A fundamental precept of patent law teaches that a party is liable for direct infringement only when it performs each step of the invention's claims. In a recent decision, District Judge Sue L. Robinson addressed infringement liability for those who perform less than all the claimed steps. The Court concluded that:
"The law of divided infringement . . . does prohibit infringement by defendants. In the circumstances where one party performs only some of the claimed steps, and another entity performs other of the claimed steps, direct infringement will only lie if one party exercises 'control or direction' over the entire process such that every step is attributable to the controlling party . . . ."
Absent this showing of control or direction, the Court held, summary judgment of non-infringement is appropriate.
Notably, the Court reached its conclusion after reconsidering an earlier claim construction. Because it raised the divided infringement issue, the new construction impaired the prospect of direct infringement, which in turn led to an increased likelihood of summary judgment. Litigators take note: this case is another example of how slight alterations to a claim construction can have a dramatic effect on the summary judgment phase.
Chief Judge Sleet recently decided a case where plaintiff, a law firm that had helped to prosecute a patent, tried to claim an equitable interest in the patent after their client’s alleged failure to pay their fees. Huntley, L.L.C. v. Monterey Mushrooms, Inc., C.A. No. 08-377-GMS, at 1 (D. Del. Sept. 18, 2009). The firm then tried to make an infringement claim against a subsequent assignee based on the firm’s supposed equitable interest. Id. at 3-4. Chief Judge Sleet denied both claims, noting that the firm’s engagement letter said nothing about a potential assignment of the patent or any equitable interest in it. Id. at 7. While the firm had filed a "Notice of Equitable Claim" with the PTO, that filing was “inconsequential” standing alone, as it was signed only by the firm. Id. The court also rejected Huntley's claim of a "grantor's lien" in the patent, pointing out the lack of legal support for "this rather novel proposition." Id. at 7-8. With plaintiff having no interest in the patent, Judge Sleet granted defendant's motion to dismiss for lack of standing. Id. at 8.
Consistent with a theme that has been developing in D. Del. multi-patent litigation, E.D. Pa. chief judge Harvey Bartle, sitting by designation, recently issued an order limiting the number of claims for trial. In the four-patent litigation, the Court limited the plaintiffs to no more than twelve representative claims, with at least one claim from each of the patents-in-suit. Notably, however, the Court expressly directed that the trial on the representative claims will be "without prejudice to a trial at a later point, at the request of plaintiffs, on any of the remaining claims of the patents."
In a recent Markman opinion, Judge Farnan construed several terms relating to two patents pertaining to the use of microelectrodes for the rapid determination of the concentration of an analyte in a liquid sample – a process that, as the court noted, is useful for blood sugar analysis in individuals suffering from diabetes. The parties disputed "the bulk of the language used in the independent claims," id. at 5, and the court construed the following terms:
"Reference electrode," "working electrode," "counter electrode": The court construed the term "electrode" to mean a "microelectrode having a width of 15 to 100 [micrometers]," due to references in the specification and the prosecution history. Id. at 6-9.
"Capillary Chamber," construed to mean "a space or channel that is defined over the electrodes that directs flow of the blood sample over the electrodes." Id. at 9-10.
"Detecting," construed to mean "discovering or ascertaining the presence of." Id. at 10-12. The court also noted that "following said detecting, applying or controlling the voltage" required no further construction. Id. at 13-14.
"An electroactive reaction product," construed to mean "a chemical compound produced during a reaction that is capable of donating or receiving electrons to an electrode." Id. at 12-13.
"Correlating the electrooxidized electroactive reaction product to the concentration of glucose in the blood sample," construed to mean "using a relationship between the electrooxidized reaction product and the concentration of glucose in blood." Id. at 14-16.
"Providing a readout of the glucose concentration in the blood sample": the court held that the term "readout" implied something that could be read by the user. Id. at 16-17.
"About," construed to mean "approximately." Id. at 19-21.
"Electrooxidize," construed to mean "to donate at least one electron at an electrode." Id. at. 23-24.
"Providing a disposable biosensor test strip," and "determining," held to not need construction. Id. at 18-19, 21-22.
More and more frequently, courts are having to deal with concurrent reexamination proceedings in the USPTO while parties are litigating the same patents in the district court forum. In Automotive Technologies Int'l, Inc. v. American Honda Motor Co., et al., certain defendants filed a reexamination on eight of twelve of the patents that plaintiff asserted against them in litigation filed in the District of Delaware and subequently moved to stay the litigation. C.A. Nos. 06-187-GMS, 06-391-GMS, Memo. Order (D. Del. Sept. 15, 2009). This Court granted the motion to stay. Over a year and a half later, the PTO reissued two of the patents-in-suit and reaffirmed certain claims without amendment. Id. at 2. Because of this action at the PTO, the plaintiffs moved the court to lift the stay. The Court denied the motion finding that because "reexamination proceedings are still underway for six of the eight asserted patents" and "all of the claims presently asserted against the defendants stand rejected by the PTO" lifting the stay was not appropriate. Id. at 4. The Court further found that continuing the stay could simplify the issues for trial and conserve both the parties' and the Court's resources. Id. at 4.
Judge Robinson recently construed the parties' disputed claim terms set forth in a patent related to a "method and system for providing a preview thumbnail image of a web page" in Girafa.com, Inc. v. IAC Search & Media, Inc., C.A. No. 07-787-SLR, Memo. Order (D. Del. Sept. 15, 2009).
The following terms were construed:
- "image server"
- "A web server separated from said image server"
- "Visualization functionality"
- "At least partially concurrently"
- "Annotated web page"
- "Thumbnail visual image"
- "Trimming a path component based on the consideration of finding the most representative image of a given web page"
- "Home page or homepage"
- "Thumbnail visual image of another web page of at least one web site which is represented by said at least one hyperlink"
Plaintiff SRI International (“SRI”) brought a patent infringement action against defendants Symantec Corporation (“Symantec”) and Internet Security Systems, Inc. (“ISS”) related to four patents. After issuing its claim construction opinion in October, 2006, the Court held that each of SRI’s patents were invalidated as anticipated by certain prior art. See Sri International, Inc. v. Internet Security Systems, Inc., et al., C.A. No. 04-1199-SLR, at 1 (D. Del. Aug. 20, 2009) (discussing procedural history). On appeal, the Federal Circuit affirmed the Court’s decision as to one of the patents but vacated and remanded for trial as to the remaining three patents. Id. After a trial in September, 2008, the jury found that Symantec and ISS infringed each claim of two of SRI's patents. Id. at 12. Among other post-trial motions, both Symantec and ISS filed motions for judgment as a matter of law (“JMOL”) as to the jury's infringement verdicts.
Pursuant to its JMOL motion, Symantec argued that a finding of “induced infringement was not supported by substantial evidence because plaintiff presented no direct evidence that either Symantec or its customers actually employed the infringing combination of SGS and Manager Products [both Symantec Products].” Id. at 14 (emphasis added). At trial, SRI relied on circumstantial evidence to prove that the Symantec products in question were designed to work together, that the SGS products monitor enterprise networks, and Symantec encouraged and instructed customers to use the products together. Id. at 15-16. SRI argued that this circumstantial evidence was enough for the jury to conclude that the products were in fact used together. Id. at 16. Despite SRI’s urging otherwise, the Court noted that “[w]hile it is true that circumstantial evidence may be used to demonstrate direct infringement, the evidence must still indicate that infringement actually occurred.” Id. at 16-17. “[B]ecause both the SGS and Manager Products have non-infringing uses (i.e., the combination does not ‘necessarily infringe’ the patents), plaintiff was obligated to identify specific instances of direct infringement involving these products.” Id. at 18. Granting Symantec’s motion for JMOL as to the combination of the SGS and Manager Products, the Court found that SRI’s circumstantial evidence “[did] not compel the conclusion that infringement necessarily occurred.” Id. at 20.
Pursuant to its JMOL motion on direct infringement, ISS argued that SRI “presented no evidence that ISS itself actually deployed or used the accused products in an infringing manner.” Id. at 24. SRI, on the other hand, argued that direct infringement was supported by evidence that ISS demonstrated in training courses and video presentations the accused products’ infringing uses. Id. at 25. However, testimony at trial indicated that the demonstrations could be based off the accused product or could be artificially created for demonstrative purposes. Id. at 26-27. No testimony was introduced at trial positively showing that ISS used an infringing system during the demonstrations. Id. at 27. “On this record, a reasonable jury could not have found direct infringement by ISS by a preponderance of the evidence.” Id. The Court also granted ISS’s JMOL motion as to induced infringement because SRI did not identify any specific instances of infringement by ISS customers. Id. at 30.
In Boston Scientific Corporation, et al. v. Johnson & Johnson, et al., C.A. No. 07-765-SLR (D. Del. August 25, 2009), Defendant Wyeth sought to disqualify the firm Howrey LLP from representing Plaintiffs due to Howrey’s current representation of Wyeth in another matter in the European patent office. The Court noted that Wyeth has divisions and subsidiaries all over the world with similar names. Id. at 2. While Howrey had represented Wyeth in several matters over the years it was not clear which entity was involved. The Court found that Howrey was currently representing Wyeth in a matter in the European patent office, thereby also finding that Howrey violated Model Rule 1.7(b) which prohibits representations involving a concurrent conflict of interest. Id. at 7. However, noting that in the Third Circuit, “whether disqualification is appropriate depends on the facts of the case and is never automatic[‘]” the Court decided that disqualification was not an appropriate remedy. Id. at 9. The relevant factors supporting this decision included the unrelatedness of the current matter and the European matter, the fact that Howrey’s Washington, D.C. office is representing plaintiffs here whereas Howrey’s Europe-based attorneys are handling the matter in Europe, and that an ethical wall was in place. Id. at 8-9. Moreover, the Court found that “Howrey’s failure to comply with Model Rule 1.7 [was], to a significant degree, due to Wyeth’s conduct.” This conduct included Wyeth’s “naming conventions, its use of the same in-house counsel on matters involving different subsidiaries without consistently identifying to Howrey which entity those in-house attorneys were representing, and the willingness of it and its subsidiaries to receive billing invoices for matters on which they were not directly engaged with Howrey.” Id. at 9.
In UCB, Inc. et al. v. KV Pharmaceutical Company, C.A. 08-223-JJF (D. Del. Aug. 18, 2009) Judge Farnan provided claim constructions for disputed terms of a patent pertaining to “multiparticulate pharmaceutical dosage forms that include both immediate release (“IR”) beads and extended release (“ER”) beads.” The parties disputed the meaning of the claim terms “approximately” and “about,” and Defendant contended that a specific claim term was indefinite. Id. at 5. The Court construed the disputed terms as follows:
“The Total Amount of Methylphenidate Hydrochloride Present Is About 10 to 40 mg”
Plaintiffs argued that, according to its plain and ordinary meaning, the word “about” should be defined as “approximately.” Id. at 6-7. Defendant, pointing to the use of the word in the specification, argued that the definition should be more precise so that the term would require “precision within ‘rounding’ or ‘measurement error.’” Id. Ultimately, the Court chose to adopt the Plaintiffs construction. Noting Ortho-McNeil Pharm., Inc. v. Caraco Pharm. Labs., Ltd., 476 F.3d 1321, 1327-28 (Fed. Cir. 2007), the Court held that a narrow construction was inappropriate here because the evidence relied upon by Defendant did not support the proposed construction. Id. at 9-13. Defendant argued that because the word “approximately” is also a claim term, construing “about” to mean “approximately” would give “two different claim terms . . . the same meaning.” Id. at 13. The Court responded that “notwithstanding this consideration, without a more concrete basis for either Defendant’s construction or some alternative construction of “about,” the most appropriate construction of “about” is simply “its ordinary and accepted meaning of ‘approximately.’” Id. (quoting Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005).
“The Immediate Release Beads Are Present in an Amount of About 20 to 40 Percent and the Extended Release Beads Are Present in an Amount of About 60 to 80 Percent”
The Court applied the same legal principles here to construe “about,” and reached the same conclusion giving “the term ‘about’ its ordinary and customary meaning of ‘approximately’” Id. at 16.
Plaintiffs contended that this term required no construction, whereas Defendant asked the Court to construe this term to mean “almost exactly,” which was its plain and ordinary meaning according to the American Heritage College Dictionary. Id. at 17. The Court agreed with Plaintiff’s position, because although “Defendant’s extrinsic dictionary definition clearly supports such a construction, without some meaningful corresponding basis for it in the intrinsic record, the Court will not paraphrase the ordinary word ‘approximately’ as ‘almost exactly.’” Id.
“Water”The Defendant contended that the term should be construed to mean “purified water (per the USP)” whereas Plaintiffs thought no construction was necessary. Id. at 18. The Court agreed with Defendant. Id. “[B]ecause the claim specifically itself calls for the testing to be done in a USP apparatus, it is appropriate to construe the claim term ‘water’ in terms of the definition set forth in the USP.” Id. at 19. This construction is not “an improper importation of a limitation from the extrinsic record, . . . because the claim itself calls for testing to be done in a USP apparatus . . . .” Id.
“An Amount Up to 20 Percent” and “An Amount Up to About 4 Percent”
The Defendant argued that these terms were indefinite, whereas Plaintiffs contended that “the specification confirm[ed] that the percentages [were] weight percentages on the total weight of the coated particle.” Id. at 20-21. “A claim will be found indefinite only if it ‘is insolubly ambiguous, and no narrowing construction can properly be adopted . . . .’” Id. at 21 (quoting Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306, 1319 (Fed. Cir. 2008). Looking at the limitation of the claim, the Court decided to construe the claim as Plaintiffs’ contended because it was the “only reasonable interpretation . . . .” Id. at 22-23.
The Court also addressed Defendant’s arguments regarding the validity of a certain claim. Defendant argued that “Claim 1 of the ‘215 patent [was] inoperative as calling for the impossible.” Id. at 25. The Court ultimately decided to reserve its decision on that issue due to the early stage of the litigation. Id.
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