In Forest Laboratories, Inc., et al. v. Teva Pharmaceuticals USA, Inc., et al., C.A. No. 14-121-LPS, C.A. No. 14-200-LPS, C.A. No. 14-686-LPS (D. Del. Feb. 9, 2016), Chief Judge Leonard P. Stark recently issued in limine rulings in advance of the pretrial conference for an upcoming ANDA bench trial. Defendants requested Judge Stark exclude one of Plaintiffs’ witnesses due to late identification as a trial witness. Judge Stark denied the request but permitted Defendants a two-hour deposition of the witness “to mitigate any unfair surprise.” Id. at 2. Judge Stark granted Plaintiffs’ request to exclude a new non-infringement theory disclosed by Defendants on January 26, 2016. Id. Judge Stark disagreed with Defendants that the late disclosure “was justified as a response to arguments in an expert report filed . . . more than two months before Defendants disclosed their new theory, given the proximity to trial.” Id.
In a recent Report and Recommendation, Magistrate Judge Christopher J. Burke considered defendants’ motions under FRCP 12(b)(6) and 12(c), which argued that all claims of plaintiff’s U.S. Patent No. 8,271,974 (the “’974 patent”) are directed to non-patent eligible subject matter under 35 U.S.C. § 101. Kaavo Inc. v. Cognizant Technology Solutions Corp., C.A. Nos 14-1192, 14-1193-LPS-CJB (D. Del. Feb. 5, 2016). The ’974 patent is entitled “Cloud Computing Lifecycle Management for N-tier Applications,” and according to its Abstract, relates to “[m]ethods, devices, and systems for management of a cloud computing environment for use by a software application.” Id. at 2.
Judge Burke first examined independent claim 1 of the ’974 patent, and recommend that defendants’ motions be granted with respect to that claim. Under the first step of Alice, Judge Burke concluded that claim 1 was directed to the abstract idea of “setting up and managing a cloud computing environment,” which Judge Burke found has “no particular concrete or tangible form” and is “devoid of a concrete or tangible application.” Id. at 13. Judge Burke also concluded that claim 1 lacked an inventive concept under the second step of Alice, finding that “claim 1 lacks the requisite element or combination of elements that would be sufficient to ensure that the claim amounts to something more than the abstract idea of ‘setting up and managing a cloud computing environment[.]’” Id. at 18. Judge Burke explained that claim 1, “on its face, does not appear to specify any meaningful, particularized technological or procedural limitations on that idea.” Id. Stated differently, “the words of claim 1 appear to contain almost ‘no restriction on how’ the claim’s six ‘determining,’ ‘sending’ or ‘receiving’ steps are to be accomplished; the claim simply appears to ‘describe the [sought-after] effect or result’ of the steps.” Id.
Judge Burke found that claim 1 adequately represented the remaining independent claims at issue, and concluded that those remaining independent claims were similarly directed to patent-ineligible subject matter. Id. at 32. Accordingly, Judge Burke recommended that defendants’ motions regarding the remaining independent claims be granted.
With one exception, Judge Burke recommended that defendants’ motions regarding the dependent claims at issue be denied without prejudice. Judge Burke reasoned that “[t]he Court is not prepared to take the significant step of finding such claims ineligible when they are addressed in such a cursory manner by the movant in the first instance.” Id.
In a recent Order, Judge Richard G. Andrews denied in part defendant’s motion to redact a hearing transcript. M2M Solutions LLC v. Motorola Solutions Inc., C.A. No. 12-33-RGA (D. Del. Feb. 2, 2016). Judge Andrews granted the motion with respect to portions of the transcript regarding profits, third party license agreement royalties, and the index, but denied the remainder of the motion. Judge Andrews was unpersuaded that the “disclosure of the other information will work any clearly defined and serious injury to [defendant].”
Judge Andrews’ decision was guided by Mosaid Tech Inc. v. LSI Corp., 878 F. Supp. 2d 503 (D. Del. 2012) and the factors set forth in Pansy v. Borough of Stroudsburg, 23 F.3d 772 (3d Cir. 1994). Judge Andrews explained as follows:
Simply because the parties have designated the information as confidential, highly confidential, confidential – attorneys’ eyes only, etc., under a protective order is irrelevant to the present issue, that is, whether the information should be redacted from a judicial transcript. There is not much public interest in the information that is exchanged in discovery. Once, however, it is disclosed in a judicial proceedings, it is in the public interest to be able to understand the proceedings before a judge, and redaction of the transcript hinders that public interest. Nevertheless, there are things that might be appropriately sealed in a public proceeding, such as the pricing terms in license agreements, some other non-public financial information, trade secrets, and other proprietary technology. Information in a transcript may hint at some of these things without actually threatening any “clearly defined and serious injury.” Things that typically weigh against the necessity of sealing include that the information is old, or general, or already in the public record, and was relevant to the judicial proceeding. Further, if there is a need for redactions, the proposed redactions should be as narrow as possible.
Judge Andrews also noted that defendant had not “submitted an affidavit/declaration in support of its motion.”
On May 19 and 20, 2016 the District of Delaware and the Delaware Chapter of the Federal Bar Association will co-host the District’s Second Bench and Bar Conference. This year’s Bench and Bar Conference will be held at the Chase Center on the Riverfront, located in downtown Wilmington, DE. Lodging for out-of-town guests will be reserved at a discounted rate at the Westin Hotel, which is adjacent to the Chase Center. The Bench and Bar Conference will include plenary CLE sessions, as well as breakout CLE sessions in the areas of Intellectual Property, Bankruptcy, and Criminal Law.
Additional information will be forthcoming over the next few months.
Judge Andrews recently denied a patent infringement Plaintiff’s opposed motion for a continuance of trial, suggested that his forthcoming pre-trial rulings would not affect the trial sufficiently to justify a continuance, and encouraged the parties to work cooperatively to resolve scheduling issues. As His Honor wrote, “[t]rial is scheduled for April 11, 2016, more than two months from now. It has been on the schedule, without objection, since March 17, 2015. . . . Thus, whatever logistical difficulties Plaintiff’s counsel has, they have existed for more than ten months, and it is too late to raise them now. I also note that lead counsel’s firm’s website states that the firm has ‘nearly 200 attorneys in our IP Department.’ If help is needed, resources appear to be available.” M2M Solutions LLC v. Enfora Inc., et al., C.A. No. 12-32-RGA, Memo. Or. at 1 (D. Del. Feb. 3, 2016).
Judge Andrews continued, “I agree with Defendants that [an expert’s] work schedule does not take precedence over the trial date. I also note that Plaintiff does not seem to be trying very hard to come up with an alternative. For example, perhaps she could give a trial deposition while she’s here for [a related] case. . . . In addition, I note that inventor testimony is optional. I’m sure counsel can think of some other alternatives to postponing the trial.” Id. at 2.
His Honor also noted: “I would expect counsel will be able to make informed decisions about what is likely [regarding pretrial issues], and, in any event, assume that I will decide the summary judgment issues in such a way that we will have a trial on infringement and invalidity. Daubert issues are likely to be resolved similarly to those in, the [related] case, which should be forthcoming shortly. I do not expect to schedule any hearings or arguments on the remaining issues in this case. . . . [And] the parties should meet and confer . . . and decide on a schedule to exchange supplemental damages reports.” Id. at 1-2.
Chief Judge Stark recently issued a claim construction order involving both alleged means-plus-function claims and a limiting preamble. With regard to the term “cavity forming structure,” Judge Stark found that “the claim language is sufficiently definite and provides sufficient structure for the basic function of ‘forming a cavity’” and that “Defendants have not put forth any expert testimony or other evidence to support their contrary view.” Accordingly, Judge Stark found the term should not be construed under § 112 ¶ 6. Orthopoenix LLC v. Dfine Inc., et al., C.A. No. 13-1003-LPS, Memo. Or. at 2 (D. Del. Feb. 2, 2016). Judge Stark also considered whether the claim preamble “a device for insertion into a vertebral body to apply a force” was limiting and determined that it was because it “provide[s] the antecedent basis for at least the ‘for capable of compacting cancellous bone and moving fractured cortical bone’ referred to in the claim.” Id. at 7.
Magistrate Judge Christopher J. Burke recently resolved a protective order dispute between the parties as to whether plaintiff’s lead counsel could participate in “any post-grant proceedings in which they would be defending the patents-in-suit.” Toshiba Samsung Storage Technology Korea Corporation v. LG Electronics, Inc., et al., C.A. No. 15-691-LPS-CJB (D. Del. Feb. 4, 2016). Judge Burke agreed with defendant that because counsel overlapped between the litigation and the inter partes review proceedings, there was “some risk” that counsel “may ‘inadvertently rely on or be influenced by information they may learn as trial counsel during the course of litigation’ were they, for example, to later participate in the process of ‘strategically amending or surrendering claim scope’ during the IPR proceedings.” Id. at 3-4. But, such risk is “less pronounced” as compared to prosecution of a new patent. Id. at 4. On the other hand, plaintiff would be prejudiced because they have played “substantial roles” in litigation for plaintiff and “have already been representing [plaintiff] in IPR proceedings for approximately 6 months.” Id. at 5. Therefore, Judge Burke concluded that LG did not demonstrate that the potential risk of inadvertent disclosure would outweigh the harm to plaintiff to deny plaintiff the counsel of its choice. Id.
Judge Richard G. Andrews recently granted defendant Personalized Media Communication, LLC’s motion to dismiss for lack of personal jurisdiction. Funai Electric Co., Ltd. v. Personalized Media Communication, LLC, C.A. No. 15-558-RGA (D. Del. Jan. 29, 2016). Judge Andrews also vacated his prior order demanding defendant’s counsel show cause why their pro hac vice status should not be revoked for saving defendant’s better argument for its reply brief in support of its motion. In its motion, defendant argued that all of its operations “are conducted in either Texas or Virginia”; and that it has little to no connection to Delaware:
PMC does not regularly conduct business in Delaware. It is not registered to do business in Delaware, nor does it have a registered agent authorized for receipt of service in Delaware. PMC has no offices, employees, agents, real estate, or other assets in the state, nor does it own, operate, or manage any entity located or doing business in Delaware. In addition, PMC does not manufacture or sell any products in Delaware or to Delaware residents.
Id. at 2. Funai argued that personal jurisdiction was proper because defendant consented to jurisdiction, having “previously filed two actions in this court” involving patents that claim priority to the same patent applications as the patents-in-suit. Id. at 2-3. Judge Andrews disagreed because defendant’s prior suits were not brought against Funai. Id. at 5. In short, there was no “logical relationship” between the parties. Id. at 4 (“Under Delaware law, a party can be considered to have consented to jurisdiction by ‘instituting another, related suit’ that has some ‘logical relationship’ to the present suit.” (quoting Foster Wheeler Energy Corp. v. Metallgesellschaft AG, 1993 WL 669447, at *1, 4 (D. Del. Jan. 4, 1993)).
Funai also argued that specific jurisdiction was proper because defendant’s filing patent infringement actions in Delaware constitute transacting business in Delaware, and that the claims at issue here “arise out of” those earlier actions. Id. at 5-6. Again, Judge Andrews disagreed. Defendant’s prior actions “involved different parties and different patents” and a declaratory judgment plaintiff’s action only arises out of defendant’s prior filing of suit if those prior actions were filed to enforce the same patents at issue. Id. at 6-7.
Judge Sue L. Robinson recently found that a plaintiff’s complaint did not sufficiently demonstrate that the exercise of personal jurisdiction over Utah defendants would comport with Delaware’s long-arm statute or the Due Process Clause. The Court, however, did not grant the defendants’ motion to dismiss, but instead ordered jurisdictional discovery and left open the door to a renewed motion to dismiss following the completion of that discovery. DNA Genotek Inc. v. Spectrum DNA, et al., Civ. No. 15-661-SLR (D. Del. Feb. 4, 2016). The defendants were Utah entities, with their principal places of business in Utah, and were “leading provider[s] of products for biological sample collection, such as saliva collection devices . . . for DNA testing.” The defendants operated a website accessible in Delaware, but did not engage in any e-commerce through their website. Rather, defendants sold their DNA testing devices to Ancestry.com, which itself sold the devices nationwide, including in Delaware.
Judge Robinson explained that the “dual jurisdiction” or “stream of commerce” theory could be used to establish long-arm jurisdiction under 10 Del. C. § 3104(c)(1) or (c)(4), but added that the touchstone of the theory is “intent and purpose to serve the Delaware market.” In reviewing the facts as argued in the briefing, the Court ultimately found: “there is no indication of record that Spectrum has shipped or sold any of the accused products in Delaware, or that Spectrum has any control over what Ancestry does with the accused product once it is delivered to Ancestry.” The Court added, “[s]imply put, aside from delivering the accused product to Ancestry (outside Delaware) who, in turn, is responsible for placing the accused product into the stream of commerce, there is no persuasive evidence of ‘[a]dditional conduct . . . [to] indicate an intent or purpose [on the part of Spectrum] to serve the market’ in Delaware.” Id. at 8 (quoting Asahi Metal Indus. Co., Ltd. v. Superior Court of Calif., Solano Cty., 480 U.S. 102, 112 (1987)). Instead of dismissing the action, however, Judge Robinson ordered jurisdictional discovery on the defendants’ marketing and sales activities and the business relationship with Ancestry.com, and left open the door to a renewed motion under Rule 12(b)(2).
Chief Magistrate Judge Mary Pat Thynge recently issued a Report and Recommendation regarding defendant Amazon.com, Inc.’s motion for summary judgment of non-infringement. Hand Held Products, Inc. v. Amazon.com, Inc., et al., C.A. No. 12-768-RGA-MPT (D. Del. Jan. 21, 2016). The accused products at issue are Amazon mobile apps used by consumers to find and purchase Amazon products from their smartphones. Id. at 5. “One way the Amazon Apps can be used to find a product on Amazon is by scanning the barcode of the product.” Id. This barcode scanning ability is the feature accused of infringing the patent-in-suit. Id. Based on the Court’s claim construction, Amazon argued that “it is undisputed that a user of the Accused Apps cannot take the requisite snapshot by pressing a shutter button, setting a timer, or in any other manner.” Id. at 8 (emphasis in original). The Court agreed. “[T]he Accused Apps provide no mechanism by which a user selects an instant in time to capture a barcode image and, therefore, the Accused Apps do not infringe the asserted claims of the [patent-in-suit].” Id. (emphasis in original).