Delaware IP Law Blog

Late last week, Judge Robinson issued a memorandum opinion in Accenture Global Services GMBH v. Guidewire Software Inc., C.A. No. 07-826-SLR (D. Del. Mar. 5, 2010) (in addition to the claim construction opinion that we posted about yesterday, and the order staying the case that we posted about just over a week ago). In this opinion, Judge Robinson denied several motions, including Defendant's motions for summary judgment on anticipation, obviousness, indefiniteness, non-infringement, and trade secret misappropriation, and Plaintiff's motion to strike Defendant's on-sale bar arguments and documents because they were not identified in its invalidity contentions during discovery.

Plaintiff's motion to strike was denied due to a lack of prejudice, and the fact that they had actual notice. Defendants' on-sale bar motion was denied because they provided no "clear and convincing evidence that [supposed on-sale bar product] met all of the limitations of an asserted claim," because it was missing some enabling portions of the specification, and "the (albeit few) missing enabling portions of the specification may have been added" after the critical date. Id. at 19.

Defendant's anticipation motion was denied because there are still issues of fact (as evidenced, according to the Court, by the fact that Defendant submitted over 5000 pages of material to the Court for consideration), and because "defendant's wholesale grouping of limitations [in its anticipation analysis] does not allow for the requisite demonstration of the manner in which the elements of the asserted preior art system are arranged." Id. at 38-41.

One final item of interest was how the Court, in denying Defendant's indefiniteness motion, used Defendant's own anticipation motion against it:

Notably, defendant has moved for summary judgment that claim 6 of the '284 patent is anticipated and obvious in view of the three prior art systems noted supra. Certainly defendant's assertion that the claim can be (positively) contrasted with the prior art is at odds with the assertion that the bounds of the claim are indeterminable.

Id. at 41-42 (emphasis added).

Accenture Global Services GMBH v. Guidewire Software Inc., C.A. No. 07-826-SLR (D. Del. Mar. 5, 2010)

For those readers litigating insurance patents, district judge Sue L. Robinson recently released a claim-construction decision that interprets the terms of two insurance claims-processing systems. Among the terms construed, several stand out: "policy level," "claim level," "participant level," "event trigger," "field," and the phrase "obtaining a selection of fields of a first set of fields."

Accenture Global Services GMBH v. Guidewire Software Inc., C.A. No. 07-826-SLR (D. Del. Mar. 5, 2010) (Robinson, C.J.).

Judge Robinson in Accenture Global Services GMBH v. Guidewire Software, Inc., has decided to stay the case and deny defendant's motion for partial summary judgment of invalidity based on unpatentable subject matter until after the U.S. Supreme Court issues its ruling in the Bilski matter. C.A. No. 07-826-SLR, Memo. Order (D. Del. Feb. 26, 2010). The patents in this case relate to software used to perform insurance-related transactions and tasks. Id. at 2. The court stated that it "believes that the claims of the Accenture patents would not meet the 'transformation" prong' of the Federal Circuit's current machine or transformation test under Bilski as it currently stands. Id. at 3. However, the patents "raise substantial questions under the 'machine' prong." Id. Therefore, the court stated, "[i]nsofar as the Supreme Court may illuminate, or drastically alter, the framework of such a determination, the court believes that it is prudent to postpone the subject matter inquiry under 35 U.S.C. Section 101 until such time as a decision is issued in Bilski v. Doll." Id.

Accenture Global Services GMBH v. Guidewire Software, Inc., C.A. No. 07-826-SLR, Memo. Order (D. Del. Feb. 26, 2010).

Judge Robinson issued a memorandum opinion yesterday in Genetics Institute, LLC v. Novartis Vaccines and Diagnostics, Inc., C.A. No. 08-290-SLR (D. Del. Feb. 24, 2010). Plaintiff Genetics Institute, LLC filed a 35 U.S.C. § 291 action seeking a determination of priority for their patent over two patents owned by Novartis Vaccines and Diagnostics, Inc. Id. at 1-2. To satisfy § 291, the plaintiff must show interference-in-fact; part of that showing is the "two way test," which means that the second patent must be either anticipated by or obvious in light of the first patent. Id. at 10-12. Defendants brought a motion to dismiss, arguing that plaintiffs had failed to meet the standard.

The Court's application of the anticipation and obviousness tests was relatively straightforward. It turned on the Federal Circuit's holding that "[t]he disclosure of a range 'is only that of a range, not a specific [point] in that range[, i.e.] the disclosure of a range is no more a disclosure of the end points of the range than it is each of the intermediate points." Atofina v. Great Lakes Chemical Corp., 441 F.3d 991 (Fed. Cir. 2006). The patents involved amino acid gaps in a protein to assist in blood clotting; because the range of gaps did not line up properly under Atofina, the court held that the prior patent did not anticipate the subsequent ones. Id. at 18-24.

Along the way, the court also clarified that patent term extensions under the Hatch-Waxman Act apply to the patent itself, not to specific claims within the patent. Id. at 16.

08-290a

Amend your complaint or face dismissal of your action. This is what Judge Robinson informed the plaintiffs in Eidos Communications, LLC v. Sype Technologies SA, C.A. No. 09-234-SLR, Memo. Op. (D. Del. Feb. 24, 2010), where the complaint failed to allege that any specific product or category of products infringe the patents-in-suit. Plaintiffs in this case alleged that defendants’ “communication system products and/or methodologies” infringe the patents-in-suit. Id. at 2. There are no specific products or methods described in the complaint and the only language that even comes close to such a description is a general description of the technology found in the background section of the complaint. Even that general description, however, “does not indicate whether a product or method (or both) are at issue or whether the suit is directed to the transmission of or to the control of either voice or message data.” Id. at 5. The Court ordered plaintiffs to amend their complaint, finding that “[P]laintiffs were obligated to specify, at a minimum, a general class of products or a general identification of the alleged infringing methods.” Id. at 5.

Eidos Communications, LLC v. Sype Technologies SA, C.A. No. 09-234-SLR, Memo. Op. (D. Del. Feb. 24, 2010).

In Genetics Institute, LLC v. Novartis Vaccines and Diagnostics, Inc., C.A. No. 08-290-SLR (D. Del. Feb. 24, 2010), Judge Robinson recently construed the following claim language of plaintiff's patent:

"truncated Factor VIII Protein which is an active procoagulant"
A Factor VIII protein that promotes blood coagulation and lacks a portion of the amino acid sequence of the human Factor VIII protein.

"having a peptide sequence of human factor VIII:C but lacking a peptide region selected from the group consisting of"
Having the amino acid sequence of the human Factor VIII protein lacking only the particular segment of the human Factor VIII protein in one of the specified alternatives (a), (b) or (c).

Here, plaintiff had argued for a broad interpretation of the claim (i.e., "lacking a peptide region of at least the regions identified in (a), (b) or (c)."). Id. at 3. Plaintiff argued, among other things, that the PTO's granting of a term extension for its patent based on its construction of the relevant claim be given great deference. Id. However, Judge Robinson noted that "[c]laim construction is a matter of law and, therefore, does not fall within the PTO's technical expertise (assuming that the PTO went through the claim construction exercise in the first instance)." Id. at 4.

In Genetics Institute, LLC v. Novartis Vaccines and Diagnostics, Inc., C.A. No. 08-290-SLR (D. Del. Feb. 24, 2010)

In Cordis Corporation v. Boston Scientific Corporation, C.A. No. 03-27-SLR (D. Del. Jan. 28, 2010), Judge Robinson had an opportunity to lay out her views on In re Seagate Techonology, LLC, 497 F.3d 1360 (Fed. Cir. 2007) (en banc). In Re Seagate held that "to establish willful infringement, a patentee must show by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent. . . . If this threshold objective standard is satisfied, the patentee must also demonstrate that this objectively-defined risk (determined by the record developed in the infringement proceeding) was either known or so obvious that it should have been known to the accused infringer." Id. at 2, quoting Seagate.

Judge Robinson expressed her view that this holding allows consideration only of pre-litigation evidence, excluding things like prior court decisions:

It cannot be emphasized enough that the litigation process is a complicated one, comprising multiple steps and moved forward by multiple decisions, ranging from resolving a discovery dispute to a case-dispositive motion. Consequently, I am very uncomfortable with characterizing administrative and court decisions as "objective evidence" for presentation to a jury. As recognized by counsel, a jury is going to give such evidence great weight, even when the procedural and substantive bases for most such decisions will not be apparent to the jury. This strikes me either as the kind of evidence better suited for review by a court' or as eliciting the kind of hindsight review that is so strenuously discouraged in other aspects of patent law. See KSR Intern. Co, v. Teleflex Inc., 550 U.S. 398, 421 (2007). Therefore, consistent with the reasoning of the Seagate decision as a whole (and its emphasis on prelitigation conduct), generally only evidence regarding the prelitigation landscape of the dispute will be admitted.

Id. at 3-4. Further, even pre-litigation evidence remains subject to the Rule 403 standard. Id. at 5. Based on those rules, Judge Robinson excluded various evidence from the damages portion of the case, including a prior preliminary judgment decision, the outcome of other prior litigation, and statements issued during re-examination proceedings. Id. at 4-5.

Cordis Corporation v. Boston Scientific Corporation, C.A. No. 03-27-SLR (D. Del. Jan. 28, 2010)

District judge Sue L. Robinson this week issued a rare win to a party asserting a laches defense. According to the Court, eleven patent applications and ten abandonements, among others, adequately demonstrated the patent-in-suit's unenforceability:

"Taken in the totality, this case involves eleven patent applications, ten abandonements, and no substantive prosecution for a decade. CRCT's primary justification for delay, that neither Examiner Ford nor Examiner Richter would have allowed the applications at issue absent human data, is not objectively reasonable in view of the fact that CRCT never attempted to traverse the rejections (thereby either validating its position or obtaining allowance of its claims). CRCT's delay, therefore, cannot 'be explained by reference to [ ] legitimate considerations and/or expectations.' . . . CRCT introduced no contemporaneous evidence substantiating its position or establishing that CRCT sought to develop the technology prior to the Schering license. CRCT only engaged the PTO once it had a profit motive to do so."

With these delays, the ANDA filer established the abuse of the patent system necessary to a successful prosecution-laches defense.

Cancer Research Technology v. Barr Labs. Inc., C.A. No. 07-457-SLR (D. Del. Jan. 26, 2010) (Op. Part II).

The Federal Circuit has affirmed, without discussion, Judge Robinson’s decision in Takeda Pharma. Co. Ltd. v. Teva Pharma. USA Inc., C.A. No. 07-331-SLR (D. Del. Nov. 9, 2009) (Robinson, J.), that Takeda failed to prove that Teva’s ANDA products infringe Takeda’s patent.

In her opinion, Judge Robinson had emphasized the importance of a patentee's conduct during prosecution for later claims of infringement. In the underlying action, the patentee alleged that defendant's ANDA product, which covered an oral tablet that dissolved without water, contained distinct disintegrating and swelling agents, as required by the patent. The Court disagreed, resting its conclusion of non-infringement in part on the patentee's own disavowal of the purportedly infringing disintegrating agent.

Plaintiffs Boston Scientific Corporation and Boston Scientific Scimed Inc. (“BSC”) brought four patent infringement actions against Johnson & Johnson Inc. and Cordis Corporation (“J&J”) seeking a judgment of invalidity for four coronary stent patents. Boston Scientific Corporation, et al. v. Johnson & Johnson Inc., et al., C.A. No. 07-333-SLR (D. Del. Jan. 20, 2010) (consolidated). BSC moved for summary judgment of invalidity. Judge Robinson granted BSC’s motion on the basis that J&J’s patent specifications contain insufficient written descriptions. For example, three of the patents contained “no definitions, examples, or experimental models provided for determining whether a compound is a structurally similar analog as contemplated by the patentees.” Id. at 24. Because, based on the disclosure, a person skilled in the art would not recognize a description of the claimed analogs, “no reasonable jury could find that the written description requirement has been met with respect to the claimed analogs.” Id. at 26. In addition, Judge Robinson found non-enablement because a person with ordinary skill in the art could not make the claimed invention without undue experimentation. Id. at 27.

Judge Robinson also determined that the fourth patent was invalid due to failures in the written description. Id. at 30. Specifically, the relevant analogs were not “named, structurally depicted, exemplified, or otherwise described in the ‘662 patent specification.” Id. Moreover, “although limited by function, the claims of the ‘662 patent are drawn to a genus of [certain] analogs without any description of any species within the genus. The Federal Circuit has required the identification of ‘sufficient species’ to show that the totality of the genus was invented and disclosed.” Id. at 31 (citing Carnegie Mellon Univ. v. Hoffman-LaROche Inc., 541 F.3d 1115, 11261 (Fed. Cir 2008)).

Boston Scientific Corporation, et al. v. Johnson & Johnson Inc., et al., C.A. No. 07-333-SLR (D. Del. Jan. 20, 2010)

In Boston Scientific Corp., et al. v. Johnson & Johnson, Inc., et al., C.A. No. 07-333-SLR (D. Del. Jan. 20, 2010), Judge Robinson construed the following terms as follows:

1. Stent
A device for providing support for a lumen in the body.

2. Biocompatible
Able to perform its function in the body with an acceptable biological response.

3. Therapeutic agent
A substance administered to treat or prevent a disease or condition.

4. Drug
A substance administered to treat or prevent a disease or condition.

5. Polymer
A material formed by polymerization and comprising repeating units of the same (homopolymer) or different (copolymer) types of monomers.

6. Copolymer
A polymer having two or more different types of monomers.

7. Polymeric carrier
A material comprised of at least one polymer that is formulated with the therapeutic agent.

8. Polymeric coating; coating
Covering layer(s) comprising a mixture of both a polymer and the therapeutic agent or drug.

9. Acrylate-based polymer or copolymer
A polymer in which at least one of the types of monomers is based on the structure of a salt or ester of acrylic acid.

10. Fluorinated polymer
A polymer containing one or more fluorine atoms.

11. Poly(ether-ester) copolymer
A polymer containing one monomer that includes an ether and another monomer that includes an ester.

12. Rapamycin or a macrocyclic lactone analog thereof
Sirolimus or a macrocyclic lactone molecule with a striction similar to sirolimus.

13. Rapamycin
Sirolimus and all analogs, derivatives and congeners that bind FKBP12 and possess the same pharmacologic properties as sirolimus.

14. Macrocyclic triene analog
A macrocyclic triene molecule with a structure similar to rapamycin and that binds FKB12.

15. An amount effective to inhibit neointimal proliferation
An amount sufficient to diminish neointimal proliferation.

16. Provides a controlled release of said therapeutic agent over a period of several weeks
Therapeutic agent is discharged gradually over the course of several weeks.

17. Releases
Discharges

18. Mixture; mixture thereof; blend thereof; incorporated into
Combination of two or more substances, or the act of combining said materials.

19. Applied; applied thereto; onto the stent; affixed to the intraluminal stent
Attached to the stent.

20. In-stent late loss
The minimal lumen diameter within the stent immediately following implantation minus minimal lumen diameter within the stent at a specified time following implantation.

21. In-stent diameter stenosis
100 X [1 – minimal lumen diameter/reference vessel diameter].

22. Quantitative coronary angiography
A test to measure the lumen diameter of coronary vessels.

23. Mean in-stent loss
The average of in-stent late loss values.

24. Human population
A class of people distinguished by particular traits or characteristics.

25. Mean in-stent diameter stenosis
The average of in-stent diameter stenosis values.

26. About
Approximately.

Boston Scientific Corp., et al. v. Johnson & Johnson, Inc., et al., C.A. No. 07-333-SLR (D. Del. Jan. 20, 2010)

Plaintiff moved to compel certain communications between the defendant and its third-party supplier on the grounds that these communications are not subject to the common interest privilege or joint defense strategy. Robert Bosch LLC v. Pylon Manufacturing Corp., C.A. No. 08-542-SLR, Memo. Order (D. Del. Dec. 23, 2009). The Court found that there was no waiver of the privilege where the documents contained the "possible disclosure of attorney advice obtained by a third party [not defendant] and related to [defendant], rather than [defendant] disclosing advice from its counsel." Id. at 13. Furthermore, these documents involve patents other than the patents-in-suit and the opinions provided are "very general, broad and nonspecific." Therefore, defendant's production of these documents is not a waiver of the attorney-client privilege on infringement and invalidity. Id. at 14.

Plaintiff further argued that regardless of any waiver or lack thereof, these documents are not subject to any other form of privilege and therefore any redacted or withheld communications between the defendant, its third-party supplier and defendant's counsel should be produced. Id. The Court found that there was an understanding that the defendant and the supplier were using the same counsel to address concerns about possible patent liability and therefore a "joint-client relationship" exists supporting the claims of privilege. Id. at 14-15. Judge Robinson further noted, that the "fact that this arrangement was not memorialized in written form until later does not defeat the relationship...and the protection of the attorney-client privilege." Id. at 14.

Robert Bosch LLC v. Pylon Manufacturing Corp., C.A. No. 08-542-SLR, Memo. Order (D. Del. Dec. 23, 2009).

District judge Sue L. Robinson recently denied a request for a permanent injunction in part on the ground that the movant failed to supply the necessary documentary and analytical evidence to prove irreparable harm. By doing so, the Court implicitly gave guidance to litigators seeking to satisfy their evidentiary burden under the so-called e-Bay factors:

"[P]laintiff's case suffers from several fatal flaws. It is most problematic that plaintiff points to no documentary (or other) evidence regarding the effects of defendants' infringement (on plaintiff). As noted previously, the court has no market data before it. There is also no clear indication of a direct link between defendants' infringing sales . . . , loss of goodwill to plaintiff or, more broadly, a change in the market landscape." (at 9-10)

Notably, the Court also dismissed the credibility of the evidence plaintiff did offer - a declaration by plaintiff's president of product strategy - characterizing it as "rife with impermissible speculation" (at 6 n.11) and "self-serving" statements (at 9 n.15). The lesson is clear: an argument on irreparable harm must be built on some evidence beyond a party's declaration.

IGT v. Bally Gaming Int'l Inc., C.A. No. 06-282-SLR (D. Del. Dec. 22, 2009) (Robinson, J.).

Where is the line between rehashing arguments and offering new evidence in seeking reconsideration of a ruling? According to a recent decision by district judge Sue L. Robinson, the waiver doctrine can play a primary role in this determination.

In disposing of a request to recalculate a lost-profits award, the Court noted that the movant never raised its remittitur argument in the initial post-trial proceedings. As a result, the movant not only waived its ability to raise the argument, but also prompted a rebuke from the Court:

"The present motion reflects a fundamental misunderstanding of the limited appropriateness of motions for reconsideration. There is no alleged change in law or new evidence. A 'manifest injustice' does not result from the court's failure to consider arguments not properly made by defendant in its prior motion to amend the judgment. As this court has iterated in previous cases, a motion for reconsideration is not properly grounded on a request that a court rethink a decision already made."

Strong words to consider when formulating positions for a post-trial (or any) motion.

Siemens Medical Solutions USA Inc. v. Saint-Gobain Ceramics & Plastics Inc., C.A. No. 07-190-SLR (D. Del. Dec. 16, 2009) (Robinson, J.).

Last week, the Federal Circuit reversed Judge Robinson's opinion in Hewlett Packard Co. v. Acceleron, LLC, C.A. No. 07-650-SLR, Memo. Op. (D. Del. Mar. 10, 2009), which we posted about earlier this year. The Fed. Circuit's opinion on this case is particularly interesting because, in their words, it "undoubtedly marks a shift from past declaratory judgment cases." Hewlett-Packard Company v. Acceleron LLC, No. 2009-1283 (Fed. Cir. Dec. 4, 2009).

Judge Robinson had dismissed this declaratory judgment action because "[l]itigation was . . . still too speculative a prospect to support declaratory judgment jurisdiction" when the case was filed. Hewlett Packard, C.A. No. 07-650-SLR at 13. At that time Acceleron had sent a letter to HP asking for "an opportunity to discuss" Acceleron's patent that "relates to Blade Servers." Id. at 1-2.

Acceleron's initial letter suggested that declaratory judgment jurisdiction might be an issue by stating that "we ask that you agree that all information exchanged . . . will not be used for any litigation purposes whatsoever, including but not limited to any claim that Acceleron has asserted any rights against any of your ongoing or planned activities, or otherwise created any actual case or controversy regarding the . . . patent." Id. The Court noted, however, that the letter did not include "a statement of infringement, identification of specific claims, claim charts, prior pleadings or litigation history, or the identification of other licensees," or "directly imply[] impending litigation." Id.

In reversing, the Fed. Cir. held that "The facts of this case, when viewed objectively and in totality, show that Acceleron took the affirmative step of twice contacting HP directly, making an implied assertion of its rights under the ’021 patent against HP’s Blade Server products, and HP disagreed. Therefore, we hold that there is declaratory judgment jurisdiction arising from a 'definite and concrete' dispute between HP and Acceleron, parties having adverse legal interests." Id. at 8-9.

The difference between the Fed. Cir. holding and the District of Delaware holding seems to turn on the degree to which a patent troll must "imply" that litigation was pending - Judge Robinson noted that Acceleron did not "direcly imply[] impending litigation," but the the Fed. Cir. held that Acceleron's "implied assertion of its rights," along with HP's disagreement, was enough.

The Fed. Cir. recognized that "it is implausible (especially after MedImmune and several post-MedImmune decisions from this court) to expect that a competent lawyer drafting such correspondence for a patent owner would identify specific claims, present claim charts, and explicitly allege infringement." Id. at 6. The Court also recognized that legitimate business interactions (such as a patent owner attempting to sell a patent) should not invoke declaratory judgment jurisdiction, id. at 6, but that Acceleron's letter here was no such communication. The letter asserted that its patents were "relevant" to one of HP's product lines and imposed a short deadline to respond. Further, the Fed. Cir. emphasized Acceleron's status as a non-practicing entity: Acceleron's implication of litigation was stronger because it was "a non-competitor patent holding company," and "solely a licensing entity, and without enforcement it receives no benefits from its patents." Id. at 3, 8.

In its conclusion, the Fed. Cir. praised Judge Robinson's opinion, and noted that their reversal represents an actual change in the law:

As the district court recognized in its careful opinion analyzing declaratory judgment jurisdiction, there is no bright-line rule for distinguishing those cases that satisfy the actual case-or-controversy requirement from those that do not. See MedImmune, 549 U.S. at 127. Our decision in this case undoubtedly marks a shift from past declaratory judgment cases. However, MedImmune has altered the way in which the Declaratory Judgment Act applies to patent law cases, requiring that legal interests be evaluated in patent cases under the general criteria of the Act. Our jurisprudence must consequently also evolve, and in this case the facts demonstrate adverse legal interests that warrant judicial resolution.

Id. at 9.

Hewlett-Packard Company v. Acceleron LLC, No. 2009-1283 (Fed. Cir. Dec. 4, 2009)

Magistrate Judge Bongiovanni of the District of New Jersey recently considered Wyeth’s renewed request for the disqualification of Howry LLP (“Howry) as counsel to Boston Scientific Corporation (“BSC”), based on Howry's representation of Wyeth in another matter. Wyeth and Cordis Corp. v. Abbott Laboratories, et al., C.A. No. 08-230-JAP (D.N.J. Dec. 1, 2009). Judge Bogiovanni originally deferred the issue in light of Wyeth's motion for disqualification pending in the District of Delaware before Judge Robinson in a case involving the same parties and Howry LLP. In August, Judge Robinson found that Howry’s representation of BSC violated Rule 1.7. Boston Scientific Corporation, et al. v. Johnson & Johnson, et al., C.A. No. 07-765-SLR, at 7 (D. Del. Aug. 25, 2009). However, Judge Robinson declined to disqualify Howry due to, among other things, the unrelatedness of the BSC matter and the European matter in which Howry represented Wyeth, the fact that Howry’s Washington, D.C. office was representing plaintiffs here whereas Howry’s Europe-based attorneys were handling the matter in Europe, and that an ethical wall was in place. Id. at 8-9. Judge Bongiovanni, however, disqualified Howry on the sole basis of its Rule 1.7 violation. Judge Bongiovanni indicated that in the District of New Jersey the violation of Rule 1.7 should result in automatic disqualification. Wyeth, C.A. No. 08-0230, at 2 (citing In re Cendant Corp. Securities Litig., 1234 F. Supp. 2d 235, 248-50 (D.N.J. 2000) (“New Jersey simply does not permit concurrent representation when the interests of two current clients are adverse.”).

Wyeth and Cordis Corp. v. Abbott Laboratories, et al., C.A. No. 08-230-JAP (D.N.J. Dec. 1, 2009)

In yet another decision addressing the sufficiency of pleading inequitable conduct, the Court found under the new standard set forth in the Exergen case that defendant Cisco's amended claims "pass muster under this rigorous standard" and granted defendant's motion for leave to amend. Cisco Systems, Inc. v. Teles AG Informationstechnologien, C.A. Nos. 09-232-SLR, 09-072-SLR, Memo. Order (D. Del. Oct. 16, 2009). A copy of the amended answer
and its Exhibit A is attached here.

Cisco Systems, Inc. v. Teles AG Informationstechnologien, C.A. Nos. 09-232-SLR, 09-072-SLR, Memo. Order (D. Del. Oct. 16, 2009).

In a recent post-trial opinion, district judge Sue L. Robinson emphasized the importance of a patentee's conduct during prosecution for later claims of infringement. In the underlying action, the patentee alleged that defendant's ANDA product, which covered an oral tablet that dissolved without water, contained distinct disintegrating and swelling agents, as required by the patent.

The Court disagreed, resting its conclusion of non-infringement in part on the patentee's own disavowal of the purportedly infringing disintegrating agent:

"Even if plaintiffs could convincingly show that lactose caused the disintegration of StarLac, the patentee's disavowal of lactose in order to distinguish [the prior art] during prosecution clearly shows that lactose cannot be a disintegrating agent within the meaning of the [patent-in-suit]."

The smoking gun evidence? "[During prosecution,] [t]he patentee chose to distinguish its invention from [the prior art] by arguing that the reference failed to teach 'disintegrating agents . . . . Therefore, if lactose is not a disintegrating agent with respect to the [prior art], it would be improper to characterize it as such in the ANDA products."

Takeda Pharma. Co. Ltd. v. Teva Pharma. USA Inc., C.A. No. 07-331-SLR (D. Del. Nov. 9, 2009) (Robinson, J.).

Judge Robinson recently granted defendant Parallel Networks' motion to sever and transfer third-party defendant Microsoft's declaratory judgment action to the Eastern District of Texas. Judge Robinson cited the judicial vacancy in Delaware and the "undeniable" facts pointing to the Eastern District of Texas as an appropriate venue when holding that "[a]lthough I continue to be amazed by the energy and resources expended on motions to transfer and believe that the way this litigation has unfolded would warrant jurisdiction in Delaware . . . I conclude that Microsoft's declaratory judgment action should be severed and transferred to the Eastern District of Texas." Quinstreet, Inc. v. Parallel Networks, LLC, C.A. No. 06-495-SLR (D. Del. Nov. 3, 2009).

Quinstreet, Inc. v. Parallel Networks, LLC, C.A. No. 06-495-SLR (D. Del. Nov. 3, 2009)

What do you do when a key witness falls ill and is no longer able to testify? Judge Robinson in Genetics Institute, LLC v. Novartis Vaccines and Diagnostics, Inc. excused the inventor/witness from testifying based on a letter from her doctor. She noted, however, that "because it is not clear from the submission how the diagnosed condition is affecting [the inventor's] daily life, sanctions will be imposed against [the defendant] in this case if [the inventor] provides any testimony (through a declaration, a deposition or at trial) in any other case involving the patents at bar." C.A. No. 08-290-SLR, Order (D. Del. Oct. 23, 2009). She further stated that "[d]epending on the circumstances, I would consider sanctions ranging in severity from the imposition of an adverse inference to the imposition of the costs of a new trial to the imposition of an adverse judgment." Id.

Genetics Institute, LLC v. Novartis Vaccines and Diagnostics, Inc., C.A. No. 08-290-SLR, Order (D. Del. Oct. 23, 2009).

On Monday, Judge Robinson issued a thorough, lengthy opinion resulting from a patent infringement bench trial where Judge Robinson found in favor of plaintiff Alcon, despite several claim construction and validity arguments by defendant Teva. Alcon, Inc. v. Teva Pharmaceuticals USA, Inc., Civ. No. 06-234-SLR (Oct. 19, 2009). Teva had filed an Abbreviated New Drug Application (“ANDA”) “to market a generic version of the antibacterial drug VIGAMOX® proprietary to plaintiffs.” Id. at 1. VIGAMOX is an antibiotic, and its active ingredient, moxifloxacin hydrochloride, is protected by Patent No. 6,716,830, according to Alcon. Teva’s submission of an ANDA is an act of infringement, id. at 14, so the two issues in this case were (1) claim construction (whether the Teva’s generic is covered by the Alcon’s patent) and (2) validity.

Claim construction turned solely on the definition of “moxifloxacin” as used in claim 1 of Alcon’s ‘830 patent. Id. at 14-15. Both Teva’s generic and Alcon’s patent include “moxifloxacin” as the active ingredient, but Teva argued that Alcon’s patent had redefined “moxifloxacin” to mean something narrower than the ordinary industry understanding of that term. According to Teva, “because the specification . . . provides an alternate meaning for the claim term ‘moxifloxacin’ in the form of the depiction of a structurally different compound, the ordinary meaning of moxifloxacin has been displaced.” Id. at 18. Teva further argued that the specification referred to a “new class of antibiotics,” and that quinolones, the class to which moxifloxacin belongs, “were not a new class of antibiotics; therefore, the subject matter of the ‘830 patent must be directed to a different family of compounds.” Id. The court rejected each of these arguments, because “[t]he record before the court is replete with instances in which Teva’s proposed construction is at odds with the specification of the ‘830 patent so as to cause an absence of the . . . clarity, deliberateness and precision” required for a patentee to “act as his own lexicographer.” Id. at 18-19.

The validity analysis started with anticipation, which focused on a prior patent. Id. at 21-26. The prior patent disclosed a similar moxifloxacin composition, but at a different concentration range. Id. at 24-25. The ‘830 patent claimed a concentration range of “0.1 to 1.0 wt%,” while the prior patent’s range was “0.5 to 99.5 wt%.” Id. The court held that the prior patent did not anticipate the ‘830 patent, based on a genus/species analysis of the “range disparity” between the claimed and disclosed concentration numbers. Id. at 25. The court also rejected Teva’s argument that the prior patent had an “inherent range” that extended below the explicitly disclosed range. Id. at 26.

The court then addressed obviousness. Teva argued “that a motivation to combine exists inasmuch as moxifloxacin would have been ‘obvious to try’ in a topical ophthalmic composition, due to both market pressure and the existence of ‘a finite number of identified, predictable solutions’ to treat ophthalmic infections,’” and further that a person of ordinary skill in the art would have expected the combination to have desirable properties. Id. at 28. The court rejected each of these arguments, holding that “the record indicates anything but a finite number of identified, predictable solutions,” and that even if the result of substitution was predictable, that “provides little insight” into the “crucial” question of “whether the prior art motivated a person of ordinary skill to even select moxifloxacin for use in a . . . composition.” Id. at 30. In particular, the court focused on the fact that “the prior art consistently taught away from the use of moxifloxacin” in such compounds, due to its toxicity, poor performance, and ineffectiveness against certain “key” pathogens. Id. at 36, 30-33. Secondary considerations also supported non-obviousness, including initial skepticism by other experts in the field, the long felt need for a compound like this, the commercial success of VIGAMOX(r) (which achieved hundreds of millions of dollars in sales), and some unexpected properties of the invention. Id. at 35-36.

Finally, the court addressed the form requirements for validity, including best mode, written description, and enablement. Teva argued that the inventor had known, but failed to disclose, that the salt form of moxifloxacin was more effective, thus failing the best mode requirement; the court held that the inventor was not subjectively aware of the increased effectiveness of the salt form, and even if he had been, the salt form provides no material improvement anyway. Id. at 39-41. Regarding the written description requirement, Teva claimed that the specification called for a preservative, but the composition claimed did not include one; the court held that the specification encompassed embodiments that did not include a preservative, and thus met the requirement. Id. at 41-44. Finally, as to enablement, Teva asserted that the claim required undue experimentation, based on a lack of process steps in the specification; the court held that a person of ordinary skill in the art could determine appropriate steps and practice the invention.

Alcon, Inc. v. Teva Pharmaceuticals USA, Inc., Civ. No. 06-234-SLR (Oct. 19, 2009)

In Robert Bosch LLC v. Pylon Manufacturing Corp., C.A. No. 08-542-SLR (D. Del. Oct. 19, 2009), Judge Robinson applied the Federal Circuit Exergen decision to Plaintiff’s motion to amend its complaint to add a claim of inequitable conduct. Plaintiff based its motion to amend on the assertion that one of the patent-in-issue’s inventors submitted an affidavit to the PTO containing a misrepresentation regarding the affiant’s review of the related application. Id. at 3. While agreeing with Plaintiff that submitting a false affidavit to the PTO “establishes at least a threshold level of materiality,” Judge Robinson noted that “there was no allegation that the affiant at bar did not contribute to the invention, or that the application that matured into the ‘380 patent contains otherwise false representations.” Id. at 4. Judge Robinson denied Plaintiff’s motion to amend because, under Exergen, she will not allow an inequitable conduct claim “to be pursued after the close of discovery when there are insufficient allegations of underlying facts from which [she] may reasonably infer that the material misrepresentation was made with a specific intent to deceive the PTO.” Id. (emphasis added).

Robert Bosch LLC v. Pylon Manufacturing Corp., C.A. No. 08-542-SLR (D. Del. Oct. 19, 2009)

A recent memorandum order by district judge Sue L. Robinson illustrates the importance of supplementing discovery - and the risks of discovery delay. In response to certain allegedly late-produced discovery, the defendants supplemented their contention-interrogatory responses to assert enablement and written-description defenses. The plaintiff objected and moved to strike the new defenses, which came after the supplementation deadline in the scheduling order.

The Court refused to strike the Section 112 defenses on the ground that "[t]he evidentiary basis for the defense rests, in large part, on information within the plaintiff's control." Plaintiff, therefore, "has the opportunity to respond within the context of expert discovery." Although unaddressed in the Court's order, perhaps defendants' explanation that the defenses could not be asserted until they received the belated discovery carried the day.

Smithkline Beecham Corp. v. Barr Pharmaceuticals Inc., C.A. No. 08-112-SLR (D. Del. Sept. 23, 2009) (Robinson, J.).

In Eurand Inc. et al. v. Mylan Pharms. Inc. et al., C.A. No. 08-889-SLR (D. Del. Oct. 1, 2009), Judge Robinson recently granted plaintiffs’ motion to sever and stay discovery on defendants' antitrust and patent misuse counterclaims and affirmative defenses. Although Judge Robinson recently clarified her stance as to bifurcation of damages and willfulness in patent cases, Judge Robinson granted plaintiffs’ motion here because the request was “supported by the promotion of judicial economy and avoiding the injection of complex, unrelated and perhaps unnecessary issues into the patent infringement case.” Id. at 3.

Eurand Inc. et al. v. Mylan Pharms. Inc. et al., C.A. No. 08-889-SLR (D. Del. Oct. 1, 2009)

A fundamental precept of patent law teaches that a party is liable for direct infringement only when it performs each step of the invention's claims. In a recent decision, District Judge Sue L. Robinson addressed infringement liability for those who perform less than all the claimed steps. The Court concluded that:

"The law of divided infringement . . . does prohibit infringement by defendants. In the circumstances where one party performs only some of the claimed steps, and another entity performs other of the claimed steps, direct infringement will only lie if one party exercises 'control or direction' over the entire process such that every step is attributable to the controlling party . . . ."

Absent this showing of control or direction, the Court held, summary judgment of non-infringement is appropriate.

Notably, the Court reached its conclusion after reconsidering an earlier claim construction. Because it raised the divided infringement issue, the new construction impaired the prospect of direct infringement, which in turn led to an increased likelihood of summary judgment. Litigators take note: this case is another example of how slight alterations to a claim construction can have a dramatic effect on the summary judgment phase.

Girafa.com Inc. v. IAC Search & Media Inc., C.A. No. 07-787-SLR (D. Del. Sept. 25, 2009) (Robinson, J.).

Plaintiff SRI International (“SRI”) brought a patent infringement action against defendants Symantec Corporation (“Symantec”) and Internet Security Systems, Inc. (“ISS”) related to four patents. After issuing its claim construction opinion in October, 2006, the Court held that each of SRI’s patents were invalidated as anticipated by certain prior art. See Sri International, Inc. v. Internet Security Systems, Inc., et al., C.A. No. 04-1199-SLR, at 1 (D. Del. Aug. 20, 2009) (discussing procedural history). On appeal, the Federal Circuit affirmed the Court’s decision as to one of the patents but vacated and remanded for trial as to the remaining three patents. Id. After a trial in September, 2008, the jury found that Symantec and ISS infringed each claim of two of SRI's patents. Id. at 12. Among other post-trial motions, both Symantec and ISS filed motions for judgment as a matter of law (“JMOL”) as to the jury's infringement verdicts.

Pursuant to its JMOL motion, Symantec argued that a finding of “induced infringement was not supported by substantial evidence because plaintiff presented no direct evidence that either Symantec or its customers actually employed the infringing combination of SGS and Manager Products [both Symantec Products].” Id. at 14 (emphasis added). At trial, SRI relied on circumstantial evidence to prove that the Symantec products in question were designed to work together, that the SGS products monitor enterprise networks, and Symantec encouraged and instructed customers to use the products together. Id. at 15-16. SRI argued that this circumstantial evidence was enough for the jury to conclude that the products were in fact used together. Id. at 16. Despite SRI’s urging otherwise, the Court noted that “[w]hile it is true that circumstantial evidence may be used to demonstrate direct infringement, the evidence must still indicate that infringement actually occurred.” Id. at 16-17. “[B]ecause both the SGS and Manager Products have non-infringing uses (i.e., the combination does not ‘necessarily infringe’ the patents), plaintiff was obligated to identify specific instances of direct infringement involving these products.” Id. at 18. Granting Symantec’s motion for JMOL as to the combination of the SGS and Manager Products, the Court found that SRI’s circumstantial evidence “[did] not compel the conclusion that infringement necessarily occurred.” Id. at 20.

Pursuant to its JMOL motion on direct infringement, ISS argued that SRI “presented no evidence that ISS itself actually deployed or used the accused products in an infringing manner.” Id. at 24. SRI, on the other hand, argued that direct infringement was supported by evidence that ISS demonstrated in training courses and video presentations the accused products’ infringing uses. Id. at 25. However, testimony at trial indicated that the demonstrations could be based off the accused product or could be artificially created for demonstrative purposes. Id. at 26-27. No testimony was introduced at trial positively showing that ISS used an infringing system during the demonstrations. Id. at 27. “On this record, a reasonable jury could not have found direct infringement by ISS by a preponderance of the evidence.” Id. The Court also granted ISS’s JMOL motion as to induced infringement because SRI did not identify any specific instances of infringement by ISS customers. Id. at 30.

Sri International, Inc. v. Internet Security Systems, Inc., et al., C.A. No. 04-1199-SLR (D. Del. Aug. 20, 2009)

In Boston Scientific Corporation, et al. v. Johnson & Johnson, et al., C.A. No. 07-765-SLR (D. Del. August 25, 2009), Defendant Wyeth sought to disqualify the firm Howrey LLP from representing Plaintiffs due to Howrey’s current representation of Wyeth in another matter in the European patent office. The Court noted that Wyeth has divisions and subsidiaries all over the world with similar names. Id. at 2. While Howrey had represented Wyeth in several matters over the years it was not clear which entity was involved. The Court found that Howrey was currently representing Wyeth in a matter in the European patent office, thereby also finding that Howrey violated Model Rule 1.7(b) which prohibits representations involving a concurrent conflict of interest. Id. at 7. However, noting that in the Third Circuit, “whether disqualification is appropriate depends on the facts of the case and is never automatic[‘]” the Court decided that disqualification was not an appropriate remedy. Id. at 9. The relevant factors supporting this decision included the unrelatedness of the current matter and the European matter, the fact that Howrey’s Washington, D.C. office is representing plaintiffs here whereas Howrey’s Europe-based attorneys are handling the matter in Europe, and that an ethical wall was in place. Id. at 8-9. Moreover, the Court found that “Howrey’s failure to comply with Model Rule 1.7 [was], to a significant degree, due to Wyeth’s conduct.” This conduct included Wyeth’s “naming conventions, its use of the same in-house counsel on matters involving different subsidiaries without consistently identifying to Howrey which entity those in-house attorneys were representing, and the willingness of it and its subsidiaries to receive billing invoices for matters on which they were not directly engaged with Howrey.” Id. at 9.

Boston Scientific Corporation, et al. v. Johnson & Johnson, et al., C.A. No. 07-765-SLR (D. Del. Aug. 25, 2009)

In recent cases, Judge Robinson has been making it her practice to bifurcate damages and willfulness in patent cases for purposes of both discovery and trial. Two recent decisions elaborate on this procedure and the Court's reasoning behind bifurcating damages and willfulness "in all but exceptional patent cases." See The Dutch Branch of Streamserve Development AB v. Exstream Software, LLC, C.A. No. 08-343-SLR, Memo. Order (D. Del. Aug. 26, 2009); see also Robert Bosch LLC v. Pylon Manufacturing Corp., C.A. No. 08-542-SLR, Memo. Order (D. Del. Aug. 26, 2009).

Noting the substantial patent docket pending in the District of Delaware, Judge Robinson states that in her experience "discovery disputes related to document production on damages and the Daubert motion practice related to damages experts are a drain on scarce judicial resources." See, e.g., The Dutch Branch of Streamserve Development, Memo. Order at 1-2. Furthermore, Judge Robinson notes that without bifurcation "the burden imposed on a jury in a patent trial is extraordinary" as they are to determine not only the technical issues surrounding an infringement and invalidity determination but then must "understand the complexities of the relevant market...in order to determine the economic consequences of their liability decisions." Id. at 2. It is because of these burdens that Judge Robinson believes that "bifurcation promotes the just and efficient resolution of what damages, if any should be awarded by: (1) giving the parties - those with the most expertise in the market - the first opportunity to translate the Federal Circuit's final legal decision on liability into practical commercial consequences; or (if the parties cannot resolve the matter) (2) giving the damages jury a focused dispute to resolve." Id. at 2.

In the Bosch case, the plaintiff further argued that willfulness cannot be bifurcated from infringement because it is entitled to have the same jury hear and decide both infringement and willfulness under the Seventh Amendement. Robert Bosch LLC, C.A. No. 08-542-SLR, Memo. Order at 2. The Court rejected this argument, consistent with Federal Circuit precedent that willfulness and infringement require different proof and therefore need not be tried at the same time and further noted that "willfulness is a damages issue, not a liability issue." Id. at 2-3. Judge Robinson also noted that although she "respect[s] plaintiff's right to a jury trial on the issue of willfulness" she "quer[ies] whether this right is so broad as to trump a court's right to manage its caseload, especially when the potential costs...are so high." Id. at 3 (noting in a footnote those costs being that willfulness "is an intrusive and inflammatory issue to discover and try").

The Dutch Branch of Streamserve Development AB v. Exstream Software, LLC, C.A. No. 08-343-SLR, Memo. Order (D. Del. Aug. 26, 2009).

Robert Bosch LLC v. Pylon Manufacturing Corp., C.A. No. 08-542-SLR, Memo. Order (D. Del. Aug. 26, 2009).

In Cordis Corporation v. Boston Scientific Corporation and Scimed Life Systems, Inc., C.A. No. 98-197-SLR (D. Del. Aug. 10, 2009), Judge Robinson reversed her March 2002 decision that nondisclosure of material prior art during prosecution of the patent-at-issue was inequitable conduct which tainted the prosecution of another patent, making both unenforceable. Id. at 1. The Federal Circuit had remanded, in June 2006, for additional findings of fact regarding deceptive intent and how the later patent was tainted by the inequitable conduct related to the first patent. Id. In reversing her prior decision, Judge Robinson applied the standard reinforced by the Federal Circuit in 2008 in Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 538 F.3d 1365 (Fed. Cir. 2008) related to the evidentiary burden to be met in order to prove inequitable conduct. Id. at 5-6. Although Judge Robinson determined that a material reference was not disclosed to the PTO, “defendants must prove, by clear and convincing evidence, that [the patentee] and/or [his attorney] ‘made a deliberate decision to withhold a known material reference.’” Id. at 8 (citing Star Scientific, 537 F.3d at 1366) (emphasis added). Judge Robinson determined that the clear and convincing standard had not been met by defendants because “the evidence cited in support of finding inequitable conduct is not clearly more compelling than the evidence cited in support of not finding inequitable conduct.” Id. at 8-9. In addition, nondisclosure of the material prior art could not carry over to the later patent because the prior art in question was identified in connection with this later patent and reviewed by the PTO examiner. Id. at 9-10.

Cordis Corporation v. Boston Scientific Corporation and Scimed Life Systems, Inc., C.A. No. 98-197-SLR (D. Del. Aug. 10, 2009)

In Wellman, Inc. v. Eastman Chemical Co., C.A. No. 07-585-SLR (D. Del. Aug. 13, 2009), Plaintiff filed an Emergency Motion to Modify Scheduling Order requesting postponement of deadlines for filing Daubert and Summary Judgment motions until after mediation. Judge Robinson denied Plaintiff's motion stating that “[m]ediation was scheduled with the present deadlines in place, the parties have not indicated that settlement is likely (and, therefore, the motion practice wasteful), and any movement of summary judgment deadlines puts the trial date at risk.” Id.

Wellman, Inc. v. Eastman Chemical Co., C.A. No. 07-585-SLR (D. Del. Aug. 13, 2009)

In a recent decision, district judge Sue L. Robinson addressed the unsettled issue of whether a plaintiff may accuse the same product of infringement in successive suits. Answering in the affirmative, the Court held that a party can maintain a second cause of action so long as the injury alleged in the second suit arises from acts that post-date those considered in the first action.

Analyzing the issue as one of claim preclusion, the Court explained its reasoning:

“A judgment cannot be give the effect of extinguishing claims which did not then even exist. Defendants did not have FDA approval to market the [accused product] in 2005. Plaintiff could not have anticipated when FDA approval, and subsequent marketing and U.S. sales . . . would have commenced. Plaintiff could not have accurately predicted the amount or value of such sales in 2005, nor could the availability of any non-infringing alternatives been assessed . . . ."

As a result, “[t]he conduct at issue in this litigation occurred after the first judgment and could not possibly have been sued upon in the 03-027 case.”

With this decision, it appears that the continuing-tort theory of patent infringement is alive and well in the District of Delaware.

Cordis Corp. v. Boston Scientific Corp., C.A. No. 08-779-SLR (D. Del. July 21, 2009) (Robinson, J.).

Yesterday, District of Delaware Judge Sue L. Robinson declined jurisdiction over a discovery dispute involving a party's instruction not to answer. At a deposition, the plaintiff's attorney directed the nonparty deponent -- who was involved in prosecuting the underlying patent -- to refrain from answering certain questions on work-product grounds.

The Court found that any order on the subject would have to originate from the court where the deposition occurred:

[A]lthough the nonparty deposition was taken outside this jurisdiction, the nonparty witness was represented by plaintiff's counsel, and it was plaintiff's counsel who instructed the witness not to answer certain questions based on work product. Nevertheless, the protection belongs to the attorney witness, not to the client . . . . Therefore, I conclude that, in this case, an order compelling the nonparty witness to answer is directed to the nonparty, not to plaintiff.

Despite declining jurisdiction, the Court in dicta cautioned that work-product immunity for prosecution activities must proceed on a case-by-case basis: "patent prosecution activities are subject neither to a blanket immunity nor automatic disclosure."

Accenture Global Services GMBH v. Guidewire Software Inc., C.A. No. 07-826-SLR (D. Del. July 29, 2009) (Robinson, J.).

Judge Robinson recently decided several discovery disputes between the parties in State of Florida v. Abbott Labs., C.A. 08-155-SLR (D. Del. June 23, 2009). Among other things, plaintiffs objected to defendants’ request for “rebates plaintiffs negotiate and receive for fenofibrate products.” Id. at 1. Plaintiffs objected on the grounds that the request sought (1) confidential information, and (2) that the information was not relevant. Judge Robinson rejected plaintiffs objections because: (1) if relevant, the information is discoverable. “Any problems with confidentiality can be resolved through a protective order . . . [;]” and (2) the rebates are relevant because plaintiffs broadly claimed their damages and so “cannot shield the rebate information from discovery . . . .” Id. at 2.

Among other things, defendants objected to plaintiffs’ request for settlement agreements. Judge Robinson reiterated her general practice to not “order the disclosure of settlement agreements, as such disclosure inhibits the very laudable purpose of settlement.” Id. at 3.

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Plaintiff Quinstreet Inc. filed a declaratory judgment suit in Delaware against a patent licensing firm EpicRealm for non-infringement of two patents. Quinstreet Inc. v. Parallel Networks, LLC, C.A. No. 06-495-SLR, Memo. Order (D. Del. May 28, 2009). A little over a year later, EpicRealm after its dissolution, in an unopposed motion, substitutes pursuant to Fed. R. Civ. P. 25(c), Parallel Networks as the defendant. Id. at 2. Parallel later moved to dismiss a third party declaratory judgment complaint for lack of personal jurisdiction. The Court found that the Delaware long-arm statute is inapplicable where voluntary substitution occurs under Rule 25(c). Furthermore, where in personam jurisdiction existed over the original party, in this case a Delaware limited partnership, the personal jurisdiction continues so long as service of the motion to substitute was effected. Id. at 5-6.

Quinstreet Inc. v. Parallel Networks, LLC, C.A. No. 06-495-SLR, Memo. Order (D. Del. May 28, 2009).

Last week, district judge Sue L. Robinson rejected a novel argument concerning the evidentiary burden on infringement under the doctrine of equivalents. Defendant claimed that, because it held a license to certain compounds under one patent, plaintiff had to show equivalency under its own patent by clear and convincing evidence. After noting that defendant "freely admits that it cannot cite a case requiring infringement to be proven" under this standard, the Court declined to upset the traditional approach:

"The court finds defendant's position untenable and declines to be the first (and only) court to depart from an extended history of patent infringement jurisprudence applying the preponderance of the evidence standard."

It will be interesting to see whether defendant, as acknowledged by the Court, will pursue its appeal of this novel question.

Siemens Medical Solutions USA, Inc. v. Saint-Gobain Ceramics & Plastics, Inc., C.A. No. 07-190-SLR (D. Del. May 15, 2009) (Robinson, J.).

Judge Robinson recently construed the following claim terms in patents related to technology involving casino gaming devices:

- "bonus"
- "bonus play period"
- "command"
- "message"
- "Issuing a 'command' 'responsive to a predetermined event'"
- "Issuing a 'command' or 'message' 'responsive to a predefined event'"
- "Issuing a command over the network to each of said preselected gaming devicdes responsive to initiation of the bonus play period."
- "Paying 'in accordance with' the 'command' or 'message'"
- "Issuing a command over the network including data establishing criteria to cause a bonus to be paid via one of said selected gaming devices upon the occurrence of a predetermined event."
- "Generating a message including data establishing criteria to cause a bonus to be paid via one of said selected gaming devices upon the occurrence of a predetermined event."
- "Transmitting a pay command from the controller to the gaming device upon the occurrence of the predetermined event."
- "Paying the bonus via the gaming device responsive to the receipt of the pay command."
- "Transferring promotional credit in the account to the gaming device."

IGT v. Bally Gaming International, Inc., C.A. No. 06-282-SLR, Memo. Order (D. Del. Apr. 28, 2009).

Businesses continue to struggle with the "post-MedImmune" environment and determining when a sufficient "case or controversy" exists to file a declaratory judgment suit against a patentee. Judge Robinson recently provided some further guidance on this issue in an even more particular area of interest--where the patentee is a patent troll. Hewlett Packard Co. v. Acceleron, LLC, C.A. No. 07-650-SLR, Memo. Op. (D. Del. Mar. 10, 2009).

As with every declaratory judgment suit, the factual scenario is highly relevant, so I wil lay out some of the most important facts here:

- The initial contact was made by the patentee "patent troll's" president to the declaratory judgment plaintiff's excecutive vice president/general counsel/secretary. The letter did not identify a particular product by tradename but did mention the patent by number and its relevance to a certain type of product.

- Shortly thereafter, an attorney for the declaratory judgment plaintiff responded by asking for a mutual standstill.

- The patentee would not agree to this standstill request and shortly thereafter this declaratory judgment suit was filed.

Hewlett Packard asked the Court to take judicial notice of a complaint Acceleron filed in another district eleven days after the Delaware suit asserting infringement of the same patent against HP. Because that suit "post-dated" the filing of the Delaware suit it does not relate to the whether declaratory judgment jurisdiction existed at the time this lawsuit was filed and therefore the Court would not consider it. Id. at 7.

The Court found that although Acceleron did identify the product line and provided a correspondence deadline, that these factors alone were insufficient for jurisdiction where the defendant's direct contact with plaintiff did not reference or directly imply litigation and there was no history of litigation by this defendant regarding this patent. Id. at 13.

Judge Robinson noted that courts should "take defendant's business model into consideration" and appreciated that correspondence from a so-called "patent troll" may evoke a different reaction than from a direct competitor but that the facts in this case showed that litigation was "too spectulative" to find jurisdiction appropriate. Id.

Hewlett Packard Co. v. Acceleron, LLC, C.A. No. 07-650-SLR, Memo. Op. (D. Del. Mar. 10, 2009).

In what is a common factual scenario in this court, a defendant is sued here in Delaware and within days files a reciprocal declaratory judgment suit in another district and at the same time files a motion to dismiss or transfer the Delaware action. And again, as typical in this district, the case will not be transferred unless "(1) there is no bona fide relationship between Delaware and the defendant; (2) there is a related first-filed case in another district; or (3) the defendant is truly a regional enterprise." Quantum Loyalty Systems, Inc. v. TPG Rewards, Inc., C.A. No. 09-022-SLR, Memo. Order, at 4 (D. Del. Apr. 2, 2009). Although these parties had been involved in earlier litigation, that case involved Lanham Act and other false advertising claims, and the instant case involves patent claims. Furthermore, the defendant here is a Delaware corporation located within the same "region" as Delaware. Id.

Although the defendant argued inconvenience of the parties and potential witnesses, Judge Robinson noted the "general courtesy" in Delaware that witnesses "shall be deposed in the city where they work." Id. at 5.

Quantum Loyalty Systems, Inc. v. TPG Rewards, Inc., C.A. No. 09-022-SLR, Memo. Order, at 4 (D. Del. Apr. 2, 2009).

Some Notes from Judge Robinson on Reexamination:

- A prosecution bar will not extend to counsel (for either party) involved in a reexamination proceeding as neither party's confidential information is relevant to that proceeding.

- Amendments and revisions to claims during reexamination are considered admissions regarding validity. The Court will consider any inconsistent positions (that is between the litigation and the reexamination) and the effects of any admission on "an appropriate motion."

Kinexa Brassring Inc. v. Taleo Corp., C.A. No. 07-521-SLR, Memo. Order (D. Del. Feb. 18, 2009).

Last week, District Judge Sue L. Robinson rejected a party's attempt to stave off a timely motion to amend on the grounds of futility:

"I generally reject such futility arguments if they present substantive disputes, either of the law or of the facts. In other words, if matters are pleaded consistent with Rules 8 and 9(b) of the Federal Rules of Civil Procedure, the substantive merits of allegations made in either an amended complaint or an amended answer should be tested through a substantive motion (pursuant to, e.g., Rules 12(b)(6) or 56), not a procedural one."

In the underlying litigation, the defendant's government-use defense "clearly presents issues of fact and law" that are not appropriate for resolution "in this procedural posture."

JP Morgan Chase & Co. v. Affilliated Computer Services Inc., C.A. No. 08-189-SLR (D. Del. Mar. 4, 2009) (Robinson, J.).

Under the PTO's patent-examining manual, applicants "have a duty to bring to the attention of the Office any material prior art or other information cited or brought to their attention in any related foreign application." According to yesterday's decision by district judge Sue L. Robinson, however, this duty is tempered by the materiality standard:

"The question remains, how material is a declaration disclosed in foreign patent proceedings, where neither the declarant nor the testing has not been vetted through the discovery process and where the declaration was not ultimately sufficient to invalidate the European counterpart?"

Answering in the negative, the Court found that "such a declaration is not material and, therefore, irrelevant . . . ."

Takeda Pharma. Co. Ltd. v. Teva Pharma. USA Inc., C.A. No. 07-331-SLR (D. Del. Mar. 4, 2009) (Robinson, J.).

Another guest post by our colleage, Pilar Kraman :

On February 20, 2009, Judge Robinson issued an opinion granting in part and denying in part defendant Abbott Laboratories’ motion to dismiss. Ethypharm S.A. France v. Abbott Laboratories, C.A. No. 08-126-SLR, Memo. Op. (D. Del. Feb. 20, 2009). The plaintiff, a French pharmaceutical company, alleges in its complaint that the defendant, a U.S. pharmaceutical company, interfered with plaintiff’s U.S. licensee from marketing and selling plaintiff’s product in the United States. The defendant sought to dismiss all of plaintiff's claims, including antitrust claims under sections 1 and 2 of the Sherman Act; and common law claims for unfair competition, tortious interference with existing or prospective business relations, tortious interference with contract, and restraint of trade.

The Court denied the defendant’s motion to dismiss the plaintiff’s Sherman Act claims. In doing so, the Court answered affirmatively the question “whether a foreign name-brand drug manufacturer, which does not itself market and distribute its product in the United States but does so through an exclusive United States distributor, is entitled to avail itself of the protection of the antitrust laws . . . .” Id. at 6. The Court held that plaintiff’s participation in the U.S. market through its third party U.S. licensee entitles plaintiff to challenge the defendant’s conduct with respect to the plaintiff’s licensee. Moreover, the defendant’s actions related to the plaintiff’s licensee “indicate an intent to harm [the plaintiff], if anyone.” Id. at 10.

Ethypharm S.A. France v. Abbott Laboratories, C.A. No. 08-126-SLR, Memo. Op. (D. Del. Feb. 20, 2009).

In the District of Delaware, parties with nationwide operations are often unsuccessful in seeking transfers out of the jurisdiction. This is especially true when Delaware corporations are involved. But a decision today by district judge Sue L. Robinson reminds litigants that the scope of operations can also favor a convenience transfer:

"Generally, I do not grant transfer motions unless there is a first-filed case in another district . . . or the defendant is truly a regional enterprise. Under the circumstances at bar, I find that defendant . . . is more akin to a regional enterprise than a national player. Therefore, I find it is appropriate to transfer the above captioned case to the Northern District of California, for the convenience of parties and witnesses and in the interest of justice."

The Court's focus on the movant's regional nature is consistant with another recent transfer decision, reported by us in August 2008.

Synthes USA LLC v. Spinal Kinetics Inc., C.A. No. 08-838-SLR (D. Del. Feb. 24, 2009) (Robinson, J.).

A great area of discussion since the Supreme Court's decision in Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007) has been whether the bare bones pleading requirements typically seen in a patent infringement complaint would be sufficient or whether more detail would be required. The District of Delaware, following Federal Circuit precedent, has confirmed that a complaint alleging infringement based on Fed. R. Civ. P. Form 18 (2006) will be sufficient to survive a motion to dismiss. S.O.I.TEC Silicon On Insulator Technologies, S.A. v. MEMC Electronic Materials, Inc., C.A. No. 08-292-SLR, Memo. Order (D. Del. Feb. 20, 2009). The Court found that a plaintiff does not need to specify particular products or manufacturing details nor does a plaintiff need to set forth specific factual allegations in support of a claim for willful infringement. Id. at 3-4.

S.O.I.TEC Silicon On Insulator Technologies, S.A. v. MEMC Electronic Materials, Inc., C.A. No. 08-292-SLR, Memo. Order (D. Del. Feb. 20, 2009).

A recent decision by district judge Sue L. Robinson wades into the sometimes murky waters of inventorship. In the underlying litigation, Vanderbilt sought to add several of its professors as inventors to a chemical-compound patent held by ICOS. The requisite test, however, sets a high bar. Not only must plaintiffs demonstrate inventorship by clear and convincing evidence, but they must also navigate, as defined by the Federal Circuit, the "line between actual contributions to conception and the remaining, more prosaic contributions to the inventive process that do not render the contributor a co-inventor . . . ."

According to the Court, Vanderbilt failed to show an "actual contribution," and thus did not meet the clear and convincing standard. By doing so, the Court illustrated, at least in chemical cases, how best to draw the inventorship line:

"Ultimately, [. . . precedent] precludes the result plaintiff seeks: namely, that the contribution of a molecular scaffold in the context of one molecule . . . renders the disclosing party or parties inventors of a different family of molecules containing the same scaffold . . . . The chemical arts have frequently been characterized by the courts as 'unpredictable.' Minor modifications to a compound may drastically alter its properties and effectiveness; when isolated, particular portions of a molecule are likely to exhibit different chemical properties. For these reasons, the Federal Circuit has indicated that inventorship must be measured in terms of the complete chemical structure claimed as compared to its functional components, just as the validity and the scope of claims to chemical compounds are measured in terms of the complete chemical structure (and very close structural equivalents). The court declines to expand the reach of 35 U.S.C. 116 in the manner espoused by plaintiff."

Vanderbilt University v. ICOS Corp., C.A. No. 05-506-SLR (D. Del. Jan. 27, 2009) (Robinson, J.).

Should a defendant have to pay interest on interest? Judge Robinson, in Trueposition Inc. v Andrew Corporation, answered yes. C.A. No. 05-747-SLR, Memo. Order (D. Del. Jan. 28, 2009). The Court ordered that under Third Circuit case law and 28 U.S.C. 1961, post-judgment interest should be calculated on the judgment plus prejudgment interest. Id. at 2. The imposition of this additional interest from a policy standpoint, helps to avoid rewarding defendants for delaying litigation. Id. The post-judgment interest award, however, does not begin to accrue until the date of the Court's order setting damages, not the entry of judgment following the jury verdict. Id. at 3. Finally, the Court declined to award post-judgment interest on the enhanced damages award. Id. at 3-4. Unlike prejudgment interest which is compounded quarterly and at the prime rate, post-judgment interest is calculated at a rate equal to the "weekly average 1-year constant maturity Treasury yield, as published by the Board of Governors of the Federal Reserve System for the calendar week preceding." Id. at 4.

Trueposition Inc. v Andrew Corporation, C.A. No. 05-747-SLR, Memo. Order (D. Del. Jan. 28, 2009).

In Internet Media Corp. v. Dell, Inc., Judge Robinson construed the following terms used in a patent for technology related to providing access to the World Wide Web:

(1) "a published compilation of preselected Internet locations";
(2) "a predetermined published Internet location";
(3) "a unique predetermined mult-digit jump code."

Internet Media Corp. v. Dell, Inc., C.A. No. 05-633-SLR, Memo. Order (D. Del. Jan. 14, 2009).

As part of an aggressive litigation strategy developed to manage and assert its intellectual property, defendant Rambus Inc. implemented a document retention policy – one meant to protect its intellectual property. Much to their chagrin, however, the District of Delaware has found that this policy, in fact, caused the company to destroy such crucial evidence to its infringement claims that the only proper sanction would be to hold the patents-in-suit unenforceable. Micron Technology, Inc. v. Rambus, Inc., C.A. No. 00-792-SLR, Opinion (D. Del. Jan. 9, 2009). As part of the implementation of the new document retention policy, Rambus held company-wide “shred days” during which employees would shred documents pursuant to the policy. Id. at 13-14. Outside prosecution counsel was even asked by Rambus to purge their files for issued patents except for documents that were part of the official record. Id. at 17. The Court found that a duty to preserve potentially discoverable evidence arose when the company “articulated a time frame and motive for implementation of the Rambus litigation strategy” and because the document retention policy was adopted as a part of this strategy, Rambus “knew, or should have known,” that such a policy would destroy potentially relevant and material documents and therefore such behavior was inappropriate. Id. at 31-32.

Plaintiff Micron Technology had asserted claims of patent misuse and inequitable conduct, along with others against Rambus Inc. These claims, by their nature, are often established using non-public, internal documents from the patentee. The fact that these types of documents were included in the destroyed documents at Rambus would cause Micron extreme prejudice in trying to prove its case which the Court notes, “has been compounded by Rambus’ litigation conduct, which has been obstructive at best, misleading at worst.” Id. at 33.

The Court further found that typical sanctions such as adverse jury instructions or the preclusion of evidence would be “impractical, bordering on meaningless, under these circumstances and in the context of a typical jury trial.” Id. Judge Robinson stated that “[T]he spoliation conduct was extensive, including within its scope the destruction of innumerable documents relating to all aspects of Rambus’ business; when considered in light of Rambus’ litigation conduct, the very integrity of the litigation process has been impugned.” Id. Therefore, the Court found the only appropriate sanction to be declaring the 12 patents-in-suit “unenforceable against Micron.” Id.

Litigants in this district should be reminded that the discovery process and claims of spoliation are taken very seriously here. In fact, Judge Robinson, in this case held a bench trial just on the issue of spoliation and unclean hands. Id. at 1. No one disputes that document retention policies are critical, particularly in today’s electronic world, but one should beware of the timing and motive of the company when implementing such a policy particularly when litigation or an aggressive licensing strategy is part of the company’s business.

Micron Technology, Inc. v. Rambus, Inc., C.A. No. 00-792-SLR, Opinion (D. Del. Jan. 9, 2009).

Judge Robinson recently denied Girafa.com, Inc.'s motion for a preliminary injunction in its patent infringement lawsuit against Amazon.com, Inc. and other web services for their alleged use of "thumbnail" technology in violation of Girafa's patent. Girafa.com, Inc. v. Amazon.com, Inc., C.A. No. 07-787-SLR, Memo. Order (D. Del. Dec. 9, 2008). The Court declined to adopt any of plaintiff's proposed claim constructions at this informal stage and therefore found that plaintiff failed to show a likelihood of success on the merits. Id. at 9. In addition, the Court found that plaintiff would not suffer irreparable harm because they could not demonstrate that the loss of business was a direct result of defendants' competitive conduct. Id. at 9. Finally, the accused defendants that were part of the preliminary injunction motion began using the technology almost 2 years before Girafa filed its motion. The Court found that this delay, though not dispositve, was evidence that could be weighed in evaluating the harm to the parties. Id. at 9.

Girafa.com, Inc. v. Amazon.com, Inc., C.A. No. 07-787-SLR, Memo. Order (D. Del. Dec. 9, 2008).

In a recent decision addressing a licensee's right to a jury trial, District of Delaware Judge Sue L. Robinson granted a patentholder's motion to strike a jury demand. The underlying complaint sought a declaration of non-infringement and invalidity. In lieu of damages, the parties agreed beforehand that the corpus of an earlier escrow agreement would be distributed according to the resolution of the litigation.

This arrangement, according to the Court, did not constitute a "money demand" sufficient to support a jury trial:

"[The escrow agreement] provides that when this action is concluded, Medtronic will cause distribution of the total amount in the [escrow account] . . . . If Medtronic wins, it can recover the portion of the escrow corresponding to non-infringing products. If MFV wins, Medtronic must continue to pay royalties. No damages are contemplated."

For purposes of the Seventh Amendment jury trial right, the Court made a distinction between a monetary demand and the simple receipt of funds stemming from litigation: "The fact that, if it is successful, Medtronic may ultimately get money . . . does not render Medtronic's claims 'legal' by their nature."

In an IP landscape dominated by license agreements, this decision helps settle the boundaries of the Seventh Amendment in patent litigation.

Medtronic Inc. v. Boston Scientific Corp. et al., C.A. No. 07-823-SLR/LPS (D. Del. Nov. 21, 2008) (Robinson, J.).

For those contemplating the introduction of an adverse expert's deposition testimony, District of Delaware Judge Sue L. Robinson has issued a roadmap. In its memorandum order, the Court adopted, by reference to another Delaware court, the following theory of expert testimony:

[T]he fact that a party has control over whether or not to introduce the expert and [the] testimony supported by him, and the fact that a party has the right to choose the expert in the first place, certainly adds credence to the theory that an agency relationship exists between the expert and his supporting party. Given that dynamic, it is unclear why a statement made by an expert in the course of his testifying on behalf of a party, which is adverse to that party, should not be admissible against that party.

Although as a result "there are no absolute evidentiary obstacles" to the use of these expert depositions at trial, the Court cautioned that other barriers remain. As enumerated in the decision, included among these are a variety of considerations under FRE 403 and 802.

Teva Pharma. USA Inc. v. Abbott Labs., C.A. No. 02-1512-SLR (D. Del. Nov. 5, 2008) (Robinson, J.).

On Wednesday, District Judge Sue L. Robinson emphasized, as earlier D. Del. cases have, that inadequately pleaded state-law claims in patent cases will not be tolerated. In the underlying infringement litigation, plaintiff sought redress for trade-secret misappropriation and a variety of other state-law business torts. On a motion to dismiss, the Court explained that plaintiff's general allegations of theft and interference could not survive the Supreme Court's Twombly pleading standard.

On the trade secret count, the Court rejected as insufficient the assertion that defendant, after exposure to plaintiff's product via a customer, "seemed to develop the [new] product surprisingly quick[ly]." Similarly, the intentional interference count - and, by extension, the unfair competition claims - could not survive: "Accenture was not required to plead the precise nature of Guidewire's interference with its business opportunity, but it was required to allege some wrongful or improper conduct vis-a-vis . . . the only customer mentioned in Accenture's complaint."

The lesson? When considering whether to add state-law claims to an infringement complaint, make sure the details, independent of the infringement, are there.

Accenture Global Services GMBH v. Guidewire Software Inc., C.A. No. 07-826-SLR (D. Del. Oct. 8, 2008) (Robinson, J.).

The U.S. Supreme Court's decision in eBay, Inc. v. MercExchange, LLC continues to make it difficult to obtain injunctive relief. Judge Robinson, in Wellman, Inc. v. Eastman Chemical Co. , found that even if plaintiff had demonstrated a likelihood of success on the merits (which they did not), the court would not find irreparable harm. C.A. No. 07-585-SLR, Memo. Order (D. Del. Oct. 3, 2008). Wellman and Eastman were direct head to head competitors and plaintiff argued that one of the factors that forced it to file for Chapter 11 bankruptcy protection was the defendant's infringement of their patent. The court agreed that that plaintiff was "suffering financially" and the parties were direct competitors but stated that plaintiff did not dispute that the patented product only accounted for a small percentage of their business and they did not demonstrate that the loss of business was directly related to sales of the patented technology. The Court denied the motion for preliminary injunction finding that money damages would be a sufficient remedy. Id. at 5-6. Wellman, Inc. v. Eastman Chemical Co. , C.A. No. 07-585-SLR, Memo. Order (D. Del. Oct. 3, 2008).

Earlier this year, we reported on a licensee-standing decision by Magistrate Judge Leonard P. Stark. In that decision, the Magistrate Judge recommended that a licensee operating under an agreement subject to "pre-existing nonexclusive licenses" could nonetheless pursue litigation as an exclusive licensee. In a recent order, District Judge Sue L. Robinson has, for the most part, adopted that report.

In recognizing the licensee's standing to sue, however, the Court made explicit its thoughts on determining exclusivity:

"Defendant argues that the intent of the parties is not dispositive. I agree. Intent is but one factor a court looks to in determining whether a license agreement confers to the licensee a legally protected interest in the patent. The license at issue is an expression of plaintiffs' intent to grant . . . an exclusive license . . . ; therefore it is a factor that weighs in favor of finding standing."

Accordingly, it is the "entire license agreement," not just the parties' characterizations, that controls the inquiry.

TV Guide On-Line Inc. v. Tribune Media Services Inc., C.A. No. 05-725-SLR/LPS (D. Del. Sept. 30, 2008) (Robinson, J.).

District Judge Sue L. Robinson has modified a recent damages order, reported by us last month, that accounted for the award's tax treatment:

"It is apparent from the papers submitted that the appropriate method of calculating prejudgment interest based on after-tax damages is fraught with opportunities for mischief. Indeed, each party has employed a different analysis in computing this aspect of the damages award. Under the circumstances, the court has determined that its attempt to adjust for taxes was ill conceived and, therefore, will adopt Cordis' computation of prejudgment interest, which (according to Medtronic) is consistent with a pre-tax assessment."

Cordis Corp. v. Medtronic Vascular Inc., C.A. No. 97-550-SLR (D. Del. Sept. 30, 2008) (Robinson, J.).

Thanks to Bob Matthews at Latimer Mayberry in Virginia for sending us a recent case similar to Judge Robinson's fees decision, posted below. Just two days before the Delaware decision issued, the Northern District of Ohio reached the same conclusion: "A finding of inequitable conduct regarding the '346 patent, even if made during the fee hearing, would compel a finding that the patent is invalid, notwithstanding that this issue was previously eliminated from the case by Vector's dismissal."

The result? Just as in the Delaware case, a prevailing party could not raise enforceability via a fees motion.

Euclid Chem. Co. v. Vector Corrosion Techs., Inc., C.A. No. 01:05 cv 80 (N.D. Ohio Sept. 24, 2008).

On Friday, District Judge Sue L. Robinson resolved an atypical motion for attorney fees. By its motion, a prevailing defendant sought reimbursement on the ground that plaintiff alleged inequitable conduct rendered the subsequent litigation frivolous. The catch? The Court never actually ruled on the unenforceability issue:

"Given the fact that plaintiff's claims of infringement asserted against defendants have been dismissed with prejudice, defendants are asking me to make a substantive determination as to the validity of a patent, under the guise of a motion for attorney fees, when a court would not otherwise have jurisdiction to do so. I decline to undertake such an analysis."

Novo Nordisk A/S v. Sanofi-Aventis, C.A. No. 05-645-SLR (D. Del. Sept. 26, 2008) (Robinson, J.).

Last week, a jury returned a verdict for Plaintiff Siemens Medical Solutions, USA, Inc. finding that Saint-Gobain Ceramics & Plastics infringed U.S. Patent No. 5,525,905 related to technology used in PET scanners (medical imaging scanners). Although the jury did not find willful infringement, the total compensatory damages awarded were $52.3 million. Siemens Medical Solutions, USA, Inc. v. Saint-Gobain Ceramics & Plastics, C.A. No. 07-190-SLR, Jury Verdict (D. Del. Sept. 25, 2008).

Another plaintiff's verdict in the District of Delaware...

For a copy of the verdict form see here.

District Judge Sue L. Robinson has issued a decision in the long-running Cordis/Medtronic litigation clarifying the standards and procedures surrounding several damages issues common to patent litigation.

In yesterday's memorandum opinion, the Court first addressed pre-judgment interest, holding that the proper measure is the prime rate of interest, rather than the U.S. treasury-bill rate, compounded quarterly. The Court also considered the award's tax treatment, noting that because "taking into account the tax consequences of a damages award best reflects reality," the final interest award should be based on the "after tax amount of damages."

Finally, the Court rejected a request for a new damages trial based on an intervening arbitration decision that recognized the defendant as a licensee. According to the Court, an earlier stipulation of infringement in the litigation precluded such a request: "The Court declines to allow [defendant] out of its agreement based on later, business-related proceedings of which it was not a part."

Cordis Corp. v. Medtronic Vascular Inc., C.A. No. 97-550-SLR (D. Del. Sept. 15, 2008) (Robinson, J.).

In a recent simple, and straightforward opinion, Judge Robinson granted a plaintiff's motion to exclude expert testimony where the expert report relied on knolwedge of work done for a government agency which was not able to be disclosed. Siemens Medical Solutions USA, Inc. v. Saint-Gobain Ceramics & Plastics, Inc., C.A. No. 07-190-SLR, Memo. Order (D. Del. Aug. 20, 2008).

A constant theme in opinions resolving disputes over discovery is fairness and this opinion was no exception. Judge Robinson stated that her analysis need only "start and end" with the "fundamental principle of fairness." Id. at 2. The expert in this case was employed by a government agency and prohibited from producing his work product. His expert report in the litigation, however, relied on his recollection of some of this government work. The court found that the expert cannot rely on the recollection of this work product where the work product itself is otherwise shielded from discovery. Id.

For a copy of the opinion see here.

In another example of the difficulty of obtaining summary judgment in Delaware, district judge Sue L. Robinson has refused to invalidate a network-security patent on the grounds of anticipation and obviousness. By doing so, the Court also highlighted the importance of presenting one's case on summary judgment.

Examining the allegedly anticipating prior art, the Court concluded that "arguabl[e]" differences of scale created an "unclear" record. In a footnote, the Court then equated this lack of clarity with a failure to satisfy the controlling clear-and-convincing standard of review. As a result, the Court declined "to find through a motion practice" that the prior art anticipated the patent-in-suit. For substantially the same reasons, the Court also rejected the obviousness contention.

The import of the decision? When arguing (or defending) invalidity, an essential part of the litigation strategy includes mitigating (or creating) doubts in the Court's mind about the prior art.

SRI Int'l Inc. v. Internet Security Systems, C.A. No. 04-1199-SLR (D. Del. Aug. 21, 2008) (Robinson, J.).

In an unusual outcome in the District of Delaware, a transfer motion has been granted. In a recent opinion, district judge Sue L. Robinson found that two affiliated defendant-companies, both located in Arizona, had overcome the strong presumption in favor of a plaintiff's choice of forum. The winning argument? Defendants' statement that, with only twelve employees and officers, litigating in Delaware potentially could result in the firms' failure:

"According to defendants, the absence of these officers and/or employees from their employment would be incredibly damaging to [its] nascent business operations and could possibly result in the business losing substantial revenue and/or failing. . . . In sum, defendants present themselves as small, regional businesses; weighing the convenience of the parties under the circumstances of record, the court agrees that maintaining the litigation in Delaware presents significant hardships to defendants."

Defendants often unsuccessfully assert inconvenience based on a lack of employees or records located in Delaware. This case is a rare example of the circumstances in which hardship stemming from location alone drives the transfer analysis.

L'Athene Inc. v. EarthSpring LLC, C.A. No. 08-114-SLR (D. Del. Aug. 7, 2008) (Robinson, J.).

Infringement actions often provoke a raft of counterclaims that assert non-patent theories, including business-competition torts. When a party pursues these unfair competition claims, however, the plaintiff retains some doctrinal immunity from suit. And, according to District of Delaware Judge Sue L. Robinson, this immunity extends to a party that relies on a "weak" but untested patent

In a recent post-trial decision, the Court assessed a defendant's unfair competition counterclaims in light of the so-called Noerr-Pennington doctrine, a judicially created immunity that bars application of the antitrust laws to those who petition the government for redress. The patentee, a generic manufacturer, had acquired a patent of questionable validity on the subject drug as a hedge against other competitors in the generic market. After initiating the underlying litigation, defendant responded with unfair competition, tortious interference, and antitrust counterclaims.

Analyzing the patentee's claims of immunity from suit, the Court criticized the business motives that led to the acquisition of the weak patent:

"The inference to be drawn from this chronology is that, instead of directing its efforts to launching a generic, [patentee] obtained and relied upon an admittedly 'weak' patent for protection from other generic competition."

Noting that even a questionable patent "enjoys a presumption of validity," however, the Court held that the infringement litigation could not be characterized as a sham suit. The Court highlighted the fact that no tribunal had invalidated the patent:

"The validity of the '183 patent has not be adjudicated by any court (or the USPTO on reexamination). This court has no occasion to judge the merits of [defendant's] invalidity arguments, and declines to issue a finding that [the patentee] 'should have known' of its patent's invalidity absent such findings."

The lesson? Until an objective basis exists for invalidity - i.e., a court or agency ruling - the infringement plaintiff will enjoy Noerr-Pennington immunity.

Braintree Labs. Inc. v. Schwarz Pharma Inc., C.A. No. 03-477-SLR (D. Del. July 31, 2008) (Robinson, J.).

In what Judge Robinson believed to be a first impression issue before her, she recently denied a motion to transfer where "neither the parties nor the patents" were identical. Cisco Systems Inc. v. GPNE Corp., C.A. No. 06-671-SLR, Memo. Order, at 5 (D. Del. Apr. 17, 2008). Defendant, GPNE, moved to transfer this declaratory judgment litigation to the Eastern District of Texas where they had earlier filed two patent infringement lawsuits. The first lawsuit in Texas was filed against one set of defendants and settled early on in the litigation. The second lawsuit was filed against another group of defendants and remains pending only against one defendant, and involves only one of the patents-in-suit that was asserted in the Delaware litigation but involved different technology. Id. at 2. (Neither Texas lawsuit involved the declaratory judgment plaintiffs who filed suit in Delaware.)

GPNE argued that once the Eastern District of Texas obtained "possession of the subject matter" of the dispute, the later-filed litigation should be subject to transfer under the "first-filed" rule. Id. Judge Robinson stated that she found "remarkable the assertion that a court obtains 'possession of a subject matter' of a patent as soon as a single case involving that patent is filed in that jurisdiction" and therefore denied the motion to transfer. Id. at 5.

A note for all those who may draft a motion to transfer before Judge Robinson in the future…"absent a truly regional defendant or critical witnesses that cannot be compelled to attend trial, Delaware (especially for a Delaware corporation…) is at least as convenient as any other forum."

For a copy of the opinion click here.

In weighing a patent licensee's standing to sue for infringement, Courts often look to whether the license is exclusive and conveys all substantial rights, including the privilege to sue. But what happens when the license in question apportions the litigation right between licensor and licensee? According to District of Delaware Judge Sue L. Robinson, the licensee alone has no standing to bring suit.

The contract in question required the licensee to notify the licensor of any third-party infringement. If the licensor did not file suit within ninety days, then the licensee would be free to initiate its own action against the third party. Therein lies the problem:

While the License clearly gives [licensor] the exclusive right to sue during the first 90-day period, there is no specific, reciprocal language giving [licensee] the exclusive right to sue after the first 90-day period.

Because the licensor failed to transfer "all substantial rights" in the patent, the licensee lacked standing to sue alone. Ultimately, however, the Court suggested a cure: add the licensor as a named plaintiff.

Siemens Medical Solutions USA Inc. v. Saint-Gobain Ceramics & Plastics Inc., C.A. No. 07-190-SLR (D. Del. March 7, 2008) (Robinson, J.).

In a recent memorandum order, District Judge Sue L. Robinson summarily rejected a request to jettison a party's inequitable conduct defense. Recognizing that "arguments made to the PTO can form the basis for inequitable conduct defenses under certain circumstances," the court denied a motion to dismiss without prejudice to renew.

At least at the motion to dismiss stage, the defendant's claim that attorney argument made to the examiner involved intentional falsehoods about a material reference must stand.

Elan Corp. v. Teva Pharma. USA Inc., C.A. No. 07-552-SLR (D. Del. March 7, 2008) (Robinson, J.).

In the ongoing battle between Boston Scientific Corporation, Johnson & Johnson Inc. and Cordis Corporation, the District of Delaware recently handed BSC a victory, allowing it to proceed in four declaratory judgment actions each seeking a judgment on invalidity on one of four patents related to drug-eluting coronary stent technology. Boston Scientific Corporation v. Johnson & Johnson Inc. and Cordis Corporation, C.A. Nos. 07-333-SLR, 07-348-SLR, 07-409-SLR, 07-765-SLR, Memo. Op. (D. Del. Jan. 24, 2008). BSC manufactures a private-labeled version of a stent manufactured by Abbott Laboratories. There are four lawsuits currently pending in the District of New Jersey where Johnson & Johnson asserts infringement of the same four patents at issue in the Delaware litigation, however, the defendant in those cases is Abbott Laboratories.

Johnson & Johnson moved to dismiss all four actions for failure to allege imminent harm necessary for declaratory judgment jurisdiction and also moved to transfer the four cases to the District of New Jersey where its earlier-filed cases are pending.

The Court found that J&J's Jekyll & Hyde jurisdictional argument was not enough to warrant dismissal of the actions. In the District of New Jersey actions, J&J accuses Abbott Laboratories' stent product (identical to that of BSC) of infringing the same patents-in-suit despite the fact that Abbott's product was pending launch in 2008 and was only pending FDA approval. In moving to dismiss the Delaware actions, J&J argued that there could not be declaratory judgment jurisdiction because BSC is not currently marketing or selling the stent (although it has announced its intention to start selling in 2008) and is still awaiting FDA approval. Judge Robinson stated that J&J "can not have it both ways" and therefore denied their motions to dismiss

The Court further denied J&J's motions to transfer the cases to the District of New Jersey where its four earlier filed cases against Abbott are pending. The Court found so, even though the actions pending in the D. N.J. involve the same patents, the same accused products and the same legal issues. Judge Robinson acknowledged that BSC need not have been a party to the earlier filed litigation for the "first-filed" rule to apply, however, in its discretion the prejudice to BSC should the action be transferred was too great. The New Jersey court has yet to set a trial date where the Delaware cases have a trial date and schedule in place so BSC will be able to proceed without delay on its claims. Judge Robinson found J&J's argument on the risk of inconsistent rulings on the legal issues to be "entirely speculative" at this time and therefore not persuasive for transfer. Applying the remainder of the Jumara factors, the Court found that the cases should remain in Delaware.

And the battle rages on…

An accused device infringes under the doctrine of equivalents when, among others, the alleged equivalent represents an "insubstantial" change from the claim language. Uncertainty arises, however, when the equivalent is itself patented. Would a finding of equivalence amount to a declaration that the patent covering the accused device is invalid? Perhaps to avoid this outcome, the Federal Circuit has held that a finding of equivalency in this scenario is "considerably more difficult to make out," albeit not necessarily foreclosed.

In a recent opinion, district judge Sue L. Robinson faced, and declined to wade into, this separate patentability issue in the preliminary-injunction context. Acknowledging that the equivalent's patented status is evidence that it was "previously unknown and/or non-obvious," and that customers in the field accepted the interchangeability of the compounds in issue, the Court nonetheless rejected the notion that plaintiff could show a likelihood of success on the merits.

According to the Court, defendant has a "strong argument" that, as a matter of law, the equivalent is both novel and substantially different from the asserted invention. "To the extent that 'known interchangeability' can coexist with separate patentability, plaintiff's burden on its preliminary injunction motion is a heightened one."

Perhaps the result would be different had this been an actual finding on the merits?

Siemens Medical Solutions USA Inc. v. Saint-Gobain Ceramics & Plastics Inc., C.A. No. 07-190-SLR (D. Del. Jan. 8, 2008) (Robinson, J.).

Microsoft Corp. v. Alcatel Bus. Sys., C.A. No. 07-090 (D. Del. Dec. 18, 2007).

This case dealt with a violation of Model Rule of Professional Conduct 4.2 by two attorneys from a prominent national firm. The attorneys purchased, on the open market, an Alcatel Communications System that contained certain features at issue in the patent litigation. The system was installed at the attorneys' Washington D.C. offices, and one of the technicians working on the installation identified himself as an employee of Alcatel-Lucent, one of the originally-named defendants in the case. The employee helped install the system, trained the attorneys on how to use the system, and engaged in ongoing conversations with the attorneys about the administration, use, and configuration of the system. The Court noted that the employee was one of only a limited number of engineers at Alcatel with the experience and training to install the system.

As part of the "broad inquiry" into obviousness mandated by the Supreme Court in KSR v. Teleflex, commentators have speculated over the continuing viability of so-called "secondary considerations." Some commentators predict that such considerations are now "elevated in importance." Others question the rubric's continuing relevance, specifically pointing to the Federal Circuit's treatment of a case out of this district.

Given these doctrinal fluctuations, discerning the best proofs for an invalidity case may now be more difficult. One recent decision by Delaware district judge Sue L. Robinson, however, sheds light on one route to proving the secondary consideration of commercial success: news articles.

In its December 4th order, the Court held that a defendant's praise for the accused products, embodied in news articles, can be admitted as admissions of a party so long as the statements "relat[e] to the commercial success of the accused products." Other articles that simply mention the accused product, on the other hand, are inadmissible: it is the party's own statement of praise, not the existence of public information about the products, that controls the evidentiary inquiry.

Callaway Golf Co. v. Acushnet Co., C.A. No. 06-091-SLR (D. Del. Dec. 4, 2007) (Robinson, J.).

One party files an infringement action at 12:01 a.m. in New Jersey. Also at 12:01 a.m., the infringement defendant, precluded from lodging its Delaware declaratory-judgment action by a local rule requiring paper filing of complaints, files instead a motion to consolidate the forthcoming declaratory-judgment action with an earlier-filed action. Under the first-filed rule, which action came first, New Jersey or Delaware?

According to Delaware district judge Sue L. Robinson, the question is moot, as the infringement plaintiff's choice of forum should prevail:

"Even if J&J's 12:01 a.m. filing of the first New Jersey action were to be considered the functional equivalent of Abbott's 8:30 a.m. filing of the 07-259 action in this district (and the court declines to find a 'dead heat' in this instance), the winner of this race to the court house is the true plaintiff, not the declaratory judgment plaintiff, as this court respects the choices made by plaintiffs in choosing this state as a forum and must, therefore, respect their choice of a different forum."

In this case — an action "replete with inferences of forum shopping by both parties" — the orchestrated late-night maneuvering came to naught.

Abbott Labs v. Johnson & Johnson, Inc., C.A. Nos. 06-613-SLR, 07-259-SLR, Memo. Op. (D. Del. Nov. 28, 2007).

Can a dispute resolution provision in a contract between two parties that states that "any dispute arising out of or relating to patents" shall be resolved through negotiations and mediation and should mediation fail to reach a result, either party may institute legal proceedings "but only in the United States District Court of Delaware, and no other" prohibit a party from filing a request for inter partes reexamination? The Court recently answered yes, despite a finding by the USPTO that such a provision is contrary to public policy and therefore the request for reexamination should be honored.

In Callaway Golf Company v. Acushnet Company, C.A. No. 06-091-SLR, Memo. Opinion (D. Del. Nov. 20, 2007), the defendant had entered into a prior settlement agreement with plaintiff's predecessor-in-interest to resolve certain patent claims. Id. at 3. This agreement contained the language described above. Following two attempts at resolving their dispute via mediation, the defendant filed an inter partes reexamination request for each patent at issue in the lawsuit and then plaintiff subsequently filed the instant lawsuit. Callaway Golf moved for summary judgment for breach of contract and Acushnet moved for summary judgment of no breach of contract.

As a threshold matter, the Court found that because the plaintiff, Callaway was a "successor" as defined by the Agreement and further because the parties had previously engaged in two mediations as required by the Agreement that both parties are bound to the terms of that contract. Id. at 24-25.

Callaway, in addition to its summary judgment motion had also filed a petition with the USPTO to vacate the reexamination that was filed by Acushnet based on the provisions in the Agreement. The PTO dismissed the petition for many reasons including that there was no authority for private parties to abrogate the PTO's statutory jurisdiction and that such a provision would be contrary to public policy. Id. at 26. Judge Robinson held that the Court "owes no deference to the PTO's interpretation of the legal effect of the Agreement or, more generally, the legality of a provision that purports to prevent parties from filing inter partes reexaminations' the PTO was clearly within its jurisdiction to dismiss plaintiff's request to halt the proceedings. It does not follow, however, that defendant was not in breach when it filed its inter partes reexamination request in the first instance." Id.

Ultimately, the Court found that because reexamination was not listed as a possible procedure for resolution of a dispute between the parties (only mediation and litigation in the D. Del. were), it is precluded as a possible remedy for any dispute involving the patents-at-issue. Id. at 27. The Court compares such a provision as "akin to a forum selection clause" as it does not effect either party's interest in adjudicating the validity of the patent it just requires them to do so before a Court instead of the PTO. Id. at 28. Finally, the Court finds that such a holding is not against public policy since: (1) the public is not a party to the Agreement and (2) any third party can still challenge the validity of the patents through a request for reexamination. Id. at 29.

An expert witness represents in his expert report that he/she "personally directed" testing and that he/she "prepared and tested" the product when in fact the testing was actually done by personnel of the defendant — what happens with the evidence? Based on a recent ruling by Judge Robinson in Callaway Golf Company v. Acushnet Company, C.A. No. 06-091-SLR, Memo. Order (D. Del. Nov. 20, 2007), such evidence should be excluded.

In that case, the defendant submitted an expert report in support of its invalidity contentions in which the expert represented that he personally directed the preparation and testing of the products. At the deposition of that same expert, he testified that it was actually personnel of the defendant that directed the tests, and that he was not involved at all. The Court found that the expert report did not show any "personal knowledge of any material aspect of the subject matter and cannot be used to confer any indicia of trustworthiness to the test results." Id. at 2. Therefore the evidence of such testing was excluded.

In the statutory double-patenting context, claim domination arises where one patent's claim reads on an invention defined by a more specific claim in another patent. The former dominates the latter because the narrow claim cannot be practiced without infringing the broader claim. Although domination is not per se double-patenting, the doctrine does have its boundaries: a patentee who disclosed ABCXY and claimed ABCX cannot later claim ABCXY beyond the expiration of the patent. This attempt at an extension constitutes double-patenting.

According to district judge Sue L. Robinson, any attempt to meld both tests impermissibly broadens the double-patenting inquiry. In the underlying litigation, the party asserting invalidity contended that double-patenting occurs where the earlier patent discloses and covers the subject matter claimed in the later patent and the evidence reflects that the patentee could have presented the new claims in the earlier prosecution. Or to put it another way: the claims dominate and the patentee already had a chance to claim additional subject matter.

The Court rejected this hybrid test, "unrecognized by any court," on two grounds. First, the test impermissibly adds a new element - opportunity - to the existing precedent, as "only the claims of the patent can be considered as support for a double-patenting rejection." And second, domination alone is insufficient to establish that the two claim sets are "patentably distinct":

[A stipulation that the new claims] cannot be practiced without infringing at least one claim of the [earlier patent] indicates that there is overlapping subject matter; this is not an admission that the sets of claims are not patentably distinct from one another."

Bayer AG v. Dr. Reddy's Labs. Ltd., C.A. No. 04-179-SLR, slip op. at 35-39 (D. Del. Oct. 25, 2007) (Robinson, J.) (quotation formatting altered from original).

Ever since the early seventeenth century, when Lord Coke condemned a playing-card patent for reducing those in the subject trade to "idleness and beggary," the judiciary has been charged with discerning the line between property rights and monopoly. So for patent practitioners, an antitrust decision, even if outside Title 35's domain, is worth noting. Delaware District Judge Sue L. Robinson recently issued such an opinion, providing authority on private antitrust remedies, personal jurisdiction, and venue.

The Court began by rejecting the assertion that an earlier finding of competitive harm in favor of the government necessarily meant that a later private plaintiff also established the requisite injury in the same market. According to the Court, this collateral estoppel argument "impermissibly combines the concepts of causation and injury." In the absence of proof of an injury in fact, there is no avenue by which the Court could "infer that a finding of anticompetitive effects necessarily implies a finding that consumers . . . have been hurt." Relatedly, the Court also questioned the need for a private injunction in addition to one the government had already obtained: "Clearly any [class member] can notify the government of any further antitrust violations by [defendant], regardless of the status of the instant private litigation."

Evaluating several personal-jurisdiction motions, the Court also rejected the claim that "personal jurisdiction in federal antitrust litigation is assessed on the basis of a defendant's aggregate contacts with the United States as a whole." Noting Third Circuit precedent, the Court held that the "national contacts" test applies only to foreign parties. The Court's grasp over a domestic entity is instead determined, as in most other cases, by "traditional long-arm jurisprudence." On the question of venue, however, the Court declined to apply the general venue statute, opting instead for the narrower antitrust provision: "[S]ection 12 of the Clayton Act may not be supplemented with the general venue provisions . . . for purposes of establishing venue for domestic defendants, and must be considered independently of those provisions."

Although the battleground may have now shifted to the Federal Rules of Civil Procedure, among others, the discourse on competition provoked by the Lord Chief Justice perseveres.

Howard Hess Dental Labs. Inc. v. Dentsply Int'l Inc., C.A. No. 99-255-SLR (D. Del. Sept. 26, 2007) (Robinson, J.)

See also Darcy v. Allein, (1603) 77 Eng. Rep. 1260 (K.B.).

In the ongoing battle between Cordis Corporation and Boston Scientific Corporation over stent technology, the District of Delaware recently upheld two jury verdicts while denying Cordis' motion for judgment as a matter of law and motion for a new trial. Cordis Corp. v. Boston Scientific Corp., et al., C.A. Nos. 03-027-SLR, 03-283-SLR, Memorandum Order (D. Del. Sept. 24, 2007).

In June 2005, two separate juries found that various Cordis stents infringe certain claims of two BSC patents. (BSC was also found to infringe certain Cordis patents although this is not relevant to the pending motions and therefore I have not described it in detail.) While the District of Delaware case was pending, the inventor on one of the patents-in-suit filed a separate lawsuit in California relating to an assignment agreement with BSC over one of the patents. As part of that litigation, the California court was required to construe the claims of one of the patents. Cordis now argues that it is entitled to a judgment of non-infringement as a matter of law based on the claim construction argued by BSC in California and ultimately adopted by the court. Judge Robinson acknowledged that the court may revise its "interlocutory" claim construction ruling at any time prior to entry of judgment but refused to do so here. The Court noted that Cordis, significantly, failed to present this claim construction dispute to the the Court prior to this motion as critical to its non-infringement defense.

Cordis also moved for a new trial based on an announcement by the FDA over a year after the jury verdict which, Cordis argued, proved its one stent is "non-thrombogenic" and therefore could not infringe. The Court held that this FDA announcement was not conclusive and only identified a risk that could possibly be due to stent thrombosis. This "speculative" evidence was not enought ot dismiss the case or grant a new trial.

The battle continues…(but not for a while in these cases…as part of this order the Court ruled that it will not entertain any additional motions in these cases until the Federal Circuit issues its decision)

For the first time in the patent context, the District of Delaware has addressed the dismissal framework recently established in the Supreme Court's Bell Atlantic decision.

In a memorandum order issued yesterday, district judge Sue L. Robinson emphasized that although a complaint "does not need detailed factual allegations," the stated entitlement to relief requires "more than labels and conclusions" or a "formulaic recitation of the elements of a cause of action." Relying on both the fact that plaintiff had already successfully sought to amend its complaint and on plaintiff's declaration in response to the motion to dismiss, the Court found that plaintiff pleaded the requisite level of specificity to survive defendant's invalidity contention. The Court also rejected defendant's enforceability and "judge-shopping" rationales.

Beyond the pleading issue, the decision also contributes to the growing body of post-eBay injunction decisions. Addressing the irreparable harm element for preliminary injunctions, the Court definitively put to rest the question of whether, following a finding of likelihood of success on the merits, a presumption of irreparable harm should arise. Rejecting that analysis, the Court concluded that "such a presumption [does] not survive the Supreme Court's analysis in eBay. . . ." As a result, "it remains the moving party's burden to establish that monetary damages could not suffice."

Sun Optics v. FGX, C.A. No. 07-1347-SLR (D. Del. Aug. 2, 2007) (Robinson, J.).

Most commentators agree that the Supreme Court's recent KSR decision effectively broadened the federal courts' inquiry in determining obviousness. But how will this new paradigm affect pending litigation? Chief Judge Sue L. Robinson answered that question in part in a succinct memorandum order on Thursday. At trial, defendants asserted an invalidity defense based on obviousness. The jury disagreed and returned a verdict of infringement. Defendants then moved for judgment as a matter of law, but failed to attack the jury's nonobviousness finding. Herein lies the rub.

When KSR issued several months later, defendants moved for reconsideration of the verdict in light of the Supreme Court's repudiation of the so-called "teaching, suggestion, or motivation" test. The Delaware court declined to reopen the issue, stating that the "question of obviousness in this case was not open for review by this court when KSR issued." Only if the obviousness issue were "still open on direct review" would the Court re-examine the jury's finding in light of the new precedent.

In other words, to preserve the ability to move to reconsider, a party must have put the contested issue before the court in the first place. Relying on the jury's adverse finding alone is insufficient to trigger the retroactive application of new precedent.

Praxair v. ATMI, C.A. No. 03-1158-SLR (D. Del. June 14, 2007) (Robinson, C.J.)

Praxair, Inc. v. ATMI, Inc., C.A. No. 03-1158-SLR (D. Del. June 13, 2007).

In December 2005, a jury returned a verdict in favor of Praxair, finding two of its patents valid and infringed. A bench trial regarding inequitable conduct followed the jury trial. This opinion addresses the inequitable conduct issue.

Praxair asserted three references that were not disclosed to the PTO. The Court found only two of those references were sufficiently material to merit further consideration. Of these two remaining references, only one reference was found to have been intentionally withheld from the examiners of the two patents at issue. Interestingly, the court relied on the high materiality of the omitted reference and the "absence of any explanation for the nondisclosure" to infer an intent to deceive. Op. at 12. The Court found significant the facts that 1) Praxair was using the technology in the omitted reference in its own products for several years before filing the patent applications, and 2) one of the inventors built devices that utilized the technology in the omitted reference. Op. at 12, fn 9.

Moral of the story: If you are a patent prosecutor, this is the type of decision that might make you lose sleep. You ask the inventors to turn over any potentially relevant prior art, but do your words go in one ear and out the other? Maybe the take away is for patent attorneys to put their requests to inventors in writing (if you don't already) – just in case.

In an opinion filed Tuesday, Chief Judge Robinson addressed whether a plaintiff may maintain an action for conversion of property (here, a virus strain) that plaintiff possessed only in copy form. Answering no, the Court found that "conversion cannot lie in the absence of the physical possession of the actual good or chattel owned by the plaintiff."

Thus, "[e]ven if the law supports the proposition that the physical possession of copies of a chattel may be a basis for conversion, the court has found no cases where the chattel sought to be returned was never in the actual possession of the alleged owner."

Because plaintiff possessed stock of the same strain, but not the identical sample, of defendant's strain, plaintiff did not have "physical possession" of the property, and therefore could not pursue its conversion claim.

While the Court rested its decision on grounds beyond the copying issue, its discussion of "physical" and "actual" possession in the context of copies is notable in light of the Supreme Court's recent Microsoft Corp. v. AT&T Corp. decision, which also addressed the issue of liability in tort for duplication of property. Although there are differences (most notably the echoes of international comity running throughout the Supreme Court's opinion), the two cases raise the question of how far liability should extend to products that are easily copied and modified as a matter of course in the relevant field.

In terms of judicial development, the ancient action for conversion has a leg up on the "new" statutory tort of infringement. The Delaware Court reaffirmed the common law principle that possessing the chattel in question is a prerequisite to relief. Perhaps the Supreme Court, in wading through the contours of infringement and its applicability to copies, also gave a nod to this common law possession rule.

Bavarian Nordic A/S v. Acambis Inc., C.A. No. 05-614-SLR (May 15, 2007) (Robinson, C.J.)

<%media(20070425-IMX - 4-24-07.pdf|IMX, Inc. v. Lendingtree, LLC, C.A. No. 03-1067-SLR (D. Del. Apr. 25, 2007). )%>

IMX filed a motion for reconsideration of the Court's previous denial of a permanent injunction pending appeal. As grounds for reconsideration, IMX cited an attempted post-verdict workaround by Lendingtree and design work that preceded the workaround as "ongoing, infringing conduct." Op. at 2. The Court saw the use of this new evidence as grounds for reconsideration as "nonsensical" because a workaround implies that Lendingtree has found a noninfringing alternative rather than a new infringing method. More likely, IMX used this "new evidence" as a way to make its assertion of new case law (a series of district court opinions according to the opinion) to the Court more palatable. Nonetheless, the Court examined the cases cited by IMX and distinguished them on their facts. Of particular concern to the Court was IMX's lack of evidence that either it or the public would be harmed without an injunction pending appeal. Id. at 3-4. Due to Lendingtree's admission that they continued infringing conduct until September of 2006, some nine months after the jury's verdict against Lendingtree, the Court ordered that Lendingtree produce an accounting of their continued infringement to the Court so that the Court may modify the damages award.

Interestingly, this issue of stays pending appeal was dealt with in summary fashion by the Federal Circuit yesterday in the Verizon v. Vonage patent dispute over VoIP internet telephony. The Eastern District of Virginia had granted Verizon's request for an injunction barring Vonage from signing up new customers during the pendency of Vonage's appeal to the Federal Circuit. Vonage argued to the Federal Circuit that the status quo could only be preserved by allowing Vonage to sign up new customers during the appeal. In addition, Vonage noted that district courts are overturned on their claim constructions about 40% of the time (I've seen higher numbers, but 40% is reasonable). Since Vonage was arguing on appeal that the claim construction was incorrect, and, statistically, it had a 40% chance of winning, Vonage asserted the unfairness of permanently damaging its business where it had decent odds of winning on appeal. The Federal Circuit issued a permanent stay of the injunction pending appeal of the claim construction.

Chad�s Editorial Take:

Both of these decisions raise interesting questions about the fairness of entering judgment against adjudged infringers before the Federal Circuit has had the final say on claim construction. Here�s my take: as long as the Federal Circuit (and the Supreme Court by not overturning them) insists on a de novo standard of review for patent claim construction, it makes little sense to grant injunctions pending appeal against accused infringers at the district court level. I know that this stance could hurt patentees that have rightfully prevailed, but the posting of bond could help alleviate this concern. As in the criminal context, I think it is more important to protect the adjudged infringer that ultimately may be found innocent than it is to reward the patentee with immediate gratification for prevailing at the district court level. Ultimately, I think the de novo standard of review must be changed because the district courts are clearly in a better position to construe the patent�s claims than an appeals court working with only a paper record. Until that happens, however, the reality will remain that your success at the Federal Circuit on claim construction is determined as much by the composition of the panel as by the arguments made by the parties on appeal.

In another post-eBay permanent injunction opinion, the Court denied to enter a permanent injunction where the plaintiffs failed to set forth specific reasons why damages in the form of monetary compensation would not suffice and where they did not provide the Court with any details as to what injury it would incur as a result of not receiving a permanent injunction against the defendant. <%media(20070402-Praxair - 03-1158-SLR.pdf|Praxair, Inc. v. ATMI, Inc.)%>, C.A. No. 03-1158 (D. Del. Mar. 27, 2007) (Robinson, J.). The plaintiffs received a jury verdict in their favor finding all asserted patent claims infringed and not invalid. They later sought a permanent injunction to enjoin the use of all infringing products by defendants' customers and a mandatory recall of all infringing products to which it still had title and a voluntary recall on those products where titled had passed. Id. at 4. The products made by the plaintiffs and defendants were in "direct and head-to-head competition" and are the only two of their type on the market. Id. at 3-4. The Court acknowledged that the "quantum of evidence required [to demonstrate the need for a permanent injunction] is relatively unclear," however, the Court still found that the plaintiffs had not met their burden under eBay to be entitled to such a broad scope of relief. The plaintiffs "generally" argued that without an injunction they would lose market share, profits and goodwill but they did not provide or even describe any "specific sales or market data to assist the court" and they did not identify what market share, revenues or customers they have lost to the defendant. Id. at 6. Furthermore, both parties cited to evidence that the products are not critical to either one's "overall corporate success." Id. at 7. The Court therefore denied the injunction but stated that the plaintiffs may renew their motion for injunctive relief after appellate review of the jury verdict. Id.

<%media(20070330-Oracle 06-414 3-26-07.pdf|Oracle Corp. v. Epicrealm Licensing, LP, 06-414-SLR (lead case) (D. Del. March 26, 2007).)%>

The Court denied defendant's motion to transfer venue to E.D. Texas and to consolidate. In 2005, Epicrealm filed three infringement actions in Texas against numerous defendants involving the same patents implicated in this Delaware action. Epicrealm, a patent holding company based in Richardson, Texas but incorporated in Delaware, argued that transferring these two Delaware actions to Texas would save time, money, and judicial resources. In addition, Epicrealm alleged that five nonparty, Texas resident witnesses would be unavailable to testify in Delaware. Oracle, a Delaware entity, is not a party to the Texas litigation. In denying the motion to transfer venue, the Court noted that �it is appropriate for Delaware courts to resolve this dispute between two of its corporate citizens.� Op. at 8. As to Epicrealm�s argument that witnesses could not be compelled to testify live, the Court noted that �much of the testimony presented at trial these days is presented via recorded depositions."

Judge Robinson issued an order today denying a motion for the return or destruction of a privileged document where the document was "used" in a deposition and the protective order provided that the producing party has 3 weeks from the date of disclosure at the deposition to provide notice of inadvertant production. <%media(20070302-In re 318 patent litigation - 05-356-SLR.pdf|In re '318 Patent Infringement Litigation)%>, C.A. No. 05-356 (D. Del. Mar. 1, 2007) (Robinson, C.J.). The movants argued that although they waited until after the three weeks set forth in the protective order to attempt to claw back the document, the delay was excused because the document was not really "used" at the deposition as the protective order requires. The Court held that it does not matter whether the "allegedly privileged portions" of the document are used at the deposition, so long as the document itself it used because notice is the purpose of this type of a provision in a protective order. Id. at 2.

The Court granted the motion, however, as it pertained to a draft licensing agreement written by counsel. Judge Robinson states: "I have consistently held that draft licensing agreements written by counsel are not subject to disclosure." Id.

<%media(20070227-Rimmax II.pdf|Rimmax Wheels LLC v. RC Components, Inc., C.A. No. 06-029-SLR (D. Del. Feb. 21, 2007))%>
Admittedly, this case is pretty much a run of the mill contract dispute. Rimmax ordered some �spinners� from defendant and appears to have paid for part of the order up front. Plaintiff sent defendant a supply agreement, but it was never signed. Defendant produced the spinners to the extent plaintiffs had paid, but refused to produce any more spinners unless plaintiffs paid more money. Defendant claimed that he thought the original sums paid to plaintiff were for all 54 spinners, not just the 34 produced by defendant. Judge Robinson granted summary judgment to defendant on all claims and dismissed the suit. As to the contract claim, the Court found that plaintiff brought forth insufficient evidence to show that it had paid in full for 54 sets of spinners rather than the 34 sets produced. So, the Court enforced the parties� oral agreement to the extent of the part performance but no further. The Court also ruled against plaintiffs on their breach of confidentiality and interference with contractual relations claims for lack of evidence.

So why do I find this case so interesting? I guess I�m just fascinated by spinners. The car/motorcycle stops, but the spinning rims create the illusion of continued motion. Really, how did the inventor come up with this? Perhaps it is the compete lack of utility (and concomitant high level of creativity) that has created my fascination. So I digress�

I was also intrigued by the reference in this decision to utility and design patents that plaintiffs alleged to own. After doing a search at the PTO today, I was surprised to find that Rimmax�s first utility patent on spinners was issued TODAY (dumb luck or fate?) as <%media(20070227-pat7182408.pdf|U.S. Pat. No. 7,182,408)%>. They also hold several design patents. (Actually, none of these patents have been assigned to Rimmax, but instead are held by the inventors individually.) Given the allegations plaintiffs made about how defendant had stolen their intellectual property, I�ll wonder aloud whether a patent infringement suit(s) might follow in the near future?

How specific must the allegations be in a counterclaim for inequitable conduct or affirmative defense of patent misuse to withstand a motion to strike? That was the issue recently before Judge Robinson in the <%media(20070127-Medpointe 2.pdf|Medpointe, Inc. v. Apotex Inc.)%> matter. C.A. 06-164, Memorandum Order (D. Del. Jan. 26, 2007) (Robinson, J.). It is well-established that inequitable conduct and patent misuse must be pled with particularity. The Court held that in order to be so pled, the allegation must "' specify the time, place and content of any alleged misrepresentations made to the PTO or otherwise 'give the defendant [d] notice of the precise misconduct alleged."" Id. (internal citations omitted). Because the defendants identified the misrepresentation and "the basis for asserting knowledge on the part of the applicants� there is nothing vague about 'time, place or content' vis a vis [the inequitable conduct allegation]" and therefore the Court denied the motion to strike.

Where the inventor of the patent-in-suit is a German citizen, former employee of the plaintiff's predecessor and assigned all rights in the invention to his former employee, can he be subject to an "American-style" deposition? As with all things legal, it depends. Or so Judge Robinson recently held in the <%media(20070127-Medpointe 1.pdf|Medpointe Healthcare, Inc. v. Apotex Inc. )%> case. C.A. 06-164, Memorandum Order (D. Del. Jan. 26, 2007) (Robinson, J.).

The defendants in this case were seeking the deposition of a named inventor on the patent-in-suit and German citizen. The inventor was a former employee of an early predecessor company of the plaintiff. Crucial to the Court's decision was the language in the assignment of the inventor's rights to his former employee. The assignment required the inventor to: "�testify in any legal proceedings�" and "�do everything necessary to aid [his former employer] their successors and assigns, to obtain and enforce proper protection for said invention in the United States�" Id. at 2. (Note: the inventor had agreed to be deposed under the Hague Convention.) The Court held that this assignment only required the inventor to "testify in any legal proceedings" only on behalf of his former employer and "only generally obligates" him to "do everything necessary or desirable to aid" the former employer's successors and assigns (such as the plaintiff here). Id. If the assignment had required him to testify in any legal proceeding on behalf of his former employer or their successors or assigns the outcome likely would have been different. The type of broad language at issue here will not require a non-party to participate in an American-style deposition, and therefore the inventor must be deposed under German law via the Hague Convention process.

Also see Chief Judge Robinson's opinion on the issue of patent misuse <%media(4/20070516-Apotex.pdf|here)%>.

In the first post-eBay injunction decision in the District of Delaware, Chief Judge Sue L. Robinson denied, without prejudice to renew, a plaintiff's application for permanent injunctive relief.

In the underlying action between loan-application companies IMX Inc. and LendingTree LLC, plaintiff IMX prevailed before a jury on its infringement claim. But considering the company's request for equitable relief, Chief Judge Robinson refused, in light of the Supreme Court's intervening decision in eBay v. MercExchange, to rule without the benefit of a full record:

"The Court declines to effectively impose a ten-year compulsory license on defendant absent more information, for example, the effects of defendant's infringement on plaintiff's business and of a potential permanent injunction on the public and the marketplace." (slip op. at 47)

According to the Court, IMX should have supplemented its injunction arguments to account for the eBay decision, which came down after submission of the initial round of briefing. As a result, IMX failed to offer the types of evidence the Court sought:

"Plaintiff . . . put forward no evidence of irreparable harm resulting from defendant's infringement, for example, market or financial data, to support its sweeping statements." (slip op. at 43)

Ultimately, the question whether eBay will hamper the frequency in which permanent injunctions have previously been issued must wait for another day: in its Order, the Court granted IMX leave to renew once any appeal on the liability phase is resolved.

<%media(20070111-IMX - Injunction.pdf|IMX v. LendingTree, C.A. No. 03-1067-SLR (D. Del. Jan. 10, 2007) (Robinson, C.J.).)%>

Also yesterday, the Court issued its decision on <%media(20070111-IMX - Inequitable Conduct.pdf|inequitable conduct)%>.

<%media(20070111-Rimmax.pdf|Rimmax Wheels LLC v. RC Components, Inc., C.A. No. 06-029-SLR (D. Del. Jan. 10, 2007).)%>
Judge Robinson refused to transfer this contract dispute from Delaware to the defendant's home state of Kentucky. Despite the location of defendant's witnesses in Kentucky, the Court found the action had a substantial connection to Delaware and refused to disturb the plaintiff's choice of forum. Connections to Delaware included: 1) the plaintiff is a Delaware corporation based in Delaware, 2) the contract at issue has a Delaware choice of law clause, and 3) the defendant sells its products through Delaware dealers. The Court also noted the stage of the proceedings in the opinion-discovery is close to completion and defendant has filed a motion for summary judgment.

For those that don't know, "spinners," according to Wikipedia, are "wheel covers which spin independently of the wheel itself when the brakes are applied." Spinners (also referred to as "ride spinners" or "Sprewells") create the illusion that the wheel is rotating when it is not. The popularity of spinners was initially due to their use in hip-hop music videos, but they have now crossed over into mainstream popularity. The image below was taken from Wikipedia and demonstrates the use of spinners in the music video for the Three 6 Mafia song "Ridin' Spinners." While the spinners at issue in this case are for motorcycles, they are available for virtually any wheeled vehicle.
<%image(20070111-180px-Threesixspinnaz.gif|180|136|)%>

In another transfer decision by the Court, Judge Robinson again stresses that transfer will not be awarded where the moving defendant is a Delaware corporation and has enjoyed the "benefits and protections" of being incorporated here. <%media(20061226-bacardi 06-505-SLR.pdf|Pernod Ricard USA, LLC v. Bacardi U.S.A., Inc.)%>, C.A. No. 06-505-SLR (D. Del. Dec. 19, 2006).

Defendant, Bacardi U.S.A., Inc. (a Delaware corporation) moved to transfer this Lanham Act case to the Southern District of Florida because it alleged that the accused product was sold only in Florida, was distilled in Puerto Rico, the executive offices and business operations of the company are in Miamia and all the press releases at issue in the action originated in Miami. Finally, they argued that individuals with pertinent testimony were elderly and lived in Florida. The plaintiff, an Indiana corporation with its principal place of business in New York, argued that there were commercials done by the defendant that were broadcast into Delaware and the alleged false statements also appeared on internet news sites and in the Wall Street Journal.

The Court denied the motion because "Defendant's complaints about litigating here are outweighed by the fact that Bacardi has enjoyed the benefits and protections of incorporation in Delaware and that the State has an interest in litigation regarding companies incorporated within its jurisdiction." Id. at 7. The Court noted that most of the testimony presented at trial these days is by recorded deposition so that witness inconvenience is not an obstacle to a trial in Delaware and that discovery can be conducted anywhere. Furthermore, expenses and inconvenience incurred for travel to try the case in Delaware will not be overly burdensome where the company conducts a world-wide business. Id. at 8.

Save those invoices: costs for using a private process server to serve summonses and subpoenas are taxable as are reasonable costs for copies of trial exhibits. On the other hand, do not expect to recover costs for deposition transcripts where they were only used to prepare witness examinations or "frivolous motions."

In a non-IP case, Judge Robinson recently ruled on a defendant's motion for review of the clerk's taxation of costs: Federal Ins. Co. v. Bear Indus, Inc., C.A. No. 03-251 (D. Del. Nov. 18, 2006) (Robinson, J.). In that case, Bear Industries received a jury verdict in its favor and subsequently moved for taxation of all costs including: (1) costs for serving summonses and subpoenas using a private process server; (2) costs of deposition transcripts; (3) costs for copying admitted trial exhibits. Judge Robinson held that the costs of serving summonses and subpoenas using a private process server are "generally granted as reasonable expenses," and therefore were taxed against the plaintiff. Id. As to the deposition transcripts, although the Local Rule (L.R. 54.1(b)(3)) allows for taxation of such costs where a "substantial portion of the deposition is admitted into evidence at trial or otherwise used in the resolution of a material issues in the case," defendant's use of the transcripts in this case was to prepare for examining witnesses and to draft motions in limine to exclude each other's expert witness. The Court held that the use of the transcripts in preparation for examining a witness is a "routine use" and not one that is directed to resolving a "material issue in the case." Id. at 2. As to their use in preparing their respective motions to exclude, the Court stated that all of these motions were denied and therefore it "was not inclined to reward any party for filing such frivolous motions." Id. Finally, the Court granted costs for copying admitted trial exhibits where the costs were "adequately supported" but declined to grant costs where the defendant failed to show that the time spent and hourly rate charged by the consultant in preparing certain exhibits/demonstratives were reasonable. Id. at 2-3.

Lessons learned: save those invoices and make sure they contain sufficient detail to support the final costs and demonstrate that those costs were reasonable.

The natural corollary to a patentee's right to exclude, at least in infringement litigation, is the prohibition against monopolistic activities. Thus, when facing a claim of infringement, a competitor-turned-defendant often responds with antitrust accusations. That patent litigation often involves claims under the Sherman Act is commonplace. But assuming both these counts will be considered in a single civil action, what should a court do when only one piece of the litigation has gone up on appeal?

District of Delaware Chief Judge Sue L. Robinson has answered that in those circumstances, efficiency and judicial economy dictate. In <%media(20061109-Syngenta.pdf|Monsanto Co. v. Syngenta Seeds Inc.,)%> Monsanto appealed an earlier ruling addressing the infringement portion of the litigation. Monsanto then sought to stay Syngenta's related antitrust claims. The Court, although noting that the interrelatedness of the parties' claims had been contested, ultimately found that the infringement and antitrust issues possessed "minimal overlap."

Given that it had already issued a rule 54(b) certification on the patent side, the Court found that the most efficient - and fair - way to resolve the entire litigation was to stay the antitrust action pending disposition of the appeal.

The implication for practitioners? A plaintiff's request for leave to appeal early will result, judging by the low "minimal overlap" standard, in a stay of a pending counterclaim.

Yesterday, Chief Judge Sue L. Robinson issued an interesting decision addressing the ability of what is alleged to be a straw plaintiff's attempt to prosecute (and fund) an infringement action on behalf of another. The defendants KBC and others claimed that plaintiff was assigned rights to the patent-in-suit solely "to fund and pursue this suit" on behalf of the non-party assignor, who KBC contended was an indispensable party. According to KBC, such an assignment is "champertous and void."

The Court rejected this argument based on a supplemental brief filed by plaintiff that contained affidavits of the non-party assignor and the original inventors. In those affidavits, the non-parties agreed to be bound by the instant litigation and to refrain from initiating any other actions against the same defendants. The Court found this statement constituted a renunciation of any residual rights to the patent.

Thus, when pursuing or facing a 12(b)(7) motion, an assignor's (or would-be assignor's) testimony can be dispositive.

LP Matthews LLC v. Bath & Body Works Inc. et al., C.A. No. 04-1507-SLR (D. Del. Oct. 19, 2006) (Robinson, C.J.)

Related Opinions Issued Yesterday:

LP Matthews - Claim Construction
LP Matthews - SJ-Infringement
LP Matthews - SJ on Invalidity and Inequitable Conduct

In SRI Int'l Inc. v. Internet Security Sys., Inc., C.A. No. 04-1199-SLR (D. Del. Oct. 17, 2006), Chief Judge Robinson granted defendants' motion for summary judgment on invalidity, finding all of the claims at issue anticipated separately by two references. The more interesting of the two references was posted on an FTP (file transfer protocol) Internet site. In determining whether the reference was a "printed publication" under 102(b), the court looked to the Hall decision and its progeny. The court found that the FTP site was publicly accessible, the address of the site was distributed to members of the art in both presentations and via e-mail, the site was commonly referenced by individuals on Google Groups, and the site was referenced on an online newsgroup. In light of these findings and the court's interpretation of sufficient "indexing" of the reference such that members of the public could locate the paper on the FTP site, the court held the claims at issue invalid and entered judgment in defendants' favor.

In SRI Int'l Inc. v. Internet Security Sys., Inc., C.A. No. 04-1199-SLR (D. Del. Oct. 17, 2006)

Chief Judge Sue Robinson ruled in favor of Sanofi-Aventis in this trademark suit and granted a permanent injunction against defendant's use of the "Advancis" mark. Sanofi-Aventis owned federal registrations for both "Aventis" and "Sanofi-Aventis" (the "Sanofi-Aventis" combination mark was registered after the merger of Aventis and Sanofi-Synthelabo). Sanofi brought claims of trademark infringement, false designation of origin, federal and state trademark dilution, unfair competition, and deceptive trade practices against Advancis. The court, after a lengthy likelihood of confusion analysis, concluded that the relevant consumers were likely to confuse the "Aventis" and "Advancis" marks. The court found in favor of Sanofi on all their claims, except their Federal Trademark Dilution Act (FTDA) claim.

This decision is notable for two reasons: 1) the holding that the combination of marks after a merger does not abandon a mark brought to the merger, nor does it dispose of the goodwill associated with the mark that was brought to the merger (pg. 12) and 2) the court's decision on Sanofi's federal dilution claim would be different under legislation pending the White House's approval (see post below on H.R. 683). As to this second interesting point, we reported on September 29th that amendments to the Federal Trademark Dilution Act had been passed by Congress and were awaiting the President's signature. On October 6, 2006, the President signed this legislation into law. In this case, the court found Sanofi had shown a likelihood of dilution sufficient to satisfy the state dilution claim, but had not shown actual dilution sufficient to satisfy the FTDA under Victoria's Secret. Thus, the change from an actual dilution standard (current law) to a likelihood of dilution standard (H.R. 683) would have enabled Sanofi to prevail on their FTDA claim.

I wonder if prevailing on the FTDA claim would have made any practical difference in this case. I would be interested in anyone's thoughts on this question.

Sanofi-Aventis v. Advancis Pharm. Corp.) C.A. No. 03-1083-SLR (D. Del. Sept. 26, 2006