Posted On: April 30, 2013

Judge Sleet adopts report and recommendation, denies defendant’s renewed motion to stay pending inter partes reexamination

In a recent memorandum opinion, Chief Judge Gregory M. Sleet adopted Magistrate Judge Thynge’s report and recommendation, denying defendant’s renewed motion to stay the patent litigation proceedings pending inter partes reexamination. ImageVision.Net, Inc. v. Internet Payment Exchange, Inc., C.A. No. 12-054-GMS-MPT (D. Del. Apr. 22, 2013). In June 2012, after filing for inter partes reexamination, defendant had filed its first motion to stay. Id. at 1. Judge Sleet adopted in part the magistrate judge’s report and recommendation and denied that motion. Id. After the PTO granted defendant’s request for inter partes reexamination in December 2012, defendant filed a renewed motion to stay—the motion at issue in Judge Sleet’s recent memorandum opinion. Id. at 1-2.

First, Judge Sleet held that “the granting of an inter partes reexamination under the AlA” should not “displace the three-factor test that has been traditionally employed in assessing a motion to stay.” Id. at 5. The three-factor test, as Judge Sleet explained, “is capable of incorporating any changes resulting from the AlA.” Id. Specifically, Judge Sleet noted that to the extent defendant “focus[ed] on the more searching standard applied by the PTO in granting a reexamination request” under the AIA, the court could account for that standard pursuant to the three-factor test’s “issue simplification factor.” Id.

Having determined that application of the three-factor test was appropriate, Judge Sleet then assessed whether the magistrate judge erred in her application of that test in her report and recommendation (the “R&R”). First, with respect to prejudice to the non-moving party, Judge Sleet noted that while “delay does not, by itself, amount to undue prejudice,” Magistrate Judge Thynge properly based her finding of undue prejudice on the “potential for delay” and “the parties’ competitive relationship.” Id. at 6-7. Second, with respect to the “simplification of the issues,” defendant argued that Magistrate Judge Thynge had not given enough weight to the PTO’s grant of the reexamination request, since “[i]f . . . all claims of the [the patent-in-suit under reexamination] are invalid, then every other issue in the case will be moot.” Id. at 8-9. Judge Sleet explained that “[w]hile this may be true,” the R&R was still not in error--defendant “fail[ed] to recognize the speculative nature of its reexamination predictions, and the PTO's published statistics [that] suggest that at least some claims will survive intact or in an amended form.” Id. at 9. Third, with respect to the “stage of the ligation,” defendant emphasized that discovery was not complete and that no exact trial date was set. Id. at 9-10. Judge Sleet explained, however, that Magistrate Judge Thynge “properly examined this factor in light of other decisions from this district and found it significant that the parties have already engaged in substantial discovery.” Id. at 10. Judge Sleet adopted the R&R, finding that Magistrate Judge Thynge’s “treatment of the three factors” was “neither clearly erroneous nor contrary to law.” Id.

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Posted On: April 30, 2013

Judge Stark grants motions for summary judgment of noninfringement in vehicle navigation system suit

In a recent memorandum order, a public version of which was released on April 19, 2013, Judge Leonard P. Stark granted a motion for summary judgment of noninfringement. Vehicle IP, LLC v. AT&T Mobility LLC, Civ. No. 09-1007-LPS (D. Del. Apr. 10, 2013). At issue was alleged infringement of U.S. Patent No. 5,987,377, “Method and apparatus for determining expected time of arrival.” The defendants’ motion asserted that based on the Court’s claim construction (previously discussed here), the plaintiff could not prove infringement, either literally or under the doctrine of equivalents. Id. at 7. As the Court explained, “the ‘377 patent discloses a system and method ‘for determining an expected time of arrival of a vehicle," and “every claim requires the determination of an ‘expected time of arrival of a vehicle at a way point[.]” Id. at 8 (emphasis added). Because the defendants’ products were not able to estimate times of arrival at intermediate way points, and instead only estimated times of arrival at final destinations, the Court found that the products could not literally infringe the ‘377 patent. Id. at 8-9.

The Court next rejected the argument that the products could be found to infringe under the doctrine of equivalents. The plaintiff argued that the defendants’ products, which were capable of calculating a “remaining travel time” to intermediate way points, infringe the ‘377 patent because the “‘remaining travel time’ format is insubstantially different from a ‘time of day’ format.” Id. at 9. The Court agreed with the defendants though, that infringement under the doctrine of equivalents could not be proved without impermissibly “vitiat[ing] the negative limitation – ‘and not remaining travel time’ . . . .” Id. at 10. In short, Judge Stark explained that “no reasonable juror could conclude that ‘remaining travel time’ is equivalent to the ‘expected time of arrival’ limitation” given the Court’s claim construction. Id.

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Posted On: April 29, 2013

Judge Sleet denies defendant’s amended motion to transfer venue to Middle District of Florida

In a recent memorandum opinion, Chief Judge Gregory M. Sleet denied defendant’s amended motion to transfer venue of this patent infringement action to the Middle District of Florida. Devicor Medical Products, Inc. v. Biopsy Sciences, LLC, C.A. No. 10-1060-GMS (D. Del. Apr. 15, 2013). Plaintiff is a Delaware corporation with its principal place of business in Ohio, and defendant is a Florida corporation with its principal place of business in Clearwater, Florida. Id. at 3.

Pursuant to 28 U.S.C. § 1404(a), Judge Sleet first determined that the suit could have been properly brought in the Middle District of Florida, as defendant’s principal place of business is in Clearwater, Florida. Id. at 4. Next, Judge Sleet considered the private interest Jumara factors. Because plaintiff is a Delaware corporation but is not physically located in Delaware, its forum choice weighed against transfer and was given “heightened but not maximum weight.” Id. at 6. Defendant’s preference to litigate in Florida weighed in favor of transfer. Id. With respect to whether the infringement “claims arose elsewhere,” defendant argued that it did not commit any direct acts of infringement in the District of Delaware. Id. at 7. Judge Sleet found, however, that defendant acknowledged its “distributors had sold the accused products in Delaware,” which could establish the basis for “alleged acts of indirect infringement.” Id. Judge Sleet therefore determined that factor was neutral. Id. at 7-8. Because neither party had a physical presence in Florida and because transfer would at least save defendant “the inconvenience and expense of litigating in a distant forum,” Judge Sleet found the convenience of the parties weighed in favor of transfer. Id. at 9. With respect to the convenience of the witnesses, “neither party . . . pointed to a single witness who [would] be unavailable for trial in either Delaware or Florida,” and Judge Sleet accordingly considered that factor to be neutral. Id. Because all of defendant’s books and records were maintained in Florida, Judge Sleet found the location of the books and records to weigh “slightly in favor of transfer.” Id. at 9-10.

Judge Sleet noted that the “parties appear[ed] to agree that several of the public interest factors [were] inapplicable to or neutral in the transfer analysis.” Id. at 10. However, Judge Sleet did consider the “local interest in deciding local controversies at home.” Id. at 10-11. Defendant argued that the “Middle District of Florida has a greater interest in litigation involving claims of patent infringement against one of its residents than does [the District of Delaware].” Id. at 10. Judge Sleet rejected defendant’s position, noting that “patent infringement actions are more properly viewed as national rather than local controversies.” Id. at 10-11. Further, with respect to the “public policies of the fora,” defendant argued that public policies supported the Middle District of Florida overseeing the matter. Id. at 11. Judge Sleet found, however, that defendant failed to provide support for its conclusory allegation. Id.

Judge Sleet found that defendant failed to meet “its heavy burden of establishing that the balance of convenience tips strongly in favor of transfer,” and defendant’s motion was thus denied. Id. at 11-12.

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Posted On: April 29, 2013

Judge Andrews construes claim terms in ANDA case

In Warner Chilcott Company, LLC v. Zydus Pharmaceuticals (USA) Inc., et al., C.A. No. 11-1105-RGA (D. Del. Apr. 22, 2013), Judge Richard G. Andrews construed the following disputed terms of U.S. Patent No. 6,893,662, which “relates to formulations and methods of delivering mesalamine to the lowest part of the gastrointestinal tract, especially the colon,” id. at 1:

-“Inner coating layer” and “outer coating layer,” id. at 3-4;

-“The inner coating layer is not the same as the outer coating layer,” id. at 5-7;

-“Selected from the group consisting of,” id. at 7-10;

-“Polymethacrylates” and “anionic polymethacrylates,” id. at 10-12;

-“Poly(methacrylic acid, methyl methacrylate) 1:2” and “poly(methacrylic acid,
methyl methacrylate) 1:1” id. at 12-14;

-“Enteric polymer,” id. at 14-15;

-“Mixtures,” id. at 15-17; and

-“The outer coating layer is applied after the inner coating layer but before the inner
coating layer is dried or cured,” id. at 17-18.

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Posted On: April 26, 2013

Magistrate Judge Burke Grants Motion for Leave to File an Amended Complaint Adding Subsidiary of Existing Defendant

Magistrate Judge Christopher Burke has issued a memorandum order in a patent infringement case referred to him for pretrial purposes by Chief Judge Gregory Sleet. Judge Burke considered and granted a motion by the plaintiff, filed on the deadline for amendment of pleadings, for leave to file a first amended complaint, adding a subsidiary of the existing defendant as an additional defendant. See Invensas Corp. v. Renesas Elecs. Corp., C.A. No. 11-448-GMS-CJB, Memorandum Order at 1 (D. Del. Apr. 24, 2013).

The parent-defendant, Renesas, argued that plaintiff had delayed in adding the subsidiary, REA. Judge Burke, however, agreed with plaintiffs that there had been no undue delay because “until very close to the deadline for amendment, there had not been a reason or motivation for it to seek to add REA . . . [because plaintiff] felt that it would be uncontested that any sales-related activity conducted by REA as to Renesas’ products in the United States would be activity attributable to Renesas.” Id. at 4-5. After Renesas appeared to assert “the legal theory that REA is a separate entity from Renesas, and that any sales-related activity of REA may not be attributed to its parent,” plaintiff claimed that it filed its motion “in an ‘abundance of caution’ and ‘to ensure that the proper Renesas entities are named in the action.’” In this situation, Judge Burke found that there was no undue delay in filing the motion. Id. at 5-6. Judge Burke also pointed out that “[t]he fact that the Motion was filed within [the] deadline [set by the Scheduling Order for the filing of proposed amendments to pleadings], one agreed to by both parties, strongly supports a conclusion that the amendment was not untimely filed (and, relatedly, that its filing will not work to unfairly prejudice Renesas).” Id. at 6-7.

Judge Burke further found that the risk of prejudice to defendants was minimal, as discovery was ongoing, no trial date had been set, the proposed amendment added no new theories of liability and added only a wholly owned subsidiary of an existing party which would be represented by the same outside counsel as its corporate parent. Under these circumstances, Judge Burke found, “it is reasonable to expect that REA can be integrated into the case without creating significant additional harm to the parties’ pre-trial preparations.” Id. at 7-8.

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Posted On: April 24, 2013

Judge Andrews orders plaintiff to produce communications with attorney who was acting in a business, rather than legal, capacity

Judge Andrews recently issued an order in regard to a discovery dispute over whether plaintiff had to produce communications with a Canadian attorney, formerly employed by plaintiff as its Director of Business Development. Robocast, Inc. v. Apple, Inc., C.A. No. 11-235-RGA (D. Del. April 17, 2013). Judge Andrews held that plaintiff failed "to make a showing that [the attorney] was an individual authorized to give legal advice." Id. at 2. The Canadian attorney was not a member of the bar of New York, where he was employed by plaintiff, nor was he licensed by the bar of New York to render legal advice as a legal consultant. Id. (citing N.Y.C.L.S. Ct. of App. § 521.1). Therefore, the communications could not be assumed to be privileged. "In fact, the very argument that [the attorney] offered legal advice to [plaintiff] without the New York State Bar's approval necessarily asserts he was guilty of practicing law without a license, which is a criminal misdemeanor in New York." Id.

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Posted On: April 22, 2013

Chief Judge Sleet construes claims relating to transfer of high-bandwidth streams of data.

Chief Judge Gregory M. Sleet recently construed 14 claim terms from U.S. Patent Nos. 6,760,808 and 7,487,309, relating to the reliable and scalable transfer of high-bandwidth streams of data between multiple storage units and multiple applications. Avid Tech., Inc. v. Harmonic, Inc., C.A. No. 11-1040 (GMS) (D. Del. Apr. 15, 2013). The Court construed the following terms:

-“independent storage units”
-“redundancy information”
-“nonsequentially”
-“identifier”
-“identifier of each segment”
-“identifier of the segment”
-“identifier of a segment”
-“identifier of the requested segment”
-“means, operative in response to a request from one of the client systems, for retrieving the requested segment of the file from the storage unit using the information associating the identifier of each segment stored on the storage unit with the location of each segment of the storage unit”
-“means for sending the requested segment to the client system”
-“means for sending a request, for each segment of the data requested by the application, to the storage unit on which the segment is stored”
-“means for selecting one of the storage units on which the segment is stored such that a load of requests on the plurality of storage units is substantially balanced”
-“means for scheduling the transfer of data from the storage unit such that the storage unit efficiently transfers data” and
-“means for distributing each segment, and the redundancy information for each segment, among the plurality of storage units by sending to the storage unit the segment of the data and the identifier of the segment”.

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Posted On: April 19, 2013

Chief Judge Sleet Construes Terms of Satellite Television Patents

Chief Judge Gregory Sleet recently issued a claim construction order in a longstanding patent infringement dispute involving interactive program guides for digital satellite broadcasts. See Pegasus Dev. Corp. v. DirecTV, Inc., C.A. No. 00-1020-GMS, Order (D. Del. Apr. 1, 2013). Judge Sleet construed the following terms, several of which he found to be means-plus-function terms and several of which had been previously construed by the Federal Circuit:
- “embedded signals”
- “recording the receipt of and passing to said devices of said embedded signals”
- “decrypting [an encrypted information transmission]”
- “switch means”
- “matrix switch means”
- “a first processor means operatively connected to said plurality of detector means for identifying each detected control signal as having been detected by a particular detector”
- “a second processor means for controlling the output directing function of said switch means”
- “a second processor means for controlling the output function of said switch means”
- “a processor means for controlling the output functions of said matrix switch means and the transfer functions of said storage/transfer means”
- “a processor means for controlling the directing function of said matrix switch means and the transfer functions of said storage/transfer means”
- “storage/transfer means for receiving an storing said control signals and for transferring at least a portion of said control signals for further processing”
- “causing said memory means to transmit selected information of said selected data unit at a selected time”
- “causing a switch associated with said intermediate input means to connect the output of a player associated with said recorder to at least one selected processor at a selected time”
- “member information”
- “outputting data that include additional information besides said input information”
- “assembling output records that include additional information besides said input information”
- “reprogrammable system”
- “reprogram”
- “operating instructions”
- “said memory device”
- “different signals”
- “[selected] television program transmission”
- “locations”

UPDATED:
Chief Judge Sleet had previously ordered the parties to submit supplemental briefing regarding whether the controller and processor "constitute structure corresponding to the claim terms 'a second processor means for controlling the output directing function of said switch means' and 'a second processor means for controlling the output function of said switch means.'" Considering the parties' supplemental briefing and oral arguments at the Markman hearing, Judge Sleet found that the two terms should be construed as means-plus-function terms with corresponding structures of the "signal processor" and the "cable program controller & computer." Judge Sleet also refused to alter his previous claim construction to include a "controller" or "processor," finding that they were sub-parts of the signal processor, and that there was "no need for the court to call out individual components of that processor or recognize it by alternative names." See Pegasus Dev. Corp. v. DirecTV, Inc., C.A. No. 00-1020-GMS, Supplemental Order at 1-2 (D. Del. Apr. 15, 2013)

UPDATED:
Chief Judge Sleet granted in part plaintiffs' motion for reargument regarding Judge Sleet's claim construction order. Judge Sleet amended the Court's construction of the term "decrypting [an encrypted information transmission]" to mean "using a digital key in conjunction with a set of associated mathematical operations to decipher digital data. This term does not include mere descrambling of an analog television transmission. The decrypting must be of the entire information transmission that is recited in step (b) of claim 14." See Pegasus Dev. Corp. v. DirecTV, Inc., C.A. No. 00-1020-GMS, Order at 1 (D. Del. May. 15, 2013)

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Posted On: April 17, 2013

Judge Andrews denies motion to quash subpoena to law firm

In a recent Memorandum Opinion, Judge Richard G. Andrews refused to quash a subpoena served on a nonparty law firm that was previously involved in the prosecution of the “parent application” of the patent-in-suit. Robocast, Inc. v. Microsoft Corp., C.A. No. 13-mc-104-RGA , at 1 (D. Del. Apr. 12, 2013). Defendant subpoenaed the firm to testify at a deposition by telephone and to produce documents. Id.

The law firm argued that “the subpoena fails to allow a reasonable time for compliance” where the law firm had nine days to produce documents and provide deposition testimony. Id. at 2. The Court noted that “[n]either Rule 45 nor the Third Circuit . . . have provided a firm rule regarding the number of days that constitute a reasonable time.” Id. The Court concluded that the law firm had not met its burden for quashing the subpoena by merely the “bare assertion” that nine days was an unreasonable time for compliance. Id.

The law firm also argued that the subpoena was unduly burdensome and oppressive because it “subpoena[ed] documents in Delaware while compelling testimony in Pennsylvania,” albeit via telephone, and the information defendant sought was mostly publicly available. Id. The Court did not find either argument persuasive. Id.

Lastly, the law firm claimed that the subpoena sought privileged information. Id. at 3. The Court explained that the firm “will be able to raise the privilege at the time of the deposition and the production of documents,” but “[a] blanket assertion of privilege . . . does not meet the burden of Rule 45(c)(3)(A)(iii).” Id. Therefore the Court would not quash the subpoena on grounds of privilege. Id.

In a footnote, the Court observed that it “is also mindful that inequitable conduct allegations are in the case . . . factual non-privileged information from [this nonparty] witness . . . whose reliability is not reasonably subject to dispute could be very relevant.” Id. at 3 n.3.

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Posted On: April 17, 2013

Judge Robinson construes claims, denies motions for summary judgment on infringement and invalidity, and denies plaintiff’s Daubert motion

In a recent Memorandum Opinion, Judge Sue L. Robinson construed several claim terms, denied both parties’ motions for summary judgment, and denied plaintiff’s motion to exclude defendant’s expert’s testimony on invalidity. Cellectis S.A. v. Precision Biosciences, Inc., et al., C.A. No. 11-173-SLR (D. Del. Apr. 9, 2013).

The Court first construed the following terms:

-“[M]onomer of an 1-Crel meganuclease variant comprising at least one mutation in the amino acid sequence of SEQ ID NO: 70, wherein said at least one mutation comprises a substitution at one or more of the amino acids residues at positions 44, 68 and 70 and said monomer further comprises at least one additional mutation of an amino acid residue directly contacting a DNA target sequence wherein said amino acid residue directly contacting a DNA target sequence is selected from the group consisting of positions 26, 28, 30, 32,33 and 38 modified DNA cleavage specificity relative to the 1-Crel meganuclease of SEQ ID NO: 70 in at least one nucleotide in the +/- 3 to 5 triplets.” Id. at 4. The Court “decline[d] to construe the first phrase of [this independent claim] without the context of the remainder of the claim. Id.

-“[M]odified DNA cleavage specificity relative to the 1-Crel meganuclease of SEQ ID NO: 70 in at least one nucleotide in the +/- 3 to 5 triplets.” Id. at 7.

-“A single-chain chimeric meganuclease comprising [a] fusion of [two monomers].” Id. at 7-8.

-“[V]ariant of the wild-type monomer from 1-Crel.” Id. at 8-9.

The Court then denied the parties’ motions for summary judgment as to literal infringement and as to no invalidity for anticipation. The parties’ experts disputed the “proper characterization of [defendant’s product]” and thus raised genuine issues of material fact as to literal infringement. Id. at 16. The Court also held that there was a genuine issue of material fact as to whether a piece of prior art “expressly disclose[d] all of the claim limitations and whether the specific substitutions [of the patent-in-suit] would be apparent to one of skill in the art.” Id. at 19.

Finally, the Court denied plaintiff’s Daubert motion to exclude defendant’s expert testimony on best mode and obviousness. Plaintiff argued that the expert’s opinions on best mode made improper inferences based on a limited amount of information, but the Court held that the opinions were “not unreliable or unhelpful, when measured by the relatively low standard at this stage of the proceedings, coupled with the highly subjective nature of the state of mind inquiry” involved in best mode analysis. Id. at 21. As to obviousness, plaintiff argued that the expert’s testimony, which included “his opinions on secondary considerations and motivation to combine and claim charts illustrating his findings,” was too conclusory, but the Court concluded that "[w]hile [plaintiff] may disagree with [this expert’s] analysis and conclusions . . . at most, this goes to the weight of the evidence, which is properly addressed via cross-examination.” Id. at 22.

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Posted On: April 16, 2013

Magistrate Judge Thynge recommends denial of motion to dismiss complaint relating to cloud-based gaming applications.

Magistrate Judge Mary Pat Thynge recently issued a report recommending that a motion to dismiss allegations of direct, induced, and contributory infringement relating to cloud-based gaming applications be denied. T5 Labs (Delaware) LLC v. Gaikai, Inc., C.A. No. 12-1281 (SLR) (MPT) (D. Del. Apr. 5, 2012). The defendant argued that the complaint failed to provide meaningful notice of which products or services were accused, but Judge Thynge disagreed, explaining that the plaintiff adequately identified the defendant's "‘cloud’-based gaming applications and service’ or GPU cloud as the infringing method or product.” Id. at 9. This, together with sufficient allegations of jurisdiction, ownership, notice, and a demand for relief, was sufficient to provide the defendant with meaningful notice of the allegations against it, and met the requirements of Form 18 for alleging direct infringement. Id. at 10. Judge Thynge also found that the plaintiff adequately pled induced and contributory infringement under Twombly and Iqbal with respect to post-Complaint conduct. Id. at 11-13.

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Posted On: April 16, 2013

Judge Robinson Denies Motion to Amend Complaint and Motion to Stay Case

Judge Sue Robinson recently denied a patent infringement plaintiff’s motion for leave to file an amended complaint adding claims of induced infringement. See Walker Digital, LLC v. Google, Inc., C.A. No. 11-309-SLR, Memorandum Order at 1 (D. Del. Apr. 11, 2013). Although the plaintiff had included allegations of induced infringement in preliminary infringement contentions, it did not formally move to amend pleadings until significantly later, approximately nine months after the deadline for filing amended pleadings and a month before the close of fact discovery. The plaintiff asserted good cause for its amendment based on (1) the Federal Circuit’s decision in Akamai Techs., Inc. v. Limelight Networks, Inc., 692 F.3d 1301 (Fed. Cir. 2012), (2) defendants’ claim constructions raising the potential need to rely on inducement, and (3) the lack of undue prejudice. Id. at 2. Judge Robinson found that (1) Akamai was inapplicable because the plaintiff did not allege that only some steps were performed by third parties, (2) the defendants’ representations that they did not intend to assert a non-infringement argument based on claim constructions were acceptable and binding, and (3) there was no good cause for plaintiff to amend regardless of whether or not such an amendment would prejudice defendants. Accordingly, she denied the motion to amend. Id. at 2-4.

Judge Robinson also denied the defendants’ request to stay the case pending reexamination. Id. at 4. Between the filing of the motion to stay and Judge Robinson’s decision, the PTO issued an “Action Closing Prosecution” in an inter partes reexamination initiated by defendants, which rejected every claim of the patent-in-suit. Although “there [was] no dispute that a final resolution of the administrative process would simplify the judicial process, and that . . . the administrative process is less expensive than the judicial process,” Judge Robinson found that “the judicial process had proceeded far enough (and the administrative process has not) that a stay would unduly prejudice [the plaintiff.]” Id. at 4-6. The prejudice to plaintiff was not diminished by the fact that “is a non-practicing entity,” because “it is a research-oriented business that will be prejudiced if its rights under the [patent-in-suit] are not adjudicated timely” and there is “no reliable time table to conclusion” of the administrative process. Id. at 5.

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Posted On: April 15, 2013

Judge Andrews adopts Magistrate Judge Burke's claim constructions in their entirety

Judge Andrews recently issued a decision after plaintiff filed objections to Magistrate Judge Burke's Report and Recommendation construing the claims of U.S. Patent No. 6,973,229. Lamda Optical Solutions, LLC v. Alcatel-Lucent USA Inc., C.A. No. RGA-CJB (D. Del. Apr. 11, 2013). Upon de novo review of Magistrate Judge Burke's constructions, Judge Andrews overruled plaintiff's objections and adopted the Report and Recommendation in its entirety.

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Posted On: April 12, 2013

Judge Robinson issues decisions in Golden Bridge Technology Inc. v. Apple

Golden Bridge Technology (“GBT”) sued Apple and other defendants (the “Apple action”), and Amazon.com, Inc. and other defendants in two separate actions alleging infringement of U.S. Patent No. 6,574,267 C1 and 7,359,427. The patents-in-suit “relate generally to wireless cellular networks and teach a method for establishing a communication link between a mobile station, such as a cellular telephone, and a base station.” Golden Bridge Technology Inc. v. Apple Inc., et al., C.A. Nos. 10-428-SLR, 11-165-SLR (D. Del. Apr. 9, 2013) (Claim Construction Memorandum Opinion). The cases were consolidated for claim construction but claims other than those against Apple were stayed.

Judge Robinson held oral argument on claim construction on March 19, 2013 and recently issued her claim construction Opinion, construing the following terms of the patents-in-suit:

“Access Preamble”/“Preamble”
“Discrete Power Level”

In construing “Access Preamble”/“Preamble,” the Court considered the estoppel effect of the construction of claims of the ‘267 patent in a prior suit filed by GBT in Texas against other defendants. The Court held that collateral estoppel was not applicable because the issues decided by the Texas Court were not identical to this case. Specifically, the ‘427 patent, although a related patent, was not issued until after the conclusion of the Texas case, and the ‘267 patent was reexamined after the Texas case concluded, resulting in different claims and additional prosecution history. Id. at 9.

Following the Court’s claim construction Opinion, Judge Robinson issued the Court’s Memorandum Opinion on Summary Judgment in the Apple Action. Golden Bridge Technology Inc. v. Apple Inc., et al., C.A. No. 10-428-SLR (D. Del. Apr. 9, 2013) (Summary Judgment Memorandum Opinion). Judge Robinson considered GBT’s motion for partial summary judgment of infringement and Apple’s motions for summary judgment of non-infringement and invalidity. Judge Robinson denied GBT’s motion and granted Apple’s motion as to non-infringement. Although Judge Robinson found that Apple’s accused products and related processes practiced “the ‘discrete power level’ limitation” of the asserted claims, GBT did not identify “a genuine issue of material fact regarding the limitation of ‘spreading the access preamble” or of a “spread across preamble.” Id. at 14-15. Therefore, summary judgment of non-infringement was appropriate.

In the Apple action, Judge Robinson also considered various motions to exclude and strike expert testimony. Golden Bridge Technology Inc. v. Apple Inc., et al., C.A. No. 10-428-SLR (D. Del. Apr. 9, 2013) (Memorandum Order). Apple moved to strike GBT’s untimely expert opinions and moved to exclude certain other expert opinions. Id. at 2. GBT also filed two Daubert motions. Id. The Court granted-in-part GBT’s Daubert motion that sought to exclude opinions on the inventors’ lack of diligence in preparing and filing the patent application, and failure to meet the written description requirements of 35 U.S.C. § 112. Judge Robinson excluded the expert’s opinions on diligence because the expert was not a patent attorney or an expert in patent law. Id. at 3. Judge Robinson denied Apple’s Daubert motion that sought to exclude an expert’s rebuttal opinion on validity, a rebuttal opinion on attorney diligence, and two experts’ opinions and untimely supplements regarding infringement. Id. at 4. The court granted Apple’s motion as to attorney diligence, finding it would not be helpful to the jury, because it was “based not on records but on speculation[.]” Id. Judge Robinson denied Apple’s motion in all other respects. Even though GBT’s experts’ infringement opinions were offered before the court issued its claim construction, the Court found that any disagreement between the opinions and the Court’s construction “is more properly reserved for cross-examination[.]” Id. at 5.

Finally the Court denied both GBT and Apple’s motions to exclude or strike testimony “regarding the definition of ‘bandwith.’” Id. at 6. The Court found the opinions admissible under Daubert, and any issues with the testimony could be dealt with on cross examination. Id. Furthermore, GBT’s “untimely” expert opinion was admissible because it was “necessary to respond to criticisms lodged by Apple’s expert . . . in his rebuttal report.” Id.

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Posted On: April 11, 2013

Judge Robinson grants motion to dismiss for lack of personal jurisdiction over Japanese corporation and dismisses joint infringement claims against other defendants

In Intellectual Ventures I LLC, et al. v. Nikon Corporation, et al., C.A. No. 11-1025-SLR (D. Del. Apr. 1, 2013), Judge Sue L. Robinson granted one defendant’s motion to dismiss for lack of personal jurisdiction and granted-in-part the remaining defendants’ motion to dismiss plaintiffs’ indirect infringement claims.

Plaintiffs had sued four entities, all of which “are ‘Nikon Group Companies’ within . . . [defendant] Nikon Corporation.” Id. at 7. One of the defendants, Sendai, was a Japanese corporation that “manufacturers DSLR cameras and sells them to” Nikon Corporation, its parent that is also a Japanese corporation. Id. While the cameras were then sold in the United States, and Nikon Corporation and another co-defendant “maintain websites in English targeting the United States” and Delaware, Sendai itself conducted no business in the United States. Id. at 6, 7.

Plaintiffs argued that the Court had personal jurisdiction over Sendai based on “several theories,” all of which the Court rejected. Id. at 6. First, because Sendai was not a principal in an agency relationship with any co-defendants, but instead its “conduct [was] directed by its parent,” and because its conduct was “limited to activities in Japan,” plaintiffs had “not asserted sufficient contacts to establish personal jurisdiction” under an agency theory. Id. at 8-9. Second, plaintiffs could not assert jurisdiction “under a dual jurisdiction theory for stream-of-commerce activities in which subsection (1) and (4) of Delaware’s long-arm statute are partially satisfied,” which required a showing of “an intent to serve the Delaware market” and “that this intent results in the introduction of the product into the market.” Id. at 9 (internal citations and quotation marks omitted). There was no indication that “Sendai ha[d] the requisite intent” to sell the cameras in Delaware because its manufacturing and sales were directed to its parent in Japan, its website was in Japanese, and “the cameras themselves offer menus in 20 languages and world time zones.” Id. at 10. “The court has not heretofore exerted dual jurisdiction over a foreign subsidiary based on such attenuated facts, and declines to do so in this case.” Id.

As to indirect infringement, the Court found that, “[c]onsistent with the court’s analysis" in Walker Digital LLC v. Facebook, Inc., 852 F. Supp. 2d 559, 565-66 (D. Del. 2012), plaintiffs’ induced infringement claims were facially plausible and provided defendants with adequate notice. Id. at 11. However it dismissed plaintiffs’ joint infringement claims. Plaintiffs alleged that the defendants “act[ed] alone and together to infringe,” with Nikon Corporation acting “as a mastermind over the other defendants and/or its customers.” Id. at 12. But as claims against Sendai had been dismissed, plaintiffs could not support joint infringement by alleging “Nikon Corporation, as a parent company, controls the distribution of the accused products manufactured by Sendai.” Id. Additionally, “[p]laintiffs [had] not alleged any relationship between the remaining defendants that could plausibly lead to a showing that Nikon Corporation exercises control or direction over its co-defendants.” Id.

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Posted On: April 11, 2013

Chief Judge Sleet finds asserted claims not invalid as anticipated or as obvious, awards injunctive relief to plaintiff

In a recent post-trial opinion, Chief Judge Gregory M. Sleet found that defendants had not met their burden of proof in showing that the asserted claims of the patent-in-suit were invalid, either as anticipated or obvious. In re Armodafinil Patent Litigation Inc. (‘722 Patent Litigation), MDL No. 10-md-2200-GMS (D. Del. Mar. 30, 2013). Because the defendants had stipulated that their ANDAs infringed the asserted claims, id. at 9, the Court’s ruling on invalidity also led it to award injunctive relief to plaintiff.

The patent-in-suit was related to plaintiff’s drug that “is indicated to improve wakefulness in patients with excessive sleepiness associated with obstructive sleep apnea, narcolepsy, and shift work sleep disorder.” Id. at 4. Plaintiff originally asserted all claims of this patent, but it had agreed that defendants’ “right to enter the market with respect to the [patent-in-suit] . . . will stand or fall based upon the outcome of this litigation with respect to” two of the claims. Id. at 9. Therefore, the bench trial had been limited to the presentation of evidence related to these claims. Id. The two claims “cover a pharmaceutical composition with an active component consisting essentially of Form I armodafinil.” Id. at 48.

As to anticipation, the Court concluded that the claims were not invalid as inherently anticipated. Defendants argued that a person of ordinary skill in the art “will necessarily and inevitably obtain Form I armodafinil from following the prior art Preparation I process” described in another patent (“the ‘855 Patent”) that “discloses how to synthesize armodafinil.” Id. at 10, 48. Generally, the Court found plaintiff’s experts’ testimony more credible than those of defendants with respect to anticipation issues. See, e.g., id. at 20, 29. Specifically, defendants had not met their burden because (i) “defendants have not demonstrated clearly and convincingly through their experts’ experiments and testing that the performance of Preparation I necessarily and inevitably results in Form I armodafinil, (ii) “defendants have failed to show by clear and convincing evidence that the result of performing Preparation I meets the requirements of the asserted claims of the patent-in-suit,” and (iii) “defendants have not demonstrated clearly and convincingly that their reproductions of the ‘855 Patent’s Preparation I were consistent with how a person of ordinary skill in the art would have performed the Preparation and, therefore, have not proven that their experts’ experiments accurately demonstrate that Form I armodafinil inevitably results from Preparation I.” Id. at 18.

At one point in its discussion, the Court noted that both sides referenced “the ‘court’s construction’” of certain terms in the patent-in-suit that the Court had not construed, but instead whose meaning the parties had agreed on before the Markman hearing. Id. at 24. Noting that “the parties’ arguments—and particularly those of defendants, who repeatedly reference how the court construed [these terms]—[therefore struck] the court as misleading,” the Court accepted plaintiff’s constructions. Id.

"Defendants focused their obviousness arguments on the assertion that” the ‘855 patent, combined with other references, invalidated the asserted claims of the patent-in-suit. Id. at 49. The Court, again accepting plaintiff’s experts’ testimony as more credible, concluded that defendants had not shown obviousness. First, “there was no more than a general motivation to find new crystal forms of armodafinil with nothing directed to the unknown Form I itself.” Id. at 68. Second, “the defendants [had] not produced sufficient evidence to demonstrate that skilled artisans would have had reason to select the route that produced the claimed invention or that the prior art provided indication of which parameters were critical or likely to prove successful amongst the numerous testing conditions and variables available.” Id. at 69. Finally, “the defendants’ contention based on allegedly ‘obvious to try’ experiments . . . [fell] short” because “‘[o]bvious to try’ is not equivalent to obviousness in every case, particularly where, as here, the prior art provided at most general motivation to conduct trial and error experimentation in a decidedly unpredictable field” and defendants’ arguments were “based on an impermissible hindsight analysis.” Id. at 70-71.

In light of these findings, the Court awarded plaintiff’s requested injunctive relief. Id. at 72-73.

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Posted On: April 10, 2013

Judge Thynge Considers Daubert and Summary Judgment Motions

In Masimo Corporation v. Philips Electronics North American Corporation, et al., C.A. Nos. 09-080-LPS-MPT & 11-742-LPS-MPT (Cons.) (D. Del. Apr. 2, 2013), Magistrate Judge Mary Pat Thynge issued a report and recommendation regarding Daubert and summary judgment motions from both parties. The case involves a number of patents related to “pulse oximetry,” which “allows for non-invasive measurement of the oxygen levels in a medical patient’s hemoglobin.” Id. at 1. At the time of the Court’s opinion, seven patents were at issue from the original action filed, plus two patents from a second action filed by plaintiff; six were plaintiff’s patents, and three were defendants’ for which they had counterclaimed infringement. Id. at 4-5.

The motions for summary judgment for which the Court issued recommendations related to infringement, noninfringement, invalidity, and laches. Id. at 6 & n. 22 (noting that the other motions before the Court would be addressed in another opinion). The Court denied the majority of these motions, finding that genuine issues of material fact remained. See, e.g., id. at 17, 23, 58-60, 75, 77, 85, 87, 115-16, 140, 146-47. As to defendant’s motion for summary judgment based on laches with respect to three patents, defendants alleged that a series of negotiations with third parties and with defendants, and lawsuits with third parties, all relating to plaintiff’s technology, put plaintiff on notice as to potential infringement more than six years preceding the filing of the lawsuit with respect to two out of the three patents. See id. at 178-81. While the Court agreed that defendants had established the necessary six-year presumption of laches for these two patents, id. at 189-91, it concluded that plaintiff had presented evidence that rebutted the presumption. First, litigation with another entity over one of the three patents “provid[ed] justification for [plaintiff] not pursuing [defendant] on that patent” while that action was pending. Id. at 193. Second, there was an issue of material fact as to whether negotiations related to the potential infringement of defendants’ technology would have resolved the infringement issues. Id. at 195. In response, defendants argued that they had suffered economic prejudice as a result of plaintiff’s delay in filing because they had expanded their use of the potentially infringing products, but plaintiffs demonstrated “through statements from [defendants’] executives that an earlier lawsuit would not have affected [defendants’] business plans.” Accordingly, issues of material fact were raised “as to whether a nexus exists between [defendants’] economic change an [plaintiff’s] delay. Id. at 198. The Court therefore denied defendants’ motion, finding it unnecessary to address plaintiff’s unclean hands argument. Id.

The Court granted the following motions for summary judgment:

-Defendants’ motion for summary judgment of invalidity, based on the written description requirement, as to two claims of U.S. Patent No. 6,263,222. The Court concluded that plaintiff’s patent did not show that the inventors possessed the claimed subject matter: these claims “speak of a signal processor generically; its specification, however, only describes correlation canceler techniques, and [plaintiff’s expert] admits at the time of the invention only correlation cancellation techniques were known to one skilled in the art. . . . nothing in [the claims] or the specification constitute an adequate description of all signal processors for use in a non-correlation canceler. Therefore, [defendants’] motion for summary judgment on written description is granted.” Id. at 29-30.

-Defendants’ motion for summary judgment of invalidity, based on the written description requirement, as to U.S. Patent No. 6,699,194. Defendants, relying on the specification itself and the testimony of the inventor, argued that the specification in plaintiff’s patent did not disclose certain methods in the claims because it did not “disclose any method of estimating pulse rate from an unclean spectrum” – it only disclosed “classifying clean spectral data.” Id. at 121 (emphasis added). The Court agreed. Id. at 129.

-Defendants’ motion for summary judgment of noninfringement of U.S. Patent No. 7,215,984. The Court concluded that some of plaintiff’s expert’s statements on the issue were inconsistent with her other testimony, and plaintiff “should not be able to create a question of fact to defeat summary judgment via [its expert’s] new declaration if it contradicts her prior testimony.” Id. at 69 & n.322.

-Plaintiff’s motion for summary judgment of noninfringement of U.S. Patent No. 6,122,535 (“the ‘535 patent”). First, while the Court did not grant plaintiff’s motion as to literal infringement “in light of the manner in which the parties’ presented their arguments,” id. at 199, it concluded that defendants were precluded from relying on the doctrine of equivalents. Plaintiff demonstrated that: (i) defendants’ infringement contentions would eliminate an element of claim 1, id. at 155; (ii) the way in which defendants had distinguished its patent from prior art during prosecution demonstrated prosecution history estoppel, id. at 156, 158; and (iii) the ‘535 patent contained disclosed but unclaimed embodiments, id. at 162. Second, the Court granted plaintiff’s motion as to direct infringement because defendants had not shown that every step of method claim 1 of the ‘535 patent had actually been performed; “that [plaintiff’s] products may be capable of performing the claimed method is not enough.” Id. at 167 (emphasis added). As a result, plaintiff was neither a direct nor indirect infringer. Id. at 165-66.

As to plaintiff’s Daubert motion, plaintiff argued defendants’ expert on infringement and validity with respect to U.S. Patent No. 6,725,074 (“the ‘074 patent”) was not qualified to opine on “fuzzy logic,” which was a central aspect of the ‘074 patent. Id. at 90 & n.424. This expert had no formal education or training in fuzzy logic, but defendants argued that because he was “qualified as an expert in the field of digital signal processing, source code and medical devices, and this field includes the technology disclosed in the ‘074 patent, namely, the use of uncertain and fuzzy logic software applications in medical devices,” he possessed “at least ordinary skill in the art” such that he could “provide helpful testimony on how software using uncertain and fuzzy logic works within the devices at issue.” Id. at 91 (internal citations and quotation marks omitted). The Court agreed and denied plaintiff’s motion. Id. at 91-92. In doing so, the Court distinguished case law in which an expert was unqualified because that expert did not have knowledge about the relevant field of technology, had “other significant deficiencies,” and had not properly addressed the issue of a person of ordinary skill in the art. Id. at 93-94. Here, defendants’ expert’s qualifications, in light of plaintiff’s own description of a person of ordinary skill in the art, was appropriate. Id. at 94-95.

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Posted On: April 8, 2013

Judge Andrews grants motion to dismiss for lack of personal jurisdiction.

Judge Richard G. Andrews recently granted a motion to dismiss for lack of personal jurisdiction. M2M Solutions LLC v. Simcom Wireless Solutions Co., Ltd., et al., C.A. No. 12-034-RGA (D. Del. Apr. 1, 2013). The motion was filed by one of four defendants in the case—a Florida limited liability company with places of business located in Florida and Illinois. Id. at 1. The Court explained that it was undisputed that the defendant had no physical presence, employees, or third-party distributors in Delaware. Id. Nor was there any evidence that any single one of the defendant’s accused products ever entered Delaware. Id.

The plaintiff argued that the defendant was subject to personal jurisdiction based on its website, and on its relationship with customers who maintained retail stores in Delaware. More specifically, the plaintiff noted that the defendant’s website was accessible in Delaware, provided a toll-free phone number, and included references to the defendant being a “global” company with aspirations to increase activities throughout North America. Id. at 1-2. The Court recognized that the defendant’s website contained “public expressions of intent to serve the entirety of North America along with a toll-free phone number[,]” but found that because individuals accessing the website from Delaware could not place an order directly through the website, it was more of a passive website under the test laid out in Zippo Manufacturing Co. v. Zippo Dot Com, Inc., 952 F. Supp. 119 (W.D. Pa. 1997). Id. at 6 n.3. As a result, the Court found that the defendant’s passive website could not support a finding of personal jurisdiction over the defendant.

The Court next rejected the argument that the defendant was subject to personal jurisdiction based on its relationship with customers with Delaware retail stores. Id. at 7. The Court acknowledged that “[i]t is a tenable theory under the Delaware long-arm statute that [the defendant] may be subject to personal jurisdiction for placing infringing products in the ‘stream of commerce[,]” but in this case the Court found the evidence supporting that theory to be “completely speculative” given that there was no allegation that even a single product had entered Delaware. Id. (“It would seem that an absolute minimum requirement of the ‘stream of commerce’ test is the allegation that an infringing product has actually entered the market of the forum state.”). The Court concluded by explaining: “there is zero evidence that any [of the defendant’s] products have entered the Delaware market, let alone evidence suggesting a ‘regular and anticipated’ flow of products into the state.” Id. at 9. As a result, the Court denied the plaintiff’s request for jurisdictional discovery, and granted the defendant’s motion to dismiss. Id.

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Posted On: April 8, 2013

Judge Stark grants motion for summary judgment of non-infringement.

In a recent memorandum opinion, Judge Leonard P. Stark granted a motion for summary judgment that pre-2004 versions of Microsoft Windows do not infringe various patents asserted by the plaintiff. St. Clair Intellectual Property Consultants, Inc. v. Acer, Inc., et al., Consol. C.A. No. 09-354-LPS (D. Del. Mar. 29, 2013). The plaintiff had neither responded to interrogatories relating to pre-2004 Windows, nor provided the defendants with contentions on how pre-2004 Windows infringe. Id. at 4. Further, the plaintiff provided no competing expert testimony in response to the defendants’ expert, who opined that pre-2004 versions of Windows do not infringe. Id. at 5. Because the plaintiff carried the burden of proving infringement, and it “failed to present any evidence of infringement related to pre-2004 versions of Windows[,]” the Court granted the motion for summary judgment of non-infringement, and found further that pre-2004 versions of Windows could appropriately be considered non-infringing alternatives. Id. at 5-6 (emphasis in original).

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Posted On: April 8, 2013

Judge Robinson Denies Request to Allow Damages Discovery before the Federal Circuit Rules on Liability

Judge Robinson recently issued a discovery order in the ongoing patent infringement dispute between Mobilemedia Ideas and Apple. Plaintiff Mobilemedia Ideas filed a request for “‘discovery necessary to allow the parties to be prepared to try the damages case’ as soon as possible after the court’s decision on the parties’ post-trial motions.” Judge Robinson denied the request, stating “[t]he court is not inclined to change its standard practice of bifurcating damages until the issue of liability has been decided by the Federal Circuit, until such time (if ever) the Federal Circuit requires the court to abandon said practice.” See Mobilemedia Ideas LLC v. Apple Inc., C.A. No. 10-258-SLR, Order at 1 (D. Del. Apr. 2, 2013).

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Posted On: April 6, 2013

Judge Stark Grants Plaintiff’s Motion for Leave to File Sur-reply, Denies Defendants’ Motion to Dismiss Pursuant to Rules 12(b)(6) and 41(a)(1)

Recently, Judge Leonard P. Stark issued decisions with respect to defendants' motion to dismiss plaintiff’s claims of willful patent infringement pursuant to Federal Rules of Civil Procedure 12(b)(6) and 41(a)(1). St. Clair Intellectual Property Consultants, Inc. v. Samsung Electronics Co. Ltd. et al., C.A. No. 12-69-LPS (D. Del. Mar. 29, 2013). First, with respect to the briefing on the matter, Judge Stark granted plaintiff’s motion to file a sur-reply in opposition to defendants' motion to dismiss. (D.I. 21.). Judge Stark noted that a court “may grant leave to file a sur-reply if it responds to new evidence, facts, or arguments.” Id. at 2. Defendants' reply in support of its motion to dismiss, as Judge Stark explained, contained “newly-cited evidence,” including a complaint filed in the District of Delaware, a previously uncited Eighth Circuit case, and details regarding an entity from a prior, related lawsuit. Id. Granting plaintiff’s motion, Judge Stark explained that plaintiff’s sur-reply “will allow the Court to more fully and fairly evaluate Defendants’ pending motion to dismiss.” Id. at 3. Moreover, “Plaintiff’s sur-reply is relatively short, challenges Defendant’s interpretation and application of [the Eighth Circuit case], and explains Plaintiff’s view of the newly presented evidence.” Id. Judge Stark thus considered the sur-reply in reaching his decision on the merits of defendants’ motion. See id.

Judge Stark ultimately denied defendants’ motion to dismiss. (D.I. 22.). Defendants argued that plaintiff failed to state a claim because its claim was barred by Rule 41(a)(1). See id. at 4. Under Rule 41(a)(1)(B), “[i]f the plaintiff files a second notice of dismissal pursuant to Rule 41(a)(1), the Court must dismiss an action based on or including the same claim with prejudice.” Id. at 3. In December 2011, the current plaintiff filed a complaint against Samsung Electronics USA (“SE USA”) claiming SE USA willfully infringed plaintiff’s six patents as the result of sales and distribution of products containing the Android operating system. Id. at 1. In January 2012, that suit was voluntarily dismissed. The same day it dismissed that suit, plaintiff filed a second complaint against Samsung Electronics America, Inc. (“SEA”) and Samsung Telecommunications America, LLC (“STA”) for willful infringement of the same six patents as the result of the same type of sales and distribution. Id. Later that month, that second suit was voluntarily dismissed. Id. On the same day of the second dismissal, plaintiff filed a third suit—the suit at hand—against Samsung Electronics Co. Ltd. (“SEC”), SEA, and STA. Id. at 1-2. Once again, the plaintiff has sued for willful infringement of the same six patents based on the same type of sales and distribution. Id. at 2.

The issue before the Court, therefore, was whether the first two dismissals mandated dismissal of the third suit. Plaintiff first argued that the “two dismissal rule” was inapplicable because in the first suit SE USA was a “defunct corporation which could not sue or be sued.” Id. at 4. Judge Stark rejected this argument, explaining that “Federal Rule of Civil Procedure 3 states that an action commences upon the filing of the complaint.” Id. at 5. However, as Judge Stark explained, in order for the “two dismissal rule” to apply, the defendants must share some close relationship: they must be “the same, substantially the same, or in privity with each other,” or they must be “sufficiently interrelated so that they share the same legal rights.” Id. at 5-6. Judge Stark found that defendants failed to show by a preponderance of the evidence that such a close relationship existed. Id. at 7. Defendants had presented some evidence, particularly that “SE USA’s incorporator shares the same address as Samsung’s regional headquarters,” and that the incorporator “served as general counsel of SEA.” Id. at 6-7. Judge Stark found, however, that this relationship between SE USA and the subsequent defendants “is only through a single person” and “establishes no more than a tenuous relationship.” Id. at 7. Moreover, defendants failed to demonstrate “SE USA had the same, similar, or any legal interest in the subject matter of the three litigations, i.e., the Android operating system.” Id. at 7. Judge Stark therefore denied defendants’ motion to dismiss. Id. at 8.

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Posted On: April 5, 2013

Judge Stark Denies Defendant and Plaintiff’s Motions to Dismiss for Failure to State a Claim

In a recent order, Judge Leonard P. Stark denied both (1) defendant’s motion to dismiss plaintiff’s claims of direct and indirect patent infringement for failure to state a claim and (2) plaintiff’s motion to dismiss defendant’s declaratory judgments of non-infringement and invalidity for failure to state a claim. Cronos Technologies LLC v. Vitamin Shoppe, Inc., C.A. No. 12-444-LPS (D. Del. Mar. 29, 2013). Although plaintiff amended its complaint and defendant amended its answer subsequent to the filing of the motions to dismiss, Judge Stark considered the motions to the extent they were not rendered moot. See id. at 2. Denying defendant’s motion for failure to state a claim, Judge Stark found that plaintiff’s direct infringement claim “satisfi[ed] the requirements of Form 18,” and that plaintiff’s complaint provided facts with respect to “knowledge, intent and direct infringement” to sufficiently plead induced infringement. Id. Defendant argued that plaintiff’s asserted method claims should be dismissed because plaintiff did not allege that a single entity performed all of the elements. Judge Stark found, however, that plaintiff’s patent included “both apparatus and method claims,” and that plaintiff was “not required to identify any specific asserted claim in the Amended Complaint.” Id. Turning to plaintiff’s motion to dismiss, Judge Stark first found that defendant “specifically identif[ied] non-infringing products” in its amended complaint and therefore sufficiently pled its non-infringement declaratory judgment. Id. Moreover, Judge Stark found that defendant sufficiently pled its declaratory judgment for invalidity, including “specific references to prior art, statutes, and legal principles” in its amended complaint. Id.

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Posted On: April 3, 2013

Judge Robinson Considers Motion to Transfer, Motion to Dismiss Indirect Infringement Claims

In a recent memorandum opinion, Judge Sue Robinson denied patent infringement defendants’ motion to transfer venue but granted the defendants’ motion to dismiss claims of indirect infringement. See Stephenson v. Game Show Network, LLC, C.A. No. 12-614-SLR, Memorandum Opinion at 1 (D. Del. Mar. 27, 2013).

Her decision on the motion to transfer was consistent with her practice in previous cases, including one relied on here, Helicos Biosciences Corp. v. Illumina, Inc., 858 F. Supp. 2d 367 (D. Del. 2012). Judge Robinson observed that a defendant’s state of incorporation—here Delaware—has always been a “predictable, legitimate venue for bringing suit” and that a “plaintiff’s choice of venue should not be lightly disturbed.” Id. at 2 (citations omitted). Accordingly, after considering all of the Third Circuit’s Jumara transfer factors, she found that the defendants had not “tipped the scales of justice in favor of transfer.” Id. at 11.

On the motion to dismiss, Judge Robinson found that a mere corporate relationship between two defendants was not sufficient evidence that one defendant intended the other to infringe and knew that such acts would constitute infringement. Such an allegation of contributory and induced infringement, she found, was insufficient under Rule 8 and should be dismissed. Id. at 12-13.

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Posted On: April 3, 2013

Judge Andrews Excludes Late-Disclosed Damages Testimony, Grants Summary Judgment of No Damages

Judge Richard Andrews recently granted a patent infringement defendant’s motion for summary judgment of no damages and excluded untimely and prejudicial damages testimony proffered by the plaintiff. See AVM Techs., LLC v. Intel Corp., C.A. No. 10-610-RGA, Order at 1-4 (D. Del. Mar. 29, 2013). The proffered testimony in question was the fourth damages theory offered by the plaintiff since the defendant had moved for summary judgment of no damages. It was also filed almost a month after the initially-scheduled trial date. The witness in question had not been disclosed until recently and the defendant did not have the opportunity to seek discovery into the witness’s theory or develop a response. Id. at 2.

While the plaintiff argued that any prejudice could be cured by allowing additional discovery, Judge Andrews found that this offer “ignore[d] that the only reason trial was not held on its scheduled date was that [plaintiff] had no evidence of damages [so] the trial was cancelled pursuant to [a] Joint Proposed Final Judgment Order.” Accordingly, Just Andrews explained, the plaintiff “should not be put in a better position now, having offered yet another damages theory after trial initially was set to begin.” Id. at 2-3. Additionally, the proffered testimony was “unimportant in that it is insufficient to support a provable damages theory.” And although the exclusion of the proffered testimony would leave the plaintiff with no damages evidence, “this factor is at most neutral, particularly because this situation is of [plaintiff’s] own making.” Id. at 3. Accordingly, Judge Andrews excluded the proffered testimony as untimely and prejudicial, and because plaintiff had “no evidence with which to prove damages,” granted summary judgment of no damages for the defendant. Id. at 3-4.

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Posted On: April 2, 2013

Judge Robinson denies motion to dismiss or transfer and enjoins second-filed infringement action.

Judge Sue L. Robinson recently denied a defendant’s motion to dismiss a first-filed declaratory judgment action or, in the alternative, to transfer it to the Northern District of New York where a second-filed infringement action was pending. Trustco Bank v. Automated Transactions LLC, Civ. No. 12-613-SLR (D. Del. Mar. 27, 2013). After the parties' licensing negotiations broke down, the plaintiff filed a declaratory judgment action in the District of Delaware, and within about three hours the defendant filed its own affirmative infringement action in the Northern District of New York. Id. at 2. The defendant then moved to dismiss the Delaware action, or in the alternative to transfer it to New York, and the plaintiff moved to enjoin the New York action. Id. at 1.

Judge Robinson explained that “[t]he Federal Circuit prefers ‘to apply in patent cases the general rule whereby the forum of the first-filed case is favored, unless considerations of judicial and litigant economy and the just and effective disposition of disputes, require otherwise.’” Id. at 3 (quoting Genentech, Inc. v. Eli Lilly and Co., 988 F.2d 931, 937 (Fed. Cir. 1993), rev’d on other grounds, Wilton v. Seven Falls Co., 515 U.S. 277 (1995). To that end, the Court explained that the first-to-file rule should only be departed from in situations involving “bad faith, forum shopping, when the second-filed action has developed further than the initial suit, and when the first-filing party instituted suit in one forum in anticipation of the opposing party’s imminent suit in another, less favorable, forum.” Id. at 4.

The defendant first argued that the plaintiff’s bad faith negotiation tactics (alleged delay tactics intended to provide additional time to draft a declaratory judgment complaint) justified departing from the first-to-file rule. The Court rejected that argument, explaining that “[p]reparations for litigation during negotiations are commonplace and the court concludes that there is no evidence of bad faith.” Id. at 7. Further, the Court found that the plaintiff had justifiable reasons for choosing to file its declaratory judgment action in Delaware (including the defendant’s status as a Delaware entity with a history of litigating in Delaware), such that forum shopping was not an issue. Id. Finally, the Court did not view transferring the case to New York as compellingly favorable from a judicial economy standpoint given that the New York action was stayed pending resolution of the motion before the Court, and a related New York action was subject to a motion to transfer to the District of Delaware. Id. at 8.

The Court next considered whether it should exercise its discretion to transfer the action to New York under 28 U.S.C. § 1404(a), upon a consideration of the Jumara factors, and found that transfer was not warranted based on the information provided to the Court. Id. at 8-10. The Court explained that the plaintiff did not satisfy its “burden of overcoming the first-filed rule” or its “burden of persuading the court, by a preponderance of the evidence, that the Jumara factors warrant transfer.” Id. at 11. As a result, the Court denied the defendant’s motion, and granted the plaintiff’s motion to enjoin the New York action. Id.

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Posted On: April 2, 2013

Judge Stark denies motion to dismiss counterclaims or, in the alternative, for a more definite statement.

Judge Leonard P. Stark recently denied a plaintiff’s motion to dismiss counterclaims for direct, indirect, and willful infringement. Fairchild Semiconductor Corp. v. Power Integrations, Inc., C.A. No. 12-540-LPS (D. Del. Mar. 29, 2013). The Court first considered the plaintiff’s argument that an allegation of infringement by “power supply controllers that include a ‘soft start’ feature and circuit covered by one or more claims of the ’366 patent” failed to sufficiently identify the accused products. Id. at 3-4. Judge Stark explained that “this Court has repeatedly declined to dismiss pleadings that accuse general categories of products[,]” because that is all Form 18 requires. Id. at 3-4. With respect to the specific allegation at issue, the Court explained that the defendant “has expressly identified a general category of products, power supply controllers, and further restricted that category to controllers that include certain features and circuits.” Id. at 4.

The Court next considered whether the defendant sufficiently pled "that [the plaintiff] had knowledge of the patents-in-suit prior to [the defendant] filing its counterclaims[.]” Id. at 7. The Court explained that "service of a complaint constitute[s] sufficient notice for an inducement claim based on post-filing conduct." Id. at 6. Accordingly, the motion was denied to the extent it targeted post-filing conduct by the plaintiff. Id. The Court reached the same result with respect to the plaintiff’s argument that “specific intent to induce infringement” was not adequately pled, explaining that the defendant “satisfied the pleading requirements for induced infringement [of all asserted patents] based on post-filing conduct.” Id. at 8. The Court noted that the allegations were more specific with respect to the ’366 patent, and rejected the plaintiff's suggestion that those allegations were insufficient because they were pled “on information and belief,” explaining “[v]iewing a complaint in the ‘light most favorable to plaintiff’ may ‘include[] facts alleged on information and belief.’” Id. at 8 n.9 (quoting Frederick Hart & Co. v. Recordgraph Corp., 169 F.2d 580, 581 (3d Cir. 1948) (internal quotation marks omitted)). Finally, the Court rejected the plaintiff’s suggestion that the inducement counterclaims should be dismissed for failure to identify specifically a direct infringer, explaining “a plaintiff need not identify a specific direct infringer if it pleads facts sufficient to allow an inference that at least one direct infringer exists.” Id. at 6 (quoting In re Bill of Lading, 681 F.3d 1323, 1336 (Fed. Cir. 2012)).

Judge Stark also denied the plaintiff’s alternative request that the defendant be ordered to provide a more definite statement under Rule 12(e), explaining “[t]he Court has determined that [the defendant’s] counterclaims provide sufficient notice of the infringement allegations [and] are not ‘so vague and ambiguous’ that [the plaintiff] cannot frame a responsive pleading.” Id. at 9-10.

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Posted On: April 2, 2013

Judge Stark issues opinions on post-trial motions in latest dispute between Power Integrations and Fairchild Semiconductor

Judge Stark recently considered the parties’ post-trial motions following a jury trial in the long-standing dispute between Power Integrations and Fairchild Semiconductor. Power Integrations, Inc. v. Fairchild Semiconductor International Inc., et al., C.A. No. 08-309-LPS (D. Del. Mar. 29, 2013). The case involved infringement allegations by both the plaintiff and the defendants involving a total of six patents related to DC output power supplies or power converters. Regarding Power‘s U.S. Patent No. 6,249,876, the jury found that Fairchild infringed, literally and under the doctrine of equivalents, induced infringement and that the asserted claims were valid. Id. at 2. Regarding U.S. Patent No. 6,107,851, “the jury found in favor of Power and against Fairchild with respect to literal infringement, indirect infringement, and validity of the only asserted claim, claim 18.” Id. Regarding the remaining two patents asserted by Power, U.S. Patent Nos. 7,110,270 and 7,834,605, the jury found that the patent’s claims were valid, but not infringed. Id. Regarding the patents asserted by Fairchild, the jury found that Power infringed U.S. Patent No. 7,259,972 under the doctrine of equivalents, that Power did not infringe U.S. Patent No. 7,352,595, and that both patents were valid. Id. (See the verdict form here).

The parties filed various motions for judgment as a matter of law as to invalidity and non-infringement, as well as motions for a new trial. The Court denied all but one post-trial motion. In that motion, Power moved for judgment as a matter of law that Fairchild directly infringed and induced infringement of its ‘605 patent, or for a new trial. Id. at 13. Judge Stark granted Power's JMOL motion as to direct infringement because “Fairchild admitted that it did ‘not present[] evidence of a defense with regard to direct infringement.’ In the absence of such evidence, no reasonable jury could have returned a verdict on this issue in Fairchild’s favor.” Id. (internal citation omitted). Judge Stark denied, however, Power’s motion regarding the inducement verdict, which Power argued was “the result of Fairchild’s improper trial tactics[,]” because the Court’s “curative instruction was sufficient to eliminate unfair prejudice.” Id. at 14.

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Posted On: April 1, 2013

Judge Stark Grants Sanctions for Party’s Failure to Abide by Scheduling Order

Judge Leonard Stark recently granted a patent infringement defendant’s motion for sanctions for violations of the Court’s scheduling order. Due to the specific facts of the case, however, Judge Stark denied the requested relief of dismissal of the case. Instead, he ordered the plaintiff to pay defendant’s costs in bringing the motion for sanctions and struck the plaintiff’s request for prejudgment interest. See St. Clair Intellectual Prop. Consultants, Inc. v. Motorola Mobility LLC, C.A. No. 11-1305-LPS, Memorandum Opinion at 1 (D. Del. Mar. 29, 2013).

The parties’ dispute stemmed from a motion to stay filed by plaintiff St. Clair during the claim construction process. After filing its motion to stay but before the Court granted that motion, St. Clair failed to provide infringement contentions and failed to file an opening claim construction brief on the dates required for each by the Court’s scheduling order. Defendant Motorola continued to comply with scheduling order deadlines while the motion to stay was pending and brought a motion for sanctions for St. Clair’s omissions, seeking an order dismissing the case or prohibiting St. Clair from supporting its claims of infringement. Id. at 1-2.

Judge Stark considered the factors set forth by the Third Circuit in Poulis v. State Farm Fire & Cas. Co., 747 F.2d 863, 868 (3d Cir. 1984) for determining whether dismissal of a case is an appropriate sanction. Ultimately, he found that the balance of these factors—the extent of the party’s personal responsibility, prejudice to the adversary caused by failure to meet the scheduling order, history of dilatoriness, willfulness or bad faith, effectiveness of sanctions other than dismissal, and meritoriousness of the claim or defense—favored the imposition of sanctions. Id. at 3-8. “By relying on its motion to stay as a purported basis not to participate in litigation St. Clair chose to initiate—and in which it remained subject to a Scheduling Order—St. Clair essentially engaged in improper self-help, acting as if it had already obtained the relief it had at that point merely requested of the Court.” Id. at 6. Nevertheless, Judge Stark found that “less extreme sanctions” than dismissal were warranted, concluding “that imposing fees and costs incurred in bringing this motion for sanctions and striking St. Clair’s requests for prejudgment interest are appropriate sanctions . . . [because] [n]o party may unilaterally rewrite the Court’s Scheduling Order.” Id. at 3-8. Judge Stark also found that “Plaintiff’s citation to Local Rule 16.4 is unavailing [because] [t]hat rule requires the filing of a request for extension of deadlines prior to the expiration of the deadline.” Id. at 6 n.3.

In the process, Judge Stark noted that there was no “valid excuse for not talking and trying to resolve disputes” between the parties related to the joint claim chart, the motion to stay, and the motion for sanctions. “While [the motion for sanctions] is arguably dispositive because the relief sought includes dismissal, it would have been far preferable [for the parties] to have met and conferred. . . . The Court is unconvinced that the parties could not have worked out their conflicts over how the other side was proceeding if only they had made more of an effort to communicate.” Id. at 5-6, 6 n.2.

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