Articles Posted in Richard G. Andrews

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Judge Richard G. Andrews recently deferred ruling on the part of a Daubert motion which sought to preclude an expert from offering testimony on § 112 defenses on which the expert testified he deferred to counsel.  IPLearn, LLC v. Blackboard, Inc., C.A. No. 11-876 (RGA) (D. Del. Oct. 2, 2014).  Judge Andrews indicated he likely would exclude the expert’s opinion on § 112 defenses, explaining “I am not convinced that these are [the expert's] opinions on the § 112 issues.  I am quite sure that the legal citations . . . are not only not his, but to cases that he has not read.  Therefore, I expect that I will exclude the opinions [addressing the § 112 defenses] of the report.  I will, however, give Defendant an opportunity before trial to show that the § 112 opinions are indeed [the expert's] opinions.”  Id. at 4.  The Court proceeded to schedule a pretrial hearing to examine and cross-examine the expert on his § 112 opinions.

Earlier in the decision, the Court denied the Daubert motion to the extent it sought to exclude the expert based on his unfamiliarity with the presumption of validity and the need to prove invalidity by clear and convincing evidence.  The plaintiff had argued that the defendant’s invalidity expert should be excluded from trial for failure to apply the clear and convincing standard or the presumption of validity.  Judge Andrews agreed with the defendant, though, that the expert’s “failure to offer opinions on legal standards has no relevance because that is not the role of the expert.”  Id. at 2.  As the Court explained, “[c]lear and convincing evidence and the presumption of validity are not standards required of expert opinion on invalidity, but standards used by a factfinder.  These are legal concepts that are for jury determinations, not for expert witnesses.”  Id. at 4.

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Judge Andrews recently denied a defendant’s Daubert motion, which sought to exclude the plaintiff’s technical expert on a number of grounds. The defendant argued that the expert’s opinions “are too unreliable to be presented to a jury” because the expert “lacks familiarity with the infringing products, relied too heavily on someone else to provide him with relevant segments of source code to review, and used the Court’s claim construction to determine how the products work.” IPLearn, LLC v. Blackboard Inc., C.A. No. 11-876-RGA, Memo. Or. at 1-2 (D. Del. Sept. 29, 2014).

Judge Andrews explained that although the expert in question “never used the allegedly infringing products,” and reviewed only portions of the relevant source code selected by another individual, his opinion was “based on ‘thousands of pages of technical manuals, source code, and depositions transcripts.’” Id. at 2. “Even if [the expert] did not know the qualifications of the individual who selected the pieces of source code, or whether there might be other relevant segments of the source code, he was able to determine whether the sections of code related to the elements relevant to infringement. Therefore, his expert opinion is based on sufficient facts and reliable methods. Whether [the expert] should have consulted the complete source code, and might have missed something that would change his opinion, is an issue for cross-examination and, possibly, contradictory expert testimony by Defendant’s expert.” Id. at 3-4. Indeed, the expert “need not use the product if, as here, he has familiarized himself with it in other ways. Reviewing source code and other materials can be sufficient. [Accordingly] Whether [the expert] should have based his expert opinion on personal use with the product, rather than source code and other materials, is fodder for cross-examination, not a Daubert issue for this Court.” Id. at 2.

Further, Judge Andrews explained that “[w]hether [the expert] relied too heavily on his report in his deposition does not, in my opinion, raise a Daubert issue,” because this argument is essentially the defendant contending that the expert “will be a poor witness.” Id. at 3. Finally, Judge Andrews explained that it was “not self-evident from the deposition transcript cited by Defendant that [the expert’s] reference to the Court’s claim construction was an explanation of how the products work, rather than an application of the construed claims onto the product. . . . [T]he infringement expert[’s] . . . role is to compare the construed claims to the allegedly infringing products. Defendant has not shown that he has not done that.” Id. at 4.

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In Comcast IP Holdings I LLC v. Sprint Communications Company LP, et al., C.A. No. 12-205-RGA (D. Del. Sept. 29, 2014), Judge Richard G. Andrews concluded that plaintiff’s damages expert had not adequately apportioned damages and thus the analysis was not admissible.

Defendants had filed a motion in limine seeking to exclude profits and or/revenues relating to the accused products, arguing that plaintiff’s damages expert had violated the entire market value rule because the products also contained unpatented features.  Plaintiff argued its expert had, in fact, apportioned revenues between the patented and unpatented technology in the products.  The Court had requested further submissions on this issue, including a proffer of this expert’s testimony.  Id. at 1.

The Court found the expert’s proffer insufficient.  The expert had identified three different functionalities of the accused products and noted that only one was “substantially implicated by the asserted patents,” but there was no indication that she had performed a “‘numerical calculation’ to arrive at a percentage to apply to the profits.  Apportionment does not seem possible without a numerical calculation. There is no evident apportionment in the proffer,” nor in the expert’s deposition or report. Id. at 2.

On the other hand, the Court recognized that its request for additional submissions had focused on whether the entire market value rule had been violated, and that, if it had specifically asked for more detail on apportionment, the subsequent submissions may have been different.  Therefore, the Court allowed plaintiff to submit a proffer “with some detail as to how much of the revenues and/or profits it apportioned to the patented technology, and what the basis for that apportionment is.”  Id.

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In a recent order, Judge Richard Andrews granted a motion in limine to exclude at trial evidence of the PTAB’s denial of an inter partes review petition of a patent-in-suit. Judge Andrews explained that evidence of the IPR petition was inadmissible under Rule 403 because it was “of marginal relevance, . . . the probative value is greatly outweighed by the expenditure of time that would be required to give the jury the full context necessary to fairly evaluate the evidence . . . [and] because of the complexity involved in giving the full context, there would also be a significant risk of confusion of the issues.” Interdigital Commc’ns Inc., et al. v. Nokia Corp., et al., C.A. No. 13-10-RGA, Order at 1-2 (D. Del. Sept. 19, 2014).

Judge Andrews explained his reasoning: “I agree that the . . . IPR denial is a final decision. I do not agree that it is a decision on the merits, any more so than a grant of an IPR is a decision on the merits. It is akin to a ruling on a preliminary injunction, where the merits are assessed with less than a full record and with less than a full adversarial proceeding.” Id. at 1. Furthermore, although the IPR denial is part of the prosecution history, “it is a relatively unique part of the prosecution history. First, a patent examiner cannot allow a patent to issue saying there is a reasonable likelihood that it is not obvious . . . [instead] [t]he patent examiner has to come to a conclusion that it is not obvious, or not allow the issuance of the patent. Second, the patent examiner is a person of ordinary skill in the art, whereas the IPR decisions are made by lawyers who are not persons of ordinary skill in the art.” Id. Judge Andrews did, however, allow the defendants to “truthfully state [to the jury] that the PTO did not have [IPR] reference before issuing the patent.” Id. at 2 n.1.

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Judge Richard G. Andrews recently ordered a plaintiff to reduce the number of claim terms it was asserting from 52 to 32 by the filing of its opening claim construction brief, finding that there would be little or no prejudice associated with such a reduction.  EMC Corp. v. Pure Storage Inc., C.A. No. 13-1985-RGA (D. Del. Sept. 19, 2014).  Judge Andrews denied a request for an extension of page limits for claim construction briefing, however, but explained: “I find that having Plaintiff open the briefing with arguments for plain meaning is generally not very helpful.  Thus, Plaintiff need only brief in its opening brief those terms for which it proposes a construction.  Of course, Plaintiff will need to respond in its reply brief if Defendant proposes constructions for terms that the Plaintiff believes should be given their plain meaning.”  Finally, the Court indicated that regardless of the number of claim terms the parties’ briefed, the Court would permit oral argument on no more than 10 terms.

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In L-3 Communications Corporation v. Sony Corporation, et al., C.A. No. 10-734-RGA, Judge Richard G. Andrews recently issued rulings on defendants’ motion for judgment as a matter of law (D. Del. Sept. 12, 2014) (“JMOL Memorandum Opinion,” first document below) and both parties’ motions for entry of judgment (D. Del. Sept. 12, 2014) (“Memorandum (Entry of Judgment) and Final Judgement,” second document below).  The Court found in defendants’ favor as to both sets of motions.

Following a jury verdict in plaintiff’s favor on defendants’ invalidity counterclaims only, defendants renewed their motion for judgment as a matter of law that the asserted patent claims are invalid as obvious.  The Court granted the motion, finding the jury’s verdict legally insufficient.  The only issue presented was whether it would have been obvious to add an “in-pixel amplifier” to a certain prior art reference.  JMOL Memorandum Opinion at 2.  The Court rejected plaintiff’s argument at trial that this reference taught away from adding an amplifier, finding its characterization of the prior art incorrect.  See id. at 7-9.  The Court also considered and rejected a new argument raised by plaintiff for the first time in its post-trial briefing even though this argument was not properly put before the jury.  See id. at 7 n.7 and 9-12.  The Court concluded that defendants had met their burden of proving obviousness, and granted their motion for judgment as a matter of law.

Both parties also moved for entry of judgment related to claims that not been tried because, due to the Court’s claim construction, plaintiff conceded that it could not prove infringement.  The parties disagreed as to the proper language for the judgment, as defendant was “concerned that if it consents to [plaintiff’s] proposed judgment it will be precluded from raising [a challenge to the Court’s claim construction] on appeal.”  Memorandum (Entry of Judgment) at 2.  Plaintiff’s language quoted the Court’s constructions, noting that the accused products did not infringe “because they lack a ‘means for draining stored charge from said charge storage means in response to an element resetting signal,’ a ‘means for randomly accessing said image elements,’ a ‘gain control element interposed between said photoresponsive element and said storage element,’ or a ‘charge drain.’”  Id. at 2.  The Court pointed out that plaintiff’s proposed language had no basis in the record.  Id.  However, it found no reason not to enter judgment in defendants’ favor, and therefore entered judgment with revised language that did not include the above quotes, but instead stated that “under this Court’s Claim Construction Opinion and Order (D.I. 78), L-3 cannot prove that the Accused Products satisfy all elements of the Conceded Claims.”  Final Judgement at 2.

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Judge Richard G. Andrews recently ruled on post-trial motions following a five day jury trial between two competitors in the WAN optimization market.  Riverbed Technology, Inc. v. Silver Peak Systems, Inc., C.A. No. 11-484-RGA (D. Del. Sept. 12, 2014).  After the jury returned a verdict in favor of Silver Peak on its counterclaims for infringement, Riverbed moved for judgment as a matter of law of no indirect infringement.  Judge Andrews explained that although there was no “smoking gun” demonstrating that Riverbed possessed the knowledge required for a finding of indirect infringement, the jury’s finding that the company more likely than not had the requisite knowledge was supported by the circumstantial evidence at trial.  See id. at 7-8.  The Court also found that the circumstantial evidence at trial of customers’ direct use of the infringing functionality was “just barely sufficient to convince the Court not to disturb the jury’s verdict.”  Id. at 8-12.  Judge Andrews explained that “[w]hen viewed as a whole, Silver Peak offered sufficient circumstantial evidence to permit a jury to reasonably conclude that Riverbed customers used the infringing functionality in the United States.  Silver Peak provided the jury with evidence of Riverbed’s high sales volume, numerous Riverbed documents describing the benefits of [the infringing functionality], how to use [it], and instructing customers on how to test [it], as well as blog posts on Riverbed’s U.S. support forum from users who used [it.]”  Id. at 12.  The Court denied Silver Peak’s motion for a permanent injunction, however, finding that Silver Peak failed to establish a likelihood of irreparable harm.  Id. at 18-24.

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In a recent Memorandum Order, Judge Richard G. Andrews addressed defendant’s motion for attorney fees under 35 U.S.C. § 285 and the Court’s inherent powers. Parallel Iron LLC v. NetApp Inc., C.A. No. 12-769-RGA (D. Del. Sept. 12, 2014). First, Judge Andrews denied defendant’s motion for attorney’s fees under § 285 because defendant failed to demonstrate it was the prevailing party. As Judge Andrews explained, that “there must be a dispute that was settled in favor of the party seeking to be declared the prevailing party that materially alters the legal relationship between the parties.”  Id. at 8. Here, however, the Court did not make any findings “regarding any substantive issue in the case,” did not “construe[] any terms, resolve[] a contested motion to dismiss, or resolve[] any motions for summary judgment.” Id. at 7. Judge Andrews explained that unlike cases  where there was no reason given for the motion to dismiss, here it was clear that “the Stipulation of Dismissal was required as a result of a third-party licensing agreement,” which “led to downstream licensures for the users, including [defendant].” Id. at 7-8. Judge Andrews thus reaffirmed the principle that “it cannot be the case that a party ‘can benefit from a bona fide license agreement, obtained after the litigation began, and claim to be the prevailing party, without a single substantial court decision that favors that party.’”  Id.

Judge Andrews did, however, grant attorney fees under the Court’s inherent powers to do so. As Judge Andrews explained, plaintiff had accused defendant’s products “by reference to their implementation of the pNFS standard” in its complaint and three sets of Paragraph 4(a) disclosures. Id. at 10. Over thirteen months after filing its complaint, plaintiff essentially withdrew its intention of accusing products implementing the pNFS standard of infringement. Id. at 10-11. The Court ordered plaintiff “to submit all materials that it had gathered or created during its pre-suit investigation related to this issue.” Id. at 11.  After conducting an in camera review of a subset of documents specified by plaintiff, the Court determined that plaintiff initiated the “suit without a good-faith belief that the accused instrumentalities implemented pNFS in an infringing manner,” and therefore awarded attorney fees.  Id. Judge Andrews further ordered supplemental briefing “to address the amount of fees appropriate in this case.” Id. at 16.

 

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Judge Richard G. Andrews recently addressed defendants’ motion for judgment on the pleadings, which provided several reasons that plaintiffs’ Third Amended Complaint failed to sufficiently plead indirect infringement. HSM Portfolio LLC v. Fujitsu Ltd., C.A. No. 11-770-RGA (D. Del. Sept. 9, 2014).

Defendants argued that plaintiffs cannot establish contributory infringement mainly because the “accused semiconductor chips are not components especially designed for an infringing product because they are accused of direct infringement in and of themselves.” Id. at 2. Judge Andrews agreed, explaining that “[t]he reason that it is necessary to plead that the component has no substantial noninfringing uses is that the component alone does not directly infringe” and therefore plaintiffs’ argument did “not make legal sense.” Id. at 3. Judge Andrews did, however, grant plaintiffs leave to file an amended complaint within ten days to amend their contributory infringement claim. Id. at 3.

Judge Andrews denied the remainder of defendants’ arguments. First, with respect to induced infringement based on domestic sales, defendants essentially argued that “because it might be found liable for direct infringement, based on the same actions of which it is accused of induced infringement, [the Court] should dismiss the claim for induced infringement.” Id. While Judge Andrews agreed that “there would be no additional liability for induced infringement based upon the same acts” of direct infringement, defendants’ “judicial economy” argument was not a sufficient “failure to state claim” argument. Id. Second, with respect to induced infringement based on foreign sales, Judge Andrews found that defendants “conflate[d] the standard for pleadings with that for summary judgment,” finding that plaintiff was only required to “set forth a basis for the court to make a ‘reasonable inference’” that defendants “encouraged the importation of the accused products in the United States by third parties.” Id. at 3-4. Third, Judge Andrews disagreed with defendants’ argument that all the inducement claims fail because plaintiffs failed to plead specific intent. Judge Andrews explained that plaintiffs alleged acts such as “creating advertisements, creating established distribution channels, manufacturing the products in accordance with U.S. law, distributing manuals, and providing technical support,” which “all evidence specific intent.” Id. at 4.

 

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In Chalumeau Power Systems LLC v. Alcatel-Lucent, et al., C.A. No. 11-1175-RGA (D. Del. Sept. 12, 2014), Judge Richard G. Andrews recently determined that defendants were entitled to attorneys’ fees and costs under Section 285.   Plaintiff had dismissed its complaint, citing a change in “the economics of the case” as a result of defendants’ new licensing defense; defendants then filed the instant motion.  Id. at 1.

Applying the Supreme Court’s standard for Section 285 awards, see Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749, 1756 (2014), the Court first concluded that plaintiff’s infringement theories and claim construction positions were frivolous.  See id. at 2-6.  Once the Court requested documentary evidence of plaintiff’s pre-suit investigation, it became clear that plaintiff had not “vetted” every accused patent family before filing suit, as it had previously claimed to have done.  Id. at 3.  The Court observed that the single, 5-page document produced in camera grouped claim limitations too broadly, “encompassing multiple disputed terms in each group.”  Id. at 4.  The Court explained that “[a] pre-suit investigation which lumps so many limitations together does not demonstrate an adequate investigation into whether the accused device infringes each and every claim limitation.”  Id.  The Court then analyzed plaintiff’s claim construction positions, and found them similarly frivolous.  See id. at 4-6.

The Court also found that plaintiff’s litigation conduct warranted a finding that the case was exceptional.  Plaintiff had opposed defendants’ motion to add a license defense as futile, even though plaintiff now claimed that it was this defense that had caused it to drop the suit.  Id. at 6-7.  The Court concluded that plaintiff’s litigation strategy was to “extort[] a settlement fee” as it “st[rung] out the case in the hopes that [defendant] would incur fees while [plaintiff] would not.  [Plaintiff] did not even disclose an expert until” days before the close of fact discovery.”  Id. at 7.
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