February 6, 2012

Managing IP's US Patent Reform Forum, Washington, D.C. March 27, 2012

Dear Colleague,

Managing IP and Delaware IP Law Blog invite you to the US Patent Reform Forum on March 27, 2012 at the Willard InterContinental in Washington D.C.

Free for IP counsel, academics and research institutes

The forum brings together top officials, leading counsel at U.S. corporations and their private practice advisers to discuss the recently enacted Leahy-Smith America Invents Act.

Easy ways to register:
Visit: www.managingip.com/USPatentforum2012
Email: mfabri@euromoneyplc.com
Call: +1 212 901 3828

Topics on the agenda include:
• Roundtable: AIA rulemaking overview
• An Industry Perspective: We lobbied the cause; the act was passed – where did we land?
• Key considerations: The Joinder Provision; ITC proceedings and the new rules on false
marking
• In focus: Post Grant Review and litigation strategies under AIA
• First-to-file system: Implications of a significant change in the law
• AIA and NPEs: Impact or more of the same?

Speakers:
• Judge Paul Michel
• Gary Griswold, former chairman, The Coalition for 21st Century Patent Reform
• Bob Stoll, former commissioner for USPTO
• Robert Armitage, senior VP and general counsel, Eli Lilly
• Phil Johnson, chief intellectual property counsel, Johnson & Johnson
• Sherry Knowles, principle, Knowles Intellectual Property Strategies
• F. Scott Kieff, professor of law, George Washington University
• Dan McCurdy, chairman, PatentFreedom
• Brent Bellows, Knowles Intellectual Property Strategies

For more information about the agenda, please see the brochure here: http://www.managingip.com/pdfs/USPatentForum.pdf

The forum is free for IP counsel. Places are allocated on a first come, first served basis, please register in advance to secure yours.

We look forward to you joining our debate in March.

Kind regards,

James Nurton
Managing editor
www.managingip.com

Pilar Kraman
Managing editor
www.delawareiplaw.com

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February 5, 2012

Judge Stark Denies Defendants’ Motions to Transfer to N.D. Cal. After Carefully Considering the Fed. Cir.’s Ruling in In Re Link_A_Media

In Intellectual Ventures I LLC v. Altera Corp., C.A. No. 10-1065-LPS, after carefully considering and analyzing the Federal Circuit’s recent decision in In re Link_A_Media Devices Corp., 662 F.3d 1221, 1224 (Fed. Cir. 2011), Judge Stark denied defendants’ motions to transfer venue to the Northern District of California. Id. at 1. In this case, plaintiffs, both Delaware limited liability companies with their principal places of business in Washington, initially filed suit against three of the four defendants in the District of Delaware for patent infringement, and later amended the Complaint to add the fourth defendant. Id. at 2-3. All four defendants are Delaware corporations with headquarters on the West Coast, with three of the four defendants being headquartered and having their principal places of business in California. Id. at 1-2, 13. In addition, all four defendants have research and development facilities in the Northern District of California, where most of the development activities for the various accused products are alleged to have occurred. Id. at13. Based in large part on these grounds, the defendants moved to transfer the case to the Northern District of California. Id. at 3, 13. The Court, however, denied defendants’ motions, concluding that, overall, defendants had “failed to satisfy their burden of showing that the balance of convenience factors and interests of justice weigh strongly in favor of transfer.” Id. at 24. In analyzing the relevant private and public interest factors identified by the Third Circuit, the Court concluded, among other things, that because a corporate entity’s state of incorporation was part of its “home turf,” plaintiff’s choice of Delaware as a litigation forum in this action was entitled to “paramount consideration.” Id. at 12. Most notably, in considering and distinguishing the Federal Circuit’s ruling in Link_A_Media, the Court offered the following observations: (1) “while Link_A_Media certainly contains guidance for how this Court must conduct its review of a motion to transfer, the decision has not altered the fundamental fact that Section 1404(a) is intended to place discretion in the district court to adjudicate motions for transfer according to an ‘individualized, case-by-case consideration of convenience and fairness”; (2) unlike here, “the plaintiff in Link_A_Media was not a Delaware entity and . . . had no connection to Delaware whatsoever” and (3) “the Federal Circuit believed the District Court in Link_A_Media had accorded dispositive weight to a single private factor (defendant’s state of incorporation) and had refused to consider two other private factors (convenience of witnesses and location of books and records).” Id. at 10 (internal quotations and citations omitted). This decision provides yet another example of and further insight as to the Court’s analysis of motions to transfer post-Link_A_Media.

Continue reading "Judge Stark Denies Defendants’ Motions to Transfer to N.D. Cal. After Carefully Considering the Fed. Cir.’s Ruling in In Re Link_A_Media" »

February 3, 2012

Chief Judge Sleet construes terms in "camera-on-a-chip" patents

Chief Judge Sleet construed the following terms relating to several “camera-on-a-chip” patents in a recent Order in Sirona Dental Systems, Inc., et al. v. Danaher Corp., et al., C.A. No. 10-288 (GMS) (D. Del. Jan. 26, 2012):

“readout circuit”

“a photoreceptor”

“sensing node”

“signal controlling device”

“timing circuit”

“correlated double sampling”

“single chip camera device”

“control portion”

“noise reduction circuit”

“fixed pattern noise reduction circuits”

“a follower transistor, receiving information from said photoreceptor indicative of said light”

“a select transistor, selecting said each pixel cell for readout”

“associated device, associate[d] with processing said light from said photoreceptors”

“formed in substrate adjacent said plurality of pixel[] cells”

“image processing device”

The Court agreed with the defendant’s contention that “associated device, associate[d] with processing said light from said photoreceptors” was a means-plus-function term, despite the absence of the words “means for,” explaining that “here, the term ‘associated’ which modifies ‘device,’ is not defined in the specification and there is no suggestion that it has a generally understood meaning in the art. Therefore, the court finds that ‘associated device’ does not connote sufficient structure to a person of ordinary skill in the art ot avoid § 112 treatment.” Id. at 7-8 n.30. The Court rejected the defendant’s contention that “image processing device” also was a means-plus-function term, explaining “[a]lthough this term uses the word ‘device,’ the additional words ‘image processing’ add sufficient structure to overcome the presumption that § 112 applies. The claim makes clear that the image processing device is a particular type of device that connotes sufficient structure to a person of ordinary skill in the art.” Id. at 8 n.31.

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February 2, 2012

Judge Stark: Claim Construction Regarding Rollercoaster Brakes

Judge Joseph Farnan originally held a Markman hearing in Magnetar Techs. Corp. v. Six Flags Theme Parks Inc. on October 15, 2009. After Judge Farnan retired, the court reassigned the case and held another Markman hearing on April 14, 2011. The case involves technology for brakes on amusement park rides such as rollercoasters. Judge Stark has now issued an opinion construing the following claims:

- “fin extending from an underside of said car (and lengthwise of said car)”
- “change the spaced apart relationship”
- “as a function of velocity of the member between the arrays”

Magnetar Techs. Corp. v. Six Flags Theme Parks Inc., C.A. No. 07-127-LPS-MPT, at 9-16 (D. Del. Feb. 1, 2012).

The court also concluded that “material handling” (Plaintiff’s proposal) or “material handling car” (Defendant’s proposal) was not a limitation of the asserted claims. The phrase “material handling” appeared only in the preamble, and was not a claim limitation under Catalina Mktg. Int’l v. Coolsavings.com, Inc., 289 F.3d 801 (Fed. Cir. 2002), because:

- the preamble did not provide an antecedent basis to an element of the claim,
- the preamble was not “essential to understand limitations or terms in the claim body,”
- the preamble did not provide “additional structure or steps underscored as important by the specification,” and
- there was no “clear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art.”

Magnetar Techs. Corp. v. Six Flags Theme Parks Inc., C.A. No. 07-127-LPS-MPT, at 6-9 (D. Del. Feb. 1, 2012).

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February 2, 2012

Judge Stark construes claim terms relating to personalization of internet experience

Judge Stark recently construed the following terms relating to patented technology that “provide[s] a more personalized experience for internet users based on an individual user’s interests” by “filter[ing] information available on the internet to target more relevant internet search results, advertisements, news, and other information . . . .” Personalized User Model LLP v. Google Inc., Civ. No. 09-525-LPS (D. Del. Jan. 25, 2012).

“user” or “user u”

“user-specific data files”

“monitored user interactions with the data”

“parameters”

“estimating parameters of a learning machine”

“learning machine”

“User Model specific to the user”

“user-specific learning machine”

“document”

“estimating”

“probability”

“unseen document”

“estimating a probability P(u/d) that an unseen document d is of interest to the user u”

“estimating a posterior probability P(u/d,q) that a document d is of interest to the user u given a query q submitted by the user”

“present” and “presenting”

“user interest information derived from the User Model”

“documents of interest to the user”

“documents not of interest to the user”

In construing the final two terms, the Court rejected the defendant’s argument that “of interest” and “not of interest” were indefinite, explaining that to the extent those terms are subjective, they describe a user’s subjective reaction that can be determined based on objective criteria described in the specification. Id. at 44-45.

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January 27, 2012

Judge Robinson: Partial Summary Judgment Grants

Judge Robinson has issued a memorandum opinion considering summary judgment on several issues in LadaTech, LLC v. Illumina, Inc., C.A. No. 09-627-SLR (D. Del. Jan. 24, 2012). The plaintiff, LadaTech, accused defendants Illumina and Solexa of direct and indirect infringement of a patent directed to a method of amplifying a mixture of different sequence duplex DNA fragments and a method of isolating complex DNA fragments. The claims at issue on summary judgment concerned only the former. The court issued a separate claim construction opinion and considered motions for summary judgment on noninfringement, invalidity, patent expiration, and no anticipation.

Finding that her claim construction order had resolved many of the arguments raised, Judge Robinson refused several bases for summary judgment of noninfringement, because “[t]he infringement dispute is, essentially, one of claim construction.” Id. at 21. She did, however, grant summary judgment with respect to only one of the defendant’s accused products and the use of third party products, finding no “evidence that any customer actually performed the method of the ‘023 patent using [the accused third party product.]” Id. at 27-28.

Judge Robinson also denied the defendants motion for summary judgment of invalidity and expiration of the patent-in-suit. Under the claim construction adopted by the court, there was no dispute that one of the limitations was well known in the art. Therefore, the written description was not inadequate for failure to sufficiently disclose this limitation. Furthermore, she rejected the defendants’ argument that plaintiffs had lost small entity status and paid a deficient fee, and thus their patent had expired. Under Federal Circuit precedent, the court had no obligation or authority to analyze whether a patent has expired due to fee deficiency. Id. at 28-36.

Finally, the court granted the plaintiff’s motion for summary judgment of no anticipation for two separate prior art references. Again, the court found that the claim construction it had adopted had largely resolved the defendants’ arguments regarding both references. Id. at 36-46.

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January 26, 2012

Judge Robinson claim construction order construing terms of a patent covering DNA sequencing technology

In Ladatech, LLC v. Illumina, Inc., C.A. No. 09-627-SLR (D. Del. Jan. 24, 2012), Judge Robinson construed the following terms of U.S. Patent No. 6,107,023 which is directed toward DNA sequencing technology:

"A method of amplifying a mixture of different sequence duplex DNA
fragments, comprising:"

"linker"

"double-stranded linker"

"Both strands of the fragments, at both fragment ends"

"Single fragment strand"

"Primer"

"A primer"

"Whose sequence is complementary to a linker region on each fragment
strand"

"Linker region"

"Each fragment strand"

"Repeating said denaturing, hybridizing, and converting steps until a
desired degree of amplification is achieved"

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January 25, 2012

Judge Andrews: Allegations directed at “prospective products” survive 12(b)(6) motion.

In a recent memorandum opinion, the Court held that a plaintiff's allegations that a defendant’s “prospective products” “infringe or will infringe” and “are or will be based on [a plaintiff’s] trade secrets” stated a claim for relief. XpertUniverse, Inc. v. Cisco Systems, Inc., C.A. No. 09-157-RGA (D. Del. Jan. 20, 2012). The Court noted, however, that it was a “close[] issue,” and explained: “If the products are ones that have already been made or used as of the date the [Complaint] was filed, I think a claim upon which relief can be granted has been stated. If a product is in development but has not reached a stage where it has been made or used, there is no claim upon which relief can be granted.” Id. at 7. Accordingly, the Court explained that although the plaintiff's claims would not be dismissed, the Court would “treat any products that have not infringed as of [the date the Complaint was filed] as not being alleged as an infringing product in the [Complaint].” Id. The Court further held that a plaintiff’s infringement allegations identifying products not yet known to the plaintiff that feature “similar functionality” to the specifically accused products sufficiently stated a claim for relief. Id.

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January 20, 2012

Judge Stark Issues Claim Construction Order, Adopts Plaintiff’s Alternative Construction for the Term: “A Signal Processor”

In Masimo Corp. v. Philips Electronics N.A. Corp., C.A. No. 09-80-LPS-MPT, with the exception of one of the claim terms at issue, Judge Stark fully endorsed and adopted a Report and Recommendation construing the parties’ disputed claim terms. Id. at 2. For the term “a signal processor,” the Court agreed with the plaintiff’s proposed alternative construction and ordered that the term be construed as “a device that processes an input or output signal.” Id. at 2. In its analysis, the Court noted that the parties were “in agreement that the ordinary meaning of ‘a signal processor’ is ‘a device that processes an input or output signal.'” Id. at 2. The Court further noted that the construction adopted was supported by both the specification and prior decisions by other courts considering the patent-in-suit. Id. at 3-4.

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January 19, 2012

Judge Andrews Denies Motion to Transfer Venue

The District of Delaware has produced another opinion in the recent line of cases considering motions to transfer venue, this time denying a motion to transfer to the Eastern District of Texas in Microsoft Corp. v. Geotag Inc., C.A. No. 11-175-RGA (Jan. 13, 2012). Much like Judge Andrew’s recent decision in Wacoh Co. v. Kionix Inc., the opinion distinguishes recent Federal Circuit precedent and relies on the Third Circuit’s Jumara public and private interest factors. The case involves a complaint for declaratory judgment of noninfringement and invalidity filed by Microsoft and Google against Geotag, Inc. Geotag, although a defendant in this suit, is a plaintiff against more than 450 companies in the Eastern District of Texas, alleging infringement of the same patent against all of them. Microsoft and Google filed a complaint in the District of Delaware seeking declaratory judgment regarding that patent, and Geotag moved for transfer to the venue where its infringement actions are currently pending.

Considering the Third Circuit’s private and public interests framework for analyzing motions to transfer, Judge Andrews stated: “[Plaintiff’s forum preference] supports the plaintiffs’ position that the case should not be transferred. [Defendant’s forum preference] supports the defendant’s request to transfer the case. The other interests do not add much to the balancing, as they are either inapplicable to this case, possibly applicable but not well-developed in the record, or applicable but pretty evenly-balanced as to which side they support.” Id. at 3-4. Judge Andrews’ opinion expressly considers and weighs each factor, explaining why each does or does not add to the balance. Of particular importance, he notes, “[p]laintiffs have chosen Delaware as a forum. That choice weighs strongly in the plaintiffs’ favor, although not as strongly as it would if the plaintiffs had their principal places of business (or, indeed, any place of business) in Delaware.” Id. at 4. By contrast, the defendant’s “lack of a substantial connection to the Eastern District is taken into account in the balancing of the other factors, and, in particular, by not according Geotag’s preference for the Eastern District the same weight as it might otherwise deserve.” Id. at 12.

Judge Andrews also addressed the Federal Circuit’s recent decision in In re Link_A_Media Devices Corp., 662 F.3d 1221, 1224 (Fed. Cir. 2011). In considering the convenience of witnesses, books, and records, Judges Andrews stated: “While there is a paragraph in In re Link_A_Media Devices Corp.[], about ‘the convenience of the witnesses and the location of the books and records,’ I do not understand the Federal Circuit to have altered the Third Circuit’s focus on the issue being not so much where the witnesses and evidence are, but whether they can be produced in court.” Id. at 6 n.2. Furthermore, he noted that the Geotag case was different from the Link_A_Media case in that there was a stronger connection to Delaware and a weaker connection to the transferee venue. “I have considered In re Link_A_Media Devices[], but I do not think it is particularly helpful in assessing the transfer request in this case, as its facts were very different. I would characterize that case generally as standing for the proposition that when the parties, all the witnesses, and all the evidence are in one distant jurisdiction, and the only connection to Delaware is that it is the state of incorporation of the defendant, and there is no other reason for the suit to be in Delaware, the suit must be transferred, upon timely request, to the distant jurisdiction. While in the present case there is a marginally greater connection to Delaware, as one of the plaintiffs is also a Delaware corporation, of much greater significance is that with the exception of Geotag’s CEO, the witnesses have no connection to the proposed transferee district, and most of the evidence is not going to be there either.” Id. at 12-13.

Judge Andrews ultimately found that “the ‘interest of justice’ supports management and resolution of all the Geotag cases by one judge, but it does not really provide an answer to the question whether it should be a Texas or a Delaware judge. Under Third Circuit law, considerable deference is given to the plaintiffs’ choice of forum. Since there is little beyond the defendant’s choice of forum- which is less compelling than usual -to suggest transfer should be ordered, I do not think the defendant has shown that the balance of convenience tips significantly enough in the defendant’s favor so that transfer should be ordered. I will therefore deny the defendant’s motion to transfer.” Id. at 13.

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