The Delaware IP Law Blog's very own Andrew Lundgren was honored by Young Conaway Stargatt & Taylor, earlier this year for his extraordinary pro bono contributions to the community and bar. In recognition of these contributions he was awarded the 2008 William F. Taylor Award (Associate Pro Bono Award).
In 2007 and 2008 Andrew logged almost 300 hours working with Young Conaway Partner John Shaw in a Prisoner Civil Rights matter. This case is a Federal Civil Panel assignment from the District Court and involves First Amendment retaliation claims.
In 2008, Andrew also served as an Associate Board Member for the Delaware Board of Bar Examiners, assisted on a Delaware Volunteer Legal Services matter, and continued to serve on the Board of the St. George's Society. He also recently completed a two year term as the Chair of the DSBA New Lawyers Section. Over all, in 2008 Andrew has devoted over 240 hours to YCS&T's pro bono projects.
Can a plaintiff substitute in the correct party to cure a lack of subject matter jurisdiction once the defendant has moved to dismiss? According to District of New Jersey judge Noel L. Hillman, sitting by designation, the answer is no.
In the underlying litigation, Vianex Delaware LLC brought suit for copyright infringement. The only trouble was that this particular Vianex entity did not own the copyright and thus had no standing to sue.
After defendant moved to dismiss, Vianex sought to amend its complaint to substitute the correct plaintiff. The Court rejected the maneuver, noting that it lacked authority to permit the amendment:
"It has long been the case that the jurisdiction of the court depends upon the state of things at the time of the action brought. This time-of-filing rule is hornbook law (quite literally) taught to first-year law students in any basic course on federal civil procedure."
Thus, "[b]ecause Vianex Delaware LLC did not have standing to assert its claims when it filed suit, the Court does not have subject matter jurisdiction to consider anything filed thereafter."
The dictates of subject-matter jurisdiction are strong enough to withstand what the Court itself acknowledged may be a "technical and wasteful exercise" in dismissing the complaint. Given the strength of this command, there may be a lesson beyond caveats about drafting pleadings. When analyzing a Court's foundational authority to hear our cases, all facets of subject-matter jurisdiction must be at the top our list.
Judge Robinson recently construed the following claim terms in patents related to technology involving casino gaming devices:
- "bonus"
- "bonus play period"
- "command"
- "message"
- "Issuing a 'command' 'responsive to a predetermined event'"
- "Issuing a 'command' or 'message' 'responsive to a predefined event'"
- "Issuing a command over the network to each of said preselected gaming devicdes responsive to initiation of the bonus play period."
- "Paying 'in accordance with' the 'command' or 'message'"
- "Issuing a command over the network including data establishing criteria to cause a bonus to be paid via one of said selected gaming devices upon the occurrence of a predetermined event."
- "Generating a message including data establishing criteria to cause a bonus to be paid via one of said selected gaming devices upon the occurrence of a predetermined event."
- "Transmitting a pay command from the controller to the gaming device upon the occurrence of the predetermined event."
- "Paying the bonus via the gaming device responsive to the receipt of the pay command."
- "Transferring promotional credit in the account to the gaming device."
4/29: Mosaid Technologies, Inc. v. Shoretel Inc. (patent infringement)
4/29: Pfizer Inc., Warner Lambert Company, LLC, CP Pharmaceuticals International CV and Northwestern University v. Actavis Elizabeth LLC and Actavis Inc. (patent infringement)
4/29: Pfizer Inc., Warner Lambert Company, LLC, CP Pharmaceuticals International CV and Northwestern University v. Alphapharm Pty Ltd. and Mylan Pharmaceuticals Inc. (patent infringement)
4/29: Pfizer Inc., Warner Lambert Company, LLC, CP Pharmaceuticals International CV and Northwestern University v. Cobalt Laboratories Inc. and Cobalt Pharmaceuticals, Inc. (patent infringement)
4/29: Pfizer Inc., Warner Lambert Company, LLC, CP Pharmaceuticals International CV and Northwestern University v. Lupin Ltd. and Lupin Pharmaceuticals Inc. (patent infringement)
4/29: Pfizer Inc., Warner Lambert Company, LLC, CP Pharmaceuticals International CV and Northwestern University v. Sandoz Inc. (patent infringement)
4/29: Pfizer Inc., Warner Lambert Company, LLC, CP Pharmaceuticals International CV and Northwestern University v. Sun Pharma Global Inc., Sun Pharmaceutical Industries Ltd. and Sun Pharmaceutical Industries Inc. (patent infringement)
4/29: Pfizer Inc., Warner Lambert Company, LLC, CP Pharmaceuticals International CV and Northwestern University v. Teva Pharmaceuticals USA, Inc. and Teva Pharmaceutical Industries Ltd. (patent infringement)
4/29: Pfizer Inc., Warner Lambert Company, LLC, CP Pharmaceuticals International CV and Northwestern University v. Wockhardt Limited and Wockhardt USA, LLC (patent infringement)
4/29: Pronova BioPharma Norge AS v. Apotex Corp. and Apotex Inc. (patent infringement)
4/29: Pronova BioPharma Norge AS v. Par Pharmaceutical Inc. and Par Pharmaceutical Companies, Inc. (patent infringement)
4/30: Alcon Research Ltd. v. Barr Laboratories Inc. (patent infringement)
4/30: Hologic Inc. and Suros Surgical Systems Inc. v. Ethicon Endo-Surgery LLC and Ethicon Endo-Surgery Inc. (patent infringement)
5/4: ePlus Inc. v. Perfect Commerce Inc., SciQuest Inc. and Lawson Software Inc. (patent infringement)
5/6: YMax Communications Corp. v. Globalstar Inc. and Spot LLC (patent infringement)
5/7: Allergan Inc. v. Barr Laboratories Inc. (patent infringement)
5/12: Netstal-Maschinen AG v. Davis-Standard, LLC (trademark infringement)
Judge Farnan recently construed the claim terms in a patent related to a combination of "(1) the (-) -enantiomer of an antiviral agent known as BCH-189...and (2) the well-known HIV antiviral agent AZT." Glaxo Group Ltd. v. Teva Pharmaceuticals USA, Inc., C.A. No. 07-713-JJF, Memo. Order (D. Del. Apr. 30, 2009). The following claim terms were construed:
- "method for the treatment of a mammal including man, suffering from or susceptible to infection by HIV" (the Court found no construction necessary)
- "form of dosage unit"
- "pharmaceutically acceptable carrier"
The parties also submitted the terms "comprises" and "includes" for construction. The Court chose to adopt a standard jury instruction either prepared by the AIPLA or one agreed upon by the parties as to the meaning of those terms. Id. at 3-4.
A plaintiff's place of residence will not excuse the reasonable diligence requirement to discover a trade secret claim under 6 Del. C. Section 2006. In fact, a foreign plaintiff will be deemed to be on notice once a patent is filed in the United States containing the trade secret and therefore any trade secret claim must be brought within three years following the filing date of that patent. Raza v. Siemens Medical Solutions USA, Inc., C.A. No. 06-132-JJF, Memo. Op. (D. Del. Apr. 16. 2009).
Judge Farnan found an English professor's declaration opining on the proper function of a comma to be admissible under Rule 702 as part of the claim construction process. To the extent a party argues that it contradicts the intrinsic evidence or the expert does not have relevant technical expertise, however, it will impact the weight the Court gives the opinion. American Patent Development Corporation, LLC v. Movielink, LLC, C.A. No. 07-605-JJF, Memo. Op. (D. Del. Mar. 27, 2009).
The Court also construed the following terms found in the patent-in-suit that relates to a "simple, inexpensive system for limiting the use of a downloaded video program purchased by a customer":
- "a digital data stream comprising said video product, and data establishing a limit for authorized viewing of said video product"
- "a digital data stream comprising said video product, data establishing a time period during which viewing of said video product is authorizied"
- "central station"
- "decoding said data establishing a limit"
- "comparing an output of a local clock signal generator with said result of said decoding step"
- "storing a result of said decoding step"
- "erasing said video product"
- "user site" (the Court found no construction necessary)
- "video product" (the Court found not construction necessary)
- "data establishing a limit for authorized viewing of said video product" (the Court found no construction necessary)
Of note, plaintiff based some proposed constructions on dictionary definitions that postdated the filing of the patent and the Court refused to adopt constructions based on those proposed definitions. Id. at 28.
Chief Judge Sleet recently granted, in part, plaintiff’s motion to enforce the parties’ settlement agreement to dismiss the case. Rohm and Haas Electronic Materials, LLC v. Honeywell International, Inc., C.A. No. 06-297-GMS, Memo. (D. Del. Apr. 16, 2009). The settlement agreement was the product of much negotiation. Id. at 2-6. Counsel for both parties advised the Court of the agreement and that signed agreements were being exchanged. Id. at 6. Finally, the agreement was memorialized by a joint letter filed with the Court whereby counsel also stated that a stipulation of dismissal would be submitted. Id. Before entering into settlement negotiations, the PTO granted defendant’s request to have plaintiff’s patents reexamined. Id. at 2. Amidst the negotiations for settlement, plaintiff met with the PTO to discuss the pending reexaminations. Subsequently, the PTO sent a copy of the “interview summary” to defendant at the address they had on file. Id. at 4. Defendant’s refusal to honor the settlement agreement stemmed from plaintiff’s interview with the PTO and failure to disclose the interview. Id. at 8. Chief Judge Sleet determined that a final settlement agreement had been reached based on the extensive negotiations, and the communications with the Court that the agreement had been “finalized.” Id. 10-11. The fact that the agreement had not been signed did not mean the agreement was not finalized, the parties conduct was evidence that the agreement was intended to be a final agreement. Moreover, plaintiff had no duty to disclose the PTO interview to defendant because the interview was a “non-event.” Id. at 13-14.
4/4: Mallinckrodt Inc., Liebel-Flarsheim Co. v. E-Z-EM Inc. and ACIST Medical Systems, Inc. (patent infringement)
4/6: Perren-Vibes Music, Inc., Universal Polygram International Publishing, Inc., Roger Ball, Alan Gorric and Owen McIntyre D/B/A Average Music, Stone City Music, Bleu Disque Music, Co., Inc., WB Music Corp., Webo Girl Publishing Co., Sons of K'OSS Music, Inc., Girlsongs and Music Sales Corporation v. 32 Paws, Inc. and John Berdini (copyright infringement)
4/7: Eidos Communications LLC and Message Routes LLC v. Skype Technologies, SA and Skype Inc. (patent infringement)
4/9: Wyeth v. Cadila Healthcare Limited and Zydus Pharmaceuticals (USA) Inc. (patent infringement)
4/9: Meda Pharmaceuticals Inc. v. Sun Pharmaceutical Industries Ltd. (patent infringement)
4/13: Neev v. Therative Inc. (patent infringement)
4/20: Brinkmeier v. Graco Children's Products Inc. (patent infringement)
4/21: Tyco Healthcare Group v. C.R. Bard, Inc. and Davol, Inc. (patent infringement)
4/21: Schering-Plough Healthcare Products Inc. v. Neutrogena Corp. (patent infringement)
4/22: Eli Lilly & Co. and The Trustees of Princeton University v. Barr Laboratories, Inc. (patent infringement)
4/23: JPMorgan Chase Bank, N.A. v. LML Payment Systems Corp. and Beanstream Internet Commerce Inc. (patent infringement)
4/23: Bone Care International LLC and Genzyme Corp. v. Eagle Pharmaceuticals, Inc. (patent infringement)
4/23: Pronova BioPharma Norge AS v. Teva Pharmaceuticals USA, Inc. and Teva Pharmaceutical Industries Ltd. (patent infringement)
4/24: HRP Creative Services Co., LLC v. FPI-MB Entertainment, LLC (trademark infringement and unfair competition)
4/24: Novartis Pharmaceutical Corp., Novartis International AG and Novartis International Pharmaceutical Ltd. v. Teva Pharmaceuticals USA, Inc. (patent infringement)
4/24: Novartis Pharmaceutical Corp., Novartis International AG and Novartis International Pharmaceutical Ltd. v. Watson Pharmaceuticals Inc. and Watson Laboratories, Inc. (patent infringement)
4/24: Novartis Pharmaceutical Corp., Novartis International AG and Novartis International Pharmaceutical Ltd. v. Anchen Pharmaceuticals, Inc. (patent infringement)
In a recent case, Defendant Tivo, Inc. (“Tivo”), moved the Court to dismiss Plaintiffs’ (collectively, “Echostar”) case pursuant to the Court’s power under the Declaratory Judgment Act. Dish Network Corp. v. Tivo, Inc., C.A. No. 08-327-JJF, Memorandum Opinion (D. Del. Mar. 31, 2009).
The backstory … Tivo successfully sued Echostar for patent infringement before Judge Folsom in the Eastern District of Texas. Echostar redesigned its products and alleged that its redesigned products no longer infringed Tivo’s patents. Tivo disagreed and pursued a contempt action before Judge Folsom in Texas. Id. at 2. Meanwhile, Echostar brings this action in the District of Delaware to “remove the ‘cloud’ of uncertainty” surrounding its products.
The conflict begins … Judge Farnan begins his analysis of Tivo’s motion to dismiss with a hint of foreshadowing. Judge Farnan points out that Tivo “only” argues the Court should “exercise its discretion to decline jurisdiction over the instant declaratory judgment suit.” Id. at 6. Nevertheless, the Court is “unpersuaded” by Tivo’s arguments for dismissal stating that the only issue is whether there is enough of a difference between Echostar’s redesigned products and the original infringing products so that the proper forum for adjudication is the contempt proceedings before Judge Folsom in Texas. Id. at 7-8.
The plot thickens … Judge Farnan denies Tivo’s motion because whether Tivo can show a “colorable difference” between the products is a decision best made by Judge Folsom but not an “adequate basis” upon which the case can be dismissed. Id. at 9. The story climaxes when Judge Farnan, sua sponte, raises the idea to transfer the case to the Eastern District of Texas, reminding Tivo that the idea of “an alternative motion to transfer” should have been raised by them “with the instant [m]otion.” Id. at 10.
Moral of the story … never forget to give the Court the basis to find in your favor.
