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 . . . .”
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.
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.
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.
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.
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.
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.
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.
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.”
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:
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.
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.