Delaware IP Law Blog

In a decision unsealed on May 3, 2013, Judge Leonard P. Stark rejected both parties’ inequitable conduct defenses, finding that neither proved by clear and convincing evidence that the other intended to deceive the PTO. Power Integrations, Inc. v. Fairchild Semiconductor Int’l Inc., et al., C.A. No. 08-309-LPS (D. Del. Apr. 25, 2013). The Court found that the inventor of the Defendant’s asserted patent “was generally aware of the existence of” two patents allegedly intentionally withheld from the PTO, but that “does not mean he also was aware of those patents’ specific disclosures.” Id. at 7. Quoting the Federal Circuit’s decision in Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1330 (Fed. Cir. 2009), Judge Stark explained that “one cannot assume that an individual, who generally knew that a reference existed, also knew of the specific material information contained in that reference.” Id. at 8. Moreoever, the Court noted that the inventor believed his patent was “limited to frequency jitter on the primary side of a power converter,” whereas the allegedly withheld patents, “in [the inventor’s] mind, related to secondary side jitter control.” Id. Although the Court ultimately concluded that the inventor’s patent “was not limited to primary side applications, the Court’s subsequent conclusion does not render [the inventor’s] state of mind in 2004-2007 unreasonable . . . .” Id. Overall, the Court found the testimony of the defendant’s inventor to be credible, and therefore found that the plaintiff failed to show deceptive intent by clear and convincing evidence. Id. at 8-10.

The Court next addressed the defendant’s inequitable conduct defense, which was based on an alleged “misrepresentation” to the PTO during reexamination. Id. at 11. Specifically, the defendant argued that in response to a rejection during reexamination of certain claims as anticipated by a reference, the plaintiff argued that the reference “did not disclose a ‘maximum duty cycle signal provided by an oscillator,’” implicitly asserting that such an oscillator would be novel. Id. at 11-12. According to the defendant, such oscillators were well known in the art, and “the Examiner only withdrew the rejection because he mistakenly believed that an oscillator providing a maximum duty cycle was novel.” Id. at 12. The Court noted, however, that the plaintiff had disclosed other prior art referencing such oscillators, and in any event because the rejection was based on claims initially found to be anticipated, “[t]he arguments [the inventor] presented to the PTO were limited to the specific disclosure of the [specific] reference and focused on the differences between that reference and the claims.” Id. at 13. Accordingly, the Court found that no misrepresentation had been made to the PTO. Further, because the Examiner “identified an oscillator with a maximum duty cycle signal in at least one additional prior art reference,” the Court could not “conclude that the Examiner considered the oscillator to be a point of novelty.” Id. In short, the inventor “credibly testified that he believed the Examiner was aware that oscillators with maximum duty cycle signals were known in the prior art. . . . This belief is more than reasonable given that the Examiner expressly identified such an oscillator in the Office Action and signed several Information Disclosure Statements indicating that he considered the references [the Plaintiff] submitted that disclose this feature.” Id.

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Judge Stark recently issued the Court's claim construction opinion construing the terms of U.S. Patent Nos. 7,846,207, 7,862,616, and 7,875,076. The patents relate to "medical devices called 'intervertebral implants' and methods of implanting such devices between adjacent vertebrae in spinal fusion procedures." Depuy Synthes Products, LLC v. Globus Medical, Inc., C.A. No. 11-652-LPS (D. Del. May 7, 2013).

Judge Stark construed the following terms:

"[front] plate/plate"

"securing plate"

"upper surface [of the plate]"

"lower surface [of the plate]"

"upper plane [of the body]"

"underside plane [of the body]"

"lower plane [of the body]"

"plate top surface located generally on the upper plane/plate top surface"

"plate lower surface located generally on the lower plane/plate lower surface"

"borehole"

"being anchorable within the first and second boreholes and the first and second partial boreholes"

"first and second boreholes of the front plate diverge when viewed from the front surface/ diverge"

"captured between the front plate and the securing plate"

"located between the plate and the securing plate"

"contained between the adjacent vertebral bodies when the implant is inserted between the adjacent vertebral bodies"

"positioned between the upper and lower planes"

"the first and second boreholes of the front plate and the first and second heads are covered at least partly by the securing plate I covered at least partly by the securing plate"

"the securing plate at least partially covering each of the plurality of boreholes/the securing plate at least partially covering"

"the securing mechanism at least partially covering each of the plurality of boreholes/the securing mechanism at least partially covering"

"attaching a securing plate with a fastening agent over the first and second head portions of the first and second fixation elements"

"partial borehole in communication with the front surface and the upperside/underside of the body"

"non-metallic material"

"the first height being substantially equal to the second height so that the three dimensional body and the plate are contained between the adjacent vertebral bodies when the implant is inserted between the adjacent vertebral bodies/the first height being substantially equal to the second height"

"the second height being generally equal to the first height"

"the first and second heads and the first and second boreholes and partial boreholes positioned substantially between the upper and underside planes/positioned substantially between the upper and underside planes"

"securing mechanism"

"fastening agent"

"upper surface"

"lower surface"

"upper side"

"underside"

"upper vertebra"

"lower vertebra"

"upper endplate"

"lower endplate"

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In a recent memorandum order, a public version of which was released on April 19, 2013, Judge Leonard P. Stark granted a motion for summary judgment of noninfringement. Vehicle IP, LLC v. AT&T Mobility LLC, Civ. No. 09-1007-LPS (D. Del. Apr. 10, 2013). At issue was alleged infringement of U.S. Patent No. 5,987,377, “Method and apparatus for determining expected time of arrival.” The defendants’ motion asserted that based on the Court’s claim construction (previously discussed here), the plaintiff could not prove infringement, either literally or under the doctrine of equivalents. Id. at 7. As the Court explained, “the ‘377 patent discloses a system and method ‘for determining an expected time of arrival of a vehicle," and “every claim requires the determination of an ‘expected time of arrival of a vehicle at a way point[.]” Id. at 8 (emphasis added). Because the defendants’ products were not able to estimate times of arrival at intermediate way points, and instead only estimated times of arrival at final destinations, the Court found that the products could not literally infringe the ‘377 patent. Id. at 8-9.

The Court next rejected the argument that the products could be found to infringe under the doctrine of equivalents. The plaintiff argued that the defendants’ products, which were capable of calculating a “remaining travel time” to intermediate way points, infringe the ‘377 patent because the “‘remaining travel time’ format is insubstantially different from a ‘time of day’ format.” Id. at 9. The Court agreed with the defendants though, that infringement under the doctrine of equivalents could not be proved without impermissibly “vitiat[ing] the negative limitation – ‘and not remaining travel time’ . . . .” Id. at 10. In short, Judge Stark explained that “no reasonable juror could conclude that ‘remaining travel time’ is equivalent to the ‘expected time of arrival’ limitation” given the Court’s claim construction. Id.

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In a recent memorandum opinion, Judge Leonard P. Stark granted a motion for summary judgment that pre-2004 versions of Microsoft Windows do not infringe various patents asserted by the plaintiff. St. Clair Intellectual Property Consultants, Inc. v. Acer, Inc., et al., Consol. C.A. No. 09-354-LPS (D. Del. Mar. 29, 2013). The plaintiff had neither responded to interrogatories relating to pre-2004 Windows, nor provided the defendants with contentions on how pre-2004 Windows infringe. Id. at 4. Further, the plaintiff provided no competing expert testimony in response to the defendants’ expert, who opined that pre-2004 versions of Windows do not infringe. Id. at 5. Because the plaintiff carried the burden of proving infringement, and it “failed to present any evidence of infringement related to pre-2004 versions of Windows[,]” the Court granted the motion for summary judgment of non-infringement, and found further that pre-2004 versions of Windows could appropriately be considered non-infringing alternatives. Id. at 5-6 (emphasis in original).

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Recently, Judge Leonard P. Stark issued decisions with respect to defendants' motion to dismiss plaintiff’s claims of willful patent infringement pursuant to Federal Rules of Civil Procedure 12(b)(6) and 41(a)(1). St. Clair Intellectual Property Consultants, Inc. v. Samsung Electronics Co. Ltd. et al., C.A. No. 12-69-LPS (D. Del. Mar. 29, 2013). First, with respect to the briefing on the matter, Judge Stark granted plaintiff’s motion to file a sur-reply in opposition to defendants' motion to dismiss. (D.I. 21.). Judge Stark noted that a court “may grant leave to file a sur-reply if it responds to new evidence, facts, or arguments.” Id. at 2. Defendants' reply in support of its motion to dismiss, as Judge Stark explained, contained “newly-cited evidence,” including a complaint filed in the District of Delaware, a previously uncited Eighth Circuit case, and details regarding an entity from a prior, related lawsuit. Id. Granting plaintiff’s motion, Judge Stark explained that plaintiff’s sur-reply “will allow the Court to more fully and fairly evaluate Defendants’ pending motion to dismiss.” Id. at 3. Moreover, “Plaintiff’s sur-reply is relatively short, challenges Defendant’s interpretation and application of [the Eighth Circuit case], and explains Plaintiff’s view of the newly presented evidence.” Id. Judge Stark thus considered the sur-reply in reaching his decision on the merits of defendants’ motion. See id.

Judge Stark ultimately denied defendants’ motion to dismiss. (D.I. 22.). Defendants argued that plaintiff failed to state a claim because its claim was barred by Rule 41(a)(1). See id. at 4. Under Rule 41(a)(1)(B), “[i]f the plaintiff files a second notice of dismissal pursuant to Rule 41(a)(1), the Court must dismiss an action based on or including the same claim with prejudice.” Id. at 3. In December 2011, the current plaintiff filed a complaint against Samsung Electronics USA (“SE USA”) claiming SE USA willfully infringed plaintiff’s six patents as the result of sales and distribution of products containing the Android operating system. Id. at 1. In January 2012, that suit was voluntarily dismissed. The same day it dismissed that suit, plaintiff filed a second complaint against Samsung Electronics America, Inc. (“SEA”) and Samsung Telecommunications America, LLC (“STA”) for willful infringement of the same six patents as the result of the same type of sales and distribution. Id. Later that month, that second suit was voluntarily dismissed. Id. On the same day of the second dismissal, plaintiff filed a third suit—the suit at hand—against Samsung Electronics Co. Ltd. (“SEC”), SEA, and STA. Id. at 1-2. Once again, the plaintiff has sued for willful infringement of the same six patents based on the same type of sales and distribution. Id. at 2.

The issue before the Court, therefore, was whether the first two dismissals mandated dismissal of the third suit. Plaintiff first argued that the “two dismissal rule” was inapplicable because in the first suit SE USA was a “defunct corporation which could not sue or be sued.” Id. at 4. Judge Stark rejected this argument, explaining that “Federal Rule of Civil Procedure 3 states that an action commences upon the filing of the complaint.” Id. at 5. However, as Judge Stark explained, in order for the “two dismissal rule” to apply, the defendants must share some close relationship: they must be “the same, substantially the same, or in privity with each other,” or they must be “sufficiently interrelated so that they share the same legal rights.” Id. at 5-6. Judge Stark found that defendants failed to show by a preponderance of the evidence that such a close relationship existed. Id. at 7. Defendants had presented some evidence, particularly that “SE USA’s incorporator shares the same address as Samsung’s regional headquarters,” and that the incorporator “served as general counsel of SEA.” Id. at 6-7. Judge Stark found, however, that this relationship between SE USA and the subsequent defendants “is only through a single person” and “establishes no more than a tenuous relationship.” Id. at 7. Moreover, defendants failed to demonstrate “SE USA had the same, similar, or any legal interest in the subject matter of the three litigations, i.e., the Android operating system.” Id. at 7. Judge Stark therefore denied defendants’ motion to dismiss. Id. at 8.

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In a recent order, Judge Leonard P. Stark denied both (1) defendant’s motion to dismiss plaintiff’s claims of direct and indirect patent infringement for failure to state a claim and (2) plaintiff’s motion to dismiss defendant’s declaratory judgments of non-infringement and invalidity for failure to state a claim. Cronos Technologies LLC v. Vitamin Shoppe, Inc., C.A. No. 12-444-LPS (D. Del. Mar. 29, 2013). Although plaintiff amended its complaint and defendant amended its answer subsequent to the filing of the motions to dismiss, Judge Stark considered the motions to the extent they were not rendered moot. See id. at 2. Denying defendant’s motion for failure to state a claim, Judge Stark found that plaintiff’s direct infringement claim “satisfi[ed] the requirements of Form 18,” and that plaintiff’s complaint provided facts with respect to “knowledge, intent and direct infringement” to sufficiently plead induced infringement. Id. Defendant argued that plaintiff’s asserted method claims should be dismissed because plaintiff did not allege that a single entity performed all of the elements. Judge Stark found, however, that plaintiff’s patent included “both apparatus and method claims,” and that plaintiff was “not required to identify any specific asserted claim in the Amended Complaint.” Id. Turning to plaintiff’s motion to dismiss, Judge Stark first found that defendant “specifically identif[ied] non-infringing products” in its amended complaint and therefore sufficiently pled its non-infringement declaratory judgment. Id. Moreover, Judge Stark found that defendant sufficiently pled its declaratory judgment for invalidity, including “specific references to prior art, statutes, and legal principles” in its amended complaint. Id.

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Judge Leonard P. Stark recently denied a plaintiff’s motion to dismiss counterclaims for direct, indirect, and willful infringement. Fairchild Semiconductor Corp. v. Power Integrations, Inc., C.A. No. 12-540-LPS (D. Del. Mar. 29, 2013). The Court first considered the plaintiff’s argument that an allegation of infringement by “power supply controllers that include a ‘soft start’ feature and circuit covered by one or more claims of the ’366 patent” failed to sufficiently identify the accused products. Id. at 3-4. Judge Stark explained that “this Court has repeatedly declined to dismiss pleadings that accuse general categories of products[,]” because that is all Form 18 requires. Id. at 3-4. With respect to the specific allegation at issue, the Court explained that the defendant “has expressly identified a general category of products, power supply controllers, and further restricted that category to controllers that include certain features and circuits.” Id. at 4.

The Court next considered whether the defendant sufficiently pled "that [the plaintiff] had knowledge of the patents-in-suit prior to [the defendant] filing its counterclaims[.]” Id. at 7. The Court explained that "service of a complaint constitute[s] sufficient notice for an inducement claim based on post-filing conduct." Id. at 6. Accordingly, the motion was denied to the extent it targeted post-filing conduct by the plaintiff. Id. The Court reached the same result with respect to the plaintiff’s argument that “specific intent to induce infringement” was not adequately pled, explaining that the defendant “satisfied the pleading requirements for induced infringement [of all asserted patents] based on post-filing conduct.” Id. at 8. The Court noted that the allegations were more specific with respect to the ’366 patent, and rejected the plaintiff's suggestion that those allegations were insufficient because they were pled “on information and belief,” explaining “[v]iewing a complaint in the ‘light most favorable to plaintiff’ may ‘include[] facts alleged on information and belief.’” Id. at 8 n.9 (quoting Frederick Hart & Co. v. Recordgraph Corp., 169 F.2d 580, 581 (3d Cir. 1948) (internal quotation marks omitted)). Finally, the Court rejected the plaintiff’s suggestion that the inducement counterclaims should be dismissed for failure to identify specifically a direct infringer, explaining “a plaintiff need not identify a specific direct infringer if it pleads facts sufficient to allow an inference that at least one direct infringer exists.” Id. at 6 (quoting In re Bill of Lading, 681 F.3d 1323, 1336 (Fed. Cir. 2012)).

Judge Stark also denied the plaintiff’s alternative request that the defendant be ordered to provide a more definite statement under Rule 12(e), explaining “[t]he Court has determined that [the defendant’s] counterclaims provide sufficient notice of the infringement allegations [and] are not ‘so vague and ambiguous’ that [the plaintiff] cannot frame a responsive pleading.” Id. at 9-10.

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Judge Stark recently considered the parties’ post-trial motions following a jury trial in the long-standing dispute between Power Integrations and Fairchild Semiconductor. Power Integrations, Inc. v. Fairchild Semiconductor International Inc., et al., C.A. No. 08-309-LPS (D. Del. Mar. 29, 2013). The case involved infringement allegations by both the plaintiff and the defendants involving a total of six patents related to DC output power supplies or power converters. Regarding Power‘s U.S. Patent No. 6,249,876, the jury found that Fairchild infringed, literally and under the doctrine of equivalents, induced infringement and that the asserted claims were valid. Id. at 2. Regarding U.S. Patent No. 6,107,851, “the jury found in favor of Power and against Fairchild with respect to literal infringement, indirect infringement, and validity of the only asserted claim, claim 18.” Id. Regarding the remaining two patents asserted by Power, U.S. Patent Nos. 7,110,270 and 7,834,605, the jury found that the patent’s claims were valid, but not infringed. Id. Regarding the patents asserted by Fairchild, the jury found that Power infringed U.S. Patent No. 7,259,972 under the doctrine of equivalents, that Power did not infringe U.S. Patent No. 7,352,595, and that both patents were valid. Id. (See the verdict form here).

The parties filed various motions for judgment as a matter of law as to invalidity and non-infringement, as well as motions for a new trial. The Court denied all but one post-trial motion. In that motion, Power moved for judgment as a matter of law that Fairchild directly infringed and induced infringement of its ‘605 patent, or for a new trial. Id. at 13. Judge Stark granted Power's JMOL motion as to direct infringement because “Fairchild admitted that it did ‘not present[] evidence of a defense with regard to direct infringement.’ In the absence of such evidence, no reasonable jury could have returned a verdict on this issue in Fairchild’s favor.” Id. (internal citation omitted). Judge Stark denied, however, Power’s motion regarding the inducement verdict, which Power argued was “the result of Fairchild’s improper trial tactics[,]” because the Court’s “curative instruction was sufficient to eliminate unfair prejudice.” Id. at 14.

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Judge Leonard Stark recently granted a patent infringement defendant’s motion for sanctions for violations of the Court’s scheduling order. Due to the specific facts of the case, however, Judge Stark denied the requested relief of dismissal of the case. Instead, he ordered the plaintiff to pay defendant’s costs in bringing the motion for sanctions and struck the plaintiff’s request for prejudgment interest. See St. Clair Intellectual Prop. Consultants, Inc. v. Motorola Mobility LLC, C.A. No. 11-1305-LPS, Memorandum Opinion at 1 (D. Del. Mar. 29, 2013).

The parties’ dispute stemmed from a motion to stay filed by plaintiff St. Clair during the claim construction process. After filing its motion to stay but before the Court granted that motion, St. Clair failed to provide infringement contentions and failed to file an opening claim construction brief on the dates required for each by the Court’s scheduling order. Defendant Motorola continued to comply with scheduling order deadlines while the motion to stay was pending and brought a motion for sanctions for St. Clair’s omissions, seeking an order dismissing the case or prohibiting St. Clair from supporting its claims of infringement. Id. at 1-2.

Judge Stark considered the factors set forth by the Third Circuit in Poulis v. State Farm Fire & Cas. Co., 747 F.2d 863, 868 (3d Cir. 1984) for determining whether dismissal of a case is an appropriate sanction. Ultimately, he found that the balance of these factors—the extent of the party’s personal responsibility, prejudice to the adversary caused by failure to meet the scheduling order, history of dilatoriness, willfulness or bad faith, effectiveness of sanctions other than dismissal, and meritoriousness of the claim or defense—favored the imposition of sanctions. Id. at 3-8. “By relying on its motion to stay as a purported basis not to participate in litigation St. Clair chose to initiate—and in which it remained subject to a Scheduling Order—St. Clair essentially engaged in improper self-help, acting as if it had already obtained the relief it had at that point merely requested of the Court.” Id. at 6. Nevertheless, Judge Stark found that “less extreme sanctions” than dismissal were warranted, concluding “that imposing fees and costs incurred in bringing this motion for sanctions and striking St. Clair’s requests for prejudgment interest are appropriate sanctions . . . [because] [n]o party may unilaterally rewrite the Court’s Scheduling Order.” Id. at 3-8. Judge Stark also found that “Plaintiff’s citation to Local Rule 16.4 is unavailing [because] [t]hat rule requires the filing of a request for extension of deadlines prior to the expiration of the deadline.” Id. at 6 n.3.

In the process, Judge Stark noted that there was no “valid excuse for not talking and trying to resolve disputes” between the parties related to the joint claim chart, the motion to stay, and the motion for sanctions. “While [the motion for sanctions] is arguably dispositive because the relief sought includes dismissal, it would have been far preferable [for the parties] to have met and conferred. . . . The Court is unconvinced that the parties could not have worked out their conflicts over how the other side was proceeding if only they had made more of an effort to communicate.” Id. at 5-6, 6 n.2.

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Judge Leonard P. Stark recently considered plaintiffs' emergency motion to stay the date for service of plaintiffs' responsive expert reports pending resolution of plaintiffs' motion to strike defendants' untimely invalidity contentions. Avanir Pharms., Inc. v. Actavis South Atlantic LLC, C.A. No. 11-704-LPS (Consol.) (D. Del. Mar. 19, 2013). Judge Stark granted plaintiffs' motion finding that plaintiffs "would be unfairly prejudiced by having to prepare and serve responsive expert reports while their motion to strike is pending, as they would not know whether it is necessary to respond to all of the opinions expressed in Defendants' expert reports." Id. at 3.

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