Articles Posted in Richard G. Andrews

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Judge Richard G. Andrews recently considered the motions in limine included in the pretrial order filed in advance of trial.  AVM Technologies LLC v. Intel Corporation, No. 15-33-RGA (D. Del. Apr. 19, 2017).  Judge Andrews granted AVM’s motion in limine to exclude references to decisions or orders from plaintiff’s prior lawsuits and reserved decision on whether to preclude the use of testimony of AVM’s expert from prior litigation, who are not experts in this case.  Judge Andrews determined that the probative value of any prior litigation evidence would be substantially outweighed by unfair prejudice.  Id. at 1-2.  Regarding the expert testimony, Judge Andrews determined that the testimony might be permissible, “with the proviso that the experts cannot be identified as being AVM’s experts in prior litigation.”  Id. at 2.  Ultimately, Judge Andrews reserved decision until he could review the proposed testimony and discuss the issue at the upcoming pretrial conference.  Id.

Judge Andrews also granted Intel’s motion in limine to exclude evidence that the circuit patented in Intel’s patent copies the asserted patent.  Id. at 4.  Judge Andrews noted that although AVM argued “that the ‘941 patent and related testimony show that Intel ‘knowingly employed delay and simultaneous activation’ in the accused circuits[,]” AVM did not actually allege that the circuit in question is accused of infringement or that its experts have opinions regarding the circuit.  Id.

AVM Technologies LLC v. Intel Corporation, No. 15-33-RGA

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Judge Andrews recently granted a motion to dismiss for lack of patentable subject matter directed to a patent that included the following representative claim:

1. A method of determining a recovery state in a data stream, comprising:
receiving a compressed data stream;
detecting a compression block boundary in the compressed data stream;
detecting an archive block boundary in the compressed data stream;
detecting a file boundary in the compressed data stream; and
in response to the detection of the compression block boundary, the archive block boundary, and the file boundary, saving a recovery state for the compressed data stream;
wherein the recovery state includes a position of the compression block boundary, and a position of the file boundary.

Judge Andrews found this patent was “directed to the abstract idea of receiving, detecting, and storing information” because “as the Federal Circuit has held numerous times, collecting information is ‘within the realm of abstract ideas’” and “[t]his is precisely the kind of claim that the Federal Circuit has found to be an abstract idea.” D&M Holdings Inc., et al. v. Sonos, Inc., C.A. No. 16-141-RGA, Memo. Op. at 6-9 (D. Del. Apr. 18, 2017). Judge Andrews also found a lack of specificity or inventive concept in the claims, leading to his decision to grant the Section 101 motion.

On another patent-in-suit, however, Judge Andrews found that the patent was not ineligible and “agree[d] with Plaintiffs that Defendant has oversimplified and ignored specific limitations in this claim. This claim is more specific than claim 1 of the ’435 patent and calls for more than simply receiving, manipulating, and storing data.” Id. at 12-14.

On a third patent-in-suit, Judge Andrews “decline[d] to opine on” patentability because “construction of at least some of the disputed terms could impact the § 101 analysis, particularly as there is a dispute over whether the structure in several of the means-plus-function terms, which are found in claims that were not briefed or argued, is a specific device or merely a general purpose computer.” Id. at 14-16.

Finally, a fourth patent-in-suit was directed to an abstract idea without an inventive concept, in part because Judge Andrews “agree[d] with Defendant that this claim is directed to the automation of a process that can be (and has been) performed by humans.” Id. at 16-19. The representative claim at issue for this patent read:

18. A method for controlling a receiver having a plurality of receiver connections, the method comprising:
querying a user to select a receiver connection of the plurality of receiver connections to correspond with each encoding format of a plurality of encoding formats;
retrieving media unit data that identifies an encoding format of a playable piece of media selected to be played by the receiver, wherein the identified encoding format is one of the plurality of encoding formats;
retrieving receiver-connection data that identifies the receiver connection corresponding with the identified encoding format; and
sending to the receiver a control signal instructing the receiver to use the identified receiver connection for receiving a media signal of the selected media.

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In Impax Labs., Inc., et al. v. Lannett Holdings Inc., et al., C.A. No. 14-984-RGA, 14-999-RGA (D. Del. Mar. 29, 2017), Judge Richard G. Andrews issued a post-trial decision regarding Plaintiffs’ standing to bring suit and Defendants’ allegations of invalidity of Plaintiffs’ patents.

As to standing, Defendants argued that the “exact ownership arrangement of the patents” was not clear. Id. at 3. The Court examined a chain of ownership where the patents-in-suit were not always specifically called out as being part of various transfers. See id. at 5-6. But the Court concluded that there was “no reason to believe” there was any gap in ownership, crediting the statements of a declaration submitted by Plaintiffs post-trial and accepted by the Court (see id. at 4-5). Id. at 6. While, based on the documents at issue, it appeared possible that one of the named Plaintiffs no longer had an ownership interest in the patents, that did not impact the others’ standing to bring suit, and Defendants had only moved to dismiss “in toto for lack of standing.” Id. at 7.

As to Defendants’ anticipation and obviousness arguments, the Court found that they had not met their burden to show invalidity, and that Plaintiffs had presented evidence of secondary considerations of non-obviousness. See id. at 16-35.

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Judge Andrews recently found the asserted claims of one asserted patent invalid for obvious-type double patenting after a four day trial on three asserted patents. Novartis Pharmaceuticals Corp. v. Breckenridge Pharmaceutical, Inc., et al., C.A. Nos. 14-1043-RGA, 14-1196-RGA, and 14-1289-RGA (D. Del. Apr. 3, 2017).  The Court found that the earlier-expiring post-URAA patent (the ‘990 patent) could serve as a double patenting reference for a later-expiring pre-URAA patent (the asserted ‘772 patent), relying on the BPIA decision in Ex Parte Pfizer, Inc. Patent Owner & Applicant, 2010 WL 532133, at *6 (Bd. Pat. App. & Interf. Feb. 12, 2010) (cited in Gilead Sciences, Inc. v. Natco Pharma Ltd., 753 F.3d 1208, 1212 (Fed. Cir. 2014)), as well as several other district court decisions.  Judge Andrews found that the defendants failed to meet their burden to invalidate the other two asserted patents, which the plaintiffs proved were infringed.

Novartis Pharma Corp. v. Breckenridge Pharma Inc., C.A. No. 14-1043-RGA (D. Del. Mar. 30, 2017)

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Judge Richard G. Andrews recently denied a motion for judgment on the pleadings that the plaintiff’s volume control patents and pairing patents claimed unpatentable subject matter under 35 U.S.C. § 101.  Sonos, Inc. v. D&M Holdings Inc., C.A. No. 14-1330-RGA (D. Del. Mar. 13, 2017).  The defendants argued that the “Volume patents are directed to the abstract idea of ‘controlling audio settings for multiple audio devices,'” a “very basic” concept.  Id. at 8.  Judge Andrews disagreed, though, and explained that “the invention as claimed in each of the Volume patents represents a substantial improvement over the existing technology – the invention described in the patents allows for the audio devices to be grouped and regrouped in real time simply using a user interface to select the desired members of the groups without the need for altering any hard wiring in the physical system.  This is not simply a ‘more efficient’ method of doing something already done by humans.  It is a method that provides for capabilities far beyond what a traditional hardwired system offers.”  Id. at 12.   The Court also rejected the argument that the pairing patents were no more than an abstract idea, explaining “the Pairing patents claim methods that involve specific devices (playback devices and controllers) that are described in the specification.”  Id. at 15.  Further, “the claimed methods do not simply represent an automation of something done manually. . . . This simply is not the kind of method that could be performed manually, and, even if it were, automating the method as claimed represents a substantial improvement to the functionality of the specific device.”  Id.

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In Callwave Communications, LLC v. Verizon Services Corp., et al., C.A. No. 12-1704-RGA (D. Del. Feb. 13, 2017), Judge Richard G. Andrews granted Plaintiff’s motion to enforce the settlement agreement between Plaintiff and intervenor Telecommunication System Inc. (“TCS”) who had indemnified Defendants. The parties disagreed as to whether an agreement had been reached in principle, where TCS had agreed to Plaintiff’s terms via email, the parties had filed a stipulation to stay the case pending finalization of the agreement, and where “drafts, comments, and edits were exchanged.” Id. at 2. In the intervening period, the Court had granted another party’s Section 101 motion to invalidate one of the patents-in-suit.

Applying Delaware law, the Court observed that “[o]bjective indicators demonstrate that a contract was made. First, the August 8th email clearly demonstrates that TCS believed an agreement had been reached. The August 8th agreement set out the payment terms and a July 21st email set out the boundaries of the license Callwave would offer TCS. Intermediate emails demonstrated that the terms from the July 21st email carried through and were part of the agreement struck on August 8th. For example, a July 22nd email thanked Callwave for ‘agreeing to the terms, other than payment’ and confirming that the covenant not to sue would allow damages to accrue. These emails used the language of contract – ‘this formal offer’ – and the language of resolution -‘my client accepts.’ Second, the stipulation filed with this court clearly indicates an agreement had been reached.” Id. at 3 (internal citations omitted). Additionally, “the tenor of the comments in the drafts reflect an effort to memorialize an agreement already reached.” Id. The fact that some open terms remained regarding, for example, assignability, notice, choice of law, and confidentiality did not mean that the contract did not contain “all essential terms” and was thus enforceable under Delaware law. Id. at 4.

Having found an enforceable contract existed, the Court ordered specific performance, including all terms “either explicitly agreed to or included in responding drafts without comment or suggested revision.” Id. at 4.

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In Bio-Rad Laboratories Inc. v. Thermo Fisher Scientific Inc., C.A. No. 16-358-RGA (D. Del. Jan. 31, 2017), Judge Richard G. Andrews denied Defendant’s motion to dismiss Plaintiff’s willfulness allegations.  Noting that “[a]t the pleading stage, it is not necessary to show that the case is egregious,” id. at 2, the Court went on to observe that the complaint alleged that Plaintiff “gave [Defendant] notice of its infringement of the patent-in-suit as early as March 2013. On January 2014, proposed licensing terms were sent to [Defendant].  On May 6, 2015, [Plaintiff] sent a letter to [Defendant] of a reminder that sales of the accused products constitute infringement of the patent-in-suit.  [Plaintiff] alleges that [Defendant], or one of its subsidiary or affiliated companies directed the filing of the opposition to a European patent that is a counterpart to the patent-in-suit. Accused products continue to be sold.”  Id. at 3.  The Court concluded that foregoing facts sufficiently alleged willfulness.

Bio-Rad Laboratories Inc. v. Thermo Fisher Scientific Inc., C.A. No. 16-358-RGA (D. Del. Jan. 31, 2017)

 

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Judge Andrews recently denied a motion to amend filed by a Defendant seeking to add a defense of inequitable conduct to its answer. “As an initial matter, [Judge Andrews] reject[ed] Defendants’ assertions that the current motion is not subject to the more stringent ‘good cause’ standard of Rule 16(b),” which is applicable after the scheduling order’s deadline for amendment of pleadings has passed. “Defendants argue that because they ‘openly disclosed their legally sufficient theories of inequitable conduct’ prior to the deadline, the current proposed amendment should not be subject to the ‘good cause’ standard. This is incorrect. Disclosing a legal theory is not the equivalent of substantively amending a pleading.” Sonos, Inc. v. D&M Holdings Inc., et al., C.A. No. 14-1330-RGA, Memo. Op. at 3 (D. Del. Feb. 3, 2017). The Defendant had filed two separate motions to amend with different accompanying proposed amended answers and elected to rely on the later of the two, which was filed after this deadline. Accordingly, the good cause standard applied.

Judge Andrews also found that the Defendant had not met the good cause standard because it had not shown that the prior deadline could not be met, despite its diligence. “The only argument Defendants make in support of diligence, the only factor important in the Rule 16 analysis, is that they ‘have diligently pursued their request for leave since August 1, 2016.’ This is the wrong time frame for the diligence analysis, however. To show good cause, Defendants must show diligence in pursuing their inequitable conduct defense prior to the deadline for amendments; whether Defendants acted diligently, after the deadline, in addressing the deficiencies Plaintiff identified in their First Amended Answer is simply irrelevant. Furthermore, Defendants have not argued that their defense is based on newly disclosed evidence that could not have been obtained prior to the deadline. Nor could they. The inequitable conduct allegations in the proposed Second Amended Answer rest entirely on information that was publicly available months or even years before the deadline for amendments.” Id. at 3-4.

Finally, Judge Andrews explained that “[e]ven if were to find some hint of good cause for this amendment, I am dubious about whether Defendants’ pleading is sufficient . . . [because] Defendants’ identification of the required “who” is murky at best, with most allegations centering on Sonos’s current in-house counsel, an attorney who was not even employed by Sonos until March 2014, years after the occurrence of much of the alleged misconduct. In addition, Defendants’ allegations of intent revolve around Sonos’ s attorneys’ knowledge of the existence of prior art references cited during prosecution of some patents, but not others. This alone is insufficient.” Id. at 4 n.2.

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Judge Richard G. Andrews recently granted motions to dismiss direct, indirect, and willful infringement claims under Rule 12(b)(6) in five related cases.  Network Managing Solutions, LLC v. AT&T Inc., et al., C.A. No. 16-295, 16-296, 16-297, 16-298, 16-299 (RGA) (D. Del. Feb. 3, 2017).  The Court found insufficient the allegation that the “3rd Generation Partnership Project Standards incorporate the technologies covered by the patents” because it was pled on information and belief.  The Court explained, “Plaintiff knows its own patents.  The standards are public.  Saying on ‘information and belief’ that the standards ‘incorporate the fundamental technologies’ covered by the patents, without more, is insufficient to plausibly allege that the practice the standard necessarily means that a defendant also practices the patent.”  The Court found the indirect infringement allegations insufficient for the additional reasons that the complaint failed to identify any third party that actually infringes, and failed to plausibly claim that the Defendants specifically intended to induce infringement.  In turn, while recognizing that the plaintiff adequately alleged knowledge of its patent, the Court dismissed the willful infringement claim because it was based on insufficiently pled infringement claims.

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In a recent Memorandum Order, Judge Richard G. Andrews denied defendant’s (“Sandoz”) motion to dismiss the case for lack of subject matter jurisdiction. Sanofi v. Lupin Atlantis Holdings, SA, C.A. No. 14-415-RGA (D. Del. Jan. 26, 2017). As Judge Andrews explained, Sandoz made a “Paragraph IV” certification in relation to plaintiff Sanofi’s ’900 patent on February 17, 2016. On October 28, 2016, Sandoz changed the Paragraph IV certification to a “Paragraph III” certification. As Judge Andrews explained, a “Paragraph IV certification creates subject matter jurisdiction,” but a Paragraph III certification does not create subject matter jurisdiction “because it represents that the generic will not market its product before the relevant patents expire.” Id. at 2. According to Judge Andrews, the “precise issue raised here is whether a generic who has filed a Paragraph IV certification divests the district court of jurisdiction by the mere act of converting the Paragraph IV certification to a Paragraph III certification.” Id.

In this instance, Judge Andrews found that such conversion did not divest the court of subject matter jurisdiction. First, Judge Andrews found that “I am not deprived of jurisdiction under 35 U.S.C. § 271(e)(2) and 35 U.S.C. § 1338(a) because it is sufficient that the case was initially certified under Paragraph IV.” Id. at 2-3. Judge Andrews also noted that “[i]t . . . appears that 28 U.S.C. § 2201 may confer jurisdiction.” Id. at 3. Second, Judge Andrews concluded that Sandoz’s mootness argument did not have any merit, finding that in this case there was a “reasonable expectation that the wrong will be repeated.” Id. at 3-5. Indeed, Sandoz conceded that it could “convert its Paragraph III certification back to a Paragraph IV at some future date under certain circumstances.” Id. at 3. Further, Judge Andrews noted that “Sanofi makes an adequately supported argument that Sandoz would reconvert back to Paragraph IV.”  Id. at 4. In reaching this conclusion, Judge Andrews distinguished Ferring B.V. Watson Labs, Inc.-Fla., 764 F.3d 1382 (Fed. Cir. 2014) and AstraZeneca AB v. Anchen Pharms Inc., 2014 WL 2611488 (D.N.J. June 11, 2014). Id. at 3-5.

Sanofi v. Lupin Atlantis Holdings, SA, C.A. No. 14-415-RGA (D. Del. Jan. 26, 2017).

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