Delaware IP Law Blog

1/15: Tatoo Johnny, Inc. v. Matthew Walker (copyright infringement)
1/17: Validus Pharmaceuticals, Inc. v. Actavis South Atlantic LLC and Actavis, Inc. (patent infringement)
1/17: Applabs, Inc. v. Vocalocity, Inc. (copyright infringement)

In the case Cordance Corp. v. Amazon.com, Inc., C.A. No. 06-491-MPT, Memo. Order (D. Del. January 22, 2008), Cordance Corp. has alleged that Amazon's trademarked "1-click" technology infringes its patent covering i-name technology. Amazon.com filed a declaratory judgment counterclaim alleging that Cordance's promotion of the i-name services infringes its patent covering software realted to personal address books. Cordance moved to dismiss this counterclaim and the Court subsequently denied the motion. See also posting on 12/04/07: Another "Case or Controversy" Decision Post- "MedImmune". This opinion addresses Cordance's motion for reconsideration and motion for leave to file a reply memorandum including a motion for Fed. R. Civ. P. 11(c) sanctions. Id. at 1.

The Court found that unlike the cases where there is a covenant not to sue and the patent holder abandons the infringement allegations, Amazon is not abandoning its claims here. Furthermore, Cordance has not stopped or agreed to stop all allegedly infringing activities. To divest the Court of declaratory judgment jurisdiction, the Court implies that the cessation of all potentially infringing activities either direct or indirect must be shown. Id. at 5.

Magistrate Judge Thynge further noted that Cordance's attempts in its motion to engage in the court in a facutal and legal analysis of Amazon's counterclaims would not succeed and that her analysis would stick to the issues at hand. Id. at 5.

By Standing Order dated January 23, 2008, all cases assigned to the vacant judgeship prior to August 6, 2007, all cases assigned purusant to the Order of August 6, 2007 (whih assigned civil cases to the Magistrate Judges), and all new cases filed in this District shall be assigned and divided among the three active District Court Judges.

Get a copy of the order here.

The order states as part of the reasons for this change the fact that the vacancy has existed for over one year and it appears that it will continue for some time.

1/9: Riverbed Technology, Inc. v. Quantum Corporation (patent infringement)
1/10: Forest Laboratories, Inc., Forest Laboratories Holdings, Ltd., Merz Pharma GmbH & Co.,
KGaA v. Cobalt Laboratories, Inc. (patent infringement)
1/8: Forest Laboratories, Inc., Forest Laboratories Holdings, Ltd., Merz Pharma GmbH & Co.,
KGaA,. v. Barr Laboratories, Inc. (patent infringement)
1/14: Philip Morris USA v. Taboca USA, Inc. (declaratory judgment - trademark infringement)
1/15: Cryocor, Inc. and AMS Research Corporation v. Cryocath Technologies, Inc. (patent
infringement)

An accused device infringes under the doctrine of equivalents when, among others, the alleged equivalent represents an "insubstantial" change from the claim language. Uncertainty arises, however, when the equivalent is itself patented. Would a finding of equivalence amount to a declaration that the patent covering the accused device is invalid? Perhaps to avoid this outcome, the Federal Circuit has held that a finding of equivalency in this scenario is "considerably more difficult to make out," albeit not necessarily foreclosed.

In a recent opinion, district judge Sue L. Robinson faced, and declined to wade into, this separate patentability issue in the preliminary-injunction context. Acknowledging that the equivalent's patented status is evidence that it was "previously unknown and/or non-obvious," and that customers in the field accepted the interchangeability of the compounds in issue, the Court nonetheless rejected the notion that plaintiff could show a likelihood of success on the merits.

According to the Court, defendant has a "strong argument" that, as a matter of law, the equivalent is both novel and substantially different from the asserted invention. "To the extent that 'known interchangeability' can coexist with separate patentability, plaintiff's burden on its preliminary injunction motion is a heightened one."

Perhaps the result would be different had this been an actual finding on the merits?

Siemens Medical Solutions USA Inc. v. Saint-Gobain Ceramics & Plastics Inc., C.A. No. 07-190-SLR (D. Del. Jan. 8, 2008) (Robinson, J.).

After the Federal Circuit released its Seagate decision, Patently-O asked a fair question: "What role, if any, is there for the thick, formal opinions explaining in detail why a particular patent is invalid, unenforceable, and/or not infringed?"

A recent decision by District of Delaware Chief Judge Gregory M. Sleet goes a long way in answering that question in this district. In its January 4th order, the Court stated that while Seagate "does effect a change in the standard for willfulness . . . it does not inform the totality of circumstances analysis for the objective recklessness standard . . . ." Therefore, "nothing in Seagate forbids a jury to consider whether a defendant obtained advice of counsel as part of the totality of the circumstances in determining willfulness."

As a result, the Court allowed the evidence of defendants' failure to obtain advice of counsel.

Energy Transportation Group Inc. v. William Demant Holding A/S, C.A. No. 05-422-GMS (D. Del. Jan. 4, 2008) (Sleet, C.J.).

12/21: Fifth Market, Inc. v. Board of Trade of the City of Chicago, Inc. (patent infringement)
12/21: Samsung Electronics Co., Ltd. v. Sharp Corporation et. al. (patent infringement)
12/26: Wall Corporation v. BondDesk Group, L.L.C., and BondDesk Trading, L.L.C. (patent infringement)

On December 21, 2007, Magistrate Thynge granted summary judgment to Reexam Beverage Co. finding that two claims of US Patent No. 5,697,242 were infringed. Crown Packaging Tech. Inc. v. Reexam Beverage Can Co., C.A. No. 05-608-MPT, Memo. Order (D. Del. Dec. 21, 2007). The patent-at-issue involved methods for "reforming the bottom of a can body or can base" to make the can stronger while using less metal. Id. at 3. The Court found that Crown's technical drawings, physical can samples and testimony of its witnesses demonstrated infringement of two claims of the patent-in-suit.

The distinction between an assignee and licensee is crucial to determining whether a party has standing to sue for infringement. Whether through ownership or assignment, those parties that hold all substantial rights to a patent - and those who hold all exclusionary rights but not all substantial rights - generally enjoy the ability to enforce the patent. A "bare" licensee, on the other hand, possesses no right of enforcement. But what happens when a patentee conveys, as part of a non-exclusive license, the exclusive right to sue a particular entity, but otherwise retains title to the patent? Who is the proper party: the non-exclusive licensee that holds the right to sue, or the patentee that has contracted away the ability to bring suit? According to district judge Joseph J. Farnan, neither has standing to sue.

In the underlying litigation, the Court addressed the question whether the rights conveyed "elevated [the transferee's] status from that of a bare licensee to the second category of plaintiffs, those who hold exclusionary rights and interests created by the patent statutes, but not all substantial rights to the patent such that a law suit may be maintained with the presence of the patent owner." Because the license limited the transferee's right to sue - it could only pursue a single entity, the defendant - and imposed other restrictions, the patentee failed to "provide [the transferee] with a sufficient cloak to cover its status as a bare, nonexclusive licensee."

Having struck down this "hunting license," the Court then held that the patentee itself failed to establish standing to bring suit by contracting away the right to sue: "That [the licensee] lacks standing to take advantage of that right does not mean that [the patentee] regains it." In other words, the parties' chosen "contractual division" of the patent rights defeated their standing, leaving no party available to enforce the patent.

Fairchild Semiconductor Corp. v. Power Integrations Inc., C.A. No. 07-187-JJF (D. Del. Dec. 20, 2007) (Farnan, J.).

In a recent opinion, Delaware district judge Joseph J. Farnan Jr. reaffirmed the necessity of confirming expert witnesses' availability for pretrial discovery and trial. In the underlying litigation, defendant sought to delay expert reports and depositions on the basis of unavailability. Under normal circumstances, the Court might be inclined to work around outside schedules. But here, only thirty days before a "long scheduled" and firm trial date, defendant argued for delay in producing expert reports and taking expert depositions. Given the timing of defendant's request, the Court refused to accede:

"[T]he Court finds that the assertion that any expert witness is 'unavailable' to the parties in the thirty day period prior to a long scheduled trial is untenable and an issue for the witness's proponent, not the pre-trial schedule."

Nice Systems Inc. v. Witness Systems Inc., C.A. No. 06-311-JJF (D. Del. Dec. 14, 2007) (Farnan, J.) (order attached to claim construction opinion).