Delaware IP Law Blog

Judge Robinson denied plaintiffs’ motion to dismiss certain counterclaims where the facts relied on in plaintiffs’ motion were outside the pleadings and not subject to judicial notice. Ricoh Company Ltd. v. Oki Data Corporation, C.A. No. 09-694-SLR, Memo. Order (D. Del. Sept. 30, 2010). Specifically, plaintiffs’ motion relied on a license agreement between the parties, a notice letter and a confirmation which were all in Japanese and attached English translations. Id. at 2. The English translations of the notice letter and license agreement were produced by the defendants in unrelated litigation before the ITC pursuant to a protective order. Id. The Court found that “the license and notice letter do not come close to meeting the standard of F.R.E. 201(b)” and are not publicly available. Id. at 6-7. Furthermore, the Court found it was not plaintiffs’ claims that were based on the documents, but instead, their affirmative defense. Id. at 4, 7. The Court further found that: (1) even if it were proper to take judicial notice of the documents, it would be improper to take notice of the documents for the truth of the matter within them; (2) it is not clear whether the translation of the one document would even be admissible under American law; (3) the authenticity of the license and its translation were disputed; and (4) the court would need to consider an additional declaration to reach the conclusion proffered by plaintiffs. Id. at 7. The Court therefore, denied plaintiffs’ motion to dismiss certain counterclaims. Id.

Ricoh Company Ltd. v. Oki Data Corporation, C.A. No. 09-694-SLR, Memo. Order (D. Del. Sept. 30, 2010).

On Wednesday, Judge Robinson issued a lengthy summary judgment opinion on multiple invalidity and infringement issues in Intermec Tech. Corp. v. Palm, Inc., C.A. No. 07-272-SLR (D. Del. September 15, 2010).

The opinion touches on a variety of issues: indefiniteness, anticipation, direct & indirect infringement, written description, best mode, enablement, inequitable conduct, and, on top of everything else, non-joinder of inventors.

The Court held that the Palm devices did not infringe the Intermec patents, based largely on the Court's simultaneous claim construction opinion.

The Court then addressed several interesting issues. It held that two claims of one of the Intermec patents were invalid for indefiniteness, because the claims required a "first style" and a "second style" that were "different," but the specification did not explain with sufficient precision what the first and second styles were, or how to judge whether they were "different."

The Court also denied Palm's inequitable conduct defense, holding that Palm had failed to show an intent to deceive (despite showing knowledge of prior art references that were not disclosed.)

Palm was shot down again when it tried to assert that some of the Intermec patents were invalid or unenforceable because the patents omitted inventors. Palm argued that since the patents-in-suit included fewer named inventors than earlier patents to which they claimed priority, some inventors must have been omitted. The first patent in the chain included four inventors, but the patents-in-suit included only two. The Court, however, held that Palm had failed to show that the two unnamed inventors had contributed to the claims of the patent-in-suit, rather than just to the specification. Additionally, even if they had contributed to the claims, the failure to name inventors does not invalidate a patent or render it unenforceable under current Federal Circuit law.

The Court addressed several other issues in its 67-page opinion, most of them coming out in favor of Intermec. Given the infringement outcome, though, Palm does not have much to complain about.

Intermec Tech. Corp. v. Palm, Inc., C.A. No. 07-272-SLR (D. Del. September 15, 2010)

District judge Sue L. Robinson issued a claim construction decision on Tuesday addressing a variety of claims related to data-capture systems. In particular, the Court construed the following terms and phrases:

"Communication means for transmitting data between said server station and each of said plurality of client data collection terminals"

"Application programs"

"Said generated request identifying the terminal and a particular overlay module needed to continue the execution of the application program"

"Communication means for interconnecting said terminal and said server"

"First information portion"

"A communication system communicatively interconnecting said terminal and said server"

"Executable portions"

"A display screen occupying substantially an entire broad side of the processing module"

"Optical readers means for effecting the input of optical information"

"An indicia reader input system"

"A multitasking operating system"

The Court also declined to construe, as indefinite, the phrases "formatted in a first style" and "formatted in a second style different from said first style."

Intermec Techs. Corp. v. Palm Inc., C.A. No. 07-272-SLR (D. Del. Sept. 14, 2010) (Robinson, J.).

A few days after discussing the factors that the court will weigh to determine if a stay pending reexamination is warranted on the eve of trial (see Belden opinion), Judge Robinson issued a second opinion denying a stay. In this case, the discovery period concluded two years prior and Judge Robinson’s claim construction and summary judgment decisions had “been vetted through the Federal Circuit.” Id. at 4. Although the motion to stay was made years into the litigation, no trial date was set, unlike in Belden where the oral motion to stay was made at the pretrial conference. However, the movant filed its stay motion only after the reexaminations were in the appeal process and after the Federal Circuit had vacated Judge Robinson’s order that defendant does not infringe. Id. at 4-5.

Oracle Corp. and Oracle USA, Inc. v. Parallel Networks, LLP, C.A. No. 06-414-SLR (D. Del. Sept. 8, 2010)

Earlier this month, Judge Robinson issued an opinion in Belden Techs., Inc. v. Superior Essex Commc'ns LP, C.A. No. 08-63-SLR (D. Del. Sept. 2, 2010) (mem.), denying defendant Superior Essex's motion for a stay pending re-examination of the patents in suit.

The Court weigned the factors in favor and against a stay, applying Enhanced Security Research, LLC v. Cisco Sys., Inc., 2010 WL 2573925, at *3 (D. Del. June 25,2010). Some of the factors included:

• The reexam addresses the same issues, so it could simplify the trial. Id. at 4.
• The re-examinations weren't requested until "approximately 17-20 months" after the start of the litigation, which also cut against a stay. Id. at 4.
• "The untimeliness of Superior Essex's oral motion clearly cuts against a stay." Id. at 4.
• "[O]nly those reexamination proceedings that have been substantially completed will weigh in favor of a stay," while the reexamination in this case is still pending and subject to appeal. Id. at 6.
• The Patent Office has not yet issued a Right of Appeal Notice, and "Belden may statistically wait as long as three years after receiving its [Right of Appeal Notices]; this factor cuts against the grant of a stay." Id. at 6.
• The fact that Belden did not seek a preliminary injunction cut in favor of a stay, because it indicates that the companies are not direct competitors. Id. at 7.

The Court found that the balance did not favor either party, so it denied the stay.

Belden Techs., Inc. v. Superior Essex Commc'ns LP, C.A. No. 08-63-SLR (D. Del. Sept. 2, 2010) (mem.)

In Brinkmeier v. BIC Corp., et al., C.A. Nos. 09-860-SLR, 10-01-SLR (D. Del. Aug. 25, 2010), Judge Robinson recently granted defendants’ motions to dismiss for failing to state a claim under Federal Rule of Civil Procedure 12(b)(6). Defendants BIC Corporation and BIC USA Inc. (collectively, “BIC”) argued that plaintiff’s complaint seeking a declaratory judgment that BIC falsely marked products failed to adequately plead allegations of fraud as required under Rule 9(b). Id. at 1-2. Noting the split among courts regarding the applicability of the heightened pleading standards of Rule 9(b) to failure to mark claims, Judge Robinson held that section 292 claims must be pled with particularity. Id. at 16-17. Granting BIC’s motion to dismiss, Judge Robinson noted that “[t]he burden ultimately lies with the party who asserts false marking to show, by a preponderance of the evidence, that the accused party did not have a reasonable belief that the articles were properly marked.” Id. at 19. However, plaintiff “pled no facts to show BIC intentionally attempted to deceive the public[,]” and, despite plaintiff’s assertions, “allegations that BIC is sophisticated and employs experienced counsel do[es] not suggest intent to deceive.” Id. at 20.

Brinkmeier v. BIC Corp., et al., C.A. Nos. 09-860-SLR, 10-01-SLR (D. Del. Aug. 25, 2010)

A notice has been posted on the District of Delaware website that Judge Robinson's courtroom and chambers have been relocated to the 4th floor. All hearings previously scheduled for courtroom 6B will now be in courtroom 4B.

Yesterday, district judge Sue L. Robinson issued a decision that construed claims in several patents related to high-performance data cables and associated methods for making those cables. The Court construed the following terms:

"Configurable"
"Dielectric pair separator"
"Grooves" and "Channels"
"Substantially flat"
"Tape"
"Telecommunications cable"
"Group"
"Data cable"
"Open space"
"Cable covering"
"Contacting each projection"
"Core"
"Surface features"

The Court also declined to construe the following phrases:

"A first die which aligns the plurality of transmission media with surface features of the core."
"An outer jacket that maintains the plurality of twisted pairs of conductors in position with respect to the non-conducive central core."

Belden Techs. Inc. v. Superior Essex Comms. LP, C.A. No. 08-063-SLR (D. Del. Aug. 24, 2010) (Robinson, J.).

Also see the Court's accompanying Memorandum Opinion on summary judgment, which includes an interesting discussion of the marking statute.

Earlier this month, Judge Robinson issued a memorandum opinion in Girafa.com, Inc. vs. Smartdevil, Inc., C.A. No. 07-787-SLR (D. Del. Aug. 8, 2010). Girafa had initially brought a patent infringement action against a series of defendants, but Judge Robinson granted a motion for summary judgment of non-infringement in September 2009, and the case was then dismissed by stipulation with respect to the defendants other than Smartdevil.

In January, Girafa filed a motion for default judgment as to Smartdevil. Smartdevil is based in Canada, and its owner is apparently representing it pro se due to its "inability to procure reasonable representation" because "Smartdevil could not afford a minimum retainer fee of $50,000." Id. at 3-4. The Court refused to enter a default judgment. While service of the complaint was proper, Girafa failed to show sufficient prejudice, and Smartdevil has presented "facially meritorious" invalidity and non-infringement defenses. Id. at 4. Smartdevil also presented some evidence of its financial inability to afford counsel, and the Court held that Smartdevil's delay was not attributable to bad faith and did not constitute culpable conduct.

Girafa.com, Inc. vs. Smartdevil, Inc., C.A. No. 07-787-SLR (D. Del. Aug. 8, 2010)

The Hatch-Waxman statute provides that when an act of infringement is found, the court shall order the effective date of approval of any durg to be no earlier than the date of the expiration of the patent-in-suit. 35 U.S.C. 271(e)(4)(A). Judge Robinson in Alcon, Inc. v. Teva Pharmaceuticals USA, Inc., found that claim one of the patent-in-suit was valid and infringed. C.A. No. 06-234-SLR, Memo. Order (D. Del. Aug. 5, 2010). The judgment was amended to provide that the effective date of any approval shall not be prior to six months after the expiration date of the patent-in-suit. Id. at 3. Plaintiff also moved for entry of a permanent injunction. The Court denied plaintiff's request finding that because of the relief related to the effective date, plaintiff cannot show any irreparable harm and further cannot show that remedies available at law are inadequate to compensate for defendant's infringement. Id. at 5. Finally, the only hardship asserted by plaintiff, that it would be unable to exclude the defendant from experimental, private use of the patent, would actually "deprive the public of the benefit of [defendant's] developmental efforts." Id. at 6. Therefore, the Court declined to enter an injunction.

Alcon, Inc. v. Teva Pharmaceuticals USA, Inc., C.A. No. 06-234-SLR, Memo. Order (D. Del. Aug. 5, 2010).