In Apeldyn Corp. v. AU Optronics Corp., C.A. No. 08-568-SLR (D. Del. Oct. 27, 2011), Special Master Poppiti recently shifted all “of the Special Master’s compensation, costs and expenses” associated with certain discovery disputes to defendants AU Optronics Corp. (“AUO”) and Chi Mei Optoelectronics Corp. (“CMO”). Special Master Poppiti previously awarded Apeldyn its costs in connection with these disputes, and “Apeldyn requested that the Special Master ‘consider allocating costs for [his] services” in connection with [these disputes] ‘to reflect’ an ‘appropriate apportion[ment] to AUO and CMO[.]” Id. at 1-2. AUO and CMO did not respond to this request. Id. at 2. Special Master Poppiti then asked Apeldyn to submit a two-page letter explaining its position on “‘the way in which AUO and CMO wasted the Special Master’s time and resources[,]'” and he ordered AUO and CMO to submit letters in response. Id. Although Apeldyn submitted its letter, neither AUO nor CMO responded. Id. Thus, finding that “the Special Master would not have had to expend time and resources on these matters had AUO and CMO not engaged in . . . inappropriate discovery practices[,]” “and placing significant weight on the lack of opposition to Apeldyn’s request by either AUO or CMO,” Special Master Poppiti apportioned all “of the Special Master’s compensation, costs and expenses” associated with these discovery disputes to AUO and CMO. Id. at 3.
In a recent memorandum order, Judge Robinson ordered the exclusion of certain defense expert testimony in the upcoming, bifurcated damages portion of a patent infringement case. SRI Int’l Inc. v. Internet Security Sys., Inc., C.A. No. 04-1199-SLR (D. Del. October 31, 2011). Judge Robinson first concluded that proffered testimony regarding possible “design arounds” as alternatives to the patented technology was entirely speculative. An expert, she said, “may offer an opinion incorporating proffered facts, [but may not] reiterate the lay testimony and provide a conclusory opinion based on the lay testimony.” Id. at 5. The excluded testimony included:
(1) A speculative opinion on Georgia Pacific factor 13 that was not based on an analysis of the portion of the realizable profit that should be credited to the invention as distinguished from non-patented elements, the manufacturing process, business risks, or significant features or improvements added by the infringer, id.;
(2) A damages opinion that relied on a third party patent without making a substantive comparison of that patent with the patents-in-suit, id. at 5-6;
(3) Conclusory opinions regarding which features of the infringing product are and are not covered by the patents-in-suit that contradicted evidence presented at the liability trial, id. at 6-7; and
(4) An opinion that the inventions in question had little value as they offered only minor, incremental improvements over prior art, id. at 7-8.
With regard to the last of these opinions, Judge Robinson noted in a footnote that the expert report “reads dangerously close to an obviousness opinion.” Id. n.8. As the defendants had already failed on obviousness arguments, Judge Robinson ordered damages witnesses not to “opine that a system/method having all of the patented features was concurrently in use in the prior art.” Id.
In a recent ANDA case Judge Sleet granted defendant Anchen’s motion for judgment on the pleadings of Count V of its counterclaims seeking a declaratory judgment that Plaintiffs’ 083 patent was unenforceable. Bone Care International LLC v. Anchen Pharmaceuticals, Inc., C.A. No. 09-285-GMS (consolidated) (D. Del. Oct. 31, 2011). In support of its motion Anchen argued that “Bone Care’s action of disclaiming and requesting the delisting of the ‘083 Patent from the Orange Book renders this patent unenforceable as a matter of law, as such action statutorily disclaims all patent claims.” Id. at 1. Plaintiffs responded that the court lacked subject matter jurisdiction to decide Anchen’s declaratory judgment counterclaims because Bone Care statutorily disclaimed the patent and because Genzyme covented not to sue Anchen for infringement of the patent. Id. at 2. Judge Sleet determined that under Rule 54(b) judgment on the pleadings was appropriate because Plaintiff’s statutorily disclaimed the patent and provided no defense to this statutory disclaimer, because “Count V is a cognizable/individual counterclaim for discrete relief as to the ‘083 patent”, and because “there is nothing indicating that granting Anchen’s motion will result in a waste of judicial resources or impede judicial efficiency.” Id. at 3.
The jury trial in Asahi Glass Co. Ltd. v. Guardian Indus. Corp. case (09-515-SLR) started on October 17, 2011, and Judge Robinson issued several orders in the leadup to trial:
- Sept. 26: The Court excluded the defendant’s experts’ written description/enablement testimony, after criticizing the expert’s report for failing to construe the claims at issue, for failing to apply the required analyses, and for failing to provide “a limitation-by-limitation comparison of each asserted claim to each prior art reference.” The Court asked the defendant to submit a color-coded version of the expert’s report that matches the claim elements with the prior art descriptions.
- Oct. 3: The Court excluded the expert’s anticipation analysis after reviewing the color-coded report, although the Court allowed obviousness testimony based on a supplemental expert report that did not have the same objections
- Oct. 11: The Court granted a motion to reconsider the Sept. 26 order, and clarified that the defendants were barred from presenting any anticipation claims at all, because they would necessarily lack expert testimony.
- Oct. 13: The Court barred the plaintiff’s expert from testifying as a fact witness regarding secondary considerations of non-obviousness, because the expert’s knowledge was based on the research of others rather than on his own observations.
Judge Robinson was recently faced with an issue of first impression implicated by her practice of bifurcating damages and liability in her patent infringement cases. SRI International Inc. v. Internet Security Systems Inc., C.A. No. 04-1199-SLR (D. Del. Oct. 4, 2011). After the liability phase of the case concluded, a damages trial was scheduled to commence later this year. Id. at 2. Defendant Symantec subsequently filed a motion to amend its answer to assert inequitable conduct. Judge Robinson noted that Symantec’s motion presented the question of “whether leave to amend between the liability and damages phases of a bifurcated patent trial is subject to the liberal standard set forth in Federal Rule of Civil Procedure 15(a) or . . . the more conservative standard set forth in Federal Rule of Civil Procedure 15(b).” Id. at 5 n.5. The answer to that question, however, is left for another day because the court determined that under either standard, Symantec’s motion would be denied. Id. at 5.
Plaintiff, Softview, sought to add claims against additional defendants concerning the same patents-in-suit within the time set forth in the case scheduling order. For this reason, and because the request satisfied the test for permissive joinder and will “promote judicial economy,” the Court granted Softview’s motion to amend. Softview LLC v. Apple Inc., et al., C.A. No. 10-389-LPS, Memo. Order (D. Del. Sept. 30, 2011). Any concerns about jury confusion, the Court noted, could be addressed by a request for a separate trial later in the case. Id. at 1-2.
In addition, Softview moved to dismiss and strike defendants’ inequitable conduct defenses. The Court granted the motion finding that the defendants’ original and proposed amended pleadings “fail to adequately allege scienter.” Id. at 2. A theory based on a “mere disagreement with Softview’s prosecution counsel as to whether certain amendments impermissibly added ‘new matter'” along with other related concerns does not “give rise to a reasonable inference that prosecution counsel knew he was amending to add new matter and intended to deceive the PTO of this fact” Id. (emphasis in original).
On September 28, 2011, a jury returned a verdict in the Solvay, S.A. v. Honeywell Specialty Materials LLC matter, in favor of the defendants, finding the patent-in-suit invalid. C.A. No. 06-557-SLR, Jury Verdict Form (D. Del. Sept. 28, 2011).
In St. Clair Intellectual Property Consultants, Inc. v. Apple Inc., C.A. No. 10-00982-LPS (D. Del. Sept. 30, 2011), Judge Stark denied “Defendant Research in Motion Ltd. and Research in Motion Corporation’s Motion to Dismiss or, in the alternative, Motion for a More Definite Statement.” Id. at 1. In its motion to dismiss, Research in Motion (“RIM”) argued that the plaintiff’s complaint “fails to satisfy the third required element of Form 18 because it fails to identify the specific RIM products (or class of products) that allegedly infringe any of the patents-in-suit.” Id. at 4-5. Although the complaint “identifies the category of infringing products as ‘smartphones and tablets’ and elaborates by identifying specific models of RIM’s smartphones and tablets that are allegedly infringing[,]” RIM claimed that the complaint was deficient because it “identifies ‘nearly every product sold by RIM’ and, thus, provides insufficient notice[.]” Id. at 5. Judge Stark rejected this argument, noting that the complaint “makes numerous references to the allegedly infringing product models and explicitly ties the RIM products to each recitation of infringement[.]” Id. at 6. In denying RIM’s motion to dismiss, the court also rejected RIM’s argument that the complaint “fails to allege that RIM makes, uses, or sells a device ’embodying the patent[,]'” stating that “the Complaint is not required to address how the infringing products use the patented technology.” Id. at 6-7. Finally, the court “determined that St. Clair’s Complaint provides sufficient notice of the infringement allegations[,]” and therefore the court denied RIM’s motion in the alternative for a more definite statement. Id. at 7-8.
In LG Electronics U.S.A., Inc. v. Whirlpool Corporation, C.A. No. 10-311-GMS (D. Del. Sept. 29, 2011), LG filed a motion to dismiss Whirpool’s counterclaim of infringement of Whirlpool’s ‘130 patent by LG’s French door refrigerators. Id. at 2. A jury had previsouly found that LG’s French door refrigerators did not literally infringe Whirpool’s patent. LG argued that because its redesigned refrigerators share the same configuration as the refrigerator at issue in the previous action in all material aspects, Whirpool’s counterclaim was barred by res judicata. Id. at 6. Whirlpool argued that LG’s motion should be treated as a motion for summary judgment because it required “consideration of matters outside the pleadings[;]” and that LG did not “meet its burden of showing that the French door refrigerators subject to Whirlpool’s counterclaim [were] essentially the same as those addressed in the [previous] action.” Id. at 7. While granting LG’s motion to dismiss, Judge Sleet rejected Whirlpool’s argument that LG’s motion must be treated as a motion for summary judgment. “Although the court may not generally consider evidence beyond the complaint in deciding a Rule 12(b)(6) motion, when a motion to dismiss is based upon the defense of claim preclusion, the court may take judicial notice of the record in the [previous] action in reaching its determination on LG’s motions to dismiss.” Id.