Articles Posted in Richard G. Andrews

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Judge Richard G. Andrews recently dismissed a plaintiff’s complaint after finding the asserted patent claims invalid under 35 U.S.C. § 101.  Visual Memory LLC v. Nvidia Corp., C.A. No. 15-789-RGA (D. Del. May 27, 2016).  The patent at issue described “a computer system that uses a three-tiered memory hierarchy:  (1) slow, low-cost memory for ‘bulk storage of data,’ (2) medium speed memory for the ‘system’s main memory,’ and (3) expensive, high-speed ‘processor cache memory.’”  The asserted claims, the Court found, “are directed to the abstract idea of categorical data storage.  Humans have categorized data for many years. For instance, a library may have an easily-accessible section for popular novels, while maintaining less accessible storage for less-requested materials.  This is an indisputably well-known practice that humans have always performed.”  Id. at 8 (internal quotation marks omitted).

Judge Andrews rejected the plaintiff’s argument that its patent claims should survive the § 101 inquiry in light of the Federal Circuit’s recent Enfish decision, explaining: “Enfish is . . . best understood as a case which cautions against oversimplification during step one of Mayo/Alice, rather than a case which exempts from § 101 scrutiny all patents which purport to improve the functioning of a computer.”  Id. at 9.  In Enfish, the Court explained, the patent claims were directed to “a specific type of data structure designed to improve the way a computer stores and retrieves data in memory.”  Id.  Here, on the other hand, there was no “specific type of data structure” analog – instead, the patent claims were directed to the “broad concept” of “categorical data storage” on a computer.  Id. at 10.  Turning to the second Alice prong, Judge Andrews explained that “[t]he claims here are ‘recited too broadly and generically to be considered sufficiently specific and meaningful applications of their underlying abstract ideas.’”  Id. at 14.  While the patent claims described “the idea of categorical data storage as implemented on a computer, the claimed computer functionality can only be described as generic or conventional.”  Id.

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Judge Richard G. Andrews recently ruled on a protective order dispute relating to the level of access granted to in-house counsel for a plaintiff whose business model was designed to avoid the hiring of lead outside trial counsel.  Blackbird Tech LLC d/b/a Blackbird Technologies v. Service Lighting and Electrical Supplies, Inc. d/b/a 1000bulbs.com et al., C.A. Nos. 15-53-RGA, 15-56-RGA, 15-57-RGA, 15-58-RGA, 15-59-RGA, 15-60-RGA, 15-61-RGA, 15-62-RGA, 15-63-RGA (D. Del. May 18, 2016).  In its own words, the plaintiff “is not designed, from a financial standpoint, to litigate through outside counsel. . . . Accordingly, aside from local counsel, Blackbird intends to litigate these cases entirely through its in-house lawyers.” Id. at 7.  To date, three in-house lawyers had been admitted pro hac vice, two of whom Judge Andrews found were competitive decision makers (the President/CEO and a Vice President and Head of Litigation).  Id.  The plaintiff argued that these individuals should be permitted to access confidential information in the case because, “without such information, Blackbird would be prevented from pursuing these cases within its low-cost litigation business model, which will make continued litigation of these cases extremely difficult.”  Id. at 9 (internal quotation marks omitted).

Judge Andrews explained that “[w]hen attorneys serve the dual role of competitive decisionmakers and litigation counsel, . . . courts must consider both of those roles and cannot simply ignore the competitive decisionmaker aspect.  For this reason, I cannot approve Blackbird’s request for carte blanche access . . . without affording stronger protections for Defendants.  Id. at 16-17.  Here, because there was “a concrete, particularized risk of inadvertent disclosure and misuse here.  To give Blackbird’s competitive decisionmakers access to Defendants’ confidential technical and financial information would raise the specter of prosecuting or acquiring patents that read on Defendants’ products.”  Id. at 12.  Accordingly, Judge Andrews explained, “if the threat of future litigation is taken off the table, there is significantly less likelihood of harm to Defendants.”  Id. at 13.  The Court therefore ordered the parties to submit a proposed protective order that included a prosecution bar and a covenant not to sue Defendants on any patents acquired by the plaintiff in the relevant technology during the course of this litigation and for one year after its conclusion.  Id. at 15-16.

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Judge Richard G. Andrews recently provided guidance on the redaction of public hearing transcripts in ruling on an unopposed motion to redact.  Delaware Display Group, LLC v. Lenovo Holding Co., et al., C.A. Nos. 13-2018-RGA, -2109-RGA, -2112-RGA (D. Del. May. 10, 2016).  Judge Andrews explained that the fact that information is designated as attorneys’ eyes only under a protective order is not determinative of whether it is appropriately redacted from a public hearing transcript.  That is because once the information is revealed in a public hearing, “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.”  The Court recognized that there are exceptions, such as where the information contains “pricing terms in license agreements, some other non-public financial information, trade secrets, and other proprietary technology[,]” but added that this type of information can be hinted at during a hearing without threatening a “clearly defined and serious injury” that would justify redacting it from the public record under Third Circuit law.  Judge Andrews added that even this type of information is less likely to warrant redaction where it “is old, or general, or already in the public record, and was relevant to the judicial proceeding.”

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Judge Richard G. Andrews recently denied a motion for summary judgment seeking to invalidate a plaintiff’s patent for lack of patent-eligible subject matter.  ART+COM  Innovationpool Gmbh v. Google Inc., C.A. No. 14-217-RGA (D. Del. Apr. 28, 2016).  At issue was the plaintiff’s ‘550 patent, which describes “a software-implemented method for providing a pictorial representation of space-related data, particularly geographical data of flat or physical objects.”  Id. at 2 (internal quotation marks omitted).  Google argued that the patent “is directed to the abstract ideal of storing image data, then repeatedly requesting specific data, which is then stored and displayed[,]” which “can be analogized to the age-old practice of a visitor in a library reviewing atlases that include maps with differing resolutions or scales.”  Id. at 6-7 (internal quotation marks omitted).  While the Court did not view the library analogy as a perfect one, id. at 8 n.1, it agreed with Google that the patent was directed to an abstract idea.  Moving to the second step of the analysis, whether the claims express an inventive concept , Judge Andrews explained that “[t]he Supreme Court has described the second step … as calling for the query: ‘What else is there in the claims before us?’.”  Here, Judge Andrews found that, in combination, the patent claims were directed to an “iterative process [that] allows a user to access more electronic pictorial data in a more rapid fashion.  The distributed data sources permit a user to access masses of data, while the recursive division step permits a user to access that data quickly, with increasing resolution over time.  This amounts to ‘more than a drafting effort designed to monopolize the [abstract idea itself].'”  Id. at 12 (quoting Alice Corp. Pty. v. CLS Bank Int’l, 134 S. Ct. 2347, 2357 (2014)) (alteration in original).

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In a recent Memorandum Opinion, Judge Richard G. Andrews denied defendants’ (“ZTE”) renewed motion for judgment as a matter of law of non-infringement as to U.S. Patent Nos. 7,190,966 (“the ’966 patent”) and 7,286,847 (“the ’847 patent”). InterDigital Communications, Inc. v ZTE Corp., C.A. No. 13-009-RGA (D. Del. Mar. 18, 2016). Judge Andrews found that the testimony of plaintiffs’ (“InterDigital”) infringement expert provided substantial evidence to support the jury’s findings. Id. at 6-9. Notably, as to one contested limitation, Judge Andrews explained that while ZTE “does not have the burden of proving non-infringement, . . . it seems . . . that ZTE should have challenged [InterDigital’s expert’s] testimony if ZTE believed it lacked support.”

Judge Andrews also denied ZTE’s motion for a new trial as to the ’847 and ’966 patents, rejecting ZTE’s argument that the validity and infringement verdicts were inconsistent. Id. at 9-10. Judge Andrews also found that while InterDigital “probably exceeded the scope” of Judge Andrews’ ruling on the permissible use of certain licensing evidence, those licensing references “were [not] sufficiently prejudicial to warrant a new trial.” Id. at 10. Similarly, Judge Andrews found that InterDigital’s use of “an impeachment ‘scoreboard’ in closing argument” did not warrant a new trial. Id. at 11. As Judge Andrews explained, “[t]he jury was instructed that it was the sole judge of credibility and that arguments made by attorneys were not evidence,” and that the “jury was entitled to determine for itself whether the alleged impeachments showed inconsistent testimony.” Id.

Judge Andrews also noted that the PTAB has invalidated all claims of U.S. Patent No. 8,380,244 (“the ’244 patent”), another patent-in-suit. InterDigital has appealed that determination to the Federal Circuit where it is now pending. Id. at 2. Judge Andrews thus concluded that “[i]n view of the doubt as to [the] validity of this patent, . . . it makes sense to postpone resolution of the JMOL until the Federal Circuit rules.” Id. at 9.

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In EMC Corporation, et al. v. Pure Storage, Inc., C.A. No. 13-1985-RGA (D. Del. Mar. 15, 2016), Judge Richard G. Andrews granted Defendant’s motion for judgment as a matter of law that the accused products did not infringe one claim of the asserted patent under the doctrine of equivalents. Plaintiffs pointed to their expert’s testimony as a sufficient basis for the infringement claim, but the Court found this testimony “conclusory” and “fail[ing] to provide the particularized testimony and linking argument required by the Federal Circuit.” Id. at 1 (quotations omitted). Further, Plaintiffs had not “present[ed] any evidence from which the jury could find equivalence on the basis of insubstantial differences or known interchangeability.” Id. at 1-2.

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In Raindance Technologies, Inc. v. 10X Genomics, Inc., C.A. No. 15-152-RGA (D. Del. Mar. 4, 2016), Judge Richard G. Andrews dismissed Plaintiffs’ amended complaint for patent infringement under the heightened pleading standard of Iqbal/Twombly–as opposed to the standard under Rule 84–despite the fact that the amended complaint was filed before December 1, 2015. Judge Andrews granted Plaintiffs leave to replead, explaining that while “Plaintiffs have not plausibly alleged any infringement, . . . Plaintiffs might very well be able to do so, particularly if they have analyzed [Defendant’s] products and not just its website.” Id. at 5. Explaining his application of Iqbal/Twombly, Judge Andrews noted the following:

Effective December 1, 2015, Federal Rule of Civil Procedure 84 and the Appendix of Forms were “abrogated.” Under existing standards, that is, Iqbal and Twombly, it is clear to me that Plaintiffs have not plausibly alleged indirect infringement on Counts I and III (and, I expect, on Counts IV through VII, although in the interest of conserving resources, I am not going to decide that now). Further, I believe that I have discretion whether or not to apply the post-December 1, 2015 direct infringement pleading standard to the amended complaint, and I believe that it would be in the interest of justice to do so. I also note, to foreclose future unnecessary argument, that for indirect infringement, Defendant’s knowledge of the patents is established at least as of the filing of the lawsuit.

Id. at 4-5. More specifically, in dismissing Count I, Judge Andrews noted that “[t]here is nothing in the complaint (at least so far as I can see) that hints at the role of pressure in Defendant’s products,” as required by the claim language. Id. at 3. (emphasis added). As to Count III, Judge Andrews explained that “[i]t is not obvious to me that what Plaintiffs describe is an ‘autocatalytic reaction,’” as stated in the claim language. Id. at 4 (emphasis added). Judge Andrews explained that “[t]he requirements of the next to last element might be met, but involves quite a bit of supposition.” Id.

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These related patent infringement cases have resulted in several opinions by Judge Andrews, including a summary judgment opinion and a Daubert opinion in a related case against Telit. In this opinion, Judge Andrews considered a few issues not already addressed by his Telit opinion.

Considering a challenge to Defendant’s damages expert, Judge Andrews found that the expert had not shown a “basis in fact to associate the royalty rates used in [certain] prior licenses to the particular hypothetical negotiation at issue in [this] case” as required by Uniloc. The expert’s purported basis for comparability of the licenses was his discussions with the Defendant’s technical expert, yet Judge Andrews found that both experts “make almost zero reference to the specific technology involved in either the [asserted] patent or the [purportedly comparable] licenses, aside from the hazy reasoning that they all relate to product features rather than core technology.” Such “loose, vague allegations of technological comparability, without any explanation, are insufficient, and . . . invite the Court to blindly accept the unsubstantiated conclusions of [] experts . . . [which] are nothing more than ipse dixit.” M2M Solutions LLC v. Enfora, Inc., et al., C.A. No. 12-32-RGA, Memo. Op. at 14-19 (D. Del. Mar. 9, 2016).

Judge Andrews provided a further reason for excluding the expert’s testimony: the “analysis virtually ignores the fact that these two licenses resulted from litigation settlements, providing a drastically different backdrop than the hypothetical negotiation involving two willing licensors, as would be the case here.” Characterizing Federal Circuit precedent on the point as “hostile toward using litigation settlement agreements in proving a reasonable royalty, except in limited circumstances,” Judge Andrews pointed out that the “settlement licenses here were not for the patent-in-suit and are only connected to the claimed invention by vague conclusions from Defendants’ experts.” Because the expert “ignore[d] the settlement context altogether and focuse[d] on the fact that the licenses were between Enfora and a non-practicing entity, [u]nder [the expert’s] rationale, any license between Enfora and a non-practicing entity would be economically comparable to a hypothetical negotiation between Enfora and a different non-practicing entity, regardless of the specific technology or whether the licenses resulted from litigation settlements. These unsubstantiated conclusions about economic comparability, lacking in analysis, again provide nothing more than ipse dixit.” Id. at 19-20. Moreover, Judge Andrews rejected the argument that the incomparable licenses could be used only as a “sanity check” rather than as the heart of a damages analysis. Id. at 20. Accordingly, the Court excluded any use of the incomparable licenses.

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In a series of related actions brought by the Plaintiffs, Judge Richard G. Andrews considered Defendants’ motion to compel compliance with subpoenas issued to a third party and former owner of the patents, and Plaintiffs’ motion to amend the complaint to add willfulness allegations. E.g., Delaware Display Group LLC, et al. v. Lenovo Group Ltd., et al., C.A. No. 13-2108-RGA (D. Del. Feb. 23, 2016).

As to the motion to compel, Defendants sought “discovery of teardown reports [i.e., “technical analysis on products supplied by” one party to another” created by [the former owner of the patents] after a March 25, 2013 consulting agreement, unredacted royalty reports . . . and email communications [between Plaintiffs and other third parties regarding the teardown work ].’”  Id. at 3-4. Plaintiffs and the non-party opposed the motion, but the Court had previously concluded that all the documents were in the possession of Plaintiffs, and thus the only issue was whether Plaintiffs were obligated to produce the documents. Id. at 4.

The Court granted the motion to compel in part, after running through a number of questions as to the potentially privileged or protected nature of the documents. As to the “teardown reports,” prepared by the former owner pursuant to an agreement with another non-party, they were neither attorney work product nor protected as non-testifying expert discovery, as the reports were prepared by and for non-parties. See id. at 6-9. They were also not protected by a common interest privilege, as the Court found no common interest between the parties to the agreement, noting that “Plaintiffs argue that [those parties] share the same interest in obtaining strong and enforceable patents,” but “Plaintiffs’ logic would find that any seller with rights to royalty payments is engaged in a common legal cause with its buyer. Id. at 11-12 (citations and quotations omitted). Accordingly, the Court granted the motion to compel as to the teardown reports. Similarly, the email communications regarding the teardown work were also not privileged. Id. at 15-16. However, the Court did not order production of the teardown emails, as Defendants had failed to comply with a prior discovery order. Therefore the motion to compel was denied to the extent it sought to compel production of the teardown emails “without complying with the procedures outlined” in that discovery order. Id. at 16.

As to the unredacted royalty reports, the Court rejected Plaintiffs’ argument that these documents contained information about their non-testifying experts. Further, Plaintiffs tried to argue the documents’ disclosure of “attorney’s fees paid in conjunction with licensing and litigating the patents-in-suit against other companies,” while not privileged, was irrelevant and highly sensitive. Id. at 13-14. While the Court was “skeptical” as to the relevance of these documents and recognized their sensitivity, it ordered production, noting that the case’s protective order only allowed withholding of production based on a privilege or immunity and that “in the absence of such an assertion of protection . . . a party may not redact information it unilaterally deems sensitive, embarrassing, or irrelevant. If Plaintiffs feel the Protective Order was inadequate, they could have moved to modify it.” Id. at 14-15.

Finally, as to Plaintiffs’ motion for leave to amend, the Court denied it as unduly delayed, where it was filed on the last day of fact discovery and two years after filing the Complaint. The Court rejected Plaintiffs’ argument that the motion was timely because the parties had previously agreed to a deadline for filing motions to amend to plead willfulness, explaining that while timeliness under a scheduling order is “certainly relevant,” it is not dispositive, citing Third Circuit law on the definition of undue delay as placing an unwarranted burden on the court or when plaintiff has had previous opportunities to amend. Here, “Plaintiffs have already amended the complaint once in [several of the related] actions. Plaintiffs provide no explanation for why they did not seek leave earlier or why the allegations of willfulness were not included in earlier amendments. Plaintiffs’ only ‘reason[] for not amending sooner’ appears to be that the scheduling order’s deadline had not yet elapsed. Given that this motion was filed on the last possible day, which was also the date that fact discovery was scheduled to close, and the delay in filing appears to have been an intentional effort to wait until the last moment, that does not suffice,” and the motion was denied. Id. at 20.

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In a recent Order, Judge Richard G. Andrews denied Plaintiffs’ request to file a motion for summary judgment of infringement in an ANDA action. Impax Laboratories Inc., et al. v. Lannett Holdings Inc., et al., C.A. No. 14-984-RGA (D. Del. Feb. 29, 2016).

In opposition to Plaintiffs’ request, Defendants argued that “Plaintiffs’ response to Defendants’ discovery is barely started.” Judge Andrews found, however, that while that may be true, the issue for infringement is “(1) construction of the claims, which has already been done, and (2) comparison of the claims with the accused ANDA product.” (internal citation omitted). Judge Andrews thus found that “Plaintiffs’ allegedly deficient discovery responses seem to be a makeweight argument.”

However, Defendants also asserted that there is a “genuine factual dispute over the composition of the accused ANDA product.” Judge Andrews found that expert reports, “which will not be finished until late May at the earliest, will be necessary to decide whether there is, or is not, a dispute, and, if there is, what the evidence will show about who has the better argument.” Judge Andrews was thus “dubious about how helpful a summary judgment motion might be.” Judge Andrews also noted that “the schedule for this case really does not have sufficient time built into it for orderly summary judgment practice.” Judge Andrews thus concluded that “I do not believe that summary judgment practice would be efficient or productive,” and ultimately denied Plaintiffs’ request.

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