Judge Richard G. Andrews recently adopted two reports and recommendations on a number of summary judgment claims. Impulse Technology, Ltd. v. Microsoft Corp., C.A. No. 11-586-RGA (D. Del. Sept. 22, 2015). In his memorandum adopting the Magistrate Judge’s recommendations, Judge Andrews discussed the “doctrine of vitiation,” which he characterized as “an obscure way of applying the ‘judgment as a matter of law’ standard to doctrine of equivalents cases.'” Id. at 4. Judge Andrews explained, quoting Federal Circuit decisions, that the doctrine of vitiation is “nothing more than a conclusion that the evidence is such that no reasonable jury could conclude that an element of an accused device is equivalent to an element called for in the claim, or that the theory of equivalence to support the conclusion of infringement otherwise lacks legal sufficiency.” Id. (quoting Cadence Pharm. Inc. v. Exela Pharmsci Inc., 780 F.3d 1364, 1371 (Fed. Cir. 2015) (quoting DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1018-19 (Fed. Cir. 2006)). The Court added that “[i]t seems to me that the ‘doctrine of vitiation’ can be essentially the application of the ‘insubstantial differences’ test to limit the ‘function-way-result’ test” for determining equivalents. Id. at 5. “When cases talk about the claimed equivalent being the ‘opposite’ or ‘antithesis’ of the claimed limitation, it looks a lot like the cases are saying that the differences are to substantial to be overcome by the ‘function-way-result’ test.” In this case, the Court agreed with the Magistrate Judge that the “difference between the claims’ defined physical space (known ‘prior’ to set up of the system) and the accused product’s hardcoded values (meaning the physical space is only known ‘after’ the set up of the system) is too great to be covered by the doctrine of equivalents.” Id. at 5-6.
In Cronos Technologies, LLC v. Expedia, Inc., C.A. Nos. 13-1538, 13-1541, 13-544-LPS (D. Del. Sept. 8, 2015), Chief Judge Leonard P. Stark denied defendants’ motion for judgment on the pleadings pursuant to Fed. R. Civ. P. 12(c), which sought to invalidate certain claims of U.S. Patent No. 5,644,110 (the “’110 patent”) for being directed to patent-ineligible subject matter. The ’110 patent discloses methods and systems for “remote ordering of products.” Id. at 1. Judge Stark observed that despite challenging the validity of 12 claims, defendants’ analysis was “directed almost exclusively to [independent method] claim 22,” which defendants contended is “representative of all the asserted claims.” Id. at 4.
Denying defendants’ motion, Judge Stark explained that “[t]here are several considerations relevant to deciding a Rule 12 motion that challenges the patent eligibility of multiple patent claims based on analysis of a single representative claim.” Id. at 4. First, Judge Stark found that defendants “have not adequately articulated why each of claim 22’s dependent claims relates to the same abstract idea purportedly embodied by claim 22; nor have they adequately explained why each of the dependent claims fails to include an inventive concept.” Id. at 5. Defendants also failed to “address the concepts embodied in claim 22 as a whole.” Id. at 6. Judge Stark further observed that “the Court cannot say at this time” that there is no set of facts “that could be proven that would result in the challenged claims being patent-eligible.” Id. at 7. To that end, Judge Stark explained that “[t]here may be a set of facts related to preemption, questions of patentability, and/or whether claim 22 (and its dependent claims) are directed to a technological improvement rather than a generic computer implementation of an abstract idea that prevents the Court from determining that the challenged claims are patent ineligible.” Id.
In Courtesy Products, L.L.C. v. Hamilton Beach Brands, Inc., C.A. No. 13-2012-SLR-SRF (D. Del. Sept. 1, 2015), Judge Sue L. Robinson denied defendant’s motion to stay litigation pending IPR of U.S. Patent Nos. 7,311,037 (“the ’037 patent”) and 7,770,512 (“the ’512 patent”). In addition to the ’037 and ’512 Patents, plaintiff is also asserting U.S. Patent No. 7,258,884 (“the ’884 patent”) against defendant. Id. at 1. As Judge Robinson explained, “[t]he PTAB declined to institute IPR proceedings with respect to, inter alia, the ’884 patent or to asserted claims 19 and 26 of the ’037 patent.” Id. at 2. As to the stage of the proceedings, “the parties have pursued fact discovery and just commenced the claim construction exercise. Trial is scheduled to commence in March 2017.” Id. Finding that stay was not warranted, Judge Robinson first observed that “the IPRs instituted by the PTAB do not address all of the claims at issue, meaning that the parties’ dispute will not be fully resolved by the IPRs, regardless of the outcome of such.” Id. at 3. Second, Judge Robinson explained that “if the outcome of the PTAB is not favorable to [defendant], [defendant] has the option of asserting the rest of its arsenal of defenses in this court, not only prolonging the ultimate resolution of the dispute, but expending the resources of the parties and two public agencies.” Id. Finally, and “perhaps most significantly,” Judge Robinson noted that “[plaintiff] is in direct competition with, and has lost business to, [defendant].” Id.
Judge Goldberg recently granted-in-part declaratory judgment-plaintiff Transcend Medical, Inc.’s motion for summary judgment of invalidity finding the claim term “choroid” invalid as indefinite. Transcend Medical, Inc. v. Glaukos Corporation, C.A. No. 13-830 (D. Del. Sept. 18, 2015). The indefinite term was found in claims of all patents-in-suit–U.S. Patent Nos. 7,857,782, 8,075,511, and 8,579,846. The parties agreed that the plain and ordinary meaning of the term was “vascular layer of the eye located between the sclera and retina.” Id.at 10. But, Transcend Medical argued that the term was invalid because the patents-in-suit “define the term in multiple inconsistent ways[,]” sometimes in accord with the term’s plain and ordinary meaning and at other times inconsistent with that meaning. Id. Glaukos argued that the other descriptions were not inconsistent, relying on its expert’s testimony about what a person of ordinary skill would understand. Id. at 12. Judge Goldberg determined, however, that the expert’s opinion failed to account for contrary argument Glaukos made to the USPTO. Id. As such, Judge Goldberg disregarded the expert’s testimony because it “contradict[ed] the clear import of the prosecution history and the language of the specification.” Id. at 13 (citing Teva Pharm. USA, Inc. v. Sandoz, Inc., 789 F.3d 1335, 1342 (Fed. Cir. 2015)). Finding that the “choroid” term was defined inconsistently in the specification and during prosecution, Judge Goldberg held the specification “fail[ed] to inform, with reasonable certainty, those skilled in the art as to the scope of the term ‘choroid.'” Id. at 15. Judge Goldberg denied Transcend Medical’s summary judgment motion in all other respects, finding a genuine issue of material as to written description and indefiniteness of other claim terms. Id. at 3-8, 15-18.
In Cot’n Wash, Inc. v. Sun Products Corp., C.A. No. 12-651-SLR (D. Del. Sept. 14, 2015), Judge Sue L. Robinson denied defendant’s motion for attorney fees and costs under 35 U.S.C. § 285. Defendant had prevailed on summary judgment following a favorable claim construction ruling. The Court concluded that the case was not exceptional, as “a prototypical patent infringement case” where “the core factual and legal issues were related and relatively subtle.” Id. at 3. The Court also observed that it was “not unusual for a patentee to assert the broadest possible interpretation of its patent, in order to generate the greatest economic benefit from its intellectual property. . . . it truly should be an extraordinary case that puts patentees at risk for fees and costs when they follow this business model.” Id. at 3 n.2.
The Court also denied Defendant’s request for “the costs of responding to certain of plaintiffs’ testing” that took place over the course of expert discovery and before the claim construction ruling, where the Court did not rely on such testing to rule in Defendant’s favor. Id.
In a declaratory judgment action for non-infringement of Defendants’ patents, Judge Richard G. Andrews granted-in-part Defendants’ motions to dismiss. Crypton Future Media, Inc. v. Hologram USA, Inc., et al., C.A. No. 14-1247-RGA (D. Del. Sept. 8, 2015). Defendants had sent a cease-and-desist letter to Plaintiff regarding Defendants’ potential infringing use. Id. at 2. Defendants argued that this did not create a substantial controversy, and even if it had, the controversy was mooted by the parties’ subsequent communications, after the complaint was filed, where Defendants gave Plaintiff “repeated assurances that it considers the technology at issue in the Complaint to be non-infringing.” Id. at 4.
While, at the time the action was filed, “there was clearly declaratory judgment jurisdiction” where Defendants’ letter was more than a mere expression of concern, it “acknowlege[d] the threatening tone,” and “clearly charged [Plaintiff] with infringement” id. at 6, the Court concluded that the parties’ subsequent interactions had divested it of subject matter jurisdiction. The Court “agree[d] with [Plaintiff] that [Defendants] ha[ve] been careful to make narrow disclaimers that leave a wide range of future activity susceptible to attack. Because [Plaintiff’s] system uses a different layout each time based on site-specific concerns, and uses various materials rented on site, [Defendants’] statements may not address all future activity. It is for precisely that reason, however, that the Court cannot retain jurisdiction. Because the technology is different each time, this action cannot result in ‘specific relief through a decree of a conclusive character.’ . . . [Defendants’] representations are sufficient to moot the controversy and are binding as a matter of judicial estoppel.” Id. at 7 (citations omitted).
As a result of the Court’s finding that it now lacked subject matter jurisdiction and thus should dismiss the federal claims, it also dismissed the related state law claims and dismissed Defendant’ motions with respect to improper venue and failure to state a claim as moot. Id.
Judge Robinson recently denied a motion to transfer to the District of Maryland filed by TWi Pharmaceuticals. As Judge Robinson described the motion, “TWi has not presented a typical scenario for transfer, that is, the case clearly could have been brought in the transferee district, and the transferee district is a more convenient one for the moving party. Instead, TWi skipped the first part of the § 1404(a) analysis altogether in its opening papers, concedes that the convenience factors are neutral, and urges the court to transfer based on the singular fact that the Maryland court had rendered a decision on a related patent and, thus, any forum but Maryland should be rejected as an exercise in forum shopping.” Par Pharmaceutical, Inc., et al. v. Breckenridge Pharmaceutical, Inc., et al., C.A. No. 15-486-SLR, Memo. Or. at 4-5 (D. Del. Sept. 10, 2015). Judge Robinson then “decline[d] to characterize a patentee’s choice of venue as ‘forum shopping’” particularly because “any negative connotations associated with ‘forum shopping should have dissipated when Congress enacted the Patent Pilot Program Act.” Id. at 5. Additionally, Her Honor found that “TWi glosses over the fact that the [patent-in-suit] has been asserted against both [defendants]; i.e. if TWi has its way, there most certainly will be judicial inefficiencies, with two courts trying two separate cases over the same patent, possibly reaching inconsistent results” and that the patents asserted in Delaware and Maryland, “although related, are different and the parties in suit are different.” Id. at 6. Thus, Judge Robinson denied the motion to transfer. In addition, Her Honor rejected a separate argument that the Court should dismiss one count of the complaint because the court “was divested of jurisdiction once the FDA approved TWi’s ANDA” because “TWi cited no authority in support of its argument, and the court is aware of none.” Id. at 7.
In a series of related actions brought by Papst Licensing GmbH & Co. KG, Magistrate Judge Christopher J. Burke granted Defendants’ motions to transfer to the Northern District of California. E.g., Papst Licensing GMBH & Co. KG v. Lattice Semiconductor Corp., C.A. No. 14-1375-LPS-CJB (D. Del. Sept. 1, 2015). Plaintiff is a German corporation, while all Defendants are incorporated in Delaware but with no offices or employees in the state. Id. at 2.
Analyzing the Jumara factors, the Court ultimately concluded that only the first factor (plaintiff’s forum preference) weighed against transfer. It observed that Defendants had “focus[ed] heavily” on the fact that Delaware was not Plaintiff’s “home turf,” but the Court explained that it “has previously concluded-after reviewing this Court’s prior case law discussing this ‘home turf’ issue-that whether Delaware is a plaintiffs ‘home turf,’ in and of itself, has no independent significance regarding the standard used in the overall Jumara balance of convenience analysis, nor to the analysis as to this first Jumara private interest factor. . . . Of course, if a plaintiff . . . has no ties to Delaware and is based overseas, those facts will certainly be relevant in the analysis of other Jumara factors.” Id. at 8 n.3 (citations omitted).
While Defendants’ forum preference and where the claims arose “squarely favor[ed] transfer,” id. at 23, it concluded that the convenience of witnesses and location of books and records only slightly favored transfer, see id. at 14-18. On the other hand, the convenience of the parties was ultimately neutral, given the fact that Plaintiff would need to travel far in either venue, that California may be slightly more convenient for Defendants, but because they were all incorporated in Delaware, they should not be meaningfully inconvenienced given their decision to incorporate there. See id. at 12-14.
As to the public interest factors, practical considerations weighed in favor of transfer where litigating in California would avoid some added cost of retaining Delaware counsel. Id at 20. The local interests factor slightly favored transfer where “there [were] some number of persons (e.g., Defendants’ employees and third-party witnesses) located in the transferee district with a connection to this case, and none in Delaware, it can be said that the Northern District of California has some greater local interest in the case than does Delaware,” although Defendants had not shown that “this case has outsized resonance to the citizens of the transferee district, or that its outcome would significantly impact that district.” Id. at 21.
Ultimately, the Court concluded that “Defendants have demonstrated that the balance of convenience is strongly in their favor. To be sure, any one or two factors would not be enough, in and of themselves, to make a persuasive case for transfer. But here the cumulative effect of the evidence, relating to many different Jumara factors, demonstrates the far more significant connections that the Norther District of California has with the case (as compared to this District). And with little to counter-balance those many connections, other than the fact that Plaintiff chose this forum for suit, the Court concludes that transfer is appropriate.” Id. at 23.
Judge Leonard P. Stark recently granted Defendants’ motion for judgment on the pleadings of invalidity of Plaintiff’s U.S. Patent No. 5,359,643 under 35 U.S.C. § 101. Gammino v. American Telephone & Telegraph Co., C.A. No. 12-666-LPS (D. Del. Sept. 8, 2015). The method claims at issue “are generally directed to receiving a ‘telephone dialing digit’ and a phone number, receiving payment information for a call, and completing the call if payment is adequate.” Id. at 2. Applying the U.S. Supreme Court’s decisions in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012) and Alice Corp. Pty. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), Judge Stark found that the claims are directed to an abstract idea:
In sum, claim 1 amounts to nothing more than an arbitrary set of steps defining how a conventional telephone may be used to select a method of payment and complete a call, not unlike a user’s manual for any number of long-extant devices. Thus, the Court concludes that representative claim 1 of the ‘643 patent- and, therefore, all of its claims -is directed to an abstract idea. It is necessary, then, to proceed to the second step of the analysis.
Id. at 13. Moreover, Judge Stark determined that additional claim limitations did not include an “inventive concept” to render the subject matter patent-eligible because “[t]he ‘643 patent’s claims are implemented using generic telephony technology that existed well before the priority date of the ‘643 patent.” Id.
Judge Richard G. Andrews recently granted Defendants’ motion for judgment on the pleadings of invalidity of Plaintiff’s U.S. Patent No. 5,826,034 under 35 U.S.C. § 101. Novo Transforma Techs., LLC v. Sprint Spectrum L.P., et al., C.A. No. 14-612-RGA (D. Del. Sept. 2, 2015). Applying the U.S. Supreme Court’s decision in Alice Corp. Pty. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), Judge Andrews found that “[t]he ‘034 patent claims the abstract idea of ‘translation.’ The claims do not solve a problem specific to the realm of computer networks, and the additional claim limitations do not amount to an ‘inventive concept.’ Therefore, the asserted claims of the ‘034 patent are invalid.” Id. at 4. Plaintiff argued that the claimed invention was not an abstract idea because “it addresses a problem that ‘specifically arises in the context of communication networks due to the presence of incompatible devices and formats.’ The ‘034 specification explains that the claimed invention addresses the problem of ‘incompatibility between different communication services employing different media for communicating information.'” Id. at 5. Judge Andrews disagreed noting that “[i]ncompatible communication types have existed since before the emergence of computers and the Internet” and translating “into a different media form . . . is no different than the function of a translator.” Id. at 6. Moreover, Judge Andrews determined that additional claim limitations did not “render the subject matter patent-eligible” because “the ‘034 patent contemplates the conversion and delivery of physical messages[, a] problem  not unique to electronic devices.” Id. at 8.