December 6, 2012

Judge Stark Construes Terms of Vehicle Mirror Patent

Judge Leonard Stark recently issued a claim construction opinion in a patent dispute related to an assembly for mounting a mirror to a motor vehicle. See Rosco, Inc. v. Velvac Inc., C.A. No. 11-117-LPS, slip op. (D. Del. Dec. 4, 2012). Judge Stark construed the following terms of the patent-in-suit:

- “a structural portion of the vehicle”
- “attachment to”
- “connection to” and “connected to”
- “engine bay”
- “inside the engine bay”
- “below the hood of the vehicle”
- “positioned below the hood when the hood is in a closed position”
- “vehicle bulkhead” or “bulkhead”

Each of these terms related to the manner in which the mirror assembly was connected to the vehicle and what portion of the vehicle it was connected to. For each term, Judge Stark either sided with the Plaintiff, in one case adding one clarifying limitation, or gave the term is plain and ordinary meaning. Id. at 7-16.

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November 30, 2012

Judge Stark finds that issue preclusion bars defendant from arguing any invalidity or unenforceability theory because defendant’s affiliate unsuccessfully asserted two invalidity theories against same patent in an earlier litigation.

In a recent memorandum opinion, Judge Leonard P. Stark ruled that a defendant was barred by issue preclusion from arguing that the patent at issue is invalid or unenforceable, under any theory, because the defendant’s parent company had controlled an affiliate’s earlier litigation which resulted in a ruling that the same patent was not invalid or unenforceable. Astrazeneca UK Ltd., et al. v. Watson Laboratories, Inc. (NV), et al., C.A. No. 10-915-LPS (D. Del. Nov. 14, 2012). The Court agreed with the plaintiffs that invalidity and unenforceability represent “single issues” for purposes of issue preclusion—such that the defendant was not only barred from litigating the same invalidity and unenforceability theories that the affiliate had argued unsuccessfully in the earlier litigation, but was barred from asserting any invalidity or unenforceability theories. Id. at 11-12. The Court rejected the plaintiffs’ argument, though, that another generic manufacturer and co-defendant was a proxy of the issue precluded defendant who also should be barred from arguing invalidity and unenforceability. Id. at 13-14.

The Court also considered the defendant’s motion for summary judgment of non-infringement under the doctrine of equivalents, which argued that “because the patentees used narrow claim language, Plaintiffs are precluded from relying on the doctrine of equivalents to expand the patent’s scope.” Id. at 4. The plaintiffs responded that “the doctrine of equivalents applies and protects patentees from infringers who make insubstantial changes to the claimed invention.” Id. The Court denied the motion without prejudice, finding that “the most appropriate course is to hear all of the evidence at trial and make a conclusion on the doctrine of equivalents thereafter.” Id. at 9.

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November 29, 2012

District of Delaware has suspended the upcoming PDF/A filing requirement

Due to problems encountered in conforming to the PDF/A standard, the District of Delaware has indefinitely suspended the requirement that was to take effect January 1, 2013, that all documents filed into CM/ECF conform with the PDF/A standard.

The Court has announced that the filing of documents in PDF Standard format will remain acceptable until further notice.

November 29, 2012

Judge Stark excludes testimony of plaintiffs’ legal expert and excludes testimony of plaintiffs’ technical expert, in part

Judge Leonard P. Stark recently granted defendants’ motion to exclude the testimony of plaintiffs’ legal expert, who was offered to testify as to substantive issues regarding the patent-in-suit, U.S. Patent No. RE37,314. He also granted defendants’ motion to exclude the testimony of plaintiffs’ technical expert to the extent that the expert would be offered to provide testimony as to “state of mind.” AstraZeneca UK Limited v. Watson Laboratories, Inc., C.A. No. 10-915-LPS (D. Del. Nov. 14, 2012).

Regarding plaintiffs’ legal expert, Judge Stark noted that the District of Delaware has a “well-established practice of excluding the testimony of legal experts, absent extraordinary circumstances.” Id. at 2. Despite the legal expert’s experience as a PTO examiner, a Special Program Examiner, and an Administrative Patent Judge on the Board of Patent Appeals and Interferences, Judge Stark found “no reason to depart from” the District of Delaware’s well-established practice in this case. Id. at 2-3. Turning to plaintiffs’ technical expert, Judge Stark noted that “[g]enerally, expert witnesses are not permitted to testify regarding intent, motive, or state or mind, or evidence by which such state of mind rnay be inferred.” Id. at 4. He therefore excluded the testimony of plaintiffs’ technical expert to the extent that the expert would offer opinions regarding what the inventors or corporate plaintiff “knew” about the prior art or what they “intended.” Id. Defendants’ motion to exclude was denied, however, to the extent that the expert would provide “testimony as to what one of ordinary skill in the art would understand about rosuvastatin zinc or other zinc salts in the context of the patent-in-suit.” Id. Judge Stark noted that “[s]o long as [the expert’s] focus is on what one of ordinary skill in the art would understand – and not on what the inventors or [corporate plaintiff] knew or intended – [the expert’s] testimony will be permitted.” Id.

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November 28, 2012

Judge Andrews denies plaintiff’s motion to disqualify defendant’s counsel based on earlier prosecution work for plaintiff.

Judge Richard G. Andrews recently denied a plaintiff's motion to disqualify one of a defendant's attorneys and his firm. Walker Digital, LLC v. Axis Communications AB, et al., C.A. No. 11-558-RGA (D. Del. Nov. 21, 2012).
The Court concluded that the current patent infringement suit was not substantially related to the “junior prosecution work,” id. at 6, the attorney had done for the plaintiff while working for a different law firm. Id. at 7. While the Court recognized that the plaintiff's “general patent prosecution or claim drafting strategies” may have been disclosed in the prior representation, it concluded that, even if the attorney had been privy to these “general confidences,” they were not relevant to the present action, which involved “different patents and a different subject matter.” Id. at 6. Additionally, the Court noted that the scope of the patents in suit would not be determined by the plaintiff's "subjective intent or business strategy.” Id. And “it [was] not apparent at all how confidential knowledge of [the plaintiff's] strategies and plans fifteen years ago could be relevant to any issue in the case, or harmful to [the plaintiff] in some other way.” Id. at 6.

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November 26, 2012

In denying motion to transfer, Judge Sleet explains the divergence of approaches in Delaware considering motions to transfer under 28 U.S.C. §1404(a)

Chief Judge Gregory M. Sleet recently denied defendant Apple Inc.’s motion to transfer the case to the Northern District of California. Smart Audio Technologies, LLC v. Apple, Inc., C.A. No. 12-134-GMS (Nov. 16, 2012). In its opinion the Court discussed the evolution of its decisions since Jumara was decided, concluding that “judges within this district have made subtle adjustments to the language employed in performing the transfer analysis,” although “the substance of the inquiry has remained constant.” Id. at 3. Specifically, Delaware judges have issued decisions “along two methodological branches . . . the ‘Affymetrix approach’ and the ‘modern approach.’” Id. at 5. Judge Sleet noted that under both approaches, the Court weighs the “balance of convenience” by looking at the Jumara factors and then makes the determination of whether the balance is tipped in favor of transfer. Id. at 6. The approaches differ, however, in how they consider plaintiff’s choice of forum. Under the Affymetrix approach, plaintiff’s choice of forum is “the paramount consideration” and is separated from the weighing of the other Jumara factors. Id. This factor establishes the defendant’s burden, such that the defendant is required “to demonstrate that the interests of justice and convenience weigh strongly in favor of transfer[,]” despite plaintiff’s forum selection. Id. at 7 (emphasis in original). The modern approach, however, “treats the plaintiff’s forum preference as an independent Jumara factor to be considered within the balance of convenience analysis[,] but imposes the same heavy burden on defendant. Id. at 7-8. The modern approach only gives plaintiff’s forum choice increased weight when the plaintiff has chosen to litigate on its home turf or selected the forum for “other rational and legitimate reasons.” Id. at 9. Judge Sleet noted that the differences of the two approaches is not troubling because any difference would fall within the Court’s discretion to decide whether transfer is warranted, and the balance of factors “is a fundamentally case-by-case, fact-specific inquiry.” Id. at 10.

Regarding the case at hand, Plaintiff Smart Audio, a Texas company with a principal place of business in Texas, argued that its forum choice should be given deference because Smart Audio had rational and legitimate reasons for litigating in Delaware. Id. at 12. Judge Sleet noted that while Smart Audio’s forum choice, as a Jumara factor, is entitled to “something more than minimal weight” for having rational reasons to sue in Delaware, its forum choice is not entitled to the substantial deference had Smart Audio sued on its home turf. Id. at 12-13 (citing In re Link_A_Media Devices Corp., 662, F.3d. 1221 (Fed. Cir. 2011)). Judge Sleet then discussed the remaining Jumara factors. Regarding where the claim arose, Judge Sleet concluded that the factor weighed slightly in favor of transfer because “while the infringing products were sold nationwide, at least some of the research and development activities relating to those products occurred in the proposed transferee district.” Id. at 14-15. Likewise, the location of books and records factor weighed slightly in Apple’s favor because “its documents relating to the design and development” of the accused products are located in California. Id. at 17-18. However, certain public interest factors weighed strongly against transfer, such as the existence of related lawsuits in Delaware. The remaining factors were either inapplicable or neutral. The Court ultimately concluded that transfer was not warranted: “Even if the court could say that the balance of convenience tilts somewhat toward transfer, Apple certainly has not shown that the interests of convenience and justice strongly favor its position.” Id. at 21.

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November 21, 2012

Judge Robinson Excludes Patent Claims from Upcoming Trial Because Claims had Substantively Changed During Reexamination

Judge Sue Robinson has issued a memorandum order on a patent infringement defendant’s motion to exclude several claims of the patent-in-suit from consideration at trial. See MobileMedia Ideas, LLC v. Apple Inc., C.A. No. 10-258-SLR (D. Del. Nov. 15, 2012). During the pendency of the case, the PTO conducted an ex parte reexamination of the patent-in-suit and concluded that three claims were patentable as amended. After the PTO had concluded its reexamination, the defendant requested that Judge Robinson exclude the three amended claims from the upcoming trial, which was only a few weeks away and would proceed on the unamended claims. The plaintiff sought inclusion of the three amended claims in the trial, in place of the three original claims. Judge Robinson ultimately ordered that the claims be excluded. Id. at 6.

Judge Robinson explained that reexamined claims must be “legally identical to their original counterpart . . . [meaning] ‘without substantive change.’” Id. at 4 (citing Laitram Corp. (Laitram II), 163 F.3d 1342, 1346 (Fed. Cir. 1998)). Essentially, “the scope of the claims [must be] identical.” Id. She pointed out that the amendments to the claims at issue “incorporate limitations from other claims of the [patent-in-suit] . . . [but] the combination of elements in amended claim 1 did not exist in a single claim prior to the issuance of the reexamination certificate” and experts had not had the opportunity to address the combination of elements in one claim. Id. at 4-5. Accordingly, Judge Robinson found that the claim at issue and claims dependent on it had substantively changed during reexamination and that “proceeding with the reexamined claims at this stage may open the door to new infringement theories and opinions at trial that have not been vetted through discovery.” Id. at 5-6. Additionally, the defendant would be “unduly prejudiced . . . [because it had] framed its invalidity defenses for the [patent-in-suit] in light of the original claims.” Id. at 6. Accordingly, Judge Robinson excluded the amended claims from trial.

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November 21, 2012

Judge Andrews Issues Claim Construction Opinion Related to Anti-HIV Pharmaceuticals

Judge Richard Andrews recently construed eight disputed claim terms of U.S. Patent No. 6,417,191, which relates to “therapeutic combinations of anti-HIV drug compounds.” Viiv Healthcare UK Ltd. v. Lupin Ltd., C.A. No. 11-576-RGA (D. Del. Nov. 16, 2012); Viiv Healthcare UK Ltd. v. Teva Pharmaceuticals USA, Inc., C.A. No. 11-688-RGA (D. Del. Nov. 16, 2012). Judge Andrews construed the following terms:

• “animal”
• “physiologically functional derivative”
• “symptoms or effects of an HIV infection”
• “a single combined formulation”

Id. at 2-3, 13-15.

Judge Andrews also construed the following terms, which each presented similar issues:

• “(1S, 4R)-cis-4-[2-amino-6-(cyclopropylamino)-9H-purin-9-y1]-2-cyclopentene-1-methanol or a physiologically functional derivative thereof and (2R, cis)-4-amino-1-(2-hydroxymethyl-1,3-oxathiolan-5-yl)-(1H)-pyrimidin-2-one or a physiologically functional derivative thereof”
• “combination”
• “pharmaceutical formulation”/“formulation”
• “therapeutically effective amount”

Id. at 3-12.

For these terms, defendants argued that the ’191 patent specification and prosecution history indicated that “synergism” was an “essential element of the claimed drug combination” and that the patentee “disavowed” non-synergistic combinations. Id. at 5. In response, plaintiffs argued that “synergism” was not an essential element but was an “unexpected result” emphasized to overcome obviousness rejections. Id. at 5-6. The appropriate constructions depended on whether “synergism” limited the scope of the claim terms. See id. at 5.

Despite the patentee’s emphasis on synergy in the title and invention description, Judge Andrews found that the ’191 specification did not “evince[] ‘manifest statements of exclusion or restriction’ giving rise to clear and unmistakable disclaimer.” Id. at 6-9. Among other reasons, he noted that disclaimer “typically occurs through a patentee’s differentiation of prior art.” But in this case, the patentee “at no point . . . criticize[d] a prior art for lacking synergism and then distinguish[ed] [its] drug combination for its synergistic aspect.” Id. at 7-8. Synergism was discussed as an “unexpected result,” not a “component or property of the combination itself.” Id. at 8.

Similarly, despite the patentee’s consistent emphasis on synergism in its correspondence with the PTO, Judge Andrews found that “clear and unmistakable” disclaimer in the prosecution history was absent. Id. at 9-12. He noted that “[c]lassic prosecution disclaimer occurs when an applicant escapes rejection for anticipation through narrowing statements to the examiner differentiating the application from the prior art.” Id. at 11. The patentee in this case, however, never narrowed its claims to avoid an anticipation rejection. Id. Rather, the patentee used “synergism” to overcome obviousness rejections by arguing that “the combined use of the drug compounds [was] not . . . expected to be as effective as proven.” Id. at 12. Judge Andrews did note that “[h]ad the patentee proved the existence of synergistic effects (and thus non-obviousness) via responses that altered the chemical or physical characteristics of the drug combination itself, those responses would arguably limit the scope of the claims, as the invention itself would have been re-characterized.” Id. at 12.

Because the patentee did not disavow non-synergistic combinations in the specification or prosecution history, the claim terms were not limited to synergistic combinations and Judge Andrews gave them their “plain and ordinary meaning[s].” Id. at 3-12.

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November 20, 2012

Judge Andrews denies motion to transfer venue where both parties were incorporated in Delaware

Judge Richard G. Andrews recently denied defendant’s motion to transfer venue to the Northern District of California in this patent infringement action. Round Rock Research, LLC v. Dell, Inc., C.A. No. 11-976-RGA (D. Del. Nov. 15, 2012). Plaintiff was a Delaware corporation with its principal place of business in New York. Defendant was also a Delaware corporation with its principal place of business in Texas. Id. at 3. Judge Andrews found that defendant’s forum preference favored transfer because it had business operations in the Northern District of California, but concluded that all other Jumara factors were either neutral, inapplicable, or only “marginally” favored transfer. Id. at 5-6. As to the public policies of the fora, the Court observed that while Delaware’s public policy favors litigation of business disputes there, “this factor significantly overlaps with why Plaintiff would have chosen Delaware as a venue in the first place” and it afforded this factor no additional weight. Id. at 7.

The Court also considered the fact that plaintiff had sued other computer manufacturers in Delaware and at least one of the patents in this case is asserted in pending litigation in the Northern District of California. Id. at 8. While the Court found this “a legitimate concern” especially if the Court “already had some experience with the patents,” it concluded that this factor was neutral because the cases were in their early stages and judges in California were “in about the same situation.” Id.

Judge Andrews considered and distinguished In re Link_A_Media Devices Corp., 662 F.3d 1221 (Fed. Cir. 2011), in which the Federal Circuit ordered transfer when only one party was a Delaware corporation and both parties were “effectively” principally based in the proposed transferee district. Here, both parties were Delaware corporations and neither corporation was principally based in the proposed transferee district. Id.

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November 20, 2012

Magistrate Judge Williams issues order compelling discovery of potentially infringing products made by third parties.

Magistrate Judge Karen M. Williams, of the District of New Jersey, sitting by designation, recently ruled on a dispute regarding the scope of permissible discovery into devices made by third parties. Tessera Inc. v. Sony Electronics, Inc., et al., C.A. No. 10-0838-RMB-KMW (D. Del. Nov. 15, 2012). At issue was alleged infringement of the plaintiff’s patents relating to “semiconductor products where multiple chips are stacked, one on top of another, typically for the purpose of facilitating their use in electronic devices where space is at a premium.” Id. at 2. A dispute arose after the plaintiff served discovery seeking information about accused products not identified in the complaint, or in an initial phase of discovery. Id. at 3. The defendant argued, among other things, that the discovery request improperly sought information not only about its products that incorporated its own infringing chips, but also about its “products that use chips made by third parties.” Id. at 8-9. The court found that because the plaintiff’s complaint alleged infringement based on the defendants’ making, using, selling, offering for sale in, or importing into the United States infringing chips, the plaintiff’s “claims purport to include not only chips manufactured by [the defendants] and products using [the defendant's] chips, but also potentially [the defendant's] products including chips manufactured by other third party companies that allegedly infringe [the] patents.” Id. at 10-11. The court held that the plaintiff’s discovery was permissible under Rule 26, which allows “[p]arties [to] obtain discovery regarding any nonprivileged matter that is relevant to any party’s claim or defense.” Id. at 9, 11. The court also found that Rule 26 permitted the plaintiff to seek discovery not only about products the defendant knew were being made, used, sold, offered for sale in, or imported into the United States, but also about any products the defendant “had reason to believe were being made, used, sold, offered for sale in or imported into the United States.” Id. at 11.

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