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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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Last week, District Judge Leonard P. Stark rejected an attempt to dismiss a trademark-fraud defense on particularity grounds. In the underlying action, Pennsylvania Engineering & Manufacturing (PEM) leveled a trademark-infringement claim against Southco. Southco counterclaimed, asserting that PEM defrauded the PTO while attempting to register the mark. PEM responded by arguing that the PTO could not have relied on PEM’s allegedly fraudulent statements. Why? Because the PTO ultimately rejected PEM’s application.

The Court disagreed with PEM. It noted that, while the Examiner rejected the registration, she left open the possibility that additional evidence could change the outcome:

“In the Court’s view, these statements [by the Examiner rejecting the registration] do not show, as PEM contends, that the Examiner did not rely on the alleged misrepresentations identified by Southco. Rather, the Examiner merely expressed the view that the assertions in the application and affidavit were insufficient standing alone to establish acquired distinctiveness . . . . That the examiner sought additional evidence on the issue of distinctiveness does not, in the Court’s view, establish that she did not rely on the initial evidence submitted.”

With the reliance objection resolved, the Court concluded that Southco pleaded its counterclaim with sufficient particularity. By doing so, the Court also established that, at least under these circumstances, reliance in the trademark arena is not outcome determinative.

Postscript: For those of you wondering how the infringement claim made its way into the litigation, the PTO eventually registered the mark after receiving additional evidence.

Southco, Inc. v. Penn Eng’g & Mfg. Corp., C.A. No. 10-03-LPS (D. Del. March 7, 2011) (Stark, J.).

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In Walker Digital, LLC v. Multi-State Lottery Association, C.A. No. 10-1113-PD (D. Del. Mar. 3, 2011), Judge Diamond denied defendant’s motion to transfer to the Southern District of Iowa where defendant is principally located. This patent infringement case involves defendant’s alleged use of plaintiff’s patented multiplier method in multi-state lottery games. Id. at 1. Judge Diamond went through each of the Jumara factors. Judge Diamond disagreed with defendant’s argument that plaintiff’s choice of forum deserved little deference because “plaintiff’s choice of forum is a paramount consideration[.]” Id. at 3 (internal citations omitted). Judge Diamond also found that the alleged infringing conduct occurred in every state participating in the lotteries at issue, including Delaware. Id. Judge Diamond also found that the convenience of the parties factor was neutral, but the convenience of witnesses weighed against transfer because plaintiff’s non-party witnesses reside or work in Connecticut or New York. Id. at 4-5. Finally Judge Diamond found that public interest did not favor transfer because time to trial in both jurisdictions was the same in both districts and Delaware has more experience adjudicating patent cases. Id. at 5.

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On February 25th, 2011, in OSI Pharmaceuticals, Inc. v. Teva Pharmaceuticals USA, Inc., Civ. No. 09-185-SLR (Consol.) (D. Del. Feb. 25, 2011), Judge Robinson issued a memorandum order denying Defendants’ motion for leave to amend their pleadings. While the court’s scheduling order set January 29, 2010 as the deadline to amend pleadings, id. at 1, Defendants filed their motion to amend on October 25, 2010 — almost nine months after the deadline, id. at 2. Defendants argued that “good cause” existed for their late motion, citing the volume of documents produced by Plaintiffs, the specificity required by Federal Rule of Civil Procedure 9(b), and the “protracted discovery proceedings.” Id. Judge Robinson disagreed, noting that (1) the documents at issue had been available “well before October 2010[,]” (2) there were no citations to the depositions held in August 2010 in Defendants’ opening brief, and (3) Defendants had changed their legal argument in their letter submission. Id. at 2-3. While noting Rule 15(a)(2)’s provision that courts should “freely give leave [to amend pleadings] when justice so requires[,]” id. at 1, Judge Robinson concluded that “justice [did] not require leave to amend in this instance.” Id. at 3.

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Plaintiffs moved to defer the court’s ruling on defendant Lifescan’s exceptional case motion which requested an award of fees and expenses until the resolution of their pending appeal before the Federal Circuit. Roche Diagnostics Operations, Inc., et al. v. Abbott Diabetes Care, et al., C.A. No. 07-753-LPS, Memo. Order (D. Del. March 3, 2011). Judge Stark granted the motion and found that the outcome of the appeal “will affect resolution” of the motion, by either changing the “prevailing party” to plaintiffs, thereby mooting the motion, or changing the fee application of defendants to include costs and fees from the appeal. Id. at 2.

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Last Wednesday, in MagSil Corp. v. Seagate Technology, C.A. No. 08-940 (D. Del. Feb. 16, 2011), Chief Judge Bartle (sitting by designation from the District of New Jersey) granted Defendants’ motion for summary judgment and issued a memorandum opinion addressing Plaintiff’s asserted claims in light of the enablement requirement of 35 U.S.C. § 112.

The asserted claims related to a junction consisting of two or more electrodes separated by a layer of insulation. The junction exhibited an electrical resistance which could be increased or decreased by exposing the junction to magnetic fields. Id. at 4. While the specification taught a method of constructing junctions with a maximum resistive change of 11.8%, the inventors claimed junctions with resistive changes of “at least 10%” – essentially claiming not only the junction taught by the specification, but all junctions “with resistive changes of 20%, 200%, 2000%, and up to infinity[.]” Id. at 8. Because the asserted claims had no upper limit on resistive change, id. at 8, Defendants proved by clear and convincing evidence that the specification was “insufficient to enable one of ordinary skill in the art to make and use the full scope” of the claims without undue experimentation, making the claims invalid. Id. at 18-19.

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Last week, in Magnetar Tech. Corp v. Six Flags Theme Parks, Inc., C.A. No. 07-127-LPS (D. Del. Feb. 18, 2011), Judge Stark denied a motion by some of the defendants to amend their complaint to add an antitrust counterclaim under the Section 2 of the Sherman Act. The opinion is brief and interesting. It explains the high bar for factual allegations when asserting an antitrust claim, and distinguishes such claims from the easier-to-prove inequitable conduct claims. Here, Judge Stark found that defendants had failed to meet that high bar, and denied the motion to amend.

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