December 26, 2012

Judge Stark grants defendant’s motion for trial on exhaustion defense, denies motion as to laches and license defenses

In CIF Licensing, LLC d/b/a GE Licensing v. Agere Systems LLC, C.A. No. 07-170-LPS (D. Del. Dec. 3, 2012), Judge Leonard P. Stark decided several post-trial motions. This patent infringement action had been assigned to and tried before Judge Joseph J. Farnan, Jr.; upon his retirement the case was transferred to Judge Stark. Id. at 1.

Among the numerous post-trial motions that Judge Stark considered was Defendant’s motion for a trial on the remaining defenses of laches, patent license, and patent exhaustion. Id. at 4-5. Judge Stark granted the motion for a new trial on the exhaustion defense and denied the motion as to laches and license, relying largely on Judge Farnan’s pre- and post-trial orders.

Judge Stark denied Defendant’s request for a trial on the laches and license defenses because Judge Farnan had “already ruled” on the merits of these defenses and because Judge Stark agreed with Judge Farnan’s conclusions. Id. at 5, 7. Following oral argument on cross-motions for summary judgment, Judge Farnan had ruled the laches defense to be “‘without merit’” and had “‘tentatively rule[d]’” the license defense to be “‘amenable to disposition on summary judgment’” as well. Id. at 3. He had added that the license defense was “‘inapplicable to the infringement claims at issue.’” Id. Defendant was not permitted to present evidence on any of its defenses to the jury but Judge Farnan “indicated that Defendant would be permitted to renew the motions at the conclusion of the case.” Id. at 3. The jury returned a verdict, discussed here, of invalidity as to three out of the four patents-in-suit and willful infringement as to the remaining patent. Id. at 2. In his written post-trial order, Judge Farnan granted Plaintiff’s motions for summary judgment that its claims were not barred by laches and that Defendant was not licensed to the patents-in-suit, observing that he had decided both defenses were “‘without merit’” at oral argument. Id. at 3-4.

On the other hand, Judge Stark granted Defendant’s motion for a trial on the exhaustion defense because it had “received relatively little attention” at oral argument, and “[n]either at the conclusion of the Oral Argument nor in any subsequent oral or written order did Judge Farnan describe the exhaustion defense as having ‘no merit.’” Id. at 9. While Judge Farnan's post-trial order had denied defendant's motion for summary judgment of non-infringement due to patent exhaustion, Judge Stark observed that “Judge Farnan expressly granted [Defendant] ‘leave to renew [its motion] in the form of a post-trial motion.’” Id. Judge Stark additionally noted that “a trial [was] necessary to resolve [Defendant’s] exhaustion defense” because there were several significant factual disputes between the parties on this issue. Id. at 9-10.

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December 20, 2012

Judge Robinson Grants Defendants’ Motion for Leave to Amend Answers in ANDA Litigation

Judge Sue Robinson recently granted defendants’ motion for leave to amend their answers to add the affirmative defense of intervening rights in a consolidated ANDA litigation action. See Senju Pharmaceutical Co., et al. v. Lupin Limited, et al., C.A. No. 11-271-SLR (consolidated), Slip Op. (D. Del. Dec. 14, 2012). Plaintiffs’ original complaint alleged infringement of U.S. Patent Nos. 6,333,045 and 5,880,283. Id. at 2. Prior to this motion, “plaintiffs further amended their complaint to allege infringement of [U.S. Patent No. 6,333,045] as reexamined by defendants’ ANDA No. 202-653 and also by defendants’ ANDA No. 202-709.” Id. at 2-3. Defendants subsequently “answered the amended complaints and counterclaimed to each.” Id. at 3. Approximately nine months after plaintiffs answered defendants’ counterclaims, defendants moved for leave to further amend their answers with an affirmative defense of intervening rights. Id.

Judge Robinson noted that leave to amend “shall be freely given when justice so requires.” Id. at 3 (quoting Foman v. Davis, 371 U.S. 178, 182 (1962) (quoting Fed. R. Civ. P. 15(a))). Judge Robinson then explained that under the doctrine of intervening rights, “an infringer who was engaged in allegedly infringing activities (or ‘substantial preparation was made by the infringer’ to do so) before a reexamination certificate issued may continue to infringe said claims, if the court determines that the reexamined claims are broader in scope than the original claims, and to the extent and under such terms as the court deems equitable. . . .” Id. at 4. Thus, “the doctrine of intervening rights is a defense to infringing activity occurring after reexamination.” Id.

Plaintiffs argued that defendants’ amendment would be “futile, apparently because defendants have not conceded that they have engaged in infringing activity.” Id. Judge Robinson disagreed, and noted that “at this stage of the proceedings, defendants need not so concede, but may advance the defense of intervening rights based on plaintiffs’ allegation that ‘[d]efendants have made, and will continue to make, substantial preparation in the United States to manufacture, sell, offer to sell, and/or use within the United States, and/or import into the United States the [d]efendants’ gatifloxacin ophthalmic solution which is the subject of ANDA’ No. 202-653 and No. 202-709.” Id. 4-5. Further, defendants “contend that each ANDA sets forth preparation steps sufficient to allow the proposed affirmative defense.” Id. at 5. Thus, in light of the fact that defendants demonstrated that there is “at least some evidence to support an affirmative defense of intervening rights,” Judge Robinson granted defendants’ motion for leave to amend their answers. Id.

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December 20, 2012

Judge Andrews issues revised claim constructions of patents-in-suit directed to use of electronic television guides

Upon motion for clarification of the Court's June 22, 2012 claim construction opinion, Judge Andrews recently issued revised constructions of two terms of the patents in suit. United Video Properties, Inc., et al. v., Inc., et al., C.A. No. 11-003-RGA (D. Del. Dec. 14, 2012). Judge Andrews revised its constructions of the terms "electronic television program guide" and "interactive program guide" in order to make clear that the terms "require the respective applications to provide current and forward-looking program schedule and channel information -- i.e., information concerning what programs are currently airing and when programs will air in the future, and on what channel." Id. at 1. The Court also clarified that the term "displaying" as used in the '268 patent relates to "television and not other forms of 'overlaying' on a screen such as when a program 'window' on a computer screen is overlaid on top of a user's desktop and other program windows." Id. at 2.

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December 19, 2012

Judge Stark Construes Claim Terms of Virus and Spam-Prevention Patents

Judge Stark recently engaged in extensive claim construction of disputed claim terms of four patents related to systems for protecting against computer viruses and spam emails. See Intellectual Ventures I LLC v. Check Point Software Techs. Ltd., et al., C.A. No. 10-1067-LPS, Slip Op. (D. Del. Dec. 12, 2012). The terms the Court construed in this multi-defendant case were:

- “data file(s)”
- “determining . . . whether each received content identifier matches a characteristic of other identifiers”
- “file content identifier”/“file content ID”/“digital content identifier”/“digital content ID”
- “digital content identifier created using a mathematical algorithm unique to the message content”
- “file content identifier generator agent(s)”
- “an indication of the characteristic”/“identify the existence or absence of said characteristic”/“indicating the presence or absence of a characteristic”
- “characterizing the files on the server system based on said digital content identifiers received relative to other digital identifiers collected in the database”
- “database of business rules”/“business rules”
- “[combines/combining] the [email message/data object] with a new distribution list . . . and a rule history . . .”
- “an organizational hierarchy of a business, the hierarchy including a plurality of roles, each role associated with a user”
- “persistently storing,” “primary message store . . . for receiving an non-persistently storing e-mail messages,” and “secondary message store . . . for receiving therefrom, and persistently storing an e-mail message”
- “automatically reviewing the [email message/data object] after a specified time interval to determine an action to be applied”
- “rule engine”
- “routing a call between a calling party and a called party of a telephone network”
- “within the telephone network”
- “identification code”
- “converting . . . from an executable format to a non-executable format”
- “forwarding the non-executable format”
- “retains an appearance, human readability, and semantic content of the e-mail message”
- “deactivating the hypertext link”

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December 17, 2012

Magistrate Judge Fallon recommends dismissal of plaintiff's indirect and willful infringement claims.

Magistrate Judge Sherry R. Fallon recently recommended that the court grant defendant Staples, Inc.’s 12(b)(6) motion to dismiss claims made against it for indirect and willful infringement of U.S. Patent No. 6,216,139. Execware, LLC v. Staples, Inc., C.A. No. 11-836-LPS-SRF (D. Del. Dec. 10, 2012).

Judge Fallon first addressed plaintiff’s indirect infringement claims, which included claims of induced and contributory infringement, and noted that in order to survive a motion to dismiss, a plaintiff must (1) “adequately plead a claim for direct infringement,” and (2) “plead sufficient facts . . . for the Court to infer that the defendants had knowledge of [the plaintiff’s] patents and that their products infringed on those patents.” Id. at 4-5 (quoting Trading Techs. Int’l, Inc. v. BCG Partners, Inc., 2011 WL 43946581, at *3 (N.D. Ill. Sept. 2, 2011) (emphasis in original)). To adequately plead direct infringement, a plaintiff must provide the level of detail required by Form 18 of the Federal Rules of Civil Procedure. Id. at 4. Judge Fallon found that plaintiff failed to provide such detail. Id. at 7. Despite identifying Staples’ customers as the alleged direct infringers, the amended complaint did not “allege that Staples’ customers actually used the accused software, or that Staples caused its customers to directly infringe the ’139 patent.” Id. at 6-7. As a result, Judge Fallon recommended the dismissal of the plaintiff’s direct infringement claim. Id. at 6-8.

Judge Fallon further recommended that if the court did not adopt her recommendation regarding direct infringement, plaintiff’s indirect infringement claim should be “limited from the date of filing of the complaint.” Id. at 8. In reaching her recommendation, Judge Fallon relied on a line of District of Delaware rulings in concluding “that a plaintiff may plead actual knowledge of the patents-in-suit as of the filing of the initial complaint to state a cause of action limited to the defendant's post-litigation conduct, and a defendant’s decision to continue its conduct despite knowledge gleaned from the complaint is sufficient to establish the intent element required to state a claim for indirect infringement.” Id. at 10 (citing Apeldyn Corp. v. Sony Corp., 852 F. Supp. 2d 568, 573-74 (D. Del. 2012); Walker Digital, LLC v. Facebook, Inc., 852 F. Supp. 2d 559, 565-66 (D. Del. 2012)). Because the plaintiff’s amended complaint alleged that Staples had knowledge of the patent only after the filing of the complaint, Judge Fallon explained that the indirect infringement claims should be limited to activity after the filing date. Id.

Turning to the plaintiff’s wilfull infringement claim, Judge Fallon noted that in order to overcome a motion to dismiss, a plaintiff must plead “facts giving rise to at least a showing of objective recklessness of the infringement risk.” Id. at 11 (quoting St. Clair Intellectual Prop. Consultants, Inc. v. Hewlett-Packard Co., 2012 WL 1134318, at *2-3 (D. Del. Mar. 28, 2012)). Judge Fallon further noted that the “Federal Circuit has held that a patentee cannot recover enhanced damages based solely on the accused infringer’s post-filing conduct when the patentee has not sought a preliminary injunction.” Id. at 12. Because the plaintiff failed to plead that Staples had “pre-suit knowledge of the ‘139 patent,” Judge Fallon recommended that the court dismiss its wilfull infringement claim. Id. at 12-13.

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December 17, 2012

Judge Andrews construes claims of patent relating to camera film

Judge Richard G. Andrews recently construed two disputed claim terms of U.S. Patent No. 5,187,512, entitled “Film Cassette Containing Pre-Exposed Film,” relating to “apparatus and processes for pre-exposing only certain portions of the frames of a film strip before the strip is exposed in a camera.” Universal Innovations, LLC v. CS Industries, Inc., et al., C.A. No. 11-501-RGA, at 2 (D. Del. Dec. 11, 2012). Judge Andrews construed the following means-plus-function terms:

“Means for defining (a) two film holding cavities and (b) an exposure frame opening located intermediate said cavities”

“Means for configuring said exposure frame opening such that the periphery of said opening corresponds with the periphery of said unexposed portion of said frame so as to prevent further exposure of said first latent image during the forming of a second latent image in the unexposed portion of said frame by image carrying light rays passing through said exposure frame opening during an exposure”

Id. at 3, 5.

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December 14, 2012

Jury finds that Apple's iPhone infringes plaintiff's valid patents.

A jury returned a verdict in favor of a plaintiff today, finding after a week long trial held before Judge Sue L. Robinson that Apple's iPhone infringes three of the plaintiff's patents: U.S. Patent Nos. 6,070,068; 6,253,075; and 6,427,078. MobileMedia Ideas, LLC v. Apple Inc., C.A. No. 10-258-SLR (D. Del. Dec. 14, 2012). The jury rejected Apple's arguments that each of the three patents is invalid. A trial on damages has not yet been scheduled.

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December 14, 2012

Judge Andrews denies motion to preclude portion of expert's testimony in advance of bench trial

Judge Richard G. Andrews recently denied defendants' motion to preclude plaintiff's expert "from testifying about 'written description' and that 'a solution is a solvate[,]' . . . in advance of a bench trial in which the expert [was] going to testify in any event." GlaxoSmithKline LLC v. Anchen Pharms. Inc., et al., C.A. No. 11-46-RGA (D. Del. Dec. 11, 2012). Judge Andrews noted that "live testimony and cross examination" would better able him to reach a "correct decision" on whether the expert's testimony was appropriate. Id. Judge Andrews also added that defendants' submission sounded "like cross-examination material[,]" and were he a "cynic" he would think that defendants filed their motion to ensure he was "paying attention when this cross-examination happens." Id. n.1.

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December 11, 2012

Judge Andrews Grants Motions to Dismiss Based on “First-Filed” Case Status and Lack of Subject Matter Jurisdiction

In a recent order, Judge Andrews granted two patent infringement declaratory judgment defendants’ motions to dismiss. See Sony Electronics Inc. v. Digitech Image Techs. LLC, C.A. No. 12-980-RGA, Order (D. Del. Dec. 7, 2012). Defendant Digitech originally filed an infringement action against Sony in the Central District of California. The California Court dismissed the suit because it joined several unrelated defendants in violation of the America Invents Act. Digitech refiled the suit against Sony alone on the same day the previous suit had been dismissed. Between the filing of the original suit and the refiled suit, however, Sony brought a declaratory judgment action against Digitech and its parent Acacia in the District of Delaware. Id. at 1-2.

Digitech argued that the original California suit was the “first-filed” suit and the “second-filed” Delaware suit should therefore be dismissed. Sony responded that the original California suit was “legally infirm” and should not be treated as the first-filed suit. Judge Andrews found that the original California suit had not been legally infirm, especially given that the original California suit had been permitted to proceed against the first-named defendant, while the suits against the other defendants were refiled. Accordingly, he granted Digitech’s motion to dismiss based on the first-filed status of the original California suit. Id. at 1-2.

Acacia argued that the declaratory judgment case against it should be dismissed because it did not own the patent-in-suit. Because Acacia could not bring suit on the patent, it argued, there could be no case or controversy between it and Sony. Citing Fina Research S.A. v. Baroid Drilling Fluids, Inc., 98 F.3d 1357 (Fed. Cir. 1996), Judge Andrews found this logic “compelling.” He rejected the argument that declaratory judgment jurisdiction existed because Acacia is a controlling parent of Digitech, who could and did bring a patent infringement suit, and pointed out that Acacia “presumably could not bring a counterclaim for patent infringement.” Judge Andrews therefore found the declaratory judgment suit against Acacia lacking in subject matter jurisdiction and granted Acacia’s motion to dismiss. Id. at 2-3.

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December 11, 2012

Judge Andrews denies motion to dismiss filed by sublicensee of soybean technology.

In a recent memorandum opinion, Judge Richard G. Andrews denied a motion to dismiss filed by a sublicensee of the plaintiff’s soybean technology. Bayer Cropscience AG v. Dow Agrosciences LLC , C.A. No. 12-256-RGA (D. Del. Dec. 6, 2012). The sublicensee first argued that dismissal was appropriate pursuant to Rule 12(b)(7) because the plaintiff failed to join a necessary and indispensable party – the plaintiff’s licensee who was permitted use of the technology for certain purposes not including commercialization, and who in turn sublicensed the use of the technology to the defendant who sought to commercialize the technology. Id. at 2-3, 4. The Court agreed that, at first glance, it appeared that the plaintiff’s licensee was an “absent party [who] will suffer some loss or be put at risk of suffering such loss if not joined.” Id. at 4-5 (quoting Koppers Co., Inc. v. Aetna Cas. & Sur. Co., 158 F.3d 170, 175 (3d Cir. 1998)). The Court found, though, that the defendant’s interests were aligned with the plaintiff’s licensee such that it was “perfectly capable of protecting their joint interests.” Id. at 5-6. Moreover, because the agreement between the plaintiff and the plaintiff’s licensee included an arbitration provision, the Court found it unlikely that joining the plaintiff’s licensee would result in the Court ever ruling on the dispute between the plaintiff and the plaintiff’s licensee, anyway, which the Court found “mitigates the harm or risk of harm that would flow from [the plaintiff’s licensee’s] absence.” Id. at 6-7.

The Court also rejected the argument that the plaintiff’s complaint failed to state a claim because the defendant’s “actions in connection with the soybean technology are validly licensed, and therefore, it cannot infringe . . . .” Id. at 3. As the Court explained, “[t]his argument . . . asserts a factual defense. It is not an attack on the pleadings and is misplaced within the context of a 12(b)(6) motion.” Id.

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