was a sufficient pre-filing investigation. “Though further investigation could have occurred before filing suit, [plaintiffs’] investigation suggests that its action was neither vexatious or unjustified, and that its assessment of infringement was not manifestly unreasonable.” Id. at 7. Furthermore, seeking dismissal about one year after receiving discovery from defendant was not reckless because “[p]arties should be able to terminate litigation when costs make trial an unattractive remedy or when other litigation strategies develop.” Id. at 8.

Parker-Hannifin Corp. v. Seiren Co., C.A. No. 07-104-MPT, Memorandum Opinion (D. Del. Mar. 31, 2009).

3/17: Discovery Communications, Inc. v. Amazon.com, Inc. (patent infringement)
3/19: Research Foundation of State University of New York, New York University and Galderma Laboratories v. Mylan Pharmaceuticals Inc. (patent infringement)
3/19: OSI Pharmaceuticals Inc., Pfizer, Inc. and Genentech, Inc. v. Teva Pharmaceuticals USA, Inc. (patent infringement)
3/19: OSI Pharmaceuticals Inc., Pfizer, Inc. and Genentech, Inc. v. Mylan Pharmaceuticals, Inc. (patent infringement)
3/23: ITT Manufacturing Enterprises Inc. v. Cellco Partnership (d/b/a Verizon Wireless), LG Electronics, Inc., LG Electronics, USA, Inc., LG Mobilecomm USA, Inc., Motorola, Inc., et al. (patent infringement)
3/23: Cubist Pharmaceuticals, Inc. v. Teva Parenteral Medicines Inc., Teva Pharmaceuticals USA, Inc. and Teva Pharmaceutical Industries, Inc. (patent infringement)
3/27: Teleconference Systems, LLC v. Procter & Gamble Pharmecuticals Inc., HSBC USA, Inc., Baxter Healthcare Corp., Applied Materials Inc., Wachovia Corp., Staples, Inc., Cabela's Inc. and Enbridge Holdings (U.S.), LLC (patent infringement)
3/27: Millennium Pharmaceuticals Inc. and Schering Corporation v. Teva Parenteral Medicines, Inc., Teva Pharmaceuticals USA, Inc. and Teva Pharmaceutical Industries, Ltd. (patent infringement)
3/27: British Telecommunications plc v. Texas Instruments Inc. (patent infringement)
4/1: Abbott Laboratories and Wisconsin Alumni Research Foundation v. Sandoz Inc. and Sandoz GmbH (patent infringement)

In what is a common factual scenario in this court, a defendant is sued here in Delaware and within days files a reciprocal declaratory judgment suit in another district and at the same time files a motion to dismiss or transfer the Delaware action. And again, as typical in this district, the case will not be transferred unless "(1) there is no bona fide relationship between Delaware and the defendant; (2) there is a related first-filed case in another district; or (3) the defendant is truly a regional enterprise." Quantum Loyalty Systems, Inc. v. TPG Rewards, Inc., C.A. No. 09-022-SLR, Memo. Order, at 4 (D. Del. Apr. 2, 2009). Although these parties had been involved in earlier litigation, that case involved Lanham Act and other false advertising claims, and the instant case involves patent claims. Furthermore, the defendant here is a Delaware corporation located within the same "region" as Delaware. Id.

Although the defendant argued inconvenience of the parties and potential witnesses, Judge Robinson noted the "general courtesy" in Delaware that witnesses "shall be deposed in the city where they work." Id. at 5.

Quantum Loyalty Systems, Inc. v. TPG Rewards, Inc., C.A. No. 09-022-SLR, Memo. Order, at 4 (D. Del. Apr. 2, 2009).

Some Notes from Judge Robinson on Reexamination:

- A prosecution bar will not extend to counsel (for either party) involved in a reexamination proceeding as neither party's confidential information is relevant to that proceeding.

- Amendments and revisions to claims during reexamination are considered admissions regarding validity. The Court will consider any inconsistent positions (that is between the litigation and the reexamination) and the effects of any admission on "an appropriate motion."

Kinexa Brassring Inc. v. Taleo Corp., C.A. No. 07-521-SLR, Memo. Order (D. Del. Feb. 18, 2009).