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.
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.
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:
"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"
"Distributing in said aqueous liquid phase"
"Distributing in said amplification system"
"A preformed immobilized medium"
"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:
"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"
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.
Last week, Judge Robinson denied a Rule 56(d) motion by Acceleron in Acceleron, LLC. v. Hewlett-Packard Co., C.A. No. 10-128-SLR (D. Del. Dec. 16, 2010). Faced with a motion for summary judgment of non-infringement, Acceleron sought additional discovery under Rule 56(d) to support its contributory infringement and inducement claims. Acceleron had previously sought the same information, but had agreed to narrow the requests after HP protested and the Court determined that the requests were too broad. Since then, fact discovery has closed, and HP brought a summary judgment motion based on the lack of evidence for contributory infringement and inducement.
The Court denied Acceleron's Rule 56(d) motion, stating that "the court previously determined that these discovery requests were too broad," that "Acceleron [had] represented to the court that every outstanding discovery issue relevent to the instant motions was resolved," and that "Acceleron has had ample opportunities to seek the discovery it requests, and it is inappropriate at this stage of the proceedings to reopen fact discovery." Id. at 6-7.
Yesterday, district judge Sue L. Robinson issued a decision construing two terms and phrases of a patent related to the production of steel. Specifically, the Court construed the following:
"Hot-rolled steel sheet"
"The steel has a very high mechanical resistance"
Of note in the opinion is the procedural posture. At the outset, the Court recounted how the parties "agreed to forego summary judgment practice." Instead, the parties sought and obtained approval of an expedited trial schedule.
On Wednesday, Judge Sleet issued a claim construction order in Allergan, Inc. v. Watson Laboratories, Inc., C.A. No. 09-51 (D. Del. Dec. 8, 2010) (order). The following ten terms were construed:
- "Delayed release"
- "Particulates, at least a portion of which releases trospium chloride in the lower gastrointestinal tract"
- "Provides steady state blood levels of trospoum that are comparable to steady state blood levels of trospium achieved with twice daily administration of 20 mg immediate release trospiumm tablets"
- "Maximum toxic blood or plasma concentration"
- "Minimixing the occurrence of adverse side effects following oral administration of an immediate release formulation containing 40 mg of trospoum chloride"
- "Minimum therapeutically effective blood or plasma concentration"
- "In which at least a portion of said trospium chloride is contained in a delayed release formulation, which releases trospium chloride in the lower GI tract."
- "Release controlling polymer"
In analyzing the summary judgment motions of the parties in Kenexa Brassring Inc. v. Taleo Corp., Judge Robinson needed to address whether the groups of accused products “function in the same manner for purposes of infringement.” C.A. No. 07-521-SLR, Memo. Op., at 9 (D. Del. Nov. 18, 2010). The defendants responded to a contention interrogatory asking why “each” product did not infringe by referring to the products “collectively” and did not explain how any product functioned differently from the other. Id. at 6. The 30(b)(6) designees also testified that they could not think of any distinguishing features between the products. Id. at 6-7. The Court found that defendants “cannot group their products together when asked whether they differ, then turn around and claim that plaintiff has failed to meet its burden of showing that they operate in the same way.” Id. at 10-11.
Last week, Chief Judge Gregory M. Sleet issued a decision that construed the claims of an inhalation-anesthetic patent. The Court construed five terms and phrases in the underlying ANDA litigation:
"A volatile liquid anaesthetic"
"A tubular outlet through which said volatile liquid anaesthetic agent can leave said reservoir and vapor can enter said reservoir when said valve is open"
"Means for forming a connection between said container and a vaporizer to retain said container on the vaporizer, said means comprising a formation formed on the outer surface of said tubular outlet which presents a surface facing in a direction substantially opposite to the direction in which said volatile liquid anaesthetic agent passes out of said reservoir through said outlet for latching with a cooperating surface provided at the inlet to the vaporizer to which said volatile liquid anaesthetic agent is to be supplied"
In QVC, Inc. v. Your Vitamins, Inc., C.A. No. 10-094-SLR (D. Del. Nov. 29, 2010), Judge Robinson granted a motion to transfer in a false advertising case after it was revealed that the parties were bound by an agreement with a forum selection clause and a choice of law provision. Judge Robinson recognized that "Forum selection clauses are presumptively valid and are entitled to great weight," id. at 4-5, and that the other related factors on the whole favored transfer. The case was transferred to the Eastern District of PA.
The presence of an "unambiguous" forum selection clause distinguishes this case from other recent rulings on motions to transfer, which have generally turned on the degree of connection to the forum.