Posted On: September 28, 2013

Judge Sleet denies post-trial motions contesting invalidity and non-infringement, denies motion for attorney’s fees

In Finjan, Inc. v. Symantec Corp. et al., C.A. No. 10-593-GMS (D. Del. Sept. 19, 2013), Chief Judge Gregory M. Sleet denied several post-trial motions. Following a thirteen-day jury trial in December 2012, the jury returned “a unanimous verdict in favor of each of the defendants on the issues of infringement with respect to each asserted claims on the patents-in-suit,” U.S. Patent Nos. 6,480,962 and 6,092,194. Id. at 1-2. The jury additionally found “that the asserted claims of the patents -in-suit were invalid due to obviousness and anticipation.” Id. at 2. During the trial, defendants and plaintiff had moved for judgment as matter of law (“JMOL”) on numerous grounds pursuant to Fed. R. Civ. P. 50(a), and the court denied all of those motions. Id. at 1. After the trial, plaintiff filed renewed motions for JMOL, and, in the alternative, moved the court for a new trial. Judge Sleet first denied plaintiff’s renewed motions for JMOL with respect to invaldity, finding that defendants introduced substantial evidence sufficient to support a jury verdict of invalidity on the grounds of obviousness and anticipation. Judge Sleet similarly denied plaintiff’s renewed motions for JMOL with respect to the jury’s verdict of non-infringement. Judge Sleet additionally denied plaintiff’s alternative motion for a new trial.

Judge Sleet also denied one defendant’s motion for attorney’s fees. Judge Sleet noted, among other things, that “this case does not rise to a level of bad faith or vexatious litigation that warrants an award of attorney fees and costs.” Id. at 83. He similarly noted that “[f]or the most part, the parties defended their respective positions throughout this litigation in apparent good faith and the court does not find evidence in the record sufficient to support the assertion that [plaintiff] acted in subjective bad faith or conducted litigation in a manner warranting attorney fees.” Id. at 83.

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Posted On: September 26, 2013

Judge Stark Grants Summary Judgment of Noninfringement of Withdrawn Claims

Judge Leonard Stark recently decided several summary judgment motions in the ongoing patent infringement dispute between patent-owner Personalized User Model, L.L.P. and Google. The patents-in-suit relate generally to methods for “providing a more personalized experience for internet users based on individual user interests.” Personalized User Model, L.L.P. v. Google Inc., C.A. No. 09-525-LPS, Memo. Op. at 1-2 (D. Del. Sept. 20, 2013). With only one exception, Judge Stark denied all motions for summary judgment including for findings of non-infringement, invalidity, breach of contract, declaration of ownership, and lack of standing. Considering Google’s motion for summary judgment of non-infringement, Judge Stark denied the motion with respect to two patents-in-suit, but granted it with respect to a third patent. That third patent, the ’031 patent, had been asserted earlier in the case, but the plaintiff dropped the asserted claims of the ’031 patent in response to the Court’s order to reduce the number of asserted claims to fifteen. The plaintiff argued that the Court could not grant summary judgment over unasserted claims “because the Court does not have jurisdiction over claims that have been voluntarily withdrawn.” Judge Stark noted, however, that the “parties have failed to come to an agreement regarding a stipulation of dismissal of the ’031 patent claims, so the Court believes it still has jurisdiction over claims relating to this patent. As there is no evidence to support a finding of infringement of the ’031 patent, the Court will grant summary judgment of non-infringement.” Id. at 8-9.

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Posted On: September 25, 2013

Judge Stark construes claim terms of image data capture patent

In Transcenic, Inc. v. Google Inc, et al., C.A. No. 11-582-LPS (D. Del. Sept. 17, 2013), Judge Leonard P. Stark construed the following disputed terms of U.S. Patent No. RE 42,289, entitled “Spatial Referenced Photographic System With Navigation Arrangement:”

“database”

“a database”

“camera path”

“launch pad control”

“means for displaying.”

The Court adopted plaintiff’s proposed constructions with a few modifications, except where it resolved the parties’ dispute over a term and concluded that no construction was needed. See id. at 9. The Court concluded that the following terms would be given their plain and ordinary meaning: “image,” “orientation of the image,” “yaw orientation of the respective image,” and “multiple images aligned in a panorama.”

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Posted On: September 24, 2013

Special Master Lukoff orders plaintiff to produce preliminary surveys conducted by its expert

Special Master Lukoff recently considered Apple and Microsoft's request to order plaintiff to produce early surveys commissioned by one of plaintiff's experts in anticipation of issuing his expert reports. Robocast, Inc. v. Apple, Inc., et al., C.A. No. 11-235-RGA, C.A. No. 10-1055-RGA (D. Del. Sept. 18, 2013). The early surveys were conducted prior to the surveys which formed the basis of plaintiff's expert's opinions. Id. 1-2. The parties' dispute hinged on the interpretation of the phrase "the facts or data considered by the witness in forming [the opinions]," found in Rule 26(a)(2)(B)(ii). Id. at 2. Plaintiff argued that production was not required because the expert did not consider those prior surveys when reaching his conclusions, and could not have considered them since the expert deleted the earlier surveys from his computer. Id. at 2. Defendants, on the other hand, argued that under Rule 26 the expert must have considered the surveys, even based only on the similarity of all the surveys. Id at 3. Moreover, defendants argued that the term "considered," for purposes of Rule 26, has been defined by courts to mean "reviewed." Id. "As such, a review having occured, there is no question about whether the expert had 'considered' the earlier surveys." Id.

Special Master Lukoff noted that there was no reason to doubt that Plaintiff's expert deleted the prior surveys and could not remember them when drafting his expert reports. Id. However, when construing Rule 26 "using common sense," Special Master Lukoff determined that it would be "impossible to believe that an expert whose opinions are predicated upon the creation of a statistically-meaningful effort could have, in the statistical sense, completely ignored the data that had been previously collected by him." Id. at 4. Ultimately, Special Master Lukoff noted that it was a close call, but, since there was "sufficient ambiguity" as to whether the prior surveys played a role in the expert's final reports, the plaintiff was ordered to immediately produce those prior surveys (including questions and answers) to the defendants. Id. at 5-6.

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Posted On: September 23, 2013

Judge Andrews Grants Summary Judgment of Non-Infringement Including Under Doctrine of Equivalents

Judge Andrews has issued an opinion granting Sony’s motion for summary judgment of non-infringement that Sony’s CMOS semiconductor image sensors do not infringe L-3’s U.S. Patent No. 5,541,654. The ’654 patent includes the step of a “photovoltaic element which provides electric charge” and a step of “storing electric charge.” At the Markman hearing, Judge Andrews agreed with Sony that these two steps must be accomplished by “separate and distinct” elements. L-3 Commc’ns Corp. v. Sony Corp., et al., C.A. No. 10-734-RGA, Memo. Op. at 1-3 (D. Del. Sept. 19, 2013). At the summary judgment stage, Judge Andrews found that Sony’s accused product performed these steps at a single circuit element rather than separate and distinct elements. Thus, there was no literal infringement. Id. at 10. Judge Andrews then went on to explain that a finding of equivalence under the doctrine of equivalents would “‘overtake the statutory function of the claims in defining the scope of the patentee’s exclusive rights,’ as the claim requires two elements, not one. . . . [And a] single element is the antithesis of the requirement for two separate and distinct elements.” Id. at 11.

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Posted On: September 20, 2013

Judge Andrews grants stay pending inter partes reexamination.

Judge Richard G. Andrews recently issued an order granting a defendant’s motion to stay pending inter partes reexamination following the PTO’s rejection of all relevant independent claims and issuance of a Right of Appeal Notice. Riverbed Technology Inc. v. Silver Peak Systems Inc., C.A. No. 11-484-RGA (D. Del. Sept. 11, 2013). The plaintiff had indicated that it did not wish to proceed with litigation on the lone asserted patent that was not subject to the reexamination proceeding. As Judge Andrews explained, “[w]ithout going into great detail, simplification favors a stay.” The Court added that while the plaintiff would be prejudiced by a stay because the parties are competitors, the prejudice would not be undue.

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Posted On: September 19, 2013

Judge Andrews grants plaintiff’s Motion for Award of Damages and Attorney’s Fees in part

In a recent order, Judge Richard G. Andrews granted plaintiff’s Motion for Award of Damages and Attorney’s Fees (“the Motion”) in part and awarded plaintiff damages and costs totaling $58,105. Parallel Networks, LLC v. Outspark, Inc., C.A. No. 13-181-RGA (D. Del. Sept. 10, 2013). Judge Andrews did not award attorney’s fees. Id. Prior to the filing of plaintiff’s Motion, Judge Andrews had entered default judgment against defendant. (D.I. 17.)

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Posted On: September 19, 2013

Judge Robinson denies plaintiff’s motion for reargument

In a recent memorandum opinion, Judge Sue L. Robinson denied plaintiff’s motion for reargument pursuant to Local Rule 7.1.5 regarding claim construction and related summary judgment holdings for U.S. Patent No. RE 39,231 (“the ‘231 Patent”). MobileMedia Ideas, LLC v. Apple, Inc., C.A. No. 10-258-SLR-MPT (D. Del. Sept. 5, 2013). Specifically, plaintiff asserted that “given the rules of claim construction, [the court’s] constructions essentially read out the subject matter of asserted dependent claim 2,” and reargument was therefore warranted. Id. at 5. Denying plaintiff’s motion for reargument, Judge Robinson explained that plaintiff “seeks reargument solely on the basis that the court made an error not of reasoning but of apprehension; it asserts that such an error arose when the court construed claim 12 to exclude the subject matter of dependent claim 2.” Id. at 6. Judge Robinson noted that “the court considered the relationship between claims 12 and 2.” Id. Judge Robinson further explained that the “grounds asserted for reargument merely constitute [plaintiff’s] disagreement with the court’s conclusions and rehash [plaintiff’s] claim construction and summary judgment arguments.” Id. Plaintiff did not identify “any change in law, new evidence, or error in apprehension.” Judge Robinson thus denied plaintiff’s motion for reargument regarding the ‘231 Patent. Id.

Judge Robinson then noted that “the court recognizes that its intention may be subject to misinterpretation and, as such, will clarify its summary judgment memorandum opinion and order regarding the ‘231 patent.” Id. Regarding the construction of claim 2, Judge Robinson explained “the limitation ‘to change a volume of the generated alert sound’ [from independent claim 12] is not interchangeable with, or encompassing of, ‘to stop the sound[]’ [from dependent claim 2]. The specification of the ‘231 patent does not disclose a device with the option of either stopping an alert sound or changing its volume.” Id. at 7. Judge Robinson further noted that “[t]he fact that, on reexamination, the patentee did not follow normal drafting protocol to make the new independent claims inclusive of some of the dependent claims - as opposed to those dependent claims being narrower and in alternative form - is not a problem the court can remedy.” Id. at 8.

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Posted On: September 16, 2013

Judge Robinson Construes Terms of Fuel Tax Patent, Grants Summary Judgment of Noninfringement of Certain Claims

We previously reported on Judge Robinson’s decision to preclude an untimely invalidity theory in Vehicle IP v. Werner Enterprises. On the same day as that decision, Judge Robinson also issued rulings on claim construction and summary judgment, including a ruling that the defendant’s motion for summary judgment of invalidity was moot given the court’s preclusion decision. The patent-in-suit relates to methods and systems for automatically determining the fuel taxes owed to various states by a truck owner whose trucks travel on those states’ roads. Judge Robinson first construed the following terms of the patent-in-suit:
- “Automatically”
- “Determine a tax in response to the distance traveled by the vehicle within the region”
- “Determining the tax in each [of the two] taxing region[s] in response to the predetermined vehicle positions”
- “Dispatch”
- “Distance”
- “Position fix[es]”
- “Generating geographic information”
- “Generating a table” / “referencing a table”
Vehicle IP, LLC v. Werner Enterprises, Inc., C.A. No. 10-503-SLR, Memo. Op. at 13-34 (D. Del. Sept. 9, 2013).

Judge Robinson then considered cross motions for summary judgment of infringement and noninfringement of two asserted claims. Whether Judge Robinson could grant summary judgment for these claims turned on whether the accused system calculated taxes owed “without the need for any human intervention.” Because the “court’s construction differ[ed] from both parties’ proposed constructions and, given the complexity of the accused system, the court [could not] determine at the summary judgment stage” that this was the way the accused system operated. With respect to several other claims, however, Judge Robinson found that there was sufficient factual information to determine that the accused system did not “directly use predetermined vehicle position information.” She therefore granted summary judgment of noninfringement with respect to those claims. Id. at 40-44.

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Posted On: September 11, 2013

Judge Robinson’s Preclusion of Untimely Invalidity Theory – A Cautionary Tale for Completeness of Final Contentions

In Vehicle IP LLC v. Werner Enterprises Inc., 10-cv-503-SLR (D. Del. Sept. 9, 2013), Judge Robinson granted plaintiff’s motion in limine to preclude defendant’s evidence of invalidity regarding alleged use of the accused system before the priority date of the asserted patent. Despite disclosing the prior use of the accused system on an early list of potential prior art references and including some elements of the theory in final interrogatory responses, Judge Robinson found that defendant “consciously disavowed this theory by removing it from its March 25, 2013 final invalidity contentions,” which lead plaintiff to “complete[] fact discovery under the premise that [defendant] would not be asserting any theory of invalidity based on the [alleged prior-use of the accused system].” Defendant’s revival attempt through an expert report, “substantially devoted to the [prior-use] theory,” served less than two months after service of the final invalidity contentions, was unavailing.

Judge Robinson also alluded to her prior order limiting the number of prior art references or combinations that could be asserted per claim in the final invalidity contentions. Defendant challenged whether the prior-use system should be considered a “reference” for purposes of the limiting order and final contentions because the prior-use system is only applicable to the case if it’s later use as the accused system is deemed to infringe. This too was unavailing.

Practitioners should note that Judge Robinson’s orders limiting the number of invalidity references are intended to apply to all prior art evidence, including non-publication prior art such as prior-use evidence. This ruling should also serve as a cautionary reminder to practitioners to serve thorough and complete “final” contentions before the close of fact discovery or risk preclusion.

Vehicle IP LLC v. Werner Enterprises Inc., 10-cv-503-SLR (D. Del. Sept. 9, 2013)

Posted On: September 11, 2013

Judge Burke recommends denying Philips' motion to dismiss plaintiff's induced infringement claims

Judge Christopher J. Burke recently issued a report and recommendation on defendant Philips' motion to dismiss plaintiff Advanced Optical Tracking's ("AOT") induced infringement claims. Advanced Optical Tracking, LLC v. Koninklijke Philips N.V., et al, C.A. No. 12-1292-LPS-CJB (D. Del. Sept. 9, 2013). In deciding the motion, Judge Burke noted that in order to survive a motion to dismiss an induced infringement claim, "a patentee must plead facts 'plausibly showing that [the alleged infringer] specifically intended [a third party] to infringe the patents-in-suit and knew that the [third party's] acts constituted infringement.'" Id. at 4 (quoting In re Bill of Lading Transmission & Processing Sys. Patent Litig., 681 F.3d 1323, 1339 (Fed. Cir. 2012)) (alteration in original). Philips argued that AOT's allegations failed to adequately plead pre-filing knowledge of the patent-in-suit, knowledge of the alleged inducement, or facts to satisify the intent requirement for an induced infringement claim. Id. Judge Burke disagreed.

Contrary to Philips' contentions, AOT' s allegations of pre-suit knowledge are accompanied by basic factual content meant to bolster the claim. Here, the [Complaint] identifies September 19, 2012 notice letters that are asserted to have provided Defendants with knowledge of the inducement claims, and explains how that notification was allegedly sent to Defendants. Additionally, AOT's allegations indicate that these letters not only identified the patent-in-suit and the induced infringement claim, but that they also identified the accused products at issue, the alleged direct infringers (Defendants' suppliers, distributors, and resellers)/ how the alleged direct infringers were alleged to have infringed the patent (i.e., through the manufacture, use, sale and offer for sale of the accused products) and certain exemplary actions by which Defendants were asserted to have acted to induce infringement (i.e., by "entering into, performing, and requiring performance under manufacturing, supply, and distribution agreements" with those suppliers, distributors, and resellers).

Id. at 6.

Regarding intent, Judge Burke found that AOT's allegations, "while not robust," were sufficiently pled. Id. at 8. The Complaint contended that "Defendants, with knowledge that the accused products infringed the patent-in-suit, continued to require performance of contractual agreements entered into with their suppliers, distributors and resellers-agreements mandating that those entities manufacture, supply and distribute the accused products." Id. at 9. Philips argued that the Complaint did not set forth additional facts, such as the content of the agreements or the nature of the relationship between Defendants and the third parties. Id. Judge Burke found, however, that the AOT was not required to "rule out all possible non-infringing eventualities; it need simply assert enough facts to provide Defendants with fair notice of facially plausible claims." Id.

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Posted On: September 11, 2013

Eon Corp. IP Holdings, LLC v. Flo TV Inc., et al., C.A. No. 10-182 (RGA) (D. Del. Aug. 28, 2013) (D. Del. Sept. 5, 2013).

In two recently issued rulings and recommendations, Special Master B. Wilson Redfearn considered defendant motions to strike portions of the plaintiff’s expert reports. In the first ruling, the Special Master considered whether to strike portions of an expert report analyzing alleged infringement by defendants Sprint and Simplexity based on their marketing of Apple products—products which the Special Master previously had “specifically stated . . . were not a part of this case.” Eon Corp. IP Holdings, LLC v. Flo TV Inc., et al., C.A. No. 10-182 (RGA) (D. Del. Aug. 28, 2013). In his ruling, the Special Master explained “[f]or the third time: The [Apple] products identified in the Fourth Supplement of Accused Products are not a part of this case. Those products were untimely identified and, if they had been allowed, it would have compromised not only document production[] but fact discovery as well as the dates and deadlines set out in the agreed Amended Scheduling Order.” Id. at 4 (the Fourth Supplement of Accused Products had been served on February 22, 2013, only 6 days before the document production deadline under the Amended Scheduling Order). Although the plaintiff argued that its earlier disclosures had included references to the Apple products, the Special Master found that the earlier disclosures included “no more than passing references” to them, and did not provide the claim-by-claim contentions necessary to put Sprint and Simplexity on notice that they were accused of infringement based on Apple products. Id. at 4-5.

The Special Master opted not to strike the offending portions of the plaintiff’s expert report, though. Citing a Western District of Pennsylvania decision, and Rule 12(f), the Special Master explained that a court is only permitted to strike matters from the pleadings, and “[a]n expert report is not a pleading.” Id. at 6 (citing Wonderland Nurserygoods Co., Ltd. v. Thorley Indus., LLC, 2013 WL 2471801 (W.D. Pa. June 7, 2013)). Instead, the Special Master explained, Rule 37(b)(2)(A)(ii) allows a court to enter “an order prohibiting a party from introducing designated matters into evidence.” Id. at 6. The Special Master therefore ruled that, subject to the trial judge’s discretion, “any expert opinion or suggested testimony that assumes or attempts to prove that the Apple wireless devices infringe the ‘757 patent should not be allowed.” Id.

In the second ruling, the Special Master considered a motion filed by defendant Qualcomm to strike portions of the plaintiff’s expert report which stated that Qualcomm’s accused product satisfies the “Radio Wave Transmission and Reception Means” and “Monitoring Means” claims of the patent-at-issue, two claims which were not included in the plaintiff’s infringement contentions. Eon Corp. IP Holdings, LLC v. Flo TV Inc., et al., C.A. No. 10-182(RGA) (D. Del. Sept. 5, 2013). Again citing Wonderland Nursery Goods, the Special Master explained that “a motion to strike parts of a report is not the appropriate method to address this issue. I am therefore treating this as a motion to exclude the evidence at trial.” Id. at 1 n.1.

In this case, the plaintiff responded both in its answering brief and at a hearing before the Special Master that it was not asserting infringement of the “Radio Wave Transmission and Reception Means” claim. On that basis, the Special Master found that there was no need to take action to strike or exclude the portions of the opinion at this stage of the litigation, and instead explained that “the issue can be addressed to the trial judge through an appropriate objection” if and when it is raised at trial. Id. at 2-3. With respect to the “Monitoring Means” claim, the Special Master found that the plaintiff’s expert was entitled to set out his opinion on this claim in response to Qualcomm’s claim construction positions. Based on the relatively early stage of the litigation, the Special Master found that Qualcomm would not be prejudiced by being required now to provide rebuttal expert testimony on the issue. Id. at 3-4.

Continue reading " Eon Corp. IP Holdings, LLC v. Flo TV Inc., et al., C.A. No. 10-182 (RGA) (D. Del. Aug. 28, 2013) (D. Del. Sept. 5, 2013). " »

Posted On: September 10, 2013

Magistrate Judge Fallon recommends dismissing amended complaint for lack of subject matter jurisdiction

In a recent Report and Recommendation, Magistrate Judge Sherry R. Fallon found that plaintiff’s amended complaint, asserting U.S. Patent No. 6,587,441 (“the ‘441 Patent”), should be dismissed for lack of subject matter jurisdiction. Mayfair Wireless LLC v. Celico Partnership et al., 11-772-SLR-SRF (D. Del. Aug. 30, 2013). Defendants argued there existed “three breaks in the chain of title of the '441 patent” before its alleged assignment to plaintiff. Id. at 6. The named inventors of the ’441 Patent allegedly assigned the patent application to their employer, Gooitech, Inc. (“Gooitech”). Id. at 2. The Hinsdale Bank & Trust Company (“Hinsdale”) eventually “foreclosed on Gooitech’s assets, including the application for the ’441 patent,” and purchased those assets at a UCC sale in Illinois in 2000. Id. at 2-3. Hinsdale purportedly sold its rights in the ’441 patent application to Sierra Strategic Consulting (“Sierra”) pursuant to a bill of sale in 2001. Id. at 3. The bill of sale did not specifically mention the patent application, but referred more generally to “intellectual property rights that Hinsdale acquired from Gooitech.” Id. Sierra assigned its rights to 3P Networks Inc., which “allegedly transferred rights, title and interest in the ‘441 patent application” to Technology Alternatives, Inc. (“Technology Alternatives”). Id. Technology Alternatives, the patentee, eventually became a subsidiary of TechAlt, Inc. (“TechAlt”). Id. at 4. Service by Design, Ltd. (“SBD”) entered into a security agreement with TechAlt, and SBD purchased TechAlt’s assets (including the purported interest in ’441 application) after TechAlt defaulted on its obligations. Id. at 4. After subsequent assignments, the current plaintiff was allegedly assigned the rights to the ’441 Patent. Id. at 4-5.

Magistrate Judge Fallon first addressed whether “any alleged breaks in the chain of title occurring prior to the issuance of the '441 patent are irrelevant.” Id. at 6 (emphasis added). Magistrate Judge Fallon concluded that “[d]efendants have overcome the presumption” that the patentee, Technology Alternatives, “properly held legal title at the time the patent issued.” Id. at 8. Judge Fallon explained that “four of the six Named Inventors did not have written assignments on file with the PTO indicating their intention to transfer their ownership interests, in contravention of 35 U.S.C. § 261 and 37 C.F.R. § 3.81(a).” Id. Moreover, “[t]he request for issuance of the patent to Technology Alternatives is likewise missing from the PTO's records.” Id. In light of these findings, Judge Fallon went on to “asses each alleged break in the chain of title, including those occurring prior to the issuance of the '441 patent.” Id. at 9.

With respect to the bill of sale between Gooitech and Hinsdale, Magistrate Judge Fallon found that “[t]he evidence . . . insufficient to support Mayfair's contention that Hinsdale properly foreclosed on its interest in Gooitech's property pursuant to the terms of its security agreement.” Id. at 12. Magistrate Judge Fallon noted that the “unsigned notice of public sale issued by Hinsdale on August 9, 2000 fails to list the collateral to be sold.” Id. Moreover, the “subsequent March 31, 2001 bill of sale between Hinsdale and Sierra . . . does not specify that the '441 patent application was among those intellectual property rights [noted in the agreement].” Id. at 12-13. Magistrate Judge Fallon thus declined “to assume the rights to the application for the '441 patent were included in the foreclosure sale,” and thus found a break in the chain of title. Id. at 13-14.

Next, Magistrate Judge Fallon considered the whether there was a break in the chain of title “between 3P Networks and Technology Alternatives because no written assignment regarding the transfer is on file with the PTO.” Id. at 14. Magistrate Judge Fallon found, however, that “the notice of assignment between 3P Networks and Technology Alternatives sufficiently sets forth an intent to transfer ownership rights in the '441 patent to qualify as an assignment for purposes of 35 U.S.C. § 261.” Id. at 15.

Magistrate Judge Fallon also considered, inter alia, whether the “absence of an assignment from Technology Alternatives to TechAlt” created a break in the chain of title. Id. at 17. While the parties agreed there was no formal assignment, Magistrate Judge Fallon still had to address whether “Technology Alternatives consented to TechAlt's pledge of the '441 patent to SBD as collateral in the November 19, 2004 security agreement, whether such consent is valid, and whether an indirect transfer of the '441 patent to SBD would cure any defect.” Id. at 18. Magistrate Judge Fallon explained that “[e]ven if the court were to assume that state law permits Technology Alternatives to consent to TechAlt's inclusion of the '441 patent as security, the Illinois UCC provisions are preempted by § 261 of the Patent Act because Technology Alternatives and TechAlt never executed a written assignment.” Id. at 19. Accordingly, Magistrate Judge Fallon could not “overlook the absence of a written assignment between Technology Alternatives and TechAlt,” and found another break in the chain of title. Id. at 20.

In light of the two breaks in the chain of title, Magistrate Judge Fallon recommended that the court grant defendants’ motion to dismiss for lack of subject matter jurisdiction. Id. at 24.

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Posted On: September 10, 2013

Judge Robinson grants-in-part defendant’s motion for judgment as a matter of law following verdict in plaintiff’s favor

In MobileMedia Ideas, LLC v. Apple, Inc., C.A. No. 10-258-SLR-MPT (D. Del. Sept. 5, 2013), Judge Sue L. Robinson granted defendant’s renewed motion for judgment as a matter of law with respect to invalidity and non-infringement of one patent-in-suit and with respect to invalidity of one claim of another patent-in-suit, and denied the motion in all other respects.

Following a seven-day jury trial in 2012, the jury found direct infringement and validity of the three patents-in-suit. Id. at 1. Defendant renewed its motion for judgment as a matter of law that the asserted claims of the three patents-in-suit were invalid and not infringed. Id. The three patents-in-suit (the ’075, ‘068, and ‘078 patents) “relate to a variety of technologies in information processing, computing, and mobile phones.” Id. at 3.

As to the ‘075 patent, entitled “Method and Apparatus for Incoming Call Rejection,” the Court found that its asserted claims were invalid. There was no dispute that two prior art references disclosed the limitations of the asserted claims, but the parties disputed whether there was sufficient motivation to combine them. Id. at 18. The Court concluded that the plaintiff’s expert had “only offered conclusory testimony” to rebut defendant’s evidence and testimony that a person of ordinary skill would have found it obvious to combine these references. Id. at 19. “In addition, [plaintiff’s] infringement theory conflicts with [its invalidity expert’s] opinion.” See id. at 20-21. Therefore, the Court concluded that “even if the jury had resolved all disputed facts in [plaintiff’s] favor, the evidence could not support a finding” of validity. Id. at 22. As to infringement, the Court also granted defendant’s motion because plaintiff had not presented sufficient evidence to support its infringement theory. See id. at 22-27.

As to the ‘068 patent, entitled “Communication Terminal Device and Method for Controlling a Connecting State of a Call into a Desired Connection State upon a Predetermined Operation by a User,” the Court found one asserted claim valid (Claim 23) and the other asserted claim invalid (Claim 24). Defendant’s anticipation arguments as to Claim 23 were grounded in “an untimely claim construction argument,” and the plaintiff’s expert testimony had provided sufficient support for the jury’s finding of validity. Id. at 35. But for Claim 24, unlike for Claim 23, the parties had identified a relevant “pre-trial dispute in their joint claim construction chart . . . [therefore] the court has a duty to resolve [the dispute].” Id. at 36. The Court went on to clarify the construction of a relevant term, id. at 37, and concluded that the jury’s verdict of validity of Claim 24 was “inconsistent” with the Court’s construction of the term. Id. at 38. As to infringement of the ‘068 patent, the Court denied defendant’s motion. See id. at 38-45. The Court also denied the motion as to infringement and validity of the ‘078 patent, entitled “Device for Personal Communication, Data Collection and Data Processing, and a Circuit Card.” See id. at 47-56.

Finally, the Court denied defendant’s motion for a new trial in the alternative. See id. at 56-62. Defendant argued, inter alia, that plaintiff’s statements at closing arguments that companies from whom it obtained patents “decide to invest in patents to recover research and development costs” were directed to damages and therefore improper as damages had been bifurcated. Id. at 57. The Court concluded that the statements were not directed to damages, but Instead were “used to explain what [plaintiff] does as a non-practicing entity”, and were therefore not improper. Id. at 57-58.

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Posted On: September 6, 2013

Judge Stark grants motions to stay pending inter partes review

In Softview LLC v. Apple Inc., et al., C.A. Nos. 12-989-LPS & 10-389-LPS (Cons.) (D. Del. Sept. 4, 2013), Judge Leonard P. Stark has ordered a stay, pending inter partes review, until March 31, 2014. While the Court had previously denied defendants’ motion to stay in July 2012, it concluded that circumstances had changed such that a stay was now warranted.

As to prejudice to the plaintiff, while the Court “continue[d] to have . . . concerns” regarding prejudice and the potential tactical advantage for defendants, “subsequent case developments make them less of a problem. In particular, fact discovery is now complete, at least somewhat mitigating the risk of evidentiary staleness. Also, given that [plaintiff] is a non-practicing entity and not seeking injunctive relief, the limited delay . . . should not severely prejudice [plaintiff].” Id. at 2-3.

A stay pending inter partes review would also likely simplify issues for trial. Whereas at the time of the previous request for a stay only some of the asserted claims stood rejected, now the PTAB had granted inter partes review with respect to all asserted claims. Id. at 3.

Finally, while the early stage of the case and the “lengthy process of reexamination” had been factors in the Court’s 2012 denial of a stay, the case had since moved forward “substantially” (the Court, for example, issued a claim construction opinion on the same day as this Order) and “the inter partes review promises to be a more expeditious process than reexamaination and appears to be relatively close to completion.” Id. at 3. Absent a stay, the parties were scheduled to complete expert discovery and file case-dispositive motions by the end of March 2014, but the PTAB was required to issue a final determination by that time unless there was an extension for good cause. Id. at 4. “[U]nder the circumstances, [the Court believed that] it is appropriate to allow the inter partes review a reasonable period to conclude before launching the parties into the expense of expert discovery.” Id.

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Posted On: September 6, 2013

Judge Stark Construes Terms of Web Browsing Patents

Judge Leonard Stark has issued a claim construction opinion in the ongoing Softview litigation, a pre-AIA case involving several defendants that are among the biggest tech companies. Softview’s patents relate to a system and method for rendering, zooming, and panning in a web browser. Judge Stark resolved disputes about the following terms:
- “scalable content”
- “scalable / scaling / scaled”
- “translating”
- “processing [the] HTML-based Web content to produce scalable content”
- “format”
- “vector-based content / scalable vector-based content”
- “vector”
- “object datum”
- “primary datum”
- “layout location datum”
- “enabling the user to zoom and pan a view of the Web page”
- “fit across”
- “tapping”
- “preserve(s) / preserved / preserving / preservation”
- “machine-readable medium”
- “storage means”
- “processing means”
- “wireless communication[s] means”

Softview LLC v. Apple Inc., et al., C.A. No. 10-389-LPS, Memo. Op. at 5-25 (D. Del. Sep. 4, 2013).

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Posted On: September 6, 2013

Judge Stark construes terms of patents relating to automatic insertion of hypertext links in text articles

Judge Leonard P. Stark recently construed the non-means-plus-function claim terms of U.S Patent Nos. 6,092,074 and 6,581,065; and resolved the parties' scheduling dispute regarding briefing of of the means-plus-function claim terms. General Electric Co. v. Kontera Technologies, et al., C.A. No. 12-525-LPS, C.A. No. 12-526-LPS (D. Del. Sept. 3, 2013). Judge Stark construed the terms:

"Class Codes"
"Major Class Codes"
"Preferred Major Class Codes"
"Hit Count Data"
"Intermittent Maintenance Mode"
"Wherein the character strings have no associated hypertext link(s)"

Judge Stark found that the following terms did not require construction:

"Primary Computer"
"Central Computer"
"Associated with a/said Primary Computer"
"Associated with a/said Central Computer"
"Associated with At Least One of Said Destination Addresses" (also determining that the term was not indefinite)
"Which Are Associated With Said Plurality of Linkable Character Strings/Matching Linkable Character String Has a Plurality of Class Codes Associated Therewith" (also determining that the term was not indefinite)
"Determining A Matching Linkable Character String For Said First Character String, If Present, In Said Annotation Database"
"Querying Said Destination Database To Obtain The Plurality Of Destination Addresses Corresponding To The Associated[] Class Codes"
"Providing ... Anchor Code(s) Which Relate(s) Said Matching Linkable Character String To Said ... Corresponding Destination Addresses To Provide A ... Hypertext Link(s) For Said First Character String"
"Said Destination Database Comprises A Plurality Of Destination Addresses Corresponding To Said Plurality Of Class Codes Of The Matching Linkable Character String"
"Writing A Plurality Of Character Strings Into A Primary Computer File"
"Qualifying The Matching Linkable Character String ... (Class Codes)"

Judge Stark also ordered supplemental briefing to address the proposed constructions of the disputed means-plus-function claim terms and scheduled a second Markman hearing to address those claim terms.

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Posted On: September 6, 2013

Judge Burke recommends denial of defendant’s renewed motion to transfer

In Pragmatus AV, LLC v. Yahoo! Inc., C.A. No. 11-902-LPS-CJB (D. Del. Aug. 28, 2013), Magistrate Judge Christopher J. Burke recommended denial of defendant’s renewed motion to transfer to the Northern District of California. Judge Burke had previously recommended denial of defendant’s motion to transfer (see here), and Judge Stark had accepted the recommendation (see here). Defendant argued that plaintiff’s recent filing of a separate lawsuit against defendant in the Northern District of California (the “California Action”) altered the Jumara factors such that transfer was merited. The California Action involved different patents within the same family as the patents-in-suit in this case and involved the same accused product. Id. at 16.

The Court first addressed the relevance of In re EMC Corp., 501 F. App’x 973 (Fed. Cir. 2013), where the Federal Circuit held that “motions to transfer venue are to be decided based on the situation which existed when suit was instituted,” but also noted that “a district court may properly consider any judicial economy benefits which would have been apparent at the time the suit was filed.” Id. at 8 (internal citations and quotation marks omitted). While it observed that “the full scope of In re EMC Corp’s impact and meaning as to this question” was unclear, see id. at 9-10, “[u]ltimately, the Court need not further examine the full scope of the rule . . . [because] even if the Court could properly take all of the proffered facts related to the California Action into account for purposes of the Renewed Motion to Transfer, the Court determines that they do not add support to that motion, nor would they alter the outcome of the First Motion to Transfer.” Id. at 10-11.

The Court went on to reject all of defendant’s arguments that the California Action “undercut” the original reasons for keeping the case in Delaware. As to plaintiff’s forum preference, plaintiffs had provided a “plausible” explanation for suing in different districts that was not a bad-faith attempt to forum-shop. See id. at 11-15. The convenience of the parties factor was also unaffected. Id. at 16. Regarding practical considerations, while transfer could minimize duplication, it was also the case that the patents in the California Action were different, “and so efficiencies gained from transferring this case to the Northern District . . . might not be as extensive as Defendant argues.” Id. at 17. The Court added that transferring the case to California “would almost certainly have the effect of delaying the ‘expeditious’ progress of the case regarding the five patents-in-suit here (which is nearing the close of discovery), in order to account for the fact that the California Action is at its inception.” Id. at 18. “In conclusion, because the filing of the California Action does not, in the Court's view, alter the calculus as to any of the cited Jumara factors in favor of transfer, the Court recommends denial of [defendant's] Renewed Motion to Transfer.” Id.

Defendant had moved to enjoin the California Action in the alternative, under the first-filed rule. The Court also recommended denial of this motion, finding that “while there is an overlap in the identity of parties and there may be an overlap of certain legal issues among the two lawsuits, the cases are sufficiently different such that the first-filed rule does not apply,” particularly because there was no overlap of patents between the two actions. Id. at 20.

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Posted On: September 5, 2013

Magistrate Judge Thynge construes claim terms relating to pulse oximetry.

Magistrate Judge Mary Pat Thynge recently issued a report recommending constructions for 27 claim terms across eight patents relating to pulse oximetry, which "allows for non-invasive measurement of the oxygen levels in a medical patient's hemoglobin." Masimo Corp. v. Philips Electronics North America Corp., C.A. Nos. 09-080-LPS-MPT, 11-742-LPS-MPT (D. Del. Aug. 29, 2013). The following claim terms were construed:

“scan of a plurality of possible values for said physiological parameter”;

“said scan”;

“analysis to determine which of the plurality of possible oxygen saturation values corresponds to the oxygen saturation of the pulsing blood”;

“calculating a plurality of ratios of values of the transformed first signal to corresponding values of the transformed second signal”;

“potential of said physiological parameter”;

“said physiological parameter”;

“determination of confidence in the accuracy of physiological signals”;

“signal confidence determination”;

“confidence measurement”;

“determination of signal confidence”;

“based upon at least two alternative methods of processing the sensed physiological signals from at least one of the first and second wavelengths”;

“based upon at least two alternative methods of processing the physiological signals”;

“based upon at least two different methods of processing the intensity signals”;

“based upon at least two alternative methods of processing the sensed physiological signals from at least one of the first and second wavelengths and the signals corresponding to ambient light”;

“adjustably smooth the plurality of resulting values indicative of the at least one physiological characteristic”;

“adjustably smooth the plurality of values”;

“adjustably smoothing the plurality of values”;

“speed up the adjustable smoothing”;

“the smoothing filter is sped up”;

“slow down the adjustable smoothing”;

“first inactive time period”;

“second inactive time period”;

“second time where it is responsive to said ambient light”;

“inactive portions of a drive cycle where none of said plurality of light sources are active”;

“docking station . . . configured to mate with the portable physiological measurement device”;

“patient monitoring system”; and

“concentration”.

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Posted On: September 3, 2013

Judge Andrews considers objections to Special Master decisions

In a recent memorandum order, Judge Richard G. Andrews considered “various objections that have been made to decisions of the Special Master Collins J. Seitz, Jr., Esq.” Inventio AG v. Thyssenkrupp Elevator Americas Corporation, et al., C.A. No. 08-874-RGA (D. Del. Aug. 15, 2013). First, Judge Andrews considered plaintiff’s objections and motion to modify the Special Master’s ruling with respect to Defendants’ Challenges to Plaintiff’s Designations of Privilege or Work Product in its Third Amended Privilege Log, and granted that motion in part. See id. at 1-3. Judge Andrews adopted the Special Master’s decision with regard to what country’s privilege law applied and denied defendants’ argument that “under the ‘touch base’ test, Swiss law applies because Plaintiff is a Swiss company.” Id. at 2. As Judge Andrews noted, “[i]f Defendants were correct, the ‘touch base’ test would be pretty meaningless, since once citizenship was determined, that would be the end of the analysis.” Id. Judge Andrews then assessed whether various communications were protected by the attorney-client privilege. See id. 2-3. For example, Judge Andrews found that a “communication between two non-lawyers on which a lawyer [was] copied,” and for which there was no indication that it was “sent for the purpose of obtaining or providing legal advice,” was non-privileged. Id. at 2. Similarly, a communication between an employee of the SEC and a business person of plaintiff was found non-privileged. Id. On the other hand, Judge Andrews found privileged, inter alia, bills from plaintiff’s attorneys for legal services rendered. Id. at 3. Judge Andrews found it sufficient that “[t]he bills identif[ied] specific attorneys billing for legal work, the patents involved, the date of the work, and the general nature of the work.” Id.

Judge Andrews next considered defendants’ objections to and motion to modify the Special Master’s Report and Recommendation on Defendants’ Motion to Reclassify as Non-confidential Information Designated by Plaintiff as Highly Confidential and/or Limited Modification of the Protective Order. See id. at 4-5. Defendants’ motion was granted in part. Specifically, Judge Andrews addressed whether “four categories of deposition excerpts [were] properly marked as ‘highly confidential’” and whether the “Special Master’s discussion concerning modifying the protective order [should] be reviewed.” Id. at 4. First, Judge Andrews found that some excerpts contained publicly available technical information, as those excerpts were, for example, similar to descriptions presented during the Markman hearing or appeared in a publication. See id. As such, Judge Andrews determined that such excerpts should not be marked “highly confidential.” See id. On the other hand, Judge Andrews found that an expert’s analysis of whether certain elements are in the prior art and other non-public technical information were appropriately marked as “highly confidential.” See id. Second, Judge Andrews determined that “[t]he Special Master concluded after a thorough analysis that the protective order should not be modified,” and that the “present objections are without merit.” Id. at 5. Judge Andrews further noted that “[t]here is no reason” to vacate the Special Master’s discussion regarding what the “PTO will consider during reexamination,” as the “Special Master’s Report does not purport to tell any party what information to submit or to withhold from the PTO.” Id.

Judge Andrews additionally considered plaintiff’s objections to the Special Master’s rulings on plaintiff’s and defendants’ motions to compel. See id. at 6-7. First, plaintiff objected to be “being denied discovery on ‘new jobs.’” Id. at 6. Judge Andrews explained that “[e]ven assuming that it is not Plaintiff’s fault that it did not get the discovery before and that it is acting in good faith, the lack of actual prejudice to the Plaintiff and the inherent prejudice to the system of never-ending litigation means that on balance I do not think that discovery should be extended.” Id. at 7. Second, plaintiff “object[ed] to being ordered to produce the Transfer Pricing Analysis, stating that it should only have to produce the portion relating to the United States.” Id. at 6. Judge Andrews found, however, that the Transfer Pricing Analysis was relevant and ordered its production. Id. at 7.

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Posted On: September 3, 2013

Judge Stark Construes Terms of Semiconductor Patents

Fairchild Semiconductor Corp. v. Power Integrations, Inc. is a patent infringement case involving semiconductors, power supplies, and LED circuits. The plaintiff, Fairchild, asserted three patents, and the defendant, Power Integrations, counterclaimed alleging infringement of five additional patents. Following a Markman hearing in July, Judge Stark has now issued a claim construction order in the case. Judge Stark construed the following terms:

- “a second feedback signal associated with a current control loop”
- “generates the first feedback signal by sampling a voltage from the auxiliary winding of the transformer and a discharge time of the transformer”
- “generating the first feedback signal by sampling a voltage from the auxiliary winding of the transformer and a discharge time of the transformer”
- “means for regulating the power supply system”
- “the control circuit and the feedback circuit are operable to regulate”
- “the feedback circuit operable to support regulation by the control circuit”
- “generating a LED current for controlling the LED”
- “a sense terminal of the control circuit, coupled to the LED for detecting a LED voltage, wherein the LED voltage is coupled for adjusting the LED current”
- “a soft start circuit means”
- “An oscillator that provides a maximum duty cycle signal comprising an on-state and an off-state”
- “a control circuit coupled to an input of a power converter”
- “when the electrical energy source is uncoupled from the input of the power converter”
- “a capacitance coupled between input terminals of the input of the power converter”
- “render dormant the drive signal generator”
- “power up the drive signal generator”
- “current input circuit”
- “current limit”
- “current limit adjustment signal”
- “dynamically adjust a current limit”

Fairchild Semiconductor Corp., et al. v. Power Integrations, Inc., C.A. No. 12-540-LPS, Memo. Op. at 1-25 (D. Del. Aug. 28, 2013).

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Posted On: September 3, 2013

Judge Sleet grants motion to transfer venue to Eastern District of Michigan

In a recent memorandum opinion, Chief Judge Gregory M. Sleet granted defendant’s motion to transfer venue to the Eastern District of Michigan. Joao Control & Monitoring Systems, LLC v. Ford Motor Company, C.A. No. 12-1479-GMS (D. Del. Aug. 21, 2013). Plaintiff is a limited liability company organized under the laws of the State of Delaware and lists its principal place of business as the residence of the inventor of the patents-in-suit in New York. Id. at 1. Defendant is a Delaware corporation with its principal place of business in Michigan. Id. at 1-2.

First, Judge Sleet determined that this action could have been brought in the Eastern District of Michigan, as defendant maintains “its principal place of business in Dearborn, Michigan, which is located in the proposed transferee forum.” Judge Sleet also noted that plaintiff “is currently litigating a suit against [defendant] in the Eastern District of Michigan.” Id. at 4.

Turning to the Jumara private interest factors, Judge Sleet found that “because [plaintiff] chose to litigate in the forum where it was formed, rather than the forum where its principal place of business is located, its choice is entitled to less deference than it would typically receive in this analysis.” Id. at 6. Defendant’s forum preference, on the other hand, was “legitimate and rational” and therefore weighed in favor of transfer. Id. at 7. Addressing whether “the claims arose elsewhere, Judge Sleet noted that “[t]o some extent, [infringement] claims ar[i]se where the allegedly infringing products [a]re designed and manufactured.” Id. at 7. Accordingly, Judge Sleet found that factor to weigh “on the transfer side of the balance” because the infringement claims arose “from infringing products that were designed and manufactured in a single, discrete location.” Id. at 8. Judge Sleet next found that the “convenience of the parties” weighed slightly in favor of transfer, because while it appeared that “each [party] [had] sufficient financial resources to litigate in either forum,” defendant’s “decision to incorporate in Delaware suggests that the inconvenience of litigation here is somewhat less than the court would ordinarily presume it to be in this case.” Id. at 9-10. Judge Sleet found “the convenience of the witnesses” to be neutral since defendant was able to specifically identify only one third-party witness outside of the District of Delaware’s subpoena power. Id. at 12. Additionally, Judge Sleet explained that “because [defendant’s] principal place of business and much, if not all, of its materials relevant to the accused technology are located in the Eastern District of Michigan,” the “location of books and records” weighed slightly in favor of transfer. Id. at 13.

Judge Sleet next addressed the Jumara public interest factors. Accounting for “practical considerations that make the trial easy, expeditious, or inexpensive,” Judge Sleet found transfer favored by the fact that “neither party has facilities, offices, or employees in Delaware.” Id. at 15. Judge Sleet further noted that “both parties are currently litigating in the Eastern District of Michigan,” and the instant litigation “involves patents related to the patents-in-suit in the Eastern District of Michigan.” Id. at Judge Sleet additionally found that neither district “has a local interest in this action that would weigh in favor of transfer.” Id. at 17.

Judge Sleet concluded that in “[c]onsidering the Jumara factors as a whole, . . . [defendant] has met its burden of demonstrating that the interests of justice and convenience strongly favor transfer.” Id. at 18.

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