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Judge Richard G. Andrews recently considered the motions in limine included in the pretrial order filed in advance of trial.  AVM Technologies LLC v. Intel Corporation, No. 15-33-RGA (D. Del. Apr. 19, 2017).  Judge Andrews granted AVM’s motion in limine to exclude references to decisions or orders from plaintiff’s prior lawsuits and reserved decision on whether to preclude the use of testimony of AVM’s expert from prior litigation, who are not experts in this case.  Judge Andrews determined that the probative value of any prior litigation evidence would be substantially outweighed by unfair prejudice.  Id. at 1-2.  Regarding the expert testimony, Judge Andrews determined that the testimony might be permissible, “with the proviso that the experts cannot be identified as being AVM’s experts in prior litigation.”  Id. at 2.  Ultimately, Judge Andrews reserved decision until he could review the proposed testimony and discuss the issue at the upcoming pretrial conference.  Id.

Judge Andrews also granted Intel’s motion in limine to exclude evidence that the circuit patented in Intel’s patent copies the asserted patent.  Id. at 4.  Judge Andrews noted that although AVM argued “that the ‘941 patent and related testimony show that Intel ‘knowingly employed delay and simultaneous activation’ in the accused circuits[,]” AVM did not actually allege that the circuit in question is accused of infringement or that its experts have opinions regarding the circuit.  Id.

AVM Technologies LLC v. Intel Corporation, No. 15-33-RGA

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Judge Andrews recently granted a motion to dismiss for lack of patentable subject matter directed to a patent that included the following representative claim:

1. A method of determining a recovery state in a data stream, comprising:
receiving a compressed data stream;
detecting a compression block boundary in the compressed data stream;
detecting an archive block boundary in the compressed data stream;
detecting a file boundary in the compressed data stream; and
in response to the detection of the compression block boundary, the archive block boundary, and the file boundary, saving a recovery state for the compressed data stream;
wherein the recovery state includes a position of the compression block boundary, and a position of the file boundary.

Judge Andrews found this patent was “directed to the abstract idea of receiving, detecting, and storing information” because “as the Federal Circuit has held numerous times, collecting information is ‘within the realm of abstract ideas’” and “[t]his is precisely the kind of claim that the Federal Circuit has found to be an abstract idea.” D&M Holdings Inc., et al. v. Sonos, Inc., C.A. No. 16-141-RGA, Memo. Op. at 6-9 (D. Del. Apr. 18, 2017). Judge Andrews also found a lack of specificity or inventive concept in the claims, leading to his decision to grant the Section 101 motion.

On another patent-in-suit, however, Judge Andrews found that the patent was not ineligible and “agree[d] with Plaintiffs that Defendant has oversimplified and ignored specific limitations in this claim. This claim is more specific than claim 1 of the ’435 patent and calls for more than simply receiving, manipulating, and storing data.” Id. at 12-14.

On a third patent-in-suit, Judge Andrews “decline[d] to opine on” patentability because “construction of at least some of the disputed terms could impact the § 101 analysis, particularly as there is a dispute over whether the structure in several of the means-plus-function terms, which are found in claims that were not briefed or argued, is a specific device or merely a general purpose computer.” Id. at 14-16.

Finally, a fourth patent-in-suit was directed to an abstract idea without an inventive concept, in part because Judge Andrews “agree[d] with Defendant that this claim is directed to the automation of a process that can be (and has been) performed by humans.” Id. at 16-19. The representative claim at issue for this patent read:

18. A method for controlling a receiver having a plurality of receiver connections, the method comprising:
querying a user to select a receiver connection of the plurality of receiver connections to correspond with each encoding format of a plurality of encoding formats;
retrieving media unit data that identifies an encoding format of a playable piece of media selected to be played by the receiver, wherein the identified encoding format is one of the plurality of encoding formats;
retrieving receiver-connection data that identifies the receiver connection corresponding with the identified encoding format; and
sending to the receiver a control signal instructing the receiver to use the identified receiver connection for receiving a media signal of the selected media.

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The United States District Court for the District of Delaware announced today that the Honorable Gregory M. Sleet will become a Senior United States District Court Judge as of May 1, 2017, and intends to render substantial judicial service in that role going forward.

The Court’s official announcement regarding Judge Sleet can be viewed HERE.

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In Cloud Satchel LLC v., Inc., C.A. No. 13-941-SLR & v. Barnes & Noble, Inc., C.A. No. 13-942-SLR (D. Del. Mar. 30. 2017), Senior Judge Sue L. Robinson had previously ruled on summary judgment that the patents-in-suit were invalid under Section 101. Plaintiff moved for relief from judgment, arguing that the Court’s “decisions had been called into question by three Federal Circuit cases that issued after the Federal Circuit’s affirmance in this case” (i.e., the Federal Circuit’s Enfish, BASCOM, and Rapid Litigation decisions). Id. at 2.

The Court denied the motions, observing that controlling Third Circuit precedent has consistently held that intervening changes in the law “rarely justify relief from final judgments.” Id. at 2 (citations omitted) (emphasis in original). The Court concluded that, while Section 101 jurisprudence “has been an evolving one,” the subsequent Federal Circuit cases “simply reflect the reality that different panels may describe, interpret and/or apply existing precedent differently in light of different facts. The Federal Circuit decisions identified by plaintiff are the kind of ‘intervening developments in the law’ that result from our system of common law, and plaintiff has filed to adduce evidence that the Federal Circuit’s pronouncement of invalidity was either an extreme or unexpected hardship.”  Id. at 3.

Cloud Satchel LLC v., Inc., C.A. No. 13-941-SLR & v. Barnes & Noble, Inc., C.A. No. 13-942-SLR (D. Del. Mar. 30. 2017)


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In Impax Labs., Inc., et al. v. Lannett Holdings Inc., et al., C.A. No. 14-984-RGA, 14-999-RGA (D. Del. Mar. 29, 2017), Judge Richard G. Andrews issued a post-trial decision regarding Plaintiffs’ standing to bring suit and Defendants’ allegations of invalidity of Plaintiffs’ patents.

As to standing, Defendants argued that the “exact ownership arrangement of the patents” was not clear. Id. at 3. The Court examined a chain of ownership where the patents-in-suit were not always specifically called out as being part of various transfers. See id. at 5-6. But the Court concluded that there was “no reason to believe” there was any gap in ownership, crediting the statements of a declaration submitted by Plaintiffs post-trial and accepted by the Court (see id. at 4-5). Id. at 6. While, based on the documents at issue, it appeared possible that one of the named Plaintiffs no longer had an ownership interest in the patents, that did not impact the others’ standing to bring suit, and Defendants had only moved to dismiss “in toto for lack of standing.” Id. at 7.

As to Defendants’ anticipation and obviousness arguments, the Court found that they had not met their burden to show invalidity, and that Plaintiffs had presented evidence of secondary considerations of non-obviousness. See id. at 16-35.

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Judge Sleet recently ruled on a motion to dismiss direct and indirect infringement claims in a case involving VoIP technology.  IP Communication Solutions, LLC v. Viber Media (USA) Inc., C.A. No. 16-134-GMS (D. Del. Apr. 5, 2017).  The defendant argued that the allegations of direct infringement failed to adequately put it on notice of what it was to defend, and cited as support cases in which allegations relating to unidentified products were dismissed.  Judge Sleet disagreed with the defendant’s reliance on those cases, and explained that in those cases the alleged infringers marketed a number of products that could possibly infringe product claims.  On the contrary, here, the defendant marketed a single mobile VoIP client application supported by a server that together were alleged to perform a number of steps that would infringe method claims, so the defendant could not persuasively argue that it was not on notice of what the claims targeted simply because the claims did not specifically identify the accused instrumentality.  With respect to indirect infringement, however, Judge Sleet agreed with the defendant that the evidence relied upon (webpages showing how customers use the VoIP application to make calls) did not rise to the level of showing that the defendant “specifically instructed or directed customers to use the Viber application and corresponding server system in a manner that would infringe.”

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Judge Gregory M. Sleet recently considered defendants’ motion to stay pending inter partes review of six of the eleven patents-in-suit.  Koninklijke Philips N.V., et al. v. ASUSTek Computer Inc., et al., Nos. 15-1125-GMS, 15-1126-GMS, 15-1127-GMS, 15-1128-GMS, 15-1130-GMS, 15-1131-GMS, 15-1170-GMS (D. Del. Mar. 30, 2017).  Judge Sleet denied the motion without prejudice to renew upon institution of the petitions by the U.S. Patent and Trademark Office.  Id. at 1 n.1.

Koninklijke Philips N.V. v. ASUSTek Computer Inc., No. 15-1125-GMS

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Magistrate Judge Christopher J. Burke recently denied two co-pending motions to transfer venue to the Northern District of California. Applying the Third Circuit’s Jumara factors in considering whether all relevant factors strongly favored transfer, Judge Burke found that transfer was not warranted. Tessera, Inc., et al. v. Broadcom Corp., C.A. No. 16-379-LPS-CJB, Memo. Op. at 25-26 (D. Del. Mar. 21, 2017).

The plaintiffs’ principal place of business was in the Northern District of California, and the defendants also had significant operations in the Northern District of California, but the plaintiffs were incorporated in Delaware, weighing against transfer. Id. at 7-10. Judge Burke also explained that it was difficult to assess “where the alleged infringement has occurred” because of uncertainty as to the relevant facts and the parties’ unclear submissions on this point. Accordingly, this factor only slightly favored transfer. Id. at 11-14. The convenience of the parties, the convenience of the witnesses, the location of books and records, and practical considerations that could make the trial easy, expeditious, or inexpensive weighed slightly in favor of transfer. All other Jumara factors were neutral. Id. at 14-25.

Judge Burke concluded that “This is, as Broadcom notes, a ‘dispute between California entities.’ And in balancing the Jumara factors, the Court acknowledges that Broadcom has pointed to a number of connections between the Northern District of California and the facts or people involved in this case. This has, in tum, resulted in a greater number of Jumara factors tipping Broadcom’s way, as opposed to Plaintiffs’ way. And yet a close examination of most of the factors favoring Broadcom shows that they do not have much of a practical impact. Had Broadcom been able to make a stronger showing even as to any one of the factors that only slightly tipped in its favor, the outcome may have been different. . . . But Broadcom did not make any such showing. As a result, any inconvenience it faces in trying the case in this District does not seem pronounced. After careful review, the Court is prepared to say that the balance of convenience is in favor of Broadcom. But it cannot conclude that this balance ‘is strongly in favor of’ Broadcom.” Id. at 26.

The case also presented an interesting procedural issue. Judge Burke’s decision addressed two separate civil actions, each of which involved a motion to transfer, which the parties agreed should be resolved together. One civil action, however, was stayed pending an ITC investigation, while the other action was not stayed. As Judge Burke pointed out, the “parties to the action agree that it is proper for the Court to resolve the transfer of venue issue in [the stayed case], even while this stay is pending, and they have cited to case law in support. The Court agrees with the logic set out in the cited cases, and, as a result, will proceed to address the Motions in both cases.” Id. at 5 n.3 (citations omitted).

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In a recent Memorandum Order, Judge Sue L. Robinson granted defendant’s motion for costs. Quest Integrity USA, LLC v. Cokebusters USA, Inc., C.A. No. 14-1483-SLR (D. Del. Mar. 28, 2017). Defendant had issued a subpoena to a third party after plaintiff indicated that it did not have documents related to a particular issue. Id. at 1. Plaintiff responded to the subpoena by filing a motion to quash on the ground that the subpoena was “overbroad, asked for irrelevant materials, and placed a burden on plaintiff by having to review additional [third-party] documents.” Id. Rather than respond plaintiff, defendant moved to compel the third party. Id. Judge Robinson found that because plaintiff had no standing to file the motion to quash, defendant was entitled to costs associated with its motion to compel. Id. at 2. However, because defendant did not provide the court a basis for its costs and because plaintiff made the “reasonable decision to withdraw its motion to quash” after defendant filed its motion to compel, Judge Robinson granted defendant less than total costs it requested. Id. at 2-3.

In the same Memorandum Order, Judge Robinson granted defendant’s motion for leave to amend its affirmative defenses related to FRAND licensing. Id. at 2-4. Judge Robinson noted, however, that “[t]he court is concerned . . . about the addition of such a complex issue to an already complicated, aggressively litigated case, whether the issue of  FRAND licensing be directed to defendant’s equitable defenses to be tried to the court or its damages theories to be tried to the jury.” Id. at 3.  Accordingly, Judge Robinson ruled that “damages and defendant’s equitable defenses shall be tried separately from the liability trial.” Id. at 3-4.

Quest Integrity USA, LLC v. Cokebusters USA, Inc., C.A. No. 14-1483-SLR (D. Del. Mar. 28, 2017)

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Judge Andrews recently found the asserted claims of one asserted patent invalid for obvious-type double patenting after a four day trial on three asserted patents. Novartis Pharmaceuticals Corp. v. Breckenridge Pharmaceutical, Inc., et al., C.A. Nos. 14-1043-RGA, 14-1196-RGA, and 14-1289-RGA (D. Del. Apr. 3, 2017).  The Court found that the earlier-expiring post-URAA patent (the ‘990 patent) could serve as a double patenting reference for a later-expiring pre-URAA patent (the asserted ‘772 patent), relying on the BPIA decision in Ex Parte Pfizer, Inc. Patent Owner & Applicant, 2010 WL 532133, at *6 (Bd. Pat. App. & Interf. Feb. 12, 2010) (cited in Gilead Sciences, Inc. v. Natco Pharma Ltd., 753 F.3d 1208, 1212 (Fed. Cir. 2014)), as well as several other district court decisions.  Judge Andrews found that the defendants failed to meet their burden to invalidate the other two asserted patents, which the plaintiffs proved were infringed.

Novartis Pharma Corp. v. Breckenridge Pharma Inc., C.A. No. 14-1043-RGA (D. Del. Mar. 30, 2017)

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