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Judge Richard G. Andrews recently considered the parties’ dispute over the terms of a Protective Order regarding source code print-outs.  Infinite Data LLC v. Intel Corp, et al., C.A. No. 14-391-RGA (D. Del. Aug. 8, 2014).  Defendants proposed that source code would be made available on a standalone computer at any of the offices of Defendants’ outside counsel, but that any print-outs be kept only at the office of Plaintiff’s counsel.  Id. Alternatively, Defendants proposed that Plaintiff could choose to use an escrow agent, as set forth in the D. Del. Default Standard for Access to Source Code.  Plaintiff objected arguing that it would be unfairly burdensome to require its experts to travel to review source code at another location and then travel again to review print-outs.  Judge Andrews disagreed finding that Defendants’ proposals would protect confidentiality without “unfairly burdening” Plaintiff.  Id.  Judge Andrews further held that if Plaintiff chose to use an escrow agent, any associated expenses would be shared by the parties.  Id.

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In a recent memorandum order, Judge Sue L. Robinson denied a defendant’s motion for reconsideration of an earlier denial of a motion for judgment on the pleadings.  Poly-America, L.P. v. API Indus., Inc., Civ. No. 134-693-SLR (D. Del. Aug. 6, 2014).  In its earlier motion for judgment on the pleadings, the defendant argued that its household product design was “plainly dissimilar” to the plaintiff’s design such that it could not, as a matter of law, infringe the plaintiff’s design patent.  The Court disagreed in a decision discussed here.  In its motion for reconsideration, the defendant argued that the “ordinary observer” to whom an accused design may appear “substantially the same” is not an observer of the finished product sold in a store, as the Court believed, but instead is “the industrial purchaser that uses that packaging component to assemble a finished retail product with content.”

The Court disagreed, relying on Supreme Court precedent from 1871 explaining that “ordinary observers of a patented design [are] ‘the principle purchasers of the articles to which designs have given novel appearances,’ i.e., ‘those who buy and use’ the article bearing the design in question.”  Id. at 2 (quoting Gorham Mfg. Co. v. White, 81 U.S. 511 (1871)).  The Court acknowledged that later cases in the Federal Circuit had not specifically addressed the factual scenario at issue here (where the design patent covers a box containing product that the consumer purchases based at least in part on the design of the retail presentation), but disagreed with the defendant that the previous ruling was erroneous as a matter of law.  Id. at 5.

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In Immersion Corporation v. HTC Corporation, C.A. No. 12-259-RGA (D. Del. Aug. 7, 2014), Judge Richard G. Andrews granted defendants’ motion to compel in part. Judge Andrews had ordered that Immersion Corporation (“Immersion”) provide a “supplemental privilege log regarding all documents in its control relating to” Stout Risius Ross, Inc. (“SRR”), the “financial consulting firm hired by Immersion’s counsel to conduct royalty and licensing analysis.” Id. at 1 & n.1. Considering whether the documents in question were protected by the attorney-client privilege or work product immunity, Judge Andrews noted that Immersion’s business “is the licensing of patents” and that “[a]ll of the requested documents were created by a financial consultant in aid of Immersion’s licensing program.” Id. at 4.

Judge Andrews concluded that several e-mails from an RSS advisor to Immersion’s counsel that included draft slides from SRR were not protected by the attorney-client privilege given that the documents were “primarily for business purposes as [they] provide[] factual information about licensing/royalty rates, the primary purpose of the Plaintiff’s business.” Id. at 4-5. Judge Andrews also concluded that other documents that included draft slides that were incorporated in the slides in the advisor’s e-mails were not protected by work product immunity given that the documents were “created for business purposes (licensing).” Id. at 5-6. Judge Andrews ordered that the foregoing documents be produced. Id. at 6.

Regarding a document that provided a summary of Immersion’s mobile licensing agreements, Judge Andrews noted that “the Court is not convinced that there is an evidentiary basis to conclude it is protected by work product.” Id. at 5. Judge Andrews concluded, however, that there was no need to produce this document, as “it merely factually summarizes license agreements that have already been produced.” Id.

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Chief Judge Stark, considering a defendant’s motion to transfer a patent infringement case to the Southern District of Ohio, recently issued a memorandum order granting the motion because all but one factor of the transfer analysis were either neutral or weighed in favor of transfer. Nalco Co. v. AP Tech Group Inc., C.A. No. 13-1063-LPS, Memo. Or. at 1 (D. Del. Aug. 8, 2014). Judge Stark explained that only the choice of forum of the plaintiff disfavored transfer and the “amount of deference to be given to [the plaintiff’s] choice of forum is somewhat reduced given that Delaware is not [the plaintiff’s] ‘home turf.’” Id. at 1-2 (citing In re Link_A_Media Devices Corp., 662 F.3d 1221, 1223 (Fed. Cir. 2011)). By contrast, the defendant’s choice of forum, relative convenience of the parties, location in which the claims arose, and location of books and records all weighed in favor of transfer. Id. at 2-3. Accordingly, Judge Stark found that the defendant had “met its heavy burden of demonstrating that this case should be transferred to the Southern District.” Id. at 3.

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Judge Richard G. Andrews recently issued a second supplemental claim construction order construing one disputed claim term.  Interdigital Commc’ns, Inc., et al., v. ZTE Corp., et al., C.A. No. 13-00009-RGA (D. Del. Aug. 8, 2014).  The Court previously issued a claim construction order that reserved judgment on the term “[re-]synchroniz[ed/ing] to the/a pilot signal” (discussed here, and original claim construction order discussed here).  In this second supplemental order, Judge Andrews construed the term to mean “establish a timing reference with a pilot signal.”

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Judge Richard Andrews recently issued his construction of several disputed claim terms of patents related to capturing images on mobile devices for document management, particularly processing checks. Mitek Sys., Inc. v. TIS America Inc., et al., C.A. No. 12-1208-RGS, Memo. Op. at 1 (D. Del. Aug. 6, 2014). Judge Andrews construed the following disputed terms:
– “smaller color image”
– “configured”
– “adapted to be recognized by at least one financial processing system”
– “entering the extracted financial content from identified the at least one field into a new financial document with at least one corresponding field”

Interestingly, with respect to the last term, which defendants asserted was insolubly ambiguous, Judge Andrews explained that “[t]he dispute here is that the term recites ‘from identified the,’ rather than ‘from the identified.’ Claim 9, on which claim 10 depends recites ‘from the identified.’ Clearly this term is a typo. It is within my power to correct it, and I therefore do so.” Id. at 4 (citing Novo Industries, L.P. v. Micro Molds Corp., 350 F.3d 1348 (Fed. Cir. 2003)).

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In Vehicle Interface Technologies, LLC v. Jaguar Land Rover North America, LLC, C. A. No. 14-339-RGA (D. Del. Aug. 6, 2014), Judge Richard G. Andrews recently denied defendant’s motion to dismiss plaintiff’s complaint.  In a prior action between the parties, plaintiff  had named additional accused products toward the close of fact discovery; this Court had granted defendant’s request to preclude these additional products from the suit, and on the same day plaintiff filed a new lawsuit including these additional accused products.  Id. at 1.  Defendant now moved to dismiss this second lawsuit, arguing plaintiff was barred by the doctrine of claim splitting and because the suit was a collateral attack on the Court’s previous order.  Id.

In denying the motion as to claim splitting, the Court pointed out that, in the prior suit, defendant “previously relied on the differences between the accused products” to argue plaintiff could not add them, whereas now it pointed out the “similarities between the Plaintiff’s description of the products in the initial and present suit.”  Id. at 2 (emphasis added).  The Court explained that “[t]his Court denied the Plaintiff’s attempt to amend its [infringement contentions] because the Defendant argued that functional differences between the previously accused product and the newly accused products would cause it undue prejudice.  The Defendant cannot have its cake and eat it too. The Court thus does not find the doctrine of claim splitting to bar the current claim against the Defendant.”  Id. at 2-3.

As to the collateral attack argument, the Court did not interpret cases cited by defendant as barring plaintiff’s suit because the cases were factually distinguishable.  See id. at 3-5.  Instead, “[t]he Court’s previous order precluding the Plaintiff from amending its [infringement contentions] was applicable to that case only. The cases cited by the Defendant involve situations where the second action would have the effect of reversing the court’s decision in previous cases. This is not the case here.  It therefore follows that this Court does not find the Plaintiff’s current action to be an impermissible collateral attack.”  Id. at 5.

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In Technology Innovations Associates v. Google, Inc., C.A. No. 13-0355-LPS (D. Del. Aug. 7, 2014), Chief Judge Leonard P. Stark recently construed a single term of the patents-in-suit – “sticky path” – having previously granted defendant’s request for early construction of this term.  The Court had agreed that this “proposed early, limited claim construction process would likely facilitate the just, speedy, and inexpensive determination of this action, even if the Court’s construction did not prove to be case dispositive.”  Id. at 1.  The Court adopted the plaintiff’s proposed construction, although the issue was a “close call.”  Id. at 6.

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Judge Gregory M. Sleet recently construed the following terms of U.S. Patent Nos. 7,587,508; 7,590,752; 7,779,138; 8,090,862; 8,099,513; and 8,266,315.  NonEnd Inventions N.V. v. Spotify USA Inc., C.A. Nos. 12-1041-GMS and 13-389-GMS (D. Del. Aug. 1, 2014).

“streaming (n.)”

“streaming (adj.)”

“streamed”

“network”

“peer-to-peer network”

“network of media players”

“peer system”

“a system for distributing media content”

“peer node”

“consumer node”

“device”

“production node”

“central node”

“autonomously”

“first communication channel”

“second communication channel”

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In a recent Oral Order, Chief Judge Leonard P. Stark addressed the parties’ protective order dispute and adopted defendant’s proposed prosecution bar, which extended to post-grant proceedings, including inter partes review. M/A-COM Technology Solutions Holdings Inc. v. Laird Technologies Inc., C.A. No. 14-181-LPS, Oral Order (D. Del. July 31, 2014).  Judge Stark explained that “[g]ood cause for the requested protection exists, at least to deal with the risk of the patentee strategically narrowing the scope of its claims based on (even inadvertently) information it learns from [defendant’s] highly confidential information.” Judge Stark further explained that “[p]atentee has provided no evidence that it will be unduly prejudiced by [defendant’s] proposed bar,” noting particularly that “there is no evidence that current litigation counsel has ever participated in prosecuting patents for Plaintiff.” Judge Stark concluded that the “balance of interests” favored defendant.  The final prosecution bar entered in the matter reads as follows:

Any attorney or agent who receives or reviews any information or documents designated as “Highly Confidential – Outside Attorney Eyes Only” and/or “Confidential” by any party other than his or her client shall not thereafter prosecute, supervise, or materially assist in the prosecution of any patent application, or otherwise in the amendment of any application and/or patent, related to the technology that is the subject matter of this lawsuit during the pendency of this case and for one year after the conclusion of this litigation. To avoid any doubt, for purposes of this paragraph, “prosecution” includes directly or indirectly drafting, amending, advising, or otherwise affecting the scope or maintenance of patent claims of the patent-in-suit, a divisional, a continuation, a continuation-in-part, a re-issue, an ex parte reexamination, a post-grant review, inter partes review, or a foreign counterpart related in any way to the patent-in-suit and/or related to the technology that is the subject matter of this lawsuit.

 See D.I. 176.

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