Delaware IP Law Blog

In a case assigned to Judge Leonard P. Stark, he recently issued an Order scheduling a Rule 16 teleconference and attached a draft copy of the Rule 16 form scheduling order. This form is not yet posted to the Court's website, but will likely be his form scheduling order going forward. The order appears to combine some practices of each of his colleagues on the bench as well as former judges from this district. Here are some of the interesting sections:

- Deposition testimony is limited to a total number of hours proposed by the parties (instead of number of depositions)

- Judge Stark does not adopt a formal exchange of contention interrogatories in his order (compare to Judge Robinson's form Rule 16 order), but does state that the "Court encourages the parties to serve and respond to contentions early in the case."

- A provision that is unique to his form is paragraph 4 which applies to the case protective order. He requires that any proposed order include the following a paragraph set forth in the form order that applies to other proceedings.

- Judge Stark has a provision for the parties to provide tutorials on the technology at issue via submission of a videotape or CD of not more than 30 minutes with the ability for the opposing party to submit a short written comment on the other side's submission.

- Case dispositve motions are to be briefed according to the local rules.

A copy of his form order is attached below.

Judge Leonard P. Stark Rule 16 Scheduling Order (Patent Cases)

On Wednesday, Judge Stark issued what looks to be his first order signed as a United States District Judge (at least the first to be posted to the Court's website): Allergan Inc. v. Barr Laboratories Inc., C.A. No. 09-333-SLR-LPS (D. Del Aug. 18, 2010).

The order deals with discovery and privilege issues. Plaintiff Allergan inadvertently produced a number of allegedly privileged documents, including scientific data and part of the invention record for a relevant patent. Some of the documents had already been inadvertently produced once before, and successfully recalled, in an earlier litigation against the same defendants.

Defendant Barr Laboratories apparently argued (its filings are under seal) that this double inadvertent disclosure constituted waiver or at least indicated a lack of adequate precautions to protect privileged information under the protective order. Allergan responded that "such mistakes are unfortunate, but not unheard of," and stated that the documents slipped by despite "exhaustive privilege screen procedures." See July 30, 2010 and Aug. 13, 2010 letters from Allergan to the Court.

The Court agreed with Allergan, holding that

Allergan has not waived the attorney-client privilege with respect to the documents at issue. Allergan had in place sufficient procedural protections to comply with its obligations to review materials for privilege prior to production. The amount of inadvertently produced privileged materials is minuscule in comparison with the size of Allergan's overall production.

As to the technical documents, Barr apparently sought access to the data contained within the documents on the grounds that it was not a privileged part of the communication. The Court rejected this request under an application of In re Spalding Sports Worldwide, Inc., 203 F.3d 800, 805 (Fed. Cir. 2000), which held that invention records and the technical information within them are privileged.

Things are moving quickly here in the District of Delaware. In a flurry of docket activity the past 24 hours, it appears that cases previously assigned to Judge Farnan (who retired from the bench on July 31, 2010) are being reassigned to Judge Leonard P. Stark. Those cases are seeing docket entries containing text similar to the following:

"Case reassigned to Judge Leonard P. Stark. Please include the initials of the Judge (LPS) after the case number on all documents filed."

As reported on the District of Delaware website:

"Judge Leonard P. Stark was sworn-in as a U.S. District Judge on August 16, 2010. A formal ceremony will be held in the future."

THIS JUST IN...The United States Senate today, confirmed Leonard P. Stark as a district court judge for the District of Delaware, filling the long vacant seat left by Judge Kent A. Jordan who was elevated to the Third Circuit Court of Appeals in 2006. More to follow...

In their motion for a preliminary injunction, plaintiffs sought to enjoin defendant from bringing to market defendant’s generic version of plaintiffs’ drug. Id. at 1. Plaintiffs’ motion was filed after the Court held its March 23, 2010 Markman hearing and after the parties informed the court that defendant planned an “at-risk launch” if its generic product received FDA approval. Id. at 4. Defendant agreed to not launch before May 31, 2010, and plaintiffs filed their motion for a preliminary injunction on April 2, 2010. In granting plaintiffs’ motion, Judge Stark found the following: (1) plaintiffs established likelihood of success on the merits based on, among other things, the label defendant proposed to the FDA for its generic product; (2) plaintiffs would be harmed irreparably due to lost market share, lost profits and price erosion; (3) harm to plaintiffs outweighed any harm defendant might suffer due to the injunction because, among other things, defendant would still be entitled to its 180-day period of exclusivity; and (4) the public interest would be served because “the public interest in recognizing Plaintiffs’ patent rights, and more generally promoting continued, large-scale investment in research and development of new pharmaceuticals, outweighs the public’s interest in promoting generic, low-cost alternatives to branded pharmaceuticals.” Id. at 7-38. Judge Stark also ordered plaintiffs to post a $26 million bond in the event that defendant was wrongfully enjoined. Id. at 39-40.

The Research Foundation of State University of New York, et al. v. Mylan Pharmaceuticals Inc., C.A. 09-184-...

On June 28th, Magistrate Judge Stark issued an order granting Mylan Pharmaceuticals, Inc.'s motion to amend its infringement response to include an allegation of unenforceability due to inequitable conduct, based on plaintiff Galderma Laboratories' failure to disclose an allegedly material FDA action during prosecution.

The Court held that the proposed amendment pled inequitable conduct with the required particularity, and it allowed the amendment because Mylan had not acted in bad faith or with a dilatory motive in omitting the allegation from its original answer, and because there was no undue prejudice to plaintiffs. Plaintiffs had failed to disclose the relevant FDA Memo despite the fact that it was responsive to a timely document request, and the Court accepted Mylan's explanation that it had not discovered the FDA litigation previously because it had "limited its search to patent infringement actions" (even though "it is clear that a search of all federal court decisions (on Westlaw or Lexis, for example) for [the drug name] would have retrieved the FDA action."). Id. at 6.

The Research Found. of State Univ. of New York v. Mylan Pharm. Inc., C.A. No. 09-184-GMS-LPS (D. Del. June 28, 2010)

Although parties to litigation enjoy a wide latitude in amending pleadings, the ability to change one's case theory midstream has its limits. A recent decision by Magistrate Judge Leonard P. Stark demonstrates these boundaries. In the underlying infringement litigation, Facebook sought to amend its false-marking counterclaim outside the confines of the scheduling order. Looking to Rule 16(b)'s "good cause" standard, the Court denied Facebook's request on diligence grounds.

Specifically, the Court emphasized Facebook's possession of the documents necessary to its proposed pleading prior to the amendment deadline:

"[I]t appears that Facebook possessed documents containing examples of how Leader marked its . . . products before it previously moved to add the false marking claim. Facebook provides no explanation for why, in light of this information, it could not reasonably have complied with the Scheduling Order. Accordingly, the Court concludes that Facebook has not shown that good cause exists to amend its responsive pleading with regard to the false marking counterclaim."

By doing so, the Court gave clear guidance to the litigator: diligence for purposes of Rule 16(b)'s "good cause" standard includes a timely review of an opposing party's document production.

Leader Technologies, Inc. v. Facebook, Inc., C.A. No. 08-862-LPS (D. Del. June 24, 2010) (Stark, M.J.).

In a related decision, Judge Farnan approved two discovery orders issued by Magistrate Judge Stark in this case - one on the common-interest privilege and the other allowing a restricted reopening of discovery. Read the decision here.

A recent claim-construction report and recommendation by Magistrate Judge Leonard P. Stark approached the dilemma of construing numerous terms in a creative way. Faced with over fifty disputed claim terms, the Court posed six questions that, when answered, would resolve the meaning of the claims:

(1) "Do the Abbott patents exclude an 'internal hydrophobic component' ";

(2) "Whether the 'treatment-lining' terms should be numerically defined";

(3) "Whether 'sustained release' can be defined in relation to 'immediate release'";

(4) "Whether 'significant increase' should be numerically defined";

(5) "Whether 'intermediate release' can be defined in relation to both 'sustained release' and 'intermediate release' ";

(6) "Whether 'about' should be numerically defined."

By grouping the disputed terms together in this way, the Court was able to resolve the parties' disputes without wading into the whole universe of claim terms.

Abbott Labs. v. Lupin Ltd., C.A. No. 09-152-JJF-LPS (D. Del. June 18, 2010) (Stark, M.J.).

In Biovail Laboratories International SRL v. Cary Pharmaceuticals Inc., C.A. No. 09-605-JJF-LPS, Judge Stark considered defendant’s motion to strike a supplemental expert declaration filed in support of plaintiff’s answering claim construction brief. Defendant argued that the supplemental declaration contained new opinions that should have been disclosed earlier and that Defendant would be prejudiced at the Markman hearing because it would not have had the opportunity to depose the expert on the new opinions or to have its expert prepare a rebuttal. Id. at ¶7. Plaintiff responded that the Scheduling Order did not preclude supplemental expert declarations, which are the norm, and did not contain a deadline for deposing experts. Id. at ¶8. Judge Stark denied defendant’s motion to strike. However, Judge Stark provided a less extreme remedy for defendant, noting that plaintiff’s conduct was far from laudable. Id. at ¶11. “While [plaintiff] has not engaged in willful deception, its silence as to its intent to file a rebuttal report and its failure to in any way disclose [its expert’s] rebuttal opinions at a time when [defendant] could test and/or respond to them appears to have had the consequence of deceiving [defendant] into believing that the record with respect to the opinions of claim construction experts was complete.” Id. Judge Stark also noted that plaintiff did file the supplemental expert declaration after the time for expert depositions had passed—such conduct being “inconsistent with the intent of the Scheduling Order. Id. Because defendant would be unduly prejudiced at the Markman hearing, Judge Stark delayed the hearing by four weeks and permitted defendant to take a second deposition of plaintiff’s expert, and provided that defendant could file a reply claim construction brief. Id. at ¶12. Furthermore, Judge Stark provided that defendant could file a motion for monetary sanctions after the Markman hearing if defendant “believe[d] that any unfair prejudice caused by [plaintiff’s] conduct ha[d] not been adequately ameliorated[.]” Id. at ¶13.

Biovail Laboratories International SRL v. Cary Pharmaceuticals Inc., C.A. No. 09-605-JJF-LPS

Magistrate Judge Stark construed the claim terms below in an ANDA patent infringement case related to the brand name Oracea® doxycycline capsules. The Resesarch Foundation of State University of New York v. Mylan Pharmaceuticals, L.P., C.A. No. 09-184-JJF-LPS, Report and Recommendation Regarding Claim Construction (D. Del. May 12, 2010). A main feature of the invention is that the patented drug compounds "achieve a therapeutic result through non-antimicrobial mechanisms." Id. at 2.

(1) "tetracycline compound"
Construction: compound within the class of which tetracycline is the parent compound
and is characterizied by a unique four-ring structure
(2) "antibiotic tetracycline compound"
Construction: a compound having antibiotic activity within the class of which tetracycline
is the parent compound and is characterized by a unique four-ring structure
(3) "the tetracycline compound has substantially no antibiotic activity"
Construction: the tetracycline compound has been modified chemically to reduce or
eliminate its antibacterial activity, or the tetracycline compound possesses
antibacterial activity but is employed in an amount which has substantially
no antibacterial effect
(4) "minimum antibiotic serum concentration"
Construction: the lowest concentration known to exert a signficant antibiotic effect
(5) "chronic inflammatory condition"
Construction: an inflammatory condition lasting for days to weeks or longer, and is
associated histologically with the presence of lymphocytes and
macrophages and with proliferation of blood vessels and connective tissues

This claim construction order was subsequently adopted. The Resesarch Found. of State Univ. of New York v. Mylan Pharmaceuticals, L.P., C.A. No. 09-184-JJF-LPS (D. Del. June 24, 2010) (order).

The Resesarch Foundation of State University of New York v. Mylan Pharmaceuticals, L.P., C.A. No. 09-184-JJF-LPS, Report and Recommendation Regarding Claim Construction (D. Del. May 12, 2010).

In a report and recommendation regarding claim construction on patented technology for processing debit card transactions, Magistrate Judge Stark construed the following claim terms:

- "telecommunication means"
- "debit styled card"
- "debit purchase transactions"
- "purchasing value of a card in response to card use"
- "entering a customer authorization code for authorizing access to a customer database of a host data provider"
- "entering an authorization code through the keypad for having the computer initiate communication with a host data processor"
- "requesting a response of approval or disapproval from the host data processor"
- "credit authorization provider"

Stored Value Solutions, Inc. v. Card Activation Technologies, Inc., C.A. No. 09-495-JJF-LPS, Report and Recommendation Regarding Claim Construction (D. Del. Apr. 28, 2010).

Issue re: means-plus-function: The parties disputed whether the term "telecommunications means" is in means-plus-function format. The court concluded that there was not sufficient sstructure for performing the described function to overcome the presumption that the term is in means-plus-function format. Id. at 7.Specifically, defendant argued that the distance between the disputed term and the element that describes the function is inconsistent with means-plus-function format, but cited no authority to support their position. Therefore, Judge Stark found that the term was in means-plus-function format. Id. at 7-8.

Stored Value Solutions, Inc. v. Card Activation Technologies, Inc., C.A. No. 09-495-JJF-LPS, Report and Recommendation Regarding Claim Construction (D. Del. Apr. 28, 2010).

As we previously mentioned in an earlier blog post, Magistrate Judge Leonard P. Stark has been nominated by President Obama to fill the current D. Del. vacant judgeship. (see post here) The Senate Judiciary Committee held a confirmation hearing last Thursday, April 23, 2010 regarding his nomination. The committee members may still provide written questions to Magistrate Judge Stark before the committee votes. The nomination must be approved by the full committee and then confirmed by the full Senate.

For a more comprehensive recap of the hearing, below is a link to the Delaware News Journal Article of April 24, 2010.

Delaware News Journal Article April 24, 2010

Magistrate Judge Stark denied defendant's request for entry of a 60 day stay based on a "drastic downturn in [defendant's] financial outlook." Aerocrine AB v. Apieron, Inc., C.A. No. 08-787-LPS, Order Regarding Request for Stay, at 1 (D. Del. Mar. 30, 2010). A court has discretion to enter a stay because of financial hardship on one of the parties. Id. at 1. Finding that there are hardships for both parties, including potential bankruptcy for the defendant and for plaintiffs, the possibility that defendant will continue to infringe the asserted patents and delay of resolution of this litigation which has been pending since 2008, the court chose to deny the stay. "Ultimately, [plaintiff] prefers to proceed with this litigation at the risk that doing so will force [defendant] to file for bankruptcy protection, rather than have the instant action stayed in hopes that the proposed asset sale will be consummated and permit [defendant] to proceed with the litigation." Id. at 2.

Aerocrine AB v. Apieron, Inc., C.A. No. 08-787-LPS, Order Regarding Request for Stay, at 1 (D. Del. Mar. 30, 2010).

Magistrate Judge Stark recently issued a memorandum order in Aerocrine AB v. Apieron Inc., C. A. 08-787-LPS (D. Del. Mar. 30, 2010). The order granted a motion by plaintiff Apieron to amend their complaint to add inequitable conduct allegations, and denied defendant Aerocrine's motion for judgment on Apieron's pleadings alleging inequitable conduct.

The inequitable conduct allegations arose from the deposition of a non-party scientist in the field of the patents. The scientist explained that he had performed research directed to the same subject matter of the patents, and prior to their earliest filing date. The scientist also stated that he had presented his research at a conference attended by the inventors of the asserted patents, and that "it would be 'hard for [him] to imagine' that [one of the inventors] was not aware of his work, because [they] went to meetings together between 1993 and 1999, 'knew each other and talked about [the research].'" Id. at 5. According to the proposed amendment to the complaint, the inventors knew of the research presented at the conference, and the research anticipates every element of at least one (specific) claim of each of the patents. None of the inventors disclosed the research to the patent office.

The Court granted the motion to amend the complaint, because it "was filed less than a month after Apieron took [the scientist's] deposition and became aware of the basis for its allegations of inequitable conduct," and there was no undue prejudice or evidence of bad faith or a dilatory motive in their conduct. The Court also denied Plaintiff's opposing motion for judgment on the pleadings, holding that that these allegations, laid out with detail in the amended complaint, were enough to plead inequitable conduct with particularity as required by the Federal Circuit's Exergen decision. Id. at 22.

Aerocrine AB v. Apieron Inc., C. A. 08-787-LPS (D. Del. Mar. 30, 2010)

Earlier this week, in Arendi Holding Ltd., v. Microsoft Corp., C.A. No. 09-119-JJF-LPS (D. Del. Mar. 22, 2010), Magistrate Judge Stark issued a Report and Recommendation that Judge Farnan grant Microsoft's motion for summary judgment on Arendi's claims for provisional damages under 35 U.S.C. § 154(d). Section 154 allows a patentee to pursue "provisional" damages for the period before the patent is actually granted, reaching back to the date on which the application was published. Id. at 10-12. It requires, however, that the accused infringer had "actual notice of the published patent application." Id. at 11; 35 U.S.C. § 154(d).

The question is: what does "actual notice" mean? Magistrate Judge Stark determined that the statute focuses on the accused infringer, not the patent applicant, and so the notice need not have come from the patent applicant. Id. at 14. Further, the accused infringer need only have had actual notice of "the published patent application," rather than specific notice of infringement. Id. at 14-15. The statute does, however, require actual notice, not constructive notice, and that is what decided the issue here..

Under the facts before the Court, Microsoft received notice solely as part of a 7,000 page document production in another case. Magistrate Judge Stark found that to be insufficient:

[A] single-page Notice of Publication dropped into nearly 7,000 pages of document production is analogous to a published application being available in a database but not expressly drawn to the attention of the alleged infringer. The authors of the legislative history did not intend for § 154( d)' s actual notice requirement to be deemed satisfied by mere availability of a patent application in a public database.

Arendi Holding Ltd., v. Microsoft Corp., C.A. No. 09-119-JJF-LPS (D. Del. Mar. 22, 2010)

President Obama nominated Magistrate Judge Leonard P. Stark to fill the District of Delaware vacancy. The position has been empty since 2006 when Judge Kent A. Jordan was appointed to the Third Circuit.

For a copy of the White House Press Release see here.

In ITT Manufacturing Enterprises, Inc. v. Cellco Partnership (d/b/a Verizon Wireless), et al., C.A. 09-190-JJF-LPS (D. Del. Feb. 17, 2010), Judge Stark recently overruled the objections of defendant LG, ordering LG to produce to plaintiff ITT "all non-privileged discovery responsive to ITT's non-CDMA document requests and interrogatories that had previously been withheld on the grounds of lack of good faith factual basis," because the information was relevant to infringment clalims against LG, a manufacturer of phones that operate on CDMA and non-CDMA cellular networks. Id. at 2-3. ITT had also subpoened third party AT&T, operator of a non-CDMA cellular network, seeking the same discovery. Id. at 2. However, Judge Stark granted AT&T's motion to quash because AT&T was not a party and ITT had not alleged infringment of the patent-in-suit. Id. at 3. Moreover, the discovery may be available from LG or other defendants. Id.

ITT Manufacturing Enterprises, Inc. v. Cellco Partnership (d/b/a Verizon Wireless), et al., C.A. 09-190-JJF-LPS (D. Del. Feb. 17, 2010)

In December of 2009, Judge Robinson amended her form scheduling order in patent cases to provide for bifurcation of the issues of liability and damages/willfulness for both discovery and trial. In one of the cases in which these issues are bifurcated, the parties were referred to Magistrate Stark to resolve certain discovery-related issues. Teles AG Informationstechnologien v. Cisco Systems, Inc., C.A. No. 09-72-SLR-LPS, Order (D. Del. Dec. 28, 2009).

First, the court denied plaintiff's request to remove the confidential designation from certain documents related to defendant's commercial success so that it may submit the information to the PTO as part of the reexamination of its patents. Id. at 2. The Court found that plaintiff did not provide any authority to support its position that defendant had an obligation to provide the information to the PTO nor that it "suppressed" this evidence. Id.

Second, the court denied plainitff's motion for an additional deposition of defendant's 30(b)(6) witness on certain topics where the defendant properly objected to the testimony as outside the scope of limited damages discovery in the bifurcated case. Id. at 2-3. Specifically, plaintiff inquired about two routers that it says are accused products but were not identified in its infringement contentions and defendant's "cost of sales" which was not mentioned in plaintiff's submission to the Court addressing what commercial success evidence should be permitted. Id. at 3.

Teles AG Informationstechnologien v. Cisco Systems, Inc., C.A. No. 09-72-SLR-LPS, Order (D. Del. Dec. 28, 2009).

Judge Stark recently considered Defendants’ Motion to Strike and Dismiss in his Report and Recommendation in Power integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., et al., C.A. No. 08-309-JJF-LPS (D. Del. Dec. 18, 2009). Plaintiff filed this patent infringement action alleging that defendants infringed three of plaintiff’s patents. Defendants subsequently filed counterclaims alleging that plaintiff infringed three of defendants’ patents. Plaintiff’s answer, filed simultaneously with the Federal Circuit’s issuance of an opinion in Exergen, included “defenses and counterclaims based on [defendants’] allegedly inequitable conduct during the prosecution of the asserted [defendants’] patents.” Id. at 2. Both plaintiff and defendants subsequently filed various amended answers and amended counterclaims. Id.

Defendants’ pending motion was directed at plaintiff’s counterclaims alleging inequitable conduct. Id. Plaintiff’s counterclaim alleged that “‘at least one of the named inventors and at least one of the patent agents of records, with knowledge of the withheld material information and the specific intent to deceive, failed to disclose to the PTO material, non-cumulative prior art known to them during prosecution.’” Id. at 3 (citation omitted). Defendants argued that plaintiff failed to meet the heightened pleading standard under Exergen because plaintiff failed to prove “a particularized basis for its claims of inequitable conduct or the inferences that must be drawn with respect to knowledge and intent.” Id. at 14. Judge Stark agreed, “to a limited extent.” Id. For example, plaintiff’s counterclaim related to its ‘972 patent against a patent agent that prosecuted co-pending patents, but not the one in question, failed to be pled with particularity because “[the patent agent] was not the patent agent who prosecuted the ‘972 patent . . . and [plaintiff] does not allege any facts to show that [the patent agent] was otherwise an “‘individual associated with the filing or prosecution of’ the ‘972 patent.” Id. at 15 (citing Exergen). With regard to plaintiff’s ‘780 patent, Judge Stark found that plaintiff failed “to allege the ‘what’ and ‘where’ of its inequitable conduct allegations. Id. at 16.

Power integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., et al., C.A. No. 08-309-JJF-LPS (D. Del. Dec. 18, 2009)

In this multidistrict litigation consolidating nine patent infringement actions, Judge Stark recently issued a Report and Recommendation Regarding Motions for Summary Judgment and to Dismiss and Order on Evidentiary Motions. In re Rosuvastatin Calcium Patent Litig., MDL No. 08-1949 (D. Del. Dec. 11, 2009). One such motion was Defendant Aurobindo India’s Motion for Summary Judgment of No Personal Jurisdiction. Id. at 5. Aurobindo India argued that if it is dismissed from the case, so must defendant Aurobindo USA because of the absence of “the necessary and indispensible Aurobindo India.” Id. However, Judge Stark agreed with plaintiffs that under Forest Labs., Inv. v. Cobalt Labs., Inc., 2009 WL 605745 (D. Del. Mar. 9, 2009), and considering the record, id. at 6-9, there was sufficient evidence to conclude that “Aurobindo USA ‘engages in [a] persistent course of conduct’ in Delaware, thereby establishing general jurisdiction.” Id. at 9 (citing 10 Del. C. § 3104(c)(4). Moreover, “[u]nder the alter ego and agency theories, these jurisdictional contacts of Aurobindo USA may be imputed to Aurobindo India.” Id.

A different result was reached when Judge Stark considered defendant Apotex Inc.’s Motion to Dismiss for Lack of Personal Jurisdiction or in the Alternative to Transfer to the Middle District of Florida. Id. at 10. Here, Judge Stark found insufficient contacts with Delaware but that transfer was warranted. Id. Judge Stark noted that “Apotex Inc. is a Canadian corporation with a principal place of business in Canada. It has no offices, facilities, telephone listings, bank accounts, or property in Delaware. It does not have employees, or do business, in Delaware.” Id. at 11. Although plaintiffs argued that defendant Apotex Corp.’s contacts with Delaware should be imputed to Apotex Inc., the same argument that was successful with the Aurobindo defendants, here, Judge Stark found that plaintiffs failed to meet their burden. Id. “Apotex Corp. generates its own revenue, with which it purchases the products it sells. Apotex Corp. decides which of Apotex Inc.’s approved products it will market. Apotex Corp. pays Apotex Inc. for administrative services rendered by Apotex Inc. and the two companies maintain distinct books, records, financial statements, and tax returns.” Id. at 11-12. Judge Stark subsequently transferred the suit against Apotex Inc. to Florida, where Apotex Inc. conceded jurisdiction exists. Id. at 12.

In re Rosuvastatin Calcium Patent Litigation, MDL No. 08-1949 (D. Del. Dec. 11, 2009)

In Power Integrations, Inc. v. Fairchild Semiconductor International, Inc., et al., C.A. No. 08-309-JJF-LPS (D. Del. Dec. 18, 2009), Judge Stark recently construed the following claim terms.

“multi-sampling . . . during an off-time of said switching signal”sampling two or more times during one off-time of the switching signal

“a controller to generate the switching signal and to control the switching signal in response to a first feedback signal associated with a voltage control loop and a second feedback signal associated with a current control loop”a controller to generate the switching signal and to control the switching signal in response to a first feedback signal associated with a voltage control loop and a second feedback signal, distinct from the first feedback signal, associated with a current control loop

“controlling a switching signal to regulate the connection of the electrical power to output terminals in response to a first feedback signal associated with a voltage control loop and a second feedback signal associated with a current control loop”controlling a switching signal to regulate the connection of the electrical power to output terminals in response to a first feedback signal associated with a voltage control loop and a second feedback signal, distinct from the first feedback signal, associated with a current control loop

“sampling a voltage . . . and a discharge time”sampling a voltage from the auxiliary winding of the transformer when the transformer is discharging

“frequency variation signal”an internal signal that cyclically varies in magnitude during a fixed period of time and is used to modulate the frequency of the oscillation signal within a predetermined frequency range

“frequency jittering”varying the switching frequency of a switch mode power supply about a target frequency in order to reduce electromagnetic interference

“means coupled to the control input for varying the switching frequency, including: one or more current sources . . . and a counter”Means-plus function term, with a function of “varying the switching frequency of the oscillator,” and a structure of a digital-to-analog converter and a counter having at least four bits

Power Integrations, Inc. v. Fairchild Semiconductor International, Inc., et al., C.A. No. 08-309-JJF-LPS (D. Del. Dec. 18, 2009)

On Friday, Magistrate Judge Stark's claim construction came down on another set of patent infringement cases by St. Clair Intellectual Property Consultants based on their digital camera patents. St. Clair Intellectual Property Consultants, Inc. v. Matsushita Electronic Industrial Co., LTD., 04-1436-LPS (D. Del. Nov. 13, 2009). This case is the latest in a series of cases by St. Clair Intellectual Property Consultants against various companies for infringement of these digital camera patents. Interestingly, this is the third time that these patent claims have been construed by the District of Delaware (the first two cases were before Judge Farnan). While Judge Stark noted that Judge Farnan's constructions in the first two cases were not necessarily binding against these defendants, the court's analysis led it to follow Judge Farnan's interpretation of each claim anyway. The majority of the claims were construed in favor of St. Clair's proposed interpretations. From the looks of this holding (and the fact that everything seems to have a camera these days), I would suspect that the District of Delaware will continue to see cases brought by St. Clair.

St. Clair Intellectual Property Consultants, Inc. v. Matsushita Electronic Industrial Co., LTD., 04-1436-LPS (D. Del. Nov. 13, 2009)

As noted in a post from August of this year (see here), Judge Robinson has instituted a bifurcation procedure in her cases where she conducts separate trials for liability and damages/willfulness. As part of this procedure, damages discovery is stayed except for discovery necessary to support the ADR process, to determine how valuable the patent is, and as it relates to secondary considerations of non-obviousness (i.e., commercial success). In Teles AG Informationstechnolgien v. Quintum Technologies, LLC, a dispute arose over the proper scope of commercial success discovery in a case where damages discovery has been stayed. C.A. Nos. 06-197-SLR-LPS, 09-72-SLR-LPS, 09-232-SLR-LPS, Order Regarding Discovery, at 2 (D. Del. Oct. 30, 2009). This dispute was referred to Magistrate Judge Stark for resolution. Id. at 3.

Judge Stark refused to order the production of invoice level detail on sales from any product with the accused feature, finding that aggregrate, general sales information on accused products (for which plaintiff provided infringement contentions) is sufficient. Id. at 6. Specifically, Judge Stark noted that the financial data "should be limited to the products [plaintiff] has actually accused as part of its infringement contentions...." Id. (internal citations omitted) (empahsis added). The Court also found that "internal and external evidence regarding market share" with respect to the accused products and internal marketing materials should be produced. Id. at 8.

Plaintiff had requested documents for a time frame beginning three years prior to introduction of the allegedly infringing feature through the present day. The Court found that this time frame was too broad and should begin the year before the accused feature was introduced through the first two years it was available in the marketplace. Id. at 7.

Teles AG Informationstechnolgien v. Quintum Technologies, LLC, C.A. Nos. 06-197-SLR-LPS, 09-72-SLR-LPS, 09-232-SLR-LPS, Order Regarding Discovery, at 2 (D. Del. Oct. 30, 2009).

Magistrate Stark recently issued a Report and Recommendation Regarding Claim Construction in Fujinon Corp. v. Motorola, Inc., C.A. No. 07-533-GMS-LPS (D. Del. Sept. 11, 2009). The disputed terms construed by Magistrate Judge Stark and his recommendations are as follows:

“A stop”Although Judge Stark noted that Plaintiff’s process to reach their proposed construction was flawed, he adopted their construction thereby recommending “‘an element with a hole or opening that blocks or limits light.” Id. at 8. Judge Stark rejected Defendant’s limited construction of “an aperture stop” because to limit the claim would be contrary to the Federal Circuit’s warning against limiting claims to specific embodiments in the specification. Id. at 10.

“Near the optical axis”Construed as “‘a central region that surrounds the optical axis but excludes a substantial peripheral region surrounding the central region.’” Id. at 16-17.

“Within an effective aperture range of the single focus lens”Although Judge Stark was “concerned” with Plaintiff’s construction, Defendant offered no alternative, therefore Judge Stark recommended a construction of “‘within an effective aperture range of the single focus lens.” Id. at 17-18.

“Center”Construed as “‘the center region, including the geometric center.” Id. at 18.

“Peripheral region”Judge Stark agreed with Defendant that the term was ambiguous, over Plaintiff’s objection that the term need not be construed. Id. at 18. Judge Stark, adopting part of Defendant’s proposed construction modified to be consistent with the specification, recommended the Court construe the term as “‘any portion of the region that begins outside 70% of the radius of the third lens.’”

Fujinon Corp. v. Motorola, Inc., C.A. No. 07-533-GMS-LPS (D. Del. Sept. 11, 2009)

07-533

In his recent decision granting a motion to amend, Magistrate Judge Leonard P. Stark offered a new take on whether adding new patents following the close of the pleadings will unduly complicate a case. In the underlying litigation, the parties had filed competing complaints in both Delaware and Maine. The Delaware plaintiff sought to amend its complaint to seek a non-infringement declaratory judgment on several patents asserted against it in Maine.

The Delaware defendant unsuccessfully objected to the alleged added complexity:

"Fairchild also contends that adding two more patents to the eleven patents already at issue in the Delaware Action would unduly complicate this case. Yet Fairchild's own proposal of simultaneously litigating the two cases five hundred miles apart, potentially requiring the services of two juries and at least two judges, as well as two rounds of discovery, two sets of claim construction briefs, two Markman hearings, two summary judgment motions, and the like, seems far more complicated."

Even with thirteen patents at issue, the complexity argument remains a double-edged sword.

Infineon Technologies AG v. Fairchild Semiconductor Int'l Inc., C.A. No. 08-887-SLR-LPS (D. Del. Sept. 30, 2009) (Stark, M.J.).

Collecting damages incurred following a finding of liability can be difficult. One avenue to collection that will not work, recounted in a recent decision by magistrate judge Leonard P. Stark, involves filing a new action.

According to the Court, such a maneuver constitutes improper claim-splitting:

"Because [plaintiff's] pre-trial requests for damages for infringement in [the earlier litigation] sought damages only for the period through the jury verdict . . . , the Court determined that [plaintiff] failed to preserve its right to an accounting necessary for obtaining damages . . . . To allow [plaintiff] to present the same waived claim - involving the very same infringement of the very same patents by the very same 106 Accused Products - in a new lawsuit would seem to permit claim-splitting."

Notably, however, the Court did not completely foreclose the availability of damages for later acts of infringement:

"I am not prepared to find on the record before me that a patentee that waives its right to a post-verdict accounting is absolutely prohibited from seeking damages from the same alleged infringer for later acts of infringement in a second suit . . . ."

Thus, at least for now, the line between the waived accounting damages and any new acts of infringement remains blurred.

Power Integrations Inc. v. Fairchild Semiconductor Int'l Inc., C.A. No. 08-309-JJF-LPS (D. Del. July 9, 2009) (Stark, M.J.).

In multi-patent litigation, parties and the Court are often confronted with how to properly manage the sometimes unwieldy claim-construction process. To that end, Magistrate Judge Leonard P. Stark recently issued a noteworthy ruling that addressed how, at least in the case before him, Markman should be controlled. Specifically, the Court held that, in the underlying six-patent litigation, the parties would be limited to presenting twelve claim terms for construction.

While a claim limit is itself not unusual, the order also contains an incentive to agree: should the parties fail to settle on the twelve terms for construction, "the Court will limit the number of terms it will construe in conjunction with the Markman hearing to a maximum of ten (10)." Now that is incentive, indeed.

Power Integrations Inc. v. Fairchild Semiconductor Int'l Inc., C.A. No. 08-309-JJF-LPS (D. Del. July 16, 2009) (Stark, M.J.).

Magistrate Judge Stark recently recommended, among other things, that the Court deny defendant-counterplaintiff Rembrant’s motion for judgment on the pleadings. In re Rembrandt Techs. LP Patent Litigation, MDL Docket No. 07-1848-GMS-LPS, (D. Del. June 29, 2009). Rembrandt argued that they never signed a license agreement and no other facts are pled “to support the conclusory allegation that Rembrandt is nevertheless bound by [the] [a]greement as a partner, joint, venturer, alter ego, or principal of a party to the [a]greement . . . .” Id. at 7-8. In support of their motion, the Counter-Defendants argued that “under the guise of ‘challenging the pleadings,’ Rembrandt [was] asking the Court to ignore and dismiss the detailed factual allegations supporting each . . . claim[.]” Id. at 8. Noting that a complaint “must state enough facts to raise a reasonable expectation that discovery will reveal evidence of the necessary element of a plaintiff’s claim[,]” Id. at 11, Magistrate Judge Stark recommended denying Rembrandt’s motion because the counterclaims were sufficient “under the notice pleading requirements” and because “granting judgment to Rembrandt without any consideration of what has been revealed in discovery would be improper.” Id. at 13.

In re Rembrandt Techs. LP Patent Litigation, MDL Docket No. 07-1848-GMS-LPS, (D. Del. June 29, 2009)

In a recent trademark infringement and dilution case, Magistrate Judge Stark denied plaintiffs’ motion to dismiss defendants’ counterclaim seeking cancellation of plaintiffs’ trademark due to fraud on the Patent and Trademark Office. ING Bank v. the PNC Fin. Servs. Group, Inc., C.A. No. 08-514-GMS-LPS (D. Del. June 22, 2009). The basis of plaintiffs’ motion was that defendants failed to “state the facts and circumstances constituting fraud with particularity . . . .” Id. at 1. Among other things, plaintiffs’ argued that defendants failed to adequately allege scienter because they did not allege that the declarant, who made the statement-at-issue to the PTO, subjectively knew the statement was false when made. Magistrate Judge Stark rejected plaintiffs argument, however, because the declarant was clearing signing the statement to the PTO on behalf of the “applicant.” To assess the adequacy of scienter, the factfinder is “not limited to the subjective understanding of the corporate representative who made the statement . . . .” Id. at 5. Therefore, defendants adequately alleged scienter that “among those involved in the preparation of [the statement to the PTO] were those who knew or should have know that” plaintiffs were making a false statement. Id. at 7.

08-514

Section 271(e)(2) is the well known provision of the Patent Act that creates an artificial act of infringment by the filing of an ANDA with the FDA. This statute is the means by which a "case or controversy" arises so that the ANDA filer or a patentee can initiate suit regarding invalidity or infringement. But are the elements of Section 271 intended to be jurisdictional prerequisites?

Judge Farnan recently overruled defendants' objection and adopted a decision by Magistrate Judge Stark where Judge Stark applied Rule 12(b)(6) standards to a motion to dismiss an infringment action brought pursuant to 35 U.S.C. 271(e)(2). AstraZeneca Pharmaceuticals LP v. Aurobindo Pharma Ltd., C.A. No. 07-810-JJF-LPS, MDL No. 08-1949-JJF-LPS, Memo. Op. (D. Del. Feb. 25, 2009). The Court found that Judge Stark did not err in his application of Rule 12(b)(6) because the elements of Section 271(e)(2) are not jurisdictional but instead "subject matter jurisdiction over a Section 271(e)(2) claims still flows from 28 U.S.C. 1338(a)." Id. at 5.

AstraZeneca Pharmaceuticals LP v. Aurobindo Pharma Ltd., C.A. No. 07-810-JJF-LPS, MDL No. 08-1949-JJF-LPS, Memo. Op. (D. Del. Feb. 25, 2009).

The following post was graciously written by one of our fellow associates, Pilar Kraman.

On February 17, 2009, Magistrate Judge Stark granted defendant Hewlett-Packard’s Motion for Leave to Amend Answer and Affirmative Defenses. St. Clair Intellectual Property Consultants, Inc. v. Samsung Electronics Co., Ltd., C.A. No. 04-1436-JJF-LPS (D. Del. Feb. 17, 2009). The defendant sought to amend its answer to assert a license defense based upon a license agreement between the defendant and a third party. The plaintiff, St. Clair, argued that the Motion should be denied because the license agreement was covered by two discovery requests directed to the defendant by the plaintiff.

The Court was troubled by the defendant’s apparent failure to disclose the document. However, the Court noted that defendant’s discovery conduct, while not “exemplary,” did not rise “to the level of bad faith[.]” Moreover, the Court concluded that the plaintiff would not suffer undue prejudice due to the relative early stage of the case.

Author: Pilar Kraman is an associate in Young Conaway’s Intellectual Property Litigation and Commercial Litigation Sections. She focuses her practice primarily on patent litigation, trade secret and complex corporate and commercial litigation matters in the United States District Court for the District of Delaware and the Delaware Court of Chancery. During law school, Ms. Kraman served as a member of the University of Pittsburgh Journal of Technology Law & Policy, and completed an externship for the Honorable Henry duPont Ridgely of the Supreme Court of Delaware. Prior to law school, Ms. Kraman worked primarily in the social science research field. Most recently, she worked as a research analyst for the Council of State Governments where she studied issues and trends impacting state governments and proposed policy options.

St. Clair Intellectual Property Consultants, Inc. v. Samsung Electronics Co., Ltd., C.A. No. 04-1436-JJF-LPS (D. Del. Feb. 17, 2009).

A pending appeal in the Federal Circuit between the same parties and involving the same patents is not enough to warrant a stay in pending litigation between the same parties and same patents in the district court. St. Clair Intellectual Property Consultants, Inc. v. Fujifilm Holdings Corp., C.A. No. 08-373-JJF-LPS, Memo. Op. (D. Del. Jan. 27, 2009). The defendant seeking the appeal was found to infringe the plaintiff's patents by a jury and the plaintiff brought the new action to seek damages for the defendant's infringement from the time of the earlier judgment to the present. The Court found that the fact that the defendant was already found to be an infringer and the prejudice to the plaintiff in delaying the action was too great to warrant a stay. Id. at 5. Further, the Court found that the damages issues will remain disputed regardless of the outcome of the appeal. Id. at 6. Finally, because this plaintiff has multiple suits against many defendants (including this one) that are currently coordinated for discovery and pretrial purposes, it would be inefficient for the Court to stay this one action. Id. at 6.

St. Clair Intellectual Property Consultants, Inc. v. Fujifilm Holdings Corp., C.A. No. 08-373-JJF-LPS, Memo. Op. (D. Del. Jan. 27, 2009).

With the option of concurrent proceedings before the Patent and Trademark Office, infringement defendants enjoy multiple routes to challenging the patent-in-suit -- unless the case is stayed. A pause in the litigation, however, is not automatic. By recently denying a motion to stay pending reexamination, Magistrate Judge Leonard P. Stark has added to the stay lexicon in this district.

The Court addressed the importance of earlier, and comprehensive, litigation between the parties involving some of the same claims:

"[The stay] factors do not neatly apply to the circumstances presented here, largely because of the lengthy and extensive history of litigation between [the parties] . . . . [Earlier] jury findings to the contrary make it unclear whether a stay will ultimately simplify the trial of the instant case."

This uncertainty, along with an indefinite timetable for further PTO action, appear to have swayed the Court to keep the litigation moving forward. By denying a stay in the face of the administrative overlap, this decision may signal an increasing judicial preference in this district for getting cases to trial notwithstanding a pending reexamination.

Power Integrations Inc. v. Fairchild Semiconductor Int'l Inc., C.A. No. 08-309-JJF-LPS (D. Del. Dec. 19, 2008) (Stark, M.J.).

Several claim construction decisions have recently issued out of the District of Delaware:

Symbol Technologies Inc. v. Janam Technologies Inc., C.A. No. 08-340-JJF/LPS (D. Del. Dec. 1, 2008) (Stark, M.J.)

On Monday, Magistrate Judge Leonard P. Stark recommended to District Judge Joseph J. Farnan Jr. construction of a number of terms and phrases related to a mobile-computer patent:

"a portable point of sale terminal"
"electromagnetic transceiver"
"power"
"without installing new software on the wireless terminal"

The procedural posture is notable: the Court construed the terms only tentatively, giving the parties guidance in preparation for an upcoming preliminary injunction hearing.

Purdue Pharma Products LP v. Par Pharmaceutical Inc., C.A. No. 07-255-KAJ (D. Del. Nov. 4, 2008) (Jordan, J.) (Part I) (Part II)

Last month, a claim construction decision issued in an ANDA case related to pain medication. The Court construed the following terms:

"therapeutic effect"
"A [solid] controlled release oral [dosage form/pharmaceutical preparation/pharmaceutical tablet] . . . said [dosage form/pharmaceutical preparation/pharmaceutical tablet] providing a therapeutic effect for [at least] about 24 hours"
"therapeutic effect for about 24 hours after oral administration"
"therapeutic effect for at least about 24 hours"
"a pharmaceutically effective amount of tramadol or a salt thereof"
"matrix"
"normal release matrix"

Of additional interest is the decision's author: Third Circuit Judge Kent A. Jordan, formerly of the District of Delaware. Chief Judge Anthony J. Scirica has designated Judge Jordan to preside over this case.

When faced with a credible claim of lack of personal jurisdiction, a court has two options: dismiss the action or order jurisdictional discovery. In a recent stream-of-commerce decision, Magistrate Judge Leonard P. Stark opted for the latter.

In the underyling litigation, the aggrieved manufacturer insisted that it had no knowledge that its accused products would enter Delaware. Rejecting this line of reasoning, the Court found that delivery to the United States could satisfy the stream-of-commerce test:

Any evidence that Defendants use [a distributor] to deliver the accused chips to the United States, from which they might enter Delaware, may constitute evidence supporting a finding of intent to serve the Delaware market. (Op. at 20 n.7)

According to the Court, the fact that the defendant "tout[ed] its established distribution channels in the U.S., as well as its close relationships with end users . . . throughout this country," justified further discovery.

Like the Internet-access personal jurisdiction cases, this decision expands on a common theme in the District of Delaware: if you serve the United States markets, you serve Delaware's as well.

Power Integrations Inc. v. BCD Semiconductor Corp., C.A. No. 07-633-JJF-LPS (D. Del. April 11, 2008) (Stark, M.J.).

A recent report and recommendation from Magistrate Judge Stark found that the existence of pre-existing nonexclusive licensees does not prohibit a company from granting an exclusive license subject to those pre-existing licenses. TV Guide Online, Inc. v. Tribune Media Services, C.A. No. 05-725-SLR/LPS, Report and Recommendation Concerning Defendant Tribune's Motion to Dismiss Plaintiff TV Guide Online, Inc. for Lack of Standing (D. Del. March 26, 2008 (Public Version)). Defendant in this case moved to dismiss one of the plaintiffs (TV Guide Online, LLC) who was likely to be the party on which plaintiffs' claim for lost profits was based. Id. at 2 n.2. Tribune argued that TV Guide Online lacked standing to pursue this patent infringement action because they are not in fact an exclusive licensee. Id. at 2. The License Agreement between the two plaintiffs granted TV Guide Online "an exclusive license to the '078 patent, including the right to sue and recover for past infringement." Id. at 3 (internal citations omitted). Tribune argued that because 19 other entities also had licenses for the same patent, and further, because an additional license was issued by the parent company of the plaintiffs after TV Guide Online obtained its license, TV Guide Online could not be an exclusive licensee. Id. at 3.

Magistrate Judge Stark found that the parties "intended" the license agreement to be an "exclusive license" as it provided TV Guide Online with the right to practice the invention, the right to exclude others (except for pre-existing licensees) and the right to grant sublicenses. Id. at 7. Furthermore, the existence of prior non-exclusive licenses "does not prevent a patentee from granting an 'exclusive license' going forward." Id. at 8. Finally, Magistrate Judge Stark found that the record evidence at this stage in the proceedings (by way of a declaration and deposition testimony by the senior vice president of intellectual property for the parent company and TV Guide Online) was enough to show that the subsequent license did not defeat defendant's exclusive licensee status. Id. at 10.

For a copy of the opinion see here.

A recent order from the district court's new magistrate, Magistrate Judge Stark, sheds some light on his case scheduling process. Power Integrations, Inc. v. BCD Semiconductor Corp., C.A. No. 07-633-JJF-LPS, Memo. Order (D. Del. Feb. 11, 2008). Of particular note, Magistrate Stark is following the same discovery dispute procedure as Judge Jordan previously used, and Magistrate Thynge continues to use. When the parties have a dispute, they should contact chambers to arrange for a teleconference. Forty-eight hours prior to the teleconference the party seeking relief files a 3 page letter setting forth the issues and its position and then 24 hours later, the opposing party files its 3 page opposition letter. (Note: a copy of any sealed letter or exhibit must be provided to the Court within 1 hour after e-filing.) After the teleconference the judge will decide whether to order further briefing.

The Memorandum Order also clarifies Magistrate Stark's position on the "3-day rule" regarding service. The Order states that "Fed. R. Civ. Proc. 6(e) provides for three extra days for responding to documents electronically filed, whether or not e-mailed and/or hand-delievered as well."

Finally, Magistrate Stark's tutorial process is different than the other sitting judges in this district. Pursuant to this Order, each party files under seal a thirty minute CD or video of their tutorial with no discussion or argument about claim construction. Each party within 10 days can then submit a five page written response commenting on the opposing party's tutorial.

We will continue to watch to see if the schedule in this case translates into a future form Rule 16 schedule for his patent docket.

For a copy of the opinion: Power Integrations Inc. v. BCD Semiconductor Corp.