Delaware IP Law Blog

In a recent report and recommendation, Magistrate Judge Christopher J. Burke recommended that defendants’ motion for leave to amend their pleading with inequitable conduct claims and defenses be denied. INVISTA North America S.à.r.l. et al. v. M&G USA Corporation et al., C.A. No. 11-1007-SLR-CJB (D. Del. May 3, 2013). Plaintiffs are asserting U.S. Patent Nos. 7,943,216 (the “’216 Patent”); 7,879,930 (the “’930 Patent”); and 7,919,159 (the “’159 Patent”). Id. at 1. On August 6, 2012, the date which marked the deadline to amend the pleadings pursuant to the Scheduling Order, defendants moved for leave to amend their pleading with inequitable conduct claims and defenses with respect to each of plaintiffs’ asserted patents. Id. at 5. Defendants alleged that those responsible for the prosecution of the asserted patents submitted misleading and incomplete test data to the PTO. Id. at 11, 26. Judge Burke’s analysis was governed by Federal Rule of Civil Procedure 15(a). See id. at 5-6. Because plaintiffs opposed defendants’ motion “on the sole basis that [their] proposed amendments would be futile,” Judge Burke was required to assess only futility of amendment. Id. at 6. As Judge Burke explained, “the standard for assessing futility of amendment is the same standard of legal sufficiency that applies under Fed. R. Civ. P. 12(b)(6).” Id. at 7.

With respect to the ’159 and ’216 Patents, Judge Burke found that defendants failed “to sufficiently plead both the ‘who’ of inequitable conduct as well as the scienter requirement.” Id. at 25. Judge Burke explained that “[n]one of [defendants’] allegations tie specific conduct to any specific individual; instead, as to ‘who’ engaged in misconduct before the PTO, every allegation is pled generally, with reference to ‘Invista,’ ‘Applicant,’ ‘they,’ and ‘their.’” Id. at 17. Judge Burke further found that as to knowledge, the “problem with [defendants’] allegations circle[d] back to the Court’s finding with regard to [defendants’] insufficient pleading as to the ‘who’ of inequitable conduct.” Id. at 21. Specifically, Judge Burke explained that “[w]ith no real facts pled that are specific to any individual, there is a clearly insufficient basis to reasonably infer that any particular person . . . did in fact know of the materiality of this data, and intentionally failed to disclose the data or disclosed incomplete data.” Id. at 22. Moreover, with respect to an intent to deceive, Judge Burke noted that defendants failed to satisfy its burden “under Exergen by asserting that ‘Applicant’ or ‘INVISTA’ as a whole had a ‘desire to acquire patent rights in the gas barrier market,’ and then suggest[ing] that this general statement should lead to the inference that" a particular individual "knowingly withheld or misrepresented material data because of a specific intent to deceive the PTO.” Id. at 25.

Judge Burke further found that defendants’ proposed inequitable conduct defense with respect to the ’930 Patent “suffer[ed] from the same fatal flaws” as those related to the ’159 and ’216 Patents. Id. at 28. Specifically, defendants “failed to sufficiently identify the ‘who’ of [the] inequitable conduct,” which in turn “doom[ed] [defendants’] allegations regarding the scienter requirements of inequitable conduct in relation to the ’930.” Id. Judge Burke additionally found that defendants failed to sufficiently plead “but-for” materiality with respect to the ’930 Patent. Id. at 29. As Judge Burke explained, “[m]ere claims that the PTO would not have granted the patent had it known of the omission or misrepresentation are insufficient because they are conclusory legal conclusions under Iqbal.” Id.

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In Edwards Lifesciences LLC, et al. v. Medtronic CoreValve LLC, et al., C.A. No. 12-23-GMS (D. Del. May 13, 2013), Chief Judge Gregory M. Sleet recently issued an Order denying defendants’ letter request to file a motion for summary judgment asserting invalidity for lack of enablement of U.S. Patent No. 8,002,825. The Court explained that issues of material fact remained as to “(1) whether the 18 French limitation is a novel feature of the claimed invention; and (2) if this limitation is novel, whether the '825 Patent disclosure is enabling.” Id. at 1 n.1.

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In two consolidated actions, Magistrate Judge Mary Pat Thynge recently issued a Memorandum Order construing the term “promotional code” in U.S. Patent Nos. 5,717,866, entitled “Method for comparative analysis of consumer response to product promotions,” and 5,924,078, entitled “Consumer-provided promotional code actuatable point-of-sale discounting system.” Codepro Innovations LLC v. Safeway Inc., C.A. No. 12-970-MPT and Codepro Innovations LLC v. The Stop & Shop Supermarket Company LLC, et al., C.A. No. 12-1482-MPT, at 1 (D. Del. May 14, 2013). The parties had requested early claim construction for this term. Id.

Judge Thynge construed this term as “a series of publicly distributed or advertised characters associated with discount information corresponding to a product or products.” Id. at 18.

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In Pfizer Inc. et al. v. Sandoz Inc., C.A. No. 12-654-GMS-MPT (D. Del. May 7, 2013), Chief Judge Gregory M. Sleet recently issued an order construing the following six disputed terms of U.S. Patent No. 8,026,276, which is alleged to cover a pharmaceutical that treats advanced renal cell carcinoma:

- “CCI-779”

- “w/v”

- “w/v of citric acid”

- “parenteral composition”

- “preparing”

- “combining”

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In Collarity, Inc. v. Google, Inc., C.A. No. 11-1103-MPT (D. Del. May 6, 2013), Magistrate Judge Mary Pat Thynge recently construed the following disputed claim terms of U.S. Patent No. 7,756,855, entitled “Search Phrase Refinement by Search Term Replacement:”

-“keyword,” id. at 4-8;

-“association graph,” id. at 8-10;

-“anchor keyword/non-anchor keyword,” id. at 10-12;

-“designating, by the search system, one or more keywords as anchor keywords and the remaining keywords as non-anchor keywords,” id. at 12-14;

-“order of steps,” id. at 14-19.

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Magistrate Judge Burke recently issued a thorough report and recommendation on claim construction in a patent infringement dispute between plaintiff Impulse Technology and defendants, Microsoft and the makers of several games for Microsoft’s Xbox 360 system and Kinect sensor. See Impulse Tech. Ltd. v. Microsoft Corp., C.A. No. 11-586-RGA-CJB, Report and Recommendation at 1-4 (D. Del. May 13, 2013). In addition to the parties’ agreed-upon constructions, Judge Burke construed the following disputed terms related to tracking the position of a player in physical and virtual spaces:

- “a tracking system”
- “defined physical space” and “first/second physical space”
- “virtual space”
- “player virtual location[s] in a virtual space corresponding to the physical location[s] of the player[s]”
- “positioning the representation of the user on the monitor” and “moving the representation of the user to reflect movement of the user”
- “representation”
- “overall physical location”
- “moving in the physical space”
- “[the view is from a] point of view in the virtual space corresponding to a location on a line directed outward from the display into the physical space”

Id. at 61-62.

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Magistrate Judge Sherry R. Fallon recently recommended the dismissal of a pro se patent infringement complaint filed against the United States, various United States officials, and Kannalife Sciences, Inc. McDowell v. U.S., et al., C.A. No. 12-1302-SLR-SRF (D. Del. May 10, 2013). The pro se plaintiff was the inventor of U.S. Patent No. 7,597,910, “directed to compositions and methods for treating prostate disorders using a mixture of cannabis, shiitake mushrooms, and maitake mushrooms,” but had assigned the patent to SLGM Medical Research Institute. Id. at 1, 5. The inventor argued that he had standing to bring the complaint because he and SLGM Medical Research were “one and the same,” but Magistrate Judge Fallon rejected that argument, explaining that “only the owner of the patent has standing to sue.” Id. at 5. Magistrate Judge Fallon also recommended that the complaint against the United States and its officials be dismissed for lack of subject matter jurisdiction on the basis that 28 U.S.C. § 1498 requires that patent infringement actions against the United States be filed in the United States Court of Federal Claims. Id. at 6.

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In a recent order, Chief Judge Gregory M. Sleet denied defendant’s motion to dismiss plaintiff’s claims of direct, contributory, and induced infringement for failure to state a claim upon which relief may be granted. Segan LLC v. Zynga Inc., C.A. No. 11-670-GMS (D. Del. May 2, 2013). Plaintiff is asserting U.S. Patent No. 7,054,928 (the “’928 Patent”), which includes two independent claims, one system claim and one method claim. Id. at 1 n.1. With respect to plaintiff’s claims for direct infringement, defendant argued that “it cannot possibly directly infringe either the system or methods claims” because direct infringement requires a party to “commit all the acts necessary to infringe . . . either personally or vicariously,” and plaintiff’s asserted claims “require activity by multiple actors.” Id. Judge Sleet explained, however, that with respect to the “use” of a system, “physical or direct control of all the elements of a system is not required—the user must simply cause those elements to work for their patented purpose.” Id. at 2 n.1. In light of that standard, Judge Sleet found that plaintiff sufficiently pled direct infringement, as plaintiff alleged that defendant “has used its own games on social media websites.” Id.

Defendant also argued that plaintiff’s indirect infringement claims should be dismissed for failure to adequately plead “the requisite underlying direct infringement [and] the necessary knowledge and intent.” Id. Judge Sleet found, however, that plaintiff sufficiently pled the direct infringement prong by alleging that “on any given day 60,000,000 people (i.e., users) play Defendant’s games on social websites” and that the “games’ users . . . put the invention into service, control the operation of the system as a whole and obtain [a] benefit from it.” Id. Further, with respect to the knowledge and intent requirements for induced infringement, Judge Sleet contrasted the instant complaint from the deficient complaint in Chalumeau Power Sys. LLC v. Alcatel-Lucent, C.A. No. 11-1175-RGA (D. Del. Jul. 18, 2012) (discussed previously here). Id. at 3 n.1. In the Chalumeau complaint, there were “only insufficient factual assertions to support the legal conclusion of actual knowledge, and no factual assertions at all to support the legal conclusion of specific intent.” Id. In the instant matter, Judge Sleet found that knowledge was sufficiently pled since plaintiff alleged that it sent a letter to defendant’s officers with a full copy of the asserted patent on June 30, 2011. Id. Further, Judge Sleet found that plaintiff provided “several factual assertions permitting a reasonable inference that [defendant] acted with the requisite specific intent.” Id. With respect to the contributory infringement claim, Judge Sleet again found knowledge sufficiently pled based on the allegations related to plaintiff’s letter with the asserted patent attached. Id. Further, Judge Sleet found that plaintiff provided allegations sufficient to permit “the reasonable inference that [defendant] was aware that its games were ‘especially adapted for use in infringement’ of the ’928 Patent.” Id. Specifically, plaintiffs alleged that “[d]efendant has specifically designed, developed, and acquired [its] on-line games for game players to use on target websites” and that defendant "admits in its amended IPO statement that its games require game players (users) to access the internet, Facebook (or any target website [defendant] engages).” Id.

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In a decision unsealed on May 3, 2013, Judge Leonard P. Stark rejected both parties’ inequitable conduct defenses, finding that neither proved by clear and convincing evidence that the other intended to deceive the PTO. Power Integrations, Inc. v. Fairchild Semiconductor Int’l Inc., et al., C.A. No. 08-309-LPS (D. Del. Apr. 25, 2013). The Court found that the inventor of the Defendant’s asserted patent “was generally aware of the existence of” two patents allegedly intentionally withheld from the PTO, but that “does not mean he also was aware of those patents’ specific disclosures.” Id. at 7. Quoting the Federal Circuit’s decision in Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1330 (Fed. Cir. 2009), Judge Stark explained that “one cannot assume that an individual, who generally knew that a reference existed, also knew of the specific material information contained in that reference.” Id. at 8. Moreoever, the Court noted that the inventor believed his patent was “limited to frequency jitter on the primary side of a power converter,” whereas the allegedly withheld patents, “in [the inventor’s] mind, related to secondary side jitter control.” Id. Although the Court ultimately concluded that the inventor’s patent “was not limited to primary side applications, the Court’s subsequent conclusion does not render [the inventor’s] state of mind in 2004-2007 unreasonable . . . .” Id. Overall, the Court found the testimony of the defendant’s inventor to be credible, and therefore found that the plaintiff failed to show deceptive intent by clear and convincing evidence. Id. at 8-10.

The Court next addressed the defendant’s inequitable conduct defense, which was based on an alleged “misrepresentation” to the PTO during reexamination. Id. at 11. Specifically, the defendant argued that in response to a rejection during reexamination of certain claims as anticipated by a reference, the plaintiff argued that the reference “did not disclose a ‘maximum duty cycle signal provided by an oscillator,’” implicitly asserting that such an oscillator would be novel. Id. at 11-12. According to the defendant, such oscillators were well known in the art, and “the Examiner only withdrew the rejection because he mistakenly believed that an oscillator providing a maximum duty cycle was novel.” Id. at 12. The Court noted, however, that the plaintiff had disclosed other prior art referencing such oscillators, and in any event because the rejection was based on claims initially found to be anticipated, “[t]he arguments [the inventor] presented to the PTO were limited to the specific disclosure of the [specific] reference and focused on the differences between that reference and the claims.” Id. at 13. Accordingly, the Court found that no misrepresentation had been made to the PTO. Further, because the Examiner “identified an oscillator with a maximum duty cycle signal in at least one additional prior art reference,” the Court could not “conclude that the Examiner considered the oscillator to be a point of novelty.” Id. In short, the inventor “credibly testified that he believed the Examiner was aware that oscillators with maximum duty cycle signals were known in the prior art. . . . This belief is more than reasonable given that the Examiner expressly identified such an oscillator in the Office Action and signed several Information Disclosure Statements indicating that he considered the references [the Plaintiff] submitted that disclose this feature.” Id.

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Judge Stark recently issued the Court's claim construction opinion construing the terms of U.S. Patent Nos. 7,846,207, 7,862,616, and 7,875,076. The patents relate to "medical devices called 'intervertebral implants' and methods of implanting such devices between adjacent vertebrae in spinal fusion procedures." Depuy Synthes Products, LLC v. Globus Medical, Inc., C.A. No. 11-652-LPS (D. Del. May 7, 2013).

Judge Stark construed the following terms:

"[front] plate/plate"

"securing plate"

"upper surface [of the plate]"

"lower surface [of the plate]"

"upper plane [of the body]"

"underside plane [of the body]"

"lower plane [of the body]"

"plate top surface located generally on the upper plane/plate top surface"

"plate lower surface located generally on the lower plane/plate lower surface"

"borehole"

"being anchorable within the first and second boreholes and the first and second partial boreholes"

"first and second boreholes of the front plate diverge when viewed from the front surface/ diverge"

"captured between the front plate and the securing plate"

"located between the plate and the securing plate"

"contained between the adjacent vertebral bodies when the implant is inserted between the adjacent vertebral bodies"

"positioned between the upper and lower planes"

"the first and second boreholes of the front plate and the first and second heads are covered at least partly by the securing plate I covered at least partly by the securing plate"

"the securing plate at least partially covering each of the plurality of boreholes/the securing plate at least partially covering"

"the securing mechanism at least partially covering each of the plurality of boreholes/the securing mechanism at least partially covering"

"attaching a securing plate with a fastening agent over the first and second head portions of the first and second fixation elements"

"partial borehole in communication with the front surface and the upperside/underside of the body"

"non-metallic material"

"the first height being substantially equal to the second height so that the three dimensional body and the plate are contained between the adjacent vertebral bodies when the implant is inserted between the adjacent vertebral bodies/the first height being substantially equal to the second height"

"the second height being generally equal to the first height"

"the first and second heads and the first and second boreholes and partial boreholes positioned substantially between the upper and underside planes/positioned substantially between the upper and underside planes"

"securing mechanism"

"fastening agent"

"upper surface"

"lower surface"

"upper side"

"underside"

"upper vertebra"

"lower vertebra"

"upper endplate"

"lower endplate"

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