January 30, 2014

Judge Robinson Grants Motion to Dismiss for Lack of Declaratory Judgment Jurisdiction

We previously reported on Judge Robinson’s denial of Gevo’s motion to dismiss Butamax’s declaratory judgment action for lack of subject matter jurisdiction based on her determination that a sufficient controversy existed to exercise declaratory judgment jurisdiction. Judge Robinson has now considered Gevo’s renewed motion to dismiss for lack of subject matter jurisdiction and this time has granted dismissal. Butamax Advanced Biofuels LLC, et al. v. Gevo, Inc., C.A. No. 12-1301-SLR, Memo. at 1-6 (D. Del. Jan. 28, 2014).

Although Butamax and Gevo have engaged in “an extensive pattern of litigation . . . [with] eleven cases pending between the parties,” that litigation has become less related to the patent at issue in this declaratory judgment action. This declaratory judgment case and another related infringement case involve Gevo’s patents for isobutanol recovery. The remainder of the patents at issue between the parties in the various cases relate to creating isobutanol through genetically engineered organisms. Because Gevo’s infringement case involving the related, isobutanol recovery patent was voluntarily dismissed in May, and because there was no evidence of Butamax’s final commercialization process for isobutanol recovery, Judge Robinson found that the pattern of litigation of unrelated patents alone was no longer sufficient to sustain an actual controversy. Id. at 4-5.

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January 30, 2014

Judge Andrews grants-in-part motion for reconsideration of the Court's prior claim construction opinion

Judge Richard G. Andrews recently considered plaintiff's Motion for Partial Clarification and Reconsideration of the Court's Memorandum Opinion on Claim Construction. M2M Solutions LLC v. Sierra Wireless Am., Inc., et al., C.A. Nos. 12-30-RGA to 12-34-RGA (D. Del. Jan. 24, 2014). Judge Andrews largely denied the motion but did agree to make one modification to the Court's earlier construction of the term of"wireless communications circuit for communicating through an antenna." The Court previously construed the term to mean "a complete wireless circuit that transmits and receives data and includes an antenna." (Nov. 12 opinion at 15). Judge Andrews reconsidered that construction:

The claim language itself requires the circuit to communicate "through an antenna." The plain meaning of "through an antenna" is "through an antenna," and this should not be read out of the claim. The construction is revised to read: "a complete wireless circuit that transmits and receives data through an antenna."

Id. at 5.

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January 30, 2014

Managing IP US Patent Forum - March 25, 2014

Managing IP invites you to the third annual US Patent Forum on March 25 at the Willard InterContinental, Washington D.C.
** Free for in-house patent counsel, academics and R&D professionals **

Supported by AIPLA and Delaware IP Law Blog, the forum will provide you with:

• a guide to improving your company’s patent application process post-AIA;
• an evaluation of post-grant proceedings;
• an update on litigation planning and forum shopping in Europe; and
• the analysis of the recent standard essential patent (SEP) litigation between Apple and Samsung

You will hear from:

• Michelle Lee, deputy under secretary of commerce for intellectual property and deputy director, USPTO
• Mark Guetlich, senior counsel, international policy & government affairs, USPTO
• Lisa McIntye, patent counsel, Google
• Denise Hickey, senior director, intellectual property strategy, AbbVie
• Jason Garbell, senior manager & senior patent attorney, Novozymes North America
• Joseph Contrera, patent counsel, Johns Hopkins Technology Transfer
• Vaishali Udupa, IP litigation counsel, Hewlett-Packard
• Adam Lerner, intellectual property manager, Qiagen
• Richard Rainey, executive counsel, IP litigation, GE
• Sherry Knowles, principal, Knowles Intellectual Property Strategies

You can view the agenda and register online HERE, or email msamra@euromoneyplc.com.

January 30, 2014

Special Master recommends denial of plaintiff’s request for leave to serve supplemental report rebutting defendant’s supplemental report.

Special Master Paul M. Lukoff recently recommended denying a plaintiff’s request for leave to serve a supplemental expert report in rebuttal of the defendant’s supplemental (and unexpected) report. Robocast, Inc. v. Microsoft Corp., C.A. No. 10-1055 (RGA) (D. Del. Jan. 21, 2014). The plaintiff argued it should be permitted a supplemental report to rebut the defendant’s own supplemental report, which the Court had permitted. The defendant countered that the Court previously made clear that no further reports would be permitted and, further, that it would be prejudiced if the plaintiff were allowed to serve a supplemental report at this stage because there would be no opportunity to depose the expert on the new opinions. The Special Master supported his recommendation that the plaintiff not be permitted to serve a supplemental rebuttal report by explaining that “[t]he parties have been around and around this technical mulberry bush so many times that they must be bored with the repetitive nature of their activities.” The Special Master explained further that, based on declarations filed during summary judgment briefing, the defendant was so familiar with the opinions of the plaintiff’s expert that “the defendant will have lost nothing in connection with its ability to question this particular expert witness” at trial. Id. at 3. As a result, Special Master Lukoff recommended denying the plaintiff’s request for permission to serve a supplemental rebuttal report, but recommended that the plaintiff’s expert be permitted to provide rebuttal testimony at trial. Id.

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January 28, 2014

Judge Andrews denies Daubert motion to exclude damages expert opinion

In a recent memorandum order, Judge Richard G. Andrews denied plaintiff’s Daubert motion to exclude a portion of defendant’s damages expert’s testimony, in which he “opined that the inclusion of the allegedly infringing Showcase/Flowcase . . . feature in iTunes and the Top Sites feature in Safari did not have a positive impact on Apple revenues.” Robocast, Inc. v. Apple Inc., C.A. No. 11-235-RGA (D. Del. Jan. 14, 2014). Plaintiff argued that the damages expert’s opinion was unreliable and should be excluded because he “failed to account for certain variables,” which included “the increasing use of iPhones, Spotify, and Pandora.” Id. at 2. Plaintiff asserted that such “countervailing variables could have masked the positive impact caused by the accused features.” Id. Judge Andrews, however, rejected plaintiff’s argument, explaining that the damages expert’s opinion was merely that “there was a statistically significant decrease in the rate of change of revenue after the addition of Showcase.” Id. According to Judge Andrews, this opinion logically suggests that the Showcase/Flowcase features “did not cause an increase in the rate of change of revenue.” Id. Judge Andrews concluded that the fact that the damages expert did not account for these other variables “goes to the weight of the testimony, not its admissibility, and is properly left to the jury.” Id. at 3.

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January 27, 2014

Judge Andrews rules on summary judgment motions on infringement and non-infringement

In Riverbed Technology, Inc. v. Silver Peak Systems, Inc., C.A. No. 11-484-RGA-CJB (D. Del. Jan. 24, 2014), Judge Richard G. Andrews ruled on the parties’ cross-motions for summary judgment of infringement and non-infringement of one of defendant/counterclaim plaintiff’s patents (“the ‘736 patent”) as well as defendant’s motion for summary judgment of infringement of another one of its patents (“the ‘921 patent”). The Court granted partial summary judgment for defendant regarding the ‘921 patent and denied the cross-motions regarding the ‘736 patent.

As to the ‘921 patent, plaintiff argued that defendant’s expert had not tied his infringement analysis to specific products. Id. at 4. The Court disagreed, noting that defendant “did identify the infringing products, but only implicitly based on the software used by each product.” Id. at 5. The Court accepted defendant’s argument that it should enter partial summary judgment that certain hardware used with plaintiff’s software infringes the ‘921 patent and “leave for trial which SKU numbers were sold or used with” the infringing software. Id.

The Court also rejected plaintiff’s other arguments that defendant had not proven infringement. First, the expert had only analyzed a single version of plaintiff’s source code against all of the claim limitations, and multiple versions existed. However, the expert “also reviewed subsequent versions of the code to confirm that the functionality had not changed in a way that would cause him to have a different view of infringement for those newer versions.” Id. at 8. The Court found the expert’s analysis sufficient to show that different versions of plaintiff’s software infringed the ‘921 patent. Id. at 8-9. Because the expert had sufficiently shown that each version of the source code operated in the same infringing manner, it was also acceptable for the expert to have analyzed different versions of the code in his analysis of certain claim limitations. Id. at 10. Additionally, while defendant had not offered evidence that plaintiff ever actually operated an accused device in a way that infringes, it was sufficient for defendant to use circumstantial evidence of direct infringement, through internal documents showing how the product was tested and customer instructions that would cause a user to infringe. Id. at 9-10. Finally, defendant’s alleged mischaracterization of plaintiff’s expert’s testimony did not create an issue of material fact because defendant’s other evidence was sufficient to support infringement. Id. at 10-11.

As to the ‘736 patent, a dispute of material fact existed based on the experts’ disagreement as to how plaintiff’s product operated, and the Court therefore denied the motions for summary judgment. Id. at 12-13.

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January 27, 2014

Judge Burke grants motion to stay

In Princeton Digital Image Corporation v. Konami Digital Entertainment Inc., et al., C.A. Nos. 12-1461 & 13-335-LPS-CJB (D. Del. Jan. 15, 2014), Magistrate Judge Christopher J. Burke granted defendants’ motions to stay where one defendant had filed a request for inter partes review (“IPR”) that had yet to be granted by the PTO.

Simplification of issues only weighed slightly in favor of a stay. While a high percentage of the claims were potentially at issue in the IPR, it was also too early in the case to tell how much overlap there would be in issues between the two proceedings. Id. at 5-6. Even if not all claims were cancelled, the IPR could still simplify some issues due to its estoppel effect, although that simplification would only apply to the defendant that filed the IPR petition. Id. at 4-5.

The stage of the litigation “on balance more strongly favor[ed] the moving parties,” id. at 9, where i) discovery was "in its nascent stages,” id. at 9, and ii) substantive proceedings already held (i.e., early Markman, a hearing on a motion to dismiss, and a discovery dispute) actually “served to emphasize how the cases are not close to resolution at all.” Id. at 8 n.6.

As to the potential prejudice to the plaintiff, the Court found that the timing of the motions to stay did not suggest an attempt to gain an inappropriate tactical advantage. Id. at 12. Among other things, the Court was not persuaded by plaintiff’s arguments that, out of “gamesmanship,” the defendant who filed the IPR had concealed its intention to file the IPR when it requested early Markman and a stay of discovery deadlines. Id. at 11. Therefore this sub-factor weighed in favor of a stay. However, while IPR proceedings “promise[] to be a more expeditious process” than inter partes reexamination proceedings, because the PTO had not yet determined whether to grant review, the early status of the IPR proceeding weighed against granting a stay. Id. at 12. As plaintiff was a non-practicing entity, the parties in this case were not direct competitors, and thus this final sub-factor within the prejudice analysis weighed in favor of a stay. Id. at 13. On balance, the prejudice factor weighed in favor of a stay. Id.

Because “[t]he potential for simplifying the issues, the current status of this litigation and the amount of undue prejudice associated with the stay requests all favor a stay, to at least some degree,” the Court granted the motions. Id. at 14.

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January 23, 2014

Judge Andrews Grants Various Summary Judgment Motions of Non-Infringement and Dismissal

This case involves several defendants who are accused of infringing the plaintiff’s patents related to elevator devices and methods. Defendants filed a motion for summary judgment requesting dismissal of “improper defendants” and dismissal of all indirect infringement claims.

Judge Andrews found that defendant ThyssenKrupp Elevator Americas Corporation (“TKEA”) was merely a holding company and that the plaintiff’s citations to websites to show that it engaged in activities beyond that of a holding company were not sufficient to show that it engaged in conduct establishing direct infringement. Judge Andrews further rejected plaintiff’s alter ego and agency theories that TKEA was liable because plaintiff did not show commingling of assets, dominion or control over subsidiaries, or corporate fraud. Accordingly, Judge Andrews granted summary judgment for dismissal of TKEA. Inventio AG v. Thyssenkrupp Elevator Americas Corp., et al., C.A. No. 08-874-RGA, Memo. Or. at 2-4 (D. Del. Jan. 16, 2014).

Defendant ThyssenKrupp Elevator Manufacturing Incorporated (“TKEM”) was slightly more complicated. TKEM asserted that it was not liable for infringement because it had not performed all of the steps of the asserted method claim or sold a system with all of the elements of the asserted apparatus claims. Because the plaintiff did not provide evidence that every step of the asserted method claim was performed directly by or under the direction of TKEM, Judge Andrews granted summary judgment of non-infringement as to that method claim. Id. at 4-5. With respect to the other claims, the plaintiff was unable to show that TKEM sold the “final part” of the accused device, only that TKEM sold “all of the key components of the infringing system.” Accordingly, Judge Andrews found that the plaintiff could not show that all claim limitations were met and therefore granted summary judgment of non-infringement as to TKEM. Id. at 5-6.

Finally, Judge Andrews considered a motion to preclude untimely indirect infringement claims. The parties disputed whether the plaintiff had timely disclosed theories of indirect infringement. Judge Andrews, however, found this summary judgment motion to be moot because the complaint did not allege indirect infringement and “[d]uring the lengthy lifetime of this case, the Plaintiff has not amended the Complaint” and “the time to amend the complaint has long since passed.” Id. at 7-8.

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January 23, 2014

Judge Andrews denies in part motion to exclude liability expert testimony

In Robocast, Inc. v. Microsoft Corporation, C.A. No. 10-555-RGA and Robocast, Inc. v. Apple Inc., C.A. No. 11-235-RGA (D. Del. Jan. 16, 2016), Judge Richard G. Andrews denied in part defendants’ motion to exclude the testimony of plaintiff’s liability expert. As Judge Andrews explained, defendants objected to the expert’s testimony on the grounds that “he applied the incorrect legal standard regarding conception, that he did not analyze all of the claim elements and applied an incorrect legal standard for written description, and that he failed to apply the Court's claim construction in analyzing infringement.” Id. at 1.

As to the conception issue, Judge Andrews noted that the defendants' argument boiled down to “what standard must be applied to corroborating evidence.” Id. According to Judge Andrews, defendants essentially argued that “the corroborating evidence itself must contain an enabling disclosure.” Id. at 2. Judge Andrews found, however, that courts have applied the “rule of reason,” which was “developed . . . to ease the requirement of corroboration.” Id. at 3. Judge explained that “if corroborating documents were themselves enabling disclosures, then conception would never need to be proved via inventor testimony, as the documents would speak for themselves.” Id. Judge Andrews concluded that the “real issue is whether the corroborating documents provide enough evidence for the jury to believe this testimony, not whether the documents themselves are enabling disclosures.” Id.

With respect to the written description issue, defendants asserted, among other things, that the expert “failed to address each and every claim element, and identify written description support for them in the provisional and parent application.” Id. at 4. In rebuttal, plaintiff argued that because “the PTO awarded a priority date of September 3, 1996, it is the Defendants’ burden to disprove entitlement to that priority date by clear and convincing evidence.” Id. Addressing plaintiff’s rebuttal, Judge Andrews explained that priority is awarded on a claim-by-claim basis, and pointed out that the Examiner from the PTO only made a priority finding with respect to claim 1. Id. Thus, according to Judge Andrews, plaintiff was still required to prove entitlement to its alleged priority date with respect to the remainder of the claims at issue. Id. Judge Andrews found that plaintiff’s expert did not show where each and every claim element found support in the alleged priority application for the remainder of the claims. Id. at 5. On the other hand, Judge Andrews found that defendants’ experts contested only specific elements, and plaintiff’s expert should therefore not be faulted for “failing to address apparent nonissues.” Id. at 5-6. Judge Andrews concluded that if plaintiff’s expert “needs to supplement his reports on the non-controversial elements, the parties should promptly meet and confer, and, if they cannot come to an agreement, file letters outlining their problem(s).” Id. at 6.

Turning to the claim construction issue, Judge Andrews concluded that defendants’ argument that the expert failed to apply the Court’s claim construction was "merely a repackaging of Defendants' summary judgment arguments and is not properly considered in a Daubert motion. Accordingly, this argument will be dealt with in the Court’s ruling on the summary judgment motions.” Id. at 6.

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January 23, 2014

Magistrate Judge Schneider denies motion for attorneys’ fees without prejudice.

In a recent Order, Magistrate Judge Joel Schneider of the District of New Jersey, sitting by designation, denied a defendant’s motion for attorneys’ fees, filed after the defendant prevailed on summary judgment and the plaintiff noticed its appeal. Bayer CropScience AG, et al., v. Dow AgroSciences LLC, C.A. No. 12-256 (RMB/JS) (D. Del. Jan. 10, 2014). Given that the plaintiff’s appeal of the summary judgment order was pending, the Court recognized it could either rule on the defendant’s motion for fees, defer ruling until after the appeal, or deny the motion without prejudice to refile at a later date. It viewed the first option as inefficient in light of the U.S. Supreme Court’s anticipated June 2014 decision in Icon Health & Fitness, Inc. v. Octane Fitness, a decision the Court anticipated would help “define and clarify the standard the Court must use to decide whether this is an exceptional case.” The Court also “[saw] no benefit to indefinitely delaying a ruling on [the plaintiff’s] motion” pending the resolution of the appeal, because such a potentially lengthy delay could result in faded memories about the issues addressed in the motion, especially if any of the attorneys involved left their current law firms. The Court decided, therefore, that the best option was to deny the motion without prejudice to the defendant’s re-filing it within 20 days of the Supreme Court's issuance of its opinion in Octane Fitness.

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