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Magistrate Judge Christopher J. Burke recently issued a Report and Recommendation granting-in-part defendant’s Rule 12(b)(6) motion that plaintiff’s patents are invalid under 35 U.S.C. § 101.  Yodlee, Inc. v. Plaid Technologies Inc., No. 14-1445-LPS (D. Del. May 23, 2015).  Judge Burke previously denied defendant’s motion to stay pending resolution of this motion.  The Court issued its claim construction in this case in January.  Judge Burke noted that claim construction was particularly helpful here because of the “breadth” of defendant’s motion:

At the time that the Motion was filed, Plaid was seeking the dismissal of all 162 claims of all seven patents-in-suit. That kind of a request, in a case with this many patents and claims at issue, sought a huge early investment of judicial resources-resources that might need to be re-invested at the summary judgment stage (if, for example, the Rule 12 Motion was not well taken as to some or all patents-in-suit). In the Court’s view, under the weight of that request, the best practicable path was to first obtain the District Court’s decision on claim construction before rendering a decision on the instant Motion-thus narrowing the scope of possible outstanding legal issues that might be relevant to Plaid’s Section 101 affirmative defenses.

Id. at 5.

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In Invista North America S.A.R.L., et al, v. M&G USA Corporation, et al., C.A. No. 11-1007-SLR (D. Del. May 13, 2016), Judge Sue L. Robinson denied Plaintiffs’ motion for reconsideration of the “amount and manner of payment of the royalty rate to be paid by defendants,” id. at 2, which the Court had placed into escrow when it had also stayed enforcement of an injunction against Defendants pending final resolution of any appeals from the PTO’s final rejection of all claims of the patent-in-suit. The Court’s royalty rate had been based on an “agreement reached by the parties at the damages phase of the case . . . [r]ather than litigate damages, the parties agreed on a lump sum payment for past infringement . . . [m]athematically, defendants paid plaintiffs one (1) cent per pound” of accused product Id. at 2. Neither the Court nor the parties had “engage[d] in a more extensive reasonable royalty analysis,” and the Court declined to do so now and “embrace plaintiffs’ late presentation for immediate implementation” where Plaintiffs’ proposed rate would increase the rate to four cents per pound. Id. at 2-3.

The Court also clarified that its royalty award had not been “the final word on damages related to future infringement.” Id. at 3 (emphasis added). Instead, “if the validity of the [patent-in-suit] were preserved, the parties would either resolve the issue of future damages by settlement or by litigation.” Id. Until that time, the amount of money determined by the one cent per pound royalty rate would continue to be placed into escrow. Id.

Invista North America S.A.R.L., et al, v. M&G USA Corporation, et al., C.A. No. 11-1007-SLR (D. Del. May 13, 2016)

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In a recent Memorandum Opinion, Judge Sue L. Robinson granted defendant’s motion to dismiss pursuant to Rule 12(b)(6) for lack of patentable subject matter under 35 U.S.C. § 101. Device Enhancement LLC v. Amazon.com, Inc., C.A. No. 15-762-SLR (D. Del. May 17, 2016). Judge Robinson explained that “[i]n trying to sort through the various iterations of the § 101 standard, the court looks to” DDR Holdings and Federal Circuit’s recent decision in Enfish, LLC v. Microsoft Corp., 2016 WL 2756255 (Fed. Cir. May 12, 2016) “as the benchmark in software and computer cases.” The patent-in-suit, U.S. Patent No. 7,747,683 (“the ‘683 patent”) “relates to a method and system for allowing a user of a terminal device to remotely operate upgraded and/or advanced applications without the need for upgrading the client side application or computational resources.” Id. at 13. Under the § 101 analysis, Judge Robinson described the claimed method in further detail as follows:

The claimed method, then, generally provides for the installation of a generic client-side application on the terminal device and the installation of a corresponding remote application on the server (which handles most of the graphical processing). The server exchanges data with the terminal device. Tasks are split between the client-side application and the remote application, albeit without further guidance from the patent. The processed content is then transmitted and the client-side application renders the content and responds to messages.

Id. at 18-19. Judge Robinson explained that the fact “[t]hat the method at bar may be described as the abstract idea of division of labor does not provide the answer to step one of the Alice inquiry as, ‘[a]t some level, all inventions . . . embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.’” Id. at 17. Rather, Judge Robinson observed that “[t]he question such a broad disclosure poses is whether the patent – although computer-centric – would pre-empt substantially all uses of the underlying ideas at issue, that is, using distributed architecture to increase the capabilities of individual devices by using remote resources.” Id. at 19. Considering this question, Judge Robinson found that “[a]lthough, at this time, the degree of specificity required to pass muster under pre-emption is not at the micro-level (e.g., source code), the disclosures of the ‘683 patent are at the macro-level, that is, the patented method uses computerized devices (of any type) in conventional ways (installation of applications, data exchange, and data processing) without delineating any particular way of putting the ideas into practice.” Id.

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For over 65 years, the New Jersey Intellectual Property Law Association (NJIPLA) has annually presented the Jefferson Medal to someone who has made exceptional contributions to the field of intellectual property law. On June 10, 2016, the NJIPLA will present the 2016 Jefferson Medal to The Honorable Sue L. Robinson, United States District Court Judge for the United States District Court for the District of Delaware. Additional information is below.

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In the post-trial opinion in Genzyme Corporation, et al. v. Dr. Reddy’s Laboratories, et al., C.A. No. 13-1506-GMS (Cons.) (D. Del. May 11, 2016), Judge Gregory M. Sleet found that the single asserted claim of the patent-in-suit was not obvious. Plaintiffs’ brand drug “is an accepted standard of care for a patient who fails to mobilize the minimum number of stem and/or progenitor cells needed for transplant.” Id. at 10.

Included in the Court’s post-trial findings of fact was the conclusion that a reference relied on by Defendants (“Hendrix”) was not prior art. The reference focused on “evaluating the safety and pharmacology of . . . a drug for treating HIV,” and had been considered by the Examiner during prosecution of the patent-in-suit and rejected as not prior art. Id. at 15. The Court concluded that “[w]hile from today’s perspective the relationship between Hendrix [the asserted claim] may seem clear . . . Defendants’ relevance analysis is colored by hindsight.” Id. at 16. For example, Defendants’ expert “improperly based his opinion on his own experiments . . . not prior art.” Id. at 16. And the same expert was conducting research relevant to the subject matter of the prior art when Hendrix was published but did not remember reading it. Id. Further, “the USPTO Examiner thoroughly considered Hendrix and concluded that it was non-analogous art . . . . There is a presumption that decisions made by the PTO Examiner are valid. These decisions are particularly pertinent because they were made contemporaneously with full view of the art at the time and not tainted by hindsight.” Id. at 17.

Genzyme Corporation, et al. v. Dr. Reddy’s Laboratories, et al., C.A. No. 13-1506-GMS (Cons.) (D. Del. May 11, 2016)

 

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Magistrate Judge Christopher J. Burke recently considered declaratory judgment Plaintiff Alstom Grid LLC’s request to stay this case pending the Court’s resolution of its Motion for Judgment on the Pleadings based on lack of patentability under 35 U.S.C. § 101.  Alstom Grid LLC v. Certified Measurement, LLC, C.A. No. 15-72-LPS-CJB (D. Del. May 16, 2016).  Judge Burke considered the three factors governing stay motions and ultimately denied the requested stay.  Regarding the simplification factor, Judge Burke noted that due to the number of asserted patents and claims, there is a likelihood that “at least some number of claims will survive the motion to dismiss[,]” even if it is granted.  Id. at 2.  Regarding the status of the litigation, Judge Burke noted that the stay was requested 14 months into the litigation and well into the claim construction process.  Id.  at 2-3.  Finally, regarding undue prejudice to the non-moving party, Judge Burke noted that Alstom may be seeking “an inappropriate tactical advantage” by requesting the stay now, rather than when it filed its § 101 motion in September 2015.  Id. at 3.  In fact, Alstom opposed Certified Measurement’s motion to stay pending inter partes review proceedings.  Id. at 3.  In denying the stay request, the Court also noted that the case had already “been stayed once, to little beneficial effect.”  Id. at 4 n.3.

Alstom Grid v. Certified Measurement, No. 15-72-LPS-CJB

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Judge Richard G. Andrews recently provided guidance on the redaction of public hearing transcripts in ruling on an unopposed motion to redact.  Delaware Display Group, LLC v. Lenovo Holding Co., et al., C.A. Nos. 13-2018-RGA, -2109-RGA, -2112-RGA (D. Del. May. 10, 2016).  Judge Andrews explained that the fact that information is designated as attorneys’ eyes only under a protective order is not determinative of whether it is appropriately redacted from a public hearing transcript.  That is because once the information is revealed in a public hearing, “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.”  The Court recognized that there are exceptions, such as where the information contains “pricing terms in license agreements, some other non-public financial information, trade secrets, and other proprietary technology[,]” but added that this type of information can be hinted at during a hearing without threatening a “clearly defined and serious injury” that would justify redacting it from the public record under Third Circuit law.  Judge Andrews added that even this type of information is less likely to warrant redaction where it “is old, or general, or already in the public record, and was relevant to the judicial proceeding.”

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In a recent Memorandum Order, Judge Sue L. Robinson denied defendant’s motion for attorney fees. YYZ, LLC v. Pegasystems, Inc., C.A. No. 13-581-SLR (D. Del. May 2, 2016). The court previously issued an opinion and order granting defendant’s motion for summary judgment of invalidity and denying plaintiff’s cross-motion for summary judgment of validity.

First, Judge Robinson rejected defendant’s argument that that this is an exceptional case because plaintiff “knew its claims were objectively invalid over the prior art.” Id. at 3. Defendant focused on plaintiff’s “articulation of the ‘inventive concept’ in its 35 U.S.C § 101 briefing, arguing that such concept identified ‘claim elements that [plaintiff] had already conceded were known in the prior art, many of which were not even recited in the patent claims.’” Id. Judge Robinson noted, however, that the court expended “considerable effort in reaching its invalidity determination and analyzed those very [invalidity] arguments in its opinion.” Id. Judge Robinson found that defendant’s “characterization of plaintiff’s arguments as ‘reckless’ and its claims as ‘clearly invalid’ is in contradiction to the court’s position that the § 101 analysis is an evolving state of the law and a difficult exercise, which does not lend itself to, e.g., shifting fees pursuant to 35 U.S.C. § 285.” Id.

Defendant also argued “that the applicant made material misrepresentations to the PTO to procure the patents-in-suit (which may or may not rise to the level of inequitable conduct) adding to the exceptionality of the case at bar.” Id. at 4. In addition, defendant argued that “plaintiff also failed throughout the litigation to ‘clearly point out how [defendant] could possibly infringe the claims.’” Id. Judge Robinson rejected both of these arguments. First, Judge Robinson noted that the Court had granted plaintiff’s request that the parties brief the motion for invalidity pursuant to § 101 early and that the court stay all deadlines pending the court’s decision. Id. Judge Robinson explained that “[a]t the attorney fee stage, the court will not evaluate the parties’ arguments regarding inequitable conduct (not asserted by defendant as a defense)” or “the sufficiency of plaintiff’s infringement contentions.” Id. According to Judge Robinson, defendant’s arguments “would have the court resolve the issue of infringement of an invalid patent on an incomplete record.” Id.

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Judge Sue L. Robinson recently decided various evidentiary disputes during trial.    SRI Int’l Inc. v. Cisco Sys., Inc., C.A. No. 13-1534-SLR (D. Del. May 9, 2016).  Judge Robinson previously decided motions for summary judgment and pre-trial evidentiary disputes.  Judge Robinson precluded Cisco from presenting its §102(g) defense to the jury because, prior to the letters submitted regarding this dispute, Cisco had failed to “provide its allegations as to the full breadth” of its §102(g) defense.  Id. at 1-2.  Judge Robinson also decided the permissible scope of a late-disclosed fact witness who was also the designated corporate representative sitting at counsel table during trial.  Judge Robinson limited the witnesses’ testimony based on the fact that plaintiff was prejudiced by the insufficient disclosure of the bases for the witness’ testimony, as well as the fact that the witness was not sequestered.  Id. at 2-3.

SRI Int’l v. Cisco Sys, No. 13-1534-SLR

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Following Judge Robinson’s decision in March that the patents-in-suit in this case were not invalid under Section 101, the defendant, AOL, filed a motion to certify the validity decision for interlocutors appeal. Judge Robinson denied the motion, finding that the issue presented was a controlling question of law and could advance the ultimate termination of the litigation, but exercising her discretion not to certify the question. Judge Robinson explained that “the same may be said of many other grounds of invalidity that are questions of law” and certification “is not meant to provide early review of difficult rulings in hard cases.” Improved Search LLC v. AOL Inc., C.A. No. 15-262-SLR, Memo. Or. at 3 (D. Del. May 5, 2016) (internal quotations omitted). Moreover, the fact that Judge Robinson “acknowledged the uncertainty in the developing law under § 101 cannot be the basis for certifying each district court decision on a § 101 motion to the Federal Circuit for review. Given the current popularity of such motions, the certification of each denied motion would surely cause more harm than good and would certainly result in piecemeal litigation.” Id. at 3-4.

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