A few days after discussing the factors that the court will weigh to determine if a stay pending reexamination is warranted on the eve of trial (see Belden opinion), Judge Robinson issued a second opinion denying a stay. In this case, the discovery period concluded two years prior and Judge Robinson’s claim construction and summary judgment decisions had “been vetted through the Federal Circuit.” Id. at 4. Although the motion to stay was made years into the litigation, no trial date was set, unlike in Belden where the oral motion to stay was made at the pretrial conference. However, the movant filed its stay motion only after the reexaminations were in the appeal process and after the Federal Circuit had vacated Judge Robinson’s order that defendant does not infringe. Id. at 4-5.
Earlier this month, Judge Robinson issued an opinion in Belden Techs., Inc. v. Superior Essex Commc'ns LP, C.A. No. 08-63-SLR (D. Del. Sept. 2, 2010) (mem.), denying defendant Superior Essex's motion for a stay pending re-examination of the patents in suit.
The Court weigned the factors in favor and against a stay, applying Enhanced Security Research, LLC v. Cisco Sys., Inc., 2010 WL 2573925, at *3 (D. Del. June 25,2010). Some of the factors included:
- The reexam addresses the same issues, so it could simplify the trial. Id. at 4.
- The re-examinations weren't requested until "approximately 17-20 months" after the start of the litigation, which also cut against a stay. Id. at 4.
- "The untimeliness of Superior Essex's oral motion clearly cuts against a stay." Id. at 4.
- "[O]nly those reexamination proceedings that have been substantially completed will weigh in favor of a stay," while the reexamination in this case is still pending and subject to appeal. Id. at 6.
- The Patent Office has not yet issued a Right of Appeal Notice, and "Belden may statistically wait as long as three years after receiving its [Right of Appeal Notices]; this factor cuts against the grant of a stay." Id. at 6.
- The fact that Belden did not seek a preliminary injunction cut in favor of a stay, because it indicates that the companies are not direct competitors. Id. at 7.
The Court found that the balance did not favor either party, so it denied the stay.
Controlling costs and increasing efficiency are vital components of any patent-protection strategy. A recent memorandum order by magistrate judge Mary Pat Thynge highlights these concerns in the context of reexamination. By directing that a patentee's trial counsel may participate in a later reexamination even after viewing a defendant's confidential information, the Court avoided an economically disruptive outcome for the patentee.
In particular, the Court emphasized that "[f]orcing plaintiff to rely on less knowledgeable counsel during reexamination would . . . increase costs and duplicate effort." It would also create litigation inefficiencies:
"[B]ecause reexamination (especially inter partes reexamination) is an increasingly important venue for challenging a patent's validity, preventing trial counsel exposed to defendants' confidential information from fully participating in reexamination proceedings would force plaintiff to split its resources between two fronts of the same war."
Judge Robinson: Plaintiff must plead failure to mark with facts to show defendant did not have reasonable belief that items were properly marked
In Brinkmeier v. BIC Corp., et al., C.A. Nos. 09-860-SLR, 10-01-SLR (D. Del. Aug. 25, 2010), Judge Robinson recently granted defendants’ motions to dismiss for failing to state a claim under Federal Rule of Civil Procedure 12(b)(6). Defendants BIC Corporation and BIC USA Inc. (collectively, “BIC”) argued that plaintiff’s complaint seeking a declaratory judgment that BIC falsely marked products failed to adequately plead allegations of fraud as required under Rule 9(b). Id. at 1-2. Noting the split among courts regarding the applicability of the heightened pleading standards of Rule 9(b) to failure to mark claims, Judge Robinson held that section 292 claims must be pled with particularity. Id. at 16-17. Granting BIC’s motion to dismiss, Judge Robinson noted that “[t]he burden ultimately lies with the party who asserts false marking to show, by a preponderance of the evidence, that the accused party did not have a reasonable belief that the articles were properly marked.” Id. at 19. However, plaintiff “pled no facts to show BIC intentionally attempted to deceive the public[,]” and, despite plaintiff’s assertions, “allegations that BIC is sophisticated and employs experienced counsel do[es] not suggest intent to deceive.” Id. at 20.
In a case assigned to Judge Leonard P. Stark, he recently issued an Order scheduling a Rule 16 teleconference and attached a draft copy of the Rule 16 form scheduling order. This form is not yet posted to the Court's website, but will likely be his form scheduling order going forward. The order appears to combine some practices of each of his colleagues on the bench as well as former judges from this district. Here are some of the interesting sections:
- Deposition testimony is limited to a total number of hours proposed by the parties (instead of number of depositions)
- Judge Stark does not adopt a formal exchange of contention interrogatories in his order (compare to Judge Robinson's form Rule 16 order), but does state that the "Court encourages the parties to serve and respond to contentions early in the case."
- A provision that is unique to his form is paragraph 4 which applies to the case protective order. He requires that any proposed order include the following a paragraph set forth in the form order that applies to other proceedings.
- Judge Stark has a provision for the parties to provide tutorials on the technology at issue via submission of a videotape or CD of not more than 30 minutes with the ability for the opposing party to submit a short written comment on the other side's submission.
- Case dispositve motions are to be briefed according to the local rules.
A copy of his form order is attached below.
Yesterday, district judge Sue L. Robinson issued a decision that construed claims in several patents related to high-performance data cables and associated methods for making those cables. The Court construed the following terms:
"Dielectric pair separator"
"Grooves" and "Channels"
"Contacting each projection"
The Court also declined to construe the following phrases:
"A first die which aligns the plurality of transmission media with surface features of the core."
"An outer jacket that maintains the plurality of twisted pairs of conductors in position with respect to the non-conducive central core."
Also see the Court's accompanying Memorandum Opinion on summary judgment, which includes an interesting discussion of the marking statute.
On Wednesday, Judge Stark issued what looks to be his first order signed as a United States District Judge (at least the first to be posted to the Court's website): Allergan Inc. v. Barr Laboratories Inc., C.A. No. 09-333-SLR-LPS (D. Del Aug. 18, 2010).
The order deals with discovery and privilege issues. Plaintiff Allergan inadvertently produced a number of allegedly privileged documents, including scientific data and part of the invention record for a relevant patent. Some of the documents had already been inadvertently produced once before, and successfully recalled, in an earlier litigation against the same defendants.
Defendant Barr Laboratories apparently argued (its filings are under seal) that this double inadvertent disclosure constituted waiver or at least indicated a lack of adequate precautions to protect privileged information under the protective order. Allergan responded that "such mistakes are unfortunate, but not unheard of," and stated that the documents slipped by despite "exhaustive privilege screen procedures." See July 30, 2010 and Aug. 13, 2010 letters from Allergan to the Court.
The Court agreed with Allergan, holding that
Allergan has not waived the attorney-client privilege with respect to the documents at issue. Allergan had in place sufficient procedural protections to comply with its obligations to review materials for privilege prior to production. The amount of inadvertently produced privileged materials is minuscule in comparison with the size of Allergan's overall production.Allergan, at 1. The Court did not specifically address the double-inadvertent-production argument.
As to the technical documents, Barr apparently sought access to the data contained within the documents on the grounds that it was not a privileged part of the communication. The Court rejected this request under an application of In re Spalding Sports Worldwide, Inc., 203 F.3d 800, 805 (Fed. Cir. 2000), which held that invention records and the technical information within them are privileged.
Earlier this month, Judge Robinson issued a memorandum opinion in Girafa.com, Inc. vs. Smartdevil, Inc., C.A. No. 07-787-SLR (D. Del. Aug. 8, 2010). Girafa had initially brought a patent infringement action against a series of defendants, but Judge Robinson granted a motion for summary judgment of non-infringement in September 2009, and the case was then dismissed by stipulation with respect to the defendants other than Smartdevil.
In January, Girafa filed a motion for default judgment as to Smartdevil. Smartdevil is based in Canada, and its owner is apparently representing it pro se due to its "inability to procure reasonable representation" because "Smartdevil could not afford a minimum retainer fee of $50,000." Id. at 3-4. The Court refused to enter a default judgment. While service of the complaint was proper, Girafa failed to show sufficient prejudice, and Smartdevil has presented "facially meritorious" invalidity and non-infringement defenses. Id. at 4. Smartdevil also presented some evidence of its financial inability to afford counsel, and the Court held that Smartdevil's delay was not attributable to bad faith and did not constitute culpable conduct.
Things are moving quickly here in the District of Delaware. In a flurry of docket activity the past 24 hours, it appears that cases previously assigned to Judge Farnan (who retired from the bench on July 31, 2010) are being reassigned to Judge Leonard P. Stark. Those cases are seeing docket entries containing text similar to the following:
"Case reassigned to Judge Leonard P. Stark. Please include the initials of the Judge (LPS) after the case number on all documents filed."