Posted On: June 29, 2011

Judge Sleet warns parties that a condescending tone in court submissions is inappropriate and unhelpful to the court

After a 3-day bench trial in an ANDA case, Judge Sleet recently found that defendant’s proposed product did not infringe plaintiffs’ patent. Astrazeneca LP v. Mylan Pharms. Inc., C.A. No. 08-453-GMS (D. Del. June 23, 2011). In the Memorandum, Judge Sleet warned future parties about the tone they take in submissions to the court. In its post-trial brief, Astrazeneca mocked Mylan’s expert for failing to produce evidence in support of an analogy comparing ethycellulose to pasta, criticizing the analogy as a ‘“creative explanation [that] was supported by no experimental results or scientific observations (from either the laboratory or the kitchen).”’ Id. at 11 n.8. (alteration in original). Mylan mocked Astrazeneca’s expert’s explanation of material he examined by stating in their reply brief ‘“In their excitement to hear that Dr. Davies found something in the bottom of his Petri dish . . .”’ Id.

Judge Sleet warned future parties “that such condescension is unbecoming an attorney appearing before a federal court, and is in no way constructive or beneficial to the court’s task of weighing the evidence presented at trial and reaching its findings of fact and conclusions of law.” Id.

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Posted On: June 20, 2011

Special Master White: Discovery Opinion in XPRT Ventures

Last week, Special Master David A. White issued an opinion on a number of discovery issues relating to a motion to compel in XPRT Ventures, LLC. v. eBay, Inc., C.A. No. 10-595-SLR (D. Del. June 15, 2011). The motion sought to expand the scope of document discovery by increasing the applicable time period and number of custodians. Special Master White granted the motion in part, based on the potential relevance of the evidence, but refused to order document production from individuals not employed by the defendants. Id. at 26-27. Documents of former employees that are still in the possession, custody or control of the defendants, however, are subject to discovery. Id. at 30.

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Posted On: June 20, 2011

Judge Robinson: Motion to Transfer Denied

On June 8th, Judge Robinson denied two motions to transfer. We reported on one last week -- Marvell International Ltd. v. Link_A_Media Devices Corp., C.A. No. 10-869-SLR (D. Del. June 8, 2011). The second denial, in XPRT Ventures, LLC v. eBay, Inc., C.A. No. 10-595-SLR (D. Del. June 8, 2011), again emphasized that (1) the defendants are Delaware corporations, (2) that judicial congestion in the District of Delaware is not a factor, and (3) that "[i]n this electronic age, there are no substantial burdens associated with discovery or witness availability that support the need to transfer." Id. at 6-7.

One interesting wrinkle in this second denial is that the plaintiff in XPRT had previously disclosed some of the subject matter to the defendants under a confidentiality agreement with a forum selection clause. The Court held, however, that the "Agreement's forum selection clause controls only breaches of confidentiality," due to language in the clause stating that it applied to breaches "arising out of this Agreement" and because "the Agreement explicitly states that there is no bar from bringing patent infringement cases." Id. at 6.

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Posted On: June 20, 2011

Judge Robinson: Motion to Consolidate Cases and Lift Stay DENIED

In Ricoh Company, Ltd. v. Oki Data Corporation, Civ. No. 09-695-SLR (D. Del. Jun. 9, 2011), Judge Robinson denied the plaintiffs' request to consolidate cases and lift stay.

The plaintiffs had represented that the asserted patents were "clearly related" to asserted patents in an earlier suit between the parties. In response, Judge Robinson noted that, even if the court were to assume that the plaintiffs' representations were correct, the court could not accommodate the plaintiffs' request to have additional time for discovery in the court's present 2012 trial calendar. Id. at 1. Judge Robinson also noted that consolidating cases would have turned a six-patent case into an eight-patent case, which would have required even more trial time. Id.

Judge Robinson then denied the plaintiffs' request to lift stay because the "plaintiffs intend to pursue its appeal of the ITC's adverse ruling to the Federal Circuit absent consolidation." Id. at 1-2.

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Posted On: June 20, 2011

Judge Robinson: Motion to Transfer to N.D. Cal. DENIED

In Everglades Interactive, LLC v. Playdom, Inc., Civ. No. 10-902-SLR (D. Del. Jun. 8, 2011), Judge Robinson denied the defendants' motion to transfer the case from the District of Delaware to the Northern District of California.

The defendants argued, inter alia, that the Northern District of California was "the more convenient and appropriate venue" because Northern California was the principal place of business for the U.S. defendants as well as the plaintiff. Id. at 5. But after noting that all of the U.S. defendants were incorporated in Delaware, id. at 2, the court reiterated -- "consistent with its usual mantra" -- that defendants who choose to incorporate in Delaware "must also bear the burden of being eligible to be haled to Delaware for lawsuits[,]" id. at 6.

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Posted On: June 20, 2011

Judge Stark: Withdrawal of Motion for Recusal Accepted

In St. Clair Intellectual Property Consultants Inc. v. Matsushita Electronic Industrial Co., Ltd., C.A. No. 04-1436-LPS, C.A. No. 06-404-LPS (D. Del. Jun. 1, 2011), Judge Stark accepted the moving parties' withdrawal of their Motion for Recusal.

Originally, the related cases had been assigned to Judge Stark in his capacity as a magistrate judge for discovery and ADR. Judge Stark had then conducted ADR-related conferences with the parties, some involving ex parte discussions about the merits of the case and the parties' litigation strategies. Id. at 1-2.

As of June 2010, several items were outstanding: the parties had not consented to the jurisdiction of a magistrate judge, "numerous case-dispositive motions" were pending, and there was uncertainty as to which district judge was available to preside at trial. Id. at 2. So Judge Stark stayed the cases and "directed the parties to provide the Court with their views as to how these cases should proceed" -- including whether Judge Stark should recuse himself from presiding at trial as a district court judge due to his participation in ADR-related conferences as a magistrate judge. Id. at 2. One or more of the defendants felt that recusal was appropriate. Id. at 2-3.

In the meantime, on January 10, 2011, the U.S. Court of Appeals for the Federal Circuit decided St. Clair Intellectual Property Consultants, Inc. v. Canon, Inc., Nos. 2009-1052, 2010-1137, 2010-1140 (Fed. Cir. Jan. 10, 2011), rejecting the U.S. District Court for the District of Delaware's construction of disputed claim terms in the same patents asserted in the related cases. Id. at 4.

As a result of the Federal Circuit's decision, the parties in the related cases had agreed that the related cases's posture had changed significantly enough to warrant withdrawal of the moving defendants' Motion for Recusal. Id. at 5-6. Judge Stark accepted the moving parties' withdrawal of their Motion for Recusal, noting that "a judge's duty to not recuse when he or she need not do so is as strong an imperative as a judge's duty to recuse in those limited situations in which recusal is warranted." Id. at 8.


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Posted On: June 17, 2011

Judge Robinson: Motion to Transfer ANDA Case Granted Where Identical Case Filed in SDNY

In Medicis Pharm. Corp. v. Nycomed US Inc., C.A. No. 10-1099-SLR (D. Del. June 16, 2011), the "plaintiff filed two identical actions against defendant" in the District of Delaware and the Southern District of New York. Id. at 2. The "defendant moved to transfer the instant action to the Southern District of New York[,]" and Judge Robinson granted this motion. Id. at 2. Although the court noted that "plaintiff's choice of forum is given paramount consideration," Judge Robinson stated that "the case at bar shares common questions of law and fact with the first [previously transferred] actions, which are now proceeding in the Southern District of New York." Id. at 4-5. "Thus, it is in the interest of judicial economy to transfer the current lawsuit to the Southern District of New York so that both courts may avoid redundant efforts and the possibility of inconsistent results." Id. at 5.

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Posted On: June 13, 2011

Judge Robinson: Motion to Transfer DENIED

In Marvell International Ltd. v. Link_A_Media Devices Corp. , C.A. No. 10-869-SLR (D. Del. June 8, 2011), Judge Robinson recently denied defendant’s motion to transfer the action to the Northern District of California. Defendant argued that transfer was appropriate because its principal place of business was in California, the events surrounding the litigation arose outside Delaware, defendant was a regional corporation, relevant documents and non-party witnesses were in California, the court congestion in Delaware, and that plaintiff did not sue on its home turf. Id. at 2. Plaintiff disagreed that transfer was appropriate because defendant was a Delaware corporation, because Delaware court’s have expertise in patent litigation and because defendant has not specified any document or witness that cannot be produced in Delaware. Id. Judge Robinson noted that “plaintiff’s choice of forum is of paramount consideration” and defendant’s burden to prove that transfer is warranted remains unchanged even though plaintiff chose to sue in a forum other than its home turf. Id. at 3. Judge Robinson also noted that “because [defendant] is a Delaware corporation, it has no reason to complain about being sued in Delaware.” Id. at 4. Judge Robinson also found that defendant was an international company, rather than regional, evidenced by its offices around the globe. Id. Furthermore, the congestion of the court was a “non-issue”; and defendant’s argument about the location of discovery was not persuasive because “[i]n this electronic age, there are no substantial burdens associated with discovery or witness availability that support the need for transfer.” Id. at 5.

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Posted On: June 11, 2011

Special Master Poppiti: Motion to Compel De-Designation of Non-Confidential Information GRANTED

Defendant APP Pharmaceuticals moved to compel the de-designation of information redacted in its motion for leave to file an amended answer and counterclaims of unenforceability and unclean hands. The Medicines Company v. Teva Parenteral Medicines, et al., C.A. No. 09-750-ER, Special Master Order (D. Del. June 30, 2011). Special Master Poppiti granted the motion and held that the disputed redactions were not covered by the "Highly Confidential" or "Confidential" provisions of the case protective order. Id. at 12 and 15. Plaintiff argued that the information was properly redacted because it was "information or data derived from Highly Confidential information." Id. at 12. Although this clause "would certainly encompass a direct quote (or a paraphrase of a direct quote)" from a highly confidential document, "that protection does not extend to general allegations, legal arguments, and factual assertions that do not in any way reveal any such information." Id. at 12-13.


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Posted On: June 10, 2011

Chief Judge Sleet: Jury's Finding of Infringement Under the Doctrine of Equivalents Reversed

Judge Sleet recently reversed a jury's finding of infringement under the doctrine of equivalents, holding that prosecution history estoppel precluded a finding of infringement. Energy Transp. Grp., Inc. v. Sonic Innovations, Inc., C.A. No. 05-422-GMS (D. Del. June 7, 2011). The patent at issue pertained to "a host controller for programmable ditigal hearing aid system." Id. at 23. The court agreed with the accused infringer that "[t]he prosecution history shows that the patentee amended the patent application and introduced new claims that are similar to broader claims previously rejected[,]" and stated that the "newly added limitation that narrows the claim" created "a rebuttable presumption of surrender[.]" Id. at 24. Although the patentee claimed that "the limitation in question was not added to overcome prior art[,]" Judge Sleet found that this "argument is not persuasive and is irrelevant as a matter of law." Id. at 24-25. The patentee attempted to use "this prior art argument in an attempt to rebut the presumption of estoppel based on a 'tangential relation[,]'" but the court stated that the tangential relation exception to prosecution history estoppel is irrelevant "'unless it is 'clear' that the rationale underlying the amendment is only peripheral to the alleged equivalent[.]'" Id. at 25 (citations omitted). Thus, Judge Sleet held that the jury's verdict that the asserted claims "are infringed under the doctrine of equivalents cannot stand." Id. at 26.

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Posted On: June 7, 2011

Judge Sue L. Robinson: Motion for Reconsideration DENIED

Judge Robinson denied a motion for reconsideration of her November 18, 2010 opinion in Kenexa Brassring, Inc. v. Taleo Corporation because the motion was untimely and not effected by the change in law set forth in the Federal Circuit's opinion in Centillion Data Sys., LLC v. Qwest Commc'ns Int'l, Inc. C.A. No. 07-521-SLR, Memo. Order (D. Del. May 26, 2011). The Court found that plaintiff's motion was filed more than five months after her opinion in violation of Local Rule 7.1.5 which requires that motions for reargument be filed within 14 days "after the Court issues its opinion or decision." Id. at 2 (internal citations omitted).

The Court further found that plaintiff's motion failed on the merits. The Federal Circuit's opinion in the Centillion case dealth with "use" for purposes of infringement and found that for "use" to constitute infringement, "a party must put the invention into service . . ." and "use each and every element . . . of a claimed [system]." Id. at 2-3 (internal citations omitted). Here, defendant did not "use" the "entire claimed system" and therefore Centillion does not change the Court's analysis. Id. at 3.

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Posted On: June 4, 2011

Judge Robinson: Accenture Patents Invalid After Bilski

Last week, Judge Robinson issued an opinion in Accenture Global Serv. v. Guidewire Software, Inc., C.A. No. 07-826-SLR (D. Del. May 31, 2011). The case involves patents directed towards the processing of insurance claims. The Court previously stayed the case pending the Supreme Court's decision in Bilski. Last week, Judge Robinson granted the motion for invalidity of the patents at issue because they are directed towards abstract and unpatentable ideas in light of the Supreme Court's decision in Bilski. According to the Court,

The court concludes that the '284 and '111 patents are directed to abstract and, therefore, unpatentable, methods and systems for generating file notes and tasks to be performed for insurance claims. . . . The patents are directed to concepts for organizing data rather than to specific devices or systems, and limiting the claims to the insurance industry does not specify the claims sufficiently to allow for their survival.
Id. at 12.

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Posted On: June 4, 2011

Judge Stark: Motion to Preclude Prior Art References Denied

In Abbott Labs. v. Lupin Ltd., C.A. No. 09-152-LPS (D. Del. May 19, 2011) (mem. op.), Judge Stark denied a motion by Abbott to preclude invalidity defenses based on prior art references that were not disclosed until sixteen weeks after the close of fact discovery. Judge Stark stated that

Lupin's failure to supplement its contention interrogatories, in the circumstances of this case, was not unduly prejudicial to Abbott. Abbott had more than three months to respond to Lupin's opening expert reports. . . . Abbott concedes that it was able to address Lupin's tardy invalidity arguments in its rebuttal report.
Id. at 8. Judge Stark also noted that there was no potential disruption of the trial date, no evidence of bad faith or willfulness, and that the overall balance does not favor exclusion.

The opinion also used interesting language to address a procedural point regarding motions. During the briefing to exclude, Lupin filed a motion for leave to file a sur-reply brief on Abbott's motion to exclude. Abbott responded by stating that they "do not oppose" the sur-reply, but that they "ask[] to be permitted to respond to Lupin's surreply." D.I. 134. According to Judge Stark:

The Court will deny Abbott's request. The proper way for Abbott to have made this request would have been in a separate motion. See D. Del. L.R. 7 .1.2( a) ("Unless otherwise ordered, all requests for relief shall be presented to the Court by motion."). The Court should not have to go hunting for hidden motions that are embedded in parties' briefs on other motions.
Id. at 9-10.

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Posted On: June 3, 2011

FBA Delaware Chapter: Annual Luncheon with the U.S. District Court for the District of Delaware

The Annual Luncheon with the U.S. District Court for the District of Delaware is scheduled for June 17, 2011 from 12 pm to 2 pm at the Hotel du Pont. The luncheon will feature a presentation by The Honorable Gregory M. Sleet of the 2011 Annual Report of the U.S. District Court for the District of Delaware as well as the annual meeting of the Delaware Chapter of the Federal Bar Association and the election of the 2011-2013 Executive Board. Please RSVP by June 8. More information can be found in flyer below.

2011 Annual Luncheon

Posted On: June 1, 2011

Special Master Poppiti: Without Bad Faith, Sanction for Untimely Disclosure of Prior Art Limited to Monetary Sanctions

In Apeldyn Corp. v. AU Optronics Corp., C.A. No. 08-568-SLR (D. Del. May 25, 2011), Special Master Poppiti recently addressed a party's failure to disclose five prior art references until it filed an expert report four days after the opening expert report deadline. Id. at 6. Although Special Master Poppiti found that the failure to timely disclose these prior art references was neither "substantially justified" nor "harmless" as required by Fed. R. Civ. P. 37(c)(1), he stated that, absent a showing of bad faith, the appropriate sanction was not a striking of the untimely expert report. Id. at 6-13. Rather, the Special Master found that the appropriate sanction was an award of the costs and fees that the plaintiff would incur in responding to the late-filed expert report, along with the costs and fees incurred in bringing the motion to strike. Id. at 13.

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