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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
In their Motion, Defendants, Apple Inc. and AT&T Mobility LLC, asserted two grounds for reconsideration. Id. at 2. First, Defendants asserted that new authorities regarding the requirements for permissive joinder under Fed.R.Civ.P. 20(a)(2)(A) abrogated the cases on which Softview’s motion to amend relied. Id. In other words, Defendants asserted that Section 299 of the America Invents Act (“AIA”) provides that “accused infringers may not be joined in one action as defendants or counterclaim defendants, or have their actions consolidated for trial, based solely on allegations that they each have infringed the patent or patents in suit.” Id. at 2-3. However, Defendants conceded that the new Section 299 applied to civil actions commenced on or after the date of the enactment of the AIA - September 16, 2011. Id. at 3. Thus, the Court found that the new Section 299 was not “an intervening change in controlling law” in this action. Id. Likewise, the Court found that district court decisions issued subsequent to the briefing on Softview’s motion also did not constitute an intervening change in controlling law. Id.
Second, Defendants asserted that there was a “need to correct a clear error of law regarding joinder” in the Court’s September 30, 2011 Order. Id. The Court, however, agreed with Softview that Defendants simply reargued their same position previously asserted rather than showing a clear error of law by the Court. Thus, the Court denied Defendants’ Motion for Reconsideration. Id.
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.
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.
In support of its motion, Broetje asserted two best mode defenses. First, Broetje asserted that the patents-in-suit failed to adequately disclose joint inventor Bornes’s subject belief that tubes with “five grooves” or passageways were the best mode of practicing the claimed invention. Id. at 8. Second, Broetje asserted that the patents-in-suit failed to adequately disclose joint inventor Auriol’s subjective belief that tubes with an “odd number” of grooves were the best mode of carrying out the claimed invention. Id.
In opposition to Broetje’s motion, plaintiffs made, among others, two legal arguments to Broetje’s best mode theories. First, plaintiffs contended that, in cases of joint inventorship, the legal standard for best mode requires that all joint inventors reach an agreement or meeting of the minds that there is only a single best mode for practicing the invention and, thus, the discrepancy between the joint inventors’ subjective best modes should defeat Broetje’s motion as a matter of law. Id. Second, plaintiffs contended that a best mode violation requires “intentional” concealment of the best mode. Id.
The Court rejected both of plaintiffs’ legal arguments. Id. at 9-11. In rejecting plaintiffs’ first legal argument, the Court noted that the Federal Circuit, in Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1357, 1361-62, 1364-65 (Fed. Cir. 2011), in affirming summary judgment of best mode invalidity wherein the patents-in-suit listed six inventors, repeatedly indicated that the best mode requirement was violated by the failure of a single inventor to disclose his or her contemplated best mode. Id. at 9-10. In rejecting plaintiffs’ second legal argument, the Court found that, “[a]lthough some Federal Circuit decisions do contain passing references to intentional concealment in connection with the best mode requirement, the clear weight of Federal Circuit authority holds that intentional concealment is not required for best mode violations.” Id. at 10-11 (internal citations omitted).
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.
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.
By Memorandum Opinion entered by The Honorable Leonard P. Stark in Laboratory Skin Care, Inc., et al. v. Limited Brands, Inc., et al., Civil Action No. 06-601-LPS (D. Del., September 8, 2011), the Court denied Plaintiffs’ Renewed Motion for Judgment as a Matter of Law or in the Alternative for a New Trial. In their motion, Plaintiffs raised three grounds for the relief they sought: (1) insufficient evidence to support the jury’s finding of a barring sale; (2) erroneous jury instructions on both elements of the on-sale bar test; and (3) the alleged admittance into evidence of expert testimony beyond the scope of the expert report. Id. at 2. In denying Plaintiffs’ motion and upholding the verdict, the Court found that the jury did have sufficient evidence on which to base its finding of a barring sale, the Court's instructions on the two elements of the on-sale bar test were proper, and the disputed expert testimony was not unduly prejudicial to Plaintiffs. Id. at 5-15.
A complete copy of the Court’s Opinion is attached.
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.
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.
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.
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.
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.
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.
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.
By way of background, in October 2004, Power filed suit against Fairchild Semiconductor International, Inc. and Fairchild Semiconductor Corporation (collectively, “Fairchild”) alleging that Fairchild infringed certain of Fairchild’s patents. After discovery was completed and the Court issued its claim construction opinion, the case proceeded to trial in four phases: (1) a jury trial was held on the issues of infringement and willfulness; (2) a second jury issued a verdict on invalidity; (3) a bench trial was held on Fairchild’s inequitable conduct defense; and (4) a second bench trial was held on the issue of willfulness in light of the intervening decision by the Federal Circuit in In Re Seagate Technology, LLC, 497 F.3d 1360 (Fed. Cir. 2007). Significantly, each phase of the litigation went against Fairchild, including the second bench trial on willfulness during which the Court upheld the jury’s previous finding that Fairchild willfully infringed Power’s patents. Id. at 1-2.
In analyzing Power’s motion requesting the Court to declare the case exceptional and to award enhanced damages and attorneys’ fees, the Court recognized that its power to award enhanced damages and, in exceptional cases, attorneys’ fees is derived from statute – specifically from 35 U.S.C. §§ 284 and 285. Under 35 U.S.C. § 284, the “[C]ourt may increase the damages up to three times the amount found or assessed.” Under 35 U.S.C. § 285, the “[C]ourt in exceptional cases may award reasonable attorney fees to the prevailing party.”
The Court noted that a § 284 inquiry has two steps. “First, a determination is made as to whether the infringer acted with culpability. A finding of willful infringement satisfies this culpability requirement. Second, the Court must determine whether, given the totality of the circumstances, damages should be enhanced.” Id. at 12.
With respect to the first step of the § 284 inquiry, the Court determined that it was satisfied because Fairchild had already been found to have willfully infringed Power’s patents. Id. Thus, the Court determined that it needed to analyze and determine whether, given the totality of the circumstances, damages should be enhanced and, to do so, it needed to evaluate the “Read factors”. Id. The Read factors are: (1) whether the infringer deliberately copied the ideas or design of another; (2) whether the infringer investigated the scope of the patent and had a good faith belief that it was not infringing or that the patent was invalid; (3) the infringer’s behavior during litigation; (4) the infringer’s size and financial condition; (5) any remedial actions taken; (6) the closeness of the case; (7) the duration of the infringing conduct; and (8) any concealment on the part of the infringer. Id. at 12-13. The Court noted that “[n]o one factor is dispositive.” Rather, the paramount determination in deciding whether to grant enhanced damages and the amount thereof is the egregiousness of the infringer’s conduct based on all of the facts and circumstances. Id. at 13.
After analyzing the Read factors and taking into consideration both jury verdicts against Fairchild, the Court’s unequivocal willfulness opinion, the parties submissions and the rationale underlying enhanced damages, the Court concluded that Fairchild’s conduct was sufficiently culpable to justify enhancing damages and that enhanced damages were appropriate in this action. Id. at 22. However, the Court was not convinced that the circumstances of the case were sufficiently egregious to justify a full trebling of damages and, thus, decided to double the damages awarded instead of tripling the damages. Id.
With respect to Power’s motion for attorneys’ fees, the Court noted that, “[i]n undertaking a § 285 inquiry, the Court focuses in particular on the actual conduct of the parties during the course of litigating or prosecuting the patent.” Id. at 23. Moreover, the Court noted that the “Federal Circuit has made it clear that attorneys’ fees should be awarded only in ‘limited circumstances’ and are not to become an ‘ordinary thing in patent litigation.’” Id. After analyzing Fairchild’s conduct during the litigation, the Court determined that it would not declare this case exceptional under § 285 and refused to award attorneys’ fees. Thus, Power’s motion was denied to the extent it sought to declare the case exceptional and recover its attorneys’ fees. Id. at 24.
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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