Posted On: May 30, 2013

Judge Andrews construes claims relating to online auctions.

Judge Richard G. Andrews recently construed several claims in U.S. Patent No. 7,801,802, “Method, system and computer program product for facilitating an auction behavior and automatic bidding in an auction.” Walker Digital, LLC v. Google, Inc., et al., C.A. No. 11-311-RGA (D. Del. May 22, 2013). The Court adopted the parties’ agreed upon the construction of the following terms, as follows:

“bid” agreed to mean “an offer from or on behalf of a bidder that includes an offered price for the good or service being auctioned”

“the highest bid in the auction is not from the bidder” agreed to mean “the highest offer received for the item is not from the bidder”

“determin[ing] that the rule is satisfied; determin[ing] that the highest bid in the auction is not from the bidder; and plac[ing] the bid” agreed to require that “‘determining’ steps must be performed before ‘placing’ step.”

The Court construed the disputed claims as follows:

“auction” construed to mean “a public or private sale in which goods or services of a seller may be sold to a bidder through a bidding process. An auction consists of one sale.”

“bid generator” construed to mean “a computer program or part of a computer program that bids for a bidder in amounts above the initial price or another bidder’s bid.”

The Court declined to construe three claims, finding that the defendants failed to overcome the strong presumption that claims that do not use the word “means” are not means-plus-function claims.

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Posted On: May 29, 2013

Judge Robinson denies defendant’s motion for leave to amend allegations in answer

In a recent order, Judge Sue L. Robinson denied defendant’s motion for leave to amend paragraph 19 of its answer, which responded to plaintiff’s infringement allegations regarding U.S. Patent No. 6,647,450. Cradle IP, LLC v. Texas Instruments, Inc., C.A. No. 11-1254-SLR (D. Del. May 23, 2013). In paragraph 19, defendant originally alleged that it had made, used, sold, or offered to sell microprocessor and OMAP devices “utilizing split transaction buses with target device command buffers (insofar as that phrase is given its common meaning and not necessarily the meaning that may be ascribed to it as a result of any claim construction).” Id. at 1-2. On January 23, 2013, more than two months after the deadline to amend the pleadings, defendant filed its motion for leave, seeking to change paragraph 19 such that it would state that defendant “denies that its OMAP devices utilize split transaction buses with target device command buffers.” Id. at 3. Because defendant moved to amend its answer after the deadline to amend the pleadings, Judge Robinson’s analysis was guided by both Rules 15(a)(2) and 16(b)(4) of the Federal Rules of Civil Procedure. See id. at 3-7.

With respect to Rule 15(a)(2), Judge Robinson first addressed whether defendant’s delay was undue. Id. at 4. Defendant argued that its delay would “not place an unwarranted burden on the court or [plaintiff] because it put [plaintiff] on notice of its proposed amendment before any depositions occurred and before the close of fact discovery.” Id. at 4. Judge Robinson found, however, that defendant failed to explain why it “did not seek to amend before the expiration of the deadline to amend pleadings,” and also found that the amendment was not “based on any new evidence that has emerged during discovery.” Id. at 5. Judge Robinson therefore found the delay undue “[g]iven the lack of proper justification.” Id. Judge Robinson further found that the undue delay would be prejudicial to defendant. Id. at 7. The amendment, Judge Robinson explained, “does not merely add particularity to its pleadings; it seeks to remove a qualification in its answer such that the response becomes an outright denial.” Id. at 7. Judge Robinson further explained that plaintiff “relied upon [defendant’s] answer and prepared its case in accordance with those pleadings” and that “[t]o allow [defendant] to change the landscape of the litigation at this late date would be prejudicial to [plaintiff].” Id. Given that defendant’s undue delay would result in prejudice to plaintiff, Judge Robinson found that defendant failed to satisfy Rule 15(a)(2). See id. at 6-7.

Judge Robinson additionally found that defendant failed to meet the “good cause” requirement for amendment pursuant to Fed. R. Civ. P. 16(b)(4). Id. at 7-8. Judge Robinson noted that “the good cause standard under Rule 16(b) hinges on diligence of the movant, and not on prejudice to the non-moving party.” Id. at 7. As Judge Robinson explained, defendant failed to offer “any explanation as to why it could not reasonably meet the scheduling order’s November 1, 2012 deadline for amending the pleadings.” Id. at 8.

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Posted On: May 29, 2013

Judge Thynge considers motions to exclude expert testimony

Magistrate Judge Mary Pat Thynge recently issued a report and recommendation deciding four motions to exclude testimony and opinions of the parties’ experts. Masimo Corporation v. Philips Electronics North American Corporation, et al., C.A. No. 09-080-LPS-MPT (D. Del. May 20, 2013). The details of the case can be found here, in the Court’s previous report and recommendation regarding other motions at issue in the case.

The Court recommended exclusion of the following expert testimony:

-Defendants offered three experts to support their claim that one of their products was an acceptable non-infringing alternative. The Court recommended exclusion of any testimony by one of the experts concerning the significance of FDA approval or clearance regarding the performance of defendants’ product. This expert admitted that he was only familiar with the FDA approval process “in vague terms” and had “never been part of a formal application process for a device as of yet.” Id. at 17. But this expert’s “limited[]” reliance on FDA approval standards did not preclude the rest of his testimony because “the foundation for [this expert’s] opinion and testimony does not rest on FDA approval standards for medical devices.” Id.

-Plaintiff offered an expert (Dr. Quill) to support its claim that defendants’ product was not an acceptable non-infringing alternative. First, Dr. Quill’s testimony was inadmissible as to what would be acceptable to defendants’ customers because he did not speak to any such customers. Id. at 23-24. On the other hand, his background made him qualified to “testify about the type of medical equipment which meets the needs of medical professionals and hospitals.” Id. Second, “Dr. Quill may testify there is lack of peer reviewed studies on [defendants’ product] showing that it is an acceptable alternative, but cannot opine or testify that [the product] is [an] unacceptable alternative due to the lack of such studies.” Id. at 24. This expert had “admitted the absence of evidence demonstrating acceptability of a medical device does not prove the device is unacceptable.” Id.

-Dr. Quill’s supplemental report, filed after the applicable deadline, was inadmissible as untimely. Id. at 25. Plaintiff had not presented evidence that the information in the report could not have been prepared in the initial expert report. “Further, the scheduling order has been modified at the request of the parties several times, and none permit supplemental reports. If either party desired the option of supplemental reports, the matter could have been addressed in the numerous changes to the scheduling order, or requested of the court long before discovery ended.” Id. at 26.

-Defendants’ damages expert (Dr. Keeley) was precluded from relying on a certain license agreement as a basis for the reasonable royalty rate because there was insufficient evidence that this agreement was comparable to a hypothetical negotiated license for patents-in-suit. Id. at 45.

-The Court also limited Dr. Keeley’s testimony to the extent he provided an independent opinion on the acceptability of defendants’ product as a non-infringing alternative because this expert was an economist and not a medical professional. Id. at 40. But Dr. Keeley could rely on the admitted opinions of defendants’ other experts regarding acceptable non-infringing alternatives in order to calculate damages. Id.

-Defendants’ motion to exclude testimony of plaintiff’s damages expert (Wagner) attacked this opinion on nine different grounds. The Court recommended granting the motion with regard to two of them. First, the testimony regarding plaintiff’s profit margin was unreliable. “Wagner’s testimony evidence[d] a lack of familiarity with the underlying data for his conclusions on profit margin. In evaluating [plaintiff’s] profit margin, Wagner delegated work to his staff. As shown in his deposition, Wagner was unfamiliar with the supporting documents and other details for his assumptions.” Id. at 60. Second, Wagner’s opinion that defendants’ product was an unacceptable alternative was excluded to the extent the analysis relied on excluded testimony of Dr. Quill. Id. at 66.

The Court recommended denial of the parties’ motions with respect to the following:

-With the exception of the above re: testimony on FDA approval or clearance, plaintiff’s motion to exclude the testimony of defendants’ experts regarding acceptable non-infringing alternatives should be denied. Id. at 18.

-Dr. Quill’s testimony that plaintiff’s commercial success was due to its advanced technology was admissible. Dr. Quill relied on the “technical expertise” of another expert to support a finding that a nexus existed between plaintiff’s commercial success and the patents-in-suit. Id. at 28. This combination of expert opinions to show a nexus was appropriate, and “demonstrate[d] the required nexus and bases for commercial success.” Id.

-Dr. Keeley’s testimony was admissible to the extent it concluded what a hypothetical consumer of defendants would consider an acceptable alternative. “[Plaintiff] misapplie[d] the analysis in [Grain Processing Corp. v. American Maize-Products Co., 185 F. 3d 1341 (Fed. Cir. 1999) in arguing Dr. Keeley’s analysis was improper]. The focus is not what [defendants] would or would not consider to be an acceptable alternative, but rather, what a [hypothetical] consumer would or would not consider to be an acceptable alternative.” Id. at 42.

-Dr. Keeley’s testimony that limited plaintiff’s incremental profit margins based on regression analysis was admissible. “The court’s role [as gatekeeper] is to determine whether Dr. Keeley’s methodology is scientifically acceptable, not which calculation or opinion is more correct [between his and the expert of plaintiff]. . . . [T]he approach by Dr. Keeley is reasonable and substantially equivalent to [plaintiff’s] expert’s methodology.” Id. at 43.

-The Court rejected the majority of defendants’ arguments for excluding Wagner’s testimony as going to the weight of the evidence or to issues that may be addressed at cross examination. See id. at 46-66.

-Wagner’s testimony on a reasonable royalty rate was admissible because the report applied the Geogia-Pacific factors and Wagner’s “prior application of [these factors had been] affirmed by the Federal Circuit” in another case. Id. at 55.

-Wagner’s opinion on future damages was also admissible. The “commensurably greater” standard of Oiness v. Walgreen, Co., 88 F.3d 1025 (Fed. Cir. 1996), which defendants cited, applies to the burden “the patentee must meet to justify future damages” but “has no bearing on the admissibility of expert testimony, if Rule 702 is satisfied.” Id. at 57-58.

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Posted On: May 28, 2013

Judge Robinson transfers litigation between Delaware corporations to the Northern District of California.

Judge Sue L. Robinson recently transferred a case between two Delaware corporations to the Northern District of California. Fortinet, Inc. v. FireEye, Inc., Civ. No. 12-1066-SLR (D. Del. May 16, 2013). Both parties were headquartered in Northern California. The plaintiff was significantly larger than the defendant, and had previously been involved at least five times in litigation in the Northern District of California. Id. at 1. The defendant, on the other hand, had no federal litigation history. Id. at 1-2. The Court recognized that the plaintiff’s preferred venue “remains a significant factor” in the Jumara analysis, id. at 4, but found that on balance, the case presented “extenuating circumstances”, including that both parties were headquartered in Northern California, the defendant was smaller and had no federal litigation experience, and the plaintiff was pursuing, in addition to its patent infringement claims, California state law claims for misappropriation of trade secrets and intentional interference with contractual relations and prospective economic advantage. Id. at 7.

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Posted On: May 24, 2013

Direct infringement claims survive motion to dismiss, "barely" satisfying Form 18

Judge Andrews recently considered a motion to dismiss allegations that PayPal's "network products and/or services that use Remote Direct Memory Access (RDMA)" infringe plaintiff's patent by "operating according to the InfiniBand specification." Infinite Data LLC v. PayPal, Inc., C.A. No. 12-1622-RGA (D. Del. May 17, 2013). Noting that "extremely minimal allegations" can satisfy Form 18, Judge Andrews denied the motion. Id. at 1-2 (citing In re Bill of Lading, 681 F.3d 1323, 1334 (Fed. Cir. 2012):

"Were there only Bill of Lading, I would probably dismiss this Complaint. Nevertheless, as the Complaint sets forth what the patent claims, what sort of computer system is supposed to be practicing the patented method, and refers to the InfiniBand technology (which presumably means something to people in the field) to further give notice to the Defendant of how its products and services are practicing the patented method, I think the Plaintiff has pled enough, albeit barely, to sustain the Complaint." Id. at 2.

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Posted On: May 24, 2013

Judge Sleet Denies Motion to Dismiss False Marking Claims under Rule 9(b)

Chief Judge Gregory Sleet recently denied a defendant’s motion to dismiss false marking counts of a complaint. See Devicor Medical Products, Inc. v. Biopsy Sciences, LLC, C.A. No. 10-1060-GMS, Order at 1 (D. Del. May 17, 2013). Defendant Biopsy Sciences sought to dismiss the false marking claims on grounds that the plaintiff, Devicor Medical Products, did not sufficiently plead the intent required by Rule 9(b). In his order, Judge Sleet acknowledged that Federal Circuit precedent required application of Rule 9(b)’s heightened pleading standard to false marking claims. Judge Sleet continued, however, that Devicor “is not required to prove its case at the pleadings stage. Rather, the court need only ask whether the [complaint] ‘allege[s] sufficient underlying facts from which [the] court may reasonably infer that a party acted with the requisite state of mind.’” Id. Because Devicor “offered specific allegations directed towards its position that Biopsy had knowledge of the alleged mismarking and took affirmative actions to mislead the public,” Judge Sleet found “the necessary ‘objective indication’ from which the court may draw a reasonable inference of intent” and deny the motion to dismiss. Id.

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Posted On: May 21, 2013

Judge Burke recommends denial of defendants’ motion for leave to add claims and defenses of inequitable conduct

In a recent report and recommendation, Magistrate Judge Christopher J. Burke recommended that defendants’ motion for leave to amend their pleading with inequitable conduct claims and defenses be denied. INVISTA North America S.à.r.l. et al. v. M&G USA Corporation et al., C.A. No. 11-1007-SLR-CJB (D. Del. May 3, 2013). Plaintiffs are asserting U.S. Patent Nos. 7,943,216 (the “’216 Patent”); 7,879,930 (the “’930 Patent”); and 7,919,159 (the “’159 Patent”). Id. at 1. On August 6, 2012, the date which marked the deadline to amend the pleadings pursuant to the Scheduling Order, defendants moved for leave to amend their pleading with inequitable conduct claims and defenses with respect to each of plaintiffs’ asserted patents. Id. at 5. Defendants alleged that those responsible for the prosecution of the asserted patents submitted misleading and incomplete test data to the PTO. Id. at 11, 26. Judge Burke’s analysis was governed by Federal Rule of Civil Procedure 15(a). See id. at 5-6. Because plaintiffs opposed defendants’ motion “on the sole basis that [their] proposed amendments would be futile,” Judge Burke was required to assess only futility of amendment. Id. at 6. As Judge Burke explained, “the standard for assessing futility of amendment is the same standard of legal sufficiency that applies under Fed. R. Civ. P. 12(b)(6).” Id. at 7.

With respect to the ’159 and ’216 Patents, Judge Burke found that defendants failed “to sufficiently plead both the ‘who’ of inequitable conduct as well as the scienter requirement.” Id. at 25. Judge Burke explained that “[n]one of [defendants’] allegations tie specific conduct to any specific individual; instead, as to ‘who’ engaged in misconduct before the PTO, every allegation is pled generally, with reference to ‘Invista,’ ‘Applicant,’ ‘they,’ and ‘their.’” Id. at 17. Judge Burke further found that as to knowledge, the “problem with [defendants’] allegations circle[d] back to the Court’s finding with regard to [defendants’] insufficient pleading as to the ‘who’ of inequitable conduct.” Id. at 21. Specifically, Judge Burke explained that “[w]ith no real facts pled that are specific to any individual, there is a clearly insufficient basis to reasonably infer that any particular person . . . did in fact know of the materiality of this data, and intentionally failed to disclose the data or disclosed incomplete data.” Id. at 22. Moreover, with respect to an intent to deceive, Judge Burke noted that defendants failed to satisfy its burden “under Exergen by asserting that ‘Applicant’ or ‘INVISTA’ as a whole had a ‘desire to acquire patent rights in the gas barrier market,’ and then suggest[ing] that this general statement should lead to the inference that" a particular individual "knowingly withheld or misrepresented material data because of a specific intent to deceive the PTO.” Id. at 25.

Judge Burke further found that defendants’ proposed inequitable conduct defense with respect to the ’930 Patent “suffer[ed] from the same fatal flaws” as those related to the ’159 and ’216 Patents. Id. at 28. Specifically, defendants “failed to sufficiently identify the ‘who’ of [the] inequitable conduct,” which in turn “doom[ed] [defendants’] allegations regarding the scienter requirements of inequitable conduct in relation to the ’930.” Id. Judge Burke additionally found that defendants failed to sufficiently plead “but-for” materiality with respect to the ’930 Patent. Id. at 29. As Judge Burke explained, “[m]ere claims that the PTO would not have granted the patent had it known of the omission or misrepresentation are insufficient because they are conclusory legal conclusions under Iqbal.” Id.

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Posted On: May 21, 2013

Judge Sleet denies defendants’ request to file motion for summary judgment

In Edwards Lifesciences LLC, et al. v. Medtronic CoreValve LLC, et al., C.A. No. 12-23-GMS (D. Del. May 13, 2013), Chief Judge Gregory M. Sleet recently issued an Order denying defendants’ letter request to file a motion for summary judgment asserting invalidity for lack of enablement of U.S. Patent No. 8,002,825. The Court explained that issues of material fact remained as to “(1) whether the 18 French limitation is a novel feature of the claimed invention; and (2) if this limitation is novel, whether the '825 Patent disclosure is enabling.” Id. at 1 n.1.

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Posted On: May 21, 2013

Judge Thynge issues early claim construction order at request of parties

In two consolidated actions, Magistrate Judge Mary Pat Thynge recently issued a Memorandum Order construing the term “promotional code” in U.S. Patent Nos. 5,717,866, entitled “Method for comparative analysis of consumer response to product promotions,” and 5,924,078, entitled “Consumer-provided promotional code actuatable point-of-sale discounting system.” Codepro Innovations LLC v. Safeway Inc., C.A. No. 12-970-MPT and Codepro Innovations LLC v. The Stop & Shop Supermarket Company LLC, et al., C.A. No. 12-1482-MPT, at 1 (D. Del. May 14, 2013). The parties had requested early claim construction for this term. Id.

Judge Thynge construed this term as “a series of publicly distributed or advertised characters associated with discount information corresponding to a product or products.” Id. at 18.

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Posted On: May 20, 2013

Judge Robinson Denies Motions to Transfer, Dismiss

Judge Sue Robinson recently considered motions to transfer and dismiss filed by patent infringement defendant Callidus Software. Plaintiff Versata Software is a Delaware corporation with a principal place of business in Texas, and Defendant Callidus is a Delaware corporation with a principal place of business in California. Callidus moved to transfer to the Northern District of California and to dismiss under Rule 12(b)(6), and Judge Robinson denied both motions. See Versata Software, Inc., et al. v. Callidus Software Inc., C.A. No. 12-931-SLR, Memo. Op. at 1-2 (D. Del. May 16, 2013).

Referring to her previous decision in Helicos Biosciences Corp. v. Illumina, Inc., 858 F. Supp. 2d 367 (D. Del. 2012), Judge Robinson noted that both parties preferred venue would be a legitimate venue. But because “‘convenience’ is separately considered in the transfer analysis, the court decline[d] [to] elevate a defendant’s choice of venue over that of a plaintiff based on defendant’s convenience.” Id. at 3-4. Carefully weighing all of the Third Circuit’s Jumara factors, Judge Robinson ultimately concluded that “Versata chose a legitimate forum which all parties have in common—their state of incorporation. As is usual in these cases, the convenience factors do not weigh in favor of transfer, because discovery is a local event and trial is a limited event. Although Delaware is not the locus of any party’s business activities, it is a neutral forum and no more inconvenient for Calllidus than Texas, the locus of Versata’s business activities. Given that both Versata and Callidus have experience litigating in multiple jurisdictions, the court is not persuaded that transfer is warranted in the interests of justice.” Id. at 3-6.

Judge Robinson then turned to Callidus’ motion to dismiss for failure to state a claim. Her Honor first found that with respect to “Versata’s claims of direct infringement . . . Versata’s complaint sufficiently identifies the accused software . . . as required by Fed. R. Civ. P. Form 18.” Id. at 9. Consistent with her practice in previous cases, Judge Robinson also found that Versata had adequately plead indirect infringement. Relying on Walker Digital LLC v. Facebook, Inc., 852 F. Supp. 2d 559 (D. Del. 2012), Judge Robinson held that the complaint’s allegation of knowledge of infringement as of the date of filing provided adequate notice under Global-Tech. Id. Furthermore, the pleading of induced infringement without identification of a specific customer was adequately supported because Callidus “licenses and/or sells the accused products” and Versata also alleged direct infringement. Finally, the pleading of contributory infringement was adequately supported because Versata alleged direct infringement and knowledge of lack of substantial non-infringing uses. Id. at 10. For these reasons, Judge Robinson found that all of the allegations of the complaint “satisfied the requirements of Twombly and Iqbal.” Id. at 7-10.

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Posted On: May 17, 2013

Judge Sleet construes claims in ANDA litigation

In Pfizer Inc. et al. v. Sandoz Inc., C.A. No. 12-654-GMS-MPT (D. Del. May 7, 2013), Chief Judge Gregory M. Sleet recently issued an order construing the following six disputed terms of U.S. Patent No. 8,026,276, which is alleged to cover a pharmaceutical that treats advanced renal cell carcinoma:

- “CCI-779”

- “w/v”

- “w/v of citric acid”

- “parenteral composition”

- “preparing”

- “combining”

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Posted On: May 15, 2013

Judge Thynge construes claim terms of Internet search patent

In Collarity, Inc. v. Google, Inc., C.A. No. 11-1103-MPT (D. Del. May 6, 2013), Magistrate Judge Mary Pat Thynge recently construed the following disputed claim terms of U.S. Patent No. 7,756,855, entitled “Search Phrase Refinement by Search Term Replacement:”

-“keyword,” id. at 4-8;

-“association graph,” id. at 8-10;

-“anchor keyword/non-anchor keyword,” id. at 10-12;

-“designating, by the search system, one or more keywords as anchor keywords and the remaining keywords as non-anchor keywords,” id. at 12-14;

-“order of steps,” id. at 14-19.

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Posted On: May 14, 2013

Magistrate Judge Burke Construes Terms of Patents Asserted Against Microsoft Kinect

Magistrate Judge Burke recently issued a thorough report and recommendation on claim construction in a patent infringement dispute between plaintiff Impulse Technology and defendants, Microsoft and the makers of several games for Microsoft’s Xbox 360 system and Kinect sensor. See Impulse Tech. Ltd. v. Microsoft Corp., C.A. No. 11-586-RGA-CJB, Report and Recommendation at 1-4 (D. Del. May 13, 2013). In addition to the parties’ agreed-upon constructions, Judge Burke construed the following disputed terms related to tracking the position of a player in physical and virtual spaces:

- “a tracking system”
- “defined physical space” and “first/second physical space”
- “virtual space”
- “player virtual location[s] in a virtual space corresponding to the physical location[s] of the player[s]”
- “positioning the representation of the user on the monitor” and “moving the representation of the user to reflect movement of the user”
- “representation”
- “overall physical location”
- “moving in the physical space”
- “[the view is from a] point of view in the virtual space corresponding to a location on a line directed outward from the display into the physical space”

Id. at 61-62.

UPDATE:
In a recent Order, Judge Richard G. Andrews adopted Judge Burke's recommended constructions, but provided additional clarification as to the proper construction of the following terms: "overall physical location" and "'positioning the representation of the user' and 'moving the representation of the user to reflect movement of the user.'" Impulse Technology Ltd. v. Microsoft Corporation, et al., C.A. No. 11-586-RGA-CJB (D. Del. Sept. 19, 2013).

Judge Andrews adopted Judge Burke's recommended constructions, but provided additional clarification as to the proper construction of the following terms: "overall physical location" and "'positioning the representation of the user' and 'moving the representation of the user to reflect movement of the user.'" See id. at 1-3.

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Posted On: May 14, 2013

Magistrate Judge Fallon recommends dismissal of pro se patent infringement complaint for lack of standing.

Magistrate Judge Sherry R. Fallon recently recommended the dismissal of a pro se patent infringement complaint filed against the United States, various United States officials, and Kannalife Sciences, Inc. McDowell v. U.S., et al., C.A. No. 12-1302-SLR-SRF (D. Del. May 10, 2013). The pro se plaintiff was the inventor of U.S. Patent No. 7,597,910, “directed to compositions and methods for treating prostate disorders using a mixture of cannabis, shiitake mushrooms, and maitake mushrooms,” but had assigned the patent to SLGM Medical Research Institute. Id. at 1, 5. The inventor argued that he had standing to bring the complaint because he and SLGM Medical Research were “one and the same,” but Magistrate Judge Fallon rejected that argument, explaining that “only the owner of the patent has standing to sue.” Id. at 5. Magistrate Judge Fallon also recommended that the complaint against the United States and its officials be dismissed for lack of subject matter jurisdiction on the basis that 28 U.S.C. § 1498 requires that patent infringement actions against the United States be filed in the United States Court of Federal Claims. Id. at 6.

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Posted On: May 13, 2013

Judge Sleet denies defendant’s 12(b)(6) motion to dismiss plaintiff’s direct and indirect infringement claims

In a recent order, Chief Judge Gregory M. Sleet denied defendant’s motion to dismiss plaintiff’s claims of direct, contributory, and induced infringement for failure to state a claim upon which relief may be granted. Segan LLC v. Zynga Inc., C.A. No. 11-670-GMS (D. Del. May 2, 2013). Plaintiff is asserting U.S. Patent No. 7,054,928 (the “’928 Patent”), which includes two independent claims, one system claim and one method claim. Id. at 1 n.1. With respect to plaintiff’s claims for direct infringement, defendant argued that “it cannot possibly directly infringe either the system or methods claims” because direct infringement requires a party to “commit all the acts necessary to infringe . . . either personally or vicariously,” and plaintiff’s asserted claims “require activity by multiple actors.” Id. Judge Sleet explained, however, that with respect to the “use” of a system, “physical or direct control of all the elements of a system is not required—the user must simply cause those elements to work for their patented purpose.” Id. at 2 n.1. In light of that standard, Judge Sleet found that plaintiff sufficiently pled direct infringement, as plaintiff alleged that defendant “has used its own games on social media websites.” Id.

Defendant also argued that plaintiff’s indirect infringement claims should be dismissed for failure to adequately plead “the requisite underlying direct infringement [and] the necessary knowledge and intent.” Id. Judge Sleet found, however, that plaintiff sufficiently pled the direct infringement prong by alleging that “on any given day 60,000,000 people (i.e., users) play Defendant’s games on social websites” and that the “games’ users . . . put the invention into service, control the operation of the system as a whole and obtain [a] benefit from it.” Id. Further, with respect to the knowledge and intent requirements for induced infringement, Judge Sleet contrasted the instant complaint from the deficient complaint in Chalumeau Power Sys. LLC v. Alcatel-Lucent, C.A. No. 11-1175-RGA (D. Del. Jul. 18, 2012) (discussed previously here). Id. at 3 n.1. In the Chalumeau complaint, there were “only insufficient factual assertions to support the legal conclusion of actual knowledge, and no factual assertions at all to support the legal conclusion of specific intent.” Id. In the instant matter, Judge Sleet found that knowledge was sufficiently pled since plaintiff alleged that it sent a letter to defendant’s officers with a full copy of the asserted patent on June 30, 2011. Id. Further, Judge Sleet found that plaintiff provided “several factual assertions permitting a reasonable inference that [defendant] acted with the requisite specific intent.” Id. With respect to the contributory infringement claim, Judge Sleet again found knowledge sufficiently pled based on the allegations related to plaintiff’s letter with the asserted patent attached. Id. Further, Judge Sleet found that plaintiff provided allegations sufficient to permit “the reasonable inference that [defendant] was aware that its games were ‘especially adapted for use in infringement’ of the ’928 Patent.” Id. Specifically, plaintiffs alleged that “[d]efendant has specifically designed, developed, and acquired [its] on-line games for game players to use on target websites” and that defendant "admits in its amended IPO statement that its games require game players (users) to access the internet, Facebook (or any target website [defendant] engages).” Id.

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Posted On: May 8, 2013

Judge Stark rejects both parties’ inequitable conduct defenses.

In a decision unsealed on May 3, 2013, Judge Leonard P. Stark rejected both parties’ inequitable conduct defenses, finding that neither proved by clear and convincing evidence that the other intended to deceive the PTO. Power Integrations, Inc. v. Fairchild Semiconductor Int’l Inc., et al., C.A. No. 08-309-LPS (D. Del. Apr. 25, 2013). The Court found that the inventor of the Defendant’s asserted patent “was generally aware of the existence of” two patents allegedly intentionally withheld from the PTO, but that “does not mean he also was aware of those patents’ specific disclosures.” Id. at 7. Quoting the Federal Circuit’s decision in Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1330 (Fed. Cir. 2009), Judge Stark explained that “one cannot assume that an individual, who generally knew that a reference existed, also knew of the specific material information contained in that reference.” Id. at 8. Moreoever, the Court noted that the inventor believed his patent was “limited to frequency jitter on the primary side of a power converter,” whereas the allegedly withheld patents, “in [the inventor’s] mind, related to secondary side jitter control.” Id. Although the Court ultimately concluded that the inventor’s patent “was not limited to primary side applications, the Court’s subsequent conclusion does not render [the inventor’s] state of mind in 2004-2007 unreasonable . . . .” Id. Overall, the Court found the testimony of the defendant’s inventor to be credible, and therefore found that the plaintiff failed to show deceptive intent by clear and convincing evidence. Id. at 8-10.

The Court next addressed the defendant’s inequitable conduct defense, which was based on an alleged “misrepresentation” to the PTO during reexamination. Id. at 11. Specifically, the defendant argued that in response to a rejection during reexamination of certain claims as anticipated by a reference, the plaintiff argued that the reference “did not disclose a ‘maximum duty cycle signal provided by an oscillator,’” implicitly asserting that such an oscillator would be novel. Id. at 11-12. According to the defendant, such oscillators were well known in the art, and “the Examiner only withdrew the rejection because he mistakenly believed that an oscillator providing a maximum duty cycle was novel.” Id. at 12. The Court noted, however, that the plaintiff had disclosed other prior art referencing such oscillators, and in any event because the rejection was based on claims initially found to be anticipated, “[t]he arguments [the inventor] presented to the PTO were limited to the specific disclosure of the [specific] reference and focused on the differences between that reference and the claims.” Id. at 13. Accordingly, the Court found that no misrepresentation had been made to the PTO. Further, because the Examiner “identified an oscillator with a maximum duty cycle signal in at least one additional prior art reference,” the Court could not “conclude that the Examiner considered the oscillator to be a point of novelty.” Id. In short, the inventor “credibly testified that he believed the Examiner was aware that oscillators with maximum duty cycle signals were known in the prior art. . . . This belief is more than reasonable given that the Examiner expressly identified such an oscillator in the Office Action and signed several Information Disclosure Statements indicating that he considered the references [the Plaintiff] submitted that disclose this feature.” Id.

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Posted On: May 8, 2013

Judge Stark construes terms of patents related to "intervertebral implant" devices

Judge Stark recently issued the Court's claim construction opinion construing the terms of U.S. Patent Nos. 7,846,207, 7,862,616, and 7,875,076. The patents relate to "medical devices called 'intervertebral implants' and methods of implanting such devices between adjacent vertebrae in spinal fusion procedures." Depuy Synthes Products, LLC v. Globus Medical, Inc., C.A. No. 11-652-LPS (D. Del. May 7, 2013).

Judge Stark construed the following terms:

"[front] plate/plate"

"securing plate"

"upper surface [of the plate]"

"lower surface [of the plate]"

"upper plane [of the body]"

"underside plane [of the body]"

"lower plane [of the body]"

"plate top surface located generally on the upper plane/plate top surface"

"plate lower surface located generally on the lower plane/plate lower surface"

"borehole"

"being anchorable within the first and second boreholes and the first and second partial boreholes"

"first and second boreholes of the front plate diverge when viewed from the front surface/ diverge"

"captured between the front plate and the securing plate"

"located between the plate and the securing plate"

"contained between the adjacent vertebral bodies when the implant is inserted between the adjacent vertebral bodies"

"positioned between the upper and lower planes"

"the first and second boreholes of the front plate and the first and second heads are covered at least partly by the securing plate I covered at least partly by the securing plate"

"the securing plate at least partially covering each of the plurality of boreholes/the securing plate at least partially covering"

"the securing mechanism at least partially covering each of the plurality of boreholes/the securing mechanism at least partially covering"

"attaching a securing plate with a fastening agent over the first and second head portions of the first and second fixation elements"

"partial borehole in communication with the front surface and the upperside/underside of the body"

"non-metallic material"

"the first height being substantially equal to the second height so that the three dimensional body and the plate are contained between the adjacent vertebral bodies when the implant is inserted between the adjacent vertebral bodies/the first height being substantially equal to the second height"

"the second height being generally equal to the first height"

"the first and second heads and the first and second boreholes and partial boreholes positioned substantially between the upper and underside planes/positioned substantially between the upper and underside planes"

"securing mechanism"

"fastening agent"

"upper surface"

"lower surface"

"upper side"

"underside"

"upper vertebra"

"lower vertebra"

"upper endplate"

"lower endplate"

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Posted On: May 7, 2013

Chief Judge Sleet Denies Request for Leave to File Summary Judgment Motion in ANDA case Before Scheduling Conference Has Occurred

Chief Judge Gregory Sleet recently denied a generic pharmaceutical company’s request for leave to move for summary judgment before a Rule 16(b) conference in an ANDA case. The defendant generic manufacturer sought leave for early summary judgment because the thirty-month stay was set to expire in the coming months and because statements made by the plaintiff’s CEO and counsel supposedly confirmed that defendant’s ANDA product did not have a limitation required in every claim of the patent-in-suit. See Endo Pharms. Inc. v. Mylan Techs. Inc., C.A. No. 11-220-GMS, Order at 1-2 n.1 (D. Del. May 3, 2013).

Judge Sleet, however, found that “summary judgment briefing would be wasteful and premature at this stage.” Judge Sleet accepted three arguments against summary judgment proffered by the plaintiff. First, the plaintiff argued that because it had no opportunity to conduct fact or expert discovery, it would respond to a summary judgment motion with a Rule 56(d) declaration. Second, the plaintiff argued that a supposed limitation of the claims of the patent-in-suit was not actually present in the claims and that claim construction would be necessary to determine what was claimed. Finally, the plaintiff argued that even if there were no literal infringement, it was entitled to assert infringement under the doctrine of equivalents, which would require both discovery and claim construction. Accepting all three of these arguments, Judge Sleet found the “summary judgment request to be inappropriate at this juncture.” Id.

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Posted On: May 7, 2013

Jury returns defense verdict in Cellectis S.A. v. Precision Biosciences, Inc.

The jury returned a verdict Friday, May 3, 2013, in Cellectis S.A. v. Precision Biosciences, Inc., C.A. No. 11-173-SLR, finding that Precision Biosciences did not literally or indirectly infringe any claim of U.S. Patent No. 7,897,372, and that the asserted claims were invalid for obviousness and for lack of an adequate written description.

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Posted On: May 6, 2013

Judge Robinson Denies Motion to Dismiss Declaratory Judgment Suit in Butamax, Gevo Biofuel Patent Dispute

Judge Robinson recently denied a motion to dismiss for lack of subject matter jurisdiction filed by Gevo in its ongoing biofuel patent infringement dispute with Butamax and DuPont. Butamax filed the action in question against Gevo seeking a declaratory judgment of non-infringement of a certain patent (the “’505 patent”). The ’505 patent is a continuation of a patent at issue in one of the other fifteen cases pending between the parties (the “’808 patent”). Gevo responded with the motion to dismiss, raising a challenge to declaratory judgment jurisdiction. See Butamax Advanced Biofuels LLC v. Gevo, Inc., C.A. No. 12-1301-SLR, Memorandum Order at 1-5 (D. Del. May 2, 2013).

Although the ’505 patent was terminally disclaimed over the ’808 patent, Gevo alleged that claims of the ’505 patent were “distinct from those of the ’808 patent [and] thus, Gevo’s assertion of infringement of the ’808 patent [did] not necessarily implicate the ’505 patent.” Id. at 5. Judge Robinson concluded, however, that “[c]omparing the claims of the ’505 patent and the ’808 patent . . . there are substantial similarities in the claimed subject matter.” Moreover, “the pattern of litigation between the parties and the close relationship between the patents constitute facts sufficient to show the existence of an actual controversy between the parties.” Id. Futhermore, Gevo’s assertion that it “lack[ed] sufficient information regarding the fermentation conditions of Butamax and DuPont’s products to determine if they infringe the ’505 patent” was unconvincing given that “the ’505 patent in a continuation of the ’808 patent and Gevo has not offered Butamax and DuPont a covenant not to sue on the ’505 patent.” Id. at n.3. Accordingly, Judge Robinson found that a sufficient controversy existed for declaratory judgment jurisdiction and denied the motion to dismiss.

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Posted On: May 6, 2013

Judge Andrews construes claim terms of software patent

Judge Richard G. Andrews recently issued a claim construction opinion in Microsoft Corporation and Google, Inc. v. Geotag, Inc., C.A. No. 11-175-RGA (D. Del. May 3, 2013), in which plaintiffs filed a declaratory action asserting non-infringement of U.S. Patent No. 5,930,474, which “discloses computer software informational databases integrated with search engine technology that allow users to find points of interest according to desired geographic regions.” Id. at 2. The parties organized the disputed terms into five groups. Id. at 3.

The “hierarchy” phrases, id. at 3-10:
-“a database of information organized into a hierarchy of geographical areas wherein entries to each one of said geographical areas is further organized into topics”
-“narrower geographical area”
-“geographical area of relatively smaller expanse”
-“broader geographical area”
-“geographical area of relatively larger expanse”

The “dynamic replication” phrases, id. at 10-16:
-“dynamically replicating”
-“dynamically replicating an entry from broader geographical area into said geographical area.”
-“wherein within said hierarchy of geographical areas at least one of said entries associated with a broader geographical area is dynamically replicated into at least one narrower geographical area”
-“wherein at least one of said entries in said geographical area of relatively larger expanse is dynamically replicated into at least one of said geographical areas of smaller expanse”

“Topics” phrases, id. at 16-18:
-“topics”
-“wherein said topics are hierarchically organized”

“Entries” phrases, id. at 18-23:
-“entry” and “entries”

Finally, the Court construed nine additional terms and phrases, which, at plaintiffs’ urging, it construed according to their plain and ordinary meanings, id. at 23-25:
-“database”
-“on-line information”
-“organizer”
-“search engine”
-“virtual and geographic environment”
-“said search engine further configured to select one of said hierarchy of geographical areas prior to selection of a topic so as to provide a geographical search area”
-“said search engine further configured to select at least one geographical area in said hierarchy of geographical areas so as to define a geographical search area”
-“directing a search engine executing in a computer to select one or more of said geographical areas so as to select a geographical search area”

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Posted On: May 6, 2013

Chief Judge Sleet transfers infringement case against Facebook to the Northern District of California.

In a recent memorandum opinion, Chief Judge Gregory M. Sleet granted Facebook’s motion to transfer to the Northern District of California a patent case filed against it by a Canadian company and its Delaware subsidiary. Mitel Networks Corp., et al., v. Facebook, Inc., C.A. No. 12-325 (GMS) (D. Del. May 1, 2013). The Court found that only one factor under the Third Circuit’s Jumara analysis weighed in favor of keeping the case in Delaware: the plaintiff’s forum preference. The weight the Court gave that factor was diminished, however, because although the subsidiary plaintiff was incorporated in Delaware, neither plaintiff maintained any operations in Delaware. Id. at 5. Further, the Court found compelling Facebook’s argument (to which the plaintiffs did not respond during briefing) that the Canadian parent company was the real party in interest, and the Delaware subsidiary was added as a co-plaintiff only for jurisdictional purposes. Id. at 4, 6. As a result, the Court found that the plaintiffs’ “forum selection is entitled to some degree of heightened deference, but not to paramount consideration.” Id. at 6 (internal quotation marks omitted). The remaining Jumara factors weighed in favor of transfer to the Northern District of California, or were neutral. The Court therefore concluded that Facebook “met [its] burden of demonstrating that the interests of justice and convenience strongly favor transfer.” Id. at 18.

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Posted On: May 6, 2013

Judge Andrews construes claims of patent aimed at speeding up transmissions over a network

Judge Andrews recently construed the terms of U.S Patent No. 8,069,225 claiming "a transaction predictor aimed at speeding up the transmission of transactions over a network." Riverbed Technology, Inc. v. Silver Peak Systems, Inc., C.A. No. 11-484-RGA (D. Del. May 3, 2013). Terms of the other two patents-in-suit, U.S. Patent Nos. 7,428,573 and 7,849,134, were also at issue; but the Court postponed consideration of those patents because the patents were under reexamination by the PTO. Id. at 1 n.1.

The Court construed the following terms:

"a transaction predictor"
"synthesize, based on past transactions"
"based [at least in part] on past transactions"

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Posted On: May 3, 2013

Judge Robinson grants in part plaintiff’s motion to compel third party discovery

In a recent order, Judge Sue L. Robinson addressed a non-party’s motion to quash plaintiff’s subpoena and plaintiff’s cross-motion to compel. Cradle IP LLC v. Texas Instruments, Inc., C.A. No. 11-1254-SLR (D. Del. Apr. 29, 2013). Plaintiff had filed an action against defendant Texas Instruments, Inc. in late 2011, alleging infringement of U.S. Patent Nos. 6,647,450; 6,874,049; 6,708,259. Id. at 1. In late 2012 and early 2013, plaintiff served subpoenas on a non-party, Nokia Siemen Networks US LLC (“NSN US”), seeking documents and a deposition “related to Nokia Siemens base transceiver stations that [Texas Instruments] . . . identified as incorporating certain of the accused devices.” Id. at 1. Judge Robinson granted plaintiff’s motion to compel, but only to the extent that “NSN US has an employee or representative who has knowledge of the topics identified in the subpoena; does not need to obtain documents or information from [Nokia Siemens Networks Oy] for such knowledge; and lives, works, or regularly transacts business within 100 miles of the designated place of deposition.” Id. at 8. Further, Judge Robinson directed the deposition witness, if any, “to bring responsive documents that NSN US does not need to obtain from [Nokia Siemens Networks Oy], even if such documents are not located within 100 miles of the place of deposition or production.” Id. at 8-9.

With respect to the motions before the court, the “bulk” of the disagreement between plaintiff and NSN US surrounded whether NSN US had “control” over documents or information in the possession, custody, or control of Nokia Siemens Networks Oy (“NSN Oy”)—NSN US’s Finnish sister company that was also a non-party to the action. Id. at 4. Judge Robinson noted that “control is defined as the legal right to obtain the documents required on demand,” and that the court has “declined to apply a broader definition of ‘control’ that would also include an inquiry into the practical ability of the subpoenaed party to obtain documents.” Id. at 3. To determine whether such control was present, Judge Robinson was guided by the court’s previous decision in Power Integrations, Inc. v. Fairchild Semiconductor lnt’l, Inc., 233 F.R.D. 143 (D. Del. 2005). Id. at 3-6. Judge Robinson found that the relationship between NSN US and NSN Oy was similar to the “vendor relationship” between the parties in Power Integrations: “NSN US purchases the Nokia Siemens base station transceivers that are developed by NSN Oy, a separate and distinct corporate entity.” Id. at 4, 6. Although NSN US also conceded it “maintained” the products, the Court found that insufficient “to disregard the separate and distinct corporate identity of NSN US.” Id. at 6. Judge Robinson thus concluded that “NSN has no control over documents or information that it would have to obtain from NSN Oy.” Id.

Judge Robinson, however, was “concerned with certain aspects of NSN US’s motion to quash.” Id. Judge Robinson noted that “it [was] unclear from the record” whether NSN US was in the possession, custody, or control of other information it would not be required to obtain from NSN Oy, such as “supply chain” information or information regarding “certain hardware semaphores and software.” Id. Judge Robinson further found it unclear whether “any NSN US employee or representative within the court’s territorial limits may have knowledge that is responsive to the subpoena.” Id. at 7. Accordingly, Judge Robinson granted plaintiff’s motion to compel to the extent discussed above. Id. at 8-9.

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Posted On: May 3, 2013

Judge Sleet construes claim terms for medical device patent

Chief Judge Gregory M. Sleet recently issued a claim construction order in Edwards Lifesciences, L.L.C., et al. v. Medtronic CoreValve, L.L.C., et al., C.A. No. 12-cv-23-GMS (D. Del. Apr. 23, 2013). The Court construed the following disputed claim terms of U.S. Patent No. 8,002,825, entitled “Implantable Prosthetic Valve for Treating Aortic Stenosis”:

-“a prosthetic valve for implantation in a stenosed aortic valve”

-“metallic frame having intersecting bars”

-“frame made with intersecting metallic bars”

-“Frame”

-“18 French arterial introducer”

-“the frame being expandable”

-“a flexible valvular structure”

-“internal cover"

-“comprises a concave shape profile” and “shape comprising a concave profile”

-“wherein the frame is configured to be expanded by a balloon”

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