Articles Posted in Sue L. Robinson

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The United States District Court for the District of Delaware announced today that, coinciding with the celebration of her birthday, the Honorable Sue L. Robinson has become a Senior United States District Court Judge. Judge Robinson intends to serve the District of Delaware as a Senior Judge until this summer.

The Court, in light of Judge Robinson’s new role, will be modifying case assignment practices effective immediately. Specifically, Judge Robinson will not receive new criminal or civil case assignments. Until the vacancy left by Judge Robinson is filled, some civil cases will be assigned to a “Vacant Judgeship” and referred to one of Magistrate Judges Thynge, Burke, or Fallon, who will have full authority to manage the Vacant Judgeship docket to the extent permitted by law. As needed, cases on Judge Robinson’s docket or the Vacant Judgeship docket will be reassigned to one of the active District Judges.

The Court’s official announcement outlining these changes can be viewed HERE.

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In Arcelormittal, et al. v. AK Steel Corporation, C.A. No. 13-685-SLR (D. Del. Jan. 19, 2017), Judge Sue L. Robinson granted Defendant’s motion for summary judgment as to non-infringement based on collateral estoppel. Discovery in the present action was limited to evaluating whether Defendant’s accused products had changed since the verdict in a prior action brought by Plaintiff on another patent, where Defendant prevailed on non-infringement. See id. at 1-2.

Noting that collateral estoppel “may also operate to bar relitigation of common issues in actions involving different bur related patents,” the Court rejected Plaintiff’s arguments regarding how Defendant’s products differed in this case and in the prior action. See id. at 6,7.  The case at bar satisfied the required elements for collateral estoppel to apply, as the prior action involved the same parties, products, conduct, and issues. Id. at 10.

In its analysis, the Court also rejected certain of Plaintiff’s arguments regarding alleged concessions made by Defendant during appeal arguments, as the Court had listened to the argument before the Federal Circuit and disagreed that any concession had occurred. Id. at 8 n.8. The Court also rejected Plaintiffs’ arguments that it should receive discovery “as to whether defendant directs or controls the performance of the hot stampers or is in a joint enterprise” such that divided infringement may be implicated, because the claims at bar were not method claims and, furthermore, it appeared that this was discovery Plaintiffs should have taken in the prior action. Id. at 9 & n.9. The Court reached a similar conclusion as to Plaintiff’s arguments that additional discovery was needed as to indirect infringement, as Plaintiffs had already litigated these issues in the prior action. Id. at 9-10.

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Judge Sue L. Robinson revisited the scope of the statutory estoppel applicable in view of instituted IPR proceedings.  Intellectual Ventures I LLC v. Toshiba Corporation, No. 13-453-SLR (D. Del. Jan. 11, 2017).  Judge Robinson previously held that Toshiba was not estopped from presenting a certain obviousness combination at trial because an IPR was not instituted on that ground.  Judge Robinson revisited this decision following supplemental papers submitted in conjunction with the pretrial conference and concluded that, while the Court’s “first look” at the issue was incomplete, the ultimate decision should remain unchanged.  Id. at 1, 3.  Judge Robinson described the issue at hand as a situation in which “the invalidity ground at issue (the Fuse combination) was never raised in the IPR, but reasonably could have been raised during the IPR[.]”  Id. at 2.   Absent specific guidance from the Federal Circuit as to this specific fact pattern, Judge Robinson described the options facing the Court:

[Plaintiff]’s reasoning leads to the conclusion that the PTAB is meant to be the invalidity arbiter of first resort and, therefore, a company that seeks an IPR must bring to the PTAB’s attention every ground the company has reason to think might be relevant; otherwise, it will be estopped from pursuing that ground in litigation. That outcome appears to be inconsistent with all of the limitations imposed by the PTAB on IPR proceedings (e.g., page limits for petitions, 14 point type, and portrait-view claim charts) and leaves for trial only those references initially rejected by the PTAB. On the flip side of the coin is [Defendant]’s reasoning, which leads to the conclusion that a company can play games between the PTAB (IPR) and the courts (litigation), asserting some references in connection with the IPR but reserving some for litigation.

Id. at 3.  Ultimately, Judge Robinson held that since it is not the Court’s “place to make policy decisions, I am not inclined to change my original decision, with the hopes that any appeal may clarify the issue for future judges in future cases.”  Id.

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Judge Sue L. Robinson recently issued a summary judgment opinion addressing a host of non-infringement and invalidity arguments. Among the arguments raised was a motion for summary judgment to “prevent [the defendant, Toshiba] from asserting invalidity challenges against the ‘819 patent, because Toshiba was the petitioner in an inter partes review (‘IPR’) in which the Patent Trial and Appeal Board (‘PTAB’) found several claims of the ‘819 patent invalid, including asserted claims 17 and 19.” Intellectual Ventures I LLC, et al. v. Toshiba Corp., et al., C.A. No. 13-453-SLR, Memo. Op. at 25-27 (D. Del. Dec. 19, 2016). Plaintiff, IV, argued that one obviousness combination raised in the IPR was also still at issue in the litigation and that Toshiba was therefore estopped from pursuing it in the litigation. Judge Robinson agreed as to that combination. Id.

For another invalidity theory, however, IV argued that the combination of prior art was “based on publicly available patents and printed publications and could have been raised in the inter partes review of the ‘819 patent.” Judge Robinson found that Toshiba was not estopped form maintaining this theory because “Section 315(e)(2) of Title 35 of the United States Code provides in relevant part that ‘[t]he petitioner in an inter partes review of a claim in a patent under this chapter that results in a final written decision under section 318(a) . . . may not assert[] in a civil action arising in whole or in part under section 1338 of title 28 . . . that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review.’ Although . . . Toshiba certainly couldhave raised these additional obviousness grounds based on public documents at the outset of their IPR petition, the Federal Circuit has construed the above language quite literally[, finding that] . . . because the PTAB rejected a certain invalidity ground proposed by the IPR petitioner, no IPR was instituted on that ground and, therefore, petitioner ‘did not raise – nor could it have reasonably raised – the [rejected] ground during the IPR.’” Id. (emphasis in original) (citing Shaw Indus. Grp., Inc. v. Automated Creel Sys., Inc., 817 F.3d 1293 (Fed. Cir. 2016)) (internal citations omitted). Judge Robinson concluded that “[a]lthough extending the above logic to prior art references that were never presented to the PTAB at all (despite their public nature) confounds the very purpose of this parallel administrative proceeding, the court cannot divine a reasoned way around the Federal Circuit’s interpretation.” Id.

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Judge Sue L. Robinson recently granted a plaintiff’s motion for leave to file a second amended complaint alleging induced infringement.  Takeda Pharmaceuticals U.S.A., Inc. v. West-Ward Pharmaceutical Corp., et al., C.A. No. 14-1268-SLR (D. Del. Dec. 14, 2016).  The second amended complaint alleged that the defendant induced infringement of the plaintiff’s patents through its sales personnel who encouraged healthcare providers to prescribe the accused product for an off-label infringing use.  Although the second amended complaint provided “no details concerning any of these conversations – no particulars concerning which providers told which [plaintiff] representatives of statements by which [defendant] representatives, or when these conversations supposedly occurred[,]” id. at 3-4 (emphasis in original), the Court found that the second amended complaint plausibly gave rise to a claim for inducement, and fairly put the defendant on notice of the claims against it.  The Court’s ruling was made based on the Third Circuit’s pleading standard that: “[s]o long as a plaintiff has not used ‘boilerplate and conclusory allegations,’ and has accompanied its legal theory with ‘factual allegations that make [its] theoretically viable claim plausible,’ . . . ‘pleading upon information and belief [is] permissible where it can be shown that the requisite factual information is peculiarly within the defendant’s knowledge or control.'”  Id. at 4 (quoting McDermott v. Clondalkin Grp., Inc., 2016 WL 2893844, at *4 (3d Cir. May 18, 2016)).

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In DNA Genotek Inc. v. Spectrum DNA, et al., C.A. No. 15-661-SLR (D. Del. Dec. 14, 2016), Judge Sue L. Robinson granted Defendants’ renewed motion to dismiss due to lack of personal jurisdiction, having ordered jurisdictional discovery when denying the first motion.

Defendants manufactured a saliva collection device for a third-party DNA testing service (“Ancestry”) that had sold some kits to Delaware customers. Various agreements between Defendants and Ancestry provided that Ancestry owned the intellectual property rights of the accused product, Ancestry was obligated to indemnify Defendants for patent infringement, Defendants were required to manufacture their product in accordance with the third party’s specifications, and Defendants paid Ancestry a fixed price per kit that they could resell to third parties, but Defendants had not resold such kits into Delaware.

Under these facts, the Court concluded that there was no personal jurisdiction under Delaware’s long-arm statute under a theory of dual jurisdiction. The Court distinguished other Delaware case law where dual jurisdiction was found, where a “defendant sold a product directly to national resellers who added nothing significant to the product before selling it through well-established sales channels, often with physical locations in Delaware, to consumers or end-users.” Id. at 7. Here, instead, Defendants had “no control over what happens to the accused products once shipped to Ancestry” where Defendants’ device was made “per Ancestry’s specifications, using intellectual property and tooling owned by Ancestry, in a quantity sufficient to meet Ancestry’s estimated product forecast, and then [sold] . . . exclusively to Ancestry. . . . If [Defendants want] to sell the accused products to someone other than Ancestry, it must first purchase the accused products it manufactures for Ancestry from Ancestry.” Id. at 7-8. There were no other facts present that exhibited intent to serve the Delaware market “based on national distribution” as there had been in other Delaware cases finding jurisdiction. See id. at 8 n.7. Furthermore, “[t]he facts supporting intent are even more attenuated if the court takes into account that there is no evidence the accused product has reached Delaware except as a part of Ancestry’s testing service, making [Defendants’] role analogous to that of a component manufacturer. . . . in cases finding dual jurisdiction over a component manufacturer, something more than the mere presence of millions of the accused products in the United States is needed to demonstrate intent.” Id. at 9.

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In a recent Memorandum Order, Judge Sue L. Robinson resolved various disputes, including defendant’s motion for leave to amend with antitrust counterclaims, limitations on asserted claims and prior art, and whether a certain affidavit was protected under the work product doctrine. Quest Integrity USA, LLC v. Clean Harbors Industrial Services, Inc., C.A. Nos. 14-1482, 14-1483-SLR (D. Del. Nov. 1, 2016).

First, Judge Robinson granted defendant Cokebuster USA Inc.’s motion for leave to file Walker Process antitrust counterclaims, as it was “timely filed and sufficiently pled.” Id. at 1. Judge Robinson ruled, however, that “consistent with the court’s practice, the antitrust counterclaims are hereby bifurcated, to be tried (if at all) after the Federal Circuit has had the opportunity to review the merits of the patent litigation on appeal. Any issues related to discovery shall be addressed at that time.” Id. at 1-2.

Second, Judge Robinson denied plaintiff’s motion for reconsideration, in which plaintiff (“Quest”) complained that “placing limits on the number of claims it can assert through expert discovery and trial is prejudicial.” Id. at 2. Judge Robinson found that “by the time the claim limits were imposed . . . , Quest had sufficient information to choose representative claims: (a) fact discovery was substantially completed; (b) the court’s claim construction order had issued; and (c) Quest initiated the litigation with a preliminary injunction proceeding, giving the parties a substantial amount of information at the outset.” Id. at 2-3.

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Judge Sue L. Robinson recently considered Defendants’ motion for judgment on the pleadings that the patents-in-suit, related to mobile phones and devices using the LTE standard, claim patent-ineligible subject matter under 35 U.S.C. § 101.  Evolved Wireless, LLC v. Apple, Inc., et al., No. 15-542-SLR, et al. (D. Del. Oct. 31, 2016).  Defendants argued that the claims of the patents were merely “directed to a mathematical algorithm for generating a code sequence” and were therefore not protected by our patent laws.  Id. at 8.

Judge Robinson disagreed.  In reaching that conclusion, Judge Robinson found that:

The ‘916 and ‘481 patents describe problems and solutions firmly rooted in technology used for wireless communications. Specifically, the ‘916 patent explains that the number of code sequences available in the prior art to maintain orthogonality was “limited.” As a result, telecommunication systems either had a higher level of interference or were only able to serve a limited number of mobile phones for a particular base station.  The ‘916 patent relates to a technique for optimizing the number of unique code sequences with orthogonality, overcoming the limitations rooted in prior art.

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Declaratory judgment plaintiff Pride Manufacturing filed suit seeking a declaratory judgment that Defendant Evolve Golf’s design patent and US trademark are invalid and not infringed. Evolve answered the complaint, asserting counterclaims of trademark infringement but admitting the Pride does not infringe the design patent. Evolve then sent Pride a release and covenant not-to-sue on the design patent. Nevertheless, Judge Robinson heard and decided cross motions, Evolve’s motion to dismiss for lack of subject matter jurisdiction and Pride’s motion for judgment of non-infringement. Pride Manufacturing Co., LLC v. Evolve Golf, Inc., C.A. No. 15-1034-SLR, Memo. at 1 (D. Del. Oct. 31, 2016).

Judge Robinson first recognized that a “covenant not-to-sue deprives the court of declaratory judgment jurisdiction relating to claims addressed by the covenant.” Id. at 4. Her Honor was “satisfied that, despite the covenant’s lack of any specific product descriptions, the covenant meets the purpose of removing any concern of liability for infringement of the patent currently in suit.” Id. at 5. Thus, the motion to dismiss for lack of jurisdiction was granted and the motion for judgment denied as moot, but, as Judge Robinson explained, “a controversy still exists regarding the trademark infringement claims and counterclaims.” Id.

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In Sony Corporation v. Pace PLC, et al., C.A. No. 15-288-SLR (D. Del. Oct. 24, 2016), Judge Sue L. Robinson issued a claim construction order in which Her Honor concluded that one preamble of an asserted claim was limiting.   The preamble recited: “[a]n information reproducing device for reproducing an information recording medium in which audio data of plural channels are multiplexedly recorded, the information reproducing device comprising:”.

This preamble explained the purpose of the claimed device, and the “recording medium” was not discussed in the body of the claim. Thus, its presence in the preamble gave was necessary to give meaning to the claim. Id. at 3. The preamble also provided an antecedent basis for terms in the body of the claim. Id. Finally, the Court observed that the parties already agreed that the preamble of another claim in this patent that was similar to the disputed preamble was limiting. Id.

Sony Corporation v. Pace PLC, et al., C.A. No. 15-288-SLR (D. Del. Oct. 24, 2016)

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