Articles Posted in Richard G. Andrews

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Judge Andrews recently considered defendants’ motion for leave to file an amended answer to add an inequitable conduct defense.  Unimed Pharms., LLC, et al., v. Perrigo Co., et al., C.A. No. 13-236-RGA (D. Del. July 23, 2014).  The proposed amended answer essentially alleged that the inventors and attorneys made inconsistent statements to the PTO during prosecution and to the Court during litigation.  Id. at 2.  Judge Andrews evaluated the allegedly inconsistent statements and found that they merely reflect different conclusions resulting from the application of different legal standards, but, in any event, defendants failed to demonstrate that the statements “support a reasonable inference by any particular individual of specific intent to deceive.”  Id.  Judge Andrews noted that “[e]ven if the inventors and/or applicants were aware of these ‘inconsistent’ statements, I do not find it plausible that they would recognize that the statements were inconsistent, and knowing that, intentionally fail to point them out, with intent to deceive the PTO.”  Id.  Judge Andrews also noted that while the amended answer painted “a detailed picture of the alleged inequitable conduct, . . . length (about 55,000 words) is not a substitute for clarity.”  Id.

 

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Judge Richard G. Andrews recently considered Sprint’s motion for summary judgment that Comcast’s U.S. Patent No. 6,873,694 is invalid under 35 U.S.C. § 101 for lack of patentable subject matter.  Comcast IP Holdings I, LLC v. Sprint Communications Company L.P., et al., C.A. No. 12-205-RGA (D. Del. July 16, 2014).  The  only asserted claim at issue was claim 21, which claimed:

A telephony network optimization method, comprising:

receiving a request from an application to provide to the application service on a
telephony network; and

determining whether a telephony parameter associated with the request requires
acceptance of a user prompt to provide to the application access to the telephony
network.

Id. at 4.  Judge Andrews agreed with Sprint that “Claim 21 is ‘drawn to the abstract, and fundamental, idea of a conditional decision.’”  Id. at 5. Judge Andrews rejected Comcast’s argument that “‘[t]he claims do not simply recite making a conditional decision, but are narrowly directed to overcoming a specific problem of telephony networks by using telephony parameters to optimize bandwidth allocation on such networks.’”  Id.

Judge Andrews next determined whether the claim contained sufficient limitations restricting the otherwise abstract idea to a particular application.  Id. at 7.  Comcast argued that the claim contained such restrictions because claim 21 is “confin[ed] to the field of telephony.”  Id. at 8.  Judge Andrews disagreed:

Claim 21 merely covers the application of what has for a long time been conducted solely in the mind to modern, computerized, telephony networks. For instance, rather than an “application” requesting “service,” we can think of a “person” requesting a “telephone call.” The “person” makes a request through a telephone operator. The operator then looks to a “telephony parameter” associated with that request. Let us assume that the parameter is whether the call is “collect” or whether it is a standard call. Ifthe call is a standard call, the operator puts it through without a user prompt.2 I f the call is collect, the operator “determines” that the recipient will be asked to accept the charges. The operator has “determined” whether a “request” requires “acceptance of a user prompt.” The only difference is the identity of the requester. Here, the generic references to a telephony network and an application are not sufficient to render the claim patentable.

Id. at 9.

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In a recent memorandum opinion, Judge Richard G. Andrews denied defendants’ motion for summary judgment, requesting that the court bar plaintiff’s claims in view of a license and estoppel. Comcast IP Holdings I, LLC v. Sprint Communications Co., et al., C.A. No. 12-205-RGA (D. Del. July 15, 2014). Specifically, defendants contended that they had a license to the asserted patent, either express or implied, “via a licensing agreement between Hewlett-Packard (‘HP’), the original assignee of the patent, and Lucent, the predecessor to Alcatel Lucent,” which manufacturers “many of the devices which [defendants] use[], and which [plaintiff] accuses of performing the patented methods.” Id. at 1, 3.

Judge Andrews denied defendants’ motion for summary judgment, finding that defendants failed to prove that the license at issue covered the asserted patent. Id. at 3. First, Judge Andrews found that the license did not expressly cover the asserted patent, as defendants failed to show that the patent “issued or [had] enforceable rights in any country of the world from an application filed on or before January 31, 2001,” as required by the license agreement. Id. at 3-5. In reaching that determination, Judge Andrews explained that the phrase “issued from” was not intended to include divisional or continuation applications, and that the “enforceable rights in any country” clause referred to “patents which are issued not in any country, but by a transnational body such as the European Patent Office.” Id. at 4-5.

Judge Andrews next found that an implied license, which arises under legal estoppel, did not cover the asserted patent. Specifically, Judge Andrews explained the license agreement “contains a ‘clear indication’ not to extend the license to continuation patents via an implied license.” Id. at 8. Judge Andrews thus concluded that because “the license does not cover continuation patents, [it] therefore does not estop [plaintiff] from asserting the [asserted] patent against [defendants].” Id.

Judge Andrews also addressed whether it would be appropriate to grant summary judgment in favor of plaintiff without plaintiff having filed such a motion. Id. at 8-9. Judge Andrews concluded that while the “Federal Rules of Civil Procedure allow me to grant summary judgment sua sponte, . . . they do not require me to do so.” Id. at 9. Given that the record was not “sufficiently developed,” Judge Andrews “decline[d] to grant summary judgment in [plaintiff’s] favor.” Id. at 8-9.

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In Pragmatus Telecom, LLC v. AT&T, Inc., et al., C.A. No. 12-1533-RGA (D. Del. July 7, 2014), Judge Andrews recently ordered each defendant to reduce the number of prior art references it was asserting to 5 per patent.  The plaintiff was also ordered to reduce the number of claims it was asserting to 8.  In a handwritten footnote, Judge Andrews explained that “upon a showing of diligence, and with due consideration for prejudice, a party may seek to modify this order for good cause shown.  A failure to seek such modification will constitute acquiescence to the limits contained in this Order.”

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Judge Andrews has issued his memorandum opinion construing disputed terms of four patents related to logic and memory circuits for integration into high density integrated circuit chips. In 2011, the plaintiffs, HSM Portfolio and Technology Properties Limited, filed an infringement suit against eighteen defendants, of which eight remain in the case. After oral argument on June 5, Judge Andrews issued his construction of the following terms on June 17:
- “the N-channel field effect transistor in each inverter stage having a channel width which is less than a [predetermined factor] times the width of the N-channel of the immediately preceding inverter stage”
- “wherein the N-channel field effect transistor in the first inverter stage has a channel width which is less than said [predetermined factor] times the width of the at least one N-channel field effect transistor in the logic gate”
- “[the P-channel field effect transistor in each inverter stage having a channel which is wider than the channel of the corresponding N-channel field effect transistor of each inverter stage by ƞ], the ratio of electron mobility in the N-channel field effect transistors to hole mobility in the P-channel field effect transistors”
- “[A Field Effect Transistor (PET) Differential Latching Inverter (DLI) circuit] for sensing signals on first and second bit lines of a memory”
- “first and second bit lines of a memory”
- “first bit line” / “second bit line”
- “an inverter transfer function … which is identical when said first and second inverters turn on and turn off”
- “the outputs of said first and second complementary FET inverters producing output signals for said DLI circuit”
- “for receiving [a logic input signal/a clock input signal]”
- “A field effect transistor (FET) logic circuit comprising”
- “the product of the carrier mobility and the ratio of channel width to length of the inverter FET of said first conductivity type being [substantially greater than] the product of the carrier mobility and the ratio of channel width to length of the inverter FET of said second conductivity type”
- “for receiving [logic input signals]”
HSM Portfolio LLC, et al. v. Fujitsu Limited, et al., C.A. No. 11-770-RGA, Memo. Op. at 1-15 (D. Del. June 17, 2014).

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Judge Richard G. Andrews recently granted plaintiff St. Jude’s motion to dismiss defendant Volcano Corp.’s inequitable conduct counterclaim and affirmative defense. St. Jude Medical v. Volcano Corp., C.A. No. 12-441-RGA (D. Del. June 11, 2014). Volcano alleged that the named inventors on the patent-in-suit, as well as the prosecuting attorney, committed inequitable conduct by “providing an incomplete and misleading representation to the PTO regarding the capabilities of Volcano’s prior art WaveMap system.” Id. at 2. Specifically, Volcano asserted that the inventors knew, based on their familarity with certain documents, that the prior art system possessed a capability embodied in the patent-in-suit. Id. at 2-3. Volcano alleged that the inventors did not disclose these documents, which included owner’s manuals and brochures. Id. at 3. Volcano alleged that the prosecuting attorney was also aware of these documents and even submitted some of the documents during proseuction of a separate patent. Id.

As to the prosecuting attorney, Judge Andrews found that Volcano failed to plead adequate facts to allow the Court to “reasonably infer” that the attorney withheld documents with the specific intent to deceive the PTO. Id. As to the inventors, Judge Andrews found that Volcano failed to “sort out the specific facts and attribute them to a particular individual.” Id. at 4. Volcano was granted leave to amend, as to the inventors, and instructed to: (1) “individually identify whose actions constitute affirmative misconduct or were contrary to the duty of candor, and material to the issuance of the [patent in suit], on particular dates, with the intent to deceive the PTO”; and (2) “plead facts explaining why the omitted references are not cumulative of other prior art reviewed during prosecution[.]” Id.

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In a recent memorandum order, Judge Richard G. Andrews denied a motion for reconsideration of a summary judgment of non-infringement ruling.  Robocast, Inc. v. Apple Inc., C.A. No. 11-235-RGA (D. Del. June 11, 2014).  The plaintiff argued that the Court made a “factual oversight” in rendering its decision, but Judge Andrews disagreed, explaining, “[t]he entirety of the argument is one sentence buried in a footnote. . . . I do not agree that a conclusory statement buried in a footnote is sufficient to constitute an ‘overlooked argument.’”  Regardless, the Court found that summary judgment would have been appropriate even had the argument been properly raised, so the motion for reconsideration was denied.

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In Pragmatus Telecom LLC v. Aspect Software Inc., C.A. No. 14-359-RGA (D. Del. June 13, 2014), Judge Richard G. Andrews granted-in-part defendant’s motion to dismiss the complaint.  The Court dismissed all claims of indirect and willful infringement without prejudice, and also denied the plaintiff’s request for leave to amend “without prejudice to consideration of any subsequently filed motion.”  Id. at 2.

The Court noted that “[t]o describe the complaint as 98% boilerplate would not be unfair,” given that each count used the exact same language except for the different patents asserted in each.  Id. at 1.  The Court further observed that the plaintiff “could have been more specific” in its identification of accused products, given that there was additional public information available about them.  Id.  However, the Court found plaintiff’s description “adequate” enough to survive dismissal of the direct infringement claims.  Id.

However, because the allegations of indirect infringement provided no detail as to when or what kind of written notice of infringement the defendant received, the Court dismissed these claims.  Id. at 1-2.  As the willfulness allegations were “similarly deficient,” the Court dismissed them as well.  Id. at 2.
While plaintiff had requested leave to amend, the Court did not “know what facts Plaintiff could allege.  As Defendant points out, Plaintiff has not asserted any additional facts that it could plead.”  Id.  While recognizing that Rule 15 allows amendment “when justice so requires,” this was a situation where the Court could not conclude that “justice requires anything in the absence of a proposed amended complaint,” particularly where “Plaintiff could have amended as a matter of course . . . after Defendant’s motion was filed” but did not.  Therefore, the Court denied the request for leave to amend, but noted that it would “consider” allowing amendment if plaintiff filed a motion to amend.  Id.
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Judge Richard G. Andrews recently granted in part a motion to dismiss, finding that the complaint’s allegations of contributory infringement, joint infringement, willful infringement and indirect infringement were insufficient under Fed. R. Civ. P. 12(b)(6). MIH International LLC v. Banyan Health Care Products Inc., C.A. No. 13-1330-RGA (D. Del. May 28, 2014). The Court denied the motion to dismiss direct infringement claims on the basis that the complaint complied with Form 18, but encouraged the parties to work together to narrow their dispute, and to exchange documents that might help lead to a quick resolution of the dispute since, the Court inferred, the damages at stake were very low and based on only 6 months of infringement. Based on the low damages at stake, Judge Andrews expressly invited the parties to request early mediation if it would be helpful. Id. n. 1, 2.

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In EON Corp. IP Holdings, LLC v. Flo TV Inc., et al., C.A. No. 10-812-RGA (D. Del. May 27, 2014), Judge Richard G. Andrews denied defendant FLO TV Inc.’s (“FLO TV”) motion for attorney’s fees, which followed the Court’s grant of summary judgment in favor of defendants based on the court finding eight computer-implemented means-plus-function terms in asserted U.S. Patent No. 5,663,757 (“the ’757 Patent”) indefinite. Id. at 1-2.

Judge Andrews first discussed the Supreme Court’s recent decisions finding the Federal Circuit’s test for attorney’s fees under 35 U.S.C. § 285 too rigid. As Judge Andrews explained, the Supreme Court defines an “exceptional case” under § 285 as “simply one that stands out from others with respect to the substantive strength of a party’s litigating position (considering both the governing law and the facts of the case) or the unreasonable manner in which the case was litigated.” (citing Octane Fitness, LLC v. ICON Health & Fitness, 134 S. Ct. 1749 (2014) and Highmark Inc. v. Allcare Health Mgmt. Sys., Inc., 134 S. Ct. 1744 (2014)) (emphasis added). Judge Andrews further explained that the Supreme Court’s more flexible standard permits district court judges to exercise their discretion on case-by-case basis and to consider the totality of the circumstances when considering an award of attorney’s fees. Judge Andrews found that neither definition of an “exceptional case” set forth by the Supreme Court was satisfied. Id. at 2-3.

Specifically, Judge Andrews found that EON did not litigate the case unreasonably. Id. at 4. According to Judge Andrews, the “main thrust of FLO TV’s argument appears to be that EON should have dropped the case, or entered into a settlement, because the potential recovery from FLO TV would be dwarfed by the costs of litigation.” Id. Judge Andrews had outlined in detail how plaintiff EON Corp. IP Holdings, LLC’s (“EON”) prospect of “obtaining a large monetary judgment from FLO TV steadily declined as the case progressed.” Id. at 1-2. Nevertheless, Judge Andrews found FLO TV’s argument to fail for at least two reasons. First, arguments by both sides “regarding the size of the potential recovery [were] speculative and [could not] form the basis for an award of attorney’s fees,” given that liability and damages were bifurcated, and no discovery had been conducted with respect to damages. Id. at 4. Second, Judge Andrews noted that the Court is “unaware of any de minimis exception for infringement.” Id. That is, “[i]t cannot be the case that a plaintiff may be subjected to monetary sanctions for failing to drop a case against a defendant if the cost of litigation exceeds the potential recovery.” Id. Judge Andrews did leave open the possibility, however, that “a party’s approach to settlement [may be] so unreasonable as to justify an ‘exceptional’ finding.” Id.

While it did not appear that FLO TV made any arguments to this end, Judge Andrews also noted that “[t]he substantive strength of EON’s case was not so conspicuously deficient as to justify the award of attorney’s fees.” Id. at 3. As Judge Andrews explained, the case “turned on a complex and evolving area of law-the construction of computer-implemented means-plus-function terms,” and that the decision “was not an easy one.” Id. In this regard, Judge Andrews noted that the Court “heard oral argument, scheduled a supplemental evidentiary hearing, and ordered post-trial briefing on the issue.” Id. Additionally, the fact that EON is appealing the Court’s decision to the Federal Circuit suggested to Judge Andrews that EON “maintains faith in the strength of its position.” Id.

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