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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October 22, 2013

Judge Andrews construes key disputed claims relating to automatic email control.

Judge Richard G. Andrews recently construed claims across 3 asserted patents relating to a system and method for granting deposit-contingent email rights. Buyerleverage Email Solutions, LLC v. SBC Internet Servs, Inc., et al., C.A. No. 11-645-RGA (D. Del. Oct. 22, 2013). Although 14 claims remained disputed, the following claims "appear[ed] . . . most important," and were therefore construed:

• “something of value”

• “benefit arising from the something of value”

• “something of value that has been put at risk of forfeiture”

• “(something of value) associated with the email”

• “(sending …) depending at least in part on whether or not (the system has received …)”

With respect to the disputed terms the Court did not construe, it requested “that the parties meet and confer to see whether and to what extent the remaining disputed terms can be agreed upon.”

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October 22, 2013

Judge Robinson denies motions for attorneys’ fees without prejudice, pending appeal.

Judge Sue L. Robinson recently denied without prejudice motions filed by several defendants for an award of attorneys’ fees pursuant to § 285 in a string of cases that were dismissed for lack of standing. Walker Digital, LLC v. Expedia, Inc., et al., Civ. No. 11-313-SLR (D. Del. Oct. 16, 2013); Walker Digital v. Amazon.com, Inc., Civ. No. 12-140-SLR (D. Del. Oct. 16, 2013); Walker Digital v. Barnes & Noble, Inc., Civ. No. 12-141-SLR (D. Del. Oct. 16, 2013); Walker Digital, LLC v. Expedia, Inc., Civ. No. 12-142-SLR (D. Del. Oct. 16, 2013). The cases had been dismissed for lack of standing after the plaintiff, as part of a settlement agreement, assigned the patents-at-issue to one of the original defendants. The plaintiff appealed that dismissal to the Federal Circuit, and the defendants subsequently moved for fees. Id. at 2. The Court explained that under Rule 54(d)(2)(8), “if an appeal on the merits of a case is pending, a court ‘may rule on the claim for fees, may defer its ruling on the motion, or may deny the motion without prejudice, directing under subdivision (d)(2)(8) a new period for filing after the appeal has been resolved.’” Id. at 3 (quoting Fed. R. Civ. P. 54, Advisory Committee Note, 1993 Amendment, Paragraph (2), Subparagraph (B)).

Although the parties made competing arguments addressing whether prevailing on a lack of standing argument represented prevailing on the merits of the litigation, and the defendants provided arguments purporting to justify a finding that the case was exceptional (including that the plaintiff continued litigating the cases after assigning the patents away and allegedly altered the language in the public notice of the assignment in an effort to hide it), the Court in this case opted to exercise its discretion under Rule 54 and denied the motions for attorneys’ fees without prejudice, explaining that “[i]f the Federal Circuit affirms, defendants may request a briefing schedule for their attorney fee motions.” Id. at 4.

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October 22, 2013

Judge Stark Issues Post-Trial Decision in HIV Drug Case

After holding a bench trial in January and considering post-trial briefing, Judge Stark recently issued findings of fact and conclusions of law in an ANDA patent infringement action between Bristol-Myers Squibb and Mylan Pharmaceuticals related to the drug efavirenz, which is a reverse transcriptase inhibitor used to treat HIV infection. Judge Stark concluded that Mylan’s ANDA product infringed the asserted claims of the patent-in-suit and that Mylan had not proven that the patent was invalid. Bristol-Myers Squibb Co., et al. v. Mylan Pharmas. Inc., et al., C.A. No. 09-651-LPS, Memo. Op. at 1 (D. Del. Sep. 30, 2013). Judge Stark rejected not only anticipation arguments, but also indefiniteness, enablement, and written description arguments. Id. at 20-36.

The decision involved an interest matter of claim construction clarification: Mylan argued that the phrase “selected from the group consisting of” limited an x-ray powder diffraction claim to the “eleven 28 values specifically recited in the claim, and nothing more. According to Mylan, if a crystal sample has an x-ray powder diffraction pattern with more than the eleven claimed 28 values, that sample is outside the scope of [the asserted] claim.” BMS contended in response that the word “comprising” rendered the claim open-ended and that “the transitional phrase ‘consisting of,’ used in the Markush group, closes only the group of alternative 28 values, not the entire claim.” Judge Stark agreed with BMS and explained that “[t]o the extent the Court’s holding involves a clarification of its prior claim construction, such clarification is permissible.” Id. at 17 (citing Guttman, Inc. v. Kopykake Enters., 302 F.3d 1352, 1361 (Fed. Cir. 2002) (“District courts may engage in a rolling claim construction, in which the court revisits and alters its interpretation of the claim terms as its understanding of the technology evolves.”).

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October 21, 2013

Judge Andrews grants plaintiff’s motion for partial summary judgment on patent's validity

In a recent memorandum order, Judge Richard G. Andrews granted plaintiff’s motion for partial summary judgment that U.S. Patent No. 5,541,654 (“the ‘654 Patent”) is not invalid in view of U.S. Patent No. 5,534,838 (“the ‘838 Patent”). L-3 Communications Corp. v. Sony Corp. et al., C.A. No. 10-734-RGA (D. Del. Oct. 16, 2013). The ‘654 Patent was filed on June 17, 1993, and the ‘838 Patent was filed on August 31, 1993. Id. at 1. As Judge Andrews explained, in order to prove that the ‘838 Patent “is prior art under 102(g), Defendants must show that the invention was actually reduced to practice prior to June 17, 1993, or that there was a diligent pursuit of a constructive reduction to practice between June 16, 1993 and August 31, 1993, the filing date of the [‘838 Patent]." Id.

Judge Andrews first found that defendants failed to demonstrate actual reduction to practice before June 17, 1993. Id. at 1-2. Defendants contended that actual reduction to practice was demonstrated via computer simulation. Id. Judge Andrews held, however, that “a computer simulation is not sufficient in order to show an actual reduction to practice. In order to establish an actual reduction to practice, there must be a physical embodiment.” Id. at 2. Judge Andrews also found that defendants failed to show a diligent pursuit of a constructive reduction to practice. Id. at 3. Defendants relied on the inventor’s deposition testimony which indicated that it took “at a minimum, two to four months to draft an application.” Id. Judge Andrews found that “[a]s a matter of law, this is not sufficient to establish two and a half months of diligence.” Id.

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