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Judge Richard G. Andrews recently considered Sprint’s motion for summary judgment that Comcast’s U.S. Patent No. 6,873,694 is invalid under 35 U.S.C. § 101 for lack of patentable subject matter.  Comcast IP Holdings I, LLC v. Sprint Communications Company L.P., et al., C.A. No. 12-205-RGA (D. Del. July 16, 2014).  The  only asserted claim at issue was claim 21, which claimed:

A telephony network optimization method, comprising:

receiving a request from an application to provide to the application service on a
telephony network; and

determining whether a telephony parameter associated with the request requires
acceptance of a user prompt to provide to the application access to the telephony
network.

Id. at 4.  Judge Andrews agreed with Sprint that “Claim 21 is ‘drawn to the abstract, and fundamental, idea of a conditional decision.’”  Id. at 5. Judge Andrews rejected Comcast’s argument that “‘[t]he claims do not simply recite making a conditional decision, but are narrowly directed to overcoming a specific problem of telephony networks by using telephony parameters to optimize bandwidth allocation on such networks.’”  Id.

Judge Andrews next determined whether the claim contained sufficient limitations restricting the otherwise abstract idea to a particular application.  Id. at 7.  Comcast argued that the claim contained such restrictions because claim 21 is “confin[ed] to the field of telephony.”  Id. at 8.  Judge Andrews disagreed:

Claim 21 merely covers the application of what has for a long time been conducted solely in the mind to modern, computerized, telephony networks. For instance, rather than an “application” requesting “service,” we can think of a “person” requesting a “telephone call.” The “person” makes a request through a telephone operator. The operator then looks to a “telephony parameter” associated with that request. Let us assume that the parameter is whether the call is “collect” or whether it is a standard call. Ifthe call is a standard call, the operator puts it through without a user prompt.2 I f the call is collect, the operator “determines” that the recipient will be asked to accept the charges. The operator has “determined” whether a “request” requires “acceptance of a user prompt.” The only difference is the identity of the requester. Here, the generic references to a telephony network and an application are not sufficient to render the claim patentable.

Id. at 9.

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Chief Judge Leonard P. Stark recently granted a plaintiff’s motion to strike an amended answer and counterclaim, and awarded the plaintiff costs and expenses associated with presenting the motion.  Helios Software, LLC, et al. v. Spectorsoft Corp., C.A. No. 12-081-LPS (D. Del. July 18, 2014).  As the Court explained, it had previously granted the defendant leave to file an amended answer to add a counterclaim asserting inequitable conduct.  That order allowed the defendant to file an amended answer “in substantially the form it has proposed.”  The defendant then filed an amended answer and counterclaim that was “significantly different from the Amended Answer it had proposed to the Court.”  The defendant admitted it violated the Court’s order, and asked the Court to modify that order.  As Chief Judge Stark explained:

The Court is troubled that Defendant intentionally violated the Court’s Order and then asked the Court to modify its decision instead of seeking the Court’s permission before filing its modified pleading.  Defendant could and should have reached out to the Court in the seven-day period that the Court gave Defendant to file its Amended Answer and should have sought leave to file its newly amended pleading.  Because Plaintiffs had to bear the unnecessary cost of filing this motion as a result of Defendant’s conduct, the Court will charge Defendant with Plaintiffs’ reasonable costs and expenses incurred in presenting this motion.

The Court granted the defendant leave to file an amended version of its amended answer and counterclaim, however, in a form that mostly removed the plaintiff’s highly confidential and privileged information contained in its stricken pleading.

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In a recent memorandum order, Judge Sue L. Robinson construed claim terms in U.S. Patent No. 5,612,527, entitled “Discount offer redemption system and method.”  Motivation Innovations LLC v. Ulta Salon Cosmetics & Fragrance Inc., Civ. No. 11-615-SLR (D. Del. July 22, 2014).  The following terms were construed:

  • “[A] circulation medium”
  • “[A]ssociating said identification code with data identifying items which are to be offered at a discount” / “associating said identification code means . . . with data identifying items to be offered at a discount”
  • “[A]ssociating said identification code means with the addressee of the circulation medium and with data identifying items to be offered at a discount”
  • “[A]ddressable by said identification code”
  • “[M]eans for reading said identification code provided with said circulation medium”
  • “[U]sing said code reading means to read the identification code indicia means and to create a data file”
  • “[A]ny discount corresponding to an item listed in said data is deducted from the price of the item in the tabulation”
  • “[P]roviding as part of said identification code identification indicia means on said medium for identifying the addressee of said medium”
  • “[T]he user”
  • “[U]sing each data file . . . as a means to study buying habits of the recipient of the medium”
  • “[M]eans associated with said code reading means for tabulating sales of items so that any discount corresponding to an item listed in said data is deducted from the price of the item in the tabulation”
  • “[M]eans for tabulating items”
  • “[M]eans for tabulating items and for recording the items purchased by the bearer of the circulation medium”
  • “[M]eans for calculating the at least one discount on the item offered at discount by said identification mode”

The parties agreed upon the construction of the following terms:

  • “[U]sing said means for tabulating items . . . to cause a discount to be debited against the purchased item”
  • “[T]he bearer of the circulation medium”

Finally, the Court denied the defendants’ motion to strike the plaintiff’s late asserted claim construction positions, noting that it “is ironic that defendant now seeks to prevent plaintiff from” modifying its claim construction positions when defendants’ submission “expressly stated that it ‘reserve[d] the right to modify the foregoing as discovery is ongoing, and in response to any of [p]laintiff’s proposed terms for construction or proposed constructions.”

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In a recent memorandum opinion, Judge Richard G. Andrews denied defendants’ motion for summary judgment, requesting that the court bar plaintiff’s claims in view of a license and estoppel. Comcast IP Holdings I, LLC v. Sprint Communications Co., et al., C.A. No. 12-205-RGA (D. Del. July 15, 2014). Specifically, defendants contended that they had a license to the asserted patent, either express or implied, “via a licensing agreement between Hewlett-Packard (‘HP’), the original assignee of the patent, and Lucent, the predecessor to Alcatel Lucent,” which manufacturers “many of the devices which [defendants] use[], and which [plaintiff] accuses of performing the patented methods.” Id. at 1, 3.

Judge Andrews denied defendants’ motion for summary judgment, finding that defendants failed to prove that the license at issue covered the asserted patent. Id. at 3. First, Judge Andrews found that the license did not expressly cover the asserted patent, as defendants failed to show that the patent “issued or [had] enforceable rights in any country of the world from an application filed on or before January 31, 2001,” as required by the license agreement. Id. at 3-5. In reaching that determination, Judge Andrews explained that the phrase “issued from” was not intended to include divisional or continuation applications, and that the “enforceable rights in any country” clause referred to “patents which are issued not in any country, but by a transnational body such as the European Patent Office.” Id. at 4-5.

Judge Andrews next found that an implied license, which arises under legal estoppel, did not cover the asserted patent. Specifically, Judge Andrews explained the license agreement “contains a ‘clear indication’ not to extend the license to continuation patents via an implied license.” Id. at 8. Judge Andrews thus concluded that because “the license does not cover continuation patents, [it] therefore does not estop [plaintiff] from asserting the [asserted] patent against [defendants].” Id.

Judge Andrews also addressed whether it would be appropriate to grant summary judgment in favor of plaintiff without plaintiff having filed such a motion. Id. at 8-9. Judge Andrews concluded that while the “Federal Rules of Civil Procedure allow me to grant summary judgment sua sponte, . . . they do not require me to do so.” Id. at 9. Given that the record was not “sufficiently developed,” Judge Andrews “decline[d] to grant summary judgment in [plaintiff’s] favor.” Id. at 8-9.

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Judge Robinson recently considered defendants’ motions to amend their answers in a patent infringement case to include counterclaims of false marking, false advertising, deceptive trade practices, and unenforceability due to inequitable conduct. Judge Robinson concluded that the motions to amend should be denied with the exception of one defendant’s motion to add an inequitable conduct counterclaim, which was granted. Cot’n Wash, Inc., et al. v. Henkel Corp, et al., C.A. No. 12-650-SLR, Memo. Op. at 18 (D. Del. July 11, 2014).

Judge Robinson first considered whether the delay in seeking to amend was undue. Because the two defendants had been in possession of the evidence forming the basis of its false marking, false advertising and deceptive trade practices claims since May 2013 and June 2013 but did not contact the plaintiff until October 2013 and then did not file motions to amend until late January and early February 2014, Judge Robinson found that the delay was undue. With respect to inequitable conduct, however, Judge Robinson found that defendant Sun had waited only one week after obtaining relevant information to raise it with the plaintiff. This did not constitute inequitable conduct. Id. at 9-10.

Judge Robinson next considered the prejudice to plaintiff from the amendments. With respect to the proposed false marking, false advertising and deceptive trade practices claims, Judge Robinson found that the plaintiffs would be prejudiced by the amendment because, although the plaintiffs had been in possession of the relevant evidence, they “did not have the opportunity to review and vet this evidence for discovery purposes in the context of false marking claims.” By contrast, the plaintiffs had agreed to stipulate to inequitable conduct claims “nearly identical” to those proposed by defendant Sun in two related cases in August 2013 and Sun had asserted the underlying claims in August 2013, so the plaintiffs had “adequate opportunity to take discovery on the relevant issues” and were not prejudiced. Id. at 10-11.

Finally, turning to futility of amendment, Judge Robinson found that the false marking allegations failed to state a claim and would therefore be futile but the inequitable conduct claims were adequate and not futile. With respect to false marking, there were not sufficient allegations that the plaintiffs had the requisite intent to deceive nor that the defendants had suffered competitive injury. Id. at 12-16. With respect to inequitable conduct, however, Judge Robinson found that the proposed amendment would not be futile, because defendant Sun had properly pled inequitable conduct under Exergen. Sun alleged that the patent applicants had failed to disclose an inventor of the patent-in-suit, failed to disclose that inventor had publicly demonstrated the invention more than one year prior to filing, and failed to disclose pieces of relevant prior art. These allegations properly pled the “who, what, when, where, and how” of the misrepresentation or omission to the PTO. Thus, Sun’s inequitable conduct amendment was not futile and was allowed. Id. at 16-18.

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In Pragmatus Telecom, LLC v. AT&T, Inc., et al., C.A. No. 12-1533-RGA (D. Del. July 7, 2014), Judge Andrews recently ordered each defendant to reduce the number of prior art references it was asserting to 5 per patent.  The plaintiff was also ordered to reduce the number of claims it was asserting to 8.  In a handwritten footnote, Judge Andrews explained that “upon a showing of diligence, and with due consideration for prejudice, a party may seek to modify this order for good cause shown.  A failure to seek such modification will constitute acquiescence to the limits contained in this Order.”

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Judge Sue L. Robinson recently considered plaintiff Antares Pharma, Inc.’s amended motion for preliminary injunction filed the same day it amended its complaint for infringement of  the three patents-in-suit.  Antares Pharma, Inc. v. Medac Pharma, Inc., et al., C.A. No. 14-270-SLR (D. Del. July 10, 2014).  Judge Robinson denied the motion on the basis that Antares did not meet its burden of showing likelihood of success on the merits.  Id. at 3-15.  Prior to reaching this decision, Judge Robinson found that the patents-in-suit claim a jet injector, as opposed to “an autoinjector or hand-powered syringe.”  Id. at 3.  Judge Robinson construed a “jet-injector” as “a powered injector used to achieve the delivery of medicaments in a high speed stream, that is, at a pressure, force, and speed sufficiently high so that the medicament exits the needle tip as a fluid jet and not as a bolus. The critical difference between a jet injector and autoinjectors or hand-powered syringes is how the medicament is delivered – dispersed remotely from the needle-tip Uet) rather than deposited in a locus near the needle tip (bolus).”  Id. at 4.  While Antares presented expert testimony that defendant’s accused device is a jet injection device, Judge Robinson concluded that likelihood of success on the merits was not established on the record before the Court.  Notably missing was any “comparison of Antares’ jet injector with either a hand syringe or [defendant's] autoinjector,” or any illustration of “the ‘rapid spray’ dispersion of a jet injector.”  Id. at 4-5.

Judge Robinson did find that Antares met its burden of establishing irreparable harm because it “has the only available subcutaneous injector for methotrexate on the market, with [defendant] set to launch its competing produce as early as July 10, 2014.”  Id. at 15.   Judge Robinson found the balance of harms neutral, however, because delaying defendant’s launch would cause monetary damages to defendant.  Id.

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In a recent oral order, Chief Judge Leonard P. Stark granted defendants’ request for an extension of time to comply with the Court’s Order granting a permanent injunction, entered June 30, 2014.  Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., et al., C.A. No. 08-309-LPS, D.I. 798 (D. Del. July 3, 2014) (permanent injunction discussed previously here). In a letter to the Court, defendants asserted that they “simply cannot implement this type of system level change immediately as required by the Court Order, and would prefer to comply rather than to risk immediately violating the Order.”  (D.I. 795 at 1.)  Judge Stark permitted defendants until July 31, 2014 to fully comply with the permanent injunction.  (D.I. 798.)

Further, Paragraph 8 of the permanent injunction order required defendants “to include a copy of this Order Granting Permanent Injunction with any product that [defendants] deliver[] outside the United States” in addition to a notice provision specified by the Court.  (D.I. 794.)  Judge Stark found that defendants “may comply with Paragraph 8 of the injunction order by clearly printing the Court’s notice on the cover of every box of infringing products so long as the notice includes a URL to the Court’s order and all customers are provided with a copy of the Court’s injunction order prior to their purchasing any of the enjoined products outside of the U.S.”  (D.I. 798.)  Judge Stark reasoned that “[a]lthough the Court is troubled that [defendants] did not raise this notice issue prior to the Court’s granting the injunction, and the Court today provides [defendant] [their] belatedly requested relief reluctantly, the Court is persuaded that the purpose of the notice provision in Paragraph 8 will be satisfied so long as [defendants] compl[y] with the foregoing obligations.” Id.

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Magistrate Judge Christopher J. Burke recently issued a report and recommendation construing several claim terms in U.S. Patent No. 6,500,829, entitled “Substantially Pure Diastereoisomers of Tetrahydrofolate Derivatives”.  Spectrum Pharmaceuticals, Inc., et al. v. Innopharma, Inc., et al., C.A. No. 12-260-RGA-CJB (D. Del. July 3, 2014).

The parties agreed on the proper construction of the following claim terms:

•    “the balance of said compound consisting of the (6R) diastereoisomer”
•    “the balance of said composition consisting of the (6R) diastereoisomer”
•    “A pharmaceutical composition for therapeutic use”
•    “A pharmaceutical composition for therapeutic use for the treatment of human beings”
•    “for therapeutic use for the treatment of human beings”
•    “a pharmaceutically acceptable compound”
•    “a pharmaceutically acceptable composition”
•    “a polar solvent”
•    “said mixture of (6S) and (6R) diastereoisomers is present in said composition in an amount of at least about 10 grams”

Magistrate Judge Burke then construed the following disputed claim terms:

•    “mixture”
•    “percentage”
•    “said composition being of a quantity at least sufficient to provide multiple doses of said mixture of (6S) and (6R) diastereoisomers in an amount of 2000 mg per dose”

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In a recent memorandum order, Judge Leonard P. Stark granted a plaintiff’s motion for a permanent injunction.  Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., et al., C.A. No. 08-309-LPS (D. Del. June 30, 2014).  The Court found that the plaintiff demonstrated irreparable harm in the form of lost sales and price erosion resulting from the defendants’ (the plaintiff’s biggest competitor) infringement, and that the damage to the plaintiff’s “reputation as an innovator” as well as the “incumbency effects of” the defendants’ taking sales from the plaintiff through its infringement could not adequately be remedied by money damages.  The infringing sales also accounted for only a fraction of the defendants’ annual revenue, whereas the plaintiff’s revenue was based largely on its patented products, such that the balance of hardships weighed in favor of an injunction.  Finally, the Court found that an injunction would serve the public interests of encouraging innovation and protecting property rights.  The Court therefore enjoined the defendants from selling the products found to infringe at trial, as well as “those products ‘not colorably different’ from them.”

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