Intellectual Property – Miscellaneous

February 22, 2011

Publication| Intellectual Property

Magistrate Judge Thynge Allows Plaintiff’s Trial Counsel to Participate in Amending Plaintiff’s Claims on Reexamination
In Xerox Corp. v. Google, Inc., C.A. No. 10-136-LPS (D. Del. Sept. 8, 2010), Magistrate Judge Thynge adopted Plaintiff’s proposed language for a permanent protective order and held that Plaintiff’s trial counsel, who had previous exposure to Defendants’ confidential information, could advise Plaintiff on amending its claims on reexamination. Judge Thynge explained that whether an unacceptable opportunity for inadvertent disclosure exists must be determined on a counsel-by-counsel basis and should turn on the extent to which counsel is involved in competitive decision making with its client. Although Judge Thynge acknowledged the existence of a risk that Defendants’ confidential information could be competitively misused during reexamination, Judge Thynge did not consider that risk unacceptable. Judge Thynge stated that Defendants’ confidential information would be irrelevant during reexamination and reasoned that Plaintiff would seek to preserve the broadest possible reading of its claim regardless of any confidential information obtained from Defendants. Judge Thynge also noted that, even where a risk of inadvertent disclosure of confidential information exists, the Court must balance that risk against denying a party the counsel of its choice. Judge Thynge acknowledged that Plaintiff had a strong interest in choosing its own counsel in this complex patent dispute and reasoned that the risk of misuse of Defendants’ confidential information was significantly outweighed by the potential harm in denying Plaintiff knowledgeable counsel.

Judge Stark Denies Defendant’s Motion to Strike Plaintiff’s Rebuttal Report on Invalidity
In Stored Value Solutions, Inc. v. Card Activation Techs., Inc., C.A. No. 09-495-LPS (D. Del. Sept. 27, 2010), Judge Stark denied Defendant’s motion to strike Plaintiff’s rebuttal report on the issue of invalidity because the rebuttal report was critical to the issue of the validity of the patent-in-suit. Defendant argued that the rebuttal report contained new opinions and additional citations that were not disclosed in Plaintiff’s expert’s original report. The Court noted that the exclusion of critical evidence in a patent case is an extreme sanction that is not normally imposed absent a showing of willful deception or flagrant disregard of a court order by the proponent of the evidence. Although there were new authorities cited in the rebuttal report, the Court agreed with Plaintiff that the specifics of the response by Plaintiff’s rebuttal report to Defendant’s expert’s critique of Plaintiff’s original report cannot be anticipated with precision prior to receipt of Defendant’s expert’s critiquing report. Therefore, Plaintiff’s expert could not be expected to present alternate invalidity theories that turn on Defendant’s expert’s opinions before they are presented. Accordingly, Judge Stark found that the exclusion of the rebuttal report was not justified, as there was no finding of willful deception or flagrant disregard of the Court’s scheduling order, and denied Defendant’s motion to strike the rebuttal report. Nonetheless, Judge Stark found that Plaintiff’s silence in informing Defendant of its intention to produce another report on invalidity was prejudicial to Defendant, and ordered the parties to propose and submit an amended scheduling order.

Magistrate Judge Thynge Denies Defendants’ Motion to Bifurcate Patent Misuse from Patent Damages
In Masimo Corp. v. Philips Elec. N. Am. Corp. et al., C.A. No. 09-80-LPS-MPT (D. Del. Oct. 6, 2010), Magistrate Judge Thynge denied Defendants’ motion to bifurcate and stay discovery on patent damages and held that Defendants had not demonstrated a high probability that their defenses would prevail. In denying Defendants’ motion, Judge Thynge considered: (1) promotion of economy and preservation of time and resources, (2) prevention of prejudice, and (3) juror comprehension. First, Judge Thynge stated that bifurcation would not conserve resources because Defendants had not demonstrated a high probability that their defenses were more likely to succeed than Plaintiff’s claims, and also stated that bifurcation would require numerous duplicative activities, including the education of a second jury. Second, Judge Thynge reasoned that prejudice would result because a jury would listen to evidence regarding patent enforcement and anticompetitive behavior and then determine an award without any safeguard to ensure that each award had been calculated based on its own unique facts. Finally, Judge Thynge stated that bifurcation would require jurors to separate antitrust lost profits from infringement lost profits and noted that bifurcation would unnecessarily burden the jury.

Judge Stark Rules on Several Motions
In ICU Medical, Inc. v. RyMed Technologies, Inc., C.A. No. 07-468-LPS (D. Del. Nov. 23, 2010), Judge Stark ruled on the following motions: (1) a motion for judgment on the pleadings or for partial summary judgment, (2) eight motions in limine, (3) a motion to exclude expert testimony, (4) a motion to exclude Section 282 notice, and (5) a motion to preclude the assertion of a prosecution history estoppel defense. The Court denied Plaintiff’s motion for judgment on the pleadings or for partial summary judgment with respect to Defendant’s inequitable conduct defense, holding that Plaintiff had failed to show either that it is entitled to judgment on the pleadings or that there is no genuine dispute of material fact, and a trial will be necessary to determine the relevant issues.

On the motions in limine, the Court denied Plaintiff’s motion to exclude evidence, arguments, and claims from its prior patent litigation to the extent the motion seeks to exclude the prior claim construction rulings on the same claim terms that are involved in this present case. The Court also denied Plaintiff’s motion to exclude Defendant’s inventorship claims, as well as Defendant’s motion to exclude Plaintiff from introducing new documents. The Court granted Defendant’s motion to exclude evidence relating to a separate Lanham Act action and motion to exclude evidence of prior incidents of copying to support allegations of copying in the instant case. The Court granted Plaintiff’s motion to exclude the testimony of one of Defendant’s rebuttal experts because it found that the expert’s testimony was not necessary to resolve the issue in question and that the minimal relevance of the expert’s testimony was greatly outweighed by its prejudicial effect on the jury. The Court denied Plaintiff’s motion to strike Defendant’s Section 282 Notice because the Court reasoned that Defendant will not be permitted to use the newly discovered twelve prior art references as a basis for invalidating the patent, and therefore Plaintiff will not be prejudiced in any manner sought to be prevented by Section 282. The Court denied Plaintiff’s motion to preclude the assertion of a prosecution history estoppel defense on the grounds that Defendant’s defense is untimely. The Court reasoned that the original scheduling order had been vacated and the case proceeded in a different manner than was anticipated in that earlier order.

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