In Interdigital Communication v. ZTE Corp., C.A. Nos. 13-009, 13-10-RGA (D. Del. Aug. 28, 2014), Judge Richard G. Andrews ruled on several motions for summary judgment filed by plaintiff and defendants. First, Judge Andrews addressed plaintiff’s motions that an asserted patent was not unenforceable due to inequitable conduct, and that the asserted claims of certain asserted patents were not invalid as anticipated, obvious, or for lack of enablement and written description. Id. at 3-6. Judge Andrews granted plaintiff’s motion regarding enablement, explaining that to demonstrate a lack of enablement, it is “necessary to show that one cannot practice the invention without undue experimentation,” and that defendants failed to “raise any evidence in their briefing” regarding undue experimentation. Id. at 5-6. Judge Andrews also granted plaintiff’s inequitable conduct summary judgment motion in part, explaining that while “there [was] a sufficient factual dispute as to the Siemens 004 reference,” the defendants did “not address the other five references.” Id. at 4. Accordingly, Judge Andrews found that defendants “waived their defense of inequitable conduct” as to those five references. Id. Judge Andrews denied plaintiff’s motion for summary judgment as to anticipation, obviousness, and lack of written description. Id. at 3-6. Judge Andrews also denied plaintiff’s Daubert motion. Id. at 8. Defendants had also filed summary judgment motions addressing various non-infringement and anticipation arguments. Id. at 6-7. Judge Andrews found a genuine issue of material fact to exist with respect to each of these issues and thus denied defendants’ motions. Id.
Judge Richard G. Andrews recently considered GeoTag, Inc.’s motion to dismiss Microsoft and Google’s (“Plaintiffs”) amended complaint for lack of subject matter jurisdiction. Microsoft Corp. et al. v GeoTag, Inc., C.A. No. 11-175-RGA (D. Del. Aug. 29, 2014). Judge Andrews considered an earlier motion on similar grounds but gave Plaintiffs leave to amend their complaint. GeoTag renewed its motion in opposition to Plaintiffs’ amended complaint. Id. at 1. This declaratory judgment action was filed by Plaintiffs in response to GeoTag’s suits filed in the Eastern District of Texas against Plaintiffs’ customers. Plaintiffs argued that the Court had subject matter jurisdiction because “‘GeoTag’s Texas lawsuits implied an assertion of both indirect and direct infringement against Google and Microsoft, and a live controversy therefore existed as to the Google and Microsoft products accused by GeoTag’s Texas lawsuits against their customers.'” Id. at 2. Under MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007), this implied assertion of infringement “created a justiciable dispute.” Id. at 3.
GeoTag disputed “Plaintiffs’ implied assertion of direct infringement,” arguing that it “‘would mean that the patentee made incorrect allegations of direct infringement against a customer that, unbeknownst to the patentee, would constitute implied assertions of direct infringement against the supplier.'” Id. Judge Andrew disagreed because, under 35 U.S.C. § 271, a customer and vendor can both directly infringe a patent based on the same conduct. Id. 3-4. Judge Andrews determined that subject matter jurisdiction was present because an express accusation need not occur, only whether there was “‘a reasonable potential that such a claim could be brought.'” Id. at 4. (quoting Microsoft Corp. v. DataTern, Inc., 755 F.3d 899, 905 (Fed. Cir. 2014)). Because “reasonable potential” existed, Judge Andrews denied GeoTag’s motion as to direct infringement. Judge Andrews also determined that subject matter jurisdiction existed based upon an implied assumption of induced infringement because, despite being aware of allegations against its customers, Google provided articles to customers on how to create store locators. Id. at 5. In Judge Andrews view, Plaintiffs’ actions “established a ‘reasonable potential’ GeoTag could have brought induced infringement claims.” Id.
Judge Richard G. Andrews recently issued a post-trial opinion in Novartis’s suit over the generic version of its Exelon® transdermal patch. Novartis Pharmaceuticals Corp., et al. v. Par Pharmaceutical, Inc., et al., C.A. No. 11-1077-RGA (D. Del. Aug. 29, 2014). Novartis alleged that Par’s Abbreviated New Drug Application (“ANDA”) for a “rivastigmine transdermal system” infringed its U.S. Patent Nos. 6,335,031 and 6,316,023. Id. at 1. After a two-day bench trial the Court determined that Novartis failed to prove that Par’s ANDA infringed the patents-in-suit. Id. at 2. Because defendant’s counterclaim of invalidity was “based upon a finding of infringement,” the Court did not reach the issue of invalidity. Id. at 2 n.5.
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Following a two day bench trial in Fresenius Kabi USA, LLC v. Dr. Reddy’s Laboratories Ltd. et al., C.A. Nos. 13-925, 13-1015-RGA (D. Del. Aug. 25, 2014), Judge Richard G. Andrews found that plaintiff failed to prove that defendants’ ANDA products infringe claims 1, 16, 36, an 37 of the patents-in-suit. Defendants certified that the only differences between plaintiff’s brand drug, Diprivan, and defendants’ ANDA products are the “antimicrobial agents” (i.e., “the preservatives”). Id. at 3. Additionally, plaintiff conceded that “there is no literal infringement, but claim[ed] that Defendants ANDA products infringe under the doctrine of equivalents.” Id. While plaintiff argued that “dipropofol” was the equivalent, Judge Andrews concluded that dipropofol was not actually the preservative in defendants’ ANDA products. Id. at 6-8. To this end, Judge Andrews noted that while plaintiff “was not under an obligation to prove that the ANDA products contained dipropofol, it would have been probative of whether the identified preservatives were responsible for antimicrobial activity.” Id. at 8 n.3. Judge Andrews also concluded that dipropofol does not function in substantially the same way as edetate, the preservative appearing in the asserted claims, and thus concluded that defendants’ ANDA products do not infringe. Id. at 8-11.
In Art+Com Innovationpool GmbH v. Google, Inc., C.A. No. 14-217-RGA (D. Del.), Judge Richard G. Andrews had previously denied plaintiff’s motion for judgment on the pleadings as to defendant’s laches defense. D.I. 33. The Court now denied plaintiff’s motion to certify the case for interlocutory appeal. Slip Op. (Aug. 26, 2014).
The Court explained that, even if the Federal Circuit accepted the Court’s certification (which was “seriously doubt[ful]”), the Court’s decision would either be affirmed or, if reversed, “the case would continue with only 91% of the asserted defenses.” Id. at 1. Therefore, the Court did not find the disputed issue “a controlling question of law,” nor would interlocutory appeal “materially advance the ultimate termination of the litigation.” Id.
Judge Richard G. Andrews recently considered defendants’ motion requesting the Court find certain terms of the patents-in-suit indefinite under 35 U.S.C. § 112. IpLearn, LLC v. Blackboard, Inc., et al., C.A. Nos. 11-876-RGA, 11-1026-RGA (D. Del. Aug. 26, 2014). Defendants argued that the claim terms at issue (“the user” and ” [considers/considering] at least a preference of the learner, other than the fact that the learner might prefer to learn the subject”) were indefinite under Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2124 (2014), because they did not provide “reasonable certainty” as to the scope of the invention. Id. at 2. Plaintiff, on the other hand, argued that the claim terms as construed by the Court were clear, and that the defendants’ did not meet their burden to present evidence to the Court “indicating whether a person of ordinary skill in the art (“POSITA”) at the time of the drafting of the claim would have reasonable certainty as to what the inventor claimed.” Id. Judge Andrews agreed:
This lack of evidence was highlighted at oral argument when the Defendants were asked on several occasions what evidence they had regarding a POSITA’s understanding of the claim, and on each occasion failed to directly address the Court’s question. In fact, in one of the rare instances where Counsel did provide the Court with citations to the record, the citations did not provide the evidence the Court was asking for. For example, when asked by the Court if a POSITA would understand the claim, Plaintiffs counsel directed the Court’s attention to page 5 of their July 3rd, 2014 reply brief. However, when the Court examined that page, along with the reference to paragraph 172 of Dr. Kris Jamsa’s report, neither made any reference to a POSITA. Dr. Jamsa knew what a POSITA was. Dr. Jamsa referred to a POSITA in making other invalidity arguments. Thus, he knew how to refer to a POSITA when he thought it appropriate to do so.
Id. at 3.
Judge Sue L. Robinson recently construed the following claim terms of U.S. Patent No. 6,037,319 titled “Water-soluble packets containing liquid cleaning concentrates”:
“[L]ess than 7.5 wt.% water”1 and “[less than 5.0 wt.% water]”
“Liquid cleaning concentrate”
“a polyvinyl alcohol film”
In TruePosition, Inc. v. Polaris Wireless, Inc., C.A. No. 12-646-RGA, Magistrate Judge Mary Pat Thynge had previously concluded that the means-plus-function term “means for detecting” was invalid as indefinite because a corresponding algorithm was not disclosed. Plaintiff filed an objection to this Report and Recommendation. Reviewing the Magistrate’s recommendation for claim construction de novo, Judge Richard G. Andrews concluded that the term was indeed indefinite, and thus adopted Judge Thynge’s Report and Recommendation. TruePosition, Inc. v. Polaris Wireless, Inc., C.A. No. 12-646-RGA (D. Del. Aug. 26, 2014).
Chief Judge Stark recently denied motions filed by defendant Toshiba for summary judgment of non-infringement and for spoliation sanctions in a case brought by plaintiff St. Clair Intellectual Property Consultants. St. Clair Intellectual Prop. Consultants, Inc. v. Toshiba Corp., et al., C.A. No. 09-354-LPS, Memo. Or. at 1 (D. Del. Aug. 27, 2014).
Judge Stark first denied summary judgment of non-infringement with respect to one patent because there was a genuine dispute of material fact where a “jury could reasonably credit the expert opinion of [the plaintiff’s expert] and, thereby, find infringement.” Id. at 3-4. The expert’s opinion included the possibility of meeting the claim limitations by the doctrine of equivalents, which he opined on at his deposition after reserving the right to do so in his report. Id. at 4.
Judge Stark next denied summary judgment of non-infringement of a second patent because there were genuine issues of material fact involved in each of St’ Clair’s theories of infringement. Among the issues that could not be resolved on summary judgment were whether a fixed clock rate must necessarily have a fixed bandwidth, where the parties had not previously asked for construction of the term “bandwidth” and whether there could be direct infringement where Toshiba had sold or offered to sell all of the components of a claimed system, even if the components were sold separately to be assembled by the customer. Id. at 5-7.
Finally, Judge Stark denied Toshiba’s motion for spoliation sanctions based on the destruction of documents by a prior owner of the patents-in-suit. As Judge Stark explained, Toshiba did not “put forth sufficient evidence to support a finding of bad faith,” as required for a finding of spoliation. Id. at 8-9. Rather, the evidence suggested that a “benign explanation [was] more plausible” because the records destroyed by the predecessor-in-interest to St. Clair were destroyed under a standard record retention policy. Id. The more recent destruction of backup data was “more complex” because it more likely contained relevant information, it occurred after St. Clair had already commenced litigation and notified the prior owner that it would be subject to document requests and subpoenas, and St. Clair appeared to have control over the documents. Id. at 9-10. But here too there was no evidence of bad faith in destruction of the backup data. Accordingly, Judge Stark explained that although the “nearly complete destruction of many of [the prior owner’s] historic files is worrying (and potentially negligent), the record does not support sanctioning St. Clair for spoliation.” Id. at 10.
In a recent memorandum order, Chief Judge Leonard P. Stark ruled on several pre-trial in limine motions and provided guidance on trial issues. Masimo Corp. v. Philips Elec. N. Am. Corp. et al., C.A. No. 09-80-LPS (D. Del. Aug. 27, 2014). Chief Judge Stark first denied a motion seeking to exclude evidence that a third party’s product received FDA clearance pursuant to §510k, finding such evidence relevant to whether the product is an acceptable alternative to the plaintiff’s own product, and not unfairly prejudicial. The Court also excluded, sua sponte, any evidence of reexamination of any of the patents-in-suit, finding that the risk of jury confusion and waste of the jury’s time outweighed any probative value such evidence may have.
Chief Judge Stark also provided some guidance on objections at trial to the scope of an expert’s testimony, and to the manner in which certain evidence could be presented during the jury trial, which was to precede a bench trial on equitable issues. First, the Court granted the parties’ request that the Court rule on objections to the scope of an expert’s testimony during trial, rather than simply preserving the objections for post-trial briefing. Chief Judge Stark explained that he “views the ‘scope’ of what has previously been disclosed to include anything that was disclosed by an expert in any expert report, any expert declaration, and/or any expert deposition testimony.” With respect to equitable issues, in this case one relating to laches, Chief Judge Stark made clear that “no evidence that is solely admissible with respect to the issues to be tried to the bench will be presented to the jury. Such evidence will be presented only to the bench. . . . The Court will rule at trial on objections to evidence that is arguably relevant both to issues being tried to the jury and to the bench.”