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

The accused products are hardware and software modems and modem systems.  After a jury verdict of infringement, defendant challenges the sufficiency of the evidence as it relates to defendant’s accused products as well as the extent of plaintiff’s expert’s examination of the software source code.  Defendant’s oral motions made at the close of plaintiff’s case-in-chief are proper under Rule 50(a) given the court’s stated permission to proceed accordingly.

The court finds that while new evidence regarding plaintiff’s expert is relevant, it is not dispositive.  Troubling questions regarding indefiniteness remain and require resolution by the jury.  Defendants contend the lack of slope hardening coefficient units and an indication of slope location do not provide sufficient description to distinguish infringing compounds from non-infringing compounds.  The court finds this issue is for the jury. Plaintiff claims that there can be no lack of written description if a claim limitation is recited verbatim in the patent, but the court does not agree.  The court finds issues of material fact precluding summary judgment on the written description claim.

The patents-in-suit relate to polymer compositions, specifically polyethylene.  Following a plaintiff verdict in the amount of $61,770,994.60, defendants move for JMOL and a new trial.  The claim that the patents-in-suit are invalid for lack of written description under section 112 is rejected based on expert testimony with ample evidentiary support, as is the claimed error on the jury instruction regarding section 112.  Defendants’ claim that there are multiple non-infringing alternatives to plaintiff’s product and the evidence of lost profits is speculative.  The court found that the alternative products did not have the same high performance properties and that the jury was entitled to credit the expert’s opinion on lost profits.  The court further finds there was sufficient evidence to support the infringement verdict, and that a jury instruction was not erroneous.  Defendants’ proposed instruction would have been redundant.  The challenge to expert testimony on cross-fractionation as being beyond the scope of the expert report also fails since it was a proper response to defendant’s expert’s testimony which also addressed that topic.

The disputed technology relates to polymer compositions, specifically polyethylene.  The bench trial on standing followed a jury trial and verdict in favor of plaintiff in the amount of $61,770,994.60.  The standing issue arises from the fact that plaintiff had entered into a contribution agreement with its subsidiary Dow Global Technologies, Inc. regarding transfer of certain patent rights.  The agreement called for patents to be transferred to be listed on Schedule A and excluded assets to be listed n Schedule D. Schedule B was meant to constitute Schedule A, but for a typographical error, and did not include the patents-in-suit.  The agreement itself does not include the patents-in-suit.  The court concludes that the transfer is not concluded until the patent is listed in Schedule A, rejecting defendants’ argument that these assets transferred automatically since Schedule A did not exist.

This action arises in connection with a confidentiality agreement signed by the parties shortly after plaintiff’s Dr. Grenner visited defendant’s facilities to evaluate the parties’ potential interests in working together.  Dr. Grenner was given a presentation on defendant’s glucose monitoring technology.  Thereafter, defendant provided plaintiff with copies of two of defendant’s unpublished patent applications concerning that technology.  Then plaintiff informed defendant that it was no longer interested in entering into a business relationship.  Plaintiff filed this patent infringement action and defendant asserted counterclaims against it for breach of contract, misappropriation of trade secrets, unfair competition, and conversion, contending among other things.  The Court had previously entered final judgment on the patent infringement claims under Fed. R. Civ. P. 54 and trial proceeded on the non-patent counterclaims only.  The Court finds plaintiff’s Motion For Judgment As A Matter Of Law moot since the jury returned a verdict in its favor and denies defendant’s Motion for Judgment as a Matter of Law on defendant’s Breach of Contract and Unfair Competition Counterclaims and a Motion for a New Trial.  The Court finds that sufficient evidence was presented to support the jury's verdict.

Separate trials were held on infringement and invalidity, and each trial resulted in a verdict for plaintiff.  Subsequent to the infringement trial, the Seagate opinion issued and a new trial was held in light of that opinion.  The court discusses the impact of Seagate in considering both pre- and post-litigation conduct.  The court found that defendant acted despite an objectively high likelihood that its actions constituted infringement of a valid patent, and that defendant knew or should have known of this risk.  Defendant was found to reverse-engineer and copy of some products, and to disregard other patents making little effort to ensure noninfringement.  The absence of an opinion of counsel weighs heavily in this case in favor of demonstrating an objectively high likelihood of infringement. Post-litigation opinions are insufficient to overcome the overwhelming evidence of willful infringement.

The inventor assigned all of his rights to the patents-in-suit to Network Security Associates, a corporation he formed and wholly owned.  That assignment was never recorded and later rescinded.  The patentee then assigned all rights, title and interest to plaintiff, an LLC he formed. Plaintiff entered into a purchase agreement with Security Research Holdings.  Because of doubts about the inoperability of the first assignment, the patentee, Network Security Associates, executed a confirmatory agreement assigning all rights, title and interest to plaintiff.  The later two assignments were recorded with the PTO.  The court concludes that the purchase agreement provided Security Research Holdings with all substantial rights to the patents-in-suit such that plaintiff lacks standing to bring this action on its own.  Under the terms of that agreement, plaintiff retained title to the patents and possessed the rights to use, exploit and enforce them.  However, the purchase agreement provided that Security Research Holdings has the exclusive right to initiate, maintain, manage, resolve, conclude and settle all arrangements and activities in connection with licensing, litigation, enforcement efforts or proceedings.  Plaintiff needs the prior written consent to assert its patent rights.  To the extent plaintiff retains rights in the patents, they are circumscribed by the purchase agreement.

The technology relates to increasing the amount of data that can be offered by a cable television provider without having to change the physical infrastructure of a cable distribution system.  Defendant’s motion to amend was filed after the October 29, 2009 deadline on December 7, 2009.  The court finds that defendant was diligent in that it filed its motion within weeks of learning the additional information it seeks to add.  The court further finds plaintiff will not be prejudiced despite the fact that key depositions have already taken place, noting that much of the new information was supplied by these witnesses in the first instance.  Also, no dilatory motives were found, and the court is not persuaded the amendment would be futile.  The court denies plaintiff’s motion to dismiss after finding that the prior art cited and the allegations contained in the amended answer are sufficient to state a claim and contain the requisite particularity.

The technology relates to increasing the amount of data that can be offered by a cable television provider without having to change the physical infrastructure of a cable distribution system.  The court concludes that the source code of future products is discoverable because it is reasonably likely to lead to evidence that is relevant to infringement.  In addition, the court finds several interrogatories have not been adequately answered and requires further responses.

The disputed technology involves medical skin therapy.  The Clerk entered a default judgment for failure to answer the complaint.  Defendant was granted leave to conduct damages discovery to which defendant has not responded.  The court enters default judgment against defendant, but reserves decision on the question of damages.  The court orders plaintiff to submit an itemized statement detailing the exact amount of damages it seeks and the basis for those damages, and Defendant will have an opportunity to respond or request a hearing.

The disputed technology relates to handheld mobile computers for commercial use.  Defendant seeks to preclude plaintiff from offering evidence of its profits or lost profits in conjunction with its motion for a preliminary injunction since plaintiff objected that the information was not relevant to the preliminary injunction motion.  Based on the information that was eventually disclosed during discovery the court finds that no prejudice will result from this evidence and denied the motion to preclude. As for the preliminary injunction motion, the court finds on the basis of tentative claim constructions that the plaintiff has shown a likelihood of success on literal infringement with respect to two patents.  However, plaintiff has failed to show the obviousness defense lacks substantial merit.  The court further concludes that plaintiff has shown it is likely to succeed on its infringement claim as to a third patent.  Plaintiff has not persuasively rebutted the obvious defense to this third patent.  With respect to irreparable hard, the court is not convinced that the claimed price erosion can not be quantified.  The preliminary injunction motion is denied, although there is some concern as to defendant’s ability to pay a potential damages award.  Finally, the balance of hardships, considering the magnitude of the relief sought, weigh in favor of not issuing the injunction.

The parties' dispute stems from a Technology License Agreement entered into by Dictaphone Corporation and Vianix Delaware LLC, which concerned the licensing of Plaintiff's Managed Audio Sound Compression Technology.  Plaintiff first filed in Chancery Court, and after terminating the license filed in the District Court.  The court finds that plaintiff has sufficiently pled the works in dispute and the acts that are alleged to infringe.  The court cannot determine on the current record whether the defendant has a valid license to perform the accused acts.  Therefore, the motion to dismiss is denied.

This dispute relates to the alleged unlicensed use of plaintiff’s copyrighted biological images.  The parties have a licensing agreement, but plaintiff claims the use made exceeds the scope of that agreement.  Plaintiff seeks responses to interrogatories.  Defendant has agreed to supplement one, and the court orders responses to all but one of the remaining interrogatories.  The request to “describe in detail how you engage your Independent Distributors and identify all documents relating to your Independent Distributors was found to be overly broad and unduly burdensome.  The court further grants the motion to take a 30(b)(6) deposition of defendant.  Fees in connection with this motion are not warranted.  Plaintiff’s motion to amend the complaint to add claims of contributory copyright infringement and vicarious copyright infringement, and to amend to include actual or statutory damages and fees and costs is granted over defendant’s objection that the amendment adds 37 new claims and are prejudicial, untimely, made in bad faith, and futile.  The amendment removes date references to when the infringing activity began so as to avoid limits of relief available for infringement commenced before the copyright was registered.  That issue is preserved for further development during discovery.

The patents-in-suit pertain to the use of levalbuterol hydrochloride for treating reversible obstructive airway disease, such as asthma and chronic bronchitis.  Plaintiff seeks to add Defendant’s parent companies and raise new claims based on the sale of the accused generic product. The court finds no undue delay in seeking the amendment one month after the parent companies acquired defendant.  The court declines to bifurcate liability and damages in this case. Since bifurcation is not granted, the claims are no longer exclusively equitable in nature, and a jury trial will be held on infringement, validity, and damages.  The court will hear evidence of inequitable conduct outside the presence of the jury.

The Court rules on willfulness and damages having previously determined that plaintiff infringes defendant’s patents-in-suit.  Defendant presented little evidence of any pre-suit conduct.  While plaintiff may have been aware of the patents, it maintained plausible defenses to infringement and validity throughout.  Having found defendant’s expert to be more credible, the Court awards damages using his methodology and includes pre- judgment interest compounded quarterly at the prime rate and post-judgment interest from the date of the entry of final judgment at the statutory rate.  Undue delay in prosecuting the lawsuit may be a basis for withholding prejudgment interest, but that is the exception and not the rule.  Furthermore, litigation delays will not support denial of prejudgment interest in the absence of prejudice.  Post-judgment interest is computed daily to the date of payment. 28 U.S.C. § 1961(b).  Attorneys’ fees are not warranted.

The Court issues its opinion (as revised) following a bench trial.  Plaintiffs brought this action against several defendants alleging infringement of the patent-in-suit relating to rosuvastatin and its salts which are compounds useful in the treatment of hypercholesterolemia, hyperlipoproteinemia and atherosclerosis.  Defendants submitted ANDAs to the FDA. All but one defendant admits that they infringe claims 6 and 8 but they argue invalidity and unenforceability.  Defendants have also challenged the standing of one of the plaintiffs to sue for infringement.  The remaining defendant (Apotex) contends that it did not engage in an infringing act in the first instance, because it did not "submit" the ANDA.  The Court finds that defendant’s intention to market and sell its generic rosuvastatin calcium products in the United States, coupled with its actions in connection with the ANDA submission and its designation as the U.S. agent, satisfy the legal standard for liability as an ANDA "submitter" under Section 271(e) (2) (A).  As for the standing issue, defendants contend that AstraZeneca LP does not own the patent-in-suit, does not possess an exclusive license to the patent, and is not an exclusive marketer.  AstraZeneca LP urges the Court to expand the second category of recognized plaintiffs to include NDA holders and their authorized agents.  However, the Court is not persuaded AstraZeneca Pharmaceuticals LP holds no interest in and does not have any exclusionary rights in the patent-in-suit and therefore it has no standing to bring or join in this infringement action.
Next defendants contend that members of the Patent Department at plaintiff failed to disclose to the PTO two highly material prior art patent applications as well as a European Search Report.  Defendants have no direct evidence of intent to deceive the PTO, but urge the Court to infer such intent. While the circumstances raised by defendants could be suggestive of deceptive intent, the Court cannot conclude that to be the case.
On obviousness, defendants contend that the testimony and evidence at trial creates a prima facie showing based on the prior art.  However, plaintiffs introduced compelling evidence that significant work was needed to develop rosuvastatin.  In addition, the first and third Graham factors, concerning the scope and content of the prior art and the differences between the prior art and the claimed subject matter, weigh in plaintiffs’ favor.  Moreover, there was much skepticism in the industry concerning the safety of rosuvastatin.
Finally, defendants contend that plaintiffs cannot establish infringement because it is invalid as improperly reissued.  Defendants argue that there were no errors in the original patent that warranted reissue.  In the Court's view, the error in the original patent was not in failing to claim rosuvastatin but in unknowingly claiming subject matter broader than rosuvastatin which is an error that is properly remedied by reissue.
 

The court was called upon to consider whether the plaintiff has standing to sue in its own name alone.  Under the terms of a purchase agreement, Enhanced Security Research retained the rights to “use, exploit, enforce” the patents-in-suit.  However, Security Research Holdings has “the exclusive right to initiate, maintain, manage, resolve, conclude, and settle” all licensing, litigation and enforcement efforts.  Plaintiff is prohibited from contacting potential infringers without prior consent of Security Research Holdings.  Plaintiff furthermore relinquished its ability to freely assign, transfer or license the patents-in-suit.  The court concludes that plaintiff lacks Article III standing, a defect that joinder can not cure.  It therefore dismisses the action.  The motion to consolidate with an action subsequently filed by both enhanced Security Research and Security Research Holdings (09-571-JJF) is denied as moot.

In May, 2009, plaintiff filed its first action against multiple defendants. (09-390-JJF).  That action was dismissed after a finding that plaintiff did not have the requisite standing to sue.  Plaintiff’s motion to consolidate this second action with the first is therefore denied as moot.  The court concluded that supplementation of the arguments will not enhance the court’s consideration of the arguments and therefore denies the motion to supplement.  The court grants the motion to stay pending reexamination.  No trial date has been set and discovery is incomplete.  It notes that every claim of both patents-in-suit is currently being reexamined, and that the PTO has already issued an office action rejecting all claims of the ‘975 patent.  Inter partes reexamination was granted on one patent in view of 30 prior art references, and on the second patent in view of 15 references.  The court finds there is a strong likelihood the stay will simplify invalidity defenses.  As to prejudice in granting the stay, the court notes that the patents do not expire until 2016.  Although this is a close call, the competing interests favor a stay.

The patent-in-suit relates to management and storage of electronic information.  Plaintiff failed to establish that a common interest privilege existed and was ordered to produce documents withheld under that privilege.  The common interest asserted was between Plaintiff and litigation financing companies.  Plaintiff was also granted limited relief on its motion to compel, requiring Defendant to produce updated Wiki data points.  Finally, Defendant was entitled to access to Plaintiff’s source code.  Defendant sought to reopen discovery to take discovery of third parties to determine whether non-disclosure agreements received demonstrations or offers for sale of the patented invention.  The Magistrate had limited this line of discovery to six third parties.  The court upheld this ruling, noting it was within the Magistrate’s discretion to try to preserve the trial date by limiting this discovery, and nothing precludes Defendant from making a subsequent application for relief.

Defendant contends it is entitled to fees under 28 U.S.C. § 1927, F.R.Civ.P. 41(d) and 35 U.S.C. § 285.  With respect to § 1927, defendant claims plaintiff multiplied proceedings by filing in California and that bad faith can be implied because plaintiff should have known no subject matter jurisdiction existed.  With respect to § 285, defendant argues the case is exceptional in that plaintiff knowingly advanced baseless arguments and switched forums to avoid a dismissal on the merits.  The court finds that § 1927 should be invoked only where an attorney has multiplied proceedings in an unreasonable and vexatious manner thereby increasing the cost of the proceedings and doing so in bad faith or by intentional misconduct.  Fees are not warranted because the court is not persuaded that plaintiff’s counsel acted in bad faith.  Similarly, the court will not require plaintiff to pay the costs of the dismissed California action because those actions concerned different products.  Finally, a case is exceptional by proving inequitable conduct before the PTO; litigation misconduct; vexatious, unjustified and otherwise bad faith litigation; a frivolous suit or willful infringement.  The court finds defendant has failed to prove by clear and convincing evidence this case is exceptional.  The court finds no bad faith in litigating the California and Delaware actions and there is no allegation of misconduct aside from the prosecution of those actions, and no record of unprofessional behavior by counsel.

There are two patents-in-suit which relate to polymer blends.  Defendants seek to strike expert reports as untimely, authored to address the summary judgment argument.  The court finds that the opinions are not new, but merely elaborate on opinions already provided.  Therefore, they are not stricken.  As for infringement, defendants contend plaintiff is unable to prove the accused product contains the required Component A or Component B.  Defendants challenge the testing of the accused product under different polymerization conditions with a different co-catalyst.  Furthermore, they contend that because the accused product is not heterogeneously branched, there can be no Component B.  The court finds that there are issues of material fact which preclude summary judgment.

This is Phase II of this patent infringement action involving plaintiff’s patents.  The disputed technology relates to liquid crystal display products or methods of producing and assembling LCD products.  The court first construes claims. It then credits expert testimony of Professor King Liu over Dr. Schlam finding the “substantially all” requirement of the interconnecting element is not met, nor do “diode design” products meet the resistance limitation.  Plaintiff has not proved that its ‘002 and ‘449 patents are infringed.  The ‘321 patent is likewise found not to infringe, crediting the testimony of Dr. Howard over D. Rubloff.  With respect to the process patent ‘374, the court finds that plaintiff has not presented sufficient evidence to invoke Section 295 for purposes of shifting the burden of proof on infringement.  It is not persuaded by the testimony of expert Dr. Melnik which is found to be speculative and insufficient to establish a reasonable likelihood of infringement.  It credits instead the testimony of Mr. Lin and Mr. Tannas.  The ‘002 patent is not invalid as obvious, nor is the ‘374 patent found to be invalid as obvious or anticipated by prior art.

The disputed technology relates to pharmaceutical dosage forms that provide a modified release of methylphenidate for the treatment of attention deficit hyperactivity disorder.  Plaintiff’ request that the court preclude defendant’s newly-asserted on-sale bar defense is denied because plaintiffs have failed to show any actual harm.  Plaintiffs’ motion to preclude a non-infringement argument is denied because the court finds the defense was timely asserted even if the precise argument was not provided.  Plaintiffs are entitled to rely on a supplemental expert report of Dr. Byrn in the absence of a showing of prejudice.  The assertions contained in the report are consistent with prior statements and was entered to address a summary judgment motion.  The parties further seek to limit the proof as to the date of the invention.  The patent has the burden of production to establish that the invention predated the filing of the application, and the burden of proof is on the party challenging the patent.  The two dates are at issue and will require proof at trial. Defendant argues that plaintiffs’ use of the F2 similarity factor to evaluate infringement is improper.  Plaintiffs first raised the intent to rely on this proof in an expert report, and it does not conflict with the court’s claim term “approximately.”  The arguments regarding the probative value of this evidence does not warrant exclusion of the test altogether.

The patent-in-suit specifically relates to the management and storage of electronic information, and specifically to new structures and methods for creating relationships between users, applications, files and folders.  Plaintiff contends the patent discloses a system which automatically captures environmental and tracking information on a document uploaded by a user, so that others can access a document from a central depository without knowing the document’s exact location.  Defendant contends that the patent discloses a system where data is automatically tethered to the user, so that when the user moves to a new location, the data is available in the new location.

This is the Court’s ruling on several evidentiary objections raised by the parties during a bench trial.  Evidentiary issues at bench trial are less of a concern and typically go to the weight of the evidence and not admissibility.  The parties’ various objections with regard to testimony and the admission of evidence are overruled with the exception of one objection filed by Plaintiff.  Plaintiff objects to certain expert testimony and exhibits based on the lack of reference in the expert report relating the evidence to any of the four patents-in-suit.  The Court previously granted plaintiff’s Motion In Limine premised on the same arguments it raises here in its objection.  The Court is not persuaded that its initial decision was erroneous, and therefore, the Court will sustain the objection.

Defendants move to dismiss Plaintiffs’ claims for unfair competition under the
Lanham Act, unfair competition, trade dress infringement, intentional interference with prospective economic advantage, and willful infringement.  Having determined that each claims is sufficiently pled, the Court denies Defendants' motion in its entirety.
 

Defendant is a children’s products company.  Plaintiff is a Pennsylvania resident.  Plaintiff alleges that Defendant has engaged in false product marking under 35 U.S.C. § 292 by marking certain children's products and its website with expired patents and patents that do not cover the products or website.  Defendant contends that Plaintiff has failed to state a claim for false marking because Plaintiff has not pled that the products at issue are unpatented.  Defendant also argues that the heightened pleading standard of Rule 9(b) of the Federal Rules of Civil Procedure applies because a claim under § 292 is a qui tam action and sounds in fraud.
The Court rejects Defendant's contention that no actionable mismarking can occur if the product at issue is covered by at least one claim of one of the patents listed.  Similarly, the Court rejects Defendant's contention that marking a product with expired patents cannot constitute actionable mismarking as long as the product is actually patented.  Defendant has not provided this Court with any legitimate reason to stray from Clontech Labs., Inc. v. Invitrogen Corp.'s definition of unpatented article in the present action.  Accordingly, the Court concludes that Counts I, II, and II sufficiently plead that Defendant's products are unpatented articles.  The parties disagree on whether false marking claims under § 292 are subject to the heightened pleading requirements of Rule 9(b).  However, the Court does not resolve this dispute because the Amended Complaint fails to sufficiently plead a required element- intent to deceive- under even the liberal pleading standards of Rule 8(a) except with respect to the '437 patent marking where Plaintiff’s allegations are sufficiently pled.
 

Defendants contend that Plaintiff improperly withheld and redacted documents based upon the attorney client privilege, work product doctrine, and clergy-communicant privilege, and upon a claim that the information is “highly personal.”  They also contend that the crime-fraud exception prevents Plaintiff from asserting privilege over patent prosecution documents.  The court does not require production of documents withheld under the attorney client privilege, but does require supplementation of Plaintiff’s privilege log to include drafts of confidential communications made to an attorney.

The technology relates to liquid Cristal display products.  This matter involves 3 patent suits and 23 patents.  Proceedings relating to CMO have been stayed. T he court required the parties to reduce the number of patents and claims to 4 patents and seven claims per side.  The court notes the parties expanded that number by asserting several dependent claims.  A bench trial was held on Phase I (AUO’s infringement claims) from June 2-8, 2009.  LGD’s infringement claims were tried in Phase II from June 16-22, 2009.  The court first makes claim construction rulings, noting that claim construction has been a “moving target” which enhanced the difficulty of this case.  Based on the court’s claim constructions, the court finds that AUO has established that LGD literally infringes.  The court rejects a contention that AUO lacked standing to sue with respect to one of the patents, finding it was the rightful owner at the commencement of this action. Based upon the court’s claim construction rulings, the court further finds that LGD cannot establish invalidity based on indefiniteness.  After reviewing the prior art and trial evidence the court further finds that LGD has not proved anticipation or obviousness by clear and convincing evidence.  The court also concludes that LGD cannot establish by clear and convincing evidence that the on-sale bar applies.  Finally, the court further concludes that LGD possessed the requisite intent to induce infringement and did in fact induce infringement in part by providing product information and marketing materials to U.S. customers for the purpose of encouraging U.S. sales and by touting AUO’s patented features to LED’s U.S. customers.  The Court withholds entry of final judgment until Phase II is completed.

The motions at issue relate to Plaintiff’s contentions of infringement, particularly of FedEx’s “shipping” system. Defendants contend that “shipping” was not disclosed in the second supplemental infringement contention, and was only listed as an untimely Third Supplement served eight months too late.  Plaintiff contends that “shipping” was timely disclosed in the second supplement, and only clarified in the third supplement.  The court finds the issue of whether there was disclosure in the second supplement is debatable, but in any event any untimeliness is harmless error.  The current schedule allows ample time for discovery and there is no evidence of bad faith.  Plaintiff moves to compel defendants to provide testimony regarding the shipping component.  The motion is granted based on the absence of a reason for limiting the discussion of shipping in the deposition.  The court finds that an award of costs and fees in this case is not appropriate as defendants were substantially justified in taking the position they did.  The court further denied the motion for leave to file a surreply after reviewing the proposed surreply and determining that it did not contain clarification or missing facts that would illuminate issues for the court.

Defendant moved for leave to file a second amended answer and counterclaims to the complaint.  Defendant contends the amendment is timely despite the passage of the January 10, 2009 deadline for amending pleadings, based upon its need to investigate and research the inequitable conduct claim.  Defendant contends plaintiff will not suffer any prejudice.  Plaintiff contends that defendant has failed to show good cause why it could not have timely amended and that one paragraph of the amendment should be denied as futile.  The Court concludes that defendant has demonstrated good cause to file its second amended answer, and that the amendments could not have been made before the pleading deadline, despite Defendant's diligence.  The amendment would not be futile, and there is no prejudice since no Markman hearing has taken place, no trial date has been set, and the close of discovery is tied to the issuance of a claim construction order.

Defendant moved for leave to file a second amended answer and counterclaims to the complaint on May 27, 2009, in order to supplement its affirmative defense and counterclaim of unenforceability of the patents-in-suit due to inequitable conduct.  The deadline for amending pleadings was January 10, 2009.  Defendant contends that its motion to amend is proper under Rule 15(a) because it was sought without undue delay and because plaintiff will not suffer any prejudice.  Defendant asserts that there was no delay because the evidence that forms the basis of the proposed second amended answer was unavailable before the pleading deadline.  Plaintiff contends that defendant has failed to explain why it could not have timely amended, and that such amendment would be futile.  The Court concludes that defendant has demonstrated good cause to file its second amended answer, and that the amendments could not have been made before the pleading deadline, despite Defendant's diligence.

Plaintiffs filed in Delaware alleging infringement of the '574 patent by an ANDA filing which sought permission to market a generic version of plaintiff's Caduet® product used to treat high blood pressure and high cholesterol.  The next day plaintiffs filed suit against defendant in Colorado alleging the same cause of action.  Defendant filed its Answer in the Colorado Action and asserted counterclaims which allege invalidity and non-infringement of the '574 patent, as well as three additional patents.  A scheduling order has been issued in the Colorado Action.  Defendant also filed a declaratory judgment action in Colorado seeking declarations of invalidity and non-infringement with regard to the same three additional patents.  Defendant also filed its answer and counterclaims for declaratory relief in the Delaware Action.  By its Delaware counterclaims, defendant seeks declaratory judgments of invalidity and non-infringement of the '574 patent only.  Applying the Jumara factors, the Court concludes that transfer to the District of Colorado is not warranted.  Defendant contends that plaintiffs' forum choice is entitled to little deference because plaintiffs filed almost identical suits in Delaware and Colorado.  However, because the Hatch-Waxman Act is silent on whether a patent holder loses its right to sue if its suit is dismissed for lack of personal jurisdiction after the 45-day window to initiate suit has expired, plaintiff’s "protective" filing in Colorado the day after initiating suit here cannot be consider forum shopping.  The other factors do not weigh way heavily in favor of transfer.
Next the Court considers plaintiff’s request to enjoin the Colorado Declaratory Judgment Action.  Plaintiffs contend that the Delaware Action is the first-filed action, and that the claims raised by defendant in its Colorado Declaratory Judgment Action should have been raised as compulsory counterclaims in the Delaware Action.  In response, Defendant contends that it was plaintiffs who chose to pursue a two-court strategy by filing a "protective" suit in the District of Colorado.  Further, plaintiffs' motion is unnecessary and duplicative since motions to stay or transfer both the Colorado Action and the Colorado Declaratory Judgment Action have been filed in Colorado.  The Court reserves decision on the pending Motion To Enjoin until the Colorado Court decides its pending transfer motions.
 

The patent-in-suit pertains to a system and method for real-time sales and distribution of tickets which is focused on event ticketing that does not utilize paper tickets.  Following a Markman Hearing, the Court directs that the parties meet and confer regarding 4 of the 23 disputed terms and construes the remaining terms.

The patents-in-suit relate to methods and systems for enabling transactions on the internet.  Defendants contend that the evidence of inequitable conduct by the named inventor Lakshmi Arunachalam is so compelling that that it will be case dispositive and prevent the need for further litigation.  It would further put a stop to ongoing conduct alleged to be fraudulent and mitigate harm to the public interest.  Plaintiff responds that the inequitable conduct defense does not implicate the ‘556 patent and that bifurcation would not eliminate the need for discovery and trial on infringement and validity, and that further delay would be prejudicial.  The Court notes that the defendants have a high burden of clear and convincing evidence to prove inequitable conduct.  There is a likelihood of duplication of proof common to the inequitable conduct and invalidity cases, such as on prior art, background testimony, and expert testimony, such that bifurcating the trial on the issue of inequitable conduct will not promote judicial economy.  The court grants Plaintiff’s motion to file a motion to file a surreply which motion was unopposed as long as Defendants were permitted an opportunity to reply.

The patents-in-suit relate to methods and systems for enabling transactions on the internet.  Defendants contend that the evidence of inequitable conduct by the named inventor Lakshmi Arunachalam is so compelling that that it will be case dispositive and prevent the need for further litigation.  It would further put a stop to ongoing conduct alleged to be fraudulent and mitigate harm to the public interest.  Plaintiff responds that the inequitable conduct defense does not implicate the ‘556 patent and that bifurcation would not eliminate the need for discovery and trial on infringement and validity, and that further delay would be prejudicial.  The Court notes that the defendants have a high burden of clear and convincing evidence to prove inequitable conduct.  There is a likelihood of duplication of proof common to the inequitable conduct and invalidity cases, such as on prior art, background testimony, and expert testimony, such that bifurcating the trial on the issue of inequitable conduct will not promote judicial economy.  The court grants Plaintiff’s motion to file a motion to file a surreply which motion was unopposed as long as Defendants were permitted an opportunity to reply.

The patents-in-suit relate to needleless intravenous medical connector valves.  Previously, the Court issued a Scheduling Order directing the parties to file amendments to pleadings and calling for discovery to end by a date certain.  Thereafter, the parties filed a Stipulation And Order For Amending Answer, Defenses And Counterclaims granting Defendant leave to amend its original Answer.  Accordingly, Defendant filed an Amended Answer adding certain affirmative defenses alleging unenforceability due to patent misuse and inequitable conduct. Defendant filed the instant Motion To Modify Scheduling Order And For Leave To File Second Amended Answer after the deadline for filing amended pleadings had passed.  By its Motion To Amend, Defendant seeks to add a Tenth Affirmative Defense, which alleges that the patents-in-suit are unenforceable due to inequitable conduct. Specifically, the proposed amendment alleges that plaintiff failed to disclose an inventor or co-inventor and other key contributors to the inventions claimed in the patents-in-suit.  Defendant contends that it has diligently pursued discovery since learning of information giving rise to the proposed inequitable conduct claim, that the facts and conduct alleged in the Tenth Affirmative Defense have been known to plaintiff, and that no additional discovery would be required by either party.  The Court agrees and finds that defendant has demonstrated good cause to amend its Answer as required by Rule 16(b).  Defendant's proposed Second Amended Answer pleads a new legal theory-inequitable conduct-based on new set of facts obtained and confirmed during discovery which took place after the Scheduling Order's deadline for amended pleadings.  Plaintiff ICU Medical, Inc.'s Motion For Leave To File Sur-Reply will also be granted.

Sixteen claims of four patents are in dispute.  Several terms have been construed by other courts in prior proceedings concerning this family of patents.  Although collateral estoppel does not apply, those constructions are persuasive authority.  The court construes 12 terms relating to needleless intravenous medical connector valves.

The patent relates to a directional diffuser for a flat panel LCD as used in aircraft cockpit displays.  The action against the customer defendants has been stayed.  Trial was temporarily adjourned after this ruling issued, and since the parties could not reach agreement on the propriety of continuing trial, the trial was cancelled on outstanding issues.  The court finds that by clear and convincing evidence the patent is invalid because Plaintiff sold an embodiment more than one year before the filing date of the patent-in-suit.  Plaintiff submitted a proposal in response to a Request for Proposal with provisions sufficiently firm and definite as to constitute a commercial offer of sale.  Acceptance of the offer is not required.  The court also found that the product offered for sale was the patented invention taking into consideration the evidence submitted.  The final requirement of being ready for patenting was satisfied by Plaintiff’s admissions and documentation regarding reduction to practice.

The amended complaint attached to the motion is permitted and is deemed to be filed.  Defendants oppose the relation back of the new pleadings seemingly in the belief that, if granted, Plaintiffs would lose the first-to-file status in this case where forum is contested.  However, the court’s denial of dismissal with respect to the direct infringement claims moots that issue.  While Plaintiff might have amended as of right, the court makes a ruling since a motion was filed.  Supplementation of the pleading is also permitted since leave to supplement is freely granted and there are no contentions of undue delay.

The patent-in-suit relates to remotely powered magnetic resonance (“MR”) injectors.  All four parties are incorporated in Delaware.  The parties are also involved in an ongoing infringement suit brought by plaintiff in Texas involving a different patent.  The accused devices in the Texas action injector systems used in connection with computerized tomography (“CT”) procedures, as well as the EmpowerMR injector system. Discovery has begun in the Texas Action and case is set for trial in June 2010.  Defendants contend this action should be dismissed for failure to state a claim for a patent infringement claim.  The Court finds as to the direct infringement claims that the allegations are sufficient to put Defendants on notice.  However, the Court concludes that plaintiffs have failed to properly state indirect infringement claims in light of plaintiffs’ failure to allege the requisite intent and knowledge needed to state a claim for inducing infringement. Plaintiff’s contributory infringement claim must also fail since requisite knowledge of the patent-in-suit was not alleged. 
Transfer to the Eastern District of Texas is not warranted.  First, the private interest factors mitigate against transfer to the Eastern District of Texas.  Although Delaware is not its “home turf,” plaintiffs’ decision to litigate in Delaware is still accorded significant deference because Plaintiffs' choice of Delaware as a forum relates to their legitimate, rational concerns as Delaware corporations.  The remaining private interest factors either weigh against transfer, or are neutral.  The present action and the Texas Action indisputably involve the same parties.  The two patents share two of the same inventors, but they are not part of the same patent family and the applications were filed years apart. EmpowerMR, the accused device in the present action, is also one of several accused devices in the Texas Action.  However, the extent to which the cases involve a common field of prior art and/or similar technologies is unclear.  Accordingly, the Court is not persuaded that the present action is so related to the Texas Action that a transfer is required in the interests of justice.
 

Defendant moves to transfer this case to the Northern District of Illinois.  After considering private and public factors, the Court finds that plaintiff’s choice to file in Delaware should be upheld where both plaintiff and defendant are incorporated here.  Defendant contends that transfer is proper so that the case can be heard by the same court that has heard the other cases stemming from the alleged patent infringement at issue in this case.  While efficiency may be had where a single judge presides over similar cases, such is not the case here where multiple judges in the Illinois court preside over the various cases.  Thus this factor does not weigh in favor of transfer.

A jury verdict was entered in favor of plaintiff on October 25, 2004.  This action was stayed pending the outcome of other related litigation in California concerning ownership.  The stay was lifted after the California litigation was resolved.  Plaintiff contends that the Court erred during trial in excluding evidence of the California verdict and evidence of plaintiff’s license agreements.  However plaintiff failed to offer any case law supporting the argument that a previous jury verdict may be admitted into evidence to support a patentee's damages claim, and the Court remains persuaded that any probative value of the prior verdict was substantially outweighed by the potential for undue prejudice to defendant. In the alternative, plaintiff requests the Court to award prejudgment and post-judgment interest on the jury's award.  Defendant has not disputed plaintiff's argument that an award of post-judgment interest is appropriate.  Accordingly, the Court will award post-judgment interest at the statutory rate. As for prejudgment interest, the Court rejects defendant’s contention that the Court should postpone a determination on prejudgment interest in light of defendant's filing of a Notice of Appeal.  Further, the Court has previously awarded prejudgment interest in cases despite a party's stated intention to appeal. It further rejects the contention that prejudgment interest is not warranted because plaintiff unduly delayed in prosecuting this action.  The withholding of prejudgment interest based on delay is the exception, not the rule and will not bar an award of prejudgment interest unless the delay causes prejudice.  Defendant bore at least some responsibility for the delay due to stipulating to the stay, the Court cannot conclude that these delays warrant the denial of prejudgment interest.  Prejudgment interest should be based on pre-tax damages calculated at the Prime Rate.

The patents-in-suit are directed to methods and systems for enabling transactions on a web or other networks.  Related cases are currently pending in the Delaware District Court wherein defendant has alleged infringement of the same patents-in-suit against certain entities which are not parties here (the “Related Cases”).  Defendant moves to dismiss for lack of subject matter jurisdiction, or in the alternative, to transfer the case to the Northern District of California.  The Court finds that none of the controversies cited by plaintiff give rise to a controversy here.  First, there are no direct allegations of infringement against plaintiff, although at least one of the defendants in the Related Cases seeks indemnification from plaintiff based upon its use of Virtual Earth.  Next, no controversy exists based on alleged accusations against plaintiff’s customers’ use of Virtual Earth or MapPoint.  There is no indication that defendant is engaging in “scare-the-customer” tactics or using plaintiff’s customers to get to them.  Moreover, only three of plaintiff’s many customers are involved in the Related Cases which does not constitute an imminent future threat.  Finally, defendant’s refusal to execute a covenant not to sue, while relevant, is not dispositive.  Defendant’s motion to dismiss is granted.

After considering both private and public factors, the Court finds both Delaware and the Northern District of California to be appropriate.  However, because the plaintiff chose to file in Delaware and defendant is incorporated and resides in Delaware, defendant cannot argue that it would be unfair to litigate this matter here.  Therefore, transfer is not warranted.

Through this action, plaintiff alleges that defendants’ breast biopsy device is infringing four patents-in-suit which generally related to tissue extraction devices used during breast biopsies.  The parties are currently involved in other litigation both in this Court and elsewhere.  Plaintiff brought an infringement action against one of the defendants in the Southern District of Ohio regarding related technology (the “Ohio Action”).  That case is scheduled to begin trial November 2009.  The same defendant initiated suit against plaintiff in the District of Delaware also regarding related technology (the “Delaware Action”).  Trial in that matter is scheduled for June 2010.  Defendants are related entities and are both Delaware corporations while plaintiff is an Ohio corporation.  Generally, plaintiff’s choice of forum is given paramount consideration.  However, this factor is given less weight where the plaintiff does not bring suit in its home turf.  Defendants contend that this litigation should be transferred to the Southern District of Ohio where the same parties are engaged in litigation regarding similar albeit different technologies.  Although plaintiff is not a Delaware corporation, the Court finds that public and private considerations do not warrant transfer.  At this point, the Ohio Court is more familiar with that patents-in-suit.  However, because this action involves a different accused product and two patents not asserted in the Ohio Action, the Ohio court would have to do additional discovery and perform additional claims construction at the same time that this Court would be conducting discovery with similar technologies in the pending Delaware Action.  Moreover, the fact that the defendant initiated action against the plaintiff in Delaware, even though the parties were engaged in similar litigation in Ohio,  indicates that the defendant does not consider Delaware to be an inconvenient forum.  Therefore, defendants’ motion to transfer is denied.

The patent-in-suit pertains to formulations for cleansing and moisturizing the skin.  Defendant moves to supplement their summary judgment motion that the ‘516 patent is invalid as anticipated with formulations sheets for the Solarcaine product that they recently received through a third-party subpoena to Schering-Plough Corp.  Plaintiffs contend that defendants’ submission is untimely given that defendants failed to subpoena Schering-Plough until 4 days before the discovery cutoff.  In granting defendants’ request, the Court accepts defendants’ explanation for the delay that they had attempted to obtain the information through less intrusive means first and turned to the subpoena only when those attempts failed.
Next the Court considers plaintiffs’ motion to preclude the 1980 PDR as prior art.  Plaintiffs contend that defendants should not be permitted to use the reference since it was not disclosed in discovery.  Defendants argue that the 1990 PDR was produced on the last day of discovery, thereby placing plaintiffs on notice before the discovery cut-off.  However, the disclosure (3 pages from the 1990 PDR) was buried in over 15,000 pages of documents that were otherwise identified by broad bates ranges.  The Court agrees and finds that disclosure was not sufficient and that defendants have breached their duty to supplement pursuant to 26(e).  Moreover, the failure was neither justified nor harmless.  Thus defendants are precluded from relying on either the 1980 or 1990 PDR with respect to their anticipation defense.
Turning to defendants’ motion for summary judgment, defendants contend that five prior art references invalidate some or all of the asserted claims.  Noting that anticipation is generally a question of fact, the Court finds that summary judgment is not warranted.  Finally, the Court orders full briefing on the issue of whether the ‘516 patent is invalid under the on-sale bar of §102(b).
 

Plaintiff and its counsel move to vacate or set aside the Magistrate’s July 20, 2009 and the Court’s July 23, 2009 orders imposing sanctions.  Although the motion contests the amount of sanctions, reconsideration of the entire sanctions issue is warranted in light of the Third Circuit's recently issued decision in Grider v. Keystone Health Plan Central, Inc.  Although the Grider opinion does not deal with the particular Rule at issue here, the Court considers its potential applicability, particularly regarding the need to expressly consider the substantial justification standard in imposing sanctions and to provide precise and detailed support for an imposition of sanctions.  Thus the matter is remanded in its entirety to the Magistrate Judge for further consideration in light of any potential applicability of Grider.

The patents-in-suit pertain to methods of using the optically pure R(-) isomer of albuterol to treat bronchial disorders while at the same time reducing side effects associated with the use of the racemic mixture of albuterol.  Defendant contends that a Great Britain patent specification published in 1972 anticipates the claims of the patents-in-suit.  The Court finds that a material question of fact remains as to whether the GB patent discloses R(-) albuterol having a purity within the scope of the claims of the patents-in-suit which precludes summary judgment on the overall issue of anticipation.  However, summary judgment is entered on the issue of whether a reduction in side effects is inherent in the use of R(-) albuterol.  For the same reasons, plaintiff’s motion for summary judgment of no anticipation is denied.

The patents-in-suit pertain to the use of microelectrodes for the rapid determination of the concentration of an analyte in a liquid sample.  The parties dispute the meaning of the bulk of the language in the independent claims, with the primary focus on the terms “electrode” and whether it should be understood to refer only to microelectrodes, and “detecting,” and whether detection of a blood sample must be followed by a delay period.  Based on the patentee’s having distinguished the prior art on the basis of its use of macroelectrodes, the court limits the claims to microelectrodes.  The court does not construe the claims to require a delay period.

Defendants move to dismiss claims for breach of contract, specific performance relating to ownership and inventorship of certain of defendants’ patents, misappropriation of trade secrets, fraud and negligent misrepresentation.  Plaintiff had agreed to develop and manufacture Zicam-brand cold remedies for the defendants and the parties signed a mutual confidential disclosure agreement (CDA) in which they agreed not to disclose any confidential information received.  In 2003 Zicam filed two provisional patent applications related to the cold remedies.  A year later Matrixx filed two Patent Cooperative Treaty (PCT) applications claiming the benefit of priority from the provisional application and listing the vice president of Matrixx as the sole inventor.  Thereafter the parties executed an addendum to the CDA in which the defendants agreed not to use plaintiff’s confidential information relating to Zicam-brand Rapid-Melt tablets for any purpose other than for regulatory approval.  The parties dispute whether, in seeking the two patents at issue, defendants violated the CDA.  Defendants move to dismiss based on Delaware’s three-year limitations.  Specifically, defendants contend that the provisional application and/or the PTC filing should have put plaintiff on notice of its claim.  Defendants also contend that plaintiff’s inventorship claim is not cognizable.  Plaintiff responds that defendants fraudulently concealed their misappropriation.  The Court concludes that plaintiff has adequately plead fraudulent concealment.  There is no per se rule that the publication of a patent application starts the limitations period, and plaintiff has presented evidence that the defendants actively concealed their alleged misappropriation of plaintiff’s technology.  As for the inventorship claims, the Court does not have jurisdiction to hear the issue on a pending patent.  Therefore that count will be dismissed.

The patent-in-suit relates to formulations for cleansing and moisturizing the skin.  The Court finds that Defendants have failed to plead inequitable conduct with sufficient particularity.  The motion for summary judgment was filed after the deadline for amending pleadings.  The Court rejects Defendants’ argument that they could not have plead inequitable conduct sooner.  The “highly material” file histories were publicly available.  Defendant had other opportunities to amend but did not.  Plaintiffs would be unfairly prejudiced if the Court allowed Defendants to amend after close of discovery.  Defendants are precluded from relying on the theory of inequitable conduct as set forth in their motion for summary judgment.

The Court modifies the Special Master’s recommended claim construction for one disputed term of the patent-in-suit.  The term “slight misalignment” is construed to mean “a slight misalignment resulting from a rotation of the lenslets of the lens array, relative to an axis of the LCD panel causing moiré, by just enough, and not more, number of degrees to eliminate moiré effects due to the structure of the display.”  The Special master had construed the term as follows: mean “a slight misalignment resulting from a rotation of the lenslets of the lens array, relative to an edge of the LCD panel by just enough, and not more, number of degrees to eliminate residual moiré.”  The Court disagreed with the Special Master’s use of the term “residual” because it improperly implies that the pitch selection method of reducing moiré is a requirement of a disputed claim.  The Court further disagreed that rotations should be measured relative to the edge of the LCD panel.

The pharmaceutical product which is the subject of this dispute is methylphenidate.  The Court construes “about” in the phrase “in an amount of about 20 to 40 percent” twice according to its ordinary meaning over an argument it should have a more stringent interpretation.  It rules that “approximately needs no further construction.  It construes the term “water” as “purified water (per the USP)” and the term “up to” in the phrase “an amount up to” to be measured “by weight based on the total weight of the coated particle.”

The Court overrules Nokia’s objections to Magistrate Stark’s Memorandum Opinion granting plaintiff leave to file a second amended complaint to add allegations of willful infringement. The court rejected Nokia’s futility argument. It noted that the motion was timely and Nokia would not suffer undue prejudice.

This breach of contract litigation arises from a failed business relationship between the parties.  Defendant counterclaimed also for breach of contract and trademark misappropriation. A special discovery master was appointed to assist the parties with their disputes.  Nonetheless, defendant brought this motion alleging eight separate discovery misdeeds, some of which overlap issues addressed by the Special Master.  The Court concludes that plaintiff did not commit sanctionable conduct, although it sometimes acted unreasonably.  However, because the Court previously warned the parties that certain conditions would apply to the continued litigation of the current motion, the Court determined to award costs.  Defendant fell well short of supporting its allegations.  Therefore, plaintiff is awarded the costs of defending the motion for sanctions.

The patent-in-suit pertains to a simple, inexpensive system for limiting the use of a downloaded video program purchased by a customer.  A central station transmits a video product to a customer at a user site.  The claims are directed to transmitting a video product and limiting data, decoding the limiting data, storing this limiting data, and then subsequently either blocking access to or erasing the video product if it is determined that the viewing limits are exceeded.  Plaintiff asserts that the defendant’s video-on-demand service either literally or under the doctrine of equivalents.  Defendant contends that it does not literally infringe claim 1 because it does not perform any of the steps of the claim.  In particular its product does not perform the “transmitting” and “decoding” steps.  Defendant contends that the remaining steps were performed by another user.  The Court’s decision on the “transmitting” limitation turns, in part, on the construction of a term not previously identified as disputed and therefore was not considered at the prior Markman hearing.  After construing the newly contested term, the Court grants defendant’s motion to the extent it seeks summary judgment on the issue of literal and DOE infringement. Summary judgment of non-infringement is not warranted on the basis of defendant’s not performing the “decoding” step of the claim.  Next the Court considers whether defendant’s software can be considered part of a unitary system that is controlled or directed by defendant.  Plaintiff has pointed to sufficient evidence suggesting that defendant retains control over its software such that summary judgment on this basis is not warranted.  As to Claim 2, the Court will grant defendant’s motion for summary judgment given plaintiff’s failure to offer expert testimony on this issue.  Plaintiff’s motion for partial summary judgment is denied.

Plaintiff is the assignee of seven patents-in-suit which cover various methods, systems, processes or apparatus for managing different types of web-site user-generated data. In addition to their patent-related defenses and counterclaims, defendants assert counterclaims alleging that plaintiff engaged in several different monopolistic, unfair and fraudulent business practices.  The Court concludes that defendants failed to adequately plead monopolization, in the boundaries of the relevant market or that plaintiff possessed sufficient power within that market to come close to monopolization.  Nor do defendants plead facts sufficient to show that plaintiff had a dominant share of the market for web-enabled software programs.  Because plaintiff does not contest that defendants have pled the elements of sham litigation and Walker Process claims, the dismissal is without prejudice.  Next, defendants’ intentional misrepresentation counterclaims are sufficient where the related allegations are supported by documentation and allegations are not made upon information and belief alone.  Defendants have also adequately pled all the elements of negligent misrepresentation.  Next defendants’ claim of unfair competition under the California Business and Professions Code is also adequately pled where the statute is construed broadly and borrows violations from other laws.

Defendants’ defenses of equitable estoppel, laches and waiver are conclusory and therefore stricken with leave to amend to provide more detail.  Defendants’ defense that plaintiff freely licenses its software technology to others, including defendants, is sufficient and will not be stricken.  Similarly, defendants’ unclean hands defense based on licensing is also sufficient and will remain.  Defendants’ patent exhaustion defense which also relies on the licensing defense is adequately pled.  As for the implied license defense, defendants have not alleged any facts suggesting that plaintiff received any consideration from defendants in exchange for the use of patents-in-suit.  Therefore, there can be no implied license by conduct or by legal estoppel.  The defense is therefore dismissed, also with leave to amend.  Finally plaintiff challenges defendants’ failure to mark and limitations on damages defenses.  The Court, unpersuaded that the defenses would unfairly prejudice plaintiff, allows the defenses except to the extent that the limitations defense relies on laches since the Court earlier concluded that defendants had not adequately pled laches.

Finally, defendants’ counterclaims on invalidity, unenforceability and noninfringement are also dismissed but only insofar as they rely upon the same theories as the stricken defenses: equitable estoppel, laches, waiver and implied license.  Otherwise the patent-related counterclaims are adequately pled and withstand plaintiff’s motion to dismiss.
 

The technology relates to compositions comprising specific ethylene/α-olefin polymer blends.  The parties dispute whether one claim term is indefinite.  After considering whether the court should construe a term challenged as indefinite, it does construe the claim but permits defendant to present its indefiniteness theory to the jury.  The Court declined to construe “comprising” and will instead adopt a standard jury instruction.  Defendant in essence requests the Court to address an infringement issue prematurely.  The court requests supplemental briefing in that the parties’ proposed constructions rely on a phrase “within that interpolymer” which the Court finds unclear.  The Court noted that it is cautious in narrowing the scope of claims based on the prosecution history because the prosecution history represents an ongoing negotiation rather than the final product of the negotiation.

Plaintiffs allege infringement of two patents relating to magnetic braking systems.  Plaintiffs are assignees of the patent-in-suit and are incorporated in Florida and Nevada.  Defendants are operators of, or own interest in, amusement parks in various locations.  All defendants are domiciled here.  Defendants contend that because none of the alleged wrongful conduct occurred in Delaware and because neither plaintiff is a Delaware citizen, transfer of the action would not be inconvenient. In addition, related cases involving the principal parties to the instant litigations as well as the same technology have been consolidated and are presently pending in the Central District of California.  Plaintiffs are also involved in other litigation in a California state court.  Finally, none of the amusement parks at which the alleged patent infringement occurred are located in Delaware.  The motion is denied given that as to the vast majority of Defendants (16 out of 19) there is a real question as to whether the action could have been commenced in the Central District of California.

Before the Court is movants’ motion to compel the production of documents by third parties pursuant to Rule 45.  The discovery dispute arises from two ongoing infringement actions, one in Texas and one in California.  Movants seek discovery that is critical to those actions.  Movants contend that after serving the third parties with subpoenas, respondents raised a series of objections and otherwise refused to produce the documents.  The Court grants the motion noting that while it is appropriate to consider respondent’s status as non-parties, there is no absolute rule that a party must first seek documents from an opposing party before seeking them from a non-party.  Here, respondents are related to an opposing party and there is ample reason to believe that respondents have a stake in the outcome of this litigation.  In addition, movants seek documents pertaining to the relationship between the respondents and the opposing party and the patents-in-suit.  Moreover, there is reason to believe that respondents may have unique documents.  Finally, respondents have failed to establish undue burden.

The technology at issue relates to Retin-A® tretinoin cream products used in the treatment of acne and a generic Efudex® product used in the treatment of actinic keratosis.  Plaintiffs disclosed confidential information to defendants subject to a confidentiality agreement and an evaluation agreement in connection with exploring business opportunities.  Defendants filed a Citizen’s Petition seeking to block generic Efudex® products.  Plaintiffs allege breach of contract and the covenant of good faith and fair dealing, trade secret misappropriation, unjust enrichment and negligence.  Defendants move to dismiss asserting the complaint is fatally speculative and that the Citizen’s Petition, which was privileged activity, was not the proximate cause of any harm.  The Court finds Plaintiffs’ complaint to be well plead.  Furthermore, the causal chain is only broken if the intervening cause is unforeseeable and the Court finds that the delay of Plaintiffs’ ANDA as a result of the filing of the Citizen Petition was foreseeable.  Finally, the use of trade secrets in violation of a confidentiality agreement or in breach of a fiduciary duty is not protected.

Defendants move to dismiss plaintiff’s claim of misappropriation of trade secrets (related to certain hospital management software) as being time barred pursuant to 6 Del. C. §2006.  Plaintiff concedes that his unjust enrichment claim is preempted by the Delaware Uniform Trade Secret Act.  Given the substantial press coverage of defendant’s public launch of the software and the filing for patent protection, plaintiff knew or should have known about the alleged misappropriation at the time of the launch.  Therefore the claim is time barred and must be dismissed.

This case arises from an ANDA filed by defendants seeking to market generic versions of CONCERTA.  Initially the action included two patents, but Plaintiffs withdrew their claims as to the second just prior to trial.  In response, Defendants filed an Answer and Counterclaims denying infringement and asserting the defense of invalidity.  They also counterclaimed for a declaratory judgment of noninfringement and invalidity of both the patent-in-suit as well as the second patent.  The Court finds it has no jurisdiction as to the counterclaims relating to the second patent and those counterclaims are therefore dismissed without prejudice.  Next Plaintiffs request that the Court strike certain paragraphs of Defendants' Proposed Findings of Fact and Conclusions of Law, which pertain to Defendants' written description defense.  Because Defendants have the burden of proof on a written description defense, the Court concludes that Defendants were obligated to raise this defense in their pre-trial briefing.  Since they did not, they will be stricken.  Defendants’ cross motion to strike is moot in light of the Court's conclusion that it does not have jurisdiction over those counterclaims relating to the second patent.

As for the plaintiffs’ infringement claims, the Court concludes that Defendants' ANDA products, if sold would not infringe the patent-in-suit.  Defendants contend that the patent-in-suit is invalid as (1) obvious and (2) not enabled.  The Court finds that while some of the evidence weighs in favor of a finding of obviousness, the Court concludes that Defendants have not met their burden to show that the patent-in-suit is invalid as obvious, particularly with regard to the secondary considerations such as the long felt need of others and commercial success.  Finally, the Court concludes that Defendants have demonstrated by clear and convincing evidence that the patent-in-suit is invalid for lack of enablement for the full scope of the claims.
 

Defendants filed objections to the Magistrate’s Report and Recommendations preliminarily construing certain disputed terms.  The Court adopts in part and overrules in part the Magistrate’s Report and Recommendations.  The Magistrate had recommended that “power” should be construed as “voltage.”  For the purposes of the motion for a preliminary injunction, the Court construes the term “power” to mean “the rate at which energy is transferred, calculated by multiplying electric current times voltage.”  It is undisputed that one skilled in the art would understand the textbook definition of “power” to be “voltage multiplied by current.”  Plaintiff contends that “power” also has a colloquial definition, which is “voltage.”  The intrinsic record does not clearly reject the textbook definition which the Court adopts.

Plaintiff was found liable of willful infringement and a permanent injunction issued against it in a previous action brought by defendant in the Eastern District of Texas.  Plaintiff alleges that it redesigned its products so as not to infringe.  However, defendant took the position at a status conference before the Texas District Court that the plaintiff’s new products were no different from the product already found to infringe.  Plaintiff has brought this declaratory judgment action to remove the “cloud” of uncertainty regarding their redesigned products.  Not persuaded by defendant’s arguments regarding forum shopping or the “chilling” of vigorous advocacy, the Court notes that although this litigation was initiated in the Eastern District of Texas, defendant is a Delaware corporation.  As such, the Court cannot conclude that a plaintiff has engaged in improper forum shopping by suing a Delaware corporation in Delaware.  Similarly, with regard to the possible “chilling” of vigorous advocacy, the Court agrees with plaintiff that the countervailing policy goals of encouraging patent design-arounds are just as compelling.  Whether the re-designed products present more than a “colorable difference” over the infringing products is best made by Texas District Court given its experience with this case and the technology at issue.  However, such considerations do not justify dismissal but rather are most appropriately considered in the context of a transfer pursuant to 28 U.S.C. § 1404(a) which the Court raises sua sponte.  The parties are directed to brief the issue.

The patents-in-suit generally relate to wireless communications and Wireless Local Area Networks.  Plaintiffs moved to strike certain parts of defendant’s answer and counterclaim pursuant to 12 (f).  Defendant’s laches defense and defense and counterclaim alleging inequitable conduct is insufficient and is therefore dismissed.  In addition the summary and introduction to defendant’s answer and counterclaim is unrelated in any substantive way to the equitable defenses and therefore is stricken.

Plaintiff’s expert’s declaration submitted in support of plaintiff’s claims construction positions is reliable and defendant’s motion to strike the declaration is therefore denied.  The claimed invention relates to a simple, inexpensive system for limiting the use of a download video program purchased by a customer.  The Court construes 10 disputed terms and/or phrases for the patent-in-suit.

Defendant contends that Plaintiff’s section 271(e)(2) claim should be dismissed for lack of subject matter jurisdiction because Aurobindo Pharma USA, Inc. did not prepare or file or have any substantive knowledge of the ANDA at issue.  Defendant contends its parent was the only responsible entity.  Defendant contends further that its employee who signed the ANDA signed it in his individual capacity as an agent for the parent and not the US wholly owned subsidiary.  The Court rejects Defendant’s contention that Magistrate Stark erred in applying the standards of Rule 12(b)(6) rather than Rule 12(b)(1), finding no evidence section 271(e)(2) was intended by Congress to be jurisdictional.  The allegations in the Complaint, accepted as true, provide the basis for this court’s jurisdiction.

Plaintiff alleges Defendant willfully infringed his copyright on two human bone marrow stem cell images.  Defendant is a Delaware corporation with its principal place of business in California and moves to transfer this case to the Central district of California.  Plaintiff is a New York resident.  Defendant claims that there were no agreements between the parties made in Delaware and almost all correspondence and business between the parties are in California.  Key witnesses are all in California.  The Court found that plaintiff’s choice of forum is entitled to paramount consideration.  Because defendant is conducting business on a national scale it should not be burdensome to litigate in Delaware.  The public interest factors similarly do not weigh in Defendant’s favor.  A copyright action, like a patent action, is not a dispute with localized interests.

This is a Hatch-Waxman case where Defendant is the holder of an approved NDA for various forms of levalbuterol hydrochloride inhalation solutions used in the treatment of bronchial disorders sold as Xopenex.  A first Paragraph IV ANDA filer settled with Sepracor in other litigation with the agreement that it be allowed to enter the market in 2012 prior to the expiration of Sepracor’s six patents.  Here, Sepracor sued on only five of its six patents.  Sepracor provided a covenant not to sue on the 6th patent, which is the subject of sepracor’s motion to dismiss.  If Dey is successful in invalidating the five patents, Dey may still be unable to enter the market because of the 180-day exclusivity period for the first-ANDA filer.  Following Caraco, the court concludes that this action presents a justiciable controversy even though the first ANDA filer could lose its 180-day exclusivity period as a result.

The technology in this case relates to liquid crystal display apparatus for providing tailored variation of luminance with viewing angle.  The court concludes in this case that the preamble is not a limitation based in part on expert testimony of Dr. Elliot Schlam.  It declines to put a limitation on “light source” that did not serve to clarify, but rather leads to a debate.  It finds that one contested claim requires no construction.  It rejects the parties’ proposals with respect to three contested terms and offers its own constructions.

Patent-in-suit relates to formulations for cleansing and moisturizing skin.  Following a Markman hearing, the Court issues claims construction ruling for six terms all of which appear only in the independent claim.

Latest discovery dispute arises from failed attempt by parties to resolve earlier discovery issues wherein Court had found both parties’ efforts to be insufficient and directed parties to confer and submit joint letter to the Court outlining remaining disputes.  Plaintiff’s request to compel discovery is denied where it has adequate access to the requested information.  Defendant’s motion for a protective order from untimely notice of deposition is denied since both parties contributed to the discovery delay.

Latest discovery dispute arises from failed attempt by parties to resolve earlier discovery issues wherein Court had found both parties’ efforts to be insufficient and directed parties to confer and submit joint letter to the Court outlining remaining disputes.  Plaintiff’s request to compel discovery is denied where it has adequate access to the requested information.  Defendant’s motion for a protective order from untimely notice of deposition is denied since both parties contributed to the discovery delay.

Latest discovery dispute arises from failed attempt by parties to resolve earlier discovery issues wherein Court had found both parties’ efforts to be insufficient and directed parties to confer and submit joint letter to the Court outlining remaining disputes.  Plaintiff’s request to compel discovery is denied where it has adequate access to the requested information.  Defendant’s motion for a protective order from untimely notice of deposition is denied since both parties contributed to the discovery delay.

The Court construes 13 disputed terms for the two patents-in-suit following a Markman Hearing.  The patents pertain to the automation of steps typically associated with the filing of tax returns.  The Court finds the transcript from the oral hearing conducted by the Board of Patent Appeals and Interferences critical in construing the disputed terms.

The Court overrules counterclaim defendant’s objections and adopts under the clearly erroneous standard the Magistrate’s Report and Recommendation (set forth at [Magistrate’s report]) denying counterclaim defendant’s partial motion for summary judgment on the amended counterclaim.  The court notes that many of the arguments presented were repetitive of argument already rejected by this Court.

Plaintiff asserts infringement of U.S. Patent Nos. 5,362,755, 5,547,994, 5,760,090, 5,844,002 and 6,083,993.  The patents-in-suit claim priority to a single parent application which ultimately relate to the ‘755 patent and they all share the same specification.  The patented technology relates to methods of using optically pure R(-) isomer of albuterol to treat bronchial disorders while at the same time reducing side effects associated with the use of the racemic mixture of albuterol.  The Order sets forth the Court’s construction of six disputed terms.  It declines to limit the patent to asthma treatment despite the fact the specification refers to treatment of asthma.  Instead, the Court utilizes dictionary definitions because the claim term is not defined in the internal record.

Defendant seeks to reduce judgment amount following two separate jury verdicts in plaintiff’s favor on infringement, willful infringement and validity.  The Court finds the damages calculated by plaintiff’s expert to be beyond the scope of evidence which supported a finding of infringing activity within the United States.  Accordingly, the jury verdict award is reduced by 82% which represents that portion of the infringing products not imported into the U.S.

Defendant seeks a motion for new trial on all issues in light of Federal Court’s recent decision in In re Seagate which was issued ten months after the conclusion of the infringement trial in this matter.  Because Seagate applies retroactively to this case, there is no question that the jury instructions on willfulness, which applied the then-existing negligence standard articulated in Underwater Devices Inc. v. Morrison-Knudsen Co, were erroneous under the objective recklessness standard announced in Seagate.  The Seagate standard does not remove the issue of willfulness from the jury’s consideration.  Thus, a new trial is warranted where jury instructions under Seagate might have affected the verdict.  Following the Federal Circuit’s lead in Voda v. Cordis Corp. the Court finds that no Seventh Amendment problem exists from retrying willfulness under Seagate without ordering a new trial on infringement.  Bifurcation of the issues was appropriate.  While the jury may be permitted to hear aspects of the infringement and validity cases, it will not be able to nullify the earlier findings.

Court grants motion to dismiss for lack of subject matter jurisdiction and denies motion for leave of Court to serve limited discovery.  This action follows an adverse decision by the Board of Appeal and Interferences wherein the Board considered which party was the first to invent the invention claimed in two competing patents.  Defendant counterclaimed and initiated two separate actions stemming from the Board’s decision.  After settlement negotiations failed, plaintiff filed a statutory disclaimer pursuant to U.S.C. § 253 disclaiming all claims of the patent-in-suit and dedicating to the public its entire right, title and interest to the public.  Thereafter it filed its motion to dismiss contending that there was no longer any controversy since it no longer held any interest to the patent.  Defendant contends that still before the Court is the issue of whether plaintiff’s patent constitutes prior art affecting defendant’s application.  The Court concludes that, based on plaintiff’s disclaimer, a genuine case or controversy no longer exists for any of the three actions and any dispute over priority has been mooted, removing federal court jurisdiction.  Moreover, no facts exist to justify an investigation into defendant’s claim that plaintiff was intentionally running up defendant’s costs.

Following a $34 million jury verdict in favor of plaintiff on infringement, willful infringement, damages, and validity, the Court concluded the defendants failed to prove the patents were unenforceable. Defendants moved for JMOL and a new trial.  Defendants’ argument that plaintiff did not offer sufficient evidence to establish that the claimed inventor of the ‘075 conceived of and reduced to practice the invention claimed by the ‘075 patent before the filing date of the ‘173 patent was rejected.  Defendants also contend that they are entitled to JMOL that the ‘075 patent is anticipated Citing to Z4 Technologies, Inc. v. Microsoft Corp., the Court notes that where priority of invention is in dispute, the Federal Circuit has interpreted Section 102(g) to provide that priority of invention goes to the first party to reduce an invention to practice unless the other party can show that it was the first to conceive the invention and that it exercised reasonable diligence in later reducing that invention to practice.  The Court, however, cannot conclude that defendants have established by clear and convincing evidence that the inventor of the ‘173 patent first conceived of the invention claimed in the ‘075 patent. The Court also finds that defendants’ obviousness argument must fail.  As for defendants’ motion for a new trial, the Court rejects defendants’ argument that they were prejudiced by plaintiff’s advancement of two theories at trial that were not previously disclosed. T he Court holds that plaintiff had sufficient notice. Defendants also contend that the Court’s jury instruction on “corroboration” of invention was erroneous as a matter of law.  Acknowledging that the instruction may have been too narrowly worded, the Court concludes that any error was harmless viewing the instructions as a whole and given the great weight of the evidence.  Accordingly, the Court finds that a new trial is not warranted.

In considering the motion, the Court looks to whether a reasonable jury could have found for the prevailing party.  Noting the distinction between this case and Rohm & Hass Co. v. Biotech Corp., the Court concludes that because this case was tried to a jury, the Court is in the procedural posture of reviewing the jury’s verdict post-trial, rather than weighing and assessing the evidence itself as the fact-finder as it did in Rohm.  Defendant contends that plaintiff failed to establish that the accused products met a preamble limitation.  In this context, the Court, while believing this case to present a close question, cannot conclude that plaintiff failed to put forth the minimum quantum of evidence required to support the jury’s verdict of infringement and/or invalidity.  As for defendants’ argument regarding error in the jury instructions, the Court notes that such a motion is not an appropriate vehicle to challenge such an error and, in any event, the instructions do not misstate the law on obviousness, absent further guidance from the Federal Circuit in the wake of KSR v. Teleflex.

Plaintiff files an infringement action following defendants’ ANDA filing seeking approval to market levalbuterol hydrochloride solutions.  Defendants file a Paragraph IV certification alleging that the patents-in-suit are either invalid or not infringed by defendants’ levalbuterol hydrochloride solutions.  Citing to Glaxo Group Ltd. v. Apotex, Inc., the Court recognizes the Federal Circuit’s clear ruling that the filing of an ANDA application cannot support a claim for willful infringement.  Because plaintiff offers no basis for its willfulness claims other than defendants’ ANDA filing, the Court strikes plaintiff’s allegations of willfulness.  However, consistent with Glaxo, the Court permits plaintiff to continue pursuing an exceptional case claim since numerous factual circumstances may support such a claim.

Two separate juries returned verdicts in favor of plaintiffs on willful infringement and invalidity of the patents-in-suit.  This is the Court’s opinion on unenforceability due to inequitable conduct following a bench trial.  Defendants claim that the ‘075 is invalid because neither the inventor nor his attorney cited prior art to the PTO.  Plaintiff argues that the art is not material and that it did not intend to deceive the PTO.  The Court is not convinced that the clear and convincing showing to deceive was established.  As to the ‘851 patent defendants’ contention that the named inventors committed inequitable conduct by deliberately withholding prior again fails.  The Court finds that disclosure of the art would have been cumulative.  Because the ‘366 is related to the ‘851 patent, the Court applies the same analysis.  With respect to the ‘856 patent, defendant contends that the inventors withheld from the PTO their earlier publically disclosed ‘851 patent which defendant contends constitutes prior art.  The Court again concludes that defendant failed to meet its burden to show that the ‘851 patent is prior art, noting that there is no evidence that the ‘851 patent was disclosed prior to the completion of the invention disclosure form for the ‘876 patent.

Defendants filed an application requesting issuance of a letter of request for documents and deposition testimony from employee of non-party German corporation.  The documents and deposition testimony defendants seek relate to the German corporation’s opposition to the European counterpart to the patent-in-suit.  Defendants have also issued a subpoena to the German company’s US affiliate seeking documents substantially identical to those it seeks under the Hague Convention, and for the deposition of the US entity in order to examine its claim that it lacks control over the documents defendants seeks.  The US entity moved to quash the deposition subpoena.  The Court notes that under Rule 26(b) (2) (C), it must limit the frequency and extent of discovery that can be obtained from sources less burdensome or less expensive.  After reviewing the parties’ contentions, the Court is unpersuaded that a letter of request under the Hague Convention is warranted here.  To the extent that defendants seek foreign patents and publications related to prior art, defendants can do so on their own without judicial intervention.  Other information sought by defendants is too general and too peripherally relevant to the matter at issue to justify issuing a letter of request under the Hague Convention.  The same is true of defendants’ request for deposition testimony.  Thus the Court denies defendants’ request and grants the motion to quash.

The Court considers certain evidentiary issues raised by the parties during a bench trial.  Plaintiffs’ contention that defendants should be barred from contesting infringement with respect to certain claims and from raising certain arguments because they did not timely disclose their infringement and validity contentions in response to interrogatories and waited until the Pretrial Order to raise them is overruled.  The Court concludes that defendants provided sufficient notice to comply with their Rule 26(e) obligations both in their discovery responses as well as in other documents filed before the close of discovery.  Defendants’ objections to the admission of evidence concerning objective indicia of nonobviousness on the basis that such evidence is irrelevant and therefore should be excluded is overruled.  The Court permits the admission of evidence concerning secondary indicia of nonobviousness.  The contention that certain plaintiffs' expert testimony should be excluded because it exceeded the scope of the expert report is overruled as the Court determines that the expert report was sufficient to provide defendants with notice of the testimony at issue.  Finally, defendants contend that the terminal disclaimer filed by the plaintiffs should be excluded because plaintiffs failed to raise this defense to invalidity in the Pretrial Order is similarly overruled.  While the plaintiffs’ terminal disclaimer was not filed pretrial, the Pretrial Order outlines the legal issues relevant to any potential filing of a terminal disclaimer and that the timeliness issue is more appropriately addressed in the context of the disclaimer’s effectiveness rather than its admissibility.

A copy of the full opinion is available here.

The patents-in-suit relate to technology used to optimize the rate at which data can be transmitted across communications channels.  A Markman hearing was held on June 11, 2008 and this opinion issued one month later.  The Court agrees with defendant that the preambles to certain claims are limiting.  It does not, however, adopt defendant’s proposed constructions and agrees with plaintiff that the disputed claims are limited to purely hardware embodiments.  The term “selector” is given its plain meaning and the claim is not invalid for indefiniteness or lack of enablement.  Extrinsic evidence was not addressed in this opinion.

A full copy of the opinion is available here.


 

This dispute arose when Defendants filed ANDAs relating to generic forms of MIRAPEX with the active ingredient pramipexole dihydrochloride used for treatment of idiopathic Parkinson’s disease and restless leg syndrome.  The Court finds that the differences between the ‘812 patent and the ‘086 patent are insufficient to support patentability of the ‘812 patent in light of the ‘086 patent.  The ‘086 patent is directed to methods of treatment using tetrahydrobenzthiazoles, the compounds claimed in the later ‘812 patent.  One skilled in the art would recognize that in order to practice the claims of the ‘086 patent, one must have the specified compounds.  The fact that the compound claims of the ‘812 patent have use for treatment of conditions different from those specified in the ‘086 patent does not change the result.  The filing of a Terminal Disclosure at trial does not moot the double patenting defense since the earlier patent had expired prior to the filing of the Terminal Disclosure.

A full copy of the opinion is available here.


 

A non-party filed an Objection to and Request to Modify Special Master’s Report and Recommendation Regarding Allocation of Fees.  In his report the Special Master concluded that the non-party had engaged in vexatious litigation conduct during the adjudication of a discovery dispute between class plaintiffs and the non-party which resulted in unnecessary delays to the discovery litigation.  Declining to follow Federal Rule of Civil Procedure 53, the Special Master (relying on the Court’s inherent authority to sanction) concluded that the non-party should be sanctioned in an amount equal to one-half of the Special Master’s compensation for the litigation, including the fees allocation matter for a sum totaling $39,618.21.  Reviewing the Special Master’s findings for abuse of discretion, the Court concludes that the Special Master did not err in imposing sanctions against the non-party.  In addition, sanctions may be appropriate even where (as here) no finding of bad faith has been made.  While no finding of bad faith had been formally reached, the Special Master noted in his report that the non-party’s conduct was tantamount to bad faith.  The sanctioned conduct included taking frivolous and/or inconsistent litigation positions both before and after the discovery motion which were designed to delay resolution of this action and which resulted in a waste of judicial resources.

A full copy of the opinion is available here.



 

The Court ruled that jurisdiction is proper under the Delaware long-arm statute.  The alleged patent infringement is a tortuous act within the meaning of section 3104(c).  Sufficient evidence of a world-wide distribution network causing the accused LCD modules to be sold and distributed in well-known retail chains throughout Delaware, as well as evidence of actual accused devises present in Delaware are sufficient contacts for jurisdiction, together with evidence of revenues earned from the sale of the accused products in Delaware.  The fact that defendant may not itself have sold its LCD modules to Dell and OEM’s in Delaware, it acted in concert with others to place the products for sale in Delaware.  The exercise of jurisdiction further comports with due process. Given the substantial quantities of LCD modules shipped to the United States, the claim it had no inkling some would make their way into Delaware is not credible.  It could reasonably have foreseen being haled into court in Delaware.

Service of process was effected by serving the Secretary of State and mailing the summons and complaint by registered mail, return receipt requested, to Defendants in Taiwan, which is not a signatory to the Hague Convention.  The Court finds that such service is effective since the U.S. State Department website indicates service of process in Taiwan can be effected by international registered mail, return receipt requested.  Plaintiff seeks sanctions for filing frivolous motions to dismiss.  The Court find the motions were not made in bad faith nor patently unmeritorious and declines to order sanctions.

A copy of the full opinion is available here.








 

Plaintiffs seek a declaratory judgment action that it does not infringe the patent-in-suit and that the patent is invalid, and filed suit in Delaware on June 27, 2006.  Defendant previously filed an infringement action on June 13, 2006 with respect to the same patent providing video-on-demand services.  Plaintiffs contend the first-filed rule should not apply in this instance because the Delaware court can resolve the action most expeditiously given its familiarity with the same patent in a lawsuit involving similar video-on demand systems.  The Texas Court denied a motion to transfer to Delaware on August 31, 2006.  The Delaware Court ruled that the previous related lawsuit is insufficient reason for departing from the first-filed rule.  The judge who presided over that previous lawsuit is no longer on the bench in Delaware.  Furthermore, the Texas litigation is progressing and policies of judicial economy and comity weigh against duplicative actions.


A full copy of the opinion is available here.

This patent infringement action alleges infringement of the ‘588 patent.  Between June 2003 and October 2003, Frommer Lawrence & Haug LLP (“Frommer Lawrence”) represented plaintiff in connection with its acquisition of Rythmol® and the ‘588 patent from Abbott.  Plaintiff contends that Frommer Lawrence served as its due diligence counsel during this transaction and assisted with the evaluation of the intellectual property concerning Rythmol® and Rythmol ® SR and that the firm had access to confidential information including the development, composition and manufacturing of Rythmol®.  In November 2004, the firm began its representation of the defendant with respect to its ANDA for a generic version of Rythmol® SR and its related Paragraph IV certification regarding the ‘588 patent.  Plaintiff argues that Frommer Lawrence should be disqualified because its current representation of defendant is materially adverse and substantially related to its prior representation of plaintiff which cannot be cured through the use of an information wall.  Defendant contends that the firm’s representation four years ago does not warrant disqualification because the representation was limited both in time and scope and was unrelated to the infringement, validity and enforceability of the ‘588 patent.  In addition, the lawyer primarily involved in the representation left the firm and the representation amounted to less than 20 billed hours. Moreover, the firm never rendered any opinions related to the ‘588 patent.  The Court applies the Model Rules of Professional Conduct and notes that public policy favors allowing a litigant to choose counsel.  As such, motions to disqualify are disfavored.  The Court concludes that plaintiff has not demonstrated that disqualification is warranted given that the present action does not concern the underlying transaction with Abbott and the firm’s prior representation of plaintiff was limited.  The Court finds no concrete evidence to support plaintiff’s contention that the scope of representation for the Rythmol® acquisition extended to advice concerning the nature, scope, potential infringement, design around and validity of the ‘588 patent.  Thus the motion to disqualify is denied.


A full copy of the opinion is available here.






 

Plaintiff alleges Fish has ignored the subpoena and Fish alleges it has fully complied.  Plaintiff asserts that the facts presented in Fish’s responsive brief differ from facts relayed to Plaintiff.  The Court acknowledged that lawyering in fast-paced high stakes litigation can wander sometimes from expected professional standards.  The Court will hold an evidentiary hearing to resolve the legal and professional issues, requiring the presence of five counsel identified.

A copy of the full opinion is available here.










 

Defendant contends that Fairchild lacks standing to bring this lawsuit in that it is no more than a non-exclusive licensee.  Therefore it cannot suffer any legal injury from the infringement of the patent-in-suit.  In addition, Fairchild cannot cure this defect by joining Intersil (the patent’s title holder) because Intersil also lacks standing to sue because it explicitly contracted away “the sole and exclusive right, exclusive even as to Intersil, to enforce the patent-in-suit against Power Integrations."  Because the right to sue others still resides with Intersil, Fairchild is a bare licensee with only  the right to sue a specific entity.  The Court dismisses without prejudice because the possibility exists that Fairchild and Intersil may be able to cure the standing defect noted here.

A copy of the full opinion is available here.

After strained negotiations over the topics and location of deposition, a 30(b)(6) witness was designated for deposition on November 30, 2007 on topics relating to the accused products.  Defendant’s counsel interjected work product and other objections.  Defendant contended that Plaintiff should focus only on the core of the accused products in seeking infringement discovery.  After a hearing on December 13, 2007, the court reviewed the transcript and videotape of the deposition and finds counsel obstructed the questioning by improper assertion of work product privilege and interposing numerous objections unsupported by the rules of evidence.  The Court ordered (1) Defendant’s counsel to pay all costs and attorneys’ fees for the November 30 deposition and the redeposition; (2) a second deposition to take place at a time and place designated by Plaintiff which will not be charged to Plaintiff’s allocation of depositions; and (3) the topics of the second deposition will be as noticed and explained by Plaintiff at the November 30 deposition.

A copy of the full opinion is available here.

The patents-in-suit relate to the monitoring, recording, and analysis of telephone calls. The Court issued a tentative claim construction to facilitate the parties’ preparation of their technical expert witnesses.  However, a final decision concerning the disputed claim language will be issued at the post-trial prayer conference.  In an accompanying Order, the Court requires Plaintiff to refine its definition of accused products with the specific identification of the five products that will be at issue before the jury.

A copy of the full opinion is available here.

The patents-in-suit relate to the drug venlafaxine (Wyeth’s Effexor XR) used for the treatment of depression and other disorders.  The Court largely adopts the patentee’s claim constructions.

A copy of the full opinion is available here.

The patents-in-suit relate to atorvastatin calcium (Lipitor) and pharmaceutical combinations of amlodipine and atorvastatin to treat cardiac ailments (Norvasc).  Plaintiff has given defendant a covenant not to sue with respect to one patent which the Federal Circuit found claim 6 invalid for failure to satisfy 35 U.S. § 112.  It has refused to grant a covenant not to sue with respect to the patent when it reissues.  The court finds that presently enforceable patent claims are a necessary prerequisite to litigation.  There is no current patent which can be enforced.  The question of whether a new patent will reissue is speculative.  In addition, res judicata from prior Lipitor litigation precludes new invalidity claims in this litigation, nor is res judicata precluded by a change in controlling law.  Plaintiff’s motion for judgment on the pleadings based on collateral estoppel is granted.
 

A copy of the full opinion is available here.






 

Defendant contended that a term describing structures disclaimed during prosecution should be interpreted even though it does not appear in the patent.  The Court declined to construe this term until presented with equivalence or estoppel issues involving the term.  Furthermore, it declined to construe terms for which there is no dispute except for how they relate to the disclaimed technology.

 

The main issue in dispute is ownership of the patents-in-suit.  All events leading up to ownership dispute occurred in California.  The inventors lived in California and the subject of the patent was invented there.  Nothing happened in Delaware relevant to ownership.  Service as a potential witness in other Delaware litigation involving the same patents and Plaintiff does not make Delaware an appropriate forum.  The Court stayed the Delaware action as to other defendants pending the outcome of a California action.  California is better situated to settled the dispute over ownership where event, including formation of employment contracts, took place there.  California’s public interest exceeds any interest of this Court. 35 U.S.C. Section 261 relating to assignment of patent rights does not require ownership to be resolved in federal court.  Not all necessary parties have been joined in the Delaware action.  Delaware is an inconvenient forum

The court found the patent-in-suit was valid and literally infringed in a prior 11/15/05 opinion.  After supplementing the record and supplemental briefing, the court considered whether the patent is unenforceable due to inequitable conduct, whether the case was an exceptional case, and whether a permanent injunction should issue.  Allegations contained in original submissions regarding inequitable conduct of the “applicants” were too general under F.R.Civ. P. 9(b).  The identity of the person to be charged with inequitable conduct must be discernable.  Defendant failed to prove intent. The court need not consider whether the case is exceptional.  Permanent injunction will issue.

This opinion clearly and concisely draws a distinction between motions for reconsideration and motions for reargument under Del. L.R. 7.1.5.  Denying motion for reconsideration regarding the exclusion from evidence the ‘248 patent, the Court found the moving party had raised the same argument previously and they had already been considered.  The Court also noted the motion to exclude the evidence was too late.

Regarding the motion to reconsider the decision regarding invalidity of the ‘843 patent based on lack of written description, the Court found the arguments had previously been made and that the moving party had not demonstrated that reconsideration was warranted.

The defendant also moved for reconsideration on the invalidity of the ‘843 patent on the grounds of indefiniteness in light of the Federal Circuit’s then recent decision in IPXL Holding, L.L.C. v. Amazon.com.  In IPXL, the Court held an invention to be invalid for indefiniteness if it is a combination of two statutory classes of the invention.  The Court denied reconsideration on the grounds the issue was not new and the defendant failed to raise the indefiniteness argument previously, and the argument has been waived.