In a recent Memorandum Opinion, Judge Richard G. Andrews granted defendant’s motion to dismiss plaintiffs’ complaint for failure to state a claim, on the ground that plaintiffs’ asserted patent , U.S. Patent No. 8,976,955 (“the ’955 patent”), fails to claim patentable subject matter under 35 U.S.C. § 101. Nice Systems Ltd. v. Clickfox, Inc., C.A. No. 15-743-RGA (D. Del. Sept. 15, 2016). The ’955 patent is directed to a “system and method of tracking user web interactions and using that information to generate real-time recommendations when a contact center agent is later contacted by that user.” Id. at 2. Under step one of the Mayo/Alice analysis, Judge Andrews found that “the claims are directed to the abstract idea of cross-channel customer service, i.e., gathering customer information from one communication channel and using it to engage the customer via another communication channel.” Id. at 7. Under step two, Judge Andrews concluded that the “claims . . . do not add any inventive concept to the abstract idea of cross-channel customer service.” Id. at 12. As Judge Andrews explained, “Plaintiffs’ arguments—focusing on the fact that the claims require automatic, real-time analysis—confirm that the claims are merely directed to using generic computer components to add efficiency and speed to the abstract idea of cross-channel customer service.” Id. at 12-13. Judge Andrews also noted that “unlike in DDR Holdings, the problem the ’955 patent purportedly addresses is not itself inherently limited to the specific technological environment claimed by the patentee.” Id. at 14.
Judge Richard G. Andrews recently granted a motion for judgment on the pleadings of invalidity under § 101. Callwave Commc’ns, LLC v. AT&T Mobility, et al., C.A. Nos. 12-1701-RGA, 12-1704-RGA, 12-1788-RGA (D. Del. Sept. 15, 2016). The defendants argued that the ’970 patent at issue, entitled “Location Determination System,” “claim[s] the abstract idea of relating location-related information through an intermediary,” through claims “written so broadly that they could be performed entirely by humans.” Id. at 8. The plaintiff countered that the ’970 patent describes “a specific technologic problem that arises in the context of complex location tracking systems, then claims a specific solution to that problem.” Id. at 8-9. Under the Mayo/Alice analysis, Judge Andrews found that “the claims are directed to the abstract idea of relaying location information via an intermediary.” Id. at 9. The Court added that “adding a vaguely defined intermediary that selectively forwards requests and returns responses does not make the underlying abstract idea any more concrete.” Id. at 10. “Unlike in Enfish, the claims . . . do not describe an improvement in any sort of technology. While plaintiff purports to suggest that the asserted claims solve a specific, technological problem, the claims simply describe a vague method of relaying location information via an intermediary.” Id. at 12.
The Court proceeded to find that the claims were “devoid of any inventive concept” that could save the patent from invalidation, explaining “[t]he only claim elements that describe something even arguably more than just basic steps of requesting location information and responding with the requested information, are the two limitations that state ‘adapted to determine the location of a respective mobile platform according to a property that is predetermined for each mobile platform’ and ‘determining for each mobile platform one of the remote tracking systems that is capable of locating said mobile platform.’” Id. at 14. Judge Andrews explained that these two limitations appear “simply directed to looking at a database to figure out what location tracking service is physically capable of locating a particular mobile platform or type of mobile platform.” Id. This “vague notion,” Judge Andrews found, “does not add anything of substance to the claims.” Id.
Judge Andrews recently denied a request by a patent-infringement defendant for a new trial date to accommodate a partial scheduling conflict with its expert. The conflict, as stated by Judge Andrews, was due to a mix-up that resulted in “Defendant’s main expert [making] other professional plans for the trial week of January 23, 2017 . . . ‘to attend and speak each day’ of” a conference in Florida. Judge Andrews noted that “Plaintiff’s team seems to have made plans based on the scheduled trial dates” and explained “[w]hile I appreciate that Defendant wants to have its main expert available and present for the entire trial, I have to balance that against the inconvenience moving the trial would cause to Plaintiff. Defendant will be able to have its expert present his testimony, whether it is by live video, deposition, or by missing a day of the conference.” E.I. DuPont de Nemours and Co. v. Unifrax I LLC, C.A. No. 14-1250-RGA, Order at 1-2 (D. Del. Sept. 13, 2016).
In a recent Order, Judge Richard G. Andrews granted in part defendants’ motion to preclude plaintiffs’ expert. Impax Laboratories Inc. v. Lannett Holdings Inc., C.A. No. 14-984-RGA (D. Del. Sept. 6, 2016) (consolidated). Judge Andrews explained that the expert at issue “is a doctor and a very well-qualified migraine expert. He is not an economist, an accountant, a statistician, or a businessman.” Id. at 2. Judge Andrews found that the expert is “qualified to have an opinion on nexus [related to commercial success], but there is no evidence of any academic or experiential basis that would permit him to express quantitative business opinions.” Id. Judge Andrews therefore concluded that the expert may not testify “to his opinions on commercial success.” Id.
Judge Andrews otherwise denied defendants’ motion to preclude, explaining:
While I acknowledge the “gate-keeper” function of a federal trial judge, it is not so important that it be done pretrial when the trial is a bench trial. Live 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. Thus, while I am denying most of the motion for now, Defendants may make (and, indeed, in order to preserve the issue, must make) objections at appropriate times. I expect Plaintiffs will lay appropriate foundation for [their expert] as part of their case. Failure to make a timely appropriate objection will result in the objection being waived. The Court will only consider evidence actually adduced at trial (whether through cross-examination or testimony from other witnesses) in ruling on any renewed motion.
Judge Richard G. Andrews recently construed claims related to LCD technology. MiiCs & Partners Am., Inc. v. Toshiba Corp., C.A. No. 14-803-RGA (D. Del. Aug. 31, 2016). Of note, Judge Andrews found that the preamble of three claims “carries patentable weight and is limiting to the claimed ‘liquid crystal display apparatus.’” Id. at 16. The Court explained, after considering the title (“Liquid Crystal Display Apparatus and Method for Lighting Backlight Thereof”), abstract (beginning: “In the liquid crystal display, . . .), and specification (describing the invention and its embodiments as “a liquid crystal display apparatus” fifteen times), “it is inconceivable that a reader would come away with anything but a firm conviction that the inventor invented and intended the claims to encompass a liquid crystal display apparatus, rather than some vague combination of two backlights.” Id. at 17-18.
Judge Andrews recently considered several post-trial motions in a case relating to data storage systems including de-duplication of data. The Court largely denied the motions for judgment as a matter of law and new trial, but found one basis on which to grant the Defendant’s motion for a new trial. One anticipatory reference predated the patent-in-suit by several months, but the inventor testified that he had conceived of the invention earlier. Due to a lack of corroborating evidence, however, the Court found that it had been error to allow the jury to determine whether the reference was or was not prior art. EMC Corp., et al. v. Pure Storage, Inc., C.A. No. 13-1985-RGA, Memo. Op. at 12-18 (D. Del. Sept. 1, 2016). The Plaintiff, Judge Andrews explained, “failed to meet its burden of production with respect to an earlier date of conception. [Plaintiff] did not produce independent corroborating evidence of [the inventor’s]. The [allegedly corroborating] whiteboard photographs are not independently corroborative of [the inventor’s] testimony because [the inventor] took the photographs and had control of the camera, the photograph file names, and the metadata . . . [and] uncovered the photographs in 2015. Further, there is no evidence that [the inventor] showed the whiteboard markings or photographs of them to anyone other than his co-inventors around the time the markings were made.” Id. at 16 (internal citations omitted). The evidence provided, therefore, was both not “independent” and could not be reliably dated and were therefore insufficient to corroborate the testimony regarding conception. Id. at 16-17. Accordingly, Judge Andrews found, the jury “should have been instructed that the [reference at issue] is prior art,” and a new trial was warranted. Moreover, Judge Andrews found that the Defendant was entitled to judgment that the reference at issue disclosed certain elements of the claims and that the Plaintiff was not entitled to judgment that any claim element was missing; accordingly, the Court ordered a new trial on anticipation.
Judge Andrews recently issued a decision finding the claims of one of seven patents-in-suit ineligible under Section 101 as claiming an abstract idea. Sound View Innovations, LLC v. Facebook, Inc., C.A. No. 16-116-RGA, Memo. Op. at 1-2 (D. Del. Aug. 30, 2016). The patent-in-suit, U.S. Patent No. 8,095,593 claims a “method for managing electronic information” consisting of several steps. The Defendant contended that the claims were “directed to the abstract idea of managing information and preferences among members of a community,” which could be “performed mentally using pen and paper.” Id. at 7.
Judge Andrews explained that the “patent does not, as [Plaintiff] argues, provide ‘computer-specific solutions’” but rather “seeks to make a non-technological improvement to the non-technological problem of providing a user with information that is better suited to the user.” Id. at 8-9. Instead, the claims were “directed to the concept of offering more meaningful information to an individual based on his own preferences and the preferences of a group of people with whom he is in pre-defined relationships.” Id. at 10. Moreover, “[n]one of the claims offers a meaningful limitation beyond linking the abstract idea to generic or functionally-described computer components.” Id. at 10-14.
Judge Andrews also rejected the Defendant’s contention that he should consider the PTAB’s § 101 rejection during prosecution of a related application that included a claim that was substantially similar to a claim asserted in this case. Because the PTAB’s decision occurred before the Alice decision, however, Judge Andrews explained, “the PTAB decision has no relevance, even as persuasive authority, to the§ 101 motion under consideration.” Id. at 6-7.
In a series of related actions, Judge Richard G. Andrews considered and denied Plaintiff’s Daubert motion to exclude Defendants’ expert as well as Defendants’ Daubert motion to exclude Plaintiff’s expert Novartis Pharmaceuticals Corporation, et al. v. Breckenridge Pharmaceutical, Inc., C.A. No. 14-1043-RGA (D. Del. Aug. 18, 2016, amended Aug. 25, 2016).
The Court denied the motions without prejudice to the parties’ renewing their objections to the expert testimony at trial, and made additional specific observations regarding these motions. First, as to Defendants’ expert, the Court expected the expert would be able to testify about whether a person of ordinary skill would have been motivated to make a certain decision, explaining that “[s]imply because he could not identify where all his data came from at deposition does not mean he will be unable to do so at trial.” Id. at 1. But the Court was “dubious” as to whether Defendants could succeed on certain of their invalidity theories. Id. As to Plaintiff’s expert, the Court did not anticipate that he would have to conduct independent studies in order to opine on obviousness to combine. Id. at 2. Further, the Court disagreed that the expert misstated the applicable law at his deposition, but “even if he did, that is not a reason to exclude his trial testimony.” Id. at 2-3.
In a recent Memorandum Order, Judge Richard G. Andrews denied without prejudice defendants’ motion to declare the action an exceptional case pursuant to 35 U.S.C. § 285. Sprint Communications Company L.P. v. Comcast Cable Communications, LLC, C.A. No. 12-1013-RGA (D. Del. Aug. 18, 2016). The jury had initially found that defendants infringed certain of plaintiff’s patents, and awarded plaintiff $27.6 million in damages. Id. at 1. Judge Andrews subsequently granted defendants’ motion for judgment as a matter of law and, in the alternative, granted defendants’ motion for a new trial on infringement. Id. at 1-2. Plaintiff appealed, and the appeal is pending.
Judge Andrews denied the motion without prejudice for several reasons:
One, a Federal Circuit decision on the appeal is likely to make the resolution of this motion easier. It is entirely possible that the Federal Circuit could reverse the judgment in this case, thereby mooting the fees motion. It is possible that the Federal Circuit could affirm, and indicate perhaps indirectly through what it writes – that this is a close case. It is also possible that the Federal Circuit could issue a Rule 36 affirmance. A Rule 36 affirmance would be unlikely to be, of much assistance. Overall, deciding the issue in light of the decision on appeal is likely to make the decision easier and better.
Judge Richard G. Andrews recently decided motions in limine in advance of an August 26 pretrial conference in Impax Laboratories Inc., et al., v. Lannett Holdings Inc., et al., No. 14-984-RGA (D. Del. Aug. 24, 2016). Judge Andrews excluded one of defendants’ witnesses after finding he was inadequately disclosed and “[d]efendants ma[d]e no meaningful proffer of what [the witness] might say.” Id. at 1-2. As to another witness, Judge Andrews did not exclude him, but ordered the defendants make him available for deposition prior to trial. Id. at 2. Judge Andrews also precluded the parties’ experts from testifying as to the plain and ordinary meaning of the preambles of the claims, which the Court previously found limiting but did not construe. Id. at 2-3.