September 10, 2010

Mary Pat Thynge: Preserving Trial Counsel's Role in Reexamination

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."

Xerox Corp. v. Google Inc., C.A. No. 10-136-JJF-MPT (D. Del. Sept. 8, 2010) (Thynge, M.J.).

September 1, 2010

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.

Brinkmeier v. BIC Corp., et al., C.A. Nos. 09-860-SLR, 10-01-SLR (D. Del. Aug. 25, 2010)

August 31, 2010

Judge Sue L. Robinson: Change in Courtroom/Chambers

A notice has been posted on the District of Delaware website that Judge Robinson's courtroom and chambers have been relocated to the 4th floor. All hearings previously scheduled for courtroom 6B will now be in courtroom 4B.

August 26, 2010

Judge Leonard P. Stark: Scheduling Order (Patent Cases)

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.

Judge Leonard P. Stark Rule 16 Scheduling Order (Patent Cases)

August 25, 2010

Sue L. Robinson: Data-Cable Patent Claims Construed

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"
"Substantially flat"
"Telecommunications cable"
"Data cable"
"Open space"
"Cable covering"
"Contacting each projection"
"Surface features"

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."

Belden Techs. Inc. v. Superior Essex Comms. LP, C.A. No. 08-063-SLR (D. Del. Aug. 24, 2010) (Robinson, J.).

Also see the Court's accompanying Memorandum Opinion on summary judgment, which includes an interesting discussion of the marking statute.

August 20, 2010

Judge Stark: Double Inadvertent Production Not Necessarily Waiver of Privilege

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.

August 19, 2010

Judge Robinson: Default Judgment Denied for Girafa

Earlier this month, Judge Robinson issued a memorandum opinion in, 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., Inc. vs. Smartdevil, Inc., C.A. No. 07-787-SLR (D. Del. Aug. 8, 2010)

August 18, 2010

Judge Leonard P. Stark: Case Reassignments

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."

August 17, 2010

Judge Leonard P. Stark: Sworn In

As reported on the District of Delaware website:

"Judge Leonard P. Stark was sworn-in as a U.S. District Judge on August 16, 2010. A formal ceremony will be held in the future."

August 17, 2010

Judge Sue L. Robinson: Permanent Injunction Denied in ANDA Suit

The Hatch-Waxman statute provides that when an act of infringement is found, the court shall order the effective date of approval of any durg to be no earlier than the date of the expiration of the patent-in-suit. 35 U.S.C. 271(e)(4)(A). Judge Robinson in Alcon, Inc. v. Teva Pharmaceuticals USA, Inc., found that claim one of the patent-in-suit was valid and infringed. C.A. No. 06-234-SLR, Memo. Order (D. Del. Aug. 5, 2010). The judgment was amended to provide that the effective date of any approval shall not be prior to six months after the expiration date of the patent-in-suit. Id. at 3. Plaintiff also moved for entry of a permanent injunction. The Court denied plaintiff's request finding that because of the relief related to the effective date, plaintiff cannot show any irreparable harm and further cannot show that remedies available at law are inadequate to compensate for defendant's infringement. Id. at 5. Finally, the only hardship asserted by plaintiff, that it would be unable to exclude the defendant from experimental, private use of the patent, would actually "deprive the public of the benefit of [defendant's] developmental efforts." Id. at 6. Therefore, the Court declined to enter an injunction.

Alcon, Inc. v. Teva Pharmaceuticals USA, Inc., C.A. No. 06-234-SLR, Memo. Order (D. Del. Aug. 5, 2010).