March 9, 2010

Judge Robinson: All Accenture v. Guidewire Motions Denied

Late last week, Judge Robinson issued a memorandum opinion in Accenture Global Services GMBH v. Guidewire Software Inc., C.A. No. 07-826-SLR (D. Del. Mar. 5, 2010) (in addition to the claim construction opinion that we posted about yesterday, and the order staying the case that we posted about just over a week ago). In this opinion, Judge Robinson denied several motions, including Defendant's motions for summary judgment on anticipation, obviousness, indefiniteness, non-infringement, and trade secret misappropriation, and Plaintiff's motion to strike Defendant's on-sale bar arguments and documents because they were not identified in its invalidity contentions during discovery.

Plaintiff's motion to strike was denied due to a lack of prejudice, and the fact that they had actual notice. Defendants' on-sale bar motion was denied because they provided no "clear and convincing evidence that [supposed on-sale bar product] met all of the limitations of an asserted claim," because it was missing some enabling portions of the specification, and "the (albeit few) missing enabling portions of the specification may have been added" after the critical date. Id. at 19.

Defendant's anticipation motion was denied because there are still issues of fact (as evidenced, according to the Court, by the fact that Defendant submitted over 5000 pages of material to the Court for consideration), and because "defendant's wholesale grouping of limitations [in its anticipation analysis] does not allow for the requisite demonstration of the manner in which the elements of the asserted preior art system are arranged." Id. at 38-41.

One final item of interest was how the Court, in denying Defendant's indefiniteness motion, used Defendant's own anticipation motion against it:

Notably, defendant has moved for summary judgment that claim 6 of the '284 patent is anticipated and obvious in view of the three prior art systems noted supra. Certainly defendant's assertion that the claim can be (positively) contrasted with the prior art is at odds with the assertion that the bounds of the claim are indeterminable.
Id. at 41-42 (emphasis added).

Accenture Global Services GMBH v. Guidewire Software Inc., C.A. No. 07-826-SLR (D. Del. Mar. 5, 2010)

March 9, 2010

E.D. Pa. Chief Judge Harvey Bartle: Claim Construction Op.

Eastern District of Pa. chief judge Harvey Bartle, sitting by designation, recently issued a claim construction memorandum opinion in Magsil Corp. v. Seagate Technology, C.A. No. 08-940 (D. Del. Mar. 1, 2010) (memo. op.). The following terms were construed:

  • "junction" - The Court held that due to the claims' use of "comprising," and the wording of the dependant claims, the use of "junction" did not mean that the claims were "limited to a three layer system of 'electrode, barrier and counter-electrode.'"
  • "a small magnitude of electromagnetic energy" - "that magnitude of electromagnetic energy which is sufficient to reverse the magnetization direction of the electrode or film layer with a lower coercive force (thereby achieving a change in resistance of at least 10%) but less than the amount necessary to reverse the magnetization direction of the electrode or film layer with a higher coercive force."
  • "Reverses at Least One of the Magnetization Directions" - "a turning or change of the magnetization direction of at least one of the electrodes or film layers, towards an opposing alignment, to such a degree as necessary to achieve at least a 10% change in resistance."
  • "A Change In the Resistance By at Least 10%" - 'a change in the resistance of at least 10% by using the formula ΔR/R = (R1 -R2)/R1, where ΔR/R is the percent change in 1 magnetization direction, R1 is the resistance of the junction 8 before the application of electromagnetic energy reverses at least one of the magnetization directions, and R2 is the resistance of the junction after the application of electromagnetic energy and the resultant reversal of at least one of the magnetization directions."
  • "At Room Temperature" - "a device which causes a change in resistance of at least 10% 'at room temperature' is a device capable of achieving such resistance without actively manipulating the temperature of the device, that is, that the device is capable of achieving a 10% change in resistance while operating within a room-temperature environment."
  • "Stepping Motor" - "an electric motor that is capable of moving only in small, discrete increments."
  • "Linearly Driving the Actuator" - "driving the actuator in a straight line"

Magsil Corp. v. Seagate Technology, C.A. No. 08-940 (D. Del. Mar. 1, 2010)

March 8, 2010

Judge Sue L. Robinson: Construing Insurance-System Patents

For those readers litigating insurance patents, district judge Sue L. Robinson recently released a claim-construction decision that interprets the terms of two insurance claims-processing systems. Among the terms construed, several stand out: "policy level," "claim level," "participant level," "event trigger," "field," and the phrase "obtaining a selection of fields of a first set of fields."

Accenture Global Services GMBH v. Guidewire Software Inc., C.A. No. 07-826-SLR (D. Del. Mar. 5, 2010) (Robinson, C.J.).

March 7, 2010

D. Del. Special Master: Protective-Order Compromise Settles Threat of Later Disclosure During Reexam and Other Proceedings

Negotiating protective orders can be a mundane affair. But the D. Del. litigator may want to take notice of an attorneys-eyes-only provision recently fashioned by a special master appointed by distict judge Sue L. Robinson. In his report and recommendation, the special master adopted the following passage to address the parties' concerns over handling the use of confidential information during the course of both reexamination and separate prosecutions:

"No attorney or other individual who has access to the other parties' [confidential information] . . . shall be involved thereafter in the prosecution or drafting of patent applications, claim language for patent applications, or arguments made in support of patent applications, excluding a patent in reexamination [involving an] . . . opposing party in this case, before the [PTO or foreign agencies], and proceedings related to [the patent-in-suit] . . . . [A]ny individual's participation in reexamination proceedings(s) also is expressly conditioned on his/her/its legal obligation, established by Order of the Court, not to use in any way an opposing party's [confidential information] to draft new claims, or to amend previously existing claims, through the reexamination process. The above conditions and exclusions continue for a period of one year following the final resolution [of the case]."

Apeldyn Corp. v. AU Optronics Corp., C.A. No. 08-568-SLR (D. Del. March 1, 2010) (Poppiti. S.M.).

March 5, 2010

Delaware IP Law Blog Author Selected to Participate in D. Del. Trial Seminar

Delaware IP Law Blog's own Karen Keller was selected yesterday to participate in the District of Delaware's inaugural Federal Trial Practice Seminar, an intensive eight-week instructional program created to hone the skills of the district's litigators. Open by invitation only, the seminar's weekly sessions will be attended by D. Del. judges and a group of program mentors, all of whom have extensive trial practice experience in the district court.

Congratulations Karen!

March 5, 2010

Chief Judge Sleet: Motion in Limine Exposes Pleading Deficiency

Preliminary motions, a staple of modern litigation, can sometimes expose larger problems in a party's case. In a recent decision, Chief Judge Gregory M. Sleet explained how a motion in limine over an expert report raised a different question: Did the plaintiff sufficiently identify its Section 271(f) infringement argument in time for trial?

Addressing this broader issue, the Court answered no, thereby eliminating a potential avenue for recovery:

"[T]he only bases [plaintiff] Edwards has asserted for its contention that CoreValve was on notice of such claims are a single sentence in a CoreValve expert report that contains what is, at most, an oblique reference to § 271(f); a formalistic recitation in the original complaint of all possible modes of infringement under § 271 that Edwards might later assert; and an assertion made long after the close of discovery that Edwards 'reserved its rights' to assert § 271(f)."

By doing so, the Court reinforced once again the practice in this district that general statements in pleadings more often than not cause disclosure problems further down the road.

Edwards Lifesciences AG v. CoreValve Inc., C.A. No. 08-91-GMS (D. Del. Feb. 26, 2010) (Sleet, C.J.).

March 4, 2010

Judge Farnan: Federal Circuit Rule 11 does not confer exclusive jurisdiction over the record on appeal

In Honeywell International Inc., et al. v. Nikon Corporation, et al., C.A. No. 04-1337-JJF (D. Del. Mar. 2, 2010), Judge Farnan considered defendants’ motion to unseal documents related to the Court’s decision granting summary judgment for invalidity. Id. at 1. Plaintiffs’ subsequently filed a motion to strike arguing that the Federal Circuit has exclusive jurisdiction over the motion due to plaintiffs’ pending appeal of the Court’s summary judgment opinion. Id. at 2. The Court ultimately denied both defendants’ and plaintiffs’ motions. Regarding jurisdiction, Judge Farnan determined that the motion to unseal documents was not an issue for appeal to the Federal Circuit and there was no danger that both courts would decide the same issue simultaneously. Id. at 4. Plaintiffs also argued that under Federal Circuit Rule 11, “the Federal Circuit has subject matter jurisdiction over the modification of protective orders as applied to the record on appeal.” Id. However, Judge Farnan noted that plaintiffs point to no case law indicating that Rule 11 applies to subject matter jurisdiction, and “by its plain language, Rule 11 is directed to ‘Forwarding the Record [on Appeal]. Accordingly, the Court does not read Rule 11 as establishing the Federal Circuit’s exclusive jurisdiction over the record on appeal. Id. at 5.

Honeywell International Inc., et al. v. Nikon Corporation, et al., C.A. No. 04-1337-JJF (D. Del. Mar. 2, 2010)

March 3, 2010

Judge Farnan: Failure to amend expert report to include opinion testified to at trial results in opinion being stricken from the record

In a post-trial evidentiary opinion of phase I of a bench trial in which defendants asserted patents against plaintiff, Judge Farnan recently determined that certain testimony should be excluded because plaintiff failed to make adequate disclosure pretrial. LG Display Co., Ltd., v. AU Optronics Corp., et al., C.A. 06-726-JJF (D. Del. Feb. 16, 2010). One of plaintiff’s experts offered opinions at trial that were not disclosed in prior expert reports or depositions. Id. at 1. Plaintiff argued that the testimony was proper rebuttal testimony and should be considered, despite not being disclosed until the third day of trial. Id. at 2. Judge Farnan disagreed because plaintiff’s expert had one month to review defendant’s expert before submitting his rebuttal report and then another month before his deposition was taken. Id. at 3. “[Defendant] AUO and its expert were given no advance notice of [plaintiff’s expert’s] testimony, and [plaintiff] made no attempt to amend its expert report prior to allowing [their expert] to take the stand and reveal what [plaintiff] acknowledges were undisclosed, new opinions. In the Court’s view, this is precisely the type of attorney conduct that is prohibited by the Federal Rules of Civil Procedure.” Id. at 4. Judge Farnan also precluded plaintiff from asserting a license defense because plaintiff failed to disclose the defense prior to trial, as required by Federal Rule of Civil Procedure 26(e). Id. at 8.

LG Display Co., Ltd., v. AU Optronics Corp., et al., C.A. 06-726-JJF (D. Del. Feb. 16, 2010)

March 3, 2010

Judge Sue L. Robinson: Case Stayed Pending Supreme Court Decision in Bilski

Judge Robinson in Accenture Global Services GMBH v. Guidewire Software, Inc., has decided to stay the case and deny defendant's motion for partial summary judgment of invalidity based on unpatentable subject matter until after the U.S. Supreme Court issues its ruling in the Bilski matter. C.A. No. 07-826-SLR, Memo. Order (D. Del. Feb. 26, 2010). The patents in this case relate to software used to perform insurance-related transactions and tasks. Id. at 2. The court stated that it "believes that the claims of the Accenture patents would not meet the 'transformation" prong' of the Federal Circuit's current machine or transformation test under Bilski as it currently stands. Id. at 3. However, the patents "raise substantial questions under the 'machine' prong." Id. Therefore, the court stated, "[i]nsofar as the Supreme Court may illuminate, or drastically alter, the framework of such a determination, the court believes that it is prudent to postpone the subject matter inquiry under 35 U.S.C. Section 101 until such time as a decision is issued in Bilski v. Doll." Id.

Accenture Global Services GMBH v. Guidewire Software, Inc., C.A. No. 07-826-SLR, Memo. Order (D. Del. Feb. 26, 2010).

February 26, 2010

Mary Pat Thynge: "Expected" Change in Federal Circuit Precedent Cannot Control JMOL Inquiry

A recent decision by Magistrate Judge Mary Pat Thynge puts to rest the notion that a district court will follow an anticipated change in the law when considering a post-verdict motion for judgment as a matter of law. In its decision, the Court acknowledged that, just last month, the Federal Circuit heard argument on whether Section 112 contains a written-description requirement distinct from the enablement requirement. The resulting "expected intervening change in the law," however, was insufficient to warrant immediate judicial recognition:

"It is the court's opinion that an expectation of change does not constitute an intervening change. . . . The court recognizes that the Federal Circuit has heard oral argument in Ariad Pharms., Inc. v. Eli Lilly & Co. and that the Federal Circuit's forthcoming decision in that case may alter the scope and purpose of the written description requirement. However, this court . . . is constrained to follow existing standards under Federal Circuit law, and Federal Circuit precedent 'clearly recognizes a separate written description requirement.' " (slip op. at 19)

Cordance Corp. v. Inc., C.A. No. 06-491-MPT (D. Del. Feb. 22, 2010) (Thynge, M.J.).