Chief Judge Leonard P. Stark recently considered Kraft’s Daubert motions to exclude the testimony of TC Heartland’s experts. Kraft Foods Group Brands LLC v. TC Heartland, LLC, No. 14-28-LPS (D. Del. Jan. 12, 2017). Judge Stark struck the testimony of TC Heartland’s non-infringement expert’s opinions concerning the asserted claims’ packaging limitations because such testimony was inconsistent with the Court’s claim construction order. Id.at 2-4. Judge Stark denied, however, Kraft’s motion to exclude the testimony of TC Heartland’s damages expert. Kraft argued that the expert’s testimony on the availability and cost of a non-infringing alternative, stemming from unsubstantiated conversations with TC Heartland employees, was not based on “a reliable factual foundation.” Id. at 4. Judge Stark disagreed, noting that the employees in question were deposed and available to testify at trial, and that Kraft’s objections were fodder for cross-examination. Id. at 5. Kraft also moved to strike the expert’s testimony related to criticism’s of Kraft’s damages expert’s calculations. Judge Stark denied the motion as to these grounds as well because those issues “go to weight rather than admissibility.” Id. at 5-6.
Chief Judge Leonard P. Stark recently considered the parties motions for summary judgment and motions to exclude expert testimony in Vehicle IP, LLC v. AT&T Mobility LLC, et al., No. 09-1007-LPS (D. Del. Dec. 30, 2016). Judge Stark denied all the motions except one: defendants’ motion for summary judgment of no willful infringement. Plaintiff’s willfulness allegations were supported by testimony from one of the inventors of the patent-in-suit who later worked on developing an accused product. Id. at 17. Judge Stark held that such evidence was not enough because “a party’s pre-suit knowledge of a patent is not sufficient, by itself, to find ‘willful misconduct’ of the type that may warrant an award of enhanced damages.” Id. (citing Halo Elecs., Inc. v. Pulse Elecs., Inc., 136 S. Ct. 1923, 1936 (Breyer, J., concurring)). Judge Stark noted that the type of evidence absent from the record that may support a claim of willful infringement, other than pre-suit knowledge of the patent-in-suit, would include evidence that the inventor in question or defendant “intentionally relied on [the inventor’s] alleged prior knowledge of the patent in developing its products [or that the inventor] was hired because of his knowledge of the  patent.” Id.(internal quotations omitted). Because no reasonable jury could find willful infringement, the Court granted defendants’ motion.
Chief Judge Stark has granted a motion for judgment on the pleadings pursuant to Fed. R. Civ. P. 12(c) on the grounds that certain claims of certain patents asserted by Intellectual Ventures are invalid under 35 U.S.C. § 101.
Judge Stark’s opinion addressed three patents. The first, U.S. Patent No. 6,115,737, discloses “a system that facilitates network based interactions between a customer and a service provider.” Intellectual Ventures I LLC v. AT&T Mobility LLC, et al., C.A. No. 12-193-LPS, Memo. Op. at 11 (D. Del. Dec. 30, 2016). Judge Stark found that the challenged claims of this patent were “directed to the abstract idea of account management” which the patent specification makes clear is “a fundamental economic practice long prevalent in our system of commerce.” Moreover, the added limitations of “accessing a network, entering a request, displaying the request, accepting the request via a CCSN/IG, and remotely processing the request” were insufficient to add an inventive step to this abstract idea, particularly because the specification describes “the CCSN/IG as a standard gateway, running standard software, using well-known protocols.” Id. at 12-16.
The other two patents-in-suit, Nos. 8,078,200 and 7,450,957, were each directed to a “method and system for controlling the use of a short message service . . . [that] enables users to block and screen short message service (“SMS”) messages based on predetermined criteria.” Id. at 20. Judge Stark found this to be an abstract idea because the common specification “acknowledges that ‘[t]he concept of blocking and screening messages is a . . . long-practice concept’ . . . [in which] each step in claim 1 – receiving, screening, and the forwarding or blocking a message based on predetermined criteria – could be analogously performed by a human, instead of by a computer.” Id. at 21. Further, the claims at issue “provide[d] no further inventive concept” because “[l]imiting the claims to ‘one field of use’ – here, SMS technology – is insufficient to confer patent eligibility.” Id. at 22-23.
An additional interesting point in Judge Stark’s analysis concerns the claim construction order, which the Court issued in March 2015. The plaintiff argued that the claim construction order relied on factual matters outside of the pleadings and, therefore, a Rule 12(c) judgment on the pleadings could not be based on the claim construction order. Judge Stark rejected this argument, finding that because claim constructions is a question of law, “the Court may take notice of and rely on its claim construction opinion without converting Defendants’ Motion into a motion for summary judgment.” Id. at 9-10.
Chief Judge Leonard P. Stark recently issued the Court’s claim construction rejecting defendants’ indefiniteness arguments and finding the preamble limiting. Mayne Pharma Int’l Pty Ltd. v. Merck & Co., Inc., No. 15-438-LPS (D. Del. Dec. 27, 2016). The preamble of the asserted claims stated “A pharmaceutical composition, consisting essentially of ….” Judge Stark found the preamble limiting “because it provides antecedent basis for the term ‘the composition,’ which appears in the wherein clauses of claims 9 and 12.” Id. at 14. Judge Stark construed the to mean “any composition suited for pharmaceutical use” in accord with its plain and ordinary meaning. Id. at 14-15. In doing so, Judge Stark rejected defendants’ proposed construction, “a medicinal drug preparation for administration to patients,” because defendants’ proposal improperly narrowed the scope of the claims. Id. Judge Stark also rejected defendants’ indefiniteness arguments regarding the terms “consisting essentially of,” “wherein in vivo the composition provides a mean Cmax of at least 100 ng/ml, after administration in the fasted state,” “‘wherein in vivo the composition provides a mean AUC of at least 800 ng.h/ml, after administration in the fasted state,” and “polymer having acidic functional groups.” Id. at 5-13, 16-17.
Chief Judge Leonard P. Stark recently considered plaintiff’s motion to vacate summary judgment of no willful infringement in light of the U.S. Supreme Court’s decision Halo Electronics, Inc. v. Pulse Electronics, Inc., 136 S. Ct. 1923 (2016). Greatbatch Ltd. v. AVX Corporation, No. 13-723-LPS (D. Del. Dec. 13, 2016). A jury trial was held in January 2016 after which the jury found in plaintiff’s favor and awarded $37.5 million in damages. Id. at 1-2. Prior to trial Judge Stark granted defendants’ motion for summary judgment of no willful infringement relying on the objective prong of the Federal Circuit’s test for willful infringement articulated in In re Seagate Technology, LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007). Subsequently, the Supreme Court issued Halo, abrogating the objective prong of Seagate. Id. at 2. In denying plaintiff’s motion to vacate, Judge Stark noted that Halo made it “necessary to reconsider the Willfulness Order, [but did not], in this case, require vacating the prior determination that Greatbatch is unable to prove willfulness.” Id. In particular, the record showed that while defendant had pre-suit knowledge of the patents-in-suit, defendant made “good faith efforts to avoid infringement of any valid patents.” Id. at 7 (emphasis in original). Further, plaintiff did not “point to evidence from which a reasonable jury could find any infringement of these patents by A VX [that] was ‘egregious,’ ‘deliberate,’ atypical, or otherwise characteristic of the type of infringement that could support a finding of willful infringement.” Id.
In Idenix Pharmaceuticals LLC, et al. v. Gilead Sciences, Inc., et al., C.A. Nos. 13-1987-LPS, 14-109-LPS, 14-848-LPS (D. Del. Dec. 4, 2016), Chief Judge Leonard P. Stark considered a number of the parties’ disputes related to introducing deposition testimony and related documents, in anticipation of the trial in this case. The Court overruled two of these objections as waived; while timely, the objections contained significantly more argument than the pre-trial order allowed for such objections and were essentially improper motions in limine. Id. at 1-2. However, the Court also considered and rejected these two objections on their merits. As to the first, it overruled an objection to testimony related to which of the parties was the true innovator as relevant to willfulness and damages. The Court explained that this evidence involving events taking place prior to issuance of a patent may be relevant to willfulness ecause “the Court [was not] persuaded that the law absolutely precludes pre-patent conduct from being probative of willfulness.” Id. at 2. As to the second, the Court ruled the disputed testimony was a party admission and thus admissible, and, furthermore, the “contentions regarding speculation, and its disputes as to whether the evidence on the whole supports the inferences [plaintiffs] will ask the jury to draw, go to the weight and not admissibility of the challenged evidence.” Id. at 3.
Chief Judge Leonard P. Stark recently considered plaintiffs’ request to supplement the joint claim chart in Meda Pharmaceuticals Inc. v. Teva Pharmaceuticals USA, Inc., No. 15-785-LPS (D. Del. Dec.7, 2016), to include exhibits from the prosecution history of the patent-in-suit. Plaintiffs submitted the additional exhibits for inclusion in the chart, and consideration by the Court, just days before the Markman hearing. Shortly before the request, the Court denied plaintiffs’ motion to amend its complaint to assert the Certificate of Correction in this case, which, if allowed, “would have obviated the need to construe claims 28-30 of the ‘428 patent[.]” Id. at 1. The additional exhibits to the joint claim chart included “a listing of claims before allowance” and “a request for expedited issuance of a Certificate of Correction.” Id. Defendants opposed the additional exhibits arguing that plaintiffs effectively were seeking to reargue the Court’s denial of the motion to amend, and characterized the Court’s decision on that motion “as holding ‘that the Certificate of Correction is inapplicable and that the Court will construe the uncorrected patent using the existing claim construction briefs as they were submitted.'” Id. at 2. Judge Stark disagreed:
The order denied Plaintiffs’ motion for leave to amend the complaint to assert the Certificate of Correction, which would have resolved the parties’ dispute regarding the proper construction of claims 28-30 of the ‘428 patent. The Court’s denial of Plaintiffs’ motion left claims 28-30 in their uncorrected form and needing construction. The Court did not reach any decision regarding what evidence would be considered when construing the claims.
Chief Judge Leonard P. Stark recently ruled on several motions in limine in advance of an upcoming jury trial between Idenix and Gilead. Idenix Pharmaceuticals LLC, et al. v. Gilead Sciences, Inc., et al., C.A. No. 13-1987 (and related cases 14-109-LPS, 14-846-LPS) (D. Del. Nov. 22, 2016). Of note, Judge Stark denied Idenix’s motion to preclude evidence of certain experiments performed by Idenix, explaining that the “evidence that Plaintiffs may have failed to make a purported embodiment of the patent-in-suit is probative of whether the inventors of the patent-in-suit were in possession of the claimed subject matter as of the filing date; i.e., the evidence is probative of Defendant’s written description defense.” Judge Stark also denied Idenix’s motion to exclude reference to Idenix’s alleged drafting of claims based on the disclosures of a non-party. Specifically, the Court found that “[a] reasonable jury could credit Defendant’s evidence that in the immediate aftermath of Pharmasset’s Dr. Schinazi making certain disclosures to Idenix’s patent attorney, Idenix cancelled all pending original claims and added broader claims, which may be probative of Idenix’s inventors not being in possession of the full scope of the ultimately claimed inventions . . . .”
In a recent Memorandum Order, Chief Judge Leonard P. Stark adopted Magistrate Judge Christopher J. Burke’s Report and Recommendation (the “Report”) dated June 30, 2016 (D.I. 108), which (i) found the terms “access block” and “media block” (collectively, the “block terms”) not indefinite; and (ii) construed the term “providing, by the media block, a clickable icon.” Triplay, Inc. v. Whatsapp, Inc., C.A. No. 13-1703-LPS-CJB (D. Del. Nov. 15, 2016).
First, Defendant (“Whatsapp”) objected to the Report’s conclusion that the block terms are not indefinite, asserting that the block terms must be construed as means-plus-function terms under § 112, ¶ 6. Id. at 2. Judge Stark disagreed, and adopted the Report’s conclusions that the blocks terms should not be construed as mean-plus-function terms, and that the terms are not indefinite. Specifically, Judge Stark found that the rebuttable presumption that § 112 ¶ 6 does not apply was not overcome. Judge Stark observed that the patents at issue “include significantly more detail defining the block terms at issue in this case than the specification of the patent-in-suit” in Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015), cited by Whatsapp in support of its position. Id. at 4. Judge Stark further explained that the patents at issue “disclose adequate structure to define the block terms by describing the internal components and operative algorithms associated with the terms, as explained in the Report.” Id. Judge Stark also found that plaintiff’s (“Triplay”) expert report supported “that a person of ordinary skill in the art would understand, with reasonable certainty, the scope of the algorithmic ‘structure’ invoked by the block terms.” Id. at 5. Judge Stark noted that the “functional language describing the operation of the block terms ‘promotes definiteness because it helps bound the scope of the claims by specifying the operations that the [block terms] must undertake.’” Id. at 7.
Second, Triplay objected to the Report’s construction of the term “providing, by the media block, a clickable icon.” Id. Specifically, Triplay raised two objections: “(1) the phrase ‘clickable icon’ should be limited to a ‘link’ rather than a ‘visual representation that is clickable,’ contrary to the construction recommended in the Report, and (2) the Report erred in declining to construe the larger phrase ‘providing … a clickable icon.’” Id. Denying Triplay’s objections, Judge Stark observed that “[t]here is no clear indication in the intrinsic record that the disputed term should take on any other meaning in the context of the” patents at issue. Id. at 8. Judge Stark further noted that while the “specification can – without an express disavowal – direct a person of ordinary skill in the art to a narrower construction than the words [of a claim] would suggest”, through (for example) an implicit disclaimer, the specifications here do not do so.” Id. (citations omitted).
In a series of related actions, Chief Judge Leonard P. Stark issued a claim construction opinion in which he concluded that the relevant claims’ preambles were limiting. E.g., Idenix Pharmaceuticals LLC, et al. v. Gilead Sciences, Inc., et al, C.A. No. 13-1987-LPS (D. Del. Nov. 16, 2016).
The Court concluded that the preamble section “method for [the] treatment of Hepatitis C virus infection” that appeared in both patents were claim limitations, as argued by Plaintiffs. Id. at 8-10. The Court concluded that the preambles were “essential to understand[ing] limitations or terms in the claim body” because “a full understanding of the ‘effective amount’ terms [in the claims] depends on what the relevant compounds must be effective for,” i.e., the treatment of Hepatitis C. Id. at 9-10 (alterations and emphasis in original) (citations omitted). The Court also adopted Plaintiffs’ proposal that this limitation be given its plain and ordinary meaning. Id. at 10.