August 14, 2012

Judge Stark Issues Claim Construction Opinion in Multi-Defendant Patent Case Relating to Technology for Power Conservation in a Computer System

In St. Clair Intellectual Property Consultants, Inc. v. Apple, Inc., C.A. 10-982-LPS (D. Del.), Judge Stark recently issued a claim construction opinion construing disputed claim terms for six patents-in-suit relating to ways in which a computer system can utilize various techniques to achieve improved power conservation. Id. at 1. In the memorandum opinion, the Court construed the following claim terms and phrases:

- “accumulating”
- “accumulating a count indicating the time duration said CPU has allocated to performing . . . [said] idle class activities within a predetermined time period”
- “accumulating a count related to said idle class code thread occurrence detection”
- “execution of a predefined code thread”
- “single common system bus which directly connects the CPU device with the input/output devices”
- “system bus which directly connects the CPU device with said input/output circuit”
- “system bus which connects the CPU device with the input/output device”
- “generating [or generates] a first inactivity indicator after a first predetermined period of inactivity and a second inactivity indicator a second predetermined period of inactivity after generating the first inactivity indicator”
- “[couples device operating power/coupling said circuit operating power] . . . when the [state controller/computer system] is in said [first/second/third] state”
- “polarity control bit”
- “polarity circuit”
- “idle thread execution completion detection means”
- “processor clock speed control means”
- “selectable connector”
- “selection device”
- “controller”
- “bus processing means”
- “power director means which in response to the mode of operation of the mode controller selectively couples each of the plurality of power control lines to said memory cell associated with that power control line such that a signal is generated on the power control line that is dependent upon the state of the memory cell to which it is coupled”

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August 14, 2012

Judge Robinson stays second-filed action, defers to first-filed court to determine where litigation should proceed.

In a recent memorandum opinion, Judge Robinson granted a defendant’s motion to stay a second-filed action pending the first-filed court’s determination of where the litigation should proceed in light of the first-filed rule. Cellectis S.A. v. Precision Biosciences, Inc., C.A. Nos. 11-890-SLR, 12-204-SLR (D. Del. Aug. 6, 2012). The declaratory judgment plaintiff, Cellectis, (who was the defendant in a mirror image infringement suit filed first in North Carolina), argued that “the first-filed rule should not apply in the first instance because the North Carolina court lacks jurisdiction over [Cellectis].” Id. at 5. The Court noted, though, that Cellectis had previously sued Precision Biosciences in North Carolina, and therefore “should not oppose litigating in a court in which it previously litigated without complaint.” Id. The Court ultimately held that because it was not “evident that the North Carolina court lacks personal jurisdiction . . . the North Carolina court should make that determination in the first place as the first-filed court.” Id. at 6. The Court stayed the case to allow the North Carolina court time to apply the first-filed rule and determine where the parties’ litigation should proceed. Id.

On a separate issue, Judge Robinson clarified that where a complaint is amended “to add patents that issued after the original complaint was filed,” the determination of whether to permit the amendment is controlled by Federal Rule of Civil Procedure 15(d), as opposed to Rule 15(a). Here, the Court permitted Cellectis to amend its complaint to add newly issued patents under Rule 15(d), explaining that (as with the inquiry under Rule 15(a)) leave should be freely given absent evidence of undue delay, bad faith, or dilatory motive, none of which were present in this case. Id. at 8-9. The Court acknowledged that it appeared Cellectis chose to amend its complaint, rather than file a new action for infringement of the newly issued patents, to avoid "first-to-file complications." Id. at 8.

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August 13, 2012

Judge Fallon Recommends Dismissal of Claims for Indirect Infringement and Willfulness in Multi-Defendant Patent Case Where Plaintiff Failed to Sufficiently Allege That Defendants had "Actual Knowledge"

In Monec Holding AG v. Motorola Mobility, Inc., et al., C.A. No. 11-798-LPS-SRF (D. Del.), Magistrate Judge Fallon recently issued a Report and Recommendation recommending that defendants’ motion to dismiss plaintiff’s claims for indirect infringement and willfulness be granted. Id. at 1. In the case, plaintiff filed suit against multiple defendants alleging willful, direct and indirect infringement of a patent relating to an electronic book technology. Id. at 1-2. Specifically, in its first amended complaint, as bases for its claims of indirect infringement and willfulness, plaintiff alleged that: (1) “Defendants instruct their customers, both retailers and end-users, on infringing uses of the Infringing Products”; (2) “Defendants knew or should have known that the Infringing Products were especially made for use in an infringement of [the patent-in-suit]”; and (3) “there is no substantially noninfringing use of the Infringing Products.” Id. at 2. In support of its allegations that defendants had actual knowledge of the patent-in-suit, plaintiff further alleged that because defendants’ competitors had been engaged in litigation with plaintiff involving the same patent at issue in this case, and because that litigation received substantial press coverage, defendants in this case were aware of and would have likely followed and monitored that litigation. Id. at 1-2.

The Court disagreed, concluding that plaintiff had failed to allege sufficient facts from which the Court could infer that defendants had actual knowledge of the patent-in-suit at the time they committed the allegedly infringing activities. Monec Holding at 8-9. The Court found that plaintiff’s assumption that defendants would have known about the patent-in-suit based on the litigation activities of their competitors was not enough. Id. at 8. The Court also found that the plaintiff failed to sufficiently allege willful blindness or that the defendants somehow purposefully avoided knowledge of the patent-in-suit. Id. at 12. In addition, on the issue of intent, the Court found that plaintiff’s “conclusory averments” contained no factual support to establish the requisite intent and that marketing activities of the defendants, absent more, do not demonstrate that defendants knew such activities were infringing or that defendants had the specific intent to encourage another’s infringement. Id. at 13. Likewise, on the issue of willful infringement, the Court found that plaintiff failed to sufficiently allege how or why defendants would have known that the patent-in-suit applied to their allegedly infringing activities or that defendants acted in “deliberate disregard” of plaintiff’s rights. Id. at 16.

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August 10, 2012

Judge Stark Issues Claim Construction Opinion for Computer Power System Patents

Judge Stark recently issues a Markman opinion construing the claims of patents related to power conservation in computer systems. In St. Clair Intellectual Prop. Consultants, Inc. v. Acer, Inc., et al., C.A. Nos. 09-354-LPS & 09-704-LPS (D. Del. Aug. 7, 2012), Judge Stark construed the following terms:

- “activity value”
- “activity count”
- “monitors/monitoring the activity level [of the] computer system”
- “activity monitor”
- “powered modes”/“powered states”
- “a power switching circuit”
- “predetermined group of the computer system devices/circuits”
- “operating modes”
- “idle threads”
- “clocking said CPU at a second frequency less than said first frequency or by not maintaining clocking of said CPU”
- “special purpose buses each connected to the processor and to one of the external devices and each operating at a different bus bandwidth corresponding to the bus bandwidth associated with the bus device to which it is connected”
- “common bus connecting the plurality of external bus devices to the plurality of special-purpose buses”
- “A data processing system comprising a processor, .... a plurality of special-purpose buses each connected to the processor, ... and bus processing means”
- “power switching means for selecting one of said supply voltages as said card voltage”
- “when the input data [at least a subset of the input data] has not been recently updated”

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August 10, 2012

ABA Seeking Nominations for Annual Blawg 100

Hello readers,

The ABA is taking nominations (through September 7, 2012) for their annual list of the 100 best legal blogs in various practice areas. You can nominate your favorite legal blogs at this link.

Thanks for reading!

Delaware IP Blog

August 8, 2012

Judge Andrews Grants Motion to Dismiss Counterclaims for Unclean Hands and State Law Claims for Deceptive Trade Practices, Tortious Interference and Unfair Competition, But Denies Motion to Dismiss Lanham Act Counterclaim

In Kimberly-Clark Worldwide, Inc. v. Cardinal Health 200, LLC, C.A. No. 11-1228-RGA (D. Del. July 27, 2012), Judge Andrews recently issued a memorandum order dismissing with prejudice defendant’s unclean hands counterclaim and dismissing without prejudice defendant’s state law counterclaims for deceptive trade practices, tortious interference and unfair competition, but denying plaintiffs’ motion to dismiss defendant’s Lanham Act counterclaim. Id. at 1. Plaintiffs filed suit against defendant for infringement of two patents relating to sterilization products and methods used to sterilize surgical instruments. In its answer to the complaint, defendant denied plaintiffs’ claims for patent infringement, asserting a number of affirmative defenses and counterclaims, including counterclaims for: (a) unclean hands; (b) unfair competition and false advertising under the Lanham Act; (c) deceptive trade practices; (d) tortious interference; and (e) common law unfair competition. Id. at 1. In response, plaintiffs moved to dismiss each of these counterclaims under Rule 12(b)(6) for failure to state a claim. The Court granted the motion in part and denied it in part. In granting the motion to dismiss defendant’s unclean hands counterclaim, the Court found that “unclean hands is more in the nature of an affirmative defense than a separate cause of action” and that is was not a “stand-alone” counterclaim. Id. at 2. In granting the motion to dismiss defendant’s counterclaim for deceptive trade practices, the Court found that the counterclaim was lacking because it failed to assert “at a minimum, a violation of a particular state’s deceptive trade practices act, including allegations of which subsection is violated.” Id. at 7. Similarly, with respect to dismissal of defendant’s state law counterclaims for tortious interference and common law unfair competition, relying on post-Twombly cases, the Court concluded that those counterclaims should be dismissed because they failed to identify a valid business relationship or expectancy and how plaintiffs’ conduct allegedly interfered with that business relationship or expectancy. Id. at 8. On the other hand, in denying the motion to dismiss defendant’s Lanham Act counterclaim, the Court concluded that defendant’s noninfringement allegations provided a “sufficiently detailed foundation for alleging that Plaintiffs’ statements of infringement are false” and that defendant’s allegations regarding sham litigation and whether certain statements are literally false were each issues of fact “best left for summary judgment or trial.” Id. at 4-5. Regarding certain oral statements and allegations that customers have been misled, the Court further concluded that those allegations had been sufficiently pled for purposes of surviving the motion to dismiss. Id. at 6-7.

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August 7, 2012

Federal Circuit to consider issue of whether it has jurisdiction to hear appeal in case bifurcating liability and damages

Today, the Federal Circuit announced that the appeal from Judge Robinson's decision in Robert Bosch LLC v. Pylon Mfg. Corp., C.A. No. 08-542 (D. Del. 2012) (the Court's post-trial opinion is discussed here), will be heard en banc to determine whether the Federal Circuit has jurisdiction "to entertain appeals from patent infringement liability determinations when a trial on damages has not yet occurred[,]" and "when willfulness issues are outstanding and remain undecided[.]" In recent years, absent unusual circumstances, Judge Robinson has bifurcated liability and damages in all patent infringement cases before her, such that a trial on damages will commence after the issue of liability is fully adjudicated on appeal.

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August 6, 2012

Chief Judge Sleet denies motion to exempt trial attorney from prosecution bar

Chief Judge Sleet recently denied a plaintiff’s request to modify a protective order to exempt its lead trial attorney from a prosecution bar. In re Bear Creek Technologies Inc. (‘722 Patent Litigation), MDL No. 12-2344 (GMS) (D. Del. July 25, 2012). The Court explained that “where a separate court [here, the Eastern District of Virginia] has already found that a party met its burden with respect to the need for a prosecution bar on reexamination proceedings, as Verizon has done here, the burden shifts to the other party to prove an exemption on a counsel-by-counsel basis[.]” Id. at 3 (citing In re Deutsche Bank Trust Co. Ams., 605 F.3d 1373 (Fed. Cir. 2010) (alteration added)). Proving that an exemption is needed “requires demonstrating that: (1) counsel’s representation of the client in matters before the PTO does not and is not likely to implicate competitive decision-making related to the subject matter of the litigation so as to give rise to a risk of inadvertent use of confidential information learned in litigation; and (2) the potential injury to the moving party from restrictions imposed on its choice of litigation and prosecution counsel outweighs the potential injury to the opposing party caused by such inadvertent use[.]” Id. at 4.

The Court denied the plaintiff’s motion, explaining that the plaintiff failed to satisfy its burden of showing “(1) that [its lead trial attorney’s] involvement in the … Reexamination will not implicate competitive decision-making[]; and (2) even if [he] would not be involved in such decision-making, that the potential injury to [the plaintiff] in precluding its choice of counsel outweighs the potential injury to Verizon that would result from inadvertent confidential disclosure(s)[.]” The Court noted that, as the Federal Circuit has held, “strategically amending or surrendering claim scope during prosecution can implicate competitive decision-making necessitating a denial of an exemption request.” Id. at 5 n.6. Further, the Court noted that as a result of discovery under the protective order, the plaintiff’s lead trial attorney already had developed "in-depth knowledge of Verizon’s highly confidential information on nearly all aspects of its voice telecommunications network …” Id. at 5 n.7 (internal quotation marks omitted). On balance, the Court found that exempting the plaintiff’s lead trial attorney from the prosecution bar was unwarranted in light of the knowledge he already had gained through the litigation, coupled with the significant harm Verizon would incur through any inadvertent disclosure. Id. at 6 n.7.

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August 6, 2012

Magistrate Judge Burke recommends construction of claim terms relating to optical networking.

Magistrate Judge Burke recently issued a report and recommendation construing claims of U.S. Patent No. 6,973,229, titled “Node Architecture for Modularized and Reconfigurable Optical Networks, and Methods and Apparatus Therefor.” Lambda Optical Solutions, LLC v. Alcatel-Lucent USA Inc., C.A. No. 10-487-RGA-CJB (D. Del. Aug. 3, 2012). Judge Burke recommended constructions of the following terms:

“optical access ingress subsystem”

“optical access ingress subsystem which is adapted to receive an optical signal associated with an access network”

“optical access egress subsystem”

“optical access egress subsystem which is adapted to direct the optical signal toward an access network”

“transport ingress subsystem”

“transport egress subsystem”

“adapted to selectively provide optical coupling between the transport ingress subsystem and at least one of (1) the optical access egress subsystem, and (2) the transport egress subsystem”

“adapted to selectively provide optical coupling between the transport egress subsystem and at least one of (1) the optical access ingress subsystem and (2) the transport ingress subsystem”

“specified optical input”

“specified optical output”

In addition, Judge Burke recommended the parties’ agreed-upon construction of the following terms:

“access network”

“all-optical switch”

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August 6, 2012

Joinder proper for claims stemming from defendants' use a third-party's gene expression system in their manufacturing processes

Judge Sue L. Robinson recently denied defendant Alexion's motion to dismiss Novartis's complaint for improper joinder. Novartis Vaccines & Diagnostics, Inc. v. Medimmune, LLC, et al., C.A. No. 11-084-SLR (D. Del. Aug. 2, 2012). Novartis's complaint alleged that defendants infringed its patent by, among other things, the use of "a commercial gene expression system manufactured by non-party Lonza Group AG . . as a common step in what may otherwise be divergent manufacturing processes." Id. at 2-3. Alexion argued that joinder was improper because the defendants use differing manufacturing processes that result in different drug products. Id. at 5. Judge Robinson noted, however, that because defendants modify and incorporate Lonza's system into their own manufacturing processes, "there is necessarily some degree of overlap in defendants' manufacturing processes[.]" Id. at 6. Judge Robinson acknowledged that defendants didn't have a "tangible business or legal relationship[,]" but noted that the absence of such a relationship is "just one of several considerations when determining whether defendants' actions are part of the same transaction, occurrence, or series of transactions or occurrences." Id. In addition, the court found that it would be inefficient "to construe claims and determine invalidity separately for each defendant[,] and the parties' stipulated protective order would alleviate any concerns that defendants would have to disclose sensitive business information to co-defendants who are also potential competitors. Id. at 7.

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