October 15, 2010

Judge Thynge: Motion to Transfer Denied

Earlier this week, in Carl Zeizz Meditec, Inc. v. Xoft, Inc., C.A. No. 10-308-LPS-MPT (D. Del. Oct. 13, 2010), Judge Thynge issued a report and recommendation that defendant Xoft's motion to transfer be denied. According to Judge Thynge, "Xoft is incorrect to suggest that mere incorporation in Delaware represents insufficient public interest to litigate in Delaware. As stated earlier, 'Delaware has an interest in litigation regarding companies incorporated within its jurisdiction.'" Id. at 9. Thus, because defendant is incorporated in Delaware, and the other factors "do not strongly favor transfer," the motion was denied. Id. at 9-10.

This is consistent with the actions of other Delaware judges, who generally hold that a defendant's incorporation here is enough to deny a motion to transfer, absent other factors. Other judges, sitting by designation, seem to hold the other way. See, for example, Judge Pisano's two grants of motions to transfer, and his statement that "the lack of connection to Delaware deems the [Defedant's incorporation here] of less significance." Mekiki Co., Ltd., v. Facebook, Inc., C.A. No. 09-975 (JAP), at 7 (D. Del. June 7, 2010))

Carl Zeizz Meditec, Inc. v. Xoft, Inc., C.A. No. 10-308-LPS-MPT (D. Del. Oct. 13, 2010)

October 6, 2010

Chief Judge Sleet: Post-Trial Briefs Must Only Contain Evidence Presented at Trial

In a recent post-trial opinion, Chief Judge Gregory M. Sleet touched on a host of issues, including obviousness, indefiniteness, inequitable conduct, double patenting, and infringement. Beyond the substantive analysis of the patents-in-suit, the Court also answered an equally important procedural point for the litigator: which evidence may be included in post-trial proposed findings of fact and conclusions of law.

According to the Court, only the evidence presented at trial:

"The court notes for the benefit of future parties . . . that the court's pre-trial order that all objections to exhibits are overruled without prejudice - thus allowing each party to object in real-time - was not intended to have the effect that the plaintiffs assert. The parties' post-trial briefs should be based only on evidence actually presented at trial, and not any evidence that could have been presented at trial."

See Order, at n.1.

Aventis Pharma S.A. v. Hospira Inc., C.A. No. 07-721-GMS (D. Del. Sept. 27, 2010) (Sleet, C.J.).

October 6, 2010

Judge Robinson: Motion to Dismiss in Belden Case Results In Sua Sponte Transfer of Venue

In Belden Technologies, Inc. v. LS Corp., C.A. No. 08-823-SLR (D. Del. Sept. 30, 2010), Judge Robinson granted a motion to dismiss contesting proper jurisdiction and venue, but only "to the extent that the present action shall be transferred to the United States District Court for the District of New Jersey." The Court found that venue was lacking because of neither of the defendants have an established place of business in Delaware. Id. at 19. Interestingly, neither party had argued for transfer to New Jersey; instead, the Court determined sua sponte that transfer was appropriate as an alternative to dismissal, id. at 19, and determined that New Jersey was the appropriate venue based on the fact that one of the defendants is headquartered there, while another maintains a warehouse there. Id. at 20.

Along the way to that conclusion, the Court also addressed personal jurisdiction, and the interaction between Delaware's "dual jurisdiction concept" (under Delaware's long-arm statute) and the due process analysis set forth by the Supreme Court in 1987. Judge Robinson held that a finding of jurisdiction under the "dual jurisdiction concept" was not enough - a due process analysis is still required: "The court concludes that both analyses look to the non-resident defendant's 'intent or purpose' to serve the Delaware market. Nevertheless, the court declines to forego a due process analysis on the basis of its finding under the Delaware long-arm statute." Id. at 13.

Belden Technologies, Inc. v. LS Corp., C.A. No. 08-823-SLR (D. Del. Sept. 30, 2010)

October 4, 2010

Judge Sue L. Robinson: Motion to Dismiss Denied Where Documents Outside the Pleadings and Not Subject to Judicial Notice

Judge Robinson denied plaintiffs’ motion to dismiss certain counterclaims where the facts relied on in plaintiffs’ motion were outside the pleadings and not subject to judicial notice. Ricoh Company Ltd. v. Oki Data Corporation, C.A. No. 09-694-SLR, Memo. Order (D. Del. Sept. 30, 2010). Specifically, plaintiffs’ motion relied on a license agreement between the parties, a notice letter and a confirmation which were all in Japanese and attached English translations. Id. at 2. The English translations of the notice letter and license agreement were produced by the defendants in unrelated litigation before the ITC pursuant to a protective order. Id. The Court found that “the license and notice letter do not come close to meeting the standard of F.R.E. 201(b)” and are not publicly available. Id. at 6-7. Furthermore, the Court found it was not plaintiffs’ claims that were based on the documents, but instead, their affirmative defense. Id. at 4, 7. The Court further found that: (1) even if it were proper to take judicial notice of the documents, it would be improper to take notice of the documents for the truth of the matter within them; (2) it is not clear whether the translation of the one document would even be admissible under American law; (3) the authenticity of the license and its translation were disputed; and (4) the court would need to consider an additional declaration to reach the conclusion proffered by plaintiffs. Id. at 7. The Court therefore, denied plaintiffs’ motion to dismiss certain counterclaims. Id.

Ricoh Company Ltd. v. Oki Data Corporation, C.A. No. 09-694-SLR, Memo. Order (D. Del. Sept. 30, 2010).

October 4, 2010

Judge Sleet: Motion to Dismiss Counterclaims in ANDA case Denied in Part and Granted in Part

Judge Sleet recently granted in part and denied in part plaintiffs’ motion to dismiss defendant’s counterclaims in an ANDA case. Bone Care International LLC v. Sandoz Inc., C.A. No. 09-524-GMS (D. Del. Sep. 30, 2010. One patent in suit had expired and another was disclaimed. Plaintiffs also requested the FDA delist it from its Orange Book. Defendant’s asserted injury “[was] that if the FDA’s current interpretation and application of the delisting rule . . . is overruled on appeal, approval of its ANDA could be delayed.” Id. Judge Sleet granted the motion to dismiss as to these two patents, however, because “the highly speculative nature of [defendant's] alleged injuries-in-fact renders their claims non-justiciable[.]” Id. at 1 n.1. Judge Sleet denied plaintiffs’ motion to dismiss as to the third patent-in-suit, however. Although plaintiffs offered defendant a covenant not to sue, “offering a covenant not to sue does not remove declaratory judgment jurisdiction when a party lists patents in the Orange Book and then later refuses to enforce them, since non-first filers still face delayed approval of their ANDAs even with a CNS.” Id. at 2 n.2.

Bone Care International LLC v. Sandoz Inc., C.A. No. 09-524-GMS (D. Del. Sep. 30, 2010

October 1, 2010

Judge Stark: Motion to strike expert's rebuttal report DENIED

Judge Stark recently denied defendant’s motion to strike the rebuttal report of plaintiff’s invalidity expert. Stored Value Solutions, Inc. v. Card Activation Technologies, Inc., C.A. No. 09-495-LPS (D. Del. Sept. 27, 2010). Judge Stark found that plaintiff did prejudice defendant by remaining silent about its intention to produce a rebuttal report on invalidity. Plaintiff’s “silence [was] particularly troubling because [plaintiff’s expert] was in the process of preparing her rebuttal report at the same time the parties were meeting and conferring in order to advise the Court as to what remained to be done in this action.” Id. at 4. However, Judge Stark declined to impose the extreme sanction of excluding the report. Instead, Judge Stark made certain amendments to the Scheduling Order, including permission for the parties to submit rebuttal reports if the expert can be deposed on the “full range of his/her opinions[,]” and asked the parties to jointly submit a letter regarding the impact on this decision on the remaining schedule. Id. at 4-5.

Stored Value Solutions, Inc. v. Card Activation Technologies, Inc., C.A. No. 09-495-LPS (D. Del. Sept. 27, ...

September 29, 2010

Judge Bartle: Motion to Exclude Patent Law Expert GRANTED in Part

Following a long run of Delaware precedent on the admissibility of expert testimony related to patent law, Judge Bartle granted in part plaintiffs' motion to strike the expert witness report of defendants' patent law expert. Brigham and Women's Hospital, Inc. v. Teva Pharmaceuticals USA, Inc., C.A. No. 08-464, Memo. (D. Del. Sept. 21, 2010). Defendant's expert is a lawyer with a master's degree in chemistry, and his report includes sections on the "doctrine of inequitable conduct, the duties of disclosure and inquiry in patent prosecutions, obviousness-type double-patenting, and the effect of the TRIPS Agreement and GATT Amendment on patent terms," opinions that certain information not disclosed to the examiner was material to prosecution and finally, certain various PTO practices and procedures. Judge Bartle stated that "the law of this district is clear that experts in patent cases may no opine on whether a party engaged in inequitable conduct, discuss whether certain information was material to a pending patent application, or otherwise provide legal conclusions on 'substantive issues of patent law'" and that parties are further prohibited from using experts to "explain patent prosecution histories." Id. at 3. Therefore, the Court granted plaintiffs' motion to strike the expert report except for that portion that explains the PTO's practices and procedures. Id. at 4.

Brigham and Women's Hospital, Inc. v. Teva Pharmaceuticals USA, Inc., C.A. No. 08-464, Memo. (D. Del. Sept. 21, 2010).

September 20, 2010

Judge Sleet: Plaintiff may rely on circumstantial evidence to prove literal infringment

In Roquette Freres v. SPI Pharma, Inc., C.A. No. 06-540-GMS (D. Del. Sept. 17, 2010), defendant filed a motion in limine to prevent plaintiff from presenting evidence of certain data of tests run on samples of the accused products. Id. at 1. Plaintiff argued that the test data was circumstantial evidence of literal infringement. Id. Defendant asserted that plaintiff’s circumstantial evidence was “nothing more than a Doctrine of Equivalents argument by stealth[.]” Id. (internal quotation omitted). Judge Sleet denied the motion in limine, however, because even circumstantial evidence may be probative of literal infringement, and “the Federal Circuit has found the jury capable of reasonably evaluating circumstantial evidence in cases such as this.” Id. at 2.

Roquette Freres v. SPI Pharma, Inc., C.A. No. 06-540-GMS (D. Del. Sept. 17, 2010)

September 17, 2010

Judge Robinson: Lengthy Summary Judgment Opinion in Intermec Case

On Wednesday, Judge Robinson issued a lengthy summary judgment opinion on multiple invalidity and infringement issues in Intermec Tech. Corp. v. Palm, Inc., C.A. No. 07-272-SLR (D. Del. September 15, 2010).

The opinion touches on a variety of issues: indefiniteness, anticipation, direct & indirect infringement, written description, best mode, enablement, inequitable conduct, and, on top of everything else, non-joinder of inventors.

The Court held that the Palm devices did not infringe the Intermec patents, based largely on the Court's simultaneous claim construction opinion.

The Court then addressed several interesting issues. It held that two claims of one of the Intermec patents were invalid for indefiniteness, because the claims required a "first style" and a "second style" that were "different," but the specification did not explain with sufficient precision what the first and second styles were, or how to judge whether they were "different."

The Court also denied Palm's inequitable conduct defense, holding that Palm had failed to show an intent to deceive (despite showing knowledge of prior art references that were not disclosed.)

Palm was shot down again when it tried to assert that some of the Intermec patents were invalid or unenforceable because the patents omitted inventors. Palm argued that since the patents-in-suit included fewer named inventors than earlier patents to which they claimed priority, some inventors must have been omitted. The first patent in the chain included four inventors, but the patents-in-suit included only two. The Court, however, held that Palm had failed to show that the two unnamed inventors had contributed to the claims of the patent-in-suit, rather than just to the specification. Additionally, even if they had contributed to the claims, the failure to name inventors does not invalidate a patent or render it unenforceable under current Federal Circuit law.

The Court addressed several other issues in its 67-page opinion, most of them coming out in favor of Intermec. Given the infringement outcome, though, Palm does not have much to complain about.

Intermec Tech. Corp. v. Palm, Inc., C.A. No. 07-272-SLR (D. Del. September 15, 2010)

September 17, 2010

Sue L. Robinson: Data-Capture Patents Construed

District judge Sue L. Robinson issued a claim construction decision on Tuesday addressing a variety of claims related to data-capture systems. In particular, the Court construed the following terms and phrases:

"Communication means for transmitting data between said server station and each of said plurality of client data collection terminals"

"Application programs"

"Said generated request identifying the terminal and a particular overlay module needed to continue the execution of the application program"

"Communication means for interconnecting said terminal and said server"

"First information portion"

"A communication system communicatively interconnecting said terminal and said server"

"Executable portions"

"A display screen occupying substantially an entire broad side of the processing module"

"Optical readers means for effecting the input of optical information"

"An indicia reader input system"

"A multitasking operating system"

The Court also declined to construe, as indefinite, the phrases "formatted in a first style" and "formatted in a second style different from said first style."

Intermec Techs. Corp. v. Palm Inc., C.A. No. 07-272-SLR (D. Del. Sept. 14, 2010) (Robinson, J.).