Intellectual Property Law

Chief Judge Gregory M. Sleet: Preliminary Injunction Denied

Posted on November 19, 2009
A party requesting a preliminary injunction in an infringement case must meet a high burden in showing a likelihood of success on the merits, irreparable harm, a balance of hardships in favor of the moving party and that an injunction...

Chief Judge Gregory M. Sleet: Claims Fail to Meet Twombly Standard

Posted on November 19, 2009
The District Court of Delaware in LG Electronics U.S.A., Inc. v. Whirpool Corporation, found that a "formulaic recitiation of the elements of the Lanham Act and Delaware Deceptive Trade Practices" with the insertion of Whirpool's name is insufficient to meet...

Sue L. Robinson: The Double-Edged Sword of Prosecution

Posted on November 18, 2009
In a recent post-trial opinion, district judge Sue L. Robinson emphasized the importance of a patentee's conduct during prosecution for later claims of infringement. In the underlying action, the patentee alleged that defendant's ANDA product, which covered an oral tablet...

Judge Sue L. Robinson: Inequitable Conduct Claim "Passes Muster" Under Exergen

Posted on November 18, 2009
In yet another decision addressing the sufficiency of pleading inequitable conduct, the Court found under the new standard set forth in the Exergen case that defendant Cisco's amended claims "pass muster under this rigorous standard" and granted defendant's motion for...

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Chief Judge Gregory M. Sleet: Rule 52(c) Motion Granted for Prior Art References Not Raised at Trial

Posted on November 18, 2009
In the Court's post-trial decision in In Re Brominidine Patent Litigation, the Court found that the defendants' ANDA products infringed the asserted patents and that defendants failed to prove invalidity. MDL Docket No. 07-md-1866-GMS, Memorandum (D. Del...

Judge Sleet: Post-verdict JMOL must be denied where the party does not file the JMOL pre-verdict

Posted on November 17, 2009
In Linear Technology Corporation v. Monolithic Power Systems, Inc., C.A. No. 06-476 GMS (D. Del. Nov. 12, 2009) Judge Sleet denied Defendant's JMOL Motion on the issue of obviousness. Id. at 5. Judge Sleet noted that Fed. R. Civ. P....

Magistrate Judge Stark Follows Judge Farnan's Prior Claim Construction in St. Clair Digital Camera Cases

Posted on November 16, 2009
On Friday, Magistrate Judge Stark's claim construction came down on another set of patent infringement cases by St. Clair Intellectual Property Consultants based on their digital camera patents. St. Clair Intellectual Property Consultants, Inc. v. Matsushita Electronic Industrial Co...

D. Del. Special Master: No Prejudice, and Therefore No Sanction, for Untimely Produced Expert Discovery

Posted on November 11, 2009
A special master in the District of Delaware recently recommended against the imposition of sanctions for a party's failure to timely produce expert-discovery materials. In the decision, issued by Special Master Vincent J. Poppiti, the special master considered and rejected...

Judge Sleet: No Corporate Veil Piercing Without Allegations of Injustice

Posted on November 10, 2009
Chief Judge Sleet recently issued a memorandum opinion on a motion to dismiss and transfer in CNH America LLC v. Kinzenbaw, C.A. No. 08-945-GMS (D. Del. Nov. 9, 2009) (mem.), a patent infringement case. Defendants in the case include Kinzenbaw,...

Judge Joseph J. Farnan: Bifurcation denied

Posted on November 09, 2009
In Arendi Holding Ltd. v. Microsoft Corp., C.A. No. 09-119-JJF (D. Del. Oct. 27, 2009) (mem.), Judge Farnan denied a motion to bifurcate a patent infringement action. In denying defendants' (Microsoft and Dell) motion, the court stated that bifurcation w[ould]...

Magistrate Judge Leonard P. Stark: Appropriate Scope of Damages Discovery on Commercial Success Where Damages Case is Bifurcated

Posted on November 05, 2009
As noted in a post from August of this year (see here), Judge Robinson has instituted a bifurcation procedure in her cases where she conducts separate trials for liability and damages/willfulness. As part of this procedure, damages discovery is stayed...

Judge Sue L. Robinson: Motion to Transfer GRANTED

Posted on November 05, 2009
Judge Robinson recently granted defendant Parallel Networks' motion to sever and transfer third-party defendant Microsoft's declaratory judgment action to the Eastern District of Texas. Judge Robinson cited the judicial vacancy in Delaware and the "undeniable" facts pointing to the Eastern...

Mary Pat Thynge: Prepare Your 30(b)(6) Witness or Face Sanctions

Posted on November 05, 2009
A recent sanctions order issued by Magistrate Judge Mary Pat Thynge reaffirms a basic discovery principle: the 30(b)(6) witness must be prepared, regardless of the size and resources of the entity for whom the witness speaks. In yesterday's order, the...

Judge Farnan: Motion to dismiss declaratory judgment complaint for lack of subject matter jurisdiction GRANTED

Posted on November 02, 2009
Judge Farnan recently dismissed Microsoft?s declaratory judgment complaint, involving Microsoft?s MapPoint and Virtual Earth services, against WebXchange because no case or controversy existed sufficient to confer subject matter jurisdiction. Microsoft Corporation v...

Judge Farnan: Another Motion to Transfer Denied

Posted on October 30, 2009
In Personalized User Model LLP v. Google, Inc., C.A. No. 09-525-JJF (D. Del. Oct. 27, 2009), Judge Farnan issued an opinion on a motion by defendant Google to transfer a pending patent infringement suit to the Norther District of California...

Judge Robreno: Memorandum Opinion on Discovery Issues

Posted on October 28, 2009
Eastern District of Pennsylvania Judge Eduardo C. Robreno, sitting by designation, recently issued a memorandum opinion addressing discovery issues in Inventio AG v. Thyssenkrupp Elevator Americas Corporation et al., C.A. No. 08-874-ECR (D. Del. Oct. 8, 2009)...

Judge Sue L. Robinson: Witness Excused

Posted on October 27, 2009
What do you do when a key witness falls ill and is no longer able to testify? Judge Robinson in Genetics Institute, LLC v. Novartis Vaccines and Diagnostics, Inc. excused the inventor/witness from testifying based on a letter from her...

Gregory M. Sleet: Roadmap for Jurisdictional Discovery on Delaware Entities

Posted on October 26, 2009
Jurisdictional discovery is a valuable tool that can be used to stave off an action's dismissal for a lack of personal jurisdiction. A recent decision by Chief Judge Gregory M. Sleet provides a roadmap for this type of discovery, at...

Gregory M. Sleet: Markman and the Plain Meaning Doctrine

Posted on October 23, 2009
Claim construction often can be a complex affair - or not. In a recent decision, Chief Judge Gregory M. Sleet construed several terms according to their plain meaning. By doing so, the Court reminded practitioners of the Federal Circuit's admonition....

Judge Robinson Claim Construction/Validity Opinion

Posted on October 23, 2009
On Monday, Judge Robinson issued a thorough, lengthy opinion resulting from a patent infringement bench trial where Judge Robinson found in favor of plaintiff Alcon, despite several claim construction and validity arguments by defendant Teva. Alcon, Inc...

Sanctions Ordered in Honeywell v. Nikon

Posted on October 22, 2009
In Honeywell International, Inc. v. Nikon Corp., C.A. No. 04-1337-JJF (Oct. 14, 2009), Judge Farnan, adopting the recommendation of Special Master Vincent J. Poppiti, ordered $18,000 in sanctions against InnoLux, a defendant in a patent infringement case, for its...

Joseph J. Farnan: Transfer Denied After Movant Filed Its Own Suit in Delaware

Posted on October 22, 2009
A recent decision by district judge Joseph J. Farnan Jr. reaffirms the difficulty parties often have in transferring actions out of the District of Delaware. In considering defendant Hologic's motion to transfer venue, the Court recognized that nearly identical litigation...

Judge Robinson: Motion to amend complaint to add inequitable conduct claim DENIED under new Exergen standard

Posted on October 21, 2009
In Robert Bosch LLC v. Pylon Manufacturing Corp., C.A. No. 08-542-SLR (D. Del. Oct. 19, 2009), Judge Robinson applied the Federal Circuit Exergen decision to Plaintiff?s motion to amend its complaint to add a claim of inequitable conduct. Plaintiff based...

Chief Judge Gregory M. Sleet: Limits Disputed Claim Terms Per Patent to 10 in All Future Patent Actions

Posted on October 20, 2009
In an order issued in Grape Technology Group, Inc. v. Jingle Networks, Inc., Chief Judge Sleet pronounced in a footnote that the Court will impose a limit of 10 disputed claim terms per patent for claim construction in all future...

Special Master Poppiti Denies Plaintiffs? Motion to Dismiss Defendant InnoLux Without Prejudice

Posted on October 12, 2009
In Honeywell International Inc. et al. v. Apple Computer, Inc. et al., C.A. 04-1337-JJF (D. Del. Oct. 5, 2009), Honeywell filed a motion to dismiss Defendant InnoLux without prejudice under Fed. R. Civ. P. 41, while InnoLux, in addition to...

New District of Delaware Intellectual Property Case Filings

Posted on October 09, 2009
9/9: Warner Chilcott Company LLC v. Lupin Limited and Lupin Pharmaceuticals Inc. (patent infringement) 9/15: Bayer Schering Pharma AG, Bayer Healthcare Pharmaceuticals Inc., Schering Corporation v. Teva Pharmaceuticals USA, Inc. and Teva Pharmaceutical Industries Ltd...

Chief Judge Gregory M. Sleet: Markman Order

Posted on October 09, 2009
In Aventis Pharma S.A. v. Hospira, Inc., Judge Sleet construed several terms related to three patents on technology involving taxane (an anti-cancer drug) derivatives. C.A. Nos. 07-721-GMS, 08-496-GMS, Amended Order (D. Del. Oct. 5, 2009). - "stock solution": The Court...

Judge Joseph J. Farnan: Supplemental Claim Construction Order

Posted on October 09, 2009
In the Court's Order construing some of the claim terms at issue in this infringement action, Judge Farnan requested supplemental briefing for the disputed claim term "homogeneously branched linear ethylene/?-olefin interpolymers." See The Dow Chemical Company v...

Judge Sue L. Robinson: Belated Discovery Justifies New Defense

Posted on October 08, 2009
A recent memorandum order by district judge Sue L. Robinson illustrates the importance of supplementing discovery - and the risks of discovery delay. In response to certain allegedly late-produced discovery, the defendants supplemented their contention-interrogatory responses to assert enablement and...

Chief Judge Sleet: Brief Markman Order

Posted on October 07, 2009
In a brief Markman order, Chief Judge Sleet construed the following terms: "Controlled release pellet formulation," construed to mean "an oral composition formulated to ensure that the active compound is released preferentially at the site of the disease to be...

Magistrate Judge Stark: Report and Recommendation Regarding Claim Construction

Posted on October 07, 2009
Magistrate Stark recently issued a Report and Recommendation Regarding Claim Construction in Fujinon Corp. v. Motorola, Inc., C.A. No. 07-533-GMS-LPS (D. Del. Sept. 11, 2009). The disputed terms construed by Magistrate Judge Stark and his recommendations are as follows: ?A...

Judge Sue L. Robinson: Bifurcation of patent infringement action from defendants? antitrust counterclaims and patent misuse affirmative defense

Posted on October 07, 2009
In Eurand Inc. et al. v. Mylan Pharms. Inc. et al., C.A. No. 08-889-SLR (D. Del. Oct. 1, 2009), Judge Robinson recently granted plaintiffs? motion to sever and stay discovery on defendants' antitrust and patent misuse counterclaims and affirmative defenses...

Chief Judge Gregory M. Sleet: Aggressive Markman Tactics Backfire

Posted on October 07, 2009
Chief Judge Gregory M. Sleet recently issued a claim-construction opinion notable for what it did not construe. On review of a magistrate judge's recommendation, the Court rejected the defendants' attempts to argue issues beyond the scope of the Markman proceeding:...

Chief Judge Sleet: Final Honeywell Opinion Deals with Costs

Posted on October 02, 2009
In what looks to be the final opinion in a patent infringement case that has continued since 1999, Chief Judge Gregory M. Sleet partially affirmed a decision by the Clerk of Court not to grant costs requested by defendant Hamilton...

Magistrate Judge Leonard P. Stark: Reining In The Complexities of Multi-Venue Litigation

Posted on October 02, 2009
In his recent decision granting a motion to amend, Magistrate Judge Leonard P. Stark offered a new take on whether adding new patents following the close of the pleadings will unduly complicate a case. In the underlying litigation, the parties...

Judge Sue L. Robinson: Reconsidered Claim Construction Affects Prospect for Summary Judgment

Posted on September 30, 2009
A fundamental precept of patent law teaches that a party is liable for direct infringement only when it performs each step of the invention's claims. In a recent decision, District Judge Sue L. Robinson addressed infringement liability for those who....

Chief Judge Gregory M. Sleet: Alleged Equitable Interest Insufficient for Purposes of Standing

Posted on September 25, 2009
Chief Judge Sleet recently decided a case where plaintiff, a law firm that had helped to prosecute a patent, tried to claim an equitable interest in the patent after their client?s alleged failure to pay their fees. Huntley, L.L.C. v....

E.D. Pa. Chief Judge Harvey Bartle: Motion to Proceed on Representative Claims Granted

Posted on September 24, 2009
Consistent with a theme that has been developing in D. Del. multi-patent litigation, E.D. Pa. chief judge Harvey Bartle, sitting by designation, recently issued an order limiting the number of claims for trial. In the four-patent litigation, the Court limited...

Judge Farnan: Markman Opinion

Posted on September 18, 2009
In a recent Markman opinion, Judge Farnan construed several terms relating to two patents pertaining to the use of microelectrodes for the rapid determination of the concentration of an analyte in a liquid sample ? a process that, as the...

Chief Judge Gregory M. Sleet: Motion to Lift Stay Pending Reexam DENIED

Posted on September 17, 2009
More and more frequently, courts are having to deal with concurrent reexamination proceedings in the USPTO while parties are litigating the same patents in the district court forum. In Automotive Technologies Int'l, Inc. v. American Honda Motor Co., et al...

Judge Sue L. Robinson: Markman Opinion

Posted on September 17, 2009
Judge Robinson recently construed the parties' disputed claim terms set forth in a patent related to a "method and system for providing a preview thumbnail image of a web page" in Girafa.com, Inc. v. IAC Search & Media, Inc., C.A....

Judge Sue L. Robinson: Defendants? Motions for JMOL GRANTED.

Posted on September 09, 2009
Plaintiff SRI International (?SRI?) brought a patent infringement action against defendants Symantec Corporation (?Symantec?) and Internet Security Systems, Inc. (?ISS?) related to four patents. After issuing its claim construction opinion in October, 2006, the Court held that each of SRI?s...

Judge Sue L. Robinson: Disqualification of an attorney is never automatic.

Posted on September 04, 2009
In Boston Scientific Corporation, et al. v. Johnson & Johnson, et al., C.A. No. 07-765-SLR (D. Del. August 25, 2009), Defendant Wyeth sought to disqualify the firm Howrey LLP from representing Plaintiffs due to Howrey?s current representation of Wyeth in...

Judge Farnan: Claim Construction

Posted on September 04, 2009
In UCB, Inc. et al. v. KV Pharmaceutical Company, C.A. 08-223-JJF (D. Del. Aug. 18, 2009) Judge Farnan provided claim constructions for disputed terms of a patent pertaining to ?multiparticulate pharmaceutical dosage forms that include both immediate release (?IR?) beads...

Judge Sue L. Robinson: Bifurcation of Damages and Willfulness for Discovery and Trial

Posted on August 28, 2009
In recent cases, Judge Robinson has been making it her practice to bifurcate damages and willfulness in patent cases for purposes of both discovery and trial. Two recent decisions elaborate on this procedure and the Court's reasoning behind bifurcating damages...

New District of Delaware Intellectual Property Case Filings

Posted on August 28, 2009
8/6: Baxter Healthcare Corporation, Baxter International Inc., Baxter Healthcare SA v. Minrad International Inc., Piramal Healthcare Ltd. and Piramal Healthcare Inc. (patent infringement) 8/6: Ethicon Endo-Surgery Inc. v. Hologic Inc. and Suros Surgical Systems, Inc...

Judge Mary Pat Thynge: Jury Verdict

Posted on August 21, 2009
On August 18, 2009, a Delaware jury returned a verdict finding that Amazon.com, Inc. did not infringe two of the three patents owned and asserted by Cordance Corporation. The jury found those two patents valid. The jury did find that...

Judge Farnan: A defendant MUST avail themselves of every opportunity to plead inequitable conduct with particularity

Posted on August 19, 2009
Judge Farnan recently granted Plaintiffs? Motion to Strike Defendants? Motion for Summary Judgment of Unenforceability based upon defendants? failure to plead their inequitable conduct defense with particularity; and defendants? subsequent failure to take any action to amend their Answer...

Judge Robinson: Prior decision of inequitable conduct on remand from Federal Circuit REVERSED

Posted on August 17, 2009
In Cordis Corporation v. Boston Scientific Corporation and Scimed Life Systems, Inc., C.A. No. 98-197-SLR (D. Del. Aug. 10, 2009), Judge Robinson reversed her March 2002 decision that nondisclosure of material prior art during prosecution of the patent-at-issue was inequitable...

Judge Robinson: Despite scheduled mediation, litigation shall move forward

Posted on August 17, 2009
In Wellman, Inc. v. Eastman Chemical Co., C.A. No. 07-585-SLR (D. Del. Aug. 13, 2009), Plaintiff filed an Emergency Motion to Modify Scheduling Order requesting postponement of deadlines for filing Daubert and Summary Judgment motions until after mediation...

Eduardo C. Robreno: Motion to compel answers to claim construction interrogatory GRANTED

Posted on August 07, 2009
In Inventio AG v. Thyssenkrupp Elevator Americas Corp., C.A. No. 08-874-ER, at 2 (D. Del. July 31, 2009) Defendants filed a motion to compel answers to an interrogatory requesting construction of claims Plaintiff contends were infringed by Defendants...

New District of Delaware Intellectual Property Case Filings

Posted on August 07, 2009
7/29: AngioDynamics Inc. v. Vascular Solutions, Inc. (patent infringement) 7/30: Square Ring, Inc. v. John Doe-1, John Doe-2, John Doe-3, John Does 4-10, Ustream TV Inc. (trademark) (cable system piracy) 7/31: Genzyme Corporation v. Roxane Laboratories Inc...

Sue L. Robinson: Claim Preclusion and the Successive Infringement Suit

Posted on August 06, 2009
In a recent decision, district judge Sue L. Robinson addressed the unsettled issue of whether a plaintiff may accuse the same product of infringement in successive suits. Answering in the affirmative, the Court held that a party can maintain a...

Judge Joseph J. Farnan, Jr.: No Per Se Rule that a Reexamination Order Precludes the Possibility of Proving Willful Infringement

Posted on August 05, 2009
In June 2009, Magistrate Judge Stark granted Plaintiff St. Clair?s Motion for Leave to File a Second Amended Complaint to, among other things, add allegations for willful infringement against Defendant Nokia. St. Clair Intellectual Property Consultants, Inc...

Leonard P. Stark: Post-Trial Accounting Issues Cannot Be Raised in New Suit

Posted on August 04, 2009
Collecting damages incurred following a finding of liability can be difficult. One avenue to collection that will not work, recounted in a recent decision by magistrate judge Leonard P. Stark, involves filing a new action. According to the Court, such...

Magistrate Judge Mary Pat Thynge: Patent Misuse Tried to Judge

Posted on August 04, 2009
The Federal Rules of Civil Procedure provide a trial judge with the ability to manage the presentation of a trial, particularly where complex matters are being tried before a jury. Patent misuse is a defense that courts have held can...

Magistrate Judge Mary Pat Thynge: Summary Judgment Granted - No Willful Infringement Under Seagate Standard

Posted on August 04, 2009
In what is one of the first lengthy discussions on willful infringement from this District since the Federal Circuit issued its opinion in In re Seagate Tech., LLC, 497 F.3d 1360 (Fed. Cir. 2007) (see our earlier posting on the...

Leonard P. Stark: Agree to Claim Terms or Lose Two of Them

Posted on July 31, 2009
In multi-patent litigation, parties and the Court are often confronted with how to properly manage the sometimes unwieldy claim-construction process. To that end, Magistrate Judge Leonard P. Stark recently issued a noteworthy ruling that addressed how, at least in the...

Sue L. Robinson: Jurisdiction Over Work-Product Dispute Declined

Posted on July 30, 2009
Yesterday, District of Delaware Judge Sue L. Robinson declined jurisdiction over a discovery dispute involving a party's instruction not to answer. At a deposition, the plaintiff's attorney directed the nonparty deponent -- who was involved in prosecuted the underlying patent...

New District of Delaware Intellectual Property Case Filings

Posted on July 28, 2009
6/19: Kone Corporation v. Thyssenkrupp Elevator Corporation, Thyssenkrupp Elevator Americas Corporation (patent infringement) 6/23: Tandberg Inc. v. Multimedia Patent Trust (patent infringement) 6/25: Dey LP and Dey Inc. v. Teva Parenteral Medicines Inc...

Magistrate Judge Stark: Motion for Judgment on the Pleadings -- denied

Posted on July 02, 2009
Magistrate Judge Stark recently recommended, among other things, that the Court deny defendant-counterplaintiff Rembrant?s motion for judgment on the pleadings. In re Rembrandt Techs. LP Patent Litigation, MDL Docket No. 07-1848-GMS-LPS, (D. Del. June 29, 2009)...

Judge Robinson: Plaintiffs not permitted to use information as a sword and a shield

Posted on July 02, 2009
Judge Robinson recently decided several discovery disputes between the parties in State of Florida v. Abbott Labs., C.A. 08-155-SLR (D. Del. June 23, 2009). Among other things, plaintiffs objected to defendants? request for ?rebates plaintiffs negotiate and receive for fenofibrate...

Magistrate Judge Stark: assessing the adequacy of scienter when pleading fraud with particularity

Posted on July 02, 2009
In a recent trademark infringement and dilution case, Magistrate Judge Stark denied plaintiffs? motion to dismiss defendants? counterclaim seeking cancellation of plaintiffs? trademark due to fraud on the Patent and Trademark Office. ING Bank v. the PNC Fin...

Judge Joseph J. Farnan, Jr.: Transfer Denied Where Defendants Not Subject to Suit in Transferee Forum

Posted on June 10, 2009
A defendant's motion to transfer will be denied where there is no evidence to establish that the defendant could have been sued in the transferee forum originally. Safety Braking Corp. v. Six Flags Theme Parks, et al., C.A. No. 07-127-JJF,...

New District of Delaware Intellectual Property Case Filings

Posted on June 09, 2009
5/13: Vianix LLC v. Nuance Communications Inc. (copyright infringement) 5/13: Future Fibre Technologies Pty Ltd. v. Optellios Inc. (patent infringement) 5/13: B. Braun Melsungen AG, B. Braun Medical Inc. v. Terumo Medical Corporation and Terumo Corporation (patent infringement) 5/15: CIMA...

Chief Judge Gregory M. Sleet: Claim Construction Order

Posted on June 09, 2009
Chief Judge Sleet recently construed the terms of a pharmaceutical patent related to treatment of dysuria. In re: Alfuzosin Hydrochloride Patent Litigation, MDL Docket No. 08-md-1941-GMS, Order (D. Del. May 20, 2009). The following claim terms were construed: - "dysuria"...

Judge Joseph J. Farnan, Jr.: Third Party Discovery

Posted on June 09, 2009
The District of Delaware was recently asked to decide a discovery dispute over third party documents related to litigation pending in California and Texas. Software Rights Archive, LLC v. Google Inc., Yahoo! Inc., IAC Seach & Media, Inc., AOL LLC...

Judge Sue L. Robinson: Voluntary Substitution Continues In Personam Jurisdiction

Posted on June 09, 2009
Plaintiff Quinstreet Inc. filed a declaratory judgment suit in Delaware against a patent licensing firm EpicRealm for non-infringement of two patents. Quinstreet Inc. v. Parallel Networks, LLC, C.A. No. 06-495-SLR, Memo. Order (D. Del. May 28, 2009). A little over...

Mary Pat Thynge: Deposition Discovery Again Warrants Addition of Late Inequitable-Conduct Claim

Posted on June 01, 2009
In a patent infringement action, Magistrate Judge Mary Pat Thynge recently granted defendant SPI Pharma, Inc.?s (?SPI?) motion to amend their answer despite the deadline for amending pleadings having passed in May 2007. Roquette Frère v. SPI Pharma, Inc...

Chief Judge Gregory M. Sleet: Manufacturing and Selling Automobile Parts Incorporated Into Vehicles Manufactured in Delaware is Sufficient to Confer Personal Jurisdiction

Posted on May 22, 2009
In a patent infringement case, Chief Judge Sleet recently denied Defendant?s motion to dismiss for lack of personal jurisdiction despite the fact that Defendant (a Georgia corporation with its principal place of business in Georgia) has never had an office...

Sue L. Robinson: Heightened Evidentiary Burden Under the Doctrine of Equivalents?

Posted on May 22, 2009
Last week, district judge Sue L. Robinson rejected a novel argument concerning the evidentiary burden on infringement under the doctrine of equivalents. Defendant claimed that, because it held a license to certain compounds under one patent, plaintiff had to show...

Three Recommended to Fill D. Del. Vacancy

Posted on May 22, 2009
Yesterday, the District of Delaware came one step closer to obtaining a new district judge. A local newspaper is reporting that three names have been sent to the White House as candidates to fill the 2.5-year-old vacancy on the federal...

Co-Author Andrew Lundgren Honored For Pro Bono Service

Posted on May 20, 2009
The Delaware IP Law Blog's very own Andrew Lundgren was honored by Young Conaway Stargatt & Taylor, earlier this year for his extraordinary pro bono contributions to the community and bar. In recognition of these contributions he was awarded the...

Noel L. Hillman: Substituting Parties Insufficient to Cure SMJ Defect

Posted on May 14, 2009
Can a plaintiff substitute in the correct party to cure a lack of subject matter jurisdiction once the defendant has moved to dismiss? According to District of New Jersey judge Noel L. Hillman, sitting by designation, the answer is no....

Judge Sue L. Robinson: Claim Construction

Posted on May 13, 2009
Judge Robinson recently construed the following claim terms in patents related to technology involving casino gaming devices: - "bonus" - "bonus play period" - "command" - "message" - "Issuing a 'command' 'responsive to a predetermined event'" - "Issuing a 'command'...

District of Delaware New Intellectual Property Case Filings

Posted on May 13, 2009
4/29: Mosaid Technologies, Inc. v. Shoretel Inc. (patent infringement) 4/29: Pfizer Inc., Warner Lambert Company, LLC, CP Pharmaceuticals International CV and Northwestern University v. Actavis Elizabeth LLC and Actavis Inc. (patent infringement) 4/29: Pfizer Inc...

Judge Joseph J. Farnan, Jr.: Claim Construction

Posted on May 06, 2009
Judge Farnan recently construed the claim terms in a patent related to a combination of "(1) the (-) -enantiomer of an antiviral agent known as BCH-189...and (2) the well-known HIV antiviral agent AZT." Glaxo Group Ltd. v. Teva Pharmaceuticals USA,...

Judge Joseph J. Farnan, Jr.: Notice of Trade Secret Use

Posted on May 06, 2009
A plaintiff's place of residence will not excuse the reasonable diligence requirement to discover a trade secret claim under 6 Del. C. Section 2006. In fact, a foreign plaintiff will be deemed to be on notice once a patent is...

Judge Joseph J. Farnan, Jr.: Function of a Comma in Claim Construction

Posted on May 06, 2009
Judge Farnan found an English professor's declaration opining on the proper function of a comma to be admissible under Rule 702 as part of the claim construction process. To the extent a party argues that it contradicts the intrinsic evidence...

Chief Judge Gregory M. Sleet: Motion to Enforce Settlement Agreement

Posted on May 06, 2009
Chief Judge Sleet recently granted, in part, plaintiff?s motion to enforce the parties? settlement agreement to dismiss the case. Rohm and Haas Electronic Materials, LLC v. Honeywell International, Inc., C.A. No. 06-297-GMS, Memo. (D. Del. Apr. 16, 2009)...

New District of Delaware Intellectual Property Case Filings

Posted on April 29, 2009
4/4: Mallinckrodt Inc., Liebel-Flarsheim Co. v. E-Z-EM Inc. and ACIST Medical Systems, Inc. (patent infringement) 4/6: Perren-Vibes Music, Inc., Universal Polygram International Publishing, Inc., Roger Ball, Alan Gorric and Owen McIntyre D/B/A Average Music, Stone City Music, Bleu Disque Music,...

Judge Joseph J. Farnan, Jr.: Subtle reminder to parties ? give the Court the power to find in your favor

Posted on April 15, 2009
In a recent case, Defendant Tivo, Inc. (?Tivo?), moved the Court to dismiss Plaintiffs? (collectively, ?Echostar?) case pursuant to the Court?s power under the Declaratory Judgment Act. Dish Network Corp. v. Tivo, Inc., C.A. No. 08-327-JJF, Memorandum Opinion (D...

Joseph J. Farnan: Colloquial Versus Textbook Definitions in Claim Construction

Posted on April 13, 2009
In a recent decision, district judge Joseph J. Farnan rejected a "colloquial" claim definition in favor of the "textbook" meaning: "[T]he dispute between the parties primarily centers around whether 'power' should be interepreted according to its ordinary, 'textbook' definition or...

Chief Judge Gregory M. Sleet: Dismissal Granted Based on First-Filed Rule

Posted on April 13, 2009
Chief Judge Sleet recently granted defendant Rymed Technologies, Inc.'s motion to dismiss a patent infringement suit, where Rymed had previously filed a declaratory judgment suit against the plaintiff in another district. Vygon v. Rymed Technologies, Inc...

Judge Sue L. Robinson - DJ Jurisdiction --What is Enough?

Posted on April 13, 2009
Businesses continue to struggle with the "post-MedImmune" environment and determining when a sufficient "case or controversy" exists to file a declaratory judgment suit against a patentee. Judge Robinson recently provided some further guidance on this issue in an even more...

Judge Joseph J. Farnan, Jr.: Motion to Strike Answer, Defenses and Counterclaims

Posted on April 10, 2009
Reminding parties that the Court disfavors motions to strike pursuant to Fed. R. Civ. P. 12(f), Judge Farnan, granted in part and denied in part plaintiffs? motion to strike portions of the defendant?s answer, defenses and counterclaims in Symbol Technologies,...

Magistrate Judge Mary Pat Thynge: Parties Should Be Able to Terminate Litigation When Trial Unattractive

Posted on April 07, 2009
Over a year after filing a lawsuit alleging infringement of five patents, the plaintiffs decided to voluntarily move to dismiss the case against the defendant with prejudice and proceed against a group of different defendants. After the Court granted that...

New District of Delaware Intellectual Property Case Filings

Posted on April 06, 2009
3/17: Discovery Communications, Inc. v. Amazon.com, Inc. (patent infringement) 3/19: Research Foundation of State University of New York, New York University and Galderma Laboratories v. Mylan Pharmaceuticals Inc. (patent infringement) 3/19: OSI Pharmaceuticals Inc...

Judge Sue L. Robinson: Transfer Denied

Posted on April 06, 2009
In what is a common factual scenario in this court, a defendant is sued here in Delaware and within days files a reciprocal declaratory judgment suit in another district and at the same time files a motion to dismiss or...

Judge Sue L. Robinson: Some Notes on Reexamination

Posted on April 03, 2009
Some Notes from Judge Robinson on Reexamination: - A prosecution bar will not extend to counsel (for either party) involved in a reexamination proceeding as neither party's confidential information is relevant to that proceeding. - Amendments and revisions to claims...

Judge Joseph J. Farnan: 271(e)(2) -- Not a Jurisdictional Statute

Posted on March 19, 2009
Section 271(e)(2) is the well known provision of the Patent Act that creates an artificial act of infringment by the filing of an ANDA with the FDA. This statute is the means by which a "case or controversy" arises so...

New District of Delaware Intellectual Property Filings

Posted on March 18, 2009
2/19: Flashpoint Technology, Inc. v. Aiptek, Inc., Argus Camera Co., LLC, Bushnell Inc., DXG Technology USA, Inc., DXG Technology Corp., Leica Camera AG, Leica Camera, Inc., Minox GMBH, Minox USA, Inc., Oregon Scientific, Inc., Ritz Interative, Inc., Ritz Camera CEnters,...

Delaware FBA Chapter Hosts Legal Ethics Progam

Posted on March 11, 2009
Continuing its federal-practitioner CLE series, the Delaware chapter of the Federal Bar Association hosted an engaging and challenging program on legal ethics this afternoon in Wilmington. Following a luncheon at the Hotel du Pont with the district judges, the event...

Sue L. Robinson: Motion to Amend Not Futile When "Substantive Dispute" Present

Posted on March 10, 2009
Last week, District Judge Sue L. Robinson rejected a party's attempt to stave off a timely motion to amend on the grounds of futility: "I generally reject such futility arguments if they present substantive disputes, either of the law or...

Sue L. Robinson: Materiality of Foreign Declaration Questioned

Posted on March 05, 2009
Under the PTO's patent-examining manual, applicants "have a duty to bring to the attention of the Office any material prior art or other information cited or brought to their attention in any related foreign application." According to yesterday's decision by...

Judge Sue L. Robinson: Foreign Participation in the U.S. Market Through Third Party U.S. Licensee Deemed Sufficient to Withstand Motion To Dismiss

Posted on February 27, 2009
Another guest post by our colleage, Pilar Kraman : On February 20, 2009, Judge Robinson issued an opinion granting in part and denying in part defendant Abbott Laboratories? motion to dismiss. Ethypharm S.A. France v. Abbott Laboratories, C.A. No. 08-126-SLR,...

Guest Post - The Interplay of Rule 16 and Rule 26(f) and Timing of the Meet and Confer

Posted on February 26, 2009
In a short minute order, Judge Sleet recently confirmed that the Federal Rules of Civil Procedure permit discovery to begin before the Court sets the Rule 16 conference. Many defendants in recent years have refused to participate in the Rule...

Chief Judge Gregory M. Sleet - Stay Pending Reexam GRANTED

Posted on February 25, 2009
Guest Post by Pilar Kraman: Although recent cases in the District of Delaware have involved the denial of motions to stay pending reexamination, on February 24, 2009, Judge Sleet granted the defendants? Motion to Stay Pending Inter Partes Reexamination...

Sue L. Robinson: Convenience Transfer Warranted by Operations "Regional" in Scope

Posted on February 24, 2009
In the District of Delaware, parties with nationwide operations are often unsuccessful in seeking transfers out of the jurisdiction. This is especially true when Delaware corporations are involved. But a decision today by district judge Sue L. Robinson reminds litigants...

Judge Sue L. Robinson: Form 18 Complies with post-Twombly Pleading Standard for Infringement Case

Posted on February 23, 2009
A great area of discussion since the Supreme Court's decision in Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007) has been whether the bare bones pleading requirements typically seen in a patent infringement complaint would be sufficient or whether...

Mary Pat Thynge: Confirming Deposition Discovery Warrants Addition of Late Inequitable-Conduct Claim

Posted on February 23, 2009
In managing litigation, trial judges are often called on to enforce the structure of the case while simultaneously preserving the fluidity of the parties' claims. These competing goals take form in the rules governing scheduling orders and the amendment of...

Guest Post - Magistrate Judge Stark: Discovery Behavior Not Exemplary But Not Bad Faith

Posted on February 20, 2009
The following post was graciously written by one of our fellow associates, Pilar Kraman. On February 17, 2009, Magistrate Judge Stark granted defendant Hewlett-Packard?s Motion for Leave to Amend Answer and Affirmative Defenses. St. Clair Intellectual Property Consultants, Inc...

New District of Delaware Intellectual Property Case Filings

Posted on February 19, 2009
1/27: Vianix Delaware LLC v. Nuance Communications Inc. (copyright infringement) 1/29: Tales AG Informationstechnologien v. Cisco Systems, Inc. (patent infringement) 1/30: Cephalon Inc. and CIMA Labs Inc. v. Barr Pharmaceuticals, Inc., Barr Pharmaceuticals, LLC and Barr Laboratories, Inc...

Judge Joseph J. Farnan, Jr.: New Jury Verdict - CIF Licensing, LLC v. Agere Systems, Inc.

Posted on February 19, 2009
On February 17, 2009, a Delaware jury returned a verdict in the case of CIF Licensing, LLC, d/b/a/ GE Licensing v. Agere Systems, Inc., C.A. No. 07-170-JJF. The patents-in-suit, U.S. Patent Nos. 5,048,054, 5,428,641, 5,446,758 and 6,198,776, involve technology related...

Joseph J. Farnan: ?Comprising? Rule Inapplicable When Use Limited to Specification

Posted on February 16, 2009
Last week, district judge Joseph J. Farnan Jr. issued a Markman decision addressing the claims of a skin-care-product patent. Notable among the Court?s analysis is its discussion of the term ?comprising? in the context of the specification. The Court considered,...

Joseph J. Farnan: Secondary ANDA Filer Demonstrates DJ Jurisdiction After Primary Delays Entry into Market

Posted on February 06, 2009
In an effort to curb collusive extensions of the 180-day exclusivity period between brand drug manufacturers and primary ANDA filers, Congress extended declaratory-judgment jurisdiction to secondary ANDA filers under the 2003 amendments to the Hatch-Waxman Act...

New District of Delaware Intellectual Property Filings

Posted on February 04, 2009
1/26: Proctor & Gamble Company and Hoffman-La Roche, Inc. v. Sun Pharma Global Inc. (patent infringement) 1/26: Pylon Manufacturing Corp. v. Jamak Fabrication-Tex LLC (patent infringement) 1/27: Vianix Delaware LLC v. Nuance Communications Inc. (patent infringement) 1/29: Teles AG Informationstechnologien...

Sue L. Robinson: Inventorship Claim on Chemical Patent Rejected

Posted on February 03, 2009
A recent decision by district judge Sue L. Robinson wades into the sometimes murky waters of inventorship. In the underlying litigation, Vanderbilt sought to add several of its professors as inventors to a chemical-compound patent held by ICOS. The requisite...

Magistrate Judge Leonard P. Stark: No Stay for Pending Litigation Against Infringer

Posted on February 03, 2009
A pending appeal in the Federal Circuit between the same parties and involving the same patents is not enough to warrant a stay in pending litigation between the same parties and same patents in the district court. St. Clair Intellectual...

Magistrate Judge Mary Pat Thynge: Motion to Amend in Companion Case

Posted on October 13, 2008
A plaintiff chooses to file three separate actions in the same district against three separate alleged infringers. The plaintiff asserts the same patents in all three actions. A defendant in one of the matters adds an inequitable conduct defense against...

Sue L. Robinson: Pleading State-Law Business Torts in D. Del.

Posted on October 10, 2008
On Wednesday, District Judge Sue L. Robinson emphasized, as earlier D. Del. cases have, that inadequately pleaded state-law claims in patent cases will not be tolerated. In the underlying infringement litigation, plaintiff sought redress for trade-secret misappropriation and a variety...

New District of Delaware Intellectual Property Case Filings

Posted on October 09, 2008
9/11: Alma Lasers Ltd. and Alma Lasers, Inc. v. Palomar Medical Technologies, Inc. (patent infringement) 9/16: Promos Technologies, Inc. v. LSI Corporation and Agere Systems, Inc. (patent infringement) 9/18: Autodesk Canada Co. v. Assimilate, Inc. (copyright infringement) 9/19: Packers Plus...

Judge Sue L. Robinson: No Preliminary Injunction Despite Head to Head Competition

Posted on October 09, 2008
The U.S. Supreme Court's decision in eBay, Inc. v. MercExchange, LLC continues to make it difficult to obtain injunctive relief. Judge Robinson, in Wellman, Inc. v. Eastman Chemical Co. , found that even if plaintiff had demonstrated a likelihood of....

Sue L. Robinson: License Exclusivity Not Solely Function of Parties' Intent

Posted on October 07, 2008
Earlier this year, we reported on a licensee-standing decision by Magistrate Judge Leonard P. Stark. In that decision, the Magistrate Judge recommended that a licensee operating under an agreement subject to "pre-existing nonexclusive licenses" could nonetheless pursue litigation as an...

Judge Farnan Denies Motion for Attorneys' Fees

Posted on October 03, 2008
In a somewhat unusual procedural posture, Defendants moved the district court for attorneys' fees following a stipulated judgment of non-infringement after Judge Farnan issued his Markman Order construing the terms in favor of defendants. Prism Technologies LLC v...

UPDATE Sue L. Robinson: Calculating Pre-Judgment Interest, and Other Damages-Related Inquiries

Posted on October 03, 2008
District Judge Sue L. Robinson has modified a recent damages order, reported by us last month, that accounted for the award's tax treatment: "It is apparent from the papers submitted that the appropriate method of calculating prejudgment interest based on...

Joseph J. Farnan: Motion-to-Strike Victory for ANDA Filer

Posted on October 02, 2008
That willfulness is not properly a part of a Hatch-Waxman case is not a controversial proposition anymore. In a recent opinion, District Judge Joseph J. Farnan Jr. reaffirmed a long line of cases that jettisoned willful infringement allegations grounded solely...

UPDATE Sue L. Robinson: Fees Motion Incorrect Vehicle for Analyzing Enforceability

Posted on October 02, 2008
Thanks to Bob Matthews at Latimer Mayberry in Virginia for sending us a recent case similar to Judge Robinson's fees decision, posted below. Just two days before the Delaware decision issued, the Northern District of Ohio reached the same conclusion:...

Sue L. Robinson: Fees Motion Incorrect Vehicle for Analyzing Enforceability

Posted on September 30, 2008
On Friday, District Judge Sue L. Robinson resolved an atypical motion for attorney fees. By its motion, a prevailing defendant sought reimbursement on the ground that plaintiff alleged inequitable conduct rendered the subsequent litigation frivolous. The catch? The Court never...

Joseph J. Farnan: $3 Million Plaintiff's Verdict Entered

Posted on September 29, 2008
Following a plaintiff's jury verdict and post-trial proceedings, including sanctions motions, District Judge Joseph J. Farnan Jr. has entered a final judgment in the St. Clair/Fuji infringement litigation. The Court entered judgment for St. Clair in the amount of $3,003,465...

Jury Verdict for Plaintiff Siemens Medical Solutions, USA, Inc.

Posted on September 29, 2008
Last week, a jury returned a verdict for Plaintiff Siemens Medical Solutions, USA, Inc. finding that Saint-Gobain Ceramics & Plastics infringed U.S. Patent No. 5,525,905 related to technology used in PET scanners (medical imaging scanners). Although the jury did not...

Joseph J. Farnan: Failure to Disclose Does Not Always Equate to Inequitable Conduct

Posted on September 25, 2008
Resolving a charge of inequitable conduct requires a close reading of an often conflicting factual record for clues that evince an intent to deceive. In a post-trial opinion released yesterday, District Judge Joseph J. Farnan Jr. acknowledged that fine evidentiary...

Joseph J. Farnan: Invalidity Holding Trumps Infringement Reference in Final Judgment

Posted on September 22, 2008
Following post-trial decisions on invalidity and evidentiary matters earlier this year, District Judge Joseph J. Farnan Jr. has entered a final judgment in the Boehringer/Mylan Pharmaceuticals ANDA litigation. In its June 2008 decision, the Court held the patent-in-suit infringed but...

Young Conaway to Host INTA Roundtable: "Internet Enforcement - Who, What, and Where Are We to Search?"

Posted on September 19, 2008
Young Conaway Stargatt & Taylor, LLP will host the International Trademark Association?s Wilmington, Delaware roundtable on Wednesday, October 22, from noon to 2 p.m. The topic is ?Internet Enforcement ? Who, What, and Where Are We to Search?? and lunch...

Sue L. Robinson: Calculating Pre-Judgment Interest, and Other Damages-Related Inquiries

Posted on September 16, 2008
District Judge Sue L. Robinson has issued a decision in the long-running Cordis/Medtronic litigation clarifying the standards and procedures surrounding several damages issues common to patent litigation. In yesterday's memorandum opinion, the Court first addressed pre-judgment interest, holding that the...

Chief Judge Gregory M. Sleet: Premature to Reconsider Claim Construction While Reexam Ongoing

Posted on September 15, 2008
District court litigation, reexamination, and agency adjudication are only some of the pitfalls that accompany the life of a patent. When proceeding simultaneously, these procedural avenues only increase the risk of contradictory rulings, especially in the area of claim construction...

New District of Delaware Intellectual Property Filings

Posted on September 10, 2008
8/20: Chase Bank U.S.A. N.A. v. Source Inc. (patent infringement) 8/21: CIMA Labs Inc., Azur Pharma Ltd. and Azur Pharma International III Ltd. v. Barr Laboratories, Inc. and Barr Pharmaceuticals, Inc. (patent infringement) 8/22: Endo Pharmaceuticals Inc...

Federal Bar Association (Delaware Chapter): Upcoming CLE

Posted on September 05, 2008
On September 11, 2008 at 3:00 p.m., the Delaware Chapter of the Federal Bar Association in conjunction with the Bankruptcy Court for the United States District Court of Delaware will be presenting a CLE entitled "Intersections of Bankruptcy and Intellectual...

Judge Joseph J. Farnan, Jr.: There Are Limits to Discovery

Posted on September 03, 2008
Parties to litigation, and particularly high stakes patent litigation, spend a lot of time and money discovering facts that may prove their case or defense. Judge Farnan in a recent opinion has made clear, however, that there are limits to...

Judge Sue L. Robinson: A Party Cannot Use Confidential Information as "both a shield and a sword"

Posted on September 03, 2008
In a recent simple, and straightforward opinion, Judge Robinson granted a plaintiff's motion to exclude expert testimony where the expert report relied on knolwedge of work done for a government agency which was not able to be disclosed. Siemens Medical...

Sue L. Robinson: Unclear Record Precludes Anticipation, Obviousness Findings

Posted on August 28, 2008
In another example of the difficulty of obtaining summary judgment in Delaware, district judge Sue L. Robinson has refused to invalidate a network-security patent on the grounds of anticipation and obviousness. By doing so, the Court also highlighted the importance...

New District of Delaware Intellectual Property Case Filings

Posted on August 19, 2008
7/29: Softspikes LLC, Pride Manufacturing LLC v. MacNeill Engineering Company Inc. (patent infringement) 7/29: Trisport Ltd. Greenkeepers of Delaware LLC and Greenkeepers Inc. (patent infringement) 7/30: CRS LLC v. Napster LLC (patent infringement) 7/30: CRS LLC v...

Sue L. Robinson: "Small, Regional" Defendants Win Transfer to D. Ariz.

Posted on August 15, 2008
In an unusual outcome in the District of Delaware, a transfer motion has been granted. In a recent opinion, district judge Sue L. Robinson found that two affiliated defendant-companies, both located in Arizona, had overcome the strong presumption in favor...

Six New Jersey District Judges Designated to Sit in Delaware

Posted on August 11, 2008
On the heels of the announcement that judges from the Eastern District of Pennsylvania will begin hearing cases filed in Delaware, Third Circuit Chief Judge Anthony J. Scirica has designated six judges from the District of New Jersey to do...

Sue L. Robinson: Noerr-Pennington Immunity Applies to Suits Brought on "Weak" Patents

Posted on August 08, 2008
Infringement actions often provoke a raft of counterclaims that assert non-patent theories, including business-competition torts. When a party pursues these unfair competition claims, however, the plaintiff retains some doctrinal immunity from suit. And, according to District of Delaware Judge Sue...

Motion to Transfer Denied: Inconvenience Will Not Take Precedence over Delaware Corporation's Choice of Forum

Posted on August 01, 2008
It is well-established that plaintiff's choice of forum will be a strong consideration in deciding a motion to transfer. Judge Sleet in denying the defendants' motion to transfer in the case Acuity Brands, Inc. v. Cooper Industries, Inc., again stressed...

New District of Delaware Filings 2008

Posted on February 08, 2008
1/25: Endo Pharms. Inc. and Penwest Pharms. Co. v. Impax Laboratories, Inc. (patent infringement) 1/25: Forest Laboratories Inc., Forest Laboratories Holdings Ltd., Merz Pharma GmbH & Co. KGaA, Merz Pharms. GmbH v. Dr. Reddy's Laboratories, Inc., Dr...

Holding Company Subject to Personal Jurisdiction Based on Subsidiary's Conduct

Posted on February 01, 2008
One avenue to obtaining personal jurisdiction over a non-resident defendant is to assert the familiar "stream of commerce" theory of long-arm jurisdiction: the foreign party purposefully shipped the accused product through established distribution channels, thereby causing injury in the forum...

Decision Clears Way for Four New Stent Cases to Go Forward

Posted on January 29, 2008
In the ongoing battle between Boston Scientific Corporation, Johnson & Johnson Inc. and Cordis Corporation, the District of Delaware recently handed BSC a victory, allowing it to proceed in four declaratory judgment actions each seeking a judgment on invalidity on one of four patents related to drug-eluting coronary stent technology...

Court Finds Patent Claim Invalid For Lack Of An Adequate Written Description

Posted on January 28, 2008
Crown Packaging Tech., Inc. v. Rexam Beverage Can Co., C.A. No. 05-608-MPT (D. Del. Jan. 22, 2007) Rexam moved for partial summary judgment of invalidity and noninfringement. The Court granted both motions in part. As to noninfringement, the Court held that Rexam did not infringe the claim at issue under the doctrine of equivalants, granting Rexam’s noninfringement summary judgment motion...

New District of Delaware Filings

Posted on January 25, 2008
1/15: Tatoo Johnny, Inc. v. Matthew Walker (copyright infringement) 1/17: Validus Pharmaceuticals, Inc. v. Actavis South Atlantic LLC and Actavis, Inc. (patent infringement) 1/17: Applabs, Inc. v. Vocalocity, Inc. (copyright infringement)

New Standing Order Regarding Vacant Judgeship Cases

Posted on January 24, 2008
By Standing Order dated January 23, 2008, all cases assigned to the vacant judgeship prior to August 6, 2007, all cases assigned purusant to the Order of August 6, 2007 (whih assigned civil cases to the Magistrate Judges), and all new cases filed in this District shall be assigned and divided among the three active District Court Judges...

Court Maintains DJ Jurisdiction Over Amazon's Counterclaim in Dispute over i-names and Address Book Information

Posted on January 24, 2008
In the case Cordance Corp. v. Amazon.com, Inc., C.A. No. 06-491-MPT, Memo. Order (D. Del. January 22, 2008), Cordance Corp. has alleged that Amazon's trademarked "1-click" technology infringes its patent covering i-name technology. Amazon.com filed a declaratory judgment counterclaim alleging that Cordance's promotion of the i-name services infringes its patent covering software realted to personal address books...

New District of Delaware Filings

Posted on January 16, 2008
1/9: Riverbed Technology, Inc. v. Quantum Corporation (patent infringement) 1/10: Forest Laboratories, Inc., Forest Laboratories Holdings, Ltd., Merz Pharma GmbH & Co., KGaA v. Cobalt Laboratories, Inc. (patent infringement) 1/8: Forest Laboratories, Inc...

Delaware Judge Examines, Then Defers, Separate Patentability Argument

Posted on January 11, 2008
An accused device infringes under the doctrine of equivalents when, among others, the alleged equivalent represents an "insubstantial" change from the claim language. Uncertainty arises, however, when the equivalent is itself patented. Would a finding of equivalence amount to a declaration that the patent covering the accused device is invalid? Perhaps to avoid this outcome, the Federal Circuit has held that a finding of equivalency in this scenario is "considerably more difficult to make out," albeit not necessarily foreclosed...

Objective Recklessness: Failure to Obtain Advice of Counsel is Relevant to Willfulness Inquiry

Posted on January 08, 2008
After the Federal Circuit released its Seagate decision, Patently-O asked a fair question: "What role, if any, is there for the thick, formal opinions explaining in detail why a particular patent is invalid, unenforceable, and/or not infringed?" A recent decision by District of Delaware Chief Judge Gregory M...

New District of Delaware Filings

Posted on January 02, 2008
12/21: Fifth Market, Inc. v. Board of Trade of the City of Chicago, Inc. (patent infringement) 12/21: Samsung Electronics Co., Ltd. v. Sharp Corporation et. al. (patent infringement) 12/26: Wall Corporation v. BondDesk Group, L.L.C., and BondDesk Trading, L...

Summary Judgment Granted in Beverage Can Case

Posted on January 02, 2008
On December 21, 2007, Magistrate Thynge granted summary judgment to Reexam Beverage Co. finding that two claims of US Patent No. 5,697,242 were infringed. Crown Packaging Tech. Inc. v. Reexam Beverage Can Co., C.A. No. 05-608-MPT, Memo. Order (D. Del...

Delaware District Judge Dismisses "Hunting License" Infringement Suit

Posted on December 27, 2007
The distinction between an assignee and licensee is crucial to determining whether a party has standing to sue for infringement. Whether through ownership or assignment, those parties that hold all substantial rights to a patent - and those who hold all exclusionary rights but not all substantial rights - generally enjoy the ability to enforce the patent...

Long Scheduled Trial Date Precludes Delay in Expert Discovery

Posted on December 27, 2007
In a recent opinion, Delaware district judge Joseph J. Farnan Jr. reaffirmed the necessity of confirming expert witnesses' availability for pretrial discovery and trial. In the underlying litigation, defendant sought to delay expert reports and depositions on the basis of unavailability...

Judge Robinson Sanctions Violation of Model Rule 4.2

Posted on December 21, 2007
Microsoft Corp. v. Alcatel Bus. Sys., C.A. No. 07-090 (D. Del. Dec. 18, 2007). This case dealt with a violation of Model Rule of Professional Conduct 4.2 by two attorneys from a prominent national firm. The attorneys purchased, on the open market, an Alcatel Communications System that contained certain features at issue in the patent litigation...

D. Del. Deposition Practice: Let the Witness Answer

Posted on December 21, 2007
It is well established in the District of Delaware that instructing a deponent to withhold a response is rarely permitted. Absent a genuine possibility that privileged information will be disclosed, our district judges are uniform in their disapproval of this deposition tactic...

"Extended Release Formulation" and other terms defined in ANDA case

Posted on December 20, 2007
Recently, in the Wyeth v. Impax Laboratories, Inc. case, Judge Farnan construed three separate claim terms: (1) "extended release formulation"; (2) "diminished incidences of nausea and emesis"; and (3) "a method for eliminating the troughs and peaks of drug concentration in a patient's blood plasma...

District of Delaware New Case Filings

Posted on December 19, 2007
11/29: Senju Pharmaceutical Co., Ltd., Kyorin Pharmaceutical Co., Ltd. and Allergan, Inc. v. Apotex, Inc., Apotex Corp. and Apotex Pharmachem India, PVT, Ltd. (patent infringement) 11/30: Sun Microsystems, Inc. v. Versata Enterprises, Inc...