Yesterday, district judge Sue L. Robinson issued a decision construing two terms and phrases of a patent related to the production of steel. Specifically, the Court construed the following:
"Hot-rolled steel sheet"
"The steel has a very high mechanical resistance"
Of note in the opinion is the procedural posture. At the outset, the Court recounted how the parties "agreed to forego summary judgment practice." Instead, the parties sought and obtained approval of an expedited trial schedule.
In analyzing the summary judgment motions of the parties in Kenexa Brassring Inc. v. Taleo Corp., Judge Robinson needed to address whether the groups of accused products “function in the same manner for purposes of infringement.” C.A. No. 07-521-SLR, Memo. Op., at 9 (D. Del. Nov. 18, 2010). The defendants responded to a contention interrogatory asking why “each” product did not infringe by referring to the products “collectively” and did not explain how any product functioned differently from the other. Id. at 6. The 30(b)(6) designees also testified that they could not think of any distinguishing features between the products. Id. at 6-7. The Court found that defendants “cannot group their products together when asked whether they differ, then turn around and claim that plaintiff has failed to meet its burden of showing that they operate in the same way.” Id. at 10-11.
In QVC, Inc. v. Your Vitamins, Inc., C.A. No. 10-094-SLR (D. Del. Nov. 29, 2010), Judge Robinson granted a motion to transfer in a false advertising case after it was revealed that the parties were bound by an agreement with a forum selection clause and a choice of law provision. Judge Robinson recognized that "Forum selection clauses are presumptively valid and are entitled to great weight," id. at 4-5, and that the other related factors on the whole favored transfer. The case was transferred to the Eastern District of PA.
District judge Sue L. Robinson recently construed the terms of several patents that concern systems and methods for collecting and maintaining information about job applicants. The Court issued its claim construction on seven terms and phrases:
1. "Target data strings"
2. "Each field [being] capable of [accommodating /accepting] . . . [a] data string"
3. "Source data [st]ream"
4. "Displaying a structured form comprised of multiple fields"
6. "Supplemental inquiry form"
7. "Nonuniformly formatted source data streams"
Last week, Judge Robinson granted a motion to stay pending re-examination in Vehicle IP, LLC v. Wal-Mart Stores, Inc., C.A. No. 10-503-SLR (D. Del. Nov. 22, 2010). Citing the September decision in Belden (which denied a motion to stay pending re-examination just before trial), the Court applied a simple three-factor test to determine that a stay is warranted in light of the status of the litigation and the lack of prejudice to the parties. One footnote cited re-examination statistics showing that the average appeal to the patent board takes 234 days, plus an additional 15 months to appeal that determination to the Federal Circuit.
Of note, the Court stated that "[i]f, after six months, the court is not satisfied that the reexamination is moving at a pace whereby reexamination will provide a resolution as promptly as would be otherwise achieved through this litigation, the court may lift the stay." Vehicle, at 5.
Judge Robinson, however, declined to consider the affidavit, holding that it did not "fall within the narrow category of documents considered on a motion to dismiss under Rule 12(b)(6)." Id. at 6 (citing Ricoh Co. v. Oki Data Corp., Civ. No. 09-694-SLR, 2010 WL 3908603 (D. Del. Sept. 30, 2010)). That narrow category includes, among other things, documents attached to the complaint that form the basis of the plaintiff's claims. Eidos, C.A. No. 09-234-SLR, at 3. Without the benefit of the affidavit, the 12(b)(6) motion was denied.
Judge Robinson also refused to convert the motion into a Rule 56 motion for summary judgment, because "there has been no opportunity for reasonable discovery by either party." Id. at 7.
A recent decision by district judge Sue L. Robinson further develops her policy of prohibiting patent-law experts from testifying. As part of a wide-ranging summary judgment opinion - which covers infringement, validity, and enforceability on a number of patents - the Court emphasized that the case presented "no grounds for exception" to this practice:
"The court denies MEMC's motion to admit the expert testimony of [Gooklasian] regarding: (1) 'the context of when and under what circumstances an applicant may make amendments after receiving an [sic] notice of allowance;' (2) 'procedurally how these amendments are evaluated by the [PTO];' and (3) 'how the applicants here avoided substantive examination of the broad claim scope covering all 'ions' by misuing these two types of post-allowance/post-issuance amendment procedures.' "
The Court continued that it "does not allow patent law experts to testify; this case presents no grounds for exception to the court's practice in this regard. As described by MEMC, Gooklasian offers only general guidance about PTO practice. He has no specific knowledge regarding the '516 or '601 applications or either the PTO's or [examiner's] treatment of the same." (See op. at 26-27 n.16.)
The jury's invalidity findings were reversed for lack of substantial evidence. Judge Robinson had previously granted motions in limine which, "viewed in light of the options available on the jury's verdict sheet, precluded a finding of obviousness based on any single prior art reference or any combination of prior art references that did not include the '564 patent." The Jury found the four claims invalid based on references other than the '564 patent. Judge Robinson held that, because Defendants had been precluded from offering evidence on these references, the jury's verdict could not be supported by substantial evidence.
Judge Robinson also denied Plaintiff's motion for a permanent injunction, under the eBay standard, because of "[Plaintiff]'s failure to define a relevant market, the existence of additional competitors and the non-core nature of [Plaintiff's sale of the relevant products] in relation to its business as a whole."
Rarely does a party get to revisit discovery following a post-trial decision on the merits. In a recent memorandum order that affects an earlier invalidity holding, however, District Judge Sue L. Robinson did just that.
Finding that both parties overlooked a "basic principle of science" in discovery, the Court refused to order a new trial. Instead, the Court opened the record to admit further expert evidence:
"Ultimately, defendants bear the burden of demonstrating the invalidity of claim 7 by clear and convincing evidence. However, the Court will not grant a new trial on the validity of claim 7 based solely on defendants' failure of proof with respect to a basic principle of science. Due to the errors made by both parties, the court concludes that it is instead appropriate to open the record pursuant to Fed. R. Civ. P. 59(a)(2) to allow further evidence on the relationship between precipitation and solubility."
Whether the additional evidence cures the underlying failure of proof remains to be seen. But of more immediate importance is the precedent this decision establishes for reopening the trial record to address discovery deficiencies.
In Belden Technologies, Inc. v. LS Corp., C.A. No. 08-823-SLR (D. Del. Sept. 30, 2010), Judge Robinson granted a motion to dismiss contesting proper jurisdiction and venue, but only "to the extent that the present action shall be transferred to the United States District Court for the District of New Jersey." The Court found that venue was lacking because of neither of the defendants have an established place of business in Delaware. Id. at 19. Interestingly, neither party had argued for transfer to New Jersey; instead, the Court determined sua sponte that transfer was appropriate as an alternative to dismissal, id. at 19, and determined that New Jersey was the appropriate venue based on the fact that one of the defendants is headquartered there, while another maintains a warehouse there. Id. at 20.
Along the way to that conclusion, the Court also addressed personal jurisdiction, and the interaction between Delaware's "dual jurisdiction concept" (under Delaware's long-arm statute) and the due process analysis set forth by the Supreme Court in 1987. Judge Robinson held that a finding of jurisdiction under the "dual jurisdiction concept" was not enough - a due process analysis is still required: "The court concludes that both analyses look to the non-resident defendant's 'intent or purpose' to serve the Delaware market. Nevertheless, the court declines to forego a due process analysis on the basis of its finding under the Delaware long-arm statute." Id. at 13.
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