Posted On: December 31, 2009

Magistrate Judge Leonard P. Stark: Discovery Issues in Judge Robinson Bifurcated Case

In December of 2009, Judge Robinson amended her form scheduling order in patent cases to provide for bifurcation of the issues of liability and damages/willfulness for both discovery and trial. In one of the cases in which these issues are bifurcated, the parties were referred to Magistrate Stark to resolve certain discovery-related issues. Teles AG Informationstechnologien v. Cisco Systems, Inc., C.A. No. 09-72-SLR-LPS, Order (D. Del. Dec. 28, 2009).

First, the court denied plaintiff's request to remove the confidential designation from certain documents related to defendant's commercial success so that it may submit the information to the PTO as part of the reexamination of its patents. Id. at 2. The Court found that plaintiff did not provide any authority to support its position that defendant had an obligation to provide the information to the PTO nor that it "suppressed" this evidence. Id.

Second, the court denied plainitff's motion for an additional deposition of defendant's 30(b)(6) witness on certain topics where the defendant properly objected to the testimony as outside the scope of limited damages discovery in the bifurcated case. Id. at 2-3. Specifically, plaintiff inquired about two routers that it says are accused products but were not identified in its infringement contentions and defendant's "cost of sales" which was not mentioned in plaintiff's submission to the Court addressing what commercial success evidence should be permitted. Id. at 3.

Teles AG Informationstechnologien v. Cisco Systems, Inc., C.A. No. 09-72-SLR-LPS, Order (D. Del. Dec. 28, 2009).

Posted On: December 31, 2009

New District of Delaware Intellectual Property Case Filings

12/21: KANA Software Inc. v. Versata Enterprises Inc. (patent infringement)
12/21: Progressive International Corp. v. Sunbeam Products Inc. (patent infringement)
12/21: Telcordia Technologies Inc. v. Tellabs Inc., Tellabs Operations Inc. and Tellabs North America Inc. (patent infringement)
12/21: Trisport Ltd. and Pride Manufacturing Co. LLC v. MacNeill Engineering Co. Inc. and MacNeill Worldwide Pacific Ltd. (patent infringement)
12/23: Abbott Laboratories Inc. and Abbott GmbH & Co. KG v. Apotex Inc. and Apotex Corp. (patent infringement)
12/28: Medicines Co. v. Pliva Hrvatska d.o.o., Pliva d.d., Barr Laboratories, Inc., Barr Pharmaceuticals LLC, et al. (patent infringement)
12/28: Medicines Co. v. Teva Parenteral Medicines Inc., Teva Pharmaceuticals USA Inc., Teva Pharmaceutical Industries Ltd. (patent infringement)
12/29: Nokia Corp. v. Apple Inc. (patent infringement)
12/30: Transcore Link Logistics Corp. and 2201028 Ontario Inc. v. SkyBitz Inc. (patent infringement)
12/31: Vehicle IP LLC v. AT&T Mobility LLC, Cellco Partnership, Garmin International Inc., Garmin USA Inc., Networks in Motion Inc., et al. (patent infringement)

Posted On: December 29, 2009

Judge Sue L. Robinson: No Waiver of Attorney-Client Privilege

Plaintiff moved to compel certain communications between the defendant and its third-party supplier on the grounds that these communications are not subject to the common interest privilege or joint defense strategy. Robert Bosch LLC v. Pylon Manufacturing Corp., C.A. No. 08-542-SLR, Memo. Order (D. Del. Dec. 23, 2009). The Court found that there was no waiver of the privilege where the documents contained the "possible disclosure of attorney advice obtained by a third party [not defendant] and related to [defendant], rather than [defendant] disclosing advice from its counsel." Id. at 13. Furthermore, these documents involve patents other than the patents-in-suit and the opinions provided are "very general, broad and nonspecific." Therefore, defendant's production of these documents is not a waiver of the attorney-client privilege on infringement and invalidity. Id. at 14.

Plaintiff further argued that regardless of any waiver or lack thereof, these documents are not subject to any other form of privilege and therefore any redacted or withheld communications between the defendant, its third-party supplier and defendant's counsel should be produced. Id. The Court found that there was an understanding that the defendant and the supplier were using the same counsel to address concerns about possible patent liability and therefore a "joint-client relationship" exists supporting the claims of privilege. Id. at 14-15. Judge Robinson further noted, that the "fact that this arrangement was not memorialized in written form until later does not defeat the relationship...and the protection of the attorney-client privilege." Id. at 14.

Robert Bosch LLC v. Pylon Manufacturing Corp., C.A. No. 08-542-SLR, Memo. Order (D. Del. Dec. 23, 2009).


Posted On: December 29, 2009

Judge Joel A. Pisano: Motion to Transfer GRANTED Where Only "Delaware Connection" was Defendant's Incorporation

Although a plaintiff's choice of forum is typically given great weight, Judge Pisano in granting a defendant's motion to transfer to the Northern District of California, recently afforded less deference to a plaintiff's choice to litigate in Delaware where Delaware was not plaintiff's "home turf" and none of the allegedly infringing acts occurred in Delaware. Qinetiq Limited v. Oclaro, Inc., C.A. No. 09-372-JAP, Opinion (D. Del. Dec. 18, 2009). Defendant's only connection to Delaware in this matter was the fact that it is a Delaware corporation. Id. at 7. This alone was not enough to warrant litigating the action in Delaware and therefore the Court transferred the case to the Northern District of California. Id. at 8.

Qinetiq Limited v. Oclaro, Inc., C.A. No. 09-372-JAP, Opinion (D. Del. Dec. 18, 2009).

Posted On: December 28, 2009

Magistrate Judge Thynge: Recommended Defendants’ motions to dismiss for lack of personal jurisdiction and for failure to state a claim be GRANTED.

In this patent infringement action, Quantum Loyalty Systems, Inc., et al. v. TPG Rewards, Inc., et al., C.A. No. 09-022-SLR-MPT (D. Del. Dec. 23, 2009), Defendant John Galinos (“Galinos”) moved to dismiss plaintiffs’ complaint for lack of personal jurisdiction and Defendants TPG Rewards, Inc. (“TPG”) and Galinos (collectively “Defendants”) moved to dismiss plaintiffs’ complaint for failure to state a claim for which relief may be granted. Regarding Galinos jurisdiction motion, Judge Thynge noted that the specific jurisdiction provisions of the Delaware long arm statute, 10 Del. C. § 3104(c)(1) and (c)(3), require plaintiff to prove a “nexus between the cause of action and the conduct used as the basis for jurisdiction.” Id. at 11 (internal quotation omitted). However, plaintiffs only allegation in support of jurisdiction was that Galinos incorporated TPG in Delaware, despite that the cause of action for patent infringement “[did] not arise from the act of incorporating.” Id. Furthermore, “the fiduciary shield doctrine prohibits acts performed by an individual in the individual’s capacity as a corporate employee from serving as the basis for personal jurisdiction over that individual.” Id. (internal quotation omitted). Plaintiffs alleged no facts “Galinos personally made, used, offered to sell, or sold any alleged infringing product in Delaware.” Id. at 12. Furthermore, plaintiffs failed to point to any support for the contention that any injury, under 10 Del. C. § 3104(c)(3), occurred in Delaware. Id. In fact, plaintiffs were incorporated in Nevada and had a principal place of business in Nevada, such that any injury would have occurred in Nevada. Id. at 12-13.

After finding that plaintiffs also failed to allege sufficient contacts to support a finding of general jurisdiction, Judge Thynge recommended the Court grant Defendants’ motion to dismiss for failure to state a claim because the facts support the conclusion that plaintiff claimed “infringement by a product whose only appearance in the market preceded the critical date of the patent-in-suit.” Id. at 21-22. “[P]roof that [defendants’] product infringes [plaintiffs’] patent would also prove that the product anticipates under 35 U.S.C. § 102(b) . . . .” Id. at 22.

Quantum Loyalty Systems, Inc., et al. v. TPG Rewards, Inc., et al., C.A. No. 09-022-SLR-MPT (D. Del. Dec. 23, 2009)


Posted On: December 28, 2009

Sue L. Robinson: "Self-Serving" Declaration Cannot Support Finding of Irreparable Harm

District judge Sue L. Robinson recently denied a request for a permanent injunction in part on the ground that the movant failed to supply the necessary documentary and analytical evidence to prove irreparable harm. By doing so, the Court implicitly gave guidance to litigators seeking to satisfy their evidentiary burden under the so-called e-Bay factors:

"[P]laintiff's case suffers from several fatal flaws. It is most problematic that plaintiff points to no documentary (or other) evidence regarding the effects of defendants' infringement (on plaintiff). As noted previously, the court has no market data before it. There is also no clear indication of a direct link between defendants' infringing sales . . . , loss of goodwill to plaintiff or, more broadly, a change in the market landscape." (at 9-10)

Notably, the Court also dismissed the credibility of the evidence plaintiff did offer - a declaration by plaintiff's president of product strategy - characterizing it as "rife with impermissible speculation" (at 6 n.11) and "self-serving" statements (at 9 n.15). The lesson is clear: an argument on irreparable harm must be built on some evidence beyond a party's declaration.

IGT v. Bally Gaming Int'l Inc., C.A. No. 06-282-SLR (D. Del. Dec. 22, 2009) (Robinson, J.).


Posted On: December 22, 2009

Judge Stark: Report and Recommendation applying Exergen to plaintiff's counterclaims alleging inequitable conduct

Judge Stark recently considered Defendants’ Motion to Strike and Dismiss in his Report and Recommendation in Power integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., et al., C.A. No. 08-309-JJF-LPS (D. Del. Dec. 18, 2009). Plaintiff filed this patent infringement action alleging that defendants infringed three of plaintiff’s patents. Defendants subsequently filed counterclaims alleging that plaintiff infringed three of defendants’ patents. Plaintiff’s answer, filed simultaneously with the Federal Circuit’s issuance of an opinion in Exergen, included “defenses and counterclaims based on [defendants’] allegedly inequitable conduct during the prosecution of the asserted [defendants’] patents.” Id. at 2. Both plaintiff and defendants subsequently filed various amended answers and amended counterclaims. Id.

Defendants’ pending motion was directed at plaintiff’s counterclaims alleging inequitable conduct. Id. Plaintiff’s counterclaim alleged that “‘at least one of the named inventors and at least one of the patent agents of records, with knowledge of the withheld material information and the specific intent to deceive, failed to disclose to the PTO material, non-cumulative prior art known to them during prosecution.’” Id. at 3 (citation omitted). Defendants argued that plaintiff failed to meet the heightened pleading standard under Exergen because plaintiff failed to prove “a particularized basis for its claims of inequitable conduct or the inferences that must be drawn with respect to knowledge and intent.” Id. at 14. Judge Stark agreed, “to a limited extent.” Id. For example, plaintiff’s counterclaim related to its ‘972 patent against a patent agent that prosecuted co-pending patents, but not the one in question, failed to be pled with particularity because “[the patent agent] was not the patent agent who prosecuted the ‘972 patent . . . and [plaintiff] does not allege any facts to show that [the patent agent] was otherwise an “‘individual associated with the filing or prosecution of’ the ‘972 patent.” Id. at 15 (citing Exergen). With regard to plaintiff’s ‘780 patent, Judge Stark found that plaintiff failed “to allege the ‘what’ and ‘where’ of its inequitable conduct allegations. Id. at 16.

Power integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., et al., C.A. No. 08-309-JJF-LPS (D. Del. Dec. 18, 2009)

Posted On: December 22, 2009

Judge Stark: Two opposing personal jurisdiction decisions involving corporate parents and their subsidiaries

In this multidistrict litigation consolidating nine patent infringement actions, Judge Stark recently issued a Report and Recommendation Regarding Motions for Summary Judgment and to Dismiss and Order on Evidentiary Motions. In re Rosuvastatin Calcium Patent Litig., MDL No. 08-1949 (D. Del. Dec. 11, 2009). One such motion was Defendant Aurobindo India’s Motion for Summary Judgment of No Personal Jurisdiction. Id. at 5. Aurobindo India argued that if it is dismissed from the case, so must defendant Aurobindo USA because of the absence of “the necessary and indispensible Aurobindo India.” Id. However, Judge Stark agreed with plaintiffs that under Forest Labs., Inv. v. Cobalt Labs., Inc., 2009 WL 605745 (D. Del. Mar. 9, 2009), and considering the record, id. at 6-9, there was sufficient evidence to conclude that “Aurobindo USA ‘engages in [a] persistent course of conduct’ in Delaware, thereby establishing general jurisdiction.” Id. at 9 (citing 10 Del. C. § 3104(c)(4). Moreover, “[u]nder the alter ego and agency theories, these jurisdictional contacts of Aurobindo USA may be imputed to Aurobindo India.” Id.

A different result was reached when Judge Stark considered defendant Apotex Inc.’s Motion to Dismiss for Lack of Personal Jurisdiction or in the Alternative to Transfer to the Middle District of Florida. Id. at 10. Here, Judge Stark found insufficient contacts with Delaware but that transfer was warranted. Id. Judge Stark noted that “Apotex Inc. is a Canadian corporation with a principal place of business in Canada. It has no offices, facilities, telephone listings, bank accounts, or property in Delaware. It does not have employees, or do business, in Delaware.” Id. at 11. Although plaintiffs argued that defendant Apotex Corp.’s contacts with Delaware should be imputed to Apotex Inc., the same argument that was successful with the Aurobindo defendants, here, Judge Stark found that plaintiffs failed to meet their burden. Id. “Apotex Corp. generates its own revenue, with which it purchases the products it sells. Apotex Corp. decides which of Apotex Inc.’s approved products it will market. Apotex Corp. pays Apotex Inc. for administrative services rendered by Apotex Inc. and the two companies maintain distinct books, records, financial statements, and tax returns.” Id. at 11-12. Judge Stark subsequently transferred the suit against Apotex Inc. to Florida, where Apotex Inc. conceded jurisdiction exists. Id. at 12.

In re Rosuvastatin Calcium Patent Litigation, MDL No. 08-1949 (D. Del. Dec. 11, 2009)

Posted On: December 21, 2009

Sue L. Robinson: How Waiver Can Affect a Motion for Reconsideration

Where is the line between rehashing arguments and offering new evidence in seeking reconsideration of a ruling? According to a recent decision by district judge Sue L. Robinson, the waiver doctrine can play a primary role in this determination.

In disposing of a request to recalculate a lost-profits award, the Court noted that the movant never raised its remittitur argument in the initial post-trial proceedings. As a result, the movant not only waived its ability to raise the argument, but also prompted a rebuke from the Court:

"The present motion reflects a fundamental misunderstanding of the limited appropriateness of motions for reconsideration. There is no alleged change in law or new evidence. A 'manifest injustice' does not result from the court's failure to consider arguments not properly made by defendant in its prior motion to amend the judgment. As this court has iterated in previous cases, a motion for reconsideration is not properly grounded on a request that a court rethink a decision already made."

Strong words to consider when formulating positions for a post-trial (or any) motion.

Siemens Medical Solutions USA Inc. v. Saint-Gobain Ceramics & Plastics Inc., C.A. No. 07-190-SLR (D. Del. Dec. 16, 2009) (Robinson, J.).


Posted On: December 18, 2009

Judge Stark: Report and Recommendation Regarding Claim Construction

In Power Integrations, Inc. v. Fairchild Semiconductor International, Inc., et al., C.A. No. 08-309-JJF-LPS (D. Del. Dec. 18, 2009), Judge Stark recently construed the following claim terms.

“multi-sampling . . . during an off-time of said switching signal”sampling two or more times during one off-time of the switching signal

“a controller to generate the switching signal and to control the switching signal in response to a first feedback signal associated with a voltage control loop and a second feedback signal associated with a current control loop”a controller to generate the switching signal and to control the switching signal in response to a first feedback signal associated with a voltage control loop and a second feedback signal, distinct from the first feedback signal, associated with a current control loop

“controlling a switching signal to regulate the connection of the electrical power to output terminals in response to a first feedback signal associated with a voltage control loop and a second feedback signal associated with a current control loop”controlling a switching signal to regulate the connection of the electrical power to output terminals in response to a first feedback signal associated with a voltage control loop and a second feedback signal, distinct from the first feedback signal, associated with a current control loop

“sampling a voltage . . . and a discharge time”sampling a voltage from the auxiliary winding of the transformer when the transformer is discharging

“frequency variation signal”an internal signal that cyclically varies in magnitude during a fixed period of time and is used to modulate the frequency of the oscillation signal within a predetermined frequency range

“frequency jittering”varying the switching frequency of a switch mode power supply about a target frequency in order to reduce electromagnetic interference

“means coupled to the control input for varying the switching frequency, including: one or more current sources . . . and a counter”Means-plus function term, with a function of “varying the switching frequency of the oscillator,” and a structure of a digital-to-analog converter and a counter having at least four bits

Power Integrations, Inc. v. Fairchild Semiconductor International, Inc., et al., C.A. No. 08-309-JJF-LPS (D. Del. Dec. 18, 2009)

Posted On: December 18, 2009

New Rules for Computing Time and Proposed Revised Local Rules for Comment

As most everyone is aware by now, new amendments to the Federal Rules of Civil Procedure became effective as of December 1, 2009 that change the way that deadlines are computed under the rules. The District Court of Delaware recently posted on its website, the following information regarding the computation time:

TIME (COMPUTATION OF TIME): Effective 12/1/2009, CM/ECF will no longer exclude intermediate weekends and holidays when calculating deadlines less than 11 days. Deadlines will be calculated in accordance with the changes to Fed.R.Civ.P.6 (i.e., 5 day deadlines will become 7 day deadlines, 10 and 15 day deadlines will become 14 day deadlines, etc.). CM/ECF will add 3 calendar days for mailing, as prescribed in the Administrative Procedures for Filing and Service by Electronic Means.

The District Court has also posted proposed amendments to the local rules for comment. These new local rules were drafted to address the December amendments to the Federal Rules of Civil Procedure and other court practices and procedures. Some proposed changes include the following:

- The addition of Rule 5.1(b) which states that when computing time periods under the federal rules, the clerk's office "shall be deemed inaccessible" any time when it is closed due to inclement weather.

- The rules that contained certain time deadlines were changed to conform to the federal rules including changes to the 10 day time period for filing an answering brief to 14 days and the 5 day period for filing a reply brief to 7 days.

- The proposal also changes Rule 7.1.3(a)(4) to limit all opening and answering briefs to 20 pages and all reply briefs to 10 pages (the current rule allows for 40 page opening and answering briefs and 20 page reply briefs).

- Rule 7.1.5(a) is also changed to limit all motions for reargument and answering briefs to 10 pages. Also added to this rule is a provision prohibiting the filing of a motion for reargument where an objection to a Report and Recommendation by a Magistrate Judge has been filed.

- Reasonable notice for a deposition pursuant to Rule 30 has been changed to "not less than 10 days."

Other proposed changes are shown in the redline of the current District of Delaware Local Rules attached below. The public has been asked to comment on the revisions by February 1, 2010.

Public Notice of Federal Court Proposed Revised Local Rules

Proposed Local Rules

Posted On: December 18, 2009

New District of Delaware Intellectual Property Case Filings

12/2: Bristol-Myers Squibb Company, Bristol-Myers Squibb Company, Novartis Corporation, et al. v. Teva Pharmaceuticals USA, Inc. (patent infringement)
12/2: Cephalon Inc. and Cephalon France v. Teva Pharmaceuticals USA, Inc. and Teva Pharmaceutical Industries Ltd. (patent infringement)
12/2: Konarka Technologies, DuPont Displays Inc. and The Regents of the University of California v. Plextronics Inc. (patent infringement)
12/2: In re: Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litigation (patent infringement)
12/2: Samsung Electronics Co., Ltd. v. Sharp Corporation, Sharp Electronics Corporation and Sharp Electronics Manufacturing Company of America Inc. (patent infringement)
12/2: Takeda Pharmaceutical Company Ltd. and Takeda Pharmaceutical North America Inc. v. Watson Laboratories, Inc.- Florida, Watson Pharma Inc. and Watson Pharmaceuticals Inc. (patent infringement)
12/3: Pfizer Inc., Pfizer Ireland Pharmaceuticals, Warner-Lambert Company and Warner-Lambert Company LLC v. Kremers Urban LLC and KUDCO Ireland Ltd. (patent infringement)
12/7: Eurand Inc., Cephalon, Inc. and Anesta AG v. Anchen Pharmaceuticals and Anchen Inc. (patent infringement)
12/8: Cephalon Inc. and Cephalon France v. Actavis Group, Actavis Pharma Manufacturing Pvt Ltd. and Actavis, Inc. (patent infringement)
12/8: Delta Airlines Inc. v. Applied Interact LLC (patent infringement)
12/8: Eurand Inc., Cephalon, Inc. and Anesta AG v. Anchen Pharmaceuticals and Anchen Inc. (patent infringement)
12/8: LG Household & Healthcare Ltd. v. Procter & Gamble Company (patent infringement)
12/8: Pfizer Inc., Pfizer Ireland Pharmaceuticals, Warner-Lambert Company and Warner-Lambert Company LLC v. Dr. Reddy's Laboratories Ltd. and Dr. Reddy's Laboratories, Inc. (patent infringement)
12/10: Seattle Children's Hospital, Novartis AG, Novartis Vaccines and Diagnostics, Inc. and Novartis Pharmaceuticals Corporation v. Teva Parenteral Medicines Inc., Teva Pharmaceutical Industries Ltd. and Teva Pharmaceuticals USA, Inc. (patent infringement)
12/11: Cephalon Inc. and Cephalon France v. Mylan Pharmaceuticals Inc., Mylan, Inc., Matrix Laboratories Ltd. and Matrix Laboratories Inc. (patent infringement)

Posted On: December 17, 2009

Mary Pat Thynge: Obviousness and the Limits of Document Discovery

In document discovery, relevance is broadly construed. But the doctrine has its limits. In a recent decision by magistrate judge Mary Pat Thynge, the Court rejected as irrelevant a request for documents concerning certain properties embodied in two prior art products. According to the Court, the request, made in part to support assertions of obviousness, could not illuminate the sufficiency of the defense:

"That the inherent teaching of a prior art reference is applicable to obviousness does not make the information requested by Mylan relevant since . . . obviousness is an objective legal construct, measured by whether the inherency would have been obvious to one skilled in the art."

As a result, the Court held that, as a matter of law, the requested documents were irrelevant to the issue of obviousness.

Eurand Inc. v. Mylan Pharma. Inc., C.A. No. 08-889-SLR (D. Del. Dec. 9, 2009) (Thynge, M.J.).


Posted On: December 15, 2009

Joseph J. Farnan: Pre-Patent Commercial Negotiation Leads to On-Sale Bar

In a recent decision, district judge Joseph J. Farnan Jr. helped define the commercial boundaries of the on-sale bar's offer requirement. In the underlying litigation, the accused infringers grounded their invalidity argument on the patentee's alleged offer of the subject technology well before seeking its patent.

According to the patentee, its advances to a potential customer - which included a term sheet entitled "Bidder's Offer" - were inchoate and therefore could not constitute a formal offer capable of acceptance. The Court rejected this position, noting that the patentee's tender satisfied the traditional elements of an offer:

"Honeywell relies on the parties' business relationship and the alleged custom and practice in the industry to argue that the AIMS Proposal could not be a formal offer for sale because further negotiation between the parties was expected. In the Court's view, however, the fact that further negotiations might arise, or even be expected, does not preclude the AIMS Proposal from being an invalidating offer where, as here, the AIMS Proposal contained the essential terms of an offer and Honeywell manifested its intent to make an offer to Boeing." (Slip op. at 10.)

Thus, according to the Court, "[i]n this case . . . we have a definite offer, capable of acceptance, in the contract sense, and such offers have always been sufficient to invoke the on-sale bar." (Slip op. at 12.) With this negotiation history established, the Court entered judgment against the patentee on the defense of the on-sale bar.

Honeywell Int'l Inc. v. Nikon Corp., C.A. No. 04-1337-JJF (D. Del. Dec. 4, 2009) (Farnan, J.).


Posted On: December 9, 2009

Fed. Cir. Reversal of Judge Robinson Opinion "undoubtedly marks a shift from past declaratory judgment cases."

Last week, the Federal Circuit reversed Judge Robinson's opinion in Hewlett Packard Co. v. Acceleron, LLC, C.A. No. 07-650-SLR, Memo. Op. (D. Del. Mar. 10, 2009), which we posted about earlier this year. The Fed. Circuit's opinion on this case is particularly interesting because, in their words, it "undoubtedly marks a shift from past declaratory judgment cases." Hewlett-Packard Company v. Acceleron LLC, No. 2009-1283 (Fed. Cir. Dec. 4, 2009).

Judge Robinson had dismissed this declaratory judgment action because "[l]itigation was . . . still too speculative a prospect to support declaratory judgment jurisdiction" when the case was filed. Hewlett Packard, C.A. No. 07-650-SLR at 13. At that time Acceleron had sent a letter to HP asking for "an opportunity to discuss" Acceleron's patent that "relates to Blade Servers." Id. at 1-2.

Acceleron's initial letter suggested that declaratory judgment jurisdiction might be an issue by stating that "we ask that you agree that all information exchanged . . . will not be used for any litigation purposes whatsoever, including but not limited to any claim that Acceleron has asserted any rights against any of your ongoing or planned activities, or otherwise created any actual case or controversy regarding the . . . patent." Id. The Court noted, however, that the letter did not include "a statement of infringement, identification of specific claims, claim charts, prior pleadings or litigation history, or the identification of other licensees," or "directly imply[] impending litigation." Id.

In reversing, the Fed. Cir. held that "The facts of this case, when viewed objectively and in totality, show that Acceleron took the affirmative step of twice contacting HP directly, making an implied assertion of its rights under the ’021 patent against HP’s Blade Server products, and HP disagreed. Therefore, we hold that there is declaratory judgment jurisdiction arising from a 'definite and concrete' dispute between HP and Acceleron, parties having adverse legal interests." Id. at 8-9.

The difference between the Fed. Cir. holding and the District of Delaware holding seems to turn on the degree to which a patent troll must "imply" that litigation was pending - Judge Robinson noted that Acceleron did not "direcly imply[] impending litigation," but the the Fed. Cir. held that Acceleron's "implied assertion of its rights," along with HP's disagreement, was enough.

The Fed. Cir. recognized that "it is implausible (especially after MedImmune and several post-MedImmune decisions from this court) to expect that a competent lawyer drafting such correspondence for a patent owner would identify specific claims, present claim charts, and explicitly allege infringement." Id. at 6. The Court also recognized that legitimate business interactions (such as a patent owner attempting to sell a patent) should not invoke declaratory judgment jurisdiction, id. at 6, but that Acceleron's letter here was no such communication. The letter asserted that its patents were "relevant" to one of HP's product lines and imposed a short deadline to respond. Further, the Fed. Cir. emphasized Acceleron's status as a non-practicing entity: Acceleron's implication of litigation was stronger because it was "a non-competitor patent holding company," and "solely a licensing entity, and without enforcement it receives no benefits from its patents." Id. at 3, 8.

In its conclusion, the Fed. Cir. praised Judge Robinson's opinion, and noted that their reversal represents an actual change in the law:

As the district court recognized in its careful opinion analyzing declaratory judgment jurisdiction, there is no bright-line rule for distinguishing those cases that satisfy the actual case-or-controversy requirement from those that do not. See MedImmune, 549 U.S. at 127. Our decision in this case undoubtedly marks a shift from past declaratory judgment cases. However, MedImmune has altered the way in which the Declaratory Judgment Act applies to patent law cases, requiring that legal interests be evaluated in patent cases under the general criteria of the Act. Our jurisprudence must consequently also evolve, and in this case the facts demonstrate adverse legal interests that warrant judicial resolution.

Id. at 9.

Hewlett-Packard Company v. Acceleron LLC, No. 2009-1283 (Fed. Cir. Dec. 4, 2009)

Posted On: December 9, 2009

Judge Farnan: Markman Opinion on a Medical Patent

Judge Farnan recently issued a claim construction opinion in ICU Medical, Inc. v. RyMed Technologies, Inc., C.A. No. 07-468-JJR (D. Del. Dec. 3, 2009), an infringement case involving patents on intravenous medical connector valves used to connect fluid bags to an IV. The following terms were construed:

  • "Compressed State" - "the state of the seal when a medical implement causes axial compression"
  • "Decompressed State" - "the state of the seal when a medical implement is not causing axial compression"
  • "O-Ring Elements" - "portions having a circular outer surface that is wider at the middle than at the top or bottom."
  • "Resilient Seal" - "wherein, upon compression, the structure changes shape and, upon removal of the compression, the structure returns to its original shape."
  • "Resilient Seal Element" - "a sealing structure wherein, upon compression, the structure changes shape and, upon removal of the compression, the structure returns to its original shape."
  • "Generally Arcuate Segments" - "naturally separated divisions, portions or sections of the walls that are bent, curved like a bow or arc-shaped."
  • "Arcuate Segments Intersecting One Another" - "arcuate segments that meet or touch."
  • "Fills Essentially Completely" - "fills all of or almost all of the cavity adjacent to the opening to prevent fluid from leaking between the seal and the wall structure."
  • "Bearing Against Said Wall Structure Near Said Opening to Seal Said Opening" - "the seal is situated in contact with the wall structure [of the housing] near the opening of the proximal end of the housing to make the opening fluid tight."
  • "Pre-Slit" - "an opening made beforehand."
  • "Horizontal Groove" - "at least one groove which is perpendicular to an axis defined by the proximal and distal ends."
  • "Seated Within the Cavity" - "situated, positioned or located within the cavity."

Although some of the patent terms had been previously construed by another court, Judge Farnan rejected some of those constructions where the prior court had relied on the dictionary definition of some terms (such as "resilient"), because "[c]urrently, dictionary definitions are not favored as a source of ordinary meaning." Id. at 13, 19.

ICU Medical, Inc. v. RyMed Technologies, Inc., C.A. No. 07-468-JJR (D. Del. Dec. 3, 2009)

Posted On: December 7, 2009

Attorney disqualification in D.N.J vs. D. Del.: Same facts, same rules, different interpretation of the appropriate remedy

Magistrate Judge Bongiovanni of the District of New Jersey recently considered Wyeth’s renewed request for the disqualification of Howry LLP (“Howry) as counsel to Boston Scientific Corporation (“BSC”), based on Howry's representation of Wyeth in another matter. Wyeth and Cordis Corp. v. Abbott Laboratories, et al., C.A. No. 08-230-JAP (D.N.J. Dec. 1, 2009). Judge Bogiovanni originally deferred the issue in light of Wyeth's motion for disqualification pending in the District of Delaware before Judge Robinson in a case involving the same parties and Howry LLP. In August, Judge Robinson found that Howry’s representation of BSC violated Rule 1.7. Boston Scientific Corporation, et al. v. Johnson & Johnson, et al., C.A. No. 07-765-SLR, at 7 (D. Del. Aug. 25, 2009). However, Judge Robinson declined to disqualify Howry due to, among other things, the unrelatedness of the BSC matter and the European matter in which Howry represented Wyeth, the fact that Howry’s Washington, D.C. office was representing plaintiffs here whereas Howry’s Europe-based attorneys were handling the matter in Europe, and that an ethical wall was in place. Id. at 8-9. Judge Bongiovanni, however, disqualified Howry on the sole basis of its Rule 1.7 violation. Judge Bongiovanni indicated that in the District of New Jersey the violation of Rule 1.7 should result in automatic disqualification. Wyeth, C.A. No. 08-0230, at 2 (citing In re Cendant Corp. Securities Litig., 1234 F. Supp. 2d 235, 248-50 (D.N.J. 2000) (“New Jersey simply does not permit concurrent representation when the interests of two current clients are adverse.”).

Wyeth and Cordis Corp. v. Abbott Laboratories, et al., C.A. No. 08-230-JAP (D.N.J. Dec. 1, 2009)

Posted On: December 7, 2009

Chief Judge Sleet: Complaints Patterned After Form 18 Still Acceptible Post-Iqbal

Chief Judge Sleet recently issued an opinion on a 12(b)(6) motion to dismiss in Mark IV Industries Corp. v. Transcore, L.P., C.A. No. 09-418-GMS (D. Del. Dec. 2, 2009). Defendant Transcore moved to dismiss Mark IV's complaint based mainly on Mark IV's failure to adequately plead its infringement claims under Ashcroft v. Iqbal, 129 S. Ct. 1937 (2009), because the complaint "lacks sufficient specificity and factual support." Id. at 4.

Transcore argued that Iqbal overrode previous Federal Circuit precedent holding that a complaint need only cite the asserted patent as a whole, and not each element of the claims of the asserted patent, and that "a plaintiff is not required to plead specifics as to how an allegedly infringing product works." Id. at 5-6. The Court disagreed, and held that the Federal Circuit precedent remains valid after Iqbal, and that complaints that comply with FRCP Form 18 (setting out the structure of an infringement complaint) are still sufficient. Id. at 6-7.

Transcore also included allegations that the complaint was brought in bad faith (the Court found no bad faith), and that the suit was precluded by a prior agreement between the parties that contained a mediation provision. Id. at 7. The Court held that a 12(b)(6) motion to dismiss was not the proper "avenue[] of attack" such a provision, but kindly directed Transcore towards "a Rule 7(a) counterclaim and a motion to compel" instead. Id. at fn. 1.

Mark IV Industries Corp. v. Transcore, L.P., C.A. No. 09-418-GMS (D. Del. Dec. 2, 2009)

Posted On: December 3, 2009

Delaware Court of Chancery: Defining the Role of "Delaware Counsel"

In a decision issued yesterday, Vice Chancellor J. Travis Laster offered an insightful view on the role of "Delaware counsel":

"It is of course true that Delaware counsel and forwarding counsel necessarily allocate responsibility for work, and that in some cases, the allocation may be heavily weighted towards forwarding counsel. It is also true that forwarding counsel may have primary responsibility for a matter from the client's perspective . . . . This is perfectly understandable, efficient, and appropriate. But it does not alter the Delaware lawyer's fundamental responsibility for the Delaware proceeding.

* * *

If a Delaware lawyer signs a pleading, submits a brief, or signs a discovery request or response, it is the Delaware lawyer that takes the positions set forth therein."

State Line Ventures LLC v. RBS Citizens N.A., C.A. No. 4705-VCL (Del. Ct. Ch. Dec. 2, 2009) (Laster, V.C.).


Posted On: December 1, 2009

Magistrate Judge Joel Schneider: Transfer Warranted Despite Defendants' Incorporation in Delaware

A recent venue-transfer decision by Magistrate Judge Joel Schneider illustrates the limits of Delaware courts' deference to a defendant's state of incorporation. In granting a request to transfer the patentee's infringement action to the Northern District of California, the Court noted that five of the nine defendants seeking transfer are incorporated in Delaware. In the District of Delaware, this factor typically weighs against transfer.

The underlying litigation, however, presented no other link to Delaware:

"Plaintiff has not dispelled the key fact that the essence of the case is a dispute between two California companies over patents and products developed in California, and that the key evidence and witnesses are located in California . . . . There is simply no getting around the fact that all key identified witnesses and evidence is located in California." (at 25)

Although the fact of a defendant's domestic incorporation will often persuade a Delaware court to retain the litigation, this decision is an example of how other convenience factors can override that preference.

Teleconference Systems v. Proctor & Gamble Pharma. Inc., C.A. No. 09-200-JBS-JS (D. Del. Nov. 25, 2009) (Schneider, M.J.).

Posted On: December 1, 2009

New District of Delaware Intellectual Property Case Filings

10/9: Congoleum Corporation v. Metroflor Corporation and Halstead New England Corporation (patent infringement)
10/13: BASF Catalysts LLC v. Johnson Matthey Inc. and Johnson Matthey Catalysts, LLC (patent infringement)
10/13: Stiefel Research Australia Pty Ltd. v. Perrigo Company, Perrigo Israel Pharmaceuticals Ltd. (patent infringement)
10/14: BAE Systems Information and Electronic Systems Integration Inc. v. Aeroflex Incorporated and Aeroflex Plainview Inc. (patent infringement)
10/14: Shelbyzyme LLC v. Genzyme Corporation (patent infringement)
10/15: Tristrata Technology Inc. v. Vivant Pharmaceuticals LLC and betterhealthyskin.com LLC (patent infringement)
10/20: Muthalampet v. North American Hot Breads Inc. (trademark infringement)
10/20: Wyeth v. Intervet Inc. and Boehringer Ingelheim Vetmedica, Inc. (patent infringement)
10/22: Cephalon Inc. v. Barr Pharmaceuticals, Inc., Barr Pharmaceuticals, LLC and Barr Laboratories Inc. (patent infringement)
10/22: Nokia Corporation v. Apple Inc. (patent infringement)
10/23: Alcon Research Ltd. v. Apotex Corporation and Apotex Inc. (patent infringement)
10/26: St. Clair Intellectual Property Consultants Inc. v. Apple Inc. (patent infringement)
10/26: Radio Foods LLC v. Born Free Holdings Ltd. (trademark infringement)
10/27: Mathilda and Terence Kennedy Institute of Rheumatology Trust v. Amgen Inc. and Wyeth (patent infringement)
10/28: Deston Therapeutics LLC, Unigen Pharmaceuticals Inc. v. TriGen Laboratories Inc. and Irisys Inc. (patent infringement)
10/29: Aventis Pharma S.A. and Sanofi-Aventis US, LLC v. Sandoz Inc. (patent infringement)
10/29: Drager Medical AG & Co. KG, Draeger Medical Inc. and Draeger Medical Systems Inc. v. Maquet Inc. and Maquet Critical Care AB (patent infringement)
10/29: Eurand Inc. and Anesta AG v. Teva Pharmaceuticals USA, Inc., Teva Pharmaceutical Industries Ltd. and Barr Laboratories, Inc. (patent infringement)
11/2: Verizon Clinton Center Drive Corp. v. EON Corporation (patent infringement)
11/3: Analog Devices Inc. v. Knowles Electronics LLC (patent infringement)
11/5: Purdue Pharma Products LP and Napp Pharmaceutical Group Ltd. v. Sun Pharmaceutical Industries, Inc., Sun Pharma Global FZE and Caraco Pharmaceutical Laboratories Ltd. (patent infringement)
11/6: NetDeposit LLC v. BServ Inc., Diebold Inc. and Wausau Financial Systems, Inc. (patent infringement)
11/6: Takeda Pharmaceutical Company Ltd. and Takeda Pharmaceuticals North America Inc. v. Teva Pharmaceuticals USA, Inc. and Teva Pharmaceutical Industries Ltd. (patent infringement)
11/10: Accenture Global Services GmbH and Accenture LLP v. Guidewire Software Inc. (patent infringement)
11/10: Chase Bank USA N.A. v. Source Inc. (patent infringement)
11/13: Brinkmeier v. BIC Corporation and BIC USA Inc. (patent infringement)
11/13: Cooper Notification Inc. v. Twitter Inc., Everbridge, Inc. and Rave Wireless Inc. (patent infringement)
11/16: FuzzySharp Technologies Inc. v. Nvidia Corporation, Dell Inc., Sony Electronics, Inc., Sony Computer Entertainment America, Inc. and Matrox Graphics Inc. (patent infringement)
11/17: Edwards Lifesciences AG and Edwards Lifesciences LLC v. Medtronic Inc., Medtronic CoreValve LLC and Medtronic Vascular, Inc. (patent infringement)
11/19: Abbott Laboratories and Wisconsin Alumni Research Foundation v. Teva Parenteral Medicines Inc., Teva Pharmaceuticals USA, Inc. and Teva Pharmacuetical Industries Ltd. (patent infringement)
11/19: Allergan Inc., Allergan USA Inc., Allergan Sales, LLC, Endo Pharmaceuticals Solutions Inc., Supernus Pharmaceuticals Inc. v. Sandoz Inc. (patent infringement)
11/20: Xilinx Inc. v. LSI Corp. and Agere Systems, Inc. (patent infringement- declaratory judgment)
11/20: Transcore LP v. Mark IV Industries Corp. (patent infringement)
11/23: Pfizer, Inc., Pfizer Ireland Pharmaceuticals, Warner-Lambert Company and Warner-Lambert Company, LLC v. Mylan Inc., Matrix Laboratories Limited and Matrix Laboratories, Inc. (patent infringement)
11/25: Daiichi Sankyo Co. Ltd. and Daiichi Sankyo Inc. v. Sandoz Inc. (patent infringement)
11/25: Eleven Engineering Inc. and Eleven Engineering Game Control LLC v. Nintendo Co. Ltd., Nintendo of America Inc., Sony Corporation, Sony Computer Entertainment Inc., Sony Computer Entertainment America, Inc., et al. (patent infringement)
11/25: Schering-Plough Healthcare Products, Inc. v. Perrigo Company (trademark infringement)
11/25: Sidergas SpA v. Lincoln Electric Company, Inc. and Lincoln Global Inc. (patent infringement)