Articles Posted in Sue L. Robinson

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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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Judge Sue L. Robinson recently entered, sua sponte, a limited prosecution bar due to the “growing proliferation of parallel proceedings between federal trial courts and the [PTO] . . . .”  Versata Software, Inc. v. Callidus Software, Inc., Civ. No. 12-931-SLR (D. Del. June 19, 2014).  The prosecution bar entered by Judge Robinson provided:

Plaintiffs shall designate one or  more attorneys on their trial team who will be responsible for consulting with counsel handling any administrative review process, in order to coordinate coherent and consistent positions in various proceedings.  These designated attorneys shall not be involved in reviewing the highly confidential source code of defendant, nor take part in discussing highly confidential source code with co-counsel or any witness in the case, nor shall they read any report from any witness in the case concerning such highly confidential source code, nor attend portions of any deposition (nor read portions of transcripts of such depositions) where highly confidential source code is mentioned or discussed.  They may participate in all other aspects of the case.  If it is likely that highly confidential source code will be used at trial, the parties shall discuss the operation of this limited prosecution bar at the pretrial conference.

 

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In a recent order, Judge Sue L. Robinson denied defendants’ motion for leave to file a second amended answer that would include inequitable conduct counterclaims and affirmative defenses.  Carrier Corp. v. Goodman Global, Inc. et al., C.A. No. 12-930-SLR (D. Del. June 19, 2014). With respect to its inequitable conduct allegation, defendants claimed that the Aquasmart HVAC system (“Aquasmart”) constituted prior art to the patent-in-suit, and the inventors “misrepresented and omitted information regarding Aquasmart to the USPTO during the prosecution” of the patent-in-suit.  Id. at 2.

Judge Robinson noted that defendants filed their second amended answers “ten months after the deadline to amend the pleadings and two months after the close of fact discovery,” and that a “certain prejudice to plaintiff is inherent on [such a] timeline.” Id. at 4 (quoting Asahi Glass Co., Ltd. v. Guardian Indus. Corp., 276 F.R.D. 417, 420 (D. Del. 2011)). Accordingly, under Fed. R. Civ. P. 16(b)(4),  defendants were required to show “good cause” for the Court to grant  leave to amend. Id.

Finding that defendants failed to show good cause, Judge Robinson denied defendants’ motion. Specifically, Judge Robinson explained that defendants’ inequitable conduct allegation “rests on a document produced nearly seven months prior to the filing of the motion for leave to file second amended answers, as well as upon publicly available documents [defendants] discovered independently.”  Id. Further, defendants “did not ask the inventors about Aquasmart during their depositions.”  Id.  Taken together, Judge Robinson concluded that “[t]he timing of [defendants’] motion, coupled with previously produced discovery and publicly available documents relating to Aquasmart, negate the argument for good cause.” Id.

Judge Robinson also dismissed defendants’ motion to file supplemental briefing related to inequitable conduct as moot, as that motion related only to a patent that was dismissed from the suit by stipulation. Id. at 5 n.4; 1-2 n.1.
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In Peschke Map Technologies, LLC v. Madison Marquette Retail Services, Inc., C.A. No. 12-1527 et al. (D. Del. June 3, 2014), Judge Sue L. Robinson construed several disputed claim terms in U.S. Patent No. 6,397,143:

- “[L]ayout”
- “[S]tore”
- “[S]tore layout”
- “[D]escription page[s] … comprising information related to said corresponding store”
Judge Robinson also assigned the term “series of maps” its plain and ordinary meaning.

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Judge Sue L. Robinson recently construed claims of two patents relating to targeted television advertising. HBAC Matchmaker Media, Inc. v. CBS Interactive Inc., et al., Civ. No. 13-428-SLR (D. Del. June 3, 2014).

The following claim term from U.S. Patent No. 5,774,170 was construed: “[T]argeting advertisements . . . using code comparison in a control device [at [a/the] [display/viewing] site]:” While the plaintiff argued for a broad construction that would reach internet advertising, Judge Robinson construed the term to apply only to television advertising since “the specification consistently refers to ‘cable TV,’ ‘television,’ and ‘VCR’ . . . [and] the figures . . . represent TV systems and more particularly cable television.” Id. at 5-6.

The Court also construed from U.S. Patent No. 6,002,393 the claim terms “[H]ead end system:” and “[D]ownloading the [instruction/command signal] . . . to command the control device[s] to select [an/the] advertisement from the head end system:”.

The claim construction order was issued in the CBS Interactive case, as well as in cases filed against Google Inc. and YouTube LLC (Civ. No. 13-429), Bravo Media LLC, NBC Entertainment and Universal Television Networks (Civ. No. 13-430), Fox Broadcasting Co., et al. (Civ. No. 13-431), DirecTV Group Inc. (Civ. No. 13-432), ESPN, Inc., et al. (Civ. No. 13-433), Cartoon Interactive Group Inc., et al. (Civ. No. 13-434), Univision Interactive Media, Inc. (Civ. No. 13-435), Vevo LLC (Civ. No. 13-436), Viacom Int’l Inc. (Civ. No. 13-437), Yahoo! Inc. (Civ. No. 13-438), Blip Networks Inc. (Civ. No. 13-962), and uStream Inc. (Civ. No. 13-965).

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Judge Sue L. Robinson recently issued a claim construction decision for three patents relating to real-time online transactions. Pi-Net Int’l Inc. v. JPMorgan Chase & Co., C.A. No. 12-282-SLR (D. Del. May 14, 2014). The following claim terms appearing in one or more of U.S. Patents No. 8,108,492, 5,987,500, and 8,037,158 were considered by the Court:

“real-time:”
“value-added network (VAN) switch.” (found to be indefinite)
“switching.” (found to be indefinite)
“service network.” (found to be indefinite)
“transactional services:”
“web transaction:”
“point-of-service application[s]” and “transactional application[s]”
“web application” and “network application”
“said user application”
“back-end transactional application[s],” and “the selected back-end transactional application:”
“object routing:”
“a routed transactional data structure that is both complete and non-deferred, in addition to being specific to the point-of-service application:”
“keeping a transaction flow captive:”
“value-added network service provider:”
“value-added network system:”
“transaction link:”
The Court also construed several means-plus-function claim terms:

“means for switching to a transactional application in response to a user specification from a network application.”
“means for transmitting a transaction request from said transactional application.”
“means for processing said transaction request.”
“computer system executing the back-end transactional application for processing the transaction request in real-time.”
The Court found each of these mean-plus-function claim terms indefinite because the the specification failed to provide sufficient structure or an algorithm to disclose how the function is performed.

In a separate opinion, and as a result of the Court’s rulings on claim construction, the Court granted the defendants’ motion for summary judgment of invalidity for indefiniteness, and also for lack of enablement, and lack of written description.

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