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:
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."
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.
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."
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.
A jury recently returned a verdict in the battle between Leader Technologies, Inc. and Facebook. By its verdict, the jury found that Facebook literally infringed Leader's '761 patent. But the jury also found that Facebook demonstrated the invalidity of the patent-in-suit, both on the grounds of prior public use and the on-sale bar.
In a comprehensive opinion addressing a multitude of pretrial motions, district judge Sue L. Robinson offered a key insight into her practice admitting the PTO's reexamination record at trial.
As part of its analysis on a motion for summary judgment of invalidity, the Court explained why this record is inadmissible, at least when a jury is the factfinder:
"It is generally not the court's practice to admit the reexamination record as trial evidence. As the rejections on reexamination are not binding, they are generally not relevant to the issues to be tried. Almost always, such evidence is more prejudicial than probative, and creates jury confusion vis a vis the complex invalidity standards they are asked to apply - for example, that patents enjoy a statutory presumption of validity." (slip op. at 33, n.31)
It will be interesting to see whether the Court also follows this practice in non-jury trials.
In one of his last acts as a judicial officer, now-retired district judge Joseph J. Farnan Jr. issued a decision resolving a contractual ambiguity of major proportions. The underlying IP transfer agreement called for the conveyance of "patent rights" between the counterparties listed on "Schedule A." The only problem was that Schedule A never existed; instead the parties drafted a "Schedule B - Patent Rights."
As a result, Defendants in the infringement litigation claimed that, in the absence of Schedule A, the patents-in-suit were transferred automatically. The result? Plaintiff did not have standing to enforce its rights to the patents-in-suit.
The Court rejected this assertion out of hand, in part because a paralegal who created Schedule B testified that she meant to call it Schedule A:
"While the Court understands Defendants' concerns with Schedule B, the Court is persuaded . . . that Schedule B was, in fact, intended to be Schedule A and was used by the parties as Schedule A. In making this determination, the Court credits the testimony of Kate Maxwell and finds that Schedule B was mistitled and was intended to be Schedule A. [This] testimony concerning the creation of the document and its storage as a computer file supports its authenticity."
Notable for litigators is the procedure followed to cure the ambiguity and establish the document's authenticity: have the preparer testify to the error and the use of the document.
On August 4, 2010, Judge Robreno granted defendants' motion for summary judgment. In his June claim construction order, Judge Robreno found that certain claims were indefinite under 35 U.S.C. § 112, ¶ 6, because the means-plus-function claims did not receite sufficient structure. As such, "the claims, and by extension the patents-in-suit, are indefinite as a matter of law[,]" thereby warranting a grant of defendants' motion for summary judgment. Inventio AG v. ThyssenKrupp Elevator Am. Corp., C.A. 08-874-ER, at n.1 (D. Del. Aug. 4, 2010).
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