Articles Posted in Richard G. Andrews

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In a recent Order, Judge Richard G. Andrews denied in part defendant’s motion to redact a hearing transcript. M2M Solutions LLC v. Motorola Solutions Inc., C.A. No. 12-33-RGA (D. Del. Feb. 2, 2016). Judge Andrews granted the motion with respect to portions of the transcript regarding profits, third party license agreement royalties, and the index, but denied the remainder of the motion. Judge Andrews was unpersuaded that the “disclosure of the other information will work any clearly defined and serious injury to [defendant].”

Judge Andrews’ decision was guided by Mosaid Tech Inc. v. LSI Corp., 878 F. Supp. 2d 503 (D. Del. 2012) and the factors set forth in Pansy v. Borough of Stroudsburg, 23 F.3d 772 (3d Cir. 1994). Judge Andrews explained as follows:

Simply because the parties have designated the information as confidential, highly confidential, confidential – attorneys’ eyes only, etc., under a protective order is irrelevant to the present issue, that is, whether the information should be redacted from a judicial transcript. There is not much public interest in the information that is exchanged in discovery. Once, however, it is disclosed in a judicial proceedings, it is in the public interest to be able to understand the proceedings before a judge, and redaction of the transcript hinders that public interest. Nevertheless, there are things that might be appropriately sealed in a public proceeding, such as the pricing terms in license agreements, some other non-public financial information, trade secrets, and other proprietary technology. Information in a transcript may hint at some of these things without actually threatening any “clearly defined and serious injury.” Things that typically weigh against the necessity of sealing include that the information is old, or general, or already in the public record, and was relevant to the judicial proceeding. Further, if there is a need for redactions, the proposed redactions should be as narrow as possible.

Judge Andrews also noted that defendant had not “submitted an affidavit/declaration in support of its motion.”

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Judge Andrews recently denied a patent infringement Plaintiff’s opposed motion for a continuance of trial, suggested that his forthcoming pre-trial rulings would not affect the trial sufficiently to justify a continuance, and encouraged the parties to work cooperatively to resolve scheduling issues. As His Honor wrote, “[t]rial is scheduled for April 11, 2016, more than two months from now. It has been on the schedule, without objection, since March 17, 2015. . . . Thus, whatever logistical difficulties Plaintiff’s counsel has, they have existed for more than ten months, and it is too late to raise them now. I also note that lead counsel’s firm’s website states that the firm has ‘nearly 200 attorneys in our IP Department.’ If help is needed, resources appear to be available.” M2M Solutions LLC v. Enfora Inc., et al., C.A. No. 12-32-RGA, Memo. Or. at 1 (D. Del. Feb. 3, 2016).

Judge Andrews continued, “I agree with Defendants that [an expert’s] work schedule does not take precedence over the trial date. I also note that Plaintiff does not seem to be trying very hard to come up with an alternative. For example, perhaps she could give a trial deposition while she’s here for [a related] case. . . . In addition, I note that inventor testimony is optional. I’m sure counsel can think of some other alternatives to postponing the trial.” Id. at 2.

His Honor also noted: “I would expect counsel will be able to make informed decisions about what is likely [regarding pretrial issues], and, in any event, assume that I will decide the summary judgment issues in such a way that we will have a trial on infringement and invalidity. Daubert issues are likely to be resolved similarly to those in, the [related] case, which should be forthcoming shortly. I do not expect to schedule any hearings or arguments on the remaining issues in this case. . . . [And] the parties should meet and confer . . . and decide on a schedule to exchange supplemental damages reports.” Id. at 1-2.

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Judge Richard G. Andrews recently granted defendant Personalized Media Communication, LLC’s motion to dismiss for lack of personal jurisdiction.  Funai Electric Co., Ltd. v. Personalized Media Communication, LLC, C.A. No. 15-558-RGA (D. Del. Jan. 29, 2016).  Judge Andrews also vacated his prior order demanding defendant’s counsel show cause why their pro hac vice status should not be revoked for saving defendant’s better argument for its reply brief in support of its motion.  In its motion, defendant argued that all of its operations “are conducted in either Texas or Virginia”; and that it has little to no connection to Delaware:

PMC does not regularly conduct business in Delaware. It is not registered to do business in Delaware, nor does it have a registered agent authorized for receipt of service in Delaware. PMC has no offices, employees, agents, real estate, or other assets in the state, nor does it own, operate, or manage any entity located or doing business in Delaware. In addition, PMC does not manufacture or sell any products in Delaware or to Delaware residents.

Id. at 2.  Funai argued that personal jurisdiction was proper because defendant consented to jurisdiction, having “previously filed two actions in this court” involving patents that claim priority to the same patent applications as the patents-in-suit.  Id. at 2-3.  Judge Andrews disagreed because defendant’s prior suits were not brought against Funai.  Id. at 5.  In short, there was no “logical relationship” between the parties.  Id. at 4 (“Under Delaware law, a party can be considered to have consented to jurisdiction by ‘instituting another, related suit’ that has some ‘logical relationship’ to the present suit.” (quoting Foster Wheeler Energy Corp. v. Metallgesellschaft AG, 1993 WL 669447, at *1, 4 (D. Del. Jan. 4, 1993)).

Funai also argued that specific jurisdiction was proper because defendant’s filing patent infringement actions in Delaware constitute transacting business in Delaware, and that the claims at issue here “arise out of” those earlier actions.  Id. at 5-6.  Again, Judge Andrews disagreed.  Defendant’s prior actions “involved different parties and different patents” and a declaratory judgment plaintiff’s action only arises out of defendant’s prior filing of suit if those prior actions were filed to enforce the same patents at issue.  Id. at 6-7.

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Judge Andrews recently issued a claim construction opinion in a case between DuPont and Unifrax involving “composite flame barrier laminate for thermal and acoustic blankets used in aircraft structures.” E.I. DuPont de Nemours & Co. v. Unifrax I LLC, C.A. No. 14-1250-RGA, Memo. Op. at 2 (D. Del. Jan. 13, 2016). Among various disputed constructions, two issues are of particular interest. First, the parties disputed whether the term “laminate,” which appears in the preamble of claim 1 of the patent-in-suit, should be seen as limiting. Judge Andrews found that “laminate” is in fact limiting because it “gives ‘life, meaning, and vitality’ to the claim and imparts a structure that is not present in the recitation of the layers in the body of the claim. The patent repeatedly refers to the invention as a laminate [and the] claim body does not disclose a complete structure.” Id. at 4-6.

Second, the parties disputed whether the phrase “wherein the inorganic refractory layer of (iii) comprises platelets in an amount of 100% by weight with a dry areal weight of 15 to 50 gsm and a residual moisture content of no greater than 10 percent by weight” rendered the claim at issue indefinite. Judge Andrews decided that the indefiniteness dispute was not suitable for resolution at the claim construction stage: “That the claim admittedly does not set forth a requirement with respect to what percent of the refractory layer must constitute platelets or what the total weight of the layer is may make the claim broad. It does not, however, make the claim internally inconsistent. Additional evidence would be necessary to determine whether the claim informs one of skill in the art, with reasonable certainty, about the scope of the invention. Whether the disputed term renders the claim indefinite is therefore not amenable to resolution at this time.” Id. at 24-27.

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In Vehicle Interface Technologies, LLC v. Jaguar Land Rover North America, LLC, C.A. Nos. 12-1285-RGA & 14-339-RGA (D. Del. Dec. 28, 2016), Judge Richard G. Andrews concluded that the case was exceptional, but requested additional information from the parties in order to assess the appropriate time period for calculating fees.

The Court concluded that Plaintiffs’ attempt to assert seven additional products at the close of fact discovery supported a finding that the case was exceptional due to improperly motivated litigation conduct, given that the new contentions were largely based on public information that had long been available to Plaintiffs prior to their assertion of the additional products. Id. at 4-5. The Court also found that a portion of plaintiffs’ claim construction position, in their opposition to Defendants’ motion for summary judgment of anticipation based on a certain reference, had been objectively baseless, which also supported an exceptional case finding. See id. at 5-6.

Having found the case exceptional, the Court then determined that Defendants should be awarded fees from “the date [Plaintiffs] had full notice that its case was objectively baseless in light of” that same anticipatory reference, which had been disclosed in Defendants’ initial invalidity contentions. Id. at 9. The Court concluded that, until that time, there was a reasonable basis for Plaintiffs to pursue the case. But the Court requested additional information from the parties as to “whether the invalidity contentions narrowly focused on the [key reference] as anticipatory prior art or listed it among voluminous contentions,” in order for the Court to assess “at what point after [service of those contentions Plaintiffs] should have realized that its infringement claims were objectively baseless.” Id. at 9. The Court also requested that the parties “comment upon the significance of the fact that” earlier references in discovery to (what appeared to be) the key anticipatory art differed from the Court’s references in deciding summary judgment (i.e., earlier references were “2000 Mercedes ” whereas later references were “2001 Mercedes”). Id. at 9-10.

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In a recent memorandum opinion, Judge Richard G. Andrews denied motions for summary judgment of non-infringement and invalidity, but granted a motion for summary judgment of no willful infringement and no infringement by products shipped abroad.  M2M Solutions LLC v. Motorola Solutions, Inc., et al., C.A. No. 12-33-RGA (D. Del. Jan. 6, 2016).  The plaintiff’s willfulness claim was based entirely on the post-litigation assertion of what the plaintiff characterized as objectively unreasonable defenses.  Judge Andrews explained, “Plaintiff presents no evidence of pre-suit knowledge or conduct tending to establish objective recklessness.  Plaintiff simply argues the merits of Defendants’ post-suit defenses.  It has therefore not provided the necessary clear and convincing evidence to meet the objective first prong of Seagate.”  Id. at 35.  In a footnote, Judge Andrews added that “Defendants’ potentially dispositive claim construction arguments were reasonable, which in itself also prevents Plaintiff from proving the objective prong of Seagate.”  Id. n. 14.

Judge Andrews also granted a motion for summary judgment that offers made in the United States for foreign sales of infringing products, absent evidence that those infringing products ended up being imported into the United States, could not be the basis for a finding of infringement.  The Court explained that the Plaintiff “offers no evidence through which a jury could quantify, for purposes of calculating damages, how many of those products shipped abroad actually made it into the United States, if any. . . . Rather than providing an estimate of how many of these products enter the U.S. based on some reasonable projection grounded in facts, Plaintiff seeks to include all products shipped abroad in its damages calculation without proving that a single product shipped abroad actually made it into the U.S. . . . [B]ecause Plaintiff has failed to offer a shred of evidence that a single product shipped abroad, let alone all of them, made it into the U.S., the presumption against extraterritorial application of U.S. patent law must govern.”  Id. at 47.

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In a recent Memorandum Order, Judge Richard G. Andrews considered defendants’ request to “show that the suboxone film has not achieved commercial success.” Reckitt Benckiser Pharmaceuticals Inc., et al. v. Watson Laboratories Inc., et al., C.A. No. 13-1674-RGA (D. Del. Dec. 15, 2015). Judge Andrews first noted that “Plaintiffs are not claiming commercial success, but are asserting other secondary factors of nonobviousness.” Judge Andrews also noted that “[t]he absence of objective evidence is a neutral factor.” Judge Andrews explained that “marketplace failure could, under the right circumstances, be a ‘negative factor,’” as it “could rebut (in a roundabout way) ‘long-felt need.’” While Judge Andrews “was doubtful that Defendants [can] show marketplace failure,” or “even have a good shot at making commercial results a neutral factor,” Judge Andrews nevertheless found that “Defendants have to decide how to allocate their time. “ Accordingly, Judge Andrews concluded that “if Defendants believe the proffered . . . evidence [regarding commercial success] is a good use of their time, I will allow it.” Judge Andrews reached this conclusion despite the fact that “Plaintiffs unilaterally withdrew their commercial success expert, and Defendants’ expert was to respond to that now foregone evidence.” Judge Andrews did “not see Plaintiffs being unfairly prejudiced by allowing Defendants to put on their evidence.”

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In Reckitt Benckiser Pharmaceuticals Inc., et al. v. Watson Laboratories, Inc., et al., C.A. No. 13-1674-RGA; v. Par Pharmaceutical, Inc., et al., C.A. No. 14-422-RGA (D. Del. Dec. 16, 2015), Judge Richard G. Andrews granted-in-part Plaintiffs’ motion in limine to preclude Defendants from offering evidence at trial concerning the an inter partes review of a patent-in-suit.

Defendants were precluded from offering “the PTAB’s factual finding, decisions, and legal conclusions,” but would be allowed to offer opposing party statements admissible under FRE 801(d)(2).  Id. at 2.  The remainder of documents at issue appeared to be inadmissible hearsay, and the Court thus advised they should not be offered into evidence absent a exception.  Id.  The Court would permit Defendants at trial to lay a foundation for their expert to rely on a certain declaration from the proceedings (regarding another’s pH measurement), explaining that whether the expert could rely on such data was a factual question that was not amenable to resolution before trial.  Id.

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Special Master Seville recently decided several discovery disputes arising between plaintiff Callwave and defendants Google and Broadsoft in several related litigations pending before Judge Richard G. Andrews. Callwave Communications, L.L.C. v. AT&T Mobility LLC, et al., C.A. Nos. 12-1701-RGA, 12-1702-RGA, 12-1704-RGA, 13-711-RGA (D. Del. Dec. 17, 2015).

First, Special Master Seville vacated a prior order denying Callwave’s request regarding the production of an expert’s report and testimony from a prior litigation.  Id. at ¶ 1-2.  Special Master Seville found that the report and testimony related to “opinions on prior art asserted by Google in this litigation and are therefore relevant.”  Id. at ¶ 2.

Special Master Seville then considered Callwave’s motion to strike defendants’ expert and defendants’ counter motion to strike Callwave’s new validity opinions and portions of the reply report of its expert.  Id. at ¶ 4.  After a review of the relevant factors set forth in Meyers v. Pennypack Woods Home Ownership Ass’n, 559 F.2d 894, 904-05 (3d Cir. 1977), Special Master Seville denied both motions.  Special Master Seville found no prejudice that could not be cured, no disruption of a trial date (trial was not scheduled), and no bad faith or intentional conduct.  Id. at ¶ 10-12.

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In a recent Order, Judge Richard G. Andrews denied defendants’ motions to dismiss in three related actions. Blackbird Tech LLC v. LEDWholesalers.com Inc. et al., C.A. Nos. 15-60, 15-61, 15-63-RGA (D. Del. Dec. 3, 2015). As Judge Andrews explained, “[t]he main thrust of the motions is to assert that the complaints do not plausibly assert infringement, because they attach a copy of the patent and web shots of the accused products (which appear to be T8 LED tube lights), and it is clear that the pictured products cannot infringe any claim of the asserted patent.” Id. at 1-2. The parties disputed the meaning of certain claim terms, but Judge Andrews found that the “the terminology of the patent claim (while perhaps clear to a POSITA) is not presently clear to me,” and observed this action “seems like a poor candidate for resolution on a motion to dismiss.” Judge Andrew thus denied the motions to dismiss. Id. at 2.

However, Judge Andrews explained that “I am nevertheless concerned about whether I am allowing what might be frivolous litigation to go forward.” Id. at 2. Judge Andrews therefore directed plaintiff “to provide detailed claim charts to each of the three Defendants charting its infringement theories for all asserted claims against at least one of each Defendant’s accused T8 LED tube lights.” Id. at 3. Judge Andrews further directed “[t]he parties . . . to meet-and-confer after the claim charts are filed,” explaining that the parties should discuss, among other things, “whether they can jointly agree upon a way to present the case to me for early resolution.” Id. Judge Andrews ordered the parties to submit a joint status report three business days before the Rule 16 scheduling conference “regarding any agreements or proposals for a means for early resolution of these cases.” Id.

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