Delaware IP Law Blog

8/7/2007: Interdigital v. Nokia (Patent Infringement)
8/8/2007: Pollin/Miller Hospitality Strategies, Inc. v Patricia Scott, Brad Wenger and MJ Wilmington Hotel Associates (trademark/trade secret)
8/27/2007: Matika USA v. Black and Decker (Patent Infringement)
8/28/2007 : Energy Transportation Group v. Siemens Hearing Instruments and Siemens Audiologische Technik GMBH (Patent Infringement)
8/27/2007 : Symbol Technologies and Wireless Valley Communications v. Aruba Networks (Patent Infringement)
8/30/2007: Human Genome Sciences v. Amgen and Immunex (Patent Infringement)
9/5/2007: Fujinon Corp v. Motorola (Patent Infringement)
9/7/2007: Phoenix Payment Systems v. Lexcel Inc (Copyright infringement)
9/10/2007: Dover Motorsports and International Speedway v. John Doe and other persons unknown (trade secret/trademark)
9/13/2007 : Orion Corp v. Wockhardt USA (Patent Infringement)
9/13/2007 : Santarus, Inc and the Curators of the Univ or Missouri v. Par Pharmaceuticals, Inc. (Patent Infringement)

Crown Packaging Tech., Inc. v. Rexam Beverage Can Co., C.A. No. 05-608-MPT (D. Del. Aug. 28, 2007).

Crown moved the Court to reconsider its previous decision not to bifurcate plaintiff's infringement claims from defendant's infringement claims. In support of its motion, Crown cited two not-previously-cited cases from this district where the Court had bifurcated plaintiff's and defendant's claims of infringement. The Court reminded Crown that it "should have brought those cases to the Court's attention during the briefing of its motion to bifurcate" because "it is not proper on a motion for reargument for a party to digest the court's analysis of the cases cited during briefing and then seek to find other cases (which could have been previously cited) to present to the court…" Op. at 4. The Court also noted that Crown was attempting to shift its arguments – Crown had originally argued for complete bifurcation of the plaintiff's and defendant's cases, while in its motion for reconsideration Crown argued for a two-phase trial with one jury (addressing the Court's concerns about impaneling two juries and the extra time needed for two separate trials). Op. at 5.

Takeaway: In arguing for bifurcation, it may help to make a showing that the Court can accomplish the bifurcated proceedings in the time originally allocated for the combined proceedings.

The principle that the complete adjudication of a patent dispute requires that both liability and remedy be fully established is well-settled. If a court has entered judgment on one, but not the other, any appeal is likely premature. But what if a party that has sought injunctive relief in its complaint declines to brief the issue following a liability judgment and instead seeks an immediate appeal?

According to the Federal Circuit, the appeal remains premature. By granting a motion to dismiss an appeal from a District of Delaware jury's decision on infringement and invalidity, the appellate court characterized the unbriefed issue as an "unadjudicated request for injunctive relief" that "remains pending before the district court." Accordingly, it is a party's pre-judgment request, not its later abandonment, that controls the jurisdictional inquiry on appeal.

ACS Inc. v. Guidant Sales Corp., No. 2007-1365 (Fed. Cir. Aug. 1, 2007).

In re Seagate

The Federal Circuit dropped a bomb today with this unanimous decision. Here's the quick and dirty:

1) To prove willfulness, patentees now must show "objective recklessness. The Federal Circuit abandoned any affirmative duty of care on alleged infringers in relation to willfulness.

2) Waiver of the attorney-client privilege when asserting an opinion of counsel as a defense to a charge of willfulness does not, as a general rule, extend to trial counsel - although courts continue to have discretion as to waiver.

3) Waiver of work product immunity associated with the assertion of an opinion of counsel does not extend to trial counsel, unless there are exceptional circumstances.

Here in Delaware, this decision should bring uniformity to the waiver issues as to trial counsel, an issue that had received differing treatment in the past. We will keep and eye out for decisions applying this precedent in the coming months.

7/27: Lonza Group AG v. Northwest Biotherapeutics, Inc. (patent infringement)
7/27: ICU Medical, Inc. v. Rymed Technologies, Inc. (patent infringement)

For the first time in the patent context, the District of Delaware has addressed the dismissal framework recently established in the Supreme Court's Bell Atlantic decision.

In a memorandum order issued yesterday, district judge Sue L. Robinson emphasized that although a complaint "does not need detailed factual allegations," the stated entitlement to relief requires "more than labels and conclusions" or a "formulaic recitation of the elements of a cause of action." Relying on both the fact that plaintiff had already successfully sought to amend its complaint and on plaintiff's declaration in response to the motion to dismiss, the Court found that plaintiff pleaded the requisite level of specificity to survive defendant's invalidity contention. The Court also rejected defendant's enforceability and "judge-shopping" rationales.

Beyond the pleading issue, the decision also contributes to the growing body of post-eBay injunction decisions. Addressing the irreparable harm element for preliminary injunctions, the Court definitively put to rest the question of whether, following a finding of likelihood of success on the merits, a presumption of irreparable harm should arise. Rejecting that analysis, the Court concluded that "such a presumption [does] not survive the Supreme Court's analysis in eBay. . . ." As a result, "it remains the moving party's burden to establish that monetary damages could not suffice."

Sun Optics v. FGX, C.A. No. 07-1347-SLR (D. Del. Aug. 2, 2007) (Robinson, J.).

7/20: Cancer Research Technology Ltd. and Schering Corporation v. Barr Laboratories, Inc. and Barr Pharmaceuticals, Inc. (patent infringement)
7/23: Inovis USA, Inc. v. Distance Digital Co., LLC and Classified Information, Inc. (declaratory judgment of non-infringement, invalidity and unenforceability)
7/24: Black & Decker, Inc. and Black & Decker (U.S.) Inc. v. Makita U.S.A. Inc. and Makita Corporation (patent infringement)
7/25: QVC, Inc. and Er Marks, Inc. v. Joshua Barker, Jason Jersey and Jersey-Barker Enterprises (trademark infringement)

In a recent decision on remand from the Federal Circuit, District of Delaware Judge Farnan considered whether, as part of an anticipation inquiry, an earlier patent enabled one skilled in the underlying art to practice the procedure claimed in the patent in suit. Answering no, the Court added new context to the continuing dialogue in the courts about settling the meaning of the phrase "ordinary skill in the art."

The prior art patent in this drug case embraced "hundreds to thousands" of compounds that could be used to treat a variety of medical conditions. The patent in suit, by contrast, claimed a specific compound - riluzole - for the treatment of one condition - ALS. Although the prior art mentioned riluzole, it did so only for the purposes of synthesizing other compounds or to exclude it altogether. The Court therefore concluded that, amidst the disclosure of so many other compounds and conditions, the prior art patent failed to put one skilled in the treatment of ALS "in possession" of the claimed invention in the patent in suit. The Court also held that, as a matter of law, the experimentation necessary to uncover the riluzole-ALS link would be too great. Accordingly, the prior art patent could not be enabling for anticipation purposes.

Many topics in patent law require courts and litigants to decipher the meaning of "ordinary skill." If anything, the term has assumed added significance since the Supreme Court's obviousness decision in KSR. A bright line to take from the present case: one of ordinary skill would not think to practice a particular invention without some transparent and undisguised prompting from the prior art in question. Only one of extraordinary skill in the art would do that.

Impax Labs. Inc. v. Aventis Pharma. Inc., C.A. No. 02-581-JJF (D. Del. July 19, 2007) (Farnan, J.).

Is a single jury equipped to consider competing expert testimony on reasonable royalty damages? Thankfully, a District of Delaware judge has answered in the affirmative. Much has been made in recent years about the American jury's ability to comprehend, digest, and assess the evidence in complex civil litigation, most notably in patent cases. By denying a plaintiff's motion to bifurcate, Magistrate Thynge has implicitly reaffirmed the vitality of the lay factfinder's role in patent litigation.

The Court rejected, among other reasons, plaintiff's claims of "jury incompetence" on the issue of reasonable royalty damages. By doing so, the Court noted plaintiff's curious argument: "Crown offer[ed] that its experts have calculated a different royalty rate than [defendant's experts], and therefore, Crown would be prejudiced by the introduction of [defendant's] evidence on that issue." Declining to accept plaintiff's protestations that one jury could not undertake such a "monumental task," the Court denied the request for bifurcation.

In a world awash with proposals for specialized patent courts and other devices foreign to the common law, it is reassuring to know that the institution of the jury, a staple of all civil litigation, no matter how complex, retains the confidence of the judicial branch.

Crown Packaging Tech. Inc. v. Rexam Beverage Can Co., C.A. No. 05-608-MPT (July 24, 2007) (Thynge, M.J.).

In the recent Time Warner Cable, Inc. v. GPNE Corp. decision by the District of Delaware, Magistrate Judge Thynge found that Third Circuit law does not "specifically require the exact identity of the parties" when applying the first-to-file rule. C.A. No. 07-67-MPT, Memorandum Op. (D. Del. July 20, 2007). In Time Warner, the defendant, GPNE, had originally filed a patent infringement case in the Eastern District of Texas against Time Warner, Inc. and various other parties. Two days later, Time Warner Cable, Inc. filed a declaratory judgment action in the District of Delaware of non-infringement and invalidity of the patent that was asserted in the Texas litigation. The basis for declaratory judgment jurisdiction as alleged by Time Warner Cable, Inc. was that GPNE intended to include it in the Texas litigation as a defendant and therefore that would impact its business activities. Time Warner Cable, Inc. and Time Warner, Inc. are two separate entities (with Time Warner, Inc. owning 84% of Time Warner Cable, Inc.). Id. at 4. Subsequently, GPNE did amend its complaint in the Texas litigation to include Time Warner Cable as a defendant and moved to transfer the Delaware case to Texas.

The Court found that chronologically, GPNE was the "first-to-file" and because the Delaware case involves the same facts and the same patent the first-to-file rule will apply, despite the fact that Time Warner Cable was not originally a party to that first-filed action. Therefore, the Delaware case was dismissed and GPNE's motion to transfer or stay was denied as moot.

In dicta, the Court made some interesting notes on forum shopping. Time Warner Cable had alleged that GPNE's filing of the Texas action was forum shopping because it is a favorable jurisdiction for plaintiffs. The Court found no evidence that GPNE chose to litigate in Texas in "bad faith". Id. at 10. The Court did, however, note that Time Warner Cable, Inc.'s decision to file suit in Delaware could be considered an example of forum shopping because it was filed in anticipation of them being added as a defendant to the Texas litigation.

Once again it just proves the old adage…timing is everything…