Delaware IP Law Blog

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.

Continue reading "Federal Circuit Acknowledges Dismissed Delaware Action, Does Not Vacate its Order" »

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.

Continue reading "Recent Mandamus Rulings from the Federal Circuit in Delaware Cases" »

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).

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.

The Federal Circuit has affirmed a liability determination by District of Delaware Judge Sue L. Robinson. In the underlying litigation, the district court rejected all parties' claims: the patentee failed to demonstrate infringement, and the defendants came up short in their invalidity and unenforceability cases. Without discussion, the Federal Circuit agreed.

Takeda Pharma. Co. Ltd. v. Teva Pharma. USA Inc., No. 2008-1314 (Fed. Cir. Nov. 7, 2008) (per curiam).

Also see the district court decision: Takeda Pharma. Co. Ltd. v. Teva Pharma. USA Inc., C.A. No. 06-033-SLR (D. Del. Mar. 31, 2008) (Robinson, J.).

The Federal Circuit has affirmed a decision by District of Delaware Chief Judge Gregory M. Sleet. Following a bench trial, the district court held that prosecution history estoppel barred the patentee from asserting the doctrine of equivalents as its infringement theory. The district court also rejected assertions of unforeseeability and tangentiality in the claim-narrowing process, both of which, if proved, would have precluded the estoppel finding.

In its affirming opinion, the CAFC agreed with the district court's conclusion that, on the issue of foreseeability, endorsing one of the parties' experts over the other "was not close." Quoting the Supreme Court, the appellate court reminded its readers of the discretion vested in trial judges:

[W]hen a trial judge's finding is based on his decision to credit the testimony of one of two or more witnesses, each of whom has told a coherent and facially plausible story that is not contradicted by extrinsic evidence, that finding, if not internally inconsistent, can virtually never be clear error. (Op. at 16)

This makes sense: It is the jurist that presides at trial, and not the appellate judge, that is the frontline decision maker. With the CAFC coming under fire in recent years for its alleged meddling with the work of the trial judges, this opinion, at least, demonstrates the value this circuit court places on credibility determinations - and the work of the district courts.

Honeywell Int'l Inc. v. Hamilton Sundstrand Corp., No. 2006-1602 (Fed. Cir. April 18, 2008) (Rader, J.).

Dependent claims necessarily refer back to an earlier, separate claim. But what happens when one claim describes a one-step process that is in turn obtained by the process of another claim? According to the Federal Circuit, the reference to the earlier claim's process ensures a finding of dependency.

In affirming a claim construction decision (among others) of Delaware District Judge Sue L. Robinson, the Federal Circuit began with the language of the process claim in issue: "A process comprising obtaining progeny from a [certain plant] obtained by the process of claim 1 . . . ."

Finding this language sufficient to warrant dependent status, the Court rejected the contention that the claim was independent because it is "by itself" a single-step process. By doing so, the Court relied on the claim's explicit reference to the independent claim's process:

"[C]laim 4 clearly references another claim, not simply a starting material. The claim might have used express language to clarify that it only invoked the product of the process in claim 1 as a starting material, but did not do so. Instead, the claim language reads claim 1 into claim 4."

Thus, the recitation of another claim's process, rather than its product, confers dependent status on the reciting claim.

Monsanto Co. v. Syngenta Seeds, Inc., No. 2006-1472 (Fed. Cir. Oct. 4, 2007) (Rader, J.).

The principle that the complete adjudication of a patent dispute requires that both liability and remedy be fully established is well-settled. If a court has entered judgment on one, but not the other, any appeal is likely premature. But what if a party that has sought injunctive relief in its complaint declines to brief the issue following a liability judgment and instead seeks an immediate appeal?

According to the Federal Circuit, the appeal remains premature. By granting a motion to dismiss an appeal from a District of Delaware jury's decision on infringement and invalidity, the appellate court characterized the unbriefed issue as an "unadjudicated request for injunctive relief" that "remains pending before the district court." Accordingly, it is a party's pre-judgment request, not its later abandonment, that controls the jurisdictional inquiry on appeal.

ACS Inc. v. Guidant Sales Corp., No. 2007-1365 (Fed. Cir. Aug. 1, 2007).

In re Seagate

The Federal Circuit dropped a bomb today with this unanimous decision. Here's the quick and dirty:

1) To prove willfulness, patentees now must show "objective recklessness. The Federal Circuit abandoned any affirmative duty of care on alleged infringers in relation to willfulness.

2) Waiver of the attorney-client privilege when asserting an opinion of counsel as a defense to a charge of willfulness does not, as a general rule, extend to trial counsel - although courts continue to have discretion as to waiver.

3) Waiver of work product immunity associated with the assertion of an opinion of counsel does not extend to trial counsel, unless there are exceptional circumstances.

Here in Delaware, this decision should bring uniformity to the waiver issues as to trial counsel, an issue that had received differing treatment in the past. We will keep and eye out for decisions applying this precedent in the coming months.

Claim construction follows a well trodden path through a patent's prosecution history, specification, and, most importantly, the language of the claims. Who knew that the process could also implicate the ongoing debate over the fairness and stability of the current patent regime?

Consider, for example, a recent dissent authored by Federal Circuit Senior Judge Plager in a case affirming District of Delaware Magistrate Judge Mary Pat Thynge:

"Fair notice to the public, and to competitors, of what is claimed depends on our holding patentees to what they claim, not to what they might have claimed. It is the responsibility of those who seek the benefits of the patent system to draft claims that are clear and understandable. When courts fail to enforce that responsibility in a meaningful way they inevitably contribute an additional element of indeterminacy to the system. Sometimes being kind to a party results in being unkind to the larger interests of the society."

Honewell Int'l Inc. v. Universal Avionics Sys. Corp., No. 2006-1406 (Fed. Cir. July 3, 2007).