October 22, 2012

Judge Andrews Orders Narrowing of Terms for the Court’s Construction

Judge Andrews has issued an interesting order regarding an upcoming Markman hearing in Riverbed Technology Inc. v. Silver Peak Systems Inc., C.A. No. 11-484-RGA (D. Del. Oct. 17, 2012). The parties in the case identified 31 disputed terms for construction, and Judge Andrews “note[d] that the parties have no agreed-upon constructions. The ratio of agreed-upon to disputed terms is considerably outside the norm.” Accordingly, he “anticpate[d] that no more than ten terms will be heard at the hearing,” and placed the burden on the parties to identify those terms most in need of construction.

Judge Andrews’ order requires the parties to submit a joint letter “identifying the number of asserted claims, and explaining the importance of construction of the approximately 31 disputed terms to other issues in the case . . . . Each party should also identify, in order of priority, the terms that are most important to the party to have argued at the hearing.” “Depending on what is in the submission,” Judge Andrews warned, “the Court may select the terms to be heard, may narrow the claims at issue, or both, or may postpone the hearing until the parties narrow the claims and terms.”

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October 19, 2012

Court Denies Motions to Exclude Expert Reports and Evidence of Secondary Considerations of Non-Obviousness

Judge Andrews and Magistrate Judge Thynge have issued orders resolving numerous pre-trial issues in the past few weeks in the patent infringement litigation between St. Jude Medical and Volcano Corp. related to technology for diagnosis of heart disease. In addition to rulings on claim construction and exclusion of prior art, Judge Thynge has also recently considered St. Jude’s request to exclude portions of Volcano’s expert reports due to spoliation of evidence and Judge Andrews has considered Volcano’s motions to exclude evidence and testimony related to secondary considerations of non-obviousness.

Judge Thynge considered a request by St. Jude to exclude “portions of Volcano’s expert reports based on Volcano’s purported ‘unilateral destructive testing and spoliation of a unique piece of evidence.” See St. Jude Med. Cardiology Div., Inc. v. Volcano Corp., C.A. No. 10-631-RGA-MPT (D. Del. October 9, 2012). Volcano’s expert reports relied on this testing, and St. Jude alleged that it had no notice of the pending dissection of the evidence and no opportunity to conduct its own testing on any similar piece of evidence. Judge Thynge concluded that “St. Jude did not understand Volcano’s experts were dissecting the [evidence, but] . . . Volcano did not willfully conceal the dissection prior to serving [the expert] reports.” Nevertheless, “[b]ecause Volcano altered the [evidence], and did so without St. Jude understanding that alteration would occur, the court [found] there [had] been spoliation.”

Despite finding spoliation of evidence, Judge Thynge did not exclude Volcano’s expert reports. She determined that “Volcano’s exclusive possession of the [evidence], and St. Jude’s inability to prevent, or object to . . . dissection thereof, weighs in favor of finding Volcano ‘at fault’ for altering that evidence.” Nevertheless, St. Jude’s expert was able to “form strong opinions about [the evidence] from examination of the many photographs included in the . . . report documenting the dissection.” Therefore, “the court determine[d] Volcano’s actions . . . did not cause prejudice to St. Jude sufficient to strike portions of the [expert] reports addressing that dissection.” Accordingly, Judge Thynge denied St. Jude’s motion to strike.

Judge Andrews addressed evidence of secondary considerations of non-obviousness. In addition to finding that certain studies could be relevant to secondary considerations and should be admitted, Judge Andrews considered testimony of an expert regarding secondary considerations. See St. Jude Med. Cardiology Div., Inc. v. Volcano Corp., C.A. No. 10-631-RGA-MPT (D. Del. October 12, 2012). He concluded that evidence that “each generation of St. Jude's products . . . embod[ies] its latest patent” would be insufficient to show the required “nexus” between secondary considerations and the patented invention. Rather, Judge Andrews stated, “there has to be more specific testimony” showing “that any secondary consideration is the result of the patented invention, and not the result of other factors, such as the reputation of the maker, features of the device that were known in the prior art, etc.” Because this proffer was insufficient, Judge Andrews concluded that St. Jude “should not discuss the . . . studies or [the] likely [expert] testimony during its opening. The Court [did] not, however, prohibit[] the Plaintiff from attempting to lay the appropriate foundation during testimony.”

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October 19, 2012

Judge Andrews construes term related to "PressureWire" technology

Judge Richard G. Andrews recently construed over thirty claim terms across nine patents related to St. Jude’s “PressureWire” technology, a platform which calculates fractional flow reserve to measure arterial blood pressure. St. Jude Medical v. Volcano Corp., C.A. No. 10-631-RGA (D. Del. Oct. 12, 2012). The following claim terms of U.S. Patent Nos. 6,112,598; 6,167,763; 5,938,624; 6,196,980; 6,248,083; 5,178,159; 5,797,856; 6,976,965; and 7,134,994 were construed:

“it does not contact any surrounding rigid structures,” with “‘[s]aid sensor element’ as the “antecedent basis for the word ‘it’”
“surrounding the sensor”
“pressure sensitive end of the pressure transducer does not contact any structure other than the mount”
“pressure transducer”
“core wire”
“fills the male connector to prevent capillary action”
“interface cable”
“information storing means”
“provided on said interface cable”
“uniquely characteristic of said measuring device (14)”
“extending along the length thereof”
“insulating sleeve”
“extending along the length of the tubular member”
“cylindrical insulting member”
“flexible elongate member”
“coaxially disposed on at least a portion of the flexible elongate member”
“coil assembly”
“distal extremity”
“said flexible elongate member having a first transition counting from the proximal extremity from a larger diameter to a smaller diameter”
“said flexible elongate member is provided with an additional transition distal of the distal extremity of the flexible elongate tubular member and being disposed within the coil assembly”
“hole . . . such that a portion of the pressure sensitive region is disposed opposite the hole”
“distal extremity of the guidewire”
“mounted within the sensor housing such that the pressure sensitive region projects into the lumen”
“multi-mode graphical user interface with at least two distinct displays for presenting diagnostic parameter values of multiple types”
“multi-mode graphical user interface host”
“kernel mode drivers”
“processed sensor data”
“peripheral interface card”

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October 18, 2012

Judge Andrews denies stay pending reexamination where case in its early stages

Judge Richard G. Andrews recently denied defendants' motion to stay pending reexamination of one of the two patents-in-suit. Rovi Corp. v. Haier Group Corp., C.A. No. 11-1140-RGA (D. Del. Oct. 16, 2012). Judge Andrews determined that while he "might very well be inclined to grant a stay as to the '523 patent (the subject of the reexam), the Court [did] not see any reason to grant a stay as to the other." Because the case was in its infancy, and because the plaintiffs "ought be able to proceed on the [patent not involved in reexamination proceedings]," Judge Andrews declined to stay the entire case.

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October 17, 2012

Judge Andrews construes disputed claim of patent covering plaintiffs' EMBEDA® capsule

Judge Richard G. Andrews construed the one disputed claim term of plaintiffs' U.S. Patent No. 7,815,934 covering plaintiffs' EMBEDA® extended release capsules for oral use. in a one page order, Judge Andrews adopted plaintiffs' proposed construction, construing the term "sequestering subunit" to mean "Any means for containing an aversive agent and preventing or substantially preventing the release thereof in the gastrointestinal tract when intact, i.e., when not tampered with."

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October 15, 2012

Judge Robinson denies emergency request seeking disqualification of expert witness.

Judge Sue L. Robinson recently denied a plaintiff’s emergency request seeking to disqualify an opposing expert witness based on the expert’s earlier consultations with the plaintiff, pursuant to a confidentiality agreement, regarding the litigation. Butamax Advanced Biofuels LLC v. Gevo, Inc., Civ. No. 11-54-SLR (D. Del. Oct. 10, 2012). The plaintiff’s emergency request was based on its contention that the plaintiff previously sought to retain the expert, and in the process engaged in substantive discussions regarding how the plaintiff would respond to certain arguments expected to be made by the defendant. Id. at 1-2. The emergency request provided: “Through the confidential relationship, [the expert] at least learned counsel’s [modus operandi] and decision-making process. Yesterday, [the expert] indicated he will consult for [the defendant’s] counsel on the same matters. The Court should exclude [the expert] and preclude [the defendant] from contacting him further.” Civ. No. 11-54-SLR, D.I. 531.

The Court explained that the disqualification of an expert witness is justified where it was “(1) … objectively reasonable for the party seeking disqualification to have concluded that a confidential relationship existed with the expert;[] and (2) … confidential or privileged information actually [was] disclosed to the expert.” Id. at 2 (citing Syngenta Seeds, Inc. v. Monsanto Co., Civ. No. 02-1331, 2004 WL 2223252, at *1 (D. Del. Sept. 24, 2004)). The Court added that “[a]ffirmative answers to both inquiries ordinarily compel disqualification; however, ‘disqualification is likely inappropriate if either inquiry yields a negative response.’” Id. at 3 (quoting Wang Laboratories, Inc. v. Toshiba Corp., 762 F. Supp. 1246, 1248 (E.D. Va. 1991)).

Here, the Court assumed that because the expert signed a confidentiality agreement, the first prong of the inquiry was satisfied. Id. at 5-6. The Court found, though, that the second prong of the inquiry was not satisfied, because no confidential or privileged information was disclosed to the expert by the plaintiff’s attorney. Id. at 6. The record showed that the expert had not been retained by the plaintiff, nor received any fees or confidential documents from the plaintiff. Id. In fact, the plaintiff’s attorneys had refused to provide the expert “with even publicly available documents from the litigation, e.g., the declarations of two other EC Commission members that had been submitted on behalf of [the plaintiff].” Id. at 6 n.5. The Court found that “the nature of the relationship and of the information allegedly disclosed instantly is much too abbreviated to warrant such a drastic sanction [as disqualification].” Id. at 6. The Court added that allowing the expert to testify on behalf of the defendant would not call into question the integrity of the judicial process, especially where, as here, the expert was “one of a limited number of individuals with expertise related to [the subject matter of his testimony].” Id. at 7.

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October 15, 2012

Judge Andrews partially overrules Magistrate Judge’s decision to exclude certain prior art evidence for discovery violations, but excludes the evidence on other grounds

Judge Richard G. Andrews partially overruled Magistrate Judge Thynge’s decision to exclude certain prior art evidence due to discovery violations, but in a subsequent order excluded the evidence anyway on other grounds. St. Jude Medical v. Volcano Corp., C.A. No. 10-631-RGA, Mem. Op. (D. Del. Oct. 9, 2012); Order (D. Del. Oct. 12, 2012). Plaintiffs produced the prior art, a video recording of a demonstration in Paris, France to an audience that included U.S. cardiologists, in support of its 102(a) invalidity theory. The video was produced on April 24, 2012 -- five months after fact discovery closed in November 2011. Id. at 2. Judge Andrews had previously affirmed Magistrate Judge Thynge’s decision to exclude other prior art evidence due to discovery violations. Id. Judge Andrews found the situation at issue here somewhat different, however. First, Judge Andrews found that even though plaintiffs produced the video as soon as they received it, it was not clearly erroneous for Magistrate Judge Thynge to conclude that that producing it after the discovery deadline passed violated the court’s scheduling order. Id. at 3. In doing so, Judge Andrews rejected plaintiffs’ argument that there was no violation because supplementations under Fed. R. Civ. P. 26(e) were permissible and contemplated under the court’s scheduling order. Id. Judge Andrews was not persuaded because Rule 26(e) “is not an invitation to do further investigation immediately before trial, and then add the fruits of the investigation to the case.” Id.

However, Judge Andrews determined that he could not assess whether Magistrate Judge Thynge’s decision to exclude was an abuse of discretion based on the current record. Because of the importance of the evidence (if it was admitted it “might very well provide the clear and convincing evidence to invalidate the patent”), Judge Andrews set up a teleconference on October 11, prior to the commencement of the impending trial, to further discuss the issue with counsel. The next day, Judge Andrews issued an order finding that there was no “likely discovery [defendant] could have done had it had the video earlier.” Oct. 12 Order at 1-2. But, there was no evidence that a person of ordinary skill in the art was in the audience of the demonstration in the video. Id. at 2. Plaintiffs offered the evidence to support its theory that the patented invention was known by others in the United States. Id. The video, however, did not “indicate” knowledge or use in the United States. Id. “The theory that American cardiologists have knowledge . . . based on watching a device the patented features of which are not within their area of expertise, cannot be proved by clear and convincing evidence based on the proffer of evidence.” Id. Thus, Judge Andrews excluded the video, and any related testimony about the demonstration, “as not presenting sufficient evidence to raise a triable jury question[.]” Id. at 3.

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October 13, 2012

Judge Stark Denies Motion for Contempt of Permanent Injunction

Judge Stark has denied a motion to hold a defendant in contempt of the Court’s permanent injunction in the long-standing patent battle between ARRIS Group and SeaChange International. See nCube Corp. v. SeaChange Int’l Inc., C.A. No. 01-011-LPS (D. Del. Oct. 12, 2012). A jury had previously found in favor of ARRIS in its infringement case against SeaChange, and the Court entered a permanent injunction in 2006. In 2009, ARRIS filed its motion, alleging that SeaChange’s design-around did not place its interactive television (ITV) product outside the scope of the patent-in-suit or the Court’s permanent injunction. Judge Stark held that the dispute was amenable to a contempt proceeding under the Federal Circuit’s recent decision in TiVo Inc. v. Echostar Corp., 646 F.3d 869 (Fed. Cir. 2011), and held such a hearing to allow the parties to present evidence on the contempt issue.

Under TiVo, a “party seeking to enforce the injunction must prove both that (1) the newly accused product is not more than colorably different from the product found to infringe and (2) that the newly accused product actually infringes.” Tivo, 646 F.3d at 882. ARRIS contended that SeaChange had made only a minor, insignificant change in its design-around. SeaChange countered that ARRIS improperly relied on a previously-unaccused element and that a finding of contempt can only be based on features that were alleged as infringing at trial. Judge Stark came down on the side of SeaChange, explaining that “[u]nder TiVo, the Court must assess whether colorable differences exist between the [accused] functionality . . . of the infringing ITV system and the redesigned . . . functionality that is now implemented . . . [in] the modified ITV system. Having undertaken this analysis, the Court finds that ARRIS has failed to prove, by clear and convincing evidence, that there is no colorable difference between the [accused] functionality in the infringing ITV system and the [accused] functionality in the modified ITV system.” Therefore, Judge Stark concluded, ARRIS had failed to demonstrate the first TiVo prong, and the contempt motion should be denied.

Despite finding that ARRIS had not shown a lack of colorable differences between the original, infringing product and SeaChange’s new, modified product—and therefore that a contempt finding was inappropriate—Judge Stark proceeded to consider whether the modified product infringed the patent-in-suit under the second TiVo prong. He concluded: “Having considered both parties’ arguments and evidence on the issue of infringement, the Court finds that ARRIS has failed to provide clear and convincing evidence that SeaChange’s modified ITV system actually infringes [the asserted claim]. To the contrary, SeaChange—although it does not bear the burden of proof—has come forward with significant evidence of non-infringement.” Accordingly, while he did not find non-infringement, Judge Stark determined that SeaChange had prevailed under the high standard of TiVo and denied ARRIS’s motion for contempt.

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October 12, 2012

Judge Robinson Dismisses Claims of Willful and Joint Infringement, Allows Claims of Indirect Infringement

Judge Sue Robinson recently ruled on a motion to dismiss claims of indirect infringement, willful infringement, and joint infringement under Twombly and Iqbal, finding that the plaintiff had adequately plead indirect infringement but not willful or joint infringement. Aeritas, LLC v. Alaska Air Group, Inc., C.A. No. 11-967-SLR, at 1-2 (D. Del. Sep. 28, 2012).

Considering the defendant’s motion to dismiss the amended complaint, Judge Robinson first addressed indirect infringement. She noted that the plaintiff had alleged “induce[d] infringement, of one or more claims of the [patents-in-suit], with specific intent that [the defendant’s] software be used by . . . customers to infringe the [patents-in-suit].” The plaintiff also alleged contributory infringement by the defendant “offering its products to its customers, which constitute a material part of the invention and is not a staple article or commodity of commerce suitable for substantial non-infringing use.” Therefore, “having identified the products at issue for purposes of its direct infringement claims, the court conclude[d] that [the plaintiff had] satisfied the pleading requirements of Twombly and Iqbal with respect to the allegations of indirect infringement found in the amended complaint.” Id. at 5. In making this finding, Judge Robinson reiterated her position in Walker Digital, LLC v. Facebook, Inc., 2012 WL 1129370 (D.Del. Apr. 4, 2012) that a plaintiff meets the requirements of Twombly and Iqbal if it “identif[ies] the patent-at issue and the allegedly infringing conduct, as well as the notice afforded by service of the original complaint and the apparent decision to continue the inducement post-service.”

Turning to the question of willful infringement, Judge Robinson noted that the plaintiff’s amended complaint simply “reserve[d] the right to request [a willful infringement] finding at the time of trial” and alleged that “Defendant’s acts of infringement have been willful under 35 U.S.C. § 284 since at least the date it was served with the Complaint.” In the past, Judge Robinson has “allowed general allegations of willful infringement to withstand motions to dismiss and . . . read[] Seagate as not foreclosing the consideration of conduct after the complaint is filed.” Nevertheless, in this case, she found that “mere notice of the charge of infringement gleaned from service of the complaint [does not] pass muster for a willfulness claim under Rule 8 . . . [as] a patentee must not only demonstrate that the accused infringer knew about the patent (as for indirect infringement), but ‘acted despite an objectively high likelihood that its actions constituted infringement.’” Judge Robinson determined that the allegations of willful infringement did not pass muster under Rule 8 because of “the apparent recognition by [the plaintiff] that it had no good faith basis to assert willful infringement . . . [and] the fact that the burden to prove willful infringement includes more than mere knowledge of the patent.” She noted, however, that “should discovery reveal evidence of willful infringement, [the plaintiff] may approach the court for permission to amend its pleadings at that juncture.” Id. at 7-8.

Finally, Judge Robinson found that the plaintiff had failed to sufficiently plead joint infringement. She explained that “the phrase ‘[t]o the extent that Defendant is jointly infringing . . . it is the mastermind of the infringement’ simply sets forth a proposition, not facts.” She therefore refused to “characterize the speculative language used in the amended complaint as ‘enough factual matter’ that, when taken as true, ‘state[s] a claim for relief that is plausible on its face,’” as required by Twombly. Id. at 9.

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October 11, 2012

Judge Stark Grants Leave to Amend Answer to Assert Inequitable Conduct

Judge Leonard Stark recently granted a patent infringement defendant’s motion to amend its answer and counterclaims to assert counterclaims of inequitable conduct. See Intervet Inc. v. Boehringer Ingelheim Vetmedica, Inc., C.A. No. 11-595-LPS (D. Del. Oct. 9, 2012). The defendant represented that it could not have known of the facts supporting a claim of inequitable conduct by the deadline for amending the pleadings, and therefore the good cause required by Rule 16 to amend the case schedule existed. Specifically, the defendant was unaware that the inventors knew the materiality of certain prior art that they had not disclosed to the PTO until after an inventor notebook was produced and depositions of two other inventors were taken. Given these circumstances, Judge Stark found that the defendant had “acted diligently in gathering evidence to support its inequitable conduct claim and informed [the plaintiff] of its intention to amend its answer approximately one week after [the relevant] deposition.” “The Court [did] not find undue delay, bad faith, or dilatory motive in [the defendant’s] actions . . . [and the] amended claim [was] not futile.” Furthermore, the Court was “not persuaded that [the plaintiff] will be unduly prejudiced if the Court grants [the] motion . . . [as] discovery appears to be ongoing.” Accordingly, Judge Stark granted the motion to amend the answer and counterclaims.

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