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In Apeldyn Corp. v. AU Optronics Corp., C.A. No. 08-568-SLR (D. Del. Aug. 29, 2011), Special Master Poppiti recently recommended that plaintiff’s requested sanctions award be reduced from $89,747.54 to $47,241.54. Id. at 1. In determining the adequacy of documentation of Apeldyn’s fees associated with responding to an untimely expert report, the Special Master first noted that although “the descriptor ‘worked on’ [in attorney timekeeping records] is vague in and of itself, as it fails to convey to the reader the precise task being performed by the timekeeper[,]” the declarations at issue included “[a]mple description of specific tasks[.]” Id. at 14. The Special Master did, however, exclude from the lodestar calculation as inadequately documented all of the hours that “group[ed] together duplicative and non-duplicative tasks[.]” Id. at 16. The Special Master further excluded from the lodestar calculation (1) excessive hours in connection with responding to the untimely expert report in light of the fact “that approximately 70% of the [responsive report] is duplicative–in most instances word-for-word–of [the expert’s] earlier reports[,]” and (2) the hours of an attorney whose “role, it seem[ed], was to provide backup support” because the tasks he performed were “entirely duplicative of work already done by [other attorneys].” Id. at 17-19.

Next, addressing Apeldyn’s fees in connection with bringing the sanctions motion, Special Master Poppiti stated that the motion “did not involve complex issues of law, and Apeldyn did not cite any case law in its letter briefs, indicating that intensive legal research was not done.” Id. at 21. Thus, “[g]iven the straightforward issues involved, the brevity of the letter briefs, and the absence of case law in the briefs,” the Special Master excluded all excessive hours from the lodestar calculation. Id. at 21-22.

Finally, Special Master Poppiti stated that “Apeldyn is not entitled to receive reimbursement for fees or costs incurred in connection with preparing the June 27 Bill of Costs” because “Apeldyn did not request such fees in its first submittal on June 27, 2011″ and therefore “Apeldyn . . . waived any opportunity it once might have had to seek reimbursement for such fees.” Id. at 24. Further, Apeldyn’s “June 27 Bill of Costs lacked sufficient documentation[,]” and thus “it would be unfair to reward Apeldyn for preparing what the Special Master concluded to be a deficient submittal.” Id. at 24-25.

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In Ricoh Co. v. Oki Data Corp., C.A. No. 09-694-SLR (D. Del. Aug. 15, 2011), Judge Thynge interpreted Delaware’s long arm statute, which states that “‘any nonresident’ that ‘performs any character of work or service in the state’ is subject to personal jurisdiction[,]” to include counsel’s legal representation in this case — “[e]ven if the contact is as minimal as pro hac vice admission[.]” Id.at 8. Judge Thynge nonetheless held that Ricoh’s attempted subpoena of Oki Data’s pro hac vice counsel, a resident of Japan, was unenforceable due to improper service of process.

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In Alza Corporation v. Kremers Urban LLC, the Court construed the term “administering” as it appears in the patent-in-suit to mean “administering once daily.” C.A. No. 10-23-LPS, Memo. Op. (Aug. 29, 2011). Defendants argued that the claim language supported a construction of multiple dose administration. Id. at 4. The Court found that although the claim language favored a construction of multiple doses, “the remainder of the specification favors Plaintiffs’ position. . . .” Id. at 16. Specifically, the patent teaches away from a multiple dose administration by stressing the fact that the once a day treatement solved a problem in the prior art. Id. at 12-13.

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In Arcelormittal France v. AK Steel Corp., C.A. No. 10-050-SLR (D. Del. Aug. 25, 2011), plaintiffs unsuccessfully moved for JMOL on invalidity and for a new trial. Id. at 18. Plaintiffs’ motion for JMOL focused on (1) whether a particular prior art reference qualified as a printed publication, (2) whether that reference disclosed all limitations of the asserted patent, and (3) whether there was a motivation to combine that reference with other asserted prior art references. Id. at 5. After finding that the jury’s verdict of anticipation and obviousness was supported by substantial evidence, Judge Robinson rejected plaintiffs’ multiple arguments in support of their motion for a new trial. Id. at 11. For example, although “[p]laintiffs argue[d] that defendants’ experts improperly testified about two . . . prior art references,” the court found that (1) “plaintiffs never objected to this testimony at trial and, therefore, arguments pertaining to said testimony are waived” and (2) “even if objections to said testimony had been preserved, the testimony was merely explanatory in nature, and gave context for defendants’ experts’ understanding of the level of skill in the art.” Id. at 12-13. Thus, “even if the experts’ testimony was beyond the scope of the expert report, the error was harmless.” Id. at 14. Because the court denied both of plaintiffs’ motions, Judge Robinson denied defendants’ JMOL of noninfringement as moot. Id. at 18.

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Judge Robinson recently decided Honeywell’s renewed summary judgment motion on invalidity of the patent-in-suit and Honeywell’s summary judgment motion of no willful infringement after the Federal Circuit reversed in part the court’s opinion on invalidity under §102(g). Solvay, S.A. v. Honeywell Specialty Materials LLC, C.A. No. 06-557-SLR (D. Del. Aug. 26, 2011). Judge Robinson denied Honeywell’s motion for summary judgment of invalidity under 102(g). The court found that a Russian group, RSCAC, under research contract with Honeywell, qualified as “another inventor” who conceived the invention and reduced it to practice in this country. Id. at 6. The invention was conceived and reduced to practice in Russia and then RSCAC sent instructions to Honeywell who used the instructions to reduce the invention to practice in the United States. Id. However, Solvay raised a genuine issue of material fact as to whether RSCAC suppressed or concealed the invention because a confidentiality agreement between RSCAC and Honeywell precluded RSCAC from disclosing the invention. Id. at 9.

Judge Robinson granted Honeywell’s motion for summary judgment of no willful infringement, finding that Honeywell presented a credible invalidity defense. Id. at 13. It was irrelevant that the Federal Circuit ultimately rejected Honeywell’s 102(g) defense. Id. Judge Robinson also noted that “Solvay discredited its own contentions regarding the baselessness of Honeywell’s invalidity defenses by failing to move for summary judgment of validity or willfulness[.]” Id. at 13-14.

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Earlier this month, the ABA Journal began accepting nominations for its annual list of the 100 best legal blogs (“blawg”). They are accepting “Amici Forms” where you can nominate a blog that you read regularly and you think others should know about. The form is extremely simple and aside from some information about the person making the nomination, asks only “Why are you a fan of this Blawg?” Nominations must be submitted by Friday, September 9.

The Delaware IP Law Blog was the first IP Blog in Delaware and we work to keep you up to date with the latest decisions and news from the district court in an unbiased, yet informative way. Although our blog covers only a specific region, our readers span the globe and share one thing – an interest in some of the most interesting and important decisions in intellectual property.

A link to the amici form is provided below.

http://www.abajournal.com/blawgs/blawg100_submit/

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In a recent ANDA case involving valganciclovir hydrochloride 450 mg tablets, Judge Sleet construed the term “compound 2-(2-amino-l ,6-dihydro-6-oxo-purin-9-yl)methoxy-3-hydroxy-lpropanyl-L-valinate hydrochloride in crystalline form” to mean “valganciclovir hydrochloride in a physical form having molecules arranged in a regularly repeating three dimensional pattern.”

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On August 11, Chief Judge Sleet denied several post-trial motions in CNH America LLC v. Kinze Manufacturing, Inc., C.A. No. 08-945-GMS (D. Del. Aug. 11, 2011). A jury found in February that all of the claims of the two patents asserted by CNH were invalid as anticipated, and all but two of them were also invalid as obvious.

Patent-holder and plaintiff CNH brought a motion for JMOL or a new trial on invalidity. CNH presented a number of arguments – here are a few of the more interesting ones:

  • CNH argued that it was entitled to a new trial because defendant Kinze presented a previously-undisclosed video at trial. The Court found that this was merely a new copy of a previously-disclosed video, this time with better production values. Id. at 8-9.
  • CNH argued against anticipation and obviousness on various bases; the Court denied all of these, and characterized many of them as attempts by CNH to present late claim construction arguments. Id. at 11-16.
  • CNH argued that the jury must have erred in determining that certain claims were anticipated but not obvious. The Court rejected these arguments based on a statement by the Federal Circuit that a determination of non-obviousness does not necessarily foreclose anticipation. The Court also noted that Third Circuit precedent actually controls this issue, and does not support CNH’s position. Id. at 16-19.

Defendant Kinze also presented two motions:

  • Kinze moved for JMOL of obviousness as to the two claims that were anticipated but not obvious. The Court refused to rule on the substance of this issue, on the grounds that it would not affect the scope of the judgment (the Court did state, however, that the motions could be renewed if the case were reversed or vacated on appeal). Id. at 20-21
  • Kinze moved for attorney’s fees; the Court denied the motion, because there was nothing exceptional about this case. Id. at 21.
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On August 3, in Velcera, Inc. v. Merial Ltd., C.A. No. 11-134 (GMS) (D. Del. Aug. 3, 2011), Chief Judge Sleet dismissed one of three declaratory patent claims and its associated counterclaims based on a lack of subject matter jurisdiction. The plaintiff, Velcera, is subject to a contempt judgment and an injunction in a related action on the same patent in the U.S. District Court for the Middle District of Georgia. That judgment covered all of Velcera’s products, so, according to the Court, there was no “actual controversy between the parties. Any dispute regarding the Georgia court’s order is properly raised before that court of on appeal to the Federal Circuit.” Id. at n.4. Velcera’s other two declaratory claims were not addressed by the Georgia court, so they were unaffected by the ruling.

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In Belden Technologies Inc. v. Superior Essex Communications LP, C.A. No. 08-63-SLR (D. Del. Aug. 12, 2011), a patent infringement case involving high performance data cables, Judge Robinson recently issued a memorandum opinion deciding several post-trial motions, including plaintiffs’ and defendants’ motions for JMOL and plaintiffs’ motion for a permanent injunction. Id. at 1. Although Judge Robinson upheld most of the jury’s verdict as supported by substantial evidence and thus denied most of the plaintiffs’ and defendants’ requested relief, each motion for JMOL was granted-in-part. Id. at 40.

First, the court found that “defendants presented an obviousness defense at trial based on the knowledge of one of skill in the art, which evidence was not vetted during discovery and to which plaintiffs objected.” Id. at 13. In doing so, “defendants violated the cardinal rule of this court’s trial practice, that is, evidence not vetted during discovery cannot be used at trial.” Id. Thus, Judge Robinson held that “the court will retry the invalidity of [this claim], at defendants’ expense and precluding their use of the knowledge of one of ordinary skill in the art to support their invalidity defense. Id. at 14.

Second, the court found that one of the asserted claims was rendered obvious as a matter of law by the combination of two prior art patents, stating that the secondary considerations of non-obviousness proffered by the plaintiffs were insufficient to preclude the court’s obviousness finding. Id. at 28. The court noted that “plaintiffs cite no testimony as to whether $3 million, a small fraction of the $140 million in sales of cables with separators, is significant to constitute a ‘commercial success’ in the patent validity context.” Id. Further, “plaintiffs failed to show a nexus between the commercial success and [the asserted claim]”; “[g]iven plaintiffs’ admitted status as a ‘market leader’ for high speed communication cables . . . , sales are easily attributed to their leadership position and successful marketing campaigns.” Id.

Finally, the court denied plaintiffs’ motion for a permanent injunction, finding that “plaintiffs have failed to demonstrate irreparable injury, as well as the inadequacy of money damages[,]” and “any hardship to plaintiffs would be outweighed by that to defendants.” Id. at 39-40.

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