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

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.
 

• Print
• Comments
• Trackbacks
• Share Link

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.
 

• Print
• Comments
• Trackbacks
• Share Link

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.

• Print
• Comments
• Trackbacks
• Share Link

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.
 

• Print
• Comments
• Trackbacks
• Share Link

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.
 

• Print
• Comments
• Trackbacks
• Share Link

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.
 

• Print
• Comments
• Trackbacks
• Share Link

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.    

• Print
• Comments
• Trackbacks
• Share Link

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.

• Print
• Comments
• Trackbacks
• Share Link

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.
 

• Print
• Comments
• Trackbacks
• Share Link

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.

• Print
• Comments
• Trackbacks
• Share Link

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.   

• Print
• Comments
• Trackbacks
• Share Link

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.

• Print
• Comments
• Trackbacks
• Share Link

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. 

• Print
• Comments
• Trackbacks
• Share Link

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.

• Print
• Comments
• Trackbacks
• Share Link

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. 

• Print
• Comments
• Trackbacks
• Share Link

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.  

• Print
• Comments
• Trackbacks
• Share Link

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.

• Print
• Comments
• Trackbacks
• Share Link

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.  

• Print
• Comments
• Trackbacks
• Share Link

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. 

• Print
• Comments
• Trackbacks
• Share Link

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

• Print
• Comments
• Trackbacks
• Share Link

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.

• Print
• Comments
• Trackbacks
• Share Link