August 15, 2011

Judge Robinson: Order for Sanctions Modified Where Counsel Focused Deposition Efforts on Creating Record for Motion for Sanctions Instead of Obtaining Substantive Information

In Apeldyn Corp. v. AU Optronics, Inc., C.A. No. 08-568-SLR (D. Del. Aug. 2, 2011), Judge Robinson recently modified Special Master Poppiti's order for sanctions against a party that failed to adequately prepare its Rule 30(b)(6) designees for their depositions. Id. at 3-4. Although Judge Robinson "agree[d] generally with the fact that AUO's corporate designees were inadequately prepared," she found that "Apeldyn's counsel focused their efforts to create a record for the motion it ultimately presented, rather than in obtaining the substantive information noticed." Id. at 3. Thus, the court ordered AUO "to produce one or more substitute witnesses[,]" but held that the deposition must be limited "to the ten most important [noticed] topics (as identified by Apeldyn)[,]" that the "continued deposition shall be limited to ten hours[,]" and that "Apeldyn shall be responsible for its own costs and fees in connection with the deposition[.]" Id. at 4.

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August 10, 2011

Judge Sue L. Robinson: Motion to Amend to Add Inequitable Conduct DENIED

Defendant moved to amends its affirmative defenses and counterclaims to add two new theories of inequitable conduct (both concerning allegations that the applicants concealed or misrepresented the true inventorship of pending claims to the PTO) over six months after the deadline for amendment of the pleadings and after the close of fact discovery. Ashahi Glass Co., Ltd. v. Guardian Indus. Corp., C.A. No. 09-515-SLR, Memo. Op. (D. Del. Aug. 8, 2011). Defendant's delay was "largely unexplained" and the Court found that although the delay "is not egregious, allowing defendant's motion at this late stage would place an unwarranted burden on the court and prejudice plaintiffs in several respects, most notably, opening discovery for the purpose of allowing plaintiffs and opportunity to respond to the new claims cannot be accomplished while maintaining the current trial date." Id. at 6. Court, therefore, denied the motion.

Of note, Judge Robinson mentioned in a footnote that the Court is currently booked for trials through 2013 and therefore rescheduling a trial in 2011 or 2012 "would be a formidable task." Id. at 6, n.10.

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August 3, 2011

Judge Sue L. Robinson: Motion to Transfer (DENIED)

Judge Robinson denied Ruckus Wireless' motion to tranfer this patent infringement case to the Northern District of California where another suit (on different, unrelated patents) is pending between the parties. Netgear, Inc. v. Ruckus Wireless, Inc., C.A. No. 10-999-SLR, Memo. Order (D. Del. July 28, 2011). Both parties are Delaware corporations with their principal place of business in California. Therefore the main issue was whether the pending action in California was "related" to the pending Delaware action and therefore warranted transfer. Id. The asserted patents in the Delaware case "originated from different companies, have different inventors, and are of different patent families from patents-in-suit." Id. The Court found the fact that similar technology was at issue "not compelling" to warrant transfer. Id.

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August 2, 2011

Judge Robinson: Motion to dismiss defendant’s counterclaims in due to covenant not to sue GRANTED

In Somaxon Pharms., Inc. v. Par Pharm., Inc., C.A. No. 11-107-SLR (D. Del. July 28, 2011), defendant asserted counterclaims seeking declaratory judgment of invalidity and non-infringement of the patent-in-suit and six unasserted patents covering the drug at issue. Id. at 3. Plaintiffs provided defendant with a covenant not to sue on the six unasserted patents and requested defendant to dismiss its counterclaims as to the unasserted patents. Id. Judge Robinson granted plaintiffs’ motion to dismiss. “[T]he covenants not to sue address the Unasserted Patents in their entirety. There is no case or controversy regarding those patents because the covenant not to sue removes the original subject matter jurisdiction of the court.” Id. at 5.

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August 1, 2011

Judge Robinson: Post-Trial Motion for Reargument Denied Where Defendant Sought to Rely on Summary Judgment Record

In S.O.I.TEC Silicon on Insulator Technologies, S.A. v. MEMC Electronic Materials, Inc., C.A. No. 08-292-SLR (D. Del. July 13, 2011), Judge Robinson decided several post-trial motions, including the defendant's motion for reargument on inequitable conduct. Id. Although the defendant "was scheduled to present its inequitable conduct case to the court following the jury trial[,]" it "did not subpoena any witnesses to call at the bench trial[,]" claiming that its only two witnesses "were adverse and outside of the court's subpoena power." Id. at 10-11. Rather, the defendant "sought to proceed . . . by tendering a box of exhibits and an exhibit list to the court[.]" Id. at 11. The defendant "argued that the court's holding on summary judgment was that [the defendant] had adduced facts from which an intent to deceive could be inferred . . . , and argues post-trial that the law of the case doctrine dictates that the court's summary judgment holding should not have been disturbed." Id. Judge Robinson rejected this argument for two reasons. First, "the court's finding the existence of a genuine issue of material fact on intent is not akin to the court's ruling in [the defendant's] favor on that issue." Id. Second, noting the Court's long-standing guidelines regarding admission of documents and deposition excerpts, Judge Robinson stated that the Court "determined that judgment should be entered in favor of [the plaintiff] because [the defendant] could not move the entry of any evidence absent the aid of witnesses." Id. at 11-12. In short, the defendant "did not seek to participate in a live trial, rather, it simply sought judgment on its proffered box of documents." Id. at 12.

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July 25, 2011

Judge Robinson: Motion to Dismiss Joint Infringement and Inducement Claims GRANTED

In Eon Corp. IP Holdings LLC v. FLO TV Inc., C.A. No. 10-812-SLR (D. Del. July 12, 2011), Judge Robinson recently evaluated the sufficiency of plaintiff’s patent infringement claims under Twombly and Iqbal. Judge Robinson found that plaintiff’s direct infringement claims passed muster. Id. at 5. Plaintiff’s indirect infringement claims, however, did not fare as well. Plaintiff alleged that “users of defendants’ subscription units commit the requisite acts of direct infringement required for indirect infringement liability[,]” and that “defendants knew or should have known of the [patent-in-suit] before the infringing acts occurred because some of defendants entered into licensing agreements with a third party and obtained rights to two patents that cite the [patent-in-suit] as prior art[.]” Id. at 6. Judge Robinson found that plaintiff did not allege sufficient facts to allow the court to infer that defendants had knowledge of the patent-in-suit, because “the link between the [patent-in-suit] and defendants involved in licensing agreements with a third party is too tenuous to sustain an allegation of knowledge.” Id. at 7-8. Plaintiff’s joint infringement claims failed because its complaint “did not provide specific facts explaining any alleged relationships among defendants,” or that “any defendant [] exercise[ed] ‘control or direction’ over the allegedly infringing acts of other parties.” Id. at 12.

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July 4, 2011

Judge Robinson: Motion to Dismiss Patent Suit Denied Where Claim Construction Is Necessary to Resolve Dispute

In Internet Media Corp. v. Hearst Newspapers, LLC, C.A. No. 10-690-SLR (D. Del. June 28, 2011), Judge Robinson denied the defendant's motion to dismiss a patent infringement suit because the defendant's argument would require construction of an asserted claim. Id. at 7. The defendant argued that the complaint should be dismissed because the asserted patent "is indefinite as a matter of law[.]" Id. at 4. "Specifically, defendant argues that claim one is a means-plus-function claim relating to the use of computers, thus requiring that the specification disclose an algorithm by which the computer performs the recited function." Id. The "[d]efendant argues that the court need not construe the asserted claim and must simply look to the specification to see if an algorithm is disclosed." Id. at 6. The court, however, found that "[s]ome degree of claim construction is necessary to determine if the apparent means-plus-function claim is actually a means-plus-function claim, or if the claim itself recites enough structure to overcome the presumption of 35 U.S.C. § 112 ¶ 6." Id. at 7. Further, "the court would need to construe the claim in order to determine what algorithm to look for in the specification and what elements are necessary in said algorith to satisfy § 112 ¶ 6." Id. Thus, because claim construction "is properly reserved for summary judgment[,]" Judge Robinson denied the defendant's motion to dismiss. Id.

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July 1, 2011

Judge Robinson: ANDA Defendant Enjoined from Launching Generic Drug Until Court's Decision Issues

In OSI Pharmaceuticals, Inc. v. Mylan Pharmaceuticals, Inc., C.A. No. 09-185-SLR (D. Del. June 30, 2011), Judge Robinson recently issued an order enjoining an ANDA defendant "from launching its generic drug until the court's decision issues" because the stipulated post-trial briefing schedule would exceed "what the court estimates to be the expiration of the 30-month stay invoked by operation of the filing of this lawsuit[.]" Id.

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June 20, 2011

Judge Robinson: Motion to Transfer Denied

On June 8th, Judge Robinson denied two motions to transfer. We reported on one last week -- Marvell International Ltd. v. Link_A_Media Devices Corp., C.A. No. 10-869-SLR (D. Del. June 8, 2011). The second denial, in XPRT Ventures, LLC v. eBay, Inc., C.A. No. 10-595-SLR (D. Del. June 8, 2011), again emphasized that (1) the defendants are Delaware corporations, (2) that judicial congestion in the District of Delaware is not a factor, and (3) that "[i]n this electronic age, there are no substantial burdens associated with discovery or witness availability that support the need to transfer." Id. at 6-7.

One interesting wrinkle in this second denial is that the plaintiff in XPRT had previously disclosed some of the subject matter to the defendants under a confidentiality agreement with a forum selection clause. The Court held, however, that the "Agreement's forum selection clause controls only breaches of confidentiality," due to language in the clause stating that it applied to breaches "arising out of this Agreement" and because "the Agreement explicitly states that there is no bar from bringing patent infringement cases." Id. at 6.

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June 20, 2011

Judge Robinson: Motion to Consolidate Cases and Lift Stay DENIED

In Ricoh Company, Ltd. v. Oki Data Corporation, Civ. No. 09-695-SLR (D. Del. Jun. 9, 2011), Judge Robinson denied the plaintiffs' request to consolidate cases and lift stay.

The plaintiffs had represented that the asserted patents were "clearly related" to asserted patents in an earlier suit between the parties. In response, Judge Robinson noted that, even if the court were to assume that the plaintiffs' representations were correct, the court could not accommodate the plaintiffs' request to have additional time for discovery in the court's present 2012 trial calendar. Id. at 1. Judge Robinson also noted that consolidating cases would have turned a six-patent case into an eight-patent case, which would have required even more trial time. Id.

Judge Robinson then denied the plaintiffs' request to lift stay because the "plaintiffs intend to pursue its appeal of the ITC's adverse ruling to the Federal Circuit absent consolidation." Id. at 1-2.

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