July 30, 2013

Special Master Redfearn considers motion to compel answers to interrogatories

Special Master B. Wilson Redfearn recently considered plaintiff’s motion to compel a defendant’s response to its Interrogatories 1 and 10, which requested the following:

-Interrogatory 1: Identify and describe in detail your expectations of sales and actual sales of the Relevant Products or Relevant Services and mobile devices.

-Interrogatory 10: Describe all communications between you and any mobile network operator (e.g., Sprint, U.S. Cellular) regarding the sale or potential sale of Relevant Products.

EON Corp. IP Holdings, LLC v. Flo TV Inc., et al., C.A. No. 10-812-RGA (D. Del. Jul. 23, 2013) (emphasis added). As Special Master Redfearn explained, “the case has been bifurcated,” but plaintiff argued that the “information sought through these interrogatories is relevant to the infringement issues because it is probative of commercial success, a secondary consideration of nonobviousness.” Id. at 1. Defendant, on the other hand, argued that before it is required to respond, plaintiff must “first show a specific nexus between the commercial success of the product and the alleged infringing features.” Id. at 3. Special Master Redfearn disagreed with defendant’s contention and found that plaintiff “is allowed to propound discovery for the purpose of developing factual information which could assist in showing that its invention is valid, i.e., it can propound discovery which it reasonably believes will permit it to argue at trial that there was commercial success, which supports its position on nonobviousness (rebutting the invalidity contentions)." Id. at 4.

Nevertheless, Special Master Redfearn found that the scope of Interrogatory 1 should be narrowed. Specifically, Special Master Redfearn explained that defendant “must furnish actual sales information concerning its ‘Relevant Products,’” but “its response can be limited to (1) sales which involve products using the accused features; and (2) products which were sold within thirty-six months after they were put on the market.” Id.

Further, Special Master Redfearn concluded that Interrogatory 10 should be denied as “ambiguous and overbroad.” Id. at 5. He explained that “[i]n order for an interrogatory (or interrogatories) of this nature to be properly formed for a company the size of [defendant], with a national and international sales force, the Plaintiff would have to set out the type of communications to which it refers; narrow the persons (or at least the internal entities) from whom the information is being sought; and set out the relevant time period.” Id. at 4-5. The Special Master noted that “[e]ven then, there could well be valid objections on the basis of relevancy.” Id. at 5.

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July 30, 2013

Judge Stark Construes Terms of Online Shopping Guaranty Patent

Plaintiff buySAFE filed a patent infringement action against Google on buySAFE’s U.S. Patent No. 7,644,019. The patent-in-suit relates to providing a guaranty service for online transactions, and buySAFE alleged that it covers a Google service called “Trusted Stores” by which Google provides consumers with information about quality online shopping experiences. The parties agreed that early claim construction would likely streamline the case and, accordingly, stayed discovery until after claim construction. The claim construction disputes were limited to two terms. BuySafe, Inc. v. Google Inc., C.A. No. 11-1282-LPS, Memorandum Opinion at 1-4 (D. Del. July 29, 2013).

Judge Stark first construed plaintiff’s proposed term, “transaction performance guaranty,” and defendant’s proposed term, “guaranty.” Finding that the issues for both terms were identical, Judge Stark adopted Plaintiff’s proposed construction for both. Id. at 5-7. On the second term at issue, “underwriting,” Judge Stark adopted a construction that the parties agreed to during oral argument at the Markman hearing and further found that the term was not indefinite. Id. at 7-9.

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July 29, 2013

Judge Stark issues claim construction opinion

In a recent memorandum opinion, Judge Leonard P. Stark construed thirteen disputed claim terms across U.S. Patent Nos. 5,885,270 (“the ’270 Patent) and 5,885,272 (“the ’272 Patent”). Walker Digital, LLC v. Google Inc., C.A. No. 11-318-LPS (D. Del. Jul. 25, 2013). As Judge Stark explained, “the patents-in-suit – issued on the same date, listing the same named inventors, and sharing substantially identical specifications – relate to establishing anonymous communications.” Id. at 1. Judge Stark construed the following disputed terms:

-"cryptographic operation," as it appears in claim 3 of the '272 Patent.

- "cryptographic key," as it appears in claim 3 of the '272 Patent.

- "authenticating authorship," as it appears in claim 2 of the '272 Patent.

- "said [___],"as it appears in all asserted claims of the '270 Patent and '272 Patent.

- "identity"/ "identity of said first party"/ "identity of said second party," as it appears in all asserted claims of the '270 Patent.

- "anonymous party," as it appears in all asserted claims of the '270 Patent.

- "party data," as it appears in all asserted claims of the '270 Patent and '272 Patent.

- "party rule," as it appears in all asserted claims of the '270 patent and '272 Patent.

- "rule for releasing said identity of said ... party," as it appears in all asserted claims of the '270 Patent, and "rule for releasing said [first/second party] data," as it appears in all asserted claims of the '270 Patent and '272 Patent.

- "releasing/release said second party data pursuant to said second party rule," as it appears in all asserted claims of the '272 Patent.

- "exchanging said first and second data, except said identifies of said first and second parties, between said first and second parties" / "exchange said first and second data, except said identities, between said first and second parties" as it appears in all asserted claims of the '270 Patent.

- "after said exchanging step" / "after said exchanging operation," as it appears in all asserted claims of the '270 Patent.

- "receiving/receive a request from said second party for said first party information data; releasing/release said second party data pursuant to said second party rule; determining/determine, based on said second party data, whether said at least one first party rule has been satisfied; and if said at least one first party rule has been satisfied, providing/provide, to said second party, said first party information data for which said at least one first party rule has been satisfied," as it appears in all asserted claims of the '272 Patent.

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July 29, 2013

Special Master Lukoff issues opinion and order regarding privilege log dispute

Special Master Paul M. Lukoff recently ruled on a dispute “over so-called third party consultants and the impact of their presence on what might otherwise be privileged communications.” Robocast, Inc. v. Apple, Inc., C.A. No. 11-235-RGA; Robocast, Inc. v. Microsoft Corporation, C.A. No. 10-1055-RGA, slip. op. at 2 (D. Del. Jul. 19, 2013). Special Master Lukoff addressed the issue on a document-by-document basis and ordered that some of the documents on plaintiff’s log were to be produced, as the presence of third parties had waived attorney-client privilege. Id. at 13-14.

As a preliminary matter, the Special Master examined, on a document-by-document basis, whether plaintiff complied with FRCP 26(b)(5)(A), which obligates a party claiming privilege to describe the withheld documents with sufficient detail, or whether noncompliance with this rule resulted in waiver. While the Special Master disagreed with plaintiff’s argument that some Delaware cases “stand for the proposition that the privilege proponent must always be given further opportunity, in the face of a Rule 26(b)(5)(A) challenge, to take another stab at an adequate description” (and in this case the plaintiff had already amended its log several times, id. at 3-5) the Special Master found “very few” Rule 26(b)(5)(A) issues in plaintiff’s current log. Id. at 4 n.5.

Turning to the specific issue in dispute, the Special Master observed that there was a “possibly irreconcilable split” between Third Circuit (non-Delaware) district courts as to the proper test for whether a non-employee was the “functional equivalent” of an employee for purposes of attorney-client privilege. Id. at 6-7. Additionally, there was no Third Circuit case “explicitly adopt[ing] the functional equivalent concept in any form.” Id. However, this issue “pose[d] no obstacle” to resolving this dispute because: (i) the Special Master was “comfortable with the notion that some functions of a relatively small company like [plaintiff] might be best or necessarily accomplished through independent contractors and/or non-employee consultants;” (ii) Third Circuit precedent made clear that “there is no discernible bright line to be followed when the privilege is assessed;” and (iii) “even if one adopts and then adheres to one interpretation of the functional equivalent test or the other, each individual document must be reviewed on a case-by-case basis to determine if it was created for the purpose of providing or obtaining legal advice.” Id. at 7 (internal citations omitted).

With these principles in mind, the Special Master examined the duties of various non-employees and discussed how their duties may or may not waive privilege when they were privy to communications. Id. at 7-11. The Special Master further explained that his “rationale for making any such determination [of waiver] will not be founded on [the third party’s] status as an ‘outsider’ or the ‘functional equivalent’ of a [plaintiff] employee, but rather on the individual’s relative position with respect to obtaining legal advice.” Id. at 13.

Special Master Lukoff mapped out his Rule 26(b)(5)(A) and privilege conclusions in a “lengthy chart,” and ordered plaintiff to produce copies of all documents in the log that the Special Master had concluded were not privileged based on waiver. Id. at 13-14.

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July 29, 2013

Judge Robinson finds patents valid and infringed in ANDA litigation

In a recent post-trial opinion, Judge Sue L. Robinson considered infringement of U.S. Patent Nos. 6,200,604 (“the ’604 Patent”); 6,974,590 (“the ’590 Patent”); and 8,119,158 (“the ’158 Patent”), and the validity of U.S. Patent No. 8,092,832 (“the ’832 Patent”) and the ’158 Patent in this ANDA litigation. Cephalon Inc. et al. v. Mylan Pharmaceuticals Inc. et al., C.A. No. 11-164-SLR (D. Del. Jul. 22, 2013). Plaintiffs initiated this litigation after defendants filed ANDA No. 202577, which sought to market generic fentanyl citrate buccal tablets, a medication that aids breakthrough cancer pain. Id. at 1-2.

Before addressing infringement and validity, Judge Robinson was required to construe two disputed claim terms. “Providing a solid oral dosage form” was given its ordinary meaning, and “pH adjusting substance is not a component of said effervescent material” was construed to mean “pH adjusting substance is in addition to the components of said effervescent agent.” Id. at 13-18. Turning to the infringement of the asserted claims of the ’590 and ’604 Patents, Judge Robinson noted that the “only limitation of the asserted claims . . . that [defendants] argue[] is not met by the ANDA product ‘is at least one [salival activated] effervescent agent in an amount sufficient to increase absorption.’” Id. at 20. Judge Robinson ultimately determined that plaintiffs demonstrated that defendants’ ANDA practiced “each and every requirement of the disputed limitations.” Id. at 38. Further, there was no “genuine dispute of material fact that [defendants] will encourage use through its product labeling and sale of its generic tablets and is aware that the label presents infringement problems.” Id. at 37. Moreover, because “[t]he only authorized use for the ANDA products would infringe” the asserted claims, there was “no substantial noninfringing use.” Id. at 38. Judge Robinson thus concluded that defendants indirectly infringed the asserted claims of the ’590 and ’604 Patents through induced infringement and contributory infringement. Id. Next, Judge Robinson considered infringement of the ’158 Patent, noting that “[t]he only dispute for infringement is whether the ANDA products meet the limitation ‘wherein said pH adjusting substance is not a component of said effervescent material.’” Id. Defendants did “not offer any noninfringement defense under the court’s construction” of that limitation, and Judge Robinson concluded that defendants directly and indirectly infringed the ’158 Patent. Id. at 39-40.

Judge Robinson next considered whether the ’604 Patent anticipated certain asserted claims of the ’92,832 and ’158 Patents. Judge Robinson noted that those claims required dosages between 100 and 800 mcg of fentanyl free base. Id. at 43. Defendants’ expert argued that a “person of ordinary skill in the art would understand a ‘pharmaceutically effective amount’ taught by the ’604 Patent includes fentanyl free base in the range of 100 to 800 mcg,” because a person of ordinary skill in the art would have would have looked at “Actiq®, an FDA-approved product and recognized that its range of fentanyl, 200-1600 mcg, was pharmaceutically effective.” Id. at 43-44. Judge Robinson noted, however, that “extrinsic evidence of anticipation ‘must make clear that the missing descriptive matter is necessarily present in the thing described in the reference.’” Id. at 44. As Judge Robinson explained, Actiq® was “not mentioned in the ’604 patent or incorporated therein.” Id. Because Judge Robinson found that the “’604 patent does not disclose the claimed amounts of fentanyl, the [’92,832 and ’158 Patents] are not invalid for anticipation.” Id. at 43.

Judge Robinson also considered whether the asserted claims of the ’92,832 and ’158 Patents were obvious “in view of the ’604 patent in combination with the Actiq® brochure and the Handbook.” Id. at 45. Judge Robinson noted that defendants’ expert did “not offer an opinion that one of ordinary skill in the art, absent the benefit of . . . internal observations and documents, would have had any reasons to suspect stability issues, and therefore, be motivated to solve such issues. He cannot rely on the problems that the inventors ‘unexpected[ly]’ ran into in order to support a person of ordinary skill’s motivation to combine.” Id. at 51. Because defendants did not provide sufficient evidence of motivation to use “SSG, alone or combination with mannitol,” defendants failed to carry its burden of showing obviousness. Id. at 53. Judge Robinson additionally assessed secondary considerations of nonobviousness. Judge Robinson found “unexpected results . . . sufficiently supported by [plaintiffs’] testing,” which weighed in favor of nonobviousness. Id. at 53-56. On the other hand, Judge Robinson found that considerations of commercial success, praise, failure of others, and long-felt need did not weigh in favor of a finding of nonobviousness. Id. at 56-61. However, on balance, Judge Robinson concluded that defendants failed to demonstrate by clear and convincing evidence that the asserted claims of the ’92,832 and ’158 Patents were obvious in light of the prior art references. Id. at 61.

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July 29, 2013

Judge Stark denies motion to dismiss based on laches, finding that ruling on defendant's defense requires consideration of matters outside the pleadings

Judge Stark recently considered AT&T's motion to dismiss United Access Technologies, LLC's amended complaint based on laches. United Access Technologies, LLC v. AT&T Corp., et al., C.A. No. 11-338-LPS (D. Del. Jul. 26, 2013). AT&T argued that laches barred plaintiff's claims because "with full knowledge of AT&T' s relevant activities, Plaintiff sat on its patent rights for nearly nine years without attempting to enforce them against AT&T." Id. at 1-2. Plaintiff's predecessor had previously sued AT&T in 2002 for infringement of several of the same patents-in-suit, but, after voluntarily dismissing the suit plaintiff waited nine years (and until after the patents expired) to file suit again. Id. at 2. Plaintiff responded that, among other things, "its alleged delay [was] not apparent from the face of the Amended Complaint, and therefore the laches defense is not amenable to resolution on a motion to dismiss. Id. Judge Stark agreed. "'[A] ruling on the defendant's defense of laches would necessarily involve a fact-intensive analysis and balancing of equities that would require the Court to consider matters outside the pleadings that are in dispute.' Discovery will be required before the laches defense can be fairly evaluated." Id. (quoting Lennon v. Seaman, 63 F. Supp. 2d 428, 439 (S.D.N.Y. 1999)).

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July 29, 2013

Judge Stark Construes Terms of Integrated Circuits Patents

Judge Leonard Stark recently issued a claim construction opinion for patents relating generally to programmable logic devices and clock management for dynamic integrated circuits. Plaintiff Intellectual Ventures brought suit against several circuit companies, and after settlement with several defendants, only Altera and Xilinx remain. The Court held a Markman hearing in May, and Judge Stark has now construed the following terms, adopting the plaintiffs’ proposals for all but three terms for which he adopted a modified versions of the defendants’ proposals:
- “application specific field programmable gate array (‘ASFPGA’)”
- “fixed functional unit(s)”
- “bus interface(s)”
- “peripheral component interconnect”
- “application specific integrated circuit (‘ASIC’)”
- “during normal operation of the ASIC”
- “complements”
- “configured to”
- “individually programmable”
- “reconfigurable processor core”
- “whole processor unit(s)”
- “a controller having a plurality of clock outputs each coupled to a respective clock input of one of the whole processor units, wherein the controller is configured to independently vary a clock frequency of each whole processor unit”
- “each module having a defined function”
- “power-down” and “power-up”

Intellectual Ventures I LLC, et al. v. Altera Corp., et al., C.A. No. 10-1065-LPS, Memorandum Opinion at 4-22 (D. Del. July 26, 2013).

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July 26, 2013

Judge Andrews construes claim terms of networking systems patents

In a recent claim construction opinion, Judge Richard G. Andrews construed the following terms of U.S. Patent Nos. 7,945, 736 B2, 7,948,921 B1, and 7,630,295 B2:

“configure(d),” id. at 1-3;

“data packet,” id. at 3-6; and

“communications interface configured to process the signal to activate and deactivate the link,” id. at 6-7.

Riverbed Technology, Inc. v. Silver Peak Systems, Inc., C.A. No. 11-484-RGA (D. Del. Jul. 23, 2013).

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July 26, 2013

Judge Robinson grants motion for leave to amend complaint 9 months after deadline to amend pleadings

Judge Robinson recently considered a motion for leave to file a second amended complaint filed by plaintiffs in Novartis Vaccines and Diagnostics, Inc., et al. v. Medimmune, LLC, et al., C.A. No. 11-84-SLPR (D. Del. July 22, 2013). Plaintiffs previously filed a first amended complaint, and then a supplemental complaint adding Novartis Pharma AG, exclusive licensee of the patent-in-suit, as a co-plaintiff. Id. at 1. Over six months later, when defendant Alexion raised a concern that the amended complaint included "an erroneous assertion that both [plaintiffs] were alleging infringement by Alexion[,]" plaintiffs proposed amending the complaint a second time to clarify the allegations of infringement by Alexion and remove claims against MedImmune, who had previously settled with plaintiffs. Id. at 3. Defendant Biogen refused to consent to the proposed amendment. Id. at 3-4.

Judge Robinson analyzed whether plaintiffs had good cause, under Fed. R. Civ. P. 16(b), for delaying nine months after the deadline to amend pleadings to file its motion to amend. Id. at 5. Judge Robinson found that the delay was not of plaintiffs' making because defendants did not raise the issue with its interpretation of the infringement claims in the supplemental complaint until over six months after the deadline. Id. After the concern was raised, Plaintiffs behaved diligently, making "three separate proposed revisions" and engaging in several meet and confer sessions with defendants. Id. at 5-6.

Judge Robinson then considered the factors to determine whether leave to amend should be given:

(1) whether the amendment has been unduly delayed; (2) whether the amendment would unfairly prejudice the non-moving party; (3) whether the amendment is brought for some improper purpose; and (4) whether the amendment is futile.

Id. at 6 (citing Foman v. Davis, 371 U.S. 178, 182 (1962)).

The only factor at issue was defendant Biogen's claim that plaintiffs' allegation of willful infringement and request for treble damages was futile. Id. Judge Robinson noted that "allegations of willfulness and requesting treble damages have appeared in all three of the complaints filed in this action." Id. at 3 n.1. Regardless, Judge Robinson found that plaintiffs' claims were not fuitle after analyzing the claims under In re Seagate Tech., LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007). Specifically, plaintiffs provided evidence that Biogen knew about the alleged infringement at least two months prior to plaintiffs' filing of the suit. Id. at 7. Judge Robinson rejected Biogen's argument that plaintiffs' willfulness claims were barred because Novartis Pharma did not become the exclusive licensee of the patent-in-suit until 18 months after the filing of the suit. Id. 7. Judge Robinson noted that "courts have upheld willfulness claims based on conduct occurring before a plaintiff had standing to sue. Id. at 7-8.

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July 24, 2013

Judge Robinson denies defendants’ request to preclude prior art from trial

In a recent memorandum order, Judge Sue L. Robinson denied defendants’ request to preclude plaintiffs “from presenting testimony or evidence relating to [defendants’] prior product ActiTUF.” Invista North America S.A.R.L. et al. v. M&G USA Corp. et al., C.A. No. 11-1007-SLR-CJB (D. Del. Jul. 16, 2013). Defendants argued that “ActiTUF is a plastics product with an iron-based system, rather than the cobalt-based system allegedly developed by [plaintiffs],” and thus “testimony or evidence relating to ActiTUF is not relevant to the issues at trial and will likely confuse a jury.” Id. at 1. Plaintiffs, on the other hand, argued that “ActiTUF is relevant to at least the state of the art at the time of the invention and secondary considerations.” Id. Specifically, plaintiffs asserted that they would “present evidence at trial regarding how the inventors of its claimed inventions looked to improve on the problems with ActiTUF’s iron-based system.” Id. at 2. Ultimately denying defendants’ request, Judge Robinson found that, “although ActiTUF is not an accused product in this litigation, testimony or evidence relating to it is relevant to the state of the art at the time of the invention and secondary considerations.” Id. She also noted that “[s]uch evidence would not likely confuse a jury because there is no dispute that ActiTUF uses a different approach and is not covered by the patents at issue.” Id.

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