Posted On: October 31, 2013

Judge Robinson orders parties' experts to appear in Court in order to resolve plaintiff's motion to strike defendant's non-infringement expert report

Judge Sue L. Robinson recently considered plaintiff's request to strike portions of defendant's non-infringement expert report because it was based on modifed source code not made available to plaintiff. Juniper Networks, Inc. v. Palo Alto Networks, Inc., C.A. No. 11-1258 (D. Del. Oct. 28, 2013). Defendant did not dispute plaintiff's argument, but argued that its actions were justified because "plaintiff did not allude to source code at all until its expert's initial infringement expert report, and, further, that plaintiff's expert did not disclose any details about his test environment, nor did he ask for the ability to edit the code while preparing his report. Id. at 1.

Judge Robinson noted that the court could not "discern how much of this controversy [was] attorney-generated, and how much of this controversy truly reflect[ed] prejudicial conduct by either party." Id. at 2. Therefore, Judge Robinson ordered that, "absent a consensual resolution to this dispute," the parties' experts would be expected to testify on November 15, at the hearing previously scheduled for claim construction and summary judgment, regarding "the information the parties would need in order to vet the testing and, coincidentally, the information the court needs to resolve the dispute." Id. The Court would then decide the dispute, with the losing party to pay the costs of the proceeding. Id.

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Posted On: October 31, 2013

Jury finds Netgear's patent valid, but not infringed by Ruckus Wireless

After trial regarding infringement of Netgear, Inc.'s U.S. Patent Nos. 6,621,454 and 7,263,143, the jury returned a verdict finding the patents valid and finding that Netgear had not proved that Ruckus Wireless, Inc. infringed the patents. Netgear, Inc. v. Ruckus Wireless, Inc., C.A. No. 10-999-SLR (D. Del. Oct. 31, 2013). The Court's pretrial decisions and claim construction can be found here, here, and here.

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Posted On: October 30, 2013

Magistrate Judge Thynge recommends denying defendant’s motion to stay pending inter partes review

In a recent report and recommendation, Magistrate Judge Mary P. Thynge recommended that the court deny defendant’s motion to stay the litigation pending inter partes review (“IPR”). TruePosition, Inc. v. Polaris Wireless, Inc., C.A. No. 12-646-RGA/MPT (D. Del. Oct. 21, 2013). Judge Thynge noted that “[t]he court considers three factors when deciding whether to stay a case.” Id. at 3. First, Judge Thynge found the status of the litigation weighed against granting stay. Judge Thynge noted that “[s]ubstantial time and resources have been devoted in this case to scheduling and discovery disputes.” Id. at 8 (quoting Softview LLC v. Apple Inc., C.A. No. 10-389-LPS, 2012 WL 3061027, at *4 (D. Del. July 26, 2012)). Specifically, Judge Thynge explained that “[a]lthough a trial date has not been set . . . the claim construction process has been completed with the exchange of all briefs and the recent Markman hearing.” Id. Further, “[f]act discovery is scheduled to close on December 1, 2013, significant document production has already occurred, a number of discovery disputes resolved, and dispositive motions are due May 10, 2014.” Id. Second, Judge Thynge considered whether a stay would simplify the issues in question and trial, and found that this factor disfavored stay. Id. at 9-10. Judge Thynge explained that “claim 98 and specific challenges to the remaining claims subject to the IPR petition fall outside of the scope of IPR.” Id. at 10. Judge Thynge also found this factor disfavored stay in light of the fact that the IPR petition was not yet granted and when any result from the IPR would occur was uncertain. Id. at 10.

Third, Judge Thynge considered whether stay would unduly prejudice or present a clear tactical disadvantage to plaintiff, analyzing “the relationship between the parties,” “the status of the IPR request,” and the “timing of the IPR request and motion to stay.” Id. at 3, 10-14. Judge Thynge found the relationship between the parties slightly favored granting stay, citing, among other things, plaintiff’s failure to seek an injunction. Id. at 11-12. On the other hand, Judge Thynge found that because the IPR request was “still pending before the PTO with a potential delay until December 4, 2013 for grant or denial, this motion is premature.” Id. at 13. Judge Thynge further noted that defendant waited “until the end of the statutory deadline to file its IPR, close to the eve of claim construction briefing, and after substantial document discovery was conducted,” which also weighed slightly against granting stay. Id. at 14. Judge Thynge found that the factors, on balance, weighed against granting stay and denied defendant’s motion. Id.

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Posted On: October 30, 2013

Special Master Lukoff permits further expert discovery of defendants' inequitable conduct claims

Special Master Lukoff recently resolved another dispute between the paries regarding their inequitable conduct experts' reports. Robocast, Inc. v. Apple, Inc., et al., C.A. Nos. 11-235-RGA, C.A. No. 10-1055-RGA (D. Del. Oct. 24, 2013). Special Master Lukoff had previously permitted defendants to serve a supplemental expert report in response to plaintiff's expert's rebuttal report. Here, plaintiff requested that it be permitted to issue a supplemental rebuttal report to respond to "new opinions" in defendant's supplemental report. Id. at 2. Plaintiff also requested that it be permitted to an additional deposition of defendant's expert. Id. Defendants opposed plaintiff's request because plaintiff's expert could have addressed the issues in question before his last report. Id.

Special Master Lukoff noted that the Court's Scheduling Order only permits service of initial and rebuttal expert reports, absent the parties' agreement or leave of Court. Id. Because Special Master Lukoff gave leave for defendants to supplement their expert report, the court was inclined to now do the same for plaintiff, albeit reluctantly. Id. at 3. While Special Master Lukoff recognized the need for the finality that underpins the provisions of the Scheduling Order, he noted that he was "equally sensitive to a full opportunity on the merits to develop the litigants' forensic positions on the inequitable conduct issue." Id. at 4. Defendants identified no prejudice resulting from the additional expert report, therefore, plaintiff was permitted to serve a supplemental rebuttal report and both plaintiff and defendants were permitted additional three-hour depositions of eachother's experts. Id. at 4-5.

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Posted On: October 29, 2013

Judge Andrews Denies Motion to Strike, Orders Parties to Meet and Confer

Judge Richard Andrews recently denied a defendant’s motion to strike portions of two expert reports that were served after the deadline for opening expert reports. Judge Andrews recognized that the two reports at issue “were due with the opening round of reports [but] are the sorts of reports that are often not due until the second round of reports.” Warner Chilcott Co., LLC v. Zydus Pharmas. (USA) Inc., et al., C.A. No. 11-1105-RGA, Order at 1 (D. Del. Oct. 24, 2013). Thus, the plaintiff’s service of the reports in question with the second round of reports was excusable because “Plaintiff made a mistake. There is no evidence of bad faith. When the matter was brought to Plaintiff’s attention (which Defendant did not seem to be in any hurry to do . . .) Plaintiff, while not acknowledging error . . . appeared to respond appropriately to Defendant’s complaint in seeking to understand what was necessary to alleviate any prejudice to Defendant.” Id. By contrast, Judge Andrews found Defendants’ actions did not support the motion to strike: “Defendant appears, however, to have understood that it had gained a tactical advantage, and, instead of working with Plaintiff to come up with a workable plan, decided to press home its advantage with the instant motion. In my opinion, that approach was a mistake.” Id. Accordingly, Judge Andrews denied the motion to strike and refused to continue the trial because “[t]he Third Circuit prefers trials on the merits, and it should still be possible to have one.” Id. at 1-2.

Judge Andrews further noted that “Defendant seems to have a back-up plan,” referring to Defendant’s request to file expert reports on secondary conditions as an alternative to the motion to strike. Id. at 2. Judge Andrews therefore ordered the parties to “meet and confer as soon as possible and come up with a plan that will keep this case on track for the scheduled trial,” and further ordered that Delaware counsel should “actively participate in the meet and confer(s).” Id.

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Posted On: October 24, 2013

Judge Robinson orders plaintiffs to supplement their contentions regarding damages related to defendants' at-risk launch of a generic product

Judge Sue L. Robinson recently issued a Memorandum Order in a multi-district litigation ordering plaintiffs to supplement responses to defendants' damages contention interrogatory. In re: Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litigation, C.A. No. 09-MD-2118-SLR (D. Del. Oct. 22, 2013). This litigation involved unique circumstances in that plaintiffs were "pursuing an infringement action in an ANDA case after judgment of infringement and validity ha[d] been entered, seeking damages relating to defendants' at-risk launch[.]" Id. at 3 n.3. Defendants served an interrogatory requesting plaintiffs' contentions regarding plaintiffs' claim of damages related to defendants' at-risk launch of a generic product. Id. at 1-2. Plaintiffs initially objected to providing any response stating that damages discovery was in its early stages, that damages was the subject of expert discovery, and that plaintiffs need to view defendants' sales data before responding. Id. at 2. Two months before the close of fact discovery, Plaintiffs supplemented their response by identifying "hundreds of pages of documents from which defendants could 'derive the information requested by' the interrogatory." Id.

Judge Robinson found Plaintiffs' supplementation insufficient:

I recognize that the identification of documents in lieu of a substantive response to an interrogatory is generally appropriate. I disagree that it is an appropriate response to a contention interrogatory, however, unless such documents specifically identify the contention in the first instance (unlikely) or provide specific data supporting the contention that has already been described. In this case, given that plaintiffs have yet to articulate their contentions with any particularity, I find it hard to believe that these documents are particularly helpful.

Id. Furthermore, Judge Robinson held that although the calculation of damages is the proper subject of an expert opinion, the facts on which an expert relies are properly the subject of fact discovery. Id. at 2-3. Therefore, "parties are required to disclose such facts before the facts are massaged and manipulated by their expert witnesses." Id. at 3.

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Posted On: October 22, 2013

Judge Andrews claim construction opinion

In a memorandum opinion issued today, Judge Richard G. Andrews construed disputed terms across six patents: U.S. Patent Nos. 6,126,448; 6,213,780; 6,685,478; 6,398,556; 6,688,888; and RE 38,432. IpLearn, LLC v. Kenexa Corporation, et al., C.A. No. 11-825-RGA; IpLearn, LLC v. Blackboard, Inc., C.A. No. 11-876-RGA; IpLearn, LLC v. K12, Inc., C.A. No. 11-1026-RGA (D. Del. Oct. 22, 2013). Judge Andrews construed the following terms:

“computer-aided/computer implemented,” id. at 3;

“generating materials for learning the subject,” id. at 4-5;

“a report,” id. at 5;

“learning user,” id. at 6-8;

“institute user,” id. at 8-9;

“attribute,” id. at 9;

“materials regarding at least one learning user,” id. at 9-10;

“monitoring,” id. at 10;

“a need,” id. at 10-11;

“update information on the job position due to changes in information on the job position to identify a candidate for the job position/information on the job is updated in view of changes in the job based on an input, and wherein another learning user can be identified in view of changes in the job,” id. at 11-12;

“becoming aware of a learning user's understanding in an area,” id. at 12;

“wherein the materials accessed can be retrieved,” id. at 12-13;

“considers at least a preference of the learner, other than the fact that the learner might
prefer to learn the subject,” id. at 13-14.

Furthermore, Judge Andrews interpreted that the following terms to have their plain and ordinary meanings: “rules,” “providing guidance to the learner to target the at least one weakness” (based on the Court’s construction of another term), and “wherein the materials accessed can be retrieved.” Id. at 3-4, 6, 12-13.

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Posted On: October 22, 2013

Judge Andrews construes key disputed claims relating to automatic email control.

Judge Richard G. Andrews recently construed claims across 3 asserted patents relating to a system and method for granting deposit-contingent email rights. Buyerleverage Email Solutions, LLC v. SBC Internet Servs, Inc., et al., C.A. No. 11-645-RGA (D. Del. Oct. 22, 2013). Although 14 claims remained disputed, the following claims "appear[ed] . . . most important," and were therefore construed:

• “something of value”

• “benefit arising from the something of value”

• “something of value that has been put at risk of forfeiture”

• “(something of value) associated with the email”

• “(sending …) depending at least in part on whether or not (the system has received …)”


With respect to the disputed terms the Court did not construe, it requested “that the parties meet and confer to see whether and to what extent the remaining disputed terms can be agreed upon.”

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Posted On: October 22, 2013

Judge Robinson denies motions for attorneys’ fees without prejudice, pending appeal.

Judge Sue L. Robinson recently denied without prejudice motions filed by several defendants for an award of attorneys’ fees pursuant to § 285 in a string of cases that were dismissed for lack of standing. Walker Digital, LLC v. Expedia, Inc., et al., Civ. No. 11-313-SLR (D. Del. Oct. 16, 2013); Walker Digital v. Amazon.com, Inc., Civ. No. 12-140-SLR (D. Del. Oct. 16, 2013); Walker Digital v. Barnes & Noble, Inc., Civ. No. 12-141-SLR (D. Del. Oct. 16, 2013); Walker Digital, LLC v. Expedia, Inc., Civ. No. 12-142-SLR (D. Del. Oct. 16, 2013). The cases had been dismissed for lack of standing after the plaintiff, as part of a settlement agreement, assigned the patents-at-issue to one of the original defendants. The plaintiff appealed that dismissal to the Federal Circuit, and the defendants subsequently moved for fees. Id. at 2. The Court explained that under Rule 54(d)(2)(8), “if an appeal on the merits of a case is pending, a court ‘may rule on the claim for fees, may defer its ruling on the motion, or may deny the motion without prejudice, directing under subdivision (d)(2)(8) a new period for filing after the appeal has been resolved.’” Id. at 3 (quoting Fed. R. Civ. P. 54, Advisory Committee Note, 1993 Amendment, Paragraph (2), Subparagraph (B)).

Although the parties made competing arguments addressing whether prevailing on a lack of standing argument represented prevailing on the merits of the litigation, and the defendants provided arguments purporting to justify a finding that the case was exceptional (including that the plaintiff continued litigating the cases after assigning the patents away and allegedly altered the language in the public notice of the assignment in an effort to hide it), the Court in this case opted to exercise its discretion under Rule 54 and denied the motions for attorneys’ fees without prejudice, explaining that “[i]f the Federal Circuit affirms, defendants may request a briefing schedule for their attorney fee motions.” Id. at 4.

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Posted On: October 22, 2013

Judge Stark Issues Post-Trial Decision in HIV Drug Case

After holding a bench trial in January and considering post-trial briefing, Judge Stark recently issued findings of fact and conclusions of law in an ANDA patent infringement action between Bristol-Myers Squibb and Mylan Pharmaceuticals related to the drug efavirenz, which is a reverse transcriptase inhibitor used to treat HIV infection. Judge Stark concluded that Mylan’s ANDA product infringed the asserted claims of the patent-in-suit and that Mylan had not proven that the patent was invalid. Bristol-Myers Squibb Co., et al. v. Mylan Pharmas. Inc., et al., C.A. No. 09-651-LPS, Memo. Op. at 1 (D. Del. Sep. 30, 2013). Judge Stark rejected not only anticipation arguments, but also indefiniteness, enablement, and written description arguments. Id. at 20-36.

The decision involved an interest matter of claim construction clarification: Mylan argued that the phrase “selected from the group consisting of” limited an x-ray powder diffraction claim to the “eleven 28 values specifically recited in the claim, and nothing more. According to Mylan, if a crystal sample has an x-ray powder diffraction pattern with more than the eleven claimed 28 values, that sample is outside the scope of [the asserted] claim.” BMS contended in response that the word “comprising” rendered the claim open-ended and that “the transitional phrase ‘consisting of,’ used in the Markush group, closes only the group of alternative 28 values, not the entire claim.” Judge Stark agreed with BMS and explained that “[t]o the extent the Court’s holding involves a clarification of its prior claim construction, such clarification is permissible.” Id. at 17 (citing Guttman, Inc. v. Kopykake Enters., 302 F.3d 1352, 1361 (Fed. Cir. 2002) (“District courts may engage in a rolling claim construction, in which the court revisits and alters its interpretation of the claim terms as its understanding of the technology evolves.”).

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Posted On: October 21, 2013

Judge Andrews grants plaintiff’s motion for partial summary judgment on patent's validity

In a recent memorandum order, Judge Richard G. Andrews granted plaintiff’s motion for partial summary judgment that U.S. Patent No. 5,541,654 (“the ‘654 Patent”) is not invalid in view of U.S. Patent No. 5,534,838 (“the ‘838 Patent”). L-3 Communications Corp. v. Sony Corp. et al., C.A. No. 10-734-RGA (D. Del. Oct. 16, 2013). The ‘654 Patent was filed on June 17, 1993, and the ‘838 Patent was filed on August 31, 1993. Id. at 1. As Judge Andrews explained, in order to prove that the ‘838 Patent “is prior art under 102(g), Defendants must show that the invention was actually reduced to practice prior to June 17, 1993, or that there was a diligent pursuit of a constructive reduction to practice between June 16, 1993 and August 31, 1993, the filing date of the [‘838 Patent]." Id.

Judge Andrews first found that defendants failed to demonstrate actual reduction to practice before June 17, 1993. Id. at 1-2. Defendants contended that actual reduction to practice was demonstrated via computer simulation. Id. Judge Andrews held, however, that “a computer simulation is not sufficient in order to show an actual reduction to practice. In order to establish an actual reduction to practice, there must be a physical embodiment.” Id. at 2. Judge Andrews also found that defendants failed to show a diligent pursuit of a constructive reduction to practice. Id. at 3. Defendants relied on the inventor’s deposition testimony which indicated that it took “at a minimum, two to four months to draft an application.” Id. Judge Andrews found that “[a]s a matter of law, this is not sufficient to establish two and a half months of diligence.” Id.

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Posted On: October 21, 2013

Judge Andrews claim construction opinion

Judge Richard G. Andrews recently issued an opinion construing disputed terms of U.S. Patent No. 6,128,617, entitled “Data display software with actions and link integrated with information.” Select Retrieval LLC v. Amerimark Direct LLC, et al., C.A. No. 11-812-RGA (D. Del. Oct. 17, 2013). Judge Andrews construed:

“integrated active information documents," id. at 3-4;

“plural successive integrated active information documents,” id. at 4;

“action control elements,” id. at 5-6;

“action control element selection,” id. at 6;

“plural nodes at plural levels,” id. at 7-9.

Judge Andrews concluded that the term “rendering” should be given its plain and ordinary meaning, thus no construction was necessary. Id. at 7. Finally, Judge Andrews did not construe the disputed terms “a database record having plural fields,” “database,” and “database query,” explaining that “[t]he construction of these terms, if needed, will be decided at a later date.” Id.

UPDATE:

On March 14, 2014 Judge Andrews issued a continuation of the Court's October 17 Markman opinion and ordered the parties to submit a proposed order "suitable for submission to the jury." Select Retrieval LLC v. Amerimark Direct LLC, et al., C.A. No. 11-812-RGA (D. Del. Mar. 14, 2014). The Court construed:

"database"
"database query"

The Court did not construed the phrase "a database record having plural fields," proposed by defendants because the Court found that the phrase found in the preamble did not limit the claim. Id. at 4.

The Court also did not construe "whereby the information in subsequent ones of the successive integrated active information documents corresponds to control element selections made from preceding ones of the integrated active information documents." Judge Andrews rejected defendants' argument that construction was necessary because the patentee disavowed claim scope during prosecution. Id. at 7.

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Posted On: October 18, 2013

Judge Robinson precludes defendant from pursuing an anticipation defense for which its expert provided no opinion

Judge Robinson recently considered plaintiff Netgear's motion for summary judgment as to whether certain prior art references could qualify as prior art. Netgear, Inc. v. Ruckus Wireless, Inc., C.A. No. 10-999-SLR (Oct. 16, 2013). Defendant conceded that its expert had no opinion as to whether the references anticipated the patent in suit, but opposed Netgear's motion with five facts it claimed were disputed. Id. Judge Robinson was not persuaded, however, noting that "as far as the court can discern, defendant has offered no evidence on the issue of anticipation, only attorney argument." Id. at 1-2. In light of that, Judge Robinson declined to offer "what is essentially an advisory opinion" as to whether the disputed references were prior art. Id. at 2. Judge Robinson cautioned that "[t]he court has neither the time nor the resources to fill in the gaps of defendant's case, and declines to allow defendant to pursue its anticipation defense on the record it made (or, more accuately, failed to make) during expert discovery. Id.

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Posted On: October 17, 2013

Special Master Redfearn Rules on Motions to Exclude Infringement and Invalidity Theories in Expert Reports

Special Master Redfearn recently considered cross motions to exclude the competing expert reports of the parties in Eon Corp. IP Holdings, LLC v. Flo TV, Inc., et al. The moving defendants, several mobile carriers and mobile technology companies, sought to exclude portions of an infringement expert report that discussed (1) doctrine of equivalents theories that had not previously been asserted in infringement contentions and (2) various third party applications that had not been previously disclosed as accused products.

The Special Master noted that the doctrine of equivalents argument would be moot if the Court did not adopt defendants’ claim construction position, but that allowing the theory “to remain in [the] report does not mean that the Court will adopt the Plaintiff’s claim construction.” Eon Corp. IP Holdings, LLC v. Flo TV, Inc., et al., C.A. No. 10-812-RGA, Rulings and Recommendations at 6 (D. Del. Oct. 3, 2013). The Special Master further found that the plaintiff was not accusing the third party applications of infringement but could potentially make an appropriate reference to the software at trial, so the admissibility of the third party application references should be left to the discretion of Judge Andrews at trial. Id.

The plaintiff moved to exclude certain combinations of prior art as untimely disclosed in an invalidity expert report, arguing that it could not take discovery on those combinations at this stage of the case. The defendants pointed out, however, that the plaintiff had not previously sought discovery on any prior art combinations. Further, the Special Master found that the invalidity expert report did not include any evidence not previously disclosed and did not include any new or abandoned references. Finally, the plaintiff’s expert was able to analyze and address the combinations at issue. Id. at 7-8.

Thus, the Special Master denied both motions to exclude. Addressing the Third Circuit’s Pennypack factors, the Special Master concluded that neither party suffered any prejudice and neither side had acted in bad faith. Therefore, because “it is important that these issues be fully presented and all valid legal theories considered,” the “extreme sanction” of exclusion was not warranted. Id. at 8-9.

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Posted On: October 15, 2013

Judge Hillman grants motion to drop former patent owners as parties following assignment.

Judge Noel L. Hillman of the United States District Court for the District of New Jersey, sitting by designation, recently granted a motion to drop two parties from the litigation pursuant to Rule 21. Evonik Degussa GmbH v. Materia Inc., et al., C.A. Nos. 09-636 (NLH/JS), 10-200 (NLH/JS) (D. Del. Sept. 30, 2013). The two parties previously were owners of the asserted patent, but during the course of the litigation assigned their rights, title, and interest in the patent to Materia Inc. They subsequently moved pursuant to Rule 21 to be dropped as parties, and the plaintiff opposed the motion.

Although the case did not present misjoinder or nonjoinder in the traditional sense, the Court explained that federal courts “agree that [Rule 21] may apply even in the absence of misjoinder or nonjoinder.” Id. at 4 (quoting Joseph v. Baxter Int’l Inc., 614 F. Supp. 2d 868, 874 (N.D. Oh. 2009) (quoting 4A Matthew Bender, Moore’s Federal Practice § 21.05 (2d ed.))). The Court added that “[a]t least one federal court has held that a party’s assignment of its interest in the patent-in-suit to another party nullifies its status as an indispensable party, and the assigning party is therefore dismissable from suit pursuant to Rule 21.” Id. at 5 (citing Biovail Labs., Inc. v. TorPharm, Inc., 2002 WL 31687610, at *2 (N.D. Ill. Nov. 26, 2002)). Here, the Court found that the two moving defendants, UNOF and UNORTF, had completely assigned their rights and responsibilities in the asserted patent to another party already in the litigation—Materia Inc. “[I]t is clear that UNOF and UNORTF no longer have a stake in the underlying infringement suit between Evonik and Materia. . . . As such, UNOF and UNORTF no longer maintain a sufficient interest in this case to justify their continuing presence. Therefore, since they are no longer indispensable or necessary parties to this dispute, their dismissal from suit is appropriate under these circumstances.” Id. at 6-7.

The Court rejected the plaintiff's argument that it would be prejudiced in two ways if the parties were dropped. First, the Court disagreed that dropping the parties would result in the plaintiff being unable to obtain certain information during discovery. The Court noted that discovery had been ongoing for more than a year, and in any event the plaintiff would still be able to discover material from the dropped parties by way of subpoenas or, more likely, through Materia, whose assignment agreement indicated that Materia would be responsible for and comply with discovery requests relating to the dropped parties. Id. at 8. Second, the Court rejected the argument that dropping the two parties would prejudice the plaintiff's ability to recover attorneys' fees, explaining that the argument was entirely speculative at this point since the plaintif had not yet prevailed in the litigation. Id. at 10. Moreover, the assignment agreement indicated that Materia would be responsible for any attorneys' fees award related to the dropped parties' conduct in the litigation. Id. at 11. Although the plaintiff appears to have argued that this assurance was illusory because Materia might enter Chapter 11 bankruptcy, the Court explained that it could not "keep UNOF and UNORTF tethered as parties solely for the purpose of affording their adversary leeway in deciding how to obtain a speculative award for attorneys' fees . . . ." Id. at 12. "Absent some indication of fraud or bad faith, a party's filing for bankruptcy cannot serve as a legitimate reason to avoid the legal consequences of an otherwise properly executed assignment agreement. The Court also reminded the plaintiff that Materia had not yet entered bankruptcy, and there was no evidence in the record that it definitely would do so.

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Posted On: October 14, 2013

Judge Andrews denies plaintiff’s motion for entry of judgment

In a recent memorandum opinion, Judge Richard G. Andrews denied plaintiff’s motion for entry of judgment, in which it requested that the Court “exercise its discretion to enter final judgment consistent with the summary ruling by either: (1) Proceeding to final judgment of non-infringement and dismissing any outstanding counterclaims without prejudice; or (2) Proceeding to final judgment of non-infringement pursuant to Rule 54(b) and staying the counterclaims pending resolution of the appeal.” L-3 Communications Corporation v. Sony Corporation et al., C.A. No. 10-734-RGA (D. Del. Oct. 4, 2013).

As Judge Andrews noted, “[t]he decision of whether to dismiss a counterclaim of invalidity where the Court has found no infringement is soundly within the Court’s discretion.” Id. at 1. Judge Andrews further noted that “[a]lternatively, under Federal Rule of Civil Procedure 54(b), the Court may determine that there is no ‘just reason for delay’ and direct the entry of final judgment of non-infringement while staying the remaining invalidity counterclaims.” Id. Denying plaintiff’s motion, Judge Andrews explained that “[h]ere, trial is scheduled to start less than a month away. Most of the preparation has already occurred. To delay would be a waste of the resources that have already been expended.” Id. at 2. Judge Andrews additionally denied plaintiff’s argument that Court “no longer has jurisdiction because there is no longer a case or controversy because the patent in suit has expired.” Id. As Judge Andrews explained, “[h]ere, the infringement dispute between [plaintiff] and [defendant] is not over, as the claim construction will likely be appealed. The fact that the patent has subsequently expired has no bearing on the infringement allegations." Id.

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Posted On: October 11, 2013

Jury returns verdict of no infringement in Vehicle IP, LLC v. Werner Enterprises, Inc., C.A. No. 10-503-SLR

In Vehicle IP, LLC v. Werner Enterprises, Inc., C.A. No. 10-503-SLR (D. Del. Oct. 1, 2013), the jury returned a verdict finding that plaintiff had not proved that defendant's system infringed the asserted claims of the patent in suit and that defendant had not proved that the same claims were invalid due to lack of enablement. Prior to trial, Judge Robinson precluded defendant from arguing at trial an untimely raised invalidity theory, and an untimely raised non-infringement theory. Prior to trial, Judge Robinson also granted summary judgment of non-infringement as to certain claims.

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Posted On: October 10, 2013

Judge Robinson addresses position on early summary judgment motions, does not bifurcate damages and willfulness

In a recent Order, Judge Sue L. Robinson “confirm[ed]” her position on early summary judgment:

“The court will not entertain motions for summary judgment before the close of discovery unless: (a) the parties stipulate to the underlying facts of a dispute [either by agreement or presumption] (turning the exercise into resolving a question of law); or (b) the issue in dispute is dispositive, meaning that the court’s decision (regardless of its outcome) becomes the law of the case.”

In re: Automated Transaction LLC Patent Litigation, MDL Civ. No. 13-2429-SLR, at 1 (D. Del. Oct. 8, 2013). As to (b), the Court explained that it had “neither the time nor the resources to engage in multiple summary judgment exercises per case.” Id.

Additionally, plaintiff had requested that damages and willfulness not be bifurcated, as is Judge Robinson’s standard practice. The Court granted this request, “given the MDL status of this litigation.” Id. at 1.

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Posted On: October 9, 2013

Judge Robinson grants motion to strike paragraph of plaintiff’s answer to counterclaims

In a recent Memorandum Order, Judge Sue L. Robinson granted defendant’s motion to strike a paragraph of plaintiff’s answer to defendant’s counterclaims. Netgear, Inc. v. Ruckus Wireless, Inc., C.A. No. 10-999-SLR (D. Del. Oct. 2, 2013). The paragraph contained “a litany of ‘admissions’ which go far beyond defendant’s description of” the technology at issue contained in its counterclaim allegations. Id. at 3-4. Furthermore, “[p]laintiff's answer includes material that was the subject of motions for summary judgment and claim construction,” including assertions that were grounded in disputed constructions of a claim term. Id. at 4-5. The Court explained that “[p]laintiff cannot legitimately argue that the material contained in [the paragraph] is not improper and goes far beyond the scope of defendant's allegation. Plaintiff’s ‘admissions’ contain issues of material fact over which the parties’ experts disagree. To allow plaintiff's answer to stand as written would cause prejudice to defendant by misrepresenting the record.” Id. at 5. As a result, the Court granted the motion to strike this paragraph of plaintiff’s answer.

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Posted On: October 9, 2013

Judge Hillman Construes Terms of Olefin Methathesis Catalyst Patents

Judge Hillman, sitting by designation from the District of New Jersey, has issued a Markman opinion in the patent dispute between Evonik Degussa GmbH and Materia Inc. The case involves two patents assigned to plaintiff Evonik, which are asserted against Materia, and a third patent assigned to third party plaintiff the University of New Orleans Foundation, which is asserted against Evonik. All three patents claim catalysts that facilitate olefin methathesis reactions. Evonik Degussa GmbH v. Materia Inc., et al., C.A. No. 09-636, at 1-9 (D. Del. Sept. 30, 2013). The Court construed the following terms of the patents-in-suit:
- “N-heterocyclic Carbene”
- “And”
- “Aryl”
The Court also adopted the parties’ agreed-upon construction of the term “Neutral Electron Donor.” Id. at 9-59.

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Posted On: October 8, 2013

Federal Circuit Sitting and Judicial Roundtable Discussion This Thursday

On Thursday, October 10, 2013, the Federal Circuit will hear oral arguments in the Ruby R. Vale Moot Courtroom at Widener Law School in Wilmington. The Court will hear arguments in four cases from 2:00 p.m. to 4:00 p.m. You can find more information here and here.

Following the oral arguments, the Intellectual Property Section of the Delaware Chapter of the Federal Bar Association will host a Roundtable Discussion featuring the Visiting Judges of the Court of Appeals for the Federal Circuit; and Chief Judge Gregory M. Sleet and Judge Sue L. Robinson of the U.S. District Court for the District of Delaware. A reception will immediately follow. More details below.

FBA Federal Circuit Reception

Posted On: October 7, 2013

Judge Andrews denies customer's motion to stay case pending resolution of supplier's declaratory judgment action

Judge Andrews recently considered General Motor's motion to stay pending resolution of its supplier's declaratory judgment action filed against plaintiff, Pragmatus. Pragmatus Telecom LLC v. General Motors LLC, C.A. No. 12-1545-RGA (D. Del. Oct. 3, 2013). Judge Andrews noted that in many circumstances motions to stay customer cases can be resolved easily. In those cases:

[t]he supplier makes a product, transfers it to the customer, and the customer sells it to third parties. The resolution of the supplier case will almost certainly resolve the customer case. If the supplier wins, the patent holder is collaterally estopped against the customer. If the supplier loses, the patent holder cannot get any additional damages against the customer.

Id. at 1.

The case at hand, however, did not present such an easy question. Even though the customer agreed to be bound by the Court's infringement decision in the supplier action, "'with respect to infringement or non-infringement' of the patents 'based on [the customer's] use of the supplier's technology'", such an agreement would not "have as much value as a representation that the customer will be bound by the validity/invalidity decision." Id. at 2 (alteration in original). At least under the facts of this case, and with the absence of such an agreement to be bound, Judge Andrews determined that the equities did not support the granting of a stay. Id.

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Posted On: October 7, 2013

Judge Robinson grants-in-part defendant’s motions for summary judgment, denies Daubert motion, and construes claim terms

In Netgear, Inc. v. Ruckus Wireless, Inc., C.A. No. 10-999-SLR (D. Del. Sept. 30, 2013), Judge Sue L. Robinson recently considered a number of motions and cross-motions for summary judgment, a Daubert motion, and construed several claim terms. The five patents-in-suit in this case are “directed to wireless communications systems, which use radio waves to communicate.” Id. at 2.

The Court denied plaintiff’s motions for summary judgment for infringement and validity, and granted-in-part defendant’s motion for summary judgment of invalidity (as to four of the patents-in-suit) and non-infringement (as to three of the patents-in-suit). In the course of construing disputed claim terms, the Court found a number of claim limitations, across four patents-in-suit, indefinite. The Court therefore granted summary for invalidity as to the asserted claims of these four patents. Because “the court [could not] complete a meaningful infringement analysis” and because the claims were invalid, the Court additionally granted summary judgment for non-infringement of three of these patents. See, e.g., id. at 24 n.2.

The Court also considered other invalidity arguments with regard to U.S. Patent Nos. 6,621,454 (the ‘454 Patent), 7,263,143 (the ‘143 Patent), and 5,507,035 (the ‘035 Patent). As to the ‘454 Patent, the Court denied competing motions for summary judgment as to enablement because the plaintiff had offered “some” evidence of support for the limitation in the claim at issue, and therefore genuine issues of material fact remained. Id. at 34-35. The Court also denied plaintiff’s motion for summary judgment of no invalidity due to obviousness and/or anticipation because genuine issues of material fact remained. Id. at 36. As to the ‘143 Patent, defendant argued the asserted claims did not meet the requirements of 35 U.S.C. § 101, but the Court concluded that the defendants had not identified clear and convincing evidence of invalidity under this section. Id. at 40. The Court also denied competing summary judgment motions on invalidity of the ‘143 Patent for lack of written description. Id. at 40-42. Finally, as to the ‘035 Patent, the Court concluded that it did not recite patent eligible subject matter under § 101: “[t]he '035 patent is an abstract idea, a strategy which consists of making random selections over multiple attempts, determining whether the attempt is successful and, if not, trying again. That the strategy is limited to the field of antenna diversity does not transform the abstract subject matter into patent eligible subject matter. . . . Moreover, the reference in the patent to a controller and means to accomplish certain functions does not supply an inventive concept that represents a nontrivial, nonconventional human contribution or materially narrows the claims relative to the abstract idea they embrace. . . . The recited means are also not indispensable to the claimed strategy.” Id. at 48-49 (internal citations and quotation marks omitted).

Defendant had moved to exclude the testimony of plaintiff’s expert regarding the source code related to the patents-in-suit, arguing that “he did not review the entirety of the source code, rather, he reviewed selections of source code provided to him by counsel” and because the expert did not test any accused infringing products. Id. at 49-50. The Court denied this motion because the expert “was not required to test the accused products. Defendant has not shown that [the expert's] testimony is based on unreliable sources, indeed, it is based on defendant's source code and the testimony of defendant's witnesses. Defendant's concerns go to the weight of the testimony and may properly be addressed on cross-examination.” Id. at 50.

Finally, the Court construed a number of disputed terms across the five patents-in-suit. As noted above, the Court concluded that several disputed terms were indefinite. Having found that other terms were not indefinite, the Court construed those terms:

“[O]ptimal conditions,” id. at 18-20;

“[M]eans, responsive to said conditions, for selecting at least one of said beams having one of said orthogonal polarizations for data transmissions from said first transmitter,” id. at 22-23;

“[M]eans to analyze the topology broadcast messages and enter in said topology table the network addresses of the wireless node transmitting the topology broadcast message and network addresses of other nodes contained in the topology broadcast messages; and,” id. at 25-26;

“[M]ultibeam antenna,” id. at 32-33;

“[S]canner,” id. at 33 (defendant argued this was means-plus-function limitation and moved for summary judgment for invalidity for indefiniteness; the Court concluded that this was was not a means-plus-function limitation and denied summary judgemnt. Id. at 33 n.10);

“[P]eriodicity,” id. at 33 & 38;

“[A] data transmission antenna pattern with a null in the direction of said interference,” id. at 33-34;

“[G]ain control circuit,” id. at 37;

“[R]eceiver gain,” id.

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Posted On: October 3, 2013

Judge Robinson precludes defendant from raising untimely non-infringement arguments at trial

In a recent order, Judge Sue L. Robinson found that defendant’s “non-infringement arguments relating to the limitations in claim 1 . . . , having been proposed for the first time in [defendant’s expert’s] June 14, 2013 Rebuttal Report and [the expert's] September 16, 2013 Supplemental Report . . . , may not be raised at trial.” Vehicle IP, LLC v. Werner Enterprises, Inc., C.A. No. 10-503-SLR (D. Del. Sept. 20, 2013). As Judge Robinson explained, “the non-infringement arguments in dispute were introduced for the first time through [defendant’s] expert without any of the underlying factual bases being vetted through fact discovery.” Id. at 1. For instance, Judge Robinson found certain arguments were waived because they were not “raised in response to plaintiff’s infringement contentions,” and were raised for the first time in the defendant’s expert’s Rebuttal Report. Id. at 2. Judge Robinson also found other non-infringement arguments waived because they were not raised during claim construction, or were inconsistent with the Court’s claim construction and were raised for the first time in the expert’s Supplemental Report. Id.

In a footnote, Judge Robinson explained that “[w]hile expert discovery is part of the discovery process, it is the part where the experts opine on the facts vetted during fact discovery; the facts vetted during fact discovery are those identified as relevant to the parties’ respective contentions. By not timely identifying its non-infringement contentions, defendant has turned the process on its head, to the detriment of both the court and the plaintiff.” Id. at 1 n.1

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Posted On: October 3, 2013

Judge Stark enters judgment in favor of defendant on infringement claims in light of prosecution history estoppel

In a recent memorandum opinion, Judge Leonard P. Stark found that plaintiff did not overcome its presumption of prosecution history estoppel and therefore entered judgment in favor of defendant on plaintiff’s claims of infringement under the doctrine of equivalents for claims 1, 3, and 6 of U.S. Patent No. 5,865,866 (“the ‘866 Patent”), and claim 2 of U.S. Patent No. 5,873,862 (“the ‘862 Patent”). ICU Medical, Inc. v. Rymed Technologies, Inc., C.A. No. 07-468-LPS (D. Del. Sept. 30, 2013). This opinion comes after a May 2012 bench trial, where Judge Stark considered “the viability of the jury’s verdict of infringement under the doctrine of equivalents, in light of prosecution history estoppel.” Id. at 1.The parties were in agreement that “the presumption of prosecution history estoppel applies, and further agree[d] that [plaintiff had] an opportunity to attempt to rebut that presumption by showing that the rationale for the amendment bore no more than a tangential relation to the equivalent in question.” Id. at 7.

First, Judge Stark found that plaintiff failed to carry its burden in establishing that the amendments 1, 3, and 6 of the ‘866 Patent “bore no more than a tangential relation to the equivalent in question.” Id. at 7, 20. Judge Stark noted, among other things, that “[t]he prosecution history is silent as to why [plaintiff] followed the Examiner’s recommendation and added the configuration limitations and not just the O-ring elements limitation that [plaintiff] believed was necessary to overcome the prior art rejection. Simply following the Examiner's unexplained suggestion, without any explanation from [plaintiff], does not, on this prosecution history, suffice to satisfy the tangentiality exception.” Id. at 14. Judge Stark also noted “the Court is unable to conclude, on the record before it, that the PTO necessarily would have allowed an amended claim 1” without the limitations that plaintiff claimed were tangential to patentability (i.e., configuration limitations). Id. at 16.

Judge Stark similarly found that plaintiff failed to carry its burden in overcoming the presumption of prosecution history estoppel with respect to claim 2 of the ‘862 Patent. Id. at 20. Judge Stark noted that with respect to claim 2, plaintiff had a “stronger argument that there is an objectively discemable reason for the amendment, an amendment which added the O-ring elements but no additional limitations relating to their configuration.” Id. at 19-20. However, “the Court [was] uncertain whether “the ‘equivalent in question’ [was] the O-ring elements.” Id. at 20. As Judge Stark explained, the finding of infringement of equivalence may have been predicated on a finding of the presence of O-ring elements only by equivalence, yet the existence of O-ring elements was not tangential to the claim amendment.” Id.

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Posted On: October 3, 2013

Chief Judge Sleet grants motion to transfer to Southern District of Ohio

Chief Judge Gregory M. Sleet recently granted a Delaware corporation’s motion to transfer to the Southern District of Ohio. Verint Systems Inc., et al. v. CallCopy, Inc., C.A. No. 13-562-GMS (D. Del. Sept. 23, 2013). The plaintiffs in the case were Delaware corporations with principal places of business in New York and Georgia. The defendant was a Delaware corporation with its principal place of business in Columbus, Ohio. Weighing the Jumara factors, Chief Judge Sleet concluded that only one factor weighed against transfer—the plaintiffs’ choice of forum—and that factor was not given maximum weight because the plaintiffs’ principal places of business were not located in Delaware. Id. at 4. On the other hand, three factors were found to slightly favor transfer: where the claim arose, the location of books and records, and “practical considerations.”

Although the “where the claim arose” factor typically is neutral when the defendant operates on a national level, here the defendant argued that it “never had a Delaware customer, and that the Accused Products have not been sold in Delaware, are marketed solely in and from Columbus, Ohio, and were developed in Columbus, Ohio.” Id. at 4. The plaintiffs argued that the defendant “solicits sales in Delaware via its website …, and maintains sales positions that service the greater Philadelphia area, Baltimore, and New York City,” but the Court found that the “where the claim arose” factor weighed slightly in favor of transfer to Ohio. Id. at 4-5. The Court also found that the location of books and records in Ohio slightly favored transfer. Id. at 6.

Although the Court found the “convenience of the parties” factor neutral, the considerations involved in weighing that factor resulted in the Court finding that “practical considerations” favored transfer. Specifically, the Court found that while the plaintiffs would have to travel to either forum, the defendant’s traveling costs would be “substantially reduce[d]” if the litigation were transferred to Ohio. This consideration was given more weight because the plaintiffs were far larger than the defendant (“$796 million corporation with 3,200 employees” versus “$20 million corporation with 134 employees”). Those considerations did not result in a finding that the “convenience of the parties” factor weighed in favor of transfer because the defendant had chosen to incorporate in Delaware and, "therefore, [could not] argue that it is an inconvenient forum," but Chief Judge Sleet found that those considerations warranted transferring the litigation to Ohio based on practical considerations. Id. at 5, 7.

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Posted On: October 1, 2013

Judge Stark Grants Leave to Amend Adding Claims of Inequitable Conduct, Unclean Hands, and Breach of Contract

In a recent decision, Judge Stark granted a patent infringement defendant’s motion to amend its answer to add claims of inequitable conduct, unclean hands, and breach of contract. Defendant Amneal filed the motion to amend on the last day of fact discovery, well after the scheduling order deadline to amend pleadings. Accordingly, Amneal had to show good cause to modify the case schedule under Rule 16(b)(4). Galderma Labs. Inc., et al. v. Amneal Pharma., LLC, et al., C.A. No. 11-1106-LPS, Memo. Order at 1-2 (D. Del. Sept. 30, 2013). Judge Stark found that Amneal had shown good cause because Amneal did not learn of the facts underlying its new claims until approximately one month before filing its motion. At that time, Amneal learned at its deposition of prosecution counsel that counsel had only disclosed a portion of the data of which counsel was aware to the PTO and that litigation counsel had improperly participated in patent prosecution. Accordingly, the proposed amendment was timely. Id. at 2. Judge Stark further explained that the amendment would not be futile because the amended pleading raised questions for the Court to consider, and the amendment would not cause undue prejudice because it was filed nearly a year before trial was to begin, leaving sufficient time for the limited discovery required. Id. at 2-3.

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Posted On: October 1, 2013

Judge Sleet grants motion to stay discovery from defendant customers

Judge Gregory M. Sleet recently granted-in-part defendants' motion to stay litigation against defendant Bruker-AXS, Inc.'s customers pending the plaintiff's suit against the manufacturer of the accused products, Bruker-AKS, Inc. Vertical Analytics LLC v. Bruker-AXS, Inc., et al, C.A. No. 12-1187-GMS (D. Del. Sept. 27, 2013). Judge Sleet denied defendants' request to stay the entire litigation, but did stay discovery against the defendant customers until plaintiff could demonstrate that it needed such discovery because the information obtained from defendant Bruker-AXS, Inc., was insufficient. Id. at 1-2.

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