Delaware Intellectual Property Litigation

Judge Stark Agrees with Defendants that Material Contained in Two Patents Amount to Single Reference for Purposes of Anticipation Defense

Gregory B. Williams — Sat, 21 Jan 2012 16:38:46 -0500

By Memorandum Opinion entered by the Honorable Leonard P. Stark in Sunovion Pharmaceuticals Inc. v. Dey Pharma, L.P., et al., Civil Action 06-113-LPS (D.Del., January 18, 2012), the Court agreed with defendants that British patent, GB 1 298 494 (“the GB ‘494 patent”) adequately incorporates by reference the practical utility of the racemic compounds separately described in British patent, GB 1 200 886 (“the GB ‘886 patent”), such that the pertinent material from the two patents can be properly considered a “single reference” for purposes of defendants’ invalidity defense based on anticipation.

A complete copy of the Memorandum Opinion is attached.

Chief Judge Sleet Denies Parties' Post-Trial Motions After Jury Returns Verdict for Defendant on Infringement Claims

Gregory B. Williams — Sat, 14 Jan 2012 11:16:34 -0500

By Memorandum Opinion entered by the Honorable Gregory M. Sleet in Grape Technology Group, Inc., et al. v. Jingle Networks, Inc., Civil Action No. 08-408-GMS (D.Del., January 9, 2012), the Court denied all three of the post-trial motions filed by the parties which consisted of the motion of plaintiffs for a new trial, the renewed motion of defendant for judgment as a matter of law, and the motion of defendant for attorneys’ fees pursuant to 35 U.S.C. § 285. Following a six day trial, the jury had previously rendered a unanimous verdict in favor of defendant Jingle Networks on the issue of infringement with respect to all claims, but also found in favor of plaintiffs on the claims of invalidity. Id. at 1. After considering the entire record, the parties’ post-trial motions and the applicable law, the Court decided to deny all of the parties’ post-trial motions. Id. at 2-23.

A complete copy of the Memorandum Opinion is attached.

Judge Robinson Denies Defendant's Motion to Sever or Stay the Claims Asserted Against It

Gregory B. Williams — Sat, 07 Jan 2012 11:03:48 -0500

By Memorandum Opinion entered by the Honorable Sue L. Robinson in Helicos Biosciences Corp. v. Pacific Biosciences of California, et al., Civil Action No. 10-735-SLR (December 22, 2011), the Court denied the motion of Defendant Life Technologies Corporation (“Life”) to sever or stay the claims asserted against it in plaintiff’s complaint. In its motion to sever or stay, Life claimed that it did not commercialize the technology accused of infringement. Id. at 1-2. Life also asserted that the other defendants accused of infringement were its direct competitors and, absent any allegation that Life’s activities or products overlapped with the other defendants in any way, the claims against Life should proceed separately in order to protect Life from an expensive and potentially harmful discovery process. Id. at 2.

The Court found that an issue of fact existed as to whether Life continued to make presentations about the accused Starlight technology after February 2010 and whether such activities would constitute an infringing “offer for sale.” Id. at 3-4. Thus, in light of the commonalities in the accused technologies and the overlap of the accused patents, the Court denied Life’s motion to sever or stay the claims against it. Id. at 5.

A complete copy of the Memorandum Opinion is attached.

District of Delaware Adopts Default Standard for Access to Source Code

Gregory B. Williams — Sat, 17 Dec 2011 06:22:21 -0500

On December 8, 2011, the United States District Court for the District of Delaware adopted a Default Standard for Access to Source Code. The default standard applies in pertinent matters absent agreement among the parties.

A copy of the Default Standard for Access to Source Code is attached.

District of Delaware Adopts Revised Default Standard for Discovery, Including Electronically Stored Information

Gregory B. Williams — Sat, 17 Dec 2011 05:59:14 -0500

On December 8, 2011, the United States District Court for the District of Delaware adopted a "Default Standard for Discovery, Including Discovery of Electronically Stored Information (“ESI”)". Among other things, the revised Default Standard specifies certain information that must be included in the parties’ initial disclosures and, in patent cases, also sets deadlines for the following: (1) plaintiffs to identify the accused product(s) and the asserted patent(s) they allegedly infringe, and to produce the file history for each asserted patent, (2) defendants to produce to plaintiffs core technical documents related to the accused product(s) to plaintiffs, (3) plaintiffs to produce to defendants initial infringement contentions, and (4) defendants to produce to plaintiffs initial invalidity contentions.

A copy of the Default Standard in its entirety is attached.

Judge Stark Denies Defendants' Motion for Reconsideration Based on Provision of America Invents Act

Gregory B. Williams — Fri, 09 Dec 2011 17:20:57 -0500

By Memorandum Opinion entered by The Honorable Leonard P. Stark in Softview LLC v. Apple Inc., et al., Civil Action No. 10-389-LPS (D.Del., December 7, 2011), the Court denied Defendants’ Motion for Reconsideration asking the Court to reconsider its September 30, 2011 Order granting Plaintiff Softview’s Motion to Amend Its Complaint to add parties and accused devices utilizing Android software.

A copy of the Memorandum Opinion is attached hereto.

In their Motion, Defendants, Apple Inc. and AT&T Mobility LLC, asserted two grounds for reconsideration. Id. at 2. First, Defendants asserted that new authorities regarding the requirements for permissive joinder under Fed.R.Civ.P. 20(a)(2)(A) abrogated the cases on which Softview’s motion to amend relied. Id. In other words, Defendants asserted that Section 299 of the America Invents Act (“AIA”) provides that “accused infringers may not be joined in one action as defendants or counterclaim defendants, or have their actions consolidated for trial, based solely on allegations that they each have infringed the patent or patents in suit.” Id. at 2-3. However, Defendants conceded that the new Section 299 applied to civil actions commenced on or after the date of the enactment of the AIA - September 16, 2011. Id. at 3. Thus, the Court found that the new Section 299 was not “an intervening change in controlling law” in this action. Id. Likewise, the Court found that district court decisions issued subsequent to the briefing on Softview’s motion also did not constitute an intervening change in controlling law. Id.

Second, Defendants asserted that there was a “need to correct a clear error of law regarding joinder” in the Court’s September 30, 2011 Order. Id. The Court, however, agreed with Softview that Defendants simply reargued their same position previously asserted rather than showing a clear error of law by the Court. Thus, the Court denied Defendants’ Motion for Reconsideration. Id.

Magistrate Judge Burke Recommends that Defendants' Rule 12(b)(6) Motion to Dismiss Be Granted in Part

Gregory B. Williams — Sun, 04 Dec 2011 10:36:11 -0500

By Report and Recommendation entered by The Honorable Christopher J. Burke in Eastman Chemical Co. v. Alphapet Inc., et al., Civil Action No. 09-971-LPS-CJB (D.Del., November 10, 2011), the Court granted in part defendants’ Rule 12(b)(6) motion to dismiss the breach of contract and trade secret misappropriation claims asserted by Plaintiff. The Complaint alleged claims against two of the five defendants for patent infringement, a breach of contract claim against four of the five defendants, and a claim of misappropriation of trade secrets against all five defendants. Id. at 1. The Court granted defendants’ motion to dismiss in part by dismissing without prejudice the breach of contract claim against one of the two defendants it was asserted against and dismissing any claim of breach of implied contract against all defendants. Id. at 2. Defendants’ motion was denied in all other respects. Id.

A copy of the Report and Recommendation of Magistrate Judge Burke is attached hereto.

Judge Stark Denies Plaintiffs' Motion for TRO and Preliminary Injunction But Indicates Court's Intent to Resolve Ownership of Patents-in-Suit on Expedited Basis

Gregory B. Williams — Sat, 19 Nov 2011 13:02:30 -0500

By Memorandum Order entered by The Honorable Leonard P. Stark in Advanced Micro Devices, Inc., et al. v. S3 Graphics Co., Ltd., et al., Civil Action No. 11-965-LPS (D.Del., November 8, 2011 (public version)), the Court denied Plaintiffs’ Motion for a Temporary Restraining Order and Preliminary Injunction seeking an Order from the Court directing Defendants to file papers in a pending, related investigation by the International Trade Commission (“ITC”) seeking dismissal of the ITC proceeding. However, in its Order, the Court did state its intent to enter a Scheduling Order in the case that will result in expedited case dispositive motions and/or a trial on the merits of the issue concerning the ownership of the patents-in-suit. Id. at 2.

A copy of the Memorandum Order is attached.

The Honorable Richard G. Andrews Sworn in as a United States District Judge

Gregory B. Williams — Sat, 12 Nov 2011 05:39:46 -0500

On November 8, 2011, The Honorable Richard G. Andrews was sworn in as a United States District Judge for the District of Delaware. Judge Andrews is former State prosecutor for the state of Delaware, a former Assistant United States Attorney for the District of Delaware, and a former law clerk for the Honorable Collins J. Seitz on the United States Court of Appeals for the Third Circuit.

Judge Andrews received his law degree from the University of California, Berkeley School of Law in 1981 and his bachelor's degree from Haverford College in 1977.

With the addition of Judge Andrews, all judicial positions currently existing in the United States District Court for the District of Delaware have been filled. The Court currently has four United States District Judges (Chief Judge Sleet, Judge Robinson, Judge Stark and Judge Andrews) and two United States Magistrate Judges (Judge Thynge and Judge Burke).

Judge Robinson Grants In Part Plaintiff's Motion to Preclude Defendant from Adducing Improper Damages Testimony from Expert

Gregory B. Williams — Sat, 05 Nov 2011 05:41:50 -0500

By Memorandum Order entered by The Honorable Sue L. Robinson in SRI International, Inc. v. Internet Security Systems, Inc., et al., Civil Action No. 04-1199-SLR (D.Del., October 31, 2011), the Court granted in part plaintiff SRI International’s motion to preclude improper damages testimony by defendant Symantec Corporation’s expert during the damages trial. Id. at 9. The Court also granted in part defendant Symantec Corporation’s motion to limit the testimony of plaintiff SRI International’s damages expert during the damages trial. Id. at 9-10.

A copy of the Memorandum Order is attached.

Judge Stark Grants Defendants' Motion for Partial Summary Judgment of Invalidity for Failure to Disclose Best Mode

Gregory B. Williams — Sat, 22 Oct 2011 07:56:44 -0500

By Order, dated September 22, 2011, and Opinion later entered explaining the Court’s reasoning by The Honorable Leonard P. Stark, in Ateliers De La Haute-Garonne, et al. v. Broetje Automation-USA Inc., et al., Civil Action No. 09-598-LPS (D.Del., September 26, 2011, unsealed October 4, 2011), the Court granted the motion of defendants Broetje Automation-USA, Inc. and Bröetje-Automation GMBH (collectively, “Broetje”) for partial summary judgment of invalidity for failure to disclose the best mode as required by 35 U.S.C. § 112 ¶ 1.

A copy of the Court's Opinion is attached.

In support of its motion, Broetje asserted two best mode defenses. First, Broetje asserted that the patents-in-suit failed to adequately disclose joint inventor Bornes’s subject belief that tubes with “five grooves” or passageways were the best mode of practicing the claimed invention. Id. at 8. Second, Broetje asserted that the patents-in-suit failed to adequately disclose joint inventor Auriol’s subjective belief that tubes with an “odd number” of grooves were the best mode of carrying out the claimed invention. Id.

In opposition to Broetje’s motion, plaintiffs made, among others, two legal arguments to Broetje’s best mode theories. First, plaintiffs contended that, in cases of joint inventorship, the legal standard for best mode requires that all joint inventors reach an agreement or meeting of the minds that there is only a single best mode for practicing the invention and, thus, the discrepancy between the joint inventors’ subjective best modes should defeat Broetje’s motion as a matter of law. Id. Second, plaintiffs contended that a best mode violation requires “intentional” concealment of the best mode. Id.

The Court rejected both of plaintiffs’ legal arguments. Id. at 9-11. In rejecting plaintiffs’ first legal argument, the Court noted that the Federal Circuit, in Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1357, 1361-62, 1364-65 (Fed. Cir. 2011), in affirming summary judgment of best mode invalidity wherein the patents-in-suit listed six inventors, repeatedly indicated that the best mode requirement was violated by the failure of a single inventor to disclose his or her contemplated best mode. Id. at 9-10. In rejecting plaintiffs’ second legal argument, the Court found that, “[a]lthough some Federal Circuit decisions do contain passing references to intentional concealment in connection with the best mode requirement, the clear weight of Federal Circuit authority holds that intentional concealment is not required for best mode violations.” Id. at 10-11 (internal citations omitted).

Judge Stark Denies Broetje's Motion to Dismiss Alleging Lack of Subject Matter Jurisdiction Over Patent-in-Suit

Gregory B. Williams — Sat, 15 Oct 2011 14:16:59 -0500

By Memorandum Opinion entered by The Honorable Leonard P. Stark in Ateliers De La Haute-Garonne, et al. v. Broetje Automation-USA Inc., et al., Civil Action No. 09-598-LPS (D.Del., October 13, 2011), the Court denied the motion of defendants Broetje Automation-USA, Inc. and Bröetje-Automation GMBH to dismiss plaintiffs’ first claim for lack of subject matter jurisdiction. In their motion, defendants asserted that the Court lacked subject matter jurisdiction over U.S. Patent No, 5,011,339 (“the ‘339 patent”) because the Applicants’ check to cover the issue fee bounced and, thus, the patent should be regarded as abandoned under 35 U.S.C. § 151 for failure to timely pay the required issue fee. Id. at 2. However, after considering the parties’ respective arguments and the evidence presented in the parties’ briefing and oral arguments, the Court concluded that plaintiffs established by a preponderance of the evidence that the issue fee was paid. Id. Thus, the ‘339 patent was not abandoned and the motion was denied. Id. at 5.

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

Magistrate Judge Burke Grants Plaintiff's Motion for Expedited Discovery

Gregory B. Williams — Sat, 08 Oct 2011 06:28:52 -0500

By Memorandum Order entered by The Honorable Christopher J. Burke in Kone Corporation v. Thyssenkrupp USA, Inc., et al., Civil Action No. 11-465-LPS-CJB (D.Del., September 26, 2011), the Court granted Plaintiff Kone Corporation’s motion for leave to take expedited discovery in connection with its pending motion for a preliminary injunction. The Court did modify and limit the scope of the expedited discovery granted. Id. at 16.

A copy of the Memorandum Order is attached.

In evaluating the motion, the Court noted that it had to decide which standard to apply for evaluating requests for expedited and/or early discovery since the Third Circuit has not adopted a standard and district courts in the Third Circuit have applied two different standards when considering motions for expedited discovery. Id. at 6. Ultimately, the Court concluded that it should apply the reasonableness standard to a request for expedited discovery. Id. at 9.

Under the reasonableness standard, the Court must weigh the need for discovery at an early juncture in the litigation against the breadth of the discovery requests and the prejudice to the responding party by considering such factors as (1) the timing and context of the discovery requests, including whether a preliminary injunction hearing has been scheduled; (2) the scope and purpose of the discovery requests; and (3) the nature of the burden to respondent. Id. at 7. After evaluating Plaintiff’s request for expedited discovery under the reasonableness standard, the Court granted Plaintiff’s motion but did alter the scope of the expedited discovery. Id. at 16.

Judge Stark Grants Softview's Motion to Strike Defendants Apple and AT&T Mobility's Inequitable Conduct Defenses

Gregory B. Williams — Sat, 01 Oct 2011 07:51:06 -0500

By Memorandum Order entered by The Honorable Leonard P. Stark in Softview LLC v. Apple, Inc. and AT&T Mobility LLC, Civil Action No. 10-389-LPS (D.Del., September 30, 2011), the Court granted plaintiff Softview’s motion to strike the original and proposed amended inequitable conduct defenses of defendants Apple and AT&T Mobility because both the original and proposed amended pleadings containing the inequitable conduct defense failed to adequately allege scienter. The Court, citing to the Federal Circuit's Opinion in Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1330 (Fed. Cir. 2009) noted that an inequitable conduct pleading “must allege facts ‘giv[ing] rise to a reasonable inference of scienter, including both (1) knowledge of the withheld material information or of the falsity of the material misrepresentation, and (2) specific intent to deceive the PTO’).” Id. at 2.

Upon evaluation of defendants’ pleadings, the Court concluded that defendants’ theory of inequitable conduct is based on a “mere disagreement with Softview’s prosecution counsel on whether certain amendments impermissibly added new matter” and such disagreement does not give rise to a reasonable inference that Softview’s counsel knew he was amending to add new matter and intended to deceive the PTO of this fact. Id. Accordingly, the Court found that neither the original or proposed amended pleading sufficiently set forth the required scienter element of inequitable conduct for an invalidity defense. Id. at 3.

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

Judge Robinson Grants Palm's and Intermec's Motions For Summary Judgment on Invalidity and Infringement in Part

Gregory B. Williams — Fri, 30 Sep 2011 09:04:20 -0500

By Memorandum Opinion entered by The Honorable Sue L. Robinson in Intermec Technologies Corp. v. Palm Inc., Civil Action No. 07-272-SLR (D.Del., September 15, 2011), the Court granted Defendant Palm Inc.’s (“Palm”) motion for summary judgment relating to its infringement counterclaims in part by finding no invalidity as to its U.S. Patent Nos. 6,665,803 (“the ‘803 patent”) and 7,096,049 (“the ‘049 patent”). The Court denied Palm’s motion for summary judgment of infringement of the ‘803 and ‘049 patents against Plaintiff Intermec Technologies Corp. (“Intermec”). Id. at 50. The Court also granted Intermec’s motion for summary judgment as to no infringement of claims 17, 18 and 22 of the ‘803 patent and claim 17 of the ‘049 patent. Id. at 51.

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

Chief Judge Sleet Grants LG's Motion to Amend Complaint

Gregory B. Williams — Sat, 24 Sep 2011 03:56:04 -0500

By Memorandum Opinion entered by The Honorable Gregory M. Sleet in LG Electronics U.S.A., et al. v. Whirlpool Corp., et al., Civil Action No. 10-311-GMS (D.Del., September 12, 2011)), the Court granted the motion of plaintiffs, LG Electronics U.S.A., Inc. and LG Electronics, Inc. (collectively “LG”), for leave of court to file a first amended complaint.

A complete copy of the Memorandum Opinion is attached.

By way of background, LG initiated the action against Whirlpool seeking declaratory judgment of non-infringement and invalidity of Whirlpool’s U.S. Patent No. 6,082,130 (“the ‘130 patent”). Whirlpool answered the complaint and asserted counterclaims against LG for infringement of U.S. Patent Nos. 7,386,992 (“the ‘992”) and 7,793,388 (“the ‘388 patent”). Thereafter, LG sought leave to amend its complaint to assert additional causes of action against defendant Whirlpool for infringement of four LG patents and for declaratory judgment of non-infringement and invalidity with respect to the ‘992 and ‘388 patents. Id. at 3. In opposition to LG’s motion, Whirlpool contended that the addition of LG’s new patent infringement claims would unnecessarily complicate the litigation, thereby prejudicing Whirlpool. Id.

In evaluating LG’s motion to amend the complaint, the Court recognized that the parties did not dispute the timeliness of LG’s motion, discovery had not yet commenced, and no trial date had been set. As a result, the Court concluded that allowing LG to amend its complaint would not be untimely or result in prejudice to Whirlpool. Id. In addition, the Court concluded that Whirlpool would not suffer undue prejudice as a result of differences between the technology at issue because LG’s four allegedly infringed patents at issue also are related to refrigerator technology and any complexity added to the case resulting from the additional claims was not sufficient to warrant denial given the Third Circuit’s liberal approach to the amendment of pleadings. Id. at 3-4.

Judge Stark Refuses to Disrupt Jury's Verdict and Denies Plaintiffs' Post-Trial Motions

Gregory B. Williams — Sat, 10 Sep 2011 06:44:37 -0500

By Memorandum Opinion entered by The Honorable Leonard P. Stark in Laboratory Skin Care, Inc., et al. v. Limited Brands, Inc., et al., Civil Action No. 06-601-LPS (D. Del., September 8, 2011), the Court denied Plaintiffs’ Renewed Motion for Judgment as a Matter of Law or in the Alternative for a New Trial. In their motion, Plaintiffs raised three grounds for the relief they sought: (1) insufficient evidence to support the jury’s finding of a barring sale; (2) erroneous jury instructions on both elements of the on-sale bar test; and (3) the alleged admittance into evidence of expert testimony beyond the scope of the expert report. Id. at 2. In denying Plaintiffs’ motion and upholding the verdict, the Court found that the jury did have sufficient evidence on which to base its finding of a barring sale, the Court's instructions on the two elements of the on-sale bar test were proper, and the disputed expert testimony was not unduly prejudicial to Plaintiffs. Id. at 5-15.

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

Court Grants Defendant's Motion for Summary Judgment of No Willful Infringement

Gregory B. Williams — Sat, 27 Aug 2011 08:40:51 -0500

By Memorandum Opinion entered by The Honorable Sue L. Robinson in Solvay, S.A. v. Honeywell Specialty Materials LLC, et al., Civil Action No. 06-557-SLR (D.Del., August 26, 2011), the Court granted defendant Honeywell’s motion for summary judgment of no willful infringement. The Court concluded that summary judgment of no willfulness was appropriate “because Honeywell presented a credible invalidity defense, precluding a finding of objective reasonableness despite the Federal Circuit’s ultimate rejection of the defense.” Id. at 13. In other words, despite the Federal Circuit's reversal of the district court's grant of summary judgment in favor of Honeywell on invalidity, the prior summary judgment ruling itself was enough to prevent the establishment of the objective prong of the willfulness standard. Id. at 10-13. The Court also denied Honeywell’s renewed motion for summary judgment of invalidity pursuant to 35 U.S.C. § 102(g) after finding that there are genuine issues of material fact as to whether Honeywell, as the party alleging prior invention, abandoned, suppressed or concealed the invention. Id. at 9-10.

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

Christopher J. Burke Appointed As United States Magistrate Judge for the District of Delaware

Gregory B. Williams — Sat, 20 Aug 2011 08:26:52 -0500

On August 4, 2011, Christopher J. Burke was officially appointed as a full-time United States Magistrate Judge for the District of Delaware. Prior to his appointment to the bench, Judge Burke was an Assistant U.S. Attorney for the District of Delaware.

A copy of the Court's Order of Appointment is attached hereto.

Judge Robinson Denies Defendant's Motion to Amend Its Affirmative Defenses and Counterclaims to Add New Allegations of Inequitable Conduct

Gregory B. Williams — Sat, 13 Aug 2011 17:04:19 -0500

By Memorandum Opinion entered by the Honorable Sue L. Robinson in Ashai Glass Co., Ltd., et al. v. Guardian Industries Corp., Civil Action No. 09-515-SLR (D.Del., August 12, 2011), the Court denied the motion of defendant, Guardian Industries Corp., seeking to amend its affirmative defenses and counterclaims to assert new allegations of inequitable conduct against plaintiffs relating to concealing or misrepresenting the true inventorship of pending claims to the USPTO during the prosecution of the patents-in-suit.

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

By way of background, the Scheduling Order entered by the Court in March 2010 provided that amended pleadings were due by August 15, 2010. Id. at 1. Defendant did not file its motion to amend its affirmative defenses and counterclaims to add the new allegations of inequitable conduct until March 4, 2011. Id.

In denying defendant’s motion to amend, the Court recognized that “leave to amend shall be freely given when justice so requires.” Id. at 3. However, the Court also recognized that “[t]he court may exercise its discretion to deny leave to amend in situations in which the moving party has delayed seeking leave and the delay is ‘undue, motivated by bad faith, or prejudicial to the opposing party.’” Id. The Court noted that “[d]elay is ‘undue’ when an unwarranted burden is placed on the court or when the requesting party has had previous opportunities to amend.” Id. at 4.

After analyzing the particular facts with respect to defendant’s motion to amend, the Court determined that the critical documents to defendant’s new inequitable conduct allegations were publicly available prior to close of discovery, defendant’s delay in waiting to move to amend until March 4, 2011 was largely unexplained, and allowing defendant to amend at such a late stage would place an unwarranted burden on the Court and prejudice plaintiffs in several respects. Id. at 4-6. Thus, defendant’s motion to amend was denied. Id. at 6.