Delaware IP Law Blog

Magistrate Judge Mary Pat Thynge recently broadened the Court's discovery-dispute procedure. As of October 22, all discovery matters, rather than "disputes," must follow the letter-briefing schedule set out in the Court's revised form scheduling order). As demonstrated in a recent order, requests for extensions of discovery deadlines fall within the definition of "discovery matters," and therefore must adhere to the Court's guidelines.

Roquette Freres v. SPI Pharma Inc., C.A. No. 06-540-*** (D. Del. Oct. 17, 2007) (Thynge, M.J.).

Crown Packaging Tech., Inc. v. Rexam Beverage Can Co., C.A. No. 05-608-MPT (D. Del. Oct. 5, 2007).

In this chapter of the beverage can patent dispute between the parties, Magistrate Judge Thynge denied Crown's motion for summary judgment of patent invalidity. Crown argued that certain asserted claims are invalid under § 102(g)(2) by a prior process practiced by the Ball Corporation. Rexam argued that the Ball process was not prior art because the claims at issue claim priority from a PCT application with a priority date predating the reduction to practice of the Ball process. (Still with me? If not, re-read the last sentence.) Each side's respective experts disagreed (imagine that!) over whether one of ordinary skill in the art would understand the PCT application to inherently disclose "radial movement of the reforming roller," a limitation present in the asserted claims. If the "radial movement" limitation is not found (either expressly or inherently) in the PCT application, then the patentee cannot rely on the PCT application's priority date. Due to this disagreement between the experts about whether a person of ordinary skill in the art would understand the PCT application to inherently disclose the "radial movement," the Court denied the motion for summary judgment.

Dependent claims necessarily refer back to an earlier, separate claim. But what happens when one claim describes a one-step process that is in turn obtained by the process of another claim? According to the Federal Circuit, the reference to the earlier claim's process ensures a finding of dependency.

In affirming a claim construction decision (among others) of Delaware District Judge Sue L. Robinson, the Federal Circuit began with the language of the process claim in issue: "A process comprising obtaining progeny from a [certain plant] obtained by the process of claim 1 . . . ."

Finding this language sufficient to warrant dependent status, the Court rejected the contention that the claim was independent because it is "by itself" a single-step process. By doing so, the Court relied on the claim's explicit reference to the independent claim's process:

"[C]laim 4 clearly references another claim, not simply a starting material. The claim might have used express language to clarify that it only invoked the product of the process in claim 1 as a starting material, but did not do so. Instead, the claim language reads claim 1 into claim 4."

Thus, the recitation of another claim's process, rather than its product, confers dependent status on the reciting claim.

Monsanto Co. v. Syngenta Seeds, Inc., No. 2006-1472 (Fed. Cir. Oct. 4, 2007) (Rader, J.).

Following Federal Circuit precedent, Chief Judge G. Sleet recently found that non-merits based dismissal of a patent claim in one action does not preclude the plaintiff from bringing that same claim in a subsequent infringement action. Abbott Diabetes Care, Inc. v. Dexcom, Inc., C.A. No. 06-514-GMS (D. Del. Sept. 30, 2007). Abbott previously filed an amended complaint in an earlier action between the same parties looking to add three more patents to that lawsuit. Dexcom filed, and the Court granted, a motion to strike this amended complaint for failure to comply with the requirements of Fed. R. Civ. P. 15(d). Abbott then brought a new action alleging infringement of those three patents and Dexcom again moved to strike. The Court found that because its earlier decision did not reach the merits of those patent claims each of those patent claims now raises a distinct cause of action and therefore is not duplicative of the complaint in the earlier action. Id. at 6. The Court did, however, consolidate this new case with the earlier filed litigation as the technologies at issue in each case are similar, the same device is accused of infringement in both cases and Abbott admitted in papers filed in the earlier litigation that any new case would likely be consolidated with the prior litigation. Finally, the Court agreed to stay the case pending reexamination of all patents-in-suit (including the ones in the prior litigation) where the Rule 16 scheduling conference had not yet occurred, no scheduling order was in place and no discovery had begun. The stay would further simplify issues for trial. Id. at 8-9.

Of particular note regarding the local rules… Both parties filed additional letters after complete briefing on the pending motions. The Court disregarded these letters in making its ruling as failing to comply with D. Del. LR 7.1.2(b) which only allows the filing of additional papers where there is a need to cite subsequent authorities. Id. at 2 n.1.

In the late 1990s, a New York district court recognized the foreign "patent-agent privilege," which provides that "if a communication with a foreign patent agent involves a foreign patent application, then as a matter of comity, the law of that foreign country is considered regarding whether that law provides a privilege comparable to the attorney/client privilege." Nearly ten years later, the District of Delaware faced a similar question: whether, under French law, the patent-agent privilege is broad enough to extend to a special category of French patent agents.

Answering no, Magistrate Judge Thynge settled one of the rarer privilege disputes in this district.

In the underlying case, Defendant Samsung sought communications between Plaintiff CEA and the French patent agents that assisted CEA in prosecuting several French patents related to the patents-in-suit. Raising the patent-agent privilege, CEA opposed, claiming that its patent agents were entitled to assert privilege under a French professional-association regulation. When Samsung countered that a 2004 statute enacted by the French Parliament mooted the 2002 regulation, and therefore removed the agents' ability to assert privilege, the Court faced the task of engaging in French statutory interpretation. Ultimately, the Court sided with Samsung: "CEA's argument requires the court read into the 2004 statute an exception, the effect of which would be to modify the 2004 statute by the prior decree."

The result? The patent-agent privilege does not apply in this context and the French documents must be produced. The question of whether the foreign patent-agent privilege can be successfully asserted in this district must therefore wait another day.

Commissariat A L'Energie Atomique v. Samsung, C.A. No. 03-484-MPT (D. Del. Oct. 16, 2007) (Thynge, M.J.).

9/24: Flash Seats, LLC v. Paciolan (patent infringement)

On Friday, a Delaware jury refused to return a finding of invalidity on several Power Integrations patents. The special verdict allows an earlier jury award of $35 million to stand.

Power Integrations Inc. v. Fairchild Semiconductor Inc., C.A. No. 04-1371 (D. Del.) (Farnan, J.).

9/14: Elan Corp v. Teva Pharmaceuticals Inc. (Patent Infringement)
9/19: Arista Records et.al.(13 companies) v. Does 1-6 (Copyright)

The so-called "first-filed rule" of jurisdiction provides that, subject to a variety of exceptions, the first court to receive a cause of action should resolve the litigation to the exclusion of the second. According to a recent decision by Chief Judge Gregory M. Sleet, a necessary adjunct to this principle is that the second court need not delve into matters that are peculiarly within the first tribunal's purview.

In the Every Penny Counts litigation, which IPLaw360 (subscription) has treated elsewhere, the Delaware court found that uncertainty surrounding the availability of personal jurisidiction in the initial Florida court cannot constitute a reason for filing a parallel action in Delaware. Instead, the resolution of that question rests solely with the Florida court.

The Court continued: "With the institution of a separate action in this court, [plaintiff] essentially asks this court to substitute its judgment for that of the first-filed Florida court on the scope of the Florida court's jurisdiction." As a result, the Court transferred the second-filed action to Florida.

Bank of America, N.A. v. S.I.P. Assets LLC & Every Penny Counts Inc., C.A. No. 07-159-GMS (D. Del. Sept. 11, 2007) (Sleet, C.J.).

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)