Articles Posted in Sue L. Robinson

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Judge Robinson recently considered motions arising from Mylan’s at risk launch of a generic version of Anesta’s Amrix product. In 2011, Judge Robinson held a bench trial and determined that although the generic products infringed the patents-in-suit, certain asserted claims were obvious. Mylan launched its generic product the next day. A week later, Judge Robinson granted Anesta’s motion for a temporary restraining order and later issued a preliminary injunction pending appeal to the Federal Circuit. A few days later, Mylan filed an emergency motion with the Federal Circuit, seeking to stay the injunction pending briefing. The Federal Circuit granted the motion and Mylan began selling its generic product again. When it reached the merits of the motion shortly over a month later in July 2011, the Federal Circuit denied the motion in part, prohibition sale of Mylan’s product during the appeal, and granted it in part, staying a portion of Judge Robinson’s preliminary injunction that required Mylan to “take all reasonable steps to recall” its product. In April 2012, the Federal Circuit reversed the finding of invalidity and dismissed the appeal of the preliminary injunction. In April 2012, Judge Robinson entered a final judgment and permanent injunction. Against this background, Judge Robinson recently reviewed motions by Mylan for summary judgment of no lost profits and partial summary judgment of no willfulness. Anesta AG, et al. v. Mylan Pharms., Inc., et al., C.A. No. 08-889-SLR, Memo. Or. at 1-2 (D. Del. Aug. 14, 2014).

Her Honor denied the motion as to plaintiff’s claim for lost profits. Mylan’s argument was “that plaintiffs should be precluded from claiming lost profits because their expert . . . failed to consider price elasticity in his lost profits analysis. When asked at his deposition about price elasticity, [plaintiffs’ expert] explained that price elasticity under the circumstances at bar was ‘relatively modest’ and ‘offset’ by other factors.” Id. at 4. Judge Robinson explained that the Federal Circuit’s “demand for a ‘credible economic analysis’ can be met by a variety of evidence – both fact and expert – depending on the facts of the case and the nature of the markets at issue . . . [and] plaintiffs have presented plausible evidence that the case at bar presents an unusually complex set of facts vis a vis calculating lost profits, due in part to the unique nature of the relevant market and due in part to the brevity of the damages period. Having rejected defendants’ proposition that there are rigid standards applicable to every case, I decline to take the issue of lost profits damages away from the jury.” Id. at 6.

Judge Robinson granted Mylan’s motion for summary judgment of no willful infringement, however, stating “I agree with defendants that, although their launch was at risk, it was not illegal when it took place and, absent a directive from the Federal Circuit to recall their generic products, defendants had no legal obligation to do so. Having committed no illegalities vis a vis the launch, and willfulness generally being irrelevant in the context of ANDA cases, I grant defendants’ motion for partial summary judgment” of no willfulness. Id. at 4.

Finally, Judge Robinson denied Mylan’s motion to exclude a Dr. Steiner. Dr. Steiner had been allowed to testify during the liability phase of the bifurcated trial because it was recognized that he possessed clinical expertise regarding the products at issue. Accordingly, this expertise was relevant and admissible in the damages phase of the trial as well. Id. at 7.

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In a recent memorandum order, Judge Sue L. Robinson denied a defendant’s motion for reconsideration of an earlier denial of a motion for judgment on the pleadings.  Poly-America, L.P. v. API Indus., Inc., Civ. No. 134-693-SLR (D. Del. Aug. 6, 2014).  In its earlier motion for judgment on the pleadings, the defendant argued that its household product design was “plainly dissimilar” to the plaintiff’s design such that it could not, as a matter of law, infringe the plaintiff’s design patent.  The Court disagreed in a decision discussed here.  In its motion for reconsideration, the defendant argued that the “ordinary observer” to whom an accused design may appear “substantially the same” is not an observer of the finished product sold in a store, as the Court believed, but instead is “the industrial purchaser that uses that packaging component to assemble a finished retail product with content.”

The Court disagreed, relying on Supreme Court precedent from 1871 explaining that “ordinary observers of a patented design [are] ‘the principle purchasers of the articles to which designs have given novel appearances,’ i.e., ‘those who buy and use’ the article bearing the design in question.”  Id. at 2 (quoting Gorham Mfg. Co. v. White, 81 U.S. 511 (1871)).  The Court acknowledged that later cases in the Federal Circuit had not specifically addressed the factual scenario at issue here (where the design patent covers a box containing product that the consumer purchases based at least in part on the design of the retail presentation), but disagreed with the defendant that the previous ruling was erroneous as a matter of law.  Id. at 5.

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Judge Sue L. Robinson recently issued a claim construction order in a case alleging infringement of four data storage device patents.  Round Rock Research, LLC v. Sandisk Corp., Civ. No. 12-569-SLR (D. Del. July 21, 2014).  The following claim terms were construed:

  • “control means for generating control signals for controlling operations of the system”
  • “default parameter means coupled to the data storage unit for outputting default parameter data rather than the control parameter data in response to a first control signal from the control means”
  • “control data word”
  • “memory block”
  • “an unused control address”
  • “y-cycles” / “y-clock cycles”
  • “determining usage associated with a logical address” / “to determine usage data of a logical address”

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In Motivation Innovations LLC v. Ulta Salon Cosmetics & Fragrance Inc., Civ. No. 11-615-SLR (D. Del. July 22, 2014), Judge Sue L. Robinson considered defendant’s motions for summary judgment of invalidity, non-infringement, and a Daubert motion to preclude plaintiff’s expert.

Having construed the means-plus-function claims in its order issued on the same day, the Court denied the motion for summary judgment of invalidity as to indefiniteness. Id. at 3-4. The Court also found that defendant had not shown that the claims were anticipated; its argument did not refer to expert testimony and was “superficial.” Id. at 4.

As to the Daubert motion, defendant pointed to the expert’s “lack of formal education,” but the Court pointed out that this expert had 38 years of experience in the relevant field and concluded that the expert was sufficiently qualified.  Id. at 8. The Court did exclude this expert’s testimony to the extent it was incompatible with the Court’s construction. Id. At 10. Examining the expert’s non-excluded testimony as to infringement and in light of the Court’s construction, the Court disagreed with the expert’s infringement analysis and granted motion for summary judgment on the basis of no literal infringement.  Id. at 11, 13.   The Court also granted the motion as to non-infringement under the doctrine of equivalents. Id. at 16.

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In a recent memorandum order, Judge Sue L. Robinson construed claim terms in U.S. Patent No. 5,612,527, entitled “Discount offer redemption system and method.”  Motivation Innovations LLC v. Ulta Salon Cosmetics & Fragrance Inc., Civ. No. 11-615-SLR (D. Del. July 22, 2014).  The following terms were construed:

  • “[A] circulation medium”
  • “[A]ssociating said identification code with data identifying items which are to be offered at a discount” / “associating said identification code means . . . with data identifying items to be offered at a discount”
  • “[A]ssociating said identification code means with the addressee of the circulation medium and with data identifying items to be offered at a discount”
  • “[A]ddressable by said identification code”
  • “[M]eans for reading said identification code provided with said circulation medium”
  • “[U]sing said code reading means to read the identification code indicia means and to create a data file”
  • “[A]ny discount corresponding to an item listed in said data is deducted from the price of the item in the tabulation”
  • “[P]roviding as part of said identification code identification indicia means on said medium for identifying the addressee of said medium”
  • “[T]he user”
  • “[U]sing each data file . . . as a means to study buying habits of the recipient of the medium”
  • “[M]eans associated with said code reading means for tabulating sales of items so that any discount corresponding to an item listed in said data is deducted from the price of the item in the tabulation”
  • “[M]eans for tabulating items”
  • “[M]eans for tabulating items and for recording the items purchased by the bearer of the circulation medium”
  • “[M]eans for calculating the at least one discount on the item offered at discount by said identification mode”

The parties agreed upon the construction of the following terms:

  • “[U]sing said means for tabulating items . . . to cause a discount to be debited against the purchased item”
  • “[T]he bearer of the circulation medium”

Finally, the Court denied the defendants’ motion to strike the plaintiff’s late asserted claim construction positions, noting that it “is ironic that defendant now seeks to prevent plaintiff from” modifying its claim construction positions when defendants’ submission “expressly stated that it ‘reserve[d] the right to modify the foregoing as discovery is ongoing, and in response to any of [p]laintiff’s proposed terms for construction or proposed constructions.”

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Judge Robinson recently considered defendants’ motions to amend their answers in a patent infringement case to include counterclaims of false marking, false advertising, deceptive trade practices, and unenforceability due to inequitable conduct. Judge Robinson concluded that the motions to amend should be denied with the exception of one defendant’s motion to add an inequitable conduct counterclaim, which was granted. Cot’n Wash, Inc., et al. v. Henkel Corp, et al., C.A. No. 12-650-SLR, Memo. Op. at 18 (D. Del. July 11, 2014).

Judge Robinson first considered whether the delay in seeking to amend was undue. Because the two defendants had been in possession of the evidence forming the basis of its false marking, false advertising and deceptive trade practices claims since May 2013 and June 2013 but did not contact the plaintiff until October 2013 and then did not file motions to amend until late January and early February 2014, Judge Robinson found that the delay was undue. With respect to inequitable conduct, however, Judge Robinson found that defendant Sun had waited only one week after obtaining relevant information to raise it with the plaintiff. This did not constitute inequitable conduct. Id. at 9-10.

Judge Robinson next considered the prejudice to plaintiff from the amendments. With respect to the proposed false marking, false advertising and deceptive trade practices claims, Judge Robinson found that the plaintiffs would be prejudiced by the amendment because, although the plaintiffs had been in possession of the relevant evidence, they “did not have the opportunity to review and vet this evidence for discovery purposes in the context of false marking claims.” By contrast, the plaintiffs had agreed to stipulate to inequitable conduct claims “nearly identical” to those proposed by defendant Sun in two related cases in August 2013 and Sun had asserted the underlying claims in August 2013, so the plaintiffs had “adequate opportunity to take discovery on the relevant issues” and were not prejudiced. Id. at 10-11.

Finally, turning to futility of amendment, Judge Robinson found that the false marking allegations failed to state a claim and would therefore be futile but the inequitable conduct claims were adequate and not futile. With respect to false marking, there were not sufficient allegations that the plaintiffs had the requisite intent to deceive nor that the defendants had suffered competitive injury. Id. at 12-16. With respect to inequitable conduct, however, Judge Robinson found that the proposed amendment would not be futile, because defendant Sun had properly pled inequitable conduct under Exergen. Sun alleged that the patent applicants had failed to disclose an inventor of the patent-in-suit, failed to disclose that inventor had publicly demonstrated the invention more than one year prior to filing, and failed to disclose pieces of relevant prior art. These allegations properly pled the “who, what, when, where, and how” of the misrepresentation or omission to the PTO. Thus, Sun’s inequitable conduct amendment was not futile and was allowed. Id. at 16-18.

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Judge Sue L. Robinson recently considered plaintiff Antares Pharma, Inc.’s amended motion for preliminary injunction filed the same day it amended its complaint for infringement of  the three patents-in-suit.  Antares Pharma, Inc. v. Medac Pharma, Inc., et al., C.A. No. 14-270-SLR (D. Del. July 10, 2014).  Judge Robinson denied the motion on the basis that Antares did not meet its burden of showing likelihood of success on the merits.  Id. at 3-15.  Prior to reaching this decision, Judge Robinson found that the patents-in-suit claim a jet injector, as opposed to “an autoinjector or hand-powered syringe.”  Id. at 3.  Judge Robinson construed a “jet-injector” as “a powered injector used to achieve the delivery of medicaments in a high speed stream, that is, at a pressure, force, and speed sufficiently high so that the medicament exits the needle tip as a fluid jet and not as a bolus. The critical difference between a jet injector and autoinjectors or hand-powered syringes is how the medicament is delivered – dispersed remotely from the needle-tip Uet) rather than deposited in a locus near the needle tip (bolus).”  Id. at 4.  While Antares presented expert testimony that defendant’s accused device is a jet injection device, Judge Robinson concluded that likelihood of success on the merits was not established on the record before the Court.  Notably missing was any “comparison of Antares’ jet injector with either a hand syringe or [defendant's] autoinjector,” or any illustration of “the ‘rapid spray’ dispersion of a jet injector.”  Id. at 4-5.

Judge Robinson did find that Antares met its burden of establishing irreparable harm because it “has the only available subcutaneous injector for methotrexate on the market, with [defendant] set to launch its competing produce as early as July 10, 2014.”  Id. at 15.   Judge Robinson found the balance of harms neutral, however, because delaying defendant’s launch would cause monetary damages to defendant.  Id.

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In HBAC Matchmaker Media, Inc. v. CBS Interactive Inc., C.A. No. 13-428-SLR, et al. (D. Del. June 30, 2014) Judge Sue L. Robinson addressed plaintiff’s motion for clarification/reargument regarding the Court’s June 3, 2014 claim construction order (discussed previously here). Judge Robinson denied plaintiff’s motion for reargument, finding that plaintiff failed to demonstrate any of the grounds that would justify reargument. Id. at 2. Judge Robinson did, however, clarify the Court’s construction of “head end system,” construing that term as follows: “[T]he point in a TV system at which all programming is collected and formatted for placement on the TV system. ‘TV system’ necessarily utilizes a conventional television set and/or set-top box for selecting from (and displaying) multiple channels of TV programming.” Id. Judge Robinson reasoned that “[t]his further construction clarifies that the ‘head end system’ and the invention of the ‘393 patent are directed to the specific technology platforms disclosed in the specification, i.e., conventional television systems, especially cable TV systems and other multichannel TV systems.” Id.

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In September 2012, plaintiff Joao Bock Transaction Systems filed suit against Jack Henry & Associates for infringement of U.S. Patent No. 7,096,003, which relates to security for financial transactions and wireless communication device authorization. Following briefing and oral argument, Judge Robinson issued her construction of several disputed claim terms:
- “At least one of . . . and”
- “Communication device”
- “Processes”
- “Processing”
- “Receiver”
- “Signal”
- “Transmitter”
- “Banking Transaction”
- “Central Transaction Processing Computer”
- “Electronic mail message”
- “Limitation”
- “Restriction”
- “Network computer”
- “Processing device”
- “Real time”
- “Transaction”
- “Transaction security apparatus”
- “Transmit(s)”
- “Transmitted”
- “Communication device associated with an individual account holder”
- “Containing information for authorizing or disallowing the transaction”
- “Determines whether the banking transaction is allowed or disallowed”
- “Information regarding a banking transaction”
- “Internet transaction”
- “Automated teller machine account”
- “[A] transmitter, wherein the transmitter transmits a second signal to the communication device or to a second communication device associated with the individual account holder, wherein the second signal contains information regarding the banking transaction”
- “[A] transmitter, wherein the transmitter transmits a periodic transaction record to the communication device or to a second communication device associated with the individual account holder, wherein the periodic transaction record shows a transaction or transactions on the checking account for a time period, wherein the periodic transaction record is transmitted to the communication device or to the second communication device at least one of automatically and in response to a request for the periodic transaction record”
- “[A] transmitter, wherein the transmitter transmits a second signal to the communication device or to a second communication device associated with the individual account holder, wherein the second signal contains information regarding the transaction”
Joao Bock Transaction Systems, LLC v. Jack Henry & Associates, Inc., C.A. No. 12-1138-SLR, Memo. Order at 5-20 (D. Del. June 30, 2014).

Important to her construction of these terms, Judge Robinson explained that the patentees “assert that the ‘003 patent should be recognized as having a priority date of August 8, 1996, the earliest filing date of its related patents, thus also establishing the temporal perspective for those of skill in the art. Without addressing in this order the question of whether the definitions constitute new matter and, therefore, support a later priority date, the court will address the extent to which, if at all, the court is bound by the multiple definitions the patentees choose to give certain claim language during the claim amendment process that took place in the PTO from October 2004 to September 2005. The definitions were not included in the specification, were not the subject of any commentary by the examiner, were made years after the earliest priority date, and were added for litigation purposes, that is, to differentiate the ‘003 patent from a related patent. Most significantly, the definitions added through the auspices of 37 C.F.R. 1.115 are worded in the disjunctive and, rather than narrowing the scope of the claim language or adding clarity to such, instead obscure the scope of the claims, thus confounding the public notice requirement of§ 112, ¶ 2. Given that the definitions are not ‘clearly stated,’ see Vitronics, 90 F.3d at 1582, the court rejects plaintiff’s argument that the court is obligated to embrace them for purposes of the claim construction exercise.” Id. at 4-5.

Because Judge Robinson’s constructions resulted in a narrower claim scope of the patent-in-suit than the scope of a related patent that had been the subject of a separate suit, she found that “the issue of invalidity common to each action [was not] substantially identical” and denied the defendant’s motion for summary judgment of invalidity based on collateral estoppel. Id. at 20 n.34.

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Judge Sue L. Robinson recently denied defendant Gevo, Inc.’s motion for reconsideration of the court’s May 19, 2014 order finding that Gevo did not adequately pursue its defenses of lack of enablement and written description during discovery and, therefore, could not present those defenses at trial.  Butamax™ Advanced Biofuels, LLC v. Gevo, Inc, et al., C.A. No. 11-54-SLR (D. Del. June 27, 2014).  Gevo now asserted that it could present the defenses without expert testimony, but the Court was not persuaded.  Even though Gevo disclosed the defenses in interrogatory responses, “Gevo did not substantially pursue these defenses through the course of discovery and Butamax was not given occasion to thoroughly vet such defenses in preparation for trial.  Moreover, until the motion [for reconsideration], Gevo did not provide the court with an indication that it would be appropriate to go forward with such defenses without expert testimony.”  Id. at 2.

 

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