Following the recent trend in this district, Judge Robinson denied a defendant's motion to transfer litigation related to a licensing dispute, even where the current litigation is the "mirror image" of litigation pending in the Northern District California. Myriad Group A.G. v. Oracle America, Inc., C.A. No. 10-187-SLR, Memo. Order (D. Del. Feb. 4, 2011). The court found that the Jumara factors do not warrant transfer, particularly where the defendant is a Delaware corporation and "especially in this age of electronic discovery and the ever decreasing number of cases actually resolved by trial." Id. at 5.
Save the Date: March 11, 2011
The United States District Court for the District of Delaware, the United States Bankruptcy Court for the District of Delaware and the Delaware Chapter of the Federal Bar Association will present a "Bankruptcy Litigation Advocacy Program" on March 11, 2011. The program will be held in the Auditorium of the State Office Building and will be free to all members of the Delaware Chapter of the Federal Bar Association.
More information, including registration information, will follow.
In a case involving e-readers, Judge Robreno construed the following claim terms
- book, electronic book
- encrypting the selected electronic book
- decrypting the encrypted selected electronic book
- information that allows encryption and decryption of the electronic book and encryption and
decryption of the encryption and decryption keys
- key generator
- list of titles of available books
- associate registration system
- associate enrollment system
- compensation system
- online registration system
- referral processing system
- report generation system
On February 1, 2011, the District of Delaware revised its CM/ECF filing guidelines to require that in all newly filed ANDA cases, plaintiff file a supplemental information sheet along with the complaint. This new form (below) provides the following information to the court: (1) date patentee received notice, (2) date of expiration of the patent, and (3) 30 month stay deadline. This form should aid the court in remaining cognizant of the statutory deadlines in ANDA litigation as well as potentially provide a way to track the number of ANDA cases filed in the district.
On Monday, the District of Delaware came one step closer to filling the vacant magistrate judge position. By order, the D. Del. Judges constituted the newest iteration of the district's Merit Selection Panel, which is charged with recommending no more than five candidates for the vacancy. The Panel will submit its guidance to the Court in early May.
The members of the Panel are:
Gregory B. Williams, Esquire
Dace J. Blaskovitz
Scott E. Chambers, Esquire
Moira K. Donoghue, Esquire
Tara D. Elliott, Esquire
Anne Shea Gaza, Esquire
Kathleen M. Jennings, Esquire
Dr. David P. Roselle
Robert S. Saunders, Esquire
William J. Wade, Esquire
Earlier this month, in Brigham and Women's Hospital, Inc. v. Teva Pharmaceuticals USA, Inc., C.A. No. 08-464 (D. Del. Jan. 7, 2011), Chief Judge Bartle, sitting by designation from the District of New Jersey, issued a memorandum opinion addressing several invalidity issues raised during a three-day bench trial, including inequitable conduct, anticipation, and obviousness-type double patenting. The Court rejected all of Defendants' invalidity grounds, and held that the patent claims at issue were not invalid.
The opinion addresses an interesting obviousness-type double patenting claim. Because the patents at issue straddled the June 8, 1995 patent term change, Plaintiff's later-filed and later-granted patent will expire before its two earlier-filed patents that covered a broader subject matter. Id. at 24. Defendants argued that the earlier-filed, broader patents should be invalidated under obviousness-type double patenting because they unjustly extend protection over the narrower subject matter of the later-filed, but earlier-expiring patent. Despite some precedent for this theory (a Board of Patent Appeals and Interferences opinion), the Court rejected it, holding that "the later-filed, later-issued . . . patent could not and did not create an 'unjustified timewise extension' of the earlier-filed, earlier-issued . . . patents." Id. at 27 (quoting In re Schneller, 397 F.2d 350, 354 (C.C.P.A. 1968)).
In Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., C.A. 04-1371-LPS (D. Del. Jan. 18, 2011), after a long and contentious litigation involving several patents, Judge Stark recently decided plaintiff’s motion to enhance damages and motion for attorneys’ fees. Judge Stark noted that the factors favoring enhancement include “Fairchild’s deliberate copying, the extent to which Fairchild investigated the scope of the patent, Fairchild’s financial condition, Fairchild’s motivation for harm, and the non-closeness of the case.” Id. at 22. No factor weighed against enhancing damages and factors such as Fairchild’s litigation conduct, lack of attempts to conceal, duration of misconduct and Fairchild’s remedial measures had a neutral effect on the issue of enhancement. Id. Ultimately, Judge Stark doubled the $6 million damages award. Id. Regarding attorneys’ fees, Judge Stark disagreed with plaintiff that this case was one of those “limited” cases justifying a shifting of attorneys’ fees. Id. at 23. Judge Stark noted that “the Court focuses in particular on the actual conduct of the parties during the course of litigating or prosecuting the patent.” Id. Judge Stark determined that Fairchild’s actions did not amount to “bad faith conduct or frivolous pursuit of claims.” Id. at 24.
A recent decision by District Judge Sue L. Robinson sheds light on the Court's supplemental claim-construction practice. In the underlying infringement litigation, the Court issued an opinion on, among others, the parties' proposed constructions and summary judgment motions. By doing so, the Court recognized that several disputed terms could not be addressed in the summary judgment context.
This posture allowed the Court to explain its procedure for addressing claim construction at trial:
"The parties have identified several additional disputed terms that do not find context in the infringement and validity contentions before the court on summary judgment. There is a lack of agreement as to whether the additional terms need construction or may be given their ordinary meaning. Consistent with the court's practice, the parties will present their respective constructions during trial and the court will make its claim construction decision prior to the case going to the jury."
The Court continued:
"Absent notice regarding which claims remain in dispute, the court will instruct the jury that all terms not specifically defined by the court shall be given their plain and ordinary meanings."
On January 14, 2011, a jury returned a defense verdict on all counts in the Arcelormittal France v. AK Steel Corporation, et al. matter. C.A. No. 10-050-SLR, Jury Verdict Sheet (D. Del. January 14, 2011). Specifically, the jury found that none of the three defendants infringed the asserted patent. The jury also found plaintiffs' patents invalid as anticipated and obvious.
Obtaining relief from judgment under Rule 60(b) is normally a difficult exercise, as courts are rightfully reluctant to disturb their own findings. Vacating a judgment under Rule 60(b)(6)'s catch-all provision, which authorizes courts to do so for "any other reason that justifies relief," is even harder. Given the rarity of this type of relief, litigators should take notice of a recent decision by District Judge Sue L. Robinson.
The Court emphasized that "exceptional circumstances" existed to warrant reinstating an earlier decision that granted summary judgment on a contract claim in plaintiff's favor. Specifically, the Court noted how the parties had entered into a patent settlement agreement and stipulated that the Court would retain jurisdiction over its enforcement. When defendant later requested a re-examination before the PTO, an act prohibited by the settlement agreement, plaintiff successfully secured a summary judgment establishing defendant's breach.
Defendant then sought to vacate the summary judgment. According to defendant, the Court never entered the original stipulation, and therefore never acquired jurisdiction to enforce the settlement agreement. Despite defendant's unequivocal intent to confer jurisdiction in the stipulation, the Court noted that Third Circuit precedent required that it vacate the summary judgment decision.
Defendant later agreed that, based on intervening events at trial and on appeal of the underlying infringement claims, the summary judgment should be reinstated. But when plaintiff sought to do so, defendant again retracted its assent, charging that plaintiff failed to timely file its Rule 60 motion and that granting relief now would require separate damages trials on the infringement and contract claims.
The Court, already frustrated with defendant's earlier attack on its subject-matter jurisdiction, rejected defendant's assertion of untimeliness:
"Defendant's arguments regarding resolution of damages and effect on the PTO's reexamination proceedings are of no moment in determining whether relief under Rule 60 is appropriate. Granting the Rule 60 Motion for summary judgment, at this time, does not necessarily require that contract damages be tried separately from patent damages . . . . Establishing contractual liability now instead of later militates in favor of granting the Rule 60 Motion by limiting delay and allowing the court flexibility in scheduling a trial on damages."
The Court also acknowledged that the PTO may benefit from resurrecting defendant's contractual liability:
"There is no reason to deprive the PTO of any benefit, no matter how limited, it may receive from the court's judgment in this matter. That the PTO may not be induced to terminate or suspend reexamination proceedings based on such judgment is of no moment to the equitable principles involved in the issue at bar."
Accordingly, the Court vacated its order that dismissed the contract claim and reinstated the summary judgment in plaintiff's favor. By doing so, the Court provided a useful roadmap for demonstrating "extraordinary circumstances" under Rule 60(b)(6): litigants should emphasize both the relative equities among the parties and the increased judicial efficiency attending the proposed relief from judgment.