Articles Posted in Sue L. Robinson

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Judge Sue L. Robinson recently denied defendants’ motion to partially stay this case pending inter partes review of four of the ten patents in suit.  Intellectual Ventures I LLC v. Toshiba Corporation, C.A. No. 13-453-SLR-SRF (D. Del. May 15, 2015).  Judge Robinson began the Court’s analysis by recognizing how the America Invents Act changed the “playing field” for patent disputes:

 I start with the recognition that the instant litigation reflects a business dispute between patent owners and alleged infringers. Traditionally, most business disputes were, and should have been, resolved through a business solution; because businesses are really people, business solutions are not generally reached without the motivating force of a firm trial date. Of course, the traditional playing field for patent disputes has been dramatically altered by such legislation as the AIA and its far-reaching ramifications, including its intrusion into the courtroom and the exercise of judicial discretion, and the generation of a cottage industry for administrative review of patent validity.

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Rather than resolving business disputes, we are now reviewing patents through the administrative lens of the PTO, which has had to increase its size by several thousand employees (a 31 % increase in personnel) to take on the tasks assigned by Congress. Consistent with its mandate, the PTAB has accepted 65% of the patent claims challenged through IPR, and has found 38% of those claims invalid. It perhaps is understandable, then, that I approach this exercise with a degree of cynicism.  Nevertheless, with this context in mind, I will analyze the facts of record under the appropriate standard of review.

Id. at 3-5.

Turning to the motion to stay, Judge Robinson noted that because Intellectual Ventures’ core business is licensing patents, it would suffer undue prejudice if the case is stayed.  Id. at 6.  And, Judge Robinson found that Toshiba did not demonstrate “a clear case of hardship or inequity if the motion for stay is denied.”  Id.  Because Toshiba chose to challenge validity through an IPR proceeding it “cannot complain that it is being prejudiced by the dual track proceedings it initiated.”  Id.  Judge Robinson also found that a stay would not simplify issues because the technology at issue in the IPR patents overlaps with the patents not subject to IPR, so discovery would proceed regardless of a stay.  Id. at 7.  For that reason, and because the IPR proceedings would conclude prior to claim construction, the status of the case weighed against stay.  “Rather than stay and fragment the litigation process, it makes imminent sense to proceed with the litigation and take whatever guidance and valuable analysis provided by the PTAB into account as is appropriate.”  Id. at 7-8.

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Judge Robinson recently denied a motion to dismiss filed by a declaratory judgment defendant and patent owner. The plaintiff, Corning Inc., filed a declaratory judgment suit in Delaware seeking judgment that it does not infringe the defendant’s, DSM, patents and that those patents are invalid. DSM responded with a motion to dismiss, arguing that Corning’s claims arise from the parties’ supply agreement, which contained an Illinois forum selection clause. Corning responded to the motion by arguing that its patent claims do not relate to the supply agreement and are therefore not governed by that clause. DMS then filed a suit asserting both breach of contract and patent infringement claims in the Northern District of Illinois. Corning Inc. v. DSM Desotech, Inc., et al., C.A. No. 14-1081-SLR, Memo. Or. at 1-2 (D. Del. Apr. 16, 2015).

Judge Robinson denied the motion to dismiss, finding “no dispute that the breach of contract claims belong in Illinois . . . [or] that Corning filed its declaratory judgment action in Delaware first and that, as such, DSM’s patent infringement claims are compulsory counterclaims in the Delaware case.” Id. at 2. Thus, there were “no overlapping substantive issues between the breach of contract claim and the patent infringement and invalidity claims . . . [and the] mere possibility of . . . a factual overlap . . . supports neither a motion to dismiss nor a motion to transfer.” Id. at 3.

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Judge Sue L. Robinson recently issued the Court’s Memorandum Order determining the appropriate amount of fees awarded to Amazon.com.  Technology Innovations, LLC v. Amazon.com, Inc., C.A. No. 11-690-SLR (D. Del. April 20, 2015).  The fees were awarded as a result of Judge Robinson’s previous decision sanctioning Technology Innovations for its “objectively unreasonable” claim construction positions.  See previous decisions here and here.   Amazon.com requested over $100,000 in fees.  After reviewing each category of claimed fees, Judge Robinson awarded Amazon.com $51,046.  Among other things, Judge Robinson awarded half the requested amount for briefing a motion to dismiss and Amazon’s reply to the Court’s show cause order, determining that the number of timekeepers used to produce 38 pages of briefing was excessive.  Id. at 2, 3.  Judge Robinson also reduced the requested reimbursement related to invalidity contentions, finding that the Court “ha[d] no basis to award a $470 hourly rate to a third year associate[,]” and lowering the rate to $250.  Id.

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Judge Sue L. Robinson recently dismissed willful infringement claims in two cases filed by Spherix Inc.  Spherix Inc. v. Cisco Sys., Inc., Civ. No. 14-393-SLR (D. Del. Mar. 30, 2015); Spherix Inc. v. Juniper Networks, Inc., Civ. No. 14-578-SLR (D. Del. Mar. 30, 2015).  The willfulness claims were based on the allegation that the defendants had knowledge of the patents-in-suit “from the date of the Nortel patent auction, as each of these patents were part of the patent portfolio for sale.”  Judge Robinson noted that the Nortel patent portfolio “contained more than 6,000 patents” and declined to infer knowledge of the patents-in-suit “from the defendant’s participation in a bidding process on a portfolio containing over 6,000 patents.”   With respect to one patent asserted against Juniper Networks, which was one of thirty-one references cited by the PTO examiner during prosecution of one of Juniper Network’s patents, Judge Robinson found that the allegations willfulness were insufficient, explaining, “the fact that the ‘123 patent was referenced during prosecution of two of defendant’s over 1,700 patents . . . is not compelling evidence of knowledge . . . .”

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In Apeldyn Corp. v. Sony Corp. et al., C.A. No. 11-440-SLR (D. Del. Apr. 2, 2015), Judge Sue L. Robinson granted defendants’ motion for summary judgment of non-infringement and motion for summary judgment of invalidity of U.S. Patent No. 5,347,382 (“the ‘832 patent”). Defendants moved for summary judgment of non-infringement of claim 20 of the ’832 patent on the basis of collateral estoppel. As Judge Robinson explained, “[t]he parties do not dispute that the same patent, the same claim, and the same accused products are at issue in the present case as were at issue in the 08-568 case [previously litigated in the District of Delaware]. Rather, the parties dispute whether: (1) the issue was actually litigated; and (2) plaintiff was ‘deprived of crucial evidence’ in the 08-568 case and, therefore, did not have a full and fair chance to litigate the issue in question.” Id. at 12.  As to whether the issue was previously litigated, Judge Robinson noted that “the court’s analysis regarding the drive signal pertained to both claim 1 and claim 20,” and thus concluded that “the issue before the court was actually litigated.” Id. at 13. Moreover, while plaintiff alleged that the inventor of the ‘832 patent “recently discovered a way to measure voltage from the circuitry on a broken LCD,” Judge Robinson explained that “the court [was] not persuaded that plaintiff was deprived of crucial evidence that resulted in an inability to fully and fairly litigate the issue in question in the 08-568 case.” Id. at 13-18. Judge Robinson therefore granted defendants’ motion for summary judgment of non-infringement due to collateral estoppel. Id. at 18.

As to defendants’ motion for summary judgment of invalidity, defendants argued that claim 20 of the ‘382 patent “was anticipated by four separate prior art references.”  Id. Judge Robinson explained that although “all four prior art references were before the examiner during reexamination, plaintiff’s invalidity expert . . . only noted a single difference between the prior art references and claim 20.” Id. at 19. Judge Robinson ultimately concluded that “[a]s the concept of switching between intermediate values is the only alleged difference between claim 20 and the prior art, the court grants defendants’ summary judgment of invalidity of claim 20.” Id. at 22.

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Judge Sue L. Robinson recently granted Automatic Transactions, LLC’s (“ATL”) motions to dismiss declaratory judgment claims seeking to invalidate 14 of its 28 patents.  NRC Corp. v. Automated Transactions, LLC, Civ. No. 14-779-SLR; Nautilus Hyosung America, Inc. v. Automated Transactions, LLC, Civ. No. 14-1189-SLR (D. Del. Mar. 30, 2015).  The declaratory judgment claims were filed at around the same time ATL moved to dismiss a number of infringement cases against the declaratory judgment plaintiffs’ customers.  ATL offered the dismissed customers covenants not to sue, but did not make the same offers to the declaratory judgment plaintiffs.  However, ATL’s managing member represented that “ATL has no plans to initiate any legal proceedings related to its patent portfolio[,]” and ATL further represented that it “has wound down its litigation efforts” and “has decided to sell its patent portfolio rather than engage in any further enforcement efforts.”  Id. at 3-4.  As a result, and in the interest of preserving judicial resources, Judge Robinson granted the motions to dismiss, without prejudice to their renewal if either ATL or another owner of the patents attempts in the future to enforce them against either the declaratory judgment plaintiffs or their customers.  Id. at 4.

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Judge Sue L. Robinson recently granted defendants’ motion to dismiss plaintiff’s claims of willful patent infringement in Rothschild Mobile Imaging Innovations, LLC v. Mitek Systems, Inc., et al., C.A. No. 14-617-SLR (D. Del. Mar. 30, 2015).  Plaintiff’s complaint alleged knowledge of the patents-in-suit as of the filing of the lawsuit.  Id. at 4.  However, under In re Seagate Tech., LLC, 497 F.3d 1360, 1374 (Fed. Cir. 2007), “a willfulness claim asserted in the original complaint must necessarily be grounded exclusively in the accused infringer’s pre-filing conduct.”  Id. at 4.   Therefore, Judge Robinson concluded that “the mere notice of infringement gleaned from the complaint does not pass muster for a willfulness claim under Rule 8″; and that the complaint did not plead facts establishing “objective recklessness of the infringement risk.”  Id. at 4-5.

 

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Judge Robinson recently denied two patent infringement defendants’ motion for attorneys’ fees under 35 U.S.C. § 285 in a case in which the plaintiff gave the defendants covenants not to sue two days before the summary judgment and claim construction hearing. Under the Supreme Court’s Octane Fitness decision, Her Honor found no evidence that the case was exceptional where the defendants “basically argue[d] that these cases are ‘exceptional’ because they would have prevailed on their various defenses if the cases had not been dismissed.’” Computer Software Protection, LLC v. Adobe Systems Inc., C.A. No. 12-451-SLR, Memo. Or. at 3-5 (D. Del. Mar. 31, 2015). As Judge Robinson explained, “however, none of the defenses posited by defendants are so evident from the record at bar that the court can say with any certainty that defendants not only would have succeeded on the merits, but that the strength of their arguments would have been exceptionally dispositive. Indeed, in a case where settlements were reached with other parties, and the court did not construe the claims, or resolve multiple discovery disputes, or resolve motions to dismiss or for summary judgment, to characterize these circumstances as exceptional is exceptionally presumptuous, as well as inconsistent with the court’s understanding of what justifies the fee-shifting provisions of § 285.” Id. at 5. Judge Robinson also noted that she was “not inclined to address the merits of [the asserted] defenses as though the cases had not been dismissed, a monumental waste of judicial resources in the context of a discretionary paradigm.” Id. at 5 n.5.

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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 ruled on a motion to stay with respect to defendants’ patent misuse and antitrust counterclaims.  Intellectual Ventures I LLC v. Toshiba Corporation, et al., Civ. A. No. 13-453-SLR (D. Del. Mar. 20, 2015).  Judge Robinson explained that, in most cases, “patent misuse defenses and antitrust counterclaims are related to, and co-extensive with, the scope of the patent litigation in whcih they are asserted.”  Id. at 3.  In such cases, it makes sense “to stay consideration of such defenses and counterclaims, as they are based in large measure on the efficacy of the patent litigation itself . . . .”  Id.  The defendants argued that their counterclaims were different than the typical case, because the patent misuse and antitrust counterclaims were not focused simply on the asserted patents, but instead on the plaintiff’s “3,700+” patent portfolio.  Id.  Judge Robinson agreed to a point, and ordered that the counterclaims were stayed to the extent they involve validity of the plaintiff’s patent portfolio.  But to the extent the antitrust counterclaims related to “numerosity and value (i.e., presuming validity) of [the plaintiff’s] patent portfolio and [the plaintiff’s] allegedly improper leveraging of such, I agree that a stay is not warranted, as there are no overlapping issues with [the plaintiff’s] case.”  Id. at 4.  Judge Robinson ruled that such counterclaims could proceed, but on a bifurcated schedule.

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