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In Boston Scientific Corp. v. Cordis Corp., C.A. No. 10-315-SLR (D. Del. Apr. 13, 2011), a patent infringement case dealing with cardiovascular stents, Judge Robinson recently decided several motions and granted partial summary judgment sua sponte on the date of hypothetical negotiation. Judge Robinson denied the defendant’s motion to stay the trial on damages and willfulness pending reexamination, finding that all of the Dentsply factors weighed against staying the litigation: (1) discovery is complete and trial is imminent, (2) “[a] final determination by the PTO could take years,” (3) the request for reexamination was filed “several years after the end of the jury trial” establishing liability, (4) the motion to stay was not filed until almost a year after the request for reexamination, (5) the reexamination proceedings are still in their early stages, and (6) the parties involved are direct competitors. Id. at 7-10. The court then granted the plaintiffs’ motion for summary judgment of infringement, finding that the accused stent “has the same stent architecture as the [other] stents that were found to infringe” in an earlier trial. Id. at 10-12. Finally, before deciding two Daubert motions related to expert opinions on royalties, Judge Robinson granted summary judgment sua sponte on the date of hypothetical negotiation. Id. at 15, 18. The court found that although the defendant marketed infringing cardiovascular stents in 1999, the new “stent is distinct from the [architecturally equivalent] stents previously marketed by Cordis.” Id. at 12-14. Thus, the marketing of the new stent “constituted a separate act of infringement” and the date of hypothetical negotiation was September 2009, the date when the new stent was first sold in the United States. Id. at 14-15.

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In Xpoint Technologies, Inc. v. Toshiba Corp., et al., C.A. 09-628-SLR (D. Del. Apr. 8, 2011), Special Master Bechtle recently order plaintiff to supplement its infringement contentions, following the well-settled practice in this District that a plaintiff must specifically identify what products are accused in response to a properly served contention interrogatory. Plaintiff had previously refused to update its claim charts because it needed time to analyze recent discovery and confer with its experts. Id. at 3. Special Master Bechtle noted that “Toshiba is entitled to know what Toshiba products are contended by Xpoint to be infringement of Xpoint’s patents.” Id. If Xpoint has already specifically identified which Toshiba products are at issue in the litigation, “it should say so[, and if] it has not made those contentions yet, it should, and it should do so now.” Id. at 4. Special Master Bechtle also found that while plaintiff had an obligation to respond to Toshiba’s contention interrogatory with what products infringe and what claims and claim elements are infringed, plaintiff’s precise theory of infringement is “left to another day when the plaintiff includes in it’s expert reports and exert discovery the reasons, opinions and theories whey the identified productions and components of the defendant infringe on the patent or patents of the plaintiff.” Id. at 5.

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In Carl Zeiss Meditec, Inc. v. Xoft, Inc., C.A. No. 10-308-LPS-MPT (D. Del. Apr. 5, 2011), Judge Thynge recently granted the plaintiffs’ motion for leave to amend their complaint. After the defendant, Xoft, answered plaintiffs’ first amended complaint, Xoft was acquired by iCAD. Id. at 1-2. Xoft opposed the motion to amend, claiming (1) that it was an incorrectly filed Rule 15(d) motion to supplement and (2) that it failed to allege facts sufficient to add iCAD as a defendant. Id. at 6. Although Judge Thynge treated the motion to amend as a motion to supplement, she granted the motion, noting that the standard for a Rule 15(d) motion to supplement is essentially the same as a Rule 15(a) motion for leave to amend a complaint. Id. at 7. Judge Thynge further held that the facts alleged in the supplemental complaint in support of the plaintiffs’ inducement claim were sufficient to meet the pleading requirements of Iqbal and Twombly. Id. Allegations that the merger agreement between Xoft and iCAD permitted the sale of accused infringing products, that Xoft directly infringed the plaintiffs’ patents, and that iCAD had knowledge of these alleged facts, were sufficient “to apprise iCAD of the claims against it.” Id. at 8.

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In Ladatech, LLC v. Illumina, Inc., No. 09-627-SLR (D. Del. Mar. 29, 2011), Special Master David A. White required defendants Illumina, Inc. and Solexa, Inc. (collectively “Illumina”) to produce witnesses pursuant to Rule 30(b)(6) to testify on its behalf as to three topics set forth in LadaTech’s notice of deposition.

Illumina had objected to the topics on grounds of legal privilege and relevance (and, for one of those topics, vagueness and ambiguity).

The first topic concerned Illumina’s decision to purchase Solexa. The scope of this topic was limited by the Special Master to inquiries “reasonably calculated to lead to the discovery of admissible evidence.” Id. at 7.

The second topic concerned “(a) the date Illumina first became aware of the patent-in-suit; (b) any prior art searches related to the patent-in-suit; (c) any analysis of the validity or enforceability of the patent-in-suit; (d) any analysis of possible infringement of the patent-in-suit . . . ; and (e) any communications with customers related to the patent-in-suit or this litigation.” Id. at 8. The Special Master required Illumina to produce a witness for this topic despite Illumina’s contention of “burden and expense[.]” Id. at 9.

The third topic concerned reexamination of the patent-in-suit. Illumina argued that this topic concerned the issue of willfulness — an issue bifurcated from issues of infringement and invalidity by the Court’s Scheduling Order. While the Special Master agreed that the topic may concern willfulness, the topic’s “relevance to the initial phase of this litigation cannot be ignored.” Id. at 10.

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In an order dated April 8, 2011, after learning that the 30 month stay in the case was reaching its end, Judge Sue L. Robinson issued a sua sponte injunction of several generic defendants that prohibits the defendants from launching generic versions of the drug at issue until the court issues its opinion in the case. In Re Cyclobenzaprine Hydrochloride Extended Release Capsule Patent Litigation, C.A. No. 09-MD-2118-SLR, Order (D. Del. April 8, 2011).

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Sadly, we say goodbye to one of the Delaware IP Law Blog’s co-creators and authors, Andrew Lundgren, as he leaves YCST to start a new path in his legal career as in-house counsel. Andrew played a pivotal role in the creation and maintenance of the blog and has authored countless posts since the blog’s first day back in September 2006. I know I can speak for all of us when I say he will be sorely missed. We wish Andrew all the best in his new endeavor!

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A recent decision by District of Delaware Special Master David A. White offers a rare precedent for disputes concerning the sequence of discovery. In the underlying infringement litigation, eBay objected to XPRT’s 30(b)(6) notice on the ground that it prematurely sought a deposition before document discovery concluded. XPRT insisted that the deposition proceed, and appeared at the noticed time.

eBay did not appear, and XPRT followed with a motion to compel eBay to designate a witness. The Court agreed that, absent a request for judicial intervention, eBay should have produced its witness:

“While one party may prefer that discovery be taken in a specific manner, the Federal Rules provide otherwise, and the objecting party bears responsibility for seeking appropriate relief. . . . Similarly, where the parties disagree as to the orderly management of discovery and discussions have reached an impasse . . . , the objecting party must seek relief from the requested discovery. eBay took no affirmative action in this instance, thereby depriving the Court of the opportunity to determine whether such arguments warranted relief.”

In other words, the party objecting to the deposition notice must preserve that objection by doing more than simply boycotting the deposition.

XPRT Ventures LLC v. eBay Inc., C.A. No. 10-595-SLR (D. Del. Mar. 30, 2011) (White, S.M.) (Letter Op.).

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In Mylan Pharmaceuticals Inc. v. Galderma Laboratories, Inc., Civ. No. 10-892-LPS (D. Del. Mar. 24, 2011), Judge Stark construed two claim terms:

Term 1: “steady state blood levels of doxycycline of a minimum of 0.1 μg/ml and a maximum of 1.0 μg/ml”
Meaning: “steady state plasma concentrations of doxycycline of a minimum of 0.1 μg/ml and a maximum of 1.0 μg/ml”
Term 2: “steady state blood levels of doxycycline of between 0.3 μg/ml to 0.8 μg/ml”
Meaning: “steady state plasma concentrations of doxycycline of between 0.3 μg/ml to 0.8 μg/ml”

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In Mark IV Industries Corp. v. Transcore Holdings, Inc., et al., C.A. No. 09-418-GMS (D. Del. March 28, 2011), Judge Sleet recently construed the following terms relating to U.S. Patent Nos. 5,164,732; 5,196,846; 5,192,954; and 6,219,613:

The ‘732 Patent
“a [] triggering electromagnetic field”
“a [] transponder capture regiion limited to a first lane of the multi-lane roadway”
“second monitoring a frequency of a second return information signal during a second information interval, different from said first information”
“determining that said one lane travelled by said vehicle is said first lane, when said first monitoring step receives said first return signal during said first information interval”
The ‘846 Patent
“data signal processing means”
“means at said interrogator for periodically transmitting trigger pulses”
“trigger pulse[]”
“means, comprising storage means at said transponder, responsive to a first received one of said trigger pulses for transmitting a first data message derivevd from data contained by said storage means at the time that said first trigger pulse is received”
“means at said interrogator for receiving said first data message and
responsive to the receipt thereof for generating and transmitting a second data
message”
“means at said transponder for receiving said second data message and for
storing data derived from said second data message in said storage means”
“means at said interrogator for transmitting a second trigger pulse a
predetermined period of time after said first trigger pulse, the predetermined period of
time being of sufficient length to permit the storage in said storage means of data
derived from said second message”
“a predetermined period of time after said first trigger pulse”
“a predetermined period of time after the transmission of said
second data message”
“the predetermined period of time being of sufficient length to permit the
storage in said storage means of data derived from said second message”
“means at said transponder for transmitting a third data message responsive
to said trigger pulse”
“means for analyzing said third data message to determine the proper
operation by said transponder in response to the said second data message”
“determining proper operation”
“means for deriving said second data message from said first data message”
“means for deriving said second data message from said first data message
and data relating to roadway use tolls”
“storage means” is a means-plus-function term. The disclosed function is
“storing data”
“antenna means for transmitting and receiving signals conveyed by
electromagnetic radiation”
“means for receiving a first data message from said transponder and
responsive to the receipt thereof for generating and transmitting a second data
message via said antenna means”
“means for transmitting a second trigger pulse via said antenna means a
predetermined period of time after the transmission of said second data message”
“means for receiving a third data message via said antenna means and for
determining from the content of said third data message the proper operation by said
transponder in response to said second data message”
The ‘954 Patent
“transponder generated electromagnetic signals”
“a lane”
“an antenna array generally extending over said roadway”
“means electrically coupling said interrogator and array for transmitting
radio frequency signals therebetween”
“means mounting said radiating elements over and above said roadway”
“means configuring said elements, said configuration generating a radiation
field, said field defining a transponder capture zone over and above said roadway and extending across said roadway width”
“linear microstrip patch elements”
The ‘613 Patent
“second predetermined coverage zone that partially overlaps the first
coverage zone”
“processing means responsive to the antennas to count the number of
periodic data signals received by each of the antennas from the transponder during a
time period and determine based on the count a probable location of the vehicle”
“a time period”
“processing means is configured to commence the time period when at least
one of the antennas first receives a data signal from the transponder”

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In an interesting opinion regarding a motion to transfer, Judge Robinson grants the defendants’ motion to transfer the case to the Southern District of New York where plaintiff had filed a mirror image lawsuit on the same day as the Delaware suit. Medicis Pharmaceutical Corp. v. Nycomed U.S. Inc., C. A. No. 10-419-SLR, Memo. Order (D. Del. Mar. 31, 2011). The first-filed analysis was inconclusive because although the Delaware complaint had a time-stamp of 3:35 p.m., the New York complaint had only a hand-stamped date without any indication of time. Id. at 2-3. Plaintiff argued in its answering brief that the New York action was filed as a “protective measure” in case the defendants challenged personal jurisdiction in Delaware and because they did not raise that defense, the Delaware case should go forward. The Court finding “no compelling reason for the suit at bar to be the one to survive” stated that “the unusual circumstances of this case” favor transfer because the suits were filed simultaneously, the suit in New York is moving at a faster pace, and “New York is the center of the dispute between the parties.” Id. at 5.

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