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.
Chief Judge Stark recently granted a motion to stay litigation until the issuance of decisions by the PTAB in related inter partes review proceedings. The PTAB instituted IPR in July 2016 on every claim that is asserted in the District Court litigation and must issue a final written decision by July 2017. 454 Life Sciences Corp. v. Ion Torrent Systems, Inc., et al., C.A. No. 15-595-LPS, Memo. Or. at 4 (D. Del. Nov. 7, 2016). Because of that institution, Judge Stark found a “very strong likelihood that the IPR proceedings will simplify the issues for trial,” particularly given the potential for estoppel and the creation of additional prosecution history. Id. at 5-6. Additionally, the case was “still in its very early stages and much work remains to be done that could be averted by a stay” and the IPR proceedings were “relatively, mature . . . set for oral argument (if requested) . . . [and the] requested stay, therefore, is almost certainly likely to last no longer than eight months.” Id. at 8. Finally, Judge Stark concluded that, despite some degree of direct competition between the parties, the Plaintiff was not likely to be prejudiced by a stay given that the IPR petitions had been filed less than six months into the litigation and the motion to stay had been filed shortly after the PTAB’s decision to institute the IPRs, “which is generally the ideal time at which to file such a request.” Id. at 8-10.
In a series of related actions brought by United Access Technologies, Chief Judge Leonard P. Stark issued a claim construction opinion in which the Court also considered Defendants’ motion to strike certain proposed constructions as barred by collateral estoppel. E.g., United Access Technologies, LLC v. Centurytel Broadband Services, LLC, et al., C.A. No. 11-339-LPS (D. Del. Nov. 4, 2016). Defendants argued that Plaintiff was collaterally estopped from re-litigating certain constructions, including arguing that the preambles of the asserted claims were not limiting, based on Magistrate Judge Thynge’s ruling in a prior case brought by Plaintiff’s predecessor-in-interest that had construed several of the same claim terms now at issue. Id. at 5. But “[i]n order to fully consider Defendants’ Motion and other arguments relating to estoppel, the Court found it necessary to review in their entirety all of Plaintiff’s arguments regarding the disputed terms. After doing so, the Court determined that none of these arguments provided a persuasive reason for the Court to depart from Judge Thynge’s claim constructions.” Id. As a result, the Court denied the motion to strike as moot and proceeded with claim construction of each disputed term. Id.
Chief Judge Leonard P. Stark recently rules on several Daubert and summary judgment motions in Masimo Corp. v. Philips Electronics North America Corp., et al., C.A. Nos. 09-80-LPS, 11-742-LPS (D. Del. Oct. 31, 2016). Of note, Chief Judge Stark granted a Daubert motion seeking to preclude a damages expert from testifying regarding the “basis-for-customer-demand” test in connection with a lost profits opinion. The Court explained that the test was inconsistent with jury instructions in an earlier related case, to which no objections were lodged, and in any event that the “functional unit” test that was a part of the earlier jury instructions was legally correct. Id. at 6.
Chief Judge Stark also granted a Daubert motion seeking to preclude testimony regarding European Patent Office proceedings, on the basis that the expert was indisputably not an expert on European patent law and also that such testimony would not be helpful to the jury and could potentially be confusing at trial. Id. at 8-9.
With respect to the summary judgment motions, Chief Judge Stark granted in part Masimo’s motion for summary judgment of infringement because, the Court explained, the defendant’s own expert opined that the accused products infringed, and the license agreement at issue contained an express disclaimer. The Court noted, “[a]n implied license will not be found where the applicable licensing agreement has an ‘express disclaimer’ limiting the scope of the license.” Id. at 13-14.
The Court also granted in part a motion for summary judgment of no infringement under the doctrine of equivalents, agreeing with the defendant’s argument that “Masimo is estopped from relying on the doctrine equivalents to prove infringement because Masimo added [the limitations at issue] to overcome rejections for indefiniteness and double patenting during prosecution.” Id. at 22. Because Masimo failed to demonstrate that the amendments to add those limitation were narrowing, the Court found that Masimo failed to rebut the presumption (given that the reasons for and impact of Masimo’s amendments were ambiguous) that prosecution history estoppel applied. Id. at 23-24.
Finally, the Court granted in part Philips’ motion for summary judgment of no willful infringement of one of Masimo’s patents, on the basis that Masimo failed to present any evidence that Philips’ allegedly infringing conduct was “willful, wanton, malicious, [or in] bad faith” under Halo. Id. at 34.
The remainder of the issues briefed in the parties’ summary judgment motions presented genuine issues of material fact and were therefore denied.
Chief Judge Leonard P. Stark recently issued the pretrial order resolving motions in limine and setting time allocations for trial. Andover Healthcare, Inc. v. 3M Company, No. 13-843-LPS (D. Del. Oct. 27, 2016). Regarding time for trial, the parties requested 41 hours to be split equally between the parties. Judge Stark rejected this request:
Considering that this is a one patent case, with two asserted claims, four accused products, a single plaintiff and single defendant, at most five invalidity defenses .(written description, enablement, indefiniteness, anticipation, obviousness), damages, and willfulness, and given the number of witnesses the parties intend to call, the Court has determined that the parties will be allocated a maximum of 14 to 16 hours per side for their trial presentations, with the final amount to be determined after further discussion at the pretrial conference.
Id. at ¶ 2.
In Vehicle IP v. AT&T Mobility LLC, et al., C.A. No. 09-1007-LPS (D. Del. Oct. 20, 2016) (unsealed Oct. 27, 2016), Chief Judge Leonard P. Stark granted-in-part the Defendants’ motion to sever their cases, concluding that joinder under Rule 20 was impermissible as to infringement and damages, and denying the motion with respect to invalidity.
Plaintiff had accused the two groups of defendants, who were competitors of each other, of infringement by different products, but Plaintiff argued that joinder was proper under Rule 20 because the Defendants “advance largely identical arguments on all the key issues in the case . . . ; the allegedly infringing acts occurred during the same time period . . . ; Defendants used identically-sourced components in their respective products . . . ; and Defendants used similar development and manufacturing methods[.]” Id. at 3.
As to infringement, the Court observed that the infringement analysis would differ between the two defendant groups, and that they had engaged different infringement experts. Id. at 4. Severance was proper even if the accused products were the same in relevant respects: Plaintiff “has not argued that there was any relationship between the [defendant groups]; in fact, they are direct competitors, which weighs heavily against joinder. Other factors weighing against joinder include that there is no assertion [Plaintiff] of licensing or technology agreements between the [defendant groups], and that there is no claim for lost profits. Although there is some similarity in the development and manufacturing of the accused products and some components (such as cell phones) come from the same sources, those overlaps are due to the fact that the accused products are cell phone applications, and these components are not part of the infringement dispute. While both groups of Defendants are accused of infringing during the same time period, this factor does not outweigh the other considerations weighing in favor of severance.” Id. Furthermore, in light of Defendants’ argument that consolidation under Rule 42 would be prejudicial due to the high likelihood of jury confusion, the Court granted the motion to sever with respect to infringement and damages. Id. at 5.
In a recently unsealed memorandum opinion, Chief Judge Leonard P. Stark issued rulings on several pre-trial motions. Andover Healthcare, Inc. v. 3M Co., C.A. No. 13-843-LPS (D. Del. Oct. 18, 2016). Most notably, Chief Judge Stark denied a motion to preclude the plaintiff’s CEO from testifying as an expert based on his purported “blatant and direct financial interest in the outcome of this case.” Id. at 14. The Court explained that 3M’s argument that the CEO should be precluded because of his financial interest in the litigation “only holds if the Court disregards Andover’s corporate existence. Any recovery in this case will initially go to Andover, not Murphy. . . . [T]he Court concludes that Dr. Murphy’s indirect financial interest in the outcome of the litigation [redacted] can be handled appropriately on cross-examination.” Id. at 15-16 (emphasis in original).
Chief Judge Stark also denied cross-motions for summary judgment relating to a laches defense, on the basis that there existed factual disputes regarding the factual underpinnings of the defense, and also in view of the U.S. Supreme Court’s pending consideration in the SCA Hygiene Products v. First Quality Baby Products case of whether and to what extent laches is an available defense to patent infringement. Id. at 10 n.2.
Judge Stark recently issued two decisions applying collateral estoppel to various defendants based on a prior litigation in which the court had granted summary judgment of no pre-suit damages an the jury had ruled in the defendants’ favor. The Federal Circuit then summarily affirmed that judgment. Defendant Frontier Communications therefore moved for judgment on the pleadings based on collateral estoppel, arguing that the decision against pre-suit damages could not be relitigated. United Access Techs., LLC v. Frontier Commc’ns Corp., et al., C.A. No. 11-341-LPS, Memo. Op. at 1-3 (D. Del. Sept. 30, 2016). Judge Stark found, however, that the issues were not identical because the time periods in question were not identical and that difference “is material because [the] licensees could have, at some point between June 2002 and July 2009, begun to comply with the marking statute.” Id. at 4-5.
Two other defendants moved for judgment on the pleadings on the basis that a finding of summary judgment of non-infringement in the prior litigation estopped the Plaintiff from showing infringement in this case. Although the Federal Circuit had previously determined that collateral estoppel could not apply to a prior jury verdict in this case, the Defendants argued that it could apply to the summary judgment order. United Access Techs., LLC v. CenturyTel Broadband Services, LLC, et al., C.A. No. 11-339-LPS, Memo. Op. at 1-4 (D. Del. Sept. 30, 2016). Judge Stark agreed that the accused products at issue were identical because the Plaintiffs had not identified any differences from the products in the prior case. However, because “the Federal Circuit’s summary affirm Anne neither ‘endorse[d] [n]or reject[ed] . . . the district court’s specific holdings’ regarding claim construction, and because the claim constructions at issue here are not necessary to one of the rationales for affirmance [in the prior case], it is simply not possible to say that this Court’s claim constructions were necessary to the Federal Circuit’s decision. As a result, collateral estoppel does not apply to this Court’s decision.” Id. At 5-6.