Articles Posted in Leonard P. Stark, Chief Judge

Published on:

In an open letter to Delaware counsel, Chief Judge Leonard P. Stark has provided clarification on the Court’s new 6 p.m. EST deadline for the filing and service of papers, which will become effective Thursday, October 16. Judge Stark explained that “the 6:00 p.m. Eastern Time deadline applies to every filing and service deadline in every case in the District of Delaware, other than initial pleadings.” Accordingly, “the 6:00 p.m. deadline applies to the exchange among parties of discovery requests and discovery responses, and it applies even if such requests or responses are made by hand delivery.”

Notably, Judge Stark also clarified that “[p]arties will not be permitted to alter the new deadline on a case-by-case basis.” To that end, Judge Stark further explained that “[w]hile each individual Judge retains the discretion to set a different deadline in a specific case with respect to a particular paper, the Judges of the Court agree that this discretion will be exercised rarely (most likely during trial).”

Judge Stark also noted that the new deadline does “not apply to proceedings pending in Bankruptcy Court,” but it “does, of course, apply to bankruptcy appeals and any other bankruptcy-related cases to the extent those cases are on the District Court’s docket.”

Continue reading

Published on:

In Graphic Properties Holdings, Inc. v. Asus Computer International, C.A. No. 13-864-LPS (D. Del. Sept. 29, 2014), Chief Judge Leonard P. Stark denied defendants ASUS Technology Pte Ltd. (“ASUS Singapore”) and ASUSTek Computer Inc.’s (“ASUS Taiwan”) (collectively the “Foreign Defendants”) motion to dismiss for lack of personal jurisdiction and improper venue. First, addressing the long-arm statute prong of the personal jurisdiction inquiry, Judge Stark resolved the issue of whether the Court would recognize a theory of “dual jurisdiction” (i.e., “stream of commerce”) based on “partial satisfaction” of subsections (1) and (4) of the Delaware long-arm statute, 10 Del. C. § 3104. Id. at 4-10. As Judge Stark explained, under a stream of commerce approach, jurisdiction exists when a “defendant displays ‘an intent to serve the Delaware market’ and ‘this intent results in the introduction of [a] product into the market and … plaintiffs cause of action arises from injuries caused by that product.’” Id. at 6. Because the Delaware Supreme Court has not provided an express opinion on this issue, Judge Stark’s role was limited to predicting how the Supreme Court would rule. Id. at 7. Considering that the (i) Delaware Supreme Court has refrained from rejecting the dual jurisdiction theory despite having several opportunities to do so; (ii) that “no Delaware state court has rejected the dual jurisdiction theory”; and (iii) that “Delaware’s long arm statute … is to be broadly construed to confer jurisdiction to the maximum extent possible under the Due Process Clause”, Judge Stark concluded the “Delaware Supreme Court, if faced with the issue, would hold that the ‘stream-of-commerce’ theory does provide a basis for personal jurisdiction under Delaware law, even though the theory is not expressly authorized by Delaware’s long-arm statute.” Id. at 8-9. Judge Stark reached this conclusion notwithstanding the fact that a fellow Judge of the Court reached a “contrary, and not unreasonable” conclusion regarding the stream of commerce theory. Id. at 6-7, 9 (citing Round Rock Research LLC v. ASUSTeK Computer Inc., 967 F. Supp. 2d 969 (D. Del. 2013)).

Applying the stream of commerce theory, Judge Stark explained that “[a] non-resident firm’s intent to serve the United States market is sufficient to establish an intent to serve the Delaware market, unless there is evidence that the firm intended to exclude from its marketing and distribution efforts some portion of the country that includes Delaware.” Id. at 9. In the instant matter, Judge Stark found evidence that the Foreign Defendants not only targeted the United States generally by selling to ASUS Computer International (“ASUS California”) in California, but that they also targeted Delaware specifically given that “there are least three physical resale outlets (Best Buy stores) inside Delaware that stock and sell the accused devices.” Id. at 10. Accordingly, Judge Stark found the long-arm statute prong satisfied.

Judge Stark also found the constitutional due process prong of the personal jurisdiction inquiry satisfied given that the “Foreign Defendants,by way of ASUS California, purposefully ship the accused devices into Delaware through established distribution channels such as Best Buy” and therefore “purposefully avail [themselves] of the privilege of conducting activities within [Delaware], thus invoking the benefits and protections of its laws.” Id. at 12-13.

While denying the motion to dismiss as of the date of the opinion, Judge Stark agreed with the Foreign Defendants’ assertion that “plaintiff only provided facts showing sales of accused devices in Delaware five months after the filing of the Complaint.” Id. at 14. Because a court “cannot base jurisdiction on events that occurred after the filing of [the] complaint” in view of the “arising under” language of Delaware’s long-arm statute, Judge Stark found that the Foreign Defendants will be required to show “[f]acts that the accused devices were on sale in Delaware prior to the filing of this suit” in order for the Court to sustain jurisdiction over the Foreign Defendants. Id. at 13-14. Judge Stark noted that the Court will be “prepared to reevaluate whether it can properly exercise jurisdiction over the Foreign Defendants as the case proceeds.” Id. at 14.

Continue reading

Published on:

In a series of related actions, Chief Judge Leonard P. Stark recently construed over twenty disputed terms across six patents, finding several terms to be indefinite.  Graphics Properties Holdings, Inc. v. Asus Computer International, Inc., C. A. No. 12-210-LPS and related actions (D. Del. Sept. 29, 2014).

The Court found that the following means-plus-function terms were indefinite:

“instruction decode means responsive to each two parcel item for determining in one clock cycle whether the two parcel item is a single two parcel instruction having a bit length of 2n bits or two one parcel instructions, each having a bit length of n bits,” id. at 10-14;

“instruction issue means responsive to the instruction decode means for issuing each two parcel instruction for execution during said one clock cycle, and for issuing one then the other of the two one parcel instructions for execution in sequence during said one clock cycle and the next succeeding clock cycle,” id. at 16-17 (noting also that the Court was persuaded by the determination of an ITC judge that this term was indefinite, at n. 8).

The Court also concluded that the term “high information content” was indefinite because there was no guidance in the intrinsic record as to what information content would be “high.”  Id. at 36-37.  The Court pointed out that the Supreme Court’s recent opinion on indefiniteness, Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014), “did not disturb the Federal Circuit’s prior holding that when a word of degree is used, the district court must determine whether the patent’s specification provides some standard for measuring that degree.”  Id. at 37 (citation and alterations omitted).  Here, the patent did not: it only indicated that “‘textual information’ and ‘graphic images’ may be high information content,” but a person of ordinary skill in the art “would be unable to separate textual information and graphic images that contain merely ‘information content’ from text and images that contain ‘high information content.’”  Id.  However, the Court concluded that the term “high resolution” was not indefinite, as defendants argued.  Defendants had, in fact, explained in their alternate construction how a person of ordinary skill in the art would have understood this term, and the intrinsic record supported this alternate construction.  Id. at 35-36.  The Court also rejected defendants’ argument that “large area” was indefinite, id. at 29-30, again finding that the intrinsic record provided a concrete definition for the term where it “provid[ed] a lower limit for what a ‘large area’ means”.  Id. at 30.

The Court also found a preamble term, “hardwired supercomputer,” to be limiting, as the patentee had used this term during prosecution to distinguish prior art.  Id. at 7-8.

The Court also construed the following terms:
“hardwired”
“instruction fetch means for providing an instruction stream of two parcel items in sequence, wherein each two parcel item has a bit length of 2n”
“one clock cycle”/”said one clock cycle”
“rasterization circuit”
“rasterization process which operates on a … floating point format”
“frame buffer”
“color values”
“per-fragment operations”
“logic”
“geometry processor”
“scan converter”
“optical compensation film”
“air gap”
“wide aspect ratio”
“digital computer system,” “information originating source”
“gamma profile”
“gray scale resolution”/”grayscale resolution”
“software controller”
“adjustment circuit”
“gamma value”
“backlight control signal”
“graphics controller”

Continue reading

Published on:

Chief Judge Leonard P. Stark recently considered Defendants motion to dismiss Robert Bosch LLC’s patent infringement claims for lack of personal jurisdiction.  Robert Bosch LLC v. Alberee Products, Inc., et al., C.A. No. 12-574-LPS (D. Del. Sept. 29, 2014).  Two of the three Defendants are Maryland corporations and the third, API, is a Korean corporation.  Id. at 1.  In its complaint, Bosch alleged that API manufactures windshield wiper blade components in Korea and sells them to companies in the United States, including the Maryland Defendants.  Id. at 3.   Bosch further alleged that the Defendants then worked together from Maryland to assemble the wiper blades to market and sell in the United States.  Id.  Plaintiff pointed to no evidence that Defendants have offices, employees, bank accounts, or property in Delaware; travel to or manufacture anything in Delaware; or otherwise have transacted business or directly sold products in Delaware.  Id. at 4.

Bosch did not allege jurisdiction under any one prong of Delaware’s long arm statute, 10 Del. C. § 3104, but that jurisdiction existed “under a ‘dual jurisdiction’ or ‘stream of commerce’ theory.  Id. at 7.  The concept of dual jurisdiction relates to the situation in which a defendant has sufficient general contacts with Delaware and the plaintiff’s claims arise from those contacts.  Id. at 7-8 (citing LaNuova D & B, S.p.A. v. Bowe Co., 513 A.2d 764 (Del. 1986); Wright v. Am. Home Products Corp., 768 A.2d 518 (Del. Super. 2000); Boone v. Oy Partek Ab, 724 A.2d 1150 (Del. Super. 1997)).  Applying the LaNuova, Wright and Boone cases, this Court has held that “‘[t]he dual jurisdiction concept arises from at least partial satisfaction of subsections (1) and (4) of the Delaware long-arm statute . . . . Dual jurisdiction may be established when a manufacturer has sufficient general contacts with Delaware and the plaintiffs’ claims arise out of those contacts.”‘  Id. at 8 (quoting Belden Techs., Inc. v. LS Corp., 829 F. Supp. 2d 260, 267 (D. Del. 2010)).  Jurisdiction would exist if a defendant intended to serve the Delaware market, resulting in a product entering the market; and the plaintiff’s claim arose from injuries caused by this product.  Id. at 8-9.  Judge Stark noted that another Judge in this District recently concluded that the Delaware Supreme Court would not likely “embrace” the theory of dual jurisdiction, Id. at 9., but Judge Stark disagreed finding that “[t]he Delaware Supreme Court has had several opportunities to reject the dual jurisdiction theory but has refrained from doing so.”  Id. at 10-11.

Judge Stark then turned to whether the Defendants here are subject to jurisdiction under the “dual jurisdiction” theory.  Based on Bosch’s allegations, the only question was “whether any or all of Defendants’ actions in placing wiper blades or wiper blade components into the stream of commerce – where those wiper blades and/or wiper blade components end up allegedly causing injury in Delaware (through the sale of the Goodyear Assurance product at Costco) – are sufficient to satisfy the dual jurisdiction theory.”  Id. at 12.  Regarding the Maryland Defendants, Judge Stark found that because they sell the accused wiper blades to nationwide reseller Costco, with locations in Delaware, Defendants “presumptively intend[] to target the Delaware market.”  Id. at 16.  This intent resulted in the introduction of the accused blades in Delaware, and Bosch’s claims arose from injuries caused by those blades.  Id.  Judge Stark also found that a finding of personal jurisdiction comported with Due Process.  Id. at 16-17.  Regarding API, the Korean Defendant, Judge Stark determined that Bosch did not point to any evidence of an agency relationship between API and the Maryland Defendants, nor did Bosch satisfy the requirements of the dual jurisdiction theory.  Id. at 19-20.  Judge Stark did, however, grant Bosch leave to conduct jurisdictional discovery focused on “the relationship among API [and the Maryland Defendants], and the distribution and sale of the accused products in Delaware and throughout the United States.”  Id. at 21-23.

 

Continue reading

Published on:

In a recent Memorandum Order, Chief Judge Leonard P. Stark denied plaintiffs’ motion for judgment on the pleadings regarding defendant’s patent-misuse defense, and also denied plaintiffs’ motion for leave to file a motion for summary judgment on the same defense. Intellectual Ventures I LLC v. Symantec Corp., C.A. No. 13-440-LPS (D. Del. Sept. 24, 2014).

First, given that defendant raised patent misuse as an affirmative defense rather than a claim or counterclaim, Judge Stark determined that plaintiffs’ motion for judgment on the pleadings should be treated as motion to strike under Fed. R. Civ. P. 12(f), rather than a motion pursuant to Fed. R. Civ. P. 12(c) as plaintiffs had contended. Id. at 2-3. Judge Stark noted that “[a] majority of the District Courts within the Third Circuit that have addressed the issue have determined that the pleading requirements of Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007), and Ashcroft v. Iqbal, 556 U.S. 662 (2009), do not apply to the pleading of affirmative defenses.” Id. at 2. Defendant alleged that plaintiffs engaged in patent misuse by “tying the ‘wanted’ patents-in-suit with a large and undisclosed number of ‘unwanted’ patents,” collecting royalties from invalid patents, and “creating and maintaining an unlawful monopoly.” Id. at 6-9. Because Judge Stark could rely only on the pleadings, and because defendant’s affirmative defense required “additional information” or otherwise implicated “legal and factual” questions that the Court could not resolve at this stage of the case, plaintiffs’ motion to strike was denied. Id.

Turning to plaintiff’s motion for leave to file a motion for summary judgment on the patent misuse defense, Judge Stark noted that plaintiffs’ motion focused on defendant “tying the patents-in-suit to irrelevant and unwanted patents in package licenses.” Id. at 9. Judge Stark explained that because there was a “factual dispute as to whether [plaintiffs] improperly tied licensing the patents-in-suit in this case with unrelated patents, this issue does not appear to be amenable to resolution on summary judgment.” Id. at 8-9. Further, citing to the Court’s scheduling order setting the date for case-dispositive motions, Judge Stark noted that “[m]ore importantly, the Court perceives no persuasive reason to permit a motion for summary judgment on this one issue at this time.” Id. at 9.

Continue reading

Published on:

In Intellectual Ventures I LLC, et al. v. AT&T Mobility LLC, et al., C.A. No. 13-1668-LPS and its related actions (D. Del. Sept. 24, 2014), Chief Judge Leonard P. Stark denied defendants’ motions to dismiss with respect to willful infringement and lack of standing, but denied the latter without prejudice.

As to willfulness (directed to only one of the related defendants), plaintiffs alleged that this defendant had knowledge of certain patents-in-suit once it brought these patents to the attention of the examiner during the prosecution of its own patents.  Id. at 4.  Furthermore, the complaint alleged willful blindness: that the defendant ignored the risks of patent infringement as a matter of corporate policy as it had no policy in place to obtain rights from patent holders.  Id. at 5.  The Court found that these allegations were sufficient to survive dismissal.  Id.

As to standing, the Court denied this motion as “[t]he parties have not provided the Court with a copy of the full agreement transferring patent rights to [plaintiffs].”  Id. at 6.  In light of the Court’s recent opinion in Clouding IP, LLC v. Google Inc., it highlighted “the importance of examining the full agreement when assessing whether a plaintiff has been transferred ‘all substantial rights’ in a patent.”  Id. at 5-6.  Therefore the Court denied the motion without prejudice; defendants could move again if the parties provided the “complete assignment agreements and amendments.”  Id. at 6.

Continue reading

Published on:

Chief Judge Leonard P. Stark recently decided issues raised at the pretrial conference, after considering letter briefs submitted by the parties.  Masimo Corp. v. Philips Elec. N.A, C.A. No. 09-80-LPS (D. Del. Sept. 12, 2014).  Judge Stark allowed Philips to try its indirect infringement claims despite failing to “adequately” respond to Masimo’s interrogatories.  Id. at ¶ 1.  Because Masimo never complained of the sufficiency of Philip’s responses until a few weeks before trial, Judge Stark determined that “the best exercise of [the Court's] discretion is to permit the indirect infringement allegations to be tried.”  Id.  Judge Stark also decided issues related to Masimo’s trial presentation regarding damages in light of Philips’ recent concession of infringement.  Judge Stark permitted Masimo to present evidence of Philips’ alleged infringement and that the infringement allegations were pending during the parties negotiations:  “This is necessary to avoid the jury incorrectly assuming that Masimo engaged in negotiations with Philips because Masimo was highly motivated to license the patents.”  Id. at ¶ 2.A.    Masimo would not be permitted, however to present any further information because Masimo failed to demonstrate that such information would be “necessary as part of a proper damages analysis” and the risk of confusing the jury outweighed any probative value.  Id.  As part of its damages presentation, Judge Stark also permitted Masimo to present evidence about Masimo’s prior litigation involving the patent-in-suit and that the the patent was found valid and infringed prior to the parties entering into a settlement agreement (the details of which were relied upon by the parties’ experts).  Id. at ¶ 2.B.

Continue reading

Published on:

Judge Leonard P. Stark decided numerous pending motions in various Intellectual Ventures’ lawsuits, C.A. Nos. 12-193-LPS, 13-1631-LPS, 13-1634-LPS, 13-1635-LPS, 13-1668-LPS, to 13-1672-LPS (D. Del. Sept. 8, 2014).  First, Judge Stark granted Sierra Wireless America Inc.’s and Ericsson Inc.’s motions to intervene, finding that the intervenors’ motions were timely (having been filed prior to claim construction) and were necessary so that the intervenors could “protect their interest in products which [the intervenors] manufacture for Defendants, an interest put at risk by the litigation as Plaintiffs accuse these products of infringement.”  Id. at ¶ 6.  Judge Stark rejected plaintiff’s argument that intervention as a right is only appropriate if the intervenors owe an indemnity obligation to defendants.  Id. at ¶ 7.  An intervenor must demonstrate “an interest relating to the property or transaction which is the subject of the action[,].” which they have done here by “demonstrating their interest in the very devices accused of infringement.”  Id. at ¶ 8 (quoting Liberty Mut. Ins. Co. v. Treesdale, Inc., 419 F.3d 216, 220 (3d Cir. 2005).

Judge Stark also granted Plaintiff’s motion for leave to amend its complaints to add certain subsidiaries as named defendants, finding the motions timely and the amendment not futile or prejudicial.  Id. at ¶ 13.  Judge Stark also granted numerous defendant’s motion to sever, creating ten separate cases; and defendant Nextel Operations Inc.’s unopposed motion to redact portions of a discovery conference transcript.  Id. at ¶¶ 14-15.

Continue reading

Published on:

In a recent memorandum opinion, Chief Judge Leonard P. Stark invalidated on summary judgment Walker Digital’s U.S. Patents No. 5,884,270 and 5,884,272 for lack of patentable subject matter under 35 U.S.C. § 101.  Walker Digital, LLC v. Google, Inc., C.A. No. 11-318-LPS (D. Del. Sept. 3, 2014).  The patents related to “controlling the release of confidential or sensitive information of at least one of the parties in establishing anonymous communications.”  The Court agreed with a hypothetical proposed by Google, which showed that a human would infringe the independent claim of the ’270  patent during “routine headhunting,” and found that “[t]o allow the claim to survive would disproportionately risk preempting a building block of human interaction, retarding rather than promoting progress, contrary to the very purpose patents are granted.”  With respect to the ’270 patent’s dependent claims, the Court explained that “[e]ven accepting that the use of a computer increases speed and efficiency of performing the steps of the claims, and improves the likelihood of preserving anonymity of the first and second parties, these characteristics do not save the claims.  As the Supreme Court has stated, the mere recicitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.” (internal quotation marks and citation omitted).  The analysis was largely the same with respect to the ’272 patent.

Continue reading

Published on:

In a recent memorandum order, Chief Judge Leonard P. Stark granted defendants’ motion for leave to amend their answer to add a defense and counterclaim asserting that U.S. Patent No. 7,215,984 (“the ’984 Patent”) is unenforceable due to plaintiff’s inequitable conduct during the ex-parte reexamination of the ’984 Patent. Masimo Corp. v. Philips Electronic North America Corp. et al, C.A. No. 09-80-LPS-MPT (D. Del. Sept. 2, 2014). The main issue Judge Stark resolved was whether defendants’ claim was futile. Defendants alleged that several plaintiff representatives committed inequitable conduct when they “each failed on several occasions to inform the PTO that the interpretation of the asserted claims of the ‘984 patent [plaintiff] urged the PTO to adopt had been rejected by this Court, including: (i) when Magistrate Judge Thynge issued her Report & Recommendation (“R&R”) regarding summary judgment, (ii) when the PTO issued its Notice of Intent to Issue Reexamination Certificate (“NIRC”) based on that rejected construction, and (iii) when the undersigned District Judge issued his Summary Judgment Opinion and Order (“SJ Order”) adopting the magistrate’s R&R.” Id. at 3. Plaintiff submitted the R&R to the PTO and expressly identified the pages containing Judge Thynge’s construction, but did not “explain how Judge Thynge’s construction or explanation related to the claim construction positions [plaintiff] had advocated before Judge Thynge and was continue to advocate before the PTO.” Id. at 7. Subsequent to the R&R but prior to the PTO’s NIRC, the Court adopted the R&R, making the previous recommended construction an Order of the Court. Id. As Judge Stark explained, plaintiff never disclosed to the PTO the Order of the Court adopting the R&R, even after the issuance of the NIRC. Id. at 8. Judge Stark also noted that the examiner’s reasoning in the NIRC “appeared to indicate that she was relying on the rejected construction advanced by [defendant]” and that the examiner mistakenly believed she was adopting the same construction as the Court. Id. at 8-9. Judge Stark ultimately concluded the following:

Regardless of whether a patentee in all cases has an obligation to disclose a District Court’s adoption of an unobjected-to recommended claim construction, or whether a patentee has an obligation to explain the impact of a Court’s claim construction on arguments the patentee has made to the examiner, under the facts alleged here it is plausible to believe that [plaintiff] intentionally decided not to make these disclosures because [plaintiff] intended to deceive the examiner into believing she was applying the Court’s claim construction, when [plaintiff] knew she was not, and when [plaintiff] feared application of the Court’s claim construction could lead the examiner to invalidate its claims. While [defendants have] not yet proven these allegations, [they have] stated plausible claims for relief . . . .

Id. at 9. Judge Stark also found that plaintiff would not be unduly prejudiced from the amendment, as defendants sought “only limited additional discovery, including short depositions of the four [plaintiff] representatives and production of the readily available reexam history . . . , which should not affect the [scheduled trial].” Id. at 10.

Continue reading

Contact Information