In a case assigned to Judge Leonard P. Stark, he recently issued an Order scheduling a Rule 16 teleconference and attached a draft copy of the Rule 16 form scheduling order. This form is not yet posted to the Court's website, but will likely be his form scheduling order going forward. The order appears to combine some practices of each of his colleagues on the bench as well as former judges from this district. Here are some of the interesting sections:
- Deposition testimony is limited to a total number of hours proposed by the parties (instead of number of depositions)
- Judge Stark does not adopt a formal exchange of contention interrogatories in his order (compare to Judge Robinson's form Rule 16 order), but does state that the "Court encourages the parties to serve and respond to contentions early in the case."
- A provision that is unique to his form is paragraph 4 which applies to the case protective order. He requires that any proposed order include the following a paragraph set forth in the form order that applies to other proceedings.
- Judge Stark has a provision for the parties to provide tutorials on the technology at issue via submission of a videotape or CD of not more than 30 minutes with the ability for the opposing party to submit a short written comment on the other side's submission.
- Case dispositve motions are to be briefed according to the local rules.
A copy of his form order is attached below.
Yesterday, district judge Sue L. Robinson issued a decision that construed claims in several patents related to high-performance data cables and associated methods for making those cables. The Court construed the following terms:
"Dielectric pair separator"
"Grooves" and "Channels"
"Contacting each projection"
The Court also declined to construe the following phrases:
"A first die which aligns the plurality of transmission media with surface features of the core."
"An outer jacket that maintains the plurality of twisted pairs of conductors in position with respect to the non-conducive central core."
Also see the Court's accompanying Memorandum Opinion on summary judgment, which includes an interesting discussion of the marking statute.
On Wednesday, Judge Stark issued what looks to be his first order signed as a United States District Judge (at least the first to be posted to the Court's website): Allergan Inc. v. Barr Laboratories Inc., C.A. No. 09-333-SLR-LPS (D. Del Aug. 18, 2010).
The order deals with discovery and privilege issues. Plaintiff Allergan inadvertently produced a number of allegedly privileged documents, including scientific data and part of the invention record for a relevant patent. Some of the documents had already been inadvertently produced once before, and successfully recalled, in an earlier litigation against the same defendants.
Defendant Barr Laboratories apparently argued (its filings are under seal) that this double inadvertent disclosure constituted waiver or at least indicated a lack of adequate precautions to protect privileged information under the protective order. Allergan responded that "such mistakes are unfortunate, but not unheard of," and stated that the documents slipped by despite "exhaustive privilege screen procedures." See July 30, 2010 and Aug. 13, 2010 letters from Allergan to the Court.
The Court agreed with Allergan, holding that
Allergan has not waived the attorney-client privilege with respect to the documents at issue. Allergan had in place sufficient procedural protections to comply with its obligations to review materials for privilege prior to production. The amount of inadvertently produced privileged materials is minuscule in comparison with the size of Allergan's overall production.Allergan, at 1. The Court did not specifically address the double-inadvertent-production argument.
As to the technical documents, Barr apparently sought access to the data contained within the documents on the grounds that it was not a privileged part of the communication. The Court rejected this request under an application of In re Spalding Sports Worldwide, Inc., 203 F.3d 800, 805 (Fed. Cir. 2000), which held that invention records and the technical information within them are privileged.
Earlier this month, Judge Robinson issued a memorandum opinion in Girafa.com, Inc. vs. Smartdevil, Inc., C.A. No. 07-787-SLR (D. Del. Aug. 8, 2010). Girafa had initially brought a patent infringement action against a series of defendants, but Judge Robinson granted a motion for summary judgment of non-infringement in September 2009, and the case was then dismissed by stipulation with respect to the defendants other than Smartdevil.
In January, Girafa filed a motion for default judgment as to Smartdevil. Smartdevil is based in Canada, and its owner is apparently representing it pro se due to its "inability to procure reasonable representation" because "Smartdevil could not afford a minimum retainer fee of $50,000." Id. at 3-4. The Court refused to enter a default judgment. While service of the complaint was proper, Girafa failed to show sufficient prejudice, and Smartdevil has presented "facially meritorious" invalidity and non-infringement defenses. Id. at 4. Smartdevil also presented some evidence of its financial inability to afford counsel, and the Court held that Smartdevil's delay was not attributable to bad faith and did not constitute culpable conduct.
Things are moving quickly here in the District of Delaware. In a flurry of docket activity the past 24 hours, it appears that cases previously assigned to Judge Farnan (who retired from the bench on July 31, 2010) are being reassigned to Judge Leonard P. Stark. Those cases are seeing docket entries containing text similar to the following:
"Case reassigned to Judge Leonard P. Stark. Please include the initials of the Judge (LPS) after the case number on all documents filed."
The Hatch-Waxman statute provides that when an act of infringement is found, the court shall order the effective date of approval of any durg to be no earlier than the date of the expiration of the patent-in-suit. 35 U.S.C. 271(e)(4)(A). Judge Robinson in Alcon, Inc. v. Teva Pharmaceuticals USA, Inc., found that claim one of the patent-in-suit was valid and infringed. C.A. No. 06-234-SLR, Memo. Order (D. Del. Aug. 5, 2010). The judgment was amended to provide that the effective date of any approval shall not be prior to six months after the expiration date of the patent-in-suit. Id. at 3. Plaintiff also moved for entry of a permanent injunction. The Court denied plaintiff's request finding that because of the relief related to the effective date, plaintiff cannot show any irreparable harm and further cannot show that remedies available at law are inadequate to compensate for defendant's infringement. Id. at 5. Finally, the only hardship asserted by plaintiff, that it would be unable to exclude the defendant from experimental, private use of the patent, would actually "deprive the public of the benefit of [defendant's] developmental efforts." Id. at 6. Therefore, the Court declined to enter an injunction.
A jury recently returned a verdict in the battle between Leader Technologies, Inc. and Facebook. By its verdict, the jury found that Facebook literally infringed Leader's '761 patent. But the jury also found that Facebook demonstrated the invalidity of the patent-in-suit, both on the grounds of prior public use and the on-sale bar.
In a comprehensive opinion addressing a multitude of pretrial motions, district judge Sue L. Robinson offered a key insight into her practice admitting the PTO's reexamination record at trial.
As part of its analysis on a motion for summary judgment of invalidity, the Court explained why this record is inadmissible, at least when a jury is the factfinder:
"It is generally not the court's practice to admit the reexamination record as trial evidence. As the rejections on reexamination are not binding, they are generally not relevant to the issues to be tried. Almost always, such evidence is more prejudicial than probative, and creates jury confusion vis a vis the complex invalidity standards they are asked to apply - for example, that patents enjoy a statutory presumption of validity." (slip op. at 33, n.31)
It will be interesting to see whether the Court also follows this practice in non-jury trials.
In one of his last acts as a judicial officer, now-retired district judge Joseph J. Farnan Jr. issued a decision resolving a contractual ambiguity of major proportions. The underlying IP transfer agreement called for the conveyance of "patent rights" between the counterparties listed on "Schedule A." The only problem was that Schedule A never existed; instead the parties drafted a "Schedule B - Patent Rights."
As a result, Defendants in the infringement litigation claimed that, in the absence of Schedule A, the patents-in-suit were transferred automatically. The result? Plaintiff did not have standing to enforce its rights to the patents-in-suit.
The Court rejected this assertion out of hand, in part because a paralegal who created Schedule B testified that she meant to call it Schedule A:
"While the Court understands Defendants' concerns with Schedule B, the Court is persuaded . . . that Schedule B was, in fact, intended to be Schedule A and was used by the parties as Schedule A. In making this determination, the Court credits the testimony of Kate Maxwell and finds that Schedule B was mistitled and was intended to be Schedule A. [This] testimony concerning the creation of the document and its storage as a computer file supports its authenticity."
Notable for litigators is the procedure followed to cure the ambiguity and establish the document's authenticity: have the preparer testify to the error and the use of the document.
Judge Robreno: Motion for Summary Judgment GRANTED after claim construction order found claim invalid under means plus function analysis
On August 4, 2010, Judge Robreno granted defendants' motion for summary judgment. In his June claim construction order, Judge Robreno found that certain claims were indefinite under 35 U.S.C. § 112, ¶ 6, because the means-plus-function claims did not receite sufficient structure. As such, "the claims, and by extension the patents-in-suit, are indefinite as a matter of law[,]" thereby warranting a grant of defendants' motion for summary judgment. Inventio AG v. ThyssenKrupp Elevator Am. Corp., C.A. 08-874-ER, at n.1 (D. Del. Aug. 4, 2010).
Judge Thynge: Finding in favor of plaintiff after bench trial on issues of inequitable conduct and patent misuse
In Cordance Corp. v. Amazon. com, Inc. et al., C.A. No. 06-491-MPT (D. Del. July 23, 2010), Judge Thynge recently presided over a bench trial on defendants’ claims that plaintiff was guilty of inequitable conduct. During prosecution of the patent in question, the patent inventor swore that he conceived the invention prior to the effective date of another patent that formed the basis for the PTO's rejection of the patent application. Id. at 7. Defendants argued that the patent inventor “intentionally misled the PTO” by making several misstatements. Id. at 12. Judge Thynge ultimately found, however, that defendants’ “purported examples of inconsistent testimony” and “lack of factual support for [the patent inventor’s] declaration to the PTO that he was diligent in reducing his [invention] to practice[,]” among other things, were insufficient to prove intent to deceive by clear and convincing evidence. Id. at 27-34.
In Cordance Corp. v. Amazon. com, Inc. et al., C.A. No. 06-491-MPT (D. Del. July 23, 2010), Judge Thynge denied Cordance Corp.'s request for an injunction or, in the alternative, for a royalty for ongoing damages. Amazon was found by a jury to infringe two valid claims of Cordance's U.S. Patent No. 6,757,710, which covers one-click purchasing technology. You may remember Amazon's lawsuit against Barnes and Noble over the one-click purchasing technology; that patent was U.S. 5,960,411, which recently survived reexamination. Cordance's one-click patent apparently preceded the Amazon one-click patent.
The case was bifurcated but, while an appeal is pending, Cordance moved for an injunction. The Court denied the injunction because of a lack of irreparable harm - Cordance has no competing product, and any harm can be remedied by monetary damages. Cordance's request for ongoing royalties was also denied, without prejudice. According to the Court, that issue will be better dealt with in the damages portion of the trial, after the Fed. Circuit rules on the appeal.
The District of Delaware has announced its newest panel of special masters. The five on the panel, three of whom are former judicial officers, are:
Vincent J. Poppiti
David A. White
Louis C. Bechtle
B. Wilson Redfearn
Richard K. Hermann
The panel members, who serve "at the pleasure of the Judges of the Court," are eligible to hear and resolve discovery disputes in intellectual property cases.
After a jury trial returned a verdict in favor of plaintiff, Judge Farnan recently presided over a bench trial on the issue of plaintiff’s standing. The Dow Chemical Company v. Nova Chemicals Corporation (Canada), et al., C.A. 05-737-JJF (D. Del. July 30, 2010). Plaintiff and its subsidiary entered into an agreement to transfer certain patent rights from plaintiff to the subsidiary. The issue before Judge Farnan was whether this agreement transferred ownership of the patents-in-suit such that plaintiff no longer had standing. Id. at 3. Judge Farnan concluded that plaintiff was the legal owner of the patents at all relevant times throughout the litigation. Id. at 6. Patents were transferred under the agreement once they were listed on a Schedule A to the agreement. Id. Defendants argued that the patents were transferred because there was no Schedule A to the agreement. Id. at 7. However, plaintiff presented evidence that a document entitled “Schedule B Supplement – Patent Rights” was intended to be Schedule A and reference to Schedule B was a typographical error. Id.
District judge Joseph J. Farnan Jr. recently issued a strongly worded decision on willfulness, one that all litigators - and in-house counsel - should heed. The Court initially ordered a retrial on willfulness following the Federal Circuit's Seagate decision. In its subsequent post-trial decision, the Court made clear its thoughts on reverse engineering:
"Faced with this failed attempt [at a design-around] and despite its knowledge of the '075 patent and its importance to the industry, Fairchild chose the option that presented the most objectively high risk of infringement, namely to continue the development of its product by copying, through reverse engineering, the methods and features claimed in the patent."
The Court characterized such behavior concerning the '075 patent and the other patents-in-suit as "industrial stalking" and "blatant copying." The result, even with evidence of post-litigation opinions of counsel, was a textbook willfulness finding.
Judge Farnan recently denied plaintiff’s motion for a preliminary injunction related to handheld mobile computers. Symbol Technologies, Inc. v. Janam Technologies LLC, C.A. No. 08-340-JJF (D. Del. July 20, 2010). Judge Farnan found that plaintiff had shown a likelihood of success on the merits that two of plaintiff’s patents-at-issue were infringed. Id. at 16-17, 29. However, Judge Farnan also found that defendant “raised a substantial question” whether claims of the patents were invalid and plaintiff failed to prove that the defense lacked “substantial merit or [was] reasonably likely to fail.” Id. at 22; see also id. at 28, 33.
In the ANDA case Sepracor Inc. v. Dey L.P. and Dey, Inc., C.A. 06-113-JJF (D. Del. July 15, 2010), Judge Farnan granted plaintiff’s motion to amend its complaint to add claims for damages after defendants began selling their generic product and to add defendants’ parent companies as parties. Although the original claims were ready for trial Judge Farnan granted plaintiffs’ request to add the parent companies because the parent companies were involved in the sale and distribution of the generic product in question. Id. at 5. Moreover, any further discovery that may be necessary would not unduly prejudice the defendants because the discovery would be limited to only the sale and distribution of the product. Id. Judge Farnan also denied defendants request to bifurcate damages from liability because the limited discovery would not cause any undue delays and there would be no danger of confusion for the jury. Id. at 7.
The Court construed the following claim terms in a case involving patented telecommunications technology:
- a “connection” or “communications connection”
- “changing over…during the existing transfer” and “changing over…without interruption of the communications connection”
- “changing over…without interruption of a setup procedure”
- “means responsive to a control signal for changing over”
- The Court found the term “[a] device that provides access by said switching apparatus [to a mobile (phone) packet-switching network/through a line-switching network] through which data packets can be sent for delivery to a destination end terminal” indefinite for reasons set forth in a separate opinion.
Sigram Schindler Beteiligungsgesellschaft mbH v. Cisco Systems, Inc., C.A. No. 09-72-SLR, Memo. Order (D. Del. July 26, 2010).
Of note, the court construed only the “most essential” terms based on the parties’ infringement contentions and deferred consideration of additional terms related to the parties’ invalidity contentions based on a stay of the merits of validity pending reexamination. Id. at 2 n.2.
Plaintiff filed a motion to dismiss a copyright infringement action over audio compression technology. Vianix LLC v. Nuance Communications, Inc., C.A. No. 09-348-JJF, Memo. Op. (D. Del. July 20, 2010). Defendant argued that plaintiff failed to state a claim upon which relief can be granted because plaintiff “has not identified the specific original works” that form the basis of their claims and because it has not “identified specific acts” that are actionable as infringement. Id. at 3. The court found that plaintiff’s complaint “sufficiently pleads which specific original works are the subject of its copyright claims” because it identifies the accused works as “four computer programs, in the form of source code, embodying the MASC Technology” and lists the four copyright registrations, in addition to alleging that plaintiff provided a number of the accused works to the defendant in “object code” and that there were seven specific products since 2005 that incorporate the accused works. Id. at 7-8. The court further found that plaintiff alleged specific acts of infringement when it alleged that defendant’s “making and storing  ‘archived copies of its own products, including versions that contain Vianix’ including the Subject Works” were acts of infringement. Id. at 9.