April 30, 2013

Judge Stark grants motions for summary judgment of noninfringement in vehicle navigation system suit

In a recent memorandum order, a public version of which was released on April 19, 2013, Judge Leonard P. Stark granted a motion for summary judgment of noninfringement. Vehicle IP, LLC v. AT&T Mobility LLC, Civ. No. 09-1007-LPS (D. Del. Apr. 10, 2013). At issue was alleged infringement of U.S. Patent No. 5,987,377, “Method and apparatus for determining expected time of arrival.” The defendants’ motion asserted that based on the Court’s claim construction (previously discussed here), the plaintiff could not prove infringement, either literally or under the doctrine of equivalents. Id. at 7. As the Court explained, “the ‘377 patent discloses a system and method ‘for determining an expected time of arrival of a vehicle," and “every claim requires the determination of an ‘expected time of arrival of a vehicle at a way point[.]” Id. at 8 (emphasis added). Because the defendants’ products were not able to estimate times of arrival at intermediate way points, and instead only estimated times of arrival at final destinations, the Court found that the products could not literally infringe the ‘377 patent. Id. at 8-9.

The Court next rejected the argument that the products could be found to infringe under the doctrine of equivalents. The plaintiff argued that the defendants’ products, which were capable of calculating a “remaining travel time” to intermediate way points, infringe the ‘377 patent because the “‘remaining travel time’ format is insubstantially different from a ‘time of day’ format.” Id. at 9. The Court agreed with the defendants though, that infringement under the doctrine of equivalents could not be proved without impermissibly “vitiat[ing] the negative limitation – ‘and not remaining travel time’ . . . .” Id. at 10. In short, Judge Stark explained that “no reasonable juror could conclude that ‘remaining travel time’ is equivalent to the ‘expected time of arrival’ limitation” given the Court’s claim construction. Id.

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April 29, 2013

Judge Sleet denies defendant’s amended motion to transfer venue to Middle District of Florida

In a recent memorandum opinion, Chief Judge Gregory M. Sleet denied defendant’s amended motion to transfer venue of this patent infringement action to the Middle District of Florida. Devicor Medical Products, Inc. v. Biopsy Sciences, LLC, C.A. No. 10-1060-GMS (D. Del. Apr. 15, 2013). Plaintiff is a Delaware corporation with its principal place of business in Ohio, and defendant is a Florida corporation with its principal place of business in Clearwater, Florida. Id. at 3.

Pursuant to 28 U.S.C. § 1404(a), Judge Sleet first determined that the suit could have been properly brought in the Middle District of Florida, as defendant’s principal place of business is in Clearwater, Florida. Id. at 4. Next, Judge Sleet considered the private interest Jumara factors. Because plaintiff is a Delaware corporation but is not physically located in Delaware, its forum choice weighed against transfer and was given “heightened but not maximum weight.” Id. at 6. Defendant’s preference to litigate in Florida weighed in favor of transfer. Id. With respect to whether the infringement “claims arose elsewhere,” defendant argued that it did not commit any direct acts of infringement in the District of Delaware. Id. at 7. Judge Sleet found, however, that defendant acknowledged its “distributors had sold the accused products in Delaware,” which could establish the basis for “alleged acts of indirect infringement.” Id. Judge Sleet therefore determined that factor was neutral. Id. at 7-8. Because neither party had a physical presence in Florida and because transfer would at least save defendant “the inconvenience and expense of litigating in a distant forum,” Judge Sleet found the convenience of the parties weighed in favor of transfer. Id. at 9. With respect to the convenience of the witnesses, “neither party . . . pointed to a single witness who [would] be unavailable for trial in either Delaware or Florida,” and Judge Sleet accordingly considered that factor to be neutral. Id. Because all of defendant’s books and records were maintained in Florida, Judge Sleet found the location of the books and records to weigh “slightly in favor of transfer.” Id. at 9-10.

Judge Sleet noted that the “parties appear[ed] to agree that several of the public interest factors [were] inapplicable to or neutral in the transfer analysis.” Id. at 10. However, Judge Sleet did consider the “local interest in deciding local controversies at home.” Id. at 10-11. Defendant argued that the “Middle District of Florida has a greater interest in litigation involving claims of patent infringement against one of its residents than does [the District of Delaware].” Id. at 10. Judge Sleet rejected defendant’s position, noting that “patent infringement actions are more properly viewed as national rather than local controversies.” Id. at 10-11. Further, with respect to the “public policies of the fora,” defendant argued that public policies supported the Middle District of Florida overseeing the matter. Id. at 11. Judge Sleet found, however, that defendant failed to provide support for its conclusory allegation. Id.

Judge Sleet found that defendant failed to meet “its heavy burden of establishing that the balance of convenience tips strongly in favor of transfer,” and defendant’s motion was thus denied. Id. at 11-12.

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April 29, 2013

Judge Andrews construes claim terms in ANDA case

In Warner Chilcott Company, LLC v. Zydus Pharmaceuticals (USA) Inc., et al., C.A. No. 11-1105-RGA (D. Del. Apr. 22, 2013), Judge Richard G. Andrews construed the following disputed terms of U.S. Patent No. 6,893,662, which “relates to formulations and methods of delivering mesalamine to the lowest part of the gastrointestinal tract, especially the colon,” id. at 1:

-“Inner coating layer” and “outer coating layer,” id. at 3-4;

-“The inner coating layer is not the same as the outer coating layer,” id. at 5-7;

-“Selected from the group consisting of,” id. at 7-10;

-“Polymethacrylates” and “anionic polymethacrylates,” id. at 10-12;

-“Poly(methacrylic acid, methyl methacrylate) 1:2” and “poly(methacrylic acid,
methyl methacrylate) 1:1” id. at 12-14;

-“Enteric polymer,” id. at 14-15;

-“Mixtures,” id. at 15-17; and

-“The outer coating layer is applied after the inner coating layer but before the inner
coating layer is dried or cured,” id. at 17-18.

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April 26, 2013

Magistrate Judge Burke Grants Motion for Leave to File an Amended Complaint Adding Subsidiary of Existing Defendant

Magistrate Judge Christopher Burke has issued a memorandum order in a patent infringement case referred to him for pretrial purposes by Chief Judge Gregory Sleet. Judge Burke considered and granted a motion by the plaintiff, filed on the deadline for amendment of pleadings, for leave to file a first amended complaint, adding a subsidiary of the existing defendant as an additional defendant. See Invensas Corp. v. Renesas Elecs. Corp., C.A. No. 11-448-GMS-CJB, Memorandum Order at 1 (D. Del. Apr. 24, 2013).

The parent-defendant, Renesas, argued that plaintiff had delayed in adding the subsidiary, REA. Judge Burke, however, agreed with plaintiffs that there had been no undue delay because “until very close to the deadline for amendment, there had not been a reason or motivation for it to seek to add REA . . . [because plaintiff] felt that it would be uncontested that any sales-related activity conducted by REA as to Renesas’ products in the United States would be activity attributable to Renesas.” Id. at 4-5. After Renesas appeared to assert “the legal theory that REA is a separate entity from Renesas, and that any sales-related activity of REA may not be attributed to its parent,” plaintiff claimed that it filed its motion “in an ‘abundance of caution’ and ‘to ensure that the proper Renesas entities are named in the action.’” In this situation, Judge Burke found that there was no undue delay in filing the motion. Id. at 5-6. Judge Burke also pointed out that “[t]he fact that the Motion was filed within [the] deadline [set by the Scheduling Order for the filing of proposed amendments to pleadings], one agreed to by both parties, strongly supports a conclusion that the amendment was not untimely filed (and, relatedly, that its filing will not work to unfairly prejudice Renesas).” Id. at 6-7.

Judge Burke further found that the risk of prejudice to defendants was minimal, as discovery was ongoing, no trial date had been set, the proposed amendment added no new theories of liability and added only a wholly owned subsidiary of an existing party which would be represented by the same outside counsel as its corporate parent. Under these circumstances, Judge Burke found, “it is reasonable to expect that REA can be integrated into the case without creating significant additional harm to the parties’ pre-trial preparations.” Id. at 7-8.

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April 24, 2013

Judge Andrews orders plaintiff to produce communications with attorney who was acting in a business, rather than legal, capacity

Judge Andrews recently issued an order in regard to a discovery dispute over whether plaintiff had to produce communications with a Canadian attorney, formerly employed by plaintiff as its Director of Business Development. Robocast, Inc. v. Apple, Inc., C.A. No. 11-235-RGA (D. Del. April 17, 2013). Judge Andrews held that plaintiff failed "to make a showing that [the attorney] was an individual authorized to give legal advice." Id. at 2. The Canadian attorney was not a member of the bar of New York, where he was employed by plaintiff, nor was he licensed by the bar of New York to render legal advice as a legal consultant. Id. (citing N.Y.C.L.S. Ct. of App. § 521.1). Therefore, the communications could not be assumed to be privileged. "In fact, the very argument that [the attorney] offered legal advice to [plaintiff] without the New York State Bar's approval necessarily asserts he was guilty of practicing law without a license, which is a criminal misdemeanor in New York." Id.

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April 22, 2013

Chief Judge Sleet construes claims relating to transfer of high-bandwidth streams of data.

Chief Judge Gregory M. Sleet recently construed 14 claim terms from U.S. Patent Nos. 6,760,808 and 7,487,309, relating to the reliable and scalable transfer of high-bandwidth streams of data between multiple storage units and multiple applications. Avid Tech., Inc. v. Harmonic, Inc., C.A. No. 11-1040 (GMS) (D. Del. Apr. 15, 2013). The Court construed the following terms:

-“independent storage units”
-“redundancy information”
-“nonsequentially”
-“identifier”
-“identifier of each segment”
-“identifier of the segment”
-“identifier of a segment”
-“identifier of the requested segment”
-“means, operative in response to a request from one of the client systems, for retrieving the requested segment of the file from the storage unit using the information associating the identifier of each segment stored on the storage unit with the location of each segment of the storage unit”
-“means for sending the requested segment to the client system”
-“means for sending a request, for each segment of the data requested by the application, to the storage unit on which the segment is stored”
-“means for selecting one of the storage units on which the segment is stored such that a load of requests on the plurality of storage units is substantially balanced”
-“means for scheduling the transfer of data from the storage unit such that the storage unit efficiently transfers data” and
-“means for distributing each segment, and the redundancy information for each segment, among the plurality of storage units by sending to the storage unit the segment of the data and the identifier of the segment”.

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April 19, 2013

Chief Judge Sleet Construes Terms of Satellite Television Patents

Chief Judge Gregory Sleet recently issued a claim construction order in a longstanding patent infringement dispute involving interactive program guides for digital satellite broadcasts. See Pegasus Dev. Corp. v. DirecTV, Inc., C.A. No. 00-1020-GMS, Order (D. Del. Apr. 1, 2013). Judge Sleet construed the following terms, several of which he found to be means-plus-function terms and several of which had been previously construed by the Federal Circuit:
- “embedded signals”
- “recording the receipt of and passing to said devices of said embedded signals”
- “decrypting [an encrypted information transmission]”
- “switch means”
- “matrix switch means”
- “a first processor means operatively connected to said plurality of detector means for identifying each detected control signal as having been detected by a particular detector”
- “a second processor means for controlling the output directing function of said switch means”
- “a second processor means for controlling the output function of said switch means”
- “a processor means for controlling the output functions of said matrix switch means and the transfer functions of said storage/transfer means”
- “a processor means for controlling the directing function of said matrix switch means and the transfer functions of said storage/transfer means”
- “storage/transfer means for receiving an storing said control signals and for transferring at least a portion of said control signals for further processing”
- “causing said memory means to transmit selected information of said selected data unit at a selected time”
- “causing a switch associated with said intermediate input means to connect the output of a player associated with said recorder to at least one selected processor at a selected time”
- “member information”
- “outputting data that include additional information besides said input information”
- “assembling output records that include additional information besides said input information”
- “reprogrammable system”
- “reprogram”
- “operating instructions”
- “said memory device”
- “different signals”
- “[selected] television program transmission”
- “locations”

UPDATED:
Chief Judge Sleet had previously ordered the parties to submit supplemental briefing regarding whether the controller and processor "constitute structure corresponding to the claim terms 'a second processor means for controlling the output directing function of said switch means' and 'a second processor means for controlling the output function of said switch means.'" Considering the parties' supplemental briefing and oral arguments at the Markman hearing, Judge Sleet found that the two terms should be construed as means-plus-function terms with corresponding structures of the "signal processor" and the "cable program controller & computer." Judge Sleet also refused to alter his previous claim construction to include a "controller" or "processor," finding that they were sub-parts of the signal processor, and that there was "no need for the court to call out individual components of that processor or recognize it by alternative names." See Pegasus Dev. Corp. v. DirecTV, Inc., C.A. No. 00-1020-GMS, Supplemental Order at 1-2 (D. Del. Apr. 15, 2013)

UPDATED:
Chief Judge Sleet granted in part plaintiffs' motion for reargument regarding Judge Sleet's claim construction order. Judge Sleet amended the Court's construction of the term "decrypting [an encrypted information transmission]" to mean "using a digital key in conjunction with a set of associated mathematical operations to decipher digital data. This term does not include mere descrambling of an analog television transmission. The decrypting must be of the entire information transmission that is recited in step (b) of claim 14." See Pegasus Dev. Corp. v. DirecTV, Inc., C.A. No. 00-1020-GMS, Order at 1 (D. Del. May. 15, 2013)

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April 17, 2013

Judge Andrews denies motion to quash subpoena to law firm

In a recent Memorandum Opinion, Judge Richard G. Andrews refused to quash a subpoena served on a nonparty law firm that was previously involved in the prosecution of the “parent application” of the patent-in-suit. Robocast, Inc. v. Microsoft Corp., C.A. No. 13-mc-104-RGA , at 1 (D. Del. Apr. 12, 2013). Defendant subpoenaed the firm to testify at a deposition by telephone and to produce documents. Id.

The law firm argued that “the subpoena fails to allow a reasonable time for compliance” where the law firm had nine days to produce documents and provide deposition testimony. Id. at 2. The Court noted that “[n]either Rule 45 nor the Third Circuit . . . have provided a firm rule regarding the number of days that constitute a reasonable time.” Id. The Court concluded that the law firm had not met its burden for quashing the subpoena by merely the “bare assertion” that nine days was an unreasonable time for compliance. Id.

The law firm also argued that the subpoena was unduly burdensome and oppressive because it “subpoena[ed] documents in Delaware while compelling testimony in Pennsylvania,” albeit via telephone, and the information defendant sought was mostly publicly available. Id. The Court did not find either argument persuasive. Id.

Lastly, the law firm claimed that the subpoena sought privileged information. Id. at 3. The Court explained that the firm “will be able to raise the privilege at the time of the deposition and the production of documents,” but “[a] blanket assertion of privilege . . . does not meet the burden of Rule 45(c)(3)(A)(iii).” Id. Therefore the Court would not quash the subpoena on grounds of privilege. Id.

In a footnote, the Court observed that it “is also mindful that inequitable conduct allegations are in the case . . . factual non-privileged information from [this nonparty] witness . . . whose reliability is not reasonably subject to dispute could be very relevant.” Id. at 3 n.3.

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April 17, 2013

Judge Robinson construes claims, denies motions for summary judgment on infringement and invalidity, and denies plaintiff’s Daubert motion

In a recent Memorandum Opinion, Judge Sue L. Robinson construed several claim terms, denied both parties’ motions for summary judgment, and denied plaintiff’s motion to exclude defendant’s expert’s testimony on invalidity. Cellectis S.A. v. Precision Biosciences, Inc., et al., C.A. No. 11-173-SLR (D. Del. Apr. 9, 2013).

The Court first construed the following terms:

-“[M]onomer of an 1-Crel meganuclease variant comprising at least one mutation in the amino acid sequence of SEQ ID NO: 70, wherein said at least one mutation comprises a substitution at one or more of the amino acids residues at positions 44, 68 and 70 and said monomer further comprises at least one additional mutation of an amino acid residue directly contacting a DNA target sequence wherein said amino acid residue directly contacting a DNA target sequence is selected from the group consisting of positions 26, 28, 30, 32,33 and 38 modified DNA cleavage specificity relative to the 1-Crel meganuclease of SEQ ID NO: 70 in at least one nucleotide in the +/- 3 to 5 triplets.” Id. at 4. The Court “decline[d] to construe the first phrase of [this independent claim] without the context of the remainder of the claim. Id.

-“[M]odified DNA cleavage specificity relative to the 1-Crel meganuclease of SEQ ID NO: 70 in at least one nucleotide in the +/- 3 to 5 triplets.” Id. at 7.

-“A single-chain chimeric meganuclease comprising [a] fusion of [two monomers].” Id. at 7-8.

-“[V]ariant of the wild-type monomer from 1-Crel.” Id. at 8-9.

The Court then denied the parties’ motions for summary judgment as to literal infringement and as to no invalidity for anticipation. The parties’ experts disputed the “proper characterization of [defendant’s product]” and thus raised genuine issues of material fact as to literal infringement. Id. at 16. The Court also held that there was a genuine issue of material fact as to whether a piece of prior art “expressly disclose[d] all of the claim limitations and whether the specific substitutions [of the patent-in-suit] would be apparent to one of skill in the art.” Id. at 19.

Finally, the Court denied plaintiff’s Daubert motion to exclude defendant’s expert testimony on best mode and obviousness. Plaintiff argued that the expert’s opinions on best mode made improper inferences based on a limited amount of information, but the Court held that the opinions were “not unreliable or unhelpful, when measured by the relatively low standard at this stage of the proceedings, coupled with the highly subjective nature of the state of mind inquiry” involved in best mode analysis. Id. at 21. As to obviousness, plaintiff argued that the expert’s testimony, which included “his opinions on secondary considerations and motivation to combine and claim charts illustrating his findings,” was too conclusory, but the Court concluded that "[w]hile [plaintiff] may disagree with [this expert’s] analysis and conclusions . . . at most, this goes to the weight of the evidence, which is properly addressed via cross-examination.” Id. at 22.

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April 16, 2013

Magistrate Judge Thynge recommends denial of motion to dismiss complaint relating to cloud-based gaming applications.

Magistrate Judge Mary Pat Thynge recently issued a report recommending that a motion to dismiss allegations of direct, induced, and contributory infringement relating to cloud-based gaming applications be denied. T5 Labs (Delaware) LLC v. Gaikai, Inc., C.A. No. 12-1281 (SLR) (MPT) (D. Del. Apr. 5, 2012). The defendant argued that the complaint failed to provide meaningful notice of which products or services were accused, but Judge Thynge disagreed, explaining that the plaintiff adequately identified the defendant's "‘cloud’-based gaming applications and service’ or GPU cloud as the infringing method or product.” Id. at 9. This, together with sufficient allegations of jurisdiction, ownership, notice, and a demand for relief, was sufficient to provide the defendant with meaningful notice of the allegations against it, and met the requirements of Form 18 for alleging direct infringement. Id. at 10. Judge Thynge also found that the plaintiff adequately pled induced and contributory infringement under Twombly and Iqbal with respect to post-Complaint conduct. Id. at 11-13.

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