Delaware Intellectual Property Litigation

Judge Stark Sworn-In As A U.S. District Judge

Gregory B. Williams — Wed, 18 Aug 2010 09:52:11 -0500

On August 16, 2010, the Honorable Leonard P. Stark was sworn-in as a U.S. District Judge for the United States District Court for the District of Delaware. According to the Court's website, a formal ceremony will be held in the future. Many of the cases that were previously assigned to Judge Joseph J. Farnan, Jr. (retired) have begun to be reassigned to Judge Stark.

Judge Stark Elevated to District Court Judge

Gregory B. Williams — Fri, 06 Aug 2010 15:07:32 -0500

The U.S. Senate confirmed the Honorable Leonard P. Stark as a district court judge on the United States District Court for the District of Delaware. The confirmation elevates Judge Stark from a magistrate judge to a district court judge. Given the retirement of the Honorable Joseph J. Farnan, Jr. last week, the Court still has one vacant district court judge position left to be filled. The Court will now need to find someone to replace Judge Stark as a magistrate judge.

Judge Robinson Grants Cisco Systems' Motion for Summary Judgment of Non-Infringement

Gregory B. Williams — Sat, 31 Jul 2010 09:07:32 -0500

On July 26, 2010, through an Opinion and Order entered by the Honorable Sue L. Robinson, the District of Delaware ruled on ten motions in the two related patent infringement actions captioned, Sigram Schindler Betieligungsgesellschaft mbH v. Cisco Systems, Inc., Civil Action No. 09-72-SLR, and Cisco Systems v. Sigram Schindler Betieligungsgesellschaft mbH, Civil Action No. 09-232-SLR. The patents in suit relate to voice over internet protocol telephony. The problem claimed to be solved by the invention is how to use internet telephony without interrupting the real-time transfer of data. Id. at 16.

In light of the breadth and length of the Opinion, which is fifty-seven (57) pages, this posting focuses only on the Court’s ruling with respect to the parties’ cross motions for summary judgment. In that regard, Sigram Schindler Betieligungsgesellschaft (“SSBG”) sought partial summary judgment that Cisco’s 1861, 881 SRST and 888 SRST router products infringe claim 34 of U.S. Patent No. 6,954,453 (“the ‘453 patent”), claim 45 of U.S. Patent No. 7,483,431 (“the ‘431 patent”) and claims 69 and 84 of U.S. Patent No. 7,145,902 (“the ‘902 patent”). Cisco sought summary judgment that its router products did not infringe the patents under any of the fourteen infringing scenarios identified by SSBG’s expert in his infringement report. Id. at 13. In short, the Court granted Cisco’s motion for summary judgment of non-infringement, and denied SSBG’s motion for summary judgment of infringement. Id. at 30-31. A complete copy of the Opinion is attached.

Significantly, the Court, by and through Judge Robinson, had also issued its Claim Construction Opinion on the same date construing certain claim limitations relevant to the issue of infringement. A copy of the Claim Construction Opinion is attached.

After analyzing SSBG’s motion for partial summary judgment of infringement and Cisco’s motion for summary judgment of non-infringement and relying upon its claim constructions, the Court granted Cisco’s motion for summary judgment of non-infringement, and denied SSBG’s motion for partial summary judgment of infringement. Id. at 31. In so ruling, the Court found that all of SSBG’s relevant infringing scenarios, except “call transfer”, were premised on SSBG’s construction of the term “change over”, which the Court rejected in accepting Cisco’s construction of that term. Id. at 18-30. With respect to the “call transfer” scenario, the Court found could that SSBG had not identified a genuine issue of material fact for trial. Id. at 22-24. With respect to those asserted claims requiring “means responsive to a control signal for changing over,” the Court noted that its holding was bolstered in that there was no dispute that Cisco’s products do not contain the “control device” structure described in the specification of the patent. Further, the Court found that no reasonable jury could find that Cisco infringes the ‘431 patent for the additional reason that there was no indication in the record that Cisco directly infringes that patent. Id. at 30.

Judge Farnan Issues Willfulness and Damages Opinion in LGD v. AUO

Gregory B. Williams — Sat, 17 Jul 2010 13:31:22 -0500

On July 8, 2010, the United States District Court for the District of Delaware, by and through a Memorandum Opinion entered by The Honorable Joseph J. Farnan, Jr., issued its conclusions on the issues of willful infringement and damages in LG Display Co., Ltd. v. AU Optronics Corp., et al., Civil Action No. 06-726-JJF (consolidated). With respect to willfulness, the Court concluded that AUO did not establish by clear and convincing evidence that LGD willfully infringed the asserted AUO patents that the Court had ruled in its prior Opinion (See Blog Posting of June 5, 2010) were infringed by LGD. In reaching its conclusion on willfulness, the Court found that AUO presented very little evidence of LGD's prelitigation conduct and that LGD maintained plausible and credible defenses to infringement and plausible and credible arguments concerning invalidity of the asserted patents. Id. at 1-4.

With respect to damages for LGD's infringement of the asserted AUO patents, the Court concluded that AUO is entitled to damages in the lump sum amount of $305,399, plus prejudgment and postjudgment interest. Id. at 6-14. The damages award was on the lower end of the damages range that AUO contended it was entitled to as a result of LGD's infringement. Id. at 6. Given there was no finding of willful infringement by LGD and no other evidence presented by AUO sufficient for the Court to declare the case "exceptional" to justify an enhanced damages award, the Court declined to award AUO its attorneys' fees pursuant to 35 U.S.C. § 285. Id. at 11-13.

A copy of the complete Opinion is attached.

Chief Judge Sleet Adopts Magistrate Judge Stark's Report and Recommendation on Claim Construction

Gregory B. Williams — Sat, 03 Jul 2010 09:00:05 -0500

By Order dated June 24, 2010, Chief Judge Gregory M. Sleet adopted the Report and Recommendation Regarding Claim Construction entered by Magistrate Judge Leonard P. Stark on May 12, 2010 in The Research Foundation of State of New York, et al. v. Mylan Pharmaceuticals, L.P., Civil Action No. 09-184-GMS-LPS. In doing so, the Court adopted the constructions of the five terms in dispute, "tetracylcline compound", "antibiotic tetracycline compound", "the tetracycline compound has substantially no anti-microbial activity", "minimum antibiotic serum concentration", and "chronic inflammatory condition", as used in the asserted claims of United States Patent Nos. 7,232,572, 7,211,267, 5,789,395 and 5,919,775 in accordance with Judge Stark's recommended constructions in his Report and Recommendation. The Court also adopted the constructions of the six terms that the parties agreed to among themselves as set forth in Judge Stark's Report and Recommendation. Copies of Judge Stark's Report and Recommendation Regarding Claim Construction and Judge Sleet's Order adopting it are attached.

Judge Stark Grants Facebook's Motion to Amend in Part and Denies It in Part

Gregory B. Williams — Sun, 27 Jun 2010 17:09:34 -0500

By Memorandum Opinion and Order entered by The Honorable Leonard P. Stark, in Leader Technologies, Inc. v. Facebook, Inc., Civil Action No. 08-862-LPS (D.Del., June 24, 2010), the Court granted in part and denied in part defendant Facebook’s Motion for Leave to Amend Its Responsive Pleading to Add a Defense and Counterclaim of Inequitable Conduct and to Amend Its False Marking Counterclaim. Specifically, the Court’s Order allowed Facebook to add an affirmative defense of inequitable conduct and a declaratory judgment counterclaim, but did not permit Facebook to amend its existing false marking counterclaim. Id. at 10.

During its discussion of the applicable legal standards, the Court noted that, if a party moves for leave to amend the pleadings after a deadline imposed by a Scheduling Order, Rule 16 is implicated. Id. at 5. Pursuant to Rule 16(b), “a schedule may be modified only for good cause and with the judge’s consent.” Fed.R.Civ.P. 16(b)(4). In other words, “[a]fter a pleading deadline has passed, the Third Circuit requires a showing of good cause in order to amend.” Id. at 5. Moreover, “[i]n contrast to Rule 15(a), the good cause standard under Rule 16(b) hinges on diligence of the movant, and not on prejudice to the non-moving party.” Id. at 6.

In denying Facebook’s Motion to Amend with respect to its request to amend its existing false marking counterclaim, the Court concluded that Facebook had not demonstrated good cause to amend the counterclaim as required by Federal Rule of Civil Procedure 16(b). Id. at 6. Although in support of its motion Facebook contended that it could not have known that Leader was marking its other products with the ‘751 patent number until the February 17, 2010 deposition of Timothy Fathbruckner, Leader was able to direct the Court to numerous documents within Facebook’s own document production which occurred more than one year prior to Facebook’s motion that contained examples of how Leader marked the newly accused products. Id. Facebook did not dispute its possession of those documents and did not provide any explanation for why, in light of its possession of such documents, it could not have complied with the Scheduling Order. Id.

The general lesson in the Opinion is that a party needs to be diligent in reviewing discovery and, if a party moves for leave to amend a pleading after the deadline to amend in the Scheduling Order has passed, that party better be prepared to demonstrate “good cause” for the amendment, including no lack of diligence on its behalf. A complete copy of the Memorandum Opinion is attached.

Judge Robinson Enters Judgment in Favor of Defendants Apotex Upon Finding Patent Claims Invalid Based on Obviousness

Gregory B. Williams — Sat, 19 Jun 2010 11:53:26 -0500

In Senju Pharmaceutical Co. Ltd., et al. v. Apotex Inc., et al., Civil Action No. 07-779-SLR, the U.S. District Court for the District of Delaware, by and through a memorandum opinion entered by The Honorable Sue L. Robinson on June 14, 2010, entered judgment in favor of defendants, Apotex Inc. and Apotex Corp. (“Apotex”), and against plaintiffs, Senju Pharmaceutical Co. Ltd (“Senju”), Kyorin Pharmaceutical Co. Ltd. (“Kyorin”) and Allergan, Inc. (“Allergan”). The case is an infringement action that was tried by bench trial on January 12-14, 2010. In rendering judgment in favor of defendants, the Court concluded among other things that, although plaintiffs had demonstrated by a preponderance of the evidence that defendants’ ANDA product infringed claims 1-3, 6,7, and 9 of the patent in dispute, U.S. Patent No. 6,333,045 (“the ‘045 patent”), defendants demonstrated by clear and convincing evidence that those claims are invalid based on obviousness given the asserted prior art. Id. at 15-21 and 37.

A complete copy of the Court’s Memorandum Opinion is attached.

By way of background, plaintiffs Senju and Kyorin, are co-owners of the ‘045 patent and plaintiff Allergan is the holder of an approved New Drug Application (“NDA”) for a 0.3% gatifloxacin ophthalmic solution containing disodium edetate sold under the trade ZYMAR®. Id. at 1. The Orange Book lists, among other things, the ‘045 patent and U.S. Patent No. 4,980,470 (“the ‘470 patent”) in connection with ZYMAR®. Id. In July 2007, Defendant Apotex filed an Abbreviated New Drug Application (“the ANDA”) with the United States Food and Drug Administration (“FDA”) seeking approval, prior to the expiration of the ‘045 patent, to manufacture, market and sell a generic version of ZYMAR®. Id. at 1-2. On October 17, 2007, defendants sent plaintiffs written notification that the ANDA contained a Paragraph IV certification for the ‘045 patent. In the Paragraph IV certification, defendants contended that the ANDA product would not infringe claims 4, 5, 10 and 11 of the ‘045 patent and that all claims of the ‘045 patent are invalid. Id. at 2.

In November 2007, plaintiffs brought this action, pursuant to 35 U.S.C. § 271(e)(2)(A), alleging that the ANDA product would infringe claims 1-3,6,7 and 9 of the ‘045 patent. Id. Defendants responded with affirmative defenses and counterclaims seeking declaratory judgments of non-infringement, invalidity and unenforceability of the ‘045 patent. Id. The parties stipulated that, if the claims were found valid, the ANDA product would infringe claims 1-3 and 9 of the ‘045 patent. Infringement of claims 6 and 7 had to be proven by plaintiffs because defendants disputed that the ANDA product would infringe those claims. Id.

After considering all of the documentary evidence and testimony, the Court found and concluded as follows: (1) plaintiffs demonstrated by a preponderance of the evidence that defendants’ ANDA product infringes claims 1-3,6,7 and 9 of the ‘045 patent; (2) defendants demonstrated by clear and convincing evidence that claims 1-3 and 6-9 of the ‘045 patent are rendered obvious by the prior art; (3) defendants failed to demonstrate by clear and convincing evidence that claims 6 and 7 of the ‘045 patent are invalid for lack of enablement; and (4) defendants failed to demonstrate by clear and convincing evidence that the ‘045 patent is unenforceable due to inequitable conduct. Id. at 50.

Judge Kelly Denies Motion to Stay Defendants' Patent Counterclaims Pending Re-examination of Patents At Issue By USPTO

Gregory B. Williams — Sat, 12 Jun 2010 12:22:19 -0500

In Life Technologies Corporation, et al. v. Illumina, Inc., et al., Civil Action No. 09-706-RK (D.Del., June 7, 2010), the Court , by opinion entered by Senior Judge Robert F. Kelly, denied plaintiff Life Tech's motion to stay defendants' patent counterclaims pending re-examination of defendants' patents-in-suit by the United States Patent and Trademark Office ("USPTO"). In support of their motion, plaintiffs asserted that the re-examinations by the USPTO would likely to result in cancellation or changes of the asserted patent claims, that a stay would streamline issues in the action and promote judicial economy, and proceeding with Life Tech's invalidity case against defendant Illumina's patents in this action could be contradictory to the result of the re-examination of those patents by the USPTO. Id. at 2-4. Defendants countered by asserting that the delay in the re-examination process will be much longer than plaintiff suggests, the subject matter underlying plaintiffs and defendants infringement and invalidity claims are related, plaintiffs and defendants are direct competitors in the technology, and that it would be highly unlikely that proceeding in this action could produce a contradictory result in the re-examination proceeding before the USPTO because of the mandates of 35 U.S.C. § 317(b). Id.

In denying plaintiffs' motion to stay, the Court reasoned that, although the re-examinations before the USPTO have the potential for simplifying the issues pertaining to the counterclaim patents in the case, the potential benefit would be at the expense of placing the counterclaim on hold for years while the plaintiffs' case continues. Id. at 5. Also, the patents in plaintiffs' case and the patents in defendants' counterclaim overlap at least to a certain extent and ,when one further considers that the claims at issue involve parties who are in direct competition, the potential for irreparable harm caused by a stay of the counterclaim far outweighs the possibility of simplifying some of the claims at issue. Id. at 5-6. Further, it is highly unlikely that a contradictory result could be reached in this Court and the USPTO in its re-examination proceeding because 35 U.S.C. § 317(b), which is applicable to inter-partes re-examinations, mandates that, if the Court proceeds in this action and Life Tech fails to prove that Illumina's patent claims are invalid, that result would be binding in the re-examinations. Id. at 4. Thus, the Court denied plaintiffs' motion to stay the counterclaim action.

A complete copy of the opinion is attached.

Chief Judge Sleet Issues Markman Order Incorporating Sanction

Gregory B. Williams — Sat, 05 Jun 2010 13:50:37 -0500

In Integrated Discrete Devices, LLC v. Diodes Incorporated, C.A. No. 08-888-GMS (D.Del., May 26, 2010), The Honorable Gregory M. Sleet, Chief Judge, issued the Court's Markman Order construing seven disputed terms in a patent action. Of particular note in the Court's Order is the first footnote which notes that the Court adopted the defendant's proposed construction of the term "semiconductor substrate of a first conductivity type" to mean "bottom semiconductor material of a first conductivity type, upon which layers may be deposited or grown" . . . "as a sanction for the plaintiff's failure to follow its Markman procedures." Id. at 1, n.1.

A copy of the Court's Markman Order is attached.

Judge Farnan Issues Second Phase Opinion in LGD v. AUO

Gregory B. Williams — Sat, 05 Jun 2010 12:50:06 -0500

On April 30, 2010, The Honorable Joseph J. Farnan, Jr. issued the opinion setting forth the Court's findings of fact and conclusions of law in the second phase of the patent infringement action captioned LG Display Co., Ltd. v. AU Optronics Corp., C.A. No. 06-726-JJF (D.Del.). In the second phase, the claims at issue were those asserted by LG Display Co., Ltd. ("LGD") alleging infringement of four patents against AU Optronics Corporation ("AUO") as well as AUO's invalidity defense. In its latest opinion, the Court defined the disputed terms in the asserted patents and concluded that LGD did not establish by a preponderance of the evidence that AUO infringes the asserted patents. The Court also concluded that AUO did not establish by clear and convincing evidence that the asserted patents are invalid.

Readers may recall that, in February 2010, Judge Farnan issued the opinion setting forth the Court's findings of fact and conclusions of law in the first phase of this patent infringement action which addressed AUO's patent infringement claims against LGD and LGD's invalidity defense. See Blog Posting of February 21, 2010. In the first phase opinion, the Court concluded that AUO did establish by a preponderance of the evidence that LGD infringed the patents asserted by AUO in this action, and LGD did not establish by clear and convincing evidence that such patents were invalid.

Thus, the Court ruled in favor of AUO in both phases of the action following the bench trial that took place in June 2009. A complete copy of the second phase opinion is attached.

JUDGE STARK RESCHEDULES MARKMAN HEARING AS A RESULT OF PLAINTIFF'S FAILURE TO DISCLOSE REBUTTAL EXPERT REPORT

Gregory B. Williams — Tue, 01 Jun 2010 13:55:32 -0500

In Biovail Laboratories Int'l SRL v. Cary Pharmaceuticals Inc., C.A. No. 09-605-JJF-LPS (D.Del., May 26, 2010), Judge Stark denied Defendant Cary Pharmaceuticals ("Cary") motion to strike plaintiff Biovail expert's supplemental declaration that was submitted by plaintiff in connection with the filing of its answering brief on claim construction. However, given plaintiff's conduct in submitting its expert's supplemental declaration after the deadline set forth in the Scheduling Order agreed to by the parties for depositions of experts who submitted declarations, Judge Stark, among other things, postponed the Markman hearing for four weeks and allowed Cary to conduct a second deposition of plaintiff's expert directed solely to his supplemental declaration and to file a reply brief in support of its proposed claim construction if it so desired. Id. at 5-7.

In his Order, Judge Stark noted that, "[w]hile Biovail has not engaged in willful deception, its silence as to its intent to file a rebuttal report and its failure to in any way disclose Hopfenberg's rebuttal opinions at a time when Cary could test and/or respond to them appears to have had the consequence of deceiving Cary into believing that the record with respect to the opinions of claim construction was complete. . . . Biovail's conduct, if unaddressed, will unduly prejudice Cary's ability to advocate its position at the Markman hearing." Id. at 5.

A copy of the Order is attached hereto.

COURT DENIES NOVA CHEMICAL'S MOTION TO STRIKE DOW CHEMICAL'S EXPERT DECLARATIONS

Gregory B. Williams — Mon, 24 May 2010 13:02:11 -0500

In The Dow Chemical Company v. Nova Chemicals Corp., C.A. No. 05-737-JJF (D.Del., May 20, 2010), Judge Farnan entered the Court's Memorandum Opinion and Oder denying the motion of defendant Nova Chemicals ("Nova") seeking to strike the expert declarations submitted by plaintiff Dow Chemical ("Dow") in support of its counterstatement of facts in opposition to Nova's motion for summary judgment. Nova contended that the expert declarations relied upon in Dow's counterstatement were improper, untimely and should be stricken because they purportedly constituted additional expert opinions that should have been filed before the end of discovery and were improperly molded to meet Dow's legal challenges in responding to the summary judgment motions and, thus, Nova allegedly was unduly prejudiced. Id. at 3-5. The Court disagreed with Nova and refused to strike the expert declarations. Id. at 5-7.

The Court noted that, "[i]n patent cases, discovery issues, such as the exclusion of evidence, are evaluated under Third Circuit precedent. Under that precedent '[t]he exclusion of critical evidence is considered an extreme sanction, not normally to be imposed absent a showing of willful deception or flagrant disregard of a court order by the proponent of the evidence.'"

Upon evaluation, the Court concluded that "the subject declarations only elaborate and therefore, should not be excluded. The declarations are not newly conceived arguments. The subject declarations are more in line with the portion of the testimony that was allowed in Forest Labs, Inc. v. Ivex Pharms., Inc., 237 F.R.D. 106 (D.Del. 2006)."

A copy of the Memorandum Opinion is attached hereto.

Magistrate Judge Stark Moves Closer To Filling One Of The District Court Judge Vacancies

Gregory B. Williams — Mon, 17 May 2010 11:53:59 -0500

On Thursday, May 13, 2010, the Senate Judiciary Committee unaminously approved the nomination of U.S. Magistrate Judge Leonard P. Stark to become a district judge. Thus, Judge Stark's nomination now moves to the full Senate for consideration. Judge Stark has been serving as a Magistrate Judge on the U.S. Court for the District of Delaware since 2007.

District of Delaware Issues Amended Local Rules Effective April 30, 2010

Gregory B. Williams — Mon, 03 May 2010 10:55:11 -0500

The United States District Court for the District of Delaware issued amended Local Rules of Civil Practice and Procedure which became effective on April 30, 2010. I serve as a member of the Court's Advisory Committee and also served on the Local Rules Committee which assisted the Court in drafting the amended rules. Essentially, these amendments were designed to reconcile the Local Rules with the 2009 amendments to the Federal Rules of Civil Procedure, including rules relating to computation of time.

A few of the more significant amendments to the Local Rules include:

(1) In Rule 7.1.2(b) lengthening the time for a response to a motion to be filed to 14 days and lengthening the time for a reply to be filed to 7 days;

(2) In Rule 7.1.3, reducing the limit of the length of opening and answering briefs to no more than 20 pages each and reply briefs to no more than 10 pages, in each instance exclusive of any table of contents or table of citations;

(3) In Rule 7.1.5 (b) clarifying that a party seeking review of an order, decision or recommendation disposition issued by a Magistrate Judge pursuant to Fed.R.Civ. P. 72 shall be limited to the filing of objections permitted under Fed.R.Civ.P. 72, and shall not be permitted to file a motion for reargument before either the Magistrate Judge or the District Court Judge pursuant to D.Del. LR 7.1.5(a); and

(4) In Rule 30.1, defining "reasonable notice" for the taking of depositions to be not less than 10 days.

A complete copy of the amended Local Rules is attached.

Judge Leonard P. Stark Nominated for U.S. District Court for the District of Delaware

Gregory B. Williams — Wed, 17 Mar 2010 17:48:11 -0500

Today, the White House issued a press release advising that President Obama has nominated Judge Leonard P. Stark to fill one of the current vacancies on the United States District Court for the District of Delaware. Judge Stark has been serving as a Magistrate Judge on the Court since 2007. A copy of the press release is attached.

Judge Robinson Defers Ruling On Process Patent Until After Bilski Decision By U.S. Supreme Court

Gregory B. Williams — Mon, 08 Mar 2010 09:22:36 -0500

In an opinion entered by The Honorable Sue L. Robinson on February 26, 2010 in Accenture Global Services GMBH v. Guidewire Software Inc., Civil Action No. 07-826-SLR, the Court denied without prejudice defendant Guidewire Software Inc.'s motion for partial summary judgment asserting the invalidity of U.S. Patent Nos. 7,013,284 ("the '284 patent") and 7,017,111 ("the '111 patent") claiming unpatentable subject matter and ordered that it be re-filed after the U.S. Supreme Court issues its ruling in Bilski v. Doll, 129 S. Ct. 2735 (U.S. 2009).

In their complaint, plaintiffs assert that Guidewire infringes the '284 patent and '111 patent. The patents at issue describe a computer program for developing component-based software capable of performing tasks relating to insurance transactions such as claim processing. Guidewire's motion for partial summary judgment of the invalidity of the '284 and '111 patents for claiming unpatentable subject matter is based on the machine-or-transformation test ("MORT test") set forth by the Federal Circuit in In Re Bilski, 545 F.3d 943 (Fed. Cir. 2008) (en banc).

The Bilski court explained that "a process is 'surely patent-eligible under § 101 if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing." Id. at 954. However, in its opinion, the District of Delaware noted that the "Bilski court did not provide guidance as to the machine prong of the MORT test, stating that it would 'leave to future cases the elaboration of the precise contours of machine implementation, as well as the answers to particular questions, such as whether or when recitation of a computer suffices to tie a process claim to a particular machine.'"

The District Court also noted that it believes "the claims of plaintiffs' patents would not meet the 'transformation' prong of the MORT test, but raise substantial questions under the 'machine' prong." The Court further noted that, while the plaintiffs' patents recite some machine connection, it is unclear whether the degree of connectivity meaningfully limits the claimed scope. Thus, given the fact that the U.S. Supreme Court may illuminate or alter the framework of the determination under the MORT test, the Court found it prudent to defer the subject matter inquiry under 35 U.S.C. § 101 until a decision is issued in Bilksi v. Doll.

JUDGE ROBINSON GRANTS SKYPE'S MOTION TO DISMISS PLAINTIFFS' PATENT INFRINGEMENT COMPLAINT

Gregory B. Williams — Sun, 28 Feb 2010 18:42:47 -0500

In a ruling entered on February 24, 2010 in Eidos Communications, LLC v. Skype Technologies SA, Civil Action No. 09-234 (D.Del.), The Honorable Sue L. Robinson granted the motion of defendants, Skype Technologies, SA and Skype, Inc. ("Skype"), to dismiss plaintiffs' patent infringement complaint for failure to state a claim or, in the alternative, motion for a more definite statement. After analyzing the complaint, the Court concluded that plaintiffs' complaint failed failed to meet the minimum pleading requirements of Federal Rule of Civil Procedure 8 and Twombly. This case is informative on the minimum requirements necessary by plaintiffs in identifying products or methodologies in their patent infringement complaints.

In their complaint, plaintiffs' alleged that (1) Skype produce, offer for sale, sell and/or import "communication systems products and/or methodologies that infringe one or more claims" of each of plaintiffs' patents; and (2) Skype's "communication system products and/or methodologies" meet each and every limitation of at least one claim of each patent. However, no specific products or methodologies were named in the complaint.

In granting Skype's motion, the Court found that plaintiffs' complaint in this action failed to even provide a general product category even analogous to "electric motors." The Court also found that plaintiffs' complaint failed to mimic Federal Rules of Civil Procedure Form 18, which sets forth a sample complaint for patent infringement that meets the Twombly pleading standard, insofar as no category of product or general identification of process or method is identified.

JUDGE FARNAN RULES THAT LG LITERALLY INFRINGES PATENTS OF AU OPTRONICS

Gregory B. Williams — Sun, 21 Feb 2010 16:20:04 -0500

In a Memorandum Opinion entered by The Honorable Joseph J. Farnan, Jr. on February 16, 2010, the United States District Court for the District of Delaware set forth its findings of fact and conclusions of law on the patent infringement claims of AU Optronics Corporation (“AUO”) against LG Display Co., Ltd. (“LGD”) which were tried by the parties during phase one of the bench trial held before Judge Farnan in June 2009. The Opinion also sets forth the Court’s claim construction of the disputed terms in the asserted patents and its analysis concerning the infringement claims asserted by AUO against LG, and the invalidity defense asserted by LG.

Ultimately, the Court concludes that (1) AUO established by a preponderance of the evidence that LGD literally infringes the patents asserted by AUO in the action, and (2) LGD did not establish by clear and convincing evidence that the patents asserted by AUO in the action are invalid. A complete copy of the Opinion is attached.

D.DEL. GRANTS INLINE'S MOTION FOR JUDGMENT AS MATTER OF LAW IN PART

Gregory B. Williams — Sun, 14 Feb 2010 14:26:40 -0500

By an opinion rendered by the Honorable Mary Pat Thynge, dated February 5, 2010, in Inline Corp. v. Earthlink, Inc., the U.S. District Court for the District of Delaware granted the motion for judgment as a matter of law of plaintiff, Inline Connection Corporation ("Inline"), as to the jury's patent invalidity verdict, but denied the motion as to the jury's non-infringement verdict. The Court also denied Inline's motion for a new trial.

A copy of the opinion is attached.

By way of background, in June 2002, Inline filed suit against Earthlink, Inc. ("Earthlink") alleging infringement of U.S. Patent Nos. 5,844,596 ("the '596 patent"), 6,243,446 ("the '446 patent") and another patent. In 2003, Inline added its U.S. Patent No. 6,542,585 ("the '585 patent") to the litigation.

The trial in the matter commenced in February 2007. During trial, Inline asserted infringement of the following by Earthlink: 1) claim 61 of the '596 patent; 2) claims1 through 5 of the '446 patent; and 3) claims 1,2, 4, 8 and 9 of the '585 patent. Earthlink denied infringement and alleged that the asserted claims were invalid because they were anticipated and obvious, and the patents failed to comply with the written description and enablement requirements of 35 U.S.C. § 112.

The jury returned a verdict in favor of Earthlink of non-infringement and that the asserted claims were invalid as anticipated and obvious, and the patent failed to comply with the written description and enabling requirements of 35 U.S.C. § 112. Thereafter, Inline renewed its motion for judgment as a matter of law pursuant to Federal Rule of Civil Procedure 50(a) and, in the alternative, moved for a new trial pursuant to Rule 59(a).

Upon careful analysis of the jury's verdicts and the record, the Court concluded that there was not substantial evidence to support the jury's verdict on anticipation and that the record could not support the jury's verdict on obviousness. The Court also concluded that there was not substantial evidence to support the jury's verdict of invalidity of the patents for failure to comply with the written description and enablement requirements of 35 U.S.C. § 112. The Court further concluded that there was substantial evidence in the record to support the jury's verdict on non-infringement, and the jury's verdict of non-infringement was not "contrary to the great weight of the evidence", or "wholly irrational" as to warrant the granting of a new trial on the infringement issue.

JUDGE JOSEPH J. FARNAN, JR. SUBMITS LETTER OF RETIREMENT

Gregory B. Williams — Thu, 11 Feb 2010 07:14:36 -0500

After 25 years of dedicated service as a United States District Judge, The Honorable Joseph J. Farnan, Jr. submitted his letter of retirement to President Barack Obama on January 26, 2010. The announcement of retirement posted on the Court's website states that Judge Farnan plans to leave his office on July 31, 2010.

Judge Farnan is highly regarded, played a pivotal role in establishing the national reputation of the United States District Court for the District of Delaware for handling intellectual property and other complex litigation, and will be missed by his colleagues on the bench and practitioners.