Delaware IP Law Blog

On July 29th at 12:00 pm at the Du Barry room in the Hotel DuPont there will be a special presentation by Chief Judge Sleet of the “Annual Report of the U.S. District Court for the District of Delaware to the Federal Bar Association 2008”. The meeting will also include the FBA Annual Meeting and a discussion of amendments to the bylaws and election of new officers as well as the FBA Awards Presentation. The cost for this event will be $45. To register, please email or call Anita Garvey at Richards Layton & Finger at 651-7841 or garvey@rlf.com. Checks should be made payable to the Federal Bar Association.

For a copy of the flyer see here.

In the past month, two juries have come back from deliberations with verdicts in favor of the plaintiff patent-holder. On June 13, 2008, in the Elan Pharmaceuticals Inc. v. Abraxis Bioscience Inc. case, the jury found that Abraxis's Abraxane breast cancer drug infringed two of Elan's patents and that these patents were valid and enforceable. The jury did not find willful infringement. Elan was awarded $55,230,000 in damages based on a 6% reasonable royalty rate for an approximately 3 1/2 year period.

See a copy of the verdict form here.

On July 1, 2008, in the Linear Technology Corporation v. Monolithic Power Systems, Inc. case, the jury again came back with a verdict for the plaintiff. In this case involving semiconductor technology, the jury found that the defendant infringed the plaintiff's patent and that the patent was valid. The parties had previously stipulated to nominal damages in the event that the jury found infringement.

See a copy of the verdict form here.

The question that arises is whether these verdicts are further examples that the District of Delaware is a "plaintiff/patent holder-friendly" forum or whether there is no clear trend in verdicts in this district. Keep watching for a future post analyzing the trend in jury verdicts in this district...

Our fellow associate, Sara Beth Reyburn attended the Delaware Bar Association Intellectual Property Section's annual meeting last night and has written the following guest post for the Delaware IP Law Blog:

The Honorable Leonard P. Stark shared some "General Thoughts from the Bench" at last night’s Delaware State Bar Association Intellectual Property Section’s annual meeting. Judge Stark shared tips on the practices and procedures he has developed since being appointed to fill the District of Delaware’s newly created second Magistrate position last August.

Judge Stark also cited statistics that show why he is honored to be a part of the district’s "tremendously experienced court". For example, according to Judge Stark’s research, the three District Judges and two Magistrate Judges have served on the federal bench for a collective 69 years and have written close to 3,000 opinions since 2001. The three District Judges have an average caseload of 500 cases each (approximately 90 pending patent cases each). From 1995 to 2007, the time from filing the complaint to trial has generally been less than 23 months. In 2007, 17 (nearly 20%) of the 94 patent cases tried nationwide were in the District of Delaware.

Judge Stark said he has received generous mentoring from his colleague Magistrate Judge Mary Pat Thynge, who is highly respected for her mediation skills. Judge Stark’s research indicated that Judge Thynge has mediated more than 1,150 cases, with an 80% settlement-success rate (including 187 of 272 patent cases). Judge Stark said he has been involved in 33 mediations and estimates his settlement-success rate at around 60%.

Author: Sara Beth Reyburn (sreyburn@ycst.com)

Sara Beth is an associate in Young Conaway's intellectual property, corporate, and litigation and trial practice sections andhas worked on cases involving a variety of intellectual property, corporate, and commercial issues, including patent litigation, trademark and tradename matters, and internet domain name disputes under the ICANN Uniform Domain Name Dispute Resolution Policy. Sara Beth originally joined the firm in 2001 and, after pursuing a writing career for a brief period, returned to the firm in 2006. Sara Beth has assisted on pro bono cases for the Federal Civil Panel of the United States District Court for the District of Delaware. She also volunteers with her hometown's local historical commission.

This morning's edition of IP Law360 (subscription) features an informative article on judges' pet peeves in patent litigation. Featured in the piece are two D. Del. judges: Chief Judge Sleet and Judge Farnan.

Of note are the judges' comments on summary judgment motions and the use of experts. On the issue of summary judgment, Chief Judge Sleet noted that:

Generally in these cases, both parties have experts who are ready, willing, and able to come to court and dispute the facts. It can be a significant waste of time and money to bring a summary judgment motion.

Judge Farnan agreed: "The problem is, if I'm a lawyer for a generic and I'm attacking a patent and I think it is obvious because of a combination of two prior pharmaceutical products, there's almost always going to be a dispute of facts."

On the topic of experts, Judge Farnan cautioned litigants against expert overkill:

I pretty much let [litigants] try the case they want, but I talk to them in the pretrial conference about the value [experts] offer. I have to write an opinion, and they want that opinion yesterday. So I tell them, 'the more you put into that trial record, the more I have to consider and address.'

Patent litigation is an aggressive, competitive field of law. The judges' comments today add valuable perspective - that of the decision maker - to how best to champion the causes of our clients.

Last week the Delaware IP Law Blog said goodbye to one of its co-founders, Chad Stover. Chad has left to pursue opportunities at another firm. We wish him the best in his new (still IP-focused) endeavors. We also thank him for his dedication and hard work over the past several years in getting the Delaware IP Law Blog to where it is today.

With all the talk of the economy's woes and the renewed prospect of substantial patent reform, many commentators predict bleak times ahead for IP litigators. Amid this sea of gloom, it's good to know that Delaware, home to over half the country's Fortune 500 companies and an experienced judiciary accustomed to hearing those firm's disputes, remains one of the leading patent jurisdictions in the country.

In 2007, IP plaintiffs filed 181 cases, 30 more than in 2006. These 2007 IP cases (patent, trademark, and copyright) filled nearly 20 percent of the District of Delaware's entire civil docket. To put the number of IP cases our judges handled in perspective, consider that in all of last year, the Court received only 46 non-IP tort complaints. Of all civil categories, only prisoner petitions exceeded IP filings, and not by much: 202 to 181.

By comparison, the Eastern District of Texas's 338 IP cases filed in the twelve-month period ending March 2007 (the latest stats available) represented 11 percent of its civil docket. The 144 IP cases filed in the Eastern District of Virginia in the same period comprised only 4 percent of that Court's civil filings.

Coupled with a low reversal rate, Delaware is indeed a good place to be. While the "rocket dockets" shift in and out of favor (see IP Law 360's recent take on this development), Delaware will continue business as usual.

On February 1, 2008, Mary Pat Thynge was reappointed as a full-time magistrate judge for the District Court of the District of Delaware. The order states that her new eight-year term will begin on June 17. Until last August, Magistrate Thynge was the district's only magistrate and many patent litigators will know her for her reputation in successfully mediating patent cases. Last August, she was joined by Magistrate Leonard P. Stark

See a copy of the order here: Magistrate Thynge Reappointment Order

Of note, our colleague, Monté T. Squire of Young Conaway Stargatt & Taylor was appointed to the Merit Selection Panel which was charged with reviewing the Magistrate's prior service, receiving and reviewing comments from the Bar and public and making a recommendation to the Court regarding the Magistrate's reappointment.

For a copy of Mr. Squire's biography

The White House announced last Tuesday it has nominated U.S. Attorney Colm F. Connolly to fill the vacant judicial position in the District Court for the District of Delaware. The position was left vacant when former district court judge Kent A. Jordan was elevated to a position on the Third Circuit Court of Appeals. Judge Jordan was confirmed to the Third Circuit on December 8, 2006. The nomination of Colm Connolly will now proceed to the U.S. Senate for confirmation.

The District of Delaware is among the least reversed jurisdictions on claim construction rulings, according to a study conducted by David Schwartz, a professor at the John Marshall Law School in Chicago. Among the top five patent jurisdictions nationwide, Delaware (No. 4) had the lowest reversal rate: only 22.2 percent of the district's Markman decisions are overturned.

Among the top fourteen jurisdictions, only the Western District of Wisconsin, with 232 patent filings in the decade 1995-2005, had a lower reversal rate — 21.1 percent. But considering Delaware's 1112 patent lawsuits in the same time period, Delaware's reversal rate, at least according to this survey, is the lowest in the country among high-filing patent jurisdictions.

Read the study, published by Patently-O, here.

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.

Get a copy of the order here.

The order states as part of the reasons for this change the fact that the vacancy has existed for over one year and it appears that it will continue for some time.

For a copy of the newly revised Local Rules, click here Many thanks to Judge Robinson for leading the revision effort.

The Delaware Chapter of the Federal Bar Association held its annual meeting yesterday. The highlight of the meeting was the ceremonial passing of the gavel from current Chief Judge Sue Robinson to new Chief Judge Gregory Sleet. The formal transfer of power will take place on July 1st. Chief Judge Sleet will become the first African-American chief judge in Delaware's history. For an article on the festivities, click here.

In addition to the installation of Chief Judge Sleet, new officers for the FBA were elected, including James Parrett as President, Anne Gaza as VP, Paul Crawford as Treasurer, and our own Karen Keller as Secretary.

Also of note, Leonard Stark, soon to be the new federal Magistrate Judge for the District of Delaware, was on hand and was introduced to the room. Here is a little background on our new magistrate-elect. On a personal note, I am glad to see Mr. Stark is a fellow Blue Hen!

Last Friday, in conjunction with the Delaware chapter of the Federal Bar Association, the judges of the District of Delaware hosted a wide-ranging and candid CLE on the role of Delaware counsel in federal litigation. During the program, the first of many to come on Delaware practice, Chief Judge Robinson, Judge Farnan, and Judge Sleet each commented on their views from the bench: on judging, on patents, and on the roles both Delaware and pro hac vice counsel are expected to fulfill.

The discussion ranged from the procedural - the ramifications of late filing, the scope of the meet and confer requirement - to the strategic - how to construct an effective summary judgment appendix, the judges' approaches to discovery disputes and the corresponding use of special masters, and communicating with chambers on emergency matters. The discussion also moved to the imperative - what not to do in your case. And, when the conversation turned to ways that practitioners could keep up to date on the judges' preferred practices, the Delaware IP Law Blog was mentioned as a possible medium.

Thanks to the judges, John Shaw, Steve Balick, and the Federal Bar Association for both organizing this invaluable program, and for supporting the litigants that appear in this district.

To find out more about the work of the Federal Bar Association and to obtain a membership application, click here. As Judge Farnan emphasized, all members of the Delaware chapter of the FBA are entitled to attend the upcoming district court programs for free.

Just a reminder that the Federal Bar Association's Delaware Chapter is hosting a CLE on The Role of Local Counsel this Friday, May 18th, from 2-5 at the federal courthouse. Chief Judge Robinson and soon-to-be Chief Judge Sleet will be panelists, as well as Clerk of Court Dr. Dalleo, Steve Balick from Ashby & Geddes, and FBA President John Shaw from our office.

The course has been approved for 2.5 hours of credit, including 2.0 hours of ethics credit.

Hope to see you there!

The Supreme Court handed down its much anticipated decision in KSR Int'l Co. v. Teleflex Inc. yesterday, striking a blow to the Federal Circuit's so-called "teaching, suggestion, or motivation" (TSM) test for obviousness. The Court rejected a rigid formulation of obviousness, holding that "neither the particular motivation nor the avowed purpose of the patentee controls[;] [w]hat matters is the objective reach of the claim." With the subjective TSM test set aside, at least in name, how will KSR affect the District of Delaware?

A look at this district's recent obviousness jurisprudence indicates that, even when applying TSM, objective standards have always controlled.

Within the past several weeks, Chief Judge Robinson issued an opinion denying a jmol motion that sought, on obviousness grounds, to overturn a jury's finding. The Court rejected that assertion, citing testimony that the relevant scientific "community" did not believe the patentee's innovation was feasible. Advanced Cardiovascular Sys. v. Medtronic Vascular, Inc., 98-80-SLR (D. Del. March 29, 2007); see also Boston Sci. Scimed, Inc. v. Cordis Corp., 03-283-SLR (D. Del. June 16, 2006) (Robinson, C.J.) ("The objective evidence of nonobviousness . . . should when present always be considered as an integral part of the analysis.").

Judge Farnan has similarly relied heavily on objective standards when assessing TSM. In a recent decision, the Court rejected a claim of obviousness: "[The expert] failed to demonstrate any motivation for one skilled in the art to combine the references to which he referred, and the Court is persuaded that the ability of one skilled in the art to combine those references would have required undue experimentation." Forest Labs. Inc. v. Ivax Pharms. Inc., 03-891-JJF (D. Del. July 13, 2006) (Farnan, J.)

Perhaps Judge Sleet anticipated best the Supreme Court's emphasis that primary considerations of obviousness extend beyond the elements of TSM:

"Section 103 precludes [ ] hindsight discounting of the value of new combinations by requiring assessment of the invention as a whole. This court has provided further assurance of an "as a whole" assessment of the invention under § 103 by requiring a showing that an artisan of ordinary skill in the art at the time of invention, confronted by the same problems as the inventor and with no knowledge of the claimed invention, would select the various elements from the prior art and combine them in the claimed manner. In other words, the examiner or court must show some suggestion or motivation, before the invention itself, to make the new combination."

Leapfrog Enters. v. Fisher-Price, Inc., 03-927-GMS (D. Del. March 30, 2006) (Sleet, J. (finding obviousness based on the "hypothetical" inventor standard).

Although in each instance the Court applied TSM, its language indicates that the test has always been only one means to the broader end of the invalidity analysis.

To download a copy of the new proposed Rules, <%media(20070410-PublicNotice-LocalRules_040207.pdf|click here)%>.

Chief Judge Sue L. Robinson today announced a new discovery dispute procedure. The Court's form patent scheduling order now includes a provision for designating two in-person discovery status conferences in advance. With these fixed dates in place, the Court will no longer allow the parties to file, without express consent by the Court, any motions to compel or motions for protective order. More pressing disputes that arise during depositions or that involve the scope of a protective order, however, may still be resolved via telephone conference with the Court.

Judge Farnan has instituted a new policy, effective immediately, for non-dispositive motions that will affect all pending patent cases. The policy, which sets an in-court schedule for motion practice beginning early next year, supersedes all language to the contrary on previously filed scheduling orders. The first motion day, at which each party will be limited to twenty minutes of oral argument, will be February 2, 2007.

In light of J. Jordan's recent confirmation to the Third Circuit, the District Court, today, posted a new standing order on its website reassigning all civil cases, except for bankruptcy cases and proceedings and habeas corpus petitions, to Magistrate Judge Mary Pat Thynge through pretrial proceedings. All cases previously assigned to J. Jordan should now use *** in place of "KAJ" in their civil action number.

By a vote of 91-0 in the U.S. Senate, Judge Kent Jordan was confirmed today to his new post as a Judge on the Third Circuit Court of Appeals. He is expected to start his duties as Circuit Judge very shortly. Stay tuned for updates on when Judge Jordan will assume his new duties and how he will hand off pending matters.

The Senate adjourned for its mid-term election break without voting to confirm United States District Judge Kent A. Jordan's nomination to the Third Circuit Court of Appeals. It is not clear when a vote by the full Senate can be expected, although the nomination appears on the Senate Executive Calendar for November 9, 2006. The Senate reconvenes on November 9, 2006 for the introduction of bills.