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Judge Robinson recently issued an opinion following a bench trial in Medtronic v. Boston Scientific Corp., C.A. No. 07-823-SLR (Mar. 30, 2011). This was a declaratory judgment action by plaintiff Medtronic, Inc.

One interesting aspect of the case was the way that the parties treated the burden of proof regarding infringement. The parties each argued that the other side bore the burden due to the procedural nature of the case (a declaratory judgment action). The patentee (defendant) argued that the alleged infringer (plaintiff) had the burden of proof on non-infringement because “the plaintiff usually has the burden of proof,” and because prior agreements between the parties overrode caselaw that says that the patentee always bears the burden of proof. Id. at 16-17. Judge Robinson, however, held that “‘[t]he burden is always on the patentee to show infringement,'” and the burden never shifts to the other party. Id. at 17. Thus, the patentee defendants bore the burden of proving non-infringement.

The patentee’s expert, however, had focused only on rebutting the plaintiff’s expert’s allegations of non-infringement, rather than setting forth his own allegations of infringement. Judge Robinson held that the plaintiff had therefore failed to offer affirmative evidence that all limitations of the patents at issue were met by the accused products, either literally or through the doctrine of equivalents, and found that the defendant had failed to show infringement.

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In BigBand Networks, Inc. v. Imagine Communications, Inc., C.A. No. 07-351-LPS (D. Del. Mar. 24, 2011), Judge Stark recently issued a claim construction opinion for the four patents at issue relating to video technology. Judge Stark construed the following terms:

“selecting basic media data units to be modified, in response to the modification priority of each basic media unit”
“selecting basic media data units to be modified, in response to the modification priority”
“end-user/end-users”
“router”
“multiplexing”
“basic media data blocks”

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Judge Stark recently construed the following terms in the Wyeth, LLC v. Intervet, Inc., et al. matter:

-“Porcine circovirus type B,” “PCVB,” “type B porcine circovirus,” “porcine circovirus-B,” and “PCV-B”
-“amplifying said nucleic acid”
Wyeth, LLC v. Intervet, Inc., et al., C.A. No. 09-161-LPS, Opinion (D. Del. Mar. 22, 2011).

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In Automated Transactions LLC v. 7-Eleven, Inc. et al., C.A. No. 06-043-SLR (D. Del. March 9, 2011), Judge Robinson recently decided defendants and plaintiff’s cross motions for summary judgment. Judge Robinson granted defendants’ summary judgment motion because she construed the terms “internet” and “an internet interface” to require connection to a public network. Id. at 9-15. Because the accused products utilized a private network and did not connect to the internet, defendants did not infringe the patents in suit. Id. Judge Robinson found that defendants could not infringe literally or under the doctrine of equivalents because “construing ‘Internet’ to mean any network [public or private] would read the limitation out of the patent.” Id. at 12 (emphasis in original). Moreover, a finding that the private network was the equivalent of the Internet would read on prior art thereby violating the ensnarement doctrine. Id. at 13. Judge Robinson also granted-in-part defendants’ summary judgment motion on invalidity because the term “an Internet interface” in the mean’s plus function claims “d[id] not provide sufficient structure for performing the function of providing the customer with access to the Internet in order to complete the retail transaction.” Id. at 20.

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Two days ago, in Minkus Electronic Display Systems Inc. v. Adaptive Micro Systems LLC, Civ. No. 10-666-SLR (D. Del. Mar. 16, 2011), Judge Robinson granted Defendants’ motions to dismiss for failure to state a claim, limiting Plaintiff’s damages as to each Defendant unless Plaintiff amends its complaint to allege facts lacking in its original complaint. Id. at 7.

Plaintiff alleged that Defendants had directly infringed, contributorily infringed, and actively induced infringement of its patent disclosing a remotely-controlled electronic display system. Id. at 2-3. Defendants argued that Plaintiff had failed to satisfy the pleading requirements for indirect infringement because, inter alia, Plaintiff failed to allege facts sufficient to establish Defendants’ knowledge and intent to indirectly infringe. Id. at 4. The court agreed, finding that Plantiff’s pleading “resorts to a mere recitation of the elements for indirect infringement, which is insufficient.” Id. at 7 (quoting Xpoint Techs. v. Microsoft Corp., 730 F. Supp. 2d 349, 357 (D. Del. 2010)).

Judge Robinson noted that, because Defendants “will be deemed to have knowledge of [Plaintiff’s] patent as of the date the complaint was filed,” and because “the only consequence (I believe) of this decision is limiting plaintiff’s damages to the period dating from a defendant’s first knowledge of [Plaintiff’s] patent, the court will so limit plaintiff’s damages as to each defendant unless plaintiff chooses to amend its complaint to allege sufficient facts as to an individual defendant’s knowledge.” Id. at 7.

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In a recent decision, District Judge Sue L. Robinson explained her practice on adjudicating post-trial equitable claims. The Court noted that it “does not entertain motions for summary judgment on equitable issues, instead holding bench trials on such issues.” In the underlying action, Defendant Pylon had filed its summary judgment motion on inequitable conduct following a jury trial on infringement and invalidity. According to the Court, “although Pylon styles its post-trial paper as a ‘motion,’ in reality Pylon has simply filed its post-trial brief in support of its claim of unenforceability.” D. Del. practitioners take note.

Robert Bosch LLC v. Pylon Manufacturing Corp., C.A. No. 08-542-SLR (D. Del. Mar. 9, 2011) (Robinson, J.).

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On March 10, 2011, in Keurig Inc. v. Sturm Foods, Inc., Civ. No. 10-841-SLR (D. Del. Mar. 10, 2011), Judge Robinson issued a memorandum opinion denying Keurig’s motion for a preliminary injunction and Sturm Foods’s partial motion to dismiss.

Keurig had moved for a preliminary injunction based on its trademark infringement claims, trade dress infringement claims, and false advertising and unfair competition claims. Id. at 7.

Regarding the trademark infringement claims, Judge Robinson determined, based on the current record, the likelihood of confusion in the market by applying a multi-factor test previously adopted by the United States Court of Appeals for the Third Circuit (modified for cases involving a nominative fair use defense), finding that the balance of factors favored Sturm Foods. Id. at 14.

Regarding the trade dress infringement claims, Judge Robinson found, based on the current record, that Keurig did not show that the overall look of its products was consistent, which is required for a finding of trade dress infringement. Id. at 17.

Regarding the false advertising and unfair competition claims, Judge Robinson found, based on the current record, that Sturm Foods’s statements did not necessarily imply that Sturm Foods’s products were of equal quality to Keurig’s products, especially given the lower price of Sturm Foods’s products. Id. at 19-20. For this and other reasons, Keurig was unable to show a likelihood of success on the merits proving the literal falsity of Sturm Foods’s statements. Id. at 20.

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Earlier this month, in Spansion, LLC v. Samsung Electronics Co., Ltd., C.A. No. 1:08-CV-00855-SLR (D. Del. Mar. 2, 2011), Special Master Redfearn denied Spansion’s application for an amendment to a Stipulated Protective Order withholding confidential business information from both parties’ in-house counsel.

Spansion argued that its in-house counsel needed access to confidential business information so that its in-house counsel could provide informed direction to trial counsel. Id. at 3. Applying a balancing test set forth by the United States Court of Appeals for the Ninth Circuit, Special Master Redfearn balanced the risk of injury to Samsung due to inadvertent disclosure of confidential business information against the risk that withholding information would impede Spansion’s prosecution of Samsung’s claims. Id. at 4-5. Because the risk of injury to Samsung outweighed Spansion’s need for in-house legal advice, Special Master Redfearn denied Spansion’s application to amend the Stipulated Protective Order. Id. at 5.

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Three attorneys at Young Conaway have been selected to participate in the District of Delaware’s second annual Federal Trial Practice Seminar. Michele Sherretta Budicak and Jeffrey T. Castellano, of the firm’s Intellectual Property Litigation Section, and Erika R. Caesar, of the Commercial Litigation Section, will take part in instructional sessions designed to hone D. Del. practitioners’ courtroom skills. Topics include opening and closing statements, witness examination, courtroom presentation, and much more. More information about the program can be found in our January post announcing the Seminar.

Congratulations Michele, Jeff, and Erika!

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Visiting judge Berle M. Schiller recently issued a venue decision notable for its analysis of the concept of “home turf.” Defendant CardioMEMS, a Delaware entity, had no offices, employees, or records in the state. Plaintiff LUMC, a non-U.S. entity, had even less of a connection. Nonetheless, LUMC brought its infringement action in Delaware. CardioMEMS cried foul, and sought to move the litigation to its principal place of business.

The Court declined to transfer the action. Specifically, the Court was not persuaded by CardioMEMS’s argument that LUMC had no legitimate reason to file in Delaware:

“CardioMEMS has overstated its case . . . . LUMC is a Dutch company and has no ‘home turf’ in this country. Defendant’s argument, taken to its logical conclusion, would never afford deference to the choice of venue of a foreign plaintiff and leave the choice of venue largely in the control of the defendant. Additionally, it is not correct that LUMC has no reason to litigate this action here. [Among other reasons,] CardioMEMS is incorporated in Delaware.”

In a field frequently litigated, this decision provides context to what it means, at least for foreign entities, to litigate on “home turf” for purposes of assessing a transfer motion.

Academisch Ziekenhuis Leiden v. CardioMEMS, Inc., C.A. No. 10-1127-BMS (D. Del. Mar. 9, 2011) (Schiller, J.).

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