February 10, 2014

Judge Andrews issues decisions in Inventio v. Thyssenkrupp case

In a series of decisions in Inventio AG v. Thyssenkrupp Elevator Corporation, C.A. No. 08-874-RGA, Judge Richard G. Andrews ruled on motions in limine, clarified previous orders, and construed disputed claim terms. The two patents-in-suit relate to elevator installation.

The Court had previously ruled that it lacked subject matter jurisdiction over unasserted claims, and therefore did not address an alleged best mode violation in these claims relating to the claim term “advance selector.” Defendant sought “clarification of whether the Court's holding is simply that the four unasserted claims are not in the case, or whether [defendant] cannot assert a best mode violation relating to the 'advance selector' for the claims that have been asserted." Inventio AG v. Thyssenkrupp Elevator Corporation, C.A. No. 08-874-RGA, Order at 1-2 (D. Del. Feb. 6, 2014) ("Feb. 6 Order") (internal citations and quotation marks omitted). The Court explained that its “holding was simply that the Court did not have subject matter jurisdiction over unasserted claims. However, as the Defendant indicates that there is a disagreement between the parties regarding whether best mode can be raised regarding the presence of an ‘advance selector,’ for the asserted claims, the Court will address this issue.” Id. at 2. This term did not appear in the asserted claims, and the Court had not construed any claim terms to require an advance selector. Therefore, the asserted claims did not require an advance selector and there was no best mode violation. Id. at 2. In a separate Order following the case’s pretrial conference, the Court further clarified that defendant was “precluded from arguing that any aspect of the asserted claims can be invalidated for failure to describe the best mode of an ‘advance selector.’” Inventio AG v. Thyssenkrupp Elevator Corporation, C.A. No. 08-874-RGA, Order at 1 (D. Del. Feb. 7, 2014) ("Feb. 7 Order").

Defendant also sought clarification regarding the Court’s previous damages memorandum. Defendant interpreted the Court’s order to limit plaintiff’s damages to a certain range that reflected a reasonable royalty. Feb. 6 Order at 2. The Court clarified that it “did not limit the Plaintiff to a specific amount of damages, but instead held that the royalty base may not include the services contract revenues.” Id.

Defendant also brought motions in limine to exclude the testimony of plaintiff’s damages expert and to exclude his supplemental report. As to testimony, defendant argued that plaintiff’s expert based his reasonable royalty calculation on allegedly infringing activities that had already been excluded by the Court in a prior order. Id. at 3-4. The Court explained that this “previous order did not exclude any evidence, but instead acted to limit further discovery into the unaccused elevator modernization projects. Thus, it is appropriate for [this expert] to testify regarding these other bids in order to provide context regarding the accused projects and the related financial issues. The Defendant is free to object at trial if [the expert] testifies about issues in which he is not an expert.” Id. at 4. The Court did not consider whether the damages expert’s use of late-produced documents should be a basis for exclusion because “[a] Daubert motion is not the proper vehicle to raise a possible discovery violation.” Id. at 5. On the other hand, the Court excluded plaintiff’s expert’s discussion of the size and revenues of defendant because the Court found that the expert has not used this information to render his conclusion or, alternatively, because this information’s prejudice to defendant outweighed its probative value under FRE 403. Id. at 5. As to the expert’s supplemental report, defendant argued that it added new material. The Court disagreed, finding that it only clarified issues, and denied the motion. Id. at 6.

Plaintiff also moved to preclude the testimony of defendant’s damages expert, arguing that the expert improperly based his analysis on a non-comparable license and that he had not explained why other comparable agreements were not considered. Id. at 6. The license at issue was one between plaintiff and its sister company. Id. at 7. The Court denied plaintiff’s motion, finding the expert “at least minimally connects the license in question to the patents-in-suit and rather than simply extract a royalty rate from the previous license, uses the license as only a single component of his entire analysis.” Id. at 8. The Court also rejected the argument that the expert should have discussed other potentially comparable licenses. Id. at 8-9.

In a separate Order, the Court also granted defendant’s motion in limine to exclude evidence related to certain elevators, because plaintiff had presented no evidence that these elevators embodied the patents-in-suit. Feb. 7 Order at 1. The Court explained that it would "reconsider the matter if the Plaintiff puts on evidence that shows the Avenue of the Americas elevator modernization is an embodiment of the asserted patent claims.” Id. at 2.

Finally, the Court construed the following disputed terms:

“the elevator installation having at least one elevator and at least one elevator control for controlling the elevator in response to call reports generated by hall call transmitters and car call transmitters"

"car call transmitter”

“destination call report(s)”

“modernized” /“modernizing”

“modernizing device”

“a device for temporarily operating an elevator installation during modernization”

“a system for modernizing an elevator installation”

“a method for modernizing an elevator installation"

“elevator installation”

“call report”

“floor terminal”

“at least one of [A] and [B]”

“floor terminal . . . for at least one of the input of destination call reports and for recognition of identification codes of users;”

“floor terminal. .. operative for at least one of input of destination call reports and recognition of identification codes of passengers”

“computing unit ... for at least one of evaluating the destination call reports and association of destination floors with recognized ones of the identification codes”

“identification code”

“recognition of identification codes of passengers”

“computing unit”

“destination signal”

“interrupting at least one existing electrical floor call transmitter line between at least one floor call transmitter and the elevator control”

“interrupting at least one existing car call transmitter line between at least one car call transmitter and the elevator control”

“the elevator control being disconnected from the hall call transmitters and the car call transmitters of the elevator installation”

“existing electrical floor call transmitter line”

“existing car call transmitter line”

“floor call transmitter line input”

“car call transmitter line input”

“hall call transmitter”

“performing said steps a. through c. [of claim 1] for each elevator car and associated elevator control of an elevator installation in succession whereby the elevator installation is modernized in a modular manner”

“read” or “reading”

“temporarily”

UPDATED: Judge Andrews issued amended claim constructions on February 20, 2014

Inventio AG v. Thyssenkrupp Elevator Corporation, C.A. No. 08-874-RGA (D. Del. Feb. 4, 2014).

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February 7, 2014

Judge Andrews issues claim construction opinion

Judge Richard G. Andrews recently construed several claims terms across five patents: U.S. Patent Nos. 5,793,853; 5,742,605; 6,108,339; 6,452,931; and 6,870,832. Sprint Communications Company L.P. v. Comcast IP Holdings I, LLC et al., C.A. No. 12-1013-RGA, Mem. Op. (D. Del. Jan. 28, 2014). Judge Andrews construed the terms consistently across the patents at issue, unless otherwise noted. Specifically, Judge Andrews construed the disputed claim terms as follows:

U.S. Patent No. 5,793,853

-"primary network element" means "[t]he first network element to receive the service request."

-"operator center" means "[a] network element providing telecommunications services."

-"means for assigning an identification key to the primary and secondary records" is a means-plus-function limitation. The function is “assigning an identification key to the primary and secondary records," and the structure is "a network element comprising a counter device as disclosed at 5:61-6:9 and equivalents thereof."

-"means for comparing the identification keys assigned to the records" is a means-plus-function limitation. The function is "comparing the identification keys assigned to primary and secondary records" and the structure is "a merge processor (as disclosed at item 42 in Figures 1 and 2) and equivalents thereof."

-"means for merging associated records" is a means-plus-function limitation. The function is "merging records that are associated by reference to information included in their identification keys" and the structure is "a merge processor (as disclosed at item 42 in Figures 1 and 2) and equivalents thereof."

U.S. Patent Nos. 5,742,605, 6,108,339, and 6,452,931

-"[SONET] ring" means "[a] self-healing SO NET architecture connecting ring terminals in a loop in which each ring terminal in the loop is directly connected only to the adjacent ring terminal(s) in each direction around the loop."

-"span" means "[t]he logical connection between ring terminals."

-"ring terminal[s]" mean "[a] network element that includes a SO NET add/dropmux (ADM) and is capable of receiving, switching, grooming, and transmitting SO NET traffic on the connected SONET spans."

-"are stacked within a single fiber route" means "[o]ccupying at least a portion of the same fiber route."

-"are stacked within a single physical route" means "[o]ccupying at least a portion of the same physical route."

-"work line" / "protect line" means "[a] line of a ring over which traffic is transported when there is no interruption in the ring." / "A line of a ring allocated to transport the traffic in the event the work line of the ring becomes unavailable due to an interruption in the ring."

-Judge Andrews found the following two terms indefinite: (i) "rings [that] individually encompass geographic areas that are large[r] than a LATA" / "rings [that] individually encompass geographic areas that are larger than a metropolitan area" and (ii) "wherein a plurality of the rings individually encompass geographic areas that are operational to connect two non-adjacent LA T As on a single ring" I "wherein a plurality of the rings individually encompass geographic areas that are operational to connect two metropolitan areas on a single ring."


U.S. Patent No. 6,870,832

-"software agent" means "[a] software interface between a session manager and a telephony card."

-"communication hub" means "[e]quipment that stores and executes the software agent."

"session manager" means "[a] platform that controls a communications network."

-Judge Andrews also found that six disputed terms did not require any construction. See Mem. Op. at 22-25.

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February 7, 2014

Judge Robinson issues claim construction related to telecommunications technologies

In a recent memorandum opinion, Judge Sue L. Robinson construed three disputed claim terms across U.S. Patent Nos. 6,044,382; 5,805,676; 5,987,103; and 7,334,024, which each relate to telecommunications technologies. Cyberfone Systems, LLC v. ZTE (USA) Inc., et al., C.A. Nos. 11-827, 11-830, 11-833, 11-834-SLR (D. Del. Feb. 4, 2014). Specifically, Judge Robinson construed the three disputed claim terms as follows:

-The limitation “form driven operating system” means “firmware - a set of instructions programmed on a hardware device - that, together with forms, operates to control a microprocessor without the need for a conventional operating system (such as DOS or Windows).”

-The limitation “client module” means “firmware - a set of instructions programmed on a hardware device - that, together with forms, operates to control a microprocessor without the need for a conventional operating system (such as DOS or Windows).”

-The limitation “transaction assembly server” means “firmware - the set of instructions programmed on a hardware device.”

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February 7, 2014

Judge Andrews grants motion to exclude testimony of reasonable royalty expert

In a recent memorandum order, Judge Richard G. Andrews granted defendant’s motion to exclude the testimony of plaintiff’s reasonable royalty expert. Robocast, Inc. v. Microsoft Corporation, C.A. No. 10-1055-RGA (D. Del. Jan. 29, 2014). First, plaintiff’s expert asserted in his running royalty analysis that “[t]he running royalty that would have resulted from the hypothetical negotiation would effectively result in an equal sharing of the incremental revenue and profit from the use of the patented technology.” Id. at 1. Judge Andrews explained that with respect to this argument, the parties were in agreement that the “relevant inquiry” was whether plaintiff's proposed “50/50 split [was] sufficiently tied to the facts of the case.” Id. at 2. Judge Andrews found this inquiry to accord with the reasoning from Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292, 1318 (Fed. Cir. 2011), where a 25% rule of thumb was struck down as “arbitrary [and] unrelated to the facts.” Id. Judge Andrews concluded that plaintiff’s expert failed to “discuss the relative bargaining power of [defendant] and [plaintiff],” and that without “discussing the underlying assumptions, it is impossible to tie the idealized bargaining problem to the facts of the case.” Id. at 4. Judge Andrews thus excluded the expert’s running royalty analysis. Id. at 5. Judge Andrews suggested that “if [defendant] had a history of licensing similar technology for a 50/50 split of the profits, or [plaintiff] had a history of licensing [the patent at issue] for half of the profits, those would be the sort of facts that would provide a basis for [the expert’s] calculations.” Id.

Turning to plaintiff’s expert’s lump-sum royalty analysis, defendant argued that the expert’s analysis was not based on a “reliable methodology [or] sufficiently grounded in fact,” as the expert admitted that the licenses upon which he relied “were not technologically comparable” to those at issue. Id. Judge Andrews agreed with defendant, explaining that the expert “cannot rely on licenses for unrelated technology in order to arrive at a lump sum royalty payment for the technology at issue. . . . What [defendant] paid for unrelated technology does not help the jury determine what [defendant] would have paid for this technology.” Id. at 5-6. Because the expert had “nothing else on which to base his opinion,” Judge Andrews excluded the lump-sum royalty opinion. Id. at 6.

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February 7, 2014

Judge Andrews Rules on Motions for New Trial and Enters Final Judgment in Xpertuniverse v. Cisco

Judge Andrews recently ruled on motions for a new trial in Xpertuniverse, Inc. v. Cisco Systems, Inc., C.A. No. 09-157-RGA, Memo. (D. Del. Jan. 30, 2014). Judge Andrews observed that the mtions “might best be described as an afterthought in the [post-trial] briefing.” Id. at 1. His Honor first denied the motion for new trial with respect to the jury’s finding regarding materiality, explaining that if “on appeal, the materiality decision is reversed, it will be because I have either wrongly evaluated the applicable legal standard or the sufficiency of the evidence, and, in either event, I do not believe I am able to conclude . . . that the jury’s verdict was against the clear weight of the evidence.” Id. at 1-2. Judge Andrews made a similar finding with respect to the request for a new trial on damages. Additionally, His Honor explained that he found unpersuasive an argument that $70,000,000 in damages was excessive because “in this particular case . . . the disposition of the damages appeal will necessarily determine whether the award was excessive.” Id. at 2. Similarly, Judge Andrews found that arguments that essentially relied upon pretrial Daubert motions would be included as issues on appeal and “[t]hus, if there was an abuse of discretion, it will be remedied by the Court of Appeals, and, if there was not, then there is no apparent reason why I should grant a new trial on this basis.” Id. at 3. Finally, on a motion for new trial based on the on-sale bar, Judge Andrews explained that his finding that the infringement verdict was not against the great weight of the evidence “also impliedly found that the on-sale bar decision was not against the great weight of the evidence,” and that he would enter an order accordingly. Id.

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February 7, 2014

Judge Andrews claim construction order

Judge Richard G. Andrews construed the following claim terms from U.S. Patent No. 8,094,010, the patent at issue in M2M Solutions LLC v. Sierra Wireless Am., Inc., et al., C.A. No.s 12-030-RGA to 12034-RGA (D. Del. Jan. 30, 2014):

"permitted caller"
"coded number"
"programmable interface"
"processing module"
"monitoring device"
"wireless communications circuit for communicating through an antenna"
"monitored technical device"

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February 5, 2014

Magistrate Judge Thynge recommends construction of claim terms relating to geolocation systems.

Magistrate Judge Mary Pat Thynge recently issued a report recommending the proper construction of claim terms relating to geolocation systems. TruePosition, Inc. v. Polaris Wireless, Inc., C.A. No. 12-646-RGA-MPT (D. Del. Feb. 4, 2014). The following claim terms of U.S. Patent No. 7,783,299 were construed by Judge Thynge:

“means for monitoring” (as used in claim 113 and as used in claim 114);

“means for detecting” (as used in claim 113 and as used in claim 114);

“means for initiating” (as used in claim 113 and as used in claim 114); and

“in response” (as used in each of claims 98, 113, and 114).

Magistrate Judge Thynge found that the ’299 patent “does not disclose an algorithm to perform the “means for detecting” function in claims 113 and 114 and, as a result, recommended that those claims be found invalid as indefinite under 35 U.S.C. § 112, ¶2.

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February 5, 2014

Judge Andrews denies request for single trial in multi-defendant case.

Judge Richard G. Andrews recently denied a plaintiff’s request for a single trial on infringement and invalidity against nine defendants. Eon Corp. IP Holdings LLC v. Flo TV Inc., C.A. No. 10-812-RGA (D. Del. Jan. 30, 2014). Judge Andrews explained that he did not think the nine defendants were properly joined in the first place, but in any event believed that it would be “completely unfair and prejudicial” and likely reversible error to force them to defend themselves in a single joint trial. The Court therefore scheduled nine separate five-day trials to be held between March and September of 2014.

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February 5, 2014

Judge Andrews denies plaintiff’s motion for entry of judgment

In a recent Order, Judge Richard G. Andrews denied plaintiff’s motion for entry of judgment with respect to the court’s claim construction. Buyerleverage Email Solutions, LLC v. SBC Internet Services, Inc., et al., C.A. No. 11-645-RGA (D. Del. Jan. 24, 2014). As Judge Andrews explained, the parties had requested that “about 14 terms” be construed, and Judge Andrews construed “three critical terms” from the 14. Id. at 1. Plaintiff thereafter determined that the constructions were “harmful enough to its case that it wanted to concede and go the Federal Circuit.” Id. The parties disagreed as to what Judge Andrews had decided and “(perhaps) what was necessary to put the case into a posture where the Federal Circuit would accept an appeal.” Id.

Judge Andrews noted that the Federal Circuit has “constitutional concerns about reviewing claim constructions.” Id. Judge Andrews further explained that in other cases parties “managed to stipulate to a final judgment” if one party thought the claim construction needed to be appealed. Id. He found that practice different from the instant case, where it seemed that plaintiff’s “proposal beg[ged] the Federal Circuit to remand the case for clarification.” Id. at 1-2. While acknowledging that the parties “think the most economical and/or efficient way to proceed is with a visit to the Court of Appeals,” Judge Andrews concluded that it would “not be responsible of [him] to enter any of the pending proposals for judgment” and denied plaintiff’s motion. Id. at 2.

In a footnote, Judge Andrews provided some guidance as to when he may enter final judgment: “If the parties can stipulate to a judgment, as indicated above, I would probably grant that. If Plaintiff submits a motion for entry of judgment that explicitly states that it will agree to dismiss its case if the Court of Appeals does not have a sufficient record on which to make its review, I would probably grant that too. Or I can extend the schedule, the parties can finish discovery, including resolution of pending discovery disputes, do expert reports, and summary judgment motions. There are probably other alternatives that the parties can come up with.” Id. at 2 n.4

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February 5, 2014

Judge Bumb issues post-trial decision finding infringement of one valid patent.

In a recent post-trial decision, Judge Renee Marie Bumb of the District of New Jersey, sitting by designation, considered the validity of Endo’s patented drug for the treatment of migraines. Endo Pharmaceuticals Inc. v. Mylan Pharmaceuticals Inc., Civ. No. 11-717 (RMB/KW) (D. Del. Jan. 28, 2014). Mylan previously had conceded that it infringed under the Court’s claim construction, with which Mylan disagreed. Accordingly, the trial focused on whether Endo’s patent was invalid as obvious, as anticipated, for lack of written description, or for failure to enable. The Court found no basis to find the patent invalid, and entered judgment in favor of Endo. During trial, Endo filed a terminal disclaimer relating to two other asserted patents, and unequivocally represented to the Court that it was abandoning its infringement claims with respect to those two patents. The Court found that Endo’s strategic decision had the effect of waiving those claims, and held that Endo is judicially estopped from asserting those patents against the defendant in the future.

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