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Judge Richard G. Andrews recently denied defendants’ motion to stay pending reexamination of one of the two patents-in-suit. Rovi Corp. v. Haier Group Corp., C.A. No. 11-1140-RGA (D. Del. Oct. 16, 2012). Judge Andrews determined that while he “might very well be inclined to grant a stay as to the ‘523 patent (the subject of the reexam), the Court [did] not see any reason to grant a stay as to the other.” Because the case was in its infancy, and because the plaintiffs “ought be able to proceed on the [patent not involved in reexamination proceedings],” Judge Andrews declined to stay the entire case.

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Judge Richard G. Andrews construed the one disputed claim term of plaintiffs’ U.S. Patent No. 7,815,934 covering plaintiffs’ EMBEDA® extended release capsules for oral use. in a one page order, Judge Andrews adopted plaintiffs’ proposed construction, construing the term “sequestering subunit” to mean “Any means for containing an aversive agent and preventing or substantially preventing the release thereof in the gastrointestinal tract when intact, i.e., when not tampered with.”

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Judge Sue L. Robinson recently denied a plaintiff’s emergency request seeking to disqualify an opposing expert witness based on the expert’s earlier consultations with the plaintiff, pursuant to a confidentiality agreement, regarding the litigation. Butamax Advanced Biofuels LLC v. Gevo, Inc., Civ. No. 11-54-SLR (D. Del. Oct. 10, 2012). The plaintiff’s emergency request was based on its contention that the plaintiff previously sought to retain the expert, and in the process engaged in substantive discussions regarding how the plaintiff would respond to certain arguments expected to be made by the defendant. Id. at 1-2. The emergency request provided: “Through the confidential relationship, [the expert] at least learned counsel’s [modus operandi] and decision-making process. Yesterday, [the expert] indicated he will consult for [the defendant’s] counsel on the same matters. The Court should exclude [the expert] and preclude [the defendant] from contacting him further.” Civ. No. 11-54-SLR, D.I. 531.

The Court explained that the disqualification of an expert witness is justified where it was “(1) … objectively reasonable for the party seeking disqualification to have concluded that a confidential relationship existed with the expert;[] and (2) … confidential or privileged information actually [was] disclosed to the expert.” Id. at 2 (citing Syngenta Seeds, Inc. v. Monsanto Co., Civ. No. 02-1331, 2004 WL 2223252, at *1 (D. Del. Sept. 24, 2004)). The Court added that “[a]ffirmative answers to both inquiries ordinarily compel disqualification; however, ‘disqualification is likely inappropriate if either inquiry yields a negative response.’” Id. at 3 (quoting Wang Laboratories, Inc. v. Toshiba Corp., 762 F. Supp. 1246, 1248 (E.D. Va. 1991)).

Here, the Court assumed that because the expert signed a confidentiality agreement, the first prong of the inquiry was satisfied. Id. at 5-6. The Court found, though, that the second prong of the inquiry was not satisfied, because no confidential or privileged information was disclosed to the expert by the plaintiff’s attorney. Id. at 6. The record showed that the expert had not been retained by the plaintiff, nor received any fees or confidential documents from the plaintiff. Id. In fact, the plaintiff’s attorneys had refused to provide the expert “with even publicly available documents from the litigation, e.g., the declarations of two other EC Commission members that had been submitted on behalf of [the plaintiff].” Id. at 6 n.5. The Court found that “the nature of the relationship and of the information allegedly disclosed instantly is much too abbreviated to warrant such a drastic sanction [as disqualification].” Id. at 6. The Court added that allowing the expert to testify on behalf of the defendant would not call into question the integrity of the judicial process, especially where, as here, the expert was “one of a limited number of individuals with expertise related to [the subject matter of his testimony].” Id. at 7.

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Judge Richard G. Andrews partially overruled Magistrate Judge Thynge’s decision to exclude certain prior art evidence due to discovery violations, but in a subsequent order excluded the evidence anyway on other grounds. St. Jude Medical v. Volcano Corp., C.A. No. 10-631-RGA, Mem. Op. (D. Del. Oct. 9, 2012); Order (D. Del. Oct. 12, 2012). Plaintiffs produced the prior art, a video recording of a demonstration in Paris, France to an audience that included U.S. cardiologists, in support of its 102(a) invalidity theory. The video was produced on April 24, 2012 — five months after fact discovery closed in November 2011. Id. at 2. Judge Andrews had previously affirmed Magistrate Judge Thynge’s decision to exclude other prior art evidence due to discovery violations. Id. Judge Andrews found the situation at issue here somewhat different, however. First, Judge Andrews found that even though plaintiffs produced the video as soon as they received it, it was not clearly erroneous for Magistrate Judge Thynge to conclude that that producing it after the discovery deadline passed violated the court’s scheduling order. Id. at 3. In doing so, Judge Andrews rejected plaintiffs’ argument that there was no violation because supplementations under Fed. R. Civ. P. 26(e) were permissible and contemplated under the court’s scheduling order. Id. Judge Andrews was not persuaded because Rule 26(e) “is not an invitation to do further investigation immediately before trial, and then add the fruits of the investigation to the case.” Id.

However, Judge Andrews determined that he could not assess whether Magistrate Judge Thynge’s decision to exclude was an abuse of discretion based on the current record. Because of the importance of the evidence (if it was admitted it “might very well provide the clear and convincing evidence to invalidate the patent”), Judge Andrews set up a teleconference on October 11, prior to the commencement of the impending trial, to further discuss the issue with counsel. The next day, Judge Andrews issued an order finding that there was no “likely discovery [defendant] could have done had it had the video earlier.” Oct. 12 Order at 1-2. But, there was no evidence that a person of ordinary skill in the art was in the audience of the demonstration in the video. Id. at 2. Plaintiffs offered the evidence to support its theory that the patented invention was known by others in the United States. Id. The video, however, did not “indicate” knowledge or use in the United States. Id. “The theory that American cardiologists have knowledge . . . based on watching a device the patented features of which are not within their area of expertise, cannot be proved by clear and convincing evidence based on the proffer of evidence.” Id. Thus, Judge Andrews excluded the video, and any related testimony about the demonstration, “as not presenting sufficient evidence to raise a triable jury question[.]” Id. at 3.

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Judge Stark has denied a motion to hold a defendant in contempt of the Court’s permanent injunction in the long-standing patent battle between ARRIS Group and SeaChange International. See nCube Corp. v. SeaChange Int’l Inc., C.A. No. 01-011-LPS (D. Del. Oct. 12, 2012). A jury had previously found in favor of ARRIS in its infringement case against SeaChange, and the Court entered a permanent injunction in 2006. In 2009, ARRIS filed its motion, alleging that SeaChange’s design-around did not place its interactive television (ITV) product outside the scope of the patent-in-suit or the Court’s permanent injunction. Judge Stark held that the dispute was amenable to a contempt proceeding under the Federal Circuit’s recent decision in TiVo Inc. v. Echostar Corp., 646 F.3d 869 (Fed. Cir. 2011), and held such a hearing to allow the parties to present evidence on the contempt issue.

Under TiVo, a “party seeking to enforce the injunction must prove both that (1) the newly accused product is not more than colorably different from the product found to infringe and (2) that the newly accused product actually infringes.” Tivo, 646 F.3d at 882. ARRIS contended that SeaChange had made only a minor, insignificant change in its design-around. SeaChange countered that ARRIS improperly relied on a previously-unaccused element and that a finding of contempt can only be based on features that were alleged as infringing at trial. Judge Stark came down on the side of SeaChange, explaining that “[u]nder TiVo, the Court must assess whether colorable differences exist between the [accused] functionality . . . of the infringing ITV system and the redesigned . . . functionality that is now implemented . . . [in] the modified ITV system. Having undertaken this analysis, the Court finds that ARRIS has failed to prove, by clear and convincing evidence, that there is no colorable difference between the [accused] functionality in the infringing ITV system and the [accused] functionality in the modified ITV system.” Therefore, Judge Stark concluded, ARRIS had failed to demonstrate the first TiVo prong, and the contempt motion should be denied.

Despite finding that ARRIS had not shown a lack of colorable differences between the original, infringing product and SeaChange’s new, modified product—and therefore that a contempt finding was inappropriate—Judge Stark proceeded to consider whether the modified product infringed the patent-in-suit under the second TiVo prong. He concluded: “Having considered both parties’ arguments and evidence on the issue of infringement, the Court finds that ARRIS has failed to provide clear and convincing evidence that SeaChange’s modified ITV system actually infringes [the asserted claim]. To the contrary, SeaChange—although it does not bear the burden of proof—has come forward with significant evidence of non-infringement.” Accordingly, while he did not find non-infringement, Judge Stark determined that SeaChange had prevailed under the high standard of TiVo and denied ARRIS’s motion for contempt.

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Judge Sue Robinson recently ruled on a motion to dismiss claims of indirect infringement, willful infringement, and joint infringement under Twombly and Iqbal, finding that the plaintiff had adequately plead indirect infringement but not willful or joint infringement. Aeritas, LLC v. Alaska Air Group, Inc., C.A. No. 11-967-SLR, at 1-2 (D. Del. Sep. 28, 2012).

Considering the defendant’s motion to dismiss the amended complaint, Judge Robinson first addressed indirect infringement. She noted that the plaintiff had alleged “induce[d] infringement, of one or more claims of the [patents-in-suit], with specific intent that [the defendant’s] software be used by . . . customers to infringe the [patents-in-suit].” The plaintiff also alleged contributory infringement by the defendant “offering its products to its customers, which constitute a material part of the invention and is not a staple article or commodity of commerce suitable for substantial non-infringing use.” Therefore, “having identified the products at issue for purposes of its direct infringement claims, the court conclude[d] that [the plaintiff had] satisfied the pleading requirements of Twombly and Iqbal with respect to the allegations of indirect infringement found in the amended complaint.” Id. at 5. In making this finding, Judge Robinson reiterated her position in Walker Digital, LLC v. Facebook, Inc., 2012 WL 1129370 (D.Del. Apr. 4, 2012) that a plaintiff meets the requirements of Twombly and Iqbal if it “identif[ies] the patent-at issue and the allegedly infringing conduct, as well as the notice afforded by service of the original complaint and the apparent decision to continue the inducement post-service.”
Turning to the question of willful infringement, Judge Robinson noted that the plaintiff’s amended complaint simply “reserve[d] the right to request [a willful infringement] finding at the time of trial” and alleged that “Defendant’s acts of infringement have been willful under 35 U.S.C. § 284 since at least the date it was served with the Complaint.” In the past, Judge Robinson has “allowed general allegations of willful infringement to withstand motions to dismiss and . . . read[] Seagate as not foreclosing the consideration of conduct after the complaint is filed.” Nevertheless, in this case, she found that “mere notice of the charge of infringement gleaned from service of the complaint [does not] pass muster for a willfulness claim under Rule 8 . . . [as] a patentee must not only demonstrate that the accused infringer knew about the patent (as for indirect infringement), but ‘acted despite an objectively high likelihood that its actions constituted infringement.’” Judge Robinson determined that the allegations of willful infringement did not pass muster under Rule 8 because of “the apparent recognition by [the plaintiff] that it had no good faith basis to assert willful infringement . . . [and] the fact that the burden to prove willful infringement includes more than mere knowledge of the patent.” She noted, however, that “should discovery reveal evidence of willful infringement, [the plaintiff] may approach the court for permission to amend its pleadings at that juncture.” Id. at 7-8.

Finally, Judge Robinson found that the plaintiff had failed to sufficiently plead joint infringement. She explained that “the phrase ‘[t]o the extent that Defendant is jointly infringing . . . it is the mastermind of the infringement’ simply sets forth a proposition, not facts.” She therefore refused to “characterize the speculative language used in the amended complaint as ‘enough factual matter’ that, when taken as true, ‘state[s] a claim for relief that is plausible on its face,’” as required by Twombly. Id. at 9.

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Judge Leonard Stark recently granted a patent infringement defendant’s motion to amend its answer and counterclaims to assert counterclaims of inequitable conduct. See Intervet Inc. v. Boehringer Ingelheim Vetmedica, Inc., C.A. No. 11-595-LPS (D. Del. Oct. 9, 2012). The defendant represented that it could not have known of the facts supporting a claim of inequitable conduct by the deadline for amending the pleadings, and therefore the good cause required by Rule 16 to amend the case schedule existed. Specifically, the defendant was unaware that the inventors knew the materiality of certain prior art that they had not disclosed to the PTO until after an inventor notebook was produced and depositions of two other inventors were taken. Given these circumstances, Judge Stark found that the defendant had “acted diligently in gathering evidence to support its inequitable conduct claim and informed [the plaintiff] of its intention to amend its answer approximately one week after [the relevant] deposition.” “The Court [did] not find undue delay, bad faith, or dilatory motive in [the defendant’s] actions . . . [and the] amended claim [was] not futile.” Furthermore, the Court was “not persuaded that [the plaintiff] will be unduly prejudiced if the Court grants [the] motion . . . [as] discovery appears to be ongoing.” Accordingly, Judge Stark granted the motion to amend the answer and counterclaims.

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The CM/ECF Administrative Procedures have been recently revised to include a new procedure for filing sealed documents electronically, effective November 1, 2012. (See § (G)(1)). Previously, a document filed under seal was not actually filed. Rather, a slip sheet containing the notation “Document Filed Under Seal,” or the like, was filed in its place. Now, the Court requires sealed documents to be filed directly into CM/ECF. During the docketing process, a screen will appear asking if the document should be filed under seal. If “yes” is selected, the document will be sealed from public view. A redacted document is still required to be filed within 7 days of the sealed filing.

In addition, beginning January 1, 2013 all documents filed into CM/ECF are required to conform with the PDF/A standard.

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Judge Burke recently considered defendant RadioShack’s motion to stay plaintiff Ever Win’s patent infringement litigation pending the USPTO’s reexamination of the patent-in-suit. Ever Win International Corp. v. RadioShack Corp., C.A. No. 11-1104-GMS-CJB (D. Del. Oct. 9, 2012). RadioShack filed its request for reexamination in the PTO, and once granted by the PTO, its motion to stay pending reexamination, while the case was still in its infancy and prior to the Court entering a case scheduling order. In weighing the relevant factors to determine whether a stay was appropriate, Judge Burke concluded that the current status of the litigation “strongly favor[ed] a stay.” Id. at 13. Judge Burke noted that “[t]his Court is more likely to grant stays early in a case because they are more likely to advance judicial efficiency and maximize the likelihood that neither the Court nor the parties expend their assets addressing invalid claims.” Id. at 7. Regarding prejudice, the only aspect of this factor that weighed in Ever Win’s favor was the fact that the reexamination proceedings had just begun, resulting in a lengthy delay of resolution of the litigation. Id. at 10-11. Furthermore, because Ever Win never sought a preliminary injunction, “any prejudice to [Ever Win] that might result from delaying the ultimate resolution of this dispute is not as severe as [Ever Win] contends.” Id. at 13.

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Chief Judge Gregory M. Sleet recently denied several motions to dismiss direct, induced, contributory, and willful infringement claims, finding that the plaintiff’s factual allegations were sufficient to survive under Rule 12(b)(6). In re: Bear Creek Techs. Inc. (‘722 Patent Litig.), MDL No. 12-2344 (GMS) (D. Del. Sept. 27, 2012). The Court explained with regard to the direct infringement claims that “the plaintiff’s complaints meet the Form 18 requirements by: invoking jurisdiction under 28 U.S.C. § 1338(a); stating its ownership of the patent-in-suit; alleging that the defendants have infringed the patent by ‘making, selling, and using [the device] embodying the patent’; putting the defendants on notice as to the general scope/nature of their infringement; and demanding an injunction and damages.” Id. at 2 n.5 (alteration in original). The Court rejected the argument that the complaints were insufficient for failure to identify which products were alleged to infringe, and explained that “[i]t is well-established that, ‘[w]hile it is not necessary to identify specific products,’ it is necessary for a complaint at least to ‘mimic Form 18 and identify a general category of products.’” Id. Here, the complaints included allegations regarding the defendants’ “VoIP products, systems[,] or services[,]” and identified certain trade names associated with the accused services. Id. at 3 n.5.

The Court also rejected the defendants’ arguments that plaintiff’s literal and doctrine of equivalents infringement claims were insufficient for failure to meet the pleading requirements of Twombly and Iqbal. Id. The Court explained, “as the Federal Circuit has made clear, direct infringement—and by extension, its doctrine of equivalents cause of action—must simply comply with the Form 18 elements to meet the Twombly pleading standard.” Id. (citing McZeal v. Sprint Nextel Corp., 501 F.3d 1354, 1357 (Fed. Cir. 2007).

Next, the Court rejected the defendants’ argument that the plaintiff’s induced and contributory infringement claims were insufficient for failure to identify specific third parties. The Court explained, “identifying third parties who participated in allegedly infringing activities is a proper question for discovery[,]” and found sufficient the plaintiff’s allegations that “defendants have induced ‘one or more certain affiliates, one or more third parties, and plural subscribers . . . each regarding the VoIP Services subject to [the instant] clamis[.]” Id. (citations omitted). The Court further agreed with the plaintiff that it sufficiently plead knowledge by including in its complaints the allegation that it provided each defendant with a copy of the patent-in-suit in March 2011. Id. For the same reason, the Court found that the plaintiff’s complaints “sufficiently plead the required elements of willful infringement” since its willful infringement claims were not asserted until after March 2011.

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