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

Defendant in this patent infringement case moved for reconsideration in advance of trial on the issue of exclusion of expert testimony, a jury instruction to avoid prejudice with the admission of certain FDA letters, and on the scope of expert trial testimony.  The Court granted the motion in part as to the exclusion of expert testimony.  The portion of defendant’s expert’s report challenging plaintiff’s reliance on free base levalbuterol is not stricken, as defendant was not required to anticipate it in its opening brief.  Defendant’s own testing involving levalbulterol salt forms remains stricken, however, because the testing was not disclosed in its opening report.  A final jury instruction will be included regarding certain admissible FDA letters to avoid prejudice from these governmental statements.  The Court will rule on the scope of expert testimony during trial but guided the parties by noting that expert testimony at trial may include a reasonable degree of elaboration and/or synthesis of the original report contents.

The disputed technology relates to methods for filtering information on the internet.  Markman briefing was completed December 13, 2010 and the Markman hearing took place on January 11, 2011.  The court directed the parties to submit post-hearing letter briefs, and thereafter construed the 18 disputed claims from two patents.

Plaintiffs are Delaware LLCs with a principal place of business in Washington and an office in N.D.Ca.  All four defendants are Delaware corporations, three located in California and one in Oregon with a significant facility in California. The court, applying Jumara factors, distinguishes the Link_A_Media decision from the Federal Circuit.  The court finds Delaware is Plaintiff’s “home turf” based on state of incorporation.  Plaintiffs had a legitimate basis for choosing Delaware as the forum since all defendants are Delaware corporations and all have sold or offered for sale their products in Delaware, making personal jurisdiction indisputable.  Defendants argue for the Northern District of California.  Location of operative events and convenience of the parties Jumara factors weigh in favor of transfer, but only slightly as to convenience.  Location of witnesses and relevant evidence only slightly favors transfer.  Practical considerations favor the Delaware forum since the N.D.Ca. court has already transferred one action to Delaware.  Public policy slightly favors Delaware since Delaware encourages the use by Delaware corporations to resolve business disputes.  Other factors are neutral.  Defendants have failed to show that the balance of convenience and interests of justice weigh strongly in favor of defendants.  The cases are consolidated.

This is an ANDA case relating to the levalbuterol.  Defendants claim invalidity due to anticipation based on one British patent which incorporates by reference material in a second British patent.  Plaintiff’s contention that the second patent is directed to an entirely different invention which included the reference as background only, and that the host patent failed to identify with detailed particularity what specific material it incorporates failed to persuade the court, although it was a close call.

Plaintiff in this patent case concerning a signal processor objected to the claim construction report and recommendation.  The parties disputed whether the specification limited claimed invention to certain specified signal processor embodiments.  The report and recommendation cited three specific references in the specification supporting the conclusion that it was limited.  The Court found, however, that these specific references did not “clearly and unambiguously disavow other types of signal processors.”  In support, the Court reasoned that other portions of the specification indicated that the patent did not expressly define “signal processor” in a single restrictive manner.

The parties in this patent case disputed the form of final judgment.  The Court adopted the defendants’ proposed language with respect to the jury’s verdict of infringement and non-infringement and the plaintiffs’ with respect to invalidity due to anticipation and obviousness.  The Court found in granting plaintiffs’ motion to strike defendants’ bill of costs that defendants had abandoned their inequitable conduct counterclaim.  Statement by the defendants in opposition to the motion inter alia support the Court’s finding.

Plaintiff in this patent infringement case moved to amend complaint to add parties and accused devices, which was granted.  On September 30, 2011, the defendant moved for reconsideration asserting, inter alia, the America Invents Act (“AIA”) is new intervening authority warranting reconsideration and error in the court’s application of the law of joinder.  The motion for reconsideration was denied.  The AIA is not an intervening change in the law requiring reconsideration of the Court’s application of Fed. R. Civ. P. 20(a)(2)(A).  Further, defendants demonstrated no “clear error” requiring reconsideration but, instead, merely reargued their previous positions.

On March 2, 2011, plaintiff initiated this patent case involving the selection and retrieval of music from a digital database.  On July 27, 2011, a non-party filed a request with the PTO for ex parte reexamination.  On the same day, the defendants moved to stay the case pending the reexamination.  The PTO granted reexamination on October 7, 2011.  Oral argument on the defendants’ motion to stay was held October 27, 2011.  A stay of the case pending resolution of the ex parte reexamination was warranted, as litigation is in the early stages and the reexamination might simplify the issues.

Plaintiff initiated this patent infringement case over computer products on October 13, 2011, seeking to enjoin a customer suit ITC proceeding initiated in June 2010.  Oral argument on plaintiff’s TRO and preliminary injunction motion was heard October 19, 2011.  Irreparable harm was not demonstrated to warrant an order directing defendants to withdraw the ITC proceeding.  Plaintiff waited several months before initiating the action and the ITC proceeding is nearly complete and set for final decision in November 2011.  Under the circumstances, the “customer suit” exception does not favor an injunction.  However, an expedited schedule will be set to determine patent ownership within six months.  The parties should also advise the court whether non-infringement should be bifurcated from the issue of ownership.

Defendants Broetje Automation-USA Inc. and Brötje-Automation GmbH (“Broetje”) maintained the Court lacked subject matter jurisdiction over U.S. Patent No. 5,011,339 (the “‘339 patent”) and moved for dismissal pursuant to Fed. R. Civ. P. 12(b)(1).  Broetje asserted that the issue fee was never paid and, on that basis, the Patent Office sought to have the ‘339 patent withdrawn. There was no evidence in the record of an actual withdrawal, however, and the ‘339 patent did issue.  Circumstantial evidence was admissible to establish by a preponderance of the evidence that the issue fee was paid.  Subject matter jurisdiction, therefore, is proper.

This case was originally filed in California in May, 2009, and then transferred to Delaware in August, 2009.  The disputed technology relates to a method and apparatus for dispensing objects, such as rivets, through a tube.  Claim construction opinion issued in February, 2011.  Defendant deposed the inventors of the patents-in-suit and then amended its contention interrogatory responses to assert a best mode invalidity defense based on the inventors’ deposition testimony.  Thereafter, it moved for summary judgment of invalidity for failure of the inventors to disclose their best mode.  Plaintiff crossed moved to strike the defense.  Summary judgment briefing concluded September 9, 2011, oral argument took place on September 19, 2011, and this opinion issued two weeks later.  Fact discovery closed on July 8, 2011, yet the newly asserted best mode defense was not disclosed until August 8, 2011.  The motion to strike was denied because, inter alia, plaintiff was partly to blame for the late timing of the inventors’ depositions.  Defendant’s motion for invalidity for failure to disclose the best mode was granted.  The inventors testified that the undisclosed information concerned the use of grooves essential to practicing the claimed invention and was determined through experimentation.  After reviewing the entirety of the inventors’ deposition transcript, no genuine issue of material fact existed regarding whether the best mode was disclosed in the patents-in-suit.

The patent-in-suit relates to a method of electronically exchanging tickets for an event in a secondary market from ticket sellers to ticket buyers located at remote terminals.  Plaintiff moved for reconsideration of a previous judge’s claim construction.  A motion for reargument is the functional equivalent to a motion to alter or amend under Rule 59(e).  The motion, filed within 17 days, was contested in part as untimely.  The court assumed without deciding that it was timely, but permitted plaintiff a limited response, including a response to the timeliness argument.  The court examined the prosecution history and thoroughly explained its interpretation.  There was no misapprehension of that history.  Defendant’s motion for summary judgment is granted as to non-infringement.  Plaintiff’s now preferred claim construction of the term “presenting” was not presented to the court during claim construction and was not adopted by the court.  It cannot avoid summary judgment by asserting that the claims cover something the court has ruled they do not cover.  Defendant’s motion for summary judgment as to indefiniteness is also granted because with respect to means-plus function limitations, corresponding structure is lacking in the specification.

Plaintiffs moved for summary judgment of infringement and to preclude expert testimony.  Defendants moved for summary judgment of non-infringement, no willful infringement, the statute of limitations, and in opposition to plaintiffs’ non-patent-related causes of action.  Defendant also sought to exclude plaintiffs’ damages expert.  Motions for summary judgment on the issue of literal infringement were denied because a material fact existed following the court’s claim construction of “substantially equal.”  Plaintiffs also failed to establish the absence of a material fact regarding its doctrine of equivalence argument. Defendants’ summary judgment motion of no willful infringement was denied because plaintiffs demonstrated the existence of a material fact regarding whether defendants deliberately copied and whether it had formed a good-faith belief that the patent was invalid or not infringed.  Plaintiffs also raised a genuine issue of material fact concerning “their notice and due diligence[,]” thus warranting denial of the defendants’ summary judgment motion as to the statute of limitations.  Material issues of fact also precluded summary judgment on plaintiffs’ trade dress claim.  In view thereof, defendants conceded that the unfair competition and intentional interference with prospective economic advantage claim could proceed.  Exclusion of economic damages expert testimony was not warranted because the shortcomings identified went to the weight and credibility rather than admissibility.

The complaint alleges willful infringement of six patents.  Co-defendants answered the complaint.  RIM asserted that the complaint fails to identify products that specifically infringe.  The court finds that plaintiff has met the threshold of identifying a general category of products. Identifying specific models of the category of products accused of infringing, smartphones and tablets, is sufficient.  While RIM points out that the complaint identifies nearly every one of its products, the court finds that narrowing of infringement issues is best left for discovery.  In addition, plaintiff is not required to address how the infringing products use the patented technology.  The court finds that the complaint provides sufficient notice of infringement allegations and denies the motion for a more definite statement.

The disputed technology relates to video-on-demand products and services.  This lawsuit has been pending over ten years.  After a jury verdict of infringement in 2002, defendant took steps to design around the patent.  After appellate proceedings the court entered a permanent injunction.  The legal framework applicable to contempt proceedings previously defined by KSM was altered by Tivo during the course of the briefing.  The court concludes as a result that it can resolve some, but not all, of the disputed issues and requires further proceedings to determine if the modified system is a successful design-around or an impermissible continued infringement.  The court does find that this dispute is not barred by defendant’s claim of res judicata, laches, equitable estoppel, and prosecution history estoppel.  Plaintiff’s objections to expert testimony presented during this hearing were overruled. Based on the current record, the court is inclined to find there are no colorable differences between the infringing system and the modified product.  Final decision is reserved pending a further hearing on whether a significant, colorable difference exists between the two products.

A three day jury trial ended in this patent case on Marcy 31, 2011.  The patent-in-suit, U.S. Patent No. 6,579,516 is directed to hand lotion products.  The jury returned a verdict finding that defendants infringed some claims of the ‘516 patent, and found other claim invalid under the on-sale bar of 35 U.S.C. § 102(b).  Plaintiff’s motion for judgment as a matter of law and for new trial on the issues of insufficient evidence of a barring sale, erroneous on-sale bar jury instructions; and exert testimony beyond the scope of the report was denied.  Substantial evidence supported the on-sale bar finding.  Use of the word “product” and not “embodiment of the claimed invention” did not render the jury instruction erroneous.  Further, the supposed error was harmless because the jury had sufficient evidence from which to draw its conclusion that the product met each and every limitation of the invalidated claims.  Finally, the expert’s testimony was not unduly prejudicial even if it exceeded the scope of the report.

This patent infringement case involves four patents directed to speech recognition technology.  Plaintiff owns three of the patents, U.S. Patent Nos. 5,799,279; 6,871,179; and 7,315,818.  The defendant owns the remaining patent, U.S. Patent No. 7,069,213.  The parties argued their respective claim construction positions at a June 20, 2011, Markman hearing.  Fourteen claim terms/phrases were at issue, and eleven ultimately construed.  Interestingly, a party-proposed construction was not always adopted.

Claim construction briefing in this Hatch-Waxman action was completed on February 4, 2011; and a claim construction hearing held on February 24.  The parties’ disputed a single term, “administrating,” which appeared in all of the claims of U.S. Patent No. 6,930,129.  The dispute centered on “whether the claims of the ‘129 patent cover only once-a-day, single administration treatments, or whether they also cover multiple dose treatments.”  The intrinsic evidence points to a once-a-day administration.  Thus, “administrating” was construed to mean “administrating once daily.”

In July 2011, a bench trial was held in which defendant’s generic version of Oracea® was found to infringe U.S. Patent No. 7,749,532.  The ‘532 patent was found valid and the preliminary injunction entered in July 2010 was kept in place pending supplemental briefing as to an appropriate permanent remedy.  Two other patents-in-suit, U.S. Patent Nos. 5,789,395 and 5,919,775, were found invalid.  The patents “are inherently anticipated because they merely recognize an inherent property of a tetracycline to decrease NO production and inhibit iNOS expression.”  The remaining patents-in-issue, U.S. Patent Nos. 7,211,267 and 7,232,572, were not infringed.

Claim construction briefing was completed on March 26, 2011 and a Markman hearing was held on May 19, 2011.  The court construed five terms and resolved a dispute regarding two order-of-steps requirements.  The word “a” is generally understood to mean “one or more,” although there can be exceptions.  The court resolves a discovery dispute regarding third-party documents withheld on the basis of common interest privilege.  The court found there was a common legal interest between Xerox and its licensing agent, noting the third party was retained to assist with licensing strategy and patent enforcement, including litigation.

This is a patent dispute involving three lawsuits in this district concerning U.S. Patent No. 6,331,415 and U.S. Patent No. 7,923,221 relating to a process for production of an immunoglobulin.  Oral argument on a motion to transfer and several related motions was held May 18, 2011.  The motion to transfer to the Central District of California was granted and the remaining motions, including a motion to consolidate, were denied without prejudice to renew in the Central District.  The California judge’s experience with the patents and technology spanned nearly a decade and weighed heavily in favor of transfer under the particular circumstances presented.

Plaintiff, Intellectual Ventures I LLC (“IV”), initiated this patent infringement case involving computer virus technology on December 8, 2010 against defendants, Check Point Software Technologies Inc., Check Point Software Technologies Ltd., McAfee Inc., Symantec Corp., Trend Micro Inc. (USA), Trend Micro Incorporated.  The Check Point defendants retained Wilson Sonsini Goodrich and Rosati, PC as defense counsel (“WSGR”).  On January 31, 2011, the Check Point defendants answered and filed counterclaims against plaintiff.  On March 8, 2011, they moved to transfer the case to California, which was denied.  On April 6, 2011, plaintiff moved to disqualify WSGR asserting, inter alia, WSGR’s representation of IV from 2002 to 2009 as the basis for the motion (“Motion to Disqualify”).  Oral argument was held on the Motion to Disqualify on May 16, 2011.  By Memorandum Opinion dated June 30, 2011, the Motion to Disqualify was granted.  The primary issue before the Court was whether under Model Rule of Professional Conduct 1.9, WSGR’s prior attorney client-relationship with IV “is fairly characterized as ‘substantially related’” to the currently materially adverse litigation involving IV and the Check Point defendants.  Further, if so, whether “WSGR’s ‘ethical wall’ is sufficient to avoid imputing the conflict arising from the former representation to the entire WSGR firm, or whether, on balance, the equities disfavor disqualification.”  Here, WSGR’s prior representation of IV was found to be “substantially related” to the instant litigation because, inter alia, “WSGR was involved intimately in every aspect of IV’s formation, patent licensing practices, negotiation of patent licenses, strategies for potential patent litigation, and ways of mitigating the risk of patent litigation[.]”  WSGR’s ethical wall, established before any work began on behalf of the Check Point defendants, as inadequate to prevent disqualification given the nexus between the current litigation and former representation.  The equities also did not weigh against disqualification.

This is a patent infringement case involving antivirus and internet security products.  On December 8, 2010, plaintiff, Intellectual Ventures I LLC, initiated this action in the state of its incorporation.  The defendants thereafter moved to transfer the case to the Northern District of California pursuant to 28 U.S.C. § 1404(a).  Although some of the defendants were incorporated in Delaware, none has a principal place of business in the state and each asserts that the allegedly infringing technology was developed outside of Delaware.  “Plaintiff’s choice of forum, which is given paramount importance, weighs heavily against transfer.”  Consideration of the relevant public and private transfer factors does not overcome plaintiff’s choice of forum.  Transfer is denied.

This is a patent infringement case involving an invention relating to an apparatus that conveniently sequesters platelet-rich plasma for use in surgical and medical procedures.  Defendant, Biomet Inc., moved to dismiss for lack of personal jurisdiction asserting via a declaration from one of its executives, inter alia, that it is a parent company that is not engaged in any of the alleged infringing activities.  Defendant, Biomet Biologics, LLC, moved to transfer to the Northern District of Indiana arguing, inter alia, plaintiff, Gian Biologics, LLC’s, spurious connection to Delaware and recent “litigation contrived” incorporation in the state.  A stay of proceedings was entered to permit limited jurisdictional and venue related discovery.

Judge Stark conducted mediation and alternative dispute resolution conferences in related patent infringement cases before being elevated to an Article III Judge presiding over the cases.  Although no wrongdoing, impropriety, or misconduct was asserted, and all parties agreed that was the case, a group of defendants, following a request from Judge Stark, briefed the propriety of recusal under 28 U.S.C. § 455(a).  The defendants maintained that even in the absence of wrongdoing, impropriety, or misconduct recusal is appropriate to maintain the appearance of impartiality and the confidence of the public and litigants in the certainty of the judicial process and the adversarial nature of our system of justice.  Thereafter, the Federal Circuit reversed the claim construction ruling and the infringement finding in one of the related cases and remanded for further proceeding.  Because the Federal Circuit’s claim construction substantially changed the posture of the cases, the moving defendants, with plaintiff’s consent, requested a withdrawal of the recusal motion.  The request was accepted and the motion was denied with prejudice.

This is an ANDA litigation involving generic niacin extended release tablets that was filed March 6, 2009. On May 19, 2011, the court addressed five motions that were pending before it.  The court denied plaintiffs’ motion to preclude defenses defendants allegedly did not disclose in their Paragraph IV notice letter or interrogatory responses, reasoning, inter alia, the harm to defendants in not being able to utilize this critical information outweighed any prejudice to plaintiffs, which plaintiffs appeared to cure.  Further, the court reasoned that it was bound by Federal Circuit precedent that holds that “[t]he Court has no authority to penalize deficiencies in Paragraph IV notice letters; the Hatch-Waxman Act creates no private cause of action for such notice letter shortcomings.”  The court granted defendants’ motion for leave to file a surreply brief in opposition to plaintiffs’ motion to exclude expert evidence because the additional information would only assist the court in understanding the issues.  The court denied plaintiffs’ motion to supplement its motion to preclude expert evidence, reasoning that plaintiffs should have raised the issue by separate motion and not in response to defendants’ motion for leave to file a surreply brief.  The court granted plaintiffs’ cross-motion for summary judgment of no invalidity for double patenting and, at the same time, denied defendants’ motion for summary judgment of invalidity for double patenting.  The court reached its summary judgment decision by adopting the holding in another recent Delaware case wherein, Chief Judge Bartle, sitting by designation, held that “a later-issued but earlier-expiring patent could not serve as a double-patenting reference against two earlier-issued but later-expiring patents[.]”

The defendant holding company claims it cannot infringe the patent-in-suit because it does not make, use, offer to sell, or import the accused products into the United States.  Plaintiff argues the motion should be treated as a summary judgment motion because of an attached declaration, and that it should be given a reasonable opportunity to present all material pertinent to the motion.  It further points out that one can purchase the accused products directly from the moving defendant’s website.  The court finds this defendant’s general denial that a holding company cannot infringe insufficient.  At this stage of the proceedings, the court must take Plaintiff’s factual allegations as true.

The case involved patented technology relating to medical devices, in particular, a safety catheter.  The jury returned a verdict finding infringement under the doctrine of equivalents of three of six asserted claims of the patent-in-suit, but also finding that only one of the infringed claims was valid.  The other claims were found invalid for obviousness. Both parties moved for judgment as a matter of law or a new trial, and submitted competing proposals for permanent injunctive relief and the defendants filed an alternative request that any such injunction be stayed pending appeal.  The Court was not persuaded that the claim the jury found valid was in fact obvious.  The Court reasoned that, in addition to secondary evidence of non-obviousness, a genuine factual dispute existed and the record contained sufficient evidence from which a jury reasonably could find that the prior art did not disclose a particular element of the claim.  The Court also upheld the jury’s finding that the claims were not invalid for lack of an adequate written description because substantial evidence supported the finding.  Similarly, the Court was not persuaded that the jury incorrectly found infringement under the doctrine of equivalents, reasoning, in part, that the Court’s claim construction did not prohibit indirect attachment of one of the claimed elements.  As to obviousness, the Court reasoned that the record contained clear and convincing evidence in the way of testimony and prior art to uphold the jury’s invalidity finding.  The Court adopted the defendants’ proposed permanent injunction which included a “sunset” provision to allow time for a non-infringing replacement.  The case was tried in November 2010.  Post-trial motions were filed in January 2011, with oral argument in February 2011.

This is an ANDA litigation in which plaintiffs CIMA Labs Inc., Azur Pharma Limited, and Azur Pharma International III Limited, assert infringement of U.S. Patent Nos. 6,024,981 (the “‘981 patent”) and 6,222,392 (the “‘392 patent”) (together, the “patents-in-suit”).  The defendant is Mylan Pharmaceuticals, Inc. On June 16, 2010, plaintiffs received defendant’s Paragraph IV notice letter informing them of Mylan’s ANDA No. 201824, in which Mylan seeks FDA approval to market a generic orally disintegrating clozapine product.  On July 23, 2010, plaintiff’s initiated this lawsuit.  On December 3, 2010, the defendant filed its answer and counterclaim.  On January 7, 2011, plaintiffs filed their answer to defendant’s counterclaim and filed a motion to stay the lawsuit pending reexamination of the patents-in-suit.  On January 31, 2011, the Court held a Fed. R. Civ. P. 16 scheduling conference, but refrained from entering a scheduling order until resolution of the motion to stay.  On April 19, 2011, after the completion of briefing and oral argument, the Court granted the plaintiffs’ motion to stay and ordered the parties to submit a status report on the reexamination and the necessity for continued stay of the action every ninety (90) days until the stay is lifted. In reaching its decision, the Court reasoned that the six (6) related litigations were stayed pending conclusion of reexamination, many of the claims of the patents-in-suit were already rejected and awaiting appeal, and reexamination had progressed for several years and the instant case was in its early stages.  The Court further reasoned that a stay would pose no undue prejudice to defendant.  Although the Court recognized that the defendant could conceivably be prejudiced from its inability to lift the automatic 30-month stay by achieving an early non-appealable judgment of non-infringement, the Court reasoned that a finding of prejudice in the instant case was premised on four assumptions: the accused product does not infringe the patents-in-suit; a forfeiture of the 180-day exclusivity period by two previous ANDA applicants; a resolution of the instant lawsuit before expiration of the 30-month stay; and approval of the ANDA application before expiration of the 30-month stay.  The Court was not persuaded to deny the motion for stay on defendant’s willingness to proceed only with an infringement action and assertion that this would simplify the matter, reasoning, inter alia, that claim construction positions are disputed and a denial might prompt an attempt to lift the stay in the related cases and a consolidation of the cases.

This case involves patents relating to two technologies: switched digital video and video compression.  A Markman hearing took place on October 13, 2009 before a now retired judge and again on February 14, 2011 before this court.  The court’s construction includes the terms “end-user” and “router.”

The disputed technology relates to the use of antibiotics, such as doxycycline, to treat inflammatory shin conditions, including rosacea.  The court construes 2 terms on the patent-in-suit.  The complaint was filed on October 18, 2010.  Briefing on claim construction was completed on March 13, 2011 and a Markman hearing was held on March 21, 2011.

The court orally denied these motions at a pre-trial conference, indicating that a written decision would follow.  The court sets forth its rationale for denying the case dispositive motions.  The court determined that each of the motions turned on genuine issues of material facts.  The experts advanced detailed and plausible, although conflicting, opinions.  In such cases, it is appropriate for consideration by a jury.

The disputed technology relates to Facebook’s website, which is claimed to infringe 11 claims of one patent.  After a 7-day trial a jury found literal infringement of each asserted claim, but that Facebook did not control its employees or end users.  The patent was not found to be anticipated or obvious, but was invalid based on the on sale bar and public use bar.  The court agreed that the disputed claims did not require user interaction and upheld the verdict of direct literal infringement.  The court finds that the submission of a proposed construction of a claim does not operate as a waiver of an indefiniteness challenge.  Defendant unsuccessfully challenged the adequacy of Plaintiff’s Rule 50(a) motion on the grounds that it was not sufficiently specific in time to cure any defect since the written motion was not submitted until after the case went to the jury.  The court finds sufficient evidence to support the jury’s invalidity verdict.

The seven disputed patents relate to porcine circovirus vaccines.  Briefing on claim construction was completed October 29, 2010.  A Markman hearing was held November 9, 2010.  Ninety claims are asserted against defendant, but only three groups of terms are submitted for construction.  The court finds that “vaccine” and “encodes” need no further construction.

The Court issues an opinion following a Markman hearing construing six disputed claim terms of the '156 patent which relates to plaintiff’s drug selling under the brand name Lipitor.

Pending before the Court are three motions:  (1) plaintiff’s motion to strike and dismiss (2) defendant’s motion to strike and motion to dismiss plaintiff’s counterclaims; and (3) defendant’s motion to strike plaintiff’s reply brief or alternatively grant leave for a surreply Defendant requests that the Court strike plaintiff’s reply brief in support of its motion to strike and dismiss on the grounds that the reply brief improperly raises new arguments that were not raised in the initial motion.  The Court finds that the reply reiterates three arguments, all of which were introduced in the opening brief.  Therefore the motion to strike is denied.  However, the parties are permitted to file additional briefing.  Plaintiff’s motion to dismiss and strike is denied as defendant has adequately pled its inequitable conduct affirmative defense and counterclaim by identifying the "who, what, when, and where" of the alleged misrepresentations as well as the effect of the misleading statements.  As for defendant’s motion to dismiss and strike plaintiff’s counterclaims, plaintiff alleges that defendant made material misrepresentations concerning the acquired distinctiveness of its mark.  The Court concludes that, at this point, plaintiff has sufficiently pled material misrepresentations for purposes of stating a claim of fraud on the PTO in procurement of a trademark.

Defendant moves the Court to declare the case (currently on appeal) as exceptional and seeks fees and costs.  The Court grants plaintiffs’ request to defer ruling on defendant’s request pending resolution of the appeal.

The disputed technology relates to dispensing objects, such as rivets, through a tube.  A claim construction hearing was held on October 21, 2010 and the opinion construes a total of 14 terms from 2 patents.

The disputed patented technology pertains to magnetic braking systems for rail cars, in particular, rail cars used on roller coasters.  Defendants seek leave to add a counterclaim alleging Sherman act violations.  The court concludes that plaintiffs are immune from the antitrust suit under the Noerr-Pennington doctrine.  Defendants’ counterclaim is primarily based on plaintiffs’ actions in bringing this patent infringement lawsuit and threatening similar legal action against others.  Defendants have failed to plead an exception to the doctrine.  No facts are asserted to establish that the suit is objectively baseless or that the plaintiffs were motivated by bad faith.  Additionally, with respect to Walker Process fraud defendants assert no facts evidencing intent to deceive. The court concludes that the proposed amendments are futile because of Noerr-Pennington immunity.

Anvik contends that the court erroneously concluded that it waived its public right of access argument and denied it access to sealed transcripts referenced in an opinion dated February 16, 2010.  Anvik contends these transcripts are pertinent to a lawsuit pending in S.D.N.Y. regarding an inducement of infringement claim.  The court concluded that reconsideration is not warranted.  The court did not misapprehend the facts, noting that it understood the transcripts to be part of the material Anvik sought, as evidenced by its opinion.  The court is not persuaded that the New York Court has found the materials to be relevant, and noted Anvik did not explain why the materials it seeks here could not have been obtained through the New York action.  The court further concludes that Anvik waived its public right to access argument.  Therefore the motion for reconsideration is denied.

The patent-in-suit relates to a cardiac valve prosthesis, for implantation in the body.  All motions are denied with the exception of two motions.  The court grants plaintiffs’ request for an accounting of the number of defendants’ Valve Revalving System devices made, used, sold, offered for sale, imported or supplied in or from the United States and corresponding revenue from March 16, 2010 through the date of the order.  Additionally the court awards prejudgment and post judgment interest at the prime rate, compounded quarterly.

These parties have been litigating over 6 years.  A jury decided infringement/willfulness; a second jury decided validity; the court decided the inequitable conduct defense; and the court held a second bench trial on willfulness after Seagate and found willful infringement.  Every decision went against defendant.  Defendant began ex parte reexam proceedings after trial and the court stayed injunction proceedings during the reexam.  Defendant argues the willfulness opinion is defective in that it does not contain evidence in the findings of fact relating to the reexam. The court is convinced that the prior judge did consider the reexam but disagrees that there is a requirement to make specific reference of such in the willfulness opinion.  The court considers the Read factors and determines that none weigh against enhanced damages.  Nevertheless, the court is not convinced that the conduct was so egregious as to treble damages, and instead awards double damages.  The court declines to award attorneys’ fees since it is not convinced defendants’ tactics amount to bad faith.

The disputed technology concerns a delayed release tablet formulation of bupropion hydrochloride.  (D.1.1 ¶¶ 1, 5, 6)  Bupropion hydrochloride is the active ingredient in the antidepressant drug sold by Biovail under the tradename Wellbutrin XL. A Markman hearing took place on June 29, 2010.  The court construes “free of stabilizer” which has been construed in three other actions brought by plaintiff inconsistently with the construction plaintiff proposes here.  The court concludes that plaintiff is collaterally estopped from relitigating the court’s construction in related litigation.  It construes the term as: "the tablet is free of any substance or agent that tends to prevent changes to the chemical integrity of the tablet."  The court further adopts defendant’s proposed construction of "dissolution profile."

Plaintiffs filed this lawsuit on July 15, 2010 claiming infringement of two patents relating to intelligent network security devices and methods.  The motion to stay was filed August 20, 2010, and briefing on that motion was completed September 17, 2010.  On September 29, 2010, pursuant to a request by a party in a related action, the PTO granted a request for inter partes reexamination of all 19 claims of one patent-in-suit. The PTO rejected all claims of that patent on September 29, 2010.  Defendant argues that the stay should be granted because the related action is stayed. The court agrees.  Permitting plaintiff to pursue claims against one defendant while the litigation is stayed as to ten other defendants would prevent the court from consolidating the actions.  Further, the plaintiff offered no persuasive basis to distinguish this case from the related matters.  While the decision to stay the related cases was a “close call,” the present litigation is at an earlier stage with no scheduling order in place.  Plaintiff will not be prejudiced by the stay in this action.

Anvik brought a patent infringement action in S.D.N.Y. against the parties in this Delaware action involving the same LCD display technology.  Anvik contends the sealed pretrial briefs, proposed findings of fact and conclusions of law, transcripts, and evidence are highly relevant to the New York action and contends the New York protective order provides sufficient protection to protect confidentiality.  The parties oppose the modification to the protective order noting that they have relied on that order in producing documents.  The court finds that limited intervention is warranted to challenge the protective order in the Delaware action. It denies the motion to the extent that it seeks modification of the Delaware protective order, however.  It further declines to consider a new argument regarding the public right of access to judicial documents because it was raised for the first time in the reply brief.

The disputed technology relates to systems and methods for messaging to multiple gateways.  The court found that a showing of hardship or inequity was an absolute requirement for granting a stay.  This case involves matters, many of which will not be resolved during reexamination.  Plaintiff has stated it will not amend its claims during reexamination.  Discovery has just begun and trial is 20 months away.  Rescheduling is a challenge due to the court’s heavy docket.  The reexamination request was granted only three weeks ago.  Inter-partes reexams have an average pendency of 36 months.  Staying the case would effectively give defendants their choice of forum over plaintiff.  The court is further reluctant to stay where, as here, the parties are direct competitors.

The disputed technology pertains to formulations for skin cleansers and moisturizers.  Plaintiff’s motion to file a surreply is denied as moot since the court denied defendants’ motion for summary judgment.  The parties agree that plaintiff sold a moisturizer product more than one year before the critical date.  However, the offer must be for the patented invention, and defendants have failed to show there are no material facts in dispute.  Defendants also fail to show there are no disputed facts with respect to enablement.  Following briefing on anticipation plaintiff sought to preclude defendants from relying on documents identified for the first time in their reply brief.  The Court found that defendants violated D.Del. L. R. 7.1.3(c)(2). Although defendants did not receive certain document in time to include with the opening brief, it was their responsibility to obtain the discovery in time.  Defendant effectively reserved material by not diligently pursuing it.  As for summary judgment, although defendants provide evidence supporting anticipation, it is not conclusive.  Defendants ask the court to bifurcate damages and willfulness from liability, and plaintiff opposes that request.  The court finds that the burden on the jury and judicial resources is lessened by bifurcating, notwithstanding the fact that this case has been pending four years.

The four patents-in-suit relate to needleless intravenous connector valves.  Plaintiff’s motion to exclude evidence (other than basic documentary evidence) from prior ICU patent litigations, including claim constructions and rulings on summary judgment motions, is denied to the extent it seeks to exclude claim construction on the same claim terms at issue here since they are relevant as to the defense to willful infringement.  A jury instruction will limit consideration of prior constructions to that defense.  The motion is otherwise granted. Defendant is precluded from referencing invalid claims and fee award from prior litigation as irrelevant and potentially prejudicial.  Motion to preclude evidence of comparison between the accused product and the commercial embodiment of the patents-in-suit is mooted by agreement not to preclude as to willfulness and obviousness contentions and otherwise granted. T hree in limine motions relating to inequitable conduct claims are denied based on prior rulings in this case.  Motion to exclude evidence of an inventor defense as untimely, confusing and prejudicial is denied.  Leave was granted to add this defense.  Motion to preclude documents ICU had withheld as relating to inequitable conduct is denied and the documents are to be produced within 7 days.  Defendant’s motion to preclude evidence of Lanham Act action is granted as the evidence is irrelevant and prejudicial.  Motion to prevent evidence of defendant’s prior alleged copying is granted.  Plaintiff’s motion to preclude defendant from asserting an untimely prosecution history estoppel defense is denied since the scheduling order entered by previous judge has been vacated and prosecution history estoppel is scheduled for bench trial in January 2011.  Court will consider whether additional discovery is needed.  Plaintiff’s motion to strike section 282 notice based on 28 prior art references noted, 12 of which were previously undisclosed, is denied.  ICU will not be permitted to use the newly discovered references as a basis for invalidating the patent. Plaintiff’s motion to exclude testimony of expert Dr, William R. Jarvis is granted.  This expert is an epidemiologist whose rebuttal report appears to the court to be a back-door way of encouraging the jury to conclude defendant’s products are safer than plaintiff’s.  The relative safety is not relevant and is unfairly prejudicial.  Finally, the court denies plaintiff’s motion for judgment on the pleadings or partial summary judgment with respect to inequitable conduct. The court finds credibility is important and notes that charges of inequitable conduct are ill-suited to summary judgment.

Defendant moves to strike the rebuttal report of plaintiff’s invalidity expert which was submitted 10 days before expiration of the expert discovery deadline.  Defendant claims the rebuttal report contains extensive new opinions and additional citations, all of which should have been disclosed in the original report.  The scheduling order makes no reference either to permitting or precluding rebuttal reports from the party having the burden of proof.  The rebuttal report cites to additional portions of authorities relied upon in the opening report.  However, this would be appropriate testimony in a deposition or trial and, therefore, is also appropriate in a rebuttal expert report.   While it would have been far preferable if plaintiff had disclosed its intention to produce another report on invalidity, the court notes that the "extreme sanction" of exclusion of this "critical evidence" is not justified.

Plaintiff’s letter which seeks to strike three out of four of defendant’s motions for judgment as a matter of law is procedurally improper as such a request must be made by motion.  Absent court order, nothing in the rules prevents a party from filing more than one motion.  The court directs plaintiff to file a response addressing the merits of those motions in accordance with the scheduling order.

The attorney-client privilege has not been waived through an inadvertent production since sufficient procedural protections were in place and the overall amount of inadvertently-produced documents is miniscule in comparison with the overall production.  Records of invention provided to an attorney for securing legal opinion are privileged.  The portion of another exhibit which is not claimed as privileged must be produced, but the privileged portions are protected.  A single page document that is a cover page to a literature search is not protected since it contains no more information than would be included in a privilege log.  The matter of the substance of that search was not before the court.

The disputed Work is software created during the time plaintiff was employed by the City.  Defendant located during discovery copyright marks referencing copyrights belonging to Defendant in the disputed software.  Defendant claims Plaintiff substituted those marks with marks bearing Plaintiff’s name and then registered the copyright without disclosing the prior copyright marks.  Plaintiff opposed the amendment as untimely.  The court finds that plaintiff has not unduly delayed and finds no bad faith or dilatory motives.  Furthermore, plaintiff has not shown prejudice and does not contend futility.

Defendant requests leave to amend its answer and counterclaims to assert an additional affirmative defense and corresponding counterclaim pertaining to unenforceability of two of the patents-in-suit due to inequitable conduct.  Defendant’s proposed amendments meet the standards under 9(b).  There is no evidence of delay or bad faith on defendant’s part, nor will plaintiff be prejudiced by the amendments.  Therefore, defendant’s motion to file an amended answer and counterclaims is granted.

The patent-in-suit relates to the management and storage of electronic information.  Defendant seeks to amend its existing false marking counterclaim, and to add an affirmative defense of inequitable conduct and a counterclaim seeking a declaratory judgment on unenforceability.  The proposed amendments to the false marking counterclaim allege false marking on additional products.  Defendant was in possession of numerous documents containing examples of how plaintiff marked the newly accused products before it previously moved to add the false marking claim.  Defendant provides no explanation for why, in light of this information, it could not reasonably have complied with the Scheduling Order.  Therefore, the motion to amend is denied as to amendment of the false marking claim.  However defendant has demonstrated good cause to amend its answer to add an inequitable conduct defense and declaratory judgment counterclaim for unenforceability.  Defendant was unable to discover key evidence for an inequitable conduct claim until the patent's inventors were deposed.  The proposed amendments are not futile nor will plaintiff be prejudiced by them.  Therefore, defendant’s amendment adding an affirmative defense of inequitable conduct and declaratory judgment counterclaim for unenforceability is granted.

Claim construction issues were referred to the Magistrate who makes recommendations on the construction of 24 disputed terms for the 7 patents-in-suit.  The patents-in-suit are all part of the same family and all relate to compositions for and methods of treating hyperlipidemia.

The case was referred to the Magistrate for certain purposes, including making recommendations as to the proper construction of disputed claim terms.  The parties have addressed eight claim terms, seven of which are disputed.  The patent-in-suit relates generally to intravenous (IV) catheters, and, in particular, to a safety IV catheter in which the needle tip is automatically covered after needle withdrawal to prevent the healthcare worker from making accidental contact with the needle tip.

Plaintiff filed answering claim construction brief along with a supplemental declaration of plaintiff’s expert Harold B. Hopfenberg.  Defendant moved to strike the declaration containing more than 46 pages of allegedly new opinions as untimely and unauthorized, complaining that it will be prejudiced at the Markman hearing without an opportunity to cross examine this expert on the new opinions.  Plaintiff responded that the scheduling order does not preclude supplemental expert declarations nor does it impose a deadline for expert depositions.  Rather than excluding “critical evidence,” the court notes plaintiff has not engaged in willful deception.  The court postpones the Markman hearing for a month during which time defendant may depose the expert with respect to the supplemental declaration and may file a reply brief in support of its proposed claim construction.  Defendant may move for monetary sanctions within 7 days after the Markman hearing if it believes any unfair prejudice caused by plaintiff’s conduct has not been ameliorated.  The court denies defendant’s request to strike plaintiff’s expert declaration contained in its answering claim construction brief as non-compliant with LR 7.1.2(a) which requires all requests for relief to be presented by motion.

The matter was referred to the Magistrate for, among other purposes, claim construction.  The Magistrate recommends construction of ten disputed terms for four patents-in-suit making up two district groups.  The patents are directed to methods of treating acne and rosacea and to methods of using tetracycline compounds to inhibit production of nitric oxide ("NO"), a mediator of rosacea.

This is a declaratory judgment action seeking a declaration that the patent-in-suit is invalid.  Claim construction briefing concluded January 27, 2010, and a Markman hearing followed on March 8, 2010.  The patent-in-suit is entitled “Method for Processing Debit Purchase Transactions Using a Counter-Top Terminal System.”  The patentee’s argument that “telecommunications means” is not in means-plus-function format based on the distance between the “means” and the element that recites the function is rejected for lack of authority cited.  In a related case, the magistrate recommended that the term be construed as not means plus function, but since that case settled before it could be adopted this court is not obliged to agree with that construction.  The court relies on a declaration filed by the patentee’s expert Mr. Grimes in that related litigation in construing “debit styled card” against the patentee in this case.

The court’s claim construction of “different data format” terms is the same as this court adopted in related litigation but differs from the construction the PTO endorsed during reexamination.  Defendants moved to stay citing efficiency because the Federal Circuit’s decision in the related litigation will control the dispositive issue of claim construction here.  They further contend they will be prejudiced if required to prove invalidity by clear and convincing evidence where the court’s construction differs markedly from the PTO’s.  Plaintiff argues this court’s construction controls over a conflicting PTO construction.  If the matter is stayed, it will be prejudiced if it loses its trial date.  The court declines to stay, noting that the time and outcome of the appeal are speculative. Defendants move to certify the claim construction over Plaintiff’s objection.  Plaintiff argues interlocutory review is not available absent exceptional circumstances which are not present here.  The court finds that an interlocutory appeal is appropriate in the unusual circumstances presented here, and that the litigation should continue unless and until the Federal Circuit accepts his appeal.

Defendant’s financial outlook took a downturn and defendant moved to stay the litigation in order to prevent the sale of a desired asset and avoid bankruptcy proceedings.  Plaintiff prefers to proceed risking a bankruptcy filing, arguing it would be harmed by continuing infringement and delay of resolution of this matter which has already been pending for several years and noting defendant is asserting infringement against plaintiff in a related European action.  Under these facts, the court determines that a clear case of hardship or inequity in being required to go forward and denies the motion to stay.

The disputed technology involves medical devices capable of measuring nitric oxide levels in exhaled breath.  Defendant alleges that deposition testimony provides the basis for alleging inequitable conduct.  Plaintiff counters that the proposed amended pleading lacks the requisite specificity as required by Exergen.  The court finds that the amended answer satisfies the pleading requirements of 9(b) and therefore permits the amendment and denies the plaintiff’s motion for judgment on the pleadings alleging inequitable conduct.  The court notes that the question today is not whether defendant will succeed on the merits of the inequitable conduct contentions, but whether it should be permitted to put on evidence of that defense.

The disputed technology involves medical devices capable of measuring nitric oxide levels in exhaled breath.  Defendant sought to have 8 foreign (Finland or Sweden) inventors brought to the U.S. for deposition or alternatively for plaintiff to bear the cost of the depositions to take them abroad.  The motion is denied as to 4 inventors not presently employed by plaintiff as no writing obligates them to testify for plaintiff.  The motion is granted with respect to co-inventors who executed an assignment which included an agreement to “testify in any judicial . . . proceeding and generally do everything possible to aid [plaintiff]….” over an objection that the language did not obligate them to give testimony in the U.S.  Two inventors under the control of plaintiff were required to travel to the U.S. despite the objection that since other depositions would be required in Sweden, it would be more efficient to depose these inventors there as well.  Defendant moves to compel plaintiff to produce 2 NIOX devices.  Plaintiff objects that the parties should split the retail cost (between $22,000 and $30,000).  The court rules that plaintiff must produce 1 system which defendant will return at the end of the litigation, which will minimize the cost to plaintiff.

Defendant seeks to offer Nicholas Godici as its patent law expert and wants to share some of Plaintiff’s confidential information pursuant to the terms of the protective order.  Plaintiff argues this court’s “typical” approach of precluding testimony from patent law experts.  The court overrules the objections noting that no motion to strike or motion in limine has been filed.  It reminds counsel to attach copies of unpublished orders and internet materials.

Defendants filed a Motion for Reconsideration of the Court's December 28, 2009 Order Staying Briefing on Defendants' Motion to Stay and Motion to Certify (D.I. 657).  In denying the Motion, the Magistrate concludes that the pending Appeal of Judge Farnan’s construction in Fujifilm I does not alter the previous Order Staying Briefing.  Moreover, Judge Farnan is currently considering fully-briefed Objections to the claim construction Report, which recommends that Judge Farnan adhere to his previous Fujifilm I construction.  How Judge Farnan rules on the Objections will have implications for whether the impending motions are pressed and the factors that must be considered.  The Magistrate reasons that greater efficiency will be achieved by delaying briefing of the Motion to Certify until after Judge Farnan rules on the pending Objections rather than by requiring briefing now on a certification request that may be withdrawn if Judge Farnan sustains certain Objections.

The technology involved in this declaratory judgment action relates to power converters.  The motion to strike inequitable conduct and patent misuse defenses was fully briefed on October 22, 2009.  The Magistrate agrees to a limited extent that plaintiff has failed to meet the heightened pleading standard required by Rule 9(b) and Exergen.  He finds that at this stage of the pleadings it is reasonable to infer that one person accused of inequitable conduct knew of the materiality of prior art references and failed to disclose them with deceptive intent.  With respect to two other individuals, one was not alleged to have been involved in the prosecution, and there are no facts alleged as to the other to show he was aware that statements made to the PTO were false or misleading.  The Magistrate thus recommends granting the motion to strike with respect to the latter two individuals, but not as to the first.  He further rejects the argument that the inequitable conduct alleged has infected the enforceability of two other patents and recommends granting the motion to strike as to the two other patents.  The counterclaims which the magistrate has deemed adequately plead further satisfy the requirements of Rule 12(b)(6) and state a claim upon which relief can be granted.

The patents-in-suit are directed to switched mode power supplies, also known as DC power supplies or power converters.  The Magistrate construes ten disputed terms.

Plaintiff’s requested relief is granted in part and defendant is directed to answer non-infringement contentions by a date certain notwithstanding a later date in the scheduling order.  The scheduling order does not override the 30-day rule for responding to interrogatories.  The remaining relief requested by plaintiff is denied for failure to identify the interrogatories challenged.  Defendant’s request that plaintiff be directed to supplement its infringement contentions is denied since plaintiff has already done so on two occasions.  Defendant’s additional request for discovery related to conception and reduction to practice is denied as premature.

The Magistrate makes recommendations as to seven groupings of disputed terms for the six patents-in-suit.  Tutorials and claim construction arguments were presented on June 11, 2009.  The patents relate to digital camera technology.  Some of the terms were previously construed by the Court in earlier litigation.  The Magistrate agrees with defendants that those rulings are not dispositive here since there is no res judicata or collateral estoppel bar.  He conducts his own analysis and ultimately agrees with Judge Farnan’s conclusions. In addition the reexamination history must be taken into consideration.  The court construes the terms de novo without according any deference to the PTO, which may have erred.

Plaintiff seeks provisional damages as a result of infringing products subsequent to the date Defendant was aware of Plaintiff’s patent application.  The provisional damages theory includes discovery needs and the fast track schedule can no longer be accommodated.  The parties believe they can work out a source code dispute.  They are to outline their positions in a joint letter if any issues remain.  Defendant’s licensing documents, including protocol license agreements, are discoverable as relevant to a reasonable royalty calculation.  Defendant is not required to produce all other patent license agreements since the request is overbroad. Defendant’s offer to produce agreements between 2003 and 2009 which involved five or fewer U.S. patents was ordered.  The court permitted plaintiff to add a claim of willful infringement which had not previously been asserted in order to obtain the fast-track schedule which is no longer operative.  Defendant’s proposed schedule extension of 4 months is adopted to allow for additional discovery needed.  The court notes defendant’s proposal contains a summary judgment provision relating to provisional damages.

The Magistrate considers discovery on damages during liability phase of these related cases which have been bi-furcated for trial.  The defendants have asserted defenses of invalidity due to obviousness.  In response, plaintiff seeks discovery from defendants regarding commercial success of the patented invention – a secondary consideration for non-obviousness.  The Magistrate declines to follow any of the parties’ recommendations and takes a takes a middle-of-the road approach directing defendants to produce certain limited information.

On 11/25/08 Plaintiffs filed a complaint alleging infringement of 5 of their patents and non-infringement of 6 of Defendants’ patents which all relate to semiconductor transistors called MOSFETS.  Defendants filed an action in Maine relating to different patents not at issue in the Delaware action.  Three months later, Plaintiffs moved to amend the Delaware complaint to include them.  Jurisdiction over one defendant is contested in Maine but not Delaware.  The Court is convinced that Delaware is the more convenient forum for the patents first raised in the Maine complaint and permits the amendment of the Delaware complaint.

In this copyright infringement action, the Magistrate notes authority that a transfer motion is not a dispositive motion within the meaning of 28 U.S.C. section 636, but treats the entirety of the motion as case dispositive.  The summary judgment motion is based on the argument that the subject matter of the copyright is a collection of elements common to computer interfaces and the ideas are so closely tied to the expression of the idea so as to be not copyrightable.  Plaintiff has alleged only “substantial similarity” and not “virtually identical.”  The Court concludes discovery is warranted and the motion for summary judgment is premature.  Defendant is a Delaware corporation and failed to meet the heavy burden of establishing the Jumara factors weigh so heavily in favor of transfer as to defeat plaintiff’s choice of forum.

There are two patents-in-suit directed to lens assemblies for cameras, permitting a compact size suitable for mobile telephones.  The magistrate adopts plaintiff’s proposed definition of “stop” but rejects its reasoning in modifying one of twelve Webster’s Third dictionary definitions of “stop.”  He rejects the notion that a single general dictionary is more probative than the patent’s specification and also rejects defendant’s lexicographer arguments.  He defers construing the terms “near the optical axis,” which is challenged as indefinite, until ruling on case-dispositive motions.  He adopts plaintiff’s construction “within an effective aperture range of the single focus lens” albeit comprised of general dictionary definitions where defendant has offered no alternative.  An indefinite ruling on the terms is deferred. He also construes the term “peripheral region.”

The Magistrate considers several discovery issues.  Plaintiff’s request to permit fact depositions prior to the completion of fact discovery is denied based on the current scheduling order which requires paper discovery to be completed first.  However, a deadline is set for completion of the depositions.  Defendant’s interrogatory requests the patentee to disclose all of its products that practice any claim of the patent-in suit.  The interrogatory is relevant to Plaintiff’s request for injunctive relief, but overbroad.  Plaintiff is directed to respond more narrowly by disclosing its products or services that practice any of the asserted claims of the patent-in-suit and to identify, product-by-product and service-by-service, which of the asserted claims are practiced by each of these products or services.  Finally, Defendant’s request to stay an order requiring production of source code pending a ruling on its objections is denied.  The parties are further reminded that at the time they contact the court to schedule a teleconference to resolve a discovery dispute, there should be no ambiguity between the parties as to what the dispute is and as to the precise relief sought.

Magistrate Judge Stark ordered the following procedures after submission of a joint status report: Each side was allotted a half-hour to present a tutorial on August 24, 2009.  A joint request to file 60-page opening claim construction briefs and 40-page answering claim construction briefs was denied.  The parties are limited to 30 pages each for each brief.  The Court will construe up to 12 disputed terms in conjunction with the Sept. 23, 2009 Markman hearing.  Opening briefs are due August 5, 2009.  If the parties are unable to agree on 12 terms, they shall submit a joint letter limited to 5 pages with their respective positions on which terms the Court should construe.  In this case, the Court will advise the parties as to which terms it will construe limited to 10 terms.  The Court declines to stay the portion of the case involving patents pending reexamination.  It has stayed the portion of the case involving 106 accused products at issue in another action pending in this court.

Pending are cross motions for summary judgment with respect to certain accused products which were adjudged in an earlier litigation to infringe two of the same patents that are at issue in this litigation.  Defendants argue that the instant suit constitutes impermissible claims splitting and that they are entitled to judgment with respect to matters that were at issue in the earlier litigation.  Plaintiff argues that it is entitled to summary judgment on infringement.  The Magistrate agrees with defendants that at least part of the instant case would appear to be duplicative of the earlier action.  Even if that is not the case, the issues are similar enough to warrant a stay of that portion of the instant action.  The parties are directed to advise the Court as to their joint proposal for proceeding with the instant action after judgment is entered in the earlier action.

This is an ANDA dispute regarding defendants’ generic versions of Plaintiff’s branded drug NAMENDA, which are accused of infringing Plaintiff’s patent titled “Adamantine Derivitives in the Prevention and Treatment of Cerebral Ischemia.”

Plaintiffs timely seek leave to amend to add antitrust and unfair competition claims, claiming that Rembrandt has attempted to monopolize certain Data Over Cable Service Interface Specifications technology and equipment markets.  Rembrandt contends that the amendment would be futile and runs counter to the purposes of MDL consolidation.  The Magistrate Judge finds the motion to amend is timely and will not prejudice Rembrandt nor affect the trial date, nor has there been a showing that the amendment would be futile.  The motion to dismiss the counter-counterclaims (asserted out of an abundance of caution) is mooted by the grant of the motion to amend.  The Magistrate Judge recommends that the motion for judgment on the pleadings be denied because he agrees with the cable defendants that the factual allegations are sufficiently plead under notice pleading requirements, and notes Rembrandt’s arguments attack the merits of the claims rather than the sufficiency of the pleading.

Defendant’s counterclaim seeks cancellation of plaintiff’s design mark registration due to fraud on the PTO.  Plaintiff contends that the counterclaim must be dismissed for failure to state a claim in that it fails to adequately allege scienter and fails to identify an injury.  The parties have consented to the Magistrate’s jurisdiction to determine this case dispositive motion.  The Court applies the Fifth Circuit’s standard in Southland Sec. Corp. v. INSpire Ins. Solutions Inc.  A party alleging that a corporation made a fraudulent statement may do so adequately by alleging that the declarant or anyone at the corporation advising or assisting the declarant or anyone participating in any way in preparation of the allegedly false statement knew or should have known it was false.  Applying this standard, the Magistrate finds that the defendants have adequately pled scienter.  In addition, the Court finds that the defendants have adequately alleged that plaintiff has no rights in the mark.

Plaintiff seeks permission to file a First Amended Complaint alleging willful infringement against defendant.  The motion is unopposed and, as such, is granted.  Also before the Court is defendant’s motion for leave to file an amended answer and counterclaims which is also granted.  Plaintiff has acknowledged in related litigation that leave to amend its complaint automatically triggers a defendant’s right to file an amended answer.  Moreover, defendant’s motion was timely filed.  The Court will not address the substantive merits of the allegations at this juncture.

Defendants seek to amend their Answer, Affirmative Defenses, Counterclaim and Jury Demand to assert claims and defenses of inequitable conduct and patent exhaustion and/or license.  Because there is no opposition to add the affirmative defenses leave is granted.  Defendants’ motion is timely and is based on conduct arising during the course of reexamination proceedings before the PTO.  Plaintiff argues that defendants waived their inequitable conduct defense by failing to pursue it in prior litigation between the parties.  Defendants’ defense and counterclaim of inequitable conduct are well pled. Issues of waiver are factual and not suited for disposition at this juncture.  Moreover, the Court is skeptical that waiver principles necessarily apply to the new patents involved in this litigation or to inequitable conduct that is alleged to have occurred during the reexamination proceedings during the prior litigation.  Finally, principles of claim preclusion are not applicable because inequitable conduct was not previously litigated.

Plaintiff seeks permission to file a Third Amended Complaint alleging willful infringement against defendants.  Only one of the defendants has responded contending, among other things, that leave should not be granted because plaintiff did not move for a preliminary injunction as required by Seagate and the claim construction rendered by the PTO differs from the construction rendered by this Court in related litigation involving the patents-in-suit making plaintiff’s claim futile.  Finding plaintiff’s claim to be well pled, the Magistrate grants the motion to amend.  There is no per se requirement that plaintiff seek a preliminary injunction before raising a willful infringement claim.  Nor is there a per se rule that reexamination proceedings preclude a plaintiff from asserting a claim for willful infringement.

Plaintiff seeks to file a second amended complaint primarily to add allegations for willful infringement against defendants.  Plaintiff’s request was made before the deadline for amendments and is based upon defendants’ post-filing conduct.  Defendants contend, among other things, that plaintiff cannot meet its burden because the patents-in-suit have been subject to a significant ownership dispute and a reexamination proceeding that resulted in dueling claim constructions by the Court and the PTO.  In granting the motion the Magistrate finds defendants’ futility argument unpersuasive.  Although the PTO arguably rendered a different claim construction during reexamination than that which was rendered by the Court during the course of related litigation involving the same patents, St. Clair has not waived its infringement arguments under the PTO’s claim construction, and the Court is not bound by that construction.  Given the PTO’s ultimate granting of reexamination certificates without amendments, previous jury verdicts in favor of plaintiff, and the licenses of the patents-in-suit taken by numerous parties, the Court cannot conclude at this juncture that the addition of a willful infringement claim against defendant is futile or that it had been asserted in bad faith.

Magistrate judge orders limited discovery of certain documents in ANDA case (including unredacted versions of material already produced) and deposition testimony given that information sought by plaintiff in their motion to compel is only marginally relevant and the burden on defendants is substantial.

The Magistrate again imposes sanctions on plaintiff’s attorney following remand from the Court’s order vacating the Magistrate’s previous ruling imposing sanctions.  The initial order for sanctions (the “Sanctions Order”) arose from a discovery dispute and a resulting Order issued by the Magistrate directing plaintiff to produce certain requested information (the “Discovery Order”).  The Magistrate sanctioned plaintiff’s counsel after he failed to abide by the Magistrate’s Discovery Order.  Thereafter the Court granted plaintiff’s motion to reconsider and vacated the Sanctions Order and remanded the matter to the Magistrate for “more comprehensive treatment.”  Having reviewed the supplemental record on remand, the Magistrate concludes that the decisions to violate the Discovery Order were not solely the responsibility of plaintiff’s counsel but also involved plaintiff’s officers.  Therefore, sanctions are appropriate as to both counsel and plaintiff.  Although the supplemental record indicates that compliance with the Discovery Order would have been extremely burdensome, if not impossible, the decision to unilaterally violate the order without seeking relief from the Court or notifying defendant demonstrates a willful disregard of the Magistrate’s Order.

The Magistrate resolves certain discovery disputes.  Defendants’ request for documents relating to assignments within the patentee’s IP department of each case or project numbers to which department members were assigned as well as applications within which each project number was assigned for a period of three years is denied with leave to explore through deposition whether it was common to have divided responsibility for U.S. patent prosecution from responsibility for prosecution of related patents in other jurisdictions.  The court finds the burden of production, including translation and privilege review outweighs the minimal marginal relevance.  In addition, plaintiff has adequately explained the basis for “disassembling” documents produced, and is in the process of “reassembling” files in the manner in which they were kept.  Finally, at this time there is no basis to provide relief with respect to a privilege issue relating to the U.S. duty of disclosure.

Kyocera filed a similar motion to dismiss in C.A. No. 06-404-JJF-LPS. The court reaches the same result in this matter as no grounds separate from those raised in the Kyocera motion have been raised. See Kyocera.

The same arguments as were made with respect to Kyocera’s similar motion in C.A. No. 06-404-JJF-LPS and the same result is reached here.  See Kyocera.

This is an ANDA case.  A Markman hearing took place on March 10, 2009.  The disputed terms relate to two claims in a patent covering rosuvastatin calcium, marketed as Crestor®.  The judge found that the prosecution history favored the patentee’s constructions.

The Court considers the request for “all documents relating to … efforts to ‘co-market’ and ‘co-promote’ Crestor, including all due diligence communications’ overbroad and finds the more limited production set forth in plaintiff’s proposal more reasonably calculated to lead to discovery of admissible evidence.  The production is ordered within 15 days of the date of the order.

The patents-in-suit claim a digital camera that allows the formatting of photographic images in a choice of file formats, such as TIFF, JPEG and MPEG.  Plaintiff filed this action against Defendants alleging infringement of the patents-in-suit which action was stayed pending resolution of a related California case.  Shortly after settlement of the California litigation, the stay was lifted and Defendants filed the Motions to Dismiss contending that Plaintiff is not the true owner of the patents-in-suit.  Defendants do not contest that Plaintiff has owned the patents-in-suit since the California settlement.  However, Defendants contend that prior to that assignment; the patents were owned first by the inventors’ employer, as a result of an automatic assignment provision in the inventors’ employment agreements (the “Employment Agreements”).  Defendants contend that because Plaintiff did not own the patents at the time it commenced this action, it lacks constitutional standing to pursue this action.  In the alternative, Defendants seek jurisdictional discovery in aid of establishing Plaintiff’s lack of standing prior to the resolution of the merits of this infringement action.  In reaching its decision the Court looks to the language of the Employment Agreements.  No jurisdictional discovery is warranted where the agreements are unambiguous.  In addition, the Employment Agreements do not contain present language automatically transferring to the employer all rights, title and interest to the patents-in-suit.  Without such present language of assignment, the patents-in-suit were not automatically assigned to the inventors’ employer by operation of the Employment Agreements.  Therefore, the Employment Agreements do not present an impediment to Plaintiff’s ownership of the patents-in-suit and Plaintiff has standing to bring this action.  Thus the Magistrate recommends denial of Defendants’ Motions to Dismiss.

Certain defendants (“Moving Defendants”) seek dismissal based on lack of personal jurisdiction.  Moving Defendants are an Indian Company with its principal place of business in India whose wholly-owned subsidiary is a Delaware holding company.  The Delaware company is a shell.  The only action it has ever taken was to incorporate its wholly-owned subsidiary in New Jersey.  The New Jersey defendant is the primary contact for the Indian company in the U.S. and Canada.  The Indian company submitted an ANDA seeking approval to manufacture and distribute generic versions of memantine hydrochloride in the U.S.  The ANDA was prepared in India and named the New Jersey company as the U.S. agent.  The Delaware company did not participate in the preparation or submission.  Neither the Indian nor the New Jersey company has any offices, facilities, employees etc. in Delaware.  Neither company’s employees make regular visits to Delaware, nor do they sell products directly to retailers in the U.S.  Moving Defendants do, however, purchase certain materials from Delaware companies.  They also contract with certain Delaware entities regarding distribution.  Certain clinical trials for defendants’ product were also conducted in Delaware.  Sales representatives from India made a trip to DuPont to discuss safety standards but did not conduct any business relating to the product or the ANDA.  Also, Moving Defendants have entered into certain agreements from time to time (not specifically related to the ANDA) that contain Delaware choice of law provisions.  The Magistrate concludes that such contacts are insufficient to satisfy the requirements of Delaware’s Long Arm Statute.  Nor is intent to sell sufficient where the product has not yet been introduced to Delaware.  Because personal jurisdiction is lacking, the Magistrate recommends that the interests of justice require that the claims against Moving Defendants be transferred (rather than dismissed) to the District of New Jersey.

In response to a subpoena, non-party Zhone/Paradyne entered into an agreement regarding the production of documents which permitted the non-party to review the documents copied by defendants and claw back documents deemed to be privileged.  Between August and November, 2008, about 500,000 pages of documents were copied.  Days before deposition discovery was set to begin in February, 2009, plaintiff and the non-party notified defendants that hundreds of documents that had been produced and/or that had been referred to by plaintiff in its response to interrogatories were privileged and inadvertently produced.  The Magistrate grants defendants’ request to retain and use those documents in the instant litigation finding that even if the documents are privileged, the non-party has waived the privilege by failing to act diligently to protect its documents.  The agreement negotiated by the non-party created a risk that defendants would come into possession of documents that the non-party believed to be privileged. It also provided a mechanism by which the non-party could review the materials to be produced.  The failure to conduct that review until the last minute was unreasonable as the non-party should have discovered this problem sooner.

This action was filed in May, 2008.  Previously, in April, 2008, the PTO issued an initial office action rejecting four of the disputed claims in this lawsuit and denying an ex parte request to reexamine the remaining disputed claim.  A final rejection issued on the four disputed claims.  The Court declined to stay noting the lengthy litigation history of some of the claims at issue here.  Additionally, not all of the patent claims at issue in the litigation have been rejected by the PTO.

Defendant requests leave to amend its answer and affirmative defenses to assert, among other things, a license defense.  Plaintiff contends that defendant should be denied leave to amend, because the ownership and license defense it seeks to assert by the amendments is based upon an agreement that defendant improperly withheld from production.  The Court finds that while defendant’s discovery conduct is not exemplary, its actions do not rise to the level of bad faith so as to preclude the defense.  Moreover, the case had been stayed pending resolution of state court action, and plaintiff will not be prejudiced by the proposed amendments.  Thus, the motion is granted.

This is the second of two actions brought by plaintiff against defendants and involves the same patents-in-suit.  The first resulted in a $3 million jury verdict against the defendants.  The second suit seeks damages for infringement from the end of the period in the first litigation through the present.  No stay is warranted here where defendants have been adjudged infringers and the prejudice in delay to plaintiff is significant.  The prospect of litigating an appeal of the first action while litigating this action does not rise to the level of hardship that would justify the imposition of a stay.

Magistrate denies request to extend deadline set by order of the Court on August 27, 2008 directing plaintiff’s attorney to pay $15,000.00 in sanctions to defendant.  The August 27, 2008 Order can be found at [Order].

The matter was referred to the Magistrate for purposes of making a recommendation on claim construction in relation to plaintiff’s pending Motion for Preliminary Injunction.  The Court construes four terms on three patents that relate to the use of a portable device to transmit sales data.  Magistrate recommends adopting plaintiff’s interpretation on three of the terms and defendant’s interpretation as to the fourth.

Magistrate makes recommendations on various motions to dismiss.  Exercising its rights under the patent-in-suit, plaintiff manufactures and sells a drug under the brand name “Crestor”.  Plaintiff has brought this infringement action against a number of defendants who are all in some way or another involved with the filing of an ANDA.  Some or all of the defendants wish to manufacture and/or sell a product that would infringe the patent-in-suit.  Despite the number of motions, only three issues are presented to the Court.  First, the Magistrate declines to dismiss those defendants who purport to have signed the ANDA merely as an agent of the entity that actually submitted the application.  The statute makes the act of submitting the ANDA an infringing act. In this case, the subsidiary of the applicant and that subsidiary submitted the ANDA application to the FDA as agent on the foreign subsidiaries’ behalf.  Thus dismissal is denied.  Second, plaintiff’s count seeking a declaration of infringement pursuant to 35 U.S.C. §271 (a) is dismissed due to a lack of sufficiently immediate case and controversy.  Under Hatch-Waxman, plaintiff’s filing of Count I stayed FDA approval of all defendants’ ANDAs.  The stay will remain in place until well after trial is currently scheduled.  Thus there is no sufficient immediacy to the controversy.  Finally, the motions to dismiss for lack of personal jurisdiction are denied without prejudice.  Subsequent to the filing of these motions, the MDL Panel granted plaintiff’s motion to centralize all litigation related to the patent-in-suit in this District for coordinated and consolidated pretrial proceedings.  Thus the issue of personal jurisdiction is moot at this juncture.

Plaintiff moves to dismiss, or in the alternative to sever and transfer to the District Court for the Southern District of Indiana, one defendant’s counterclaim for a declaratory judgment that it is entitled to payment under an escrow agreement arising from a related Indiana action.  Defendant has also moved to strike plaintiff’s jury demand.  The parties include leading manufacturers and sellers of coronary stents.  The patents-in-suit describe a method for treating hemodynamic dysfunction by using electrodes to simultaneously stimulate the ventricles of the heart.  Plaintiff contends that defendant’s counterclaim should be dismissed pursuant to the first-filed rule insofar as the Indiana action and defendant’s counterclaim relate to the same claim and operative facts.  Alternatively plaintiff argues that the counterclaim should be transferred as it is unrelated to the patents-in-suit.  The Court disagrees and finds that the agreement is in fact related and that neither dismissal nor transfer is appropriate at this time given that the Indiana action is stayed and the motion addresses a counterclaim and not the entire case at bar.  However, resolution of the counterclaim is stayed pending disposition of the complaint.  Defendant’s motion to strike the jury demand is granted because of the equitable nature of the relief requested to compel royalties due under the parties’ agreement.  The fact that money may ultimately be received does not convert the nature of the action.

Magistrate recommends denial of plaintiff’s motion for preliminary injunction.  Plaintiff is a leader in the market for power supply controller integrated circuits (“ICs”) and seeks to enjoin defendant from allegedly infringing on preliminary injunction digital frequency jittering circuit for varying the switching frequency of a power supply.  Defendant’s IC products directly compete with plaintiff’s ICs.  Plaintiff alleges that it has seen a significant decline in market share as a result of the sale of defendant’s infringing products although the reduction in sales has begun to recover in recent months.  Applying the four factors the Magistrate finds that plaintiff has failed to meet its burden and denies the motion.  Although the Court’s previous claim construction in a related case has no res judicata effect here since defendant was not a party to that litigation, the parties agree to apply the same construction for purposes of this motion.  Although plaintiff has met its burden on infringement, it failed to show a likelihood of success on the merits due to a substantial question as to validity.  Defendant’s challenge rests on the basis of three prior art challenges which defendant argues anticipates the patent-in-suit.  The defendant in the related litigation requested and was granted a reexamination of the same patent-in-suit by the PTO which issued an initial Office Action rejecting claim 1 of the patent-in-suit as anticipated by the same three prior art references.  The possibility that the PTO will adhere to its current position raises a substantial question as to validity.  In addition, plaintiff is unable to show irreparable harm in light of evidence that plaintiff’s market share and reputation have not been damaged by defendant’s sales.  Plaintiff’s three-month delay in bringing the instant motion also cuts against issuing an injunction.

Plaintiff’s motion for reconsideration of the Magistrate’s recommendation to dismiss for lack of standing is granted earlier recommendation was based on the court’s finding that plaintiff had failed to meet its burden to establish that it owned 100% of the patents-in-suit in light of the record available at that time.  The dismissal was recommended given the failure of proof on whether certain notes had been repaid which raised a substantial issue as to whether plaintiff owned all rights in the patents-in-suit.  Plaintiff supplemented the record with additional information previously withheld.  None of the newly-submitted information was newly-discovered.  The Court finds that the newly-submitted documents demonstrate that the notes at issue were in fact repaid and plaintiff owns all rights to the patents-in-suit.  The Court also grants defendants’ motion for leave to amend their answers and counterclaims to add allegations of antitrust violations, unenforceability and standing.  Finally, the Court finds that plaintiff has met the standard announced in Seagate and adequately pled willful infringement.
 

Following jurisdictional discovery, the Court concludes that plaintiff has produced sufficient evidence to establish that defendant had intent and purpose to serve the United States market, including Delaware, with regard to the accused products.  This evidence is sufficient to establish jurisdiction in Delaware pursuant to the dual jurisdictional theory of personal jurisdiction developed by courts interpreting Delaware’s long-arm statute.  Specifically the Court finds persuasive the fact that defendants’ products at issue (the “accused chips”) were in certain Samsung cell phone chargers and that tens of thousands of chargers containing the accused chips have been shipped into Delaware through established sales channels.  Moreover, defendant knew it was reasonably likely that its accused chips would end up in the U.S., including Delaware, as components of Samsung’s cell phone chargers.  Defendant has established distribution channels in the US and has close relationships with end users of its products in the US, including Delaware.  This same evidence, along with evidence that defendant designed accused chips to meet U.S. specifications (and therefore the Delaware market since there is no suggestion that the design standards would be different), satisfies the due process analysis required.

A copy of the full opinion is available here.

Defendants are designers and manufacturers of certain patented negative pressure wound therapy devices.  Plaintiff develops and produces therapies in the area of patient wound care.  Prior to filing suit, plaintiff contacted defendants to determine whether they could avoid litigation by consummating a business relationship between the parties.  Those discussions were not successful and plaintiff filed this declaratory judgment action seeking a declaration of noninfringement and invalidity of defendants’ patents related to medical devices used in negative pressure wound therapy, violations of the Lanham Act and a declaration that plaintiff is the sole owner of its own wound treatment device and related technology.  Defendants' move to dismiss the complaint for lack of subject matter jurisdiction, among other grounds.  Looking to the Supreme Court’s holding in Medimmune Inc. v. Genentech, Inc., and the Federal Circuit’s recent holdings in Teva Pharms. USA, Inc. v. Novartis Pharms. Corp. and SanDisk Corp .v STMicroelectronics, Inc. the Court notes that whether a controversy is ripe depends on whether the question presented is entirely or substantially a question of law and whether postponing a decision would work a substantial hardship on the challenging party.  The Court finds that plaintiff’s original complaint is required (according to SanDisk) but fails to make any allegation of an aggressive act by defendants directed toward plaintiff.  The Court finds unpersuasive plaintiff’s argument that statements made by defendants regarding having knowledge of plaintiff’s FDA submissions rose to the level of an aggressive act.  Without such an act, there can be no actual controversy between plaintiff and defendants.  Acts made after filing do not satisfy the test articulated in SanDisk.  Therefore, the Court dismisses the complaint for lack of jurisdiction.

A copy of the full opinion is available here.

Plaintiff seeks indemnification relating to a patent infringement suit in the Eastern District of Texas. The patents-in-suit involve a voltage regulator system for automobile alternators.  Plaintiff seeks a declaratory judgment that cross-claim defendant (“defendant”) must indemnify plaintiff for its costs incurred in defending against the infringement action in Texas.  The indemnification obligation allegedly arises out of the sale by defendant of certain voltage regulators which plaintiff used as components in alternators which it then sold.  Defendant argues that it has no obligation to indemnify because it asserts that it only agreed to provide indemnification for patent infringement actions that resulted solely from the voltage regulators and not from the alternators which they contend are at issue in the Texas action.  Plaintiff refutes defendant’s description of the scope of the Texas action and argues that the suit is all about voltage regulators since that is the subject of the patents-at-issue.  The Court looks to the terms of the contract and determines that differing interpretations are possible and as such denies defendant’s motion to dismiss.

A copy of the full opinion is available here.

Defendants contend plaintiff has not shown it owns 100% of the rights of the patents-in-suit due to uncertainties surrounding notes securing a loan transaction.  The Court is not persuaded on the basis of evidence before it that the loan has been paid and dismisses the action without prejudice.

A full copy of the opinion is available here.




 

Defendants moved to dismiss the action based on lack of personal jurisdiction and filed a declaratory judgment action in the North District of California.  Plaintiff is a Delaware corporation and maker of power supply chips incorporated into electronic devices such as cellular telephone chargers for which they hold several patents.  Defendants are based in California and China and also manufacture power supply chips which plaintiff claims infringe on the patents-in-suit. Defendants have no offices, employees, or property in Delaware.  Nor is there evidence in the record that they have ever directly transacted business or sold products here.  Plaintiff argues that the Court has jurisdiction over defendants under a “stream of commerce” theory.  This argument is based on the fact that defendants’ accused chips are readily available for sale in Delaware by virtue of their presence as components in cell phone chargers sold here by Samsung.  Thus, plaintiff argues that defendants have an established distribution channel into Delaware for the accused chips which it claims demonstrates defendants’ intent to serve the Delaware market. Recognizing that the stream of commerce theory does not naturally fit within the specific and general categories of jurisdiction under the Delaware Long Arm Statute, the Court considers those cases wherein the Delaware Supreme Court has considered dual jurisdiction.  Reading the Delaware Supreme Court’s affirmance of the Superior Court’s decision in Boone v. Oy Partek as an adoption and application of the concept of dual jurisdiction, the Court notes that jurisdiction may lie where plaintiff can show defendants’ intent and purpose to serve the Delaware Market.  As for the Due Process analysis, the Supreme Court has not yet decided the appropriate test for determining when minimum contacts are present in a stream of commerce case in light of a recent 4-4 split in Asahi Metal Industry v. Superior Court of California.  However the analysis of dual jurisdiction pursuant to the Delaware Long Arm Statute is functionally equivalent to Justice O’Connor’s test outlined in Asahi.  Because the record is incomplete on the issue of intent and purpose, the Court orders limited discovery on the issue.

A full copy of the opinion is available here.

At least 19 nonexclusive licenses existed before TV Guide obtained an exclusive license.  The Magistrate found TV Guide obtained the exclusive rights going forward and had standing to maintain this litigation.
 

A copy of the full opinion is available here.