Delaware IP Law Blog

Chief Judge Sleet construed the following terms relating to several “camera-on-a-chip” patents in a recent Order in Sirona Dental Systems, Inc., et al. v. Danaher Corp., et al., C.A. No. 10-288 (GMS) (D. Del. Jan. 26, 2012):

“readout circuit”

“a photoreceptor”

“sensing node”

“signal controlling device”

“timing circuit”

“correlated double sampling”

“single chip camera device”

“control portion”

“noise reduction circuit”

“fixed pattern noise reduction circuits”

“a follower transistor, receiving information from said photoreceptor indicative of said light”

“a select transistor, selecting said each pixel cell for readout”

“associated device, associate[d] with processing said light from said photoreceptors”

“formed in substrate adjacent said plurality of pixel[] cells”

“image processing device”

The Court agreed with the defendant’s contention that “associated device, associate[d] with processing said light from said photoreceptors” was a means-plus-function term, despite the absence of the words “means for,” explaining that “here, the term ‘associated’ which modifies ‘device,’ is not defined in the specification and there is no suggestion that it has a generally understood meaning in the art. Therefore, the court finds that ‘associated device’ does not connote sufficient structure to a person of ordinary skill in the art ot avoid § 112 treatment.” Id. at 7-8 n.30. The Court rejected the defendant’s contention that “image processing device” also was a means-plus-function term, explaining “[a]lthough this term uses the word ‘device,’ the additional words ‘image processing’ add sufficient structure to overcome the presumption that § 112 applies. The claim makes clear that the image processing device is a particular type of device that connotes sufficient structure to a person of ordinary skill in the art.” Id. at 8 n.31.

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When does judicial efficiency require the District Court grant a defendant’s motion to transfer venue? Chief Judge Sleet recently ordered transfer to the Northern District of Illinois in a case where parallel litigation was at a more advanced stage than the Delaware case in Motorola Mobility, Inc. v. Apple Inc., C.A. No. 10-cv-867-GMS (D. Del. Jan. 5, 2012). In that case, another infringement action involving the same parties and the same patents had been filed in the Western District of Wisconsin and was later transferred to the Northern District of Illinois. The Northern District of Illinois case had already progressed through substantial discovery and beyond a Markman hearing, and the judge in that matter had already issued a decision construing some of the claim terms. It was scheduled for oral argument in the near future and for trial at least a year before a trial could be held in the Delaware matter. By contrast, the District of Delaware case was in its earliest stages, and related matters involving the Apple, the defendant moving for transfer, were currently stayed and unlikely to proceed during the pendency of the Illinois action.

Considering all of these facts, the court ordered transfer. Applying Supreme Court, Third Circuit, and Federal Circuit precedent, Chief Judge Sleet found that “the balance of interests necessitates the transfer of this action to the Northern District of Illinois.” Id. at 2 n.2. Although “the parties did not concentrate their written submissions or oral arguments on the private interest factors identified [by the Third Circuit] in Jumara,” the court found that these factors favored transfer. Id. In particular, the court observed that because of the parties’ financial means, “considerations of witness convenience, financial constraint, and the location of books and records are not significant issues” and that factor “is often rendered neutral.” Id. Furthermore, the court cited the Federal Circuit’s preference for the jurisdiction in which the action was “first filed,” as expressed in Electronics for Imaging, Inc. v. Coyle, 394 F.3d 1341 (Fed. Cir. 2005), but noted that the public and private interests at play “outweigh the deference afforded to [the plaintiff’s] choice of forum and necessitate[] transfer for reasons of judicial efficiency.” Motorola, at 2 n.2.

Finally, the court considered the defendant, Apple’s, argument that the case should not be tried in Delaware for reasons of forum non conveniens. While the court ordered transfer on other grounds, it warned that this forum non conveniens argument was not persuasive and even “strikes [the court] as disingenuous,” given that Apple itself has filed several patent infringement actions in Delaware and has argued to keep those actions in Delaware. “Consequently, while Apple correctly identified in its Reply that ‘the strongest argument in favor of transfer is judicial efficiency,’ the court urges Apple and other parties to refrain from extending their advocacy to arguments that, as was the case here, appear less than forthright.” Id. (citations omitted).

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Chief Judge Sleet recently issued a claim construction order in Extricom, Ltd. v. Meru Networks, Inc., C.A. No. 10-391-GMS (D. Del. Dec. 5, 2011). Of particular note, Judge Sleet construed the phrase “all the access points” to mean “a plurality of access points,” rejecting the argument that this construction would “inject confusion” into the meaning of the term. Id. at 1-2 n.2. The court found that “‘all access points’ refers for antecedence to ‘a plurality of access points,’ which appears in Claim 1 four lines above the instant term, and, as such, qualifies the term to define a plurality of access points rather than all access points on a network.” Id. The patent’s specification also supported this meaning, according to the court, because “the preferred embodiments describe the access points acting in groups that ‘are substantially independent’ and may be ‘regarded as separate systems,’ not a single unit.” Id.

Judge Sleet also construed the phrase “substantially in accordance with IEEE standard 802.11” as having its plain and ordinary meaning. Id. at 2. In doing so, the court rejected the defendant’s argument that the term is indefinite “because it does not . . . ‘particularly point[] out and distinctly claim[] the subject matter which the patentee regards as his invention.” Id. at 2 n.4. The court pointed to the Federal Circuit’s decision in Fujitsu Ltd. v. Netgear, Inc., 620 F.3d 1321 (Fed. Cir. 2010), which concluded that “where a patent incorporates a standard such as 802.11, which includes both mandatory and optional provisions, courts should compare the ‘claims . . . to the accused product to determine infringement.’” Id. The court also that the plaintiff’s “contention that one of ordinary skill in the art would understand the meaning of this term is likewise supported by the fact that over forty issued patents and pending patent applications use this or similar language in describing 802.11 Standard compliance.” Id.

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In Allure Home Creation Co., Inc. v. Maytex Mills, Inc., C.A. No. 10-712-GMS, Judge Sleet recently construed the following terms of U.S. Patent Nos. 6,698,061 and 7,003,848 which claim a a shower curtain fastening device:

"a sheet material having at least one aperture"
"a second component having first and second ends"
"the first end comprises a sleeve and a recess for matingly engaging the
extending member with a bulbous head"
"a second end comprising means for engaging the aperture of the sheet
material"
"the second component is connected to and freely rotatable about the
first component"
"a first component having first and second ends, wherein ... the second end comprises an extending member with a bulbous head"
"a first component having a first end, a second end and a hook"
"the second end comprises an extending member with an enlarged end comprising a bulbous head"

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In Pfizer Inc., et al. v. Teva Parenteral Medicines, Inc., et al., C.A. No. 10-37-GMS (D. Del. Nov. 21, 2011), the Court granted the defendants’ motion to amend to add an obvious-type double patenting defense, filed on the last day for amendments to the pleadings under the amended scheduling order. The plaintiffs argued they would be prejudiced by the defendants’ last minute amendment, and that there was no reason for defendant’ to have waited as long as they did to amend. Id. at 3-4. The Court rejected the plaintiffs’ argument, and in a footnote reminded the plaintiffs that they chose not to oppose the defendants’ previous motion to amend the scheduling order to extend the deadline for amended pleadings. Id. at 6 n.13. Although the defendants’ motion to amend came on the last day possible under the amended scheduling order, the plaintiffs’ non-objection to the extension of that deadline undercut their claims of prejudice. “Specifically, while Teva could have sought to amend its Answer to include this defense earlier, it filed this motion within the time allotted by the court—and unopposed by the plaintiffs—for such amendments.” Id.

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In a recent ANDA case Judge Sleet granted defendant Anchen’s motion for judgment on the pleadings of Count V of its counterclaims seeking a declaratory judgment that Plaintiffs’ 083 patent was unenforceable. Bone Care International LLC v. Anchen Pharmaceuticals, Inc., C.A. No. 09-285-GMS (consolidated) (D. Del. Oct. 31, 2011). In support of its motion Anchen argued that “Bone Care’s action of disclaiming and requesting the delisting of the ‘083 Patent from the Orange Book renders this patent unenforceable as a matter of law, as such action statutorily disclaims all patent claims.” Id. at 1. Plaintiffs responded that the court lacked subject matter jurisdiction to decide Anchen’s declaratory judgment counterclaims because Bone Care statutorily disclaimed the patent and because Genzyme covented not to sue Anchen for infringement of the patent. Id. at 2. Judge Sleet determined that under Rule 54(b) judgment on the pleadings was appropriate because Plaintiff’s statutorily disclaimed the patent and provided no defense to this statutory disclaimer, because “Count V is a cognizable/individual counterclaim for discrete relief as to the ‘083 patent”, and because “there is nothing indicating that granting Anchen’s motion will result in a waste of judicial resources or impede judicial efficiency.” Id. at 3.

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In LG Electronics U.S.A., Inc. v. Whirlpool Corporation, C.A. No. 10-311-GMS (D. Del. Sept. 29, 2011), LG filed a motion to dismiss Whirpool’s counterclaim of infringement of Whirlpool’s ‘130 patent by LG’s French door refrigerators. Id. at 2. A jury had previsouly found that LG’s French door refrigerators did not literally infringe Whirpool’s patent. LG argued that because its redesigned refrigerators share the same configuration as the refrigerator at issue in the previous action in all material aspects, Whirpool’s counterclaim was barred by res judicata. Id. at 6. Whirlpool argued that LG’s motion should be treated as a motion for summary judgment because it required “consideration of matters outside the pleadings[;]” and that LG did not “meet its burden of showing that the French door refrigerators subject to Whirlpool’s counterclaim [were] essentially the same as those addressed in the [previous] action.” Id. at 7. While granting LG’s motion to dismiss, Judge Sleet rejected Whirlpool’s argument that LG’s motion must be treated as a motion for summary judgment. “Although the court may not generally consider evidence beyond the complaint in deciding a Rule 12(b)(6) motion, when a motion to dismiss is based upon the defense of claim preclusion, the court may take judicial notice of the record in the [previous] action in reaching its determination on LG’s motions to dismiss.” Id.

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In a recent ANDA case involving valganciclovir hydrochloride 450 mg tablets, Judge Sleet construed the term "compound 2-(2-amino-l ,6-dihydro-6-oxo-purin-9-yl)methoxy-3-hydroxy-lpropanyl-L-valinate hydrochloride in crystalline form" to mean "valganciclovir hydrochloride in a physical form having molecules arranged in a regularly repeating three dimensional pattern."

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On August 11, Chief Judge Sleet denied several post-trial motions in CNH America LLC v. Kinze Manufacturing, Inc., C.A. No. 08-945-GMS (D. Del. Aug. 11, 2011). A jury found in February that all of the claims of the two patents asserted by CNH were invalid as anticipated, and all but two of them were also invalid as obvious.

Patent-holder and plaintiff CNH brought a motion for JMOL or a new trial on invalidity. CNH presented a number of arguments – here are a few of the more interesting ones:

• CNH argued that it was entitled to a new trial because defendant Kinze presented a previously-undisclosed video at trial. The Court found that this was merely a new copy of a previously-disclosed video, this time with better production values. Id. at 8-9.
• CNH argued against anticipation and obviousness on various bases; the Court denied all of these, and characterized many of them as attempts by CNH to present late claim construction arguments. Id. at 11-16.
• CNH argued that the jury must have erred in determining that certain claims were anticipated but not obvious. The Court rejected these arguments based on a statement by the Federal Circuit that a determination of non-obviousness does not necessarily foreclose anticipation. The Court also noted that Third Circuit precedent actually controls this issue, and does not support CNH’s position. Id. at 16-19.

Defendant Kinze also presented two motions:

• Kinze moved for JMOL of obviousness as to the two claims that were anticipated but not obvious. The Court refused to rule on the substance of this issue, on the grounds that it would not affect the scope of the judgment (the Court did state, however, that the motions could be renewed if the case were reversed or vacated on appeal). Id. at 20-21
• Kinze moved for attorney’s fees; the Court denied the motion, because there was nothing exceptional about this case. Id. at 21.



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On August 3, in Velcera, Inc. v. Merial Ltd., C.A. No. 11-134 (GMS) (D. Del. Aug. 3, 2011), Chief Judge Sleet dismissed one of three declaratory patent claims and its associated counterclaims based on a lack of subject matter jurisdiction. The plaintiff, Velcera, is subject to a contempt judgment and an injunction in a related action on the same patent in the U.S. District Court for the Middle District of Georgia. That judgment covered all of Velcera’s products, so, according to the Court, there was no “actual controversy between the parties. Any dispute regarding the Georgia court’s order is properly raised before that court of on appeal to the Federal Circuit.” Id. at n.4. Velcera’s other two declaratory claims were not addressed by the Georgia court, so they were unaffected by the ruling.

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