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.
Judge Stark recently denied defendant’s motion to strike the rebuttal report of plaintiff’s invalidity expert. Stored Value Solutions, Inc. v. Card Activation Technologies, Inc., C.A. No. 09-495-LPS (D. Del. Sept. 27, 2010). Judge Stark found that plaintiff did prejudice defendant by remaining silent about its intention to produce a rebuttal report on invalidity. Plaintiff’s “silence [was] particularly troubling because [plaintiff’s expert] was in the process of preparing her rebuttal report at the same time the parties were meeting and conferring in order to advise the Court as to what remained to be done in this action.” Id. at 4. However, Judge Stark declined to impose the extreme sanction of excluding the report. Instead, Judge Stark made certain amendments to the Scheduling Order, including permission for the parties to submit rebuttal reports if the expert can be deposed on the “full range of his/her opinions[,]” and asked the parties to jointly submit a letter regarding the impact on this decision on the remaining schedule. Id. at 4-5.
Following a long run of Delaware precedent on the admissibility of expert testimony related to patent law, Judge Bartle granted in part plaintiffs’ motion to strike the expert witness report of defendants’ patent law expert. Brigham and Women’s Hospital, Inc. v. Teva Pharmaceuticals USA, Inc., C.A. No. 08-464, Memo. (D. Del. Sept. 21, 2010). Defendant’s expert is a lawyer with a master’s degree in chemistry, and his report includes sections on the “doctrine of inequitable conduct, the duties of disclosure and inquiry in patent prosecutions, obviousness-type double-patenting, and the effect of the TRIPS Agreement and GATT Amendment on patent terms,” opinions that certain information not disclosed to the examiner was material to prosecution and finally, certain various PTO practices and procedures. Judge Bartle stated that “the law of this district is clear that experts in patent cases may no opine on whether a party engaged in inequitable conduct, discuss whether certain information was material to a pending patent application, or otherwise provide legal conclusions on ‘substantive issues of patent law'” and that parties are further prohibited from using experts to “explain patent prosecution histories.” Id. at 3. Therefore, the Court granted plaintiffs’ motion to strike the expert report except for that portion that explains the PTO’s practices and procedures. Id. at 4.
In Roquette Freres v. SPI Pharma, Inc., C.A. No. 06-540-GMS (D. Del. Sept. 17, 2010), defendant filed a motion in limine to prevent plaintiff from presenting evidence of certain data of tests run on samples of the accused products. Id. at 1. Plaintiff argued that the test data was circumstantial evidence of literal infringement. Id. Defendant asserted that plaintiff’s circumstantial evidence was “nothing more than a Doctrine of Equivalents argument by stealth[.]” Id. (internal quotation omitted). Judge Sleet denied the motion in limine, however, because even circumstantial evidence may be probative of literal infringement, and “the Federal Circuit has found the jury capable of reasonably evaluating circumstantial evidence in cases such as this.” Id. at 2.
On Wednesday, Judge Robinson issued a lengthy summary judgment opinion on multiple invalidity and infringement issues in Intermec Tech. Corp. v. Palm, Inc., C.A. No. 07-272-SLR (D. Del. September 15, 2010).
The opinion touches on a variety of issues: indefiniteness, anticipation, direct & indirect infringement, written description, best mode, enablement, inequitable conduct, and, on top of everything else, non-joinder of inventors.
The Court held that the Palm devices did not infringe the Intermec patents, based largely on the Court’s simultaneous claim construction opinion.
The Court then addressed several interesting issues. It held that two claims of one of the Intermec patents were invalid for indefiniteness, because the claims required a “first style” and a “second style” that were “different,” but the specification did not explain with sufficient precision what the first and second styles were, or how to judge whether they were “different.”
The Court also denied Palm’s inequitable conduct defense, holding that Palm had failed to show an intent to deceive (despite showing knowledge of prior art references that were not disclosed.)
Palm was shot down again when it tried to assert that some of the Intermec patents were invalid or unenforceable because the patents omitted inventors. Palm argued that since the patents-in-suit included fewer named inventors than earlier patents to which they claimed priority, some inventors must have been omitted. The first patent in the chain included four inventors, but the patents-in-suit included only two. The Court, however, held that Palm had failed to show that the two unnamed inventors had contributed to the claims of the patent-in-suit, rather than just to the specification. Additionally, even if they had contributed to the claims, the failure to name inventors does not invalidate a patent or render it unenforceable under current Federal Circuit law.
The Court addressed several other issues in its 67-page opinion, most of them coming out in favor of Intermec. Given the infringement outcome, though, Palm does not have much to complain about.
District judge Sue L. Robinson issued a claim construction decision on Tuesday addressing a variety of claims related to data-capture systems. In particular, the Court construed the following terms and phrases:
“Communication means for transmitting data between said server station and each of said plurality of client data collection terminals”
“Said generated request identifying the terminal and a particular overlay module needed to continue the execution of the application program”
“Communication means for interconnecting said terminal and said server”
“First information portion”
“A communication system communicatively interconnecting said terminal and said server”
“A display screen occupying substantially an entire broad side of the processing module”
“Optical readers means for effecting the input of optical information”
“An indicia reader input system”
“A multitasking operating system”
The Court also declined to construe, as indefinite, the phrases “formatted in a first style” and “formatted in a second style different from said first style.”
A few days after discussing the factors that the court will weigh to determine if a stay pending reexamination is warranted on the eve of trial (see Belden opinion), Judge Robinson issued a second opinion denying a stay. In this case, the discovery period concluded two years prior and Judge Robinson’s claim construction and summary judgment decisions had “been vetted through the Federal Circuit.” Id. at 4. Although the motion to stay was made years into the litigation, no trial date was set, unlike in Belden where the oral motion to stay was made at the pretrial conference. However, the movant filed its stay motion only after the reexaminations were in the appeal process and after the Federal Circuit had vacated Judge Robinson’s order that defendant does not infringe. Id. at 4-5.
Earlier this month, Judge Robinson issued an opinion in Belden Techs., Inc. v. Superior Essex Commc’ns LP, C.A. No. 08-63-SLR (D. Del. Sept. 2, 2010) (mem.), denying defendant Superior Essex’s motion for a stay pending re-examination of the patents in suit.
The Court weigned the factors in favor and against a stay, applying Enhanced Security Research, LLC v. Cisco Sys., Inc., 2010 WL 2573925, at *3 (D. Del. June 25,2010). Some of the factors included:
- The reexam addresses the same issues, so it could simplify the trial. Id. at 4.
- The re-examinations weren’t requested until “approximately 17-20 months” after the start of the litigation, which also cut against a stay. Id. at 4.
- “The untimeliness of Superior Essex’s oral motion clearly cuts against a stay.” Id. at 4.
- “[O]nly those reexamination proceedings that have been substantially completed will weigh in favor of a stay,” while the reexamination in this case is still pending and subject to appeal. Id. at 6.
- The Patent Office has not yet issued a Right of Appeal Notice, and “Belden may statistically wait as long as three years after receiving its [Right of Appeal Notices]; this factor cuts against the grant of a stay.” Id. at 6.
- The fact that Belden did not seek a preliminary injunction cut in favor of a stay, because it indicates that the companies are not direct competitors. Id. at 7.
The Court found that the balance did not favor either party, so it denied the stay.
Controlling costs and increasing efficiency are vital components of any patent-protection strategy. A recent memorandum order by magistrate judge Mary Pat Thynge highlights these concerns in the context of reexamination. By directing that a patentee’s trial counsel may participate in a later reexamination even after viewing a defendant’s confidential information, the Court avoided an economically disruptive outcome for the patentee.
In particular, the Court emphasized that “[f]orcing plaintiff to rely on less knowledgeable counsel during reexamination would . . . increase costs and duplicate effort.” It would also create litigation inefficiencies:
“[B]ecause reexamination (especially inter partes reexamination) is an increasingly important venue for challenging a patent’s validity, preventing trial counsel exposed to defendants’ confidential information from fully participating in reexamination proceedings would force plaintiff to split its resources between two fronts of the same war.”