In a recent decision, District Judge Sue L. Robinson explained her practice on adjudicating post-trial equitable claims. The Court noted that it "does not entertain motions for summary judgment on equitable issues, instead holding bench trials on such issues." In the underlying action, Defendant Pylon had filed its summary judgment motion on inequitable conduct following a jury trial on infringement and invalidity. According to the Court, "although Pylon styles its post-trial paper as a 'motion,' in reality Pylon has simply filed its post-trial brief in support of its claim of unenforceability." D. Del. practitioners take note.
On March 10, 2011, in Keurig Inc. v. Sturm Foods, Inc., Civ. No. 10-841-SLR (D. Del. Mar. 10, 2011), Judge Robinson issued a memorandum opinion denying Keurig's motion for a preliminary injunction and Sturm Foods's partial motion to dismiss.
Keurig had moved for a preliminary injunction based on its trademark infringement claims, trade dress infringement claims, and false advertising and unfair competition claims. Id. at 7.
Regarding the trademark infringement claims, Judge Robinson determined, based on the current record, the likelihood of confusion in the market by applying a multi-factor test previously adopted by the United States Court of Appeals for the Third Circuit (modified for cases involving a nominative fair use defense), finding that the balance of factors favored Sturm Foods. Id. at 14.
Regarding the trade dress infringement claims, Judge Robinson found, based on the current record, that Keurig did not show that the overall look of its products was consistent, which is required for a finding of trade dress infringement. Id. at 17.
Regarding the false advertising and unfair competition claims, Judge Robinson found, based on the current record, that Sturm Foods's statements did not necessarily imply that Sturm Foods's products were of equal quality to Keurig's products, especially given the lower price of Sturm Foods's products. Id. at 19-20. For this and other reasons, Keurig was unable to show a likelihood of success on the merits proving the literal falsity of Sturm Foods's statements. Id. at 20.
On February 25th, 2011, in OSI Pharmaceuticals, Inc. v. Teva Pharmaceuticals USA, Inc., Civ. No. 09-185-SLR (Consol.) (D. Del. Feb. 25, 2011), Judge Robinson issued a memorandum order denying Defendants’ motion for leave to amend their pleadings. While the court’s scheduling order set January 29, 2010 as the deadline to amend pleadings, id. at 1, Defendants filed their motion to amend on October 25, 2010 — almost nine months after the deadline, id. at 2. Defendants argued that “good cause” existed for their late motion, citing the volume of documents produced by Plaintiffs, the specificity required by Federal Rule of Civil Procedure 9(b), and the “protracted discovery proceedings.” Id. Judge Robinson disagreed, noting that (1) the documents at issue had been available “well before October 2010[,]” (2) there were no citations to the depositions held in August 2010 in Defendants’ opening brief, and (3) Defendants had changed their legal argument in their letter submission. Id. at 2-3. While noting Rule 15(a)(2)’s provision that courts should “freely give leave [to amend pleadings] when justice so requires[,]” id. at 1, Judge Robinson concluded that “justice [did] not require leave to amend in this instance.” Id. at 3.
Following the recent trend in this district, Judge Robinson denied a defendant's motion to transfer litigation related to a licensing dispute, even where the current litigation is the "mirror image" of litigation pending in the Northern District California. Myriad Group A.G. v. Oracle America, Inc., C.A. No. 10-187-SLR, Memo. Order (D. Del. Feb. 4, 2011). The court found that the Jumara factors do not warrant transfer, particularly where the defendant is a Delaware corporation and "especially in this age of electronic discovery and the ever decreasing number of cases actually resolved by trial." Id. at 5.
A recent decision by District Judge Sue L. Robinson sheds light on the Court's supplemental claim-construction practice. In the underlying infringement litigation, the Court issued an opinion on, among others, the parties' proposed constructions and summary judgment motions. By doing so, the Court recognized that several disputed terms could not be addressed in the summary judgment context.
This posture allowed the Court to explain its procedure for addressing claim construction at trial:
"The parties have identified several additional disputed terms that do not find context in the infringement and validity contentions before the court on summary judgment. There is a lack of agreement as to whether the additional terms need construction or may be given their ordinary meaning. Consistent with the court's practice, the parties will present their respective constructions during trial and the court will make its claim construction decision prior to the case going to the jury."
The Court continued:
"Absent notice regarding which claims remain in dispute, the court will instruct the jury that all terms not specifically defined by the court shall be given their plain and ordinary meanings."
On January 14, 2011, a jury returned a defense verdict on all counts in the Arcelormittal France v. AK Steel Corporation, et al. matter. C.A. No. 10-050-SLR, Jury Verdict Sheet (D. Del. January 14, 2011). Specifically, the jury found that none of the three defendants infringed the asserted patent. The jury also found plaintiffs' patents invalid as anticipated and obvious.
Obtaining relief from judgment under Rule 60(b) is normally a difficult exercise, as courts are rightfully reluctant to disturb their own findings. Vacating a judgment under Rule 60(b)(6)'s catch-all provision, which authorizes courts to do so for "any other reason that justifies relief," is even harder. Given the rarity of this type of relief, litigators should take notice of a recent decision by District Judge Sue L. Robinson.
The Court emphasized that "exceptional circumstances" existed to warrant reinstating an earlier decision that granted summary judgment on a contract claim in plaintiff's favor. Specifically, the Court noted how the parties had entered into a patent settlement agreement and stipulated that the Court would retain jurisdiction over its enforcement. When defendant later requested a re-examination before the PTO, an act prohibited by the settlement agreement, plaintiff successfully secured a summary judgment establishing defendant's breach.
Defendant then sought to vacate the summary judgment. According to defendant, the Court never entered the original stipulation, and therefore never acquired jurisdiction to enforce the settlement agreement. Despite defendant's unequivocal intent to confer jurisdiction in the stipulation, the Court noted that Third Circuit precedent required that it vacate the summary judgment decision.
Defendant later agreed that, based on intervening events at trial and on appeal of the underlying infringement claims, the summary judgment should be reinstated. But when plaintiff sought to do so, defendant again retracted its assent, charging that plaintiff failed to timely file its Rule 60 motion and that granting relief now would require separate damages trials on the infringement and contract claims.
The Court, already frustrated with defendant's earlier attack on its subject-matter jurisdiction, rejected defendant's assertion of untimeliness:
"Defendant's arguments regarding resolution of damages and effect on the PTO's reexamination proceedings are of no moment in determining whether relief under Rule 60 is appropriate. Granting the Rule 60 Motion for summary judgment, at this time, does not necessarily require that contract damages be tried separately from patent damages . . . . Establishing contractual liability now instead of later militates in favor of granting the Rule 60 Motion by limiting delay and allowing the court flexibility in scheduling a trial on damages."
The Court also acknowledged that the PTO may benefit from resurrecting defendant's contractual liability:
"There is no reason to deprive the PTO of any benefit, no matter how limited, it may receive from the court's judgment in this matter. That the PTO may not be induced to terminate or suspend reexamination proceedings based on such judgment is of no moment to the equitable principles involved in the issue at bar."
Accordingly, the Court vacated its order that dismissed the contract claim and reinstated the summary judgment in plaintiff's favor. By doing so, the Court provided a useful roadmap for demonstrating "extraordinary circumstances" under Rule 60(b)(6): litigants should emphasize both the relative equities among the parties and the increased judicial efficiency attending the proposed relief from judgment.
On Wednesday, District Judge Sue L. Robinson issued a summary judgment decision notable for its assessment of a party's expert evidence. Although the Court eventually granted defendant Cisco's motion for summary judgment of noninfringement, it rejected, as part of the claim construction process, Cisco's attempt to rely on an article written by its adversary's expert:
"Defendant does not cite its own expert in support of its argument [on the claim in issue]. Instead, defendant cites wi-fiplanet.com, a website that contains an article written by plaintiff's expert . . . . The court disagrees that this article supports defendant's contention . . . . The article does not say that a person of skill in the art would consider a controller to be separate from the access point, nor does it discuss the meaning of the term 'access point' as used in the '858 patent."
According to the Court, plaintiff's expert "directly contradict[ed] defendant's argument" at his deposition. In the evidentiary battle of the article versus the deposition, the deposition won.
Judge Robinson transferred a false marking case where one of the plaintiffs and the defendant are engaged in patent infringement over four of the same patents at issue in the false marking case (even though it was not the first-filed action), the defendant is not a Delaware corporation and maintains only a small market for its goods in Delaware. Brinkmeier v. Exergen Corporation, C.A. No. 10-176-SLR, Memo. Order (D. Del. Jan. 3, 2011).
Last week, Judge Robinson denied a Rule 56(d) motion by Acceleron in Acceleron, LLC. v. Hewlett-Packard Co., C.A. No. 10-128-SLR (D. Del. Dec. 16, 2010). Faced with a motion for summary judgment of non-infringement, Acceleron sought additional discovery under Rule 56(d) to support its contributory infringement and inducement claims. Acceleron had previously sought the same information, but had agreed to narrow the requests after HP protested and the Court determined that the requests were too broad. Since then, fact discovery has closed, and HP brought a summary judgment motion based on the lack of evidence for contributory infringement and inducement.
The Court denied Acceleron's Rule 56(d) motion, stating that "the court previously determined that these discovery requests were too broad," that "Acceleron [had] represented to the court that every outstanding discovery issue relevent to the instant motions was resolved," and that "Acceleron has had ample opportunities to seek the discovery it requests, and it is inappropriate at this stage of the proceedings to reopen fact discovery." Id. at 6-7.