Topics to be addressed include:
- Attorney/client privilege issues in bankruptcy and intellectual property
- Treatment of licenses and other intellectual property interests in bankruptcy

2.0 hours of Delaware CLE credits are available (including 1.0 hours of enhanced ethics). The cost is $75.00 and checks should be made payable to the FBA. If interested, please see the attached flyer for more information.

See flyer here.

The Court in Purdue Pharma, granted a third party's motion to quash a subpoena which sought documents related to an opposition to the European counterpart of the patent-in-suit and documents related to the knowledge a non-party foreign individual that was working on similar technology. In deciding to grant the motion, the Court found that the foreign patents and printed publications sought from the subpoenaed party are available without the defendants burdening the courts, the parties or foreign individuals. Id. at 5. The information related to a foreign individual's potential "knowledge or use" of the patented product is not prior art and is "too peripherally relevant to the matter at issue to justify issuing a letter request under the Hague Convention." Id.

Lesson learned: Parties seeking to burden both the district courts, foreign tribunals and foreign individuals in the quest for documents and testimony should be able to demonstrate that the information is sufficiently relevant to the litigation to "justify the burden and expense." Id. at 6.

For a copy of the opinion see here.

A constant theme in opinions resolving disputes over discovery is fairness and this opinion was no exception. Judge Robinson stated that her analysis need only "start and end" with the "fundamental principle of fairness." Id. at 2. The expert in this case was employed by a government agency and prohibited from producing his work product. His expert report in the litigation, however, relied on his recollection of some of this government work. The court found that the expert cannot rely on the recollection of this work product where the work product itself is otherwise shielded from discovery. Id.

For a copy of the opinion see here.

Examining the allegedly anticipating prior art, the Court concluded that "arguabl[e]" differences of scale created an "unclear" record. In a footnote, the Court then equated this lack of clarity with a failure to satisfy the controlling clear-and-convincing standard of review. As a result, the Court declined "to find through a motion practice" that the prior art anticipated the patent-in-suit. For substantially the same reasons, the Court also rejected the obviousness contention.

The import of the decision? When arguing (or defending) invalidity, an essential part of the litigation strategy includes mitigating (or creating) doubts in the Court's mind about the prior art.

SRI Int'l Inc. v. Internet Security Systems, C.A. No. 04-1199-SLR (D. Del. Aug. 21, 2008) (Robinson, J.).

"According to defendants, the absence of these officers and/or employees from their employment would be incredibly damaging to [its] nascent business operations and could possibly result in the business losing substantial revenue and/or failing. . . . In sum, defendants present themselves as small, regional businesses; weighing the convenience of the parties under the circumstances of record, the court agrees that maintaining the litigation in Delaware presents significant hardships to defendants."

Defendants often unsuccessfully assert inconvenience based on a lack of employees or records located in Delaware. This case is a rare example of the circumstances in which hardship stemming from location alone drives the transfer analysis.

L'Athene Inc. v. EarthSpring LLC, C.A. No. 08-114-SLR (D. Del. Aug. 7, 2008) (Robinson, J.).

According to the Wilmington News Journal, every fourth civil case will be assigned to one of the designated district judges. Although the judges will likely hear pretrial matters in either Pennsylvania or New Jersey, trials will be conducted in Delaware.

The six designated district judges from New Jersey are: Hon. Renee Marie Bumb, Hon. Mary Little Cooper, Hon. Noel L. Hillman, Hon. Robert B. Kugler, Hon. Joel A. Pisano, and Hon. Jerome B. Simandle.

In a recent post-trial decision, the Court assessed a defendant's unfair competition counterclaims in light of the so-called Noerr-Pennington doctrine, a judicially created immunity that bars application of the antitrust laws to those who petition the government for redress. The patentee, a generic manufacturer, had acquired a patent of questionable validity on the subject drug as a hedge against other competitors in the generic market. After initiating the underlying litigation, defendant responded with unfair competition, tortious interference, and antitrust counterclaims.

Analyzing the patentee's claims of immunity from suit, the Court criticized the business motives that led to the acquisition of the weak patent:

"The inference to be drawn from this chronology is that, instead of directing its efforts to launching a generic, [patentee] obtained and relied upon an admittedly 'weak' patent for protection from other generic competition."

Noting that even a questionable patent "enjoys a presumption of validity," however, the Court held that the infringement litigation could not be characterized as a sham suit. The Court highlighted the fact that no tribunal had invalidated the patent:

"The validity of the '183 patent has not be adjudicated by any court (or the USPTO on reexamination). This court has no occasion to judge the merits of [defendant's] invalidity arguments, and declines to issue a finding that [the patentee] 'should have known' of its patent's invalidity absent such findings."

The lesson? Until an objective basis exists for invalidity - i.e., a court or agency ruling - the infringement plaintiff will enjoy Noerr-Pennington immunity.

Braintree Labs. Inc. v. Schwarz Pharma Inc., C.A. No. 03-477-SLR (D. Del. July 31, 2008) (Robinson, J.).

Defendants argued that their only tie to Delaware was the fact that they were incorporated here and that the case law provides for transfer where that is the only link to the forum. Id. at 3. The Court found the cases relied on by defendants distinguishable, however, since in those cases there was also simultaneous litigation proceeding in the transfer district, and there is no such parallel litigation here. Id. at 4.

In a continuing trend in D. Del. transfer opinions, the Jumara factors related to location of witnesses and documents are becoming less important to the analysis. The Court has held that party-witnesses such as employees "are presumed willing to testify at trial" and therefore are not part of the analysis. Id. at 5. And even in the case of third-party witnesses, "a flight to Delaware is not an onerous task warranting transfer." Id. Finally, in this age of electronic discovery, the location of documents becomes almost irrelevant. Id.

For a copy of the opinion see here.

In 2007, 19% of civil case filings in the district were for patent cases. Delaware held 17 patent trials in 2007, 8 of which were bench trials. The total number of patent trials in Delaware during 2007 was nearly 20% of the total held nationwide. The District of Delaware continues to be first in the country for number of patent cases per judge. Finally, 157 patent cases were filed in this district last year, up from 139 in 2006.

Despite all of the discussions regarding a downturn in patent filings nationwide, patent litigation continues to grow and thrive in the District of Delaware!

The six judges are: Hon. Harvey Bartle III, Hon. Stewart Dalzell, Hon. Legrome D. Davis, Hon. J. Curtis Joyner, Hon. Robert F. Kelly, and Hon. Eduardo C. Robreno. The designation orders are available on the D. Del. website (navigate to "7/28/2008" link).

According to comments made by D. Del. Chief Judge Gregory M. Sleet at today's Federal Bar Association meeting, the visiting judges will hear every fourth civil case brought in this district.

For a copy of the flyer see here.

In its opinion, the Court noted that plaintiffs sought to introduce the disclaimer after the close of evidence. Although it acknowledged "concern" over the timeliness of the filing, the Court nonetheless allowed the document into evidence. As part of the patent-in-suit's prosecution history, the disclaimer became on filing an "admissible supplementation of an already identified trial exhibit."

As a result, the Court concluded, the "issue of timeliness is more appropriately addressed in the context of the disclaimer's effectiveness, rather than its admissibility."

Boehringer Ingelheim Int'l GMBH v. Barr Labs. Inc., C.A. No. 05-700-JJF (D. Del. July 15, 2008) (Farnan, J.).