Judge Robinson recently issued an interesting order addressing procedural issues touching on expert testimony in aid of claim construction and the timing of indefiniteness arguments. Judge Robinson had previously issued a claim construction order that found two key terms of the patents-in-suit indefinite. The plaintiff then submitted a motion for reconsideration of the claim construction order. “Although neither party [previously] identified the need for expert testimony in connection with claim construction,” Judge Robinson considered the argument that expert testimony was necessary. Her Honor concluded: “[g]iven the procedural posture of the case, that is, the claim limitations at issue apparently are dispositive . . . I conclude that the better course (in terms of process) is to withdraw my determination of indefiniteness (and any construction of the limitations at issue) pending completion of expert discovery. In connection with the anticipated summary judgment motion exercise, the court will again undertake construction of these limitations, at which point defendant may renew its argument that the limitations are indefinite.” Courtesy Products, LLC v. Hamilton Beach Brands, Inc., C.A. No. 13-2012-SLR, Memo. Or. at 1-2 (D. Del. Jan. 20, 2016).
Judge Sue L. Robinson recently granted a motion for judgment on the pleadings that U.S. Patent No. 5,612,527 is invalid under 35 U.S.C. § 101. Motivation Innovations, LLC v. Petsmart, Inc., No. 13-957-SLR (D. Del. Jan. 12, 2016). The ‘527 patent “disclose[d] and claim[ed] methods for redeeming discount offers by associating a machine-readable identification code, such as a barcode, with data identifying items to be offered at a discount.” Id. at 13. Judge Robinson discussed the evolution of cases since the Supreme Court’s Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S.Ct. 2347 (2014), noting:
the complete rejection of patentability for computer programs to the almost complete acceptance of such, to the current (apparent) requirements that the patent claims in suit (1) disclose a problem “necessarily rooted in computer technology,” and (2) claim a solution that (a) not only departs from the “routine and conventional” use of the technology, but (b) is sufficiently specific so as to negate the risk of pre-emption.
Id. at 10. As such, the Court’s analysis under § 101 is a difficult exercise. Id. at 11. Applying the Alice framework, Judge Robinson first determined that the claimed invention was directed to “the abstract idea of using coupons to provide discounts.” Id. at 16. Having found the claims were directed to a patent-ineligible concept, Judge Robinson turned to the next step in the Alice framework to determine whether additional limitations of the claims merely “recite conventional or routine activity or computer technology.” Id. Judge Robinson determined the claims were invalid because the additional limitations involved “‘routine and conventional’ computer technology to redeem discounts and track customer spending habits.” Id. at 17. Continue reading
Judge Sue L. Robinson recently denied a defendant’s motion to dismiss pursuant to 35 U.S.C. § 101 and to transfer to the District of Utah. C. R. Bard, Inc. v. AngioDynamics, Inc., Civ. No. 15-218-SLR (D. Del. Jan. 12, 2016). At issue were a patented medical procedure and systems relating to the infusion of fluids into a patient. Claim 1 of the ‘478 patent recited: “[a] method of performing a power injection procedure, comprising:
taking an x-ray of a subcutaneously implanted access port in a patient to determine whether the access port includes a radiographic feature indicating that the access port is suitable for flowing fluid at a rate of at least 1 milliliter per second through the access port, the access port defining one or more fluid reservoirs, each fluid reservoir accessible through a cannula-penetrable septum;
identifying the indicating radiographic feature on the x-ray; and
flowing a fluid through the access port at a rate of at least 1 milliliter per second.
The ‘417 and ‘460 patents were directed to injectable vascular access ports through which the ‘478 patent’s method could be implemented.
Judge Robinson agreed with the defendant that the ‘478 patent “involves looking at an x-ray to determine whether the access port carries an identification feature and identifying such feature.” Id. at 24. The Court added, “[w]hile the claim is limited by the presence of the access port, such limitation does not change the conclusion that the ‘determining’ step is an abstract idea.” Id. However, the Court denied the motion to dismiss under section 101 because “the parties’ arguments . . . conflate the §101 analysis with anticipation and obviousness arguments for which the court routinely allows full discovery and makes its decisions based on a full record.” Id. at 25.
Judge Robinson also denied the motion to transfer to the District of Utah, finding that the balance of the Jumara factors weighed against a transfer. Specifically, the Court explained that the “convenience of witnesses” factor is really not about inconvenience, but instead about unavailability. Id. at 5. In this, the defendant failed to indicate that any witness would be unwilling to attend trial in Delaware. The Court also rejected the argument that the plaintiff was forum shopping in order to avoid unfavorable rulings in the District of Utah, explaining that such a decision is no different than a plaintiff “choosing a venue that it believes to be more favorable to its claims for whatever reason.” Id. at 4.
Judge Robinson previously granted a permanent injunction in this case in March 2014. The defendants have now moved for relief from continued application of that injunction, arguing that the rationale for the injunction has changed warranting modification of the injunction. Invista N.Am. S.A.R.L., et al. v. M&G USA Corp., et al., C.A. No. 11-1007-SLR, Memo. Or. at 1-2 (D. Del. Dec. 28, 2015).
Judge Robinson began her analysis of defendants’ request by rejecting the contention that the PTO’s invalidiation of the patent in suit during reexamination was grounds to modify the injunction because “the PTO’s determination is far from a final one, and . . . the Federal Circuit has already reviewed the ‘216 patent on appeal and affirmed the jury’s verdict of validity. Therefore, while the reexamination proceeding may be one factor to review in connection with defendants’ request for relief, it is by no means dispositive.” Id. at 3.
“With respect to the ‘different competitive reality’ that exists now,” however, Judge Robinson found that “the record before the court reflects several significant factors which have changed since (or were not apparent to the court in) March 2014.” Id. The Court’s prior determination that there were only two suppliers of products covered by the patented technology in the market (the plaintiff and the defendant) was no longer true in light of at least two other suppliers. “Moreover, the fact that plaintiffs have made no commercial in-roads with its . . . product since March 2014 indicates that the patented technology is not plaintiffs’ primary revenue source and calls into question whether such technology actually drove customer demand for defendants’ . . . product.” Id. at 3-4.
Overall, therefore, Judge Robinson found that the analytical framework for a permanent injunction had changed: “As to the first prong of the test, likelihood of success on the merits, the PTO’s finding of invalidity on reexamination – while not final – certainly adds an element of ambiguity to the analysis, when there was none in March 2014. The second prong of the analysis is irreparable harm. As noted, the harm advanced by plaintiffs in 2014 was ‘lost sales and market share, leading to the loss of research and development activities, a loss of goodwill in the market, and a forced loss of their patent exclusivity.’ Plaintiffs have had more than 18 months to generate market share for their PolyShield product and have failed to do so. Without sales in the first instance, it is difficult to justify imposition of injunctive relief based on lost sales and market share.” Id. at 4. Moreover, the balance of hardships weighed in favor of the defendants given that the plaintiff could be adequately compensated by a royalty (which Judge Robinson ordered be deposited in escrow in case the patent-in-suit survived appeal) and the “public interest is evenly balanced at best, with the ‘216 patent’s validity under scrutiny and its legal monopoly reducing competition.” Id. at 5.
Intellectual Ventures I, LLC, et al. v. Toshiba Corporation, C.A. No. 13-453-SLR-SRF (D. Del. Dec. 9, 2015), Judge Sue L. Robinson ordered that the stay of Defendant’s antitrust counterclaims remain in place until the patent claims in the case were resolved, “consistent with [Judge Robinson’s] normal practice.” Id. at 1. The Court concluded that “the crux of [Defendant’s] antitrust theories is the ‘poor quality’ of plaintiffs’ patents. . . . So long as [Defendant] relies on the ‘quality’ of the patent portfolio rather than its numerosity and the way it’s asserted . . . Defendant [had] not assuaged the concerns [the Court had] previously identified” with regard to not staying the antitrust claims. See D.I. 96 (March 20, 2015 order granting motion to stay antitrust counterclaims as to those that involve the validity of Plaintiffs’ patent portfolio, but denying motion to the extent the counterclaims relied on “the numerosity and value (i.e., presuming validity) of [Plaintiffs’] patent portfolio” ).
In Arcelormittal France v. AK Steel Corp., et al., C.A. Nos. 10-050, 13-865-SLR (D. Del. Dec. 4, 2015), Judge Sue L. Robinson granted defendants’ motion for summary judgment of no infringement and invalidity, and denied plaintiffs’ motion to dismiss for lack of subject matter jurisdiction in C.A. No. 10-050. As Judge Robinson noted, “[t]he above captioned litigation has a convoluted procedural history.” Id. at 2 (full procedural history summarized on pages 2-5). Following a jury verdict in defendants’ favor in C.A. No. 10-050, plaintiffs appealed. The Federal Circuit (i) upheld the claim construction in part and reversed in part; (ii) reversed the jury’s verdict of anticipation; and (iii) with respect to obviousness, concluded that a new trial was required because the claim construction error prevented the jury from properly considering plaintiffs’ evidence of commercial success (“ArcelorMittal I”). Id.
During the appeal, plaintiffs obtained U.S. Patent No. RE44,153E (“the RE153 patent”). Id. at 3. Plaintiffs subsequently filed a complaint for patent infringement of the RE153 patent in C.A. No. 13-685 against defendant AK Steel Corp., and filed a motion for leave to file a second amended complaint in C.A. No. 10-050, substituting the RE153 for the originally asserted patent, U.S. Patent No. 6,296,805 (“the ‘805 patent”). Id. Defendants then moved for entry of summary judgment in C.A. No. 10-050, arguing that the RE153 patent was invalid pursuant to 35 U.S.C. § 251(d). Id. at 4. The court granted that motion, having concluded that RE153 patent was improperly broadened. Id. The Federal Circuit affirmed and reversed that ruling in part (“ArcelorMittal II”), finding that “district court properly concluded that claims 1 through 23 of the RE153 patent were improperly broadened under § 251 and therefore invalid,” but “erred in invalidating claims 24 and 25, which the parties concede maintain the same scope as the original claims.” Id. at 5. The Federal Circuit remanded the case for further proceedings. Id.
Here, plaintiffs argued that C.A. No. 10-050 should be dismissed for lack of subject matter jurisdiction because (1) claims 24 and 25 were never at issue in C.A. No. 10-050; (2) all of the asserted claims of the RE153 patent have been held invalid; and (3) the absence of any case or controversy requires dismissal. Id. at 6. Judge Robinson rejected plaintiffs’ argument, first explaining that “Claims 24 and 25 of the RE153 patent are ‘substantially identical’ to claim 1 of the ‘805 patent, as established by the Federal Circuit in ArcelorMittal II and consistent with the parties’ concession.” Id. at 7. Thus, according to Judge Robinson, “claims 24 and 25 of the RE153 patent were asserted in Civ. No. 10-050 as a matter of law,” and plaintiffs’ motion to dismiss must be denied. Id. at 7-8. Judge Robinson noted that the “RE153 patent simply took the place of the ‘805 patent upon its surrender.” Id.
In their motion for summary judgment, defendants argued in general that “because claims 24 and 25 of the RE153 patent have the same scope as claim 1 of the ‘805 patent, the motions are appropriately resolved consistent with the 2011 trial record and the mandate of the Federal Circuit in ArcelorMittal I.” Id. at 6. Judge Robinson agreed. First, Judge Robinson granted defendants’ motion for summary judgment of no infringement, noting that following ArcelorMittal I, plaintiffs had “conceded – by not addressing – the fact that the trial record had no evidence of past infringement of claim 1 of the ‘805 patent as construed by the Federal Circuit.” Id. at 9. Judge Robinson thus reasoned that “[g]iven the fact that I would not allow the record to be opened on remand if the ‘805 patent were still at issue, and given that plaintiffs are not asserting pre-trial acts of infringement, I find that there are no genuine issues of material fact as to infringement of claims 24 and 25 of the RE153 patent.” Id.
Judge Robinson also granted defendants’ motion for summary judgment of invalidity. Judge Robinson observed that “[t]he question once again is whether, under the circumstances at bar, I should allow plaintiffs to start with a clean slate, as though no trial and no appeal had ever occurred in Civ. No. 10-050.” Id. at 11. Judge Robinson “decline[d] to do so, and confine[d] [the Court’s] analysis to the scope of the Federal Circuit’s mandate in ArcelorMittal I.” Id. Judge Robinson concluded “plaintiffs have not identified any genuine issues of material fact sufficient to overcome defendants’ prima facie case of obviousness.” Id. Specifically, Judge Robinson explained that “defendants contend (and plaintiffs concede by not addressing)” that there was not a sufficient nexus between commercial success and the patented invention. Id.
Judge Robinson did grant plaintiffs’ motion to amend in C.A. No. 13-865, which sought “permission to assert yet another patent against AK Steel – U.S. Reissue Patent No. RE44,940 (“the RE940 patent”), a continuation of the patent application that issued as the RE153 patent and which itself issued on June 10, 2014.” Id. at 5.
Judge Sue L. Robinson recently found several claim terms indefinite in a claim construction order relating to coffee brewing machines. Courtesy Prods., L.L.C. v. Hamilton Beach Brands, Inc., Civ. No. 13-2012-SLR (D. Del. Nov. 18, 2015). Specifically, Judge Robinson found that the following claim terms indefinite:
- “sufficiently large to hold one of the filter packs and the heated water while brewing without a level of the heated water rising above and overflowing the open top”
- “sufficiently large to hold at least one of the filter packs and the heated water while brewing without a level of the heated water rising above and overflowing the open top”
These terms were found indefinite because the specification provided no information about “the variables involved (such as flow of water into and out of the reservoir and the impact of the filter pack permeability.” “Without any detail on such variables that would influence the ‘level of the heated water,’ the court concludes that the disputed limitations are not precise enough to afford clear notice of what is claimed and do not provide reasonable certainty as to the scope of the invention.” Id. at 5 (internal quotation marks omitted).
The Court also found the following terms indefinite:
- “the brew baskets being inserted into the location in the beverage brewing machine”
- “the brew baskets being individually inserted into the location during an associated brewing operating”
- “the brewing machine heating water from the water reservoir”
These terms were found indefinite for reciting both an apparatus and a method of using that apparatus. See IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005). Here, Judge Robinson found that “a person of ordinary skill in the art would not understand whether the claims at bar are infringed by an apparatus capable of heating water and having brew baskets inserted or when a person actually uses the beverage brewing system to heat water and inserts a brew basket.” Id. at 11. The Court found five more claim terms indefinite for the same reason.
In the on-going litigation between Intellectual Ventures (IV) and Canon, Judge Robinson has denied several motions for summary judgment of non-infringement and for summary judgment of invalidity including both anticipation and subject matter eligibility arguments, with a few limited exceptions in which summary judgment was granted. Several of the rulings finding infringement related to patents involving doctrine of equivalents issues. For one patent, Judge Robinson granted summary judgment of non-infringement based on the principle that if “a theory of equivalence would vitiate a claim limitation, however, then there can be no infringement under the doctrine of equivalents as a matter of law.” Intellectual Ventures I, LLC, et al. v. Canon Inc., et al., C.A. No. 13-473-SLR, Memo. Op. at 60-62 (D. Del. Nov. 9, 2015) (citing Tronzo v. Biomet, Inc., 156 F.3d 1154, 1160 (Fed. Cir. 1998). With respect to another patent, Canon alleged that claim scope had been surrendered and IV responded that it was asserting only literal infringement. Judge Robinson found that because IV did not respond to Canon’s argument, it would be precluded from asserting equivalents at trial. Id. at 30.
In analyzing invalidity of one patent-in-suit, Judge Robinson also concluded that a doctoral thesis that was available in archives at MIT but would have been difficult to find for anyone who did not already know of its existence was not prior art because it could not serve as “public notice.” Id. at 34-36.
Judge Robinson rejected the portion of Canon’s summary judgment motion seeking a finding of indefiniteness because similar arguments had already been rejected during claim construction: “The court agrees with IV in that Canon’s indefiniteness arguments were considered in its claim construction order and Canon offers no fresh reasons to compel a different conclusion. Essentially, this portion of Canon’s motion for summary judgment equates to an untimely motion for reargument. Nonetheless, Canon’s arguments regarding IV’s expert’s use of the words ‘single receive path’ were taken out of context. Indefiniteness is not based on an expert’s utilization of a phrase to contrast the invention with prior art. Rather, § 112, 1f 2 requires ‘that a patent’s claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty.’ As the court previously held, this term meets that standard in light of the disclosures contained within the specification.” Id. at 6-8.
Last Friday, Judge Sue Robinson issued a temporary restraining order prohibiting Dr. Reddy’s Laboratories (DRL) from selling a generic esomeprazole product due to its likelihood of confusion with plaintiff AstraZeneca’s Prilosec® and Nexium® tablets. AstraZeneca AB, et al. v. Dr. Reddy’s Laboratories, Inc., C.A. No. 15-988-SLR, Memo. at 13-14 (D. Del. Nov. 6, 2015).
AstraZeneca holds three federal trademark registrations covering the color purple for gastrointestinal pharmaceuticals as well as one registration for the phrase “THE PURPLE PILL®.” It has used the color purple in branding gastrointestinal drugs, including Prilosec® and Nexium®, since 1989 and has sold approximately 22.6 billion purple capsules in that time. Approximately six years ago, DRL began selling a generic version of Prilosec®, which used a half-purple, half-yellow-or-grey capsule. In recent years, several generic versions of Nexium® have also been marketed by other companies, each of which used blue or white capsules. Most recently, in September 2015, DRL launched its generic version of Nexium® using a capsule that is entirely purple, although in two different shades. In late October 2015, AstraZeneca responded with a trademark infringement lawsuit and a request for injunctive relief. Id. at 1-4.
Judge Robinson concluded that AstraZeneca “carried its burden to prove that it is likely to succeed on the merits of its case, that it is likely to suffer irreparable harm if the requested relief is not granted, that the balance of hardships and the public interest weigh in its favor.” Id. at 13-14. Her Honor continued: “If DRL’s arguments were carried to their logical end, the loss of a branded company’s patent monopoly would inevitably result in a loss of its trademark rights, a result not consistent with the law or the market place. Moreover, so long as injunctive relief is available to prevent harm, the court declines to force such plaintiffs such as AZ to actually incur harm that is likely, but not provable, at the outset. Therefore, AZ’s motion for a temporary restraining order will be granted.” Id.
In support of this conclusion, Judge Robinson found that AstraZeneca was likely to succeed on the merits of its Lanham Act claims. Among other factors considered, Judge Robinson found that:
(1) the products were very similar because “DRL’s generic capsule is purple, albeit two shades of purple. Although not identical to AZ’s branded capsule, it does fit the description of the mark, “purple.” It has been recognized that a registration for a color covers all shades of that color”;
(2) “AZ has presented credible evidence that its Purple Marks branding is of long duration, of value, and strong”;
(3) Given the totality of the circumstances, including the physical appearance of DRL’s other generics (distinctive), the fact that DRL is a second wave generic in this market (and perhaps has to be more aggressive to get market share), and DRL’s explanations for adopting an all-purple pill . . . the court concludes that DRL intended to test AZ’s trademark, rather than honor it”; and
(4) “Despite the fact that Nexium® is a branded product and DRL’s generic is not, the court finds that AZ and DRL are still competing in the same market for the same consumers in the first instance, even if DRL is ultimately competing against other generics once the decision to buy a generic has been made.”
Id. at 5-9.
Judge Robinson also concluded that there was sufficient evidence of dilution of AstraZeneca’s marks because those marks are sufficiently “famous” and because “it is evident that DRL, in its marketing of its GI generics, has progressed from using colors in its two-tone capsules that are not at all similar to AZ’s purple pills, to a two-tone capsule that is (1) all purple and (2) uses AZ’s shade of purple.” Id. at 9. Moreover, Judge Robinson found that AstraZeneca had not acquiesced to DRL’s conduct by the “sale of the half-purple Prilosec generic capsules since 2005 [and the resulting] ‘market history of overlap between’ the products” and that such a history did not undermine an argument of irreparable harm. Id. at 12.
Judge Robinson also rejected a contract defense based on the agreement settling prior Hatch-Waxman litigation between AstraZeneca and DRL and releasing “any and all claims . . . in connection with the DRL Product . . . arising before the Effective Date of this Settlement Agreement.” Her Honor explained that although DRL’s ANDA product was described in its ANDA as “purple opaque,” this characterization was of little consequence because “[f]rom the court’s extensive ANDA litigation experience, however, the court takes judicial notice of the fact that such submissions are voluminous by nature, and that the focus of ANDA litigation is on the formulation of the generic product for infringement purposes (not on the color of the proposed commercial product, which is not on the market as not even approved by the FDA yet).” Id. at 10 n.6. Further, Her Honor noted that Hatch-Waxman litigation allows only for consideration of patent issues, and that the settlement agreement at issue, “[i]f anything . . . specifically preserved AZ’s trademark rights against the very conduct in which DRL has engaged.” Id. at 10-12.
Having found a likelihood of success, Judge Robinson found a likelihood of irreparable harm because “[b]y using AZ’s Purple Marks, it is likely that DRL will create (and intended to create) the false impression that its generic esomeprazole magnesium capsules are identical to Nexium®, not merely bioequivalent, and may be an “authorized generic,’’ that is, a generic drug made or authorized by the brand name company, i.e., by AZ.” Id. at 12. In balancing the harms, Her Honor “recognize[d] that imposing injunctive relief on DRL (i.e., forcing DRL to take its generic off the market) will be costly, both monetarily and in terms of such intangibles as market share and loss of good will. The court nevertheless concludes that DRL engaged in the conduct at issue fully aware of such consequences and, therefore, cannot be heard to complain that the risks it took did not pay off.” Id. at 13.
Judge Robinson recently considered cross-motions for summary judgment on the validity of U.S. Patent Nos. 7,062,749 and 7,603,674 pursuant to 35 U.S.C. § 101. YYZ, LLC v. Hewlett-Packard Company, et al., C.A. Nos. 13-136-SLR, 13-579-SLR, 13-581-SLR (D. Del. Oct. 8, 2015). The patents disclose a “computer-based apparatus and systems for measuring, monitoring, tracking and simulating enterprise [or business] communications and processes in an asynchronous messaging environment.” Id. at 13-14 (internal quotation omitted) (alteration in original).
Providing examples for each asserted claim, defendants argued “that the “asserted claims of the patents-in-suit are directed to the abstract idea of collecting and saving information relating to a business process – a well-known, routine, and fundamental business practice.” Id. at 15. In response, Plaintiff contended that the technologies of the patents are “very specific” and the invention directed to a “very specific” technological environment. Id. The Court disagreed, finding that the claims essentially recite a method for sending a copy of information to a central repository and storing the copied information, which is an abstract idea. Id. at 15-16. Judge Robinson also found that although “the asserted claims of the patents-in-suit operate in an asynchronous message-based communications environment and fix problems only existing in asynchronous environments[,]” this limitation was insufficient to “pass muster under the § 101 paradigm.” Id. at 17. More specifically, Judge Robinson held that:
To broadly claim a method of accomplishing routine functions requires more than just an “apply it” directive, even in a specific technical environment such as the one at bar. A component that “can be configured” to perform the claimed function is neither sufficiently described nor sufficiently innovative to transform the inventive concept at bar into patent-eligible subject matter.
Id. at 19.
Note that in coming to this conclusion, Judge Robinson considered extrinsic evidence, namely an expert declaration submitted by plaintiff, because such evidence was “helpful in terms of understanding the state of the art at the time of the patents-in-suit, and whether the problem to which the patent was directed is solved using computer technology in unconventional ways.” Id. at 16.