January 12, 2011

Special Master decision regarding party access to confidential information and prosectuion bar

In LadaTech, LLC v. Illumina, Inc., C.A. No. 09-627-SLR (Jan. 3, 2011), a recent Special Master decision, Plaintiff wanted its General Counsel, who was also one of three directors of the company, to have access to all confidential information produced in the case. Plaintiff argued that its General Counsel was not a competitive decisionmaker, or in the alternative, the threat of inadvertent disclosure “should not deprive [Plaintiff] of its choice of counsel.” Id. at 2. The Special Master quoted the “competitive decisionmaker” standard from In re Deutsche Bank Trust Co., 605 F.3d 1373, 1378 (Fed. Cir. 2010), i.e. “counsel’s activities, association, and relationship with a client that are such as to involve counsel’s advice and participation in any or all of the client’s decisions (pricing, product design, etc.) made in light of similar or corresponding information about a competitor.” Id. at 4. The Special Master also noted that due to the General Counsel’s “unique role” in the organization, there was a legitimate concern regarding inadvertent disclosure. Id. at 6.

Despite acknowledging that Plaintiff's outside counsel were fully capable of advising their client, and that Plaintiff didn’t indicate how General Counsel’s access to confidential information was vital to the suit, the Special Master decided that “the court should not deny [Plaintiff] the opportunity to meaningfully participate in the prosecution of its case. Id. at 7. However, the Special Master conditioned General Counsel's access to all confidential information on his agreement to a prosecution bar and to forgo engaging in competitive decisionmaking. Id.

LadaTech, LLC v. Illumina, Inc., C.A. No. 09-627-SLR (Jan. 3, 2011)

January 12, 2011

Grape Jury Verdict

One jury verdict slipped through the cracks last month: in Grape Technology Group, Inc. v. Jingle Networks, Inc., C.A. No. 08-408-GMS (D. Del. Dec. 9, 2010), the jury found for that the patents at issue were not invalid, but also not infringed. The time to verdict was under 2.5 years.

Part 1
Part 2

January 7, 2011

Sue L. Robinson: Expert's Deposition Testimony Favored Over Competing Website Article

On Wednesday, District Judge Sue L. Robinson issued a summary judgment decision notable for its assessment of a party's expert evidence. Although the Court eventually granted defendant Cisco's motion for summary judgment of noninfringement, it rejected, as part of the claim construction process, Cisco's attempt to rely on an article written by its adversary's expert:

"Defendant does not cite its own expert in support of its argument [on the claim in issue]. Instead, defendant cites wi-fiplanet.com, a website that contains an article written by plaintiff's expert . . . . The court disagrees that this article supports defendant's contention . . . . The article does not say that a person of skill in the art would consider a controller to be separate from the access point, nor does it discuss the meaning of the term 'access point' as used in the '858 patent."

According to the Court, plaintiff's expert "directly contradict[ed] defendant's argument" at his deposition. In the evidentiary battle of the article versus the deposition, the deposition won.

Autocell Labs. Inc. v. Cisco Sys. Inc., C.A. No. 08-760-SLR (D. Del. Jan. 5, 2011) (Robinson, J.).

January 7, 2011

Judge Sue L. Robinson: Motion to Transfer False Marking Case GRANTED

Judge Robinson transferred a false marking case where one of the plaintiffs and the defendant are engaged in patent infringement over four of the same patents at issue in the false marking case (even though it was not the first-filed action), the defendant is not a Delaware corporation and maintains only a small market for its goods in Delaware. Brinkmeier v. Exergen Corporation, C.A. No. 10-176-SLR, Memo. Order (D. Del. Jan. 3, 2011).

Brinkmeier v. Exergen Corporation, C.A. No. 10-176-SLR, Memo. Order (D. Del. Jan. 3, 2011).

December 30, 2010

Judge Stark: Third party motion for access to confidential documents DENIED

Judge Stark recently considered third party Anvik Corporation’s motion for a limited intervention to obtain copies of evidence in LG Display Co., Ltd. v. AU Optronics Corp, et al., C.A. No. 06-726-LPS (D. Del. Dec. 29, 2010). Anvik filed a patent infringement action in the Southern District of New York against the parties to this litigation in the District of Delaware. Anvik contended that certain documents filed under seal were relevant to its claims in the New York case involving inducement of importation of the same products at issue in Delaware. Id. at 1. LG and AUO opposed Anvik’s motion, primarily because granting Anvik’s motion would modify the hotly contested Protective Order in the Delaware case. Id. Moreover, AUO argued that it had already produced documents from the Delaware case that overlapped with the New York action and Anvik had not identified what other information it seeks. Id. at 2.

Judge Stark granted Anvik’s motion to intervene, but ultimately found that Anvik had “not demonstrated that modification of the Protective Order is warranted.” Id. at 5-6. “The parties’ reliance on the Protective Order weighs in favor of the Court preserving the confidentiality of the underlying documents sought by Anvik. . . . Anvik has not demonstrated that the disclosure of the confidential materials would aid the discovery process in the New York action[.]” Id. at 6. In addition, Judge Stark disregarded Anvik’s argument that it was entitled to the documents under the public right of access to judicial records because such argument was argued for the first time in Anvik’s reply brief. Id. at 7.

LG Display Co., Ltd. v. AU Optronics Corp, et al., C.A. No. 06-726-LPS (D. Del. Dec. 29, 2010)

December 29, 2010

Leonard P. Stark: Stay Pending Reexamination Granted

District Judge Leonard P. Stark issued a decision on Monday staying an infringement action in favor of two pending reexamination proceedings. The Court noted that a related Delaware action, which involves the same plaintiffs asserting the same patents against different defendants, has already been stayed. Given this circumstance, the Court highlighted the judicial economy concerns of allowing the second action to proceed:

"Permitting Plaintiffs to pursue their claims against [defendant], while their essentially identical action against the ten other defendants in the related action is stayed, would undermine judicial economy. Such a course of action would deprive the Court of the opportunity to consolidate the related actions for discovery, Markman proceedings, motions practice, and, possibly, trial."

Enhanced Security Res. LLC v. Juniper Networks Inc., C.A. No. 10-605-LPS (D. Del. Dec. 27, 2010) (Stark, J.).

December 29, 2010

Magistrate Judge Joel Schneider: Production of Translated Documents

Magistrate Judge Schneider sitting by designation from the District of New Jersey recently held that a plaintiff is required to produce translated documents for any document it translates in the ordinary course of business, as well as all answers to discovery and accompanying summaries and charts. Evonik Degussa GmbH v. Materia Inc., C.A. No. 09-636-NLH/JS, Letter Order (D. Del. Dec. 21, 2010). The plaintiff is not required to produce translated copies of documents that were translated solely for the purposes of litigation because they are protected by the work product doctrine. Id. Although plaintiff is not required to produce the document, they are required to identify the nature, type and categories of the foreign documents it produced, specify by Bates number the documents responsive to defendants’ document requests and identify the sources of documents. Id. at 2. This information will allow the defendants to make “an informed decision whether to translate a document.” Id.

Evonik Degussa GmbH v. Materia Inc., C.A. No. 09-636-NLH/JS, Letter Order (D. Del. Dec. 21, 2010).

December 29, 2010

Jury Verdict in ICU Medical, Inc. v. Rymed Technologies, Inc., C.A. No. 07-468-LPS

A jury recently returned a verdict upholding the validity of plaintiff's patents and finding that defendant's original and modified accused products literally infringed two of three patents-in-suit, and infringed under the doctrine of equivalents. The jury also found that defendant induced infringement and engaged in contributory infringement. The jury found, however, that defendant's infringement was not willful. Damages were bifurcated in this case.

ICU Medical, Inc. v. Rymed Technologies, Inc., C.A. No. 07-468-LPS (D. Del.)

December 23, 2010

Robert F. Kelly: Construing the Claims of DNA-Sequencing Patents

Senior Judge Robert F. Kelly recently issued a claim-construction decision that addressed several patents in the DNA-sequencing field. In particular, the Court construed the following terms and phrases:

"Amplification system"
"Polymerase enzyme system"
"Aqueous liquid phase that includes a cell-free, enzymatic, exponential nucleic acid amplification system"
"Aqueous liquid phase that includes a cell-free nucleic acid polymerase enzyme system"
"Forming a liquid mixture of the sample and said amplification system"
"Completely entrapping"
"Distributing in said aqueous liquid phase"
"Distributing in said amplification system"
"A preformed immobilized medium"
"Nucleotide substrate"
"Optical characteristic of each microparticle"
"Optical characteristic of said microparticle"
"With sufficient resolution for individual microparticles to be distinguished"
"Signal tracking means effective to correlate the optical signals from each of the microparticles in each of the sequence of digital images with said center of said microparticle"
"Tracking position of the microparticles"
"Processing the plurality of digital images, wherein said processing includes correlating the optical signals generated at each microparticle with its corresponding image in each of the plurality of digital images"
"Generating sequence reads"
"An array of polynucleotide molecules"
"Which molecules can be individually resolved by optical microscopy"
"Arraying the fragments such that different fragments can be individually resolved by optical microscopy"
"Population of polynucleotide fragments"
"Ligating together the cleaved ends produced by said removing"
"Ligating the pair of segments together"

The Court also declined to construe the following:

"Thin layer"
"Incubating said immobilized medium"
"Incubating said trapped mixture"
"Wherein the average distance between the nearest solid surfaces is smaller than the distance which the synthesized nucleic acid product can migrate by diffusion during the reaction"

Life Techs. Corp. v. Illumina Inc., C.A. No. 09-706-RK (D. Del. Dec 15, 2010) (Kelly, S.J.).

December 23, 2010

Judge Leonard P. Stark: Motion to Stay Pending Reexam DENIED

In what appears to be Judge Stark's first decision on a motion to stay pending reexamination as an Article III judge, he denied the defendants' request to stay the action pending an inter partes reexamination. Cooper Notification, Inc. v. Twitter, Inc., C.A. No. 09-865-LPS, Memo. Order (D. Del. Dec. 13, 2010). Plaintiff, relying on Judge Stark's decision in St. Clair Intellectual Property Consultants, Inc. v. Fujifilm Holding Corp., argued that defendants' failed to "articulate a clear hardship or inequity" that they would suffer without the stay. Id. at 3. The Court noted that this decision does not require a showing of hardship or inequity in proceeding with litigation for the court to grant a stay. Id. at 4.

The Court further found that the issues in the litigation and the reexamination did not overlap completely, plaintiff expressly represented that it would not amend the claims during reexamination and the case has already been set for trial. Id. at 5-6.

It thus appears that Judge Stark will continue with the District's recent trend in denying motions to stay.

Cooper Notification, Inc. v. Twitter, Inc., C.A. No. 09-865-LPS, Memo. Order (D. Del. Dec. 13, 2010).