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On Wednesday, June 18, Judge Leonard P. Stark published a new form scheduling order on the District of Delaware web site for non-ANDA patent cases, as well as a new form pre-trial order for patent cases, a new set of “Procedures for Managing Patent Cases,” and a “Case Management Checklist” for use in patent Rule 16 conferences. These changes are in response to feedback from the Patent Study Group (discussed here). Unless otherwise ordered, these Revised Procedures will govern all non-ANDA patent
cases filed on or after July 1, 2014 that are assigned to Judge Stark.

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Judge Richard G. Andrews recently granted plaintiff St. Jude’s motion to dismiss defendant Volcano Corp.’s inequitable conduct counterclaim and affirmative defense. St. Jude Medical v. Volcano Corp., C.A. No. 12-441-RGA (D. Del. June 11, 2014). Volcano alleged that the named inventors on the patent-in-suit, as well as the prosecuting attorney, committed inequitable conduct by “providing an incomplete and misleading representation to the PTO regarding the capabilities of Volcano’s prior art WaveMap system.” Id. at 2. Specifically, Volcano asserted that the inventors knew, based on their familarity with certain documents, that the prior art system possessed a capability embodied in the patent-in-suit. Id. at 2-3. Volcano alleged that the inventors did not disclose these documents, which included owner’s manuals and brochures. Id. at 3. Volcano alleged that the prosecuting attorney was also aware of these documents and even submitted some of the documents during proseuction of a separate patent. Id.

As to the prosecuting attorney, Judge Andrews found that Volcano failed to plead adequate facts to allow the Court to “reasonably infer” that the attorney withheld documents with the specific intent to deceive the PTO. Id. As to the inventors, Judge Andrews found that Volcano failed to “sort out the specific facts and attribute them to a particular individual.” Id. at 4. Volcano was granted leave to amend, as to the inventors, and instructed to: (1) “individually identify whose actions constitute affirmative misconduct or were contrary to the duty of candor, and material to the issuance of the [patent in suit], on particular dates, with the intent to deceive the PTO”; and (2) “plead facts explaining why the omitted references are not cumulative of other prior art reviewed during prosecution[.]” Id.

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In a recent memorandum order, Judge Richard G. Andrews denied a motion for reconsideration of a summary judgment of non-infringement ruling.  Robocast, Inc. v. Apple Inc., C.A. No. 11-235-RGA (D. Del. June 11, 2014).  The plaintiff argued that the Court made a “factual oversight” in rendering its decision, but Judge Andrews disagreed, explaining, “[t]he entirety of the argument is one sentence buried in a footnote. . . . I do not agree that a conclusory statement buried in a footnote is sufficient to constitute an ‘overlooked argument.’”  Regardless, the Court found that summary judgment would have been appropriate even had the argument been properly raised, so the motion for reconsideration was denied.

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In Pragmatus Telecom LLC v. Aspect Software Inc., C.A. No. 14-359-RGA (D. Del. June 13, 2014), Judge Richard G. Andrews granted-in-part defendant’s motion to dismiss the complaint.  The Court dismissed all claims of indirect and willful infringement without prejudice, and also denied the plaintiff’s request for leave to amend “without prejudice to consideration of any subsequently filed motion.”  Id. at 2.

The Court noted that “[t]o describe the complaint as 98% boilerplate would not be unfair,” given that each count used the exact same language except for the different patents asserted in each.  Id. at 1.  The Court further observed that the plaintiff “could have been more specific” in its identification of accused products, given that there was additional public information available about them.  Id.  However, the Court found plaintiff’s description “adequate” enough to survive dismissal of the direct infringement claims.  Id.

However, because the allegations of indirect infringement provided no detail as to when or what kind of written notice of infringement the defendant received, the Court dismissed these claims.  Id. at 1-2.  As the willfulness allegations were “similarly deficient,” the Court dismissed them as well.  Id. at 2.
While plaintiff had requested leave to amend, the Court did not “know what facts Plaintiff could allege.  As Defendant points out, Plaintiff has not asserted any additional facts that it could plead.”  Id.  While recognizing that Rule 15 allows amendment “when justice so requires,” this was a situation where the Court could not conclude that “justice requires anything in the absence of a proposed amended complaint,” particularly where “Plaintiff could have amended as a matter of course . . . after Defendant’s motion was filed” but did not.  Therefore, the Court denied the request for leave to amend, but noted that it would “consider” allowing amendment if plaintiff filed a motion to amend.  Id.
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In the long-running and complex case of Honeywell International Inc., et al. v. Nokia Corp., et al. Judge Stark was recently tasked with reviewing the Clerk of Court’s determinations regarding taxation of costs of two prevailing defendants. Defendants FujiFilm and Samsung succeeding in invalidating the plaintiff’s patent-in-suit then filed Bills of Costs seeking $452,419.77 and $347,495.63 respectively. The Clerk granted only $85.80 of photocopy costs requested by Samsung and denied the balance of Bills of Costs. The defendants moved for a review of the Clerk’s orders, and Judge Stark considered the costs de novo, addressing both whether the costs where adequately supported and allowable and whether Local Rule 54.1 conflicts with Federal Rule 54 and 28 U.S.C. § 1920. Honeywell International Inc., et al. v. Nokia Corp., et al., C.A. No. 04-1337-LPS, Memo. Or. at 1-9 (D. Del. May 30, 2014).

The defendants argued “essentially that D. Del. LR 54.1 imposes requirements for taxation of costs that are not present in Section 1920, rendering the Local Rule impermissibly narrower than the statute.” For example, defendants pointed out that § 1920 makes transcript and copy costs taxable if they are “necessarily obtained for use in the case,” but the local rule requires transcripts to be “requested by the Court or prepared pursuant to stipulation” and copies to be “attached to a document required to be filed and served” or “admitted into evidence.” Id. at 10. As Judge Stark explained, however, LR 54.1 is a “proper exercise of the Court’s discretion, discretion which is recognized in Section 1920.” Because § 1920 states that “the Court ‘may’ tax costs to the losing party,” the local rule “provides guidance to counsel and litigants as to how this Court has chosen, as a general matter, to exercise its discretion with respect to taxation of costs.” Id. Further, the local rule limits on the items which the Clerk “shall” tax, without limiting the items that the Court might tax, and the Court has greater discretion in taxing costs than the Clerk. Id. at 10-11. Judge Stark therefore found that LR 54.1 was not in conflict with § 1920.

Turning to the specific taxation requests at issue, Judge Stark first found that the defendants had provided “adequately detailed and clear support for the costs,” including “four declarations, attaching in excess of 600 pages of invoices, bills, and summaries of work.” Although Honeywell sought to impose a high standard on the bill of costs to clearly describe each item, Judge Stark noted that “[i]n the context of complex patent litigation, it would be unreasonable to require a party to track and articulate the relevance of each specific document produced in discovery, each deposition noticed, and each exhibit designated for use at trial.” Id. at 12-13. His Honor then considered each category of costs individually, in some cases affirming and in other cases reversing the Clerk’s determinations.

Interestingly, Judge Stark also noted the Supreme Court’s recent decisions in Octane Fitness and Highmark when he mentioned in passing the defendants’ previously-denied motions for an exceptional case finding. Judge Stark indicated that he would order the parties to submit a joint status report regarding whether the Court “can and/or should reevaluate its prior ruling with respect to attorneys fees in light of the recent Supreme Court rulings.” Id. at 4 n.6.

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In Peschke Map Technologies, LLC v. Madison Marquette Retail Services, Inc., C.A. No. 12-1527 et al. (D. Del. June 3, 2014), Judge Sue L. Robinson construed several disputed claim terms in U.S. Patent No. 6,397,143:

– “[L]ayout”
– “[S]tore”
– “[S]tore layout”
– “[D]escription page[s] … comprising information related to said corresponding store”
Judge Robinson also assigned the term “series of maps” its plain and ordinary meaning.

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In Endeavor Meshtech, Inc. v. Itron, Inc., C.A. No. 13-1343-GMS (D. Del. June 4, 2014), defendant moved the Court to transfer the case to the Eastern District of Washington, or, in the alternative, the District of South Carolina. Chief Judge Gregory M. Sleet granted defendant’s motion to transfer to the Eastern District of Washington. Id. at 1.

As a threshold matter, Judge Sleet noted that the action could have been brought in the Eastern District of Washington. Id. at 2. Turning to the Jumara private interest factors, Judge Sleet noted that plaintiff’s “choice of Delaware as a forum is entitled to less than the paramount deference that would ordinarily be due because [plaintiff’s] principal place of business is California.” Id. Further, addressing “where the claims arose,” Judge Sleet found that the products at issue were manufactured outside of Delaware, which weighed in favor of transfer. Id. As to the convenience of the parties, Judge Sleet explained that defendant’s “employees who have knowledge of this matter are located in both South Carolina and Washington, while [plaintiff] is a non-practicing entity with only a single employee located to California.” Id. at 3. Accordingly, while “both parties may be able to litigate in Delaware,” Judge Sleet found it was “clear” that “litigation costs would be lowered if the parties and [defendant’s] employees did not have to travel to Delaware.” Id. Judge Sleet also found the location of books and records to weigh in favor of transfer, given that all of defendant’s relevant records were in Washington. Id.

As to the Jumara public interest factors, Judge Sleet explained that at the outset, “the court considers practical considerations that could make the trial easy, expeditious, or inexpensive.” Id. at 3-4. Judge Sleet explained that the dispute here is “between two companies, none of which are physically located in Delaware, involving accused products, none of which were designed or manufactured in Delaware.” Id. at 4. Additionally, as Judge Sleet explained, “the bulk of the records and witnesses” will be defendant’s, and “these are not located in Delaware either.” Id. Judge Sleet also noted that “the six-month shorter time to trial in the Eastern District of Washington and the five times greater number of cases per judge in the District of Delaware counsel that this case should be tried in Washington.” Id. at 4.

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Judge Sue L. Robinson recently construed claims of two patents relating to targeted television advertising. HBAC Matchmaker Media, Inc. v. CBS Interactive Inc., et al., Civ. No. 13-428-SLR (D. Del. June 3, 2014).

The following claim term from U.S. Patent No. 5,774,170 was construed: “[T]argeting advertisements . . . using code comparison in a control device [at [a/the] [display/viewing] site]:” While the plaintiff argued for a broad construction that would reach internet advertising, Judge Robinson construed the term to apply only to television advertising since “the specification consistently refers to ‘cable TV,’ ‘television,’ and ‘VCR’ . . . [and] the figures . . . represent TV systems and more particularly cable television.” Id. at 5-6.

The Court also construed from U.S. Patent No. 6,002,393 the claim terms “[H]ead end system:” and “[D]ownloading the [instruction/command signal] . . . to command the control device[s] to select [an/the] advertisement from the head end system:”.

The claim construction order was issued in the CBS Interactive case, as well as in cases filed against Google Inc. and YouTube LLC (Civ. No. 13-429), Bravo Media LLC, NBC Entertainment and Universal Television Networks (Civ. No. 13-430), Fox Broadcasting Co., et al. (Civ. No. 13-431), DirecTV Group Inc. (Civ. No. 13-432), ESPN, Inc., et al. (Civ. No. 13-433), Cartoon Interactive Group Inc., et al. (Civ. No. 13-434), Univision Interactive Media, Inc. (Civ. No. 13-435), Vevo LLC (Civ. No. 13-436), Viacom Int’l Inc. (Civ. No. 13-437), Yahoo! Inc. (Civ. No. 13-438), Blip Networks Inc. (Civ. No. 13-962), and uStream Inc. (Civ. No. 13-965).

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Judge Richard G. Andrews recently granted in part a motion to dismiss, finding that the complaint’s allegations of contributory infringement, joint infringement, willful infringement and indirect infringement were insufficient under Fed. R. Civ. P. 12(b)(6). MIH International LLC v. Banyan Health Care Products Inc., C.A. No. 13-1330-RGA (D. Del. May 28, 2014). The Court denied the motion to dismiss direct infringement claims on the basis that the complaint complied with Form 18, but encouraged the parties to work together to narrow their dispute, and to exchange documents that might help lead to a quick resolution of the dispute since, the Court inferred, the damages at stake were very low and based on only 6 months of infringement. Based on the low damages at stake, Judge Andrews expressly invited the parties to request early mediation if it would be helpful. Id. n. 1, 2.

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