June 4, 2010

Judge Farnan: Attorney's Fees Denied in Microsoft v. WebXchange

Last year, we posted about a declaratory action brought by Microsoft against WebXchange, which Judge Farnan dismissed for lack of subject matter jurisdiction. There was no case or controversy, because WebXchange had not accused Microsoft of infringement, even though WebXchange has a pending infringement action against several Microsoft customers involving the same patents.

WebXchange then sought fees, based on the fact that Microsoft had brought an earlier declaratory judgment action in the Northern District of California regarding the same patents, which was dismissed for the same reason. WebXchange alleged that, by bringing the Delaware action, Microsoft had acted in bad faith to multiply the proceedings, and that WebXchange is therefore entitled to attorney's fees under 28 U.S.C. § 1927, FRCP 41(d), and 35 U.S.C. § 285. Last week, Judge Farnan issued a memorandum opinion denying WebXchange's motion. Microsoft Corp. v. WebXchange, Inc., C.A. No. 09-484-JJF (D. Del. May 31, 2010). Judge Farnan held that Microsoft's second case was not frivolous, because it was based on different products, and the products in the second case are related to products that WebXchange has accused Microsoft's customers of infringing in the related case.

Microsoft Corp. v. WebXchange, Inc., C.A. No. 09-484-JJF (D. Del. May 31, 2010)

June 1, 2010

Chief Judge Gregory M. Sleet: Markman Opinion

In a case involving a patent covering high performance diodes (electronic components), Chief Judge Sleet construed the following terms:

- "semiconductor substrate of a first conductivity type"
- "pedestal"
- "on [the first substrate of] the substrate"
- "side regions"
- "channel region in the substrate below the first oxide layer under the side regions"
- "a buried layer of a second conductivity type under and between the side regions"
- "the substrate between the side regions"

Integrated Discrete Devices, LLC v. Diodes Incorporated, C.A. No. 08-888-GMS, Order Construing the Terms of U.S. Patent No. 5,825,079 (D. Del. May 26, 2010).

Of note was the Court's comment that it "adopted the defendant's proposed construction of [the term "semiconductor substrate of a first conductivity type"]...as a sanction for the plaintiff's failure to follow its Markman procedures." Id. at 1, n.1.


Integrated Discrete Devices, LLC v. Diodes Incorporated, C.A. No. 08-888-GMS, Order Construing the Terms of U.S. Patent No. 5,825,079 (D. Del. May 26, 2010).

May 28, 2010

Judge Stark: Failure to disclose intent to file rebuttal expert report results in finding of undue prejudice

In Biovail Laboratories International SRL v. Cary Pharmaceuticals Inc., C.A. No. 09-605-JJF-LPS, Judge Stark considered defendant’s motion to strike a supplemental expert declaration filed in support of plaintiff’s answering claim construction brief. Defendant argued that the supplemental declaration contained new opinions that should have been disclosed earlier and that Defendant would be prejudiced at the Markman hearing because it would not have had the opportunity to depose the expert on the new opinions or to have its expert prepare a rebuttal. Id. at ¶7. Plaintiff responded that the Scheduling Order did not preclude supplemental expert declarations, which are the norm, and did not contain a deadline for deposing experts. Id. at ¶8. Judge Stark denied defendant’s motion to strike. However, Judge Stark provided a less extreme remedy for defendant, noting that plaintiff’s conduct was far from laudable. Id. at ¶11. “While [plaintiff] has not engaged in willful deception, its silence as to its intent to file a rebuttal report and its failure to in any way disclose [its expert’s] rebuttal opinions at a time when [defendant] could test and/or respond to them appears to have had the consequence of deceiving [defendant] into believing that the record with respect to the opinions of claim construction experts was complete.” Id. Judge Stark also noted that plaintiff did file the supplemental expert declaration after the time for expert depositions had passed—such conduct being “inconsistent with the intent of the Scheduling Order. Id. Because defendant would be unduly prejudiced at the Markman hearing, Judge Stark delayed the hearing by four weeks and permitted defendant to take a second deposition of plaintiff’s expert, and provided that defendant could file a reply claim construction brief. Id. at ¶12. Furthermore, Judge Stark provided that defendant could file a motion for monetary sanctions after the Markman hearing if defendant “believe[d] that any unfair prejudice caused by [plaintiff’s] conduct ha[d] not been adequately ameliorated[.]” Id. at ¶13.

Biovail Laboratories International SRL v. Cary Pharmaceuticals Inc., C.A. No. 09-605-JJF-LPS

May 21, 2010

Judge Farnan: Motion to Strike Declaration of Expert Not Disclosed During Discovery DENIED

In The Dow Chemical Company v. Nova Chemicals Corp., C.A. No. 05-737-JJF (D. Del. May 20, 2010), after defendants' filed their motion for summary judgment, plaintiff submitted expert declarations in support of its counterstatement statement of facts opposing summary judgment. Id. at 3. Defendants subsequently filed a motion to strike the declarations because the expert declarations constituted "additional expert opinions that should have been filed before the end of discovery." Id. at 5. Judge Farnan disagreed. Judge Farnan agreed with plaintiff that the declarations were not "newly conceived arguments[,]" but were "appropriate elaborations of prior opinions and statements." Id. at 5-7.


May 20, 2010

Judge Robinson: Motion to Dismiss DENIED in case alleging that a prior patent litigation was sham litigation

Judge Robinson recently considered a motion to dismiss a complaint in an antitrust action that stemmed from a patent litigation that was voluntarily dismissed in 2004. Rochester Drug Co-operative v. Braintree Laboratories, C.A. No. 07-142-SLR (D. Del. May 18, 2010). Plaintiffs filed suit alleging that the prior patent litigation brought by defendant was a “sham litigation” “designed to delay FDA’s approval of [a generic drug] and to improperly maintain monopoly power with respect to its pioneer drug.” Id. at 2. Defendant subsequently filed a motion to dismiss under Fed. R. Civ. P. 12(b)(6). In order to resolve defendant’s 12(b)(6) motion, Judge Robinson analyzed whether plaintiffs adequately pled the “sham litigation” exception to Noerr-Pennington immunity that typically protects a patent owner asserting its rights from antitrust liability. Id. at 10-11. First, Judge Robinson determined that plaintiffs adequately pled antitrust injury. Although defendant argued that plaintiffs suffered no direct injury, Judge Robinson determined that plaintiffs’ claim was based upon an overall scheme. “It is sufficient, therefore, for plaintiffs to allege injuries that occurred as a result of the entire scheme, rather than any particular component therein.” Id. at 13. Judge Robinson next determined that the overall scheme plaintiffs’ alleged sufficiently pled that defendant attempted to forestall competition, including filing what plaintiffs describe as the “objectively baseless” litigation. Id. at 14-15. Notably, Judge Robinson declined to accept defendant’s argument that she should find that the previous litigation was not a sham as a matter of law, due to the court’s previous finding that Noerr-Pennington barred a counterclaim in the previous litigation. Id. at 18. Judge Robinson noted that the court made that determination based upon the record before it at the time, and that the plaintiffs in this action were not represented in the previous litigation. Id. at 18-19.

Rochester Drug Co-operative v. Braintree Laboratories, C.A. No. 07-142-SLR (D. Del. May 18, 2010)

May 19, 2010

Judge Leonard P. Stark: Claim Construction (Report & Recommendation)

Magistrate Judge Stark construed the claim terms below in an ANDA patent infringement case related to the brand name Oracea® doxycycline capsules. The Resesarch Foundation of State University of New York v. Mylan Pharmaceuticals, L.P., C.A. No. 09-184-JJF-LPS, Report and Recommendation Regarding Claim Construction (D. Del. May 12, 2010). A main feature of the invention is that the patented drug compounds "achieve a therapeutic result through non-antimicrobial mechanisms." Id. at 2.

(1) "tetracycline compound"
Construction: compound within the class of which tetracycline is the parent compound
and is characterizied by a unique four-ring structure
(2) "antibiotic tetracycline compound"
Construction: a compound having antibiotic activity within the class of which tetracycline
is the parent compound and is characterized by a unique four-ring structure
(3) "the tetracycline compound has substantially no antibiotic activity"
Construction: the tetracycline compound has been modified chemically to reduce or
eliminate its antibacterial activity, or the tetracycline compound possesses
antibacterial activity but is employed in an amount which has substantially
no antibacterial effect
(4) "minimum antibiotic serum concentration"
Construction: the lowest concentration known to exert a signficant antibiotic effect
(5) "chronic inflammatory condition"
Construction: an inflammatory condition lasting for days to weeks or longer, and is
associated histologically with the presence of lymphocytes and
macrophages and with proliferation of blood vessels and connective tissues

This claim construction order was subsequently adopted. The Resesarch Found. of State Univ. of New York v. Mylan Pharmaceuticals, L.P., C.A. No. 09-184-JJF-LPS (D. Del. June 24, 2010) (order).


The Resesarch Foundation of State University of New York v. Mylan Pharmaceuticals, L.P., C.A. No. 09-184-JJF-LPS, Report and Recommendation Regarding Claim Construction (D. Del. May 12, 2010).

May 7, 2010

Judge Farnan: Two-Phase Opinion Issued in LGD v. AUO

Judge Farnan recently issued an opinion in LG Display Co., Ltd. v. AU Optronics Corp., C.A. No. 06-726-JJF (D. Del. Apr. 30, 2010). LG Display ("LGD") had alleged infringement of four patents, while AU Optronics ("AU") counter-claimed for infringement of another four patents. Judge Farnan bifurcated the trial into two one-week portions, the first portion addressing AUO's infringement claims against LGD, and the second portion addressing LGD's claims against AUO. The trial took place in June 2009.

Judge Farnan then issued the resulting decisions in phases. Earlier this year, Judge Farnan issued an opinion in favor of AU Optronics on their portion of the case, finding that LGD infringed each of AU's patents. Last week, Judge Farnan followed up with an opinion again in favor of AU Optronics, holding that they did not infringe any of LGD's patents.

While most of last week's opinion was fact-specific, there was at least one legal issue addressed. A third party, CMO, had initially been a defendant in the case, but was issued a stay sometime after claim construction. CMO petitioned, however, for leave to file a post-trial memorandum despite the stay, arguing that they had an interest in the Court's claim construction determinations. Id. at 4. Judge Farnan denied them leave to file, stating simply that "the Court will not permit CMO to interject itself into the post-trial briefing of LGD and AUO where proceedings against CMO have been stayed," but that the Court would consider CMO's positions as submitted during the Markman proceedings. Id. at 5.

See the opinions below the break.

Continue reading "Judge Farnan: Two-Phase Opinion Issued in LGD v. AUO" »

May 7, 2010

Judge Sleet: Claim Construction Order

Softspikes LLC v. MacNeill Engineering Co, Inc., C.A. No. 08-469-GMS (D. Del. Apr. 29, 2010)

U.S. Patent No. 6,052,923
1. Term: “bearing portion substantially bears the weight of said user, substantially without said traction protrusions bearing said weight of said user”

Construction: “bearing portion bears the overwhelming majority of the weight of said user:

2. Term: “to support the majority of the body weight placed on the cleat, tending to keep weight off said traction protrusions”

Construction: “a majority of the weight applied to the cleat is borne by the weight bearing surface”

3. Term: “deflecting”

Construction: “bending to some extent”

4. Term: “withstanding abrasion”

Construction: plain and ordinary meaning

5. Means-plus function term: “sole attachment means”

Construction: The function of the term is “attachment of removable cleats to the shoe” The corresponding structure includes a socket, displayed in Figure 2 and item 21

6. Means-plus function term: “flange attachment means”

Construction: The function of the term is “removably attaching the cleats to a sole attachment means of a sole of a shoe” The corresponding structure includes an attachment stud that screws into a receptacle on a golf shoe (see Figures 2, and 4-11 and item 20)

7. Terms: “a bearing portion on said opposing lower surface of the flange remote from said edge,” “central abrasion portion,” and “abrasion portion”

Construction: “the part of the lower surface of the flange bounded by the plurality of the traction protrusions”

U.S Patent No. 6,167,641

1. Term: “to provide traction without puncturing turf”

Construction: “the protrusions extend into and engage the grass blades of the turf, but do not penetrate into the ground or, if the do penetrate into the ground on certain types of turf surfaces (such as closely cropped greens), penetrate into the ground only a negligible amount insufficient to significantly damage the grass plant.”

2. Term: “deflectable” and “deflectably”

Construction: plain and ordinary meaning

3. Term: “traction element extending when in said relaxed configuration substantially
laterally substantially from said perimeter of said hub”

Construction: “when not under load, the entire traction element extends outwardly from the perimeter of the hub further than it extends downwardly from the perimeter of the hub.”

4. Term: “perimeter”

Construction: “the outermost edge of the hub”

5. Term: “said arm extends away from said second side of said hub, such that when said
removable cleat is attached to a shoe sole, said arm is cantilevered away from said shoe sole”

Construction: “the arm is attached to the hub and extends away from the hub so that it is not in contact with the shoe sole when in a relaxed configuration.”

6. Means-plus function term: “sole attachment means”

Construction: The function of the term is “attachment of removable cleats to the shoe” The corresponding structure includes a socket, displayed in Figure 2 and item 21

7. Means-plus function term: “hub attachment means”

Construction: The function of the term is “attaching the hub to one of the sole attachment means.” The corresponding structure includes a stud or shaft integral with the hub (see Figures 2, 4-6, or 25-28 and item 20, or a separate conventional screw removable from the
central hub)

8. Term: “turf-engaging portion projecting when in said relaxed configuration away from,
and substantially perpendicular to, said second side”

Construction: “when not under load, the turf-engaging portion of the traction element extends downwardly from the second”

9. Term: “arm extending substantially laterally from said perimeter of said hub”

Construction: “when not under load, the arm element extends outwardly from the perimeter of the hub further than it extends downwardly from the perimeter of the hub”

10. Term: “to minimize wear”

Construction: plain and ordinary meaning

U.S. Patent No. 6,397,499

1. Means-plus function term: “gripping member for engaging the ground”

Construction: The function of the term is “engaging the ground.” The
corresponding structure includes those described in Figures 1, 3, 9, 11, 21, and 22

2. Term: “base”

Construction: plain and ordinary meaning.

3. Term: “three extensions attached to the base”

Construction: plain and ordinary meaning.

4. Term: “projects radially outward from the base”

Construction: plain and ordinary meaning.

5. Term: “skirt”

Construction: “the portion of the cleat generally located between the portion that engages the ground, and the opposite end.”

U.S. Patent No. 6,332,281

1. Means-plus function term: “ground engaging member”

Construction: The function of the term is “engaging the ground.” The corresponding structure includes those described in Figures 1,3,9,11,21 and 22

2. Term: “opening”

Construction: plain and ordinary meaning.

3. Term: “radial receptacle projections”

Construction: “receptacle projections that extend in a radial direction, i.e. radiating from or converging to a common center.”

4. Term: “radial cleat projections”

Construction: “cleat projections that extend in a radial direction, i.e. radiating from or converging to a common center.”

5. Term: “the radial center of the projection”

Construction: “the midpoint of the radial projection”

6. Terms: “convex curved” and “convex”

Construction: “curved or rounded like the exterior of a sphere or circle”

7. Term: “skirt”

Construction: “the portion of the cleat generally located between the portion that engages the ground, and the opposite end”

8. Term: “the cleat projections are capable of interacting with a corresponding cleat
Receptacle”

Construction: plain and ordinary meaning

9. Term: “cleat ... having a vertical axis with first and second ends”

Construction: “a vertical line through the center of the cleat running from the top-most portion of the cleat to the bottom-most portion of the cleat.”

10. Term: “equally spaced”

Construction: “evenly distributed around the cleat or receptacle”

U.S. Patent No. RE40,460
1. Means-plus function term: “surface engaging member”
Construction: The function of the term is “engaging the ground.” The corresponding structure includes those described in Figures 1,3,9,11,21, 22 and 28

2. Term: “opening”

Construction: plain and ordinary meaning

3. Term: “radial receptacle projections”

Construction: “receptacle projections that extend in a radial direction, i.e. radiating from or converging to a common center”

4. Terms: “convex curved” and “convex”

Construction: “curved or rounded like the exterior of a sphere or circle”

5. Term: “circumferential center”

Construction: “the midpoint of the projection”

6. Term: “the cleat projections are capable of interacting with a corresponding cleat receptacle”

Construction: plain and ordinary meaning.

7. Term: “a cleat [member] having a vertical axis with first and second ends”

Construction: “a vertical line through the center of the cleat running from the top-most portion of the cleat to the bottom-most portion of the cleat.”

8. Term: “equally spaced”

Construction: “evenly distributed around the cleat or receptacle”

Softspikes LLC v. MacNeill Engineering Co, Inc., C.A. No. 08-469-GMS (D. Del. Apr. 29, 2010)

May 7, 2010

Judge Robinson: Motion to dismiss defendants' stayed counterclaims GRANTED and final judgment entered for purposes of appeal

In IGT v. Bally Gaming Int’l Inc., C.A. No. 06-282-SLR (D. Del. April 28, 2010), a patent infringement action, Judge Robinson considered plaintiff’s renewed motion to dismiss defendants’ counterclaims related to antitrust, the Lanham Act and intentional interference with business relationships. These counterclaims were stayed due to Judge Robinson’s practice of bifurcating antitrust counterclaims (in addition to damages) because “they generally do not survive unless there is a finding of no infringement.” Id. at 1. Subsequently, Judge Robinson construed disputed claim terms and decided seven summary judgment motions, finding that defendant’s accused products infringe certain claims of the patents-in-suit. Id. at 2. The only remaining allegations for trial were plaintiff’s claim of willful infringement and defendants’ counterclaim of invalidity of one of the patents-in-suit. Id. Trial was canceled after defendants dismissed their counterclaim and the parties agreed to try willfulness with plaintiff’s claim for damages post-appeal. Id.

Plaintiff filed the pending motion to dismiss arguing that the stayed counterclaims “pose an impediment to moving the case to appellate review pursuant to 28 U.S.C. § 1292(c)(2). Id. at 3. Defendants argued that “the stay should be maintained for purposes of judicial economy, and reserved their right to address their claims substantively should the Federal Circuit find in their favor on appeal.” Id. at 5. Considering that defendants’ counterclaims likely do not survive if they don’t succeed on appeal, Judge Robinson granted plaintiff’s motion to dismiss the stayed counterclaims, without prejudice. Id. at 6. “Should the court’s opinion be reversed and the case remanded, the court will consider defendants’ request for further discovery and take up the merits of defendants’ claims in due course.” Id.

IGT v. Bally Gaming Int’l Inc., C.A. No. 06-282-SLR (D. Del. April 28, 2010)

May 5, 2010

Special Master: Vincent J. Poppiti: Discovery Dispute over Production of Worldwide Sales Information

Special Master Poppiti ordered defendant Chi Mei Optoelectronics Corporation to produce its worldwide sales data and technical information because such information is relevant to: "(i) inducing infringement liability; (ii) determining direct infringers; (iii) commercial success; and (iv) a reasonable royalty determination." Apeldyn Corporation v. AU Optronics Corporation et al., C.A. No. 08-568-SLR, Special Master's Report and Recommendation Regarding CMO's Production of Worldwide Sales and Technical Information for All VA Mode Products, at 2 (D. Del. Apr. 12, 2010). The Special Master further found that Chi Mei must produce the information with the following data fields: "date, customer, product, quantity, price and shipping destination." Id. This discovery was not limited to products known by the defendant to enter the United States, but instead covers all worldwide sales, regardless of whether the defendant knows where its products are going. Id. Defendant Chi Mei was required to produce this data starting 6 years prior to the filing of the Complaint to the present because such data could be instructive on such issues as commercial success. Id. Finally, Special Master Poppiti noted that he does not believe the law regarding inducing infringement has become "more restrictive" as argued by defendant Chi Mei, and the scope of such liability will not "dictate the scope of discovery." Id. at 3-4.

Apeldyn Corporation v. AU Optronics Corporation et al., C.A. No. 08-568-SLR, Special Master's Report and Recommendation Regarding CMO's Production of Worldwide Sales and Technical Information for All VA Mode Products (D. Del. Apr. 12, 2010).