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Judge Robinson recently denied a motion to transfer to the District of Maryland filed by TWi Pharmaceuticals. As Judge Robinson described the motion, “TWi has not presented a typical scenario for transfer, that is, the case clearly could have been brought in the transferee district, and the transferee district is a more convenient one for the moving party. Instead, TWi skipped the first part of the § 1404(a) analysis altogether in its opening papers, concedes that the convenience factors are neutral, and urges the court to transfer based on the singular fact that the Maryland court had rendered a decision on a related patent and, thus, any forum but Maryland should be rejected as an exercise in forum shopping.” Par Pharmaceutical, Inc., et al. v. Breckenridge Pharmaceutical, Inc., et al., C.A. No. 15-486-SLR, Memo. Or. at 4-5 (D. Del. Sept. 10, 2015). Judge Robinson then “decline[d] to characterize a patentee’s choice of venue as ‘forum shopping’” particularly because “any negative connotations associated with ‘forum shopping should have dissipated when Congress enacted the Patent Pilot Program Act.” Id. at 5. Additionally, Her Honor found that “TWi glosses over the fact that the [patent-in-suit] has been asserted against both [defendants]; i.e. if TWi has its way, there most certainly will be judicial inefficiencies, with two courts trying two separate cases over the same patent, possibly reaching inconsistent results” and that the patents asserted in Delaware and Maryland, “although related, are different and the parties in suit are different.” Id. at 6. Thus, Judge Robinson denied the motion to transfer. In addition, Her Honor rejected a separate argument that the Court should dismiss one count of the complaint because the court “was divested of jurisdiction once the FDA approved TWi’s ANDA” because “TWi cited no authority in support of its argument, and the court is aware of none.” Id. at 7.
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In a series of related actions brought by Papst Licensing GmbH & Co. KG, Magistrate Judge Christopher J. Burke granted Defendants’ motions to transfer to the Northern District of California. E.g., Papst Licensing GMBH & Co. KG v. Lattice Semiconductor Corp., C.A. No. 14-1375-LPS-CJB (D. Del. Sept. 1, 2015). Plaintiff is a German corporation, while all Defendants are incorporated in Delaware but with no offices or employees in the state.  Id. at 2.

Analyzing the Jumara factors, the Court ultimately concluded that only the first factor (plaintiff’s forum preference) weighed against transfer. It observed that Defendants had “focus[ed] heavily” on the fact that Delaware was not Plaintiff’s “home turf,” but the Court explained that it “has previously concluded-after reviewing this Court’s prior case law discussing this ‘home turf’ issue-that whether Delaware is a plaintiffs ‘home turf,’ in and of itself, has no independent significance regarding the standard used in the overall Jumara balance of convenience analysis, nor to the analysis as to this first Jumara private interest factor. . . . Of course, if a plaintiff . . . has no ties to Delaware and is based overseas, those facts will certainly be relevant in the analysis of other Jumara factors.”  Id. at 8 n.3 (citations omitted).

While Defendants’ forum preference and where the claims arose “squarely favor[ed] transfer,” id. at 23, it concluded that the convenience of witnesses and location of books and records only slightly favored transfer, see id. at 14-18.  On the other hand, the convenience of the parties was ultimately neutral, given the fact that Plaintiff would need to travel far in either venue, that California may be slightly more convenient for Defendants, but because they were all incorporated in Delaware, they should not be meaningfully inconvenienced given their decision to incorporate there.  See id. at 12-14.

As to the public interest factors, practical considerations weighed in favor of transfer where litigating in California would avoid some added cost of retaining Delaware counsel. Id at 20. The local interests factor slightly favored transfer where “there [were] some number of persons (e.g., Defendants’ employees and third-party witnesses) located in the transferee district with a connection to this case, and none in Delaware, it can be said that the Northern District of California has some greater local interest in the case than does Delaware,” although Defendants had not shown that “this case has outsized resonance to the citizens of the transferee district, or that its outcome would significantly impact that district.” Id. at 21.

Ultimately, the Court concluded that “Defendants have demonstrated that the balance of convenience is strongly in their favor. To be sure, any one or two factors would not be enough, in and of themselves, to make a persuasive case for transfer. But here the cumulative effect of the evidence, relating to many different Jumara factors, demonstrates the far more significant connections that the Norther District of California has with the case (as compared to this District). And with little to counter-balance those many connections, other than the fact that Plaintiff chose this forum for suit, the Court concludes that transfer is appropriate.” Id. at 23.

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Judge Leonard P. Stark recently granted Defendants’ motion for judgment on the pleadings of invalidity of Plaintiff’s U.S. Patent No. 5,359,643 under 35 U.S.C. § 101. Gammino v. American Telephone & Telegraph Co., C.A. No. 12-666-LPS (D. Del. Sept. 8, 2015).  The method claims at issue “are generally directed to receiving a ‘telephone dialing digit’ and a phone number, receiving payment information for a call, and completing the call if payment is adequate.”  Id. at 2.  Applying the U.S. Supreme Court’s decisions in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012) and Alice Corp. Pty. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), Judge Stark found that the claims are directed to an abstract idea:

In sum, claim 1 amounts to nothing more than an arbitrary set of steps defining how a conventional telephone may be used to select a method of payment and complete a call, not unlike a user’s manual for any number of long-extant devices. Thus, the Court concludes that representative claim 1 of the ‘643 patent- and, therefore, all of its claims -is directed to an abstract idea. It is necessary, then, to proceed to the second step of the analysis.

Id. at 13.  Moreover, Judge Stark determined that additional claim limitations did not include an “inventive concept” to render the subject matter patent-eligible because “[t]he ‘643 patent’s claims are implemented using generic telephony technology that existed well before the priority date of the ‘643 patent.”  Id. 

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Judge Richard G. Andrews recently granted Defendants’ motion for judgment on the pleadings of invalidity of Plaintiff’s U.S. Patent No. 5,826,034 under 35 U.S.C. § 101.  Novo Transforma Techs., LLC v. Sprint Spectrum L.P., et al., C.A. No. 14-612-RGA (D. Del. Sept. 2, 2015).  Applying the U.S. Supreme Court’s decision in Alice Corp. Pty. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), Judge Andrews found that “[t]he ‘034 patent claims the abstract idea of ‘translation.’ The claims do not solve a problem specific to the realm of computer networks, and the additional claim limitations do not amount to an ‘inventive concept.’  Therefore, the asserted claims of the ‘034 patent are invalid.”  Id. at 4.  Plaintiff argued that the claimed invention was not an abstract idea because “it addresses a problem that ‘specifically arises in the context of communication networks due to the presence of incompatible devices and formats.’  The ‘034 specification explains that the claimed invention addresses the problem of  ‘incompatibility between different communication services employing different media for communicating information.'”  Id. at 5.    Judge Andrews disagreed noting that “[i]ncompatible communication types have existed since before the emergence of computers and the Internet” and translating “into a different media form . . . is no different than the function of a translator.”  Id. at 6.   Moreover, Judge Andrews determined that additional claim limitations did not “render the subject matter patent-eligible” because “the ‘034 patent contemplates the conversion and delivery of physical messages[, a] problem [] not unique to electronic devices.”  Id. at 8.

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In two recent orders, Judge Gregory M. Sleet granted motions to stay pending the outcome of inter partes review.  Joao Control & Monitoring Systems, LLC v. Volkswagen Group of Am. Inc., et al., Consol. C.A. No. 14-517-GMS (D. Del. Sept. 2, 2015);  In-Depth Test, LLC v. Maxim Integrated Products, Inc., C.A. No. 14-887-GMS (D. Del. Sept. 3, 2015) (and related cases).  In both cases, Judge Sleet found that a stay was warranted based on a balancing of the procedural posture and likelihood that a stay would simplify the litigation, the low risk of undue prejudice to the plaintiff resulting from a stay, and the interest in preserving judicial resources.

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Judge Sleet recently granted a defendant’s motion to dismiss for lack of Section 101 patentable subject matter. Plaintiff’s patented was directed toward promotional games, and Judge Sleet found that the claims were directed toward an abstract idea: “[T]he court finds that the concept of promotional games – ‘random drawing sweepstakes, instant win packaging, lotteries, collect & win and match & win contests’ – is an abstract idea. Though perhaps some would dispute whether such games are a ‘fundamental’ economic principle, there can be little doubt that they qualify as a ‘longstanding commercial practice’ and a ‘method of organizing human activity.’. . . Promotional games are marketing tools. Though a precise definition of ‘abstract idea’ is deliberately elusive, in the court’s view, these tools fit squarely within any understanding of the category.” Everglades Game Technologies, LLC v. Supercell, Inc., C.A. No. 14-643-GMS, Memo. at 6 (D. Del. Aug. 21, 2015). Judge Sleet further found that there was no inventive concept to transform the abstract idea into eligible subject matter because “each of the claims of the ‘050 Patent lack meaningful limitations on the abstract idea.” Id. at 7. The Court also noted that the Plaintiff had not taken a clear position on whether it believed the “machine or transformation test” supported its position, but the Court found that “[t]o the extent the machine-or-transformation test remains worthy of consideration, the court finds that it fails to support the ‘050 Patent’s validity.” Id. at 10-11.

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Chief Judge Stark recently issued two oral orders regarding motions to strike in the case of Greatbatch Ltd. v. AVX Corporation et al., C.A. No. 13-0723-LPS (D. Del. Aug. 17, 2015). First, Judge Stark granted a motion to strike an amended claim chart. Judge Stark found that the “late-filed” contentions included a “new infringement theory [that] is inconsistent with its previous theory, in that the previous theory was that a claim limitation could be found at least in one specific location, while its present theory is that the claim limitation is NOT found in that same specific location.” The Court concluded that because “Defendants relied on Plaintiff’s previous theory as the basis for their non-infringement and invalidity cases throughout fact discovery and for opening expert reports,” the “Defendants are likely to suffer unfair prejudice if Plaintiff’s late-filed contentions are not stricken, prejudice which could not be cured without dramatic change to the case schedule, which includes summary judgment motions being filed a week from now.”

Second, Judge Stark denied the Plaintiff’s motion to strike portions of the Defendant’s expert report. Plaintiff sought to have the expert’s opinion stricken because it relied on a document that had not previously been produced and because it was based on the expert’s observations of the Defendant’s manufacturing process. The Court explained: “Plaintiff has not shown that it has suffered, or is likely to suffer, any significant prejudice from Defendants’ belated production of a single document. Furthermore, regarding Defendants’ expert’s reliance on his personal observations of the manufacturing process, the record does not establish that Plaintiff asked to observe Defendants’ manufacturing process, and Defendants’ expert’s reference to the manufacturing process is not untimely. Whatever prejudice Plaintiff may have suffered, or may suffer in the future, does not justify the requested relief (i.e., striking the entirety of Defendants’ expert’s opinion for one of the accused products as it relates to the ‘779 patent).”

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Judge Robinson recently granted a motion by a third party to intervene and disqualify an expert. The expert in question had previously served as a testifying expert for Apotex, Inc. in prior litigation relating to Nasonex®. The later-filed litigation in Delaware does not involve Apotex but is related to Nasonex® and involves the same patent. Both the plaintiff Merck and the expert knew that the expert had previously served as an expert for Apotex, but neither gave notice of the new engagemet to Apotex because the expert believed that his engagement by Apotex “ended when that case ended.” Finding that the risk of disclosure of Apotex’s confidential information constituted a sufficient interest that may be affected by the litigation, Judge Robinson allowed Apotex to intervene. Merck Sharp & Dohme Corp. v. Teva Pharmaceuticals USA, Inc., et al., C.A. No. 14-874-SLR-SRF, Memo. Or. at 1-4 (D. Del. Sept. 3, 2015).

Having allowed the intervention, Judge Robinson next considered whether to grant Apotex’s motion to disqualify the expert. Judge Robinson found that the first two requirements for disqualification were indisputably met, i.e., “a confidential relationship existed between Apotex and [the expert], and confidential information was actually disclosed to [the expert].” Id. at 5. Judge Robinson further found that “Apotex’s confidential information is at a substantial risk of disclosures and/or adverse use, by virtue of the fact that Merck has chosen to pursue simultaneous cases against all three generic manufacturers – Teva, Amneal, and Apotex – regarding the [same] patent. In this regard, common sense dictates that generic products (even pharmaceutical generic products) cannot be so dissimilar as to completely alleviate the natural instinct to draw upon past knowledge to solve even new problems, leading to inadvertent use if not disclosure.” This was particularly true because the expert would presumably change positions from the prior litigation, in which he found no infringement, to the Delaware litigation, in which he presumably would find infringement – a “change in position [that] is relevant fodder for discovery, and puts Apotex’s confidential information at risk.” Id. at 5-7. Accordingly, Judge Robinson found that disqualification of the expert was appropriate.

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In a recent memorandum opinion, Chief Judge Leonard P. Stark construed claim terms from U.S. Patent No. 5,755,725, entitled “Computer-Assisted Microsurgery Methods and Equipment.”  Sarif Biomedical LLC v. Brainlab, Inc., et al., C.A. No. 13-846-LPS (D. Del. Aug. 26, 2015).  Of note, Chief Judge Stark found that language in the preamble of a claim was limiting because it provided antecedent basis for a term appearing in other claim limitations.  Specifically, the preamble to claim 1 recited “[a] computer-assisted microsurgery installation, comprising . . .” and the word “microsurgery” was not otherwise referenced in the claims, nor described in the specification.  The Court agreed with the defendants that the preamble must be limiting because “it provides the antecedent basis for the term ‘the tool,’ which appears later in limitations . . . of the same claim 1.”  Id. at 6 (“These later references to ‘the tool’ refer to a microsurgical tool . . . .”).

Chief Judge Stark found, respect to another disputed claim term, that “the presumption against means-plus-function claiming in the absence of the word ‘means’ has been overcome.”  Id. at 13.  At issue was a claim reciting “a computer adapted to: . . . control position and displacements of the tool as a function of control signals originating from a control unit, wherein the fixed reference frame Rc is independent of the patent reference frame Rp and of the image reference frame Ri.”  The Court explained that the “term, and the entirety of the intrinsic (and extrinsic) evidence, fail to recite sufficiently definite structure to accomplish the function of ‘control position and displacements of the tool as a function of control signals originating from a control unit.’”  Id.  The Court therefore found that the term lacked sufficient disclosure of structure because “there is no disclosure as to how the computer would perform this function. . . . The patent provides no guidance as to how the computer would operate, other than the general assertion that it would run ‘specialized software.’”  Id. at 14-15.

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Judge Andrews recently granted a motion for summary judgment of invalidity of U.S. Patent No. 7,156,717, which relates to a finishing method for semiconductors. The crucial threshold question presented by the motion was whether the asserted prior art reference adequately incorporated by reference another piece of art. The asserted art, Sun, stated the following about the incorporated art, Litvak:

This [invention] is an improvement and expansion of the invention described in allowed U.S. patent application Ser. No. 08/122,207 of Herbert E. Litvak, filed Sep. 16, 1993, now U.S. Pat. No. 5,499,733. This earlier application is being expressly incorporated herein by this reference, and is referred to hereinafter as the “Prior Application.”

Semcon Tech, LLC v. Micron Tech., Inc., C.A. No. 12-532-RGA, Memo. Op. at 6-7 (D. Del. Aug. 17, 2015). Finding that this was an incorporation by reference, Judge Andrews explained “[i]t is hard to imagine what is required to incorporate something by reference if stating that it is ‘expressly incorporated herein by this reference’ does not suffice.” Id.

The plaintiff’s argument that the incorporation was insufficient was based on the alleged requirement that an incorporation “specify what particular material it is incorporating and where it may be found.” See Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000). Judge Andrews rejected this argument, relying instead on Ultradent Prods., Inc. v. Life-Like Cosmetics, Inc., 127 F.3d 1065, 1069 (Fed. Cir. 1997), which “accepted that one patent could incorporate another patent by reference and together be one piece of art for purposes of anticipation.” Id.

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