In a recent memorandum order, Judge Robinson rejected the plaintiff’s efforts to present willfulness evidence in the damages phase of trial. IGT v. Bally Gaming Int’l, Inc., et al., C.A. No. 06-282-SLR (D. Del. June 20, 2012). Inconsistently with Judge Robinson’s typical practice, the plaintiff had requested that it be permitted to try willfulness during the liability phase of the case. The Court permitted the plaintiff to do that, but, thereafter, the plaintiff failed to include any information about its willfulness allegations in its interrogatory responses, and the parties engaged in no discovery regarding willfulness at any time. Id. at 1-2. After the Court’s summary judgment rulings largely disposed of the liability phase of the case, the plaintiff sought to present willfulness evidence in the damages phase. Judge Robinson explained, “Plaintiff, over defendants’ objection, requested permission to pursue the issue of willfulness during the liability phase of the case. Although the court generally separates the resolution of liability from the resolution of willfulness and damages, the court granted plaintiff’s request. Plaintiff never brought up the issue of willfulness again until the April 2009 pretrial order. In seeking a second opportunity to pursue its willfulness claim, plaintiff is requesting a second bite at the apple. The court is not inclined to make two exceptions for plaintiff.” Id. at 3.
In United Video Properties, Inc. et al., v. Amazon.com, Inc., et al., C.A. No. 11-0003-RGA (D. Del. June 22, 2012), Judge Andrews recently construed the following claim terms of the patents-in-suit directed to use of electronic television guides and setting future recordings of television programs or purchasing programming via personal computer (U.S. Patent Nos. 5,988,078; 6,275,268; 6,769,128; 7,493,643; and 7,603,690):
“displaying” and “displaying … with electronic television program guide”
“electronic television program guide”
“time and date stamping an order placed by the user with the electronic television program guide”
“multimedia informational system”
“video display generator”
“program schedule information”
“viewer television equipment”
“program display guide”
“video-on-demand program listing”
“interactive program guide”
“determine whether the selected program is part of a package”
Judge Andrews construed the following means-plus-function terms, construing the claimed function and identifying the corresponding struction disclosed in the specification:
“means for indicating that a video clip preview is available for a video-on-demand program that is associated with a video-on-demand program listing wherein the indication is provided with
the video-on-demand program listing”
“means for displaying the video clip preview on the viewer television equipment”
“means for displaying an ordering display screen after the video clip preview of the video-on-demand program is displayed, wherein the ordering display screen provides the viewer with
the opportunity to select an ordering option to order the video-on-demand program”
Judge Andrews recently denied defendants’ motions to dismiss plaintiff’s amended complaint in Select Retrieval LLC v. Amerimark Direct LLC, et al., C.A. No. 11-812-RGA (D. Del. June 18, 2012), because the complaint’s “minimal allegations” stating a claim for direct infringement satisifed Rule 18. Id. at 1. Judge Andrews also found plaintiff’s willfulness allegations sufficient because the complaint alleged that shortly before the complaint was filed “the defendant was notified by letter of the existance of its patent, that the defendant infringed the patent, and that the plaintiff was offering a license agreement.” Id. at 2.
In Ivoclar Vivadent AG v. 3M Company, C.A. No. 11-1183-GMS-SRF (D. Del. June 22, 2012), defendant filed a motion to transfer the case to the District of Minnesota where defendant first-filed a declaratory judgment action against plaintiff for non-infringement and invalidity of the same patent. Id. at 1-4. Plaintiff, a Liechtenstein company, opposed defendant’s motion arguing that an exception to the first-filed rule applied “because [defendant] preemptively filed its declaratory judgment action in Minnesota with the intent to dictate venue prior to the formal termination of the [Confidential Disclosure Agreement that contained a covenant not to sue].” Id. at 10-11. Judge Fallon disagreed and ultimately recommended transfer rather than dismissal. Judge Fallon analyzed the Jumara factors and found that all but one factor weighed in favor of transfer or was neutral. Id. at 14-27.
Magistrate Judge Thynge recently issued a report and recommendation in Neology, Inc. v. Federal Signal Corp., C.A. No. 11-672-LPS/MPT (D. Del. June 18, 2012), recommending that the Court deny Neology’s motion for a preliminary injunction against infringing the patents-in-suit. The patents-in-suit cover RFID (radio frequency identification) tags, readers, and systems for us in the U.S. highway tolling industry. In considering whether the plaintiffs had a reasonable likelihood of prevailing on the merits at trial, Judge Thynge construed several terms and considered infringement and invalidity arguments. Although Neology demonstrated a likelihood of success on the merits for some of the patents-in-suit, Judge Thynge denied a preliminary injunction with respect to all of the patents in suit because she found no irreparable harm.
In concluding that there was no irreparable harm, Judge Thynge first found that Neology had delayed substantially in seeking a preliminary injunction, as it was first aware of a defendant’s alleged infringement in fall of 2009 and its first loss of sales to the defendant in spring of 2011, but did not file suit until July 2011 and did not seek an injunction until December 2011. Such delay weighed against granting an injunction. Id. at 40. She next rejected Neology’s arguments that the defendants had denied or would deny Neology entry into the relevant product market and that the defendants’ alleged infringement had caused Neology financial harm. She did find, however, the Neology’s apparent financial strength and attractiveness to investors may have been somewhat illusory and did not undercut its assertion of irreparable harm. Id. at 53.
Judge Thynge also rejected Neology’s argument that it would suffer irreparable reputational harm because defendants’ inferior products could jeopardize the market’s transition to the RFID technology in question. She determined both that the defendants’ products were not necessarily inferior, as they had been compared favorably by independent parties, and that the defendants’ products had not caused any reputational harm to Neology’s products. Id. at 62. Finally, Judge Thynge rejected Neology’s price erosion argument based on defendants’ putting downward pressure on the price of the technology in question. She did not find persuasive evidence that defendants were pricing their products improperly and did not agree with Neology’s assertion that its own pricing was relevant to the appropriateness of defendants’ pricing. Furthermore, Judge Thynge found that even if price erosion had occurred, damages could properly compensate Neology for this harm. Id. at 69.
In LG Electronics, Inc. v. Asko Appliances, Inc., C.A. No. 08-828-RGA (D. Del. June 22, 2012), Judge Andrews granted-in-part defendants’ motion to exclude plaintiff’s expert. Judge Andrews determined that the expert was not qualified to opine as to whether any reference was “prior art”, but could opine as to “what different references teach, and to differentiate and compare references.” Id. at 1. Judge Andrews also found that while the expert was qualified to opine about the secondary consideration of copying (due to “his expert ability to review and compare washing machine motors, their development, and their installation”), the expert could not opinion on other secondary considerations, such as commercial success, because the opinion was based on the expert’s review of industry documents and knowledge of plaintiff’s corporate witness, rather than his own expertise in the industry. Id. at 2.
Judge Stark recently considered summary judgment motions from defendants Canon and Adobe in a patent infringement action brought by Tarkus Imaging. Tarkus Imaging, Inc. v. Adobe Systems, Inc., C.A. No. 10-63-LPS (D. Del. June 14, 2012). Judge Stark ultimately concluded that summary judgment was not appropriate on any point because “the portions of this case at issue in the pending summary judgment motions present a ‘battle of the experts’ that is not amendable to resolution prior to presentation of evidence, including testimony.” Id. at 1-2.
Specifically, with regard to Canon’s motion for summary judgment of non-infringement, “[t]he Court [was] not persuaded, at this stage of the proceedings, by Canon’s contentions that Tarkus is barred from asserting doctrine of equivalents infringement theories due to application of prosecution history estoppel or that Tarkus has failed to create a genuine dispute of material fact because Tarkus’s expert has not identified specifically infringing source code.” Id. at 5. The Court also denied Adobe’s motions for summary judgment of non-infringement and no indirect infringement. On the issue of indirect infringement, Adobe argued that it had no knowledge of the patent-in-suit, but the Court found that Tarkus had “presented evidence that creates a dispute of fact as to whether Adobe was willfully blind to the existence of the [patent-in-suit].” Id. at 8-9.
Finally, the Court denied Canon’s motion for summary judgment that Tarkus’s patent was invalid on the ground that a claim term lacked an antecedent basis and was therefore indefinite. An expert opinion, the Court said, “based on the plain language of the claims and the specification, is sufficient to create a genuine dispute as to whether a person of ordinary skill in the art could determine the scope of the claim and the meaning of [the claim term] despite the lack of express antecedent basis [for that term]. As a claim term without an explicit antecedent basis may nevertheless be definite if the term ‘has a reasonably ascertainable meaning . . . decided in context,’ summary judgment is not warranted based on the present record.” Id. at 10-11.
In St. Jude Medical v. Volcano Corporation, C.A. No. 16-631-RGA-MPT (D. Del. June 15, 2012), Judge Andrews recently considered the parties’ motions to strike expert reports. Plaintiff moved to strike the expert report of defendant’s patent law expert. Id. at 1. Judge Andrews granted plaintiff’s motion finding that the contents of the report, which was “akin to a legal brief” on patent law, was not the appropriate subject of expert testimony and would not assist the trier of fact. Id. Defendant moved to strike the expert reports of plaintiff’s inequitable conduct experts. Id. Noting that no inequitable conduct defenses would be presented to a jury, and noting that portions of the reports might be inadmissible or irrelevant, Judge Andrews declined to strike the reports because parts of the reports were admissible and would assist the Court as the trier of fact on inequitable conduct. Id. at 2.
In United Access Technologies, LLC v. Earthlink, Inc. C.A. No. 02-272-MPT (D. Del. June 14, 2012), Judge Thynge recently considered defendant’s bill of costs submitted after the Court’s opinion, that reversed the jury’s verdict as to invalidity but upheld the jury’s verdict of non-infringement, was affirmed on appeal. Id. at 1-3. Plaintiff objected to defendant’s bill of costs arguing, among other things, that defendant was not the prevailing party because defendant was unsuccessful on its counterclaim of invalidity. Id. at 4 Judge Thynge disagreed. Defendant was the prevailing party because the relief it received on the merits, i.e., that it did not infringe plaintiff’s patent and was free to continue operating its DSL business, altered the legal relationship between the parties. Id. at 9. It was irrelevant that defendant was unsuccessful on its invalidity counterclaims. Because plaintiff’s patent is presumed valid, the court’s finding that defendant failed to carry its burden to prove invalidity did not “materially alter the legal relationship between the parties by modifying [defendant’s] behavior in a way that directly benefitted [plaintiff.]” Id.
Magistrate Judge Schneider of the District of New Jersey recently reminded parties of the appropriate showing that must be made in connection with a motion for leave to amend infringement and invalidity contentions. Bayer CropSciences AG v. Dow AgroSciences LLC, C.A. No. 10-1045 (RMB/JS) (D. Del. June 7, 2012). The Court explained, “the key fact courts should look at to determine whether good cause exists to grant an amendment to a contention is the diligence of the moving party. Diligence has two aspects to it. One is whether the moving party acted diligently to discover that an amendment was appropriate. The second aspect is whether the moving party promptly moved to amend its contentions after it learned an amendment was necessary.” Id. at 3 (citing O2 Micro Intern. Ltd. v. Monolithic Power Systems, Inc., 467 F.3d 1355, 1365-67 (Fed. Cir. 2006)). In denying the motion, the Court explained, “good cause is not established simply because a party desires to respond to an amended contention. Otherwise, there would be a never ending series of amendments.” Id. at 4. In this case, Dow’s motion “did not demonstrate why its latest proposed amendment could not have been asserted earlier or why Bayer’s amendment was not anticipated.” Id.
The Court also rejected Dow’s attempt to amend its contentions through an incorporation by reference of its summary judgment briefs, explaining “[t]he Patent Rules [of the District of New Jersey] incorporated into the Court’s Scheduling Order provides that contentions may only be amended by motion. The mere fact of filing a brief is insufficient to amend a contention.” Id. at 5. Moreover, the Court explained that “Dow has not demonstrated why the contentions in its briefs were not included in its earlier filed contentions.” Id. at 6. Finally, the Court denied Dow’s attempt to add two prior art references “that were both discovered recently,” explaining that Dow’s motion “did not attempt to establish good cause for its failure to previously identify the references.” Id.