Posted On: December 30, 2010

Judge Stark: Third party motion for access to confidential documents DENIED

Judge Stark recently considered third party Anvik Corporation’s motion for a limited intervention to obtain copies of evidence in LG Display Co., Ltd. v. AU Optronics Corp, et al., C.A. No. 06-726-LPS (D. Del. Dec. 29, 2010). Anvik filed a patent infringement action in the Southern District of New York against the parties to this litigation in the District of Delaware. Anvik contended that certain documents filed under seal were relevant to its claims in the New York case involving inducement of importation of the same products at issue in Delaware. Id. at 1. LG and AUO opposed Anvik’s motion, primarily because granting Anvik’s motion would modify the hotly contested Protective Order in the Delaware case. Id. Moreover, AUO argued that it had already produced documents from the Delaware case that overlapped with the New York action and Anvik had not identified what other information it seeks. Id. at 2.

Judge Stark granted Anvik’s motion to intervene, but ultimately found that Anvik had “not demonstrated that modification of the Protective Order is warranted.” Id. at 5-6. “The parties’ reliance on the Protective Order weighs in favor of the Court preserving the confidentiality of the underlying documents sought by Anvik. . . . Anvik has not demonstrated that the disclosure of the confidential materials would aid the discovery process in the New York action[.]” Id. at 6. In addition, Judge Stark disregarded Anvik’s argument that it was entitled to the documents under the public right of access to judicial records because such argument was argued for the first time in Anvik’s reply brief. Id. at 7.

LG Display Co., Ltd. v. AU Optronics Corp, et al., C.A. No. 06-726-LPS (D. Del. Dec. 29, 2010)

Posted On: December 29, 2010

Leonard P. Stark: Stay Pending Reexamination Granted

District Judge Leonard P. Stark issued a decision on Monday staying an infringement action in favor of two pending reexamination proceedings. The Court noted that a related Delaware action, which involves the same plaintiffs asserting the same patents against different defendants, has already been stayed. Given this circumstance, the Court highlighted the judicial economy concerns of allowing the second action to proceed:

"Permitting Plaintiffs to pursue their claims against [defendant], while their essentially identical action against the ten other defendants in the related action is stayed, would undermine judicial economy. Such a course of action would deprive the Court of the opportunity to consolidate the related actions for discovery, Markman proceedings, motions practice, and, possibly, trial."

Enhanced Security Res. LLC v. Juniper Networks Inc., C.A. No. 10-605-LPS (D. Del. Dec. 27, 2010) (Stark, J.).

Posted On: December 29, 2010

Magistrate Judge Joel Schneider: Production of Translated Documents

Magistrate Judge Schneider sitting by designation from the District of New Jersey recently held that a plaintiff is required to produce translated documents for any document it translates in the ordinary course of business, as well as all answers to discovery and accompanying summaries and charts. Evonik Degussa GmbH v. Materia Inc., C.A. No. 09-636-NLH/JS, Letter Order (D. Del. Dec. 21, 2010). The plaintiff is not required to produce translated copies of documents that were translated solely for the purposes of litigation because they are protected by the work product doctrine. Id. Although plaintiff is not required to produce the document, they are required to identify the nature, type and categories of the foreign documents it produced, specify by Bates number the documents responsive to defendants’ document requests and identify the sources of documents. Id. at 2. This information will allow the defendants to make “an informed decision whether to translate a document.” Id.

Evonik Degussa GmbH v. Materia Inc., C.A. No. 09-636-NLH/JS, Letter Order (D. Del. Dec. 21, 2010).

Posted On: December 29, 2010

Jury Verdict in ICU Medical, Inc. v. Rymed Technologies, Inc., C.A. No. 07-468-LPS

A jury recently returned a verdict upholding the validity of plaintiff's patents and finding that defendant's original and modified accused products literally infringed two of three patents-in-suit, and infringed under the doctrine of equivalents. The jury also found that defendant induced infringement and engaged in contributory infringement. The jury found, however, that defendant's infringement was not willful. Damages were bifurcated in this case.

ICU Medical, Inc. v. Rymed Technologies, Inc., C.A. No. 07-468-LPS (D. Del.)

Posted On: December 23, 2010

Robert F. Kelly: Construing the Claims of DNA-Sequencing Patents

Senior Judge Robert F. Kelly recently issued a claim-construction decision that addressed several patents in the DNA-sequencing field. In particular, the Court construed the following terms and phrases:

"Amplification system"
"Polymerase enzyme system"
"Aqueous liquid phase that includes a cell-free, enzymatic, exponential nucleic acid amplification system"
"Aqueous liquid phase that includes a cell-free nucleic acid polymerase enzyme system"
"Forming a liquid mixture of the sample and said amplification system"
"Entrapping"
"Completely entrapping"
"Distributing in said aqueous liquid phase"
"Distributing in said amplification system"
"A preformed immobilized medium"
"Nucleotide substrate"
"Optical characteristic of each microparticle"
"Optical characteristic of said microparticle"
"With sufficient resolution for individual microparticles to be distinguished"
"Signal tracking means effective to correlate the optical signals from each of the microparticles in each of the sequence of digital images with said center of said microparticle"
"Tracking position of the microparticles"
"Processing the plurality of digital images, wherein said processing includes correlating the optical signals generated at each microparticle with its corresponding image in each of the plurality of digital images"
"Generating sequence reads"
"An array of polynucleotide molecules"
"Which molecules can be individually resolved by optical microscopy"
"Arraying the fragments such that different fragments can be individually resolved by optical microscopy"
"Population of polynucleotide fragments"
"Vector"
"Ligating together the cleaved ends produced by said removing"
"Ligating the pair of segments together"

The Court also declined to construe the following:

"Thin layer"
"Incubating said immobilized medium"
"Incubating said trapped mixture"
"Wherein the average distance between the nearest solid surfaces is smaller than the distance which the synthesized nucleic acid product can migrate by diffusion during the reaction"

Life Techs. Corp. v. Illumina Inc., C.A. No. 09-706-RK (D. Del. Dec 15, 2010) (Kelly, S.J.).

Posted On: December 23, 2010

Judge Leonard P. Stark: Motion to Stay Pending Reexam DENIED

In what appears to be Judge Stark's first decision on a motion to stay pending reexamination as an Article III judge, he denied the defendants' request to stay the action pending an inter partes reexamination. Cooper Notification, Inc. v. Twitter, Inc., C.A. No. 09-865-LPS, Memo. Order (D. Del. Dec. 13, 2010). Plaintiff, relying on Judge Stark's decision in St. Clair Intellectual Property Consultants, Inc. v. Fujifilm Holding Corp., argued that defendants' failed to "articulate a clear hardship or inequity" that they would suffer without the stay. Id. at 3. The Court noted that this decision does not require a showing of hardship or inequity in proceeding with litigation for the court to grant a stay. Id. at 4.

The Court further found that the issues in the litigation and the reexamination did not overlap completely, plaintiff expressly represented that it would not amend the claims during reexamination and the case has already been set for trial. Id. at 5-6.

It thus appears that Judge Stark will continue with the District's recent trend in denying motions to stay.

Cooper Notification, Inc. v. Twitter, Inc., C.A. No. 09-865-LPS, Memo. Order (D. Del. Dec. 13, 2010).

Posted On: December 22, 2010

Judge Robinson: Rule 56(d) Motion Denied in Acceleron

Last week, Judge Robinson denied a Rule 56(d) motion by Acceleron in Acceleron, LLC. v. Hewlett-Packard Co., C.A. No. 10-128-SLR (D. Del. Dec. 16, 2010). Faced with a motion for summary judgment of non-infringement, Acceleron sought additional discovery under Rule 56(d) to support its contributory infringement and inducement claims. Acceleron had previously sought the same information, but had agreed to narrow the requests after HP protested and the Court determined that the requests were too broad. Since then, fact discovery has closed, and HP brought a summary judgment motion based on the lack of evidence for contributory infringement and inducement.

The Court denied Acceleron's Rule 56(d) motion, stating that "the court previously determined that these discovery requests were too broad," that "Acceleron [had] represented to the court that every outstanding discovery issue relevent to the instant motions was resolved," and that "Acceleron has had ample opportunities to seek the discovery it requests, and it is inappropriate at this stage of the proceedings to reopen fact discovery." Id. at 6-7.

Acceleron, LLC. v. Hewlett-Packard Co., C.A. No. 10-128-SLR (D. Del. Dec. 16, 2010)

Posted On: December 17, 2010

Sue L. Robinson: Claim Construction of Steel-Making Patent

Yesterday, district judge Sue L. Robinson issued a decision construing two terms and phrases of a patent related to the production of steel. Specifically, the Court construed the following:

"Hot-rolled steel sheet"
"The steel has a very high mechanical resistance"

Of note in the opinion is the procedural posture. At the outset, the Court recounted how the parties "agreed to forego summary judgment practice." Instead, the parties sought and obtained approval of an expedited trial schedule.

Arcelormittal France v. AK Steel Corp., C.A. No. 10-050-SLR (D. Del. Dec. 16, 2010) (Robinson, J.).

Posted On: December 10, 2010

Judge Sleet: Pharmaceutical Patent Terms Construed

On Wednesday, Judge Sleet issued a claim construction order in Allergan, Inc. v. Watson Laboratories, Inc., C.A. No. 09-51 (D. Del. Dec. 8, 2010) (order). The following ten terms were construed:

  1. "Delayed release"
  2. "Particulates"
  3. "Particulates, at least a portion of which releases trospium chloride in the lower gastrointestinal tract"
  4. "Provides steady state blood levels of trospoum that are comparable to steady state blood levels of trospium achieved with twice daily administration of 20 mg immediate release trospiumm tablets"
  5. "Maximum toxic blood or plasma concentration"
  6. "Minimixing the occurrence of adverse side effects following oral administration of an immediate release formulation containing 40 mg of trospoum chloride"
  7. "Minimum therapeutically effective blood or plasma concentration"
  8. "About"
  9. "In which at least a portion of said trospium chloride is contained in a delayed release formulation, which releases trospium chloride in the lower GI tract."
  10. "Release controlling polymer"

Allergan, Inc. v. Watson Laboratories, Inc., C.A. No. 09-51 (D. Del. Dec. 8, 2010) (order)

Posted On: December 9, 2010

Judge Sue L. Robinson: Careful When Responding to Contention Interrogatories

In analyzing the summary judgment motions of the parties in Kenexa Brassring Inc. v. Taleo Corp., Judge Robinson needed to address whether the groups of accused products “function in the same manner for purposes of infringement.” C.A. No. 07-521-SLR, Memo. Op., at 9 (D. Del. Nov. 18, 2010). The defendants responded to a contention interrogatory asking why “each” product did not infringe by referring to the products “collectively” and did not explain how any product functioned differently from the other. Id. at 6. The 30(b)(6) designees also testified that they could not think of any distinguishing features between the products. Id. at 6-7. The Court found that defendants “cannot group their products together when asked whether they differ, then turn around and claim that plaintiff has failed to meet its burden of showing that they operate in the same way.” Id. at 10-11.

Kenexa Brassring Inc. v. Taleo Corp., C.A. No. 07-521-SLR, Memo. Op., at 9 (D. Del. Nov. 18, 2010).

Posted On: December 7, 2010

Gregory M. Sleet: Inhalation-Anesthetic Patent Claims Construed

Last week, Chief Judge Gregory M. Sleet issued a decision that construed the claims of an inhalation-anesthetic patent. The Court construed five terms and phrases in the underlying ANDA litigation:

"A volatile liquid anaesthetic"
"A tubular outlet through which said volatile liquid anaesthetic agent can leave said reservoir and vapor can enter said reservoir when said valve is open"
"Free end"
"Perimeter"
"Means for forming a connection between said container and a vaporizer to retain said container on the vaporizer, said means comprising a formation formed on the outer surface of said tubular outlet which presents a surface facing in a direction substantially opposite to the direction in which said volatile liquid anaesthetic agent passes out of said reservoir through said outlet for latching with a cooperating surface provided at the inlet to the vaporizer to which said volatile liquid anaesthetic agent is to be supplied"

Baxter Healthcare Corp. v. Minrad Inc., C.A. No. 09-054-GMS (D. Del. Nov. 29, 2010) (Sleet, C.J.).

Posted On: December 7, 2010

Judge Robinson: Transfer Granted Because of Forum Selection Clause

In QVC, Inc. v. Your Vitamins, Inc., C.A. No. 10-094-SLR (D. Del. Nov. 29, 2010), Judge Robinson granted a motion to transfer in a false advertising case after it was revealed that the parties were bound by an agreement with a forum selection clause and a choice of law provision. Judge Robinson recognized that "Forum selection clauses are presumptively valid and are entitled to great weight," id. at 4-5, and that the other related factors on the whole favored transfer. The case was transferred to the Eastern District of PA.

The presence of an "unambiguous" forum selection clause distinguishes this case from other recent rulings on motions to transfer, which have generally turned on the degree of connection to the forum.

QVC, Inc. v. Your Vitamins, Inc., C.A. No. 10-094-SLR (D. Del. Nov. 29, 2010)