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.
Chief Judge Stark recently denied a defendant’s motion for a continuance of trial or bifurcation of certain issues resulting from the defendant’s late production of core technical documents. Greatbatch Ltd. v. AVX Corp., C.A. No. 13-723-LPS (D. Del. Jan. 8, 2016). The Court previously sanctioned the defendant for its late production, on the eve of trial, of approximately 170 documents relating to one of its allegedly infringing products. In that order, the Court explained that it “would be unfairly prejudicial to require Greatbatch to prove at trial infringement of the ‘715 patent by a product for which AVX has only now produced core technical documents.” In response to the defendant’s subsequent request for a continuance or bifurcation, Chief Judge Stark explained: “[t]he timing of AVX’s production of core technical documents was such that seemingly the only practical options were to reward AVX by a continuance or bifurcation or diversion of Greatbatch’s pretrial resources to a new issue, or instead to proceed to trial according to the schedule in place and resolve the issue to which the late production related against AVX. AVX will have an opportunity to ask the Court to reconsider this analysis and conclusion, but it will be at a time that does not cause further disruption to the long-scheduled trial.”
Magistrate Judge Burke recently granted several patent infringement defendants’ motions to stay pending resolution of their motions to dismiss for lack of patentable subject matter. Kaavo Inc. v. Amazon.com Inc., et al., C.A. No. 15-638-LPS-CJB, Memo. Or. at 5 (D. Del. Jan. 4, 2016).
Judge Burke explained that the case was somewhat similar to the Court’s decision to stay in other cases filed by the Plaintiff, referred to here as “Kaavo I.” In Kaavo I, a single patent was at issue and was subject to a motion to dismiss pursuant to § 101, leading Judge Burke to order a stay pending resolution of that motion to dismiss. In the instant case, a single patent—a child of the patent at issue in Kaavo I—was at issue and was subject to a motion to dismiss pursuant to § 101. Id. at 2-3.
Accordingly, Judge Burke found that “the record is little different than that in Kaavo I. If anything, the facts are slightly more favorable for Defendants than they were at the time of the Court’s decision in Kaavo I.” Id. Indeed, the Court “agrees with Defendants that there could be some inefficiency in ‘allow[ing] this case to proceed where a related case involving the parent patent and the same parties is stayed.’” Id. at 3. Accordingly, a stay would tend to simplify the issues in the case. Additionally, the early stage of the case—a case management conference had not yet been held—favored a stay. Id. at 3-4. Finally, the Plaintiff’s failure to demonstrate direct competition between the parties, and the Defendants’ declarations confirming that they were unaware of direct competition with Plaintiff, weighed against a finding of undue prejudice. Id. at 4-5.
In a recent Memorandum Opinion, Chief Judge Leonard P. Stark issued a claim construction construing claim terms across seven of the eight patents-in-suit in this ANDA litigation. Forest Laboratories, Inc. et al. v. Teva Pharmaceuticals USA, Inc. et al., C.A. Nos. 14-121, 14-200, 14-508, 14-686, 14-1058, 14-1271-LPS (D. Del. Jan. 5, 2016). Among the terms construed, Judge Stark found two terms indefinite. First, Judge Stark found the term “change in memantine concentration as a function of time (dC/dT) that is less than 50% that of an immediate release dosage form comprising the same dose of memantine as the composition” indefinite. Judge Stark explained that “[a]s indicated in the claims, memantine concentration must be observed ‘as measured in a single-dose human PK study.’” Id. at 16. Judge Stark found that “[a] person of ordinary skill in the art would not know, with reasonable certainty, which ‘human PK study’ on which to rely when considering whether a formulation of memantine might infringe the [patents at issue].” Id. Judge Stark explained that the patents at issue “provide no guidance, other than non-limiting examples, regarding which concentration profile (or set of profiles) should be used when assessing potential infringement.” Id. at 16-17. Indeed, as Judge Stark noted, “[t]he specifications of the [patents at issue] do not disclose any human PK study. Rather, they disclose memantine concentration data generated from computer simulations.” Id. at 17. Judge Stark also found the term “change in plasma concentration as a function of time (dC/dT) in a defined time period of 0 to 6 hours after administration … that is less than about 50% of the dC/dT provided by the same quantity of an immediate release form of memantine in said defined time period” indefinite for the same reasons discussed above with respect to the “memantine concentration…” term. Id. at 20. Specifically, “the ‘human PK study’ limitation (which is present in all of the claims containing this term) does not give a POSA the required ‘reasonable certainty.’” Id. at 20.
In Vehicle Interface Technologies, LLC v. Jaguar Land Rover North America, LLC, C.A. Nos. 12-1285-RGA & 14-339-RGA (D. Del. Dec. 28, 2016), Judge Richard G. Andrews concluded that the case was exceptional, but requested additional information from the parties in order to assess the appropriate time period for calculating fees.
The Court concluded that Plaintiffs’ attempt to assert seven additional products at the close of fact discovery supported a finding that the case was exceptional due to improperly motivated litigation conduct, given that the new contentions were largely based on public information that had long been available to Plaintiffs prior to their assertion of the additional products. Id. at 4-5. The Court also found that a portion of plaintiffs’ claim construction position, in their opposition to Defendants’ motion for summary judgment of anticipation based on a certain reference, had been objectively baseless, which also supported an exceptional case finding. See id. at 5-6.
Having found the case exceptional, the Court then determined that Defendants should be awarded fees from “the date [Plaintiffs] had full notice that its case was objectively baseless in light of” that same anticipatory reference, which had been disclosed in Defendants’ initial invalidity contentions. Id. at 9. The Court concluded that, until that time, there was a reasonable basis for Plaintiffs to pursue the case. But the Court requested additional information from the parties as to “whether the invalidity contentions narrowly focused on the [key reference] as anticipatory prior art or listed it among voluminous contentions,” in order for the Court to assess “at what point after [service of those contentions Plaintiffs] should have realized that its infringement claims were objectively baseless.” Id. at 9. The Court also requested that the parties “comment upon the significance of the fact that” earlier references in discovery to (what appeared to be) the key anticipatory art differed from the Court’s references in deciding summary judgment (i.e., earlier references were “2000 Mercedes ” whereas later references were “2001 Mercedes”). Id. at 9-10.
In a recent memorandum opinion, Judge Richard G. Andrews denied motions for summary judgment of non-infringement and invalidity, but granted a motion for summary judgment of no willful infringement and no infringement by products shipped abroad. M2M Solutions LLC v. Motorola Solutions, Inc., et al., C.A. No. 12-33-RGA (D. Del. Jan. 6, 2016). The plaintiff’s willfulness claim was based entirely on the post-litigation assertion of what the plaintiff characterized as objectively unreasonable defenses. Judge Andrews explained, “Plaintiff presents no evidence of pre-suit knowledge or conduct tending to establish objective recklessness. Plaintiff simply argues the merits of Defendants’ post-suit defenses. It has therefore not provided the necessary clear and convincing evidence to meet the objective first prong of Seagate.” Id. at 35. In a footnote, Judge Andrews added that “Defendants’ potentially dispositive claim construction arguments were reasonable, which in itself also prevents Plaintiff from proving the objective prong of Seagate.” Id. n. 14.
Judge Andrews also granted a motion for summary judgment that offers made in the United States for foreign sales of infringing products, absent evidence that those infringing products ended up being imported into the United States, could not be the basis for a finding of infringement. The Court explained that the Plaintiff “offers no evidence through which a jury could quantify, for purposes of calculating damages, how many of those products shipped abroad actually made it into the United States, if any. . . . Rather than providing an estimate of how many of these products enter the U.S. based on some reasonable projection grounded in facts, Plaintiff seeks to include all products shipped abroad in its damages calculation without proving that a single product shipped abroad actually made it into the U.S. . . . [B]ecause Plaintiff has failed to offer a shred of evidence that a single product shipped abroad, let alone all of them, made it into the U.S., the presumption against extraterritorial application of U.S. patent law must govern.” Id. at 47.