Delaware IP Law Blog

Following the pretrial conference in Sunovion Pharmaceuticals, Inc. v. Dey Pharma., L.P., et al., C.A. No. 06-113-LPS, Judge Stark recently ruled on a couple of issues relating to expert testimony, including granting in part defendants’ motion for reconsideration of the Court's prior ruling striking defendants’ expert report in its entirety as untimely. Id. at 1. In their motion for reconsideration, defendants argued that the Court had, in its prior ruling, “ignored the proper burden-shifting framework for proving anticipation” and erred in excluding their expert’s report as untimely, “resulting in manifest injustice.” Id. at 1. In addtion, defendants argued that the entirety of their expert’s report was timely and should not have been stricken by the Court, because, among other things, it appropriately responded to assertions made by plaintiff’s expert in his report. Id. at 2-3. The Court agreed in part, ruling that defendants’ expert report would not be stricken in its entirety, and that their expert would be permitted to testify at trial consistent with a certain, non-stricken portion of his report. Id. at 3. The Court noted that the non-stricken portion of the report from which testimony at trial would be permitted concerned an issue that defendants were not obligated to anticipate would be put in dispute or otherwise were not required to address in their opening report. Id. at 3. The Court made clear, however, that those portions of defendants’ expert report that were not “timely disclosed in the opening round of expert reports” and that “did not require advance knowledge of [plaintiff’s expert’s] report” would remain stricken. Id. at 3. In addition to ruling on defendants' motion for reconsideration, the Court reaffirmed that “disputes as to whether specific expert testimony is improper as beyond the scope of prior disclosures [would] have to await trial and, likely, post-trial motions.” Id. at 4. The Court cautioned that “where an expert’s trial testimony was not adequately disclosed in an expert’s report, a new trial may be warranted.” Id. at 5 (citation omitted). This practice is consistent with how Judge Stark has generally handled beyond the scope of expert report objections raised at trial in previous cases.

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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 denies 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.

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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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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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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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In Sunovion Pharmaceuticals Inc. v. Dey Pharm., L.P., Inc., C.A. No. 06-113-LPS (D. Del. Jan. 18, 2012), Judge Stark recently considered the issue of incorporation by reference in connection with Defendants’ allegation that the patents-in-suit were invalid for anticipation. Defendants contended that the prior art patent's description of additional material in another patent satisfied the requirements for incorporation by reference “because it adequately describe[d] with detailed particularity the specific material incorporated . . . and also clearly indicate[d] where that material [was] found (in the specification of the [other] patent).” Id. at 4. Plaintiff argued that the legal standard was not met “because the prior art patent [was] directed to an entirely different invention that merely refer[ed] to the [other] patent as background, and not as part of the substantive description of the invention.” Id. at 3-4 (internal quotations omitted). Judge Stark decided that, “[a]lthough a close question,” the prior art patent adequately incorporated by reference “the practical utility of the compounds described in the [other] patent[,]” and described them as “an integral aspect of the invention claimed in the [prior art] patent Id. at 4-5.

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In Vehicle IP, LLC v. AT&T Mobility LLC, et al., Civ. No. 09-1007-LPS (D. Del. Dec. 12, 2011), Judge Stark construed three claims of a patent entitled “Method and Apparatus for Determining an Expected Time of Arrival” which the Court explained was “directed at improving vehicle navigation systems through more efficient distribution of navigation functions between a mobile unit located in the vehicle and a remote dispatch, yielding a more accurate determination of expected time of arrival.” Memo Op. at 1. Finding that the patent claims and specification used the term “expected time of arrival” consistently to mean a time of day, and not an interval of time, Judge Stark construed the term to mean “time of day at which the vehicle is expected to arrive somewhere (and not remaining travel time).” Id. at 6-7. Judge Stark construed the term “way point(s),” again focusing on the claims and specification (and rejecting both parties’ proffer of extrinsic evidence), to mean “intermediate point(s) on the way to the final destination (and not the final destination itself).” Id. at 9. Finding in the specification an additional function-based limitation, Judge Stark construed the term “dispatch” to mean “a computer-based communication and processing system remotely located from the vehicle that manages and monitors vehicles.” Id. at 11. Finally, the Court adopted the parties’ agreed-upon construction of the term “determine in response to the vehicle position” to mean “determine based on the vehicle position and update as the vehicle position changes position throughout the trip.” Id. at 6 n.2.

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In Advanced Micro Devices, Inc. v. S3 Graphics Co., Ltd., C.A. No. 11-965-LPS (D. Del. Oct. 25, 2011) (public version released Nov. 8, 2011), Judge Stark denied the plaintiffs’ motion for a temporary restraining order and preliminary injunction which sought to enjoin the defendants from continuing to prosecute patent infringement claims in the ITC. The plaintiffs asserted that an injunction was needed because the ownership of the patent-in-suit was disputed, and the resolution of the ITC proceedings could irreparably harm the true owner of the patent. The Court denied the plaintiffs’ motion, finding that although it might have the discretionary authority to enjoin the defendants from continuing to prosecute their claims before the ITC, it would not do so under the circumstances because the ITC action “could hardly be more advanced, and the instant action is less than two weeks old; [and] Plaintiffs were aware of the ITC proceeding for some months before they attempted to intervene in it and waited months longer before asking a district court to halt the ITC proceedings[.]” Id. at 3. Judge Stark did, however, invite the parties to submit a scheduling order that would bifurcate and fast-track the Court’s consideration of case-dispositive motions and/or a trial on the merits of the patent ownership dispute, anticipating a resolution of that issue within approximately six months. Id. at 2.

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Plaintiff, Softview, sought to add claims against additional defendants concerning the same patents-in-suit within the time set forth in the case scheduling order. For this reason, and because the request satisfied the test for permissive joinder and will "promote judicial economy," the Court granted Softview's motion to amend. Softview LLC v. Apple Inc., et al., C.A. No. 10-389-LPS, Memo. Order (D. Del. Sept. 30, 2011). Any concerns about jury confusion, the Court noted, could be addressed by a request for a separate trial later in the case. Id. at 1-2.

In addition, Softview moved to dismiss and strike defendants' inequitable conduct defenses. The Court granted the motion finding that the defendants' original and proposed amended pleadings "fail to adequately allege scienter." Id. at 2. A theory based on a "mere disagreement with Softview's prosecution counsel as to whether certain amendments impermissibly added 'new matter'" along with other related concerns does not "give rise to a reasonable inference that prosecution counsel knew he was amending to add new matter and intended to deceive the PTO of this fact" Id. (emphasis in original).

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In St. Clair Intellectual Property Consultants, Inc. v. Apple Inc., C.A. No. 10-00982-LPS (D. Del. Sept. 30, 2011), Judge Stark denied "Defendant Research in Motion Ltd. and Research in Motion Corporation's Motion to Dismiss or, in the alternative, Motion for a More Definite Statement." Id. at 1. In its motion to dismiss, Research in Motion ("RIM") argued that the plaintiff's complaint "fails to satisfy the third required element of Form 18 because it fails to identify the specific RIM products (or class of products) that allegedly infringe any of the patents-in-suit." Id. at 4-5. Although the complaint "identifies the category of infringing products as 'smartphones and tablets' and elaborates by identifying specific models of RIM's smartphones and tablets that are allegedly infringing[,]" RIM claimed that the complaint was deficient because it "identifies 'nearly every product sold by RIM' and, thus, provides insufficient notice[.]" Id. at 5. Judge Stark rejected this argument, noting that the complaint "makes numerous references to the allegedly infringing product models and explicitly ties the RIM products to each recitation of infringement[.]" Id. at 6. In denying RIM's motion to dismiss, the court also rejected RIM's argument that the complaint "fails to allege that RIM makes, uses, or sells a device 'embodying the patent[,]'" stating that "the Complaint is not required to address how the infringing products use the patented technology." Id. at 6-7. Finally, the court "determined that St. Clair's Complaint provides sufficient notice of the infringement allegations[,]" and therefore the court denied RIM's motion in the alternative for a more definite statement. Id. at 7-8.

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