On August 4, 2010, Judge Robreno granted defendants' motion for summary judgment. In his June claim construction order, Judge Robreno found that certain claims were indefinite under 35 U.S.C. § 112, ¶ 6, because the means-plus-function claims did not receite sufficient structure. As such, "the claims, and by extension the patents-in-suit, are indefinite as a matter of law[,]" thereby warranting a grant of defendants' motion for summary judgment. Inventio AG v. ThyssenKrupp Elevator Am. Corp., C.A. 08-874-ER, at n.1 (D. Del. Aug. 4, 2010).
In a recent transfer opinion, Judge Bartle (sitting by designation from the E.D. Pa.) granted defendant Life Technologies Corporation’s motion to transfer to the Southern District of California. Boram Pharm. Co., Ltd. v. Life Technologies Corp., C.A. No. 10-31-HB, Memo. (D. Del. July 14, 2010). This was not a case where the plaintiff’s home turf is Delaware, since Boram is a South Korean company. The court found that the “critical factors” weighing in favor of transfer in this case are the “convenience of the parties and the witnesses.” Id. at 3. Specifically, Life Technologies demonstrated that 10 key witnesses are in the Southern California and all non-party witnesses are within that court’s subpoena power. Id. Furthermore, all of the “key research, testing, development, marketing, sales, and manufacture of the Accused Products” takes place in Southern California. Id. Also, although both parties are large corporations “and by implication can afford to indulge in litigation in this, the more expensive forum, it is no reason for the court to countenance this indulgence.” Id. at 4.
Visiting district judge Jerome B. Simandle issued a decision Monday that refused to construe a set of claims for purposes of resolving a motion to dismiss. By their motion, Defendant Trigen and another claimed that, based on the motion's record, their ear-drop solution could not infringe the patents-in-suit as a matter of law.
Recognizing that other jurisdictions have declined to engage in claim construction to resolve a preliminary motion, the Court rejected Trigen's attempts to evade the case law:
"Defendants attempt to distinguish these cases on the grounds that many involved efforts to introduce extrinsic evidence on a Rule 12(b)(6) motion, noting that here no party has offered extrinsic evidence nor documentation of prosecution history. This only serves to illustrate the point. The fact that the parties in this case have obeyed the procedural rules constraining Rule 12(b)(6) motions does not mean that the record is sufficiently complete to warrant construing the patent claim contrary to Plaintiffs' allegations of infringement."
The Court summed it up best by advising that it is possible to "envision a patent infringement cause of action for which patent claims could be construed on a motion to dismiss, but this is not such a case."
Judge Baylson issued a recent claim construction order construing the following terms:
"discrete region(s)"
"fixed upon a solid support according to an array comprising discrete regions"
"determining the possible presence and quantification of precipitate(s) in said discrete region(s)"
"correlating the presence and quantification of the precipitate(s) at the discrete region(s) with the identification and/or quantification of said target compound"
"colloidal gold particles coupled to the bound target compound"
"wherein the possible presence and quantification of a precipitate is obtained by reflection, absorption or diffusion of a light beam upon said precipitate"
"wherein binding of said targe compound to one or more of said multiple species of capture molecules leads to a catalytic reduction of a metal present in solution, and a formation of a metallic precipitate in one or more of said discrete region(s)
"wherein said computer is programmed to detect and/or quantitate said target compounds"
Update: Below is the order adopting the constructions. Here is Judge Baylson's July 12, 2010 memorandum opinion in support of the claim constructions.
Judge Robreno recently issued a claim construction opinion in a case involving 2 patents and nearly 30 disputed claim terms. The patents involve technology related to elevator installation. The disputed claim terms included the following:
“modernized”/“modernizing”
“modernizing device”
“a device for temporarily operating an elevator installation during modernization”
“a system for modernizing an elevator installation"
"a method for modernizing an elevator installation"
"elevator installation"
"elevator control"
"call report"
"floor terminal"
"at least one of [A] and [B]"
“floor terminal . . . operative for at least one input of destination call reports and recognition of identification codes of passengers"
“floor terminal . . . for at least one of the input of destination call reports and for recognition of identification codes of users”
“computing unit . . . for at least one of evaluating the destination call reports and association of destination floors with recognized ones of the identification codes”
"identification code[s]"
"recognition of identification codes of passengers"
"computing unit"
"destination signal"
“interrupting at least one existing electrical floor call transmitter line between at least one floor call transmitter and the elevator control”
“interrupting at least one existing car call transmitter line between at least one car call transmitter and the elevator control”
“the elevator control being disconnected from the hall call transmitters and the car call transmitters of the elevator installation”
"existing electrical floor call transmitter line"
"existing car call transmitter line"
"floor call transmitter line input"
"car call transmitter line input"
"hall call transmitters"
"in a modular manner"
"in succession"
"performing said steps a. through c. [of claim 1] for each elevator car and associated elevator control of an elevator installation in succession whereby the elevator installation is modernized in a modular manner”
"temporarily"
In Millenium Pharms., Inc. v. Teva Parenteral Medicines, Inc., C.A. No. 09-105 (D. Del. Apr. 13, 2010), Plaintiffs brought suit after defendants filed their Abbreviated New Drug Application (“ANDA”) for a generic version of Plaintiffs’ drug. Id. at 2. Pursuant to their ANDA, Defendants submitted a Paragraph IV certification that Plaintiffs’ patents in the corresponding New Drug Application (“NDA”) were invalid, unenforceable or would not be infringed. Id. at 3-4. Due to Defendants’ Paragraph IV certification, Plaintiffs had 45 days to bring the suit to establish validity of their patents (which they did), thereby staying Defendants ANDA for 30-months. Because Defendants were the first to file a Paragraph IV certification, they are entitled to a 180-day market exclusivity after ANDA approval, provided Defendants begin marketing their generic drug within 75 days of a final judgment that Plaintiffs’ patents are invalid, unenforceable, or not infringed. In addition to the Paragraph IV certifications, Defendants submitted Paragraph III certifications which would delay FDA certification of Defendants’ ANDA until Plaintiffs’ patents expire, in 2014. The result was that Defendants could lose their 180-day exclusivity period, even if they are successful in the litigation. Id. at 5. Therefore, Defendants subsequently sought a stay of the litigation.
Judge Joyner denied Defendants’ Motion to Stay, however, after weighing the potential hardships to both Plaintiffs and Defendants. Judge Joyner noted that “Defendants have shown that they will be harmed if a stay is not entered, as they will likely forfeit their 180-day exclusivity period. Defendants, however, have only themselves to blame for this result. . . . Although Defendants did not file this suit, they were well aware that their ANDA triggered the start of a 45-day period for Plaintiffs to defend the validity of their patents, and, in this sense, did control the timing of the present litigation.” Id. at 8. Because the harm to Defendants of denying the stay was “one of their own creation,” that harm cannot outweigh any harm to Plaintiffs if the stay is granted. Id.
In Brigham and Women’s Hospital Inc., et al. v. Teva Pharmaceuticals USA, Inc., et al., C.A. 08-464 (D. Del. Mar. 31, 2010), Judge Bartle considered whether the attorney-client privilege was waived by plaintiffs when answering certain of defendants’ interrogatories relating to defendants’ inequitable conduct counterclaims. Id. at 4-5. When answering the interrogatories, plaintiffs indicated that they relied on advice of counsel to determine what material was disclosed to the patent office during prosecution of the patents in question. Id. at 5-8. Defendants argued that plaintiffs “relied on advice of counsel as a ‘sword’ to defeat the intent prong of inequitable conduct[,]” but were also “improperly attempting to use attorney-client privilege as a ‘shield’ to deflect inquiry into [related] communications.” Id. at 8-9.
Judge Bartle first determined that Federal Circuit law on attorney-client privilege applied, rather than Third Circuit law, because the privilege issue was “closely related to the substantive issue of inequitable conduct[,]” which is within the realm of the Federal Circuit. Id. at 9-10. Although the Federal Circuit has not decided the issue of waiver in the context of the use of advice of counsel as a defense to inequitable conduct, Judge Bartle looked to cases involving willful infringement. Id. at 11. In the willful infringement context, the Federal Circuit has clearly established, “that a litigant who asserts reliance of the advice of counsel as a defense waives the attorney-client privilege with regard to all communications pertaining to that advice.” Id. at 12. Likewise, Judge Bartle determined that reliance on advice of counsel as a defense to inequitable conduct results in waiver of the attorney-client privilege as to communications between lawyer and client relating to plaintiffs’ failure to disclose certain information to the patent office. Id. at 16.
"junction" - The Court held that due to the claims' use of "comprising," and the wording of the dependant claims, the use of "junction" did not mean that the claims were "limited to a three layer system of 'electrode, barrier and counter-electrode.'"
"a small magnitude of electromagnetic energy" - "that magnitude of electromagnetic energy which is sufficient to reverse the magnetization direction of the electrode or film layer with a lower coercive force (thereby achieving a change in resistance of at least 10%) but less than the amount necessary to reverse the magnetization direction of the electrode or film layer with a higher coercive force."
"Reverses at Least One of the Magnetization Directions" - "a turning or change of the magnetization direction of at least one of the electrodes or film layers, towards an opposing alignment, to such a degree as necessary to achieve at least a 10% change in resistance."
"A Change In the Resistance By at Least 10%" - 'a change in the resistance of at least 10% by using the formula ΔR/R = (R1 -R2)/R1, where ΔR/R is the percent change in 1 magnetization direction, R1 is the resistance of the junction 8 before the application of electromagnetic energy reverses at least one of the magnetization directions, and R2 is the resistance of the junction after the application of electromagnetic energy and the resultant reversal of at least one of the magnetization directions."
"At Room Temperature" - "a device which causes a change in resistance of at least 10% 'at room temperature' is a device capable of achieving such resistance without actively manipulating the temperature of the device, that is, that the device is capable of achieving a 10% change in resistance while operating within a room-temperature environment."
"Stepping Motor" - "an electric motor that is capable of moving only in small, discrete increments."
"Linearly Driving the Actuator" - "driving the actuator in a straight line"
Last month, we posted about New Jersey Magistrate Judge Bongiovanni's decision to disqualify a lawyer for a conflict of interest under Rule of Professional Conduct 1.7, in Wyeth and Cordis Corp. v. Abbott Laboratories, et al., C.A. No. 08-230-JAP (D.N.J. Dec. 1, 2009). Magistrate Judge Bongiovanni's holding contradicted a District of Delaware case - both cases had identical facts, but Magistrate Judge Bongiovanni held the firm disqualified, while Judge Robinson had held that, although the firm's conduct violated Rule 1.7, the facts of the case did not warrant disqualification.
This week, New Jersey District Judge Pisano reversed Magistrate Judge Bongiovanni's decision, and held that the attorney was not disqualified, after a discussion of the facts of the case that roughly mirrored Judge Robinson's opinion. According to Judge Pisano, violations of Rule 1.7 do not result in mandatory disqualifiction under Third Circuit and New Jersey law. Wyeth and Cordis Corp. v. Abbott Laboratories, et al., C.A. No. 08-230-JAP, at *15 (D.N.J. Feb. 8, 2010). Judge Pisano stated that this rule is particularly appropriate because "[m]odern litigation . . . often involves multinational companies and multinational law firms among whom conflicts occasionally arise due to the broad reach of their respective businesses," and because of the degree of prejudice that results to a party when its chosen counsel is disqualified. Id. at 9-10.
Sometimes, the footnotes tell the whole story. In this case, that expression is literally true: district judge Eduardo C. Robreno's recitation of the facts and his analysis are contained within one extraordinary footnote. That analysis, moreover, is significant.
In its decision released Tuesday, the Court delineated the scope of pleading, on information and belief, the "deceptive intent" element of the inequitable-conduct defense. In short, the answer is no:
"Even assuming that the Court adopts a liberal interpretation of the inference of intent to deceive, Defendants present no specific facts showing Plaintiff . . . actually possessed any knowledge with respect to the commercial availability of the Components. Absent some particularized showing regarding this knowledge, the Amended Answer does not satisfy the Rule 9(b) pleading requirement in light of [Federal Circuit precedent]."
Although a plaintiff's choice of forum is typically given great weight, Judge Pisano in granting a defendant's motion to transfer to the Northern District of California, recently afforded less deference to a plaintiff's choice to litigate in Delaware where Delaware was not plaintiff's "home turf" and none of the allegedly infringing acts occurred in Delaware. Qinetiq Limited v. Oclaro, Inc., C.A. No. 09-372-JAP, Opinion (D. Del. Dec. 18, 2009). Defendant's only connection to Delaware in this matter was the fact that it is a Delaware corporation. Id. at 7. This alone was not enough to warrant litigating the action in Delaware and therefore the Court transferred the case to the Northern District of California. Id. at 8.
A recent venue-transfer decision by Magistrate Judge Joel Schneider illustrates the limits of Delaware courts' deference to a defendant's state of incorporation. In granting a request to transfer the patentee's infringement action to the Northern District of California, the Court noted that five of the nine defendants seeking transfer are incorporated in Delaware. In the District of Delaware, this factor typically weighs against transfer.
The underlying litigation, however, presented no other link to Delaware:
"Plaintiff has not dispelled the key fact that the essence of the case is a dispute between two California companies over patents and products developed in California, and that the key evidence and witnesses are located in California . . . . There is simply no getting around the fact that all key identified witnesses and evidence is located in California." (at 25)
Although the fact of a defendant's domestic incorporation will often persuade a Delaware court to retain the litigation, this decision is an example of how other convenience factors can override that preference.
Eastern District of Pennsylvania Judge Eduardo C. Robreno, sitting by designation, recently issued a memorandum opinion addressing discovery issues in Inventio AG v. Thyssenkrupp Elevator Americas Corporation et al., C.A. No. 08-874-ECR (D. Del. Oct. 8, 2009). Defendant moved to compel production of two categories of documents: letters and deposition transcripts from plaintiff's pending S.D.N.Y infringement case on a related patent, and "all nonprivileged documents contained in [plaintiff's] internal patent prosecution files with respect to the patents-in-suit." Id. at 1-2.
As to the first request, Judge Robreno determined that the documents from the S.D.N.Y. suit, although mostly relevant, were covered under a stipulated protective order and that "this Court is without authority to alter the Protective Ordered entered by another court by ordering production of any documents within [its] scope." Id. at 18. The court did, however, order plaintiff to identify the protected documents in a privilege log and, after the court determines which documents are relevant, to return before the judge in the S.D.N.Y. action and seek relief from the protective order as to those documents. Id. at 18-19.
As to the second request, seeking all of the plaintiff's internal patent prosecution documents, Judge Robreno held that the only ground under which plaintiff could withhold the documents is privilege, and that privilege must be claimed on a document-by-document basis rather than plaintiff's "blanket statement" that all internal patent prosecution documents are non-discoverable. Id. at 20.
Judge Robreno also included an interesting explanation of the scope of discovery under Rule 26. He analogized the types of information discoverable under Rule 26 to "three concentric circles," because parties must disclose first "information integral to the litigation . . . without the necessity of a discovery request," FRCP 26(a), then "nonprivileged information that is 'relevant to any party's claim or defense' upon a request," FRCP 26(b)(1), and finally "broader discovery of 'any matter relevant to the subject matter involved in the action,' where such information is likely to lead to the discovery of admissible evidence and the party making the discovery request can establish 'good cause' to support the request." Id. at 7-9 (hyperlink added). As far as I can tell from a brief Lexis search, this apt analogy is unique to this memorandum opinion.
This opinion, by Judge Hillman (sitting by designation from the District of New Jersey pursuant to the standing order in this Court), addreses an issue of first impression for the Court related to subject matter jurisdiction over copyrighted images on the Internet. Moberg v. 33T LLC, C.A. No. 08-625-MLH-JS, Opinion (D. Del. Oct. 6, 2009). Pursuant to the Copyright Act, a plaintiff alleging infringement os a U.S. work must have registered the work. Id. at 5. The work plaintiff alleged was infringed was posted on a German website. Defendant argued the work was a U.S. work that plaintiff failed to register and therefore this Court lacked jurisdiction to hear any infringement action. Id. at 5-7. The Court, therefore, needed to decide whether a photograph posted to a foreign website is simultaneously "published" everywhere and therefore is a U.S. work and must be registed. Id. at 6-7.
The Court found that this work was not "published simultaneously" worldwide and therefore is not a U.S. work subject to registration. Id. at 14-15. A different finding would be contrary to the Berne Convention, would "allow American citizens to infringe on foreign copyrighted works without fear of legal retribution," and the United States copyright laws "provide for protection of foreign works in the United States without requiring the artists to undetake any formalties in the United States." Id.
Consistent with a theme that has been developing in D. Del. multi-patent litigation, E.D. Pa. chief judge Harvey Bartle, sitting by designation, recently issued an order limiting the number of claims for trial. In the four-patent litigation, the Court limited the plaintiffs to no more than twelve representative claims, with at least one claim from each of the patents-in-suit. Notably, however, the Court expressly directed that the trial on the representative claims will be "without prejudice to a trial at a later point, at the request of plaintiffs, on any of the remaining claims of the patents."
In Inventio AG v. Thyssenkrupp Elevator Americas Corp., C.A. No. 08-874-ER, at 2 (D. Del. July 31, 2009) Defendants filed a motion to compel answers to an interrogatory requesting construction of claims Plaintiff contends were infringed by Defendants. Plaintiff initially responded objecting to the interrogatory as premature and eventually responded that Plaintiff would “provide claim constructions in due course as required by the Scheduling Order in this case.” Id. at 3. In support of their motion Defendants cited district court decisions compelling claim construction interrogatories, none of which were from the District of Delaware. Id. at 5 n.1. Judge Robreno granted Defendants motion stating that “Plaintiff has represented to the Court that the claims it is pursuing are warranted under existing law and that they have evidentiary support. Thus, Plaintiff is in a position to articulate which claim terms Defendants have infringed.” Id. at 6.
Can a plaintiff substitute in the correct party to cure a lack of subject matter jurisdiction once the defendant has moved to dismiss? According to District of New Jersey judge Noel L. Hillman, sitting by designation, the answer is no.
In the underlying litigation, Vianex Delaware LLC brought suit for copyright infringement. The only trouble was that this particular Vianex entity did not own the copyright and thus had no standing to sue.
After defendant moved to dismiss, Vianex sought to amend its complaint to substitute the correct plaintiff. The Court rejected the maneuver, noting that it lacked authority to permit the amendment:
"It has long been the case that the jurisdiction of the court depends upon the state of things at the time of the action brought. This time-of-filing rule is hornbook law (quite literally) taught to first-year law students in any basic course on federal civil procedure."
Thus, "[b]ecause Vianex Delaware LLC did not have standing to assert its claims when it filed suit, the Court does not have subject matter jurisdiction to consider anything filed thereafter."
The dictates of subject-matter jurisdiction are strong enough to withstand what the Court itself acknowledged may be a "technical and wasteful exercise" in dismissing the complaint. Given the strength of this command, there may be a lesson beyond caveats about drafting pleadings. When analyzing a Court's foundational authority to hear our cases, all facets of subject-matter jurisdiction must be at the top our list.
