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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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Judge Richard G. Andrews recently considered plaintiff’s Motion for Partial Clarification and Reconsideration of the Court’s Memorandum Opinion on Claim Construction. M2M Solutions LLC v. Sierra Wireless Am., Inc., et al., C.A. Nos. 12-30-RGA to 12-34-RGA (D. Del. Jan. 24, 2014). Judge Andrews largely denied the motion but did agree to make one modification to the Court’s earlier construction of the term of”wireless communications circuit for communicating through an antenna.” The Court previously construed the term to mean “a complete wireless circuit that transmits and receives data and includes an antenna.” (Nov. 12 opinion at 15). Judge Andrews reconsidered that construction:

The claim language itself requires the circuit to communicate “through an antenna.” The plain meaning of “through an antenna” is “through an antenna,” and this should not be read out of the claim. The construction is revised to read: “a complete wireless circuit that transmits and receives data through an antenna.”

Id. at 5.

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Managing IP invites you to the third annual US Patent Forum on March 25 at the Willard InterContinental, Washington D.C.
** Free for in-house patent counsel, academics and R&D professionals **

Supported by AIPLA and Delaware IP Law Blog, the forum will provide you with:

• a guide to improving your company’s patent application process post-AIA;
• an evaluation of post-grant proceedings;
• an update on litigation planning and forum shopping in Europe; and
• the analysis of the recent standard essential patent (SEP) litigation between Apple and Samsung
You will hear from:

• Michelle Lee, deputy under secretary of commerce for intellectual property and deputy director, USPTO
• Mark Guetlich, senior counsel, international policy & government affairs, USPTO
• Lisa McIntye, patent counsel, Google
• Denise Hickey, senior director, intellectual property strategy, AbbVie
• Jason Garbell, senior manager & senior patent attorney, Novozymes North America
• Joseph Contrera, patent counsel, Johns Hopkins Technology Transfer
• Vaishali Udupa, IP litigation counsel, Hewlett-Packard
• Adam Lerner, intellectual property manager, Qiagen
• Richard Rainey, executive counsel, IP litigation, GE
• Sherry Knowles, principal, Knowles Intellectual Property Strategies
You can view the agenda and register online HERE, or email msamra@euromoneyplc.com.

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Special Master Paul M. Lukoff recently recommended denying a plaintiff’s request for leave to serve a supplemental expert report in rebuttal of the defendant’s supplemental (and unexpected) report. Robocast, Inc. v. Microsoft Corp., C.A. No. 10-1055 (RGA) (D. Del. Jan. 21, 2014). The plaintiff argued it should be permitted a supplemental report to rebut the defendant’s own supplemental report, which the Court had permitted. The defendant countered that the Court previously made clear that no further reports would be permitted and, further, that it would be prejudiced if the plaintiff were allowed to serve a supplemental report at this stage because there would be no opportunity to depose the expert on the new opinions. The Special Master supported his recommendation that the plaintiff not be permitted to serve a supplemental rebuttal report by explaining that “[t]he parties have been around and around this technical mulberry bush so many times that they must be bored with the repetitive nature of their activities.” The Special Master explained further that, based on declarations filed during summary judgment briefing, the defendant was so familiar with the opinions of the plaintiff’s expert that “the defendant will have lost nothing in connection with its ability to question this particular expert witness” at trial. Id. at 3. As a result, Special Master Lukoff recommended denying the plaintiff’s request for permission to serve a supplemental rebuttal report, but recommended that the plaintiff’s expert be permitted to provide rebuttal testimony at trial. Id.

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In a recent memorandum order, Judge Richard G. Andrews denied plaintiff’s Daubert motion to exclude a portion of defendant’s damages expert’s testimony, in which he “opined that the inclusion of the allegedly infringing Showcase/Flowcase . . . feature in iTunes and the Top Sites feature in Safari did not have a positive impact on Apple revenues.” Robocast, Inc. v. Apple Inc., C.A. No. 11-235-RGA (D. Del. Jan. 14, 2014). Plaintiff argued that the damages expert’s opinion was unreliable and should be excluded because he “failed to account for certain variables,” which included “the increasing use of iPhones, Spotify, and Pandora.” Id. at 2. Plaintiff asserted that such “countervailing variables could have masked the positive impact caused by the accused features.” Id. Judge Andrews, however, rejected plaintiff’s argument, explaining that the damages expert’s opinion was merely that “there was a statistically significant decrease in the rate of change of revenue after the addition of Showcase.” Id. According to Judge Andrews, this opinion logically suggests that the Showcase/Flowcase features “did not cause an increase in the rate of change of revenue.” Id. Judge Andrews concluded that the fact that the damages expert did not account for these other variables “goes to the weight of the testimony, not its admissibility, and is properly left to the jury.” Id. at 3.

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