Articles Posted in Richard G. Andrews

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Judge Andrews recently granted a motion filed by several defendants under Rule 12(c) seeking to invalidate the patents-in-suit as ineligible under 35 U.S.C. § 101. The Court found that two of the patents-in-suit “are directed to the abstract idea of (1) sending information, (2) directing the sent information, (3) monitoring receipt of the sent information, and (4) accumulating records about receipt of the sent information.” Two-Way Media Ltd. v. Comcast Cable Communications, LLC, et al., C.A. No. 14-1006-RGA, Memo. Op. at 8-10 (D. Del. Aug. 15, 2016). Judge Andrews further explained that there was no “inventive concept” sufficient to rescue this abstract idea because, although the specifications pointed to a specific system architecture as the innovation in question, “[n]one of the claims . . . recite or refer to anything that could be described as an architecture.” Id. at 10-11. Two other patents-in-suit were similarly deficient. Id. at 12-15.

Judge Andrews’ decision involved two interesting procedural points that movants may wish to note. First, the patentee argued that the “motion is premature because claim construction is necessary to determine patent eligibility under § 101” but Judge Andrews issued an order requiring the patentee to identify “the claim terms it contends need construction and . . . its proposed constructions.” The Defendants argued that those constructions did not alter the § 101 analysis and Judge Andrews adopted the constructions for purposes of the motion. Id. at 5-6.

Second, the patentee argued that the Court should consider materials from prior proceedings before the PTO and in other litigations, which arguably “demonstrate[] how [its] invention[s] solved specific technical problems and added significant inventive concepts over the prior art.” But Judge Andrews found the materials in question “irrelevant to the § 101 motion for judgment on the pleadings [because] [n]one of the materials addresses a § 101 challenge to claims of the asserted patents” but rather the “novelty and nonobviousness of the claims under§§ 102 and 103, [which] does not bear on whether the claims are directed to patent-eligible subject matter under § 101, [as well as the] history of conception of the invention and commercial embodiments of the invention. Id. at 7.

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Judge Andrews recently issued a decision denying a motion for Rule 11 sanctions finding that the defendants had waited too long to seek sanctions. Rule 11 contains several procedural requirements that must be met in addition to the showing that sanctions are warranted. In this case, the defendants observed the 21-day “safe harbor” of Rule 11(c)(2). But Rule 11, as interpreted by the Third Circuit, also requires that Rule 11 motions be served on the opposing party “promptly . . . before the entry of a final judgment and ‘[w]here appropriate, . . . at an earlier time—as soon as practicable after discovery of the Rule 11 violation.” Dragon Intellectual Property, LLC v. AT&T Services, Inc., et al., C.A. No. 13-2061-RGA, Memo. at 6 (D. Del. July 12, 2016) (internal quotations omitted).

In this case, the defendants argued that Rule 11 requires only “substantial compliance,” which was met by way of a letter the defendants sent to plaintiff in September 2014, expressing an intention to seek Rule 11 sanctions if plaintiffs did not dismiss the case. Defendants did not actually serve and file a Rule 11 motion, however, until November and December 2015, following a favorable Markman order and the withdrawal of plaintiff’s counsel, and a few months before judgment was entered in their favor. Thus, Judge Andrews determined that only the service of the actual motion met the requirements of Rule 11 and that the motion was untimely. Id. at 6-7. “Defendants waited for over a year, and until after the Court issued its Markman decision, to serve the Rule 11 motions. Therefore, Defendants did not serve their motions ‘as soon as practicable after discovery of the Rule 11 violation.’ There is simply no reason why the Rule 11 motions could not have been served earlier.” Id. at 8.

Additionally, because the plaintiff’s case failed based on a “failure to recognize an obvious prosecution history disclaimer,” Judge Andrews found that “it would be improper to award monetary sanctions against Plaintiff for conduct which relates entirely to legal issues” based on Rule 11(c)(5). That subsection of Rule 11 states that the court “must not impose a monetary sanction . . . against a represented party for violating” the requirement that an “attorney or unrepresented party . . . certify that claims, defenses, and other legal contentions are warranted by existing law or by a nonfrivolous argument for extending, modifying, or reversing existing law.” Id. at 8-9.

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In Idexx Laboratories, Inc., et al. v. Charles River Laboratories, Inc., et al., C.A. No. 15-668-RGA (D. Del. July 1, 2016), Judge Richard G. Andrews denied Defendants’ motion to dismiss due to lack of patentable subject matter under Section 101.  The patents-in-suit “are all directed to ” method of determining a presence or absence of an infectious disease in a population of rodents through the use of blood samples placed on collection cards,” and the parties had agreed on a representative claim.  Id. at 2, 6 (internal quotation marks omitted).  The Court concluded that the steps of that claim “are directed to the abstract idea of collecting, analyzing, and reporting results.  This well-known abstract idea is not meaningfully different from those found abstract in numerous other cases.”  Id. at 7.  Looking to recent Federal Circuit case law , the Court further explained that “[t]his case, unlike Enfish, presents a ‘close call[] about how to characterize what the claims are directed to.’ . . . the representative claim at issue here is not ‘unambiguously’ directed to a specific improvement. [] Instead, the abstract idea predominates each step of the claim. Thus, while the claim may implement the abstract idea in a specific and novel way, the ‘character [of the claims] as a whole is directed to excluded subject matter.’ [] Therefore, I ‘defer . . . consideration of the specific claim limitations’ narrowing effect for step two.'”  Id. at 9 (quoting BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC, 2016 WL 3514158, at *5 (Fed. Cir. June 27, 2016); Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).

Turning then to step 2 of Alice, the Court recognized that some of the patent-eligible elements of the claim did recite no more than known and conventional activity, such as use of blood collection cards.  Id. at 10.  But an inventive concept still existed when the claims were “examined as an ordered combination of limitations:” “a specific, novel, implementation of the abstract idea of collecting, analyzing, and reporting.”  Id. at 10-11.  Further, “[t]he advances over the prior art [were] clear.”  Id. at 11.  While Defendant pointed to specific prior art that allegedly disclosed the relevant limitations, the Court explained that “[w]hile the§ 101 inventive concept analysis is facilitated by considerations analogous to those of §§ 102 and 103, it is not a substitute for those statutory requirements. . . .[the reference’s] teachings, though possibly relevant to a § 103 determination, fail to demonstrate the lack of an inventive concept.”  Id. at 12 (internal citations and quotation marks omitted).

Idexx Laboratories, Inc., et al. v. Charles River Laboratories, Inc., et al., C.A. No. 15-668-RGA (D. Del. July 1, 2016)

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Judge Richard G. Andrews recently granted plaintiff’s motion to dismiss defendant’s counterclaim seeking “Declaratory Judgment of lnvalidity and/or Unenforceability for Failure to Comply With the Rules Governing U.S. Stage National Entry of a PCT Application.”  Nox Medical EHF v. Natus Neurology Inc., No. 15-709-RGA (D. Del. Jun. 20, 2016).  In short, after filing the patent application at issue, the PTO notifed the applicant that the inventor oath or declaration was missing.  Id. at 1.  The applicant subsequently supplied the requested oath and declaration.  Id. at 1-2.  Years later, plaintiff filed a statement to correct inventorship, adding an additional inventor, and the PTO issued a Certificate of Correction.  Id. at 2.  Judge Andrews found that defendant’s counterclaim failed as a matter of law because the defects to the patent at issue were fixed by the Certificate of Correction issued pursuant to § 256, which provides that omitting inventors shall not invalidate a patent if the error can be corrected.  Id.  at 2-4.

Nox v. Natus, No. 15-709-RGA

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Judge Richard G. Andrews recently reviewed the documentation provided by Jaguar in support of its request for fees.  Vehicle Interface Technologies, LLC v. Jaguar Land Rover North America, LLC, Nos. 12-1285-RGA, 14-339-RGA (D. Del. June 15, 2016).  Judge Andrews previously granted Jaguar’s motion for fees pursuant to 35 U.S.C. § 285.  Jaguar sought $2,883,048 in fees and costs, calculated from June 2013 which was when Jaguar served its invalidity contentions.  Judge Andrews found that fees should have been calculated beginning in October 2013, which was when VIT had to respond to interrogatories “by identifying claim limitations that it maintained were not present in the asserted prior art references.”  Id. at 3-4.  By that date, “VIT certainly had a reasonable opportunity to consider Defendants’ initial invalidity contentions and was on notice that [certain] prior art rendered VIT’s case objectively baseless.”  Id. at 4.  Judge Andrews also found that it was appropriate for Jaguar to seek fees for VIT’s appeal.  Id. at 4-5.  Regarding the “quantum” of reasonable fees, Judge Andrews found that the appropriate rates for Jaguar’s counsel should have been the “prevailing market rates of Delaware intellectual property attorneys.”  Id. at 5-6.  Judge Andrews also found the number of attorney hours requested were reasonable, but that Jaguar was not entitled to receive fees paid to its expert witnesses.  Id. at 6-9.

Vehicle Interface v. Jaguar, No. 12-1285-RGA

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Judge Richard G. Andrews recently reconsidered a ruling made at trial that the designated deposition testimony of a settled-out defendant’s expert was inadmissible hearsay.  Sanofi v. Glenmark Generics Inc. USA, C.A. No. 14-264-RGA (D. Del. June 17, 2016).  The Court explained that there was nothing unusual about the settlement that would suggest that it was aimed at procuring the expert’s absence from trial, and that the testimony therefore should have been admitted at least under the Rule 32 analysis.  The Court expressed doubt, though, about the admissibility of the testimony under Rule 403, in part because anything helpful in the testimony would likely be “cumulative to whatever [the plaintiff’s own] experts testified to at trial.”  However, because the Court’s ruling not to admit the testimony at trial resulted in an undeveloped record for purposes of the Rule 403 analysis, Judge Andrews decided that “the better course at this point is to tentatively admit the testimony. . . .  The post-trial briefing will reveal whether it has any significant probative value.  If it does not, I will strike it from the record.  If it does, I will consider it.”

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Judge Richard G. Andrews recently granted a motion by Samsung Display Company (“SDC”) to intervene in two cases where SDC-manufactured components formed the basis of a number of the plaintiff’s claims against the defendants (claims that, if successful, would require indemnification by SDC).  MiiCs & Partners America, Inc. v. Toshiba Corp., C.A. No. 14-803-RGA and v. Funai Electric Co., Ltd., 14-804-RGA (D. Del. June 15, 2016).  In considering the two elements of Rule 24 that were disputed, the Court found that SDC’s and the defendants’ interests diverged enough that SDC’s interests might not be adequately represented at trial absent intervention, in part because “SDC ‘is uniquely situated to understand and defend its own product.’”  Id. at 3 (quoting Honeywell Int’l Inc. v. Audiovox Commc’ns Corp., 2005 WL 2465898, at *4 (D. Del. May 18, 2005)).  With respect to the timeliness of SDC’s motion, the plaintiff complained that nearly two years had passed before SDC sought to intervene, warranting a denial of the motion under Rule 24.  The Court rejected that argument, explaining that “for nearly eighteen of the twenty-one months after Plaintiffs filed their initial complaints, these cases progressed slowly or not at all.  Most importantly, almost no ‘proceedings of substance on the merits have occurred’ in these cases.”  Id. at 5 (quoting Mountain Top Condo. Ass’n v. Dave Stabbert Master Builder, Inc., 72 F.3d 361, 369 (3d Cir. 1995)).

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In Reckitt Benckiser Pharmaceuticals Inc., et al. v. Watson Laboratories, Inc., et al., C.A. No. 13-1674-RGA; v. Par Pharmaceutical, Inc., et al., C.A. No. 14-422-RGA (D. Del. June 3, 2016), Judge Richard G. Andrews issued a decision following a bench trial, in which the Court held that one patent-in-suit, while the Defendants’ ANDA products would infringe some of its asserted claims, was invalid. The Court further held the other two patents-in-suit were not invalid, that the Defendants’ ANDA products would infringe the asserted claims of only one of those patents. The patents in this case relate to drugs used for maintenance treatment of opioid dependence.

As to the invalidated patent, the Court held that the term “local pH” in certain claims was indefinite, where “there is no evidence as to a standard type of solvent, volume of solvent, or time at which pH is to be measured.” Id. at 15. The Court also held that the other asserted claims were obvious, but it rejected Defendants’ anticipation arguments. See id. at 16-26. The Court also rejected Defendants’ indefiniteness and obviousness arguments as to two other patents-in-suit, and, as noted above, found that the asserted claims of one of those patents to be infringed.

Reckitt Benckiser Pharmaceuticals Inc., et al. v. Watson Laboratories, Inc., et al., C.A. No. 13-1674-RGA; v. Par Pharmaceutical, Inc., et al., C.A. No. 14-422-RGA (D. Del. June 3, 2016)

 

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Judge Richard G. Andrews recently denied the parties’ joint motion to vacate the Court’s claim construction order following the parties’ settlement and filing of a stipulation of dismissal.  Purdue Pharma LP, et al. v. Acura Pharmaceuticals Inc., et al., No. 15-292-RGA (D. Del. May 24, 2016).  The claim construction decision was issued after the Court agreed to an early claim construction of one term.  “It was suggested that construing the claim as Defendants requested would expedite the resolution of the case as Plaintiffs would be left with no viable infringement theory.”  Id. at 1.  Judge Andrews adopted Plaintiffs’ proposed construction.  Id.  In their joint motion to vacate, the parties offered no argument in support of their request.  Judge Andrews denied the request, noting that the Court “should only grant [the request] if there are exceptional circumstances present”; and “no such circumstances have been suggested, and none occur to me.”   Id. at 2 (citing Cisco Systems, Inc. v. Telcordia Techs, Inc., 590 F.Supp.2d 828, 830 (E.D. Tx. 2008)).

Purdue Pharma v. Acura Pharmaceuticals, No. 15-292-RGA

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Judge Andrews recently bifurcated a case in which the plaintiff and defendant each asserted one patent against the other into two one-patent trials.  Viatech Techs., Inc. v. Microsoft Corp., C.A. No. 14-1226-RGA (D. Del. June 6, 2016).  The patents related to the same technology, and the defendant’s asserted patent was referenced as prior art to the plaintiff’s asserted patent.  However, the Court decided “that it would likely be better to schedule two trials rather than one,” explaining:

First, patent trials are difficult enough for juries without adding to the degree of difficulty.  Trying both patents in one case would involve additional infringement analysis and damages analysis over a trial on just one patent. Extra testimony can lead to confusion.  Second, it appears that Defendant’s assertion of its patent against Plaintiff’s product is of lesser importance in the scheme of things.  Although there was briefing on asserted claim disputes on both patents, the parties agreed that the ten most important ones all related to Plaintiff’s patent.  My judgment is that resolution of the claims involving Plaintiff’s patent will likely resolve the entire case.  Depending on the schedule, it may never be necessary to resolve the claim disputes on Defendant’s patent.  Thus, I think scheduling separate trials is likely to result in economy.

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