Delaware Intellectual Property Litigation : DE Intellectual Property Lawyer & Attorney for Patents & Antitrust Litigation in Wilmington, Dover & Newark

By Memorandum Opinion entered by The Honorable Sue L. Robinson in Versata Software, Inc., et al. v. Callidus Software Inc., Civil Action  No. 12-931-SLR (D.Del., May 16, 2013), the Court denied the motion to transfer venue to the Northern District of California of defendant Callidus Software Inc. (“Callidus”). The Court also denied Callidus’ motion to dismiss. Id. at *10. 

A complete copy of the Memorandum Opinion is attached.
 

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By Memorandum Opinion entered in Depuy Synthes Products, LLC v.Globus Medical, Inc., C.A. No. 11-652-LPS (D.Del., May 7, 2013), The Honorable Leonard P. Stark construed thirty-six (36) disputed terms found in U.S. Patent Nos.7,846,207, 7,862,616, and 7,875,076 (collectively, the “patents-in-suit”).

A complete copy of the Memorandum Opinion is attached.
 

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By Memorandum Opinion entered by The Honorable Sue L. Robinson in Golden Bridge Technology, Inc. v. Apple Inc., et al., Civil Action No. 10-428-SLR (D.Del., April 25, 2013), the Court, as a practical matter, denied plaintiff Golden Bridge Technology, Inc.’s motion for reconsideration of the Court’s Order of April 9, 2013 granting summary judgment of non-infringement in favor of defendant Apple. The Court noted that, although it previously granted the motion for reconsideration, it did explain at the time that it was only granting to review the merits of the motion and not to grant the relief sought. The Court apologized for any confusion this may have caused. Id. at *1, fn1. The Court ultimately concluded that, despite plaintiff’s supplemental submissions and citations to the record, there is no expert testimony or evidence of record that raises a genuine issue of material fact to preclude summary judgment under the Court’s claim construction. Id. at 6.

A copy of the Memorandum Opinion is attached.
 

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By Memorandum Opinion entered by Chief Judge Gregory M. Sleet in Devicor Medical Products, Inc. v. Biopsy Sciences, LLC, Civil Action No. 10-1060-GMS (D.Del., April 15, 2013), the Court denied the amended motion to transfer venue of Defendant Biopsy Sciences, LLC. After analyzing whether the action could have been brought originally in the Middle District of Florida and the Jumara factors, the Court was unable to find that Biopsy had met its burden of showing that the balance of factors tipped strongly in favor of transfer. Id. at 11. Thus, the motion to transfer was denied.

A copy of the Memorandum Opinion is attached.
 

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By Memorandum Order entered by The Honorable Richard G. Andrews in XpertUniverse, Inc. v. Cisco Systems, Inc., Civil Action No. 09-157-RGA (D.Del., March 7, 2013), the Court granted in part the Daubert motion of defendant Cisco Systems, Inc. to exclude the proposed testimony of plaintiff’s expert on direct infringement and secondary considerations. Specifically, the Court excluded plaintiff expert’s conclusions about whether and how particular customers actually used the accused products and five of six of his opinions about secondary considerations of non-obviousness finding such conclusions and opinions not reliable because they were not the product of the expert’s scientific or call center expertise or his direct knowledge. Id. at 3-7.

A copy of the Memorandum Order is attached.
 

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By Report and Recommendation in Imagevision.net, Inc. v. Internet Payment Exchange, Inc., Civil Action No. 12-054-GMS-MPT (D.Del., February 25, 2013), The Honorable Mary Pat Thynge has recommended denying the motion of defendant Internet Payment Exchange to stay pending the inter partes reexamination of U.S. Patent No. 7,567,925 (“the ‘925 patent”) by the United States Patent and Trade Office (“PTO”). After analyzing the required factors, Judge Thynge concluded that (1) the relative status of the litigation and the reexamination proceedings do not weigh in favor of a stay, (2) the possible simplification of the issues for trial weighs in favor of a stay given that the PTO has preliminary rejected all claims of the ‘925 patent under the heightened reexamination standard of the America Invent’s Act (“AIA”), and (3) the balancing of the undue prejudice to plaintiff if a stay were granted against the hardship or inequity to defendant if a stay were denied weigh in favor of a stay. Id. at 5-16.

A copy of the Report and Recommendation is attached.
 

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By Memorandum Opinion entered by The Honorable Richard G. Andrews in AVM Technologies, LLC v. Intel Corporation, Civil Action No. 10-610-RGA (D.Del., February 21, 2013), the Court granted the Daubert motion of defendant Intel Corporation seeking to exclude the proposed testimony of the expert witness on damages for plaintiff AVM Technologies, LLC. The Court found that such proposed testimony, which was based on the premise that "a reasonable royalty can be established by one litigation settlement agreement involving a different patent", is not reliable. Id. at 1. The Court also excluded most of plaintiff’s proposed inventor testimony concerning damages concluding that it was untimely disclosed and unreliable expert testimony. Id. at 3.

A copy of the Memorandum Opinion is attached.
 

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By Memorandum Opinion entered by The Honorable Sue L. Robinson in Cradle IP, LLC v. Texas Instruments, Inc., Civil Action No. 11-1254-SLR (D.Del., February 13, 2013), the Court denied the motion to transfer venue filed by defendant Texas Instruments, Inc. After analyzing the Jumara factors, the Court found that Texas Instruments had not met its burden of persuading the court by a preponderance of the evidence that the Jumara factors warranted transfer of the patent infringement action to the Northern District of Texas. Id. at 9.

A copy of the Memorandum Opinion is attached.
 

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By Memorandum Order entered by Chief Judge Gregory M. Sleet in Woodbolt Distribution, LLC v. Natural Alternatives International, Inc., Civil Action No,. 11-1266-GMS (D.Del., January 23, 2013), the Court granted defendant's motion to dismiss the complaint of plaintiff which sought a declaratory judgment of non-infringement and invalidity of U.S. Patent No. 8,067,381.  Of particular note was the fact that the same day that plaintiff initiated the declaratory judgment action in the District of Delaware, defendant later filed a patent infringement action in the United States District Court for the Southern District of Texas.  Id. at 1.  Through its motion, defendant sought to dismiss the declaratory judgment filed in the District of Delaware and have the case transferred to the Southern District of Texas.  After analyzing the issues, the Court concluded that, under the circumstances, discretionary dismissal was appropriate in this instance and the 'first-filed rule" did not preclude dismissal.  Id. at 2-9.

A complete copy of the Memorandum Order is attached.

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By Memorandum Order entered in IPVenture Inc. v. Lenovo Group, Limited, et al., Civil Action No. 11-588-RGA (D.Del., January 8, 2013), the Honorable Richard G. Andrews granted in substantial part the motions of defendant Dell and other defendants seeking the dismissal of the claims of indirect infringement and willfulness asserted in the Second Amended Complaint of plaintiff IPVenture Inc. (“IPVenture”).

A complete copy of the Memorandum Order is attached.
 

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By Memorandum Opinion entered in Enova Technology Corporation v. Initio Corporation, et al., Civil Action No. 10-04-LPS (D.Del., December 28, 2012), the Honorable Leonard P. Stark construed seven disputed terms found in U.S. Patent Nos. 7,136,995 and 7,900,057 (collectively, the “patents-in-suit”).

A complete copy of the Memorandum Opinion is attached.
 

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By Memorandum Opinion entered by The Honorable Leonard P. Stark in Intellectual Ventures I LLC v. Check Point Software Technologies Ltd., et al., Civil Action No. 10-1067-LPS (D.Del., December 12, 2012), the Court issued its claim construction opinion construing twenty (20) disputed terms found in U.S. Patent Numbers 6,460,050 (“the ‘050 patent”), 6,073,142 (“the ‘142 patent”), 5,987,610 (“the’610 patent”), and 7,506,155 (“the ’155 patent”).

A copy of the Memorandum Opinion is attached.
 

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By Memorandum Order entered by The Honorable Sue L. Robinson in Senju Pharmaceutical Co., Ltd., et el. v. Lupin Limited, et al., Civil Action No. 11-271-SLR (Consol.) (D.Del., December 7, 2012), the Court granted in part and denied in part defendants Lupin’s Rule 12(c) motion for judgment on the pleadings.

A copy of the Memorandum Order is attached.
 

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By Memorandum Opinion entered by The Honorable Gregory M. Sleet in Smart Audio Technologies, LLC v. Apple, Inc., Civil Action No. 12-134-GMS (D.Del., November 16, 2012), the Court denied Apple’s motion to transfer the action to the Northern District of California. In denying the motion to transfer, the Court explained and examined the differences in the two approaches to analyzing the Jumara factors that have developed in the District of Delaware and referred to those approaches as (1) the “Affymetrix approach” and (2) the “modern approach.” Id. at 3-10. Ultimately, the Court found that the two approaches are quite similar and may not result in any practical difference in the outcome, although it did recognize that there appears to be some double-counting of plaintiff’s forum choice under the modern approach. Id. at 10-11. After analyzing the Jumara factors employing the language of the modern approach, the Court concluded that Apple failed to show that the balance of the factors weighed strongly in favor of transfer. Id. at 21.

A copy of the Memorandum Opinion is attached.
 

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By Memorandum Opinion entered by The Honorable Richard G. Andrews in Round Rock Research, LLC v. Dell, Inc., Civil Action No. 11-976-RGA (D.Del., November 15, 2012), the Court denied defendant Dell, Inc.’s motion to transfer the action to the Northern District of California. In denying the motion to transfer, the Court carefully analyzed and weigned all of the Jumara factors and distinguished the facts of the case from the facts of In re Link_A_Media by highlighting that both parties are Delaware corporations and neither is principally based in the Northern District of California. Id. at 3-9.

A copy of the Memorandum Opinion is attached.
 

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By Memorandum Opinion entered by Chief Judge Gregory M. Sleet in Imagevision.net, Inc. v. Internet Payment Exchange, Inc., Civil Action No. 12-054-GMS-MPT, the Court adopted the ultimate recommendation of Magistrate Judge Mary Pat Thynge and denied the motion of defendant, Internet Payment Exchange, Inc. (“IPX”), requesting a stay pending the conclusion of the inter partes reexamination of the patent-in-suit by the United States Patent and Trademark Office (the “PTO”). IPX had previously filed objections to Judge Thynge’s Report and Recommendation to deny IPX’s motion to stay and, among other things, argued that an incorrect overarching legal standard was applied. Id. at 2.

In adopting Judge Thynge’s ultimate recommendation over IPX’s objections, the Court found that the statement of the applicable legal standard set forth in Judge Thynge’s Report and Recommendation is correct and not contrary to the law, the decision of whether to grant a stay is ultimately left to the court’s discretion, and the decision to deny the stay was not clearly erroneous or contrary to the law. Id. at 9.

A complete copy of the Memorandum Opinion is attached.
 

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By Memorandum Opinion entered by The Honorable Leonard P. Stark in Exelis Inc. v. Cellco Partnership, et al., C.A. No. 09-190-LPS (D.Del., November 6, 2012), the Court issued its rulings on several motions for summary judgment and Daubert motions filed by plaintiff and defendants. Among other things, the Court denied defendants’ motion for summary judgment asserting invalidity of U.S. Patent No. 5,365,450 (“the ‘450 patent”) on grounds that plaintiff violated 35 U.S.C. § 305 by pursuing reexamination of the ‘450 patent for an improper purposes. Id. at 8.

In their motion, defendants contended that plaintiff pursued reexamination for the purpose of “fixing” the claim construction ruling rendered by Chief Judge Sleet in a prior action that involved the ‘450 patent. Id. at 7. During that prior action, Chief Judge Sleet issued a claim construction ruling that was later vacated by the Court on joint motion of the parties after the parties reached a settlement. Id. at 2.

In denying defendants’ motion for summary judgment of invalidity under Section 305, the Court found that “no reasonable fact finder could conclude that Plaintiff violated Section 305 by pursuing reexamination of the ‘450 patent for an improper purpose.” Id. at 7. The Court noted that plaintiff identified several proper purposes for seeking reexamination, including to address the prior art asserted in the prior litigation and to correct typographical errors in the original patent claims, and defendants offered no evidence - other than their mere suspicions – to counter plaintiff’s contentions. Id. at 7. Thus, the Court denied defendants’ motion for summary judgment and found that plaintiff was entitled to summary judgment that the reexamination was not filed for an improper purpose. Id. at 8.

A complete copy of the Memorandum Opinion is attached.
 

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A new procedure for filing documents under seal via CM/ECF will begin on November 1, 2012.  The new procedure provides that a registered user of CM/ECF will be required to file sealed civil and miscellaneous documents directly into CM/ECF.  Sealed documents in Social Security cases shall continue to be filed in paper format only.

A copy of the new procedure effective November 1, 2012 is attached.

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By Memorandum Order entered by The Honorable Sue L. Robinson in Butamax Advanced Biofuels LLC v. Gevo, Inc., Civil Action No. 11-54-SLR (D.Del., October 10, 2012), the Court denied Plaintiff Butamax’s request attempting to exclude Dr. Ron Caspi from serving as an expert witness for Defendant Gevo. Butamax claimed that it had entered a confidentiality agreement and consulted with Dr. Caspi in the same action prior to his retention by Gevo and had shared some attorney work-product with him during brief telephone conversations. Id. at 3-5.

In evaluating Butamax’s motion to disqualify, the Court recognized that, although there is no bright line rule for expert disqualification, “courts have generally adopted a two-part inquiry: (1) was it objectively reasonable for the party seeking disqualification to have concluded that a confidential relationship existed with the expert; and (2) was confidential or privileged information actually disclosed to the expert.” Id. at 2. The burden of proof of those factors rests with the party seeking disqualification. Id. at 3.

After analyzing the pertinent factors, the Court found that there was a confidential relationship created between Butamax’s counsel and Dr. Caspi. Id. at 5. However, the Court also found that the comments made to Dr. Caspi by a junior lawyer working on the Butamax legal team in response to the hypothetical posed by Dr. Caspi – which Butamax claimed constituted attorney work-product - did not constitute confidential information sufficient to disqualify Dr. Caspi from consulting for Gevo. Id. at 6.

A complete copy of the Memorandum Order is attached.
 

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By Memorandum Opinion entered by The Honorable Leonard P. Stark in nCube Corporation (now Arris Group, Inc.) v. SeaChange International Inc., C.A. No. 01-011-LPS (D.Del., October 9, 2012), the Court denied the motion of Plaintiff Arris Group, Inc. (“Arris”) seeking to hold Defendant SeaChange International Inc. (“SeaChange”) in contempt of the permanent injunction order entered by the Court in 2006 after Arris obtained a jury verdict in its favor that SeaChange had willfully infringed the asserted claims of its patent - U.S. Patent No. 5,805,804 (“the ‘804 patent”). In denying Arris’ motion for contempt, the Court found that (1) Arris failed to prove by clear and convincing evidence that there is no colorable difference between SeaChange’s modified ITV system and SeaChange’s old ITV system that was previously found to infringe; and (2) Arris failed to prove by clear and convincing evidence that SeaChange’s modified ITV system actually infringes claim 4 of the ‘804 patent. Id. at 3-9.

Although the Court denied the motion for contempt, the Court made it clear that its findings and ruling do not include a finding that SeaChange’s modified ITV system does not infringe the ‘804 patent and/or any finding about whether Arris would be able to prevail under the lower preponderance of the evidence standard in a new action asserting that SeaChange’s modified ITV system infringes the ‘804 patent. Id. at 11-12.

A complete copy of the Memorandum Opinion is attached.
 

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By Memorandum Order entered by The Honorable Leonard P. Stark in British Telecommunications PLC v. Google Inc., C.A. No. 11-1249-LPS (D.Del., September 20, 2012), the Court granted Plaintiff British Telecommunications PLC’s motion for leave to file a First Supplemental Complaint to include claims of infringement against a new product and/or service introduced by defendant Google after the filing of the original complaint and claims of indirect infringement based on Google’s knowledge of the patents-in-suit since at least the date of the filing of the original complaint on December 15, 2011.

In granting Plaintiff’s motion for leave to amend, the Court recognized the Third Circuit’s liberal approach to granting leave to amend and found there was no evidence of undue delay, bad faith or dilatory motive by Plaintiff. Id. at 2. The Court also rejected Defendant’s argument that the motion was futile because Plaintiff failed to state a plausible claim of indirect infringement. Id. In doing so, Judge Stark made it clear that, for purposes of indirect infringement occurring after the filing date, his expressed view is that “an accused infringer is on notice of the patent(s)-in-suit once an initial pleading identifies the patents-in-suit.” Id. (quoting Softview LLC v. Apple Inc., 2012 WL 3061027, at *7 (D.Del., July 26, 2012).

A complete copy of the Memorandum Order is attached.
 

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By Memorandum Opinion entered in Galderma Laboratories Inc., et al. v. Amneal Pharmaceuticals, LLC, et al., C.A. No. 11-1106-LPS (D.Del., September 7, 2012), the Honorable Leonard P. Stark granted defendants’ motion for partial judgment on the pleadings based on collateral estoppel after finding that the issue of whether a product containing 40 mg of doxycycline, administered once daily, infringes U.S. Patent Nos. 7,232,572 and 7,211,267 (referred to as the “Ashley patents”) was previously litigated and decided against the Galderma plaintiffs in a related ANDA action captioned Research Found. of State Univ. of New York v. Mylan Pharms. Inc., 809 F. Supp.2d 896 (D.Del. 2011) (referred to as the “Mylan Action”). In doing so, the Court found that the four elements necessary for collateral estoppel to properly apply were established by defendants in their motion and/or conceded by the Galderma plaintiffs: (1) the previous determination was necessary to the decision; (2) the identical issue was previously litigated; (3) the issue was actually decided on the merits and the decision was final and valid; and (4) the party being precluded from re-litigating the issue was adequately represented in the previous action. Id. at 3-8.

A complete copy of the Memorandum Opinion is attached.
 

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By Memorandum Opinion entered in Cadence Pharmaceuticals, Inc., et al. v. Paddock Laboratories, Inc., et al., C.A. No. 11-733-LPS (D.Del., August 22, 2012), the Honorable Leonard P. Stark construed twelve disputed terms found in U.S. Patent Nos. 6,028,022 and 6,992,218 (collectively, the “patents-in-suit”).

A complete copy of the Memorandum Opinion is attached.
 

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By Memorandum Opinion entered in St. Clair Intellectual Property Consultants, Inc. v. Acer, Inc., et al., the Honorable Leonard P. Stark construed fifteen disputed terms found in U.S. Patent Nos. 5,710,929, 5,758,175, 5,892,959, 6,079,025, 5,630,163, 5,613,130 and 5,961,617 (collectively, the “patents-in-suit”).

A complete copy of the Memorandum Opinion is attached.
 

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By Memorandum Opinion entered in St. Clair Intellectual Property Consultants, Inc. v. Apple, Inc., et al., C.A. No. 10-982-LPS (D.Del., August 7, 2012), the Honorable Leonard P. Stark construed sixteen disputed terms found in U.S. Patent Nos. 5,710,929, 6,079,025, 5,758175, 5,892,959, 5,630,163 and 5,822,610 (collectively, the “patents-in-suit”).

A complete copy of the Memorandum Opinion is attached.
 

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By Memorandum Opinion entered by the Honorable Sue L. Robinson in Cellectis S.A. v. Precision Biosciences, Inc., Civil Action Nos. 11-890-SLR and 12-204-SLR (D.Del., August 6, 2012), the Court granted the motion of defendant Precision Biosciences, Inc. to stay the declaratory judgment actions filed by plaintiff Cellectis S.A. in the District of Delaware pending a determination by the United States District Court for the Eastern District of North Carolina regarding the applicability of the first-filed rule in the infringement actions filed by Precision against Cellectis in that district. In its analysis, the Court recognized that Precision filed the patent infringement action first in the Eastern District of North Carolina and rejected Cellectis’ argument that the first-filed rule should not apply because the North Carolina court allegedly lacks jurisdiction over Cellectis. Id. at *5. The Court explained that Cellectis had previously sued Precision in North Carolina, should not oppose litigating in a court where it previously litigated without complaint, and the North Carolina court should be allowed to make the determination in the first instance as the first-filed court. See id. at *5-6.

A complete copy of the Opinion is attached.
 

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By Memorandum Order entered by The Honorable Leonard P. Stark in Cooper Notification, Inc. v. Twitter, Inc., et al., Civil Action No. 09-685-LPS (D.Del., July 16, 2012), the Court denied the requests of Plaintiff Cooper Notification, Inc. for reconsideration or reargument, leave to file supplemental infringement reports, and clarification of the Court's claim construction in connection with the Court's prior Opinion and Order (D.I. 568 and 569) granting defendants' motions for summary judgment of non-infringement.  The Court concluded that Plaintiff did not meet the standard for reconsideration or any of the other relief requested, entered judgment against Plaintiff Cooper Notification, Inc. and for Defendants, Twitter, Inc., Everbridge, Inc. and Federal Signal Corp., and directed the Clerk of Court to close the case.  Id. at 4.

A complete copy of the Memorandum Order is attached.

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By Memorandum Opinion entered by the Honorable Richard G. Andrews in Pragmatus Telecom, LLC v. Advanced Store Company, Inc., et al., Civil Action No. 12-088-RGA (D.Del., July 10, 2012), the Court granted the motion of the customer defendants to stay the patent infringement actions against them pending resolution of the declaratory judgment action filed against plaintiff by the supplier of the customer defendants. Finding that the declaratory judgment action would simplify the issues for trial in the patent infringement action against the customer defendants, and that plaintiff would not likely suffer any undue prejudice, the Court concluded a stay in favor of the customer defendants was warranted. See id. at 2.

A complete copy of the Opinion is attached.
 

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By Memorandum Opinion entered by the Honorable Richard G. Andrews in Commonwealth Research Group LLC v. Lattice Semiconductor Corp., et al., Civil Action No. 11-655-RGA (D.Del., June 28, 2012), the Court denied defendant’s motion for attorney fees under 35 U.S.C. § 285 finding that defendant did not prove that the litigation was brought in subjective bad faith. During his analysis, Judge Andrews noted that “[w]hile I suspect that the litigation may be objectively baseless, I cannot so conclude, at least in part due to the termination of this case before a deposition was taken, before the completion of claim construction briefing, before the holding of a Markman hearing, and before any actual claim construction by me.” Id. at 5.

A complete copy of the Opinion is attached.
 

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By Memorandum Opinion entered by the Honorable Leonard P. Stark in Tarkus Imaging, Inc. v. Adobe Systems, Inc., et al., C.A. No. 10-63-LPS (D.Del., June 14, 2012), the Court denied defendants’ motions for summary judgment of non-infringement, invalidity and no indirect infringement concluding that the record evidence raised genuine issues of material fact. The Court explained that, in large part, the subject “summary judgment motions present a ‘battle of the experts’ that is not amenable to resolution prior to the presentation of evidence, including testimony.” Id. at 2.

A complete copy of the Opinion is attached.
 

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By Opinion issued by The Honorable Sue L. Robinson in Pronova Biopharma Norge AS v. Teva Pharmaceuticals USA, Inc., et al., Civil Action No. 09-286-SLR (D.Del., May 29, 2012), the Court set forth its findings of fact and conclusions of law following a seven day bench trial in an infringement action which arose out of the filing of ANDA applications by defendants, Teva Pharmaceuticals, USA, Inc. (“Teva”) and Par Pharmaceutical, Inc. and Par Pharmaceutical Companies, Inc. (collectively, “Par”), seeking to market versions of Lovaza®, which is prescribed to treat high blood levels of triglycerides. After considering the documentary evidence and testimony, the Court entered judgment in favor of plaintiff Pronova finding that: (1) Pronova proved by a preponderance of the evidence that defendants infringed Pronova’s ‘667 and ‘077 patents; (2) defendants did not prove by clear and convincing evidence that the patents-in-suit are invalid; and (3) defendants did not prove by clear and convincing evidence that either patent is unenforceable due to inequitable conduct. Id. at 55.

A complete copy of the Opinion is attached.
 

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By Report and Recommendation entered in Fuisz Pharma LLC v. Theranos, Inc., Civil Action No. 11-1061-SLR-CJB (D.Del., May 18, 2012), the Honorable Christopher J. Burke recommends that the Court grant the motion of defendant Theranos to dismiss, stay or transfer in part by transferring the case to the United States District Court for the Northern District of California. Specifically, Judge Burke recommends that the Court find that the first-filed rule applies, that the action filed by Theranos and its founder on October 26, 2011 against Fuisz Pharma and individual members of the Fuisz family in the United States District Court for the Northern District of California be considered the first-filed action, and that the patent infringement action filed by Fuisz Pharma on November 1, 2011 in the United States District Court for the District of Delaware be transferred to the Northern District of California. See id. at 8-35.

Of significant distinction in this matter appears to be the fact that the previously filed California action includes inventorship claims asserted under the Patent Act by Theranos alleging that the Fuisz defendants allegedly misappropriated Theranos’ and its founder’s confidential information and used that information to obtain the patent-in-suit in both actions, U.S. Patent No. 7,824,612 (the “’612 patent”), without crediting Theranos and its founder as the true inventors.  See id. at 2-3. 

A complete copy of the Report and Recommendation is attached.
 

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By Memorandum Opinion entered by The Honorable Sue L. Robinson in Helicos Biosciences Corporation v. Illumina, Inc., Civil Action No. 10-735-SLR (D.Del., May 3, 2012), the Court denied the motion of defendants, Pacific Biosciences of California, Inc. (“PacBio”), Life Technologies Corporation (“Life”) and Illumina, Inc. (“Illumina”) to transfer venue of the patent infringement action filed by plaintiff Helicos Biosciences Corporation to the Northern District of California. In denying the motion to transfer, the Court noted that defendants had the burden of persuading the court, by a preponderance of the evidence, that the Jumara factors warranted transfer. Id. at 14. In weighing the Jumara factors, the Court found that plaintiff’s choice of forum and the convenience of the parties both weighed against transfer. Id. at 9-10. The Court also found that where the claims arose, the convenience of the witnesses, the location of books and records, relative administrative difficulty, local interest in deciding local controversies, the enforceability of a judgment, the public policies of the fora, and the familiarity of the judge with state law were all neutral as to transfer in its weighing of the Jumara factors. Id. at 9-14. Notably, Helicos, PacBio, Life and Illumina are all corporations incorporated in Delaware and it was alleged in the complaint that Illumina and PacBio sold allegedly infringing products in Delaware. Id.

A complete copy of the Memorandum Opinion is attached.
 

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By Memorandum Order entered by The Honorable Sue L. Robinson in Technology Innovations, LLC v. Amazon.com, Inc., Civil Action No. 11-690-SLR (D.Del., April 25, 2012), the Court denied the motion of defendant Amazon.com, Inc. (“Amazon”) to dismiss the complaint filed by plaintiff Technology Innovations, LLC (“Plaintiff”) for failure to state a claim under Federal Rule of Civil Procedure 12(b)(6). Amazon asserted in support of its motion that there in no possible construction for “book” that would cover a Kindle and, thus, claim construction was not necessary and Plaintiff’s complaint failed to state a claim of infringement. Id. at 2-3. In denying the motion, the Court concluded that Plaintiff’s complaint did plead adequate notice of direct infringement required by Form 18 and it would be premature to dismiss the complaint prior to claim construction. Id. at 4. The Court indicated that it was not prepared to engage in claim construction, construing the terms “book” and “printed information” of United States Patent No. 5,517,407 (“the ‘407 patent”), at this early stage of the proceedings and without discovery or motion practice. Id.

A complete copy of the Memorandum Order is attached.
 

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On April 25, 2012, the Honorable Sherry R. Fallon was sworn in as a United States Magistrate Judge in the United States District Court for the District of Delaware. Prior to being appointed to the bench, Judge Fallon practiced law in Delaware with the law firm of Tybout, Redfearn & Pell for over twenty-five years in the areas of insurance defense, insurance coverage and bad faith litigation, toxic torts, product liability, retailers' premises liability, construction litigation, creditors' claims in commercial bankruptcies and employment litigation. Judge Fallon earned her juris doctorate degree from the Delaware Law School of Widener University in 1986 and her bachelor's degree from the University of Pennsylvania in 1983. 

With the addition of Judge Fallon, the District of Delaware now has a total of seven judges - four U.S. District Judges (Chief Judge Sleet, Judge Robinson, Judge Stark and Judge Andrews) and  three U.S. Magistrate Judges (Judge Thynge, Judge Burke, and Judge Fallon).

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

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

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

Alternatively, they may contact Mr. Brauerman at the e-mail address listed above to obtain additional information about FBA membership.

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

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

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By Memorandum Opinion entered by The Honorable May Pat Thynge in Cordance Corporation v. Amazon.com, Inc., Civil Action No. 06-491-MPT (D.Del., April 11, 2012), the Court granted in part and denied in part the bill of costs of defendant Amazon.com, Inc. (“Amazon”) after adjudication in its favor on the patent infringement claims filed against it by plaintiff Cordance Corporation (“Cordance”). Significantly, although the Court granted Amazon’s request for printing and copying costs in the amount of $1,378.78, filing fees in the amount of $1,498.99, deposition expenses in the amount of $1,152.80 and witness fees in the amount of $27,575.37, the Court completely denied Amazon’s request for exemplification costs in the amount of $51,323.62 and significantly limited the ediscovery costs granted to Amazon to $2,721.52 out of the $447,694.63 that Amazon claimed as ediscovery costs. Id. at 20-21.

A complete copy of the Memorandum Opinion is attached.
 

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By Memorandum Order entered by The Honorable Richard G. Andrews in Round Rock Research LLC v. Dole Food Company Inc., Civil Action No. 11-1239-RGA (D.Del., April 6, 2012), Round Rock Research LLC v. Gap Inc., Civil Action No. 11-1241-RGA (D.Del., April 6, 2012), and Round Rock Research LLC v. Hanesbrands Inc., Civil Action No. 11-1242-RGA (D.Del., April 6, 2012), the Court granted defendants’ motions to stay pending reexamination of the patents-in-suit. After analyzing the three pertinent factors the Court must consider in evaluating a motion to stay, the Court in its reasoning stated that “[c]onsidering all the circumstances, this seems pretty close to the classic case for granting a stay pending reexamination. The prejudice to the Plaintiff, including any tactical disadvantage is not great, and the other factors all clearly weigh in favor of granting the stay.” Id. at 4.

A complete copy of the Memorandum Opinion is attached.
 

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By Memorandum Opinion entered by The Honorable Richard G. Andrews in Shire LLC, et al. v. Teva Pharmaceuticals USA Inc., et al., Civil Action No. 10-329-RGA (D.Del., March 22, 2012), the Court issued its claim construction ruling on the disputed terms of three patents, U.S. Patent Numbers 5,854,290, 6,287,599 and 6,811,794, covering the drug Intuniv®, which is used to treat pediatric ADHD.

A complete copy of the Memorandum Opinion is attached.
 

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By Memorandum Opinion entered by The Honorable Sue L. Robinson in Boston Scientific Corporation, et al. v. Cordis Corporation, Civil Action No. 10-315-SLR (D.Del., March 13, 2012), the Court denied the motion of defendant Cordis Corporation requesting the Court to disturb the jury verdict and grant Cordis’s renewed motion for judgment as a matter of law. In support of its renewed motion for judgment as a matter of law, Cordis alleged that the jury’s verdict - which the parties agreed included an award to Boston Scientific of lost profits based on the normal profit margin per unit of sales of the product that allegedly declined in sales because of the infringing products - was not supported by substantial evidence. Id. at 7. Cordis also alleged that Boston Scientific had not proven that the introduction of the products found to infringe the patent at issue was the “but-for cause” of the decline of sales of the Cordis product. Id.

Upon evaluation of the evidence presented during trial, the Court found that there was sufficient evidence to support the jury’s award of lost profits in the case and denied Cordis’s renewed motion for judgment as a matter of law. Id. at 25. A complete copy of the Memorandum Opinion is attached.
 

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By Memorandum Order entered by the Honorable Mary Pat Thynge in Quantum Loyalty Systems, Inc., et al. v. TPG Rewards, Inc., Civil Action No. 09-022-SLR/MPT (D.Del., March 6, 2012), the Court ordered Plaintiffs, Quantum Loyalty Systems, Inc. and Quantum Corporation of New York, Inc., to supplement their response to interrogatory number 7 of Defendant, TPG Rewards, Inc., which asked Plaintiffs to explain why each claim of the patent-in-suit does not cover defendants 1993 and 2002 products which are at issue as prior art. Judge Thynge found Plaintiffs’ original response, which merely parroted claim language and generally pointed to documents on the Court’s docket, was not an adequate response to the interrogatory. Id. at 5.

A complete copy of the Memorandum Order is attached.
 

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By Memorandum Opinion entered by the Honorable Richard G. Andrews in the consolidated cases of Robocast, Inc. v. Apple, Inc., Civil Action No. 11-235-RGA (D.Del., February 24, 2012) and Robocast, Inc. v. Microsoft Corporation, Civil Action No. 10-1055-RGA (D.Del., February 24, 2012), the Court denied the motions to transfer of defendants Apple and Microsoft seeking to transfer the patent infringement actions asserted against them by plaintiff Robocast to the Northern District of California. Id. at 2 and 11. In analyzing the transfer motions under the Jumara factors, the Court found that factors (1) and (4) (plaintiff’s forum preference as manifested in the original choice and the convenience of the parties as indicated by their relative physical and financial condition) supported plaintiff’s position that the transfer motions should be denied. Id. at 3-4. Significantly, the Court also considered and distinguished the Federal Circuit’s holding in In Re Link_A_Media Devices Corp., 662 F.3d 1221 (Fed. Cir. 2011) from this action finding that there was a greater connection to Delaware in this action. Id. at 10.  The Court also noted an important difference in the law of the Fifth Circuit and the Third Circuit in how to conduct a transfer analysis. Id. Ultimately, the Court determined that Apple and Microsoft did not show that the balance of convenience tipped strongly enough in their favor to warrant transfer. Id. at 10-11.

A complete copy of the Memorandum Opinion is attached.
 

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By Memorandum Opinion entered by the Honorable Richard G. Andrews in Serverside Group Limited, et al. v. CPI Card Group – Minnesota Inc., et al., Civil Action No. 11-559-RGA (D.Del., February 17, 2012), the Court transferred the patent infringement claims asserted against the T8 Defendants to the Northern District of Iowa after finding that it did not have personal jurisdiction over the T8 Defendants. The Court found that there was no personal jurisdiction over the T8 Defendants in Delaware because no tortious act or injury occurred in Delaware. Id. at 7-8.

A complete copy of the Memorandum Opinion is attached.

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By Memorandum Opinion entered by the Honorable Leonard P. Stark in Magnetar Technologies Corp., et al. v. Six Flag Theme Parks Inc., et al., Civil Action 07-127-LPS-MPT (D.Del., February 1, 2012), the Court issued its Markman construction of the five claim terms and/or phrases as used in U.S. Patent Numbers 5,277,125 (“the ‘125 patent”) and 6,659,237 (”the ‘237 patent”) that were in dispute.

A complete copy of the Memorandum Opinion is attached.
 

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By Memorandum Opinion entered by the Honorable Sue L. Robinson in Ladatech, LLC v. Illumina, Inc., et al., Civil Action No. 09-627-SLR (D.Del., January 24, 2012), the Court granted defendants’ motion for summary judgment of noninfringement with respect to defendant Illumina’s cluster generation products (alone) and the use of third-party prep kits with those products, but denied defendants’ motion in all other respects. The Court also denied defendants’ motion for summary judgment of invalidity and expiration, and granted plaintiff’s motion for summary judgment of no anticipation by the Saiki and/or Liang articles. Id. at 46.

A complete copy of the Memorandum Opinion is attached.
 

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

A complete copy of the Memorandum Opinion is attached.
 

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

A complete copy of the Memorandum Opinion is attached.
 

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

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

A complete copy of the Memorandum Opinion is attached.
 

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

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

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

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

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

A copy of the Memorandum Opinion is attached hereto.
 

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

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

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

A copy of the Memorandum Order is attached.
 

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

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

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

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

A copy of the Memorandum Order is attached.
 

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

A copy of the Court's Opinion is attached.
 

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

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

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

A copy of the Memorandum Order is attached.
 

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

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

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

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

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

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

A complete copy of the Memorandum Opinion is attached.
 

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

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

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

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

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

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

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By Memorandum Opinion entered by Chief Judge Gregory M. Sleet, following a five-day bench trial, in Eli Lilly and Company, et al. v. Teva Parenteral Medicines, Inc., et al., Civil Action No. 08-335-GMS (D.Del., July 28, 2011), the Court set forth its findings of fact and conclusions of law and entered judgment in favor of plaintiffs, Eli Lilly and Company and The Trustees of Princeton University, and against defendants, Teva Parenteral Medicines, Inc., APP Pharmaceuticals, LLC and Barr Laboratories, Inc. In doing so, the Court rejected defendants’ contentions and concluded that U.S. Patent No. 5,344,932 (“the ‘932 patent”) is not invalid for obviousness-type double patenting. Id. at 2-8. After considering the entire record in the case and the applicable law, the Court determined that the credibility of plaintiffs’ witnesses substantially outweighed the evidence presented by defendants, and defendants failed to prove the invalidity by obviousness-type double patenting of the ‘932 patent. Id. at 2-9.

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

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By Memorandum Opinion entered by The Honorable Leonard P. Stark in Human Genome Sciences, Inc. v. Genentech, Inc., et al., C.A. No. 11-082-LPS (D.Del., July 18, 2011), the Court granted the motion of defendants, Genetech, Inc. and City of Hope, to transfer venue of three actions filed against them in the District of Delaware by plaintiff, Human Genome Sciences, Inc. (“HGS”), to the Central District of California. Id. at 1. The transferred actions involve claims asserted by HGS against defendants for declaratory judgment, antitrust and Lanham Act violations, and state tort claims based on two patents co-owned by defendants: U.S. Patent No. 6, 331,415 (the “Cabilly II patent”) and U.S. Patent No. 7,923,221 (the “Cabilly III patent”). Id.

A complete copy of the Memorandum Opinion is attached hereto.
 

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By Memorandum Opinion entered by the Honorable Sue L. Robinson in EON Corp. IP Holdings LLC v. FLO TV Inc., et al., Civil Action Action No. 10-812-SLR (D.Del., July 12, 2011), the Court granted in part and denied in part defendants’ motion to dismiss the second amended complaint of plaintiff Eon Corp. IP Holdings LLC. (“EON”). In its second amended complaint, EON asserted claims against defendants FLO TV Inc. (“FLO TV”), MobiTV, Inc. (“MobiTV”), U.S. Cellular Corp. (“U.S. Cellular”), LG Electronics MobileComm USA, Inc. (“LG”), Motorola Mobility (“Motorola”), Samsung Telecommunications America LLC (“Samsung”), Sprint Nextel Corp. (“Sprint”), Research in Motion Corp (“RIM”), HTC America Inc. (“HTC”), Palm, Inc. (“Palm”),. Kyocera Communications Inc. (“Kyocera”), LetsTalk.com, Inc. (“LetsTalk.com”), Qualcomm, Inc. (“Qualcomm”), GoTV Networks, Inc. (“GoTV”), Cellco Partnership d/b/a Verizon Wireless (“Verizon Wireless”), SPB Software, Inc. (“SPB”) and Simplexity, LLC d/b/a Wirefly (“Wirefly”) (collectively, “defendants”) seeking damages and injunctive relief for defendants’ alleged direct, indirect, and joint infringement of U.S. Patent No. 5,663,757, entitled “Software Controlled Multi-Mode Interactive TV Systems” (the ‘757 patent). In denying defendants’ motion to dismiss with respect to the direct infringement claims, the Court found that EON’s second amended complaint satisfied the minimal requirements for pleading direct infringement without the benefits of discovery. See id. at 5. In granting defendants’ motion to dismiss with respect to the joint and indirect infringement claims, the Court found the EON’s second amended complaint failed to adequately set forth the requisite knowledge element for indirect infringement and failed to identify any one defendant as exercising “control or direction” over the allegedly infringing acts of the other defendants (in other words, failed to identify a single mastermind) necessary to set forth a claim for joint infringement. See id. at 9-12.

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

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By Memorandum Opinion entered by the Honorable Gregory M. Sleet in AstraZeneca LP, et al. v. Mylan Pharmaceuticals Inc., Civil Action No. 08-53-GMS (D.Del., June 23, 2011) after a three day bench trial, the Court ruled that the plaintiffs did not prove by a preponderance of the evidence that defendant Mylan’s proposed generic budesonide product would infringe the asserted claims of U.S. Patent No. 5,643,602 (the “‘602 patent” or the “patent-in-suit”).

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

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By Memorandum Order entered by the Honorable Sue L. Robinson in Schering-Plough Healthcare Products, Inc. v. Neutrogena Corporation, Civil Action No. 09-642-SLR (D.Del., June 8, 2011), the Court denied the motion for permanent injunction of plaintiff Schering-Plough Healthcare Products, Inc. (“Schering-Plough”) seeking to enjoin defendant Neutrogena Corporation (“Neutrogena”) from all future use of the helioplex® mark in DEHN-free products. Id. at 8. The Court had previously granted Schering-Plough’s motion for partial summary judgment after finding that the specific challenged advertising of Neutrogena with respect to its “Ultra Sheer Dry-Touch Sunblock SPF 100+” sunscreen (the “100+ Product”) was literally false when the 100+ Product, for a certain period of time, did not contain DEHN. See id. at 2. Although the Court had previously found the challenged advertising of Neutrogena was literally false, the Court later found that the permanent injunction requested by Schering-Plough was not warranted because Schering-Plough failed to articulate any particular injuries, let alone irreparable injury, as a result of Neutrogena’s false advertisements and Schering-Plough’s proposed injunction was too broad. Id. at 4-9.

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

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By Memorandum Opinion entered by The Honorable Gregory M. Sleet in Nokia Corporation v. Apple Inc., Civil Action No. 09-791-GMS (D.Del., June 1, 2011), the Court denied plaintiff/counterclaim-defendant Nokia’s motion to stay defendant/counterclaim-plaintiff Apple’s patent infringement claims pending reexamination of Apple’s patents by the United States Patent and Trademark Office (“USPTO”). In doing so, the Court noted that the decision to stay a case is firmly within the discretion of the court and that authority is the same in patent cases where a reexamination by the USPTO has been requested. Id. at 2.

The Court also noted that, in determining whether a stay is appropriate, its discretion should be guided by the following factors: “(1) whether a stay would unduly prejudice or present a clear tactical disadvantage to the non-moving party; (2) whether a stay will simplify the issues in question and trial of the case; and (3) whether discovery is complete and whether a trial date has been set.” Id. After analyzing these factors, the Court concluded that a stay pending reexamination would not serve the interests of judicial efficiency in this matter given the stage of the litigation and granting the stay would not simplify the case because the majority of the case would proceed regardless of whether Apple’s claims were stayed. Id. at 3.

A complete copy of the Memorandum Opinion is attached hereto.
 

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Christopher J. Burke has been chosen by the Judges of the United States District Court for the District of Delaware to fill the existing vacant U.S. Magistrate Judge position on the Court.  Chris is currently an Assistant United States Attorney for the District of Delaware.   Chris is a 2000 graduate of the University of Michigan Law School.

A link to the Court's announcement about the selection is attached.

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By Memorandum Order entered by The Honorable Sue L. Robinson in In Re: Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litigation, Civil Action No. 09-MD-2118-SLR (D.Del., May 20, 2011), the Court granted plaintiffs Eurand, Inc. and Anesta AG’s motion for temporary restraining order and enjoined defendants Mylan Pharmaceuticals, Inc. and Mylan, Inc. (collectively, “Mylan”) from manufacturing, using, offering to sell, or selling generic extended release cyclobenzaprine products.

A complete copy of the Memorandum Opinion is attached hereto.
 

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By Memorandum Order entered by The Honorable Sue L. Robinson, in Cephalon, Inc., et al. v. Sandoz Inc., Civil Action No. 10-123-SLR, the Court granted Cephalon's motion to stay the proceedings in the instant action pending the Federal Circuit's ruling on Cephalon's appeal in the prior infringement action brought by Cephalon in the District of Delaware, at Civil Action No. 08-330, against Watson Pharmaceuticals, Inc., Watson Laboratories, Inc. and Watson Pharma, Inc. (collectively, "Watson") which asserted infringement of U.S. Patent Nos. 6,200,604 ("the '604 patent") and 6,974,590 ("the '590 patent") (collectively, "the Khankari patents") for Watson's filing of its Abbreivated New Drug Application ("ANDA") with the Food and Drug Administation ("FDA") for generic fentanyl buccal tablets. Id. at 2.

In the Watson action, following a bench trial on the issues of infringement and validity, the Court found that Cephalon failed to demonstrate infringement by Watson and also found the Khankari patents invalid for lack of enablement. Id.  Cephalon appealed the Court's ruling to the Federal Circuit.

In evaluating Cephlon's motion to stay the proceedings in the Sandoz action, the Court noted that it has broad discretionary powers with respect to a motion to stay and courts are generally guided by three factors in ruling on motions to stay:  (1) whether the granting of a stay would cause the non-moving party to suffer undue prejudice from any delay or allow the moving party to gain a clear tactical advantage over the non-moving party; (2) whether a stay will simplify the issues for trial; and (3) whether discovery is complete and a trial date set. Id. at 3-4.  After considering the factors present, the Court determined that the first two factors strongly favored the issuance of a stay in the Sandoz action and, thus, granted Cephalon's motion to stay.  Id. at 4.

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

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By Memorandum Order entered by The Honorable Leonard P. Stark in Tarkus Imaging, Inc. v. Adobe Systems, Inc., et al., Civil Action No. 10-63-LPS (D.Del., April 21, 2011), the Court denied the motion to dismiss filed by Defendant Nikon Americas, Inc. (“NA”) which contended that, as a holding company, it does not – and cannot – infringe the patent-in-suit. The Court disagreed and, thus, denied NA’s motion. Id. at 5.

A complete copy of the Memorandum Opinion is attached hereto.
 

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By Memorandum Opinion entered by The Honorable Sue L. Robinson in Boston Scientific Corporation, et al. v. Cordis Corporation, Civil Action No. 10-315-SLR, the Court denied the motion to stay filed by Defendant Cordis Corporation (“Cordis”) seeking to stay the trial scheduled to begin on May 5, 2011. In denying the motion to stay, the Court noted that motions to stay are subject to the Court's broad discretionary powers and the following three factors guide the Court in evaluating whether to grant a motion to stay: (1) whether the granting of a stay would cause the non-moving party to suffer undue prejudice from any delay or allow the moving party to gain a clear tactical advantage over the non-moving party; (2) whether a stay will simplify the issues for trial; and (3) whether discovery is complete and a trial date set. Id. at 7. After evaluating and balancing the foregoing factors, the Court concluded that granting the motion to stay was not warranted under the circumstances. Id. at 7 and 10.

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

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By Memorandum Opinion and Order entered by The Honorable Leonard P. Stark, the Court issued its Markman opinion in Wyeth, LLC v. Intervet, Inc., d/b/a Intervet/Schering Plough Animal Health, Civil Action No. 09-161-LPS (D.Del., March 22, 2011) construing the three disputed terms of the patents-in-suit in the infringement action that plaintiff Wyeth, LLC (“Wyeth”) filed against defendant Intervet, Inc. (“Intervet”). In its complaint, Wyeth alleged that Intervet was infringing seven of its patents related to porcine circovirus vaccines: U.S. Patent No. 6,703,023 (the “’023 patent”), U.S. Patent No. 7,223,407 (the ‘”407 patent”), U.S. Patent No. 7,223,594 (the “’594 patent”), U.S. Patent No. 7,407,803 (the “’803 patent”), U.S. Patent No. 7,604,808 (the “’808 patent”), U.S. Patent No. 7,772,883 (the “’883 patent”), and U.S. Patent No. 7,740,886 (the “’886 patent) (collectively, the “patents-in-suit”). The patents-in-suit are directed to vaccines, vaccine components, and recombinant DNA techniques for making vaccines that protect livestock pigs from a viral disease known as Piglet Wasting Disease (“PWD”), also known as Post-Weaning Multisystemic Wasting Syndrome (“PMWS”) and Fatal Piglet Wasting (“FPW”). Id. at 2. Intervet filed counterclaims seeking declaratory judgments that Intervet’s accused products do not infringe the asserted claims and that the asserted claims are invalid. Id. at 1.

Wyeth asserted ninety claims against Intervet from the patents-in-suit. Id. at 2. The parties presented three disputed terms to the Court for claim construction. Id. at 3. The three disputed terms were “PCVB,” “Claim 1 of the ‘023 Patent,” and “amplifying said nucleic acid.” Id. Briefing on claim construction was completed on October 29, 2010, and the Court held a Markman hearing on November 9, 2010. Id. at 1-2.

After considering and analyzing the parties’ proposed constructions of the disputed term “PCVB”, the Court agreed with Intervet and construed the term “PCVB” in the patents-in-suit to mean “a porcine circovirus having the genomic sequence of SEQ ID No. 15 or SEQ ID No. 19.” Id. at 12 and 18. The Court did not given any construction to “Claim 1 of the ‘023 Patent,” and “Amplifying said nucleic acid” was construed to mean “increasing the amount of said nucleic acid.” Id. at 24.

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

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By Memorandum Order entered by The Honorable Leonard P. Stark in Carl Zeiss Meditec, Inc., et al. v. Xoft, Inc., Civil Action No. 10-308-LPS-MPT, the Court affirmed the Report and Recommendation issued by Magistrate Judge Mary Pat Thynge on October 12, 2010 denying defendant Xoft, Inc.’s motion to transfer the action to the Northern District of California. In its objections, Xoft contended that Judge Thynge committed legal error by (1) ignoring the settled position of Delaware courts that when the proposed transferee forum is more convenient and has more substantial connections with the litigation, the sole fact that a defendant is incorporated in Delaware should not prevent transfer; (2) ignoring the fact that Delaware is not the home turf of either party; and (3) improperly requiring Xoft to submit affidavits that third-party witnesses were not only beyond the subpoena power of the Court, but also were unwilling to testify in Delaware. Id. at 2. Plaintiff Zeiss disagreed with all of Xoft’s contentions and urged the Court to adopt Judge Thynge’s Report and Recommendation in full. Id.

After reviewing the Report and Recommendation, the objections thereto, recent Federal Circuit precedent that Xoft brought to the Court’s attention and the record, the Court concluded that Judge Thynge’s Report and Recommendation carefully and properly weighed the relevant public and private interests set forth by the Third Circuit in Jumara v. State Farm Ins. Co., 55 F.3d 873 (3d Cir. 1995) and found that, on balance, the convenience of the parties and witnesses and the interests of justice did not warrant transferring this case to California. Id. at 4.  Thus, the Court adopted the Report and Recommendation in full.

A complete copy of the Memorandum Order is attached.
 

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By Memorandum Order entered by The Honorable Sue L. Robinson in Minkus Electronic Display Systems, Inc. v. Adaptive Micro Systems LLC, Civil Action No. 10-666-SLR (D.Del., March 16, 2011), the Court granted defendants’ motions to dismiss for failure to state a claim for indirect infringement. Id. at 7. In their motions, defendants argued that plaintiff failed to alleged sufficient facts to establish that: (1) a third party infringed the patent-in-suit prior to the filing of the first amended complaint as a result of any acts by defendants; (2) any specific product that is not capable of a substantial non-infringing use was sold by defendants prior to the filing of the first amended complaint; and (3) defendants possessed the requisite knowledge and intent to indirectly infringe the patent-in-suit at the time of the alleged infringement. Id. at 4. After analyzing defendants’ contentions, the Court concluded that plaintiff failed to allege sufficient facts that would allow the court to infer that defendants had any knowledge of the patent-in-suit at the time there were committing the allegedly infringing activities. Id. at 6-7. Rather, the first amended complaint simply contained a mere recitation of the elements of indirect infringement, which the Court found insufficient. Id. at 7.

A complete copy of the Memorandum Order is attached hereto.
 

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On February 28, 2011, The Honorable Leonard P. Stark issued the Court's Markman Opinion in Pfizer Inc., et al. v. Dr. Reddy's Laboratories Ltd., et al., Civil Action No. 09-943-LPS (D.Del.), construing the disputed terms of the patent-in-suit, U.S. Patent No. 5,969,156 and its Reexamination Certificate (collectively, "the '156 patent").  The patent-in-suit relates to novel crystalline forms of atorvastatin.

Complete copies of the Court's Memorandum Opinion and Order setting forth its construction of the disputed terms are attached.

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On February 23, 2011, The Honorable Leonard P. Stark issued the Court's Markman Opinion in Atleiers De La Haute-Garonne, et al. v. Broetje Automation-USA Inc., et al., Civil Action No. 09-598-LPS (D.Del.) construing the disputed terms of the two patents-in-suit, U.S. Patent No. 5,011,339 (the "339 patent") and U.S. Patent No. 5,143,216 (the "216 patent").  Both patents relate to dispensing objects, such as rivets, through a tube. 

Complete copies of the Court's Memorandum Opinion and Order setting forth its construction of the disputed terms are attached. 

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By Memorandum Opinion entered by The Honorable Leonard P. Stark in Magnetar Technologies Corp, et al. v. Six Flags Theme Parks Inc., et al., Civil Action No. 07-127-LPS (D.Del., February 18, 2011), the Court denied the motion for leave to amend answer to add a counterclaim filed by defendants Busch Entertainment Corp., Cedar Fair L.P., Paramount Parks, Inc., Knotts Berry Farm, Kings Island Company and Cedar Fair (collectively, “Defendants”). By way of background, Plaintiffs brought this action alleging that Defendants infringed U.S. Patent Nos. 5,277,125 and 6,659,237. Both patents-in-suit pertain to magnetic braking systems for rail cars, particularly rail cars used on roller coasters. Id. at 1. Defendants sought leave to amend their Answer in order to add a counterclaim against Plaintiffs for violation of Section 2 of the Sherman Act, 15 U.S.C. § 2. Plaintiffs contested Defendants’ motion to amend asserting, among other things, that the proposed amendments were futile, failed to state a claim for relief under the Sherman Act, and Plaintiffs’ actions in bringing the lawsuit and contacting other amusement park operators to advise them that they potentially infringe the patents-in-suit are actions that are immune from antitrust liability under the Noerr-Pennington doctrine.

After analyzing Defendants’ proposed amendment in the form of a counterclaim, the Court found that Defendants’ proposed counterclaim was barred by the Noerr-Pennington doctrine and did not fall within the two recognized exceptions to Noerr-Pennington immunity: sham litigation or knowing and willful fraud (a/k/a Walker Process fraud). Id. at 5-6. As a result, the Court denied Defendants’ motion to amend to add a counterclaim. Id. at 6.

 A complete copy of the Memorandum Opinion is atached hereto.

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By Memorandum Order entered by the Honorable Sue L. Robinson in Myriad Group A.G. v. Oracle America, Inc., Civil Action 10-1087-SLR (D.Del., February 4, 2011), the Court denied the motion to dismiss or transfer of defendant Oracle America, Inc. ("Oracle") without prejudice and explained that Oracle may renew the motion to transfer once the U.S. District Court for the Northern District of California rules on pending motions in the mirror image litigation filed by Oracle on the same day (but earlier in the day) than the instant action which may clarify the issues in dispute. Id. at 5.  The Court also denied plaintiff Myriad Group's motion for a preliminary injunction noting that, through its motion, Myriad sought the ultimate relief requested in the Delaware action even though it waited more than a year to file its action. Id.

A complete copy of the Memorandum Order is attached. 

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Gregory B. Williams, a partner in the Wilmington office of Fox Rothschild LLP, has been appointed by the Judges of the U.S. District Court for the District of Delaware to serve as Chair of the U.S. Magistrate Judge Merit Selection Panel. In addition to Mr. Williams, the Court appointed ten other members to serve on the eleven member Panel, including Regina Kerr Alonzo, Dace J. Blaskovitz, Scott E. Chambers, Esquire, Moira K. Donoghue, Esquire, Tara D. Elliott, Esquire, Ann Shea Gaza, Esquire, Kathleen M. Jennings, Esquire, Dr. David P. Roselle, Robert S. Saunders, Esquire and William J. Wade, Esquire. The Panel will investigate and interview applicants for the vacant U.S. Magistrate Judge position created after the Honorable Leonard P. Stark was elevated from U.S. Magistrate Judge to District Judge. The Panel will prepare a report with its recommendations and submit the report to the Judges of the U.S. District Court for the District of Delaware for consideration and selection.  A copy of the Standing Order appointing the Panel, which can also be found on the Court's website, is attached.
 

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By Opinion entered by The Honorable Leonard P. Stark in Power Integrations, Inc. v. Fairchild Semiconductor International, Inc., et al., Civil Action No. 04-1371-LPS (D.Del., January 18, 2011), the Court granted in part and denied in part the post-trial motion of the prevailing Plaintiff, Power Integrations, Inc. (“Power”), to declare the case exceptional and to award Power treble damages and its attorneys’ fees. Specifically, the Court granted Power’s motion for enhanced damages under 35 U.S.C. § 284 to the extent that it enhanced Power’s damages two times (i.e. 200%) as opposed to trebling damages. Id. at 22. The Court denied Power’s motion to declare the case exceptional and to award attorneys’ fees under 35 U.S.C. § 285. Id. at 24.

Complete copies of the Court’s Opinion and Order are attached.
 

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By Memorandum Opinion entered by The Honorable Gregory M. Sleet in Apple Inc., et al. v. High Tech Computer Corp., et al., Civil Action Nos. 10-166-GMS and 10-167-GMS (D.Del., January 14, 2011), the Court denied defendant HTC Corp.’s motion seeking to transfer Apple’s patent infringement actions against HTC to the Northern District of California pursuant to 28 U.S.C. § 1404(a). In support of its motion, HTC contended, among other things, that (1) Apple’s choice of venue (i.e. District of Delaware) should be given little deference because Delaware is not Apple’s “home turf” and has no meaningful connection to the facts of the cases; and (2) none of the witnesses or documents relevant to the cases are located in Delaware as opposed to scores of potential witnesses and relevant documents which may be found in the Northern District of California. Id. at 4. In opposition to the motion, Apple asserted, among other things, that transfer would not serve the interests of justice because (1) two related pending actions involving numerous common issues of law and fact remain in the District of Delaware; (2) HTC’s infringing activity took place across the entire country, including Delaware; and (3) HTC failed to show a physical or financial condition of the parties which would cause litigating in Delaware to be burdensome. Id. at 4-5. In denying the motion to transfer, the Court concluded that the balance of convenience did not strongly favor transfer under the facts and, thus, Apple’s choice of forum should prevail. Id. at 5.

The Court specifically noted that, although it previously denied Apple’s motion to consolidate the two related pending actions due to the magnitude of those cases and limited commonalities among them, there are some common issues of law and fact in the cases. Id. Thus, it would better serve the interests of justice and judicial economy if those issues were addressed by the same court. Id.

A complete copy of the Memorandum Opinion is attached.
 

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By Memorandum Opinion entered by The Honorable Sue L. Robinson in Autocell Laboratories, Inc. v. Cisco Systems Inc., Civil Action No. 08-760 (D.Del., January 5, 2011), the Court granted defendant’s motion for summary judgment of noninfringement, denied defendant’s motion for summary judgment of invalidity of the patent in dispute, and denied plaintiff’s motion for summary judgment of infringement. After comparing the defendant’s accused products to the construed claims at issue, claims 1 of 2 of U.S. Patent No. 7,369,858 (“the ‘858 patent”), the Court found that defendants’ products do not infringe the asserted claims of the ‘858 patent as a matter of law.

A complete copy of the Memorandum Opinion is attached.
 

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By Memorandum Order entered by The Honorable Leonard P. Stark in Cooper Notification, Inc. v. Twitter, Inc., et al., C.A. No. 09-865-LPS (D.Del., December 13, 2010), the Court denied the motion of defendants, Twitter, Inc., Everbridge, Inc., Rave Wireless, Inc. and Federal Signal Corp., to stay the patent infringement action pending resolution of the inter partes reexamination proceeding that defendants initiated in the United States Patent and Trademark Office (“USPTO”) concerning the patent at issue based on four prior art references.

In denying the motion, the Court recognized that the decision of whether or not to stay litigation pending a USPTO reexamination proceeding is a matter left to the Court’s discretion. Id. at 2. Typically, in deciding how to exercise its discretion of whether to grant a stay of litigation, the Court noted that it considers three factors: (1) whether a stay will simplify the issues and trial of the case; (2) whether discovery is complete and a trial date has been set; and (3) whether a stay would unduly prejudice or present a clear tactical disadvantage to the non-moving party. Id. at 2-3. Moreover, the Court noted that “a showing of hardship or inequity is ‘generally’ needed to show that the balance of equities favors a stay,” although it is not an absolute requirement. Id. at 4 (citing Court’s prior decision in St. Clair Intellectual Property Consultants, Inc. v. Fujifilm Holding Corp., 2009 WL 192457 (D.Del., January 27, 2009)).

Ultimately, after evaluating the factors, the Court concluded that a stay of the litigation in this action was not appropriate because, among other reasons, granting a stay would unduly prejudice plaintiff and provide defendants a clear, and unwarranted, tactical advantage. Id. at 5-9. Accordingly, the Court denied defendants’ motion to stay. Id. at 9.

A complete copy of the Memorandum Order is attached.
 

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By Memorandum Opinion entered by The Honorable Sue L. Robinson in Acceleron, LLC v. Hewlett-Packard Co. and Intel Corp., C.A. No. 10-128-SLR (D.Del., December 16, 2010), the Court denied the motion of plaintiff Acceleron, LLC (“Acceleron”) seeking to complete discovery pursuant to Federal Rule of Civil Procedure 56(f). Id. at 7. In denying the motion, the Court concluded that additional discovery pursuant to Rule 56(f) was not justified “because Acceleron failed to diligently pursue the discovery necessary to prove the elements of the claims asserted in its complaint during the fact discovery period.” Id. at 5.

A complete copy of the Memorandum Opinion is attached.
 

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By Memorandum Order entered by The Honorable Mary Pat Thynge in Ethypharm S.A. France v. Abbott Laboratories, C.A. No. 08-126-SLR-MPT (D.Del., November 15, 2010), the Court granted, in part, plaintiff Ethypharm’s Motion to Proceed on Certain Discovery Matters under the Federal Rules of Civil Procedure Rather than Under the Hague Convention and ordered that defendant Abbott produce a witness pursuant to Federal Rule of Civil Procedure 30(b)(6) prepared to testify with knowledge of both Abbott and its newly acquired foreign subsidiary, Fournier, about the topics set forth in the deposition notice. Id. at 18-26. In granting Ethypharm’s motion in part, the Court agreed with Ethypharm’s argument that a parent corporation [Abbott] should be required to produce a 30(b)(6) witness prepared to testify with the knowledge of its subsidiaries and affiliates if those subsidiaries and affiliates are within the parent corporation’s control. Id. at 20-26. The Court also found that there was sufficient evidence to demonstrate Abbott’s control over discoverable information held by Fournier. Id. at 26.  Significantly, the Court did not find compelling Abbott’s argument that the current action concerns events that pre-date its February 2010 acquisition of Fournier given that Ethypharm demonstrated that Abbott exercised "control" over Fournier. Id. at 20-26.

A complete copy of the Memorandum Order is attached.

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By Memorandum Opinion entered by The Honorable Sue L. Robinson on November 9, 2010, the Court denied the Skype defendants motion to dismiss plaintiffs’ amended complaint pursuant to Federal Rule of Civil Procedure 12(b)(6). Upon analyzing the amended complaint, the Court found that the amended complaint “contains sufficient factual matter, under Igbal, to state a claim to relief that is plausible on its face. Id. at 6. The Court noted that, “[w]hile the amended complaint is neither succinct nor representative of artful drafting, the court concludes that plaintiffs have now met the minimum requirements under Rule 8.” Id.

A complete copy of the Memorandum Opinion is attached.
 

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By Order entered on October 29, 2010 followed by a Memorandum Opinion entered by Chief Judge Gregory M. Sleet on November 5, 2010 in the consolidated action, Eli Lilly and Company, et al. v. Teva Parenteral Medicines, Inc., et al., C.A. No. 08-335-GMS (D.Del.), the Court held that the prior art rules found in 35 U.S.C. § 102 ("§ 102") including the dates set forth in the relevant provisions of § 102, shall apply to its analysis of determining the relevant date(s) for whether a reference or use constitutes prior art for the purposes of an obviousness-type double patenting defense. Id. at 7.

Copies of the Order and Memorandum Opinion are attached.

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By Memorandum Order entered by The Honorable Mary Pat Thynge in Masimo Corporation v. Philips Electronics North America Corporation, et al., Civil Action No. 09-80-LPS-MPT (October 6, 2010), the Court denied defendants’ motion to bifurcate the issues of liability and damages with respect to the parties’ infringement claims and to stay discovery on the issue of patent damages until liability is resolved. Id. at 13. In denying the motion, the Court concluded that, although defendants maintained that an order to bifurcate and stay discovery on patent damages would conserve resources and further judicial efficiency in the event the jury found non-infringement or patent invalidity, the possibility of resource conversation is outweighed by the duplicate resources that would be required due to the overlap of evidence in plaintiff’s patent liability and patent damages case, by defendants’ failure to establish a greater probability in prevailing on their infringement defense than plaintiff prevailing on its claims, and by the likelihood of undue prejudice against plaintiff in the event of further bifurcation. Id. at 12-13.

A complete copy of the Memorandum Order is attached.
 

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Gregory B. Williams, a partner at Fox Rothschild LLP and author of the Delaware Intellectual Property Litigation blog, has been included in the list of Delaware's "Top Lawyers 2010" compiled and published by Delaware Today in its November 2010 issue.  Mr. Williams also has been recognized in the 2010 list of "Pennsylvania Super Lawyers" published by Philadelphia Magazine.  Mr. Williams has been included in such listings designating top lawyers in Pennsylvania and/or Delaware for several years.  

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By Report and Recommendation entered on October 13, 2010, The Honorable Mary Pat Thynge, in Carl Zeiss Meditec, Inc., et al. v. Xoft, Inc., C.A. No. 10-308-LPS-MPT, analyzed the motion of defendant Xoft, Inc. ("Xoft") to transfer the case from the United States District Court for the District of Delaware to the United States District Court for the Northern District of California and recommended that Xoft's motion be denied.  A copy of the Report and Recommendation is attached.

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By Memorandum Opinion entered by The Honorable Gregory M. Sleet in the consolidated patent infringement action, Aventis Pharma S.A., et al. v. Hospira, Inc., C.A. No 07-721-GMS and Aventis Pharma S.A., et al. v. Apotex, Inc., C.A. No. 08-496-GMS (D.Del., September 27, 2010), the Court concluded, among other things, that (1) claims 2 and 10 of the ‘561 patent are invalid due to indefiniteness; (2) all asserted claims of the patents-in-suit are invalid due to obviousness; and (3) the asserted claims are unenforceable due to inequitable conduct. Id. at 2. The Court made its ruling following a seven day bench trial and post-trial submissions by the parties.

A complete copy of the Memorandum Opinion is attached.
 

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The United States District Court for the District of Delaware has scheduled the public Investiture Ceremony for The Honorable Leonard P. Stark for Friday, October 15, 2010, at 2:30 p.m., in Courtroom 6A.  There will be a reception immediately following in the 6th floor lobby sponsored by the Delaware Chapter of the Federal Bar Association.

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By Memorandum Order entered by The Honorable Mary Pat Thynge in Xerox Corporation v. Google, Inc., et al., C.A. No. 10-136-JJF-MPT (D.Del., September 8, 2010), the Court concluded that defendants failed to show good cause to preclude plaintiff’s trial counsel in the patent infringement action that were exposed to defendants’ confidential information from participating in amendment of plaintiff’s patents during reexamination proceedings before the Patent and Trademark Office (“PTO”).

A complete copy of the Memorandum Order is attached.
 

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On August 16, 2010, the Honorable Leonard P. Stark was sworn-in as a U.S. District Judge for the United States District Court for the District of Delaware.  According to the Court's website, a formal ceremony will be held in the future.  Many of the cases that were previously assigned to Judge Joseph J. Farnan, Jr. (retired) have begun to be reassigned to Judge Stark.    

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The U.S. Senate confirmed the Honorable Leonard P. Stark as a district court judge on the United States District Court for the District of Delaware.  The confirmation elevates Judge Stark from a magistrate judge to a district court judge.  Given the retirement of the Honorable Joseph J. Farnan, Jr. last week, the Court still has one vacant district court judge position left to be filled.  The Court will now need to find someone to replace Judge Stark as a magistrate judge.

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On July 26, 2010, through an Opinion and Order entered by the Honorable Sue L. Robinson, the District of Delaware ruled on ten motions in the two related patent infringement actions captioned, Sigram Schindler Betieligungsgesellschaft mbH v. Cisco Systems, Inc., Civil Action No. 09-72-SLR, and Cisco Systems v. Sigram Schindler Betieligungsgesellschaft mbH, Civil Action No. 09-232-SLR. The patents in suit relate to voice over internet protocol telephony. The problem claimed to be solved by the invention is how to use internet telephony without interrupting the real-time transfer of data. Id. at 16.

In light of the breadth and length of the Opinion, which is fifty-seven (57) pages, this posting focuses only on the Court’s ruling with respect to the parties’ cross motions for summary judgment. In that regard, Sigram Schindler Betieligungsgesellschaft (“SSBG”) sought partial summary judgment that Cisco’s 1861, 881 SRST and 888 SRST router products infringe claim 34 of U.S. Patent No. 6,954,453 (“the ‘453 patent”), claim 45 of U.S. Patent No. 7,483,431 (“the ‘431 patent”) and claims 69 and 84 of U.S. Patent No. 7,145,902 (“the ‘902 patent”). Cisco sought summary judgment that its router products did not infringe the patents under any of the fourteen infringing scenarios identified by SSBG’s expert in his infringement report. Id. at 13. In short, the Court granted Cisco’s motion for summary judgment of non-infringement, and denied SSBG’s motion for summary judgment of infringement. Id. at 30-31. A complete copy of the Opinion is attached.
 

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On July 8, 2010, the United States District Court for the District of Delaware, by and through a Memorandum Opinion entered by The Honorable Joseph J. Farnan, Jr., issued its conclusions on the issues of willful infringement and damages in LG Display Co., Ltd. v. AU Optronics Corp., et al., Civil Action No. 06-726-JJF (consolidated).  With respect to willfulness, the Court concluded that AUO did not establish by clear and convincing evidence that LGD willfully infringed the asserted AUO patents that the Court had ruled in its prior Opinion (See Blog Posting of June 5, 2010) were infringed by LGD.  In reaching its conclusion on willfulness, the Court found that AUO presented very little evidence of LGD's prelitigation conduct and that LGD maintained plausible and credible defenses to infringement and plausible and credible arguments concerning invalidity of the asserted patents.  Id. at 1-4.

With respect to damages for LGD's infringement of the asserted AUO patents, the Court concluded that AUO is entitled to damages in the lump sum amount of $305,399, plus prejudgment and postjudgment interest.  Id. at 6-14.  The damages award was on the lower end of the damages range that AUO contended it was entitled to as a result of LGD's infringement.  Id. at 6.   Given there was no finding of willful infringement by LGD and no other evidence presented by AUO sufficient for the Court to declare the case "exceptional" to justify an enhanced damages award, the Court declined to award AUO its attorneys' fees pursuant to 35 U.S.C. § 285.  Id. at 11-13.

A copy of the complete Opinion is attached.

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By Order dated June 24, 2010, Chief Judge Gregory M. Sleet adopted the Report and Recommendation Regarding Claim Construction entered by Magistrate Judge Leonard P. Stark on May 12, 2010 in The Research Foundation of State of New York, et al. v. Mylan Pharmaceuticals, L.P., Civil Action No. 09-184-GMS-LPS.  In doing so, the Court adopted the constructions of the five  terms in dispute, "tetracylcline compound", "antibiotic tetracycline compound", "the tetracycline compound has substantially no anti-microbial activity", "minimum antibiotic serum concentration", and "chronic inflammatory condition", as used in the asserted claims of United States Patent Nos. 7,232,572, 7,211,267, 5,789,395 and 5,919,775 in accordance with Judge Stark's recommended constructions in his Report and Recommendation.  The Court also adopted the constructions of the six terms that the parties agreed to among themselves as set forth in Judge Stark's Report and Recommendation.  Copies of Judge Stark's Report and Recommendation Regarding Claim Construction and Judge Sleet's Order adopting it are attached.   

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By Memorandum Opinion and Order entered by The Honorable Leonard P. Stark, in Leader Technologies, Inc. v. Facebook, Inc., Civil Action No. 08-862-LPS (D.Del., June 24, 2010), the Court granted in part and denied in part defendant Facebook’s Motion for Leave to Amend Its Responsive Pleading to Add a Defense and Counterclaim of Inequitable Conduct and to Amend Its False Marking Counterclaim. Specifically, the Court’s Order allowed Facebook to add an affirmative defense of inequitable conduct and a declaratory judgment counterclaim, but did not permit Facebook to amend its existing false marking counterclaim. Id. at 10.

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In Senju Pharmaceutical Co. Ltd., et al. v. Apotex Inc., et al., Civil Action No. 07-779-SLR, the U.S. District Court for the District of Delaware, by and through a memorandum opinion entered by The Honorable Sue L. Robinson on June 14, 2010, entered judgment in favor of defendants, Apotex Inc. and Apotex Corp. (“Apotex”), and against plaintiffs, Senju Pharmaceutical Co. Ltd (“Senju”), Kyorin Pharmaceutical Co. Ltd. (“Kyorin”) and Allergan, Inc. (“Allergan”). The case is an infringement action that was tried by bench trial on January 12-14, 2010. In rendering judgment in favor of defendants, the Court concluded among other things that, although plaintiffs had demonstrated by a preponderance of the evidence that defendants’ ANDA product infringed claims 1-3, 6,7, and 9 of the patent in dispute, U.S. Patent No. 6,333,045 (“the ‘045 patent”), defendants demonstrated by clear and convincing evidence that those claims are invalid based on obviousness given the asserted prior art. Id. at 15-21 and 37.

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

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In Life Technologies Corporation, et al. v. Illumina, Inc., et al., Civil Action No. 09-706-RK (D.Del., June 7, 2010), the Court , by opinion entered by Senior Judge Robert F. Kelly, denied plaintiff Life Tech's motion to stay defendants' patent counterclaims pending re-examination of defendants' patents-in-suit by the United States Patent and Trademark Office ("USPTO").  In support of their motion, plaintiffs asserted that the re-examinations by the USPTO would likely to result in cancellation or changes of the asserted patent claims, that a stay would streamline issues in the action and promote judicial economy, and proceeding with Life Tech's invalidity case against defendant Illumina's patents in this action could be contradictory to the result of the re-examination of those patents by the USPTO.  Id. at 2-4.  Defendants countered by asserting that the delay in the re-examination process will be much longer than plaintiff suggests, the subject matter underlying plaintiffs and defendants infringement and invalidity claims are related, plaintiffs and defendants are direct competitors in the technology, and that it would be highly unlikely that proceeding in this action could produce a contradictory result in the re-examination proceeding before the USPTO because of the mandates of 35 U.S.C. § 317(b).  Id.

In denying plaintiffs' motion to stay, the Court reasoned that, although the re-examinations before the USPTO have the potential for simplifying the issues pertaining to the counterclaim patents in the case, the potential benefit would be at the expense of placing the counterclaim on hold for years while the plaintiffs' case continues.  Id. at 5.  Also, the patents in plaintiffs' case and the patents in defendants' counterclaim overlap at least to a certain extent and ,when one further considers that the claims at issue involve parties who are in direct competition, the potential for irreparable harm caused by a stay of the counterclaim far outweighs the possibility of simplifying some of the claims at issue.  Id. at 5-6.  Further, it is highly unlikely that a contradictory result could be reached in this Court and the USPTO in its re-examination proceeding because 35 U.S.C. § 317(b), which is applicable to inter-partes re-examinations, mandates that, if the Court proceeds in this action and Life Tech fails to prove that Illumina's patent claims are invalid, that result would be binding in the re-examinations.  Id. at 4.  Thus, the Court denied plaintiffs' motion to stay the counterclaim action.

A complete copy of the opinion is attached. 

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In Integrated Discrete Devices, LLC v. Diodes Incorporated, C.A. No. 08-888-GMS (D.Del., May 26, 2010), The Honorable Gregory M. Sleet, Chief Judge, issued the Court's Markman Order construing seven disputed terms in a patent action.  Of particular note in the Court's Order is the first footnote which notes that the Court adopted the defendant's proposed construction of the term "semiconductor substrate of a first conductivity type" to mean "bottom semiconductor material of a first conductivity type, upon which layers may be deposited or grown" .  .  .  "as a sanction for the plaintiff's failure to follow its Markman procedures."  Id. at 1, n.1.

A copy of the Court's Markman Order is attached.

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On April 30, 2010, The Honorable Joseph J. Farnan, Jr. issued the opinion setting forth the Court's findings of fact and conclusions of law in the second phase of the patent infringement action captioned LG Display Co., Ltd. v. AU Optronics Corp., C.A. No. 06-726-JJF (D.Del.).  In the second phase, the claims at issue were those asserted by LG Display Co., Ltd. ("LGD") alleging infringement of four patents against AU Optronics Corporation ("AUO") as well as AUO's invalidity defense.  In its latest opinion, the Court defined the disputed terms in the asserted patents and concluded that LGD did not establish by a preponderance of the evidence that AUO infringes the asserted patents.  The Court also concluded that AUO did not establish by clear and convincing evidence that the asserted patents are invalid.

Readers may recall that, in February 2010, Judge Farnan issued the opinion setting forth the Court's findings of fact and conclusions of law in the first phase of this patent infringement action which addressed AUO's patent infringement claims against LGD and LGD's invalidity defense.  See Blog Posting of February 21, 2010.  In the first phase opinion, the Court concluded that AUO did establish by a preponderance of the evidence that LGD infringed the patents asserted by AUO in this action, and LGD did not establish by clear and convincing evidence that such patents were invalid.

Thus, the Court ruled in favor of AUO in both phases of the action following the bench trial that took place in June 2009.  A complete copy of the second phase opinion is attached. 

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In Biovail Laboratories Int'l SRL v. Cary Pharmaceuticals Inc., C.A. No. 09-605-JJF-LPS (D.Del., May 26, 2010), Judge Stark denied Defendant Cary Pharmaceuticals ("Cary") motion to strike plaintiff Biovail expert's supplemental declaration that was submitted by plaintiff in connection with the filing of its answering brief on claim construction.  However, given plaintiff's conduct in submitting its expert's supplemental declaration after the deadline set forth in the Scheduling Order agreed to by the parties for depositions of experts who submitted declarations, Judge Stark, among other things, postponed the Markman hearing for four weeks and allowed Cary to conduct a second deposition of plaintiff's expert directed solely to his supplemental declaration and to file a reply brief in support of its proposed claim construction if it so desired.  Id. at 5-7.

In his Order, Judge Stark noted that, "[w]hile Biovail has not engaged in willful deception, its silence as to its intent to file a rebuttal report and its failure to in any way disclose Hopfenberg's rebuttal opinions at a time when Cary could test and/or respond to them appears to have had the consequence of deceiving Cary into believing that the record with respect to the opinions of claim construction was complete. . . . Biovail's conduct, if unaddressed, will unduly prejudice Cary's ability to advocate its position at the Markman hearing."  Id. at 5.

A copy of the Order is attached hereto.  

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In The Dow Chemical Company v. Nova Chemicals Corp., C.A. No. 05-737-JJF (D.Del., May 20, 2010), Judge Farnan entered the Court's Memorandum Opinion and Oder denying the motion of defendant Nova Chemicals ("Nova") seeking to strike the expert declarations submitted by plaintiff Dow Chemical ("Dow") in support of its counterstatement of facts in opposition to Nova's motion for summary judgment.  Nova contended that the expert declarations relied upon in Dow's counterstatement were improper, untimely and should be stricken because they purportedly constituted additional expert opinions that should have been filed before the end of discovery and were improperly molded to meet Dow's legal challenges in responding to the summary judgment motions and, thus, Nova allegedly was unduly prejudiced.  Id. at 3-5.  The Court disagreed with Nova and refused to strike the expert declarations.   Id. at 5-7.

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On Thursday, May 13, 2010, the Senate Judiciary Committee unaminously approved the nomination of U.S. Magistrate Judge Leonard P. Stark to become a district judge.  Thus, Judge Stark's nomination now moves to the full Senate for consideration.  Judge Stark has been serving as a Magistrate Judge on the U.S. Court for the District of Delaware since 2007.  

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The United States District Court for the District of Delaware issued amended Local Rules of Civil Practice and Procedure which became effective on April 30, 2010.  I serve as a member of the Court's Advisory Committee and also served on the Local Rules Committee which assisted the Court in drafting the amended rules.  Essentially, these amendments were designed to reconcile the Local Rules with the 2009 amendments to the Federal Rules of Civil Procedure, including rules relating to computation of time.

A few of the more significant amendments to the Local Rules include:

(1) In Rule 7.1.2(b) lengthening the time for a response to a motion to be filed to 14 days and lengthening the time for a reply to be filed to 7 days;

(2) In Rule 7.1.3, reducing the limit of the length of opening and answering briefs to no more than 20 pages each and reply briefs to no more than 10 pages, in each instance exclusive of any table of contents or table of citations; 

(3) In Rule 7.1.5 (b) clarifying that a party seeking review of an order, decision or recommendation disposition issued by a Magistrate Judge pursuant to Fed.R.Civ. P. 72 shall be limited to the filing of objections permitted under Fed.R.Civ.P. 72, and shall not be permitted to file a motion for reargument before either the Magistrate Judge or the District Court Judge pursuant to D.Del. LR 7.1.5(a); and

(4) In Rule 30.1, defining "reasonable notice" for the taking of depositions to be not less than 10 days. 

 A complete copy of the amended Local Rules is attached.

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Today, the White House issued a press release advising that President Obama has nominated  Judge Leonard P. Stark to fill one of the current vacancies on the United States District Court for the District of Delaware.  Judge Stark has been serving as a Magistrate Judge on the Court since 2007.   A copy of the press release is attached. 

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In an opinion entered by The Honorable Sue L. Robinson on February 26, 2010 in Accenture Global Services GMBH v. Guidewire Software Inc., Civil Action No. 07-826-SLR, the Court denied without prejudice defendant Guidewire Software Inc.'s motion for partial summary judgment asserting the invalidity of U.S. Patent Nos. 7,013,284 ("the '284 patent") and 7,017,111 ("the '111 patent") claiming unpatentable subject matter and ordered that it be re-filed after the U.S. Supreme Court issues its ruling in Bilski v. Doll, 129 S. Ct. 2735 (U.S. 2009).

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In a ruling entered on February 24, 2010 in Eidos Communications, LLC v. Skype Technologies SA, Civil Action No. 09-234 (D.Del.), The Honorable Sue L. Robinson granted the motion of defendants, Skype Technologies, SA and Skype, Inc. ("Skype"), to dismiss plaintiffs' patent infringement complaint for failure to state a claim or, in the alternative, motion for a more definite statement.  After analyzing the complaint, the Court concluded that plaintiffs' complaint failed failed to meet the minimum pleading requirements of Federal Rule of Civil Procedure 8 and Twombly.  This case is informative on the minimum requirements necessary by plaintiffs in identifying products or methodologies in their patent infringement complaints.

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In a Memorandum Opinion entered by The Honorable Joseph J. Farnan, Jr. on February 16, 2010, the United States District Court for the District of Delaware set forth its findings of fact and conclusions of law on the patent infringement claims of AU Optronics Corporation (“AUO”) against LG Display Co., Ltd. (“LGD”) which were tried by the parties during phase one of the bench trial held before Judge Farnan in June 2009.  The Opinion also sets forth the Court’s claim construction of the disputed terms in the asserted patents and its analysis concerning the infringement claims asserted by AUO against LG, and the invalidity defense asserted by LG.

Ultimately, the Court concludes that (1) AUO established by a preponderance of the evidence that LGD literally infringes the patents asserted by AUO in the action, and (2) LGD did not establish by clear and convincing evidence that the patents asserted by AUO in the action are invalid.  A complete copy of the Opinion is attached.

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By an opinion rendered by the Honorable Mary Pat Thynge, dated February 5, 2010, in Inline Corp. v. Earthlink, Inc., the U.S. District Court for the District of Delaware granted the motion for judgment as a matter of law of plaintiff, Inline Connection Corporation ("Inline"), as to the jury's patent invalidity verdict, but denied the motion as to the jury's non-infringement verdict.  The Court also denied Inline's motion for a new trial.

A copy of the opinion is attached.

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After 25 years of dedicated service as a United States District Judge, The Honorable Joseph J. Farnan, Jr. submitted his letter of retirement to President Barack Obama on January 26, 2010. The announcement of retirement posted on the Court's website states that Judge Farnan plans to leave his office on July 31, 2010.

Judge Farnan is highly regarded, played a pivotal role in establishing the national reputation of the United States District Court for the District of Delaware for handling intellectual property and other complex litigation, and will be missed by his colleagues on the bench and practitioners. 

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By Memorandum Opinion dated January 5, 2010 (PDF) drafted by Judge Farnan, the Court denied Plaintiff Dow Chemical's motion for an expedited separate trial on the amount of its damages after concluding that bifurcation of Dow Chemical's damages claims and defendant's counterclaims would not promote the efficient adjudication of the parties' dispute.

In the opinion, Judge Farnan found:

"there is potential overlap of background material and witnesses with regard to the trial of the facts and the issues.  Thus, [t]he Court is not persuaded that given this clear overlap separate trials will promote any efficiencies."

The Court granted Dow Chemical's unopposed request for leave to file a supplemental summary judgment brief on the amount of its damages.

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By Order dated October 30, 2009 (PDF), Magistrate Judge Leonard P. Stark issued his recommendations on Defendant Swisslog's Motion to Dismiss Due to Lack of Entire Patent Ownership, the parties' claim construction contentions with respect to the claims in dispute, several motions for summary judgment filed by the parties, and certain evidentiary motions.

Plaintiff, McKesson Automation, Inc. (“Plaintiff” or “McKesson”), and Defendant, Swisslog Holdings AG (“Defendant” or “Swisslog”), are in the business of manufacturing and selling automated pharmaceutical retrieval and distribution systems to hospitals.  In this patent infringement action, McKesson asserts that Swisslog’s PillPick System infringes two of McKesson’s patents, U.S. Patent No. 5,468,110 (“the ‘110 patent”) and U.S. Patent No. 5,593,267 (“the ‘267 patent”). The ‘110 and ‘267 patents disclose a system for filling prescriptions and restocking medicines in a pharmacy. 

Judge Stark Recommends that Swisslog’s Motion to Dismiss Be Denied

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By Order dated October 20, 2009, in Grape Technology Group, Inc., et al. v. Jingle Networks, Inc. (PDF), Chief Judge Sleet noted that the Court will impose a limit of ten (10) disputed terms per patent for claim construction in this action and all future patent actions.  Specifically, in the Order, Chief Judge Sleet stated as follows:

“The parties have submitted for construction 19 terms from U.S. Patent No. 7.023,969.  Although disinclined to do so in the past, the court – regrettably – will impose  a limit of 10 disputed terms per patent for claim construction in this and all future patent actions.”

Thus, parties in patent infringement actions in the District of Delaware should be strategic and careful to narrow the real claims in dispute that require claim construction. I've attached a copy of the Order (PDF) entered by Chief Judge Sleet.

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By Memorandum Order by Judge Sue Robinson dated October 1, 2009 (PDF), the United States District Court for the District of Delaware granted the motion of plaintiffs, Eurand, Inc. (“Eurand”) and Cephalon, Inc. (“Cephalon”), to sever and stay discovery on the antitrust and patent misuse counterclaims and related affirmative defense asserted by defendants, Mylan Pharmaceuticals, Inc. and Mylan Inc. After balancing the equities, the Court found that bifurcation of plaintiffs’ patent infringement action from defendants’ antitrust counterclaims and patent misuse affirmative defense and counterclaim was warranted.

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