The opinion addresses an interesting obviousness-type double patenting claim. Because the patents at issue straddled the June 8, 1995 patent term change, Plaintiff's later-filed and later-granted patent will expire before its two earlier-filed patents that covered a broader subject matter. Id. at 24. Defendants argued that the earlier-filed, broader patents should be invalidated under obviousness-type double patenting because they unjustly extend protection over the narrower subject matter of the later-filed, but earlier-expiring patent. Despite some precedent for this theory (a Board of Patent Appeals and Interferences opinion), the Court rejected it, holding that "the later-filed, later-issued . . . patent could not and did not create an 'unjustified timewise extension' of the earlier-filed, earlier-issued . . . patents." Id. at 27 (quoting In re Schneller, 397 F.2d 350, 354 (C.C.P.A. 1968)).
In Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., C.A. 04-1371-LPS (D. Del. Jan. 18, 2011), after a long and contentious litigation involving several patents, Judge Stark recently decided plaintiff’s motion to enhance damages and motion for attorneys’ fees. Judge Stark noted that the factors favoring enhancement include “Fairchild’s deliberate copying, the extent to which Fairchild investigated the scope of the patent, Fairchild’s financial condition, Fairchild’s motivation for harm, and the non-closeness of the case.” Id. at 22. No factor weighed against enhancing damages and factors such as Fairchild’s litigation conduct, lack of attempts to conceal, duration of misconduct and Fairchild’s remedial measures had a neutral effect on the issue of enhancement. Id. Ultimately, Judge Stark doubled the $6 million damages award. Id. Regarding attorneys’ fees, Judge Stark disagreed with plaintiff that this case was one of those “limited” cases justifying a shifting of attorneys’ fees. Id. at 23. Judge Stark noted that “the Court focuses in particular on the actual conduct of the parties during the course of litigating or prosecuting the patent.” Id. Judge Stark determined that Fairchild’s actions did not amount to “bad faith conduct or frivolous pursuit of claims.” Id. at 24.
A recent decision by District Judge Sue L. Robinson sheds light on the Court's supplemental claim-construction practice. In the underlying infringement litigation, the Court issued an opinion on, among others, the parties' proposed constructions and summary judgment motions. By doing so, the Court recognized that several disputed terms could not be addressed in the summary judgment context.
This posture allowed the Court to explain its procedure for addressing claim construction at trial:
"The parties have identified several additional disputed terms that do not find context in the infringement and validity contentions before the court on summary judgment. There is a lack of agreement as to whether the additional terms need construction or may be given their ordinary meaning. Consistent with the court's practice, the parties will present their respective constructions during trial and the court will make its claim construction decision prior to the case going to the jury."
The Court continued:
"Absent notice regarding which claims remain in dispute, the court will instruct the jury that all terms not specifically defined by the court shall be given their plain and ordinary meanings."
On January 14, 2011, a jury returned a defense verdict on all counts in the Arcelormittal France v. AK Steel Corporation, et al. matter. C.A. No. 10-050-SLR, Jury Verdict Sheet (D. Del. January 14, 2011). Specifically, the jury found that none of the three defendants infringed the asserted patent. The jury also found plaintiffs' patents invalid as anticipated and obvious.
Obtaining relief from judgment under Rule 60(b) is normally a difficult exercise, as courts are rightfully reluctant to disturb their own findings. Vacating a judgment under Rule 60(b)(6)'s catch-all provision, which authorizes courts to do so for "any other reason that justifies relief," is even harder. Given the rarity of this type of relief, litigators should take notice of a recent decision by District Judge Sue L. Robinson.
The Court emphasized that "exceptional circumstances" existed to warrant reinstating an earlier decision that granted summary judgment on a contract claim in plaintiff's favor. Specifically, the Court noted how the parties had entered into a patent settlement agreement and stipulated that the Court would retain jurisdiction over its enforcement. When defendant later requested a re-examination before the PTO, an act prohibited by the settlement agreement, plaintiff successfully secured a summary judgment establishing defendant's breach.
Defendant then sought to vacate the summary judgment. According to defendant, the Court never entered the original stipulation, and therefore never acquired jurisdiction to enforce the settlement agreement. Despite defendant's unequivocal intent to confer jurisdiction in the stipulation, the Court noted that Third Circuit precedent required that it vacate the summary judgment decision.
Defendant later agreed that, based on intervening events at trial and on appeal of the underlying infringement claims, the summary judgment should be reinstated. But when plaintiff sought to do so, defendant again retracted its assent, charging that plaintiff failed to timely file its Rule 60 motion and that granting relief now would require separate damages trials on the infringement and contract claims.
The Court, already frustrated with defendant's earlier attack on its subject-matter jurisdiction, rejected defendant's assertion of untimeliness:
"Defendant's arguments regarding resolution of damages and effect on the PTO's reexamination proceedings are of no moment in determining whether relief under Rule 60 is appropriate. Granting the Rule 60 Motion for summary judgment, at this time, does not necessarily require that contract damages be tried separately from patent damages . . . . Establishing contractual liability now instead of later militates in favor of granting the Rule 60 Motion by limiting delay and allowing the court flexibility in scheduling a trial on damages."
The Court also acknowledged that the PTO may benefit from resurrecting defendant's contractual liability:
"There is no reason to deprive the PTO of any benefit, no matter how limited, it may receive from the court's judgment in this matter. That the PTO may not be induced to terminate or suspend reexamination proceedings based on such judgment is of no moment to the equitable principles involved in the issue at bar."
Accordingly, the Court vacated its order that dismissed the contract claim and reinstated the summary judgment in plaintiff's favor. By doing so, the Court provided a useful roadmap for demonstrating "extraordinary circumstances" under Rule 60(b)(6): litigants should emphasize both the relative equities among the parties and the increased judicial efficiency attending the proposed relief from judgment.
Chief Judge Sleet denied HTC's motion to transfer pending patent litigation brought by Apple Inc. related to smartphone technology finding that "Apple's choice of forum should prevail." Apple Inc. v. High Tech Computer Corp., C.A. Nos. 10-166-GMS, 10-167-GMS, Memo. (D. Del. Jan. 14, 2011). Specifically, the Court found that because of other related pending cases before the court it would "serve the interests of justice and the efficient use of court resources if these issues were addressed by the same court." Id. at 5. Although many of the witnesses and much of the relevant documentation may be located in the Northern District of California, the court noted that regardless of where the litigation goes forward "a number of witnesses must travel long distances and documents must either be shipped or produced electronically because the witnesses documents are located in several different geographical locations," including overseas. Id. at 6. The court, therefore, denied the motion to transfer to the the Northern District of California. Id.
I am pleased to pass along an announcement from the Delaware Chapter of the Federal Bar Association regarding the Second Annual Federal Trial Practice Seminar. (A flyer is also posted below.)
The United States District Court for the District of Delaware and the Delaware Chapter of the Federal Bar Association (“FBA”) are pleased to announce the second annual Federal Trial Practice Seminar.
The Seminar is an instructional trial practice program designed for lawyers who have less than 10 years of experience as a practicing attorney, but who have an interest in regularly litigating in the District Court. Applicants who are admitted to the Seminar will participate in instructional sessions on topics including Opening Statements, Closing Statements, Direct Examination, Cross Examination, and Courtroom Presentation and Demeanor. The Seminar sessions, to be held in April and May 2011, will involve both: (1) instruction from nationally-recognized speakers who have frequently litigated in the District Court and (2) hands-on training sessions, including a mock-trial-style format, in which the participants will apply what they have learned from the speakers. These weekly sessions will also be attended by judges of the District Court and a group of program mentors, all of whom have extensive trial practice experience in the District Court. Seminar participants will also obtain Continuing Legal Education credit (including Ethics-related credit) and will have additional opportunities to interact with the District Court judges, the speakers and the program mentors outside of these sessions. There is no cost to participate in the Seminar, which is open to both members and non-members of the FBA. A complete Seminar description is attached to this e-mail.
Those interested in applying for the Seminar should submit a resume, a letter of interest and a list of two references, by February 7, 2011 to Assistant United States Attorney Christopher J. Burke. Applications should be sent either (1) by e-mail at: Christopher.J.Burke@usdoj.gov; (2) by mail at: United States Attorney’s Office for the District of Delaware; 1007 N. Orange Street, Suite 700; Wilmington, DE 19899; or (3) by facsimile at (302) 573-6220.
Both claim constructions were determined based on prior cases involving the same patent. The plaintiff, Biovail, has litigated this patent three times previuosly, and in the last case it failed to show infringement due in part to a construction of "free of stabilizer." Now, Biovail attempted to get around that construction by offering a definition of "stabilizer" by itself. The Court determined that collateral estoppel prevents Biovail from offering a definition of "stabilizer" that contradicts the previously litigated definition of "free of stabilizer," and held Biovail to the prior construction. Id. at 5-8.
The Court also addressed a second term, "dissolution profile," and again tracked the logic of one of the prior cases (although it treated it only as persuasive authority). Id. at 8-11.
In LadaTech, LLC v. Illumina, Inc., C.A. No. 09-627-SLR (Jan. 3, 2011), a recent Special Master decision, Plaintiff wanted its General Counsel, who was also one of three directors of the company, to have access to all confidential information produced in the case. Plaintiff argued that its General Counsel was not a competitive decisionmaker, or in the alternative, the threat of inadvertent disclosure “should not deprive [Plaintiff] of its choice of counsel.” Id. at 2. The Special Master quoted the “competitive decisionmaker” standard from In re Deutsche Bank Trust Co., 605 F.3d 1373, 1378 (Fed. Cir. 2010), i.e. “counsel’s activities, association, and relationship with a client that are such as to involve counsel’s advice and participation in any or all of the client’s decisions (pricing, product design, etc.) made in light of similar or corresponding information about a competitor.” Id. at 4. The Special Master also noted that due to the General Counsel’s “unique role” in the organization, there was a legitimate concern regarding inadvertent disclosure. Id. at 6.
Despite acknowledging that Plaintiff's outside counsel were fully capable of advising their client, and that Plaintiff didn’t indicate how General Counsel’s access to confidential information was vital to the suit, the Special Master decided that “the court should not deny [Plaintiff] the opportunity to meaningfully participate in the prosecution of its case. Id. at 7. However, the Special Master conditioned General Counsel's access to all confidential information on his agreement to a prosecution bar and to forgo engaging in competitive decisionmaking. Id.
One jury verdict slipped through the cracks last month: in Grape Technology Group, Inc. v. Jingle Networks, Inc., C.A. No. 08-408-GMS (D. Del. Dec. 9, 2010), the jury found for that the patents at issue were not invalid, but also not infringed. The time to verdict was under 2.5 years.
On Wednesday, District Judge Sue L. Robinson issued a summary judgment decision notable for its assessment of a party's expert evidence. Although the Court eventually granted defendant Cisco's motion for summary judgment of noninfringement, it rejected, as part of the claim construction process, Cisco's attempt to rely on an article written by its adversary's expert:
"Defendant does not cite its own expert in support of its argument [on the claim in issue]. Instead, defendant cites wi-fiplanet.com, a website that contains an article written by plaintiff's expert . . . . The court disagrees that this article supports defendant's contention . . . . The article does not say that a person of skill in the art would consider a controller to be separate from the access point, nor does it discuss the meaning of the term 'access point' as used in the '858 patent."
According to the Court, plaintiff's expert "directly contradict[ed] defendant's argument" at his deposition. In the evidentiary battle of the article versus the deposition, the deposition won.
Judge Robinson transferred a false marking case where one of the plaintiffs and the defendant are engaged in patent infringement over four of the same patents at issue in the false marking case (even though it was not the first-filed action), the defendant is not a Delaware corporation and maintains only a small market for its goods in Delaware. Brinkmeier v. Exergen Corporation, C.A. No. 10-176-SLR, Memo. Order (D. Del. Jan. 3, 2011).
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