Posted On: July 31, 2009

Leonard P. Stark: Agree to Claim Terms or Lose Two of Them

In multi-patent litigation, parties and the Court are often confronted with how to properly manage the sometimes unwieldy claim-construction process. To that end, Magistrate Judge Leonard P. Stark recently issued a noteworthy ruling that addressed how, at least in the case before him, Markman should be controlled. Specifically, the Court held that, in the underlying six-patent litigation, the parties would be limited to presenting twelve claim terms for construction.

While a claim limit is itself not unusual, the order also contains an incentive to agree: should the parties fail to settle on the twelve terms for construction, "the Court will limit the number of terms it will construe in conjunction with the Markman hearing to a maximum of ten (10)." Now that is incentive, indeed.

Power Integrations Inc. v. Fairchild Semiconductor Int'l Inc., C.A. No. 08-309-JJF-LPS (D. Del. July 16, 2009) (Stark, M.J.).

Posted On: July 30, 2009

Sue L. Robinson: Jurisdiction Over Work-Product Dispute Declined

Yesterday, District of Delaware Judge Sue L. Robinson declined jurisdiction over a discovery dispute involving a party's instruction not to answer. At a deposition, the plaintiff's attorney directed the nonparty deponent -- who was involved in prosecuting the underlying patent -- to refrain from answering certain questions on work-product grounds.

The Court found that any order on the subject would have to originate from the court where the deposition occurred:

[A]lthough the nonparty deposition was taken outside this jurisdiction, the nonparty witness was represented by plaintiff's counsel, and it was plaintiff's counsel who instructed the witness not to answer certain questions based on work product. Nevertheless, the protection belongs to the attorney witness, not to the client . . . . Therefore, I conclude that, in this case, an order compelling the nonparty witness to answer is directed to the nonparty, not to plaintiff.

Despite declining jurisdiction, the Court in dicta cautioned that work-product immunity for prosecution activities must proceed on a case-by-case basis: "patent prosecution activities are subject neither to a blanket immunity nor automatic disclosure."

Accenture Global Services GMBH v. Guidewire Software Inc., C.A. No. 07-826-SLR (D. Del. July 29, 2009) (Robinson, J.).

Posted On: July 28, 2009

New District of Delaware Intellectual Property Case Filings

6/19: Kone Corporation v. Thyssenkrupp Elevator Corporation, Thyssenkrupp Elevator Americas Corporation (patent infringement)
6/23: Tandberg Inc. v. Multimedia Patent Trust (patent infringement)
6/25: Dey LP and Dey Inc. v. Teva Parenteral Medicines Inc., Teva Pharmaceuticals USA, Inc. and Teva Pharmaceutical Industries Ltd. (patent infringement)
6/26: Daiichi Sankyo Co. Ltd. and Daiichi Sankyo Inc. v. Apotex Inc. and Apotex Corporation (patent infringement)
7/1: Alcon Research Ltd. v. Par Pharmaceutical Inc. (patent infringement)
7/1: Bayer Schering Pharma AG, Bayer HealthCare Pharmaceuticals Inc. and Schering Corporation v. Teva Pharmaceuticals USA Inc. and Teva Pharmaceutical Industries Ltd. (patent infringement)
7/2: Aladdin Knowledge Systems Ltd. v. Finjan Inc., Finjan Software Ltd. and Finjan Software Inc. (patent infringement)
7/2: Microsoft Corporation v. WebXchange Inc. (patent infringement)
7/2: Research Foundation of State University of New York, New York University, Galderma Laboratories Inc. and Galderma Laboratories LP v. Lupin Limited and Lupin Pharmaceuticals Inc. (patent infringement)
7/7: Eurand Inc., Cephalon Inc. and Anesta AG v. Anchen Pharmaceuticals Inc. and Anchen Inc. (patent infringement)
7/8: IpVenture, Inc. v. Sony Electronics, Inc.Sony Corporation, Sony Corporation of America, Panasonic Corporation and Panasonic Corporation of North America (patent infringement)
7/8: Stored Value Solutions, Inc. v. Card Activation Technologies, Inc. (patent infringement)
7/8: Takeda Pharmaceutical Company Limited and Takeda Pharmaceuticals North America Inc. v. Torrent Pharmaceuticals Limited and Torrent Pharma Inc. (patent infringement)
7/10: Eppendorf AG, Eppendorf Array Technologies SA and Eppendorf North America Inc. v. Nanosphere, Inc. (patent infringement)
7/13: Alcon Research Ltd. v. Barr Laboratories Inc. (patent infringement)
7/13: Allergan Inc., Allergan USA Inc., Allergan Sales LLC, Endo Pharmaceuticals Solutions, Inc, Supernus Pharmaceuticals Inc. v. Watson Pharmaceuticals Inc., Watson Laboratories Inc- Florida Watson Pharma, Inc. (patent infringement)
7/13: Mosaid Technologies Inc. v. International Business Machines Corporation (patent infringement)
7/15: Asahi Glass Co. Ltd., AGC Flat Glass North America Inc. v. Guardian Industries Corp. (patent infringement)
7/15: Congoleum Corporation v. Tarkett Enterprises Inc. and Tarkett Inc. (patent infringement)
7/15: Magna Entertainment Corp. and Xpressbet Inc. v. Internet Opportunity Entertainment Limited (trademark infringement)
7/16: Personalized User Model LLP v. Google Inc. (patent infringement)
7/16: Bone Care International LLC and Genzyme Corporation v. Sandoz Inc. (patent infringement)
7/17: Swimc Inc. v. Jack Schwarz Shoes Inc. (trademark infringement)
7/22: TK Holdings Inc. v IEE Sensing and IEE S.A. (patent infringement)
7/24: Bayer Schering Pharma AG, Bayer HealthCare Pharmaceuticals Inc. and Schering Corporation v. Teva Pharmaceuticals USA Inc. and Teva Pharmaceutical Industries Ltd. (patent infringement)

Posted On: July 2, 2009

Magistrate Judge Stark: Motion for Judgment on the Pleadings -- denied

Magistrate Judge Stark recently recommended, among other things, that the Court deny defendant-counterplaintiff Rembrant’s motion for judgment on the pleadings. In re Rembrandt Techs. LP Patent Litigation, MDL Docket No. 07-1848-GMS-LPS, (D. Del. June 29, 2009). Rembrandt argued that they never signed a license agreement and no other facts are pled “to support the conclusory allegation that Rembrandt is nevertheless bound by [the] [a]greement as a partner, joint, venturer, alter ego, or principal of a party to the [a]greement . . . .” Id. at 7-8. In support of their motion, the Counter-Defendants argued that “under the guise of ‘challenging the pleadings,’ Rembrandt [was] asking the Court to ignore and dismiss the detailed factual allegations supporting each . . . claim[.]” Id. at 8. Noting that a complaint “must state enough facts to raise a reasonable expectation that discovery will reveal evidence of the necessary element of a plaintiff’s claim[,]” Id. at 11, Magistrate Judge Stark recommended denying Rembrandt’s motion because the counterclaims were sufficient “under the notice pleading requirements” and because “granting judgment to Rembrandt without any consideration of what has been revealed in discovery would be improper.” Id. at 13.

In re Rembrandt Techs. LP Patent Litigation, MDL Docket No. 07-1848-GMS-LPS, (D. Del. June 29, 2009)

Posted On: July 2, 2009

Judge Robinson: Plaintiffs not permitted to use information as a sword and a shield

Judge Robinson recently decided several discovery disputes between the parties in State of Florida v. Abbott Labs., C.A. 08-155-SLR (D. Del. June 23, 2009). Among other things, plaintiffs objected to defendants’ request for “rebates plaintiffs negotiate and receive for fenofibrate products.” Id. at 1. Plaintiffs objected on the grounds that the request sought (1) confidential information, and (2) that the information was not relevant. Judge Robinson rejected plaintiffs objections because: (1) if relevant, the information is discoverable. “Any problems with confidentiality can be resolved through a protective order . . . [;]” and (2) the rebates are relevant because plaintiffs broadly claimed their damages and so “cannot shield the rebate information from discovery . . . .” Id. at 2.

Among other things, defendants objected to plaintiffs’ request for settlement agreements. Judge Robinson reiterated her general practice to not “order the disclosure of settlement agreements, as such disclosure inhibits the very laudable purpose of settlement.” Id. at 3.

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Posted On: July 2, 2009

Magistrate Judge Stark: assessing the adequacy of scienter when pleading fraud with particularity

In a recent trademark infringement and dilution case, Magistrate Judge Stark denied plaintiffs’ motion to dismiss defendants’ counterclaim seeking cancellation of plaintiffs’ trademark due to fraud on the Patent and Trademark Office. ING Bank v. the PNC Fin. Servs. Group, Inc., C.A. No. 08-514-GMS-LPS (D. Del. June 22, 2009). The basis of plaintiffs’ motion was that defendants failed to “state the facts and circumstances constituting fraud with particularity . . . .” Id. at 1. Among other things, plaintiffs’ argued that defendants failed to adequately allege scienter because they did not allege that the declarant, who made the statement-at-issue to the PTO, subjectively knew the statement was false when made. Magistrate Judge Stark rejected plaintiffs argument, however, because the declarant was clearing signing the statement to the PTO on behalf of the “applicant.” To assess the adequacy of scienter, the factfinder is “not limited to the subjective understanding of the corporate representative who made the statement . . . .” Id. at 5. Therefore, defendants adequately alleged scienter that “among those involved in the preparation of [the statement to the PTO] were those who knew or should have know that” plaintiffs were making a false statement. Id. at 7.