Articles Posted in Richard G. Andrews

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Judge Andrews recently granted a motion for summary judgment of invalidity of U.S. Patent No. 7,156,717, which relates to a finishing method for semiconductors. The crucial threshold question presented by the motion was whether the asserted prior art reference adequately incorporated by reference another piece of art. The asserted art, Sun, stated the following about the incorporated art, Litvak:

This [invention] is an improvement and expansion of the invention described in allowed U.S. patent application Ser. No. 08/122,207 of Herbert E. Litvak, filed Sep. 16, 1993, now U.S. Pat. No. 5,499,733. This earlier application is being expressly incorporated herein by this reference, and is referred to hereinafter as the “Prior Application.”

Semcon Tech, LLC v. Micron Tech., Inc., C.A. No. 12-532-RGA, Memo. Op. at 6-7 (D. Del. Aug. 17, 2015). Finding that this was an incorporation by reference, Judge Andrews explained “[i]t is hard to imagine what is required to incorporate something by reference if stating that it is ‘expressly incorporated herein by this reference’ does not suffice.” Id.

The plaintiff’s argument that the incorporation was insufficient was based on the alleged requirement that an incorporation “specify what particular material it is incorporating and where it may be found.” See Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000). Judge Andrews rejected this argument, relying instead on Ultradent Prods., Inc. v. Life-Like Cosmetics, Inc., 127 F.3d 1065, 1069 (Fed. Cir. 1997), which “accepted that one patent could incorporate another patent by reference and together be one piece of art for purposes of anticipation.” Id.

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Judge Andrews recently denied, without prejudice to renew, defendant’s motion to preclude plaintiff’s expert testimony.  Sanofi-Aventis U.S. LLC v. Eli Lilly and Company, C.A. No. 14-113-RGA (D. Del. Aug. 18, 2015).  Judge Andrews noted that because the upcoming trial is a bench trial, “[l]ive testimony and cross-examination are much more likely to result in a correct decision from me about whether the experts are giving appropriate scientific testimony[.]”  Id. at 1.  Judge Andrews instructed defendant to make an appropriate objection at trial to preserve its Daubert challenge.  Id. at 1-2.

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In a recent Memorandum Opinion Judge Richard G. Andrews denied defendants’ motion for judgment as a matter of law on non-infringement and damages, and motion for a new a trial. Comcast IP Holdings I, LLC v.  Sprint Communication Co., C.A. No. 12-205-RGA (D. Del. Aug. 10, 2015). As to the motion for JMOL, defendants’ first argued that “the jury’s verdict rendered three terms in the three asserted claims of the ‘008 patent superfluous, ‘call destination,’ ‘identifier of a second party,’ and ‘second party.’”  Id. at 5. Judge Andrews found, however, that there was substantial evidence to support the jury’s determination that each of these limitations was met. See id. at 5-10.  Judge Andrews also found that sufficient evidence “was offered for a jury to determine that the accused [technology] infringed the asserted claims of the ‘916 and ‘046 patent.”  Id. at 10. As to these patents, Judge Andrews observed that there was sufficient evidence “to find that the ‘parsing’ limitation has been met, particularly when considering [plaintiff’s expert’s] testimony.” Id. at 11. As to the damages award, Judge Andrews explained that plaintiff’s expert’s analysis “was not a ‘black box’ as Defendants argue, nor did she provide ‘no explanation’ for how she reached her figures.” Id. at 13. Judge Andrews observed that “Defendants are correct that [the expert] did not offer a mathematical formula for her result,” but “[t]hat does not mean that her opinion was not based on a sound methodology. The hypothetical negotiation to determine a reasonable royalty can involve some approximation.” Id. at 14. Judge Andrews further noted that “[t]he lack of a mathematical formula, when there is other analysis, cannot, alone, be grounds for excluding [the expert’s] methodology.” Id. at 14. Judge Andrews also denied defendants’ motion for a new trial, unpersuaded by defendants’ arguments as to the weight of the evidence and that plaintiff’s experts exceeded the scope of their reports. Id. at 16-17.

As to plaintiff’s motion for post-trial relief, Judge Andrews granted plaintiff nearly $1.7 dollars in prejudgment interest. Id. at 20.  The parties disagreed about whether prejudgment interest should be assessed from the time of the hypothetical negotiation in late 2006 or whether it should be calculated from the time of first infringement of each patent until judgment.” Id. at 18. Considering that each of the three asserted patents was found infringed, Judge Andrews determined that “the measure of damages must be from the time of the hypothetical negotiation to trial for all the asserted patents.” Id. at 18. Moreover, Judge Andrews found that “that the appropriate interest rate is the prime rate, compounded quarterly.” Id. at 20. Judge Andrews also granted post-judgment interest. Id. Judge Andrews finally found that plaintiff is entitled to an ongoing royalty, and granted plaintiff’ request for mediation to that end.  Id. at 21-22. Continue reading

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Judge Andrews recently considered post-trial motions after a jury found Comcast infringed all asserted claims of the patents-in-suit.  Sprint Commc’ns Co. L.P. v. Comcast IP Holdings, LLC, C.A. No. 12-1013-RGA (Aug. 7, 2015).  Comcast moved for judgment as a matter of law on the issue of infringement.  Comcast argued, among other things, that its accused networks “do not and cannot contain multiple, unique ring terminals-and thus do not infringe the asserted patent claims.”  Id. at 5.  Viewing the evidence in Sprint’s favor, Judge Andrews found that “a reasonable jury could not have concluded that a combination of interface cards meets the Court’s construction of ‘ring terminal.'”  Id. at 11.  Judge Andrews found that the testimony of Sprint’s expert was contradicted by the platform manuals.  Id.  Judge Andrews also found that the platforms in the accused networks share multiple rings, therefore a reasonable jury could not have found infringement.  Id. at 15.

In the alternative, Comcast also moved for a new trial arguing, among other things, that Sprint presented a new infringement theory based on expert testimony not previously disclosed.  Id. at 21.  Judge Andrews agreed.  Prior to trial, Comcast filed a motion in limine to preclude the expert’s testimony that “a single interface card is a ‘ring terminal'” because it was not disclosed in his expert report.  Judge Andrews reserved decision.  Id. at 23.  After Comcast renewed the argument post-trial, Judge Andrews found that Comcast was entitled to a new trial because Sprint’s concession at oral argument that “a single interface card is not the ring terminal” was in direct conflict with Sprint’s arguments at summary judgment and its expert’s testimony at trial.  Id. at 25.

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In a recent opinion, Judge Richard G. Andrews granted defendants’ motion to dismiss plaintiff’s claims of direct and indirect infringement.   M2M Solutions LLC v.  Telit Communication, C.A. No.  14-1103-RGA (D. Del. Aug. 5, 2015). As to plaintiff’s allegations of direct infringement, Judge Andrews observed that plaintiff’s decision to lump two defendants together in addressing its direct infringement claim cannot pass muster under Form 18, which also requires the identification of the accused product, process or method for each defendant. Indeed, Plaintiff’s complaint does not identify which particular defendant or defendants are responsible for which allegedly infringing products, process or method.” Id. at 6. Plaintiff argued that it was appropriate to group “Telit UK and Telit US under an umbrella term” based on “Telit UK’s public representations suggesting its actual control over Telit US.” Id. Judge Andrews found, however, that although “Plaintiff allege[d] the existence of a parent-subsidiary relationship” it failed to “present facts that demonstrate the parent’s effective control over the subsidiary.”  Id. at 7.

As to inducement, Judge Andrews found that plaintiff failed to sufficiently plead knowledge that the infringer’s acts constituted infringement.  Specifically, plaintiff asserted in its complaint that “[u]pon information and belief, Telit has performed the acts that constitute inducement of infringement with the knowledge or willful blindness that the acts induced thereby would constitute direct infringement by its customers.” Id. at 8. Judge Andrews reasoned that plaintiff’s assertion was based “on no factual allegations [and therefore] cannot pass muster under the plausibility standards.”  Id.  Further, Judge Andrews also found that plaintiff failed to sufficiently plead a “specific intent to infringe” because it “fus[ed] the two Defendants as one.” Id. at 9. Specifically, Judge Andrews explained that when articulating inducement allegations, plaintiff has to identify “which particular Defendant or Defendants are said to have disseminated the training or instructional materials at issue.” Id. at 10.  Judge Andrews also dismissed plaintiff’s contributory infringement claim because plaintiff “lump[ed]” the defendants together, and because “[t]he contributory infringement claim [was] factually too conclusory to state a claim.” Id. at 10 & n.5, 11.

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Judge Richard G. Andrews recently granted a motion for judgment on the pleadings that seven asserted patents claimed subject matter that is not patent-eligible under 35 U.S.C. § 101.  Personalized Media Commc’ns, LLC v. Amazon.com, Inc., et al., C.A. No. 13-1608-RGA (D. Del. Aug. 10, 2015).  Each of the patents was directed generally to “the use of control and information signals embedded in electronic media content to generate output for display that is personalized and relevant to a user.”  Judge Andrews found that the patents were not patent-eligible under § 101, because they claimed, respectively, the abstract ideas of: “using personal information to create a customized presentation,”  “updating operating instructions,” “decryption,” “completing partial instructions,” “promoting programming,” “receiving instructions for ordering,” and “providing personalized recommendations.”

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Judge Richard G. Andrews recently considered Defendant Micron Technology Inc.’s motion to exclude plaintiff Semcon Tech LLC’s damages expert who estimated a reasonable royalty “for a method claim for a manufacturing process.”    Semcon Tech LLC v. Micron Technology Inc., C.A. No. 12-532-RGA (D. Del. Aug. 5, 2015).  Judge Andrews determined that he could not determine “based on the briefing” whether the expert’s methodology was sound or “whether his estimates include any required effort at apportionment.”  Id. at 1.  Therefore, Judge Andrews scheduled a Daubert hearing at which the expert would testify “subject to cross-examination.”  Id.  Judge Andrews also requested Micron advise the Court if it intended to provide an alternative theory of an appropriate reasonable royalty and to submit a letter explaining such theory.  Id. at 2.

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In a recent Memorandum Order, Judge Richard G. Andrews denied plaintiffs’ motion for reargument as to the court’s order severing defendant Nokia Corporation for a separate trial. Interdigital  Communications, Inc. v. Nokia Corp., C.A. No. 13-10-RGA (D. Del. Jul. 29, 2015). Judge Andrews noted that plaintiffs requested reargument on the ground that the court’s decision to sever was “sua sponte and there was no opportunity for briefing.” Id. at 2. Judge Andrews explained, however, that “Nokia Corporation no longer makes or imports the accused products,” and that there is “no relief [the court] could grant against Nokia Corporation.” Id. Further, Judge Andrews pointed to the fact “there is a significant likelihood of juror confusion between Nokia, Inc. and Nokia Corporation.” Id. Finally, Judge Andrews noted that “Nokia Corporation’s presence would serve only to confuse the jury and potentially result in multiple opening arguments and examinations.” Id.

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Judge Richard G. Andrews recently granted in part a defendant’s motion to dismiss for failure to claim patent-eligible subject matter under § 101.  Pragmatus Telecom, LLC v. Genesys Telecomm. Labs., Inc., C.A. No. 14-26-RGA (D. Del. July 9, 2015).  At issue were four patents sharing a common specification relating to “controlling communication between customers and organizations using certain computer systems.”  As Judge Andrews explained, the “specification demonstrates that the claims [of the purportedly representative ‘314 Patent] are directed to the abstract idea of connecting customers to call centers.”  Id. at 11.  In describing the claims, the Court drew an analogy to a customer calling a business and identifying himself, then dialing certain numbers to be transferred either to “help” or an “operator” or to leave a voicemail.  Id. at 12-13.  Judge Andrews explained, “[t]o allow such a claim would preempt the fundamental concept of customers communicating with businesses, and more specifically customers communicating with call center agents.”  Id. at 14.  The Court added, “the claim does not contain an inventive concept to transform the abstract idea into patent-eligible subject matter.”  Id.  The defendant sought to also invalidate the three other patents, based on the invalidation of the purportedly representative ‘314 Patent, but Judge Andrews explained, “the Court will only deal with the patent eligibility of the claims of the ‘314 Patent.  If Defendants wish to challenge the other patents under § 101, they must actually provide analysis for this position.”  Id. at 9.

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In Andrulis Pharmaceuticals Corp. v. Celgene Corp., C.A. No. 13-1644-RGA (D. Del. June 26, 2015), Judge Richard G. Andrews construed terms in claim 2 of U.S. Patent No. 6,140,346, finding three sets of related terms to be indefinite.  The patent relates to a “novel method for treating cancers with thalidomide alone or in combination with other antiangiogenic and anti-cancer agents.”  Id. at 1 (citation and internal quotation marks omitted).

The terms found indefinite were: “enhanced” and “enhanced combination”; “enhanced therapeutically-effective amounts of thalidomide”; and “said neoplastic diseases are sensitive to said enhanced combination.”  Defendant argued that “enhanced” required degrees that the patent never articulated.  Id. at 7.  The Court found the “central issue” to be whether “enhanced means greater than additive,” as Plaintiff claimed the addition of “enhanced” was needed for the claim to overcome prior art, “or whether it renders the claim indefinite.”  Id.

The Court concluded that the term was indeed indefinite.  There was no evidence narrowing its meaning, id. at 8, and the patent provided very little guidance as to the meaning, id.  at 8-9.  The Court also found that the prosecution history did not support Plaintiffs’ contention that “enhanced” necessarily meant “greater than additive” in light of the prosecution history.  Id. at 9.  In fact, “[t]he prosecution history demonstrates that the applicant did not simply adopt the examiner’s position that the claims require a greater than additive effect.”  Id. at 10.  “It cannot be the case that ‘enhanced’ is merely a synonym for ‘greater than additive’ when read within the context of the examiner’s rejection, and the applicant’s amendment and response.”  Id.  The inventor’s own testimony supported the interpretation that “enhanced” was not synonymous with “additive effect,”  id. at 12, although the Court did not find the inventors’, or proffered experts’, testimony on this subject particularly probative.  See id. at 12, 13.  It concluded that “[b]ecause ‘enhanced’ can mean less than additive, additive, or greater than additive, the term is indefinite because it does not inform a person skilled in art of the invention with reasonable certainty of its meaning in the patent-in-suit.”  Id. at 13.

As to “enhanced therapeutically-effective amounts of thalidomide,” the Court concluded that its “grammatical structure adds a second reason for a finding of indefiniteness.”  Id. at 14.  Plaintiffs attempted to argue “enhanced” did not modify “therapeutically-effective amounts of thalidomide,” but the Court found this would result in “grammatical gymnastics.”  Id. at 15.  The larger term was indefinite because it was “unclear what an ‘enhanced’ amount of thalidomide . . . would be.”  Id.  The Court also found the third term “said neoplastic diseases are sensitive to said enhanced combination” indefinite “[f]or the reasons offered int eh analysis of the [other two] terms.”  Id. at 17.

The Court also construed the terms “administering” and “neoplastic diseases.”

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