Chief Judge Stark recently issued a claim construction order involving both alleged means-plus-function claims and a limiting preamble. With regard to the term “cavity forming structure,” Judge Stark found that “the claim language is sufficiently definite and provides sufficient structure for the basic function of ‘forming a cavity’” and that “Defendants have not put forth any expert testimony or other evidence to support their contrary view.” Accordingly, Judge Stark found the term should not be construed under § 112 ¶ 6. Orthopoenix LLC v. Dfine Inc., et al., C.A. No. 13-1003-LPS, Memo. Or. at 2 (D. Del. Feb. 2, 2016). Judge Stark also considered whether the claim preamble “a device for insertion into a vertebral body to apply a force” was limiting and determined that it was because it “provide[s] the antecedent basis for at least the ‘for capable of compacting cancellous bone and moving fractured cortical bone’ referred to in the claim.” Id. at 7.
Magistrate Judge Christopher J. Burke recently resolved a protective order dispute between the parties as to whether plaintiff’s lead counsel could participate in “any post-grant proceedings in which they would be defending the patents-in-suit.” Toshiba Samsung Storage Technology Korea Corporation v. LG Electronics, Inc., et al., C.A. No. 15-691-LPS-CJB (D. Del. Feb. 4, 2016). Judge Burke agreed with defendant that because counsel overlapped between the litigation and the inter partes review proceedings, there was “some risk” that counsel “may ‘inadvertently rely on or be influenced by information they may learn as trial counsel during the course of litigation’ were they, for example, to later participate in the process of ‘strategically amending or surrendering claim scope’ during the IPR proceedings.” Id. at 3-4. But, such risk is “less pronounced” as compared to prosecution of a new patent. Id. at 4. On the other hand, plaintiff would be prejudiced because they have played “substantial roles” in litigation for plaintiff and “have already been representing [plaintiff] in IPR proceedings for approximately 6 months.” Id. at 5. Therefore, Judge Burke concluded that LG did not demonstrate that the potential risk of inadvertent disclosure would outweigh the harm to plaintiff to deny plaintiff the counsel of its choice. Id.
Judge Richard G. Andrews recently granted defendant Personalized Media Communication, LLC’s motion to dismiss for lack of personal jurisdiction. Funai Electric Co., Ltd. v. Personalized Media Communication, LLC, C.A. No. 15-558-RGA (D. Del. Jan. 29, 2016). Judge Andrews also vacated his prior order demanding defendant’s counsel show cause why their pro hac vice status should not be revoked for saving defendant’s better argument for its reply brief in support of its motion. In its motion, defendant argued that all of its operations “are conducted in either Texas or Virginia”; and that it has little to no connection to Delaware:
PMC does not regularly conduct business in Delaware. It is not registered to do business in Delaware, nor does it have a registered agent authorized for receipt of service in Delaware. PMC has no offices, employees, agents, real estate, or other assets in the state, nor does it own, operate, or manage any entity located or doing business in Delaware. In addition, PMC does not manufacture or sell any products in Delaware or to Delaware residents.
Id. at 2. Funai argued that personal jurisdiction was proper because defendant consented to jurisdiction, having “previously filed two actions in this court” involving patents that claim priority to the same patent applications as the patents-in-suit. Id. at 2-3. Judge Andrews disagreed because defendant’s prior suits were not brought against Funai. Id. at 5. In short, there was no “logical relationship” between the parties. Id. at 4 (“Under Delaware law, a party can be considered to have consented to jurisdiction by ‘instituting another, related suit’ that has some ‘logical relationship’ to the present suit.” (quoting Foster Wheeler Energy Corp. v. Metallgesellschaft AG, 1993 WL 669447, at *1, 4 (D. Del. Jan. 4, 1993)).
Funai also argued that specific jurisdiction was proper because defendant’s filing patent infringement actions in Delaware constitute transacting business in Delaware, and that the claims at issue here “arise out of” those earlier actions. Id. at 5-6. Again, Judge Andrews disagreed. Defendant’s prior actions “involved different parties and different patents” and a declaratory judgment plaintiff’s action only arises out of defendant’s prior filing of suit if those prior actions were filed to enforce the same patents at issue. Id. at 6-7.
Judge Sue L. Robinson recently found that a plaintiff’s complaint did not sufficiently demonstrate that the exercise of personal jurisdiction over Utah defendants would comport with Delaware’s long-arm statute or the Due Process Clause. The Court, however, did not grant the defendants’ motion to dismiss, but instead ordered jurisdictional discovery and left open the door to a renewed motion to dismiss following the completion of that discovery. DNA Genotek Inc. v. Spectrum DNA, et al., Civ. No. 15-661-SLR (D. Del. Feb. 4, 2016). The defendants were Utah entities, with their principal places of business in Utah, and were “leading provider[s] of products for biological sample collection, such as saliva collection devices . . . for DNA testing.” The defendants operated a website accessible in Delaware, but did not engage in any e-commerce through their website. Rather, defendants sold their DNA testing devices to Ancestry.com, which itself sold the devices nationwide, including in Delaware.
Judge Robinson explained that the “dual jurisdiction” or “stream of commerce” theory could be used to establish long-arm jurisdiction under 10 Del. C. § 3104(c)(1) or (c)(4), but added that the touchstone of the theory is “intent and purpose to serve the Delaware market.” In reviewing the facts as argued in the briefing, the Court ultimately found: “there is no indication of record that Spectrum has shipped or sold any of the accused products in Delaware, or that Spectrum has any control over what Ancestry does with the accused product once it is delivered to Ancestry.” The Court added, “[s]imply put, aside from delivering the accused product to Ancestry (outside Delaware) who, in turn, is responsible for placing the accused product into the stream of commerce, there is no persuasive evidence of ‘[a]dditional conduct . . . [to] indicate an intent or purpose [on the part of Spectrum] to serve the market’ in Delaware.” Id. at 8 (quoting Asahi Metal Indus. Co., Ltd. v. Superior Court of Calif., Solano Cty., 480 U.S. 102, 112 (1987)). Instead of dismissing the action, however, Judge Robinson ordered jurisdictional discovery on the defendants’ marketing and sales activities and the business relationship with Ancestry.com, and left open the door to a renewed motion under Rule 12(b)(2).
Chief Magistrate Judge Mary Pat Thynge recently issued a Report and Recommendation regarding defendant Amazon.com, Inc.’s motion for summary judgment of non-infringement. Hand Held Products, Inc. v. Amazon.com, Inc., et al., C.A. No. 12-768-RGA-MPT (D. Del. Jan. 21, 2016). The accused products at issue are Amazon mobile apps used by consumers to find and purchase Amazon products from their smartphones. Id. at 5. “One way the Amazon Apps can be used to find a product on Amazon is by scanning the barcode of the product.” Id. This barcode scanning ability is the feature accused of infringing the patent-in-suit. Id. Based on the Court’s claim construction, Amazon argued that “it is undisputed that a user of the Accused Apps cannot take the requisite snapshot by pressing a shutter button, setting a timer, or in any other manner.” Id. at 8 (emphasis in original). The Court agreed. “[T]he Accused Apps provide no mechanism by which a user selects an instant in time to capture a barcode image and, therefore, the Accused Apps do not infringe the asserted claims of the [patent-in-suit].” Id. (emphasis in original).
UPDATE: On March 31, 2016, Judge Andrews overruled the plaintiff’s objections to Chief Magistrate Judge Thynge’s report and recommendation, adopted it without modification, and granted summary judgment of non-infringement. Hand Held Products, Inc. v. Amazon.com, Inc., et al., C.A. No. 12-768-RGA-MPT (D. Del. Mar. 31, 2016)
Judge Robinson recently issued an interesting order addressing procedural issues touching on expert testimony in aid of claim construction and the timing of indefiniteness arguments. Judge Robinson had previously issued a claim construction order that found two key terms of the patents-in-suit indefinite. The plaintiff then submitted a motion for reconsideration of the claim construction order. “Although neither party [previously] identified the need for expert testimony in connection with claim construction,” Judge Robinson considered the argument that expert testimony was necessary. Her Honor concluded: “[g]iven the procedural posture of the case, that is, the claim limitations at issue apparently are dispositive . . . I conclude that the better course (in terms of process) is to withdraw my determination of indefiniteness (and any construction of the limitations at issue) pending completion of expert discovery. In connection with the anticipated summary judgment motion exercise, the court will again undertake construction of these limitations, at which point defendant may renew its argument that the limitations are indefinite.” Courtesy Products, LLC v. Hamilton Beach Brands, Inc., C.A. No. 13-2012-SLR, Memo. Or. at 1-2 (D. Del. Jan. 20, 2016).
Judge Sue L. Robinson recently granted a motion for judgment on the pleadings that U.S. Patent No. 5,612,527 is invalid under 35 U.S.C. § 101. Motivation Innovations, LLC v. Petsmart, Inc., No. 13-957-SLR (D. Del. Jan. 12, 2016). The ‘527 patent “disclose[d] and claim[ed] methods for redeeming discount offers by associating a machine-readable identification code, such as a barcode, with data identifying items to be offered at a discount.” Id. at 13. Judge Robinson discussed the evolution of cases since the Supreme Court’s Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S.Ct. 2347 (2014), noting:
the complete rejection of patentability for computer programs to the almost complete acceptance of such, to the current (apparent) requirements that the patent claims in suit (1) disclose a problem “necessarily rooted in computer technology,” and (2) claim a solution that (a) not only departs from the “routine and conventional” use of the technology, but (b) is sufficiently specific so as to negate the risk of pre-emption.
Id. at 10. As such, the Court’s analysis under § 101 is a difficult exercise. Id. at 11. Applying the Alice framework, Judge Robinson first determined that the claimed invention was directed to “the abstract idea of using coupons to provide discounts.” Id. at 16. Having found the claims were directed to a patent-ineligible concept, Judge Robinson turned to the next step in the Alice framework to determine whether additional limitations of the claims merely “recite conventional or routine activity or computer technology.” Id. Judge Robinson determined the claims were invalid because the additional limitations involved “‘routine and conventional’ computer technology to redeem discounts and track customer spending habits.” Id. at 17. Continue reading
Judge Sue L. Robinson recently denied a defendant’s motion to dismiss pursuant to 35 U.S.C. § 101 and to transfer to the District of Utah. C. R. Bard, Inc. v. AngioDynamics, Inc., Civ. No. 15-218-SLR (D. Del. Jan. 12, 2016). At issue were a patented medical procedure and systems relating to the infusion of fluids into a patient. Claim 1 of the ‘478 patent recited: “[a] method of performing a power injection procedure, comprising:
taking an x-ray of a subcutaneously implanted access port in a patient to determine whether the access port includes a radiographic feature indicating that the access port is suitable for flowing fluid at a rate of at least 1 milliliter per second through the access port, the access port defining one or more fluid reservoirs, each fluid reservoir accessible through a cannula-penetrable septum;
identifying the indicating radiographic feature on the x-ray; and
flowing a fluid through the access port at a rate of at least 1 milliliter per second.
The ‘417 and ‘460 patents were directed to injectable vascular access ports through which the ‘478 patent’s method could be implemented.
Judge Robinson agreed with the defendant that the ‘478 patent “involves looking at an x-ray to determine whether the access port carries an identification feature and identifying such feature.” Id. at 24. The Court added, “[w]hile the claim is limited by the presence of the access port, such limitation does not change the conclusion that the ‘determining’ step is an abstract idea.” Id. However, the Court denied the motion to dismiss under section 101 because “the parties’ arguments . . . conflate the §101 analysis with anticipation and obviousness arguments for which the court routinely allows full discovery and makes its decisions based on a full record.” Id. at 25.
Judge Robinson also denied the motion to transfer to the District of Utah, finding that the balance of the Jumara factors weighed against a transfer. Specifically, the Court explained that the “convenience of witnesses” factor is really not about inconvenience, but instead about unavailability. Id. at 5. In this, the defendant failed to indicate that any witness would be unwilling to attend trial in Delaware. The Court also rejected the argument that the plaintiff was forum shopping in order to avoid unfavorable rulings in the District of Utah, explaining that such a decision is no different than a plaintiff “choosing a venue that it believes to be more favorable to its claims for whatever reason.” Id. at 4.
In Videoshare, LLC v. Google Inc., C.A. No. 13-990-GMS; v. Vimeo, LLC, C.A. No. 13-992-GMS (D. Del. Jan. 6, 2016), Judge Gregory M. Sleet’s claim construction order included consideration of whether the steps in method claims had to be performed in their recited order (i.e., “converting, generating, and embedding”). Id. at 4 n.8. Defendants argued that, among other things, “the enumeration of steps as (b1 ) [re: converting], (b2) [re: generating], and (b3) [re: embedding] in claim 1 of the [patent-in-suit] implies an order.” Id. The Court agreed with Plaintiff that such “enumeration alone [was] not dispositive.” Id. Plaintiff argued that although “step (b2) must be completed before step (b3) . . . step (b1) can be performed at any point in the process — before, after, or simultaneously with steps (b2) or (b3).” Id. The Court agreed and concluded that “[t]he claim is not limited to its embodiments, and the only order required by the intrinsic record is for the generating step, (b2), to precede the embedding step, (b3).” Id.
Accordingly, the Court construed the disputed term “executing in response to the video, an automated function automatically performing each of” (i.e., the phrase that preceded steps (b1) through (b3) in the claim) to mean “in response to the receiving computer receiving the video file, carrying out computer instructions, without the need for intervention by a human operator, for each of the following operations (not necessarily in this order).” Id. at 4 (emphasis added).
Judge Andrews recently issued a claim construction opinion in a case between DuPont and Unifrax involving “composite flame barrier laminate for thermal and acoustic blankets used in aircraft structures.” E.I. DuPont de Nemours & Co. v. Unifrax I LLC, C.A. No. 14-1250-RGA, Memo. Op. at 2 (D. Del. Jan. 13, 2016). Among various disputed constructions, two issues are of particular interest. First, the parties disputed whether the term “laminate,” which appears in the preamble of claim 1 of the patent-in-suit, should be seen as limiting. Judge Andrews found that “laminate” is in fact limiting because it “gives ‘life, meaning, and vitality’ to the claim and imparts a structure that is not present in the recitation of the layers in the body of the claim. The patent repeatedly refers to the invention as a laminate [and the] claim body does not disclose a complete structure.” Id. at 4-6.
Second, the parties disputed whether the phrase “wherein the inorganic refractory layer of (iii) comprises platelets in an amount of 100% by weight with a dry areal weight of 15 to 50 gsm and a residual moisture content of no greater than 10 percent by weight” rendered the claim at issue indefinite. Judge Andrews decided that the indefiniteness dispute was not suitable for resolution at the claim construction stage: “That the claim admittedly does not set forth a requirement with respect to what percent of the refractory layer must constitute platelets or what the total weight of the layer is may make the claim broad. It does not, however, make the claim internally inconsistent. Additional evidence would be necessary to determine whether the claim informs one of skill in the art, with reasonable certainty, about the scope of the invention. Whether the disputed term renders the claim indefinite is therefore not amenable to resolution at this time.” Id. at 24-27.