Posted On: June 29, 2012

Judge Andrews grants motions to dismiss claims of indirect infringement and willfulness

In IPVenture Inc. v. Lenovo Group Limited, et al., C.A. No. 11-588-RGA (D. Del. June 29, 2012), Judge Andrews recently dismissed plaintiff's claims of indirect infringement and willfulness. Citing the Federal Circuit's recent decision in In re Bill of Lading (write up on this opinion by Dennis Crouch at Patently-O), Judge Andrews found that plaintiff's "minimal allegations" of direct infringement were all that was required to satisfy Form 18. Id. at 3. Plaintiff's indirect infringement allegations, however, did not pass muster. For example, "there [was] no allegation that defendant knew about the existence of the '599 patent"; and there was no factual support to infer that defendant knew any induced acts constituted patent infringement. Id. Regarding willfulness, although general allegations may suffice, plaintiff pled no facts describing events occurring after the patent issued. Id. at 3-4. "At most, the factual allegations plausibly support the conclusion that both the Plaintiff and Dell had patents in the thermal power and management field[.]" Id. at 4. For similar reasons, Judge Andrews dismissed plaintiff's claims of indirect infringement and willfulness for most of the remaining defendants.

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Posted On: June 29, 2012

Judge Andrews dismisses inequitable conduct counterclaims

In a recent memorandum opinion, Judge Andrews considered the sufficiency of a defendant's defensive pleadings, and most notably dismissed inequitable conduct counterclaims for failure to sufficiently plead the “who” and “when” of the alleged misconduct. XpertUniverse, Inc. v. Cisco Systems, Inc., C.A. No. 09-157-RGA (D. Del. June 19, 2012). The Court explained, “[i]n order to adequately plead inequitable conduct, the claimant must ‘recite[] facts from which the court may reasonably infer that a specific individual both knew of invalidating information that was withheld from the PTO and withheld that information with a specific intent to deceive the PTO.’” Id. at 4 (quoting Delano Farms Co. v. Ca. Table Grape Comm’n, 655 F.3d 1337, 1350 (Fed. Cir. 2011)). Cisco’s allegations included repeated references to one individual, Zelkin, whom Cisco labeled “an officer or employee of XU during prosecution”. Id. at 4. Each reference to this officer or employee was further qualified by the inclusion of the language “or one or more of the other individuals listed as an inventor”. Id. at 4-6. The Court explained, “Cisco’s allegations that Zelkin was an XU ‘officer or employee’ and that he ‘knew or should have known’ of the prior sales and prior art fall short of concretely alleging that he actually knew of the invalidating information.” Id. at 6. Further, the Court added, “[t]hese scant allegations are further diluted by the qualifiers that either Zelkin, or ‘one or more’ of the other inventors, knew about the prior sales and art and their materiality – affording the possibility that Zelkin, the only specific individual named, did not know about them at all.” Id. Cisco was given seven days to amend its pleadings to the extent possible to sufficiently allege inequitable conduct. Id. at 14.

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Posted On: June 27, 2012

Special Master Denies Plaintiff’s Motion to Permit Corporate Representatives Access to Defendants’ “Attorneys’ Eyes Only” Information

In Apeldyn Corp. v. AU Optronics Corp., et al., C.A. No. 08-568-SLR (D. Del. June 13, 2012), the Special Master recently issued a Report and Recommendation recommending that plaintiff’s motion to modify the protective order to permit plaintiff’s corporate representatives to have access to information designated Attorneys’ Eyes Only be denied. Id. at 1. In the motion, plaintiff sought modification of the protective order to permit two of its corporate representatives access to “CONFIDENTIAL – ATTORNEY’S EYES ONLY” information relating to defendants’ motions for summary judgment of non-infringement. Id. at 3. Plaintiff argued that such access was necessary for, among other reasons, its corporate representatives to: (1) “assist fully in the preparation of the briefs in the appeal of summary judgment”; (2) “manage outside litigation counsel”; and (3) “assist with the case as it progresses.” Id. at 3. The Special Master disagreed. In its analysis, the Special Master cited and applied the 3d Cir.’s decision in Pansy v. Borough of Stroudsburg, 23 F.3d 772, 790 (3d Cir. 1994) for determining whether modification of the protective order was warranted. Id. at 4. In applying the Pansy test, the Special Master concluded that permitting disclosure of defendants’ attorneys’ eyes only information to plaintiff’s corporate representatives would not “promote fairness and efficiency” in this case and was “outweighed” by the injury to the defendants that might result from such disclosure. Id. at 8, 12. The Special Master also concluded that plaintiff’s need for the information and plaintiff's stated reasons for modification of the protective order did not outweigh and were insufficient to overcome the “risk of inadvertent disclosure of Defendants’ Attorneys’ Eyes Only information to third parties which might result in competitive harm to Defendants.” Id. at 16.

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Posted On: June 27, 2012

Judge Robinson: Summary Judgment of Non-Infringement for Boston Scientific

With a July trial looming in the ongoing “stent wars” between Johnson and Johnson affiliate Cordis and Boston Scientific, Judge Robinson recently granted summary judgment of non-infringement to Boston Scientific. Cordis Corp. v. Boston Scientific Corp., C.A. No. 10-39-SLR (D. Del. June 19, 2012).

The Court construed the claim terms in question in accordance a previous finding that Boston Scientific did not infringe related patents with similar claim terms, which was affirmed by the Federal Circuit. The Court then granted Boston Scientific’s motion for summary judgment on the grounds that Cordis could not “show that the . . . stent meets the ‘undulating’ or ‘circumferentially extending turn back portion’ limitations of the asserted patents” under a construction consistent with the Federal Circuit’s opinion. Id. at 26.

Boston Scientific also moved for summary judgment that Cordis’s patent rights were exhausted because Cordis licensed the use of its patents to Abbott Laboratories, and Abbott’s subsequent sales of stents to Boston Scientific for resale were authorized. Resolution of this issue depended on interpretation of the terms “merger” and “consolidation” in the license agreement between Cordis and Abbott, which provided that Cordis could terminate the license if Abbott was involved in a merger or consolidation with a “major competitor.” Abbott subsequently acquired ACS, a division of Guidant. Although ACS was a major competitor under the license agreement, the Court applied the Delaware statutory definition of the terms “merger” and “consolidation” and found that no such merger or consolidation had occurred between Abbott and ACS. Id. at 17. The Court, therefore, also granted Boston Scientific’s motion for summary judgment on the grounds of patent exhaustion, finding that Abbott’s rights to the patents had not been extinguished and Abbott was authorized to sell the stents to Boston Scientific.

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Posted On: June 26, 2012

Judge Robinson denies motion for preliminary injunction

Judge Robinson recently denied a motion for a preliminary injunction, finding that the proper construction of a disputed claim term rendered the plaintiff unlikely to prevail on its infringement claim, and finding further that the defendant raised a substantial question concerning validity. Butamax Advanced Biofuels LLC v. Gevo, Inc., C.A. No. 11-54-SLR (D. Del. June 19, 2012). The Court rejected the plaintiff’s argument that the disputed term “acetohydroxy acid isomeroreductase” should be given its plain and ordinary meaning, and instead construed the term consistently with the narrower definition given to it in the definitions section of the patent. Id. at 10. In light of that construction, the Court explained that the plaintiff likely could not prove infringement at trial. Id. at 12. Further, the Court explained that to obtain a preliminary injunction, “the patentee must demonstrate that a defendant’s invalidity defense ‘lacks substantial merit.’” Id. at 17-18 (quoting Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1350-51 (Fed. Cir. 2001)). The Court explained, “the fact that the ‘889 patent has been rejected on reexamination, combined with the finding by the court that plaintiff’s likely claim construction is too narrow, demonstrate that defendant’s invalidity defenses do not lack substantial merit.” Id. at 20. The Court issued another opinion in this case two days later addressing various motions.

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Posted On: June 25, 2012

Judge Robinson: Counterclaims and Inequitable Conduct Claims Allowed to Proceed

Judge Robinson recently considered various motions related to counterclaims in Butamax Advanced Biofuels LLC v. Gevo, Inc., C.A. No. 11-54-SLR (D. Del. June 21, 2012). She first denied Butamax’s motion for judgment of non-infringement on the pleadings, declining “to tackle the issues of claim construction and infringement without the benefit of any introductions to the technology or to the accused ‘product’ but for Butamax’s assertions regarding same. If, however, there are a limited number of critical claim limitations, the court would entertain a course of focused discovery in order to encourage an expedited resolution of the counterclaims.” Id. at 2-3.

Judge Robinson also granted Butamax’s motion to sever counterclaims and try them separately, id. at 3, and Butamax’s motion to amend the pleadings to add allegations of inequitable conduct. She rejected Gevo’s argument that the amendments were intended “to delay the adjudication of Gevo’s counterclaims” and found that Butamax had pled inequitable conduct with sufficient particularly and that its allegations were not futile. Because the “proposed amendment satisfies the . . . pleading standard by identifying the ‘who,’ the ‘what,’ the ‘when,’ the ‘where,’ and the ‘how,’” Judge Robinson allowed the amendment. Id. at 4-6.

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Posted On: June 25, 2012

Judge Robinson precludes presentation of willfulness evidence in damages phase of case.

In a recent memorandum order, Judge Robinson rejected the plaintiff’s efforts to present willfulness evidence in the damages phase of trial. IGT v. Bally Gaming Int’l, Inc., et al., C.A. No. 06-282-SLR (D. Del. June 20, 2012). Inconsistently with Judge Robinson’s typical practice, the plaintiff had requested that it be permitted to try willfulness during the liability phase of the case. The Court permitted the plaintiff to do that, but, thereafter, the plaintiff failed to include any information about its willfulness allegations in its interrogatory responses, and the parties engaged in no discovery regarding willfulness at any time. Id. at 1-2. After the Court’s summary judgment rulings largely disposed of the liability phase of the case, the plaintiff sought to present willfulness evidence in the damages phase. Judge Robinson explained, “Plaintiff, over defendants’ objection, requested permission to pursue the issue of willfulness during the liability phase of the case. Although the court generally separates the resolution of liability from the resolution of willfulness and damages, the court granted plaintiff’s request. Plaintiff never brought up the issue of willfulness again until the April 2009 pretrial order. In seeking a second opportunity to pursue its willfulness claim, plaintiff is requesting a second bite at the apple. The court is not inclined to make two exceptions for plaintiff.” Id. at 3.

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Posted On: June 25, 2012

Judge Andrews construes claims for patents related to e-TV guides and scheduling recordings/purchasing programming via computer

In United Video Properties, Inc. et al., v. Amazon.com, Inc., et al., C.A. No. 11-0003-RGA (D. Del. June 22, 2012), Judge Andrews recently construed the following claim terms of the patents-in-suit directed to use of electronic television guides and setting future recordings of television programs or purchasing programming via personal computer (U.S. Patent Nos. 5,988,078; 6,275,268; 6,769,128; 7,493,643; and 7,603,690):

"viewing location"
"modem"
"displaying" and "displaying ... with electronic television program guide"
"program listings"
"electronic television program guide"
"standardized product"
"time and date stamping an order placed by the user with the electronic television program guide"
"multimedia informational system"
"data feed"
"video display generator"
"a receiver"
"program schedule information"
"viewer television equipment"
"program display guide"
"video-on-demand program listing"
"interactive program guide"
"package"
"determine whether the selected program is part of a package"

Judge Andrews construed the following means-plus-function terms, construing the claimed function and identifying the corresponding struction disclosed in the specification:

"means for indicating that a video clip preview is available for a video-on-demand program that is associated with a video-on-demand program listing wherein the indication is provided with
the video-on-demand program listing"

"means for displaying the video clip preview on the viewer television equipment"

"means for displaying an ordering display screen after the video clip preview of the video-on-demand program is displayed, wherein the ordering display screen provides the viewer with
the opportunity to select an ordering option to order the video-on-demand program"

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Posted On: June 25, 2012

Judge Andrews denies motions to dismiss complaint finding direct infringement allegations pass muster under Form 18

Judge Andrews recently denied defendants' motions to dismiss plaintiff's amended complaint in Select Retrieval LLC v. Amerimark Direct LLC, et al., C.A. No. 11-812-RGA (D. Del. June 18, 2012), because the complaint's "minimal allegations" stating a claim for direct infringement satisifed Rule 18. Id. at 1. Judge Andrews also found plaintiff's willfulness allegations sufficient because the complaint alleged that shortly before the complaint was filed "the defendant was notified by letter of the existance of its patent, that the defendant infringed the patent, and that the plaintiff was offering a license agreement." Id. at 2.

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Posted On: June 22, 2012

Magistrate Judge Fallon recommends transfer to District of Minnesota

In Ivoclar Vivadent AG v. 3M Company, C.A. No. 11-1183-GMS-SRF (D. Del. June 22, 2012), defendant filed a motion to transfer the case to the District of Minnesota where defendant first-filed a declaratory judgment action against plaintiff for non-infringement and invalidity of the same patent. Id. at 1-4. Plaintiff, a Liechtenstein company, opposed defendant's motion arguing that an exception to the first-filed rule applied "because [defendant] preemptively filed its declaratory judgment action in Minnesota with the intent to dictate venue prior to the formal termination of the [Confidential Disclosure Agreement that contained a covenant not to sue]." Id. at 10-11. Judge Fallon disagreed and ultimately recommended transfer rather than dismissal. Judge Fallon analyzed the Jumara factors and found that all but one factor weighed in favor of transfer or was neutral. Id. at 14-27.

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Posted On: June 22, 2012

Magistrate Judge Thynge: Request for Preliminary Injunction Denied

Magistrate Judge Thynge recently issued a report and recommendation in Neology, Inc. v. Federal Signal Corp., C.A. No. 11-672-LPS/MPT (D. Del. June 18, 2012), recommending that the Court deny Neology’s motion for a preliminary injunction against infringing the patents-in-suit. The patents-in-suit cover RFID (radio frequency identification) tags, readers, and systems for us in the U.S. highway tolling industry. In considering whether the plaintiffs had a reasonable likelihood of prevailing on the merits at trial, Judge Thynge construed several terms and considered infringement and invalidity arguments. Although Neology demonstrated a likelihood of success on the merits for some of the patents-in-suit, Judge Thynge denied a preliminary injunction with respect to all of the patents in suit because she found no irreparable harm.

In concluding that there was no irreparable harm, Judge Thynge first found that Neology had delayed substantially in seeking a preliminary injunction, as it was first aware of a defendant’s alleged infringement in fall of 2009 and its first loss of sales to the defendant in spring of 2011, but did not file suit until July 2011 and did not seek an injunction until December 2011. Such delay weighed against granting an injunction. Id. at 40. She next rejected Neology’s arguments that the defendants had denied or would deny Neology entry into the relevant product market and that the defendants’ alleged infringement had caused Neology financial harm. She did find, however, the Neology’s apparent financial strength and attractiveness to investors may have been somewhat illusory and did not undercut its assertion of irreparable harm. Id. at 53.

Judge Thynge also rejected Neology’s argument that it would suffer irreparable reputational harm because defendants’ inferior products could jeopardize the market’s transition to the RFID technology in question. She determined both that the defendants’ products were not necessarily inferior, as they had been compared favorably by independent parties, and that the defendants’ products had not caused any reputational harm to Neology’s products. Id. at 62. Finally, Judge Thynge rejected Neology’s price erosion argument based on defendants’ putting downward pressure on the price of the technology in question. She did not find persuasive evidence that defendants were pricing their products improperly and did not agree with Neology’s assertion that its own pricing was relevant to the appropriateness of defendants’ pricing. Furthermore, Judge Thynge found that even if price erosion had occurred, damages could properly compensate Neology for this harm. Id. at 69.

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Posted On: June 22, 2012

Judge Andrews grants in part motion to exclude expert testimony

In LG Electronics, Inc. v. Asko Appliances, Inc., C.A. No. 08-828-RGA (D. Del. June 22, 2012), Judge Andrews granted-in-part defendants' motion to exclude plaintiff's expert. Judge Andrews determined that the expert was not qualified to opine as to whether any reference was "prior art", but could opine as to "what different references teach, and to differentiate and compare references." Id. at 1. Judge Andrews also found that while the expert was qualified to opine about the secondary consideration of copying (due to "his expert ability to review and compare washing machine motors, their development, and their installation"), the expert could not opinion on other secondary considerations, such as commercial success, because the opinion was based on the expert's review of industry documents and knowledge of plaintiff's corporate witness, rather than his own expertise in the industry. Id. at 2.

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Posted On: June 22, 2012

Judge Stark: Summary Judgment Denied on Non-Infringement, No Indirect Infringement, and Invalidity

Judge Stark recently considered summary judgment motions from defendants Canon and Adobe in a patent infringement action brought by Tarkus Imaging. Tarkus Imaging, Inc. v. Adobe Systems, Inc., C.A. No. 10-63-LPS (D. Del. June 14, 2012). Judge Stark ultimately concluded that summary judgment was not appropriate on any point because “the portions of this case at issue in the pending summary judgment motions present a ‘battle of the experts’ that is not amendable to resolution prior to presentation of evidence, including testimony.” Id. at 1-2.

Specifically, with regard to Canon’s motion for summary judgment of non-infringement, “[t]he Court [was] not persuaded, at this stage of the proceedings, by Canon’s contentions that Tarkus is barred from asserting doctrine of equivalents infringement theories due to application of prosecution history estoppel or that Tarkus has failed to create a genuine dispute of material fact because Tarkus’s expert has not identified specifically infringing source code.” Id. at 5. The Court also denied Adobe’s motions for summary judgment of non-infringement and no indirect infringement. On the issue of indirect infringement, Adobe argued that it had no knowledge of the patent-in-suit, but the Court found that Tarkus had “presented evidence that creates a dispute of fact as to whether Adobe was willfully blind to the existence of the [patent-in-suit].” Id. at 8-9.

Finally, the Court denied Canon’s motion for summary judgment that Tarkus’s patent was invalid on the ground that a claim term lacked an antecedent basis and was therefore indefinite. An expert opinion, the Court said, “based on the plain language of the claims and the specification, is sufficient to create a genuine dispute as to whether a person of ordinary skill in the art could determine the scope of the claim and the meaning of [the claim term] despite the lack of express antecedent basis [for that term]. As a claim term without an explicit antecedent basis may nevertheless be definite if the term ‘has a reasonably ascertainable meaning . . . decided in context,’ summary judgment is not warranted based on the present record.” Id. at 10-11.

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Posted On: June 20, 2012

Judge Andrews excludes parties' patent law experts

In St. Jude Medical v. Volcano Corporation, C.A. No. 16-631-RGA-MPT (D. Del. June 15, 2012), Judge Andrews recently considered the parties’ motions to strike expert reports. Plaintiff moved to strike the expert report of defendant’s patent law expert. Id. at 1. Judge Andrews granted plaintiff’s motion finding that the contents of the report, which was “akin to a legal brief” on patent law, was not the appropriate subject of expert testimony and would not assist the trier of fact. Id. Defendant moved to strike the expert reports of plaintiff’s inequitable conduct experts. Id. Noting that no inequitable conduct defenses would be presented to a jury, and noting that portions of the reports might be inadmissible or irrelevant, Judge Andrews declined to strike the reports because parts of the reports were admissible and would assist the Court as the trier of fact on inequitable conduct. Id. at 2.

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Posted On: June 20, 2012

Judge Thynge awards costs to defendant as "prevailing party" after upholding jury verdict of non-infringement, but reversing jury's invalidity verdict

In United Access Technologies, LLC v. Earthlink, Inc. C.A. No. 02-272-MPT (D. Del. June 14, 2012), Judge Thynge recently considered defendant’s bill of costs submitted after the Court’s opinion, that reversed the jury’s verdict as to invalidity but upheld the jury’s verdict of non-infringement, was affirmed on appeal. Id. at 1-3. Plaintiff objected to defendant’s bill of costs arguing, among other things, that defendant was not the prevailing party because defendant was unsuccessful on its counterclaim of invalidity. Id. at 4 Judge Thynge disagreed. Defendant was the prevailing party because the relief it received on the merits, i.e., that it did not infringe plaintiff’s patent and was free to continue operating its DSL business, altered the legal relationship between the parties. Id. at 9. It was irrelevant that defendant was unsuccessful on its invalidity counterclaims. Because plaintiff’s patent is presumed valid, the court’s finding that defendant failed to carry its burden to prove invalidity did not “materially alter the legal relationship between the parties by modifying [defendant’s] behavior in a way that directly benefitted [plaintiff.]” Id.

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Posted On: June 19, 2012

Magistrate Judge Schneider denies motion for leave to amend infringement and invalidity contentions.

Magistrate Judge Schneider of the District of New Jersey recently reminded parties of the appropriate showing that must be made in connection with a motion for leave to amend infringement and invalidity contentions. Bayer CropSciences AG v. Dow AgroSciences LLC, C.A. No. 10-1045 (RMB/JS) (D. Del. June 7, 2012). The Court explained, “the key fact courts should look at to determine whether good cause exists to grant an amendment to a contention is the diligence of the moving party. Diligence has two aspects to it. One is whether the moving party acted diligently to discover that an amendment was appropriate. The second aspect is whether the moving party promptly moved to amend its contentions after it learned an amendment was necessary.” Id. at 3 (citing O2 Micro Intern. Ltd. v. Monolithic Power Systems, Inc., 467 F.3d 1355, 1365-67 (Fed. Cir. 2006)). In denying the motion, the Court explained, “good cause is not established simply because a party desires to respond to an amended contention. Otherwise, there would be a never ending series of amendments.” Id. at 4. In this case, Dow’s motion “did not demonstrate why its latest proposed amendment could not have been asserted earlier or why Bayer’s amendment was not anticipated.” Id.

The Court also rejected Dow’s attempt to amend its contentions through an incorporation by reference of its summary judgment briefs, explaining “[t]he Patent Rules [of the District of New Jersey] incorporated into the Court’s Scheduling Order provides that contentions may only be amended by motion. The mere fact of filing a brief is insufficient to amend a contention.” Id. at 5. Moreover, the Court explained that “Dow has not demonstrated why the contentions in its briefs were not included in its earlier filed contentions.” Id. at 6. Finally, the Court denied Dow’s attempt to add two prior art references “that were both discovered recently,” explaining that Dow’s motion “did not attempt to establish good cause for its failure to previously identify the references.” Id.

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Posted On: June 19, 2012

Magistrate Judge Burke issues report and recommendation construing claims relating to dermatological topical gel.

Magistrate Judge Burke recently issued a report and recommendation construing claims relating to a low-viscosity gel composition that operates as a “delivery system” for pharmaceutical ingredients in the treatment of skin disorders. See Medicis Pharmaceutical Corp. v. Actavis Mid Atlantic LLC, C.A. No. 11-409-LPS-CJB (D. Del. June 12, 2012). The "delivery system" was described as follows: “through the use of a ‘lightly cross-linked polyacrylic acid polymer[],’ which has a low viscosity relative to its concentration in aqueous solutions . . . the gel composition offers two principal advantages: (1) more appealing cosmetic characteristics, such as a reduction in a ‘sticky’ feel or residue; and (2) more accurate application through improved flow and pourability.” Id. at 3.

Magistrate Judge Burke recommended the adoption of the parties’ agreed-upon construction of the following claim terms, finding that they were consistent with the intrinsic record:

-- “for a period of time sufficient to improve the skin disorder” construed to mean “over a course of treatment of sufficient duration to improve the skin disorder

-- “base to adjust pH.” construed to mean “a basic compound that can be used to adjust pH.”

Also recommended were the following constructions of disputed terms:

-- “lightly cross-linked polyacrylic acid polymer” construed to mean “a cross-linked polymer of acrylic acid with a viscosity of less than about 15,000 cP, where the polymer is in a 0.5% solution at pH 7.5, as measured by a Brookfield viscometer at 20 rpm”.

-- “container” as recited in “a container that accurately administers a portion of the composition” construed to mean “a container that has a sufficiently small orifice tip to dispense quantities of the low-viscosity gel composition in accordance with treatment instructions”

-- “container” as recited in “a container from which drops are accurately administered” construed to mean “a container that has a sufficiently small orifice tip to dispense generally spherical quantities of the low-viscosity gel composition in accordance with treatment instructions”

UPDATED: Judge Stark adopted Judge Burke's Report and Recommendation on July 16, 2012 after neither party filed an objection. Medicis Pharma. Corp. v. Actavis Mid Atlantic LLC, C.A. No. 11-409-LPS-CJB (D. Del. Jul. 16, 2012).

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Posted On: June 17, 2012

Judge Andrews Affirms Magistrate Judge’s Decision to Exclude Prior Art Evidence as a Sanction for Discovery Violations

In St. Jude Medical, et al. v. Volcano Corp., C.A. No. 10-631-RGA (D. Del. June 5, 2012), Judge Andrews recently affirmed and overruled objections to the Magistrate Judge’s decision to exclude certain prior art evidence that was not properly disclosed by plaintiffs until nearly three months after the close of fact discovery. Id. at 2-3. In the opinion, the Court noted that plaintiffs’ invalidity contentions were “useless in terms of giving [d]efendant any information about what theories [plaintiffs] would actually pursue.” Id. at 3. The Court also noted that plaintiffs’ contentions included as invalidating prior art “100 patents, 21 publications, and 92 prior art systems” and that those references that were excluded were “buried amidst” these many other invalidating references. Id. at 3. The Court ultimately held that the Magistrate Judge’s decision to exclude the prior art references was neither “clearly erroneous” nor an “abuse of discretion”; concluding rather, that it was a sanction appropriately “tailored to the nature and extent of the violation.” Id. at 4.

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Posted On: June 11, 2012

Judge Stark: In Limine Rulings

Judge Stark recently issued a final pretrial order with rulings on eight different motions in limine in Tarkus Imaging, Inc. v. Adobe Systems, Inc., C.A. No. 10-63-LPS (D. Del. May 31, 2012).  Judge Stark’s in limine rulings included the following:
1.    A non-expert witness and that witness’s opinions not previously disclosed under Rule 26 are not per se inadmissible, but specific portions of testimony should be addressed by objection pursuant to the Court’s normal procedures.
2.    Defendants may not be barred wholesale from introducing undisclosed expert testimony.  Rather, objections to testimony beyond the scope of expert reports should be addressed pursuant to the Court’s normal procedures, and Defendants may elicit fact testimony from fact witnesses regarding how accused products work.
3.    Parties are not permitted to argue who “won” or “lost” claim construction, but Defendants may defend willfulness allegations by contending that their proposed constructions were reasonable.
4.    Evidence of usage or sale of components that are not the accused functionality is allowed because it is probative of induced infringement and the potential for prejudice does not outweigh the evidence’s probative value.
5.    Parties may not present evidence that other parties did not comply with the discovery rules.  Allowing the parties to relitigate discovery disputes at trial would be unfairly prejudicial, confusing, and a waste of time.

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Posted On: June 8, 2012

Judge Andrews construes terms of Walker Digital patent claiming system and method for applying lottery multipliers

In Walker Digital LLC, et al. v. Multi-State Lottery Assoc., C.A. No. 10-1113-RGA (D. Del. June 7, 2012), Judge Andrews construed the following terms of U.S. Patent No. 7,740,537 which claims a system and method to allow a lottery player to increase payout received for winning a lottery game:

“multiplier”

“is applied to”

“in which”

“lottery terminal” (no construction necessary)

“lottery server” (no construction necessary)

“redemption value”

“determine a price”

“store an indication of a price”

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Posted On: June 7, 2012

Judge Stark: jury cannot consider willfulness claim where defendant asserted reasonable claim construction and non-infringement positions.

In Tarkus Imaging, Inc. v. Adobe Systems, Inc., et al., C.A. No. 10-63-LPS (D. Del. June 5, 2012), Judge Stark granted Adobe Systems, Inc.’s motion for summary judgment of no willful infringement, explaining that because Adobe asserted “reasonable claim construction positions under which Adobe would not infringe . . . and credible non-infringement theories even under the Court’s different constructions[,]” the plaintiff could not show by clear and convincing evidence that Adobe acted despite an objectively high likelihood that it infringed a valid patent. Id. at 3-4 (discussing first prong of the Federal Circuit’s test for establishing willful infringement under In re Seagate Technology, LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007)). The Court explained that although it "did not ultimately adopt Adobe’s constructions for [the terms ‘output device’ and ‘pictorial dynamic range’] . . . the fact that Adobe asserted reasonable constructions under which its products would not infringe precludes a finding that the first prong of Seagate is satisfied.” Id. at 4. As a result, “the Court should not put the issue of willfulness – including the second “subjective” prong – before a jury.” Id. at 3 (citing Powell v. Home Depot U.S.A., Inc., 663 F.3d 1221, 1236 (Fed. Cir. 2011) (satisfying the objective first prong of the willfulness test is “a predicate to the jury’s consideration of the second prong”)). Moreover, the Court explained that Adobe asserted reasonable non-infringement theories even under the Court’s claim construction, also leading to the conclusion that the first prong of the Seagate test could not be satisfied. Id. at 5.

The Court acknowledged that the parties presented genuine disputes of material fact, but explained that those disputed facts related to the subjective second prong of the willfulness test under Seagate, “an inquiry that must not be put before the jury given Tarkus’s failure to satisfy the [objective] first prong.” Id. at 6.

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Posted On: June 6, 2012

Judge Stark enjoins launch of generic drug in sua sponte Order

In a recent ANDA case, following full post-trial briefing and in light of the approaching expiration of the 30-month stay, Judge Stark issued a sua sponte order enjoining the defendant from launching its generic product until the Court issues its opinion in the case. Galderma Labs, L.P. v. Tolmar, Inc., C.A. No. 10-45-LPS (D. Del. June 4, 2012).

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Posted On: June 4, 2012

Judge Burke Recommends That Patent Infringement Case be Transferred to the Northern District of California Under the “First-Filed Rule”

In Fuisz Pharma LLC v. Theranos, Inc., C.A. No. 11-1061-SLR-CJB (D. Del. May 18, 2012), Magistrate Judge Burke recently issued a Report and Recommendation, recommending that defendant’s motion to dismiss, stay, or transfer be granted in part, and that the case be transferred to the Northern District of California pursuant to the first-filed rule. Id. at 1. On October 26, 2011, Theranos, Inc. (“Theranos”), a Delaware corporation with its principal place of business in Palo Alto, California, originally brought suit in the Northern District of California (the “California Action”) against Fuisz Technologies, Ltd. and several members of the Fuisz family for inventorship claims under the Patent Act and state law claims alleging that the Fuisz defendants’ misappropriated Theranos’ confidential information and used that information to improperly obtain U.S. Patent No. 7,824,612 (the “’612 patent”). Id. at 2. On October 27, 2011, the same day that they were served with the original Complaint filed in the California Action, two of the individual Fuisz defendants named in the California Action assigned certain rights to the ‘612 patent to Fuisz Pharma LLC (“Fuisz Pharma”), a Delaware limited liability company with its principal place of business in Bay Harbor Islands, Florida. Id. at 3. Fuisz Pharma then filed the instant suit on November 1, 2011 in D. Del. (the “Delaware Action”) against Theranos for infringement of the ‘612 patent. Id. at 3. In response to being sued here in Delaware, Theranos filed a motion seeking to have the Delaware action dismissed, transferred to the N.D. Cal., or stayed pending resolution of the California Action, on the grounds that the California Action is the “first-filed” action. Id. at 3. Theranos argued that its motion should be granted pursuant to the first-filed rule “because it filed the California Action prior to Fuisz Pharma’s filing of the instant litigation [in Delaware], and because the California Action involves the same parties and subject matter as this action.” Id. at 7. In its opposition, Fuisz Pharma countered that the first-filed rule did not apply “because the California Action does not involve the same issues and/or the same parties as this infringement litigation [in Delaware].” Id. at 8. More specifically, Fuisz Pharma argued that the two cases are “distinctly different” because the Delaware Action is a “straight forward patent infringement action,” while in the California Action there are “other legal claims at issue.” Id. at 8.

The Court sided with Theranos, concluding that the “first-filed” rule did apply, the California action was, indeed, the “first-filed” action, and that the Jumara factors favored transfer of the Delaware Action to the N.D. Cal. Id. at 8, 35. The Court noted that: (a) “all of the parties in this action are parties to the California Action”; (b) “both cases involve . . . the ‘612 patent”; (c) the claims in both suits “stem, to a very great degree, from the same subject matter and same nucleus of operative facts,” and that (d) “if both actions were allowed to proceed simultaneously, there would be substantial risk of inconsistent judgments.” Id. at 8-14. The Court further noted that the first-filed rule has been applied in patent cases, even where the cases are not so-called “mirror image” cases, provided that the “same common subject matter exists among the two cases.” Id. at 12 (citations and quotations omitted). As part of its analysis of the Third Circuit’s Jumara factors, the Court also noted that the “existence of the first-filed California Action has a significant impact on the balancing of the public and private interests in the case” and that “the balance of those factors weigh strongly in favor of transfer.” Id. at 34.

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Posted On: June 1, 2012

Judge Stark Construes Claim Terms for Patent Directed to Digital Image Processing

In Tarkus Imaging, Inc. v. Adobe Systems, Inc., et al., C.A. No. 10-063-LPS (D. Del. May 11, 2012), Judge Stark issued a Memorandum Opinion and Order construing the claim terms of U.S. Patent No. 6,628,823 at issue in the case as follows:

- “original image” means “the image data and other data pertaining to the image prior to performing the claimed processing steps”
- “original” means “two-dimensional object (such as a print, negative, or transparency, artwork, or reproduction defined by an image file)”
- “density capabilities” means “assumed or measurable density values that an assumed or actual output device is capable of producing”
- “density” means “the negative logarithm of reflectance, transmittance, or luminance factor”
- “output device” means “a physical or assumed device used to produce or define a reproduction”
- “pictorial dynamic range” means “the range from the value representing the edge of detail in black to the value representing the edge of detail in white”
- “tone reproduction curve” means “the relationship between the tonal values of an original image and the tonal values of an intended reproduction”
- “tone” means “lightness or brightness of an element in a scene or image”
- “color space values” means “the number or combination of numbers used to represent colors”
- “initial color space values of a scene” means “a number of combination of numbers determined by a capture device to represent colors in a scene (e.g., camera raw or scene referred image data)”
- “capture device” means “a device (e.g., a camera, scanner, or computer) capable of acquiring an image of a scene or original”
- “estimating a key of the original image” means “estimating whether an original image, as a whole, is bring or dark”
- “standard output device” means “a representative real or assumed device having defined associated color space values that are commonly used in image files”
- “applying an S-shaped flex adjustment” means “changing the amount of shaped of a curve”
- “applying a shift adjustment” means “changing the bow (e.g., convexity or concavity of a curve)”
- “scene” means “a real-world view”
- “focal plane image” means “an image formed on a sensor of a capture device”
- “Image file” means “a file containing image data and optionally data pertaining to the image”

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