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The Delaware Chapter of the Federal Bar Association, in conjunction with the United States District Court for the District of Delaware, is pleased to announce another exciting new initiative. On the evenings of Thursday, May 17 and Thursday, May 31, 2012, from 5:00 to 7:30 p.m., the District Court and FBA will sponsor a two-night seminar program entitled “The Federal Trial Practice Seminar Presents: An Introduction to Federal Practice in the District of Delaware.” The sessions will take place in Courtroom 2B at the J. Caleb Boggs Federal Building.

Attorneys who have been practicing in the District for three years or less are eligible to participate in this seminar. One of the two seminar sessions will relate to an attorney’s interaction with opposing counsel and participation in the litigation process, while the other session will focus on an attorney’s interaction with the Court. Each session will include a presentation from a speaker and a panel discussion. The speakers and panel members will be current and/or former judges of the District Court.

Participation is limited to FBA members. Current FBA members may register for the seminar by contacting Steve Brauerman via e-mail at sbrauerman@bayardlaw.com, by no later than May 14, 2012. Those interested in participating in the seminar who are not currently FBA members may fill out and submit the attached application form in order to become a member.
Alternatively, they may contact Mr. Brauerman at the e-mail address listed above to obtain additional information about FBA membership.

Space for the seminar is limited and applicants will be accepted on a first-come, first-served basis. Applicants should be available to attend both sessions. Admission to the seminar is free and the FBA expects to apply for Continuing Legal Education credit in Delaware for both sessions.

The “Introduction to Federal Practice” seminar will be organized by the same administrative team that has organized our successful “Federal Trial Practice Seminar” (or “FTPS”) in 2010 and 2011. The FTPS, an eight-week trial skills seminar program offered to attorneys in their first ten years of practice, will be next offered again in Spring 2013.

Federal Bar Association Membership Application

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Chief Judge Sleet recently issued a Markman order construing the following claim terms in two separate patents relating to mobile telecommunications:
– “intelligent gateway”
– “mobile network”
– “said roamer”
– “routing center”
– “said mobile switch center”
– “is identified as”
– “adapted to enable a call dialed . . . as said dialing sequence to be routed to said destination number”
– “adapted to deliver short messages”
– “said characteristics being obtained by said gateway using knowledge of a second cellular telephony network”
– “said intelligent gateway being adapted to obtain information for said call completion using knowledge of said second cellular telephony network”
– “coupling to; being coupled to; being respectively coupled to”
– “packet-switch network”
– “other intelligent gateways”
– “other mobile networks”
In construing these terms, Judge Sleet relied upon The Institute of Electrical and Electronics Engineers dictionary and Newton’s Telecom Dictionary in finding that certain terms had established meanings as technical terms of art when the patents-in-suit were filed. Starhome GMBH v. AT&T Mobility LLC, C.A. No. 10-434-GMS, at 1, 3 (D. Del. Apr. 12, 2012). Importantly, Judge Sleet also rejected an attempted “last-minute change to [] proposed construction the night before the Markman hearing as contravening the court’s standing Orders regarding Markman briefing.” Id. at 2. Rather, Judge Sleet relied on the proposed constructions submitted in the parties’ joint claim construction chart.

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Magistrate Judge Thynge recently reviewed a bill of costs in Cordance Corp. v. Amazon.com, Inc., C.A. No. 06-491-MPT (D. Del. Apr. 11, 2012). The court considered $591,824.69 in printing, electronic discovery, exemplifications, deposition expenses, filing fees, and witness fees and subsistence costs, and granted the bill of costs in part and denied it in part. Judge Thynge found no evidence of dilatory tactics by Amazon, but did reduce some of the costs requested.
In order to recover electronic discovery costs, she required Amazon to produce documents that distinguish the costs for converting documents, which were recoverable, from costs for processing, which were not. Id. at 9. Costs of exemplifications were limited to the amount attributable to “the actual presentation of the exhibits and documents,” not for “the intellectual effort involved in their production.” Id. at 11. With regard to deposition costs, Judge Thynge refused to allow reimbursement for depositions that were not used at trial and depositions of which Amazon failed to prove “a substantial portion” was used at trial. Id. at 12-20. Finally, Judge Thynge granted Amazon’s requests for witness expenses because Amazon had provided sufficient documentation supporting witnesses’ travel costs and had provided evidence of an agreement between the parties that witness fees would be recoverable if Amazon prevailed. Id. at 21.

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Magistrate Judge Thynge recently resolved a source code dispute between MobileMedia Ideas LLC and Apple Inc. The dispute arose because Apple contended that because the patents-in-suit are systems patents, MobileMedia must identify accused products including both specific hardware devices and the specific versions of software they run. MobileMedia, on the other hand, contended that it need only identify the hardware products that it was accusing, which it had done in its original infringement contentions. MobileMedia Ideas LLC v. Apple Inc., C.A. No. 10-258-SLR/MPT, at 1 (D. Del. Apr. 11, 2012).
Apple produced what MobileMedia contended was a representative version of Apple’s iOS software and MobileMedia’s experts analyzed the source code. Apple later produced the source code for three other versions of the iOS software, and the Court noted that it would take MobileMedia considerable time and resources to review the additional source code and expert reports were fast approaching. The Court therefore granted MobileMedia’s proposed order which required Apple to identify any of the later-produced source code that it intended to rely on for determining liability. The Court also added this same requirement for MobileMedia, ordering that “[s]hould [MobileMedia] rely on that Apple Source Code for the purposes of determining liability of that accused functionality, it shall provide a supplemental opinion to Apple limited to that Apple Source Code from its previously identified expert(s) including the bases and reasons for that opinion consistent with Fed. R. Civ. P. 26(2)(B).” Id. at 4.

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In Walker Digital, LLC v. Facebook, Inc., C.A. No. 11-313-SLR, Judge Robinson denied defendants’ motion to dismiss plaintiff’s claims for direct, induced, contributory and willful infringement. Id. at 1. Plaintiff filed suit against multiple defendants for infringement of two patents-in-suit relating to e-commerce transaction technology. Id. at 1-2. Plaintiff alleged that defendants “ha[ve] and continue[] to directly, indirectly and willfully infringe” the patents-in-suit. Id. at 2. Two of the defendants in the case moved to dismiss the allegations against them for failure to state a claim. Id. at 3. These defendants argued that the amended complaint was “ripe for dismissal for failure to state a claim” because: (1) “the accused marketing promotions on their face show that they do not satisfy the ‘unless and until’ claim limitation of the patents-in-suit” and that amended complaint (2) lacks factual allegations sufficient to state a claim for indirect and willful infringement.” Id. at 3. The Court denied defendants’ motion.
Regarding the claims for direct infringement, and despite defendants’ arguments to the contrary, the Court concluded that “dismissing the amended complaint on the grounds that it fails to state a claim for direct infringement would be premature” and that the Court was “not prepared to engage in a claim construction exercise at this stage of the proceedings, with no context whatsoever provided by discovery or a motion practice.” Id. at 5. Regarding the claims for inducement, the Court found that the plaintiff’s allegations “pass[ed] muster under Rule 8” and were therefore sufficient for pleading purposes. Id. at 10. Citing the Supreme Court’s decision in Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060, 179 L. Ed. 2d 1167 (2011), the Court noted that “if a complaint sufficiently identifies, for purposes of Rule 8, the patent at issue and allegedly infringing conduct, a defendant’s receipt of the complaint and decision to continue its conduct despite knowledge gleaned from the complaint satisfies the requirements of Global-Tech.” Id. at 11.
Likewise, regarding the claims for contributory infringement, the Court found that the allegations of the amended complaint satisfied each of the elements of contributory infringement; were “facially plausible” and provided defendants “adequate notice” of the claims asserted against them. Id. at 12. Finally, regarding the claims for willfulness, the Court determined that the allegations of the amended complaint were sufficiently pled to state a claim for willful infringement. Id. at 14. The Court noted that the “amended complaint provides evidence that [defendants] had pre-suit knowledge of the patents-in-suit due to . . . interactions with [plaintiff’s] representatives, which occurred before the original complaint was filed” and that the Court can “infer from [defendants’] conduct after plaintiff filed its original complaint that [defendants] knew or should have known the objectively high likelihood that [their] continuous and deliberate actions would constitute infringement of the patents-in-suit.” Id. at 14-15.

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In Tessera, Inc. v. Sony Electronics Inc., et al., C.A. No. 10-838-RMB (D. Del. Mar. 30, 2012), Judge Bumb, sitting by designation, denied defendant Renesas motion to transfer to the Northern District of California distinguishing the Federal Circuit’s decision in In re Link A Media. Renesas, a Japanese corporation with its principal place of business in Japan, argued that Link A Media supported transfer. Id. at 9 n.4. Judge Bumb disagreed noting that in Link A Media the Federal Circuit “found that the District Court had placed undue weight on the plaintiff’s choice of forum where the plaintiff filed suit in Delaware and the only meaningful connection with Delaware was the defendant’s incorporation in Delaware. Here, in contrast, . . . the deference afforded Plaintiff’s choice of forum is appropriately grounded in Plaintiff’s own incorporation in Delaware.” Id. (emphasis in original) (internal citations omitted).

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In Broadridge Financial Solutions, Inc. v. Inveshare, Inc., C.A. No. 10-75-RGA (D. Del. Apr. 11, 2012), Judge Andrews construed the following nine terms found in U.S. Patent No. 7,475,817 which claims “a system for the electronic distribution of shareholder solicitation messages”:
1. “Electronic Solicitation Message [that provides shareholder access to a solicitation content]”
2. “Solicitation Content”
3. “Authorized Party”
4. “Authorized Shareholder”
5. “Tagging”
6. “Validating that Each Shareholder Receiving the Notification is Authorized to View the Solicitation Content”
7. “A Component”
8. “A Component for Tagging the Electronic Solicitation Message to Validate that a Shareholder is Authorized to View the Solicitation Content”
9. “Electronic messaging”
The parties agreed upon the construction of the terms “Electronic Solicitation” and “A Proxy Platform”.

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In a recent memorandum opinion, Judge Robinson denied Sony’s motions to dismiss inducement and willfulness claims and to stay pending the resolution of an appeal in an earlier related case. Apeldyn Corp. v. Sony Corp., et al., C.A. No. 11-440-SLR (D. Del. Apr. 4, 2012). In denying Sony’s motion to dismiss the inducement claim, the Court explained that a complaint that “sufficiently identifies, for purposes of Rule 8, the patent at issue and the allegedly infringing conduct, [and] a defendant’s receipt of the complaint and decision to continue its conduct despite the knowledge gleaned from the complaint” can satisfy the elements of an inducement claim under Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060, 2068 (2011). Id. at 9. The Court explained that Sony indisputably knew that its conduct was alleged to induce infringement at least as of the filing of the earlier complaint, and Apeldyn sufficiently alleged that Sony continued to engage in that conduct despite its knowledge. Id. at 7. The Court next addressed the willfulness claim, and explained that although “a willfulness claim asserted in the original complaint must necessarily be grounded exclusively in the infringer’s pre-filing conduct,” quoting In re Seagate Tech., LLC, 497 F.3d 1360, 1374 (Fed. Cir. 2007), the “pre-filing conduct” requirement as it related to this second filed action by Apeldyn included the participation in the earlier filed case. Id. at 11. Accordingly, the Court found that Apeldyn’s complaint sufficiently alleged “that Sony had knowledge of the ‘382 patent before filing of the instant suit.” Id. at 12 (emphasis added). Finally, the Court addressed Sony’s motion to stay pending the resolution of the appeal in the earlier case, and explained that although the status of this case favored a stay, the prejudice to Apeldyn weighed against a stay and it was not yet clear whether a stay likely would result in simplification of issues in this case. Id. at 16. The Court therefore denied the motion to stay without prejudice.

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In a recent memorandum order in Round Rock Research LLC v. Dole Food Co. Inc., et al., C.A. Nos. 11-1239 (Dole), 11-1241 (Gap), 11-1242 (Hanesbrands) (RGA) (D. Del. Apr. 6, 2012), Judge Andrews granted the defendants’ motions to stay pending ex parte reexamination, finding that the posture of the litigation was “pretty close to the classic case for granting a stay[.]” Id. at 6. The Court explained that the plaintiff was a non-practicing entity seeking only monetary damages, discovery had not yet begun and there was no trial date in place, most of the claims likely to be asserted could be affected by the outcome of reexamination, and claim construction could be informed by the additional prosecution history resulting from the reexamination. Id. at 3. On balance, the Court explained, “[t]he prejudice to the Plaintiff, including any tactical disadvantage, is not great, and the other factors all clearly weigh in favor of granting the stay.” Id. at 6.

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Chief Judge Sleet recently granted Mylan’s motion to dismiss for lack of standing a complaint filed by Endo alleging that Mylan “failed to comply with 21 U.S.C. § 355 by failing to provide notice of its Paragraph IV certification … to the patent’s purported assignee.” The Court agreed with Mylan’s contention that § 355(j)(2)(B) “does not create a private right of action and therefore … Endo does not have standing to assert this challenge.” Id. n.1 (relying on Minn. Mining and Mfg. Co. v. Barr Labs., Inc. 289 F.3d 775, 782 (Fed. Cir. 2012) (holding that parties cannot seek a judicial determination of whether a private party’s paragraph IV certification complies with § 355). Because Endo lacked standing to challenge Mylan’s compliance with § 355, the Court explained that it could not rule on Endo’s infringement allegations which were included in the complaint in case “the Court determines now or at a future date that Mylan has complied with its obligations under the Hatch Waxman Act to provide notice of a Paragraph IV Certification.” Id. n.2. As a result, the Court dismissed the complaint without prejudice.

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