Special Master Bechtle recently addressed plaintiff’s motion to compel the deposition of in-house counsel for a defendant, the same person who signed the verification for that defendant’s interrogatory responses. Xpoint Technologies, Inc. v. Intel Corp., et al., C.A. No. 09-00026-SLR, Special Master Order No. 20 (D. Del. Oct. 28, 2010). The Special Master found that if in-house counsel is a person “with knowledge of the facts” in the responses or has “possession or control of the documents that contain the facts” the deposition is granted. Id. at 2-3. If, however, he does not have personal knowledge of the facts or control of the documents then the motion is denied and defendant is required to serve a declaration under oath that counsel does not have that personal knowledge and identify the people that do. Id. at 3-4.
In Eli Lilly and Co. v. Teva Parenteral Medicines, Inc., C.A. 08-335-GMS (D. Del. Nov. 5, 2010), Judge Sleet recently decided an issue of first impression — what is the date the court should use to determine what constitutes prior art for purposes of defendants’ obviousness-type double patenting defense? Plaintiffs argued that while 35 U.S.C. § 102 governed what references constituted prior art, § 102 did not resolve “for purposes of an obviousness-type double patenting (“OTDP”) analysis the question . . . in light of the prior art as of what date?” Id. at 2 (emphasis in original). Judge Sleet rejected plaintiffs’ distinction between “the questions of ‘what’ and ‘when’” because adopting plaintiffs’ argument would “require the court to view some portions of [§ 102] as controlling while viewing others as irrelevant in the OTDP context.” Id. If the Federal Circuit intended such a result – excepting prior art in the OTDP context from the rules found in § 102 – it would have done so explicitly. Id. at 4-5.
Rarely does a party get to revisit discovery following a post-trial decision on the merits. In a recent memorandum order that affects an earlier invalidity holding, however, District Judge Sue L. Robinson did just that.
Finding that both parties overlooked a “basic principle of science” in discovery, the Court refused to order a new trial. Instead, the Court opened the record to admit further expert evidence:
“Ultimately, defendants bear the burden of demonstrating the invalidity of claim 7 by clear and convincing evidence. However, the Court will not grant a new trial on the validity of claim 7 based solely on defendants’ failure of proof with respect to a basic principle of science. Due to the errors made by both parties, the court concludes that it is instead appropriate to open the record pursuant to Fed. R. Civ. P. 59(a)(2) to allow further evidence on the relationship between precipitation and solubility.”
Whether the additional evidence cures the underlying failure of proof remains to be seen. But of more immediate importance is the precedent this decision establishes for reopening the trial record to address discovery deficiencies.
In a case involving certain chemical analogs and optical isomers, Chief Judge Sleet construed the following terms:
– “S-(+)-4-amino-3-(2-methylpropyl) butanoic acid as a single optical isomer”
– “4-amino-3-(2-methylpropyl) butanoic acid”
Pfizer, Inc. v. Teva Pharmaceuticals USA, Inc., C.A. No. 09-307-GMS, Order (D. Del. Oct. 13, 2010).
In a recent discovery dispute before Judge Thynge in a sham litigation case, plaintiff filed a motion to issue letters rogatory seeking discovery related to the prosecution of defendants’ patents. Ethypharm S.A. France v. Abbott Laboratories, C.A. 08-126-SLR-MPT (D. Del. Nov. 2, 2010). Defendant asked that the court insert a restriction that plaintiff may not seek discovery about possible inequitable conduct during the prosecution of a patent not at issue in the litigation. Id. at 6. Plaintiff argued that possible inequitable conduct relating to the unrelated patent was relevant to “whether the patent applicant was simultaneously engaging in inequitable conduct in connection with other patents for a different version of the same product,” and whether “the history of the [unrelated patent] motivated [defendant and its non-party subsidiary] to engage in inequitable conduct in the prosecution of the [patents at issue].” Id. at 10. Judge Thynge denied plaintiff’s request, however, because plaintiff did not plead or argue in its briefs that the unrelated patent “bears such an immediate and necessary relation to the enforcement of the [patents at issue] that a demonstration of inequitable conduct in the prosecution of the [unrelated patent] will render the [patents at issue] unenforceable.” Id. at 11. Allowing discovery into any inequitable conduct during the prosecution of the unrelated patent, “would authorize a fishing expedition beyond that which is nominally permitted by the Federal Rules.” Id.
Earlier this week, in Carl Zeizz Meditec, Inc. v. Xoft, Inc., C.A. No. 10-308-LPS-MPT (D. Del. Oct. 13, 2010), Judge Thynge issued a report and recommendation that defendant Xoft’s motion to transfer be denied. According to Judge Thynge, “Xoft is incorrect to suggest that mere incorporation in Delaware represents insufficient public interest to litigate in Delaware. As stated earlier, ‘Delaware has an interest in litigation regarding companies incorporated within its jurisdiction.'” Id. at 9. Thus, because defendant is incorporated in Delaware, and the other factors “do not strongly favor transfer,” the motion was denied. Id. at 9-10.
This is consistent with the actions of other Delaware judges, who generally hold that a defendant’s incorporation here is enough to deny a motion to transfer, absent other factors. Other judges, sitting by designation, seem to hold the other way. See, for example, Judge Pisano’s two grants of motions to transfer, and his statement that “the lack of connection to Delaware deems the [Defedant’s incorporation here] of less significance.” Mekiki Co., Ltd., v. Facebook, Inc., C.A. No. 09-975 (JAP), at 7 (D. Del. June 7, 2010))
In a recent post-trial opinion, Chief Judge Gregory M. Sleet touched on a host of issues, including obviousness, indefiniteness, inequitable conduct, double patenting, and infringement. Beyond the substantive analysis of the patents-in-suit, the Court also answered an equally important procedural point for the litigator: which evidence may be included in post-trial proposed findings of fact and conclusions of law.
According to the Court, only the evidence presented at trial:
“The court notes for the benefit of future parties . . . that the court’s pre-trial order that all objections to exhibits are overruled without prejudice – thus allowing each party to object in real-time – was not intended to have the effect that the plaintiffs assert. The parties’ post-trial briefs should be based only on evidence actually presented at trial, and not any evidence that could have been presented at trial.”
See Order, at n.1.
In Belden Technologies, Inc. v. LS Corp., C.A. No. 08-823-SLR (D. Del. Sept. 30, 2010), Judge Robinson granted a motion to dismiss contesting proper jurisdiction and venue, but only “to the extent that the present action shall be transferred to the United States District Court for the District of New Jersey.” The Court found that venue was lacking because of neither of the defendants have an established place of business in Delaware. Id. at 19. Interestingly, neither party had argued for transfer to New Jersey; instead, the Court determined sua sponte that transfer was appropriate as an alternative to dismissal, id. at 19, and determined that New Jersey was the appropriate venue based on the fact that one of the defendants is headquartered there, while another maintains a warehouse there. Id. at 20.
Along the way to that conclusion, the Court also addressed personal jurisdiction, and the interaction between Delaware’s “dual jurisdiction concept” (under Delaware’s long-arm statute) and the due process analysis set forth by the Supreme Court in 1987. Judge Robinson held that a finding of jurisdiction under the “dual jurisdiction concept” was not enough – a due process analysis is still required: “The court concludes that both analyses look to the non-resident defendant’s ‘intent or purpose’ to serve the Delaware market. Nevertheless, the court declines to forego a due process analysis on the basis of its finding under the Delaware long-arm statute.” Id. at 13.
Judge Robinson denied plaintiffs’ motion to dismiss certain counterclaims where the facts relied on in plaintiffs’ motion were outside the pleadings and not subject to judicial notice. Ricoh Company Ltd. v. Oki Data Corporation, C.A. No. 09-694-SLR, Memo. Order (D. Del. Sept. 30, 2010). Specifically, plaintiffs’ motion relied on a license agreement between the parties, a notice letter and a confirmation which were all in Japanese and attached English translations. Id. at 2. The English translations of the notice letter and license agreement were produced by the defendants in unrelated litigation before the ITC pursuant to a protective order. Id. The Court found that “the license and notice letter do not come close to meeting the standard of F.R.E. 201(b)” and are not publicly available. Id. at 6-7. Furthermore, the Court found it was not plaintiffs’ claims that were based on the documents, but instead, their affirmative defense. Id. at 4, 7. The Court further found that: (1) even if it were proper to take judicial notice of the documents, it would be improper to take notice of the documents for the truth of the matter within them; (2) it is not clear whether the translation of the one document would even be admissible under American law; (3) the authenticity of the license and its translation were disputed; and (4) the court would need to consider an additional declaration to reach the conclusion proffered by plaintiffs. Id. at 7. The Court therefore, denied plaintiffs’ motion to dismiss certain counterclaims. Id.
Judge Sleet recently granted in part and denied in part plaintiffs’ motion to dismiss defendant’s counterclaims in an ANDA case. Bone Care International LLC v. Sandoz Inc., C.A. No. 09-524-GMS (D. Del. Sep. 30, 2010. One patent in suit had expired and another was disclaimed. Plaintiffs also requested the FDA delist it from its Orange Book. Defendant’s asserted injury “[was] that if the FDA’s current interpretation and application of the delisting rule . . . is overruled on appeal, approval of its ANDA could be delayed.” Id. Judge Sleet granted the motion to dismiss as to these two patents, however, because “the highly speculative nature of [defendant’s] alleged injuries-in-fact renders their claims non-justiciable[.]” Id. at 1 n.1. Judge Sleet denied plaintiffs’ motion to dismiss as to the third patent-in-suit, however. Although plaintiffs offered defendant a covenant not to sue, “offering a covenant not to sue does not remove declaratory judgment jurisdiction when a party lists patents in the Orange Book and then later refuses to enforce them, since non-first filers still face delayed approval of their ANDAs even with a CNS.” Id. at 2 n.2.