How Much is Enough? – A Well-Pled Counterclaim

How specific must the allegations be in a counterclaim for inequitable conduct or affirmative defense of patent misuse to withstand a motion to strike? That was the issue recently before Judge Robinson in the matter. C.A. 06-164, Memorandum Order (D. Del. Jan. 26, 2007) (Robinson, J.). It is well-established that inequitable conduct and patent misuse

A Vacation to Europe… Deposition Testimony of Foreign Inventor

Where the inventor of the patent-in-suit is a German citizen, former employee of the plaintiff’s predecessor and assigned all rights in the invention to his former employee, can he be subject to an “American-style” deposition? As with all things legal, it depends. Or so Judge Robinson recently held in the case. C.A. 06-164, Memorandum Order

First Post-eBay Injunction Decision Issues in Delaware

In the first post-eBay injunction decision in the District of Delaware, Chief Judge Sue L. Robinson denied, without prejudice to renew, a plaintiff’s application for permanent injunctive relief. In the underlying action between loan-application companies IMX Inc. and LendingTree LLC, plaintiff IMX prevailed before a jury on its infringement claim. But considering the company’s request

Judge Robinson Denies Transfer in Dispute Involving “Spinners”

Judge Robinson refused to transfer this contract dispute from Delaware to the defendant’s home state of Kentucky. Despite the location of defendant’s witnesses in Kentucky, the Court found the action had a substantial connection to Delaware and refused to disturb the plaintiff’s choice of forum. Connections to Delaware included: 1) the plaintiff is a Delaware

Judge Sue L. Robinson: No Transfer Where You Enjoy Benefits of Being a Delaware Corporation!

In another transfer decision by the Court, Judge Robinson again stresses that transfer will not be awarded where the moving defendant is a Delaware corporation and has enjoyed the “benefits and protections” of being incorporated here. Pernod Ricard USA, LLC v. Bacardi U.S.A., Inc., C.A. No. 06-505-SLR (D. Del. Dec. 19, 2006). Defendant, Bacardi U.S.A.,

Save Those Invoices! Recent Taxation of Costs Opinion

Save those invoices: costs for using a private process server to serve summonses and subpoenas are taxable as are reasonable costs for copies of trial exhibits. On the other hand, do not expect to recover costs for deposition transcripts where they were only used to prepare witness examinations or “frivolous motions.”

“Minimal Overlap” Between Infringement and Antitrust Claims Warrants Stay Pending Appeal

The natural corollary to a patentee’s right to exclude, at least in infringement litigation, is the prohibition against monopolistic activities. Thus, when facing a claim of infringement, a competitor-turned-defendant often responds with antitrust accusations. That patent litigation often involves claims under the Sherman Act is commonplace. But assuming both these counts will be considered in

Delaware Judge Rejects “Champertous” Assignment Argument

Yesterday, Chief Judge Sue L. Robinson issued an interesting decision addressing the ability of what is alleged to be a straw plaintiff’s attempt to prosecute (and fund) an infringement action on behalf of another. The defendants KBC and others claimed that plaintiff was assigned rights to the patent-in-suit solely “to fund and pursue this suit”

Judge Sue L. Robinson: Reference Posted To FTP Site Found To Be 102(b) “Publication”

In SRI Int’l Inc. v. Internet Security Sys., Inc., C.A. No. 04-1199-SLR, Memo. Op. (D. Del. Oct. 17, 2006), Chief Judge Robinson granted defendants’ motion for summary judgment on invalidity, finding all of the claims at issue anticipated separately by two references. The more interesting of the two references was posted on an FTP (file

Sanofi-Aventis Prevails in Trademark Dispute

Chief Judge Sue Robinson ruled in favor of Sanofi-Aventis in this trademark suit and granted a permanent injunction against defendant’s use of the “Advancis” mark. Sanofi-Aventis owned federal registrations for both “Aventis” and “Sanofi-Aventis” (the “Sanofi-Aventis” combination mark was registered after the merger of Aventis and Sanofi-Synthelabo). Sanofi brought claims of trademark infringement, false designation