District judge Sue L. Robinson recently construed the terms of several patents that concern systems and methods for collecting and maintaining information about job applicants. The Court issued its claim construction on seven terms and phrases:
1. "Target data strings"
2. "Each field [being] capable of [accommodating /accepting] . . . [a] data string"
3. "Source data [st]ream"
4. "Displaying a structured form comprised of multiple fields"
6. "Supplemental inquiry form"
7. "Nonuniformly formatted source data streams"
The vacancies on the D. Del. bench over the past several years are well known. What may not be appreciated, however, is that even with these vacancies, key litigation benchmarks (such as time-to-trial) have not been visibly affected. This is due in part to the contributions of many E.D. Pa. and D.N.J. district judges that have stepped in temporarily to fill the void.
Given this system of rotating visiting judges, is not surprising that E.D. Pa. district judge Robert F. Kelly Sr. issued a decision declining to find that the current state of affairs in Delaware warranted transfer to another jurisdiction.
Presiding in the underlying D. Del. infringement action, the Court noted that court congestion was not a reason to favor a transfer:
"[T]he court congestion factor is neutral in light of the statistical evidence provided by the parties. Although the parties presented various arguments and statistical reports concerning court congestion in the fora at issue, neither side clearly shows that the administrative difficulty resulting from court congestion weighs in favor of one forum over the other. It is important to note, however, that even though there is presently a backlog of cases in Delaware, the cases are being assigned to other district courts in the Third Circuit which are capable of efficiently and expeditiously managing the cases."
Although the Court never explicitly mentioned the past vacancies, it did emphasize that, with the visiting judges in place, concerns about backlogs are unfounded.
In ICU Medical, Inc. v. Rymed Technologies, Inc., C.A. No. 07-468-LPS (D. Del. Nov. 23, 2010), Judge Stark recently decided several pending pre-trial motions. In one motion, plaintiff asked that the court exclude a prior claim construction order in a case between plaintiff and another party in the Central District of California. Id. at 3-4. Defendant argued that the evidence from the prior litigation was relevant to willful infringement because the California judge construed some of the same claim terms at issue in the current case. Id. at 4. Judge Stark agreed that the prior claim construction ruling on the same claim terms were relevant to willful infringement because “it was reasonable for [defendant] to rely on the [California court’s] constructions in evaluating whether its products infringed [plaintiff’s] asserted patents.” Id. at 5. Judge Stark noted, however, that the jury will be instructed that the jury may consider this evidence only for evaluation of defendant’s defense to willfulness, and not in evaluating infringement or invalidity of the patents-in-suit. Id.
In another pre-trial motion, defendant sought to preclude plaintiff from offering evidence to show alleged prior incidents of defendant’s copying of plaintiff’s products that are not at issue in the instant litigation. Id. at 11. Plaintiff argued that the evidence was relevant to “copying as a secondary consideration to obviousness, and [defendant’s] intent to willfully infringe [plaintiff’s] patents.” Id. Judge Stark disagreed. “[T]he alleged prior copying . . . of unrelated products is irrelevant to infringement and non-obviousness under Rule 402. . . . Furthermore, the Court agrees with [defendant] that introduction of such contentions would cause substantial delay, wasted time, and confusion because it would require mini-trials to determine whether [defendant or its CEO] actually copied the unrelated . . . devices nearly twenty years ago.” Id. at 12.
Last week, Judge Robinson granted a motion to stay pending re-examination in Vehicle IP, LLC v. Wal-Mart Stores, Inc., C.A. No. 10-503-SLR (D. Del. Nov. 22, 2010). Citing the September decision in Belden (which denied a motion to stay pending re-examination just before trial), the Court applied a simple three-factor test to determine that a stay is warranted in light of the status of the litigation and the lack of prejudice to the parties. One footnote cited re-examination statistics showing that the average appeal to the patent board takes 234 days, plus an additional 15 months to appeal that determination to the Federal Circuit.
Of note, the Court stated that "[i]f, after six months, the court is not satisfied that the reexamination is moving at a pace whereby reexamination will provide a resolution as promptly as would be otherwise achieved through this litigation, the court may lift the stay." Vehicle, at 5.
Magistrate Judge Thynge recently addressed whether a party is required to produce witnesses for depositions who are employees of its foreign subsidiary, or whether the party should seek that information pursuant to the Hague Convention. Ethypharm S.A. France v. Abbott Laboratories, C.A. No. 08-126-SLR-MPT (D. Del. Nov. 15, 2010). Plaintiff argued that defendant should produce the witnesses to testify because defendant had “control” over information possessed by its wholly-owned subsidiaries. Id. at 5. Specifically, defendant “has the legal right to obtain discoverable information at issue as a result of its acquisition of [the foreign subsidiary] and must produce information sought by [plaintiff] under the Federal Rules of Civil Procedure, rather than requiring [plaintiff] to seek that information pursuant to the Hague Convention.” Id. at 6. Defendant responded that the real issue is that procedures for compelling depositions under the Federal Rules or the Hague Convention cannot be invoked. Id. Specifically, the “foreign nationals at issue are not asserted to be subject to the subpoena power of United States courts, have not been served with deposition subpoenas, and are not asserted by [plaintiff] to be officers, directors, or managing agents of any party to this action.” Id.
Judge Thynge denied plaintiff’s motion to compel defendant to produce employees of its overseas affiliate for depositions. The court agreed with another district court that “Rule 30 of the Federal Rules of Civil Procedure does not require a party to litigation to produce persons for deposition who are merely alleged to be in the party’s control. Rather, a party or any other person can be noticed for deposition, and subpoenaed if necessary. If the person sought for deposition is not within the subpoena power of a United States Court, then procedures according to international treaty must be followed.” Id. at 18 (internal quotation omitted).
Judge Robinson, however, declined to consider the affidavit, holding that it did not "fall within the narrow category of documents considered on a motion to dismiss under Rule 12(b)(6)." Id. at 6 (citing Ricoh Co. v. Oki Data Corp., Civ. No. 09-694-SLR, 2010 WL 3908603 (D. Del. Sept. 30, 2010)). That narrow category includes, among other things, documents attached to the complaint that form the basis of the plaintiff's claims. Eidos, C.A. No. 09-234-SLR, at 3. Without the benefit of the affidavit, the 12(b)(6) motion was denied.
Judge Robinson also refused to convert the motion into a Rule 56 motion for summary judgment, because "there has been no opportunity for reasonable discovery by either party." Id. at 7.
A recent decision by district judge Sue L. Robinson further develops her policy of prohibiting patent-law experts from testifying. As part of a wide-ranging summary judgment opinion - which covers infringement, validity, and enforceability on a number of patents - the Court emphasized that the case presented "no grounds for exception" to this practice:
"The court denies MEMC's motion to admit the expert testimony of [Gooklasian] regarding: (1) 'the context of when and under what circumstances an applicant may make amendments after receiving an [sic] notice of allowance;' (2) 'procedurally how these amendments are evaluated by the [PTO];' and (3) 'how the applicants here avoided substantive examination of the broad claim scope covering all 'ions' by misuing these two types of post-allowance/post-issuance amendment procedures.' "
The Court continued that it "does not allow patent law experts to testify; this case presents no grounds for exception to the court's practice in this regard. As described by MEMC, Gooklasian offers only general guidance about PTO practice. He has no specific knowledge regarding the '516 or '601 applications or either the PTO's or [examiner's] treatment of the same." (See op. at 26-27 n.16.)
The jury's invalidity findings were reversed for lack of substantial evidence. Judge Robinson had previously granted motions in limine which, "viewed in light of the options available on the jury's verdict sheet, precluded a finding of obviousness based on any single prior art reference or any combination of prior art references that did not include the '564 patent." The Jury found the four claims invalid based on references other than the '564 patent. Judge Robinson held that, because Defendants had been precluded from offering evidence on these references, the jury's verdict could not be supported by substantial evidence.
Judge Robinson also denied Plaintiff's motion for a permanent injunction, under the eBay standard, because of "[Plaintiff]'s failure to define a relevant market, the existence of additional competitors and the non-core nature of [Plaintiff's sale of the relevant products] in relation to its business as a whole."
Recently, Judge Thynge issued a memorandum order on a motion to bifurcate in Masimo Corp. v. Philips Elec. North Am. Corp., C.A. No. 09-80-LPS-MPT (D. Del. Oct. 6, 2010). Judge Thynge previously granted Plaintiff's motion to bifurcate Defendant's anti-trust and patent misuse counterclaims. Now, Defendant moved to trifurcate the trial into separate sections for invalidity/infringement, anti-trust issues, and damages -- or, in the alternative, to bifurcate the case into invalidity/infringement and damages/anti-trust. Judge Thynge rejected both alternatives, holding that the usual issues of judicial economy, prejudice, and juror comprehension weighed in favor of trying invalidity, infringement and damages together.
The extent to which the previous bifurcation affected Judge Thynge's decision is unclear. The previous bifucation is discussed in the order, but not as one of the factors cutting against further bifurcation. On the other hand, judicial economy was a big factor weighing against further bifucation, including the overlap of evidence between damages and infringement, and Defendant's low likelihood of success at proving non-infringement or invalidity. This stands in contrast with Judge Robinson, who usually grants bifurcation in the interest of judicial economy.
In any case, Judge Thynge included a footnote leaving the door open, at least, to a stay on the presentation of damages evidence at trial until the jury renders a verdict on liability.
Special Master Bechtle recently addressed plaintiff’s motion to compel the deposition of in-house counsel for a defendant, the same person who signed the verification for that defendant’s interrogatory responses. Xpoint Technologies, Inc. v. Intel Corp., et al., C.A. No. 09-00026-SLR, Special Master Order No. 20 (D. Del. Oct. 28, 2010). The Special Master found that if in-house counsel is a person “with knowledge of the facts” in the responses or has “possession or control of the documents that contain the facts” the deposition is granted. Id. at 2-3. If, however, he does not have personal knowledge of the facts or control of the documents then the motion is denied and defendant is required to serve a declaration under oath that counsel does not have that personal knowledge and identify the people that do. Id. at 3-4.
In Eli Lilly and Co. v. Teva Parenteral Medicines, Inc., C.A. 08-335-GMS (D. Del. Nov. 5, 2010), Judge Sleet recently decided an issue of first impression -- what is the date the court should use to determine what constitutes prior art for purposes of defendants’ obviousness-type double patenting defense? Plaintiffs argued that while 35 U.S.C. § 102 governed what references constituted prior art, § 102 did not resolve “for purposes of an obviousness-type double patenting (“OTDP”) analysis the question . . . in light of the prior art as of what date?” Id. at 2 (emphasis in original). Judge Sleet rejected plaintiffs’ distinction between “the questions of ‘what’ and ‘when’” because adopting plaintiffs’ argument would “require the court to view some portions of [§ 102] as controlling while viewing others as irrelevant in the OTDP context.” Id. If the Federal Circuit intended such a result – excepting prior art in the OTDP context from the rules found in § 102 – it would have done so explicitly. Id. at 4-5.
Rarely does a party get to revisit discovery following a post-trial decision on the merits. In a recent memorandum order that affects an earlier invalidity holding, however, District Judge Sue L. Robinson did just that.
Finding that both parties overlooked a "basic principle of science" in discovery, the Court refused to order a new trial. Instead, the Court opened the record to admit further expert evidence:
"Ultimately, defendants bear the burden of demonstrating the invalidity of claim 7 by clear and convincing evidence. However, the Court will not grant a new trial on the validity of claim 7 based solely on defendants' failure of proof with respect to a basic principle of science. Due to the errors made by both parties, the court concludes that it is instead appropriate to open the record pursuant to Fed. R. Civ. P. 59(a)(2) to allow further evidence on the relationship between precipitation and solubility."
Whether the additional evidence cures the underlying failure of proof remains to be seen. But of more immediate importance is the precedent this decision establishes for reopening the trial record to address discovery deficiencies.
In a recent discovery dispute before Judge Thynge in a sham litigation case, plaintiff filed a motion to issue letters rogatory seeking discovery related to the prosecution of defendants’ patents. Ethypharm S.A. France v. Abbott Laboratories, C.A. 08-126-SLR-MPT (D. Del. Nov. 2, 2010). Defendant asked that the court insert a restriction that plaintiff may not seek discovery about possible inequitable conduct during the prosecution of a patent not at issue in the litigation. Id. at 6. Plaintiff argued that possible inequitable conduct relating to the unrelated patent was relevant to “whether the patent applicant was simultaneously engaging in inequitable conduct in connection with other patents for a different version of the same product,” and whether “the history of the [unrelated patent] motivated [defendant and its non-party subsidiary] to engage in inequitable conduct in the prosecution of the [patents at issue].” Id. at 10. Judge Thynge denied plaintiff’s request, however, because plaintiff did not plead or argue in its briefs that the unrelated patent “bears such an immediate and necessary relation to the enforcement of the [patents at issue] that a demonstration of inequitable conduct in the prosecution of the [unrelated patent] will render the [patents at issue] unenforceable.” Id. at 11. Allowing discovery into any inequitable conduct during the prosecution of the unrelated patent, “would authorize a fishing expedition beyond that which is nominally permitted by the Federal Rules.” Id.
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