April 12, 2012

Judge Andrews construes claim terms relating to system for electronic distribution of shareholder solicitation messages.

In Broadridge Financial Solutions, Inc. v. Inveshare, Inc., C.A. No. 10-75-RGA (D. Del. Apr. 11, 2012), Judge Andrews construed the following nine terms found in U.S. Patent No. 7,475,817 which claims “a system for the electronic distribution of shareholder solicitation messages”:

1. “Electronic Solicitation Message [that provides shareholder access to a solicitation content]”
2. “Solicitation Content”
3. “Authorized Party”
4. “Authorized Shareholder”
5. “Tagging”
6. “Validating that Each Shareholder Receiving the Notification is Authorized to View the Solicitation Content”
7. “A Component”
8. “A Component for Tagging the Electronic Solicitation Message to Validate that a Shareholder is Authorized to View the Solicitation Content”
9. “Electronic messaging”

The parties agreed upon the construction of the terms “Electronic Solicitation” and “A Proxy Platform”.

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April 10, 2012

Judge Robinson denies 12(b)(6) motions and motion to stay pending resolution of related appeal.

In a recent memorandum opinion, Judge Robinson denied Sony's motions to dismiss inducement and willfulness claims and to stay pending the resolution of an appeal in an earlier related case. Apeldyn Corp. v. Sony Corp., et al., C.A. No. 11-440-SLR (D. Del. Apr. 4, 2012). In denying Sony’s motion to dismiss the inducement claim, the Court explained that a complaint that “sufficiently identifies, for purposes of Rule 8, the patent at issue and the allegedly infringing conduct, [and] a defendant’s receipt of the complaint and decision to continue its conduct despite the knowledge gleaned from the complaint” can satisfy the elements of an inducement claim under Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060, 2068 (2011). Id. at 9. The Court explained that Sony indisputably knew that its conduct was alleged to induce infringement at least as of the filing of the earlier complaint, and Apeldyn sufficiently alleged that Sony continued to engage in that conduct despite its knowledge. Id. at 7. The Court next addressed the willfulness claim, and explained that although “a willfulness claim asserted in the original complaint must necessarily be grounded exclusively in the infringer’s pre-filing conduct,” quoting In re Seagate Tech., LLC, 497 F.3d 1360, 1374 (Fed. Cir. 2007), the “pre-filing conduct” requirement as it related to this second filed action by Apeldyn included the participation in the earlier filed case. Id. at 11. Accordingly, the Court found that Apeldyn’s complaint sufficiently alleged “that Sony had knowledge of the ‘382 patent before filing of the instant suit.” Id. at 12 (emphasis added). Finally, the Court addressed Sony’s motion to stay pending the resolution of the appeal in the earlier case, and explained that although the status of this case favored a stay, the prejudice to Apeldyn weighed against a stay and it was not yet clear whether a stay likely would result in simplification of issues in this case. Id. at 16. The Court therefore denied the motion to stay without prejudice.

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April 10, 2012

Judge Andrews grants stay in "classic case" for stay pending reexamination.

In a recent memorandum order in Round Rock Research LLC v. Dole Food Co. Inc., et al., C.A. Nos. 11-1239 (Dole), 11-1241 (Gap), 11-1242 (Hanesbrands) (RGA) (D. Del. Apr. 6, 2012), Judge Andrews granted the defendants’ motions to stay pending ex parte reexamination, finding that the posture of the litigation was “pretty close to the classic case for granting a stay[.]” Id. at 6. The Court explained that the plaintiff was a non-practicing entity seeking only monetary damages, discovery had not yet begun and there was no trial date in place, most of the claims likely to be asserted could be affected by the outcome of reexamination, and claim construction could be informed by the additional prosecution history resulting from the reexamination. Id. at 3. On balance, the Court explained, “[t]he prejudice to the Plaintiff, including any tactical disadvantage, is not great, and the other factors all clearly weigh in favor of granting the stay.” Id. at 6.

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April 10, 2012

Chief Judge Sleet dismisses complaint, finds that plaintiff lacks standing to challenge defendant’s compliance with 21 U.S.C. § 355.

Chief Judge Sleet recently granted Mylan's motion to dismiss for lack of standing a complaint filed by Endo alleging that Mylan “failed to comply with 21 U.S.C. § 355 by failing to provide notice of its Paragraph IV certification … to the patent’s purported assignee." The Court agreed with Mylan's contention that § 355(j)(2)(B) “does not create a private right of action and therefore … Endo does not have standing to assert this challenge.” Id. n.1 (relying on Minn. Mining and Mfg. Co. v. Barr Labs., Inc. 289 F.3d 775, 782 (Fed. Cir. 2012) (holding that parties cannot seek a judicial determination of whether a private party’s paragraph IV certification complies with § 355). Because Endo lacked standing to challenge Mylan’s compliance with § 355, the Court explained that it could not rule on Endo’s infringement allegations which were included in the complaint in case “the Court determines now or at a future date that Mylan has complied with its obligations under the Hatch Waxman Act to provide notice of a Paragraph IV Certification.” Id. n.2. As a result, the Court dismissed the complaint without prejudice.

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April 9, 2012

Judge Andrews Grants Motion to Transfer Where Plaintiff is the “Equivalent of a Non-Delaware Corporation” and Balance of Convenience Favors Transfer

In Signal Tech, LLC v. Analog Devices, Inc., C.A. No. 11-1073-RGA, Judge Andrews recently granted defendant’s motion to transfer concluding that the “balance of convenience” factors favored transfer. Id. at 8. Plaintiff in this case is a Delaware limited liability company, which was formed less than two months before filing suit for patent infringement against defendant. Id. at 4. Defendant, on the other hand, is a Massachusetts corporation with its principal place of business in Massachusetts. Id. at 2. After filing its answer to the complaint denying plaintiff’s allegations of infringement, defendant filed a motion to transfer this case to the District of Massachusetts. Id. at 2. Following full briefing and oral argument on the motion to transfer, the Court concluded that the balance of convenience tipped in defendant’s favor and that transfer to the District of Massachusetts was warranted. Id. at 8. The Court found that there was “no connection at all to Delaware” but that there was “a substantial connection to Massachusetts.” Id. at 8.

In its analysis of the Third Circuit’s Jumara factors, the Court noted that plaintiff, in large part because it had just recently been formed as a Delaware entity, had “no principal place of business” and “no claim on Delaware as venue based on its incorporation.” Id. at 4. The Court also noted that plaintiff had “no employees,” with the exception of a “lawyer owner in North Carolina” and two other “owners/investors” in Washington, D.C. Id. at 5. The Court pointed out that, for purposes of its analysis, plaintiff was the “equivalent of not being a Delaware corporation.” Id. at 7. Thus, plaintiff’s choice of Delaware as the forum in this case was not entitled to as strong a weight as it would have been if plaintiff had its principal place of business (or any business) in Delaware. Id. at 4. After considering the applicable Jumara factors and the Fed. Cir.’s recent decision in In re Link_A_Media Devices Corp., the Court ultimately concluded that on these facts the “only connection to Delaware in this case is that it is the plaintiff’s choice of forum – which since plaintiff is (the equivalent of) a non-Delaware corporation with no connection of any kind to Delaware, is not entitled to ‘paramount’ consideration.” Id. at 9. In contrast, the Court noted that defendant had 3,200 U.S. employees and two-thirds of those employees worked in Massachusetts. Id. at 4. In considering the location of witnesses, the Court further noted that the bulk of the fact witnesses (i.e., defendant’s current and ex-employees) would likely be located in Massachusetts and that it was unlikely that there would be any witnesses from Delaware or the surrounding states. Id. at 5. The Court also found that there were no records identified as only being available in one of the two fora. Id. at 6.

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April 9, 2012

Judge Andrews Reviews Objections to Counterclaims and Applies New Federal Circuit Standard

In Quantum Loyalty Systems Inc. v. TPG Rewards Inc., C.A. No. 09-22-RGA (D. Del. April 4, 2012), Judge Andrews reviewed the findings of a Magistrate Judge, after the plaintiffs filed objections to those findings.  Judge Andrews first found that two of the plaintiffs’ objections were subject to review for abuse of discretion and that there had not been such an abuse.  Therefore, those objections were denied.  Id. at 1-2.

He then considered the plaintiffs’ two objections that the Magistrate Judge’s rulings were “contrary to law.”  The first of these was the Magistrate Judge’s decision that the defendants’ counterclaims for noninfringement and invalidity of patents related to the patent-in-suit did not state a “case or controversy.”  After the Magistrate Judge’s decision, the Federal Circuit decided Streck, Inc. v. Research & Diagnostic Systems, Inc., 665 F.3d 1269, 1283 (Fed. Cir. 2012), in which it held that “a counterclaimant must show a continuing case or controversy with respect to withdrawn or otherwise unasserted claims.”  Because the defendants had not met this standard, Judge Andrews found the plaintiff’s objection well-taken and dismissed the counterclaims.  Id. at 2.

Finally, Judge Andrews denied the plaintiffs’ motion to transfer cybersquatting counterclaims to the Southern District of New York.  Although the parties had previously settled litigation there, their settlement agreement provided only that issues concerning that court’s final judgment were subject to the jurisdiction of that court.  The present controversy related to a different domain name and would involve only issues concerning the settlement agreement rather than the previous judgment.  Therefore, there was no basis to transfer the counterclaims.  Id.

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April 9, 2012

Claim Construction in LASIK Patent Litigation

In Neev v. Abbot Medical Optics, Inc., C.A. No. 09-146-RBK (D. Del. Mar. 26, 2012), the plaintiff was the owner and inventor of a patent encompassing a laser used in LASIK corrective vision surgery.  He brought suit against the defendant for its sale of a product used in LASIK, and the defendant asserted invalidity and noninfringement counterclaims.  After holding a Markman hearing, the Court adopted several claim constructions the parties had agreed upon and construed the following terms itself:

  • “operating the source and manipulating the beam parameters”
  • “manipulating beam parameters”
  • “manipulating parameters of the beam”
  • “adjusting characteristics of the electromagnetic radiation beam”
  • “varying at least one of the following beam parameters”
  • “interaction energy transients”
  • “preparing the target region of the target material by spatially or temporally varying at least one of an absorption characteristic of the material or a scattering characteristic of the material at the target region”
  • “operating the source at a pulse repetition rate greater than 0.1 pulses per second until a target volume in the target region has been modified”
  • “allowing interaction energy transients caused by the electromagnetic pulses to substantially decay so that material modification is effected”
  • “allow interaction energy transients caused by the pulsed electromagnetic radiation beam to decay sufficiently such that the material can be modified”
  • “cumulative residual thermal energy left in the material by a pulse train”
  • “controlled, variable rate material modification”
  • “highly controllable, variable rate material removal”
  • “target material”
  • “target region”
  • “material removal by a continuously emitting, continuous wave (CW) beam of electromagnetic radiation”
  • “continuously emitted electromagnetic radiation”
  • “redistributing the beam in time and space to form at least one modified beam comprising a plurality of pulses”
  • “plasma”

The Court adopted the defendant’s construction of “target region” and “target material,” but adopted the plaintiff’s construction of all other terms.  The Court also denied the defendant’s motion to strike parts of the plaintiff’s opening Markman brief, finding that the sections in question, which explained the state of the known research in the field as well as the plaintiff’s state of mind at the time of the plaintiff’s invention, were relevant and were not hearsay.

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April 6, 2012

Judge Robinson Denies Summary Judgment of Claim Preclusion

Recently, in SRI International, Inc. v. Symantec Corporation, C.A. No. 11-131-SLR (D. Del. Mar. 30, 2012), Judge Robinson denied summary judgment of claim preclusion.  SRI had previously litigated the same patents against Symantec in a separate case.  In that previous case, one witness discussed MSS, the accused product of the present case.  The jury was not, however, asked to determine whether MSS infringed the patents-in-suit.  Symantec then argued in the present case that “because there was mention of MSS during the course of the [previous] case and at trial, SRI should be precluded from pursuing the instant litigation.”  Id. at 9.

Judge Robinson found, however, that Symantec’s position suffered from “two infirmities, both of which are undisputed.  First, despite multiple discovery requests in the [previous] case, Symantec did not provide SRI with any technical data on MSS.  Second, there was no specific judgment entered in the [previous] case about MSS.”  Id. at 9-10.  Because the Court found that Symantec had not proven that MSS was essentially the same as the previously-litigated product, it denied Symantec’s motion for summary judgment.

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April 3, 2012

Judge Andrews Issues Claim Construction for Patent Directed to Dynamic Logic Circuit Technology, Rejects Argument That Disputed Claim Terms Are Indefinite

In AVM Technologies, LLC v. Intel Corporation, C.A. No. 10-610-RGA, Judge Andrews recently issued a claim construction opinion construing claim terms for U.S. Patent No. 5,859,547 (“the ‘574 Patent”), which is a patent that claims “an improved dynamic logic circuit ‘that has increased speed and reduced power.’” Id. at 2 (citation omitted). In the opinion, the Court construed the following terms:

“coupled to”
“coupled between”
“couplable to”
“coupling”
“anti-float circuit”
“precharge node”
“dynamic logic circuit”
“dynamic logic block” or “logic block”
“evaluation transistor”
“precharge transistor”
“a delay”
“for simultaneous activating”
“during a major portion of the evaluation phase”
“during a major portion of an evaluation clock phase”
“during a minor portion of the evaluation clock phase”

In both its claim construction briefing and at the Markman hearing, defendant argued that: (a) the “during a major portion of the evaluation phase” language of claim 1 of the patent-in-suit and (b) the “during a major portion of an evaluation clock phase” and “during a minor portion of the evaluation clock phase” language of claim 21 of the patent-in-suit were “not amenable to construction” and thus, “indefinite and . . . invalid under 35 U.S.C. § 112, ¶ 2." Id. at 13. The Court, however, rejected these arguments. Citing to the Federal Circuit’s decisions in Praxair v. ATMI, Inc., 543 F.3d 1306, 1319 (Fed. Cir. 2008) and Honeywell Int’l Inc. v Int’l Trade Comm’n, 341 F.3d 1332, 1338-39 (Fed. Cir. 2003), respectively, for the propositions that “the standard of indefiniteness is high” and that “a claim is indefinite only if the ‘claim is insolubly ambiguous, and no narrowing construction can properly be adopted,’” the Court held that these disputed terms were not indefinite and construed each of them. Id. at 13-15. This opinion is interesting because it provides some insight as to how the Court may handle indefiniteness arguments and other indefiniteness-related issues raised during claim construction.

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April 3, 2012

Judge Robinson Denies Motion to Dismiss Willfulness, Direct and Indirect Infringement Claims, Concludes That the Claims As Pled Satisfied the Pleading Standard of Form 18

In Netgear, Inc. v. Ruckus Wireless, Inc., C.A. No. 10-999-SLR, Judge Robinson denied defendant’s Rule 12(b)(6) motion to dismiss plaintiff’s claims of direct infringement, induced and contributory infringement, and willful infringement. Id. at 1. Plaintiff filed an amended complaint in this action against defendant for infringement of four patents-in-suit relating to wireless communication technology. Id. In the amended complaint, plaintiff alleged that defendant “induces and/or contributes to infringement by third parties, and willfully infringes the patents-in-suit.” Id. at 2. Defendant moved to dismiss these allegations for failure to state a claim. Id. at 1-2. Defendant argued that the amended complaint should be dismissed because it: “(1) lacks basic factual support; (2) fails to comply with Form 18; (3) fails to state a claim for indirect infringement; and (4) fails to sufficiently allege willful infringement.” Id. at 2. The Court, however, disagreed. Regarding the claims for direct infringement, the Court concluded that plaintiff’s amended complaint asserts a cause of action for direct infringement “in a manner sufficient for defendant to formulate a response and defense” and that it “provides sufficient factual support and mimics Form 18.” Id. at 7. In its analysis, the Court noted that because, among other things, the amended complaint mimicked Form 18 and identified, by name, certain of defendant’s products that allegedly infringe the patents-in-suit, it complied with “the level of detail required to satisfy the pleading standard for Form 18.” Id. at 5. Similarly, regarding the sufficiency of plaintiff’s claims for inducement and contributory infringement, the Court held that they too were “facially plausible” and provided “defendant with adequate notice” of plaintiff’s indirect infringement claims. Id. at 10-11. Lastly, regarding the claims for willful infringement, the Court found that plaintiff sufficiently alleged that defendant had “pre-filing knowledge” of at least one of the patents-in-suit and that defendant had “infringed and continues to infringe the patent.” Id. at 11. Moreover, the Court expressly declined “to require more detail with respect to plaintiff’s willful infringement claims than is required by Form 18.” Id. at 11.

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