Delaware IP Law Blog

Third Circuit Judge Kent A. Jordan, sitting by designation, has issued an interesting decision on exclusivity as it relates to licensee standing. Despite the “semi-exclusive” language in its agreement with the patentholder, the licensee argued that it had standing to sue because the license granted it rights in an exclusive field of use.

The Court rejected that proposition:

“Even if OMI could successfully argue that a single entity extended release tramadol product encompasses a distinct field of use sufficient to provide co-plaintiff standing, and I am not convinced that it could, OMI has not shown that it in fact has an exclusive license to that field.”

The parties’ various agreements, which encompassed multiple products, evinced a “concern” that the licensed products occupied the same field. Accordingly, the licensee could not establish the exclusivity necessary to confer standing to sue.

Purdue Pharma Products LP v. Par Pharmaceutical Inc., C.A. No. 07-255-KAJ (D. Del. Dec. 3, 2008) (Jordan, J.) (redacted version).

12/19: Novartis Corporation and Novartis Pharmaceuticals Corp. v. Teva Parenteral Medicines, Inc., Teva Pharmaceuticals USA, Inc. and Teva Pharmaceutical Industries, Ltd. (patent infringement)

Following District of Delaware precedent in the Alcoa v. Alcan matter decided by Judge Robinson in 2007 (C.A. No. 06-451-SLR, 2007, Memo. Order (D. Del. July 2, 2007)), Judge Farnan denied a copyright infringement defendant's motion to transfer venue to the Central District of California. Leonard v. Stemtech Health Sciences, Inc., C.A. No. 08-67-JJF, Memo. Op. (D. Del. Dec. 19, 2008). The Court found little sympathy for the defendant, a Delaware corporation, who was urging the Court to transfer the case to California where its principal place of business is located. Despite the defendant's argument that four key witnesses would be "inconvenienced" to travel to Delaware, they did not produce any affidavits or evidence to support the fact that these witnesses would actually be unavailable in Delaware. Id. at 7. Furthermore, although many documents and records subject to discovery are located in California, the Court found that the burden is not that great where electronic discovery is commonplace and the defendant made no showing that shipping documents to Delaware would be burdensome. Id. at 7-8. Defendant is also conducting business on a national scale and therefore it is not burdensome for them to litigate in Delaware, particularly where they are also incorporated here. Id. at 8. Finally, the Court gave little weight to the defendant's argument regarding time to trial, recognizing the "relative expeditiousness" of both the District of Delaware and the Central District of California. Id. at 9.

Leonard v. Stemtech Health Sciences, Inc., C.A. No. 08-67-JJF, Memo. Op. (D. Del. Dec. 19, 2008).

Following District of Delaware precedent in the Alcoa v. Alcan matter decided by Judge Robinson in 2007 (C.A. No. 06-451-SLR, 2007, Memo. Order (D. Del. July 2, 2007)), Judge Farnan denied a copyright infringement defendant's motion to transfer venue to the Central District of California. Leonard v. Stemtech Health Sciences, Inc., C.A. No. 08-67-JJF, Memo. Op. (D. Del. Dec. 19, 2008). The Court found little sympathy for the defendant, a Delaware corporation, who was urging the Court to transfer the case to California where its principal place of business is located. Despite the defendant's argument that four key witnesses would be "inconvenienced" to travel to Delaware, they did not produce any affidavits or evidence to support the fact that these witnesses would actually be unavailable in Delaware. Id. at 7. Furthermore, although many documents and records subject to discovery are located in California, the Court found that the burden is not that great where electronic discovery is commonplace and the defendant made no showing that shipping documents to Delaware would be burdensome. Id. at 7-8. Defendant is also conducting business on a national scale and therefore it is not burdensome for them to litigate in Delaware, particularly where they are also incorporated here. Id. at 8. Finally, the Court gave little weight to the defendant's argument regarding time to trial, recognizing the "relative expeditiousness" of both the District of Delaware and the Central District of California. Id. at 9.

Leonard v. Stemtech Health Sciences, Inc., C.A. No. 08-67-JJF, Memo. Op. (D. Del. Dec. 19, 2008).

With the option of concurrent proceedings before the Patent and Trademark Office, infringement defendants enjoy multiple routes to challenging the patent-in-suit -- unless the case is stayed. A pause in the litigation, however, is not automatic. By recently denying a motion to stay pending reexamination, Magistrate Judge Leonard P. Stark has added to the stay lexicon in this district.

The Court addressed the importance of earlier, and comprehensive, litigation between the parties involving some of the same claims:

"[The stay] factors do not neatly apply to the circumstances presented here, largely because of the lengthy and extensive history of litigation between [the parties] . . . . [Earlier] jury findings to the contrary make it unclear whether a stay will ultimately simplify the trial of the instant case."

This uncertainty, along with an indefinite timetable for further PTO action, appear to have swayed the Court to keep the litigation moving forward. By denying a stay in the face of the administrative overlap, this decision may signal an increasing judicial preference in this district for getting cases to trial notwithstanding a pending reexamination.

Power Integrations Inc. v. Fairchild Semiconductor Int'l Inc., C.A. No. 08-309-JJF-LPS (D. Del. Dec. 19, 2008) (Stark, M.J.).

Add the District of Massachusetts to the growing list of jurisdictions adopting specialized patent rules. Last month, D. Mass. unveiled its new LR 16.6, which, among others, prescribes a detailed structure for disclosing infringement and invalidity contentions, Markman proceedings, and other patent scheduling matters.

Delaware practitioners will see familiar elements in the D. Mass. rule. Its suggested opening Markman briefing limit, 25 pages, is similar to Chief Judge Sleet's briefing rules. Also recognizable is the joint claim statement provision, which is an increasingly common (and often required) feature of D. Del. patent litigation.

District Judge Joseph J. Farnan Jr. recently issued a claim construction decision notable for its refusal to construe several claim terms. In the underlying dispute over a liquid-crystal display patent, the parties requested construction of the terms "display apparatus" and, in relevant part, "providing a predetermined variation with viewing angle of light transmission." Citing a variety of infirmities, the Court declined to construe the terms.

According to the Court, the "display apparatus" term appears only in the preamble, and thus cannot constitute a limitation:

"[T]he terse preamble simply refers to a 'display apparatus,' which, in the Court's view, is nothing more than a statement of the general field of the claim. Indeed, the word 'display' is not relied upon later in the claim to describe the details of the invention, which, in and of itself, provides further corroboration for the Court's conclusion that the preamble is not a limitation."

The "predetermined variation" phrase suffered a similar fate, but for opposite reasons: rather than lacking sufficient explanation in the specification, as above, the phrase instead had sufficient explanatory support to refute defendants' proposed construction:

"Pairing a description of a specific, concrete use of the invention with a generalized description of the invention, the specification thus uses an example in the usual way to clarify the broader concept. . . . [T]his language, rather than being dispensable boilerplate, represents the standard mode of using an example to convey an idea. The Court will not punish the patentees for attempting to make their specification more accessible in this manner."

Because plaintiff's proposed construction altered the claim language "only slightly," the Court declined to construe the claim phrase.

Honeywell Int'l Inc. v. Nikon Corp., C.A. No. 04-1337-JJF (D. Del. Dec. 9, 2008) (Farnan, J.).

On December 5, 2008, a Delaware jury returned a non-infringement verdict for the defendant in the Honeywell International Inc. v. Sandel Avionics Inc. matter before Magistrate Judge Thynge. The jury found that Honeywell did not prove by a preponderance of the evidence that Sandel's product infringed either U.S. Patent No. 5,839,080 or U.S. Patent No. 6,122,570. A copy of the public verdict form is provided below.

Honeywell Verdict Form

Judge Robinson recently denied Girafa.com, Inc.'s motion for a preliminary injunction in its patent infringement lawsuit against Amazon.com, Inc. and other web services for their alleged use of "thumbnail" technology in violation of Girafa's patent. Girafa.com, Inc. v. Amazon.com, Inc., C.A. No. 07-787-SLR, Memo. Order (D. Del. Dec. 9, 2008). The Court declined to adopt any of plaintiff's proposed claim constructions at this informal stage and therefore found that plaintiff failed to show a likelihood of success on the merits. Id. at 9. In addition, the Court found that plaintiff would not suffer irreparable harm because they could not demonstrate that the loss of business was a direct result of defendants' competitive conduct. Id. at 9. Finally, the accused defendants that were part of the preliminary injunction motion began using the technology almost 2 years before Girafa filed its motion. The Court found that this delay, though not dispositve, was evidence that could be weighed in evaluating the harm to the parties. Id. at 9.

Girafa.com, Inc. v. Amazon.com, Inc., C.A. No. 07-787-SLR, Memo. Order (D. Del. Dec. 9, 2008).

Magistrate Judge Mary Pat Thynge recently issued a Markman opinion in the matter Cordance Corp. v. Amazon.com, Inc., C.A. No. 06-491-MPT, Memo. Order (D. Del. Dec. 5, 2008). The construed claims include:

(1) "metadata"
(2) "providing customer data storing information for a customer;" "providing information provider data storing information for an information provider"
(3) "metadata associating said customer data with said transaction"; "metadata associating said information with said transaction"
(4) "processing said metadata associating said customer data so as to complete the purchase transaction"
(5) "information provider"
(6) "information consumer"
(7) "control structure"
(8) "processing of said control structure"
(9) "feedback information"
(10) "processing said metadata to execute instructions external to said control structure"
(11) "storage menas for storing"
(12) "association means for creating metadata associating portions of said information and defining a control structure for processing at least at said consumer memory to associate with said metadata processes for controlling the communication of said information, said metadata including data exchange metadata associating a process for controlling the transfer of feedback information, said feedback information including at least a portion of said consumer information, to said provider"
(13) "transfer means for transferring said information, including said metadata defining said control structure from said provider memory to said consumer memory"
(14) "feedback transfer means for transferring said feedback information from said consumer memory to said provider memory"
(15) "processing means for executing instructions external to said control structure to perform said processes to control communication of said information"
(16) "directly modify the user's own respective personal data record within the database"
(17) "virtual personal address book"
(18) "directly view the data records."

Cordance Corp. v. Amazon.com, Inc., C.A. No. 06-491-MPT, Memo. Order (D. Del. Dec. 5, 2008)

11/19: Leader Technologies, Inc. v. Facebook, Inc. (patent infringement)
11/19: Eli Lilly and Company, Trustees of Princeton University v. Teva Parenteral Medicines, Inc. (patent infringement)
11/20: Tac-Fast Systems, Inc. and Tac-Fast Georgia, LLC v. Metroflor Corp. (patent infringement)
11/21: Inventio AG v. Thyssenkrupp Elevator Americas Corp., et al. (patent infringement)
11/21: Capricorn Pharma, Inc. v. Matrixx Initiatives, Inc. and Zicam, LLC (patent and trademark infringement)
11/21: SAP America, Inc. and SAP AG v. Security Weaver LLC (trademark infringement)
11/21: Somerset Dental Products, Inc. v. Benco Dental Supply Co. and Indigodental GMBH & Co. KG (patent infringement)
11/24: ING Direct Bancorp and ING Bank, fsb (ING Direct) v. Discover Financial Services and Discover Bank (trademark infringement)
11/25: Cima Labs, Inc., Azur Pharma, Ltd. and Azur Pharma Internaional III, Ltd. v. Novel Laboratories (patent infringement)
11/25: Infineon Technologies AG, Infineon Technologies Austria AG and Infineon Technologies North America Corp. v. Fairchild Semiconductor International, Inc. and Fairchild Semiconductor Corp. (patent infringement)
11/25: Integrated Discrete Devices, LLC v. Diodes Incorporated (patent infringement)
11/25: Eurand, Inc., Cephalon, Inc. and Anesta AG v. Mylan Pharmaceuticals, Barr Pharmaceuticals, Inc. and Barr Laboratories (patent infringement)
11/26: Widex A/S v. Vivatone Hearing Systems, LLC (patent infringement)
12/4: Auxilium Pharmaceuticals, Inc. and CPEX Pharmaceuticals Inc. v. Upsher-Smith Laboratories, Inc. (patent infringement)
12/5: CNS, Inc., d/b/a GlaxoSmithKline v. Raritan Pharmaceuticals, Inc. (patent infringement)
12/8: ITT Manufacturing Enterprises, Inc. and ITT Corporation v. International Technology Transfer, Inc., d/b/a ITT Licensing and ITT Licensing.com (trademark infringement)
12/8: Orion Corporation v. Wockhardt USA, Inc. a/k/a Wockhardt USA LLC and Wockhardt Limited (patent infringement)
12/8: Chase Bank USA, N.A. v. Source, Inc. (patent infringement)
12/9: Flashpoint Technology, Inc. v. Kyocera Sanyo Telecom, Inc. (patent infringement)
12/9: Flashpoint Technology, Inc. v. General Imaging Co. (patent infringement)
12/10: Interpharm Holdings, Inc. and Interpharm, Inc. v. Amneal Pharmaceuticals of New York, LLC (trademark infringement)
12/11: Phonak AG v. Vivatone Hearing Systems, LLC (patent infringement)
12/12: MagSil Corporation and MIT v. Seagate Technology, Seagate US, LLC, Seagate Technology LLC, Maxtor Corporation, Western Digital Corp., Western Digital Technologies, Inc., Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., Hitachi Ltd., Hitachi Global Storage Technologies, Inc., Hitachie America, Ltd., Hitachi Data Systems Corp., Toshiba America Inc., Toshiba America Information Systems, Inc., ExcelStor Technology, Inc., TDK USA Corp., TDK Corporation of America and Headway Technology, Inc. (patent infringement)
12/16: CNH America LLC and Blue Leaf I.P., Inc. v. Jon E. Kinzenbaw and Kinze Manufacturing, Inc. (patent infringement)
12/17: Pfizer, Inc., Pfizer Ireland Pharmaceuticals, Warner Lambert Co., Warner Lambert Co., LLC v. Apotex, Inc. and Apotex Corp. (patent infringement)

Several claim construction decisions have recently issued out of the District of Delaware:

Symbol Technologies Inc. v. Janam Technologies Inc., C.A. No. 08-340-JJF/LPS (D. Del. Dec. 1, 2008) (Stark, M.J.)

On Monday, Magistrate Judge Leonard P. Stark recommended to District Judge Joseph J. Farnan Jr. construction of a number of terms and phrases related to a mobile-computer patent:

"a portable point of sale terminal"
"electromagnetic transceiver"
"power"
"without installing new software on the wireless terminal"

The procedural posture is notable: the Court construed the terms only tentatively, giving the parties guidance in preparation for an upcoming preliminary injunction hearing.

Purdue Pharma Products LP v. Par Pharmaceutical Inc., C.A. No. 07-255-KAJ (D. Del. Nov. 4, 2008) (Jordan, J.) (Part I) (Part II)

Last month, a claim construction decision issued in an ANDA case related to pain medication. The Court construed the following terms:

"therapeutic effect"
"A [solid] controlled release oral [dosage form/pharmaceutical preparation/pharmaceutical tablet] . . . said [dosage form/pharmaceutical preparation/pharmaceutical tablet] providing a therapeutic effect for [at least] about 24 hours"
"therapeutic effect for about 24 hours after oral administration"
"therapeutic effect for at least about 24 hours"
"a pharmaceutically effective amount of tramadol or a salt thereof"
"matrix"
"normal release matrix"

Of additional interest is the decision's author: Third Circuit Judge Kent A. Jordan, formerly of the District of Delaware. Chief Judge Anthony J. Scirica has designated Judge Jordan to preside over this case.