Published on:

Magistrate Judge Thynge recently recommended the denial of the defendants’ motion for summary judgment based on failure to mark and laches. Magnetar Technologies Corp. v. Six Flags Theme Parks Inc., Civ. No. 07-127-LPS-MPT (D. Del. Feb. 7, 2014). The plaintiffs were the assignee and its field-limited exclusive licensee of U.S. Patent No. 5,277,125. With respect to marking, the defendants argued that the original patent owner did not comply with the marking statute, 35 U.S.C § 287(a), because it failed to mark a baggage claim system (the “IABHS”) it sold to the Denver International Airport in the early 1990s, and then never corrected that alleged failure during periodic servicing and provisioning of parts for the IABHS over the years. As a result, the defendants argued that the plaintiffs could not recover any damages relating to infringement before 2007 when the defendants received actual notice of the patent-at-issue and the plaintiffs’ infringement claims. The plaintiffs disagreed, and argued that the original patent owner sold and installed the IABHS before the issuance of the patent-at-issue, such that marking was not required under § 287(a), and further that the marking statute imposed no requirement to mark the IABHS after the issuance of the patent during the course of servicing and the provision of parts.

Magistrate Judge Thynge agreed with the plaintiffs that if the IABHS was sold and installed before the issuance of the ‘125 patent, marking was not required at that time or at any subsequent time during the course of servicing. However, Judge Thynge found that the record was not clear with respect to whether the IABHS was sold and installed prior to or subsequent to the issuance of the patent. Id. at 6. As a result, if a jury were to find that “the [IABHS] was made or sold subsequent to the issuance of the patent, damages may be limited accordingly[]” under § 287(a). Id. at 13.

Judge Thynge also recommended denial of the defendants’ laches motion, finding genuine issues of material fact existed regarding whether the original patent owner or the plaintiffs had constructive knowledge of the allegedly infringing roller coasters (especially given that neither plaintiff worked in the same field as the defendants), and whether the roller coasters’ infringing components were “open and notorious to the public.” Id. at 21-22. Based on this and other considerations, Judge Thynge found that in this case “laches is best considered based upon a fully developed record.” Id. at 26.

Continue reading

Published on:

Judge Stark recently ruled on defendant Rackspace’s motion to dismiss the second amended complaint filed by plaintiff Clouding IP. Judge Stark had previously granted a motion to dismiss the first amended complaint in this case with respect to indirect infringement because the complaint did not plead facts from which the Court could infer intent, but gave Clouding IP leave to amend. Following Clouding IP’s filing of a second amended complaint, Rackspace again moved to dismiss, and Judge Stark has now denied that motion. Clouding IP, LLC v. Rackspace Hosting, Inc., et al., C.A. No.12-675-LPS, Memo. Op. at 1 (D. Del. Feb. 6, 2014).

As Judge Stark framed the issue, “Rackspace’s motion presents a narrow issue as to whether Clouding failed to sufficiently plead the element of intent for its inducement claims in the Second Amended Complaint.” Id. at 4. Judge Stark, however, disagreed with Rackspace’s argument, noting that “courts in this District have held that to plead indirect infringement based on conduct after a complaint was filed a party need only allege ‘a defendant’s receipt of the complaint and [its] decision to continue its conduct despite the knowledge gleaned from the complaint.’” Id. (citing Apeldyn Corp. v. Sony Corp., 852 F. Supp. 2d 568, 574 (D. Del. 2012); Walker Digital, LLC v. Facebook, Inc., 852 F. Supp. 2d 559, 565 (D. Del. 2012)). Clouding IP met this hurdle by “alleg[ing] Rackspace’s knowledge of the original complaint.” Id. Indeed, “[t]he Court is not presented with a pleading which merely contains ‘a formulaic recitation of a cause of action’s elements.’” Moreover, the Federal Circuit’s decision in Commil USA, LLC v. Cisco Sys., Inc., 720 F.3d 1361, 1367 (Fed. Cir. 2013), which held that “the district court erred in preventing Cisco from presenting evidence during the second trial of its good-faith belief of invalidity to rebut Commil’s allegations of induced infringement,” should not be “expand[ed] . . . into a pleading requirement.” Id. at 6. Accordingly, Judge Stark denied the motion to dismiss the claims of induced infringement.

Continue reading

Published on:

Magistrate Judge Mary Pat Thynge recently considered defendants’ motion to exclude the testimony of Magnetar’s lay opinion witness — the founder and President of Magnetar, and named inventor on one of the patents-in-suit. Magnetar Techs. Corp., et al. v. Six Flags Theme Parks Inc., et al., C.A. No. 07-127-LPS-MPT (D. Del. Feb. 7, 2014). The witness had a bachelor’s degree in mechanical engineering and 43 years of experience working as an engineer. Id. at 2. Magnetar disclosed the witness with a list of 14 possible subject areas for his testimony. Defendants objected to four categories:

(1) relationship of Magnetar’s brakes to claim 3 of the ‘125 patent; (2) advantages of magnetic brakes over other types of brakes, including friction brakes; (3) importance of roller coasters to amusement park rides; and, (4) importance of magnetic brakes in the construction of roller coasters.

Id. at 5.

Judge Thyne analyzed the relevance of the proffered testimony under the Georgia-Pacific factors. Judge Thynge found the witness’s testimony relevant to factors one through three, seven and fifteen because his testimony regarding why he sought a license and the established royalty rate is relevent to a hypothetical negotiation. Id. at 6-9. Judge Thynge found, however, that the witness’s testimony was irrelevant under factors nine and ten. Id. at. 10-11. His testimony related to “the advantages of magnetic brakes over other types of brakes in commercial rides,” rather than the advantages of the patents-in-suit compared to other technology. Id. at 10 Because factor nine requires “a nexus . . . between magnetic brakes in general and the patented technology in the instant matter[,]” the witness’s testimony was irrelevant. Id. Judge Thynge also found the witness’s testimony irrelevant under factor eight, which requires evidence of the established profitability, commercial success and popularity of the patented product. Id. at 12. Likewise, the witness’s testimony was irrelevant under factor thirteen for failing to offer evidence “attributing revenue to non-patented elements of roller coasters.” Id. at 13.

Judge Thynge then analyzed whether the relevant categories of the witness’s testimony was appropriate lay opinion testimony under Federal Rule of Evidence 701. Id. at 17. Rule 701(a) requires the witness to have first-hand knowledge such that “the witness’s perception provide[s] a truly rational basis for his or her opinion.” Id. at 17-18. Judge Thynge found the witness qualifed under Rule 701(a) because he had “more than mere first-hand knowledge of the relationship of Magnetar’s brakes to claim 3 of the [patent-in-suit]–he directly participated in negotiations of the license agreement between Magnetar and G&T.” Id. Judge Thynge also found the witness qualified under Rule 701(b). The witness had “sufficient personal knowledge of the [patent-in-suit], Magnetar’s brakes, and the license agreement between Magnetar and G&T.” Id. at 19.

Continue reading

Published on:

Judge Stark recently considered plaintiff’s motion for leave to amend its complaint to add allegations of five patents related to the one patent already at issue. Greatbatch Ltd. v. AVX Corp., et al., C.A. No. 13-723-LPS (D. Del. Feb. 4, 2014). Plaintiff filed its motion two weeks before the deadline to seek leave to amend set forth in the scheduling order, and after it reviewed the core technical documents produced by defendant. Id. at 1. Defendant argued that it would be predjudiced by the addition of five patents because the present schedule “ha[d] been fashioned for a single patent case[.]” Id. at 2. The Court granted the motion, adding the five additional patents, but also agreed that the current schedule should be vacated. Id. at 2-3. Judge Stark ordered the parties to meet and confer and submit a proposed scheduling order. Id. at 3.

Continue reading

Published on:

In a series of decisions in Inventio AG v. Thyssenkrupp Elevator Corporation, C.A. No. 08-874-RGA, Judge Richard G. Andrews ruled on motions in limine, clarified previous orders, and construed disputed claim terms. The two patents-in-suit relate to elevator installation.

The Court had previously ruled that it lacked subject matter jurisdiction over unasserted claims, and therefore did not address an alleged best mode violation in these claims relating to the claim term “advance selector.” Defendant sought “clarification of whether the Court’s holding is simply that the four unasserted claims are not in the case, or whether [defendant] cannot assert a best mode violation relating to the ‘advance selector’ for the claims that have been asserted.” Inventio AG v. Thyssenkrupp Elevator Corporation, C.A. No. 08-874-RGA, Order at 1-2 (D. Del. Feb. 6, 2014) (“Feb. 6 Order”) (internal citations and quotation marks omitted). The Court explained that its “holding was simply that the Court did not have subject matter jurisdiction over unasserted claims. However, as the Defendant indicates that there is a disagreement between the parties regarding whether best mode can be raised regarding the presence of an ‘advance selector,’ for the asserted claims, the Court will address this issue.” Id. at 2. This term did not appear in the asserted claims, and the Court had not construed any claim terms to require an advance selector. Therefore, the asserted claims did not require an advance selector and there was no best mode violation. Id. at 2. In a separate Order following the case’s pretrial conference, the Court further clarified that defendant was “precluded from arguing that any aspect of the asserted claims can be invalidated for failure to describe the best mode of an ‘advance selector.’” Inventio AG v. Thyssenkrupp Elevator Corporation, C.A. No. 08-874-RGA, Order at 1 (D. Del. Feb. 7, 2014) (“Feb. 7 Order”).

Defendant also sought clarification regarding the Court’s previous damages memorandum. Defendant interpreted the Court’s order to limit plaintiff’s damages to a certain range that reflected a reasonable royalty. Feb. 6 Order at 2. The Court clarified that it “did not limit the Plaintiff to a specific amount of damages, but instead held that the royalty base may not include the services contract revenues.” Id.

Defendant also brought motions in limine to exclude the testimony of plaintiff’s damages expert and to exclude his supplemental report. As to testimony, defendant argued that plaintiff’s expert based his reasonable royalty calculation on allegedly infringing activities that had already been excluded by the Court in a prior order. Id. at 3-4. The Court explained that this “previous order did not exclude any evidence, but instead acted to limit further discovery into the unaccused elevator modernization projects. Thus, it is appropriate for [this expert] to testify regarding these other bids in order to provide context regarding the accused projects and the related financial issues. The Defendant is free to object at trial if [the expert] testifies about issues in which he is not an expert.” Id. at 4. The Court did not consider whether the damages expert’s use of late-produced documents should be a basis for exclusion because “[a] Daubert motion is not the proper vehicle to raise a possible discovery violation.” Id. at 5. On the other hand, the Court excluded plaintiff’s expert’s discussion of the size and revenues of defendant because the Court found that the expert has not used this information to render his conclusion or, alternatively, because this information’s prejudice to defendant outweighed its probative value under FRE 403. Id. at 5. As to the expert’s supplemental report, defendant argued that it added new material. The Court disagreed, finding that it only clarified issues, and denied the motion. Id. at 6.

Plaintiff also moved to preclude the testimony of defendant’s damages expert, arguing that the expert improperly based his analysis on a non-comparable license and that he had not explained why other comparable agreements were not considered. Id. at 6. The license at issue was one between plaintiff and its sister company. Id. at 7. The Court denied plaintiff’s motion, finding the expert “at least minimally connects the license in question to the patents-in-suit and rather than simply extract a royalty rate from the previous license, uses the license as only a single component of his entire analysis.” Id. at 8. The Court also rejected the argument that the expert should have discussed other potentially comparable licenses. Id. at 8-9.

In a separate Order, the Court also granted defendant’s motion in limine to exclude evidence related to certain elevators, because plaintiff had presented no evidence that these elevators embodied the patents-in-suit. Feb. 7 Order at 1. The Court explained that it would “reconsider the matter if the Plaintiff puts on evidence that shows the Avenue of the Americas elevator modernization is an embodiment of the asserted patent claims.” Id. at 2.

Finally, the Court construed the following disputed terms:

“the elevator installation having at least one elevator and at least one elevator control for controlling the elevator in response to call reports generated by hall call transmitters and car call transmitters”
“car call transmitter”
“destination call report(s)”
“modernized” /“modernizing”
“modernizing device”
“a device for temporarily operating an elevator installation during modernization”
“a system for modernizing an elevator installation”
“a method for modernizing an elevator installation”
“elevator installation”
“call report”
“floor terminal”
“at least one of [A] and [B]”
“floor terminal . . . for at least one of the input of destination call reports and for recognition of identification codes of users;”
“floor terminal. .. operative for at least one of input of destination call reports and recognition of identification codes of passengers”
“computing unit … for at least one of evaluating the destination call reports and association of destination floors with recognized ones of the identification codes”
“identification code”
“recognition of identification codes of passengers”
“computing unit”
“destination signal”
“interrupting at least one existing electrical floor call transmitter line between at least one floor call transmitter and the elevator control”
“interrupting at least one existing car call transmitter line between at least one car call transmitter and the elevator control”
“the elevator control being disconnected from the hall call transmitters and the car call transmitters of the elevator installation”
“existing electrical floor call transmitter line”
“existing car call transmitter line”
“floor call transmitter line input”
“car call transmitter line input”
“hall call transmitter”
“performing said steps a. through c. [of claim 1] for each elevator car and associated elevator control of an elevator installation in succession whereby the elevator installation is modernized in a modular manner”
“read” or “reading”
“temporarily”
UPDATED: Judge Andrews issued amended claim constructions on February 20, 2014
Inventio AG v. Thyssenkrupp Elevator Corporation, C.A. No. 08-874-RGA (D. Del. Feb. 4, 2014).

Continue reading

Published on:

Judge Richard G. Andrews recently construed several claims terms across five patents: U.S. Patent Nos. 5,793,853; 5,742,605; 6,108,339; 6,452,931; and 6,870,832. Sprint Communications Company L.P. v. Comcast IP Holdings I, LLC et al., C.A. No. 12-1013-RGA, Mem. Op. (D. Del. Jan. 28, 2014). Judge Andrews construed the terms consistently across the patents at issue, unless otherwise noted. Specifically, Judge Andrews construed the disputed claim terms as follows:

U.S. Patent No. 5,793,853

-“primary network element” means “[t]he first network element to receive the service request.”

-“operator center” means “[a] network element providing telecommunications services.”

-“means for assigning an identification key to the primary and secondary records” is a means-plus-function limitation. The function is “assigning an identification key to the primary and secondary records,” and the structure is “a network element comprising a counter device as disclosed at 5:61-6:9 and equivalents thereof.”

-“means for comparing the identification keys assigned to the records” is a means-plus-function limitation. The function is “comparing the identification keys assigned to primary and secondary records” and the structure is “a merge processor (as disclosed at item 42 in Figures 1 and 2) and equivalents thereof.”

-“means for merging associated records” is a means-plus-function limitation. The function is “merging records that are associated by reference to information included in their identification keys” and the structure is “a merge processor (as disclosed at item 42 in Figures 1 and 2) and equivalents thereof.”

U.S. Patent Nos. 5,742,605, 6,108,339, and 6,452,931

-“[SONET] ring” means “[a] self-healing SO NET architecture connecting ring terminals in a loop in which each ring terminal in the loop is directly connected only to the adjacent ring terminal(s) in each direction around the loop.”

-“span” means “[t]he logical connection between ring terminals.”

-“ring terminal[s]” mean “[a] network element that includes a SO NET add/dropmux (ADM) and is capable of receiving, switching, grooming, and transmitting SO NET traffic on the connected SONET spans.”

-“are stacked within a single fiber route” means “[o]ccupying at least a portion of the same fiber route.”

-“are stacked within a single physical route” means “[o]ccupying at least a portion of the same physical route.”

-“work line” / “protect line” means “[a] line of a ring over which traffic is transported when there is no interruption in the ring.” / “A line of a ring allocated to transport the traffic in the event the work line of the ring becomes unavailable due to an interruption in the ring.”

-Judge Andrews found the following two terms indefinite: (i) “rings [that] individually encompass geographic areas that are large[r] than a LATA” / “rings [that] individually encompass geographic areas that are larger than a metropolitan area” and (ii) “wherein a plurality of the rings individually encompass geographic areas that are operational to connect two non-adjacent LA T As on a single ring” I “wherein a plurality of the rings individually encompass geographic areas that are operational to connect two metropolitan areas on a single ring.”

U.S. Patent No. 6,870,832

-“software agent” means “[a] software interface between a session manager and a telephony card.”

-“communication hub” means “[e]quipment that stores and executes the software agent.”

“session manager” means “[a] platform that controls a communications network.”

-Judge Andrews also found that six disputed terms did not require any construction. See Mem. Op. at 22-25.

Continue reading

Published on:

In a recent memorandum opinion, Judge Sue L. Robinson construed three disputed claim terms across U.S. Patent Nos. 6,044,382; 5,805,676; 5,987,103; and 7,334,024, which each relate to telecommunications technologies. Cyberfone Systems, LLC v. ZTE (USA) Inc., et al., C.A. Nos. 11-827, 11-830, 11-833, 11-834-SLR (D. Del. Feb. 4, 2014). Specifically, Judge Robinson construed the three disputed claim terms as follows:

-The limitation “form driven operating system” means “firmware – a set of instructions programmed on a hardware device – that, together with forms, operates to control a microprocessor without the need for a conventional operating system (such as DOS or Windows).”
-The limitation “client module” means “firmware – a set of instructions programmed on a hardware device – that, together with forms, operates to control a microprocessor without the need for a conventional operating system (such as DOS or Windows).”
-The limitation “transaction assembly server” means “firmware – the set of instructions programmed on a hardware device.”

Continue reading

Published on:

In a recent memorandum order, Judge Richard G. Andrews granted defendant’s motion to exclude the testimony of plaintiff’s reasonable royalty expert. Robocast, Inc. v. Microsoft Corporation, C.A. No. 10-1055-RGA (D. Del. Jan. 29, 2014). First, plaintiff’s expert asserted in his running royalty analysis that “[t]he running royalty that would have resulted from the hypothetical negotiation would effectively result in an equal sharing of the incremental revenue and profit from the use of the patented technology.” Id. at 1. Judge Andrews explained that with respect to this argument, the parties were in agreement that the “relevant inquiry” was whether plaintiff’s proposed “50/50 split [was] sufficiently tied to the facts of the case.” Id. at 2. Judge Andrews found this inquiry to accord with the reasoning from Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292, 1318 (Fed. Cir. 2011), where a 25% rule of thumb was struck down as “arbitrary [and] unrelated to the facts.” Id. Judge Andrews concluded that plaintiff’s expert failed to “discuss the relative bargaining power of [defendant] and [plaintiff],” and that without “discussing the underlying assumptions, it is impossible to tie the idealized bargaining problem to the facts of the case.” Id. at 4. Judge Andrews thus excluded the expert’s running royalty analysis. Id. at 5. Judge Andrews suggested that “if [defendant] had a history of licensing similar technology for a 50/50 split of the profits, or [plaintiff] had a history of licensing [the patent at issue] for half of the profits, those would be the sort of facts that would provide a basis for [the expert’s] calculations.” Id.

Turning to plaintiff’s expert’s lump-sum royalty analysis, defendant argued that the expert’s analysis was not based on a “reliable methodology [or] sufficiently grounded in fact,” as the expert admitted that the licenses upon which he relied “were not technologically comparable” to those at issue. Id. Judge Andrews agreed with defendant, explaining that the expert “cannot rely on licenses for unrelated technology in order to arrive at a lump sum royalty payment for the technology at issue. . . . What [defendant] paid for unrelated technology does not help the jury determine what [defendant] would have paid for this technology.” Id. at 5-6. Because the expert had “nothing else on which to base his opinion,” Judge Andrews excluded the lump-sum royalty opinion. Id. at 6.

Continue reading

Published on:

Judge Andrews recently ruled on motions for a new trial in Xpertuniverse, Inc. v. Cisco Systems, Inc., C.A. No. 09-157-RGA, Memo. (D. Del. Jan. 30, 2014). Judge Andrews observed that the mtions “might best be described as an afterthought in the [post-trial] briefing.” Id. at 1. His Honor first denied the motion for new trial with respect to the jury’s finding regarding materiality, explaining that if “on appeal, the materiality decision is reversed, it will be because I have either wrongly evaluated the applicable legal standard or the sufficiency of the evidence, and, in either event, I do not believe I am able to conclude . . . that the jury’s verdict was against the clear weight of the evidence.” Id. at 1-2. Judge Andrews made a similar finding with respect to the request for a new trial on damages. Additionally, His Honor explained that he found unpersuasive an argument that $70,000,000 in damages was excessive because “in this particular case . . . the disposition of the damages appeal will necessarily determine whether the award was excessive.” Id. at 2. Similarly, Judge Andrews found that arguments that essentially relied upon pretrial Daubert motions would be included as issues on appeal and “[t]hus, if there was an abuse of discretion, it will be remedied by the Court of Appeals, and, if there was not, then there is no apparent reason why I should grant a new trial on this basis.” Id. at 3. Finally, on a motion for new trial based on the on-sale bar, Judge Andrews explained that his finding that the infringement verdict was not against the great weight of the evidence “also impliedly found that the on-sale bar decision was not against the great weight of the evidence,” and that he would enter an order accordingly. Id.

Continue reading

Published on:

Judge Richard G. Andrews construed the following claim terms from U.S. Patent No. 8,094,010, the patent at issue in M2M Solutions LLC v. Sierra Wireless Am., Inc., et al., C.A. No.s 12-030-RGA to 12034-RGA (D. Del. Jan. 30, 2014):

“permitted caller”
“coded number”
“programmable interface”
“processing module”
“monitoring device”
“wireless communications circuit for communicating through an antenna”
“monitored technical device”

Continue reading

Contact Information