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In a recent Memorandum Order, Magistrate Judge Christopher J. Burke denied defendant’s motion to stay pending resolution of defendant’s petition for inter partes review (“IPR”), with leave to renew the motion after the PTAB’s determination on whether to institute an IPR proceeding. Advanced Microscopy Inc. v. Carl Zeiss Microscopy, LLC, C.A. No. 15-516-LPS-CJB (D. Del. Feb. 11, 2016). Judge Burke noted “that this course-as opposed to a decision to grant a stay pending the PTAB’s ruling-is the better approach here.” Id. at 2.

First, Judge Burke explained that there is “good reason to believe that the PTAB’s decision will come before the parties have engaged in a large-scale expenditure of resources on document production or on claim construction-related activity.” Id. Judge Burke further explained that “denial of the instant motion without prejudice to renew will allow for a better, more fully developed record as to the ‘simplification of issues’ factor.” Id. at 3. In particular, “[i]f the PTAB does institute a review, the Court can examine the grounds upon which review has been granted (including which of the claims of the patent-in-suit would be the subject of that review), so as to determine the effect that the PTAB’s decision could have on simplifying this case.” Id.

Judge Burke explained that “as time has passed since the new IPR process was instituted, the Court has become less and less sure about the merit of granting a stay in favor of an IPR proceeding, when the PTAB has not even weighed in on whether to institute review.” Id. at 4. Judge Burke noted that “[a]s compared to the results from IPR institution decisions in 2013, more recent data suggests that review is being instituted in far fewer cases.” Id.

Judge Burke further noted that “the Court is . . . impacted by Chief Judge Stark’s views on this subject.” Id. at 5. Judge Burke first noted that “[i]n mid-2014, Chief Judge Stark issued ‘Revised Procedures for Managing Patent Cases.’” Id. Judge Burke reads that procedure in relevant part “as expressing Chief Judge Stark’s preference that, in the main, cases filed by a plaintiff should move forward.” Id. Judge Burke also noted that “in recent opinions, Chief Judge Stark has . . . stated that ‘[g]enerally, the ‘simplification’ issue does not cut in favor of granting a stay prior to the time the PTAB decides whether to grant the petition for inter partes review.’” Id.

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The U.S. District Court for the District of Delaware is seeking public comment on proposed revised local rules of practice and procedure.  The proposed amendments were recommended by the Lawyers Advisory Committee of the United States District Court for the District of Delaware, and approved by the Court.

A copy of the proposed rules may be accessed here.

Per the Court’s Public Notice, all comments and suggestions with respect to the Rule revisions should be forwarded to the Office of the Clerk at the addresses below, no later than April 1, 2016:

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Judge Andrews recently resolved several motions for summary judgment and to exclude evidence and testimony in the patent battle between EMC and PureStorage. Among these, Defendants PureStorage moved for summary judgment of invalidity of a patent-in-suit, and Plaintiff EMC responded with two declarations swearing behind the reference relied upon by Defendant. The Defendant then moved to strike these declarations and attached documents for having been disclosed too late. EMC Corp., et al. v. Pure Storage, Inc., C.A. No. 13-1985-RGA, Memo. Op. at 20 (D. Del. Feb. 11, 2016).

Judge Andrews ultimately determined that the evidence should not be stricken. In support of this conclusion, Judge Andrews found that the swearing behind evidence was “of critical importance to the issue of invalidity” and that there was “no reason to believe, at this point, that the trial will be disrupted if the declarations are not struck.” Id. at 23. Judge Andrews further found that there was no incurable prejudice to the Defendant because “aside from the [reference at issue,] all but one of Pure’s invalidity references predate March 2002,” so it had not shown prejudice “on the ground that, had it known earlier that EMC would assert a March 2002 conception date, it would have searched for prior art dated before March 2002.” Id. Moreover, Judge Andrews found no bad faith or willfulness, accepting as reasonable EMC’s explanation that the newly disclosed documents had been in the declarant’s possession, not EMC’s, and therefore EMC had not sought evidence of earlier conception and reduction to practice until they had received PureStorage’s expert report that fully described the relevant anticipation theory. Id. at 24-25.

In addition to other motions, Judge Andrews also addressed a motion to exclude expert opinions that were supposedly inconsistent with the Court’s claim construction order. Ultimately, His Honor found that “[w]hen a court does not construe a term or orders that ordinary meaning applies, expert testimony on the understanding of a skilled artisan is appropriate to assist the jury.” Thus most of the expert’s opinions were permissible with the exception of two parts of the expert’s opinions that took positions regarding claim scope contradictory to the Court’s recent supplemental claim construction order. Id.at 35-37.

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Judge Andrews recently issued a memorandum opinion addressing summary judgment motions in HSM Portfolio LLC, et al. v. Elpida Memory Inc., et al., C.A. No. 11-770-RGA (D. Del. Feb. 11, 2016).  The Court first granted the defendant’s motion for summary judgment of non-infringement of the plaintiff’s ‘853 patent, explaining that “[t]he patent requires . . . that for a product to infringe, it must satisfy the predetermined factor limitation, when the predetermined factor is calculated using Equation (37).”  The Court found “two independent reasons for concluding that the algebraically-reduced expression for K,” the calculation used by the plaintiff’s expert, “is not Equation (37).”  Summary judgment of literal infringement was therefore denied.  The Court also granted the defendant’s motion for summary judgment of non-infringement of the ‘853 patent under the doctrine of equivalents, finding that “[a]n equation that arrives at a scaling factor based on information that is derived from a completed circuit – though ideal for proving infringement – is not, as a matter of law, equivalent to an equation which utilizes prefabrication information to arrive at a predetermined factor.  This would read ‘predetermined’ out of the claims.”

The Court next considered the defendant’s motion for summary judgment of non-infringement of the ‘212 patent, directed to a clocked latch.  The Court explained that in its claim construction order, it held that the “clock input signal must have multiple pulses with intervals between those pulses.”  Here, though, the plaintiff failed to identify any evidence that the accused products had components “capable of receiving a periodic signal with a constant frequency used for synchronization,” so summary judgment of no literal infringement was granted.  The Court also found that the disclosure-dedication rule did not apply and could not be used to render a “logic signal” described in the specification unclaimed and therefore in the public domain.  The Court found that it was not clear that the “logic signal” was not, in fact, claimed, and moreover it was not clear from the specification that the “logic signal” was an alternative to the claimed “clock input signal.” Continue reading

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Magistrate Judge Sherry R. Fallon recently denied without prejudice a foreign defendant’s motion to dismiss for lack of personal jurisdiction.  Sony Corp. v. Pace PLC, et al., Civ. No. 15-288-SLR (D. Del. Feb. 12, 2016).  It was undisputed that the defendant, a United Kingdom corporation with its principal place of business in England, designed allegedly infringing digital cable and satellite television set-top box models, but that those models were manufactured by third parties outside the United States and shipped to ports outside of Delaware by the defendant’s subsidiary—a Delaware limited liability company with its principal place of business in Florida.  It was also undisputed that the defendant transferred title to allegedly infringing products outside of Delaware, and that the subsidiary sold the products to national cable providers including Comcast and DirecTV, which have Delaware customers.

The plaintiff argued that personal jurisdiction could be maintained over the foreign defendant under a “dual jurisdiction” or “steam of commerce” theory, which “implicates both subsections (c)(1) and (c)(4) of the Delaware long-arm statute. . . . Specifically, Sony argues that Pace Americas offers for sale the accused set-top boxes to cable and satellite service providers who Pace knew or should have known were reselling or providing those devices to customers in Delaware, demonstrating an intent to serve the United States market at large via its subsidiary.”  Judge Fallon acknowledge a split among the Court regarding whether the Delaware Supreme Court would recognize this theory of personal jurisdiction, but proceeded to analyze the theory on the basis that the Delaware Supreme Court had not yet overruled application of the theory.  Ultimately, while Judge Fallon found no evidence that the foreign defendant intended to exclude Delaware from its distribution in the United States, the plaintiff “failed to allege facts sufficient to satisfy the second prong of the analysis because there is no evidence on the record that the Accused Products were actually sold in Delaware.”  On that basis, Judge Fallon recommended denying the motion to dismiss, without prejudice, and allowing limited jurisdictional discovery on sales to Delaware customers that would satisfy the second prong of the analysis.

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In BASF Corporation v. Johnson Matthey Inc., C.A. No. 14-1204-SLR-SRF (D. Del. Feb. 9, 2016), Judge Sue L. Robinson concluded that certain disputed claim terms of U.S. Patent No. 8,524,185 were indefinite.

The terms “material composition A effective for catalyzing NH3 oxidation”, “material composition B effective to catalyze selective catalytic reduction (SCR) of NOx” , “material composition further effective to catalyze SCR of NOx”, and “a material composition B free from precious metal effective for catalyzing selective catalytic reduction (SCR) of NOx” was indefinite because

Each claim fails to limit the “material composition A” or the “material composition B” to any specific materials. Rather than explicitly defining [them], the claims utilize functional language, specifically “effective,” to purportedly define them. In other words, the claims recite a performance property the composition must display, rather than its actual composition. Moreover, none of the claims recite a minimum level of function needed to meet this “effective” limitation nor a particular measurement method to determine whether a composition is “effective” enough to fall within the claims. Without such information, a person of ordinary skill in the art could not determine which materials are within the “material composition A” or “material composition B” limitation, and which are not.

Id. at 5. Furthermore, “a practically limitless number of materials exist that would ‘catalyze SCR of NOx . . . indicating that the claims, as written, fail to sufficiently identify the materials compositions.” Id. at 5 n.10.

The Court also construed the following terms:

monolithic catalyst substrate; and

an overcoat washcoat layer coated over a total length of the monolithic substrate from the inlet end to the outlet end / an overcoat washcoat layer coated over a total length of the honeycomb substrate from the inlet end to the outlet end of the substrate.

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Judge Andrews recently denied a series of motions to “preclude untimely evidence from trial” in which a plaintiff argued that various prior art evidence was disclosed late and therefore could not be used at trial. Judge Andrews first found that certain references which were used only as background references, not to meet elements in obviousness combinations, should not be excluded because they had been disclosed in various ways, including as prior art for a different patent-in-suit or by an expert in a claim construction declaration. Additionally, the plaintiff’s expert had addressed these opportunities in his validity report. HSM Portfolio LLC, et al. v. Elpida Memory Inc., et al., C.A. No. 11-770-RGA, Memo. Or. at 2-4 (D. Del. Feb. 11, 2016).

Judge Andrews also refused to exclude declarations and letters directed to corroborating the dates of public availability of various prior art references. His Honor explained that “[b]ecause Plaintiffs were dilatory in their interrogatory responses pertaining to the prior art, Defendant did not know that Plaintiffs intended to argue that certain references did not qualify as prior art until after Defendant’s invalidity report was due” and characterized this situation as “a problem of Plaintiffs’ own making.” Id. at 4.

In the same order, Judge Andrews also granted the defendant’s motion to strike “a new infringement theory [advanced for the first time] in their reply [expert] report.” Indeed, even though the defendant had served a supplemental non-infringement report to address the new theory, Judge Andrews found that this did not cure the prejudice because “[if] Plaintiffs had timely disclosed this infringement theory, Defendant may have been able to assert different theories of non-infringement and invalidity.” Id. at 5-6.

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In Forest Laboratories, Inc., et al. v. Teva Pharmaceuticals USA, Inc., et al., C.A. No. 14-121-LPS, C.A. No. 14-200-LPS, C.A. No. 14-686-LPS (D. Del. Feb. 9, 2016), Chief Judge Leonard P. Stark recently issued in limine rulings in advance of the pretrial conference for an upcoming ANDA bench trial.  Defendants requested Judge Stark exclude one of Plaintiffs’ witnesses due to late identification as a trial witness.  Judge Stark denied the request but permitted Defendants a two-hour deposition of the witness “to mitigate any unfair surprise.”  Id. at 2.  Judge Stark granted Plaintiffs’ request to exclude a new non-infringement theory disclosed by Defendants on January 26, 2016.  Id.  Judge Stark disagreed with Defendants that the late disclosure “was justified as a response to arguments in an expert report filed . . . more than two months before Defendants disclosed their new theory, given the proximity to trial.”  Id.

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In a recent Report and Recommendation, Magistrate Judge Christopher J. Burke considered defendants’ motions under FRCP 12(b)(6) and 12(c), which argued that all claims of plaintiff’s U.S. Patent No. 8,271,974 (the “’974 patent”) are directed to non-patent eligible subject matter under 35 U.S.C. § 101. Kaavo Inc. v. Cognizant Technology Solutions Corp., C.A. Nos 14-1192, 14-1193-LPS-CJB (D. Del. Feb. 5, 2016). The ’974 patent is entitled “Cloud Computing Lifecycle Management for N-tier Applications,” and according to its Abstract, relates to “[m]ethods, devices, and systems for management of a cloud computing environment for use by a software application.” Id. at 2.

Judge Burke first examined independent claim 1 of the ’974 patent, and recommend that defendants’ motions be granted with respect to that claim. Under the first step of Alice, Judge Burke concluded that claim 1 was directed to the abstract idea of “setting up and managing a cloud computing environment,” which Judge Burke found has “no particular concrete or tangible form” and is “devoid of a concrete or tangible application.” Id. at 13. Judge Burke also concluded that claim 1 lacked an inventive concept under the second step of Alice, finding that “claim 1 lacks the requisite element or combination of elements that would be sufficient to ensure that the claim amounts to something more than the abstract idea of ‘setting up and managing a cloud computing environment[.]’” Id. at 18. Judge Burke explained that claim 1, “on its face, does not appear to specify any meaningful, particularized technological or procedural limitations on that idea.” Id. Stated differently, “the words of claim 1 appear to contain almost ‘no restriction on how’ the claim’s six ‘determining,’ ‘sending’ or ‘receiving’ steps are to be accomplished; the claim simply appears to ‘describe[] the [sought-after] effect or result’ of the steps.” Id.

Judge Burke found that claim 1 adequately represented the remaining independent claims at issue, and concluded that those remaining independent claims were similarly directed to patent-ineligible subject matter. Id. at 32. Accordingly, Judge Burke recommended that defendants’ motions regarding the remaining independent claims be granted.

With one exception, Judge Burke recommended that defendants’ motions regarding the dependent claims at issue be denied without prejudice. Judge Burke reasoned that “[t]he Court is not prepared to take the significant step of finding such claims ineligible when they are addressed in such a cursory manner by the movant in the first instance.” Id.

UPDATE: On March 31, 2016, Chief Judge Leonard P. Stark adopted Judge Burke’s Report and Recommendation in full.

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In a recent Order, Judge Richard G. Andrews denied in part defendant’s motion to redact a hearing transcript. M2M Solutions LLC v. Motorola Solutions Inc., C.A. No. 12-33-RGA (D. Del. Feb. 2, 2016). Judge Andrews granted the motion with respect to portions of the transcript regarding profits, third party license agreement royalties, and the index, but denied the remainder of the motion. Judge Andrews was unpersuaded that the “disclosure of the other information will work any clearly defined and serious injury to [defendant].”

Judge Andrews’ decision was guided by Mosaid Tech Inc. v. LSI Corp., 878 F. Supp. 2d 503 (D. Del. 2012) and the factors set forth in Pansy v. Borough of Stroudsburg, 23 F.3d 772 (3d Cir. 1994). Judge Andrews explained as follows:

Simply because the parties have designated the information as confidential, highly confidential, confidential – attorneys’ eyes only, etc., under a protective order is irrelevant to the present issue, that is, whether the information should be redacted from a judicial transcript. There is not much public interest in the information that is exchanged in discovery. Once, however, it is disclosed in a judicial proceedings, it is in the public interest to be able to understand the proceedings before a judge, and redaction of the transcript hinders that public interest. Nevertheless, there are things that might be appropriately sealed in a public proceeding, such as the pricing terms in license agreements, some other non-public financial information, trade secrets, and other proprietary technology. Information in a transcript may hint at some of these things without actually threatening any “clearly defined and serious injury.” Things that typically weigh against the necessity of sealing include that the information is old, or general, or already in the public record, and was relevant to the judicial proceeding. Further, if there is a need for redactions, the proposed redactions should be as narrow as possible.

Judge Andrews also noted that defendant had not “submitted an affidavit/declaration in support of its motion.”

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