Published on:

Chief Judge Leonard P. Stark recently issued the pretrial order resolving motions in limine and setting time allocations for trial.  Andover Healthcare, Inc. v. 3M Company, No. 13-843-LPS (D. Del. Oct. 27, 2016).  Regarding time for trial, the parties requested 41 hours to be split equally between the parties.  Judge Stark rejected this request:

Considering that this is a one patent case, with two asserted claims, four accused products, a single plaintiff and single defendant, at most five invalidity defenses .(written description, enablement, indefiniteness, anticipation, obviousness), damages, and willfulness, and given the number of witnesses the parties intend to call, the Court has determined that the parties will be allocated a maximum of 14 to 16 hours per side for their trial presentations, with the final amount to be determined after further discussion at the pretrial conference.

Id. at ¶ 2.

Published on:

In Vehicle IP v. AT&T Mobility LLC, et al., C.A. No. 09-1007-LPS (D. Del. Oct. 20, 2016) (unsealed Oct. 27, 2016), Chief Judge Leonard P. Stark granted-in-part the Defendants’ motion to sever their cases, concluding that joinder under Rule 20 was impermissible as to infringement and damages, and denying the motion with respect to invalidity.

Plaintiff had accused the two groups of defendants, who were competitors of each other, of infringement by different products, but Plaintiff argued that joinder was proper under Rule 20 because the Defendants “advance largely identical arguments on all the key issues in the case . . . ; the allegedly infringing acts occurred during the same time period . . . ; Defendants used identically-sourced components in their respective products . . . ; and Defendants used similar development and manufacturing methods[.]” Id. at 3.

As to infringement, the Court observed that the infringement analysis would differ between the two defendant groups, and that they had engaged different infringement experts. Id. at 4. Severance was proper even if the accused products were the same in relevant respects: Plaintiff “has not argued that there was any relationship between the [defendant groups]; in fact, they are direct competitors, which weighs heavily against joinder. Other factors weighing against joinder include that there is no assertion [Plaintiff] of licensing or technology agreements between the [defendant groups], and that there is no claim for lost profits. Although there is some similarity in the development and manufacturing of the accused products and some components (such as cell phones) come from the same sources, those overlaps are due to the fact that the accused products are cell phone applications, and these components are not part of the infringement dispute. While both groups of Defendants are accused of infringing during the same time period, this factor does not outweigh the other considerations weighing in favor of severance.” Id. Furthermore, in light of Defendants’ argument that consolidation under Rule 42 would be prejudicial due to the high likelihood of jury confusion, the Court granted the motion to sever with respect to infringement and damages. Id. at 5.

Published on:

In this multidistrict litigation, a protective order was originally entered in a case between Plaintiff Bear Creek Technologies and Defendant Verizon while the Verizon case was pending in the Eastern District of Virginia. The Verizon case was then transferred to the MDL in the District of Delaware after entry of the protective order. The protective order in question bars the Plaintiff’s litigation counsel from participating in prosecution activities except that the “prosecution bar does not apply to any reexamination proceedings before the [USPTO] that is initiated by any Verizon defendant in this action.” The Plaintiff therefore sought a modification of the protective order because it “exempted reexamination proceeding initiated by Verizon, but did not extend the exemption to proceedings initiated by other parties” and the Plaintiff sought to have the protective order recognize “that the case now involves multiple defendants.” In re: Bear Creek Technologies Inc., MDL No. 12-2344-GMS, Amended Or. at 1-2 (D. Del. Oct. 20, 2016). Judge Sleet, however, declined to modify the protective order, agreeing with Verizon that because “the Protective Order has already been decided by another court, Bear Creek must show, on a counsel-by-counsel basis, that an exemption for a particular attorney or a particular purpose is warranted and Bear Creek has not made this showing.” Id. at 2-3 (citing In re Deutsche Bank Trust Co. Ams., 605 F.3d 1373 (Fed. Cir. 2010)).

Continue reading

Published on:

Judge Gregory M. Sleet recently denied a motion to stay pending ex parte reexamination in Polar Electro OY v. Suunto OY, et al., C.A. No. 11-1100-GMS (D. Del. Oct. 31, 2016).  Judge Sleet explained that a review of Public Pair indicated that the PTO withdrew previous rejections of the claims subject to the ex parte reexamination and allowed newly presented claims.  As a result, prosecution on the merits was now closed, and the Court therefore exercised its discretion to deny the motion to stay. Continue reading

Published on:

In Sony Corporation v. Pace PLC, et al., C.A. No. 15-288-SLR (D. Del. Oct. 24, 2016), Judge Sue L. Robinson issued a claim construction order in which Her Honor concluded that one preamble of an asserted claim was limiting.   The preamble recited: “[a]n information reproducing device for reproducing an information recording medium in which audio data of plural channels are multiplexedly recorded, the information reproducing device comprising:”.

This preamble explained the purpose of the claimed device, and the “recording medium” was not discussed in the body of the claim. Thus, its presence in the preamble gave was necessary to give meaning to the claim. Id. at 3. The preamble also provided an antecedent basis for terms in the body of the claim. Id. Finally, the Court observed that the parties already agreed that the preamble of another claim in this patent that was similar to the disputed preamble was limiting. Id.

Sony Corporation v. Pace PLC, et al., C.A. No. 15-288-SLR (D. Del. Oct. 24, 2016)

Published on:

In a recently unsealed memorandum opinion, Chief Judge Leonard P. Stark issued rulings on several pre-trial motions.  Andover Healthcare, Inc. v. 3M Co., C.A. No. 13-843-LPS (D. Del. Oct. 18, 2016).  Most notably, Chief Judge Stark denied a motion to preclude the plaintiff’s CEO from testifying as an expert based on his purported “blatant and direct financial interest in the outcome of this case.”  Id. at 14.  The Court explained that 3M’s argument that the CEO should be precluded because of his financial interest in the litigation “only holds if the Court disregards Andover’s corporate existence.  Any recovery in this case will initially go to Andover, not Murphy. . . .  [T]he Court concludes that Dr. Murphy’s indirect financial interest in the outcome of the litigation [redacted] can be handled appropriately on cross-examination.”  Id. at 15-16 (emphasis in original).

Chief Judge Stark also denied cross-motions for summary judgment relating to a laches defense, on the basis that there existed factual disputes regarding the factual underpinnings of the defense, and also in view of the U.S. Supreme Court’s pending consideration in the SCA Hygiene Products v. First Quality Baby Products case of whether and to what extent laches is an available defense to patent infringement.  Id. at 10 n.2.

Continue reading

Published on:

The Defendants in this case requested a stay pending the Federal Circuit’s decision on a patent-in-suit from a related case, and Judge Andrews denied the motion. In considering the motion to stay, Judge Andrews recognized that the Federal Circuit’s decision “may make this case moot, or otherwise simplify whatever issues would remain on this patent. Depending on what the decision is, it might also cause a scramble over whether a preliminary injunction should issue, which would involve issues in addition to the trial issues. Thus, on the whole, this factor favors granting the stay, but it does not heavily weigh in favor of granting the stay.” Sanofi, et al. v. Lupin Atlantis Holdings SA, et al., C.A. No. 15-415-RGA, Order at 1 (D. Del. Oct. 14, 2016). Judge Andrews also pointed out that the “case is ready for expert discovery, which is due to begin next week, and trial is set for April 24, 2017 . . . [which] argues against granting the stay.” Id. Finally, Judge Andrews found that a stay may cause some undue prejudice to Plaintiffs, the non-moving party, because “[i]f a stay is granted, Plaintiffs have to prepare for the possibility of a preliminary injunction, which would be an extra expense. In all likelihood, Defendants too would prepare for the possibility of a preliminary injunction. The prejudice to Plaintiffs may be that I would not grant a preliminary injunction, whereas if Plaintiffs win on a trial on the merits, they will get their injunction by virtue of the trial. Thus, it may be that a trial is an easier route for Plaintiffs to get the relief they are seeking. I think consideration of this factor suggests some possibility of tactical advantage to Defendants if a stay is granted.” Id. at 1-2.

Continue reading

Published on:

The Defendant sought leave to file an amended answer and counterclaims adding a claim of inequitable conduct based on an allegedly undisclosed inventor. The motion for leave was filed several months after the December 15, 2015 scheduling order deadline for amendment of pleadings, meaning that the Defendant needed to show “good cause” for the amendment. Although the allegedly undisclosed inventor, Dr. Chu, had initial been disclosed as a person who may have knowledge of products embodying the asserted patent in early 2015, Dr. Chu was not issued a subpoena or deposed until over a year later in May and June of 2016. Judge Andrews found it “fair to say that the [February 2015] ‘initial disclosures’ do not suggest Dr. Chu as a person who as involved in the invention.” E.I. DuPont de Nemours & Co. v. Unifrax I LLC, C.A. No. 14-1250-RGA, Memo. Or. at 1-2 (D. Del. Oct. 7, 2016).

The Plaintiff pointed to several documents that were produced in June 2015 and would have allegedly shown the Defendant at that time that Dr. Chu was involved in product development. But Judge Andrews reviewed the documents and found “they did not show anything that would suggest Dr. Chu was an inventor” but rather only “Dr. Chu being involved in testing and experimentation at Plaintiff’s direction and request.” Id. at 2-3. Therefore, Judge Andrews concluded:

I would tend to agree with Plaintiff that the cited documents do not support the proposed counterclaim. Perhaps this will be a problem for Defendant down the road, but, at this juncture, it does support Defendant’s argument that Defendant has good cause not to have asserted the counterclaim until Dr. Chu was deposed, and provided the basis upon which Defendant now relies. I do not think the cited documents put Defendant on notice that Dr. Chu was an important witness. Defendant’s motion for leave to amend followed without undue delay after Dr. Chu’s deposition was concluded. Therefore, I find good cause and will grant Defendant’s motion.

Id. at 3.

Continue reading

Published on:

By

In a recent Order, Judge Richard G. Andrews denied plaintiff Ansell Healthcare Products LLC’s (“Ansell”) request that defendant Reckitt Benckiser LLC (“Reckitt”), be precluded from disclosing Ansell’s Protected Information, as defined in the parties’ Protective Order, to Reckitt’s consulting expert, Dr. William H. Potter, until after he testifies in a parallel proceeding in Australia involving the parties. Ansell Healthcare Products LLC v. Reckitt Benckiser LLC, C.A. No. 15-915-RGA, D.I. 82 (D. Del. Oct. 5, 2016); see also id., D.I. 76, 81. Although acting as only a consulting expert in the instant action, Ansell explained that Dr. Potter would testify as to noninfringement and invalidity in the Australian action, which is set to go to trial in mid-December 2016. (D.I. 76 at 1-2.) Ansell noted that far more confidential and highly confidential documents were produced in the instant action as compared to the Australian action, and Ansell questioned Dr. Potter’s “ability to separate the information that he may gain from Ansell’s Protected Information produced in this case from the information properly available in the Australian proceeding.” Id. at 1-3. Ultimately denying Ansell’s request, Judge Andrews observed:

The Court’s main concern, based on comity, would be not to do something that would interfere with the Australian proceedings, including circumventing Australian discovery limitations. Like everyone else, I take Dr. Potter’s honesty as a given. I recognize that it is hard for one person to segregate information in the person’s own mind. Regardless of how successful Dr. Potter is at doing this, any danger of inadvertent violation of the protective order is minimized since the documents provided to him in connection with this litigation will not be available in the Australian proceedings. I do think Defendant needs its expert to be fully informed if he is to be of maximum utility to it. Plaintiff has not shown good cause for preventing the disclosure.

To the extent Dr. Potter needs to sign a different acknowledgement form than the one he has already signed, he needs to do that before any “highly confidential – attorneys’ eyes only” documentation is provided to him.

Published on:

In Toshiba Samsung Storage Technology Korea Corporation v. LG Electronics, Inc., et al., C.A. No. 15-691-LPS-CJB (D. Del. Sept. 20, 2016) (unsealed Sept. 28, 2016) Magistrate Judge Christopher J. Burke denied Defendants’ motion to dismiss due to lack of standing. The parties had consented to Judge Burke conducting any and all proceedings and entering a final order with regard to Defendants’ motion to dismiss. Id. at 4.

Defendants argued that Plaintiff had not obtained all substantial rights to the patents-in-suit when third party Samsung had executed an assignment agreement with Plaintiff, because Samsung retained “the right to practice the patents, the right to license the patents, and the right to re-acquire the patents at no cost.” Id. at 9. The Court concluded that the most important factor in the “all substantial rights” analysis – the right to sue – weighed in favor of Plaintiff. Id. at 25. Having first interpreted disputed portions of the assignment agreement, the Court concluded that Plaintiff had the exclusive right to sue, and the presence of a covenant not to sue a “future licensee” not named in the agreement did not divest Plaintiffs its standing due to the mere possibility that such “future licensee” could be Defendants. See id. at 17-20. Second, “the Court [was] also swayed by the apparent intent of the parties in drafting the Agreement, as reflected by some of the wording in the document.” Id. at 26. Third, it concluded that the limits on transfer were “not so stringent as to suggest” a lack of standing where Samsung’s right of first refusal allowed only for “the possibility of re-acquiring the Assigned Patents, only if [Plaintiff] decides to transfer, sell or abandon the patents[.]” Id. at 27 (emphasis in original). Fourth, it was “important that the Agreement provides [Plaintiff] other rights indicative of ownership. For example, [Plaintiff] enjoys exclusive rights to all proceeds and other benefits obtained from its enforcement actions, and the right to make, use and sell products or services under the Assigned Patents.” Id. at 28.

Accordingly, and “[t]aking all of these considerations into account, and based on the record before it, the Court conclude[d] that the Agreement did transfer from Samsung to [Plaintiff] all substantial rights in the Assigned Patents,” and denied Defendants’ motion. Id. at 28.

Contact Information