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Judge Richard G. Andrews recently denied a plaintiff’s request for a single trial on infringement and invalidity against nine defendants. Eon Corp. IP Holdings LLC v. Flo TV Inc., C.A. No. 10-812-RGA (D. Del. Jan. 30, 2014). Judge Andrews explained that he did not think the nine defendants were properly joined in the first place, but in any event believed that it would be “completely unfair and prejudicial” and likely reversible error to force them to defend themselves in a single joint trial. The Court therefore scheduled nine separate five-day trials to be held between March and September of 2014.

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In a recent Order, Judge Richard G. Andrews denied plaintiff’s motion for entry of judgment with respect to the court’s claim construction. Buyerleverage Email Solutions, LLC v. SBC Internet Services, Inc., et al., C.A. No. 11-645-RGA (D. Del. Jan. 24, 2014). As Judge Andrews explained, the parties had requested that “about 14 terms” be construed, and Judge Andrews construed “three critical terms” from the 14. Id. at 1. Plaintiff thereafter determined that the constructions were “harmful enough to its case that it wanted to concede and go the Federal Circuit.” Id. The parties disagreed as to what Judge Andrews had decided and “(perhaps) what was necessary to put the case into a posture where the Federal Circuit would accept an appeal.” Id.

Judge Andrews noted that the Federal Circuit has “constitutional concerns about reviewing claim constructions.” Id. Judge Andrews further explained that in other cases parties “managed to stipulate to a final judgment” if one party thought the claim construction needed to be appealed. Id. He found that practice different from the instant case, where it seemed that plaintiff’s “proposal beg[ged] the Federal Circuit to remand the case for clarification.” Id. at 1-2. While acknowledging that the parties “think the most economical and/or efficient way to proceed is with a visit to the Court of Appeals,” Judge Andrews concluded that it would “not be responsible of [him] to enter any of the pending proposals for judgment” and denied plaintiff’s motion. Id. at 2.

In a footnote, Judge Andrews provided some guidance as to when he may enter final judgment: “If the parties can stipulate to a judgment, as indicated above, I would probably grant that. If Plaintiff submits a motion for entry of judgment that explicitly states that it will agree to dismiss its case if the Court of Appeals does not have a sufficient record on which to make its review, I would probably grant that too. Or I can extend the schedule, the parties can finish discovery, including resolution of pending discovery disputes, do expert reports, and summary judgment motions. There are probably other alternatives that the parties can come up with.” Id. at 2 n.4

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In a recent post-trial decision, Judge Renee Marie Bumb of the District of New Jersey, sitting by designation, considered the validity of Endo’s patented drug for the treatment of migraines. Endo Pharmaceuticals Inc. v. Mylan Pharmaceuticals Inc., Civ. No. 11-717 (RMB/KW) (D. Del. Jan. 28, 2014). Mylan previously had conceded that it infringed under the Court’s claim construction, with which Mylan disagreed. Accordingly, the trial focused on whether Endo’s patent was invalid as obvious, as anticipated, for lack of written description, or for failure to enable. The Court found no basis to find the patent invalid, and entered judgment in favor of Endo. During trial, Endo filed a terminal disclaimer relating to two other asserted patents, and unequivocally represented to the Court that it was abandoning its infringement claims with respect to those two patents. The Court found that Endo’s strategic decision had the effect of waiving those claims, and held that Endo is judicially estopped from asserting those patents against the defendant in the future.

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Judge Sue L. Robinson recently denied a defendant’s motion for leave to amend its answer. Round Rock Research v. Sandisk Corporation, C.A. No. 12-569-SLR (D. Del. Jan. 30, 2014). The Court explained that

defendant requests the opportunity to expand the scope of the [case] . . . by amending its answer to include monopolization and conspiracy claims. Although the motion is timely, in terms of case management, [the Court] conclude[s] that the complex issues identified in the motion should be litigated as a separate case, given the fact that the patent dispute to date has been sufficiently vexatious and [the Court] would likely bifurcate the antitrust and conspiracy claims from the patent claims in any event.

Id. at 1.

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In Immersion Corporation v. HTC Corporation, et al., C.A. No 12-259-RGA (D. Del. Jan. 21, 2014), Judge Richard G. Andrews ruled on three discovery disputes and, as a result, cancelled a scheduled hearing regarding the disputes. Id. at 1-2.

First, the Court ruled that it was overly burdensome to require defendants to respond to interrogatories that would require their “expert to review over four million source code files.” Id. at 1. Defendants had provided this source code to plaintiff and it was plaintiff’s burden to review it for potentially infringing sections. Id.

On the other hand, the Court ordered defendants to supplement another interrogatory response. “[A]s the Plaintiff is requesting information about [defendants’] own devices, interrogatory 60 is not unduly burdensome. Therefore, the Defendants are ordered to supplement their response to interrogatory 60 to include all accused devices.” Id.

Finally, while plaintiff argued that defendants had not produced all core technical documents, the Court concluded that “this dispute is not ripe as the parties are continuing to discuss this issue and have not followed the Court’s scheduling order which requires parties to meet and confer prior to bringing a discovery dispute to the Court’s attention.” Id. at 2.

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In Robocast, Inc. v. Apple, Inc., C.A. No. 11-235-RGA (D. Del. Jan. 28, 2014), Judge Richard G. Andrews granted defendant’s Daubert motions to exclude plaintiff’s expert on the subject of internet advertising as well as its damages expert. The internet advertising expert had relied on various internet sources to conclude that “Automated Browsing System (‘ABS’) advertising increases Click Through Rates (‘CTR’) an average of 33% over static advertising.” Id. at 1. The sources included sites that defendant claimed were “unreliable because they were either self-interested sales pitches or misread by” the expert. Id. at 2.

The Court concluded that this evidence was unreliable and had not been reliably applied. First, “[s]tatistical information in press releases and other promotional materials is of doubtful reliability.” Id. at 3. The Court pointed out that it “only ha[d] to consider that the [allegedly unreliable] sources have a wide spread (21% to 68%), which one would not expect if they were accurately measuring the same thing.” Id. at 3-4. The Court “also consider[d] that the ‘statistics’ have nothing approaching a sufficient explanation of what they are purporting to measure.” Id. at 4. As a result, the Court held that the expert’s testimony “was unreliable, and was unreliably applied” and it excluded the testimony. Id. Because the testimony of the internet advertising expert formed the foundation of the damages expert’s testimony, the Court also excluded the damages expert’s testimony. Id.

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In a recent memorandum opinion, Judge Richard G. Andrews issued an early claim construction ruling on one term the defendant convinced the Court could be dispositive of the plaintiff’s literal infringement case. Volcano Corp. v. St. Jude Medical, Cardiovascular and Ablation Technologies Division, Inc., et al., C.A. No. 13-687-RGA (D. Del. Jan. 24, 2014). The Court construed that term, “flexible element,” as meaning “a coil,” rejecting the defendant’s argument that the term is a means plus function limitation. Id. at 4. The Court explained that “[w]hen the ’648 patent specification discusses flexibility, it is always in reference to a coil. Because the Court believes that the patentees’ invention was limited to the use of a coil, the term ‘flexible element’ is construed accordingly.” Id. at 8. The Court recognized that it “is a well understood canon of patent law that limitations from the specification generally should not be imported into the claim language,” but noted that where, as here, “a disputed term has no previous meaning to those of ordinary skill in the prior art[,] its meaning, then, must be found [elsewhere] in the patent.” Id. (quoting Irdeto Access, Inc. v. Echostar Satellite Corp., 383 F.3d 1295, 1300 (Fed. Cir. 2004) (alterations in original) (internal quotation marks omitted). The defendant pointed to various dictionary definitions of “flexible element” to show that the term did have a previous meaning to those of ordinary skill in the prior art, but the Court rejected that argument, explaining that “these examples do not relate to the field of art at issue in this case—pressure-sensing guide wires.” Id. at 9.

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Judge Andrews recently issued an order addressing nine motions to dismiss pending across five cases filed by plaintiff Callwave Communications. Judge Andrews found that the complaints were sufficient under Form 18 and withstood motions to dismiss as to direct infringement claims even though they contained “a lot of surplus and in appropriate verbiage” that confused the types of claims that were asserted. Accordingly, Judge Andrews denied motions to dismiss the direct infringement claims. Callwave Comms. LLC v. AT&T Mobility LLC, et al., C.A. No. 12-1701-RGA to 12-1704-RGA, 12-1788-RGA, Order at 4-5 (D. Del. Jan. 28, 2014). Judge Andrews also considered motions to dismiss indirect infringement claims. The Court determined that the allegations of indirect infringement did not “contain sufficient factual information to be plausible” because “[i]ndirect infringement claims have to meet a more exacting standard than Form 18 . . . [and the complaints did] not allege any basis for knowledge prior to the filing of the original complaints . . . [were] quite conclusory as to whom the direct infringers are supposed to be . . . [and made it] possible, although not certain, that Plaintiff” intended to allege an intent to cause direct infringement. Thus, Judge Andrews granted the motions to dismiss indirect infringement claims but gave the plaintiff leave to file a second amended complaint including indirect infringement claims within two weeks. Id. at 5.

Turning to willful infringement, Judge Andrews’ order contains a few interesting points. Judge Andrews explained that “as early as 2008, Google had knowledge of one of the patents (the ‘970 patent) as evidenced by citation to the patent in multiple Information Disclosure Statements relating to Google patents.” His Honor found, however, that “[t]his solitary piece of information is insufficient to support an allegation of willfulness. Thus, I will grant all motions to strike willfulness claims.” Id. at 4.

Judge Andrews also explained that other than this Google-specific situation, “Plaintiff alleges willfulness on no basis other than the fact that an earlier version of the suit was served on a defendant before the present amended complaint was filed.” His full discussion of this point was as follows:

While I previously had allowed such a pleading, see Ip Venture Inc. v. Lenovo Group, Ltd, 2013 WL 126726 (D.Del. Jan. 8, 2013), I have now thought better of that decision. Other judges of this Court have split on this issue. See, e.g., Execware, LLC v. Staples, Inc., 2012 WL 6138340, at *7 (D.Del. Dec. 10, 2012) (Magistrate Judge Fallon) (dismissing willfulness allegation); Aeritas, LLC v. Alaska Air Group, Inc., 893 F.Supp.2d 680, 685 (D. Del. 2012) (Judge Robinson) (same); contra, Clouding IP, LLC v. Amazon. com, Inc., 2013 WL 2293452, at *4-5 (D.Del. May 24, 2013) (Judge Stark) (allowing willfulness allegation). Judge Stark stated that there was not much difference conceptually between sending a letter pre-suit and the filing of a complaint to put an alleged infringer on notice, and I agree with the logic of that statement. The pre-suit letter does, however, offer a benefit – the patent holder and the asserted infringer may exchange information, and the asserted infringer might then take a license, or the patent holder might learn of reasons why suit should not be filed. There is a benefit to society if the matter is resolved without a suit. Once a suit is filed, however, the only thing a willfulness allegation in an amended complaint does is allow the Plaintiff to raise the stakes. Given what the Federal Circuit has said about an injunction generally being the preferred remedy for post-filing “reckless” conduct, and recognizing that some plaintiffs- generally, non-competitors- may not be able to seek an injunction, it seems to me the better course is generally not to allow allegations of willfulness based solely on conduct post-dating the filing of the original complaint.

Id. at 3.

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Judge Richard G. Andrews recently granted stay to 19 of 21 defendants against whom Infinite Data LLC (“Infinite”) filed suit in several related actions. See, e.g., Infinite Data LLC v. Ebay Inc., C.A. No 12-1618 (et al.) (D. Del. Jan. 23, 2014). Mellanox Technologies (“Mellanox”) filed a declaratory judgment against Infinite, alleging noninfringement and invalidity of the patent Infinite is asserting against the 21 defendants. Mellanox has further alleged that “many” of the 21 defendants are “users and/or customers” of Mellanox’s technology, and “many” have requested indemnification from Mellanox. Id. at 1.

Judge Andrews explained that “theoretical reasons for staying ‘customer cases’ is the manufacturer is in a better position, and has a greater interest, in defending its product.” Id. at 3. He found that the “concept is a little more complicated here,” because, among other things, “the customers use the product, and perhaps modify it in doing so,” rather than simply reselling. Id. Nevertheless, Judge Andrews concluded that proceeding with the Mellanox case first could significantly simplify the issues and “advance the ball towards resolution of, at least, many of the cases.” Id. at 2-3. For example, Judge Andrews explained that “Mellanox knows its technology better than defendants” and is probably in a best position to “litigate issues of infringement and invalidity.” Id. at 2. Additionally, if the Mellanox action is fully litigated, it might “resolve infringement or invalidity issues decisively, or if in favor of [Infinite], in such a way that as a practical matter there are fewer issues remaining.” Id.

Judge Andrews explained, however, that “if I am going to force Infinite Data to forego chasing its preferred targets, Infinite Data ought to get something concrete out of it, which would also offer a better chance of locking in the simplification that could result from Mellanox going first.” Id. at 3. Thus, “defendants ought to get one shot at invalidity, and if they are willing to have Mellanox take that shot, then I believe that the balance tips in favor of granting stay.” Id. Specifically, Judge Andrews granted stay to 19 defendants, so long as they agreed to be bound by the final invalidity decision from the Mellanox case “to the extent it involves a Mellanox product, product feature, or product component at issue in the Mellanox declaratory judgment action.” See id. at 4-5. Judge Andrews denied stay for those defendants who did not agree to be bound by the final invalidity decision. Id. at 4.

Judge Andrews had also found the stage of proceedings favored stay, as the Rule 16 conference was postponed, and there was no trial date or formal discovery completed. Id. at 2.

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We previously reported on Judge Robinson’s denial of Gevo’s motion to dismiss Butamax’s declaratory judgment action for lack of subject matter jurisdiction based on her determination that a sufficient controversy existed to exercise declaratory judgment jurisdiction. Judge Robinson has now considered Gevo’s renewed motion to dismiss for lack of subject matter jurisdiction and this time has granted dismissal. Butamax Advanced Biofuels LLC, et al. v. Gevo, Inc., C.A. No. 12-1301-SLR, Memo. at 1-6 (D. Del. Jan. 28, 2014).

Although Butamax and Gevo have engaged in “an extensive pattern of litigation . . . [with] eleven cases pending between the parties,” that litigation has become less related to the patent at issue in this declaratory judgment action. This declaratory judgment case and another related infringement case involve Gevo’s patents for isobutanol recovery. The remainder of the patents at issue between the parties in the various cases relate to creating isobutanol through genetically engineered organisms. Because Gevo’s infringement case involving the related, isobutanol recovery patent was voluntarily dismissed in May, and because there was no evidence of Butamax’s final commercialization process for isobutanol recovery, Judge Robinson found that the pattern of litigation of unrelated patents alone was no longer sufficient to sustain an actual controversy. Id. at 4-5.

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