Articles Posted in Sue L. Robinson

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Judge Sue Robinson recently ruled in a claim construction order that several patent claims were indefinite under 35 U.S.C. § 112 because the specifications did “not provide guidance as to the type or format of the” structure of means-plus-function claims. Therefore, Her Honor found, the claims failed “to inform, with reasonable certainty, those skilled in the art about the scope of the invention” under the Supreme Court’s Nautilus, Inc. v. Biosig Instruments, Inc. decision. Intellectual Ventures I, LLC, et al. v. Canon Inc., et al., C.A. No. 13-473-SLR, Memo. Or. at 4-34 (D. Del. Mar. 27, 2015). Although Judge Robinson did not find all claims indefinite, her indefiniteness finding applied to a substantial portion of the claim terms in dispute. A representative claim is as follows:

An apparatus, comprising:
a main circuit module;
a connection cable; and
an optical sensor circuit module coupled to the main circuit module through the connection cable, wherein the optical sensor circuit module is configured to:
receive scan control signals from the main circuit module; and
generate timing control signals for extracting an analog image signal in response to the received scan control signals, wherein the received scan control signals do not comprise any timing control signals.

In this claim, Judge Robinson found the specification was lacking guidance regarding both “scan control signals” and “timing control signals” because there is no information “as to the type or format of the signals or what the signals ultimately control. Id. at 4-5.

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Judge Sue L. Robinson recently issued rulings in advance of trial in Intellectual Ventures I, LLC v. Motorola Mobility LLC, C. A. No. 11-908-SLR (D. Del. March 13, 2015).  Judge Robinson prohibited IV from introducing evidence of other entities who have licensed the patents in suit (either individually or as party of a portfolio) or were granted covenants not to sue.  In the 2014 trial Judge Robinson permitted such evidence as proof of secondary considerations because both parties discussed plaintiffs’ business model (which will not be discussed in this case).  Judge Robinson also issued rulings regarding plaintiffs’ doctrine of equivalents defense, but delayed decision on other remaining issues such as the merits of defendant’s divided infringement defense.  Judge Robinson’s rulings on summary judgment can be found here and here.

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In CryoLife, Inc. v. C.R. Bard, Inc. et al., C.A. No.  14-559-SLR (D. Del. Mar. 10, 2015), Plaintiff CryoLife, Inc. (“CryoLife”) filed a declaratory judgment action against Defendants C.R. Bard, Inc. (“Bard”), Davol, Inc. (“Davol”), and Medafor, Inc. (“Medafor”) (collectively, “Defendants”), seeking a declaration that U.S. Patent No. 6,060,461 (“the ’461 patent”) is invalid and not infringed.  Defendants  moved to dismiss the declaratory judgment for lack of subject matter jurisdiction and failure to state a claim. As to subject matter jurisdiction, Judge Robinson found that there was no “dispute that Medafor is the assignee of the ’461 patent and that Medafor has not granted a written license to Bard or Davol.”  Judge Robinson thus explained that “[e]ven though CryoLife argues that Davol is an implied exclusive licensee, it has offered no evidence that Medafor transferred any of its rights to either Bard or Davol.” CryoLife’s identification of certain facts were insufficient to establish that “Medafor could not sue Cryolife for infringement without joining Bard and/or Davol.” Accordingly, Judge Robinson concluded that the court did not have subject matter jurisdiction over Bard and Davol, and granted Defendants’ motion in that regard.

Judge Robinson then addressed Defendants’ motion to dismiss for failure to state a claim. Judge Robinson found that “CryoLife identifie[d] . . . . specific statutory sections regarding invalidity (§§ 102, 103, and/or 112) and provide[d] examples of invalidating prior art.” Further, “Cryolife also allege[d] a lack of written description.” Id. Judge Robinson also explained that “[w]hile the amended complaint does not identify the relevant statutory sections for indirect infringement or use the terms ‘induced infringement’ or ‘contributory infringement,’ Cryolife has pled that there is no direct or indirect infringement.” Judge Robinson therefore denied Defendants’ motion to dismiss for failure to state a claim.

Following the filing of CryoLife’s declaratory judgment action, Medafor filed a counterclaim for infringement and moved for a preliminary injunction. Finding Medafor to have carried its burden, Judge Robinson granted Medafor’s motion for a preliminary injunction. The patent at issue—the ’461 patent—is titled “Topically Applied Clotting Material.” In 2006, Medafor received FDA approval for ARISTA®, an “innovative hemostatic power that is used to control bleeding when conventional methods are ineffective.” On the other hand, CryoLife was “seeking FDA approval to market PerClot for surgical indications (‘PerClot Surgical’) and received FDA approval of its lnvestigational Drug Exemption application on March 27, 2014.”

Addressing the claim limitations at issue, Judge Robinson concluded that “Medafor’s constructions are consistent with the specification” and that “CryoLife has offered no non-infringement arguments using Medafor’s constructions.”  Judge Robinson therefore concluded Medafor showed “a likelihood of success on infringement.” Judge Robinson was unpersuaded by CryoLife’s invalidity arguments, explaining that “CryoLife argues, without expert testimony or declarations, that certain prior art anticipates or, in combination, renders the asserted claims obvious. CryoLife supports its anticipation and obviousness arguments with reference to a table

of invalidity contentions and the barest of attorney argument.” Judge Robinson also found that Medafor carried its burden demonstrating the remaining prerequisites for a preliminary injunction, explaining that “[t]here is sufficient record evidence that Cryolife’s PerClot product is in direct competition with Medafor’s Arista product and that these products are targeted to the same customers and hospitals.” According to Judge Robinson, Medafor made “persuasive arguments for the loss of its customer base and damage to its goodwill.”

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Applying the U.S. Supreme Court’s decision in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), Judge Robinson granted-in-part and denied-in-part defendant Motorola’s summary judgment motion regarding whether Intellectual Ventures’ patents claim inventive subject matter.  Intellectual Ventures I, LLC, et al. v. Motorola Mobility LLC, C.A. No. 11-908-SLR (D. Del. Feb. 24, 2015).  Judge Robinson noted that under current case law “it is clear that computer-based programming constitutes patentable subject matter so long as the basic requirements of § 101 are met[.]”  Id. at 10 (internal quotation omitted).  But, the application of the law to “this area of technology ha[s] been a moving target[.]”  Id. Quoting the Federal Circuit’s recent DDR Holdings decision, Judge Robinson noted that to overcome “Internet-centric” challenges to patent eligibility, the claims must do more than:

recite a commonplace business method aimed at processing business information, applying a known business process to the particular technological environment of the Internet, or creating or altering contractual relations using generic computer functions and conventional network operations, such as the claims in Alice, Ultramercial, buySAFE, Accenture, and Bancorp.

Id.at 10-11 (quoting DDR Holdings, LLC v. Hotels.Com, L.P., 773 F.3d 1245, 1259 (Fed. Cir. 2014).  Applying this analytical framework, Judge Robinson found that the asserted claims of Intellectual Ventures’ U.S. Patent No. 6,557,054, titled “Method and System for Distributing Updates by Presenting Directory of Software Available for User Installation That Is Not Already Installed on User Station,” invalid under § 101.  Judge Robinson found, however, that the asserted claims of U.S. Patent No. 7,409,450,  titled “Transmission Control Protocol/Internet Protocol (TCP/IP) Packet-Centric Wireless Point to Multi-Point (PTMP) Transmission System Architecture,” were drawn to patentable subject matter.  Id. at 13-22.

The claims at issue were:

‘054 Patent

181. A computer implemented method for distributing software updates from a remote computer system to a user station, the method comprising:

presenting, at the user station, as a function of an identification of software already installed on the user station, a directory of software updates available for installation on the user station and not already installed on the user station;

sending to the remote computer system over a communications network a selection of software updates for distribution to the user station, wherein the selection of software updates is selected at the user station as a function of the directory; and

receiving from the remote computer system over the communications network software updates indicated by the selection.

 ‘450 Patent

1 . A method comprising:

coupling one or more subscriber customer premise equipment (CPE) stations with a base station over a shared wireless bandwidth using a packet-centric protocol; and allocating said wireless bandwidth and system resources based on contents of packets to be communicated over said wireless bandwidth, wherein the contents of each packet include a packet header and wherein the allocating is responsive to at least one field in the packet header.

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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.

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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.

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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).

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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.

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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, 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.

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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.”

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