April 10, 2014

"Conditional counterclaims" against DJ plaintiff/supplier insufficient to create jurisdiction, according to Federal Circuit

In Microsoft Corporation v. DataTern, Inc., the Federal Circuit made clear that conditional counterclaims and conditional statements of infringement alleged against a declaratory judgment plaintiff are insufficient to establish declaratory judgment jurisdiction. The Court noted, “[a] declaratory judgment plaintiff must plead facts sufficient to establish jurisdiction at the time of the complaint, and post-complaint facts cannot create jurisdiction where none existed at the time of filing.” The Court further noted that, even if post-complaint facts could be considered in evaluating DJ jurisdiction, the defendant/patentee’s conditional allegations and a refusal to grant a covenant not to sue are not the type of facts to support DJ jurisdiction. ...

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February 21, 2014

Breaking News: Federal Circuit Affirms Cybor’s De Novo Review of Claim Construction

The Federal Circuit has issued its highly-anticipated decision in Lighting Ballast Control LLC v. Philips Electronics North America Corp., 2012-1014 (Fed. Cir. Feb. 21, 2014). The en banc decision of Chief Judge Rader and Judges Newman, Lourie, Dyk, Prost, Moore, O’Malley, Reyna, Wallach, and Taranto holds that the de novo standard of review should continue to apply to claim construction issues. As the Court summarized:

"[W]e apply the principles of stare decisis, and confirm the Cybor standard of de novo review of claim construction, whereby the scope of the patent grant is reviewed as a matter of law. After fifteen years of experience with Cybor, we conclude that the court should retain plenary review of claim construction, thereby providing national uniformity, consistency, and finality to the meaning and scope of patent claims. The totality of experience has confirmed that Cybor is an effective implementation of Markman II, and that the criteria for departure from stare decisis are not met."

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July 22, 2013

The Federal Circuit Advisory Council adopts Model Order Limiting Excess Patent Claims and Prior Art

The Federal Circuit Advisory Council announced today its adoption of a Model Order Limiting Excess Patent Claims and Prior Art. The Council offered the Model Order "to aid trial courts in the exercise of their discretion in crafting orders tailored to the facts and circumstances of each case." In adopting the Order, the Council considered several key issues, such as:

What. What should be limited—number of claims, number of prior art references, number of invalidity theories, number of terms for claim construction, number of accused products, or some combination?

Timing. When should the limits on asserted claims and prior art references take effect? Should the limits be applied only once, or should a phased approach gradually narrowing the scope of the case be followed? How should the need for discovery be balanced against the value of early streamlining?

Limitations. How should limits be formulated? Should the limits on
number of claims apply per case or per patent? How should the limits be
adjusted based on the variety of case-specific factors that courts have
considered? How can the due process rights of litigants be protected?

Effect. What effect does the judgment have on non-elected patent claims
and prior art references?

The Council concluded that "default numerical limits on the number of asserted patent claims and prior art references are workable." And, a "phased implementation" of numerical limits would "balance the need for discovery against the benefits of early streamlining."

The Model Order is attached below.

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June 14, 2013

Federal Circuit holds that it may entertain appeals from patent liability determinations in bifurcated trials, confirms acceptability of bifurcation of liability from damages and willfulness issues

Today the Federal Circuit held that the Court has jurisdiction to entertain appeals from determinations on patent infringement liability where damages and/or willfulness issues have yet to be decided due to bifurcation. Robert Bosch, LLC v. Pylon Manufacturing Corp., No. 2011-1363, -1364, at 26-27 (Fed. Cir. June 14. 2013). As discussed here, the Federal Circuit decided sua sponte to grant a rehearing en banc on these issues in August 2012.

The Court explained that this case “does not involve the question of whether the district court has the authority to bifurcate the willfulness and infringement issues. As a general matter, it does.” Id. at 22. It “ma[d]e clear that district courts, in their discretion, may bifurcate willfulness and damages issues from liability issues in any given case.” Id. at 26. The Court did observe, with regard to its holding on bifurcation of liability and damages, that “[m]odern patent damages trials, with their attendant discovery, are notoriously complex and expensive. . . . Given the substantial reversal rate of liability determinations on appeal, the whole expense of a damages trial is often wasted. Accordingly, those policy concerns that motivated Congress to grant jurisdiction over cases that are final except for an accounting [of damages] support our holding today.” Id. at 20.

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August 7, 2012

Federal Circuit to consider issue of whether it has jurisdiction to hear appeal in case bifurcating liability and damages

Today, the Federal Circuit announced that the appeal from Judge Robinson's decision in Robert Bosch LLC v. Pylon Mfg. Corp., C.A. No. 08-542 (D. Del. 2012) (the Court's post-trial opinion is discussed here), will be heard en banc to determine whether the Federal Circuit has jurisdiction "to entertain appeals from patent infringement liability determinations when a trial on damages has not yet occurred[,]" and "when willfulness issues are outstanding and remain undecided[.]" In recent years, absent unusual circumstances, Judge Robinson has bifurcated liability and damages in all patent infringement cases before her, such that a trial on damages will commence after the issue of liability is fully adjudicated on appeal.

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July 27, 2012

Federal Circuit Denies Mandamus in District of Delaware Case Under In re Link_A_Media Devices

The Federal Circuit recently issued a decision applying In re Link_A_Media Devices Corp. and denying a writ of mandamus directing the Judge Stark of the District of Delaware to transfer a patent infringement case to the Northern District of California. The case involved two Delaware limited liability companies as plaintiffs and four Delaware corporations as defendants. Because the defendants were all headquartered on the west coast, they moved for transfer under 28 U.S.C. § 1404(a), but Judge Stark denied their motions. See Intellectual Ventures I LLC, et al. v. Altera Corp., C.A. No. 10-1065-LPS (D. Del. Jan. 23, 2012).

Three of the defendants sought a writ of mandamus from the Federal Circuit, and the Federal Circuit denied their petition. In re Altera Corp., et al., Misc. Doc. No. 121, at 5 (Fed. Cir. Jul. 20, 2012) (slip op.). In its opinion, the Federal Circuit noted that under Link_A_Media it “has jurisdiction to issue a writ of mandamus to correct a denial of transfer, but only to the extent that the trial court’s analysis amounted to a clear abuse of discretion.” Id. at 3 (citing In re Link_A_Media Devices Corp., 662 F.3d 1221, 1223 (Fed. Cir. 2011)). The Court went on to explain that “the district court afforded the respondents’ choice of forum substantial weight . . . [and] concluded that the convenience of [potential] witnesses was entitled to little weight.” Id. at 2-3.

These were proper considerations according to the Federal Circuit: “[S]tatus as Delaware corporations is not entitled to controlling weight insofar as no office or employees are located in Delaware. Still, the relevant inquiry is broad enough to include the Delaware court’s interest in resolving disputes involving its corporate citizens . . . .” Id. at 3. “Moreover, the decision to deny transfer draws support from the fact that numerous potential non-party witnesses having knowledge related to the engineering and sales of the accused products appear to be located close to Delaware. In light of these circumstances, a rational basis existed for denying transfer of this case.” Id. at 4.

The Court also distinguished Altera from Link_A_Media, noting that Link_A_Media “did not go so far as to limit the trial court’s discretion to deny transfer in this case.” Id. The Court held that Altera was “clearly distinguishable; in it thorough opinion, the district court endeavored to evaluate each of the forum non conveniens factors . . . and there is no clear indication that the court failed to meaningfully consider the merits of the transfer motion. Moreover . . . there are rational grounds for denying transfer given that all of the parties . . . had incorporated in Delaware and some witnesses would potentially find Delaware more convenient.” Id.

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December 22, 2011

Federal Circuit Acknowledges Dismissed Delaware Action, Does Not Vacate its Order

On December 2, the Federal Circuit issued an order granting a writ of mandamus in a District of Delaware case, In re Link_A_Media Devices Corp., Misc. Doc. No. 990 (Fed. Cir. Dec. 2, 2011). Recently, however, the parties, who had settled the case prior to the Federal Circuit’s decision, moved to withdraw or dismiss the petition for mandamus and withdraw or vacate the court’s order granting the writ. The parties filed their settlement agreement with the District Court on December 2, but did not formally notify the Federal Circuit until December 5, when they filed the motion to withdraw. Although “Marvell states that it informed an unidentified individual in [the Federal Circuit’s] clerk office by telephone on December 1 about the settlement,” the court found that “it was counsel’s duty to formally inform this court in writing of the agreement.” In re Link_A_Media Devices Corp., Misc. Doc. No. 990 at 2 (Fed. Cir. Dec. 16, 2011). Therefore, the Federal Circuit found that “granting a motion to vacate our order is neither required nor a proper use of the judicial system.” Id. “Because the district court dismissed the complaint due to settlement, it need not transfer that dismissed complaint. However, consistent with our sister courts, we conclude that we should not vacate our order after the matter was decided.” Id. at 2-3.

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December 5, 2011

Recent Mandamus Rulings from the Federal Circuit in Delaware Cases

On December 2, 2011,the Federal Circuit granted a petition for a writ of mandamus reversing the District of Delaware’s denial of a motion to transfer venue. In re Link_A_Media Devices Corp., Misc. Doc. No. 990 (Fed. Cir. Dec. 2, 2011). The Court of Appeals ordered the District Court to transfer the case to the Northern District of California, finding that the exacting standard for a writ of mandamus had been satisfied.

In Marvell Int’l v. Link_A_Media Devices, C.A. No. 10-869-SLR (D. Del. June 8, 2011), a Bermuda plaintiff brought suit against a defendant incorporated in Delaware. The District Court denied defendant Link_A_Media Devices’ motion to transfer. The court found that transfer was not warranted in part because “the plaintiff’s choice of forum is still of paramount consideration.” Id. at 3. The court also stated that “because [the defendant] is a Delaware corporation, it has no reason to complain about being sued in Delaware” and noted that it was not “persuaded by [the defendant’s] arguments regarding convenience.” Id. at 4-5. (Read more about Judge Robinson’s denial of the motion to transfer here.) The Federal Circuit, however, granted mandamus and ordered transfer. The Federal Circuit specifically held that “the district court placed far too much weight on the plaintiff’s choice of forum.” In re Link_A_Media Devices Corp., Misc. Doc. No. 990, at 4 (Fed. Cir. Dec. 2, 2011). The Federal Circuit also found that the district court’s “heavy reliance on the fact that [the defendant] was incorporated in Delaware was similarly inappropriate” and that the “district court also erred when it found that consideration of the public interest factors did not favor either forum.” Id. at 5-6.

Earlier this year, the Federal Circuit denied a petition for a writ of mandamus in In re Xoft, Inc., Misc. Doc. No. 983 (Fed. Cir. Aug. 19, 2011). In that case, New York and German plaintiffs brought suit against a defendant incorporated in Delaware. Judge Stark accepted Magistrate Judge Thynge’s report recommending that defendant Xoft’s motion to transfer to the Northern District of California be denied. Carl Zeiss Meditec, Inc. v. Xoft, Inc., C.A. No. 10-308-LPS-MPT (D. Del. Mar. 30, 2011). Judge Thynge found that the scales were not sufficiently tipped in favor of transfer where Delaware was the plaintiff’s choice of forum, the defendant was incorporated in Delaware, and the location of witnesses and evidence were neutral or weighed only slightly in favor of transfer. Judge Stark agreed with this recommendation and rejected Xoft’s “proposition that Judge Thynge placed too much weight on the fact that Xoft is incorporated in Delaware and too little weight on the fact that Zeiss’s headquarters is in Northern California.” Id. at 2. Judge Stark found that “Judge Thynge thoughtfully explained that the convenience of witnesses and location of sources of proof -which are considered only to the extent that they are ‘unavailable’ - were either ‘neutral’ or weighed ‘only slightly in favor of transfer’” and “made clear that, in the Third Circuit, a plaintiff s choice of forum -which Xoft concedes is a ‘paramount consideration’ - should not be lightly disturbed.” Id. at 3. (Read more about Judge Thynge’s denial of the motion to transfer here.) The Federal Circuit considered the argument that “the district court placed too much emphasis on the plaintiff’s choice of forum” and refused to grant mandamus. See In re Xoft, Inc., Misc. Doc. No. 983, at 3 (Fed. Cir. Aug. 19, 2011). The Federal Circuit specifically ruled that “[i]n the Third Circuit, that choice is afforded considerable weight and should not be lightly disturbed. The district court properly considered the relevant factors for a transfer motion and determined that the factors did not strongly favor transfer.” Id.

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February 15, 2010

Federal Circuit: Questionable Personal Jurisdiction Warrants Transfer

Among the many considerations that courts face when deciding whether to transfer an action, especially in an era of ever-expanding dockets, judicial economy can sometimes tip the balance. In a recent order, the Federal Circuit upheld a D. Del. decision that sent the underlying ANDA case to another district. Of the several reasons cited, the Court approved the district court's rationale for avoiding a potentially unnecessary round of discovery:

"In this case, the Delaware District Court ruled that 'substantial, unresolved questions remain with regard to whether this District has personal jurisdiction over Defendant Apotex . . . ' and stated that it would not exercise jurisdiction over Apotex without jurisdictional discovery. Under these circumstances, we cannot say that the Delaware District Court clearly abused its discretion in ruling that judicial economy and the interest of justice weighed strongly in favor of transfer."

In re Pfizer Inc., Misc. Docket No. 915 (D. Del. Feb. 2, 2010) (Horbaly, Clerk, for the Court).


January 27, 2010

Federal Circuit upholds Judge Robinson’s decision that Teva's ANDA product does not infringe Takeda's patent

The Federal Circuit has affirmed, without discussion, Judge Robinson’s decision in Takeda Pharma. Co. Ltd. v. Teva Pharma. USA Inc., C.A. No. 07-331-SLR (D. Del. Nov. 9, 2009) (Robinson, J.), that Takeda failed to prove that Teva’s ANDA products infringe Takeda’s patent.

In her opinion, Judge Robinson had emphasized the importance of a patentee's conduct during prosecution for later claims of infringement. In the underlying action, the patentee alleged that defendant's ANDA product, which covered an oral tablet that dissolved without water, contained distinct disintegrating and swelling agents, as required by the patent. The Court disagreed, resting its conclusion of non-infringement in part on the patentee's own disavowal of the purportedly infringing disintegrating agent.