Articles Posted in Sue L. Robinson

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In Invista North America S.A.R.L., et al, v. M&G USA Corporation, et al., C.A. No. 11-1007-SLR (D. Del. May 13, 2016), Judge Sue L. Robinson denied Plaintiffs’ motion for reconsideration of the “amount and manner of payment of the royalty rate to be paid by defendants,” id. at 2, which the Court had placed into escrow when it had also stayed enforcement of an injunction against Defendants pending final resolution of any appeals from the PTO’s final rejection of all claims of the patent-in-suit. The Court’s royalty rate had been based on an “agreement reached by the parties at the damages phase of the case . . . [r]ather than litigate damages, the parties agreed on a lump sum payment for past infringement . . . [m]athematically, defendants paid plaintiffs one (1) cent per pound” of accused product Id. at 2. Neither the Court nor the parties had “engage[d] in a more extensive reasonable royalty analysis,” and the Court declined to do so now and “embrace plaintiffs’ late presentation for immediate implementation” where Plaintiffs’ proposed rate would increase the rate to four cents per pound. Id. at 2-3.

The Court also clarified that its royalty award had not been “the final word on damages related to future infringement.” Id. at 3 (emphasis added). Instead, “if the validity of the [patent-in-suit] were preserved, the parties would either resolve the issue of future damages by settlement or by litigation.” Id. Until that time, the amount of money determined by the one cent per pound royalty rate would continue to be placed into escrow. Id.

Invista North America S.A.R.L., et al, v. M&G USA Corporation, et al., C.A. No. 11-1007-SLR (D. Del. May 13, 2016)

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In a recent Memorandum Opinion, Judge Sue L. Robinson granted defendant’s motion to dismiss pursuant to Rule 12(b)(6) for lack of patentable subject matter under 35 U.S.C. § 101. Device Enhancement LLC v. Amazon.com, Inc., C.A. No. 15-762-SLR (D. Del. May 17, 2016). Judge Robinson explained that “[i]n trying to sort through the various iterations of the § 101 standard, the court looks to” DDR Holdings and Federal Circuit’s recent decision in Enfish, LLC v. Microsoft Corp., 2016 WL 2756255 (Fed. Cir. May 12, 2016) “as the benchmark in software and computer cases.” The patent-in-suit, U.S. Patent No. 7,747,683 (“the ‘683 patent”) “relates to a method and system for allowing a user of a terminal device to remotely operate upgraded and/or advanced applications without the need for upgrading the client side application or computational resources.” Id. at 13. Under the § 101 analysis, Judge Robinson described the claimed method in further detail as follows:

The claimed method, then, generally provides for the installation of a generic client-side application on the terminal device and the installation of a corresponding remote application on the server (which handles most of the graphical processing). The server exchanges data with the terminal device. Tasks are split between the client-side application and the remote application, albeit without further guidance from the patent. The processed content is then transmitted and the client-side application renders the content and responds to messages.

Id. at 18-19. Judge Robinson explained that the fact “[t]hat the method at bar may be described as the abstract idea of division of labor does not provide the answer to step one of the Alice inquiry as, ‘[a]t some level, all inventions . . . embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.’” Id. at 17. Rather, Judge Robinson observed that “[t]he question such a broad disclosure poses is whether the patent – although computer-centric – would pre-empt substantially all uses of the underlying ideas at issue, that is, using distributed architecture to increase the capabilities of individual devices by using remote resources.” Id. at 19. Considering this question, Judge Robinson found that “[a]lthough, at this time, the degree of specificity required to pass muster under pre-emption is not at the micro-level (e.g., source code), the disclosures of the ‘683 patent are at the macro-level, that is, the patented method uses computerized devices (of any type) in conventional ways (installation of applications, data exchange, and data processing) without delineating any particular way of putting the ideas into practice.” Id.

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In a recent Memorandum Order, Judge Sue L. Robinson denied defendant’s motion for attorney fees. YYZ, LLC v. Pegasystems, Inc., C.A. No. 13-581-SLR (D. Del. May 2, 2016). The court previously issued an opinion and order granting defendant’s motion for summary judgment of invalidity and denying plaintiff’s cross-motion for summary judgment of validity.

First, Judge Robinson rejected defendant’s argument that that this is an exceptional case because plaintiff “knew its claims were objectively invalid over the prior art.” Id. at 3. Defendant focused on plaintiff’s “articulation of the ‘inventive concept’ in its 35 U.S.C § 101 briefing, arguing that such concept identified ‘claim elements that [plaintiff] had already conceded were known in the prior art, many of which were not even recited in the patent claims.’” Id. Judge Robinson noted, however, that the court expended “considerable effort in reaching its invalidity determination and analyzed those very [invalidity] arguments in its opinion.” Id. Judge Robinson found that defendant’s “characterization of plaintiff’s arguments as ‘reckless’ and its claims as ‘clearly invalid’ is in contradiction to the court’s position that the § 101 analysis is an evolving state of the law and a difficult exercise, which does not lend itself to, e.g., shifting fees pursuant to 35 U.S.C. § 285.” Id.

Defendant also argued “that the applicant made material misrepresentations to the PTO to procure the patents-in-suit (which may or may not rise to the level of inequitable conduct) adding to the exceptionality of the case at bar.” Id. at 4. In addition, defendant argued that “plaintiff also failed throughout the litigation to ‘clearly point out how [defendant] could possibly infringe the claims.’” Id. Judge Robinson rejected both of these arguments. First, Judge Robinson noted that the Court had granted plaintiff’s request that the parties brief the motion for invalidity pursuant to § 101 early and that the court stay all deadlines pending the court’s decision. Id. Judge Robinson explained that “[a]t the attorney fee stage, the court will not evaluate the parties’ arguments regarding inequitable conduct (not asserted by defendant as a defense)” or “the sufficiency of plaintiff’s infringement contentions.” Id. According to Judge Robinson, defendant’s arguments “would have the court resolve the issue of infringement of an invalid patent on an incomplete record.” Id.

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Judge Sue L. Robinson recently decided various evidentiary disputes during trial.    SRI Int’l Inc. v. Cisco Sys., Inc., C.A. No. 13-1534-SLR (D. Del. May 9, 2016).  Judge Robinson previously decided motions for summary judgment and pre-trial evidentiary disputes.  Judge Robinson precluded Cisco from presenting its §102(g) defense to the jury because, prior to the letters submitted regarding this dispute, Cisco had failed to “provide its allegations as to the full breadth” of its §102(g) defense.  Id. at 1-2.  Judge Robinson also decided the permissible scope of a late-disclosed fact witness who was also the designated corporate representative sitting at counsel table during trial.  Judge Robinson limited the witnesses’ testimony based on the fact that plaintiff was prejudiced by the insufficient disclosure of the bases for the witness’ testimony, as well as the fact that the witness was not sequestered.  Id. at 2-3.

SRI Int’l v. Cisco Sys, No. 13-1534-SLR

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Following Judge Robinson’s decision in March that the patents-in-suit in this case were not invalid under Section 101, the defendant, AOL, filed a motion to certify the validity decision for interlocutors appeal. Judge Robinson denied the motion, finding that the issue presented was a controlling question of law and could advance the ultimate termination of the litigation, but exercising her discretion not to certify the question. Judge Robinson explained that “the same may be said of many other grounds of invalidity that are questions of law” and certification “is not meant to provide early review of difficult rulings in hard cases.” Improved Search LLC v. AOL Inc., C.A. No. 15-262-SLR, Memo. Or. at 3 (D. Del. May 5, 2016) (internal quotations omitted). Moreover, the fact that Judge Robinson “acknowledged the uncertainty in the developing law under § 101 cannot be the basis for certifying each district court decision on a § 101 motion to the Federal Circuit for review. Given the current popularity of such motions, the certification of each denied motion would surely cause more harm than good and would certainly result in piecemeal litigation.” Id. at 3-4.

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On remand from the Federal Circuit, Judge Robinson is considering the case of an asserted patent that claims the function of silencing a ringing mobile phone by pressing a button on the phone without picking up the call. In considering summary judgment motions, Judge Robinson was faced with construing the term “an alert sound generator for generating an alert sound when the call is received from the remote caller,” and determining whether it uses means-plus-function language. Her Honor explained that “[i]n describing ‘the operation and the state transition’ of the call, the specification explains that ‘an alert sound’ is ‘generated.’ Accordingly, the limitation is defined by its function, i.e., a generator used to generate an alert sound. The court concludes that the limitation is subject to § 112, ¶ 6, with a function ‘generating the alert sound when the call is received from the remote caller’ and a structure ‘alert sound generator.’” Mobilemedia Ideas, LLC v. Apple Inc., C.A. No. 10-258-SLR, Memo. Op. at 10-11 (D. Del. Apr. 11, 2016). Judge Robinson further concluded that the claim at issue was not indefinite because “[c]onsistent with [an expert’s] opinion, the court concludes that those of skill in the art would recognize the structure in the specification and associate it with the corresponding functions of the claim.” Id. at 12-13.

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In a recent Memorandum Order, Judge Sue L. Robinson denied defendant’s motion to transfer venue pursuant to 28 U.S.C. § 1404 to the Northern District of Alabama. Scientific Telecommunications, LLC v. ADTRAN, Inc., C.A. No. 15-647-SLR (D. Del. Apr. 25, 2016). As Judge Robinson noted, both parties are Delaware corporations. Id. at 1. In addition, according to defendant, “it employs over 2,000 people worldwide, including approximately 1,346 employees who work at or are based out of defendant’s operational and corporate headquarters in Huntsville, Alabama.” Id. Further, “[a]ll decisions regarding the design, development, and support of defendant’s accused products are made by its officers and employees located at its Huntsville, Alabama corporate headquarters,” and defendant’s “business records likewise are maintained at its corporate headquarters.” Id.

Judge Robinson recognized “defendant’s ties to the Northern District of Alabama” and that “defendant has asserted a counterclaim based on a non-disclosure agreement (‘NDA’) that must be interpreted under Alabama law.” Id. at 3. Nonetheless, Judge Robinson found that “defendant clearly operates on a global basis, and its incorporation in Delaware reflects its recognition that Delaware is an appropriate jurisdiction for resolution of commercial disputes through litigation.” Id. Judge Robinson explained that “[h]aving accepted the benefits of incorporation under the laws of the State of Delaware, ‘a company should not be successful in arguing that litigation’ in Delaware is ‘inconvenient,’ ‘absent some showing of a unique or unexpected burden.’” Id.

Judge Robinson acknowledged that “litigating in Delaware may be a more expensive exercise for defendant than litigating in Alabama.” Id. at 4. However, under the circumstances at bar, Judge Robinson “decline[d] to elevate the convenience of one party over the other.” Id. Judge Robinson thus denied transfer, noting that “[t]he record at bar does not reflect . . . that litigating in Delaware imposes a unique or unexpected burden on defendant, such that transfer is warranted.” Id.

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Judge Sue L. Robinson recently ruled on a defendant’s motion to dismiss for lack of personal jurisdiction or, in the alternative, to transfer to the Western District of Washington.  Segway Inc., et al. v. Inventist, Inc., Civ. No. 15-808-SLR (D. Del. Apr. 25, 2016).  Judge Robinson found that the defendant was subject to personal jurisdiction in Delaware under the “stream-of-commerce” or “dual jurisdiction” framework because (1) the defendant operated a website (including an online store) that broadly promoted the sale of its accused product, including in Delaware (where plaintiff representatives made three online purchases); (2) the defendant’s accused product was available to customers in Delaware through third parties Amazon.com and Brookstone.com; and (3) the defendant’s accused product was advertised as being available through national retail chains that maintain stores in Delaware.  The Court found that these factors supported a finding of personal jurisdiction under the Delaware long-arm statute, and also a finding that an exercise of such jurisdiction would comport with due process.

With respect to the alternative motion to transfer the case to the Western District of Washington, Judge Robinson found that while Delaware was an appropriate forum under the Third Circuit’s Jumara standard, in this case transfer was warranted.  The Court explained, “[a]lthough defendant clearly has global aspirations, those aspirations are more reflected in its promotional materials than its physical or fiscal presence in Delaware.  At this moment, then, I am persuaded that defendant is accurately characterized as a regional enterprise for whom litigating in Delaware will impose an unreasonable burden.”

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Judge Robinson recently considered evidentiary disputes in advance of trial.  SRI Int’l Inc. v. Cisco Sys., Inc., C.A. No. 13-1534-SLR (D. Del. Apr. 22, 2016).  Among other things, Judge Robinson denied Cisco’s request for its expert to provide a supplemental opinion to rebut plaintiff’s expert’s infringement opinion on the “based on the analysis of network data” limitation.  In the Court’s view, such a request was an attempt to reargue claim construction.  Id. at ¶ 2.  Judge Robinson concluded that the request was based on Cisco’s expert’s failure to address plaintiff’s expert’s opinion in the alternative.  Id.  “Under the circumstances, I see no reason to allow Cisco to finally amend its position on the eve of trial with a supplemental expert report.  The issue should be one of claim construction for purposes of appeal.”  Id.

 

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Judge Sue L. Robinson recently ruled on a number of summary judgment and related pre-trial motions in SRI International, Inc. v. Cisco Systems, Inc., Civ. No. 13-1534-SLR (D. Del. Apr. 11, 2016).  Among other rulings, Judge Robinson denied the defendant’s motion for summary judgment of invalidity under 35 U.S.C. § 101, finding that the plaintiff’s patents, which “address the vulnerability of computer networks’ interoperability and sophisticated integration of technology to attack … are … more complex than ‘merely recit[ing] the performance of some business practice known from the pre-Internet world along with the requirement to perform it on the Internet,’ and are better understood as being ‘necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.'”  Id. at 12 (quoting DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014)).  The Court added that “[t]he claims as an ordered combination (in light of the specification) sufficiently delineate ‘how’ the method is performed to ‘improve the functioning of the computer itself,’ thereby providing an inventive concept.”  Id. at 13 (quoting Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S.Ct. 2347, 2354 (2014)).

Also of note, the Court denied the defendant’s motion for summary judgment of anticipation, explaining that “anticipation cannot be based on the multiple layers of supposition created by Cisco to construct its theory of anticipation[] and still meet the requirement that the claimed limitation be immediately apparent.  Although Cisco has attempted to package its anticipation argument in slightly different language than litigants have in prior litigation,[] teh argument fails as a matter of law.”  Id. at 20 (footnotes omitted).  The Court denied the defendant’s motion, and sua sponte entered summary judgment of no anticipation.  Id.

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