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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.”

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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.

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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.

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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”

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Magistrate Judge Mary Pat Thynge recently issued a report recommending the proper construction of claim terms relating to geolocation systems. TruePosition, Inc. v. Polaris Wireless, Inc., C.A. No. 12-646-RGA-MPT (D. Del. Feb. 4, 2014). The following claim terms of U.S. Patent No. 7,783,299 were construed by Judge Thynge:

“means for monitoring” (as used in claim 113 and as used in claim 114);
“means for detecting” (as used in claim 113 and as used in claim 114);
“means for initiating” (as used in claim 113 and as used in claim 114); and
“in response” (as used in each of claims 98, 113, and 114).

Magistrate Judge Thynge found that the ’299 patent “does not disclose an algorithm to perform the “means for detecting” function in claims 113 and 114 and, as a result, recommended that those claims be found invalid as indefinite under 35 U.S.C. § 112, ¶2.

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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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