Posted On: June 28, 2010

Judge Baylson: Claim construction order

Judge Baylson issued a recent claim construction order construing the following terms:

"discrete region(s)"
"fixed upon a solid support according to an array comprising discrete regions"
"determining the possible presence and quantification of precipitate(s) in said discrete region(s)"
"correlating the presence and quantification of the precipitate(s) at the discrete region(s) with the identification and/or quantification of said target compound"
"colloidal gold particles coupled to the bound target compound"
"wherein the possible presence and quantification of a precipitate is obtained by reflection, absorption or diffusion of a light beam upon said precipitate"
"wherein binding of said targe compound to one or more of said multiple species of capture molecules leads to a catalytic reduction of a metal present in solution, and a formation of a metallic precipitate in one or more of said discrete region(s)
"wherein said computer is programmed to detect and/or quantitate said target compounds"

Update: Below is the order adopting the constructions. Here is Judge Baylson's July 12, 2010 memorandum opinion in support of the claim constructions.

Eppendorf AG v. Nanosphere Inc., C.A. 09-504 (D. Del. June 10, 2010)

Posted On: June 28, 2010

Joseph J. Farnan: Multiplicity of Prior Art Leads to Stay of Proceedings

On Friday, District Judge Joseph J. Farnan Jr. granted a request for a stay pending reexamination. While this outcome is not unusual in Delaware, the Court made the notable observation that the sheer number of prior art references at issue made simplification of the case more likely following scrutiny by the PTO:

"[I]t is noteworthy that every claim of both [patents-in-suit] is currently being rexamined by the same PTO Examiner, and that the PTO has already issued an office action rejecting all claims of the '975 patent. Also, inter partes reexamination of the '975 patent was granted in view of thirty prior art references . . . . Ex parte reexamination of the '236 patent was granted in view of fifteen prior art references. In these circumstances, the Court is persuaded that there is a strong likelihood that a stay pending reexamination will simplify the prior art issues and invalidity defenses which are likely to be raised in this action."

Although only one factor in the Court's analysis, the prior art in the aggregate helped persuade the Court that staying the proceedings would be the most efficient course.

Enhanced Sec. Research LLC v. Cisco Sys. Inc., C.A. No. 09-571-JJF (D. Del. June 25, 2010) (Farnan, J.).

Posted On: June 25, 2010

Leonard P. Stark: Document Production Prior to Amendment Deadline Precludes New Counterclaim

Although parties to litigation enjoy a wide latitude in amending pleadings, the ability to change one's case theory midstream has its limits. A recent decision by Magistrate Judge Leonard P. Stark demonstrates these boundaries. In the underlying infringement litigation, Facebook sought to amend its false-marking counterclaim outside the confines of the scheduling order. Looking to Rule 16(b)'s "good cause" standard, the Court denied Facebook's request on diligence grounds.

Specifically, the Court emphasized Facebook's possession of the documents necessary to its proposed pleading prior to the amendment deadline:

"[I]t appears that Facebook possessed documents containing examples of how Leader marked its . . . products before it previously moved to add the false marking claim. Facebook provides no explanation for why, in light of this information, it could not reasonably have complied with the Scheduling Order. Accordingly, the Court concludes that Facebook has not shown that good cause exists to amend its responsive pleading with regard to the false marking counterclaim."

By doing so, the Court gave clear guidance to the litigator: diligence for purposes of Rule 16(b)'s "good cause" standard includes a timely review of an opposing party's document production.

Leader Technologies, Inc. v. Facebook, Inc., C.A. No. 08-862-LPS (D. Del. June 24, 2010) (Stark, M.J.).

In a related decision, Judge Farnan approved two discovery orders issued by Magistrate Judge Stark in this case - one on the common-interest privilege and the other allowing a restricted reopening of discovery. Read the decision here.

Posted On: June 23, 2010

Federal Bar Association Honors Judge Joseph J. Farnan, Jr.

The Delaware Chapter of the Federal Bar Association honored district judge Joseph J. Farnan, Jr. today at its annual meeting in Wilmington. The event, also sponsored by the United States District Court for the District of Delaware, brought together a number of Delaware federal judges, past law clerks, and practitioners from around the country to celebrate Judge Farnan's twenty-five distinguished years on the bench. Judge Farnan, who is retiring in July, addressed the capacity crowd at the Hotel duPont's Gold Ballroom with an emotional and, as always, thoughtful speech.

All of us at the Delaware IP Law Blog express our heartfelt appreciation to Judge Farnan for his many years of public service and for his substantial contributions to the District and to the quality of justice in Delaware.

FBA Luncheon

Posted On: June 22, 2010

Leonard P. Stark: Claim Construction in Cholesterol-Reduction Patent Dispute

A recent claim-construction report and recommendation by Magistrate Judge Leonard P. Stark approached the dilemma of construing numerous terms in a creative way. Faced with over fifty disputed claim terms, the Court posed six questions that, when answered, would resolve the meaning of the claims:

(1) "Do the Abbott patents exclude an 'internal hydrophobic component' ";

(2) "Whether the 'treatment-lining' terms should be numerically defined";

(3) "Whether 'sustained release' can be defined in relation to 'immediate release'";

(4) "Whether 'significant increase' should be numerically defined";

(5) "Whether 'intermediate release' can be defined in relation to both 'sustained release' and 'intermediate release' ";

(6) "Whether 'about' should be numerically defined."

By grouping the disputed terms together in this way, the Court was able to resolve the parties' disputes without wading into the whole universe of claim terms.

Abbott Labs. v. Lupin Ltd., C.A. No. 09-152-JJF-LPS (D. Del. June 18, 2010) (Stark, M.J.).

Posted On: June 18, 2010

Gregory M. Sleet: "Hard-Fought" Litigation Cannot Justify Fee Award

Chief Judge Gregory M. Sleet recently reaffirmed the notion that fervid advocacy on behalf of a client cannot alone justify a Section 285 fee award. As part of the Court's post-trial findings on invalidity, the Court rejected a concomitant fee request, noting that awards of attorneys' fees under the statute are "not intended to be an ordinary thing in patent cases."

The Court continued that "hard-fought" litigation is distinct from vexatious or bad-faith conduct:

"Mylan's conduct in this case does not rise to a level of bad faith or vexatious litigation that warrants an award of attorneys' fees and costs. Indeed, the record demonstrates that throughout this litigation, both sides vigorously, and in apparent good faith, defended their respective positions."

The line between aggressive advocacy and incivility is difficult to draw. Nonetheless, litigators must consciously fix this boundary in each case. By refusing to assign blame in a contentious, but fair, litigation process, the Court has given the litigator comfort that fee-shifting is reserved for egregious tactics, not zealous advocacy.

In re Alfuzosin Hydrochloride Patent Litigation, MDL Docket No. 08-md-1941-GMS (D. Del. May 14, 2010) (Sleet, C.J.).

See also the Court's post-trial findings on infringement here.

Posted On: June 17, 2010

Mary Pat Thynge: Email Received at Eleventh Hour Need Not be Disclosed in Reply Brief Filed the Same Day

When does a party have an obligation to inform the Court in its motion practice of ongoing negotiations between the parties? According to Magistrate Judge Mary Pat Thynge, not at the "eleventh hour."

Shortly before defendants in the underlying infringement action filed their reply brief on a letter-of-request motion, plaintiff emailed defendants as part of an ongoing discussion between the parties about the outstanding request for international discovery. In a later sur-reply, Pronova claimed that defendants ambushed it by failing to note this contemporary correspondence.

In a strongly worded statement, the Court refused to assign any impropriety to defendants' actions:

"[T[he court makes little of the fact that the defendants' reply, which was filed at 7:32 p.m. (EST) . . . makes no mention of revisions Pronova suggested in an email sent to the defendants that same day at 3:49 p.m. (EST). Pronova's argument that such action by the defendants is improper strikes the court as misguided, disingenuous, and evidencing, at best, an ignorance of the regularities of motion practice."

In effect, the Court continued, "[t]o do so would only encourage the sending of emails in the eleventh hour prior to filing deadlines, and the court sees no need to nurture such a perversion of this court's local rules."

Pronova Biopharma Norge AS v. Apotex Corp. et al., C.A. No. 09-286-SLR-MPT (D. Del. April 27, 2010) (Thynge, M.J.).

Posted On: June 17, 2010

Judge Robreno Claim Construction Opinion

Judge Robreno recently issued a claim construction opinion in a case involving 2 patents and nearly 30 disputed claim terms. The patents involve technology related to elevator installation. The disputed claim terms included the following:

“modernized”/“modernizing”
“modernizing device”
“a device for temporarily operating an elevator installation during modernization”
“a system for modernizing an elevator installation"
"a method for modernizing an elevator installation"
"elevator installation"
"elevator control"
"call report"
"floor terminal"
"at least one of [A] and [B]"
“floor terminal . . . operative for at least one input of destination call reports and recognition of identification codes of passengers"
“floor terminal . . . for at least one of the input of destination call reports and for recognition of identification codes of users”
“computing unit . . . for at least one of evaluating the destination call reports and association of destination floors with recognized ones of the identification codes”
"identification code[s]"
"recognition of identification codes of passengers"
"computing unit"
"destination signal"
“interrupting at least one existing electrical floor call transmitter line between at least one floor call transmitter and the elevator control”
“interrupting at least one existing car call transmitter line between at least one car call transmitter and the elevator control”
“the elevator control being disconnected from the hall call transmitters and the car call transmitters of the elevator installation”
"existing electrical floor call transmitter line"
"existing car call transmitter line"
"floor call transmitter line input"
"car call transmitter line input"
"hall call transmitters"
"in a modular manner"
"in succession"
"performing said steps a. through c. [of claim 1] for each elevator car and associated elevator control of an elevator installation in succession whereby the elevator installation is modernized in a modular manner”
"temporarily"

Inventio AG v. ThyssenKrupp Elevator Americas Corp., C.A. 08-874-ER (D. Del. June 14, 2010)

Posted On: June 16, 2010

Sue L. Robinson: "Innocence" Theory of Inducement Rejected

In a recent summary-judgment opinion, District Judge Sue L. Robinson expounded on an interesting doctrinal nuance in the field of indirect infringement. Accused infringer Tellme Networks argued, among others, that its semi-automated telephone directory-assistance service did not, either directly or indirectly, infringe the patentee's system of processing spoken information. In particular, in an effort to stave off a claim of inducement, Tellme argued that it "innocently" entered into certain customer contracts without knowledge of the patent-in-suit.

The Court rejected this innocence theory, and, in the process, explained the facts adequate to potentially defeat its application in future proceedings:

"Tellme has continued to operate, maintain, and update its directory assistance platform. Tellme has evinced no intention of ceasing such activity. Most significantly, evidence of record demonstrates that . . . Tellme has revised, amended and extended its contractual obligations to provide its hosted services. . . . Tellme has, under certain contracts, a right to modify its hosted services to avoid infringement."

Although the Court ultimately entered judgment in favor of Tellme, the Court's inducement discussion should nonetheless not be overlooked by litigators and those drafting service contracts.

Nuance Comms. Inc. v. Tellme Networks, Inc., C.A. No. 06-105-SLR (D. Del. April 20, 2010) (Robinson, J.).


Posted On: June 16, 2010

Judge Joseph J. Farnan, Jr.: Jury Verdict

On June 15, 2010, a Delaware jury returned a verdict for plaintiff Dow Chemical Company and awarded Dow Chemical damages in the amount of $61.77 million. The Dow Chemical Co. v. Nova Chemicals Corp., C.A. No. 05-737-JJF, Verdict Form (D. Del. June 15, 2010). Specifically, the jury found that all four of the accused products of defendant Nova Chemicals Corp. infringed the two patents-in-suit. Nova Chemical asserted invalidity defenses alleging that the asserted patents were invalid for lack of written description and the claims were indefinite. Nova Chemical also asserted an obviousness defense. The jury ultimately determined the patents were valid and found for Dow Chemical on all invalidity questions. The $61.77 million damages award was broken down into approximately $4.3 million of reasonable royalty damages and $57.45 in lost profits.

The Dow Chemical Co. v. Nova Chemicals Corp., C.A. No. 05-737-JJF, Verdict Form (D. Del. June 15, 2010).

Posted On: June 14, 2010

Judge Joseph J. Farnan, Jr.: Contempt Motion or DJ Action?

In response to a contempt motion filed by nCube Corporation alleging that SeaChange violated the permanent injunction by developing a redesigned product that also infringes the patent-in-suit, SeaChange filed a declaratory judgment complaint requesting that the Court find its new product does not infringe the patent-in-suit. nCube Corporation v. Seachange Int'l Inc., C.A. Nos. 01-011-JJF, 09-573-JJF, Memo. Order (D. Del. June 4, 2010). nCube then moved to stay the declaratory judgment action pending its motion for contempt. Id. at 2. The Court found that the "most efficient means of addressing the parties current dispute is to stay" the declaratory judgment action until a determination is made whether contempt proceedings are appropriate. Id. at 6.


nCube Corporation v. Seachange Int'l Inc., C.A. Nos. 01-011-JJF, 09-573-JJF, Memo. Order (D. Del. June 4, 2010).

Posted On: June 14, 2010

Chief Judge Gregory M. Sleet: Markman Opinion

In an order construing the terms of a patent related to the substance mannitol, the Court defined the following terms:

- "pulverulent mannitol"
- "according to a Test I of between about 40% and about 80%"
- "mechanical action in a ERWEKA TAP friabilimeter"
- "the test on a sieve with mesh size of 100 microns"
- "a rate of dissolution according to a Test II of between about 0 and 30 seconds"
- "introducing into about 150 g of demineralized and degassed water maintained at about 20 degrees C and subjected to stirring at 200 rpm in a 250 ml low form beaker, exactly 5 g of a particle size cut, within the range of about 100 and 200 microns, of the powder to be tested"
- "perfect visual clarity of the suspension thus prepared"
- "comprising a mannitol richness... greater than approximately 90%
- "atomizing"
- "granulating by a wet route"

Roquette Freres v. SPI Pharma, Inc., C.A. No. 06-540-GMS, Order Construing the Terms of U.S. Patent No. 5,573,777 (D. Del. June 11, 2010).

Of note, the court gave a narrow definition of the term "pulverulent mannitol" based on the patent's written description which referred to "relatively pure pulverulent mannitol" as "the present invention" or the "invention" throughout the specification and did not "indicate that 'relatively pure pulverulent mannitol' is merely a preferred embodiment." Id. at 1-2 n. 1.

Roquette Freres v. SPI Pharma, Inc., C.A. No. 06-540-GMS, Order Construing the Terms of U.S. Patent No. 5,573,777 (D. Del. June 11, 2010).

Posted On: June 14, 2010

Judge Joseph J. Farnan, Jr.: Motions in Limine

In an order addressing various motions in limine filed by the parties, Judge Farnan granted plaintiff's motion to preclude defendant from introducing any evidence or argument related to plaintiff's pre-suit investigation and testing "as it relates to the use of evidence of the attorney-cleient privilege to create a negative inference." The Dow Chemical Company v. Nova Chemicals Corp., C.A. No. 05-737-JJF, Order, at 1 (D. Del. May 30, 2010). The court denied the motion in part, however, and allowed testimony and evidence for the purpose of impeaching or "showing internal doubt on the part of Dow that Nova's product infringed the patents-in-suit." Id. at 2.

The court also denied the plaintiff's motion in limine to preclude the defendants' damages expert from relying on licensing agreements found through the Royaltysource database. Id.

On a trial practice note, the Court granted the plaintiff's motion to preclude the defendants from using excerpts of deposition testimony during opening statements. Id. at 3.


The Dow Chemical Company v. Nova Chemicals Corp., C.A. No. 05-737-JJF, Order, at 1 (D. Del. May 30, 2010).

Posted On: June 11, 2010

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

Earlier this week Judge Pisano, sitting by designation, granted another motion to transfer a patent infringement suit to the Northern District of California, based again on the fact that the sole connection to Delaware, for Defendants or Plaintiffs, is Defendant's incorporation in Delaware. The Court held that that connection alone was not enough, especially given the inconvenience of litigating in this forum for both of the parties and for the potential witnesses (Plaintiffs are located in Tokyo, Japan, and the Defendants and potential witnesses are within the Northern District of California), and the fact that any infringing conduct took place at Defendant's headquarters in Palo Alto, California. Mekiki Co., Ltd., v. Facebook, Inc., C.A. No. 09-975 (JAP), at 5-7 (D. Del. June 7, 2010).


Mekiki Co., Ltd., v. Facebook, Inc., C.A. No. 09-975 (JAP), at 6 (D. Del. June 7, 2010)

Posted On: June 10, 2010

Judge Robinson: Motion to exclude evidence DENIED where prejudice could be cured with limited additional discovery

In Intermec Technologies Corp. v. Palm Inc., C.A. No. 07-272-SLR (D. Del. June 7, 2010), Judge Robinson denied defendant/counter plaintiff Palm’s motion to exclude evidence related to plaintiff/counter defendant Intermec’s “Trakker” product, which was disclosed as prior art invalidating Palm’s patent. Id. at 1. Although the disclosure was untimely, per the terms of the scheduling order, “the failure to make earlier Trakker disclosures was related to [Intermec’s expert’s] belief that the search for prior art which would invalidate the ’803 patent needed to be responsive to Palm’s infringement contentions.” Id. at 4. Judge Robinson permitted Palm to take additional discovery related to the Trakker disclosure, which can “cure” any lack of clarity in Intermec’s expert’s expert opinion. Id. at 4-5.

Continue reading " Judge Robinson: Motion to exclude evidence DENIED where prejudice could be cured with limited additional discovery " »

Posted On: June 4, 2010

Judge Farnan: Attorney's Fees Denied in Microsoft v. WebXchange

Last year, we posted about a declaratory action brought by Microsoft against WebXchange, which Judge Farnan dismissed for lack of subject matter jurisdiction. There was no case or controversy, because WebXchange had not accused Microsoft of infringement, even though WebXchange has a pending infringement action against several Microsoft customers involving the same patents.

WebXchange then sought fees, based on the fact that Microsoft had brought an earlier declaratory judgment action in the Northern District of California regarding the same patents, which was dismissed for the same reason. WebXchange alleged that, by bringing the Delaware action, Microsoft had acted in bad faith to multiply the proceedings, and that WebXchange is therefore entitled to attorney's fees under 28 U.S.C. § 1927, FRCP 41(d), and 35 U.S.C. § 285. Last week, Judge Farnan issued a memorandum opinion denying WebXchange's motion. Microsoft Corp. v. WebXchange, Inc., C.A. No. 09-484-JJF (D. Del. May 31, 2010). Judge Farnan held that Microsoft's second case was not frivolous, because it was based on different products, and the products in the second case are related to products that WebXchange has accused Microsoft's customers of infringing in the related case.

Microsoft Corp. v. WebXchange, Inc., C.A. No. 09-484-JJF (D. Del. May 31, 2010)

Posted On: June 1, 2010

Chief Judge Gregory M. Sleet: Markman Opinion

In a case involving a patent covering high performance diodes (electronic components), Chief Judge Sleet construed the following terms:

- "semiconductor substrate of a first conductivity type"
- "pedestal"
- "on [the first substrate of] the substrate"
- "side regions"
- "channel region in the substrate below the first oxide layer under the side regions"
- "a buried layer of a second conductivity type under and between the side regions"
- "the substrate between the side regions"

Integrated Discrete Devices, LLC v. Diodes Incorporated, C.A. No. 08-888-GMS, Order Construing the Terms of U.S. Patent No. 5,825,079 (D. Del. May 26, 2010).

Of note was the Court's comment that it "adopted the defendant's proposed construction of [the term "semiconductor substrate of a first conductivity type"]...as a sanction for the plaintiff's failure to follow its Markman procedures." Id. at 1, n.1.


Integrated Discrete Devices, LLC v. Diodes Incorporated, C.A. No. 08-888-GMS, Order Construing the Terms of U.S. Patent No. 5,825,079 (D. Del. May 26, 2010).