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In Helicos Biosciences Corp. v. Pacific Biosciences of California, et al., Civ. No. 10-735-SLR (D. Del. Dec. 22, 2011), discussed previously here, Judge Robinson denied a defendant’s motion to sever or stay the litigation against it in a situation where the defendant argued that, unlike its co-defendant, it never had (and never would) commercialize the technology accused of infringement, and where there existed no allegation that its activities or products overlapped with its co-defendant to satisfy the “common transaction” requirement of FRCP 20(a). Id. at 1-2. Instead, the defendant argued, the allegations against it were based solely on non-commercial presentations made by its employees at biotech conferences. Id. at 2. The Court found that an issue of fact existed as to whether presentations made by the defendant’s employees amounted to “offers for sale” and whether the defendant’s research, if infringing, constituted permissible experimental use. Id. at 4. Further, because the defendant’s accused technology “shares fundamental elements in common with” the other defendant’s accused product (which was undisputed during briefing), the Court found that joinder was appropriate. Id. Specifically, the Court credited the plaintiff’s undisputed assertion that the defendants’ technologies were similar in that both rely on “detecting labeled nucleotides as a polymerase, [using] four nucleotides with distinct fluorescent labels and optical detection zones limited to the immediate vicinity of the polymerase.” Id. Finally, the Court rejected the argument that severance was appropriate because the co-defendants were direct competitors, finding that the agreed upon protective order and prosecution bar were adequate safeguards of confidential information and, moreover, that inadvertant disclosure likely would not result in substantial harm given the defendant’s assertion that it did not plan to commercialize its technology. Id. at 5.

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On December 2, the Federal Circuit issued an order granting a writ of mandamus in a District of Delaware case, In re Link_A_Media Devices Corp., Misc. Doc. No. 990 (Fed. Cir. Dec. 2, 2011). Recently, however, the parties, who had settled the case prior to the Federal Circuit’s decision, moved to withdraw or dismiss the petition for mandamus and withdraw or vacate the court’s order granting the writ. The parties filed their settlement agreement with the District Court on December 2, but did not formally notify the Federal Circuit until December 5, when they filed the motion to withdraw. Although “Marvell states that it informed an unidentified individual in [the Federal Circuit’s] clerk office by telephone on December 1 about the settlement,” the court found that “it was counsel’s duty to formally inform this court in writing of the agreement.” In re Link_A_Media Devices Corp., Misc. Doc. No. 990 at 2 (Fed. Cir. Dec. 16, 2011). Therefore, the Federal Circuit found that “granting a motion to vacate our order is neither required nor a proper use of the judicial system.” Id. “Because the district court dismissed the complaint due to settlement, it need not transfer that dismissed complaint. However, consistent with our sister courts, we conclude that we should not vacate our order after the matter was decided.” Id. at 2-3.

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In November, Judge Robinson issued a claim construction order and summary judgment opinions in Apeldyn Corp. v. AU Optronics Corp., C.A. No. 08-568-SLR (D. Del. Nov. 15, 2011). Since then, Judge Robinson has considered motions for reargument from each side and this week issued an opinion and amended order in Apeldyn Corp. v. AU Optronics Corp., C.A. No. 08-568-SLR (D. Del. Dec. 19, 2011). Noting that the standard for obtaining relief on motions for reconsideration “is difficult to meet,” the court nevertheless granted one motion, denied another, and clarified its claim construction order.

Judge Robinson had previously granted summary judgment of noninfringement to CMO, and “[a]t the pretrial conference, Apeldyn argued that the court erred in granting summary judgment of noninfringement . . . [based on the fact that] ‘Apeldyn [did] not cite any evidence in opposition to CMO’s motion.’” Id. at 1. Judge Robison gave Apeldyn a chance to submit a “letter directing the court to any such evidence properly cited in its responsive brief.” Id. Apeldyn submitted citations to its expert’s report and other evidence that was either not in the record or was not adduced by Apeldyn. Apeldyn also submitted a motion for reargument. Although Judge Robinson noted that “CMO objects to Apeldyn’s expansion of the record,” she noted that “the court must ultimately address more of [the expert’s] report than that which was cited in Apeldyn’s opposition brief in order to fully articulate Apeldyn’s infringement position and, ultimately, the sufficiency of [the] noninfringement proffer.” Id. at 5. Having determined that she would look at the expert report, Judge Robison found the report “insufficient to pass muster.” Because the report did not “provide the limitation-by-limitation discussion of equivalence contemplated by the Federal Circuit, the court denie[d] Apeldyn’s motion and [did] not amend its grant of summary judgment of noninfringement with respect to CMO.” Id. at 9.

Judge Robinson had also previously denied AUO’s motions for summary judgment of noninfringement “because AUO did not support its noninfringement arguments with an expert’s opinion.” Id. Judge Robinson granted reargument, however, because there was “no dispute as to how the accused products operate.” Because Apeldyn’s expert’s “proffer with respect to AUO parallels that for CMO . . . the judgment must be amended to prevent manifest injustice to AUO by allowing Apeldyn to go forward to a jury trial on legally insufficient evidence.” Id. at 10. As with CMO, “[b]ecause [Apeldyn’s expert] did not provide particularized testimony describing his doctrine of equivalents theory on a limitation-by-limitation basis, and provided only conclusory opinions with respect to the function-way-result test, the court grants AUO’s motion for reargument and will enter judgment of noninfringement with respect to AUO.” Id. at 12.

Judge Robinson also clarified her claim construction order, stating that the “court’s understanding of the technology of the ‘382 patent, as articulated at the pretrial conference, may not have been most clearly conveyed in the claim construction order.” Id. at 3-4. She issued a separate amended memorandum order clarifying the construction of the terms at issue consistent with this understanding.

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In Eastman Chemical Co. v. Alphapet Inc., et al., C.A. No. 09-971-LPS-CJB, Judge Burke denied plaintiff’s motion to substitute two parties, but ruled that the two proposed parties be joined as plaintiffs in the action. Id. at 1. On the one hand, the original plaintiff argued that because it had sold “certain assets and technology” to the two parties it was seeking to be substituted for, including assigning the patents-in-suit to at least one of those parties, it should be dismissed from the lawsuit and that the two new parties should substituted in its place as the named plaintiffs. Id. at 2. On the other hand, in opposition to plaintiff’s motion for substitution, the defendants argued that the original plaintiff should not be dismissed because it “failed to provide sufficient evidence that all of the intellectual property, agreements, and other assets at issue had been transferred to the proposed new plaintiffs” and that, if anything, the appropriate course of action is to “join the two proposed plaintiffs rather than substitute them” for the plaintiff. Id. at 3. The Court agreed. The Court found that while the plaintiff had shown that “certain” of its relevant interests had been transferred to the proposed plaintiffs, the plaintiff had failed to offer sufficient evidence demonstrating that “all” of its interests relating to the litigation had been transferred. Id. at 7. The Court further found that, as a practical matter, joinder of the two new plaintiffs to the action (rather than substitution) would better facilitate the conduct of the litigation, and that the case is likely to proceed more efficiently if the original plaintiff remained a party. Id. at 10-11. The Court noted that while it did “not doubt that [the plaintiff] would fully comply with its discovery obligations under Rule 45 if [the proposed plaintiffs] were substituted for it in this action . . . such an outcome would likely add a significant layer of complication that would slow the progress of the case.” Id. at 11 (citation and internal quotations omitted). In addition, the Court noted that “Rule 25(c) does not explicitly provide for substitution or joinder on a claim-by-claim basis” and that the two proposed plaintiffs were being joined as parties to the entire action. Id. at 13.

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In Helicos Biosciences Corp. v. Pacific Biosciences of California, et al., Civ. No. 10-735-SLR (D. Del. Dec. 16, 2011), Judge Robinson denied a motion to stay litigation pending the outcome of inter partes reexamination proceedings. Id. at 5. Judge Robinson first explained that the status of the litigation was neutral to the Court’s decision—discovery was initiated in March 2011, and was slated to be completed, including expert discovery, by April 2012. Id. at 3. Next, Judge Robinson noted that the “simplification of litigation” factor weighed against granting a stay, because “there is not a complete overlap between those issues to be resolved upon reexamination . . . and the issues to be tried in the case . . .,” especially since the litigation included one patent that was not involved in the reexamination. Id. at 4. Finally, considering potential prejudice resulting from granting a stay, Judge Robinson found that both the timing of the motion to stay (filed approximately eight months after litigation began, three months after the requests for reexamination were filed, and between two weeks and one month after the requests for reexaminations were granted) and the status of the reexaminations (prosecutions of 3 of 4 patents had not yet closed) weighed against granting a stay. Id. at 4-5. Finally, Judge Robinson considered the relationship of the parties, and found that although the Court was not making definitive findings on the issue, the Court was satisfied at this juncture that “Helicos is a market participant . . . such that this factor generally disfavors a stay.” Id. at 6. Judge Robinson noted that the Court’s ruling likely would be different if the same facts were presented in the future: “The Leahy-Smith Act (H.R. 1249) . . . requires courts to automatically stay litigation filed after a petition for reexamination. H.R. 1249 is not yet controlling. While the reexamination was filed after the litigation in this case, the court would likely stay the case if it were subject to the new legislation.” Id. at 3 n.2.

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Judge Andrews recently issued a memorandum opinion in the case of WebXChange Inc. v. Dell Inc., et al., Civ. No. 08-132-RGA (D. Del. Dec. 15, 2011). WebXChange sued Dell and Federal Express for patent infringement, but has had a history of “irreconcilable-and total-breakdown[s] in the client-lawyer relationship.” Id. at 2-4. The defendants sought dismissal of the case, and on November 9, the court issued an order to show cause why the action should not be dismissed with prejudice. Id. at 4. When the plaintiff, without counsel, requested an extension of time to show cause, Judge Andrews noted that the plaintiff “has been in default of its obligations to prosecute the case since July 6, 2011.” Id. The plaintiff was “personally responsible for its lack of counsel . . . prejudice to the defendants arises from the delay . . . [and the] plaintiff’s conduct has been willful.” Id. at 6-7. Nevertheless, the court found that the plaintiff’s claim could be meritorious. Id. at 8. Therefore, although the facts “mostly suggest[ed] that dismissal [was] appropriate,” the court it instead took an “intermediate step . . . namely the imposition of a monetary sanction.” Id. at 8. Because “‘nothing has happened in the case’ since February 2011,” Judge Andrews concluded that it would “not make sense . . . that if new counsel do enter an appearance on January 17, 2012, the case should just go on as if the last six-to-eleven months had not happened.” Id. at 7. The plaintiff was therefore given until January 17, 2012 to both find new counsel and post $100,000 in escrow with the Clerk of the Court for defense costs.

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In Vehicle IP, LLC v. AT&T Mobility LLC, et al., Civ. No. 09-1007-LPS (D. Del. Dec. 12, 2011), Judge Stark construed three claims of a patent entitled “Method and Apparatus for Determining an Expected Time of Arrival” which the Court explained was “directed at improving vehicle navigation systems through more efficient distribution of navigation functions between a mobile unit located in the vehicle and a remote dispatch, yielding a more accurate determination of expected time of arrival.” Memo Op. at 1. Finding that the patent claims and specification used the term “expected time of arrival” consistently to mean a time of day, and not an interval of time, Judge Stark construed the term to mean “time of day at which the vehicle is expected to arrive somewhere (and not remaining travel time).” Id. at 6-7. Judge Stark construed the term “way point(s),” again focusing on the claims and specification (and rejecting both parties’ proffer of extrinsic evidence), to mean “intermediate point(s) on the way to the final destination (and not the final destination itself).” Id. at 9. Finding in the specification an additional function-based limitation, Judge Stark construed the term “dispatch” to mean “a computer-based communication and processing system remotely located from the vehicle that manages and monitors vehicles.” Id. at 11. Finally, the Court adopted the parties’ agreed-upon construction of the term “determine in response to the vehicle position” to mean “determine based on the vehicle position and update as the vehicle position changes position throughout the trip.” Id. at 6 n.2.

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Judge Kugler recently ruled on the plaintiff’s motion for a preliminary injunction in Sciele Pharma Inc. v. Lupin, C.A. No. 09-0037-RBK (D. Del. Dec. 6, 2011). Considering likelihood of success on the merits, Judge Kugler found that “since a generic drug’s label is found to control the analysis of potential infringement in a case like this one, and since Defendant’s label reflects a Tmax that falls within the range claimed in Plaintiff’s patent, Plaintiff has shown a likelihood [of infringement].” Id. at 11. Regarding irreparable harm, the court observed that the market for the branded drug was “in steady and irreversible decline, and has been for some time,” and found “that a loss of market position accompanied by market diminution presents an even stronger case for irreparability.” Id. at 18. The court then found irreparable harm based on “projected lost sales, price erosion, and lost market share, in concert with [a] claimed loss of goodwill.” Id.

While Judge Kugler found that a balancing of hardships generally favored the plaintiff and granted a preliminary injunction, he refused to order a recall of the generic product that had already been released. The court accepted the defendant’s argument on this point that a recall would be “onerous, complicated and expensive” and would result in “a loss of goodwill and harm to its reputation with distributors and retailers.” Id. at 19.

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Chief Judge Sleet recently issued a claim construction order in Extricom, Ltd. v. Meru Networks, Inc., C.A. No. 10-391-GMS (D. Del. Dec. 5, 2011). Of particular note, Judge Sleet construed the phrase “all the access points” to mean “a plurality of access points,” rejecting the argument that this construction would “inject confusion” into the meaning of the term. Id. at 1-2 n.2. The court found that “‘all access points’ refers for antecedence to ‘a plurality of access points,’ which appears in Claim 1 four lines above the instant term, and, as such, qualifies the term to define a plurality of access points rather than all access points on a network.” Id. The patent’s specification also supported this meaning, according to the court, because “the preferred embodiments describe the access points acting in groups that ‘are substantially independent’ and may be ‘regarded as separate systems,’ not a single unit.” Id.

Judge Sleet also construed the phrase “substantially in accordance with IEEE standard 802.11” as having its plain and ordinary meaning. Id. at 2. In doing so, the court rejected the defendant’s argument that the term is indefinite “because it does not . . . ‘particularly point[] out and distinctly claim[] the subject matter which the patentee regards as his invention.” Id. at 2 n.4. The court pointed to the Federal Circuit’s decision in Fujitsu Ltd. v. Netgear, Inc., 620 F.3d 1321 (Fed. Cir. 2010), which concluded that “where a patent incorporates a standard such as 802.11, which includes both mandatory and optional provisions, courts should compare the ‘claims . . . to the accused product to determine infringement.’” Id. The court also that the plaintiff’s “contention that one of ordinary skill in the art would understand the meaning of this term is likewise supported by the fact that over forty issued patents and pending patent applications use this or similar language in describing 802.11 Standard compliance.” Id.

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Yesterday, the District Court adopted new default standards, the Default Standard for Discovery, including Discovery of Electronically Stored Information (“ESI”), and the Default Standard for Access to Source code.

Default Standard for Discovery, Including Discovery of Electronically Stored Information

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Default Standard for Access to Source Code

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