Delaware Patent Litigation Report

Defendant did not meet burden to transfer to Northern District of California

Kenneth L. Dorsney — Thu, 17 May 2012 15:35:20 -0500

Helicos Biosciences Corporation v. Illumina, Inc., et al., Civ. No. 10-735-SLR, May 3, 2012.

Robinson, J. Motion to transfer is denied.

On February 16, 2012, the court held an evidentiary hearing in this patent infringement case to determine whether to grant or deny defendants’ pending motion to transfer to the Northern District of California. The motion was denied. Defendant did not meet is burden to establish by a preponderance of the evidence that the Jumara factors warrant transfer. Delaware is close to plaintiff’s principal place of business, and all defendants are incorporated in Delaware. The court is not inclined to deny the plaintiff’s choice of forum due to the fact that it is a patent enforcement company.

Infringement in Delaware warranted denial of transfer motion

Kenneth L. Dorsney — Thu, 17 May 2012 15:23:08 -0500

Cellectis S.A. v. Precision Biosciences Inc., Civ. No. 11-173-SLR, May 3, 2012.

Robinson, J. Defendant’s motion to transfer to North Carolina is denied and plaintiff’s motion to enjoin litigation over the same patent in North Carolina is granted.

This case involves a patent related to the encoding of enzymes. Related cases were pending but stayed in North Carolina when a new patent issued. Plaintiff quickly filed new litigation in Delaware regarding that new patent, and then defendant filed a declaratory judgment action in North Carolina the same day . Plaintiff moved to enjoin the litigation in North Carolina and defendant moved to transfer the Delaware case to North Carolina. Applying the Jumera factors, the court denied the motion to transfer and granted the motion to enjoin the North Carolina litigation. The plaintiff’s choice of Delaware forum and the claim of infringement in this state weighed against transfer. Enjoining the later-filed North Carolina action was warranted under the first-to-file rule.

Court denies transfer motion but severs and consolidates for pre-trial matters

Kenneth L. Dorsney — Thu, 17 May 2012 14:53:14 -0500

Investpic, LLC v. SAS Institute, Inc., Civil Action No. 10-1028-RGA, May 15, 2012.

Andrews, J. Motion to sever is granted, motion to transfer is denied. Court consolidates for pretrial purposes.

This is a patent infringement case involving fifteen defendants and technology directed to a method and system for analysis, display, and dissemination of financial information using resampled statistical methods. One defendant moved to sever and transfer to E.D.N.C. The motion to sever was granted pursuant to the Fed. Cir.’s May 4, 2012, decision in In re EMC Corp. The complaint does not allege any connection between the moving defendant and any other defendant, or between its products and any other defendant's products. Transfer is not warranted as plaintiff is a Delaware corporation with its personnel (if not its principal place of business) closer to Delaware than to North Carolina, and transfer would be inconvenient to plaintiff. Some common legal and factual questions warrant pretrial consolidation. In light of the common questions of law and fact the case is consolidated with the case against the other defendants for all purposes other than having a joint trial.

Asserted new evidence does not justify striking expert report

Kenneth L. Dorsney — Thu, 17 May 2012 14:42:44 -0500

Wyeth Holdings Corporation, Wyeth-Ayerst Lederle LLC, and Wyeth LLC v. Sandoz, Inc., Civ. Action No. 09-955-RGA-CJB, May 10, 2012.

Burke, J. Motion for relief from a previous order striking certain portions of an expert report is denied.

This is a patent infringement case in which the Court previously had stricken a portion of plaintiffs’ sur-reply expert report. Defendant moved pursuant to Fed. R. Civ. P. 60(b)(2) and (b)(6) from relief from the order, asserting, inter alia, new evidence warranted striking the entire expert report. The motion was denied. Defendant did not demonstrate that it could not have discovered the evidence through earlier reasonable diligence and, even if it could not have, that consideration of the evidence would have led to a different result.

Request for reconsideration does not meet governing standard

Kenneth L. Dorsney — Mon, 07 May 2012 16:36:52 -0500

ICU Medical, Inc. v. Rymed Technologies, Inc., Civ. No. 07-468-LPS, May 4, 2012.

Stark, J. Motion for reconsideration is denied.

This is a patent case in which the court denied a motion in limine to preclude non-infringement arguments and evidence on elements already deemed literally present in the modified invision-plus product. Plaintiff moved for reconsideration, which was denied because the motion largely just repeats arguments made in the prior brief on the motion in limine.

ANDA defendant did not prove invalidity for obviousness or anticipation

Kenneth L. Dorsney — Fri, 04 May 2012 13:40:56 -0500

OSI Pharmaceuticals, Inc., Pfizer, Inc., and Genentech Inc. v. Mylan Pharmaceuticals Inc., Civ. No. 09-185-SLR, May 1, 2012.

Robinson, J. Findings of fact and conclusions of law.

This is an ANDA case involving a generic drug used to treat certain cancers. A five-day invalidity trial was held beginning on March 14, 2011. On June 30, 2011, the ANDA defendant was enjoined from launching its generic product pending the Court’s decision. The validity issues were fully briefed post-trial. The 30-month stay expires on or about May 18, 2012, as represented by the parties. The patents in suit were not found to be obvious or anticipated by the prior art.

Related products containing an ingredient of an ANDA must be produced

Kenneth L. Dorsney — Thu, 03 May 2012 15:28:36 -0500

Medicis Pharmaceutical Corporation and Dow Pharmaceutical Sciences, Inc. v. Actavis Mid Atlantic LLC, Civ. Action No. 11-409-CJB, April 30, 2012.

Burke, J. Motion to compel is granted.

On April 16, 2012, plaintiff initiated this ANDA case relating to products that include hydroxyethyl cellulose, xanthum gum, and/or a polarcrylic acid polymer (collectively, “the ingredients”). Plaintiff then moved for the production of all of the ANDA applicant’s documents referring to or relating to products including the ingredients. Defendant objected, and plaintiff moved to compel. The Court granted the motion but narrowed the scope of production to reflect the nature of the accused and patented product.

Use of trade names in complaint is sufficient to overcome motion to dismiss

Kenneth L. Dorsney — Thu, 26 Apr 2012 18:21:58 -0500

Motivation Innovations, LLC v. Express, Inc., Ulta Salon, Cosmetics & Fragrance, Inc., Petsmart, Inc., and Victoria’s Secret Stores, LLC d/b/a Victoria’s Secret, C. A. No. 11-615-MPT, April 24, 2012.

Thynge, J. Motion to dismiss for failure to state a claim is denied and motion to file an amended complaint is granted.

On July 12, 2011, plaintiff initiated this patent case directed to a discount offer redemption system and method. Defendants moved to dismiss the complaint for failure to state a claim, asserting, inter alia, that the complaint failed to set forth a general class of products or a general identification of the alleged infringing methods. Plaintiff requested permission to file an amended complaint in the event the motion to dismiss was granted. The motion to dismiss was denied. The complaint references trade names associated with the defendants’ allegedly infringing coupon and discount programs and systems, which is sufficient identification to guide discovery . However, since one defendant asserts that it does not have an “Express Rewards Program” as alleged, plaintiff shall amend its complaint to correctly identify the rewards program offered by that particular defendant.

Court consolidates cases and denies request to stay later filed case

Kenneth L. Dorsney — Tue, 24 Apr 2012 16:02:52 -0500

Masimo Corporation v. Philips Electronics North America Corporation and Philips Medizin Systeme Böblingen GmBH, Civil Action No. 11-742-LPS-MPT, April 16, 2012.

Thynge, M. J. Motion to consolidate and stay granted in party and denied in part.

This is a patent infringement case directed to pulse oximetry technology. Defendants moved to consolidate and stay the case pending resolution of an earlier filed related action between the parties. Consolidation was granted. The cases involve the same parties, the same products, and similar patented technology. The request for stay was denied. No trial has been set in either case and it is unclear what impact resolution of the earlier case will have on simplifying issues for trial.

2012 Federal Trial Practice Seminar: An Introduction to Federal Practice in the District of Delaware

Kenneth L. Dorsney — Tue, 17 Apr 2012 14:00:36 -0500

The Delaware Chapter of the Federal Bar Association, in conjunction with the United States District Court for the District of Delaware, is pleased to announce another exciting new initiative. On the evenings of Thursday, May 17 and Thursday, May 31, 2012, from 5:00 to 7:30 p.m., the District Court and FBA will sponsor a two-night seminar program entitled “The Federal Trial Practice Seminar Presents: An Introduction to Federal Practice in the District of Delaware.” The sessions will take place in Courtroom 2B at the J. Caleb Boggs Federal Building.

Attorneys who have been practicing in the District for three years or less are eligible to participate in this seminar. One of the two seminar sessions will relate to an attorney’s interaction with opposing counsel and participation in the litigation process, while the other session will focus on an attorney’s interaction with the Court. Each session will include a presentation from a speaker and a panel discussion. The speakers and panel members will be current and/or former judges of the District Court.

Participation is limited to FBA members. Current FBA members may register for the seminar by contacting Steve Brauerman via e-mail at sbrauerman@bayardlaw.com, by no later than May 14, 2012. Those interested in participating in the seminar who are not currently FBA members may fill out and submit the attached application form in order to become a member.
Alternatively, they may contact Mr. Brauerman at the e-mail address listed above to obtain additional information about FBA membership.

Space for the seminar is limited and applicants will be accepted on a first-come, first-served basis. Applicants should be available to attend both sessions. Admission to the seminar is free and the FBA expects to apply for Continuing Legal Education credit in Delaware for both sessions.

The "Introduction to Federal Practice" seminar will be organized by the same administrative team that has organized our successful "Federal Trial Practice Seminar" (or "FTPS") in 2010 and 2011. The FTPS, an eight-week trial skills seminar program offered to attorneys in their first ten years of practice, will be next offered again in Spring 2013.

Court limits amount of costs claimed

Kenneth L. Dorsney — Mon, 16 Apr 2012 19:00:41 -0500

Cordance Corporation v. Amazon.Com, Inc., Civil Action No. 06-491-MPT, April 11, 2012.

Thynge, M. J. The court issues opinion on defendant’s bill of costs, granting defendant’s request for costs in part and denying plaintiff’s request to have the bill of costs denied in its entirety.

Plaintiff’s argument that defendant should not be entitled to costs because of dilatory tactics is rejected. The court refuses to ferret out “evident” improprieties from the docket. Plaintiff’s argument that it is unable to pay is mooted by a significant reduction to defendant’s demand for costs. Defendant’s claim of $447,694.63 for ediscovery is reduced. Costs of conversion to an agreed-upon production format are taxable as the functional equivalent of “making copies.” Other activity – searching, culling and deduplication are not taxable. Defendant to provide additional itemization. Costs for demonstrative exhibits for a Markman hearing were controlled by Shering. Applying the Honeywell test the claimed $51,323.62 is reduced to $600, the actual amount incurred for presentation of the exemplifications. Costs for depositions for the most part not awarded for failure to establish the “substantial use” requirement. Costs of $1,152.80 were allowed where 25% of the deposition transcript was read at trial. Witness automobile travel costs were awarded at the rate of $.51 per mile. Additional witness fees for around $27,000 for 2 witnesses was awarded

Claim construction issues regarding a system for electronic distribution

Kenneth L. Dorsney — Mon, 16 Apr 2012 18:30:23 -0500

Broadridge Financial Solutions, Inc. v.Inveshare, Inc., Civil Action No. 10-075-RGA, April 11, 2012.

Andrews, J. The court construes nine disputed terms.

The technology at issue concerns a system for the electronic distribution of shareholder solicitation messages. The court accepts the proffered construction of two agreed upon terms, and construes the following terms:
1. Electronic solicitation message [that provides shareholder access to a solicitation content]
2. Solicitation content
3. Authorized party
4. Authorized shareholder
5. Tagging
6. Validating that each shareholder receiving the notification is authorized to view the solicitation content
7. A component
8. A component for tagging the electronic solicitation message to validate that a shareholder is authorized to view the solicitation content
9. Electronic messaging

Stay pending appeal in related litigation is not warranted

Kenneth L. Dorsney — Mon, 09 Apr 2012 18:32:39 -0500

Apeldyn Corporation v. Sony Corporation and Sony Electronics, Inc., Civ. No. 11-440-SLR, April 4, 2012.

Robinson, J. Motions to dismiss and stay are denied.

On May 19, 2011, plaintiff initiated this patent case directed to the time response of liquid crystal material in VA mode Liquid Crystal Display modules, and filed an amended complaint on July 12, 2011. Defendant thereafter renewed its motion to dismiss plaintiff’s inducement and willful infringement claims and filed a motion to stay proceedings. The motions were denied. The amended complaint complies with the pleading standard and defendant acquired knowledge of the patent-in-suit through its in-house legal department’s due diligence and through prior litigation involving the patent. A stay is not warranted pending appeal in a related litigation. The motion to stay is denied without prejudice to renew after the close of discovery.

Amended complaint satisfies the pleading standard under federal rules

Kenneth L. Dorsney — Mon, 09 Apr 2012 18:21:40 -0500

Walker Digital, LLC v. Facebook, Inc., et al., Civ. No. 11-313-SLR, April 4, 2012.

Robinson, J. Motion to dismiss for failure to state a claim of direct, indirect and willful infringement is denied.

On April 11, 2011, plaintiff filed this patent case involving technology directed to a method and apparatus for facilitating electronic commerce through providing cross-benefits during a transaction . Plaintiff amended its complaint on July 29, 2011. Defendants moved to dismiss with prejudice for failing to state a claim, asserting, inter alia, that the accused marketing promotions on their face show that they do not satisfy a claim limitation and because the amended complaint lacks factual allegations sufficient to state a claim for willful infringement. The motion to dismiss was denied. The amended complaint satisfies the pleading standards under the Federal Rules of Civil Procedure for infringement and the Court is not prepared at this stage of the proceeding engage in claim construction. The amended complaint also contains allegations directed to pre-suit knowledge of the patents-in-suit.

Court finds all asserted claims invalid for obviousness

Kenneth L. Dorsney — Thu, 05 Apr 2012 16:03:42 -0500

Allergan, Inc., Allergan USA, Inc., Allergan Sales L.L.C., Endo Pharmaceuticals Solutions Inc., and Supernus Pharmaceuticals, Inc. v. Watson Laboratories, Inc- Florida, Sandoz Inc., and Paddock Laboratories, Inc., C. A. No. 09-cv-511 (GMS), March 31, 2012.

Sleet, C. J. Court makes post-trial findings of fact and conclusions of law regarding invalidity and infringement in favor of defendants.

A seven-day bench trial was held May 2 – 10, 2011 in this ANDA case involving an invention that is directed to pharmaceutical compositions that allow for once daily dosage forms of trospium. The court finds that the asserted claims are not invalid due to anticipation, but they are invalid due to obviousness. In addition, defendants’ claim that two claims are invalid due to indefiniteness was rejected. Defendants’ assertion of lack of written description of a disputed claim is also rejected. Defendants’ accused products are found to infringe the patents-in-suit. The parties’ Rule 52(c) motions are granted in part and denied in part. The court directs entry of final judgment in favor of defendants and against the plaintiffs.

Non-infringement and invalidity counterclaims are dismissed

Kenneth L. Dorsney — Thu, 05 Apr 2012 15:46:53 -0500

Quantum Loyalty Systems Inc., et al. v. TPG Rewards Inc., et al., Civil Action No. 09-22-RGA, April 4, 2012.

Andrews, J. Report and recommendation is adopted in part. A motion to transfer cybersquatting claims is denied.

Plaintiffs in this patent infringement case objected to the Magistrate Judge’s report and recommendation, asserting, inter alia, that counterclaims for non-infringement and invalidity should be dismissed for failing to state a case or controversy . Defendant sought a declaration of non-infringement and invalidity as to two patents related to the patents-in-suit. The Federal Circuit issued an opinion subsequent to the report and recommendation, holding that “a counterclaimant must show a continuing case or controversy with respect to withdrawn or otherwise unasserted claims.” The defendants did not meet that standard. The motion to dismiss the counterclaims is thus granted. Plaintiff’s objections are otherwise overruled.

Claim construction issues in dynamic logic circuit case

Kenneth L. Dorsney — Wed, 04 Apr 2012 17:53:50 -0500

AVM Technologies, LLC v. Intel Corporation, Civil Action No. 10-610-RGA, March 30, 2012.

Andrews, J. The court issues claim constructions on eight terms.

In this case involving dynamic logic circuit technology, the court adopted agreed upon constructions and construed the following terms:
Dynamic logic circuit
Dynamic logic block or logic block
Evaluation transistor
Precharge transistor
A delay
For simultaneously activating
During a major portion of the evaluation phase
During a major portion of an evaluation clock phase

Motion for leave to file second amended complaint is granted

Kenneth L. Dorsney — Wed, 04 Apr 2012 17:40:14 -0500

St. Clair Intellectual Property Consultants, Inc. v. Hewlett-Packard Company, C. A. No. 10-425 LPS, March 28, 2012.

Stark, J. Motion to strike willfulness allegations and request for enhanced damages is denied. Motion for leave to file a second amended complaint is granted.

On May 20, 2010, plaintiff filed this patent infringement case involving technology directed to computer systems having a power control unit for selection of voltage levels for pluggable cards, such as PCMCIA cards. Defendant answered and moved to strike the complaint. Plaintiff responded by filing a first amended complaint on July 27, 2010, which mooted defendant’s original motion to strike. Defendant then moved to strike the allegation in the first amended complaint directed to willfulness and enhanced damages. Plaintiff opposed the motion and sought leave to file a second amended complaint. The Court denied the defendant’s motion to strike and granted the plaintiff’s motion for leave to amend. The Court reasoned that plaintiff’s second amended complaint adequately pleads willfulness. There is no evidence plaintiff acted in bad faith in filing its complaints, and amending the complaint a second time would not unduly prejudice defendant.

Objections to magistrate's report and recommendation are overruled

Kenneth L. Dorsney — Wed, 04 Apr 2012 17:32:24 -0500

Andrew Paul Leonard v. Stemtech Health Sciences, Inc. and Does 1-100, Inclusive, C. A. No. 08-067 LPS, March 28, 2012.

Stark, J. Magistrate’s report and recommendation is adopted.

On December 5, 2011, the Magistrate Judge recommended in this copyright case that the Court grant defendants’ motion for summary judgment. Plaintiff objected to the recommendation the Court grant summary judgment with respect to its claim for actual damages and additional profits but did not object to as to its claim for statutory damages. The Court overruled the objection and adopted the Magistrate Judge’s report and recommendation. The Court reasoned, inter alia, the Magistrate Judge applied the appropriate standard and that plaintiff failed to meet its burden to prove damages.

Transfer is warranted where plaintiff has no connection to Delaware

Kenneth L. Dorsney — Wed, 04 Apr 2012 15:26:18 -0500

Signal Tech, LLC v. Analog Devices, Inc., Civil Action No. 11-1073-RGA, April 3, 2012.

Andrews, J. Motion to transfer pursuant to 28 U.S.C. § 1404(a) is granted.

On November 2, 2011, plaintiff, a non-Delaware corporation, initiated this patent case directed to a method and apparatus for an efficient low voltage switchable Gm cell. On March 23, 2012, defendant moved to transfer the case to the Northern District of California pursuant to 28 U.S.C. § 1404(a). The Court granted the motion to transfer reasoning, inter alia, that plaintiff’s only connection to Delaware was its choice of forum.