Posted On: April 30, 2012

Judge Robinson Denies Motion to Dismiss and Rule 11 Motion for Sanctions, Ruling That Dismissal Would be Premature and Sanctions Inappropriate at Early Stage of the Case

In Technology Innovations, LLC v. Amazon.com, Inc., C.A. No. 11-690-SLR, Judge Robinson denied defendant’s motion to dismiss for failure to state a claim and its motion for sanctions under Rule 11. Id. at 1. Plaintiff filed suit against defendant for infringement of two patents-in-suit. Id. at 1-2. In the complaint, Plaintiff alleged that certain of defendant’s e-book products infringed the patents-in-suit. Id. at 2. In response, defendant moved to dismiss the allegations involving one of the patents-in-suit under Rule 12(b)(6). Id. at 2. Specifically, defendant argued that the complaint failed to “allege sufficient facts to support a claim of infringement” of at least one of the patents-in-suit. Id. at 2. In addition, defendant argued that “there is no possible construction for ‘book’ that would cover [any of defendant’s products]” and “therefore, claim construction proceedings [were] not necessary,” and at least one of the patents-in-suit “should be dismissed from the case.” Id. at 3. Plaintiff, on the other hand, argued that the issue was one of claim construction and that dismissal under Rule 12(b)(6) was inappropriate. Id. at 3-4. The Court agreed. Id. at 4. In denying defendant’s motion, the Court made clear that it was “not prepared to engage in a claim construction exercise . . . at this stage of the proceedings, with no context provided by discovery or a motion practice.” Id. at 4. The Court concluded that the complaint “passes muster under Rule 8” and that dismissal based on the current record would, therefore, be “premature.” Id. at 4-5.
In support of its Rule 11 motion for sanctions, defendant argued that sanctions against plaintiff were appropriate because there was “no possibility” of infringement by defendant’s accused products. Id. at 5. The Court disagreed, declining to “award sanctions at this early stage of the case.” Id. at 5. In, however, denying defendant’s Rule 11 motion without prejudice, the Court warned that it would “entertain a renewed motion [for sanctions] if it is later determined, after discovery and a full claim construction record, that plaintiff’s assertion . . . against defendant’s products was so lacking in merit that the imposition of sanctions is warranted.” Id. at 5.

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Posted On: April 30, 2012

Judge Burke construes claim terms of patent related to aircraft seating systems

In Virgin Atlantic Airways Ltd. v. Delta Airlines, Inc., C.A. No. 11-61-LPS-CJB (D. Del. Apr. 27, 2012), Judge Burke issued a Report and Recommendation construing the claim terms of U.S. Patent No. 7,469,861 entitled “Seating System and a Passenger Accommodation Unit for a Vehicle.”  The ‘861 patent discloses a seating system “by which the passenger seats are oriented at an angle to the aisle . . . of the plane.”  Id. at 2.  The principal focus of the ‘861 patent “appears to be on seating systems that convert to a ‘substantially flat bed.’”  Id.  Judge Burke construed the following claim terms:

“substantially flat bed”

“having”

“behind”

“substantially horizontal surface”

“upper sleeping surface”

“about the same height”

“usable space to a passenger”

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Posted On: April 27, 2012

The District of Delaware gets third Magistrate Judge

On April 25, 2012, the Honorable Sherry R. Fallon was sworn in as a United States Magistrate Judge, joining Magistrate Judges Thynge and Burke. Prior to this appointment, Judge Fallon was a partner at Tybout, Redfearn & Pell specializing in insurance defense, insurance coverage and bad faith litigation, toxic tort, product liability, retailers' premises liability, construction litigation, creditors' claims in commercial bankruptcies, and defense of employment litigation claims. Click here for Judge Fallon's Web page.

Posted On: April 26, 2012

Judge Robinson Finds Personal Jurisdiction over Nevada Defendants, but Orders Transfer

Judge Robinson recently considered motions for a preliminary injunction, to dismiss, and to transfer in a Lanham Act case with colorful facts.  Capriotti’s Sandwich Shop, Inc. v. Taylor Family Holdings, Inc., C.A. No. 12-28-SLR (D. Del. Apr. 25, 2012).  The case involves Capriotti’s, a Nevada corporation with franchised locations primarily in Delaware and Nevada.

Judge Robinson first determined that the defendant, Taylor Family Holdings, was amenable to jurisdiction and venue in the District of Delaware.  TFH had initiated a second case in the Delaware Court of Chancery against Capriotti’s after Capriotti’s filed its complaint and motion for a preliminary injunction in the District Court.  The Chancery litigation was stayed pending the outcome of the District Court litigation, and TFH moved to dismiss for lack of jurisdiction.  Judge Robinson found that on these facts and consistent with various authority, “by filing the suit in the Delaware Court of Chancery, defendants at bar have waived jurisdictional defenses and consented to the jurisdiction of this court.  Defendants ‘can claim no unfairness based upon this court’s exercise of jurisdiction over [them], since one who enjoys the full benefits of access to a forum’s courts as plaintiff may not simultaneously claim immunity from that forum's authority as defendant.’”  Id. at 15-18 (citing Marron v. Whitney Group, 662 F. Supp. 2d 198 (D. Mass. 2009)).

Judge Robinson also heard testimony in support of the motion for a preliminary injunction and determined that a key witness was in Nevada and had not testified in Delaware.  Because of this witness’s absence from the Delaware litigation, Judge Robinson refused to grant a preliminary injunction.  Id. at 19-20.  She also determined that the case was one where “the reasons to transfer strongly favor defendant,” and ordered transfer to the District of Nevada.  Although Delaware was a legitimate venue, the dispute regarding the injunction “arose in Nevada between two Nevada-based businesses and only a Nevada court can exercise personal jurisdiction over critical fact witnesses.”  Id. at 20-21.

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Posted On: April 25, 2012

Judge Robinson denies motion to stay pending appeal of PTO's rejection of claims on reexamination

Judge Robinson denied today a motion for separate trials on two asserted patents, and for a stay as to one of those patents pending the outcome of an appeal to the Board of Patent Appeals and Interferences (“the Board”). Leo Pharma A/S v. Tolmar, Inc., Civ. No. 10-269-SLR (D. Del. Apr. 25, 2012). In this ANDA case, the plaintiff appealed to the Board the PTO’s rejection of all asserted claims of the ‘013 patent, and represented to the Court that if the Board upheld the PTO’s rejection, an appeal to the Federal Circuit would follow. The defendant argued that the plaintiff’s true motive for the “eleventh hour” motion (discovery was completed and trial was to begin in about two months) was improperly to prolong the 30 month stay under the Hatch-Waxman Act and, further, that the resources of both the Court and the parties would be wasted if separate trials were held on the related patents. The plaintiff, for its part, countered that denying the motion to stay would result in wasted resources because the outcome of the Board appeal (which would post-date the end of trial) likely would narrow the asserted claims tried to the Court. Judge Robinson denied the motion, and explained, “[b]ecause this is a bench trial, the evidence and arguments presented by the parties can be supplemented if need be. Since neither party is willing to abide by the decision of any forum other than the Federal Circuit, this court will do what it is supposed to do, try the case.”

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Posted On: April 25, 2012

Magistrate Judge Thynge: Motion to Dismiss Denied Because Complaint Sufficiently Identified Infringing Programs and Systems

In Motivation Innovations, LLC v. Express, Inc., C.A. No. 11-615-SLR-MPT (D. Del. Apr. 24, 2012), Motivation sued various unrelated defendants for infringement of its patent related to delivering discounts and coupons and tracking customer spending habits.  The defendants collectively moved to dismiss for failure to meet the pleading standards of Rule 8, arguing that the complaint failed to “set forth a general class of products or a general identification of the alleged infringing methods.”  Id. at 6.

Motivation’s complaint contained the same allegation against each defendant, claiming that each defendant infringed “at least Claim 1 of the ‘527 Patent . . . through, among other activities, the manufacture, operation, and use of its home delivered coupon and discount programs and systems, including, but not limited to, discount programs and systems made through [each defendant’s] Rewards Program and redeemed at [defendants’] stores.”  Id.  The primary issue, as Magistrate Judge Thynge framed it, was whether this language along with an identification of the trade name of each defendant’s customer rewards program met the threshold for specificity required by Twombly and Iqbal and exemplified in Form 18.  Id. at 7-8.

Judge Thynge rejected several arguments from the defendants that this language was not sufficient.  She first found that Motivation’s reference in the complaint to the specific trade name of each defendant’s allegedly infringing discount program helped to specify the “home delivered coupon and discount programs and systems” that allegedly infringed the patent-in-suit.  Id. at 8-9.  She next explained that the conditional language of the complaint, “home delivered coupon and discount programs and systems, including but not limited to discount offers,” was acceptable because the complaint went on to specifically identify “coupon and discount programs and systems” and describe the programs and systems through trade names.  Id. at 9-10.  Finally, the defendants argued that the specifically-referenced claim 1 covered only redeeming offers, while the complaint did not mention a system or method for redemption.  Judge Thynge rejected this argument, finding that “Plaintiff is not required to plead specific claims of the patent allegedly infringed or describe in detail how the allegedly infringing products work.” Id. at 10-11.

For all of these reasons, Judge Thynge found that the complaint sufficiently stated a claim and recommended denial of the motion to dismiss and granting Motivation leave to amend to provide the correct name or a description of the Victoria’s Secret rewards program.  Id. at 11-12.

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Posted On: April 23, 2012

Judge Thynge Grants Motion to Consolidate Cases Involving Same Parties, Same Accused Products and Related Patents; Denies Request for a Stay

In Masimo Corp. v. Philips Elecs. North America Corp., C.A. No. 11-742-LPS-MPT, Judge Thynge granted in part and denied in part defendants’ motion to consolidate and stay a later filed patent infringement suit involving the same parties and related patents. Id. at 1. Plaintiff filed a first action against defendants for infringement of fourteen patents relating to pulse oximetry technology. Id. at 2. Defendants responded asserting counterclaims for infringement of ten patents of their own against plaintiff. Id. at 2. The Court later reduced the number of patents-in-suit in the first action from twenty-four to seven. Id. at 2. Discovery in the first action had progressed and claim construction had been completed. Id. at 3. Thereafter, plaintiff filed a second action against defendants alleging infringement of two additional patents. Id. at 3. In response, defendants moved to consolidate the two actions and stay litigation of the two additional patents asserted in the second action. Id. at 3. On their motion to consolidate, defendants argued that consolidation was appropriate because, among other things, the second action “involves the same family of patents, same technology and the same accused products” as the first action and that by consolidation judicial resources would be “conserved.” Id. at 4. Plaintiff countered that consolidation of the two actions would only cause “further delay” and likely prevent it from obtaining the injunctive relief it seeks. Id. at 6-7. The Court ruled in favor of consolidation. Id. at 9. In its analysis, the Court agreed with defendants, concluding that because the two cases involve the same parties, same patents, and likely the same witnesses and evidence, and because the issues were so “closely intertwined” judicial resources would indeed likely be conserved by consolidating the two cases. Id. at 9.
On the other hand, regarding defendants’ request that litigation of the patents at issue in the second action be stayed pending the outcome of litigation of the patents at issue in the first action, the Court determined that the competing interests did not favor granting a stay. Id. at 15. The Court noted that it was “uncertain whether resolution of the [patents at issue in the first action] would settle any issues relating to the [patents at issue in the second action].” Id. at 11. The Court also pointed out that “[r]esuming litigation after a protracted stay would also carries distinct problems associated with the passage of time, such as stale evidence, faded witness’ memories, and lost documents and information.” Id. at 14.

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Posted On: April 23, 2012

Court again finds that Exergen, and not Therasense, provides standard for pleading inequitable conduct.

The Court recently denied, without prejudice, a defendant’s motion for leave to file an amended answer, and in the process addressed the appropriate standard for pleading inequitable conduct in light of the Federal Circuit’s opinion in Therasense, Inc. v. Becton, Dickinson and Co., 649 F.3d 1276 (Fed. Cir. 2011). Bayer Cropscience AG v. Dow Agrosciences LLC, C.A. No. 10-1045 (RMB/JS) (D. Del. Apr. 12, 2012). In Bayer Cropscience, the defendant sought to amend its answer to add an inequitable conduct counterclaim and related affirmative defense. The plaintiff opposed the proposed amendment, arguing that the amendment was futile because it failed to allege facts upon which the “single most reasonable inference” to draw was that the inventor specifically intended to deceive the PTO. Id. at 9-10. The Court, citing then-Magistrate Judge Burke’s recent report and recommendation in Wyeth Holdings Corp. v. Sandoz, Inc., C.A. No. 09-955-LPS-CJB (D. Del. Feb. 3, 2012) (adopted by Judge Stark on March 1, 2012), explained that Therasense “discussed the evidentiary standard to be used at trial … [and] did not evaluate the sufficiency of the parties’ pleadings.” Id. at 10. Accordingly, the Court explained that the appropriate standard was not the “single most reasonable inference” standard articulated in Therasense, but instead was whether, under Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312 (Fed. Cir. 2009), the defendant "pled sufficient facts from which a reasonable inference can be drawn that material information was not given to the PTO because [the plaintiff] specifically intended to deceive the PTO.” Id. at 10-11.

The Court found that it could not reasonably infer from the facts alleged in the proposed amended answer "that [the inventor] had a specific intent to deceive the PTO simply because he did not reveal one aspect of the results published in his 1995 article.” The Court added, “[t]his is especially true since [the defendant] does not allege that [the inventor] had any role or involvement in the prosecution of the ‘401 patent … [or that the inventor] had a direct personal stake in the outcome of the prosecution.” Id. at 11-12. Further, the defendant’s argument that the inventor specifically intended to deceive the PTO was “at odds with the objective fact that [the inventor] published the allegedly incriminating information...” in a paper while the ‘401 patent was being prosecuted: “The Court agrees with [the plaintiff’s] argument that ‘[the defendant] offers no reasonable explanation for why [the inventor] would tell the whole world in a later publication something he didn’t want the PTO to know.’” Id. at 12.

Although the Court found Exergen, and not Therasense, to be the appropriate pleading standard for inequitable conduct, it explained that Therasense was nevertheless relevant because it rejected the former “sliding scale” analysis under which intent could be inferred based upon a showing that material information was withheld, or under which withheld information could be inferred to be material where an intent to deceive was sufficiently alleged. Id. at 7, 12-13 (citing Therasense, 649 F.3d at 1290-91).

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Posted On: April 23, 2012

Judge Andrews construes claims of patents directed to technology for locating experts

In XpertUniverse, Inc. v. Cisco Systems, Inc., C.A. No. 09-157-RGA (D. Del. Apr. 20, 2012), Judge Andrews recently construed the following claim terms of U.S. Patent Nos. 7,499,903 and 7,366,709 directed at technology for locating an expert using a computer-based inquiry:

"underlying plurality of criteria groupings" and "underlying criteria grouping(s)"
"skill-set database"
"expert having individualized knowledge"
"unique numerical routing identifier," "unique numeric routing identifier," and
"numeric routing identifier"
"match and route system"
"layer(s) of inquiry type(s)"
"inquiry type(s)"
"receiving from the user a response to the presentation of a first member of the
underlying criteria grouping"
"the response triggering the presentation of further members of the underlying
criteria grouping"
"upon a user's request for assistance with at least one of the predetermined
semantically-expressed inquiry type"
"upon the receipt of a user request for assistance with at least one of the
predetermined semantically-expressed inquiry type"
"the host server communicably connected with an inquiry-type database and a skillset
database"
"subject list style"
"member of an organization"/"member of the organization"
"inquiry type(s)"
"inquiry criteria"
"underlying criteria"
"values"
"interactive problem definition page"
"inquiry criteria values"
"plurality of monitors"
"the processor being configured to extract unique combinations from the database
and evaluate the combinations"

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Posted On: April 18, 2012

2012 Federal Trial Practice Seminar: An Introduction to Federal Practice in the District of Delaware

The Delaware Chapter of the Federal Bar Association, in conjunction with the United States District Court for the District of Delaware, is pleased to announce another exciting new initiative. On the evenings of Thursday, May 17 and Thursday, May 31, 2012, from 5:00 to 7:30 p.m., the District Court and FBA will sponsor a two-night seminar program entitled “The Federal Trial Practice Seminar Presents: An Introduction to Federal Practice in the District of Delaware.” The sessions will take place in Courtroom 2B at the J. Caleb Boggs Federal Building.

Attorneys who have been practicing in the District for three years or less are eligible to participate in this seminar. One of the two seminar sessions will relate to an attorney’s interaction with opposing counsel and participation in the litigation process, while the other session will focus on an attorney’s interaction with the Court. Each session will include a presentation from a speaker and a panel discussion. The speakers and panel members will be current and/or former judges of the District Court.

Participation is limited to FBA members. Current FBA members may register for the seminar by contacting Steve Brauerman via e-mail at sbrauerman@bayardlaw.com, by no later than May 14, 2012. Those interested in participating in the seminar who are not currently FBA members may fill out and submit the attached application form in order to become a member.
Alternatively, they may contact Mr. Brauerman at the e-mail address listed above to obtain additional information about FBA membership.

Space for the seminar is limited and applicants will be accepted on a first-come, first-served basis. Applicants should be available to attend both sessions. Admission to the seminar is free and the FBA expects to apply for Continuing Legal Education credit in Delaware for both sessions.

The "Introduction to Federal Practice" seminar will be organized by the same administrative team that has organized our successful "Federal Trial Practice Seminar" (or "FTPS") in 2010 and 2011. The FTPS, an eight-week trial skills seminar program offered to attorneys in their first ten years of practice, will be next offered again in Spring 2013.

Federal Bar Association Membership Application

Posted On: April 17, 2012

Judge Sleet: Markman Order in Telecommunications Patent Litigation

Chief Judge Sleet recently issued a Markman order construing the following claim terms in two separate patents relating to mobile telecommunications:
- “intelligent gateway”
- “mobile network”
- “said roamer”
- “routing center”
- “said mobile switch center”
- “is identified as”
- “adapted to enable a call dialed . . . as said dialing sequence to be routed to said destination number”
- “adapted to deliver short messages”
- “said characteristics being obtained by said gateway using knowledge of a second cellular telephony network”
- “said intelligent gateway being adapted to obtain information for said call completion using knowledge of said second cellular telephony network”
- “coupling to; being coupled to; being respectively coupled to”
- “packet-switch network”
- “other intelligent gateways”
- “other mobile networks”
In construing these terms, Judge Sleet relied upon The Institute of Electrical and Electronics Engineers dictionary and Newton’s Telecom Dictionary in finding that certain terms had established meanings as technical terms of art when the patents-in-suit were filed. Starhome GMBH v. AT&T Mobility LLC, C.A. No. 10-434-GMS, at 1, 3 (D. Del. Apr. 12, 2012). Importantly, Judge Sleet also rejected an attempted “last-minute change to [] proposed construction the night before the Markman hearing as contravening the court’s standing Orders regarding Markman briefing.” Id. at 2. Rather, Judge Sleet relied on the proposed constructions submitted in the parties’ joint claim construction chart.

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Posted On: April 15, 2012

Magistrate Judge Thynge: Bill of Costs Granted in Part, Denied in Part

Magistrate Judge Thynge recently reviewed a bill of costs in Cordance Corp. v. Amazon.com, Inc., C.A. No. 06-491-MPT (D. Del. Apr. 11, 2012). The court considered $591,824.69 in printing, electronic discovery, exemplifications, deposition expenses, filing fees, and witness fees and subsistence costs, and granted the bill of costs in part and denied it in part. Judge Thynge found no evidence of dilatory tactics by Amazon, but did reduce some of the costs requested.
In order to recover electronic discovery costs, she required Amazon to produce documents that distinguish the costs for converting documents, which were recoverable, from costs for processing, which were not. Id. at 9. Costs of exemplifications were limited to the amount attributable to “the actual presentation of the exhibits and documents,” not for “the intellectual effort involved in their production.” Id. at 11. With regard to deposition costs, Judge Thynge refused to allow reimbursement for depositions that were not used at trial and depositions of which Amazon failed to prove “a substantial portion” was used at trial. Id. at 12-20. Finally, Judge Thynge granted Amazon’s requests for witness expenses because Amazon had provided sufficient documentation supporting witnesses’ travel costs and had provided evidence of an agreement between the parties that witness fees would be recoverable if Amazon prevailed. Id. at 21.

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Posted On: April 15, 2012

Magistrate Judge Thynge: Order Regarding Source Code Dispute

Magistrate Judge Thynge recently resolved a source code dispute between MobileMedia Ideas LLC and Apple Inc. The dispute arose because Apple contended that because the patents-in-suit are systems patents, MobileMedia must identify accused products including both specific hardware devices and the specific versions of software they run. MobileMedia, on the other hand, contended that it need only identify the hardware products that it was accusing, which it had done in its original infringement contentions. MobileMedia Ideas LLC v. Apple Inc., C.A. No. 10-258-SLR/MPT, at 1 (D. Del. Apr. 11, 2012).
Apple produced what MobileMedia contended was a representative version of Apple’s iOS software and MobileMedia’s experts analyzed the source code. Apple later produced the source code for three other versions of the iOS software, and the Court noted that it would take MobileMedia considerable time and resources to review the additional source code and expert reports were fast approaching. The Court therefore granted MobileMedia’s proposed order which required Apple to identify any of the later-produced source code that it intended to rely on for determining liability. The Court also added this same requirement for MobileMedia, ordering that “[s]hould [MobileMedia] rely on that Apple Source Code for the purposes of determining liability of that accused functionality, it shall provide a supplemental opinion to Apple limited to that Apple Source Code from its previously identified expert(s) including the bases and reasons for that opinion consistent with Fed. R. Civ. P. 26(2)(B).” Id. at 4.

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Posted On: April 14, 2012

Judge Robinson Denies Defendants’ Motion to Dismiss Claims for Direct, Indirect and Willful Infringement in Multi-Defendant Patent Infringement Suit

In Walker Digital, LLC v. Facebook, Inc., C.A. No. 11-313-SLR, Judge Robinson denied defendants’ motion to dismiss plaintiff’s claims for direct, induced, contributory and willful infringement. Id. at 1. Plaintiff filed suit against multiple defendants for infringement of two patents-in-suit relating to e-commerce transaction technology. Id. at 1-2. Plaintiff alleged that defendants “ha[ve] and continue[] to directly, indirectly and willfully infringe” the patents-in-suit. Id. at 2. Two of the defendants in the case moved to dismiss the allegations against them for failure to state a claim. Id. at 3. These defendants argued that the amended complaint was “ripe for dismissal for failure to state a claim” because: (1) “the accused marketing promotions on their face show that they do not satisfy the ‘unless and until’ claim limitation of the patents-in-suit” and that amended complaint (2) lacks factual allegations sufficient to state a claim for indirect and willful infringement.” Id. at 3. The Court denied defendants' motion.
Regarding the claims for direct infringement, and despite defendants’ arguments to the contrary, the Court concluded that “dismissing the amended complaint on the grounds that it fails to state a claim for direct infringement would be premature” and that the Court was “not prepared to engage in a claim construction exercise at this stage of the proceedings, with no context whatsoever provided by discovery or a motion practice.” Id. at 5. Regarding the claims for inducement, the Court found that the plaintiff’s allegations “pass[ed] muster under Rule 8” and were therefore sufficient for pleading purposes. Id. at 10. Citing the Supreme Court’s decision in Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060, 179 L. Ed. 2d 1167 (2011), the Court noted that “if a complaint sufficiently identifies, for purposes of Rule 8, the patent at issue and allegedly infringing conduct, a defendant’s receipt of the complaint and decision to continue its conduct despite knowledge gleaned from the complaint satisfies the requirements of Global-Tech.” Id. at 11.
Likewise, regarding the claims for contributory infringement, the Court found that the allegations of the amended complaint satisfied each of the elements of contributory infringement; were “facially plausible” and provided defendants “adequate notice” of the claims asserted against them. Id. at 12. Finally, regarding the claims for willfulness, the Court determined that the allegations of the amended complaint were sufficiently pled to state a claim for willful infringement. Id. at 14. The Court noted that the “amended complaint provides evidence that [defendants] had pre-suit knowledge of the patents-in-suit due to . . . interactions with [plaintiff’s] representatives, which occurred before the original complaint was filed” and that the Court can “infer from [defendants’] conduct after plaintiff filed its original complaint that [defendants] knew or should have known the objectively high likelihood that [their] continuous and deliberate actions would constitute infringement of the patents-in-suit.” Id. at 14-15.

Continue reading " Judge Robinson Denies Defendants’ Motion to Dismiss Claims for Direct, Indirect and Willful Infringement in Multi-Defendant Patent Infringement Suit " »

Posted On: April 13, 2012

Judge Bumb distinguishes Link A Media denying transfer to Northern District of California

In Tessera, Inc. v. Sony Electronics Inc., et al., C.A. No. 10-838-RMB (D. Del. Mar. 30, 2012), Judge Bumb, sitting by designation, denied defendant Renesas motion to transfer to the Northern District of California distinguishing the Federal Circuit's decision in In re Link A Media. Renesas, a Japanese corporation with its principal place of business in Japan, argued that Link A Media supported transfer. Id. at 9 n.4. Judge Bumb disagreed noting that in Link A Media the Federal Circuit "found that the District Court had placed undue weight on the plaintiff's choice of forum where the plaintiff filed suit in Delaware and the only meaningful connection with Delaware was the defendant's incorporation in Delaware. Here, in contrast, . . . the deference afforded Plaintiff's choice of forum is appropriately grounded in Plaintiff's own incorporation in Delaware." Id. (emphasis in original) (internal citations omitted).

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Posted On: April 12, 2012

Judge Andrews construes claim terms relating to system for electronic distribution of shareholder solicitation messages.

In Broadridge Financial Solutions, Inc. v. Inveshare, Inc., C.A. No. 10-75-RGA (D. Del. Apr. 11, 2012), Judge Andrews construed the following nine terms found in U.S. Patent No. 7,475,817 which claims “a system for the electronic distribution of shareholder solicitation messages”:

1. “Electronic Solicitation Message [that provides shareholder access to a solicitation content]”
2. “Solicitation Content”
3. “Authorized Party”
4. “Authorized Shareholder”
5. “Tagging”
6. “Validating that Each Shareholder Receiving the Notification is Authorized to View the Solicitation Content”
7. “A Component”
8. “A Component for Tagging the Electronic Solicitation Message to Validate that a Shareholder is Authorized to View the Solicitation Content”
9. “Electronic messaging”

The parties agreed upon the construction of the terms “Electronic Solicitation” and “A Proxy Platform”.

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Posted On: April 10, 2012

Judge Robinson denies 12(b)(6) motions and motion to stay pending resolution of related appeal.

In a recent memorandum opinion, Judge Robinson denied Sony's motions to dismiss inducement and willfulness claims and to stay pending the resolution of an appeal in an earlier related case. Apeldyn Corp. v. Sony Corp., et al., C.A. No. 11-440-SLR (D. Del. Apr. 4, 2012). In denying Sony’s motion to dismiss the inducement claim, the Court explained that a complaint that “sufficiently identifies, for purposes of Rule 8, the patent at issue and the allegedly infringing conduct, [and] a defendant’s receipt of the complaint and decision to continue its conduct despite the knowledge gleaned from the complaint” can satisfy the elements of an inducement claim under Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060, 2068 (2011). Id. at 9. The Court explained that Sony indisputably knew that its conduct was alleged to induce infringement at least as of the filing of the earlier complaint, and Apeldyn sufficiently alleged that Sony continued to engage in that conduct despite its knowledge. Id. at 7. The Court next addressed the willfulness claim, and explained that although “a willfulness claim asserted in the original complaint must necessarily be grounded exclusively in the infringer’s pre-filing conduct,” quoting In re Seagate Tech., LLC, 497 F.3d 1360, 1374 (Fed. Cir. 2007), the “pre-filing conduct” requirement as it related to this second filed action by Apeldyn included the participation in the earlier filed case. Id. at 11. Accordingly, the Court found that Apeldyn’s complaint sufficiently alleged “that Sony had knowledge of the ‘382 patent before filing of the instant suit.” Id. at 12 (emphasis added). Finally, the Court addressed Sony’s motion to stay pending the resolution of the appeal in the earlier case, and explained that although the status of this case favored a stay, the prejudice to Apeldyn weighed against a stay and it was not yet clear whether a stay likely would result in simplification of issues in this case. Id. at 16. The Court therefore denied the motion to stay without prejudice.

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Posted On: April 10, 2012

Judge Andrews grants stay in "classic case" for stay pending reexamination.

In a recent memorandum order in Round Rock Research LLC v. Dole Food Co. Inc., et al., C.A. Nos. 11-1239 (Dole), 11-1241 (Gap), 11-1242 (Hanesbrands) (RGA) (D. Del. Apr. 6, 2012), Judge Andrews granted the defendants’ motions to stay pending ex parte reexamination, finding that the posture of the litigation was “pretty close to the classic case for granting a stay[.]” Id. at 6. The Court explained that the plaintiff was a non-practicing entity seeking only monetary damages, discovery had not yet begun and there was no trial date in place, most of the claims likely to be asserted could be affected by the outcome of reexamination, and claim construction could be informed by the additional prosecution history resulting from the reexamination. Id. at 3. On balance, the Court explained, “[t]he prejudice to the Plaintiff, including any tactical disadvantage, is not great, and the other factors all clearly weigh in favor of granting the stay.” Id. at 6.

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Posted On: April 10, 2012

Chief Judge Sleet dismisses complaint, finds that plaintiff lacks standing to challenge defendant’s compliance with 21 U.S.C. § 355.

Chief Judge Sleet recently granted Mylan's motion to dismiss for lack of standing a complaint filed by Endo alleging that Mylan “failed to comply with 21 U.S.C. § 355 by failing to provide notice of its Paragraph IV certification … to the patent’s purported assignee." The Court agreed with Mylan's contention that § 355(j)(2)(B) “does not create a private right of action and therefore … Endo does not have standing to assert this challenge.” Id. n.1 (relying on Minn. Mining and Mfg. Co. v. Barr Labs., Inc. 289 F.3d 775, 782 (Fed. Cir. 2012) (holding that parties cannot seek a judicial determination of whether a private party’s paragraph IV certification complies with § 355). Because Endo lacked standing to challenge Mylan’s compliance with § 355, the Court explained that it could not rule on Endo’s infringement allegations which were included in the complaint in case “the Court determines now or at a future date that Mylan has complied with its obligations under the Hatch Waxman Act to provide notice of a Paragraph IV Certification.” Id. n.2. As a result, the Court dismissed the complaint without prejudice.

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Posted On: April 9, 2012

Judge Andrews Grants Motion to Transfer Where Plaintiff is the “Equivalent of a Non-Delaware Corporation” and Balance of Convenience Favors Transfer

In Signal Tech, LLC v. Analog Devices, Inc., C.A. No. 11-1073-RGA, Judge Andrews recently granted defendant’s motion to transfer concluding that the “balance of convenience” factors favored transfer. Id. at 8. Plaintiff in this case is a Delaware limited liability company, which was formed less than two months before filing suit for patent infringement against defendant. Id. at 4. Defendant, on the other hand, is a Massachusetts corporation with its principal place of business in Massachusetts. Id. at 2. After filing its answer to the complaint denying plaintiff’s allegations of infringement, defendant filed a motion to transfer this case to the District of Massachusetts. Id. at 2. Following full briefing and oral argument on the motion to transfer, the Court concluded that the balance of convenience tipped in defendant’s favor and that transfer to the District of Massachusetts was warranted. Id. at 8. The Court found that there was “no connection at all to Delaware” but that there was “a substantial connection to Massachusetts.” Id. at 8.

In its analysis of the Third Circuit’s Jumara factors, the Court noted that plaintiff, in large part because it had just recently been formed as a Delaware entity, had “no principal place of business” and “no claim on Delaware as venue based on its incorporation.” Id. at 4. The Court also noted that plaintiff had “no employees,” with the exception of a “lawyer owner in North Carolina” and two other “owners/investors” in Washington, D.C. Id. at 5. The Court pointed out that, for purposes of its analysis, plaintiff was the “equivalent of not being a Delaware corporation.” Id. at 7. Thus, plaintiff’s choice of Delaware as the forum in this case was not entitled to as strong a weight as it would have been if plaintiff had its principal place of business (or any business) in Delaware. Id. at 4. After considering the applicable Jumara factors and the Fed. Cir.’s recent decision in In re Link_A_Media Devices Corp., the Court ultimately concluded that on these facts the “only connection to Delaware in this case is that it is the plaintiff’s choice of forum – which since plaintiff is (the equivalent of) a non-Delaware corporation with no connection of any kind to Delaware, is not entitled to ‘paramount’ consideration.” Id. at 9. In contrast, the Court noted that defendant had 3,200 U.S. employees and two-thirds of those employees worked in Massachusetts. Id. at 4. In considering the location of witnesses, the Court further noted that the bulk of the fact witnesses (i.e., defendant’s current and ex-employees) would likely be located in Massachusetts and that it was unlikely that there would be any witnesses from Delaware or the surrounding states. Id. at 5. The Court also found that there were no records identified as only being available in one of the two fora. Id. at 6.

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Posted On: April 9, 2012

Judge Andrews Reviews Objections to Counterclaims and Applies New Federal Circuit Standard

In Quantum Loyalty Systems Inc. v. TPG Rewards Inc., C.A. No. 09-22-RGA (D. Del. April 4, 2012), Judge Andrews reviewed the findings of a Magistrate Judge, after the plaintiffs filed objections to those findings.  Judge Andrews first found that two of the plaintiffs’ objections were subject to review for abuse of discretion and that there had not been such an abuse.  Therefore, those objections were denied.  Id. at 1-2.

He then considered the plaintiffs’ two objections that the Magistrate Judge’s rulings were “contrary to law.”  The first of these was the Magistrate Judge’s decision that the defendants’ counterclaims for noninfringement and invalidity of patents related to the patent-in-suit did not state a “case or controversy.”  After the Magistrate Judge’s decision, the Federal Circuit decided Streck, Inc. v. Research & Diagnostic Systems, Inc., 665 F.3d 1269, 1283 (Fed. Cir. 2012), in which it held that “a counterclaimant must show a continuing case or controversy with respect to withdrawn or otherwise unasserted claims.”  Because the defendants had not met this standard, Judge Andrews found the plaintiff’s objection well-taken and dismissed the counterclaims.  Id. at 2.

Finally, Judge Andrews denied the plaintiffs’ motion to transfer cybersquatting counterclaims to the Southern District of New York.  Although the parties had previously settled litigation there, their settlement agreement provided only that issues concerning that court’s final judgment were subject to the jurisdiction of that court.  The present controversy related to a different domain name and would involve only issues concerning the settlement agreement rather than the previous judgment.  Therefore, there was no basis to transfer the counterclaims.  Id.

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Posted On: April 9, 2012

Claim Construction in LASIK Patent Litigation

In Neev v. Abbot Medical Optics, Inc., C.A. No. 09-146-RBK (D. Del. Mar. 26, 2012), the plaintiff was the owner and inventor of a patent encompassing a laser used in LASIK corrective vision surgery.  He brought suit against the defendant for its sale of a product used in LASIK, and the defendant asserted invalidity and noninfringement counterclaims.  After holding a Markman hearing, the Court adopted several claim constructions the parties had agreed upon and construed the following terms itself:

  • “operating the source and manipulating the beam parameters”
  • “manipulating beam parameters”
  • “manipulating parameters of the beam”
  • “adjusting characteristics of the electromagnetic radiation beam”
  • “varying at least one of the following beam parameters”
  • “interaction energy transients”
  • “preparing the target region of the target material by spatially or temporally varying at least one of an absorption characteristic of the material or a scattering characteristic of the material at the target region”
  • “operating the source at a pulse repetition rate greater than 0.1 pulses per second until a target volume in the target region has been modified”
  • “allowing interaction energy transients caused by the electromagnetic pulses to substantially decay so that material modification is effected”
  • “allow interaction energy transients caused by the pulsed electromagnetic radiation beam to decay sufficiently such that the material can be modified”
  • “cumulative residual thermal energy left in the material by a pulse train”
  • “controlled, variable rate material modification”
  • “highly controllable, variable rate material removal”
  • “target material”
  • “target region”
  • “material removal by a continuously emitting, continuous wave (CW) beam of electromagnetic radiation”
  • “continuously emitted electromagnetic radiation”
  • “redistributing the beam in time and space to form at least one modified beam comprising a plurality of pulses”
  • “plasma”

The Court adopted the defendant’s construction of “target region” and “target material,” but adopted the plaintiff’s construction of all other terms.  The Court also denied the defendant’s motion to strike parts of the plaintiff’s opening Markman brief, finding that the sections in question, which explained the state of the known research in the field as well as the plaintiff’s state of mind at the time of the plaintiff’s invention, were relevant and were not hearsay.

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Posted On: April 6, 2012

Judge Robinson Denies Summary Judgment of Claim Preclusion

Recently, in SRI International, Inc. v. Symantec Corporation, C.A. No. 11-131-SLR (D. Del. Mar. 30, 2012), Judge Robinson denied summary judgment of claim preclusion.  SRI had previously litigated the same patents against Symantec in a separate case.  In that previous case, one witness discussed MSS, the accused product of the present case.  The jury was not, however, asked to determine whether MSS infringed the patents-in-suit.  Symantec then argued in the present case that “because there was mention of MSS during the course of the [previous] case and at trial, SRI should be precluded from pursuing the instant litigation.”  Id. at 9.

Judge Robinson found, however, that Symantec’s position suffered from “two infirmities, both of which are undisputed.  First, despite multiple discovery requests in the [previous] case, Symantec did not provide SRI with any technical data on MSS.  Second, there was no specific judgment entered in the [previous] case about MSS.”  Id. at 9-10.  Because the Court found that Symantec had not proven that MSS was essentially the same as the previously-litigated product, it denied Symantec’s motion for summary judgment.

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Posted On: April 3, 2012

Judge Andrews Issues Claim Construction for Patent Directed to Dynamic Logic Circuit Technology, Rejects Argument That Disputed Claim Terms Are Indefinite

In AVM Technologies, LLC v. Intel Corporation, C.A. No. 10-610-RGA, Judge Andrews recently issued a claim construction opinion construing claim terms for U.S. Patent No. 5,859,547 (“the ‘574 Patent”), which is a patent that claims “an improved dynamic logic circuit ‘that has increased speed and reduced power.’” Id. at 2 (citation omitted). In the opinion, the Court construed the following terms:

“coupled to”
“coupled between”
“couplable to”
“coupling”
“anti-float circuit”
“precharge node”
“dynamic logic circuit”
“dynamic logic block” or “logic block”
“evaluation transistor”
“precharge transistor”
“a delay”
“for simultaneous activating”
“during a major portion of the evaluation phase”
“during a major portion of an evaluation clock phase”
“during a minor portion of the evaluation clock phase”

In both its claim construction briefing and at the Markman hearing, defendant argued that: (a) the “during a major portion of the evaluation phase” language of claim 1 of the patent-in-suit and (b) the “during a major portion of an evaluation clock phase” and “during a minor portion of the evaluation clock phase” language of claim 21 of the patent-in-suit were “not amenable to construction” and thus, “indefinite and . . . invalid under 35 U.S.C. § 112, ¶ 2." Id. at 13. The Court, however, rejected these arguments. Citing to the Federal Circuit’s decisions in Praxair v. ATMI, Inc., 543 F.3d 1306, 1319 (Fed. Cir. 2008) and Honeywell Int’l Inc. v Int’l Trade Comm’n, 341 F.3d 1332, 1338-39 (Fed. Cir. 2003), respectively, for the propositions that “the standard of indefiniteness is high” and that “a claim is indefinite only if the ‘claim is insolubly ambiguous, and no narrowing construction can properly be adopted,’” the Court held that these disputed terms were not indefinite and construed each of them. Id. at 13-15. This opinion is interesting because it provides some insight as to how the Court may handle indefiniteness arguments and other indefiniteness-related issues raised during claim construction.

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Posted On: April 3, 2012

Judge Robinson Denies Motion to Dismiss Willfulness, Direct and Indirect Infringement Claims, Concludes That the Claims As Pled Satisfied the Pleading Standard of Form 18

In Netgear, Inc. v. Ruckus Wireless, Inc., C.A. No. 10-999-SLR, Judge Robinson denied defendant’s Rule 12(b)(6) motion to dismiss plaintiff’s claims of direct infringement, induced and contributory infringement, and willful infringement. Id. at 1. Plaintiff filed an amended complaint in this action against defendant for infringement of four patents-in-suit relating to wireless communication technology. Id. In the amended complaint, plaintiff alleged that defendant “induces and/or contributes to infringement by third parties, and willfully infringes the patents-in-suit.” Id. at 2. Defendant moved to dismiss these allegations for failure to state a claim. Id. at 1-2. Defendant argued that the amended complaint should be dismissed because it: “(1) lacks basic factual support; (2) fails to comply with Form 18; (3) fails to state a claim for indirect infringement; and (4) fails to sufficiently allege willful infringement.” Id. at 2. The Court, however, disagreed. Regarding the claims for direct infringement, the Court concluded that plaintiff’s amended complaint asserts a cause of action for direct infringement “in a manner sufficient for defendant to formulate a response and defense” and that it “provides sufficient factual support and mimics Form 18.” Id. at 7. In its analysis, the Court noted that because, among other things, the amended complaint mimicked Form 18 and identified, by name, certain of defendant’s products that allegedly infringe the patents-in-suit, it complied with “the level of detail required to satisfy the pleading standard for Form 18.” Id. at 5. Similarly, regarding the sufficiency of plaintiff’s claims for inducement and contributory infringement, the Court held that they too were “facially plausible” and provided “defendant with adequate notice” of plaintiff’s indirect infringement claims. Id. at 10-11. Lastly, regarding the claims for willful infringement, the Court found that plaintiff sufficiently alleged that defendant had “pre-filing knowledge” of at least one of the patents-in-suit and that defendant had “infringed and continues to infringe the patent.” Id. at 11. Moreover, the Court expressly declined “to require more detail with respect to plaintiff’s willful infringement claims than is required by Form 18.” Id. at 11.

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Posted On: April 3, 2012

Chief Judge Sleet issues findings of fact and conclusions of law invalidating patents

The Court recently issued its findings of facts and conclusions of law following a 7 day bench trial in an ANDA case related to alleged infringement by Watson, Sandoz, and Paddock Laboratories of four patents (the ‘978, ‘359, ‘448, and ‘635 patents) that were listed in the Orange Book in connection with SANCTURA XR®, a once-a-day form of tropsium chloride used to treat overactive bladder. Allergan, Inc., et al. v. Watson Laboratories, Inc.-Florida, et al., C.A. No. 09-511 (GMS) (D. Del. Mar. 31, 2012). The Court directed the Clerk of Court to enter final judgment based on its findings that (1) the asserted claims of the patents-in-suit are invalid due to obviousness; (2) the asserted claims of the patents-in-suit are not invalid due to anticipation; (3) asserted claim 1 of the ‘978 patent and asserted claim 1 of the ‘449 patent are not invalid due to indefiniteness; (4) asserted claim 1 of the ‘359 patent is not invalid for failure to meet the written description requirement; and (5) the defendants’ proposed products infringe the asserted claims of the patents-in-suit assuming, arguendo, they are not invalid.

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Posted On: April 3, 2012

Special Master White limits plaintiff to 25 asserted claims, reduced from 60 claims

In XPRT Ventures, LLC v. eBay, Inc., et al., C.A. No. 10-595-SLR (D. Del. Mar. 26, 2012), after the completion of discovery and a couple weeks before the deadline for opening claim construction and summary judgment briefs, defendants filed an emergency motion to compel plaintiff to reduce the number of claims asserted in the case from sixty to twenty.  Plaintiff opposed defendants’ motion arguing that, while it can and should reduce the number of claims, defendants’ motion was premature.  Id. at 5. Plaintiff asked that the Court “permit XPRT the time to complete its analysis of the claims and to continue to assert all of the claims that do not contain duplicative issues of infringement or validity.”  Id. at 6.  Special Master White responded with the question, “if not now, then when?  The time has come to present the issues in dispute to the Court in an orderly fashion.”  Id.  Because plaintiff “must know what claims will be pursued before preparing its claim construction brief[,]” Special Master White order plaintiff to disclose no more than 25 asserted claims by noon on the day plaintiff’s opening claim construction brief was due to be filed.  Id.

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Posted On: April 2, 2012

Judge Andrews Construes Claim Terms in Patent Dispute Involving Semiconductor LED Technology

In Cree, Inc. v. SemiLEDS Corporation, C.A. No. 10-866-RGA, Judge Andrews recently issued a claim construction opinion construing claim terms for five patents-in-suit involving semiconductor light emitting diode (“LED”) technology used for general lighting purposes. In the opinion, the Court construed the following terms:

“dominant wavelength”
“area”
“radiant flux”
“sidewall”
“layer”
“reflector layer”
“ohmic contact layer”
“conductive barrier layer”
“directly on”
“LED structure”
“adjacent to”
“light extraction structures”
“spreader layer”
“non-transparent feature”
“non-ohmic contact”
“wherein the metal contact forms on ohmic contact”
“is aligned with the non-transparent feature”
“in a region other than a reduced conductivity area of the surface of the p-type semiconductor layer”
“photon absorbing wire bond pad”
“contact metal”
“reflective structure”
“substantially congruent”

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