Judge Richard G. Andrews recently denied defendants’ Daubert motion to exclude the testimony of plaintiff’s computer forensics expert. Robocast, Inc. v. Microsoft Corporation, C.A. No. 10-1055-RGA; Robocast, Inc. v. Apple, Inc., C.A. No. 11-235-RGA (D. Del. Jan. 13, 2014). Plaintiff offered this expert in rebuttal to defendants’ computer forensics expert who may testify as to “suspicious metadata” that recorded the creation date of a letter that was “essential” to defendants’ inequitable conduct and unclean hands defenses and that may also impact the date of conception. Id. at 2. Defendants argued that plaintiff’s expert did not “tie his theories to the facts of the case, and that therefore his testimony is not helpful to the jury.” Id. at 1. However, the Court found that “many jurors may indeed be confused by the concept of metadata, and [the expert’s] testimony may be helpful.” Id. at 1-2. The Court also did not find the expert’s theories unreliable. Id. at 3. "The underlying story" behind the expert's explanation of the metadata "may or may not be plausible. Its status, however, is irrelevant to whether [the expert's] proposed testimony meets Daubert's reliability requirement." Id. at 3 n.3.
In two recent memorandum opinions issued on the same day, Judge Sue L. Robinson ruled on a host of pretrial motions and construed claim terms of patents relating to the receipt and descrambling of encrypted broadcast signals. British Telecommunications PLC v. Coxcom, Inc., et al., Civ. No. 10-658-SLR (“First Opinion”); 11-843 (D. Del. Jan. 13, 2014) (“Second Opinion”).
In the First Opinion, the following claim limitations were construed by the Court:
Plaintiff’s U.S. Patent No. 6,473,742:
--“means for loading the store with such data”
--“to enable or disable reception [of transmissions] in dependence on the result of the comparison”
--“means for comparing received identifiers with the contents of the store and to enable or disable reception in dependence on the result of the comparison”
--“wherein each of the fixed and removable parts has] means storing a verification number”
Plaintiff’s U.S. Patent No. 6,538,989:
--“flow based packets”
--“packet buffer size”
--“controlling the first packet buffer size”
Plaintiff’s U.S. Patent No. 5,142,532:
--“a bidirectional broadband and telephone network”
--“for information packets to travel without interference to and from a plurality of receiving stations”
--“adjusting the round-trip delay to ensure correct spacing of the information packets during passage through the network”
--“enforcing allocation thereto to ensure each station’s minimum bandwidth requirements is [sic] fulfilled”
--“wherein the requesting step includes … generating a further request if an error is detected”
Plaintiff’s U.S. Patent No. 5,526,350:
Plaintiff’s U.S. Patent No. 5,923,247:
--“ conditions causing unavailability of a system”
Based on the Court’s constructions, the Court denied motions for summary judgment on non-infringement and validity grounds, except for the following:
The Court granted Defendant’s motion for summary judgment of non-infringement of the ‘742 patent, because the defendant’s accused product included a second level decryption that did not meet the requirements of the limitations. First Opinion at 17. The Court also granted Defendant’s motion for summary judgment of non-infringement, explaining that the ‘350 patent specification failed to provide sufficient structure to perform the function, such that the term is indefinite. Specifically, the Court explained, “[w]ithout an example or description of a non-voice traffic switching device, the specification does not provide sufficient structure of the means-plus-function claim limitation, which requires two switching means.” For the same reason, the Court granted Defendant’s motion for summary judgment that the ‘350 patent is invalid as indefinite. Id. at 27-28.
The Court next considered Defendant’s Daubert motion to exclude Plaintiff’s expert. The Court first found that Defendant’s arguments as they related to direct infringement went to the weight of the expert’s testimony, not its admissibility, so the Daubert motion was denied with respect to direct infringement testimony. But the Court reached a different conclusion regarding the expert’s testimony relating to infringement under the doctrine of equivalents. The Court agreed with Defendant that Plaintiff’s expert “presented conclusions for each limitation, he did not articulate how the accused devices would equivalently perform each limitation.” Id. at 38-39. Therefore, the Court granted Defendant’s Daubert motion with respect to doctrine of equivalents testimony.
The Court also granted Plaintiff’s motion to strike an employee’s declaration in support of one of Defendant’s motions for summary judgment, finding that it was undisclosed expert testimony: “As [Defendant] did not identify [the employee] as an expert witness, nor were his opinions vetted through discovery, the court grants [Plaintiff’s] motion to exclude.” Id. at 12.
The Court also granted Defendant’s motion to strike portions of declarations submitted by two of Plaintiff’s expert. Defendant argued that the declarations included opinion testimony that had not been previously disclosed, which the Plaintiff disputed. However, the Court concluded that if the opinions had previously been disclosed in expert reports, “[Plaintiff] should have referenced those documents.” Id. at 12.
In the Court’s Second Opinion, the Court first granted Defendant’s motion to strike portions of Plaintiff’s expert’s declarations, finding that the declarations inappropriately provided “additional examples of non-infringing uses, some conclusory explanations, and comparisons to claim limitations” that were consistent with Plaintiff’s earlier expert disclosures, but had not “been vetted through discovery” and/or were conclusory and therefore not appropriate for review on summary judgment. Second Opinion at 4.
The Court next found, after interpreting under New York law a cross-licensing agreement between Plaintiff and a third party supplier to Defendant, that it could not conclude that Defendant was an “authorized third party” under that agreement, and therefore that it could not find that Defendant was impliedly licensed to use the patents. With respect to another third party supplier license, the Court rejected Defendant’s argument seeking an implied license, because that license specifically precluded the conferring of any implied licenses. Id. at 6-12.
Finally, the Court denied Defendant’s motion for summary judgment that the patents were unenforceable under the patent exhaustion doctrine as a result of the third party licensee’s sales to Defendant. The Court explained that neither party provided sufficient evidence of non-infringing uses to support the patent exhaustion defense. Id. at 15-19.
Vehicle Interface Technologies has asserted a patent against several automotive manufacturers that claims a user interface for various systems of an automobile including both information about the vehicle and information for other “optional subsystems” of the vehicle. The only claim term disputed by the parties for Markman purposes was “wherein the fixed area and the selectable area each comprise a unique and static portion of the display.” Vehicle Interface Techs., LLC v. Ferrari N. Am., et al., C.A. Nos. 12-1283-RGA, Memo. Op. at 5 (D. Del. Jan. 13, 2014). Judge Andrews noted that the parties were essentially in agreement as to most of the term and that he agreed that portion was correct.
The only disputed part of the term was, therefore, “whether to include the additional limitation that a selectable area cannot display vehicle information, as the Defendants propose.” This dispute arose from an argument made in prosecution to overcome a prior art reference that disclosed vehicle information and selectable information in the same display area. Id. at 5-6. Judge Andrews found that the prosecution history “makes it clear that it is the fixed and selectable areas that must be separate, and not necessarily the content in those respective areas.” Id. at 6-7. Furthermore, the claims and the specification conflicted with the Defendants’ proposed limitation. Id. at 7-8. Accordingly, Judge Andrews found that it would be incorrect to include the Defendants’ proposed limitation and adopted the construction “Wherein the fixed area and the selectable area have non-overlapping and non-moving boundaries and the fixed area does not display any of the plurality of pages.”
In a recent order, Chief Judge Gregory M. Sleet granted defendant’s (“Level 3”) motion to stay pending the inter partes review (“IPR”) of U.S. Patent No. 7,724,879. AIP Acquisition LLC v. Level 3 Communications, LLC, C.A. No. 12-617-GMS, Order (D. Del. Jan. 9, 2014). Plaintiff (“AIP”) is also pursuing related actions against at least 5 other defendants (“Cable Defendants”) in the District of Delaware. See C.A. Nos. 12-1688; 12-1689; 12-1690; 12-1691; 12-1692-GMS. At the time of the memorandum order, AIP was asserting against Level 3 U.S. Patents Nos. 6,757,275; 7,486,662; and 7,724,879 (“the ‘879 Patent”). Order at 1 n.1. Further, against all but one Cable Defendant, AIP asserted two additional patents, U.S. Patent Nos. 6,496,579 and 6,078,654. Order at 1 n.2 The Cable Defendants did not join Level 3’s IPR, but did not oppose a stay of their cases or the Level 3 case. Id. at 4 n.3.
Judge Sleet concluded that a stay would “simplify the issues before the court and conserve judicial resources.” Id. at 4. As Judge Sleet explained, in the PTO’s decision granting Level 3’s IPR petition, the PTO found that Level 3 “demonstrate[d] a reasonable likelihood of prevailing on its challenge to patentability of [all claims] of the ’879 patent.” Id. at 5. Judge Sleet thus concluded that granting stay would allow “the court and the parties to avoid wasting resources on a Markman hearing and at trial to address claims that have a ‘reasonable likelihood’ of being amended or canceled.” Id. at 5. Judge Sleet also noted, among other things, that while AIP was asserting against Level 3 two patents other than the ‘879 patent, the parties determined that only the ‘879 patent required claim construction. Id. at 6. Judge Sleet additionally found a stay would simplify the issues for trial because Level 3 would be “estopped from asserting invalidity arguments that were raised or reasonably could have been raised during the IPR proceeding,” and the Cable Defendants, although not parties to the IPR, had stipulated to be estopped from raising certain arguments based on the IPR proceedings. Id. at 5.
Judge Sleet found that the remaining stay factors did not “alter the balancing analysis,” and ultimately concluded that stay would “simplify issues before the court and [would] not unduly prejudice AIP.” Id. at 4, 6. Judge Sleet granted Level 3’s motion to stay and also stayed each of the related Cable Defendant cases.
In Round Rock Research LLC v. Sandisk Corp., C.A. No 12-569-SLR (D. Del. Jan. 9, 2014), Judge Sue L. Robinson ruled on two discovery issues. The first issue related to defendant’s request for information from a third party (Micron) relating to its waiver and estoppel defenses. See id. at D.I. 96, 101 (letters outlining disputes). The Court allowed defendant to depose Micron, at its own cost, only on issues related to what Micron disclosed to plaintiff, not what plaintiff subsequently disclosed to third parties. Id. at 1-2. Furthermore, “plaintiff's independent evaluation of said patents and its licensing strategies based upon such an evaluation are not relevant to defendant's waiver or estoppel defenses.” Id. at 2.
Second, after reviewing in camera documents that were withheld as privileged or work product, the Court ruled that the documents need not be produced because they were irrelevant, based on the Court’s assessment of what was relevant to defendant’s waiver and estoppel defenses. Id. at 2. Even though the Court had found it unnecessary to decide whether these documents were privileged, the Court did “take the opportunity to observe that, when trying to divine the distinction between the business of licensing and preparing for anticipated litigation, some documents - like claim charts - are both useful business tools and essential litigation obligations. In this regard, in balancing the need for production against the historic protection from discovery of attorney-client communications and attorney work product, I believe the balance should be struck in favor of protection.” Id. at 2 n.3.
Judge Sleet sua sponte stays litigation pending the U.S. Supreme Court's decision in Alice Corp. Pty. Ltd. v. CLS Bank Int'l
Chief Judge Gregory M. Sleet recently considered defendant Metlife's motion to dismiss plaintiff's patent infringement action on the basis that plaintiff's patent, U.S. Patent No. 6,684,189, fails to claim patentable subject matter. The Money Suite Company v. Metlife, Inc., C.A. No. 13-1748-GMS (D. Del. Jan. 9, 2014). Metlife alleged that "the '189 patent is directed to an abstract idea -- using a computer to generate a quote for a financial product product-- and is thus non-patentable subject matter." Id. at 3. Judge Sleet noted that the Federal Circuit is divided on the applicability of "[t]he abstract idea judicial exception to patent eligibility under § 101 of the Patent Act" to computer-implemented inventions. Id. The United States Supreme Court recently granted cert in Alice Corp. Pty. Ltd. v. CLS Bank Int'l, the outcome of which may substantially affect the issues implicated by Metlife's motion. As such, Judge Sleet sua sponte stayed this and other related cases pending the Supreme Court's ruling. Id. at 4. The Supreme Court will hear argument in Alice Corp on March 31 (see SCOTUS Blog for coverage).
Judge Robinson grants-in-part motions for summary judgment of invalidity and non-infringement, construes claims
In Intellectual Ventures I, LLC, et al. v. Motorola Mobility, LLC, C.A. No. 11-908-SLR (D. Del. Jan. 2, 2014), defendant had moved for summary judgment of invalidity and non-infringement of six patents-in-suit. Judge Sue L. Robinson granted summary judgment of non-infringement as to the one of the patents-in-suit, finding that the accused product performed steps expressly prohibited by this patent. Id. at 22-24. The Court also granted summary judgment of invalidity as to a different patent because it determined that the combination of two prior art references rendered this patent obvious. Id. at 38-40. Specifically, the Court concluded that one reference’s “warning of increased costs” as to the a stated object of the patent’s invention did not teach away from combining the two references. Id. at 40.
The Court denied the remaining motions because genuine issues of material fact existed. In denying defendant’s motions, the Court, among other issues, concluded that: plaintiff was not precluded from applying the doctrine of equivalents as to a certain patent due to amendment of claims during prosecution because “the claim of equivalence are for aspects of the invention that have only a peripheral relation to the reason the amendment was submitted," id. at 35; defendant’s own patent was not entitled to the priority date of an abandoned “grandparent application” (and therefore did not qualify as prior art) because there were key differences between the disclosures in defendant’s patent and those of the grandparent application, id. at 46-49; one patent-in-suit was not entitled to an earlier priority date based on PowerPoint presentation by its inventor because metadata showing its creation date was insufficient to show reduction to practice, id. at 61-63.
The Court also construed the following terms:
“at the second device, [of] the single combined file irrespective of user action at the second device,” id. at 17-18;
"absent non-transient intermediate storage of the selected file on an intervening communications device of the communications network,” id.;
“Receive the selected file and associated text file absent initiation of retrieval of the selected file from the intervening communications device by the second device and absent user action at the second device," id. at 18-19;
“delivery report,” id. at 19;
“Authenticating device of the communications network;” id. at 19-20;
“A polarization converter ... to polarize the light from the illumination uniformizing means into a polarized light,” id. at 30-31;
“A light source, comprising an ‘array of a plurality of light emitting devices,’” id. at 31-32;
“Presenting a directory of software [updates] available for installation on the user station,” id. at 41-42;
“Presenting a directory of software [updates] available for installation on the user station and not already installed on the user station,” id. at 43;
“Content,” id. at 50-51;
“Effect presentation ... with a user interface that is customized to the respective publishers,” id. at 51-52;
“Allocating is responsive to at least one field in the packet header,” id. at 57-59;
“Central processor,” id. at 65-66;
“Detachable headset,” id. at 66-67.
Chief Judge Gregory M. Sleet recently granted a motion in limine seeking to exclude from trial evidence or argument regarding proceedings before, and decisions arising from, the European Patent Office. Edwards Lifesciences LLC, et al. v. Medtronic CoreValve LLC, et al., C.A. No. 12-23 (GMS) (D. Del. Jan. 2, 2014). As Judge Sleet explained, “there is a substantial risk of prejudice to [plaintiffs] given the strong likelihood that the jury would be confused and give undue deference to the foreign decisions and proceedings.” Id. at 1-2. Moreover, the Court found that such foreign proceedings, and decisions arising from them, are “of dubious probative value” that “hardly outweighs the substantial risk of prejudice.” Id. at 2.
In Edwards Lifesciences LLC v. Medtronic Corevalve LLC, C.A. No. 12-23-GMS (D. Del. Dec. 27, 2013), Chief Judge Gregory M. Sleet first denied defendants’ (“Medtronic”) motion in limine, which sought a ruling from the Court that Medtronic’s “treated pericardial sacs and coupons, from which the leaflets and skirts in the accused CoreValve product are manufactured” were not “components” under 35 U.S.C. Section 271(f) because the sacs and coupons underwent “additional processing outside of the United States after they [had] been shipped by Medtronic,” including laser-cutting. Id. at 2. In support of its position, Medtronic relied on Microsoft Corp. v. AT&T Corp., 550 U.S. 437 (2007), in which the Supreme Court ruled “that a master disk sent from the United States to be copied abroad was not a ‘component’ under Section 271(f).” Id. Specifically, Medtronic argued that the Supreme Court’s decision in Microsoft turned on the fact that “an extra step was required after exportation before the software could be installed.” Id. at 3-4. Judge Sleet found, however, that this reading of Microsoft was “too broad,” and that the Supreme Court’s actual inquiry was focused on “the identity of the exact item actually incorporated into the infringing device.” Id. at 4. Judge Sleet concluded that because the same sacs and coupons Medtronic supplied from the U.S. were “the exact ones both intended to be combined and actually combined in Mexico to form the Core Valve device,” the sacs and coupons constituted “components” under Section 271(f). Id.
Judge Sleet next granted plaintiffs’ (“Edwards”) motion in limine, which sought a ruling from the Court that Medtronic must present to the jury “noninfringing uses for ‘treated pericardial tissue that is the same as the pericardial tissue actually supplied by Medtronic’” in order to avoid liability under 35 U.S.C. Section 271(f)(2). Id. at 4-5. Having concluded that the sacs and coupons constitute “components” under Section 271(f), Judge Sleet determined that Medtronic “must show that porcine pericardial sacs and coupons treated with the same glutaraldehyde solution as those that Medtronic supplies from the United States to Mexico are ‘suitable for substantial noninfringing use.’” (citing Golden Blount, Inc. v. Robert H Peterson Co., 438 F.3d 1354, 1364 (Fed. Cir. 2006)). Id. at 5. Judge Sleet also noted that while “much of the case law” addressing “substantial noninfringing use” occurs in the context of 35 U.S.C. Section 271(c), there was “no apparent reason . . . why the Federal Circuit’s guidance regarding the type of evidence sufficient to establish ‘substantial noninfringing use’ under 271(c) should not apply also to 271(f).” Id. at 5 n.3.
Judge Sleet, however, denied without prejudice Edwards' motion in limine which sought to preclude Medtronic from presenting or arguing to the jury "hypothetical uses of the porcine pericardial tissue that Medtronic supplied and/or supplies from the United States to Mexico." Id. at 1 n.2, 6. Edwards was granted leave to raise this issue again at trial.
Chief Judge Gregory M. Sleet recently construed claim terms relating to pharmaceutical pellets for the treatment of irritable bowel syndrome. Salix Pharmaceuticals, Inc., et al. v. Lupin Ltd., et al., C.A. No. 12-1104-GMS (D. Del. Dec. 17, 2013). The Court first adopted the parties’ joint proposed construction of the claim terms “pellet” and “mean maximal plasma concentration of the 5-aminosalicyclic acid is reached at”. The Court then construed the following disputed claim terms: “matrix-forming polymer”; “non gel-forming polymer matrix”; and “polymer matrix”; “homogeneously dispersed”; and “about 4 hours”, giving the latter two their plain and ordinary meanings.