Articles Posted in Richard G. Andrews

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Judge Andrews recently addressed two interesting legal questions on summary judgment motions related to invalidity and limitation of damages. The first related to the requirement of 35 U.S.C. § 120 that a patent application be “if filed before the patenting . . . on the first application” in order to have the priority date of that previously-filed application. Because a foreign patent application with an identical specification had been filed more than a year before three patents-in-suit, if the patents-in-suit were not treated as continuations of another application with the benefit of an earlier priority date, they would be anticipated by the foreign application. Immersion Corp. v. HTC Corp., et al., C.A. No. 12-259-RGA, Memo. Op. at 5-8 (D. Del. Feb. 11, 2015). The parent of the patents-in-suit was issued on August 6, 2002, and the patents-in-suit were all filed on the same day. Thus, the question was whether the patents-in-suit could have been “filed before the patenting” of the parent, which, the defendants argued, automatically issued at 12:00:01 a.m. on August 6, 2002. Id.

The plaintiff argued that the PTO has “long given continuation applications the priority date of a prior application if the continuation is filed on the same day that the prior application issues as a patent” and that the PTO has expressed this position in the MPEP. Accordingly, the plaintiff argued that the Court should give Chevron deference to the PTO as a matter of administrative law. Judge Andrews, however, found that the PTO’s view was not entitled to Chevron deference because the relevant statute is not “silent or ambiguous” Rather, “35 U.S.C. § 120 . . . expressly states that the application must be filed ‘before’ the parent application issues.” Id. Further, although the plaintiff pointed to one district court that had adopted the PTO’s interpretation, the Federal Circuit has expressly “left open the question of ‘whether filing a continuation on the day
the parent issues results in applications that are co-pending as required by the statute.’” Id. (citing Encyclopaedia Britannica, Inc. v. Alpine Electronics of Am., Inc., 609 F.3d 1345, 1352 (Fed. Cir. 2010)). Because the plaintiff had the burden of proving entitlement to an earlier priority date and did not present evidence of when on August 6, 2002 the applications were filed, it did not establish an earlier priority date and Judge Andrews granted the defendants’ motion for summary judgment of anticipation of the three patents-in-suit. Id.

Secondly, Judge Andrews addressed a cutoff on damages at the point of a patent’s reissuance. “If a patent is reissued, damages are available for the period between the original issuance and the issuance of the reexamined claims only if the original claims and reexamined claims are ‘identical’ . . . [or] ‘without substantive change.’” Id. at 14-16. In this case, the patentee added the phrase “concurrently running” to the claim at issue, which the defendants argued was a substantive change and the plaintiff argued was merely a clarification that did not affect claim scope. Judge Andrews found that this was a substantive change to claim scope because although “the specification is a relevant consideration, Plaintiffs argument that having multiple programs is inherent in the claim because it is disclosed in the specification is contrary to the ‘well-established principle that a court may not import limitations from the written description into the claims.’ . . . Moreover, though not dispositive, it is highly persuasive that the patent examiner allowed the amended claim only after ‘concurrently running’ was added because the prior art made ‘no reference to any other programs that are running concurrently and how the determination is made between the plurality of concurrently running programs . . . .’” Id.

Chief Judge Stark recently addressed a similar issue involving damages for a reissued patent, finding that damages must be cut off at the filing of a complaint because the patentee had failed to mark embodying products or otherwise provide notice of its patent during the period of patent reissuance.

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In Alltech Associates Inc. v. Teledyne Instruments Inc., C.A. No. 13-425-RGA (D. Del. Feb. 12, 2015), Judge Richard G. Andrews  denied plaintiff’s unopposed motion to vacate certain of the Court’s claim construction rulings in the case. Having reached a settlement agreement with defendant, plaintiff argued that the Court’s constructions it disagreed with “should be vacated because settlement precludes review of the constructions,” and expressed concerns about the constructions “having a collateral estoppel effect” in subsequent cases. Id. at 1. The Court denied the request. It observed that while “[s]ettlement of any civil litgation is usually a good outcome,” refusing to vacate an order may encourage settlement early on if parties had to “carefully assess whether settlement was in their best interest before a claim construction hearing.” Id. (emphasis added). The Court further explained that “[a]ssuming that the standard that applies is whether there are exceptional circumstances justifying vacating the claim construction order . . . that standard has not been met. . . . [The Court could not] judge how important vacating the claim construction is to the settlement” based on the motion.  Id.

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Judge Richard G. Andrews recently granted Defendant’s letter request to file an early motion for partial summary judgment in light of the Court’s view that “there is a reasonable possibility that Plaintiff is estopped from asserting that lenalidomide can meet the claim limitations requiring thalidomide under the doctrine of equivalents.”  Andrulis Pharms. Corp. v. Celgene Corp., C.A. No. 13-1644-RGA (D. Del. Feb. 6, 2015).  In its letter request (D.I. 59) defendant argued that “early summary judgment [was] appropriate because Andrulis concede[d] that [the accused product] does not literally infringe and because prosecution history estoppel is a purely legal issue based on indisputable facts that bars Andrulis’s allegation that [the accused product] infringes under the doctrine of equivalents.”  D.I. 59 at 1.  Judge Andrews also cautioned defendant to not file a motion staying discovery pending the Court’s resolution of the partial summary judgment motion because the Court would not use its discretion to grant such a motion.

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(Feb. 6, 2015) Today a jury in the District of Delaware awarded $27.6 million to Sprint Communications Company, L.P. from Comcast Cable Communications, LLC and Comcast IP Phone, LLC for patent infringement of all asserted claims of U.S. Patent Nos. 5,742,605 and 6,108,339. Comcast IP Holdings I LLC v. Sprint Communications Company LP et al., D. Del., 1:12-cv-01013-RGA.

This is the first patent damages award by a Delaware jury in 2015.  In 2014, nearly one billion dollars in patent infringement damages were awarded by Delaware juries.

As between the parties to today’s verdict, a jury previously returned a $7.5 million verdict to Comcast from Sprint for patent infringement found in a separate Delaware suit, Comcast IP Holdings I LLC v. Sprint Communications Co. LP et al., D. Del., 1:12-cv-00205-RGA (see http://www.delawareiplaw.com/2014/10/verdict-comcast-ip-holdings-v-sprint-12-205-rga.html), from which counterclaims were previously severed to create the suit just tried.

A third patent infringement suit between the parties, Sprint Communications Company L.P. v. Comcast Cable Communications, LLC et al., D. Kan., 2:11-cv-02684, remains pending in Kansas.

2015.02.06 Verdict Form, Comcast IP Holdings I LLC v. Sprint Communications Company LP et al., D. Del., 1:12-cv-01013-RGA

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Judge Andrews recently resolved a novel dispute involving anticipation by a prior art patent. On defendant Comcast’s motion for summary judgment of invalidity, Comcast and plaintiff Sprint agreed that the prior art patent in question discloses each of the elements of the asserted patent claims. Sprint Commc’ns Co. v. Comcast IP Holdings, LLC, et al., C.A. No. 12-1013-RGA, Memo. Or. at 4 (D. Del. Jan. 30, 2015). Sprint argued, however, that under section 102(e), anticipation requires a prior art invention “by another.” Because the prior art at issue shared an inventor with the asserted patent, Sprint reasoned, this requirement was not met. Id. at 5. Examining the testimony of this common inventor, however, Judge Andrews determined that “even though [the common inventor] was an inventor of both the [asserted patent] and the [prior art] patent, the two patents do not share a common inventive entity, as there is no evidence from which the factfinder could conclude that [the common inventor] was solely responsible for the asserted claims . . . and the anticipating disclosures . . . .” Id. at 5-6.

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Judge Andrews recently granted defendants’ (“Comcast”) motion to exclude two of plaintiff’s (“Sprint”) damages expert opinions, and Sprint’s motion in limine, which sought to preclude Comcast from “offering into evidence, referencing, or eliciting testimony about settlement and license agreements entered into by Comcast relating to comparable technology.” Sprint Communications Co. v. Comcast IP Holdings, LLC, et al., C.A. No. 12-1013-RGA (D. Del. Jan. 29, 2015), (D. Del. Jan. 30, 2015).

As to the motion to exclude, Judge Andrews excluded one damages expert’s opinion pursuant to FRCP 26(a)(2)(B)(i), because that expert concluded that “6.5 to 7% of Comcast’s IMS network related to the patented subject matter, but provided no basis for how he determined which features ‘related to’ the patent.” Judge Andrews explained that “[t]his determination provides the entire basis for [the expert’s] opinion, and thus require[d] at least some explanation.” Judge Andrews also excluded this opinion because the “analysis is not tied to the improvements attributable to the patented invention, and . . . is [therefore] unreliable for purposes of Rule 702.” Judge Andrews also found the other damages expert opinion unreliable despite considering Georgia-Pacific factors, given that it provided “no evidence that ties Comcast’s savings to the claimed invention.”

Addressing plaintiff’s motion in limine, Judge Andrews explained that the motion implicates “the second Georgia-Pacific factor, which looks at ‘[t]he rates paid by the licensee for the use of other patents comparable to the patent in suit.’” Judge Andrews concluded that the four licenses at issue were “not sufficiently comparable to the hypothetical licenses, and, to the extent the lack of comparability could be accounted for, [the expert] has not attempted to do so.” As plaintiff observed, “none of the licenses include the patents in suit, three of the four licenses are with non-practicing entities, and all four licenses grant rights to additional patents and include international rights. Additionally, three of the four licenses occurred a number of years after the hypothetical negotiation dates. Finally, three of the four licenses resulted from the settlement of litigation, and thus do not represent the behavior of two willing licensors, as would be the case in the hypothetical negotiations between Comcast and Sprint.”

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In Vehicle Interface Technologies, LLC v. Ford Motor Company and its related case against Jaguar Land Rover North America, Judge Richard G. Andrews recently granted the defendants’ motions for summary judgment of invalidity based on anticipation.  C.A. Nos. 12-1284-RGA, 12-1285-RGA (D. Del. Jan. 21, 2015).  The patent-in-suit is U.S. Patent No. 6,842,677, entitled “Vehicle User Interface System and Method.”  Defendants argued anticipation based on the prior sale of the 2001 Mercedes-Benz E-Class.  Id. at 3.  The only disputed issue was the construction of one term (“page”), as plaintiff conceded that if the Court adopted defendants’ construction, then the patent-in-suit was anticipated by this prior art reference.  Id. at 5.  Having adopted defendants’ construction, id. at 10, the Court concluded that the reference was anticipatory and granted defendants’ motion.  Id. at 11-12.

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Judge Andrews recently denied Plaintiffs’ motion to modify a protective order in order to permit Plaintiffs to use expert reports from the District Court litigation (that had already proceeded to trial) in inter partes review proceedings pending before the Patent Trial and Appeal Board.  Novartis Pharms. Corp. v. Noven Pharms., Inc., C.A. No. 13-527-RGA (D. Del. Jan. 9, 2015).  Plaintiffs argued that good cause existed to modify the protective order so that Plaintiffs could demonstrate inconsistencies in the expert’s opinions.  Judge Andrews disagreed finding that Plaintiffs:

had motivation to demonstrate inconsistencies in the opinions of [the expert] in the trial held before me, and, based on the citations in Plaintiffs letter, did so, or, at least, tried to do so. I do not understand, given the representation that the trial transcript can be used in the IPR, and that [the expert] will soon be deposed and can presumably be further questioned about whether anything he said at trial is inconsistent with his current invalidity analysis (which, I gather, has not changed), why his infringement report is necessary for justice to be had.

Furthermore, Judge Andrews found defendant’s confidentiality concerns to be legitimate and not worth the risk considering Plaintiffs’ “minimal” need for using the expert reports in the IPR.

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At the summary judgment stage of an ongoing patent infringement action, Judge Richard G. Andrews has found a patent related to “a computer-aided learning system” invalid under 35 U.S.C. § 101 for claiming ineligible subject matter. The patent at issue, U.S. Patent No. 6,688,888, as described in its abstract and quoted by Judge Andrews, covered:

A computer-aided learning method and apparatus based on a super-recommendation generator, which is configured to assess a user’s or a student’s understanding in a subject, reward the user who has reached one or more milestones in the subject, further the user’s understanding in the subject through relationship learning, reinforce the user’s understanding in the subject through reviews, and restrict the user from enjoying entertainment materials under certain condition, with the entertainment materials requiring a device to fulfill its entertainment purpose. The generator does not have to be configured to perform all of the above functions.

IpLearn, LLC v. K12 Inc., C.A. No. 11-1026-RGA, Memo. Op. at 3 (D. Del. Dec. 17, 2014).

Judge Andrews explained that the novelty of the invention at issue was the use of computers. Examining the patent specification, His Honor observed: “Three things are noteworthy about this passage. First, the educational practices were described as being ‘decades’ old. Second, the educational testing practices that the inventors considered to be desirable were all well-known, as evidenced by the inventors’ description of the undesirable practices as being ‘typical’ and ‘usual.’ Implicit in the inventors’ recitation is that the better practices were known, but rarely used. Third, the solution is described as ‘[add] computers.’” Id. at 9.

Judge Andrews first found that the patent claims were directed to the abstract idea of “instruction, evaluation, and review.” Id. at 9-12. The asserted claims, he observed, “follow several steps directed at the abstract idea of instruction, evaluation, and review. More specifically, the steps are an abstraction, addressed to fundamental human behavior related to instruction, which is apparent when the steps are summarized without their generic references to computers and networks: 1) accessing a learner’s test results, 2) analyzing those test results, 3) providing guidance on weaknesses, 4) generating a report on two or more subjects to be shared with others, 5) considering the learner’s preferences, 6) allowing access to areas of a subject on the Internet, 7) providing an identifier for a learner, 8) storing the learner’s materials, and 9) allowing a search of those materials. None of these steps taken individually, or taken collectively, is sufficiently concrete. As a whole, they represent an abstract idea of conventional everyday teaching that happens in schools across the country. While there are limitations, they do not save the claims from being directed at an abstract idea.” Id. at 11. Judge Andrews continued: “the ‘888 patent’s Background section begins, ‘[t]he present invention relates generally to learning and more particularly to using a computer to enhance learning.’ Such subject matter seems precisely the building blocks of ingenuity the Supreme Court in Alice Corp. was so concerned about inhibiting. Instructing students, evaluating those students, and providing methods to review their progress are concepts that have probably existed as long as there has been formal education.” Id. at 11 (internal citations omitted).

Judge Andrews then turned to whether the “method outlined in the patent is sufficiently transformative of the abstract idea to make it patent eligible.” Id. at 11-14. Although the asserted claims did contain limitations, Judge Andrews found that “none are sufficient to ensure that the claims amount to ‘significantly more’ than patenting the abstract idea of instruction, evaluation, and review. Nor do they possess inventive concepts to transform the abstract idea.” For example, “[g]enerating learning materials, allowing diagnostic testing, and allowing a learner to search an area for material on the learner’s weaknesses are not meaningful limitations.” Id. at 12.

Judge Andrews used the following hypothetical to illustrate his point:

An elementary student is taught multiplication tables. She takes a test, and her results are graded (or “accessed”) by her teacher. The teacher analyzes the student’s test results against a grading rubric to determine the student’s weaknesses. The teacher provides guidance to the student about her weaknesses. The teacher puts together a progress report on the student’s multiplication tables, highlighting the student’s most recent test, perhaps identifying weaknesses with multiples of 6 and 11. This progress report is shared with others, perhaps in a parent-teacher conference. The teacher takes into consideration the student’s preference for math games over timed pop quizzes. The student is allowed to access flash cards (“materials”) on her weak multiples, which are kept in a file cabinet in her classroom. Using the student’s first and last name as an identifier, the teacher stores the student’s materials in a file. Her parents can also request to see her file by telling the teacher her name. This is the kind of hypothetical that could happen every day in elementary schools in this country. Allowing the claims at issue would simply inhibit fundamental educational instruction and the building blocks of human ingenuity. The fact that computers, networks, the Internet, computer readable medium, or computer program code figure into [the] claims . . . and the dependent claims, does not save them. . . . As a thought experiment, if these generic terms are excised, the claims preempt the most fundamental aspects of educational instruction with teachers and testing.

Id. at 13.

Judge Andrews also provided a few interesting indications of what information he found useful to his section 101 analysis, noting that it “is clear that a number of district courts are grappling with section 101 issues after Alice Corp. v. CLS Bank International, 134 S. Ct. 2347 (2014). With the exception of Ultramercial, Inc. v. Hulu, LLC, 2014 WL 5904902 (Fed. Cir. Nov. 14, 2014), however, the Court found most of this additional authority [from district courts and the Federal Circuit] not entirely relevant or on-point.” Id. at 2 n.1.

Judge Andrews also noted: “In a recent concurrence [in Ultramercial], Judge Mayer wrote that section 101 eligibility is a ‘threshold question,’ ‘the primal inquiry, one that must be addressed at the outset of litigation,’ explaining that the determination ‘bears some of the hallmarks of a jurisdictional inquiry.’ The Court is not certain whether Judge Mayer’s opinion is a correct statement of the law for all cases but believes it is instructive in this case. IpLearn has asserted that K12 must provide evidence to support the contention that the claims at issue are abstract ideas. Because section 101 determinations are questions of law, and a threshold inquiry, and because every judge and lawyer has firsthand experience with instructional methods, this Court does not believe it necessary that K12 proffer evidence that the type of instruction and testing outlined in the claims is time-honored.” Id. at 8 n.6 (citations omitted).

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