Posted On: November 29, 2013

Judge Robinson decides various summary judgment motions, motions to exclude experts and provides guidance as to the Court's preferences for citations to the record

Judge Sue L. Robinson recently considered various motions for summary judgment, motions to strike and exclude testimony, and issued claim constructions of the terms of the patents-in-suit (Patent Nos. 6,874,049, 6,708,259, and 6,647,450). Cradle IP, LLC v. Texas Instruments, Inc., C.A. No. 11-1254 (D. Del. Nov. 20, 2013).

Before analyzing the eight motions before the Court, Judge Robinson noted that to determine summary judgment the court must confirm "the parties have cited evidence in support of their arguments"; and that "the evidence demonstrates the proposition for which it is cited." Id. at 11-12. In that respect, Judge Robinson noted that the "the parties could not have been less helpful to the court." The specific issues with the parties' record cites included:

[T]he parties (and their experts) cited to documents by their Bates-stamp numbers, with no indicia of their location in the record. Even when the parties were kind enough to locate the document in question by an exhibit number, it was often difficult to discern which of the volumes containing identical exhibit numbers was actually referenced. To add insult to injury, the parties organized the appendices so that the exhibits were not necessarily included in numerical order because, e.g., one exhibit had to be sealed. In sum, it was a rare occurrence that a brief cited evidence by an exhibit number that was clearly identified by the appendix in which it resided.

Id. at 12.

Turning to the motions to strike and exclude expert testimony, Judge Robinson granted Texas Instrument's motion striking "new theories" from Cradle IP's expert's declarations. Id. at 13. "As far as the court can tell, the declaration is longer than his two expert reports combined, and primarily cites to itself as authority." Id. Judge Robinson also granted Texas Instrument's motion to strike that related to a third party declaration not vetted in discovery. Id. Judge Robinson denied the remaining motions to strike that related to supplemental expert reports. Id. at 14. "[T]he court has neither the time nor the resources - nor even the record - to recreate the parties' tortuous litigation strategies insofar as determining whether plaintiff had cause to file a supplemental report in the first instance and whether it ventured into new theories which demanded a response by defendant in the second instance." Id. Judge Robinson also denied Texas Instrument's motion to exclude Cradle IP's expert on secondary considerations, finding that Texas Instrument's complaints went to the weight of the evidence. Id. Judge Robinson did, however, grant Cradle IP's motion to strike an expert declaration because it contained disclosures that had not been vetted through discovery. Id.

Turning to the summary judgment motions, Judge Robinson granted-in-part Texas Instrument's motions for summary judgment of non-infringement and denied its motion for summary judgment of invalidity. Regarding the '049 patent, Judge Robinson granted Texas Instrument's motion that "that Cradle has not shown that Tl has made, used, sold, or offered to sell the 'entire patented invention' or that any of its customers have employed the 'entire patented invention in the required configuration set forth in the apparatus claims.'" Id. at 22-23. Judge Robinson found that there was "no evidence to show that Tl or its customers used the apparatus in combined mode. To the contrary, the only evidence provided shows that the software needed for the apparatus to operate in combined mode was not even developed." Id. at 24. Judge Robinson also granted Texas Instrument's motion as to the method claim 6, that Cradle IP "failed to provide evidence to show that either TI or its customers have actually performed 'all of the steps of the claimed method.'" Id. at 25. Regarding the '259 patent, Judge Robinson granted Texas Instrument's motion that Cradle IP provided no evidence of direct infringement of the method claims, finding that "at best" Cradle IP has shown that the products are capable of operating in an infringing manner, rather than evidence of use. Id. at 31. Regarding the '450 patent, Judge Robinson granted Texas Instrument's motion. The Court found that "Cradle fail[ed] to identify evidence to support a finding of a genuine issue of material fact, instead pointing only to a conclusory opinion, unsupported by evidence, in [its expert's] declaration." Id. at 40.

Judge Robinson also construed the following claim terms of the patents-in-suit:

"A system bus that allows only one bus transaction in any one clock cycle"
"Any processor requesting access to the shared resource"
"The shared resource is available/unavailable for access"
"The shared resource has just been made available for
access"
"cell"
"Idle Memory Transfer Controller"
"Command FIFO"
"Split transaction global bus"
"Acknowledgment of command receipt"
"Releasing the split transaction global bus"

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Posted On: November 27, 2013

Judge Andrews denies all post-trial motions except with respect to interest

Judge Richard G. Andrews recently ruled on several post-trial motions in XpertUniverse, Inc. v. Cisco Systems, Inc., C.A. No. 09-157-RGA (D. Del. Nov. 20, 2013). The Court first denied the defendant’s motion for judgment as a matter of law on infringement, finding that the defendant failed to show that there was insufficient evidence from which the jury could find infringement and support its damages award. The Court also found that the evidence at trial supported the jury’s finding of no invalidity based on the on-sale bar. Next, the Court denied the defendant’s motion for an order that the patents were unenforceable due to inequitable conduct, explaining that the defendant failed to show clear and convincing evidence to support a finding that the plaintiff specifically intended to defraud the PTO.

The Court next addressed the plaintiff's post-trial motions to alter or amend the judgment, for supplemental damages and an accounting of sales of a new product version, for pre- and post-judgment interest under 35 U.S.C. § 284 and 28 U.S.C. § 1961, and for a permanent injunction or, alternatively, ongoing royalties. Judge Andrews explained that “[a] party seeking to include a new product version in post-verdict relief must prove that the new version is not more than colorably different from the product found to infringe, and that the newly accused product actually infringes.” Id. at 24. The Court found that the new version appeared to be more than colorably different than the accused product, and decided that rather than conducting an evidentiary hearing on whether the new version infringed, it would deny the motion without prejudice to the plaintiff’s filing a new patent infringement suit with respect to the new version . Id. at 25. The Court then granted the motion for pre- judgment interest at the prime rate, compounded quarterly, and post-judgment interest pursuant to 28 U.S.C. § 1961.

The Court denied the plaintiff’s motion for a permanent injunction, finding that the plaintiff failed to show a likelihood of irreparable harm, because the harm alleged had already occurred, and was not prospective harm that could be prevented by an injunction. Id. at 28-29. Further, the plaintiff failed to show that money damages would not compensate it for the alleged harm, or that the balance of harms or public interest favored granting a permanent injunction. Id. at 30-31. With respect to the plaintiff’s alternative request for ongoing royalties, the Court explained that one of the accused products was no longer being sold, and only a new version of the other, which was not shown to infringe, was being sold. The Court therefore denied the request for ongoing royalties. Id. at 31-32. Finally, the Court found no basis to award attorneys’ fees under 35 U.S.C. § 285. Id. at 32-33.

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Posted On: November 22, 2013

Judge Burke Recommends Claim Constructions in Exjade ANDA Case

Magistrate Judge Burke has issued a report and recommendation regarding claim construction in a Hatch-Waxman case involving the drug deferasirox, known by the brand name Exjade. The case involves two patents, one of which claims the chemical compound itself and was not the subject of claim construction disputes, and one of which claims methods of using certain compounds and was the subject of claim construction disputes. Novartis Pharms. Corp., et al. v. Actavis, Inc., et al., C.A. No. 12-366-RGA-CJB, Report and Recommendation at 1-2 (D. Del. Nov. 21, 2013). The terms that Judge Burke construed were:
- “diseases”
- “iron overload”
- “treating”
Id. at 6-23.

Interestingly, the parties also disputed whether certain claims were independent or dependent claims. The defendants argued that claims 8 and 16 expressly referred to claims 3 and 9, respectively, and were thus clearly dependent. The defendants found further support for the dependency of these claims in the prosecution history, including statements during prosecution that “identical claim language to that at issue was language of dependency.” Id. at 23-28. Plaintiffs took the position that claims 8 and 16 were independent, but had “no real answer for how to square [the] prosecution history with their . . . position that the claims are independent.” Id. at 27. Accordingly, Judge Burke also recommended that claims 8 and 16 be construed as dependent claims. Id. at 28.

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Posted On: November 22, 2013

Judge Andrews Again Requires Reduction of Large Number of Claim Terms for Construction at Markman Hearing

In three separate civil actions filed together and involving a number of defendants, the parties had been scheduled to have a joint Markman hearing on December 5, 2013. Because the parties had “submitted a brief with about twenty-seven (27) disputed terms” however Judge Andrews has ordered that the “Court will hear no more than ten disputed terms at the Markman hearing.” Interdigital Comms. Inc., et al. v. Huawei Techs. Co. Ltd., et al., C.A. No. 13-8-RGA, Order at 2 (D. Del. Nov. 19, 2013). Judge Andrews’ order requires the Defendants to choose eight terms and the Plaintiffs to choose two terms, and requires the parties to submit a letter with the ten terms they decide upon. Id.

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Posted On: November 21, 2013

Judge Thynge recommends partial dismissal of plaintiff’s amended complaint

Magistrate Judge Mary Pat Thynge recently recommended that defendant First Midwest Bancorp’s (“FMBI”) motion to dismiss be granted in part. Strikeforce Technologies, Inc. v. Phonefactor, Inc., et al., C.A. No. 13-490-RGA-MPT, Report and Recommendation (D. Del. Nov. 13, 2013), amended, Report and Recommendation (Amended) (D. Del. Nov. 14, 2013) (minor corrections to original) (“Amended Report”).

Plaintiff argued that FMBI’s subsidiary, First Midwest Bank, infringed its patent and that FMBI was liable under both alter ego and agency theories. Amended Report at 3. The Court concluded that plaintiff had not sufficiently alleged facts to establish an alter ego theory of liability, but that it had alleged enough facts to support “pure agency liability.” Id. at 7.

As to alter ego, the Court explained that the

allegations regarding the relationship between FMBI and First Midwest Bank establish that the two entities are commingled. FMBI and First Midwest Bank have a nearly identical board of officers and directors; the majority of FMBI’s assets are attributable to First Midwest Bank; both corporations employ the same governance polices [sic] and procedures; both corporations operate from the same location in Illinois. While these allegations meet the first element [of alter ego liability], StrikeForce has not alleged any facts suggesting fraud or injustice in FMBI’s use of the corporate form [i.e., the required second element to establish alter ego liability].

Id. at 8. Plaintiff argued that fraud was not required to be pled under the alter ego theory and that the theory was “muddled, and the cases outside the realm of patent infringement cannot be applied wholesale.” Id. at 9. The Court recognized that, under Third Circuit law, a plaintiff need not prove actual fraud and may allege facts “suggest[ing] fraud or injustice,” but here, plaintiff did not address any factors that suggested “fraud or other similar injustice in the structure of FMBI and First Midwest Bank. Contrary to [plaintiff’s] first argument, fraud or some other similar injustice is a required element for finding alter ego liability.” Id. at 9-10. Plaintiff also “suggest[ed] that if allowed to conduct discovery, it would provide this court all the factors necessary to conduct a meaningful alter ago analysis,” but the Court found that the argument “undermin[ed] the purpose of the well-pled complaint requirement.” Id. at 10.

As to the agency theory, the Court concluded that plaintiff’s allegations “reasonably support the inference that FMBI directed First Midwest Bank’s act of infringement,” citing similar facts quoted above relating to the entities’ relationship to conclude that the allegations “suggest a close connection in the operations of the two companies, making it reasonable to infer FMBI authorized or directed” activities related to plaintiff’s infringement allegations. Id. at 11. The Court also explained that plaintiff need not allege facts supporting fraud or injustice under a “pure agency” theory; it would be required to do so under an “agency akin to an alter ego theory.” Id. at 12.

FMBI also argued that plaintiff did not allege “enough plausible facts to suggest that discovery would uncover sufficient evidence to support either alter ego or agency liability. FMBI urges the court dismiss the claims against it because having a regulated wholly-owned subsidiary should not subject a parent corporation to discovery expenses based on mere allegations of a typical corporate structure.” Id. at 13. While recognizing “the burden of litigation,” the Court concluded that plaintiff’s agency claim was plausible under Rule 12(b)(6) and should not be dismissed. Id. at 13-14.

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Posted On: November 21, 2013

Judge Andrews construes claim terms related to wireless communication technology

Judge Richard G. Andrews recently construed nine claim terms across two patents, U.S. Patent Nos. 8,094,010 and 7,583,197. Plaintiff is asserting these patents in five actions in the District of Delaware, and Judge Andrews’s construction applied to each of these actions. M2M Solutions LLC v. Sierra Wireless America, Inc., C.A. Nos. 12-30, 12-31, 12-32, 12-33, 12-34-RGA (D. Del. Nov. 12, 2013). Judge Andrews construed the following disputed claim terms:

- “permitted caller”
- “coded number”
- “a programmable interface”
- “processing module”
- “monitoring device”
- “wireless communications circuit for communicating through an antenna”
- “monitored technical device”
- “at least one wired or wirelessly attached monitoring device”
- “a wireless communications circuit having an antenna”

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Posted On: November 20, 2013

Judge Robinson denies early Rule 11 motion, but cautions plaintiff that the court will entertain renewed motion after claim construction

Judge Sue. L. Robinson recently considered an early Rule 11 motion filed by several defendants in HBAC Matchmaker Media, Inc. v. CBS Interactive Inc., et al., C.A. Nos. 13-428, 13-430, 13-433, 13-434, 13-435, 13-437, 13-438 (D. Del. Nov. 18, 2013). Prior to filing the motion, defendants wrote plaintiff requesting that it withdraw its claims because the complaints accused websites, whereas the patents-in-suit were directed to "targeted advertising in the context of television and radio." Id. at 2. At the Rule 16 scheduling conference, Judge Robinson asked the plaintiff to provide the court for in camera review the materials it relied upon in performing its pre-filing investigation. Id. Plaintiff submitted emails prior to the filing date evidencing that plaintiff reviewed press articles on the use of targeting advertising at issue in the claims. Id. at 4. Plaintiff also submitted emails discussing the patents and alleged infringement, claim charts which were the subject of pre-suit emails, and evidence that plaintiff used tools to analyze network traffic between a viewer’s computer and defendants' servers. Id.

Defendants argued that plaintiff's "conclusory" assertions that it had a reasonable basis for finding infringement were insufficient because "plaintiff's purported infringement theory include[d] no code comparison whatsoever" and plaintiff provided no "details regarding [its] infringement analysis or underlying claim construction positions regarding the code comparison and instructions/commands limitations." Id. at 3-4.

Judge Robinson denied defendants' motion, declining to "engage in a claim construction exercise" at this early point in the case. Id. at 4. But, Judge Robinson noted that "plaintiff may well be stretching the meaning of two older patents (clearly directed at television and radio)," and cautioned the plaintiff that it would entertain a renewed Rule 11 motion and/or an attorneys' fees motion under 35 U.S.C. § 285 after discovery and claim construction is completed. Id. at 5. Judge Robinson also stated that the court might permit early claim construction of "dispositive limitations" after the parties exchange "fundamental documents." Id.

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Posted On: November 19, 2013

Magistrate Judge Thynge recommends denial of leave to amend to assert inequitable conduct.

Magistrate Judge Mary Pat Thynge recently recommended a denial of a defendant’s motion to amend its answer to add a counterclaim for inequitable conduct. Pfizer Inc. v. Sandoz Inc., C.A. No. 12-654-GMS/MPT (D. Del. Nov. 4, 2013). As Judge Thynge explained, “[i]n considering whether the grant the motion under Rule 15(a), the court considers . . . undue delay by the movant, unfair prejudice to the nonmovant, improper purpose and futility. The movant, however, must also satisfy the good cause requirement of Rule 16(b) by demonstrating that the amendment could not have been reasonably sought in a timely manner despite diligence.” Id. at 7-8.

With respect to the defendant’s six month delay in filing a motion to amend, Judge Thynge found that the “timing of defendant’s motion . . . strongly suggests the delay is improper. Defendant had the requisite documents in its possession, at the latest, within a few weeks of the deadline to amend pleadings. In addition, defendant delayed four months from the final deposition to file the present motion.” Id. at 10. Accordingly, Judge Thynge found undue delay for purposes of Rule 15(a). Judge Thynge added that there was no good cause for the delay under Rule 16(b), because all that the defendant provided was the “bare assertion” that the record was “tortuous” as justification for its delay. Id. at 10-11. Further, Judge Thynge found that amendment would be futile, because the proposed amended counterclaim did not meet Rule 9(b)’s pleading requirements for inequitable conduct. Finally, addressing the prejudice an amendment would cause the plaintiff, Judge Thynge explained that the prejudice “is the significantly compressed time frame for developing a response to the [inequitable conduct] allegations prior to trial, while defendant used approximately fourteen months to develop its inequitable conduct defense.” Id. at 12.

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Posted On: November 19, 2013

Judge Andrews grants motion to dismiss, finds "conditional action" an unpatentable abstract idea

In a recent decision, Judge Richard G. Andrews granted a motion to dismiss on the grounds that the asserted patent claimed an abstract idea that was ineligible for patent protection under 35 U.S.C. § 101. Ubicomm, LLC v. Zappos IP, Inc., C.A. No. 13-1029-RGA (D. Del. Nov. 13, 2013). As Judge Andrews explained, “[a]t the motion to dismiss stage a patent claim can be found directed towards patent ineligible subject matter if the ‘only plausible reading of the patent must be that there is clear and convincing evidence of ineligibility.’” Id. at 3 (quoting Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335, 1339 (Fed. Cir. 2013) (emphasis in original)). Here, between the time the defendant moved to dismiss and oral argument on the motion, the plaintiff submitted its proposed claim constructions at the Court’s request. Id. at 13 n.6. Based on the plaintiff’s own construction of the only independent claim at issue, the Court found that “the abstract idea at the heart of the claim is the very concept of a conditional action.” Id. at 6.

The Court explained that “[t]he fundamental role that the concept of conditional actions play in numerous disciplines is sufficient to warrant it protection as an abstract idea, because its patenting would impede innovation[,] more than it would tend to promote it.” Id. (internal quotation marks omitted). To support its decision, the Court added that the Supreme Court and Federal Circuit both have found ideas less abstract than a conditional action to be ineligible for patent protection. Id. at 7 (referring to hedging in Bilski v. Kappos, 130 S. Ct. 3218 (2010) and processing information through a clearinghouse in Dealertrack, Inc. v. Huber, 674 F.3d 1315 (Fed. Cir. 2012)). The Court then considered whether the rest of the claim included limitations that narrow it so as to avoid covering the full abstract idea, but found no such sufficient limitations. Id. at 7-8. The Court found instead that the limitations “are not more than the incorporation of a generic computer into the claim, which is not sufficient to make an abstract idea patentable.” Id. at 9.

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Posted On: November 12, 2013

Judge Stark Compels Partial Production of Documents after Finding Waiver of Attorney-Client Privilege

Judge Leonard Stark recently issued an interesting memorandum order on assertions of attorney-client privilege with respect to documents that evidence a possible breach of a confidentiality agreement. Plaintiffs Galderma Labs and Supernus Pharmaceuticals withheld certain documents from production and listed them on a privilege log. Defendants Amneal Pharmaceuticals sought to have Judge Stark compel the production of the documents in question. Judge Stark reviewed the documents in question in camera and granted the request to compel with respect to some documents, but denied it with respect to others. Galderma Labs. Inc., et al. v. Amneal Pharmas., LLC, et al., C.A. No. 11-1106-LPS, Memo. Order at 1 (D. Del. Nov. 8, 2013).

Judge Stark ordered the production of documents related to Defendants’ unclean hands and breach of contract claims. Each of these documents included one or more of the following items: (1) “litigation counsel communicating with prosecution counsel about prosecution activity” despite the fact that litigation counsel was prohibits from doing so by a defendants’ offer of confidential access and the Court’s protective order, (2) references to “prior communications between litigation counsel and prosecution counsel,” and (3) “litigation counsel being copied on communications among prosecution counsel and the client.” These items in the documents at issue made the documents relevant to Defendants’ determination of whether the offer of confidential information or the protective order was breached. Therefore, Judge Stark found that litigation counsel’s declaration denying any use of Defendants’ confidential information in patent prosecution was sufficient to waive the attorney-client privilege. Id. at 1-3.

Judge Stark, however, did not order production of documents withheld by Plaintiffs that related to Defendants’ inequitable conduct claim. After in camera review, Judge Stark explained that Defendants had not “made a prima facie showing of the applicability of the crime-fraud exception . . . [nor did] the Court find that the testimony of prosecution counsel constitutes a waiver of privilege.” Id. at 3-4.

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Posted On: November 11, 2013

Judge Andrews denies motion to seal portions of ANDA trial transcript

In Medicines Company Inc. v. Hospira Inc., C.A. No. 09-750-RGA (D. Del. Nov. 1, 2013), Judge Richard G. Andrews denied defendant’s motion to seal selected portions of the trial transcript and exhibits that related to “the price the Defendant paid for bivalirudin.” Order at 1. While this was “the sort of information that the Court would consider protecting from disclosure,” the potential harm of disclosure to defendant was unclear because its entry into the bivalirudin market was “speculative” and the information was “not current.” Id. The Court further explained that “[h]ad a request to seal been made contemporaneously, it would be a close question. The issue could have been avoided. Among other things, the price was irrelevant to any issue in the case. There was, however, no timely objection. . . . and that argues against redaction. The fact that it is a judicial record - a trial transcript - that Defendant seeks to redact also argues against redaction.” Id.

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Posted On: November 8, 2013

Judge Robinson denies in part plaintiff’s requests to strike expert reports and for “follow-up” discovery

Judge Sue L. Robinson recently considered plaintiff’s request to strike three supplemental expert reports, and with respect to one report, plaintiff’s alternative request for “follow-up” discovery. Aeritas, LLC v. United Alaska Air Grp., Inc., C.A. No. 11-967-SLR (D. Del. Oct. 25, 2013). With respect to the report for which plaintiff made the alternative request, Judge Robinson denied both plaintiff’s request to strike and the alternative request for follow-up discovery. Id. at 2. Judge Robinson found that plaintiff already had an opportunity to pursue related discovery, noting that “defendants timely shared with plaintiff the information they obtained through their discovery efforts.” Id. Judge Robinson further explained that “without any real indication that plaintiff’s proposed follow-up discovery will yield any substantive results, the court finds the prospect of prejudice too speculative to justify re-opening discovery at this stage of the proceedings.” Id. Judge Robinson also denied plaintiff’s request to strike a different report, noting that it was responsive to another expert’s report. Id. Judge Robinson, however, granted plaintiff’s request to strike one expert’s supplemental report, explaining that it was “nothing more than an effort to rectify his opening report by more clearly articulating his opinions, something he should have done in the first instance.” Id.

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Posted On: November 8, 2013

Judge Stark grants defendants' Rule 12(b)(6) motions in related ANDA actions

Judge Leonard P. Stark recently dismissed two complaints filed by a plaintiff alleging that defendants’ respectively filed ANDA's infringe U.S. Patent No. 8,148,356. Cumberland Pharm. Inc. v. Innopharma, Inc., C.A. No. 12-618-LPS (D. Del. Nov. 1, 2013); Cumberland Pharm. Inc. v. Sagent Agila LLC, et al., C.A. No. 12-825-LPS (D. Del. Nov. 1, 2013). Judge Stark dismissed the complaints in each action for failure to state claim on the same grounds. That is, Judge Stark found that plaintiff’s asserted claims covered only compositions “free from a chelating agent,” despite the complaints’ allegations that defendants’ products contained EDTA, a chelating agent. Innopharma, C.A. No. 12-618-LPS, at 2-3; Sagent Agila LLC, C.A. No. 12-825-LPS, at 2-3. The “free from a chelating agent” limitation appeared explicitly in the asserted claims and was discussed in the complaints. See Innopharma, C.A. No. 12-618-LPS, at 3-4; Sagent Agila LLC, C.A. No. 12-825-LPS, at 3-4. While plaintiff argued, among other things, that dismissing the complaints would require a premature claim construction, Judge Stark found that no claim construction was necessary “to determine that ‘free from a chelating agent’ means that a claimed composition may not include a chelating agent.” Innopharma, C.A. No. 12-618-LPS, at 3-4; Sagent Agila LLC, C.A. No. 12-825-LPS, at 2-4. Judge Stark also noted that the doctrine of equivalents would be inapplicable in either case, as a “finding of infringement would vitiate the ‘free from a chelating agent’ claim limitation.” Innopharma, C.A. No. 12-618-LPS, at 3-4; Sagent Agila LLC, C.A. No. 12-825-LPS, at 2-4.

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Posted On: November 4, 2013

Judge Stark denies motion to dismiss based on lack of subject matter resulting from allegedly abandoned application.

Judge Leonard P. Stark recently denied a defendant’s post-trial motion to dismiss an infringement action for lack of subject matter jurisdiction based on the alleged expiration of the patent-in-suit. Avanir Pharmaceuticals, Inc., et al. v. Actavis South Atlantic LLC, et al., C.A. No. 11-704-LPS (D. Del. Oct. 25, 2013). The defendant argued, and the Court agreed, that the original priority application lapsed and was abandoned before a continuation application was filed. The plaintiff attempted to retroactively fix this problem by filing an ePetition through a reissue patent, in an attempt to get behind certain alleged prior art, but the defendant argued that the fix was unsuccessful because the plaintiff failed to file a terminal disclaimer, as required. The Court agreed that a terminal disclaimer was required, and therefore left the plaintiff with a difficult dilemma: “[T]he [reissued] patent may either (i) claim priority back to [the original] application’s filing date – and then its terminal period must be disclaimed, pursuant to § 1.137(d)(2), meaning the [reissued] patent would have expired on June 9, 2012; or (ii) claim priority to [a later] application’s filing date – and would not expire until the end of its full term, on January 26, 2016.” Id. at 21. While the plaintiff argued that neither outcome was dictated by these circumstances, the Court found that the existence of the plaintiff’s option to elect the later priority claim, regardless of how it might ultimately impact the Court’s validity assessment, means “the Court continues to have subject matter jurisdiction over the parties’ disputes relating to the [reissued] patent.” Id. at 22.

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Posted On: November 1, 2013

Judge Andrews Construes Terms of Networking Patent

Judge Andrews recently ruled on claim construction disputes related to U.S. Patent No. 5,991,885 in litigation between Chalumeau Power Systems and Alcatel-Lucent. The patent-in-suit relates to networking and, more specifically, detecting and providing power to a remote terminal on a network. Judge Andrews construed the following claim terms, picking and choosing constructions from both the plaintiff and defendant:
- “user interface connector”
- “network hub”
- “for identifying the operational protocol of a coupled device that indicates the type of device”
- “for identifying the presence of an adapter of a first type”
- “type of device”
- “operational protocol/operational protocol of a coupled device”
- “adapter”
Chalumeau Power Sys. LLC v. Alcatel-Lucent, et al., C.A. No. 11-1175-RGA, Memo. Op. at 3-11 (D. Del. Oct. 30, 2013).

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Posted On: November 1, 2013

Jury returns verdict of validity L-3 Communications Corp. v. Sony Corp., et al., C.A. No. 10-734-RGA

In L-3 Communications Corp. v. Sony Corporation, et al., C.A. No. 10-734-RGA (D. Del. Oct. 30, 2013), the jury returned a verdict finding that defendants had not proven by clear and convincing evidence that the asserted claims of U.S. Patent No. 5,541,654 were invalid. Prior to trial, Judge Andrews had granted plaintiff's partial motion for summary judgment on that patent's validity.

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Posted On: November 1, 2013

Judge Andrews issues pre-trial motions in limine

Judge Richard G. Andrews recently issued two pre-trial motions in limine in L-3 Communications Corp. v. Sony Corporation, et al., C.A. No. 10-734-RGA (D.I. 232, 233) (D. Del. Oct. 25, 2013). The Court first excluded defendants’ Request for Ex Parte Reexamination in its entirety. D.I. 232 at 2. There was “no reason” why the request should be admitted into evidence, and the parties agreed that it was prejudicial and “does not aid the jury because it is based on claim constructions which were not adopted.” Id. The Court precluded the request in its entirety because “[s]imply removing the prejudicial statements would be a waste of time and effort, as the remaining contents would not be relevant.” Id. Furthermore, “because [defendants] did not participate in the reexamination, except for the initial request, any reference to [it] as the requester is unfairly prejudicial . . . [therefore] any references to [defendants or their trial counsel] as the requester, either in the rest of the file history or by expert testimony, are precluded.” Id.

Plaintiff also moved to exclude slides allegedly involved in a conference presentation and a draft article related to this presentation, as well as defendants’ expert opinion that these materials were prior art. Plaintiff argued that the presentation and article were hearsay. D.I. 233 at 1-2. The Court concluded that only the publication dates of the documents were hearsay because, other than the date, the documents were not being used to assert the truth of their contents. Id. at 3. The Court then concluded that the draft article was not hearsay because the date in its footer was “probably the statement of a machine and not of a human. If it is a statement of a machine, it is not hearsay.” Id. (internal citations omitted). Furthermore, there was “absolutely no circumstances that give rise to any suspicion that the document has been altered.” Id. As to the slides, however, the only evidence defendants presented that they were used at was the declaration of their alleged presenter, and this could not be used to prove the date. Id. at 4. But the Court believed that “a prima facie case has been made that the deck of slides was presented at the conference,” and thus the Court admitted the evidence, but at plaintiff’s request it would give a limiting instruction that the date of the document was not being offered to prove that the slides were actually presented on the alleged date. Id.

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Posted On: November 1, 2013

Judge Robinson denies motion for fees and clarifies former dismissal as having been with prejudice.

Judge Sue L. Robinson recently reconsidered an earlier decision (discussed here) to defer ruling on a motion for attorneys' fees filed by defendants. Walker Digital, LLC v. Expedia, Inc., et al., Civ. No. 11-313-SLR (D. Del. Oct. 25, 2013); Walker Digital, LLC v. Amazon.com, Inc., Civ. No. 12-140-SLR (D. Del. Oct. 25, 2013); Walker Digital, LLC v. Barnes & Noble, Inc., Civ. No. 12-141-SLR (D. Del. Oct. 25, 2013); Walker Digital, LLC v. Expedia, Inc., Civ. No. 12-142-SLR (D. Del. Oct. 25, 2013). Judge Robinson addressed the merits of the motion and denied it, finding that the defendants did not prevail on the merits for purposes of § 285, but instead had their cases dismissed "based on business arrangements . . . and the resulting consequences of such" after the plaintiff assigned its patents to eBay as part of a settlement. Moreover, Judge Robinson found that the case was not exceptional despite that the plaintiff continued litigating long after assigning the patents away, explaining "[t]he eBay settlement agreement was complex and negotiated in the midst of litigation. The attorneys involved in the litigation were not involved in these negotiations . . . With arguably valuable property rights at stake, it is not surprising that plaintiff chose to have the court resolve the dispute rather than amicably resolve such with defendants."

Judge Robinson next clarified that the earlier dismissal of the cases (discussed here) for lack of standing was with prejudice. The plaintiff argued that it had not had sufficient opportunity to cure the standing defect, but the Court disagreed, explaining that in its opposition to the motions to dismiss, “plaintiff has offered no evidence that it has a plan to cure the standing defect, stating only that it ‘has been and currently is engaged in continued discussions with eBay regarding ownership of the patents-in-suit.’” Therefore, the Court (by way of clarification for appeal) confirmed that its earlier dismissal was with prejudice.

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Posted On: November 1, 2013

Judge Robinson finds reissue patent invalid under Section 251(d), grants summary judgment of noninfringement

Judge Sue L. Robinson recently granted defendants’ motions for summary judgment of noninfringement because the Court found a reissue patent invalid under 35 U.S.C. § 251. Arcelormittal France, et al. v. AK Steel Corporation, et al., C.A. No. 10-050-SLR (D. Del. Oct. 25, 2013). In this action, the Federal Circuit had issued a mandate following a jury trial, affirming the district court’s construction of a certain limitation in independent claim 1 of U.S. Patent No. 6,296,805 (“the ‘805 patent”). Id. at 1-2. Following the Federal Circuit’s decision, the USPTO reissued the ‘805 patent as U.S. Patent No. RE44,153E (“the RE153 patent”), allowing a new dependent claim 23 “which effectively broadens the scope of the RE153 patent.” Id. at 2. Independent claim 1 of the RE153 patent included the same claim limitations that had been construed by the Federal Circuit in the ‘805 patent. Id.

Defendants moved for summary judgment of “noninfringement implementing the mandate on remand” and also argued that all of the broadened claims of the reissue patent were invalid under 35 U.S.C. § 251(d) (disallowing reissued patents that enlarge the scope of claims of the original patent unless applied for two years from grant of original, which was not the case here). Id. at 2, 5. There was no evidence that defendants infringed claim 1 of the ‘805 patent as construed by the Federal Circuit. Id. at 6.

Plaintiff argued that the case was now governed by the RE153 patent, and that the Court could revisit the construction of claim 1 of the ‘805 patent, and thus the issue of infringement, “in light of the reissue prosecution history which provides important new intrinsic evidence, which differs materially from the evidence of record when the claim construction was first decided.” Id. at 6 (internal citations and quotation marks omitted). The Court declined to do so, explaining that other courts, including the Federal Circuit, had refused to construe the claims of an original patent in light of a reissue patent. Id. at 7. Instead, the Court concluded that, under Section 251 and its case law, it must “compare the scope of the original claim 1 to the reissued claim 1 (as it must be construed to accommodate new dependent claim 23).” Id. at 7-8. And “[t]hat exercise leads inexorably to the determination that, rather than ‘further limiting’ claim 1, dependent claim 23 broadens the scope of claim 1 in contravention of § 251.” Id. at 8.

Having made this determination, the Court addressed the proper scope of the RE153 patent’s invalidity. Id. at 9. Plaintiff argued that it would be most equitable to only find claim 23 invalid. Id. “Having given this matter considerable thought,” the Court rejected this argument, concluding that “the mandate of the Federal Circuit has been insolubly devitalized by the reissue process. The patent at issue before the Federal Circuit . . . has been surrendered . . . . With the only patent at issue in this case being the RE153 patent, and with said patent having been improperly broadened in violation of § 251(d), the court declines to exercise its inherent equitable powers to resurrect the original scope of the ‘805 patent” Id. at 10. The Court further noted that, because plaintiff attempted to “captur[e] more acts of infringement under the broadening scope of new dependent claim 23 of the RE153 patent” more than two years from the grant of the ‘805 patent, this “intentional strategy to avoid the consequences of this court’s narrow construction” contravened the “fundamental purpose of § 251, that is, repose.” Id. at 10.

As a result, the Court invalidated the RE153 patent under Section 251(d) and granted defendants’ motions for summary judgment. Id. at 11.

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