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.

Continue reading "Judge Robinson denies motions for attorneys’ fees without prejudice, pending appeal." »

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.”).

Continue reading "Judge Stark Issues Post-Trial Decision in HIV Drug Case" »

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.

Continue reading "Judge Andrews grants plaintiff’s motion for partial summary judgment on patent's validity " »

October 21, 2013

Judge Andrews claim construction opinion

Judge Richard G. Andrews recently issued an opinion construing disputed terms of U.S. Patent No. 6,128,617, entitled “Data display software with actions and link integrated with information.” Select Retrieval LLC v. Amerimark Direct LLC, et al., C.A. No. 11-812-RGA (D. Del. Oct. 17, 2013). Judge Andrews construed:

“integrated active information documents," id. at 3-4;

“plural successive integrated active information documents,” id. at 4;

“action control elements,” id. at 5-6;

“action control element selection,” id. at 6;

“plural nodes at plural levels,” id. at 7-9.

Judge Andrews concluded that the term “rendering” should be given its plain and ordinary meaning, thus no construction was necessary. Id. at 7. Finally, Judge Andrews did not construe the disputed terms “a database record having plural fields,” “database,” and “database query,” explaining that “[t]he construction of these terms, if needed, will be decided at a later date.” Id.

UPDATE:

On March 14, 2014 Judge Andrews issued a continuation of the Court's October 17 Markman opinion and ordered the parties to submit a proposed order "suitable for submission to the jury." Select Retrieval LLC v. Amerimark Direct LLC, et al., C.A. No. 11-812-RGA (D. Del. Mar. 14, 2014). The Court construed:

"database"
"database query"

The Court did not construed the phrase "a database record having plural fields," proposed by defendants because the Court found that the phrase found in the preamble did not limit the claim. Id. at 4.

The Court also did not construe "whereby the information in subsequent ones of the successive integrated active information documents corresponds to control element selections made from preceding ones of the integrated active information documents." Judge Andrews rejected defendants' argument that construction was necessary because the patentee disavowed claim scope during prosecution. Id. at 7.

Continue reading "Judge Andrews claim construction opinion" »

October 18, 2013

Judge Robinson precludes defendant from pursuing an anticipation defense for which its expert provided no opinion

Judge Robinson recently considered plaintiff Netgear's motion for summary judgment as to whether certain prior art references could qualify as prior art. Netgear, Inc. v. Ruckus Wireless, Inc., C.A. No. 10-999-SLR (Oct. 16, 2013). Defendant conceded that its expert had no opinion as to whether the references anticipated the patent in suit, but opposed Netgear's motion with five facts it claimed were disputed. Id. Judge Robinson was not persuaded, however, noting that "as far as the court can discern, defendant has offered no evidence on the issue of anticipation, only attorney argument." Id. at 1-2. In light of that, Judge Robinson declined to offer "what is essentially an advisory opinion" as to whether the disputed references were prior art. Id. at 2. Judge Robinson cautioned that "[t]he court has neither the time nor the resources to fill in the gaps of defendant's case, and declines to allow defendant to pursue its anticipation defense on the record it made (or, more accuately, failed to make) during expert discovery. Id.

Continue reading "Judge Robinson precludes defendant from pursuing an anticipation defense for which its expert provided no opinion" »

October 17, 2013

Special Master Redfearn Rules on Motions to Exclude Infringement and Invalidity Theories in Expert Reports

Special Master Redfearn recently considered cross motions to exclude the competing expert reports of the parties in Eon Corp. IP Holdings, LLC v. Flo TV, Inc., et al. The moving defendants, several mobile carriers and mobile technology companies, sought to exclude portions of an infringement expert report that discussed (1) doctrine of equivalents theories that had not previously been asserted in infringement contentions and (2) various third party applications that had not been previously disclosed as accused products.

The Special Master noted that the doctrine of equivalents argument would be moot if the Court did not adopt defendants’ claim construction position, but that allowing the theory “to remain in [the] report does not mean that the Court will adopt the Plaintiff’s claim construction.” Eon Corp. IP Holdings, LLC v. Flo TV, Inc., et al., C.A. No. 10-812-RGA, Rulings and Recommendations at 6 (D. Del. Oct. 3, 2013). The Special Master further found that the plaintiff was not accusing the third party applications of infringement but could potentially make an appropriate reference to the software at trial, so the admissibility of the third party application references should be left to the discretion of Judge Andrews at trial. Id.

The plaintiff moved to exclude certain combinations of prior art as untimely disclosed in an invalidity expert report, arguing that it could not take discovery on those combinations at this stage of the case. The defendants pointed out, however, that the plaintiff had not previously sought discovery on any prior art combinations. Further, the Special Master found that the invalidity expert report did not include any evidence not previously disclosed and did not include any new or abandoned references. Finally, the plaintiff’s expert was able to analyze and address the combinations at issue. Id. at 7-8.

Thus, the Special Master denied both motions to exclude. Addressing the Third Circuit’s Pennypack factors, the Special Master concluded that neither party suffered any prejudice and neither side had acted in bad faith. Therefore, because “it is important that these issues be fully presented and all valid legal theories considered,” the “extreme sanction” of exclusion was not warranted. Id. at 8-9.

Continue reading "Special Master Redfearn Rules on Motions to Exclude Infringement and Invalidity Theories in Expert Reports" »

October 15, 2013

Judge Hillman grants motion to drop former patent owners as parties following assignment.

Judge Noel L. Hillman of the United States District Court for the District of New Jersey, sitting by designation, recently granted a motion to drop two parties from the litigation pursuant to Rule 21. Evonik Degussa GmbH v. Materia Inc., et al., C.A. Nos. 09-636 (NLH/JS), 10-200 (NLH/JS) (D. Del. Sept. 30, 2013). The two parties previously were owners of the asserted patent, but during the course of the litigation assigned their rights, title, and interest in the patent to Materia Inc. They subsequently moved pursuant to Rule 21 to be dropped as parties, and the plaintiff opposed the motion.

Although the case did not present misjoinder or nonjoinder in the traditional sense, the Court explained that federal courts “agree that [Rule 21] may apply even in the absence of misjoinder or nonjoinder.” Id. at 4 (quoting Joseph v. Baxter Int’l Inc., 614 F. Supp. 2d 868, 874 (N.D. Oh. 2009) (quoting 4A Matthew Bender, Moore’s Federal Practice § 21.05 (2d ed.))). The Court added that “[a]t least one federal court has held that a party’s assignment of its interest in the patent-in-suit to another party nullifies its status as an indispensable party, and the assigning party is therefore dismissable from suit pursuant to Rule 21.” Id. at 5 (citing Biovail Labs., Inc. v. TorPharm, Inc., 2002 WL 31687610, at *2 (N.D. Ill. Nov. 26, 2002)). Here, the Court found that the two moving defendants, UNOF and UNORTF, had completely assigned their rights and responsibilities in the asserted patent to another party already in the litigation—Materia Inc. “[I]t is clear that UNOF and UNORTF no longer have a stake in the underlying infringement suit between Evonik and Materia. . . . As such, UNOF and UNORTF no longer maintain a sufficient interest in this case to justify their continuing presence. Therefore, since they are no longer indispensable or necessary parties to this dispute, their dismissal from suit is appropriate under these circumstances.” Id. at 6-7.

The Court rejected the plaintiff's argument that it would be prejudiced in two ways if the parties were dropped. First, the Court disagreed that dropping the parties would result in the plaintiff being unable to obtain certain information during discovery. The Court noted that discovery had been ongoing for more than a year, and in any event the plaintiff would still be able to discover material from the dropped parties by way of subpoenas or, more likely, through Materia, whose assignment agreement indicated that Materia would be responsible for and comply with discovery requests relating to the dropped parties. Id. at 8. Second, the Court rejected the argument that dropping the two parties would prejudice the plaintiff's ability to recover attorneys' fees, explaining that the argument was entirely speculative at this point since the plaintif had not yet prevailed in the litigation. Id. at 10. Moreover, the assignment agreement indicated that Materia would be responsible for any attorneys' fees award related to the dropped parties' conduct in the litigation. Id. at 11. Although the plaintiff appears to have argued that this assurance was illusory because Materia might enter Chapter 11 bankruptcy, the Court explained that it could not "keep UNOF and UNORTF tethered as parties solely for the purpose of affording their adversary leeway in deciding how to obtain a speculative award for attorneys' fees . . . ." Id. at 12. "Absent some indication of fraud or bad faith, a party's filing for bankruptcy cannot serve as a legitimate reason to avoid the legal consequences of an otherwise properly executed assignment agreement. The Court also reminded the plaintiff that Materia had not yet entered bankruptcy, and there was no evidence in the record that it definitely would do so.

Continue reading "Judge Hillman grants motion to drop former patent owners as parties following assignment." »

October 14, 2013

Judge Andrews denies plaintiff’s motion for entry of judgment

In a recent memorandum opinion, Judge Richard G. Andrews denied plaintiff’s motion for entry of judgment, in which it requested that the Court “exercise its discretion to enter final judgment consistent with the summary ruling by either: (1) Proceeding to final judgment of non-infringement and dismissing any outstanding counterclaims without prejudice; or (2) Proceeding to final judgment of non-infringement pursuant to Rule 54(b) and staying the counterclaims pending resolution of the appeal.” L-3 Communications Corporation v. Sony Corporation et al., C.A. No. 10-734-RGA (D. Del. Oct. 4, 2013).

As Judge Andrews noted, “[t]he decision of whether to dismiss a counterclaim of invalidity where the Court has found no infringement is soundly within the Court’s discretion.” Id. at 1. Judge Andrews further noted that “[a]lternatively, under Federal Rule of Civil Procedure 54(b), the Court may determine that there is no ‘just reason for delay’ and direct the entry of final judgment of non-infringement while staying the remaining invalidity counterclaims.” Id. Denying plaintiff’s motion, Judge Andrews explained that “[h]ere, trial is scheduled to start less than a month away. Most of the preparation has already occurred. To delay would be a waste of the resources that have already been expended.” Id. at 2. Judge Andrews additionally denied plaintiff’s argument that Court “no longer has jurisdiction because there is no longer a case or controversy because the patent in suit has expired.” Id. As Judge Andrews explained, “[h]ere, the infringement dispute between [plaintiff] and [defendant] is not over, as the claim construction will likely be appealed. The fact that the patent has subsequently expired has no bearing on the infringement allegations." Id.

Continue reading "Judge Andrews denies plaintiff’s motion for entry of judgment " »

October 11, 2013

Jury returns verdict of no infringement in Vehicle IP, LLC v. Werner Enterprises, Inc., C.A. No. 10-503-SLR

In Vehicle IP, LLC v. Werner Enterprises, Inc., C.A. No. 10-503-SLR (D. Del. Oct. 1, 2013), the jury returned a verdict finding that plaintiff had not proved that defendant's system infringed the asserted claims of the patent in suit and that defendant had not proved that the same claims were invalid due to lack of enablement. Prior to trial, Judge Robinson precluded defendant from arguing at trial an untimely raised invalidity theory, and an untimely raised non-infringement theory. Prior to trial, Judge Robinson also granted summary judgment of non-infringement as to certain claims.

Continue reading "Jury returns verdict of no infringement in Vehicle IP, LLC v. Werner Enterprises, Inc., C.A. No. 10-503-SLR" »

October 10, 2013

Judge Robinson addresses position on early summary judgment motions, does not bifurcate damages and willfulness

In a recent Order, Judge Sue L. Robinson “confirm[ed]” her position on early summary judgment:

“The court will not entertain motions for summary judgment before the close of discovery unless: (a) the parties stipulate to the underlying facts of a dispute [either by agreement or presumption] (turning the exercise into resolving a question of law); or (b) the issue in dispute is dispositive, meaning that the court’s decision (regardless of its outcome) becomes the law of the case.”

In re: Automated Transaction LLC Patent Litigation, MDL Civ. No. 13-2429-SLR, at 1 (D. Del. Oct. 8, 2013). As to (b), the Court explained that it had “neither the time nor the resources to engage in multiple summary judgment exercises per case.” Id.

Additionally, plaintiff had requested that damages and willfulness not be bifurcated, as is Judge Robinson’s standard practice. The Court granted this request, “given the MDL status of this litigation.” Id. at 1.

Continue reading "Judge Robinson addresses position on early summary judgment motions, does not bifurcate damages and willfulness" »