Delaware IP Law Blog

Eastern District of Pa. chief judge Harvey Bartle, sitting by designation, recently issued a claim construction memorandum opinion in Magsil Corp. v. Seagate Technology, C.A. No. 08-940 (D. Del. Mar. 1, 2010) (memo. op.). The following terms were construed:

• "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"

Magsil Corp. v. Seagate Technology, C.A. No. 08-940 (D. Del. Mar. 1, 2010)

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]."

Inventio AG v. Thyssenkrupp Elevator Americas Corp., C.A. No. 08-874-ER (D. Del. Feb. 2, 2010) (Robreno, J., sitting by designation).

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.

Qinetiq Limited v. Oclaro, Inc., C.A. No. 09-372-JAP, Opinion (D. Del. Dec. 18, 2009).

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.

Teleconference Systems v. Proctor & Gamble Pharma. Inc., C.A. No. 09-200-JBS-JS (D. Del. Nov. 25, 2009) (Schneider, M.J.).

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.

Inventio AG v. Thyssenkrupp Elevator Americas Corporation et al., C.A. No. 08-874-ECR (D. Del. Oct. 8, 2009)

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.

Moberg v. 33T LLC, C.A. No. 08-625-MLH-JS, Opinion (D. Del. Oct. 6, 2009).

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."

Brigham and Women's Hospital Inc. v. Teva Pharma. USA Inc., C.A. No. 08-464-HB (D. Del. Sept. 24, 2009) (Bartle, C.J.).

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.

Inventio AG v. Thyssenkrupp Elevator Americas Corp., C.A. No. 08-874-ER (D. Del. July 31, 2009)

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.

Vianex Delaware LLC v. Nuance Comms. Inc., C.A. No. 09-067-NLH-JS (D. Del.) (Hillman, J.).