Judge Sue L. Robinson recently granted a defendant’s motion for summary judgment of no remedies. Rosebud LMS, Inc. d/b/a Rosebud PLM v. Adobe Systems Inc., Civ. No. 14-194-SLR (D. Del. Feb. 5, 2015). Because it was undisputed that the plaintiff’s patent issued after the defendant discontinued its accused product, the Court explained that the only remedies potentially available were provisional remedies under 35 U.S.C. § 154(d), based on the publication of the patent application. Id. at 3-4. Here, however, Judge Robinson found that the plaintiff failed to prove that the defendant had actual notice of the published patent application. Specifically, the Court rejected the argument that the defendant had an affirmative duty to search patent applications because of the parties’ litigation history. Id. at 6. The Court also found that the other purported evidence of actual notice showed, at best, constructive notice, which was not sufficient for purposes of awarding provision remedies under § 154(d). Id. at 6-7.
In Round Rock Research, LLC v. Sandisk Corporation, C.A. No. 12-569-SLR (D. Del. Feb. 4, 2015), Judge Sue L. Robinson considered a number of motions for summary judgment regarding infringement and invalidity based on anticipation.
The Court granted two of plaintiff’s motions for summary judgment of no anticipation, granted defendant’s motion for partial summary judgment of invalidity based on anticipation regarding to other claims, and denied defendant’s motion for partial summary judgment of non-infringement. All of the motions related to one of the five patents-in-suit being litigated at this stage, U.S. Patent No. 6,060,719, entitled “Hybrid Memory Management.”
As to one of plaintiff’s motions for no anticipation, Defendant rebutted with the contention that even if a single limitation was not disclosed by two different references, “both references [still] disclose the missing material through incorporation by reference of various other patents.” Id. at 15. But the Court explained that “[p]roving invalidity through anticipation is a disciplined process that requires showing ‘that the four corners of a single, prior art document describe every element of the claimed invention’ . . . Allowing incorporation by reference for purposes of anticipation in the manner attempted by [defendant] would be contrary to the court’s understanding of accepted litigation practice.” Id. at 18 (citations omitted). Accordingly, the Court concluded that neither reference at issue anticipated the asserted claims, and granted plaintiff’s motion for summary judgment of no anticipation. Plaintiff had also filed a second motion for summary judgment of no invalidity, and because defendant conceded that the reference at issue was a basis for obviousness rather than anticipation, the Court granted this motion as well. Id. at 18 n.6.
As to defendant’s own motion for summary judgment of invalidity, the dispute centered around whether the ‘719 patent was entitled to a priority date that pre-dated a certain reference. Late in the case, Plaintiff attempted to offer an attorney declaration to swear behind this reference , which defendant argued should be stricken as untimely. Id. at 21. The Court agreed, explaining that plaintiff was “proffering through [the] attorney a legal position never identified during discovery.” Id. at 21-22. As plaintiff did not present a substantive rebuttal to defendant’s anticipation argument, the Court granted defendant’s motion. Id. at 23.
As to defendant’s motion of non-infringement, the Court concluded that issues of material fact existed, including disputes between the parties’ expert, and denied the motion. See id. at 13-14.
Judge Sue L. Robinson recently denied a motion to compel the plaintiffs to produce call notes made by their sales force personnel in connection with marketing efforts. Forest Laboratories, Inc., et al. v. Apotex Corp., et al., Civ. No. 13-1602-SLR (D. Del. Jan. 23, 2015). Judge Robinson explained that “3.5 million pages of documents already [had been] produced by plaintiffs in this litigation, including thousands of documents related to plaintiffs’ marketing and advertising to doctors . . . .” Id. at 1. The defendants were seeking to avoid liability for indirect infringement by showing that the accused products had a substantial non-infringing use, which they expected to be uncovered in the sales force’s call notes. But Judge Robinson found it “unlikely that, after 3.5 million pages of documents, a substantial non-infringing use (as opposed to speculation about a possible use) would be unearthed through the informal, personal reflections of individual sales personnel.” Id. at 2 (emphasis in original).
In a series of related cases brought by Joao Bock Transaction Systems, LLC, Judge Sue L. Robinson granted defendants’ motions to stay pending a final determination by the Federal Circuit in a different case brought by this plaintiff and involving the same patent-in-suit. E.g. Joao Bock Transaction Systems, LLC v. Capital One Financial Corporation, et al., C.A. No. 14-425-SLR (D. Del. Jan. 12, 2015) (related cases 14-529, 14-530). Because the Federal Circuit will decide whether this patent is invalid under Section 101, a stay would simplify the cases’ issues and streamline the litigations. Id. at 2. The Court pointed out that “under the circumstances at bar, the movants are not seeking an undue litigation advantage, but simply seeking the guidance of the Federal Circuit (as is this court) before having to invest in potentially needless litigation.” Id. at 2-3.
In Invista North America S.A.R.L., et al. v. M&G USA Corporation, et al., C.A. No. 11-1007-SLR, defendants filed motions to stay the bifurcated damages and willfulness stages of the case, and for relief from judgment under Rule 60(b), following entry of final judgment of infringement for plaintiffs.
In addition to appealing that judgment, defendants had also filed requests for reexamination with the PTO, and the PTO subsequently issued an office action rejecting all claims of the patent-in-suit as invalid. As a result, even though the Federal Circuit affirmed the district court’s final judgment, defendants moved to stay the damages and willfulness portions of the case, and for relief from judgment under Rule 60(b) in light of the reexamination process.
Judge Robinson denied both motions. (D. Del. Jan. 14, 2015). A stay would “impose a clear tactical disadvantage to [plaintiffs], the party with a final judgment in hand obtained at great cost, given the fact that [defendants had] defended itself vigorously.” Id. at 3. Instead, once damages had been determined, the Court would “consider whether it is appropriate to maintain the status quo at that point in time, depending on the status of the reexamination proceeding.” Id. at 4.
As to the 60(b) motion, the Court concluded that the PTO’s non-final office action was “simply a preliminary determination of its legal conclusions, [and] it does not constitute the kind of ‘new evidence’ that courts generally view as sufficient to change the outcome of the trial.” Id. at 5. The Court also rejected defendants’ other arguments that plaintiffs “made post-verdict ‘contradictory representations’ to the European Patent Office” warranting relief, and that the recent Federal Circuit decisions regarding indefiniteness should be considered pursuant to Rule 60, “despite the fact that [defendants] never presented the defense of indefiniteness at trial or on appeal.” Id. Finally, the Court disagreed that an injunction was no longer equitable I light of the PTO’s rejections; it “decline[d] to nullify a remedy approved by the Federal Circuit on the basis of reexamination proceedings still in their infancy.” Id. at 6.
In Intellectual Ventures I LLC, et al. v. Canon Inc., et al., C.A. No. 13-473-SLR (D. Del. Dec. 16 2014), Judge Sue L. Robinson limited the number of patents to be presented at the Markman hearing. Judge Robinson explained that the Court was presented with “65 disputed terms from 95 claims in 11 patents,” and that the Court’s resources were not “substantial enough to warrant a claim construction decision to issue on all 11 patents on or before January 27, 2015.” Judge Robinson therefore ordered the plaintiffs to select the six patents and related limitations they would like to present at the December 22, 2014 Markman hearing. Judge Robinson did note that the Court would “discuss with the parties at that time the disposition of the remaining patents in terms of the case schedule.”
In a memorandum opinion, Judge Sue L. Robinson granted and denied in part defendants’ motion to dismiss plaintiffs’ claims of infringement of U.S. Patent Nos. 7,664,701 (“the ’701 patent:), 8,083,137 (“the ’137 patent”), 7,603,382 (“the ’382 patent”), and 7,260,587 (“the ’587 patent”) based on the failure of those patents to recite patentable subject matter pursuant to 35 U.S.C. § 101. Intellectual Ventures I LLC et al. v. Manufacturers and Traders Trust Company, C.A. No. 13-1274-SLR (D. Del. Dec. 18, 2014).
First, Judge Robinson determined that the Court “may proceed on a § 101 analysis” without a claim construction, “as the parties’ arguments are not focused on specific claim limitations, but instead on the broader concepts of the claims and the computer components used.” Id. at 9-10.
Judge Robinson then relied on the two-step framework set forth in Alice Corp. Ply. Ltd. v. CLS Bank Int’l, 134 S.Ct. 2347(2014) to assess the subject matter eligibility of each of the asserted patents. Starting with the ’137 Patent, Judge Robinson noted that it disclosed “a system and method which allows consumer users to establish self-imposed limits on the user’s spending (borrowing) such that when the limit is reached the consuming user is notified,” which Judge Robinson determined to be a “longstanding and fundamental practice, utilized in personal and business finances” under the first prong of Alice. Id. at 11-12. Turning to Alice’s second prong, Judge Robinson found that plaintiffs’ arguments failed, given that an “abstract idea implemented on a computer [that] allows for more or faster monitoring of accounts is not the crux of the patentability analysis.” Id. at 13. Judge Robinson further noted that “[t]he computer and components (central processor) described in the specification are generic. The database is also generic; the specification does not describe a ‘specially programmed database,’ but a database used to store data.” Id. at 14. Judge Robinson further explained that the recitation of a “means for storing,” a “means for presenting transaction summary data,” and a “means for listing,” did not change the analysis, “as only generic computers and components are disclosed in the specification.” Id. at 15. Judge Robinson thus found the ’137 patent invalid for lack of patentable subject matter. Id. at 15-16.
Addressing the ’832 patent, Judge Robinson noted that it is directed to “a system for selectively tailoring information delivered to an Internet user depending upon the particular needs of the user.” Id. at 16. Judge Robinson explained that “[i]nstead of working in a ‘normal, expected manner,’ the ’382 patent describes an idea and solution for customized web page content, [and] thus, ‘the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.’” Id. at 18. Judge Robinson therefore found that the ’832 patent recites patentable subject matter.
Turning to the ’587 patent, Judge Robinson noted that it disclosed “a method, system and apparatus for automatically organizing a large number of images that may be obtained from a variety of different sources,” which was found to be “akin to a computerized photo album, a routine and conventional idea” under the first prong of Alice. Id. at 20. As to the second prong, Judge Robinson found that “[t]he claims do no more than ‘computerize’ a known idea for organizing images” and therefore concluded that the ’587 patent was invalid for lack of patentable subject matter. Id. at 21-22.
As to the ’701 patent, Judge Robinson noted that the patent’s central idea is directed to “providing a user with aliases to use in conducting transactions,” which was found to be an “abstract idea” under Alice’s first prong, given that “[t]he use of aliases to maintain privacy in financial transactions is not limited to Internet transactions.” Id. at 22-23. Pursuant to the second prong, Judge Robinson noted that “in order to pass muster under § 101, it is no longer sufficient to use the Internet through generic computer components to achieve a useful result.” Judge Robinson determined that the ’701 patent fell under such a category, and thus found the ’701 patent was invalid for failure to recite patentable subject matter. Id. at 25-26.
Judge Sue Robinson has invalidated U.S. Patent Nos. 5,862,321 and 6,144,997, which relate to digital file identification and had been asserted against Amazon and Barnes & Noble, as claiming abstract ideas under Section 101 and Alice Corp. Cloud Stachel, LLC v. Amazon.com, Inc., et al., C.A. No. 13-941-SLR, 13-942-SLR, Memo. Op. at 19 (D. Del. Dec. 18, 2014).
The patents claimed a system for transferring location information for documents, allowing users to access files without being limited by the memory available on the device they are using. Judge Robinson held that this was an abstract idea, accepting the defendants’ characterization of the claimed inventions as similar to cataloging documents to aid retrieval of the documents, which had existed for “[n]early two millennia.” Id. at 13-14. Turning to whether there were sufficient limitations on the abstract idea, Judge Robinson found that there were not, accepting the defendants’ argument that any limitation present was essentially a conventional computer component or process that operates similarly to a book of call numbers in a library. Id. at 14-18. Accordingly, Judge Robinson concluded that “[a]llowing the asserted claims to survive would curb any innovation related to computerized cataloguing of documents to facilitate their retrieval from storage, which would monopolize the ‘abstract idea.’” Id. at 18.
Judge Robinson also explained that a claim construction decision was not necessary for her finding of Section 101 invalidity, because she would have reached the same conclusion even if she had adopted all of the plaintiff’s proposed constructions. Id. at 1 n.2.
Judge Sue L. Robinson recently granted a defendant’s motion for summary judgment that a patented financial transaction security apparatus was invalid under 35 U.S.C. § 101. Joao Bock Transaction Sys., LLC v. Jack Henry & Assocs., Inc., Civ. No. 12-1138-SLR (D. Del. Dec. 15, 2014). The Court described the invention as adding “transaction security by allowing interaction between the central processing computer and a communication device to enable the point-of-sale terminal operator of the card holder to allow or deny a transaction using the communication device over a communications network.” Id. at 2-3. The Court agreed with the defendant’s argument that the claims at issue were directed to the abstract idea of, essentially, enabling a bank customer to give a stop payment instruction to a bank on a given check presented for payment, and having the bank honor that instruction by locating the check at issue and not paying it. See id. at 12-14.
The Court then considered whether the claimed abstract idea was limited by an inventive concept such that “the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.” Id. at 14 (quoting Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2355 (2014)). The Court rejected the plaintiff’s argument that “the claims use ‘specific computers’ with bank processing software, making them ‘special purpose computers[,]’” and found, based on the specification, that “[t]he computer components are being employed for basic functions, including storage, transmitting and receiving information . . . .” Id. at 14-15. The Court added that “[w]hile the computer components do allow the abstract idea to be performed more quickly, this does not impose a meaningful limit on the scope of the claim.” Id. at 15.
In Tessera, Inc. v. Amkor Technology, Inc., C.A. No. 12-852-SLR (D. Del. Dec. 10, 2014), Judge Sue L. Robinson recently denied plaintiff’s motion to vacate, modify, or correct an arbitration award connected with the parties’ ongoing patent infringement dispute. The parties had previously entered into an agreement that licensed plaintiff’s technology and patents to defendant, and disputes would be settled by arbitration. Id. at 1-2. The parties had adjudicated a number of disputes in arbitration relating to royalty payments, in which plaintiff was awarded damages that also included damages based on conduct following the termination of the license agreement. Defendant unsuccessfully attempted to appeal this award in California state court. Its motion before this Court to vacate, modify, or correct the arbitration award claimed that the parties had agreed to arbitrate license royalties, but not “patent infringement after the termination of their license”; as a result, the arbitration award’s inclusion of damages based on post-termination conduct was improper, and this Court, not the California state courts, had jurisdiction to review the arbitrator’s award of post-termination damages. Id. at 5.
The Court disagreed, noting that the agreement’s arbitration clause was broad enough to cover post-termination damages. Id. at 5. In addition, the Court chose to abstain from hearing the matter, citing the fact that the license agreement was governed by California law, that the California state courts were already involved in the matter, and that the merits of defendant’s arguments had already been rejected by the California courts. Id. at 6-7. Further, defendant had “invoked the jurisdiction of the California courts until it was handed an adverse decision.” Id. at 7.