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In QVC, Inc. v. Your Vitamins, Inc., C.A. No. 10-094-SLR (D. Del. Nov. 29, 2010), Judge Robinson granted a motion to transfer in a false advertising case after it was revealed that the parties were bound by an agreement with a forum selection clause and a choice of law provision. Judge Robinson recognized that “Forum selection clauses are presumptively valid and are entitled to great weight,” id. at 4-5, and that the other related factors on the whole favored transfer. The case was transferred to the Eastern District of PA.

The presence of an “unambiguous” forum selection clause distinguishes this case from other recent rulings on motions to transfer, which have generally turned on the degree of connection to the forum.

QVC, Inc. v. Your Vitamins, Inc., C.A. No. 10-094-SLR (D. Del. Nov. 29, 2010)

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District judge Sue L. Robinson recently construed the terms of several patents that concern systems and methods for collecting and maintaining information about job applicants. The Court issued its claim construction on seven terms and phrases:

1. “Target data strings”
2. “Each field [being] capable of [accommodating /accepting] . . . [a] data string”
3. “Source data [st]ream”
4. “Displaying a structured form comprised of multiple fields”
5. “Supplying”
6. “Supplemental inquiry form”
7. “Nonuniformly formatted source data streams”
Kenexa Brassring Inc. v. Taleo Corp., C.A. No. 07-521-SLR (D. Del. Nov. 18, 2010) (Robinson, J.).

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The vacancies on the D. Del. bench over the past several years are well known. What may not be appreciated, however, is that even with these vacancies, key litigation benchmarks (such as time-to-trial) have not been visibly affected. This is due in part to the contributions of many E.D. Pa. and D.N.J. district judges that have stepped in temporarily to fill the void.

Given this system of rotating visiting judges, is not surprising that E.D. Pa. district judge Robert F. Kelly Sr. issued a decision declining to find that the current state of affairs in Delaware warranted transfer to another jurisdiction.

Presiding in the underlying D. Del. infringement action, the Court noted that court congestion was not a reason to favor a transfer:

“[T]he court congestion factor is neutral in light of the statistical evidence provided by the parties. Although the parties presented various arguments and statistical reports concerning court congestion in the fora at issue, neither side clearly shows that the administrative difficulty resulting from court congestion weighs in favor of one forum over the other. It is important to note, however, that even though there is presently a backlog of cases in Delaware, the cases are being assigned to other district courts in the Third Circuit which are capable of efficiently and expeditiously managing the cases.”

Although the Court never explicitly mentioned the past vacancies, it did emphasize that, with the visiting judges in place, concerns about backlogs are unfounded.

Illumina Inc. v. Complete Genomics Inc., C.A. No. 10-649-RFK (D. Del. Nov. 9, 2010) (Kelly, J.).

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In ICU Medical, Inc. v. Rymed Technologies, Inc., C.A. No. 07-468-LPS (D. Del. Nov. 23, 2010), Judge Stark recently decided several pending pre-trial motions. In one motion, plaintiff asked that the court exclude a prior claim construction order in a case between plaintiff and another party in the Central District of California. Id. at 3-4. Defendant argued that the evidence from the prior litigation was relevant to willful infringement because the California judge construed some of the same claim terms at issue in the current case. Id. at 4. Judge Stark agreed that the prior claim construction ruling on the same claim terms were relevant to willful infringement because “it was reasonable for [defendant] to rely on the [California court’s] constructions in evaluating whether its products infringed [plaintiff’s] asserted patents.” Id. at 5. Judge Stark noted, however, that the jury will be instructed that the jury may consider this evidence only for evaluation of defendant’s defense to willfulness, and not in evaluating infringement or invalidity of the patents-in-suit. Id.

In another pre-trial motion, defendant sought to preclude plaintiff from offering evidence to show alleged prior incidents of defendant’s copying of plaintiff’s products that are not at issue in the instant litigation. Id. at 11. Plaintiff argued that the evidence was relevant to “copying as a secondary consideration to obviousness, and [defendant’s] intent to willfully infringe [plaintiff’s] patents.” Id. Judge Stark disagreed. “[T]he alleged prior copying . . . of unrelated products is irrelevant to infringement and non-obviousness under Rule 402. . . . Furthermore, the Court agrees with [defendant] that introduction of such contentions would cause substantial delay, wasted time, and confusion because it would require mini-trials to determine whether [defendant or its CEO] actually copied the unrelated . . . devices nearly twenty years ago.” Id. at 12.

ICU Medical, Inc. v. Rymed Technologies, Inc., C.A. No. 07-468-LPS (D. Del. Nov. 23, 2010)

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Last week, Judge Robinson granted a motion to stay pending re-examination in Vehicle IP, LLC v. Wal-Mart Stores, Inc., C.A. No. 10-503-SLR (D. Del. Nov. 22, 2010). Citing the September decision in Belden (which denied a motion to stay pending re-examination just before trial), the Court applied a simple three-factor test to determine that a stay is warranted in light of the status of the litigation and the lack of prejudice to the parties. One footnote cited re-examination statistics showing that the average appeal to the patent board takes 234 days, plus an additional 15 months to appeal that determination to the Federal Circuit.

Of note, the Court stated that “[i]f, after six months, the court is not satisfied that the reexamination is moving at a pace whereby reexamination will provide a resolution as promptly as would be otherwise achieved through this litigation, the court may lift the stay.” Vehicle, at 5.

Vehicle IP, LLC v. Wal-Mart Stores, Inc., C.A. No. 10-503-SLR (D. Del. Nov. 22, 2010)

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Magistrate Judge Thynge recently addressed whether a party is required to produce witnesses for depositions who are employees of its foreign subsidiary, or whether the party should seek that information pursuant to the Hague Convention. Ethypharm S.A. France v. Abbott Laboratories, C.A. No. 08-126-SLR-MPT (D. Del. Nov. 15, 2010). Plaintiff argued that defendant should produce the witnesses to testify because defendant had “control” over information possessed by its wholly-owned subsidiaries. Id. at 5. Specifically, defendant “has the legal right to obtain discoverable information at issue as a result of its acquisition of [the foreign subsidiary] and must produce information sought by [plaintiff] under the Federal Rules of Civil Procedure, rather than requiring [plaintiff] to seek that information pursuant to the Hague Convention.” Id. at 6. Defendant responded that the real issue is that procedures for compelling depositions under the Federal Rules or the Hague Convention cannot be invoked. Id. Specifically, the “foreign nationals at issue are not asserted to be subject to the subpoena power of United States courts, have not been served with deposition subpoenas, and are not asserted by [plaintiff] to be officers, directors, or managing agents of any party to this action.” Id.

Judge Thynge denied plaintiff’s motion to compel defendant to produce employees of its overseas affiliate for depositions. The court agreed with another district court that “Rule 30 of the Federal Rules of Civil Procedure does not require a party to litigation to produce persons for deposition who are merely alleged to be in the party’s control. Rather, a party or any other person can be noticed for deposition, and subpoenaed if necessary. If the person sought for deposition is not within the subpoena power of a United States Court, then procedures according to international treaty must be followed.” Id. at 18 (internal quotation omitted).

Ethypharm S.A. France v. Abbott Laboratories, C.A. No. 08-126-SLR-MPT (D. Del. Nov. 15, 2010)

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Last week, Judge Robinson issued a short memorandum order in Eidos Communications v. Skype Tech. SA, C.A. No. 09-234-SLR (D. Del. Nov. 9, 2010), denying a Rule 12(b)(6) motion to dismiss. The motion sought dismissal based on an attached affidavit, which stated that certain steps of an asserted method claim take place only on servers in “Luxembourg, Ireland and the Netherlands.” Id. at 6. Thus, the method is not practiced “within the United States” as required by 35 U.S.C. § 271.

Judge Robinson, however, declined to consider the affidavit, holding that it did not “fall within the narrow category of documents considered on a motion to dismiss under Rule 12(b)(6).” Id. at 6 (citing Ricoh Co. v. Oki Data Corp., Civ. No. 09-694-SLR, 2010 WL 3908603 (D. Del. Sept. 30, 2010)). That narrow category includes, among other things, documents attached to the complaint that form the basis of the plaintiff’s claims. Eidos, C.A. No. 09-234-SLR, at 3. Without the benefit of the affidavit, the 12(b)(6) motion was denied.

Judge Robinson also refused to convert the motion into a Rule 56 motion for summary judgment, because “there has been no opportunity for reasonable discovery by either party.” Id. at 7.

Eidos Communications v. Skype Tech. SA, C.A. No. 09-234-SLR (D. Del. Nov. 9, 2010)

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A recent decision by district judge Sue L. Robinson further develops her policy of prohibiting patent-law experts from testifying. As part of a wide-ranging summary judgment opinion – which covers infringement, validity, and enforceability on a number of patents – the Court emphasized that the case presented “no grounds for exception” to this practice:

“The court denies MEMC’s motion to admit the expert testimony of [Gooklasian] regarding: (1) ‘the context of when and under what circumstances an applicant may make amendments after receiving an [sic] notice of allowance;’ (2) ‘procedurally how these amendments are evaluated by the [PTO];’ and (3) ‘how the applicants here avoided substantive examination of the broad claim scope covering all ‘ions’ by misuing these two types of post-allowance/post-issuance amendment procedures.’ ”
The Court continued that it “does not allow patent law experts to testify; this case presents no grounds for exception to the court’s practice in this regard. As described by MEMC, Gooklasian offers only general guidance about PTO practice. He has no specific knowledge regarding the ‘516 or ‘601 applications or either the PTO’s or [examiner’s] treatment of the same.” (See op. at 26-27 n.16.)

S.O.I.TEC Techs., S.A. v. MEMC Elec. Mat. Inc., C.A. No. 08-292-SLR (D. Del. Oct. 13, 2010) (Robinson, J.).

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Last week, Judge Robinson issued a lengthy memorandum opinion in Robert Bosch, LLC v. Pylon Man. Corp., C.A. No. 08-542-SLR (D. Del. Nov. 3, 2010), granting in part a motion for judgment as a matter of law and overturning jury verdicts on the issue of invalidity of several patent claims (and denying other motions including a motion for a permanent injunction).

The jury’s invalidity findings were reversed for lack of substantial evidence. Judge Robinson had previously granted motions in limine which, “viewed in light of the options available on the jury’s verdict sheet, precluded a finding of obviousness based on any single prior art reference or any combination of prior art references that did not include the ‘564 patent.” The Jury found the four claims invalid based on references other than the ‘564 patent. Judge Robinson held that, because Defendants had been precluded from offering evidence on these references, the jury’s verdict could not be supported by substantial evidence.

Judge Robinson also denied Plaintiff’s motion for a permanent injunction, under the eBay standard, because of “[Plaintiff]’s failure to define a relevant market, the existence of additional competitors and the non-core nature of [Plaintiff’s sale of the relevant products] in relation to its business as a whole.”

Robert Bosch, LLC v. Pylon Man. Corp., C.A. No. 08-542-SLR (D. Del. Nov. 3, 2010)

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Recently, Judge Thynge issued a memorandum order on a motion to bifurcate in Masimo Corp. v. Philips Elec. North Am. Corp., C.A. No. 09-80-LPS-MPT (D. Del. Oct. 6, 2010). Judge Thynge previously granted Plaintiff’s motion to bifurcate Defendant’s anti-trust and patent misuse counterclaims. Now, Defendant moved to trifurcate the trial into separate sections for invalidity/infringement, anti-trust issues, and damages — or, in the alternative, to bifurcate the case into invalidity/infringement and damages/anti-trust. Judge Thynge rejected both alternatives, holding that the usual issues of judicial economy, prejudice, and juror comprehension weighed in favor of trying invalidity, infringement and damages together.

The extent to which the previous bifurcation affected Judge Thynge’s decision is unclear. The previous bifucation is discussed in the order, but not as one of the factors cutting against further bifurcation. On the other hand, judicial economy was a big factor weighing against further bifucation, including the overlap of evidence between damages and infringement, and Defendant’s low likelihood of success at proving non-infringement or invalidity. This stands in contrast with Judge Robinson, who usually grants bifurcation in the interest of judicial economy.

In any case, Judge Thynge included a footnote leaving the door open, at least, to a stay on the presentation of damages evidence at trial until the jury renders a verdict on liability.

Masimo Corp. v. Philips Elec. North Am. Corp., C.A. No. 09-80-LPS-MPT (D. Del. Oct. 6, 2010)

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