Judge Robinson transferred a false marking case where one of the plaintiffs and the defendant are engaged in patent infringement over four of the same patents at issue in the false marking case (even though it was not the first-filed action), the defendant is not a Delaware corporation and maintains only a small market for its goods in Delaware. Brinkmeier v. Exergen Corporation, C.A. No. 10-176-SLR, Memo. Order (D. Del. Jan. 3, 2011).
Judge Stark recently considered third party Anvik Corporation’s motion for a limited intervention to obtain copies of evidence in LG Display Co., Ltd. v. AU Optronics Corp, et al., C.A. No. 06-726-LPS (D. Del. Dec. 29, 2010). Anvik filed a patent infringement action in the Southern District of New York against the parties to this litigation in the District of Delaware. Anvik contended that certain documents filed under seal were relevant to its claims in the New York case involving inducement of importation of the same products at issue in Delaware. Id. at 1. LG and AUO opposed Anvik’s motion, primarily because granting Anvik’s motion would modify the hotly contested Protective Order in the Delaware case. Id. Moreover, AUO argued that it had already produced documents from the Delaware case that overlapped with the New York action and Anvik had not identified what other information it seeks. Id. at 2.
Judge Stark granted Anvik’s motion to intervene, but ultimately found that Anvik had “not demonstrated that modification of the Protective Order is warranted.” Id. at 5-6. “The parties’ reliance on the Protective Order weighs in favor of the Court preserving the confidentiality of the underlying documents sought by Anvik. . . . Anvik has not demonstrated that the disclosure of the confidential materials would aid the discovery process in the New York action[.]” Id. at 6. In addition, Judge Stark disregarded Anvik’s argument that it was entitled to the documents under the public right of access to judicial records because such argument was argued for the first time in Anvik’s reply brief. Id. at 7.
District Judge Leonard P. Stark issued a decision on Monday staying an infringement action in favor of two pending reexamination proceedings. The Court noted that a related Delaware action, which involves the same plaintiffs asserting the same patents against different defendants, has already been stayed. Given this circumstance, the Court highlighted the judicial economy concerns of allowing the second action to proceed:
“Permitting Plaintiffs to pursue their claims against [defendant], while their essentially identical action against the ten other defendants in the related action is stayed, would undermine judicial economy. Such a course of action would deprive the Court of the opportunity to consolidate the related actions for discovery, Markman proceedings, motions practice, and, possibly, trial.”
Magistrate Judge Schneider sitting by designation from the District of New Jersey recently held that a plaintiff is required to produce translated documents for any document it translates in the ordinary course of business, as well as all answers to discovery and accompanying summaries and charts. Evonik Degussa GmbH v. Materia Inc., C.A. No. 09-636-NLH/JS, Letter Order (D. Del. Dec. 21, 2010). The plaintiff is not required to produce translated copies of documents that were translated solely for the purposes of litigation because they are protected by the work product doctrine. Id. Although plaintiff is not required to produce the document, they are required to identify the nature, type and categories of the foreign documents it produced, specify by Bates number the documents responsive to defendants’ document requests and identify the sources of documents. Id. at 2. This information will allow the defendants to make “an informed decision whether to translate a document.” Id.
A jury recently returned a verdict upholding the validity of plaintiff’s patents and finding that defendant’s original and modified accused products literally infringed two of three patents-in-suit, and infringed under the doctrine of equivalents. The jury also found that defendant induced infringement and engaged in contributory infringement. The jury found, however, that defendant’s infringement was not willful. Damages were bifurcated in this case.
Senior Judge Robert F. Kelly recently issued a claim-construction decision that addressed several patents in the DNA-sequencing field. In particular, the Court construed the following terms and phrases:
“Polymerase enzyme system”
“Aqueous liquid phase that includes a cell-free, enzymatic, exponential nucleic acid amplification system”
“Aqueous liquid phase that includes a cell-free nucleic acid polymerase enzyme system”
“Forming a liquid mixture of the sample and said amplification system”
“Distributing in said aqueous liquid phase”
“Distributing in said amplification system”
“A preformed immobilized medium”
“Optical characteristic of each microparticle”
“Optical characteristic of said microparticle”
“With sufficient resolution for individual microparticles to be distinguished”
“Signal tracking means effective to correlate the optical signals from each of the microparticles in each of the sequence of digital images with said center of said microparticle”
“Tracking position of the microparticles”
“Processing the plurality of digital images, wherein said processing includes correlating the optical signals generated at each microparticle with its corresponding image in each of the plurality of digital images”
“Generating sequence reads”
“An array of polynucleotide molecules”
“Which molecules can be individually resolved by optical microscopy”
“Arraying the fragments such that different fragments can be individually resolved by optical microscopy”
“Population of polynucleotide fragments”
“Ligating together the cleaved ends produced by said removing”
“Ligating the pair of segments together”
The Court also declined to construe the following:
“Incubating said immobilized medium”
“Incubating said trapped mixture”
“Wherein the average distance between the nearest solid surfaces is smaller than the distance which the synthesized nucleic acid product can migrate by diffusion during the reaction”
Life Techs. Corp. v. Illumina Inc., C.A. No. 09-706-RK (D. Del. Dec 15, 2010) (Kelly, S.J.).
In what appears to be Judge Stark’s first decision on a motion to stay pending reexamination as an Article III judge, he denied the defendants’ request to stay the action pending an inter partes reexamination. Cooper Notification, Inc. v. Twitter, Inc., C.A. No. 09-865-LPS, Memo. Order (D. Del. Dec. 13, 2010). Plaintiff, relying on Judge Stark’s decision in St. Clair Intellectual Property Consultants, Inc. v. Fujifilm Holding Corp., argued that defendants’ failed to “articulate a clear hardship or inequity” that they would suffer without the stay. Id. at 3. The Court noted that this decision does not require a showing of hardship or inequity in proceeding with litigation for the court to grant a stay. Id. at 4.
The Court further found that the issues in the litigation and the reexamination did not overlap completely, plaintiff expressly represented that it would not amend the claims during reexamination and the case has already been set for trial. Id. at 5-6.
It thus appears that Judge Stark will continue with the District’s recent trend in denying motions to stay.
Last week, Judge Robinson denied a Rule 56(d) motion by Acceleron in Acceleron, LLC. v. Hewlett-Packard Co., C.A. No. 10-128-SLR (D. Del. Dec. 16, 2010). Faced with a motion for summary judgment of non-infringement, Acceleron sought additional discovery under Rule 56(d) to support its contributory infringement and inducement claims. Acceleron had previously sought the same information, but had agreed to narrow the requests after HP protested and the Court determined that the requests were too broad. Since then, fact discovery has closed, and HP brought a summary judgment motion based on the lack of evidence for contributory infringement and inducement.
The Court denied Acceleron’s Rule 56(d) motion, stating that “the court previously determined that these discovery requests were too broad,” that “Acceleron [had] represented to the court that every outstanding discovery issue relevent to the instant motions was resolved,” and that “Acceleron has had ample opportunities to seek the discovery it requests, and it is inappropriate at this stage of the proceedings to reopen fact discovery.” Id. at 6-7.
Yesterday, district judge Sue L. Robinson issued a decision construing two terms and phrases of a patent related to the production of steel. Specifically, the Court construed the following:
“Hot-rolled steel sheet”
“The steel has a very high mechanical resistance”
Of note in the opinion is the procedural posture. At the outset, the Court recounted how the parties “agreed to forego summary judgment practice.” Instead, the parties sought and obtained approval of an expedited trial schedule.
On Wednesday, Judge Sleet issued a claim construction order in Allergan, Inc. v. Watson Laboratories, Inc., C.A. No. 09-51 (D. Del. Dec. 8, 2010) (order). The following ten terms were construed:
- “Delayed release”
- “Particulates, at least a portion of which releases trospium chloride in the lower gastrointestinal tract”
- “Provides steady state blood levels of trospoum that are comparable to steady state blood levels of trospium achieved with twice daily administration of 20 mg immediate release trospiumm tablets”
- “Maximum toxic blood or plasma concentration”
- “Minimixing the occurrence of adverse side effects following oral administration of an immediate release formulation containing 40 mg of trospoum chloride”
- “Minimum therapeutically effective blood or plasma concentration”
- “In which at least a portion of said trospium chloride is contained in a delayed release formulation, which releases trospium chloride in the lower GI tract.”
- “Release controlling polymer”