Inventor Issues : Delaware Patent Litigation Report

Material dispute on concealment of prior invention preclude invalidity finding

Posted on August 30, 2011 by Kenneth L. Dorsney

Solvay, S.A. v. Honeywell Specialty Materials LLC, et al., Civ. No. 06-557-SLR, August 26, 2011.

Robinson, J. Renewed motion for summary judgment of invalidity pursuant to 35 U.S.C. § 102(g) is denied, and related motion to leave to file is denied as moot. Motion for summary judgment of no willful infringement is granted. Motion for leave to file motion for summary judgment of invalidity pursuant to 35 U.S.C. § 102(e) is denied.

Tags: Exceptional Case/Willfulness, Invalidity, Inventor Issues, Robinson

Untimely JMOL motion considered under "unique circumstances" doctrine

Posted on July 15, 2011 by Kenneth L. Dorsney

S.O.I.TEC Silicon on Insulator Technologies, S.A. and Commissariat à L’Énergie Atomique v. MEMC Electronic Materials, Inc., Civ. No. 08-292-SLR, July 13, 2011.

Robinson, J. Post-trial motions are either denied or moot.

Tags: Damages, Delaware Procedure/Rules, Equitable Defenses and Remedies, Infringement, Inventor Issues, JMOL/New Trial, Obviousness, Robinson, Summary Judgment, Written description

Defendant's claim of unenforceability based on inequitable conduct is denied

Posted on March 17, 2011 by Morris James LLP

Robert Bosch, LLC v. Pylon Manufacturing Corp., Civ. No. 08-542-SLR, March 9, 2011.

Robinson, J. Defendant’s claim of unenforceability of the '974 patent on the basis of inequitable conduct is denied.

Tags: Equitable Defenses and Remedies, Inventor Issues, Robinson

Junction patent is held invalid for lack of enablement

Posted on February 17, 2011 by Morris James LLP

Magsil Corp., et al. v. Seagate Technology, et al., Civil Action No. 08-940-HB, February 16, 2011.

Bartle C. J. (by designation) Defendants’ motion for summary judgment on invalidity for lack of enablement is granted.

Tags: Bartle, Invalidity, Inventor Issues, Summary Judgment

Court precludes expert testimony, denies judgment on the pleadings

Posted on November 24, 2010 by Morris James LLP

ICU Medical, Inc. v. Rymed Technologies, Inc., Civ. No. 07-468-LPS, November 23, 2010.

Stark, J. Plaintiff’s motion for judgment on the pleadings or partial summary judgment is denied. Plaintiff’s motion to preclude expert testimony is granted. Defendant’s motion to exclude section 282 notice and references is denied. 8 in limine motions are additionally decided.

Tags: Daubert/Experts, Discovery, Equitable Defenses and Remedies, Evidence, Exceptional Case/Willfulness, In Limine Rulings, Invalidity, Inventor Issues, Motion for Judgment on the Pleadings, Motion to Strike/Preclude, Obviousness, Stark, Summary Judgment

Infringement found on summary judgment; invalidity left for trial

Posted on November 24, 2010 by Morris James LLP

Kenexa Brassring Inc. v. Taleo Corporation, et al., Civ. No. 07-521-SLR, November 18, 2010.

Robinson, J. Defendant’s motion for summary judgment of patent invalidity is denied. Plaintiff’s motion for partial summary judgment of infringement is granted in part. Vurv products infringe all asserted claims, Taleo products infringe all but two claims of one patent-in suit, and all but one claim of the a second patent-in-suit.

Tags: Discovery, Estoppel, Evidence, Infringement, Invalidity, Inventor Issues, Robinson, Summary Judgment

The court issues an 82-page opinion on ten summary judgment motions

Posted on November 10, 2010 by Morris James LLP

S.O.I. Tec Silicon On Insulator Technologies, S.A. and Commisseriat à L’Énergie Atomique v. MEMC Electronic Materials, Inc., Civ. No.08-292-SLR, October 13, 2010.

Robinson, J. The court rules on 10 summary judgment motions and expert issues.

Tags: Bifurcation/Phasing/Consolidation, Claim Construction, Daubert/Experts, Exceptional Case/Willfulness, Indefiniteness, Infringement, Invalidity, Inventor Issues, Obviousness, Robinson, Summary Judgment

Critical dates for prior art in OTDP defense are governed by § 102

Posted on November 10, 2010 by Morris James LLP

Eli Lilly and Company, et al. v. Teva Parenteral Medicines, Inc., C. A. No.08-335-GMS-SLR, November 5, 2010. (Consolidated)

Sleet, C.J. Plaintiff’s motion in limine regarding the critical date[s] for determining prior art for the purpose of defendant’s obvious type double patenting defense is denied. Defendant’s motion in limine on the same topic is granted.

Tags: Double Patenting, Invalidity, Inventor Issues, Obviousness, Sleet

Summary Judgment for non-infringement is granted and granted-in-part on validity

Posted on September 27, 2010 by Morris James LLP

Intermec Technologies Corp. v. Palm Inc., Civ. No.07-272B-SLR, September 14, 2010.

Robinson, J. Plaintiff’s motion for summary judgment on infringement on the ‘678 patent is denied. Defendant’s motion for summary judgment for non-infringement of the Intermec patents is granted. Plaintiff’s motion for partial summary judgment of validity of the System patents is granted-in-part. Plaintiff’s motion for summary judgment of infringement and validity of the Terminal patents is granted-in part and Defendant’s motion for summary judgment of indefiniteness of certain claims on the ‘678 and 499 patents is granted-in-part.

Tags: Equitable Defenses and Remedies, Indefiniteness, Infringement, Invalidity, Inventor Issues, Obviousness, Robinson, Summary Judgment, Written description

Rulings on motions for summary judgment issue in windshield blade case

Posted on April 21, 2010 by Morris James LLP

Robert Bosch, LLC v. Pylon Manufacturing Corp., Civ. No.08-542a-SLR, April 12, 2010(amended opinion).

Robinson, J. Plaintiffs’ motion for summary judgment of infringement of the '974 patent with respect to claims 1 and 8 is granted but denied as to claim 2; Plaintiff’s motion for summary judgment of noninfringement of defendant’s '380 patent is granted. Plaintiffs’ motion for summary judgment of no inequitable conduct and no invalidity with respect to the '905 and '434 patents is granted but is denied with respect to the '974 patent. Plaintiffs’ motion to strike certain expert testimony is denied as moot. Defendant’s motion for summary judgment of noninfringement of the '512 patent is granted but denied as to three other patents. Defendant’s invalidity motion is denied.

Tags: Equitable Defenses and Remedies, Infringement, Invalidity, Inventor Issues, Robinson

Foreign inventors must testify in U.S. if under control of party or contractually obligated to provide testimony

Posted on April 1, 2010 by Morris James LLP

Aerocrine AB and Aerocrine Inc. v. Apieron Inc., Civ. No.08-787-LPS, March 30, 2010.

Stark, M. J. Defendant’s motion to take depositions of foreign inventors in the U.S. is granted in part and denied in part. Defendant’s motion to compel plaintiff to produce two NIOX devices is granted in part but limited to one.

Tags: Discovery, Inventor Issues, Stark

Six in limine motions are denied prior to bench trial

Posted on March 10, 2010 by Morris James LLP

UCB, Inc., et al. v. KV Pharmaceutical Company, Civil Action No.08-223-JJF, March 9, 2010.

Farnan, J. Plaintiffs’ three in limine motions and defendant’s three in limine motions are all denied.

Tags: Daubert/Experts, Farnan, In Limine Rulings, Inventor Issues, Motion to Strike/Preclude

Court declines to bifurcate inequitable conduct

Posted on January 5, 2010 by Morris James LLP

Webexchange Inc. v. Fedex Corporation, et al., C.A. No. 08-133-JJF, December 30, 2009.

Farnan, J. Defendants’ motion to bifurcate and for early trial on inequitable conduct is denied. Plaintiff’s motion for leave to file surreply is granted.

Tags: Bifurcation/Phasing/Consolidation, Equitable Defenses and Remedies, Farnan, Inventor Issues

Court declines to bifurcate inequitable conduct

Posted on January 5, 2010 by Morris James LLP

Webexchange Inc. v. Dell Inc., C.A. No. 08-132-JJF, December 30, 2009.

Farnan, J. Defendants’ motion to bifurcate and for early trial on inequitable conduct is denied. Plaintiff’s motion for leave to file surreply is granted.

Tags: Bifurcation/Phasing/Consolidation, Equitable Defenses and Remedies, Farnan, Inventor Issues

Prior art precluded as untimely; Further briefing on on-sale bar is ordered

Posted on October 26, 2009 by Morris James LLP

Laboratory Skin Care, Inc. and Zahra Mansouri v. Limited Brands, Inc. and Bath and Body Works, LLC, Civil Action No. 06-601-JJF, October 14, 2009.

Farnan, J. Defendants’ motion for summary judgment on invalidity is denied. Defendants’ motion for leave to supplement is granted and plaintiffs’ motion to preclude is granted. Further briefing is ordered with regard to defendants’ motion for summary judgment pursuant to §102(b).

Tags: Discovery, Evidence, Farnan, Invalidity, Inventor Issues, Motion to Strike/Preclude

Question of fact on fraudulent concealment prevents dismissal on statute of limitations grounds

Posted on September 2, 2009 by Morris James LLP

Capricorn Pharma, Inc. v. Matrixx Initiatives, Inc. and Zicam, LLC, Civil Action No. 08-873-JJF, August 19, 2009.

Farnan, J. Defendants’ Motion to Dismiss Counts V through X of Plaintiff’s First Amended Complaint is granted in part and denied in part.

Tags: Dismissal, Farnan, Inventor Issues, State Law Claims, Statute on Limitations

Inventor's post-deposition opinions on legal issues trouble Court

Posted on July 6, 2009 by Morris James LLP

Cordance Corporation v. Amazon.Com, Inc. and Amazon Web Services, LLC, Civil Action No. 06-491a-MPT, June 30, 2009.

Thynge, M. J. Defendant’s motion to strike second declaration by an inventor/expert is moot. The second declaration will not be considered for purposes of summary judgment.

Tags: Daubert/Experts, In Limine Rulings, Infringement, Invalidity, Inventor Issues, Motion to Strike/Preclude, Thynge

Motion to dismiss inventorship action is denied without prejudice

Posted on February 24, 2009 by Morris James LLP

Genetics Institute, LLC v. Novartis Vaccines and Diagnostics, Inc., Civ. No. 08-290-SLR, February 18, 2009.

Robinson, J. Defendant’s motion to dismiss or transfer is denied without prejudice.

Tags: Dismissal, Inventor Issues, Robinson, Transfer

Plaintiff's request to add additional inventors under §256 is denied

Posted on February 4, 2009 by Morris James LLP

Vanderbilt University v. ICOS Corporation, Civ. No. 05-506-SLR, January 27, 2009.

Robinson, J. Court denies plaintiff’s request to add its scientist employees as inventors to the two patents-in-suit assigned to defendant.

Tags: Inventor Issues, Robinson

Jury verdict for willful infringement is upheld without enhanced damages

Posted on January 7, 2009 by Morris James LLP

Telcordia Technologies, Inc. v. Cisco Systems, Inc., C.A. No. 04-876-GMS, January 6, 2009.

Sleet, C.J. Defendant’s JMOL motion and motion for a new trial on willful infringement are denied; plaintiff’s motion for a permanent injunction is denied. Parties are ordered to meet and confer on royalty rate going forward; plaintiff’s request for prejudgment interest and an accounting is granted but request for enhanced damages and attorney fees and expenses is denied.

Tags: Attorneys' Fees/Costs/Interest, Enhanced Damages, Equitable Defenses and Remedies, Exceptional Case/Willfulness, Infringement, Invalidity, Inventor Issues, JMOL/New Trial, Jury Issues/Instructions, Sleet

Defendants deemed first inventor of contested subject matter

Posted on December 15, 2008 by Morris James LLP

Solvay, S.A. v. Honeywell Specialty Materials LLC, et al, Civ. No. 06-557-SLR, December 9, 2008.

Robinson, J. Defendants’ motion for summary judgment of invalidity is granted. Plaintiff’s motion for summary judgment of no invalidity is denied.

Tags: Invalidity, Inventor Issues, Robinson, Summary Judgment

Motions for new trial and JMOL on damages denied after remand.

Posted on September 29, 2008 by Morris James LLP

Cordis Corp. v. Medtronic Vascular, Inc., et al., C.A. No. 97-550-SLR (Consolidated); Boston Scientific Corporation, et al. v. Ethicon, Inc., et al. C.A. No. 98-19-SLR, September 15, 2008.

Robinson, J. Following decade-long litigation, the Court grants Cordis’ motion for entry of final judgment and denies BSC’s motion for new trial and Medtronic’s motion for JMOL on lost profit damages.

Tags: Claim Construction, Damages, Infringement, Inventor Issues, JMOL/New Trial, Robinson

Patent claims held invalid due to nonstatutory double patenting

Posted on June 26, 2008 by Morris James LLP

Boehringer Ingelheim Int’l GMBH, et al. v. Barr Laboratories, Inc., et al., No. 05-700-JJF, June 16, 2008.

Farnan, J. After a bench trial, the Court issued findings of fact and conclusions of law. The Court ruled that disputed claims were infringed, but that the claims at issue are invalid for nonstatutory double patenting.

Tags: Farnan, Infringement, Invalidity, Inventor Issues

JMOL and new trial were denied in stent case

Posted on April 18, 2007 by Morris James LLP

Advanced Cardiovascular Systems, Inc. et al. v. Medtronic Vascular, Inc. et al., No. 98-80-SLR, Mar. 29, 2007.

Robinson, J. Defendants' motion for judgment as a matter of law of non-infringement and invalidity and motion for a new trial were denied.

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Tags: Claim Construction, Infringement, Invalidity, Inventor Issues, JMOL/New Trial, Motion to Strike/Preclude, Real Party in Interest/Standing/Agency

Delaware the wrong forum for inventorship dispute

Posted on January 15, 2007 by Morris James LLP

St. Clair Intellectual Property Consultants, Inc. v. Mirage Systems, Inc. et al., No. 05-273-JJF, Mar. 8, 2006.

Farnan, J. Motion to dismiss claims against individual defendants for improper venue granted. Defendants’ motion to dismiss or stay is granted.

Tags: Farnan, Inventor Issues, Jurisdiction/Venue/Standing, Stay

Delaware Patent Litigation Report : Delaware Intellectual Property Lawyer & Attorney : Morris James Law Firm : Delaware Patent Litigation Report

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Morris James LLP

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Material dispute on concealment of prior invention preclude invalidity finding

Untimely JMOL motion considered under "unique circumstances" doctrine

Defendant's claim of unenforceability based on inequitable conduct is denied

Junction patent is held invalid for lack of enablement

Court precludes expert testimony, denies judgment on the pleadings

Infringement found on summary judgment; invalidity left for trial

The court issues an 82-page opinion on ten summary judgment motions

Critical dates for prior art in OTDP defense are governed by § 102

Summary Judgment for non-infringement is granted and granted-in-part on validity

Rulings on motions for summary judgment issue in windshield blade case

Foreign inventors must testify in U.S. if under control of party or contractually obligated to provide testimony

Six in limine motions are denied prior to bench trial

Court declines to bifurcate inequitable conduct

Court declines to bifurcate inequitable conduct

Prior art precluded as untimely; Further briefing on on-sale bar is ordered

Question of fact on fraudulent concealment prevents dismissal on statute of limitations grounds

Inventor's post-deposition opinions on legal issues trouble Court

Motion to dismiss inventorship action is denied without prejudice

Plaintiff's request to add additional inventors under §256 is denied

Jury verdict for willful infringement is upheld without enhanced damages

Defendants deemed first inventor of contested subject matter

Motions for new trial and JMOL on damages denied after remand.

Patent claims held invalid due to nonstatutory double patenting

JMOL and new trial were denied in stent case

Delaware the wrong forum for inventorship dispute