Posted On: March 30, 2010

Judge Sue L. Robinson: Daubert and Renewed Motion for Summary Judgment in Dispute Over ProV1 Golf Balls

On remand from the Federal Circuit for re-trial on the issues of obviousness and anticipation, Judge Robinson denied defendant Acushnet Company’s renewed motion for summary judgment and Daubert motion, she granted in part and denied in part Acushnet Company’s motions in limine and granted plaintiff Callaway Golf Company’s motions in limine. Callaway Golf Company v. Acushnet Company, C. A. No. 06-091-SLR, Memo. Op. (D. Del. Mar. 3, 2010). The technology at issue in this case was Acushnet’s Titlest Pro V1, Pro V1* and Pro V1x golf balls. The Federal Circuit reversed the court’s entry of summary judgment of no anticipation, vacated the obviousness judgment based on irreconcilably inconsistent jury verdicts, and remanded for a new trial.

The court denied defendant’s motion for summary judgment on anticipation finding that the asserted piece of prior art known as the “Nesbitt” patent does not explicitly anticipate plaintiff’s patent. Defendant’s argument was that certain measurements taken on balata balls would “teach a person of skill in the art that a polyurethane cover must invariably have the same Shore D hardness.” The court found that “[a]side from attorney argument, no evidence (let alone Nesbitt) cited by Achushnet makes that causative leap, to wit, that if A equals B, and A equals C, then C equals B.” Id. at 7.

On remand, Acushnet renewed its Daubert motion to exclude the expert testimony of plaintiffs’ damages expert, Brian Napper. Defendant moved to disqualify Mr. Napper for (1) failing to create the “but for” world of lost profits starting at the first date of infringement; and (2) failing to account for what players using the infringing balls would play with in the absence of that ball (the so-called “premium market”). Specifically, Acushnet argued that the expert did not include in his analysis what defendant would have offered at the first date of infringement if the Pro V1 ball was not available, how the market would have responded to that offering or what the market would have looked like if they withdrew the Pro V1 in 2003. Id. at 12. Judge Robinson stated that “[t]o credibly demonstrate that Acushnet would have had viable, non-infringing alternatives to offer in 2001 – as well as to predict how the market would have responded to these alternatives by 2003 – is an exercise that may be appropriate, but certainly is not one that is mandatory in light of its speculative nature.” Id. at 13. The court further found the reasoning in Mr. Napper’s report to be grounded on “real world facts, and therefore, acceptable.” Id. “For any economic hypothesis to account for all variables is not possible, let alone required.” Id. (emphasis in original).
Defendant also argued that the expert calculated lost profits on sales by companies that do not own the patents-in-suit. In response, the court held that “where the profits of a wholly-owned subsidiary flow up to the parent, inclusion of such profits is appropriate.” Id.

The court granted defendant’s motion to exclude evidence of defendant’s new Pro V1 balls, which defendant offered as a non-infringing alternative, and therefore, defendant argued was relevant to commercial success and damages. The court found this evidence lacks foundation since it was not vetted through discovery and therefore the use of such evidence would be unduly prejudicial to plaintiff. Id. at 13 n.14.

Frequently, parties dispute how far a plaintiff can go in “bolstering” the validity its own patents. Plaintiff in this case, agreed that it would not reference the fact that three PTO examiners considered the patents-in-suit. The court further held that plaintiff should not make any reference to the on-going reexam of the patents-in-suit and that plaintiff cannot speculate as to the extent to which prior art that was before the PTO was actually considered. Id. at 14.

Callaway Golf Company v. Acushnet Company, C. A. No. 06-091-SLR, Memo. Op. (D. Del. Mar. 3, 2010).

Posted On: March 26, 2010

Magistrate Judge Mary Pat Thynge: Pending Equitable Defenses Preclude Final-Judgment Certification

Magistrate Judge Mary Pat Thynge recently resolved a thorny question of finality for purposes of appeal. Faced with a situation in which a jury had returned verdicts of noninfringement and "non-invalidity," but equitable defenses remained outstanding, the Court denied the underlying request for Rule 54(b) certification:

"[I]n both of those cases [cited to support certification], the courts had already decided infringement, validity, and enforceability. This court has not ruled on Amazon's equitable defenses, so Amazon's declaratory judgment claims of noninfringement and invalidity will not be considered 'final.' " (emphasis in original)

Just in case there was any doubt, the Court emphasized that "[e]ven assuming arguendo that Amazon can gin up an argument that its claims are indeed 'final,' its pending equitable defenses, at a minimum, give this court just reason to delay" certification. As a result, the outstanding enforceability issues precluded, as a matter of law, immediate Rule 54(b) relief.

Cordance Corp. v. Inc., C.A. No. 06-491-MPT (D. Del. March 19, 2010) (Thynge, M.J.).

Posted On: March 25, 2010

Magistrate Judge Stark Addresses the Meaning of "Actual Notice" for § 154

Earlier this week, in Arendi Holding Ltd., v. Microsoft Corp., C.A. No. 09-119-JJF-LPS (D. Del. Mar. 22, 2010), Magistrate Judge Stark issued a Report and Recommendation that Judge Farnan grant Microsoft's motion for summary judgment on Arendi's claims for provisional damages under 35 U.S.C. § 154(d). Section 154 allows a patentee to pursue "provisional" damages for the period before the patent is actually granted, reaching back to the date on which the application was published. Id. at 10-12. It requires, however, that the accused infringer had "actual notice of the published patent application." Id. at 11; 35 U.S.C. § 154(d).

The question is: what does "actual notice" mean? Magistrate Judge Stark determined that the statute focuses on the accused infringer, not the patent applicant, and so the notice need not have come from the patent applicant. Id. at 14. Further, the accused infringer need only have had actual notice of "the published patent application," rather than specific notice of infringement. Id. at 14-15. The statute does, however, require actual notice, not constructive notice, and that is what decided the issue here..

Under the facts before the Court, Microsoft received notice solely as part of a 7,000 page document production in another case. Magistrate Judge Stark found that to be insufficient:

[A] single-page Notice of Publication dropped into nearly 7,000 pages of document production is analogous to a published application being available in a database but not expressly drawn to the attention of the alleged infringer. The authors of the legislative history did not intend for § 154( d)' s actual notice requirement to be deemed satisfied by mere availability of a patent application in a public database.
Id. at 19. Thus, he recommended that Microsoft's motion for summary judgment on § 154 issues be granted. Id.

Arendi Holding Ltd., v. Microsoft Corp., C.A. No. 09-119-JJF-LPS (D. Del. Mar. 22, 2010)

Posted On: March 24, 2010

Judge Thynge: Failure to meet and confer adequately under Local Rule 7.1.1. may result in denial of motion to compel

In this patent infringement action, defendant Philips moved to compel plaintiff Masimo to provide answers to certain interrogatories and document requests. Masimo Corporation v. Philips Electronics North America Corporation, et al., C.A. No. 09-80-JJF-MPT (D. Del. Mar. 23, 2010). The court had previously decided to bifurcate and stay discovery related to Philips’ antitrust counterclaims. Philips argued that its discovery requests implicated both patent and antitrust issues and, therefore, Masimo should be compelled to respond. Id. at 2-3. Judge Thynge determined that, although the parties met and conferred as required under Local Rule 7.1.1 to discuss Masimo’s objections to Philips' discovery requests, no evidence indicated “that the parties discussed whether or to what extent Philips’ discovery requests related to overlapping patent and antitrust claims, or Masimo’s resultant discovery obligations.” Id. at 3-4. Thus, Judge Thynge denied Philips’ motion to compel and ordered the parties to confer on the issues because “it was unclear to the court whether Philips made the requisite effort to reach an agreement with Masimo . . . .” Id. at 4.

Masimo Corporation v. Philips Electronics North America Corporation, et al., C.A. No. 09-80-JJF-MPT (D. Del. Mar. 23, 2010)

Posted On: March 24, 2010

Judge Sue L. Robinson: Disqualification Order Not Final for Purposes of Immediate Appeal

Gauging "finality" for purposes of appeal can be tricky. Add to that inquiry the disqualification of a party's counsel, and the complexity only increases. District judge Sue L. Robinson shed light on the intersection of these two topics in a recent decision on a motion for reconsideration.

The Court earlier disqualified Apeldyn's counsel due to a conflict of interest. Apeldyn then sought reconsideration, or, alternatively, permission to appeal. The Court declined to reopen its earlier decision and, notably, foreclosed two opportunities for immediate appellate review.

On certifying an interlocutory appeal, the Court noted that "a reversal here . . . would leave the underlying substantive claims between the parties undisturbed" and that Apeldyn had failed to identify a "controlling question of law as to which there is a substantial ground for difference of opinion." As a result, resolving the disqualification issue now could not "materially advance the ultimate termination of the litigation" and thus could not give rise to interlocutory relief.

On certifying a final judgment, the Court similarly rejected the notion that disqualification presented an issue ripe for appeal: "The resolution of a collateral issue, such as the disqualification of counsel, cannot properly be considered a 'final judgment' with respect to an assertion of patent infringement."

With this decision, we can add disqualification of counsel to the collateral-order lexicon.

Apeldyn Corp. v. Samsung Electronics Co. Ltd., C.A. No. 08-568-SLR (D. Del. Mar. 12, 2010) (Robinson, J.).

Posted On: March 23, 2010

Chief Judge Gregory M. Sleet: Jury Verdict

On March 11, 2010, a jury returned its verdict in LG Electronics U.S.A., Inc. v. Whirlpool Corporation finding that defendant Whirlpool did not literally infringe the asserted claims of LG's patent and that the patent was not invalid based on obviousness. C.A. No. 08-234-GMS, Verdict Form (D. Del. Mar. 11, 2010).

The same jury returned a verdict finding that plaintff and counterclaim defendant LG's side-by-side refrigerator product does infringe four of the 5 claims of the first Whirlpool patent-in-suit. On the other hand, the jury held that LG's French door refrigerator product does not infringe those same claims either literally or under the doctrine of equivalents. No willful infringement was found and the jury further found that the assert patent was not invalid based on written description, anticipation or obviousness. The jury awarded Whirlpool $1,786,925 in damages.

As to the second Whirlpool patent-in-suit, the jury found that LG infringed the asserted claims but that the patent was invalid based on anticipation. (The jury did not find the patent invalid based on obviousness.)

LG Electronics U.S.A., Inc. v. Whirlpool Corporation , C.A. No. 08-234-GMS, Verdict Form (D. Del. Mar. 11, 2010).

Posted On: March 20, 2010

Judge Thynge: Motion for Reconsideration Denied

Yesterday, Judge Thynge issued a memorandum order on a motion for reconsideration in Robert Bosch, LLC. v. Pylon Manufacturing Corp., C.A. No. 08-542-SLR (D. Del. Mar. 19, 2010). Bosch had moved for reconsideration of a December 23, 2009 discovery motion, arguing that the Court had suffered from a "misapprehension of the facts." Id. at 2.

In the brief memorandum order, the Court denied the motion for reconsideration, clarifying that it had not, in fact, misunderstood the facts, and that Bosch had based its reconsideration argument on a "selective quote from the opinion [that] is inaccurate and incomplete," and that the "cherry-picked sentence relied upon by Bosch" was taken out of context. Id. at 4.

Robert Bosch, LLC. v. Pylon Manufacturing Corp., C.A. No. 08-542-SLR (D. Del. Mar. 19, 2010)

Posted On: March 19, 2010

Judge Robinson: Motion to dismiss for lack of personal jurisdiction DENIED after the court attributed one defendant's contacts to the defendant in question

Plaintiffs filed this patent infringement action against defendants Anchen Pharmaceuticals and Anchen Inc. after the defendants filed their Abbreviated New Drug Application (“ANDA”) to manufacture generic versions of AMRIX®. In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litigation, MDL No. 09-2118 (D. Del. Mar. 12, 2010). Plaintiffs are a Nevada and a Swiss corporation. Defendant Anchen Pharmaceuticals is a California corporation with a principal place of business in California. Id. at 3. Defendant Anchen Inc. is a Delaware corporation, with a principal place of business in California. The relationship between the two entities was not clear to the Court but there was an overlap of senior corporate officers and plaintiffs alleged that the two entities held themselves out in the marketplace as one company. Id.

Defendants argued that the action should be dismissed as to Anchen Pharmaceuticals for lack of personal jurisdiction. Id. at 15. Plaintiffs argued that jurisdiction was proper because the Delaware contacts of Anchen Inc. should be attributed to Anchen Pharmaceuticals under agency theory. Id. at 18. “Because the allegations demonstrate[d] a nearer than arm’s length relationship, the court agree[d].” Id. Defendants did not dispute plaintiffs’ evidence that “both entities share[d] the same address and some of the same employees. Moreover, Anchen Pharmaceuticals’ statements to the United States Patent Office during the prosecution of its mark, [that both defendants, although separate legal entities, constitute a single source to the relevant public], evince exactly this type of relationship.” Id. Although Judge Robinson concluded that Anchen Pharmaceuticals’ activities in Delaware were not sufficient to establish personal jurisdiction, she found general jurisdiction present because submission of the ANDA constituted and act of infringement and because Anchen Pharamaceuticals’ drug sales in Delaware was a “substantial revenue” source for the company. Id. at 19.

In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litigation, MDL No. 09-2118 (D. Del. Mar. 12, 2010)

Posted On: March 17, 2010

Magistrate Judge Leonard P. Stark Nominated to Fill D. Del. Vacancy

President Obama nominated Magistrate Judge Leonard P. Stark to fill the District of Delaware vacancy. The position has been empty since 2006 when Judge Kent A. Jordan was appointed to the Third Circuit.

For a copy of the White House Press Release see here.

Posted On: March 12, 2010

Magistrate Judge Thynge: Bifurcation of Anti-Trust Issues Granted

Magistrate Judge Mary Pat Thynge issued a memorandum order yesterday in Masimo Corp. v. Philips Electronics North America Corp., C.A. No. 09-80-JJF-MPT (D. Del. Mar. 11, 2010), granting a motion by plaintiff Masimo to bifurcate and stay discovery of Philips' antitrust counterclaims. Id. at 10. Magistrate Judge Thynge noted that "Bifurcation of patent and antitrust claims is not mandatory, but is common," id. at 3-4, and that, absent bifurcation, the jury might have comprehension difficulties (from the volume of information, including 24 asserted patents) and might be subject to bias against the plaintiff (from the defendant's allegations of monopolization). Id. at 3. Discovery and related issues were also stayed, because "there is a possibility that a trial on [the] patent claims will potentially eliminate or simplify [the] antitrust counterclaims alleging anticompetitive licensing restrictions." Id. at 8. This opinion mirrors a decision by Judge Robinson that we reported last year.

Masimo Corp. v. Philips Electronics North America Corp., C.A. No. 09-80-JJF-MPT (D. Del. Mar. 11, 2010)

Posted On: March 11, 2010

Judge Farnan: Claim construction in Leader v. Facebook

In Leader Technologies, Inc. v. Facebook, Inc., C.A. No. 08-862-JJF (D. Del. Mar. 9, 2010), Judge Farnan recently construed claim terms related to a patent involving “the ‘management and storage of electronic information,’ and specifically relat[ing] to ‘new structures and methods for creating relationships between users, applications, files and folders.’”

Plaintiff asked Judge Farnan to construe five claim terms, whereas defendant put forth three claim terms (down from its initial 31 claim terms, narrowed after the Markman hearing).

The construction of the eight disputed terms are as follows:


Judge Farnan found that this construction, proposed by plaintiff, was supported by the specification, and rejected defendants claim differentiation argument stating that “the specification should prevail over claim differentiation principles.” Id. at 10.

“a computer-related entity, either hardware, a combination of hardware and software, software, or software in execution.”

Judge Farnan rejected defendant’s argument that means-plus-function treatment was appropriate thereby construing the term as expressly defined in the specification. Id. at 14.


Judge Farnan rejected defendant’s proposed construction because it read in a limitation not supported by the claim or the specification. Id. at 15.

“navigation according to a specific path or route”

Many-to-many Functionality
“two or more users able to access two or more data files”

Judge Farnan rejected defendant’s argument that the claim term was indefinite. Id. at 22-24.

“automatically and in response to the preceding event”

Judge Farnan rejected plaintiff’s argument that the claim term required no construction because it is commonly used in the field, “and one of ordinary skill in the art understands its meaning.” Id. at 24.

Term given its plain and ordinary meaning

Judge Farnan determined that defendant’s proposed construction “import[ed] unnecessary and unwarranted limitations” into the claim term. Id. at 27. Furthermore, the proposed construction was not supported by the prosecution history. Id. at 28.

Accesses [the data]
Term given its plain and ordinary meaning

Leader Technologies, Inc. v. Facebook, Inc., C.A. No. 08-862-JJF (D. Del. Mar. 9, 2010)

Posted On: March 9, 2010

Judge Robinson: All Accenture v. Guidewire Motions Denied

Late last week, Judge Robinson issued a memorandum opinion in Accenture Global Services GMBH v. Guidewire Software Inc., C.A. No. 07-826-SLR (D. Del. Mar. 5, 2010) (in addition to the claim construction opinion that we posted about yesterday, and the order staying the case that we posted about just over a week ago). In this opinion, Judge Robinson denied several motions, including Defendant's motions for summary judgment on anticipation, obviousness, indefiniteness, non-infringement, and trade secret misappropriation, and Plaintiff's motion to strike Defendant's on-sale bar arguments and documents because they were not identified in its invalidity contentions during discovery.

Plaintiff's motion to strike was denied due to a lack of prejudice, and the fact that they had actual notice. Defendants' on-sale bar motion was denied because they provided no "clear and convincing evidence that [supposed on-sale bar product] met all of the limitations of an asserted claim," because it was missing some enabling portions of the specification, and "the (albeit few) missing enabling portions of the specification may have been added" after the critical date. Id. at 19.

Defendant's anticipation motion was denied because there are still issues of fact (as evidenced, according to the Court, by the fact that Defendant submitted over 5000 pages of material to the Court for consideration), and because "defendant's wholesale grouping of limitations [in its anticipation analysis] does not allow for the requisite demonstration of the manner in which the elements of the asserted preior art system are arranged." Id. at 38-41.

One final item of interest was how the Court, in denying Defendant's indefiniteness motion, used Defendant's own anticipation motion against it:

Notably, defendant has moved for summary judgment that claim 6 of the '284 patent is anticipated and obvious in view of the three prior art systems noted supra. Certainly defendant's assertion that the claim can be (positively) contrasted with the prior art is at odds with the assertion that the bounds of the claim are indeterminable.
Id. at 41-42 (emphasis added).

Accenture Global Services GMBH v. Guidewire Software Inc., C.A. No. 07-826-SLR (D. Del. Mar. 5, 2010)

Posted On: March 9, 2010

E.D. Pa. Chief Judge Harvey Bartle: Claim Construction Op.

Eastern District of Pa. chief judge Harvey Bartle, sitting by designation, recently issued a claim construction memorandum opinion in Magsil Corp. v. Seagate Technology, C.A. No. 08-940 (D. Del. Mar. 1, 2010) (memo. op.). The following terms were construed:

  • "junction" - The Court held that due to the claims' use of "comprising," and the wording of the dependant claims, the use of "junction" did not mean that the claims were "limited to a three layer system of 'electrode, barrier and counter-electrode.'"
  • "a small magnitude of electromagnetic energy" - "that magnitude of electromagnetic energy which is sufficient to reverse the magnetization direction of the electrode or film layer with a lower coercive force (thereby achieving a change in resistance of at least 10%) but less than the amount necessary to reverse the magnetization direction of the electrode or film layer with a higher coercive force."
  • "Reverses at Least One of the Magnetization Directions" - "a turning or change of the magnetization direction of at least one of the electrodes or film layers, towards an opposing alignment, to such a degree as necessary to achieve at least a 10% change in resistance."
  • "A Change In the Resistance By at Least 10%" - 'a change in the resistance of at least 10% by using the formula ΔR/R = (R1 -R2)/R1, where ΔR/R is the percent change in 1 magnetization direction, R1 is the resistance of the junction 8 before the application of electromagnetic energy reverses at least one of the magnetization directions, and R2 is the resistance of the junction after the application of electromagnetic energy and the resultant reversal of at least one of the magnetization directions."
  • "At Room Temperature" - "a device which causes a change in resistance of at least 10% 'at room temperature' is a device capable of achieving such resistance without actively manipulating the temperature of the device, that is, that the device is capable of achieving a 10% change in resistance while operating within a room-temperature environment."
  • "Stepping Motor" - "an electric motor that is capable of moving only in small, discrete increments."
  • "Linearly Driving the Actuator" - "driving the actuator in a straight line"

Magsil Corp. v. Seagate Technology, C.A. No. 08-940 (D. Del. Mar. 1, 2010)

Posted On: March 8, 2010

Judge Sue L. Robinson: Construing Insurance-System Patents

For those readers litigating insurance patents, district judge Sue L. Robinson recently released a claim-construction decision that interprets the terms of two insurance claims-processing systems. Among the terms construed, several stand out: "policy level," "claim level," "participant level," "event trigger," "field," and the phrase "obtaining a selection of fields of a first set of fields."

Accenture Global Services GMBH v. Guidewire Software Inc., C.A. No. 07-826-SLR (D. Del. Mar. 5, 2010) (Robinson, C.J.).

Posted On: March 7, 2010

D. Del. Special Master: Protective-Order Compromise Settles Threat of Later Disclosure During Reexam and Other Proceedings

Negotiating protective orders can be a mundane affair. But the D. Del. litigator may want to take notice of an attorneys-eyes-only provision recently fashioned by a special master appointed by distict judge Sue L. Robinson. In his report and recommendation, the special master adopted the following passage to address the parties' concerns over handling the use of confidential information during the course of both reexamination and separate prosecutions:

"No attorney or other individual who has access to the other parties' [confidential information] . . . shall be involved thereafter in the prosecution or drafting of patent applications, claim language for patent applications, or arguments made in support of patent applications, excluding a patent in reexamination [involving an] . . . opposing party in this case, before the [PTO or foreign agencies], and proceedings related to [the patent-in-suit] . . . . [A]ny individual's participation in reexamination proceedings(s) also is expressly conditioned on his/her/its legal obligation, established by Order of the Court, not to use in any way an opposing party's [confidential information] to draft new claims, or to amend previously existing claims, through the reexamination process. The above conditions and exclusions continue for a period of one year following the final resolution [of the case]."

Apeldyn Corp. v. AU Optronics Corp., C.A. No. 08-568-SLR (D. Del. March 1, 2010) (Poppiti. S.M.).

Posted On: March 5, 2010

Delaware IP Law Blog Author Selected to Participate in D. Del. Trial Seminar

Delaware IP Law Blog's own Karen Keller was selected yesterday to participate in the District of Delaware's inaugural Federal Trial Practice Seminar, an intensive eight-week instructional program created to hone the skills of the district's litigators. Open by invitation only, the seminar's weekly sessions will be attended by D. Del. judges and a group of program mentors, all of whom have extensive trial practice experience in the district court.

Congratulations Karen!

Posted On: March 5, 2010

Chief Judge Sleet: Motion in Limine Exposes Pleading Deficiency

Preliminary motions, a staple of modern litigation, can sometimes expose larger problems in a party's case. In a recent decision, Chief Judge Gregory M. Sleet explained how a motion in limine over an expert report raised a different question: Did the plaintiff sufficiently identify its Section 271(f) infringement argument in time for trial?

Addressing this broader issue, the Court answered no, thereby eliminating a potential avenue for recovery:

"[T]he only bases [plaintiff] Edwards has asserted for its contention that CoreValve was on notice of such claims are a single sentence in a CoreValve expert report that contains what is, at most, an oblique reference to § 271(f); a formalistic recitation in the original complaint of all possible modes of infringement under § 271 that Edwards might later assert; and an assertion made long after the close of discovery that Edwards 'reserved its rights' to assert § 271(f)."

By doing so, the Court reinforced once again the practice in this district that general statements in pleadings more often than not cause disclosure problems further down the road.

Edwards Lifesciences AG v. CoreValve Inc., C.A. No. 08-91-GMS (D. Del. Feb. 26, 2010) (Sleet, C.J.).

Posted On: March 4, 2010

Judge Farnan: Federal Circuit Rule 11 does not confer exclusive jurisdiction over the record on appeal

In Honeywell International Inc., et al. v. Nikon Corporation, et al., C.A. No. 04-1337-JJF (D. Del. Mar. 2, 2010), Judge Farnan considered defendants’ motion to unseal documents related to the Court’s decision granting summary judgment for invalidity. Id. at 1. Plaintiffs’ subsequently filed a motion to strike arguing that the Federal Circuit has exclusive jurisdiction over the motion due to plaintiffs’ pending appeal of the Court’s summary judgment opinion. Id. at 2. The Court ultimately denied both defendants’ and plaintiffs’ motions. Regarding jurisdiction, Judge Farnan determined that the motion to unseal documents was not an issue for appeal to the Federal Circuit and there was no danger that both courts would decide the same issue simultaneously. Id. at 4. Plaintiffs also argued that under Federal Circuit Rule 11, “the Federal Circuit has subject matter jurisdiction over the modification of protective orders as applied to the record on appeal.” Id. However, Judge Farnan noted that plaintiffs point to no case law indicating that Rule 11 applies to subject matter jurisdiction, and “by its plain language, Rule 11 is directed to ‘Forwarding the Record [on Appeal]. Accordingly, the Court does not read Rule 11 as establishing the Federal Circuit’s exclusive jurisdiction over the record on appeal. Id. at 5.

Honeywell International Inc., et al. v. Nikon Corporation, et al., C.A. No. 04-1337-JJF (D. Del. Mar. 2, 2010)

Posted On: March 3, 2010

Judge Farnan: Failure to amend expert report to include opinion testified to at trial results in opinion being stricken from the record

In a post-trial evidentiary opinion of phase I of a bench trial in which defendants asserted patents against plaintiff, Judge Farnan recently determined that certain testimony should be excluded because plaintiff failed to make adequate disclosure pretrial. LG Display Co., Ltd., v. AU Optronics Corp., et al., C.A. 06-726-JJF (D. Del. Feb. 16, 2010). One of plaintiff’s experts offered opinions at trial that were not disclosed in prior expert reports or depositions. Id. at 1. Plaintiff argued that the testimony was proper rebuttal testimony and should be considered, despite not being disclosed until the third day of trial. Id. at 2. Judge Farnan disagreed because plaintiff’s expert had one month to review defendant’s expert before submitting his rebuttal report and then another month before his deposition was taken. Id. at 3. “[Defendant] AUO and its expert were given no advance notice of [plaintiff’s expert’s] testimony, and [plaintiff] made no attempt to amend its expert report prior to allowing [their expert] to take the stand and reveal what [plaintiff] acknowledges were undisclosed, new opinions. In the Court’s view, this is precisely the type of attorney conduct that is prohibited by the Federal Rules of Civil Procedure.” Id. at 4. Judge Farnan also precluded plaintiff from asserting a license defense because plaintiff failed to disclose the defense prior to trial, as required by Federal Rule of Civil Procedure 26(e). Id. at 8.

LG Display Co., Ltd., v. AU Optronics Corp., et al., C.A. 06-726-JJF (D. Del. Feb. 16, 2010)

Posted On: March 3, 2010

Judge Sue L. Robinson: Case Stayed Pending Supreme Court Decision in Bilski

Judge Robinson in Accenture Global Services GMBH v. Guidewire Software, Inc., has decided to stay the case and deny defendant's motion for partial summary judgment of invalidity based on unpatentable subject matter until after the U.S. Supreme Court issues its ruling in the Bilski matter. C.A. No. 07-826-SLR, Memo. Order (D. Del. Feb. 26, 2010). The patents in this case relate to software used to perform insurance-related transactions and tasks. Id. at 2. The court stated that it "believes that the claims of the Accenture patents would not meet the 'transformation" prong' of the Federal Circuit's current machine or transformation test under Bilski as it currently stands. Id. at 3. However, the patents "raise substantial questions under the 'machine' prong." Id. Therefore, the court stated, "[i]nsofar as the Supreme Court may illuminate, or drastically alter, the framework of such a determination, the court believes that it is prudent to postpone the subject matter inquiry under 35 U.S.C. Section 101 until such time as a decision is issued in Bilski v. Doll." Id.

Accenture Global Services GMBH v. Guidewire Software, Inc., C.A. No. 07-826-SLR, Memo. Order (D. Del. Feb. 26, 2010).