September 5, 2013

Magistrate Judge Thynge construes claim terms relating to pulse oximetry.

Magistrate Judge Mary Pat Thynge recently issued a report recommending constructions for 27 claim terms across eight patents relating to pulse oximetry, which "allows for non-invasive measurement of the oxygen levels in a medical patient's hemoglobin." Masimo Corp. v. Philips Electronics North America Corp., C.A. Nos. 09-080-LPS-MPT, 11-742-LPS-MPT (D. Del. Aug. 29, 2013). The following claim terms were construed:

“scan of a plurality of possible values for said physiological parameter”;

“said scan”;

“analysis to determine which of the plurality of possible oxygen saturation values corresponds to the oxygen saturation of the pulsing blood”;

“calculating a plurality of ratios of values of the transformed first signal to corresponding values of the transformed second signal”;

“potential of said physiological parameter”;

“said physiological parameter”;

“determination of confidence in the accuracy of physiological signals”;

“signal confidence determination”;

“confidence measurement”;

“determination of signal confidence”;

“based upon at least two alternative methods of processing the sensed physiological signals from at least one of the first and second wavelengths”;

“based upon at least two alternative methods of processing the physiological signals”;

“based upon at least two different methods of processing the intensity signals”;

“based upon at least two alternative methods of processing the sensed physiological signals from at least one of the first and second wavelengths and the signals corresponding to ambient light”;

“adjustably smooth the plurality of resulting values indicative of the at least one physiological characteristic”;

“adjustably smooth the plurality of values”;

“adjustably smoothing the plurality of values”;

“speed up the adjustable smoothing”;

“the smoothing filter is sped up”;

“slow down the adjustable smoothing”;

“first inactive time period”;

“second inactive time period”;

“second time where it is responsive to said ambient light”;

“inactive portions of a drive cycle where none of said plurality of light sources are active”;

“docking station . . . configured to mate with the portable physiological measurement device”;

“patient monitoring system”; and


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September 3, 2013

Judge Andrews considers objections to Special Master decisions

In a recent memorandum order, Judge Richard G. Andrews considered “various objections that have been made to decisions of the Special Master Collins J. Seitz, Jr., Esq.” Inventio AG v. Thyssenkrupp Elevator Americas Corporation, et al., C.A. No. 08-874-RGA (D. Del. Aug. 15, 2013). First, Judge Andrews considered plaintiff’s objections and motion to modify the Special Master’s ruling with respect to Defendants’ Challenges to Plaintiff’s Designations of Privilege or Work Product in its Third Amended Privilege Log, and granted that motion in part. See id. at 1-3. Judge Andrews adopted the Special Master’s decision with regard to what country’s privilege law applied and denied defendants’ argument that “under the ‘touch base’ test, Swiss law applies because Plaintiff is a Swiss company.” Id. at 2. As Judge Andrews noted, “[i]f Defendants were correct, the ‘touch base’ test would be pretty meaningless, since once citizenship was determined, that would be the end of the analysis.” Id. Judge Andrews then assessed whether various communications were protected by the attorney-client privilege. See id. 2-3. For example, Judge Andrews found that a “communication between two non-lawyers on which a lawyer [was] copied,” and for which there was no indication that it was “sent for the purpose of obtaining or providing legal advice,” was non-privileged. Id. at 2. Similarly, a communication between an employee of the SEC and a business person of plaintiff was found non-privileged. Id. On the other hand, Judge Andrews found privileged, inter alia, bills from plaintiff’s attorneys for legal services rendered. Id. at 3. Judge Andrews found it sufficient that “[t]he bills identif[ied] specific attorneys billing for legal work, the patents involved, the date of the work, and the general nature of the work.” Id.

Judge Andrews next considered defendants’ objections to and motion to modify the Special Master’s Report and Recommendation on Defendants’ Motion to Reclassify as Non-confidential Information Designated by Plaintiff as Highly Confidential and/or Limited Modification of the Protective Order. See id. at 4-5. Defendants’ motion was granted in part. Specifically, Judge Andrews addressed whether “four categories of deposition excerpts [were] properly marked as ‘highly confidential’” and whether the “Special Master’s discussion concerning modifying the protective order [should] be reviewed.” Id. at 4. First, Judge Andrews found that some excerpts contained publicly available technical information, as those excerpts were, for example, similar to descriptions presented during the Markman hearing or appeared in a publication. See id. As such, Judge Andrews determined that such excerpts should not be marked “highly confidential.” See id. On the other hand, Judge Andrews found that an expert’s analysis of whether certain elements are in the prior art and other non-public technical information were appropriately marked as “highly confidential.” See id. Second, Judge Andrews determined that “[t]he Special Master concluded after a thorough analysis that the protective order should not be modified,” and that the “present objections are without merit.” Id. at 5. Judge Andrews further noted that “[t]here is no reason” to vacate the Special Master’s discussion regarding what the “PTO will consider during reexamination,” as the “Special Master’s Report does not purport to tell any party what information to submit or to withhold from the PTO.” Id.

Judge Andrews additionally considered plaintiff’s objections to the Special Master’s rulings on plaintiff’s and defendants’ motions to compel. See id. at 6-7. First, plaintiff objected to be “being denied discovery on ‘new jobs.’” Id. at 6. Judge Andrews explained that “[e]ven assuming that it is not Plaintiff’s fault that it did not get the discovery before and that it is acting in good faith, the lack of actual prejudice to the Plaintiff and the inherent prejudice to the system of never-ending litigation means that on balance I do not think that discovery should be extended.” Id. at 7. Second, plaintiff “object[ed] to being ordered to produce the Transfer Pricing Analysis, stating that it should only have to produce the portion relating to the United States.” Id. at 6. Judge Andrews found, however, that the Transfer Pricing Analysis was relevant and ordered its production. Id. at 7.

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September 3, 2013

Judge Stark Construes Terms of Semiconductor Patents

Fairchild Semiconductor Corp. v. Power Integrations, Inc. is a patent infringement case involving semiconductors, power supplies, and LED circuits. The plaintiff, Fairchild, asserted three patents, and the defendant, Power Integrations, counterclaimed alleging infringement of five additional patents. Following a Markman hearing in July, Judge Stark has now issued a claim construction order in the case. Judge Stark construed the following terms:

- “a second feedback signal associated with a current control loop”
- “generates the first feedback signal by sampling a voltage from the auxiliary winding of the transformer and a discharge time of the transformer”
- “generating the first feedback signal by sampling a voltage from the auxiliary winding of the transformer and a discharge time of the transformer”
- “means for regulating the power supply system”
- “the control circuit and the feedback circuit are operable to regulate”
- “the feedback circuit operable to support regulation by the control circuit”
- “generating a LED current for controlling the LED”
- “a sense terminal of the control circuit, coupled to the LED for detecting a LED voltage, wherein the LED voltage is coupled for adjusting the LED current”
- “a soft start circuit means”
- “An oscillator that provides a maximum duty cycle signal comprising an on-state and an off-state”
- “a control circuit coupled to an input of a power converter”
- “when the electrical energy source is uncoupled from the input of the power converter”
- “a capacitance coupled between input terminals of the input of the power converter”
- “render dormant the drive signal generator”
- “power up the drive signal generator”
- “current input circuit”
- “current limit”
- “current limit adjustment signal”
- “dynamically adjust a current limit”

Fairchild Semiconductor Corp., et al. v. Power Integrations, Inc., C.A. No. 12-540-LPS, Memo. Op. at 1-25 (D. Del. Aug. 28, 2013).

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September 3, 2013

Judge Sleet grants motion to transfer venue to Eastern District of Michigan

In a recent memorandum opinion, Chief Judge Gregory M. Sleet granted defendant’s motion to transfer venue to the Eastern District of Michigan. Joao Control & Monitoring Systems, LLC v. Ford Motor Company, C.A. No. 12-1479-GMS (D. Del. Aug. 21, 2013). Plaintiff is a limited liability company organized under the laws of the State of Delaware and lists its principal place of business as the residence of the inventor of the patents-in-suit in New York. Id. at 1. Defendant is a Delaware corporation with its principal place of business in Michigan. Id. at 1-2.

First, Judge Sleet determined that this action could have been brought in the Eastern District of Michigan, as defendant maintains “its principal place of business in Dearborn, Michigan, which is located in the proposed transferee forum.” Judge Sleet also noted that plaintiff “is currently litigating a suit against [defendant] in the Eastern District of Michigan.” Id. at 4.

Turning to the Jumara private interest factors, Judge Sleet found that “because [plaintiff] chose to litigate in the forum where it was formed, rather than the forum where its principal place of business is located, its choice is entitled to less deference than it would typically receive in this analysis.” Id. at 6. Defendant’s forum preference, on the other hand, was “legitimate and rational” and therefore weighed in favor of transfer. Id. at 7. Addressing whether “the claims arose elsewhere, Judge Sleet noted that “[t]o some extent, [infringement] claims ar[i]se where the allegedly infringing products [a]re designed and manufactured.” Id. at 7. Accordingly, Judge Sleet found that factor to weigh “on the transfer side of the balance” because the infringement claims arose “from infringing products that were designed and manufactured in a single, discrete location.” Id. at 8. Judge Sleet next found that the “convenience of the parties” weighed slightly in favor of transfer, because while it appeared that “each [party] [had] sufficient financial resources to litigate in either forum,” defendant’s “decision to incorporate in Delaware suggests that the inconvenience of litigation here is somewhat less than the court would ordinarily presume it to be in this case.” Id. at 9-10. Judge Sleet found “the convenience of the witnesses” to be neutral since defendant was able to specifically identify only one third-party witness outside of the District of Delaware’s subpoena power. Id. at 12. Additionally, Judge Sleet explained that “because [defendant’s] principal place of business and much, if not all, of its materials relevant to the accused technology are located in the Eastern District of Michigan,” the “location of books and records” weighed slightly in favor of transfer. Id. at 13.

Judge Sleet next addressed the Jumara public interest factors. Accounting for “practical considerations that make the trial easy, expeditious, or inexpensive,” Judge Sleet found transfer favored by the fact that “neither party has facilities, offices, or employees in Delaware.” Id. at 15. Judge Sleet further noted that “both parties are currently litigating in the Eastern District of Michigan,” and the instant litigation “involves patents related to the patents-in-suit in the Eastern District of Michigan.” Id. at Judge Sleet additionally found that neither district “has a local interest in this action that would weigh in favor of transfer.” Id. at 17.

Judge Sleet concluded that in “[c]onsidering the Jumara factors as a whole, . . . [defendant] has met its burden of demonstrating that the interests of justice and convenience strongly favor transfer.” Id. at 18.

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August 28, 2013

Judge Andrews rejects “dual jurisdiction” theory, denies motion to transfer

Judge Richard G. Andrews recently decided defendants’ motion to dismiss for lack of personal jurisdiction or, in the alternative, to transfer the case to the Northern District of California in Round Rock Research LLC v. ASUSTeK Computer Inc., et al., C.A. No. 11-978-RGA (D. Del. Aug. 20, 2013).

The Court first concluded that plaintiff had not established personal jurisdiction over defendant ACI, a California company, with regard to two out of its ten counts that dealt with two different patents. For one patent, plaintiff had not sufficiently alleged that sales of named accused products had taken place in Delaware, and for the other, it had not sufficiently shown that sales of accused products had taken place prior to the filing of the complaint. See id. at 6-7.

The Court then dismissed the Taiwanese defendant, ASUSTeK, because plaintiff “ha[d] not established that there is personal jurisdiction . . . generally.” Id. at 12. Plaintiff could not establish jurisdiction under the specific jurisdiction provisions of the Delaware long-arm statute, see id. at 7-8, but the Court also considered whether “dual jurisdiction” was an available theory, under which there could be “jurisdiction under a blend of” specific and general jurisdiction provisions of the long-arm statute. Id. at 8. Although other Delaware state and federal decisions have accepted the “dual jurisdiction” theory based on their interpretation of a footnote in LaNuova D&B, S.p.A. v. Bowe Co., Inc., 513 A.2d 764,768 (Del. 1986), see id. at 7-10, the Court did not accept the theory. The Court explained that it did not believe that the dicta in this “footnote supports the conclusion that [the Delaware] Superior Court has interpreted it to have [i.e., to recognize dual jurisdiction].” Id. at 10.

The Court then denied the motion to transfer to the Northern District of California. The remaining defendant ACI was incorporated and headquartered in California, while the plaintiff was a Delaware company with its principal place of business in New York. The Court found that that the Jumara factors weighing in favor of transfer did not outweigh plaintiff’s forum choice or the fact that three other actions were filed contemporaneously in Delaware by plaintiff, making the balance of conveniences “tip[] strongly enough” in favor of keeping the case in Delaware. Id. at 19. The Court had also gained familiarity with the patents-in-suit in the related actions through a Markman hearing held after the filing of the motion to transfer. Id. at 18 (see link for the Court’s denial of a motion to transfer to the N.D. Cal. in one of the related cases). While the Court explained that “[s]ubsequent events while a motion to transfer has been pending should not be taken into account,” here “it [had been] predictable that [the Court] would likely be gaining [knowledge of the patents-in-suit] through the related cases” and therefore the Court’s familiarity with the patents was “a legitimate concern to factor into the analysis.” Id. (citing In re EMC, 501 F. App’x 973, 976 (Fed. Cir. 2013)).

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August 28, 2013

Judge Sleet claim construction Order

In a recent claim construction Order, Chief Judge Gregory M. Sleet construed the following terms of U.S. Patent No. RE41,555, entitled “Antibody purification:”

“selectively eluting [the monomeric IgG antibody] from the support” and “the
antibody selectively eluted;”

“monomeric IgG antibody”

GlaxoSmithKline LLC v. Genentech, Inc., C.A. No. 10-799-GMS (D. Del. Aug. 22, 2013).

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August 26, 2013

Jury verdicts stand after Judge Andrews denies all post-trial motions.

Judge Richard G. Andrews recently denied all post-trial motions in a dispute over patented medical devices. St. Jude Medical Cardiology Division, Inc., et al. v. Volcano Corp., C.A. No. 10-631-RGA (D. Del. Aug. 22, 2013). The Court held separate trials on the patents asserted by the plaintiffs and the defendant, with the jury finding in relevant part that (1) defendant did not infringe the asserted claims of plaintiffs’ U.S. Patents No. 6,112,598 or 6,248,083; (2) defendant proved by clear and convincing evidence that plaintiffs’ U.S. Patents No. 5,983,624 and 6,196,989 are invalid as anticipated and obvious; and (3) plaintiffs did not infringe defendant’s U.S. Patent No. 6,976,965 under the doctrine of equivalents. The parties filed a total of six post-trial motions, but the Court denied each, finding that the evidence put before the jury was sufficient to sustain the verdicts.

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August 24, 2013

Judge Stark Denies Motion for Injunction Banning Export of Surgical Products After Finding of Infringement

Judge Stark recently had occasion to consider a patent plaintiff’s request for a temporary restraining order and preliminary injunction filed after a jury found the plaintiff’s patents valid and infringed. The plaintiff, Synthes, asked the court to enjoin exportation of accused products for sales overseas. Depuy Synthes Prods., LLC v. Globus Med., Inc., C.A. No. 11-652-LPS, Memo. Order at 1 (D. Del. Aug. 22, 2013). Judge Stark found, however, that the plaintiff had not demonstrated irreparable harm. Judge Stark’s finding was based on evidence, presented at trail and in the briefing on the motion, showing that consumers use the defendant, Globus’, products for reasons other than the patented features. Judge Stark further pointed out that “[e]ven if Synthes could establish that Globus’ remaining inventory is purchased based on the patented features, ‘lost sales standing alone are insufficient to prove irreparable harm.’” Id. at 2-3 (citations omitted). Accordingly, there was no “clear showing” of a risk of irreparable harm. Finally, Judge Stark found that “Synthes may be adequately compensated through a reasonable royalty.” Id. at 4. For these reasons, Judge Stark denied the motion for a temporary restraining order and preliminary injunction.

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August 24, 2013

Judge Andrews Allows Amendment of Complaints to Assert Additional Patents Against Existing Defendants

Judge Andrews recently granted a patent plaintiff’s motion to file amended pleadings, filed two days before the scheduling order’s deadline “to amend of supplement the pleadings.” “The main thrust of the amended pleadings would be to assert some of the four asserted patents, previously unasserted again some of the seven of the defendants, against those defendants.” HSM Portfolio LLC, et al. v. Fujitsu Ltd., et al., C.A. No. 11-770-RGA, Order at 1 (D. Del. Aug. 20, 2013). Judge Andrews found that “[w]hile there are indeed issues concerning delay and unfair prejudice, I believe that the case is still at a fairly early stage, and any issues of prejudice can be dealt with by extending the schedule.” Id.

Judge Andrews went on to address arguments raised by individual defendants specific to their own cases. In this context, he found that:
1. Two patents possibly subject to a laches defense would be better dealt with “at a later stage of the case”
2. The fact that additional patents would “not generate much in the way of damages” did not demonstrate futility
3. Plaintiffs had not “pleaded facts sufficient to support the argument that Spansion is an agent of [defendant] AMD. Thus, while I will allow the amendment, I expect that AMD will file the motion to dismiss that it has proffered.”

In addition to granting the motion to amend, Judge Andrews also ordered the parties to meet and confer and submit a status report on scheduling within four weeks and ordered that “scheduling deadlines relating to the defendants who opposed the motion to amend . . . during the next six weeks (or until there is an agreed-upon schedule, whichever occurs later)” would not be enforced. Id. at 1-2.

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August 23, 2013

Judge Sleet grants motion to stay pending reexamination

Chief Judge Gregory M. Sleet recently granted defendant's motion to stay pending reexamination. Celorio v. On Demand Books LLC, C.A. No. 12-821-GMS (D. Del. Aug. 21, 2013). In doing so, Judge Sleet examined the following factors: "(1) whether a stay would unduly prejudice or present a clear tactical disadvantage to the non-moving party; (2) whether a stay will simplify the issues in question and trial of the case; and (3) whether discovery is complete and a trial date has been set." Id. at 2 n.1 (quotations omitted). Regarding the first factor, Judge Sleet noted that any stay pending reexamination will delay final resolution of the case. Therefore, that fact alone is insufficient to establish that any prejudice from the delay is "undue." Id. As such, the court must look at "sub-factors," such as "the timing of the stay request"; "the relationship between the parties"; "the related question of whether the plaintiff may be compensated through future money damages": and "the status of the reexamination proceedings." Id. Judge Sleet determined that any delay will not result in undue prejudice or present a tactical disadvantage to plaintiff. In particular, Judge Sleet found that because the petition for reexamination and the motion to stay were filed early in the case, the Court could not conclude that defendant was attempting to gain an unfair tactical advantage. Id. Further, plaintiff's five-year delay of filing the case after it became aware of defendant's alleged infringement demonstrated that plaintiff did not consider "this to be a 'time of the essence matter' or that, absent expeditious litigation, he [would] suffer undue prejudice." Id. In addition, plaintiff could be compensated for any delay through money damages. Id.

Regarding simplification of issues, Judge Sleet determined that this factor favored a stay. "[R]egardless of the PTO's conclusion, the results of the reexamination proceeding will aid in simplifying or eliminating the overlapping issues before the court. Indeed, even if the PTO were to ultimately confirm all of the claims, the court would likely benefit from the expert analysis the PTO conducts, thus further simplifying issues before the court." Id. at 3 n.1. Judge Sleet determined that the early stage of the case also favored a stay, as no scheduling order had been entered and no trial date had been set. Id.

Judge Sleet also specifically rejected plaintiff's argument that defendant was "estopped from seeking a stay because it filed a counterclaim for declaratory relief pursuant to the Declaratory Judgment Act ('DJA')." Id. Judge Sleet noted:

Celorio [did] not cite any case law supporting his argument and instead provide[d] citations to cases detailing the parameters of the DJA and rules regarding binding admissions in responsive pleadings. None of the cases Celorio cite[d] suggested that once a party has filed a claim under the DJA, it should be barred from requesting a stay and the court [had] not uncovered such precedent.


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