Articles Posted in Kent A. Jordan

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Judge Jordan recently issued an opinion denying an exceptional case finding after having entered partial summary judgment against the plaintiff and excluding the plaintiff’s direct infringement damages theory. “Viewed in its totality,” Judge Jordan found, the plaintiff’s “conduct over the course of this case does not qualify as exceptional . . . [the plaintiff] succeeded in obtaining discovery that it demanded, worked to narrow the issues in the case, and presented at least one claim that withstood summary judgment.” Parallel Networks Licensing, LLC v. Int’l Bus. Machs. Corp., C.A. No. 13-2072-KAJ, Memo. Op. at 3- (D. Del. July 31, 2017). Moreover, the plaintiff’s “claims were not entirely and objectively baseless . . . [the plaintiff’s] representations . . . are sufficient to show that the pre-suit investigation was enough to avoid the imposition of fees” and the plaintiff did not pursue and case and discovery solely to drive up costs for the defendant. Id. at 4-6.

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In Stored Value Solutions, Inc. v. Card Activation Technologies, Inc., C.A. No. 09-495-KAJ (D. Del. Jul. 1, 2011), Third Circuit Judge Kent A. Jordan, sitting by designation, issued a memorandum opinion granting the plaintiff’s motion for summary judgment of invalidity due to anticipation and obviousness. Id. at 2. Judge Jordan also granted the plaintiff’s motion for partial summary judgment of invalidity of certain patent claims due to lack of written description, and denied the defendant’s motion for summary judgment of validity and its motion to exclude the testimony of the plaintiff’s expert. Id.

The patent at issue disclosed a method for processing electronic transactions using a “Counter-Top Terminal System”—that is, transactions involving “an ATM card, prepaid debit card, or phone card.” Id. at 3. A key term in the patent was “purchase transaction[,]” which the defendant argued should include only transactions “in which goods or services are acquired through the payment of money.” Id. at 18. Judge Jordan disagreed, noting that the plain language of the claims showed that a “purchase transaction” occurred “when the value of a debit card is modified, including when it is increased.” Id. at 19 (emphasis added).

Thus, Judge Jordan construed “purchase transaction” broadly as “a transaction with the intended effect of decreasing the purchasing value of, increasing the purchasing value of, or activating a debit styled card.” Id. at 15. While noting that this construction was “somewhat different than the ordinary meaning of ‘purchase,'” Judge Jordan found this construction to be “the most reasonable one that would preserve the scope of the claims in the ‘859 patent and ensure that each preferred embodiment described in the patent is covered by a claim of the patent.” Id. at 25.

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Third Circuit Judge Kent A. Jordan, sitting by designation, has issued an interesting decision on exclusivity as it relates to licensee standing. Despite the “semi-exclusive” language in its agreement with the patentholder, the licensee argued that it had standing to sue because the license granted it rights in an exclusive field of use.

The Court rejected that proposition:

“Even if OMI could successfully argue that a single entity extended release tramadol product encompasses a distinct field of use sufficient to provide co-plaintiff standing, and I am not convinced that it could, OMI has not shown that it in fact has an exclusive license to that field.”

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In one of his last acts as a district judge, now-Third Circuit Judge Kent A. Jordan last week issued a post-trial damages opinion in the Novozymes v. Genencor litigation. In its decision, the Court touched on a range of subjects, including questions of standing, willfulness, and permanent injunctive relief.

Subsidiary Standing. The Court recognized that, in the absence of direct evidence of an exclusive relationship, an otherwise nonexclusive licensee might have standing to pursue an infringement action. But where, as here, the license agreement contained a covenant not to sue and a grant of a “non-exclusive” license, the written agreement trumped any collateral evidence of an exclusive relationship.

Willful Infringement. The Court also found that Defendant Genencor willfully infringed Novozymes’s patent by continuing to sell its competing product after receiving notice of allowance of Novozymes’s claims.

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Two statements of note in a recent decision by Judge Jordan (, C.A. No. 05-141 (D. Del. Jan. 19, 2007) (Jordan, J.):

– An inventor’s testimony regarding the meaning of a piece of prior art will be given little or no consideration (as with claim construction) since the testimony is often self-serving. Id. at 12 n.5.

– Disclosing an element of a claim as an alternative embodiment in a piece of prior art rather than as the primary embodiment of the claim will not make a reference non-anticipating. Id. at 12 n.6.

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In a follow-up to an October 23, 2006 decision in the same case awarding attorneys’; fees to Sullivan and Cromwell, Judge Jordan awarded Potter Anderson and Corroon LLP attorneys; fees in the amount of $66,764.90 for 312.90 hours of work during April 2004. Our write-up of the October decision is available here.

In the October opinion, the Court had asked for documentation to support the amount of fees requested by Potter Anderson. The case had involved multiple patents and multiple defendants, but the fee award only pertained to one defendant and one patent. As such, it was difficult for the attorneys to separate the fees associated with each patent and each defendant. To be conservative, Potter Anderson only submitted records to show the work they did in April 2004, the month of the trial against CMT, which involved one remaining patent. The Court ordered the payment of Potter Anderson’s fees by CMT, finding Potter’s seeking of fees during the month of trial reasonable given the interrelationships of the technology of the two patents, and the degree to which the defendants were engaged in the litigation. Op. at 6.

Philips Electronics N.A. Corp. v. Compo Micro Tech, Inc., C.A. No. 02-123-KAJ (D. Del. Dec. 12, 2006).

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Reminder: a motion for reconsideration is not the tool for raising additional arguments, facts or issues you could have raised during initial briefing of an issue.

On October 26, 2006 Judge Jordan issued a claim construction opinion in ., C.A. No. 04-1373. Ampex subsequently moved for reargument or reconsideration of the construction of one claim term. Specifically they argued that such relief was appropriate where they allege they did not have an opportunity to address whether the addition of a term was a “narrowing amendment that triggers a presumption of prosecution history estoppel.” Ampex argued that they did not make that argument because defendant did not meet their burden of showing that a narrowing amendment had been made, in fact, they chose to assume the presumption was raised and argue that it was overcome. The Court in its opinion held that Ampex was on notice of the issue and had an opportunity to respond and its choice to not “focus its advocacy efforts on whether the amendment at issue was narrowing” does not mean they did not have the opportunity to contest whether the presumption was actually established. ., C.A. No. 04-1373, slip op. at 3 (D. Del. Nov. 20, 2006) (Jordan, J.). Therefore, the Court denied the motion for reconsideration.

On a side note, the Court also held that prosecution history estoppel does apply to clarifying amendments, even where made under 35 U.S.C. Section 112, Paragraph 2. Id. at 5-6.

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, C.A. No. 04-1373-KAJ (D. Del. Nov. 3, 2006).

Plaintiff Ampex Corp. moved the Court for partial summary judgment that the patent at issue was not invalid (a.k.a. valid) based on several combinations of prior art references. Ampex argued that the proponent of obviousness is required to present an element-by-element comparison of the claims to each prior art reference. The Court, however, found Kodak�s identification of the references in each combination and disclosure of the references� features believed to be relevant to the claim invention sufficient to survive a motion for summary judgment.

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The drafting of jury instructions is an arduous task, but in a recent opinion, Judge Jordan’s ruling makes carefully constructed jury instructions a must for purposes of appeal.

In ., C.A. No. 04-1373 (D. Del. Nov. 2, 2006) (Jordan, J.), Ampex moved for summary judgment that certain pieces of prior art were not in fact “prior art.”
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Eastman Kodak Co. has prevailed in its defense of a competitor’s accusations of infringement involving the company’s digital-image technology. A day after denying the company’s motion for summary judgment on inequitable conduct, the Delaware court issued an opinion granting Kodak’s similar motion on non-infringment.

Ampex brought the infringement claim against Kodak seeking to protect its patented video and image processing technology. See U.S. Patent No. 4,821,121. The Court found that because Kodak’s products altered the image data after capture, regardless of whether the image returned to its original state upon storage, the technology could not literally infringe the ‘121 patent’s claims that required complete identity of pixel value at all stages of transmission and storage.

Moreover, because the patentee added the identity requirement in response to the examiner’s initial doubts regarding indefiniteness, the Court held that a presumption of prosecution history estoppel applied. Because Ampex failed to rebut this presumption, there could be no infringement under the doctrine of equivalents.

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