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Judge Robinson recently issued a memorandum order in Cyberphone Systems, LLC v. Cellco Partnership, et al., C.A. Nos. 11-827-SLR through 11-835-SLR (D. Del. Apr. 30, 2012), denying various motions of certain defendants to dismiss the claims against them.  Among these were motions based on the argument that, although CyberFone filed its complaints on the day before the America Invents Act took effect, these pre-AIA complaints violated Federal Rule of Civil Procedure 20 because they did not “allege joint infringement, or any relationships or common activities among the individual defendants.”  Id. at 2.  Judge Robinson initially noted that “severance, not dismissal, is the correct remedy for misjoinder.”  She then refused to exercise her discretion to sever the claims.  Id. at 2-3.  Similarly, she refused to sever claims against cellular carriers from claims against cellular handset manufacturers based on the customer suit exception.  Id. at 3-4.

Judge Robinson also denied several motions to dismiss “improper” infringement allegations, finding that they complied with Form 18, and denied several motions to dismiss that related to the adequacy of CyberFone’s direct infringement allegations.  She stated:  “[t]he court is not prepared to engage in the claim construction exercise at this stage of the proceedings, with no context whatsoever provided by discovery or a motion practice.”  Id. at 4.  “The court will discuss with the parties, however, the need for an early claim construction of dispositive limitations, once a full and fair exchange of fundamental documents has been accomplished.”  Id. at 4 n.6.

Finally, Judge Robinson reaffirmed her recent decision in Walker Digital that “a defendant’s receipt of the complaint and decision to continue its conduct despite the knowledge gleaned from the complaint satisfies the requirements of Global-Tech [that the defendant have knowledge of the patent].”  On this basis, she refused to dismiss various claims of indirect infringement.  Id. at 6.

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Judge Robinson recently denied, without prejudice, a motion for fees (and motion for joinder) filed by defendants who prevailed on summary judgment. Apeldyn Corp. v. AU Optronics Corp., et al., C.A. No. 08-568-SLR (D. Del. May 3, 2012). The Court noted that under Rule 54(b)(2)(B), it had discretion either to rule on the motion, to defer ruling on the motion, or to deny the motion without prejudice. Id. at 3. Here, because the defendants prevailed on summary judgment and the plaintiff subsequently appealed the decision to the Federal Circuit, the Court exercised its discretion and denied the motion without prejudice, explaining that “[i]f the Federal Circuit affirms, defendants may request a briefing schedule on a joint motion for fees.” Id. at 4.

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Judge Robinson recently decided two motions to transfer, her first in patent cases since the Federal Circuit’s decision in Link-A-Media.  In Helicos Biosciences Corp. v. Illumina, Inc. et al., C.A. No. 10-735-SLR, at 3 (D. Del. May 3, 2012), Judge Robinson detailed the  Courts of Appeal’s history of allowing “civil action[s] for patent infringement [to] be brought in the judicial district in which the defendant was incorporated.”  Id. at 3.  As Judge Robinson explained, “by the time Jumara issued in 1995, there was a recognized historical continuum that served as the backdrop for the Third Circuit’s analysis.  First, a defendant’s state of incorporation had always been a predictable, legitimate venue for bringing suit.  Second, a plaintiff, as the injured party, generally had been ‘accorded [the] privilege of bringing an action where he chooses.’”  Id. at 6 (citations omitted).  Indeed, she noted, “the risk associated with the exercise of [judicial] discretion was also recognized . . . as ‘assigning to the trial judge the choice of forums, a prerogative which has previously rested with the plaintiff.’”  Id. (citations omitted).  Judge Robinson noted further that, “[a]lthough transfer is a discretionary decision on the part of a district judge, . . . clearly the Federal Circuit expects an analysis of all the Jumara factors in connection with any transfer decision issued by this court.”  Id. at 8.  She therefore proceeded to address each Jumara factor in turn, explaining why each factor either weighed for or against transfer, or was neutral.  Id. at 9-14.
Ultimately, Judge Robinson found that one factor favored transfer.  Considering the “practical considerations that could make the trial easy, expeditions, or inexpensive” she noted that “[t]he court in Delaware has been criticized for managing its patent docket without the aid of local rules, allowing the judges to vary their case management procedures over time and/or from case to case[,] . . . encouraging parties to settle their disputes, but not shying away from resolving disputes through the adversarial process (including trial) if the parties fail in their efforts to craft a business solution[,] . . . expecting the corporate citizens of Delaware to make themselves available to litigate in Delaware, as has been their historical obligation, and [] making observations about the realities of patent litigation gleaned from the (not insubstantial) experiences of its judges.”  Despite these critiques of the Court, she found that this factor favored transfer, as “trial in the Northern District of California would be easier and less expensive for the defendants.”  Id. at 12.  Because only one factor favored transfer, however, Judge Robinson determined that “defendant [had] not tipped the scales of justice in favor of transfer.”  Id. at 14. 
Similarly, in Cellectis S.A. v. Precision Biosciences, Inc., C.A. No. 11-173-SLR (D. Del. May 3, 2012), Judge Robinson denied a motion to transfer to the Eastern District of North Carolina .  Id. at 18.  Judge Robinson analyzed each Jumara factor.  Finding that two of the eleven factors – “the convenience of the parties” and “practical considerations that could make the trial easy, expeditious, or inexpensive” – weighed in favor of transfer, Judge Robinson concluded that the defendant did not put forth enough evidence to tip the scale in favor of transfer.  Id. at 15-18.

 

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On April 27, 2012, the jury returned a verdict in Power Integrations, Inc. v. Fairchild Semiconductors International, Inc., et al., C.A. No. 08-309-LPS. The case involved infringement allegations by both the plaintiff and the defendants involving a total of six patents related to DC output power supplies or power converters. The jury found that Fairchild literally infringed, and induced the infringement of, two of Power’s four asserted patents (U.S. Patents No. 6,249,876 and 6,107,851). Power was found to have infringed under the Doctrine of Equivalents one of Fairchild’s two asserted patents (U.S. Patent No. 7,259,972). The jury found that none of the asserted patents were invalid as anticipated or obvious. Because this case was bifurcated, willfulness and damages have not yet been tried.

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In Medicis Pharmaceutical Corp., et al. v. Actavis Mid Atlantic LLC, C.A. No. 11-409-LPS-CJB, Judge Burke denied plaintiffs’ motion to compel production of documents on the grounds that the document requests were “substantially overbroad.” Id. at 4. By their motion, plaintiffs sought to compel production of “all documents referring or relating to” defendant’s use of certain ingredients in products other than the ANDA product at issue in the litigation. Id. at 1. Plaintiffs argued that the documents were relevant to their claim of infringement under the doctrine of equivalents. Id. at 2-3. Specifically, plaintiffs argued that the documents and underlying ingredient information they were seeking was discoverable, in part, because “evidence that [defendant] has substituted or interchanged these ingredients in its other products would demonstrate that [the ingredients] are equivalent in its proposed generic product.” Id. at 3. Defendant countered, arguing that plaintiffs’ requests were overbroad and, thus, improper under the rules. Defendant noted that, for example, any one of its more than 1,400 products could fall within the scope of plaintiffs’ requests, “whether or not that product related in any way to the ANDA product.” Id. at 3. The Court agreed, concluding that plaintiffs’ requests were, indeed, “substantially overbroad” and “not focused on the ANDA product or similar products” at issue in the case. Id. at 4. In its analysis, the Court noted that the document requests, as written, implicated “any product that happens to contain one of the ingredients.” Id. at 4. The Court also commented on the “limited relevance” of any such documents in comparison to the burden and expense associated with defendant having to conduct such an “open-ended search.” Id. at 5. In its ruling, the Court ordered that the document requests be “limited to certain narrow categories of [defendant’s] products” that are more closely related to the ANDA product at issue. Id. at 5-6.

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In Technology Innovations, LLC v. Amazon.com, Inc., C.A. No. 11-690-SLR, Judge Robinson denied defendant’s motion to dismiss for failure to state a claim and its motion for sanctions under Rule 11. Id. at 1. Plaintiff filed suit against defendant for infringement of two patents-in-suit. Id. at 1-2. In the complaint, Plaintiff alleged that certain of defendant’s e-book products infringed the patents-in-suit. Id. at 2. In response, defendant moved to dismiss the allegations involving one of the patents-in-suit under Rule 12(b)(6). Id. at 2. Specifically, defendant argued that the complaint failed to “allege sufficient facts to support a claim of infringement” of at least one of the patents-in-suit. Id. at 2. In addition, defendant argued that “there is no possible construction for ‘book’ that would cover [any of defendant’s products]” and “therefore, claim construction proceedings [were] not necessary,” and at least one of the patents-in-suit “should be dismissed from the case.” Id. at 3. Plaintiff, on the other hand, argued that the issue was one of claim construction and that dismissal under Rule 12(b)(6) was inappropriate. Id. at 3-4. The Court agreed. Id. at 4. In denying defendant’s motion, the Court made clear that it was “not prepared to engage in a claim construction exercise . . . at this stage of the proceedings, with no context provided by discovery or a motion practice.” Id. at 4. The Court concluded that the complaint “passes muster under Rule 8” and that dismissal based on the current record would, therefore, be “premature.” Id. at 4-5.
In support of its Rule 11 motion for sanctions, defendant argued that sanctions against plaintiff were appropriate because there was “no possibility” of infringement by defendant’s accused products. Id. at 5. The Court disagreed, declining to “award sanctions at this early stage of the case.” Id. at 5. In, however, denying defendant’s Rule 11 motion without prejudice, the Court warned that it would “entertain a renewed motion [for sanctions] if it is later determined, after discovery and a full claim construction record, that plaintiff’s assertion . . . against defendant’s products was so lacking in merit that the imposition of sanctions is warranted.” Id. at 5.

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In Virgin Atlantic Airways Ltd. v. Delta Airlines, Inc., C.A. No. 11-61-LPS-CJB (D. Del. Apr. 27, 2012), Judge Burke issued a Report and Recommendation construing the claim terms of U.S. Patent No. 7,469,861 entitled “Seating System and a Passenger Accommodation Unit for a Vehicle.”  The ‘861 patent discloses a seating system “by which the passenger seats are oriented at an angle to the aisle . . . of the plane.”  Id. at 2.  The principal focus of the ‘861 patent “appears to be on seating systems that convert to a ‘substantially flat bed.’”  Id.  Judge Burke construed the following claim terms:

“substantially flat bed”

“having”

“behind”

“substantially horizontal surface”

“upper sleeping surface”

“about the same height”

“usable space to a passenger”

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On April 25, 2012, the Honorable Sherry R. Fallon was sworn in as a United States Magistrate Judge, joining Magistrate Judges Thynge and Burke. Prior to this appointment, Judge Fallon was a partner at Tybout, Redfearn & Pell specializing in insurance defense, insurance coverage and bad faith litigation, toxic tort, product liability, retailers’ premises liability, construction litigation, creditors’ claims in commercial bankruptcies, and defense of employment litigation claims. Click here for Judge Fallon’s Web page.

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Judge Robinson recently considered motions for a preliminary injunction, to dismiss, and to transfer in a Lanham Act case with colorful facts.  Capriotti’s Sandwich Shop, Inc. v. Taylor Family Holdings, Inc., C.A. No. 12-28-SLR (D. Del. Apr. 25, 2012).  The case involves Capriotti’s, a Nevada corporation with franchised locations primarily in Delaware and Nevada.

Judge Robinson first determined that the defendant, Taylor Family Holdings, was amenable to jurisdiction and venue in the District of Delaware.  TFH had initiated a second case in the Delaware Court of Chancery against Capriotti’s after Capriotti’s filed its complaint and motion for a preliminary injunction in the District Court.  The Chancery litigation was stayed pending the outcome of the District Court litigation, and TFH moved to dismiss for lack of jurisdiction.  Judge Robinson found that on these facts and consistent with various authority, “by filing the suit in the Delaware Court of Chancery, defendants at bar have waived jurisdictional defenses and consented to the jurisdiction of this court.  Defendants ‘can claim no unfairness based upon this court’s exercise of jurisdiction over [them], since one who enjoys the full benefits of access to a forum’s courts as plaintiff may not simultaneously claim immunity from that forum’s authority as defendant.’”  Id. at 15-18 (citing Marron v. Whitney Group, 662 F. Supp. 2d 198 (D. Mass. 2009)).

Judge Robinson also heard testimony in support of the motion for a preliminary injunction and determined that a key witness was in Nevada and had not testified in Delaware.  Because of this witness’s absence from the Delaware litigation, Judge Robinson refused to grant a preliminary injunction.  Id. at 19-20.  She also determined that the case was one where “the reasons to transfer strongly favor defendant,” and ordered transfer to the District of Nevada.  Although Delaware was a legitimate venue, the dispute regarding the injunction “arose in Nevada between two Nevada-based businesses and only a Nevada court can exercise personal jurisdiction over critical fact witnesses.”  Id. at 20-21.

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Judge Robinson denied today a motion for separate trials on two asserted patents, and for a stay as to one of those patents pending the outcome of an appeal to the Board of Patent Appeals and Interferences (“the Board”). Leo Pharma A/S v. Tolmar, Inc., Civ. No. 10-269-SLR (D. Del. Apr. 25, 2012). In this ANDA case, the plaintiff appealed to the Board the PTO’s rejection of all asserted claims of the ‘013 patent, and represented to the Court that if the Board upheld the PTO’s rejection, an appeal to the Federal Circuit would follow. The defendant argued that the plaintiff’s true motive for the “eleventh hour” motion (discovery was completed and trial was to begin in about two months) was improperly to prolong the 30 month stay under the Hatch-Waxman Act and, further, that the resources of both the Court and the parties would be wasted if separate trials were held on the related patents. The plaintiff, for its part, countered that denying the motion to stay would result in wasted resources because the outcome of the Board appeal (which would post-date the end of trial) likely would narrow the asserted claims tried to the Court. Judge Robinson denied the motion, and explained, “[b]ecause this is a bench trial, the evidence and arguments presented by the parties can be supplemented if need be. Since neither party is willing to abide by the decision of any forum other than the Federal Circuit, this court will do what it is supposed to do, try the case.”

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