In Comcast IP Holdings I, LLC v. Sprint Communications Company L.P., et al., C.A. No. 12-205-RGA (D. Del. Aug. 22, 2014), Judge Richard G. Andrews recently construed a single disputed term (“parsing”) found in U.S. Patent Nos. 7,012,916 and 8,204,046. The Court explained that “[u]ntil recently, the parties had agreed that ‘parsing’ had a plain and ordinary meaning,” but now had submitted competing constructions. Id. at 1. Having heard oral argument on this issue on August 20, the Court did not adopt either party’s construction in full, but its construction (“An automated process of analyzing a string according to a set of rules of a grammar”) was closer to what plaintiff had proposed. Id. at 3.
Judge Andrews recently issued a claim construction opinion in Alltech Associates., Inc. v. Teledyne Instruments, Inc., C.A. No. 13-425-RGA (D. Del. Aug. 25, 2014). The following terms from the plaintiff’s patents, U.S. Patent Nos. 8,115,930, 8,305,581, 8,305,582, and 8,314,934, were construed by the Court:
- “during a/the/said chromatographic run”
- “collecting the one or more components from the stream in a faction collector during the chromatographic run in response to a change in the composite signal during said chromatographic run”
- “a fraction collector operatively adapted to collect a fraction in response to a change in the composite signal during said chromatographic run”
- “collecting the one or more components from the stream in a fraction collector during the chromatographic run in response to a change in at least one of said signals during said chromatographic run”
- “a fraction collector to collect at least one fraction corresponding to one of said components in response to a change in at least one of said signals during said chromatographic run”
- “composite signal”
- “actively controlling fluid flow”
- “active splitter”
- “actively moving”
The following terms from the defendant’s patents, U.S. Patents Nos. 7,419,598 and 8,414,773, were construed:
- “solvent-level indicating signal”
- “initiating a replenishment process”
- “immersing a solvent compatible portion of a pressure sensor or bubbler for generating the solvent-level indicating signal in the solvent reservoir before the chromatographic run”
- “target time of run resolution”
- “gradient profile”
- “performing chromatography on the sample with the at least one gradient run for samples in which the target resolution and target time of run resolution were met with the at least one gradient run”
- “pilot run”
Judge Richard G. Andrews recently considered the parties’ dispute over the terms of a Protective Order regarding source code print-outs. Infinite Data LLC v. Intel Corp, et al., C.A. No. 14-391-RGA (D. Del. Aug. 8, 2014). Defendants proposed that source code would be made available on a standalone computer at any of the offices of Defendants’ outside counsel, but that any print-outs be kept only at the office of Plaintiff’s counsel. Id. Alternatively, Defendants proposed that Plaintiff could choose to use an escrow agent, as set forth in the D. Del. Default Standard for Access to Source Code. Plaintiff objected arguing that it would be unfairly burdensome to require its experts to travel to review source code at another location and then travel again to review print-outs. Judge Andrews disagreed finding that Defendants’ proposals would protect confidentiality without “unfairly burdening” Plaintiff. Id. Judge Andrews further held that if Plaintiff chose to use an escrow agent, any associated expenses would be shared by the parties. Id.
In Immersion Corporation v. HTC Corporation, C.A. No. 12-259-RGA (D. Del. Aug. 7, 2014), Judge Richard G. Andrews granted defendants’ motion to compel in part. Judge Andrews had ordered that Immersion Corporation (“Immersion”) provide a “supplemental privilege log regarding all documents in its control relating to” Stout Risius Ross, Inc. (“SRR”), the “financial consulting firm hired by Immersion’s counsel to conduct royalty and licensing analysis.” Id. at 1 & n.1. Considering whether the documents in question were protected by the attorney-client privilege or work product immunity, Judge Andrews noted that Immersion’s business “is the licensing of patents” and that “[a]ll of the requested documents were created by a financial consultant in aid of Immersion’s licensing program.” Id. at 4.
Judge Andrews concluded that several e-mails from an RSS advisor to Immersion’s counsel that included draft slides from SRR were not protected by the attorney-client privilege given that the documents were “primarily for business purposes as [they] provide factual information about licensing/royalty rates, the primary purpose of the Plaintiff’s business.” Id. at 4-5. Judge Andrews also concluded that other documents that included draft slides that were incorporated in the slides in the advisor’s e-mails were not protected by work product immunity given that the documents were “created for business purposes (licensing).” Id. at 5-6. Judge Andrews ordered that the foregoing documents be produced. Id. at 6.
Regarding a document that provided a summary of Immersion’s mobile licensing agreements, Judge Andrews noted that “the Court is not convinced that there is an evidentiary basis to conclude it is protected by work product.” Id. at 5. Judge Andrews concluded, however, that there was no need to produce this document, as “it merely factually summarizes license agreements that have already been produced.” Id.
Judge Richard Andrews recently issued his construction of several disputed claim terms of patents related to capturing images on mobile devices for document management, particularly processing checks. Mitek Sys., Inc. v. TIS America Inc., et al., C.A. No. 12-1208-RGS, Memo. Op. at 1 (D. Del. Aug. 6, 2014). Judge Andrews construed the following disputed terms:
- “smaller color image”
- “adapted to be recognized by at least one financial processing system”
- “entering the extracted financial content from identified the at least one field into a new financial document with at least one corresponding field”
Interestingly, with respect to the last term, which defendants asserted was insolubly ambiguous, Judge Andrews explained that “[t]he dispute here is that the term recites ‘from identified the,’ rather than ‘from the identified.’ Claim 9, on which claim 10 depends recites ‘from the identified.’ Clearly this term is a typo. It is within my power to correct it, and I therefore do so.” Id. at 4 (citing Novo Industries, L.P. v. Micro Molds Corp., 350 F.3d 1348 (Fed. Cir. 2003)).
In Vehicle Interface Technologies, LLC v. Jaguar Land Rover North America, LLC, C. A. No. 14-339-RGA (D. Del. Aug. 6, 2014), Judge Richard G. Andrews recently denied defendant’s motion to dismiss plaintiff’s complaint. In a prior action between the parties, plaintiff had named additional accused products toward the close of fact discovery; this Court had granted defendant’s request to preclude these additional products from the suit, and on the same day plaintiff filed a new lawsuit including these additional accused products. Id. at 1. Defendant now moved to dismiss this second lawsuit, arguing plaintiff was barred by the doctrine of claim splitting and because the suit was a collateral attack on the Court’s previous order. Id.
In denying the motion as to claim splitting, the Court pointed out that, in the prior suit, defendant “previously relied on the differences between the accused products” to argue plaintiff could not add them, whereas now it pointed out the “similarities between the Plaintiff’s description of the products in the initial and present suit.” Id. at 2 (emphasis added). The Court explained that “[t]his Court denied the Plaintiff’s attempt to amend its [infringement contentions] because the Defendant argued that functional differences between the previously accused product and the newly accused products would cause it undue prejudice. The Defendant cannot have its cake and eat it too. The Court thus does not find the doctrine of claim splitting to bar the current claim against the Defendant.” Id. at 2-3.
As to the collateral attack argument, the Court did not interpret cases cited by defendant as barring plaintiff’s suit because the cases were factually distinguishable. See id. at 3-5. Instead, “[t]he Court’s previous order precluding the Plaintiff from amending its [infringement contentions] was applicable to that case only. The cases cited by the Defendant involve situations where the second action would have the effect of reversing the court’s decision in previous cases. This is not the case here. It therefore follows that this Court does not find the Plaintiff’s current action to be an impermissible collateral attack.” Id. at 5.
In Pragmatus Telecom LLC v. Newegg Inc., C.A. No. 12-1533-RGA (D. Del. July 25, 2014), Judge Richard G. Andrews denied defendant’s motion for attorney’s fees and costs, which defendant filed following plaintiff’s unopposed motion to dismiss pursuant to Fed. R. Civ. P. 41(a)(2). Judge Andrews explained that attorney’s fees may be awarded only to a “prevailing party” pursuant to 35 U.S.C. § 285, and that under Supreme Court and Federal Circuit precedent, a party must “win a dispute within the case in favor of it that materially alters the legal relationship between the parties at the time of the judgment” to be considered a “prevailing party.” Id. at 4.
Judge Andrews concluded that defendant could not be considered the prevailing party, and therefore denied its motion for attorney’s fees under § 285: “I have made no finding regarding any substantive issue in the case. I have not construed any terms, resolved a contested motion to dismiss, or resolved any motions for summary judgment. Discovery was ongoing when the case was dismissed. Furthermore, unlike in Highway Equip., where there was no reason given for the motion to dismiss, here the unopposed motion to dismiss states that it is a result of a licensing agreement with Moxie Software, Inc. and LivePerson, Inc., the two companies that provide the live chat software to [defendant].” Id. at 5. Judge Andrews went on to note that “[i]f there were a prevailing party, it would seem that it would more likely be [plaintiff], as [plaintiff] filed suit because it believed that its patent was infringed, and as a result, in part because of the suit, [plaintiff] was able to negotiate a license covering potential infringement of its asserted patent.” Id. at 6. Given that defendant could not be considered a “prevailing party” Judge Andrews also denied defendant’s motion for costs, as a requirement of both Fed. R. Civ. P. 54(d)(1) and Local Rule 54.1(a)(1) is that for a party to be awarded costs, it must be a “prevailing party.” Id. at 8.
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.
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
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.
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.