November 1, 2013

Judge Andrews issues pre-trial motions in limine

Judge Richard G. Andrews recently issued two pre-trial motions in limine in L-3 Communications Corp. v. Sony Corporation, et al., C.A. No. 10-734-RGA (D.I. 232, 233) (D. Del. Oct. 25, 2013). The Court first excluded defendants’ Request for Ex Parte Reexamination in its entirety. D.I. 232 at 2. There was “no reason” why the request should be admitted into evidence, and the parties agreed that it was prejudicial and “does not aid the jury because it is based on claim constructions which were not adopted.” Id. The Court precluded the request in its entirety because “[s]imply removing the prejudicial statements would be a waste of time and effort, as the remaining contents would not be relevant.” Id. Furthermore, “because [defendants] did not participate in the reexamination, except for the initial request, any reference to [it] as the requester is unfairly prejudicial . . . [therefore] any references to [defendants or their trial counsel] as the requester, either in the rest of the file history or by expert testimony, are precluded.” Id.

Plaintiff also moved to exclude slides allegedly involved in a conference presentation and a draft article related to this presentation, as well as defendants’ expert opinion that these materials were prior art. Plaintiff argued that the presentation and article were hearsay. D.I. 233 at 1-2. The Court concluded that only the publication dates of the documents were hearsay because, other than the date, the documents were not being used to assert the truth of their contents. Id. at 3. The Court then concluded that the draft article was not hearsay because the date in its footer was “probably the statement of a machine and not of a human. If it is a statement of a machine, it is not hearsay.” Id. (internal citations omitted). Furthermore, there was “absolutely no circumstances that give rise to any suspicion that the document has been altered.” Id. As to the slides, however, the only evidence defendants presented that they were used at was the declaration of their alleged presenter, and this could not be used to prove the date. Id. at 4. But the Court believed that “a prima facie case has been made that the deck of slides was presented at the conference,” and thus the Court admitted the evidence, but at plaintiff’s request it would give a limiting instruction that the date of the document was not being offered to prove that the slides were actually presented on the alleged date. Id.

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November 1, 2013

Judge Robinson denies motion for fees and clarifies former dismissal as having been with prejudice.

Judge Sue L. Robinson recently reconsidered an earlier decision (discussed here) to defer ruling on a motion for attorneys' fees filed by defendants. Walker Digital, LLC v. Expedia, Inc., et al., Civ. No. 11-313-SLR (D. Del. Oct. 25, 2013); Walker Digital, LLC v., Inc., Civ. No. 12-140-SLR (D. Del. Oct. 25, 2013); Walker Digital, LLC v. Barnes & Noble, Inc., Civ. No. 12-141-SLR (D. Del. Oct. 25, 2013); Walker Digital, LLC v. Expedia, Inc., Civ. No. 12-142-SLR (D. Del. Oct. 25, 2013). Judge Robinson addressed the merits of the motion and denied it, finding that the defendants did not prevail on the merits for purposes of § 285, but instead had their cases dismissed "based on business arrangements . . . and the resulting consequences of such" after the plaintiff assigned its patents to eBay as part of a settlement. Moreover, Judge Robinson found that the case was not exceptional despite that the plaintiff continued litigating long after assigning the patents away, explaining "[t]he eBay settlement agreement was complex and negotiated in the midst of litigation. The attorneys involved in the litigation were not involved in these negotiations . . . With arguably valuable property rights at stake, it is not surprising that plaintiff chose to have the court resolve the dispute rather than amicably resolve such with defendants."

Judge Robinson next clarified that the earlier dismissal of the cases (discussed here) for lack of standing was with prejudice. The plaintiff argued that it had not had sufficient opportunity to cure the standing defect, but the Court disagreed, explaining that in its opposition to the motions to dismiss, “plaintiff has offered no evidence that it has a plan to cure the standing defect, stating only that it ‘has been and currently is engaged in continued discussions with eBay regarding ownership of the patents-in-suit.’” Therefore, the Court (by way of clarification for appeal) confirmed that its earlier dismissal was with prejudice.

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November 1, 2013

Judge Robinson finds reissue patent invalid under Section 251(d), grants summary judgment of noninfringement

Judge Sue L. Robinson recently granted defendants’ motions for summary judgment of noninfringement because the Court found a reissue patent invalid under 35 U.S.C. § 251. Arcelormittal France, et al. v. AK Steel Corporation, et al., C.A. No. 10-050-SLR (D. Del. Oct. 25, 2013). In this action, the Federal Circuit had issued a mandate following a jury trial, affirming the district court’s construction of a certain limitation in independent claim 1 of U.S. Patent No. 6,296,805 (“the ‘805 patent”). Id. at 1-2. Following the Federal Circuit’s decision, the USPTO reissued the ‘805 patent as U.S. Patent No. RE44,153E (“the RE153 patent”), allowing a new dependent claim 23 “which effectively broadens the scope of the RE153 patent.” Id. at 2. Independent claim 1 of the RE153 patent included the same claim limitations that had been construed by the Federal Circuit in the ‘805 patent. Id.

Defendants moved for summary judgment of “noninfringement implementing the mandate on remand” and also argued that all of the broadened claims of the reissue patent were invalid under 35 U.S.C. § 251(d) (disallowing reissued patents that enlarge the scope of claims of the original patent unless applied for two years from grant of original, which was not the case here). Id. at 2, 5. There was no evidence that defendants infringed claim 1 of the ‘805 patent as construed by the Federal Circuit. Id. at 6.

Plaintiff argued that the case was now governed by the RE153 patent, and that the Court could revisit the construction of claim 1 of the ‘805 patent, and thus the issue of infringement, “in light of the reissue prosecution history which provides important new intrinsic evidence, which differs materially from the evidence of record when the claim construction was first decided.” Id. at 6 (internal citations and quotation marks omitted). The Court declined to do so, explaining that other courts, including the Federal Circuit, had refused to construe the claims of an original patent in light of a reissue patent. Id. at 7. Instead, the Court concluded that, under Section 251 and its case law, it must “compare the scope of the original claim 1 to the reissued claim 1 (as it must be construed to accommodate new dependent claim 23).” Id. at 7-8. And “[t]hat exercise leads inexorably to the determination that, rather than ‘further limiting’ claim 1, dependent claim 23 broadens the scope of claim 1 in contravention of § 251.” Id. at 8.

Having made this determination, the Court addressed the proper scope of the RE153 patent’s invalidity. Id. at 9. Plaintiff argued that it would be most equitable to only find claim 23 invalid. Id. “Having given this matter considerable thought,” the Court rejected this argument, concluding that “the mandate of the Federal Circuit has been insolubly devitalized by the reissue process. The patent at issue before the Federal Circuit . . . has been surrendered . . . . With the only patent at issue in this case being the RE153 patent, and with said patent having been improperly broadened in violation of § 251(d), the court declines to exercise its inherent equitable powers to resurrect the original scope of the ‘805 patent” Id. at 10. The Court further noted that, because plaintiff attempted to “captur[e] more acts of infringement under the broadening scope of new dependent claim 23 of the RE153 patent” more than two years from the grant of the ‘805 patent, this “intentional strategy to avoid the consequences of this court’s narrow construction” contravened the “fundamental purpose of § 251, that is, repose.” Id. at 10.

As a result, the Court invalidated the RE153 patent under Section 251(d) and granted defendants’ motions for summary judgment. Id. at 11.

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October 31, 2013

Judge Robinson orders parties' experts to appear in Court in order to resolve plaintiff's motion to strike defendant's non-infringement expert report

Judge Sue L. Robinson recently considered plaintiff's request to strike portions of defendant's non-infringement expert report because it was based on modifed source code not made available to plaintiff. Juniper Networks, Inc. v. Palo Alto Networks, Inc., C.A. No. 11-1258 (D. Del. Oct. 28, 2013). Defendant did not dispute plaintiff's argument, but argued that its actions were justified because "plaintiff did not allude to source code at all until its expert's initial infringement expert report, and, further, that plaintiff's expert did not disclose any details about his test environment, nor did he ask for the ability to edit the code while preparing his report. Id. at 1.

Judge Robinson noted that the court could not "discern how much of this controversy [was] attorney-generated, and how much of this controversy truly reflect[ed] prejudicial conduct by either party." Id. at 2. Therefore, Judge Robinson ordered that, "absent a consensual resolution to this dispute," the parties' experts would be expected to testify on November 15, at the hearing previously scheduled for claim construction and summary judgment, regarding "the information the parties would need in order to vet the testing and, coincidentally, the information the court needs to resolve the dispute." Id. The Court would then decide the dispute, with the losing party to pay the costs of the proceeding. Id.

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October 31, 2013

Jury finds Netgear's patent valid, but not infringed by Ruckus Wireless

After trial regarding infringement of Netgear, Inc.'s U.S. Patent Nos. 6,621,454 and 7,263,143, the jury returned a verdict finding the patents valid and finding that Netgear had not proved that Ruckus Wireless, Inc. infringed the patents. Netgear, Inc. v. Ruckus Wireless, Inc., C.A. No. 10-999-SLR (D. Del. Oct. 31, 2013). The Court's pretrial decisions and claim construction can be found here, here, and here.

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October 30, 2013

Magistrate Judge Thynge recommends denying defendant’s motion to stay pending inter partes review

In a recent report and recommendation, Magistrate Judge Mary P. Thynge recommended that the court deny defendant’s motion to stay the litigation pending inter partes review (“IPR”). TruePosition, Inc. v. Polaris Wireless, Inc., C.A. No. 12-646-RGA/MPT (D. Del. Oct. 21, 2013). Judge Thynge noted that “[t]he court considers three factors when deciding whether to stay a case.” Id. at 3. First, Judge Thynge found the status of the litigation weighed against granting stay. Judge Thynge noted that “[s]ubstantial time and resources have been devoted in this case to scheduling and discovery disputes.” Id. at 8 (quoting Softview LLC v. Apple Inc., C.A. No. 10-389-LPS, 2012 WL 3061027, at *4 (D. Del. July 26, 2012)). Specifically, Judge Thynge explained that “[a]lthough a trial date has not been set . . . the claim construction process has been completed with the exchange of all briefs and the recent Markman hearing.” Id. Further, “[f]act discovery is scheduled to close on December 1, 2013, significant document production has already occurred, a number of discovery disputes resolved, and dispositive motions are due May 10, 2014.” Id. Second, Judge Thynge considered whether a stay would simplify the issues in question and trial, and found that this factor disfavored stay. Id. at 9-10. Judge Thynge explained that “claim 98 and specific challenges to the remaining claims subject to the IPR petition fall outside of the scope of IPR.” Id. at 10. Judge Thynge also found this factor disfavored stay in light of the fact that the IPR petition was not yet granted and when any result from the IPR would occur was uncertain. Id. at 10.

Third, Judge Thynge considered whether stay would unduly prejudice or present a clear tactical disadvantage to plaintiff, analyzing “the relationship between the parties,” “the status of the IPR request,” and the “timing of the IPR request and motion to stay.” Id. at 3, 10-14. Judge Thynge found the relationship between the parties slightly favored granting stay, citing, among other things, plaintiff’s failure to seek an injunction. Id. at 11-12. On the other hand, Judge Thynge found that because the IPR request was “still pending before the PTO with a potential delay until December 4, 2013 for grant or denial, this motion is premature.” Id. at 13. Judge Thynge further noted that defendant waited “until the end of the statutory deadline to file its IPR, close to the eve of claim construction briefing, and after substantial document discovery was conducted,” which also weighed slightly against granting stay. Id. at 14. Judge Thynge found that the factors, on balance, weighed against granting stay and denied defendant’s motion. Id.

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October 30, 2013

Special Master Lukoff permits further expert discovery of defendants' inequitable conduct claims

Special Master Lukoff recently resolved another dispute between the paries regarding their inequitable conduct experts' reports. Robocast, Inc. v. Apple, Inc., et al., C.A. Nos. 11-235-RGA, C.A. No. 10-1055-RGA (D. Del. Oct. 24, 2013). Special Master Lukoff had previously permitted defendants to serve a supplemental expert report in response to plaintiff's expert's rebuttal report. Here, plaintiff requested that it be permitted to issue a supplemental rebuttal report to respond to "new opinions" in defendant's supplemental report. Id. at 2. Plaintiff also requested that it be permitted to an additional deposition of defendant's expert. Id. Defendants opposed plaintiff's request because plaintiff's expert could have addressed the issues in question before his last report. Id.

Special Master Lukoff noted that the Court's Scheduling Order only permits service of initial and rebuttal expert reports, absent the parties' agreement or leave of Court. Id. Because Special Master Lukoff gave leave for defendants to supplement their expert report, the court was inclined to now do the same for plaintiff, albeit reluctantly. Id. at 3. While Special Master Lukoff recognized the need for the finality that underpins the provisions of the Scheduling Order, he noted that he was "equally sensitive to a full opportunity on the merits to develop the litigants' forensic positions on the inequitable conduct issue." Id. at 4. Defendants identified no prejudice resulting from the additional expert report, therefore, plaintiff was permitted to serve a supplemental rebuttal report and both plaintiff and defendants were permitted additional three-hour depositions of eachother's experts. Id. at 4-5.

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October 29, 2013

Judge Andrews Denies Motion to Strike, Orders Parties to Meet and Confer

Judge Richard Andrews recently denied a defendant’s motion to strike portions of two expert reports that were served after the deadline for opening expert reports. Judge Andrews recognized that the two reports at issue “were due with the opening round of reports [but] are the sorts of reports that are often not due until the second round of reports.” Warner Chilcott Co., LLC v. Zydus Pharmas. (USA) Inc., et al., C.A. No. 11-1105-RGA, Order at 1 (D. Del. Oct. 24, 2013). Thus, the plaintiff’s service of the reports in question with the second round of reports was excusable because “Plaintiff made a mistake. There is no evidence of bad faith. When the matter was brought to Plaintiff’s attention (which Defendant did not seem to be in any hurry to do . . .) Plaintiff, while not acknowledging error . . . appeared to respond appropriately to Defendant’s complaint in seeking to understand what was necessary to alleviate any prejudice to Defendant.” Id. By contrast, Judge Andrews found Defendants’ actions did not support the motion to strike: “Defendant appears, however, to have understood that it had gained a tactical advantage, and, instead of working with Plaintiff to come up with a workable plan, decided to press home its advantage with the instant motion. In my opinion, that approach was a mistake.” Id. Accordingly, Judge Andrews denied the motion to strike and refused to continue the trial because “[t]he Third Circuit prefers trials on the merits, and it should still be possible to have one.” Id. at 1-2.

Judge Andrews further noted that “Defendant seems to have a back-up plan,” referring to Defendant’s request to file expert reports on secondary conditions as an alternative to the motion to strike. Id. at 2. Judge Andrews therefore ordered the parties to “meet and confer as soon as possible and come up with a plan that will keep this case on track for the scheduled trial,” and further ordered that Delaware counsel should “actively participate in the meet and confer(s).” Id.

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October 24, 2013

Judge Robinson orders plaintiffs to supplement their contentions regarding damages related to defendants' at-risk launch of a generic product

Judge Sue L. Robinson recently issued a Memorandum Order in a multi-district litigation ordering plaintiffs to supplement responses to defendants' damages contention interrogatory. In re: Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litigation, C.A. No. 09-MD-2118-SLR (D. Del. Oct. 22, 2013). This litigation involved unique circumstances in that plaintiffs were "pursuing an infringement action in an ANDA case after judgment of infringement and validity ha[d] been entered, seeking damages relating to defendants' at-risk launch[.]" Id. at 3 n.3. Defendants served an interrogatory requesting plaintiffs' contentions regarding plaintiffs' claim of damages related to defendants' at-risk launch of a generic product. Id. at 1-2. Plaintiffs initially objected to providing any response stating that damages discovery was in its early stages, that damages was the subject of expert discovery, and that plaintiffs need to view defendants' sales data before responding. Id. at 2. Two months before the close of fact discovery, Plaintiffs supplemented their response by identifying "hundreds of pages of documents from which defendants could 'derive the information requested by' the interrogatory." Id.

Judge Robinson found Plaintiffs' supplementation insufficient:

I recognize that the identification of documents in lieu of a substantive response to an interrogatory is generally appropriate. I disagree that it is an appropriate response to a contention interrogatory, however, unless such documents specifically identify the contention in the first instance (unlikely) or provide specific data supporting the contention that has already been described. In this case, given that plaintiffs have yet to articulate their contentions with any particularity, I find it hard to believe that these documents are particularly helpful.

Id. Furthermore, Judge Robinson held that although the calculation of damages is the proper subject of an expert opinion, the facts on which an expert relies are properly the subject of fact discovery. Id. at 2-3. Therefore, "parties are required to disclose such facts before the facts are massaged and manipulated by their expert witnesses." Id. at 3.

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October 22, 2013

Judge Andrews claim construction opinion

In a memorandum opinion issued today, Judge Richard G. Andrews construed disputed terms across six patents: U.S. Patent Nos. 6,126,448; 6,213,780; 6,685,478; 6,398,556; 6,688,888; and RE 38,432. IpLearn, LLC v. Kenexa Corporation, et al., C.A. No. 11-825-RGA; IpLearn, LLC v. Blackboard, Inc., C.A. No. 11-876-RGA; IpLearn, LLC v. K12, Inc., C.A. No. 11-1026-RGA (D. Del. Oct. 22, 2013). Judge Andrews construed the following terms:

“computer-aided/computer implemented,” id. at 3;

“generating materials for learning the subject,” id. at 4-5;

“a report,” id. at 5;

“learning user,” id. at 6-8;

“institute user,” id. at 8-9;

“attribute,” id. at 9;

“materials regarding at least one learning user,” id. at 9-10;

“monitoring,” id. at 10;

“a need,” id. at 10-11;

“update information on the job position due to changes in information on the job position to identify a candidate for the job position/information on the job is updated in view of changes in the job based on an input, and wherein another learning user can be identified in view of changes in the job,” id. at 11-12;

“becoming aware of a learning user's understanding in an area,” id. at 12;

“wherein the materials accessed can be retrieved,” id. at 12-13;

“considers at least a preference of the learner, other than the fact that the learner might
prefer to learn the subject,” id. at 13-14.

Furthermore, Judge Andrews interpreted that the following terms to have their plain and ordinary meanings: “rules,” “providing guidance to the learner to target the at least one weakness” (based on the Court’s construction of another term), and “wherein the materials accessed can be retrieved.” Id. at 3-4, 6, 12-13.

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