Articles Posted in Leonard P. Stark, Chief Judge

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Chief Judge Stark recently denied motions filed by defendant Toshiba for summary judgment of non-infringement and for spoliation sanctions in a case brought by plaintiff St. Clair Intellectual Property Consultants. St. Clair Intellectual Prop. Consultants, Inc. v. Toshiba Corp., et al., C.A. No. 09-354-LPS, Memo. Or. at 1 (D. Del. Aug. 27, 2014).

Judge Stark first denied summary judgment of non-infringement with respect to one patent because there was a genuine dispute of material fact where a “jury could reasonably credit the expert opinion of [the plaintiff’s expert] and, thereby, find infringement.” Id. at 3-4. The expert’s opinion included the possibility of meeting the claim limitations by the doctrine of equivalents, which he opined on at his deposition after reserving the right to do so in his report. Id. at 4.

Judge Stark next denied summary judgment of non-infringement of a second patent because there were genuine issues of material fact involved in each of St’ Clair’s theories of infringement. Among the issues that could not be resolved on summary judgment were whether a fixed clock rate must necessarily have a fixed bandwidth, where the parties had not previously asked for construction of the term “bandwidth” and whether there could be direct infringement where Toshiba had sold or offered to sell all of the components of a claimed system, even if the components were sold separately to be assembled by the customer. Id. at 5-7.

Finally, Judge Stark denied Toshiba’s motion for spoliation sanctions based on the destruction of documents by a prior owner of the patents-in-suit. As Judge Stark explained, Toshiba did not “put forth sufficient evidence to support a finding of bad faith,” as required for a finding of spoliation. Id. at 8-9. Rather, the evidence suggested that a “benign explanation [was] more plausible” because the records destroyed by the predecessor-in-interest to St. Clair were destroyed under a standard record retention policy. Id. The more recent destruction of backup data was “more complex” because it more likely contained relevant information, it occurred after St. Clair had already commenced litigation and notified the prior owner that it would be subject to document requests and subpoenas, and St. Clair appeared to have control over the documents. Id. at 9-10. But here too there was no evidence of bad faith in destruction of the backup data. Accordingly, Judge Stark explained that although the “nearly complete destruction of many of [the prior owner’s] historic files is worrying (and potentially negligent), the record does not support sanctioning St. Clair for spoliation.” Id. at 10.

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In a recent memorandum order, Chief Judge Leonard P. Stark ruled on several pre-trial in limine motions and provided guidance on trial issues.  Masimo Corp. v. Philips Elec. N. Am. Corp. et al., C.A. No. 09-80-LPS (D. Del. Aug. 27, 2014).  Chief Judge Stark first denied a motion seeking to exclude evidence that a third party’s  product received FDA clearance pursuant to §510k, finding such evidence relevant to whether the product is an acceptable alternative to the plaintiff’s own product, and not unfairly prejudicial.  The Court also excluded, sua sponte, any evidence of reexamination of any of the patents-in-suit, finding that the risk of jury confusion and waste of the jury’s time outweighed any probative value such evidence may have.

Chief Judge Stark also provided some guidance on objections at trial to the scope of an expert’s testimony, and to the manner in which certain evidence could be presented during the jury trial, which was to precede a bench trial on equitable issues.  First, the Court granted the parties’ request that the Court rule on objections to the scope of an expert’s testimony during trial, rather than simply preserving the objections for post-trial briefing.  Chief Judge Stark explained that he “views the ‘scope’ of what has previously been disclosed to include anything that was disclosed by an expert in any expert report, any expert declaration, and/or any expert deposition testimony.”  With respect to equitable issues, in this case one relating to laches, Chief Judge Stark made clear that “no evidence that is solely admissible with respect to the issues to be tried to the bench will be presented to the jury.  Such evidence will be presented only to the bench. . . . The Court will rule at trial on objections to evidence that is arguably relevant both to issues being tried to the jury and to the bench.”

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Chief Judge Stark, considering a defendant’s motion to transfer a patent infringement case to the Southern District of Ohio, recently issued a memorandum order granting the motion because all but one factor of the transfer analysis were either neutral or weighed in favor of transfer. Nalco Co. v. AP Tech Group Inc., C.A. No. 13-1063-LPS, Memo. Or. at 1 (D. Del. Aug. 8, 2014). Judge Stark explained that only the choice of forum of the plaintiff disfavored transfer and the “amount of deference to be given to [the plaintiff’s] choice of forum is somewhat reduced given that Delaware is not [the plaintiff’s] ‘home turf.’” Id. at 1-2 (citing In re Link_A_Media Devices Corp., 662 F.3d 1221, 1223 (Fed. Cir. 2011)). By contrast, the defendant’s choice of forum, relative convenience of the parties, location in which the claims arose, and location of books and records all weighed in favor of transfer. Id. at 2-3. Accordingly, Judge Stark found that the defendant had “met its heavy burden of demonstrating that this case should be transferred to the Southern District.” Id. at 3.

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In Technology Innovations Associates v. Google, Inc., C.A. No. 13-0355-LPS (D. Del. Aug. 7, 2014), Chief Judge Leonard P. Stark recently construed a single term of the patents-in-suit – “sticky path” – having previously granted defendant’s request for early construction of this term.  The Court had agreed that this “proposed early, limited claim construction process would likely facilitate the just, speedy, and inexpensive determination of this action, even if the Court’s construction did not prove to be case dispositive.”  Id. at 1.  The Court adopted the plaintiff’s proposed construction, although the issue was a “close call.”  Id. at 6.

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In a recent Oral Order, Chief Judge Leonard P. Stark addressed the parties’ protective order dispute and adopted defendant’s proposed prosecution bar, which extended to post-grant proceedings, including inter partes review. M/A-COM Technology Solutions Holdings Inc. v. Laird Technologies Inc., C.A. No. 14-181-LPS, Oral Order (D. Del. July 31, 2014).  Judge Stark explained that “[g]ood cause for the requested protection exists, at least to deal with the risk of the patentee strategically narrowing the scope of its claims based on (even inadvertently) information it learns from [defendant’s] highly confidential information.” Judge Stark further explained that “[p]atentee has provided no evidence that it will be unduly prejudiced by [defendant’s] proposed bar,” noting particularly that “there is no evidence that current litigation counsel has ever participated in prosecuting patents for Plaintiff.” Judge Stark concluded that the “balance of interests” favored defendant.  The final prosecution bar entered in the matter reads as follows:

Any attorney or agent who receives or reviews any information or documents designated as “Highly Confidential – Outside Attorney Eyes Only” and/or “Confidential” by any party other than his or her client shall not thereafter prosecute, supervise, or materially assist in the prosecution of any patent application, or otherwise in the amendment of any application and/or patent, related to the technology that is the subject matter of this lawsuit during the pendency of this case and for one year after the conclusion of this litigation. To avoid any doubt, for purposes of this paragraph, “prosecution” includes directly or indirectly drafting, amending, advising, or otherwise affecting the scope or maintenance of patent claims of the patent-in-suit, a divisional, a continuation, a continuation-in-part, a re-issue, an ex parte reexamination, a post-grant review, inter partes review, or a foreign counterpart related in any way to the patent-in-suit and/or related to the technology that is the subject matter of this lawsuit.

 See D.I. 176.

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In Magnetar Technologies Corp., et al. v. Six Flags Theme Parks, Inc., et al., C.A. No. 07-127-LPS (D. Del. July 29, 2014), Chief Judge Leonard P. Stark adopted a number of Magistrate Judge Thynge’s Reports and Recommendations, having heard oral argument on plaintiffs’ objections in April 2014. The Court found the asserted claim of one patent-in-suit invalid and the other patent-in-suit not infringed. As these rulings resolved the case in favor of defendants, the Court also directed that judgment be entered in their favor in this same Memorandum Order.

The Court adopted Judge Thynge’s recommendation to grant defendants’ Daubert motion to exclude plaintiffs’ infringement expert, as the expert’s report did not adequately show how each element of a claim of the patent-in-suit was satisfied (Judge Thynge’s opinion here). Id. at 5-6.

The Court also granted-in-part defendants’ motion to exclude plaintiffs’ lay opinion witness (Judge Thynge’s opinion here), rejecting plaintiffs’ argument that Judge Thynge did not have authority to address this issue because it was a “pretrial matter” going to relevance. Id. at 6 (it was proper and efficient to refer all motions to Judge Thynge, “including those requiring a determination of the relevancy of testimony”).

The Court also adopted Judge Thynge’s rulings on infringement and invalidity (linked here), granting-in-part plaintiffs’ motion for summary judgment of infringement of one claim of a patent-in-suit, but also granting defendants’ motion for summary judgment of invalidity of the same claim. The parties had requested that the Court address infringement even though the Court ruled this claim invalid. Id. at 9.

As to summary judgment on a second patent-in-suit, the Court again accepted Judge Thynge’s recommendations to grant defendants’ motion for summary judgment of non-infringement and to deny plaintiffs’ motion for infringement. Id. at 11.

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Judge Leonard P. Stark recently dismissed Clouding IP’s claims against numerous defendants finding that Clouding IP lacked standing.  Clouding IP, LLC v. Google Inc., et al., C.A No. 12-639-LPS, 12-641-LPS, 12-675-LPS, 13-1338-LPS, 13-1341-LPS, 13-1342-LPS, 13-1453-LPS, 13-1454-LPS, 13-1455-LPS, 13-1456-LPS, 13-1458-LPS.  The patent assignment agreement at issue covered “the purported sale to Clouding of all title, rights, and interest in the patents, subject to provisions by which Symantec retained particular rights in the patents.”  Id. at 1-2.  Judge Stark found that Clouding did not have “prudential standing,” however, finding that:

The transfer of “all rights, title, and interest” in the patents identified in the Agreement was made “subject to the terms of this Agreement including the License set forth in Section 4.5.  Under the Agreement, . . . Clouding encumbered its right to sell or assign the patents, grant an exclusive license, indulge infringement, allow the patent to lapse, and dictate the terms of licenses. Thus, based on the clear language of the transfer provisions, Symantec did not convey any entire patent, an undivided part or share of any entire patent, or all rights under any patent in a specified geographical region of the United States. Consequently, Clouding does not hold formal legal title.”

Id. at 11.  In particular, under the Agreement, Symantec retained the right to “make, use, sell offer to sell, and import the claimed inventions in all the patents”; the right to sublicense to its customers; and, most importantly, the right to bring suit.  Id. at 14-15. Judge Stark also determined that the Agreement included a “restraint on alienation” imposed on Clouding in which Clouding may not, under certain scenarios, make an assignment of the patents to another party without Symantec’s consent.  Id. at 17.  Accordingly, since Symantec did not transfer formal legal title to Clouding such that Clouding would qualify as the “effective” patentee, Clouding lacked standing to sue for infringement of the patents-in-suit.  Id. at 20.

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In Helios Software, LLC, et al. v. SpectorSoft Corp., C.A. No. 12-081-LPS (D. Del. July 18, 2014), Chief Judge Leonard P. Stark addressed plaintiffs’ motion to exclude the testimony of defendant’s expert, Christian B. Hicks, based on discussions that Mr. Hicks had with an employee of defendant that was the Director of Quality Assurance, Scott Bartel. Plaintiffs argued that because of defendant’s “failure to identify Mr. Bartel in its Rule 26 disclosure, and Mr. Hicks’ subsequent reliance on conversations with Mr. Bartel, the Court should exclude the relevant portions of Mr. Hicks’ testimony.” Id. at 2. As Judge Stark noted, the parties met and conferred in an attempt to resolve the dispute, and defendant proposed producing Mr. Bartel for a “3-hour video conference or telephone deposition.” Id. Defendant’s proposal, however, included a number of conditions, including, among other things (i) that the deposition occur at defendant’s office in Vero Beach, Florida where Mr. Bartel works, or at another location in Vero Beach; (ii) “that the deposition be conducted by video conference or telephone” unless plaintiffs advanced the costs and fees for an in-person deposition; (iii) “that the topics of Bartel’s questioning be limited to the subject matter of his discussion with Hicks, and that the deposition could be suspended if Plaintiffs asked questions beyond the scope of such topics and refused to withdraw the questions”; and (iv) that plaintiffs withdraw their motion to exclude. Id. at 3.

Considering the Pennypack factors, Judge Stark concluded that, on balance, defendant’s failure to disclose Mr. Bartel was harmless, and therefore denied plaintiffs’ motion to exclude. Id. at 3-4. However, contrary to a number of the conditions of defendant’s proposal, Judge Stark ordered that defendant shall make “Mr. Bartel available for a three (3) hour deposition on the subject matter that he discussed with Mr. Hicks as well as testing at SpectorSoft, to be conducted at a mutually convenient location, with each party bearing its own costs.” Id. at 4.

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Chief Judge Leonard P. Stark recently granted a plaintiff’s motion to strike an amended answer and counterclaim, and awarded the plaintiff costs and expenses associated with presenting the motion.  Helios Software, LLC, et al. v. Spectorsoft Corp., C.A. No. 12-081-LPS (D. Del. July 18, 2014).  As the Court explained, it had previously granted the defendant leave to file an amended answer to add a counterclaim asserting inequitable conduct.  That order allowed the defendant to file an amended answer “in substantially the form it has proposed.”  The defendant then filed an amended answer and counterclaim that was “significantly different from the Amended Answer it had proposed to the Court.”  The defendant admitted it violated the Court’s order, and asked the Court to modify that order.  As Chief Judge Stark explained:

The Court is troubled that Defendant intentionally violated the Court’s Order and then asked the Court to modify its decision instead of seeking the Court’s permission before filing its modified pleading.  Defendant could and should have reached out to the Court in the seven-day period that the Court gave Defendant to file its Amended Answer and should have sought leave to file its newly amended pleading.  Because Plaintiffs had to bear the unnecessary cost of filing this motion as a result of Defendant’s conduct, the Court will charge Defendant with Plaintiffs’ reasonable costs and expenses incurred in presenting this motion.

The Court granted the defendant leave to file an amended version of its amended answer and counterclaim, however, in a form that mostly removed the plaintiff’s highly confidential and privileged information contained in its stricken pleading.

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In a recent oral order, Chief Judge Leonard P. Stark granted defendants’ request for an extension of time to comply with the Court’s Order granting a permanent injunction, entered June 30, 2014.  Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., et al., C.A. No. 08-309-LPS, D.I. 798 (D. Del. July 3, 2014) (permanent injunction discussed previously here). In a letter to the Court, defendants asserted that they “simply cannot implement this type of system level change immediately as required by the Court Order, and would prefer to comply rather than to risk immediately violating the Order.”  (D.I. 795 at 1.)  Judge Stark permitted defendants until July 31, 2014 to fully comply with the permanent injunction.  (D.I. 798.)

Further, Paragraph 8 of the permanent injunction order required defendants “to include a copy of this Order Granting Permanent Injunction with any product that [defendants] deliver[] outside the United States” in addition to a notice provision specified by the Court.  (D.I. 794.)  Judge Stark found that defendants “may comply with Paragraph 8 of the injunction order by clearly printing the Court’s notice on the cover of every box of infringing products so long as the notice includes a URL to the Court’s order and all customers are provided with a copy of the Court’s injunction order prior to their purchasing any of the enjoined products outside of the U.S.”  (D.I. 798.)  Judge Stark reasoned that “[a]lthough the Court is troubled that [defendants] did not raise this notice issue prior to the Court’s granting the injunction, and the Court today provides [defendant] [their] belatedly requested relief reluctantly, the Court is persuaded that the purpose of the notice provision in Paragraph 8 will be satisfied so long as [defendants] compl[y] with the foregoing obligations.” Id.

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