In Interdigital Communications, Inc., et al. v. ZTE Corporation, et al., C.A. No. 13-009-RGA (D. Del. Apr. 17, 2015), Judge Richard G. Andrews considered Defendants’ request to exclude Plaintiffs’ expert’s testimony with respect to certain statistical conclusions, arguing that the relevant testimony had never provided bases for his conclusions. The Court concluded that “the gist of [the expert’s] testimony was disclosed in his expert reports,” but certain mathematical analysis presented at the Daubert hearing had not been. Id. at 2. Consequently, the expert could “testify about his theory generally, but cannot engage in mathematical analysis unless asked on cross-examination.” Id.
In a recent memorandum opinion, Chief Judge Leonard P. Stark denied a motion to invalidate under § 101 the plaintiff’s U.S. Patent No. 5,987,610 (“Computer virus screening methods and systems”). Intellectual Ventures I LLC v. Symantec Corp., et al., C.A. No. 10-1067 (D. Del. Apr. 22, 2015). The Court found that the ’610 patent (unlike the other two patents at issue in the motion) was “Internet-centric” – the “key idea of the patent is that virus detection can take place remotely between two entities in a telephone network,” and “[c]laims that purport to improve the functioning of the computer itself or effect an improvement in any other technology or technical field may be patentable under § 101.” (emphasis in original) (internal quotation marks omitted). The Court rejected the defendants’ arguments that the patent was akin to “observing individuals for signs of intoxication, reading wartime correspondence, or asking someone if she is having an emergency.” The Court added that the ’610 patent did not claim an abstract idea because “[t]he concept of detecting a computer virus in installed data (and doing so in a telephone network) does not make sense outside of a computer context.”
However, the Court granted the motion to invalidate two other asserted patents, U.S. Patents. No. 6,460,040 (“Distributed content identification system”) and 6,073,142 (“Automated post office based rule analysis of e-mail messages and other data objects for controlled distribution in network environments”), under § 101. The Court agreed with the defendants that both patents claimed methods that were abstract ideas capable of being performed by humans and “are not necessarily rooted in computer technology.” The Court further found that the methods lacked any inventive concept that could salvage patent eligibility.
Chief Judge Stark recently denied a plaintiff’s motion to stay litigation with respect to a counterclaim for infringement of patent claims that stood rejected by the PTAB. Fairchild Semiconductor Corp., et al., v. Power Integrations, Inc., C.A. No. 12-540-LPS (D. Del. Apr. 15, 2015). The Court explained, “[w]hile a stay would minimally simplify the case set for trial, it would also unfairly prejudice [the defendant]. The most prominent and weighty factor under the circumstances is that discovery is completed and the parties and the Court are preparing for trial, which will begin in about six weeks. Under the totality of the circumstances, the Court concludes that the appropriate exercise of its discretion is to deny [the plaintiff’s] motion to sever and stay.” Id. at 7-8.
Judge Stark also ruled on cross-motions for summary judgment relating to priority dates. One of the plaintiff’s defenses to a counterclaim of infringement was invalidity based on one of the plaintiff’s own patents, which it argued was prior art based on filing dates. Id. at 15-16. The defendant disagreed that the plaintiff’s patent was prior art, arguing that the defendant’s patent was entitled to an earlier priority date based on pre-filing conception and reduction to practice. Chief Judge Stark found that the defendant produced corroborating evidence of a conception date that preceded the plaintiff’s patent filing date, and also that the inventors of the defendant’s patent “were continuously diligent in reducing the invention to practice” before the plantiff’s patent filing date. Id. at 20-21. As a result, the Court ruled that the plaintiff’s patent could not be invalidating prior art.
Judge Sue L. Robinson recently dismissed willful infringement claims in two cases filed by Spherix Inc. Spherix Inc. v. Cisco Sys., Inc., Civ. No. 14-393-SLR (D. Del. Mar. 30, 2015); Spherix Inc. v. Juniper Networks, Inc., Civ. No. 14-578-SLR (D. Del. Mar. 30, 2015). The willfulness claims were based on the allegation that the defendants had knowledge of the patents-in-suit “from the date of the Nortel patent auction, as each of these patents were part of the patent portfolio for sale.” Judge Robinson noted that the Nortel patent portfolio “contained more than 6,000 patents” and declined to infer knowledge of the patents-in-suit “from the defendant’s participation in a bidding process on a portfolio containing over 6,000 patents.” With respect to one patent asserted against Juniper Networks, which was one of thirty-one references cited by the PTO examiner during prosecution of one of Juniper Network’s patents, Judge Robinson found that the allegations willfulness were insufficient, explaining, “the fact that the ‘123 patent was referenced during prosecution of two of defendant’s over 1,700 patents . . . is not compelling evidence of knowledge . . . .”
Magistrate Judge Christopher J. Burke recently considered defendants’ motions to stay patent litigation proceedings pending the Court’s resolution of defendants’ motions to dismiss for lack of patentable subject matter under 35 U.S.C. § 101. Kaavo Inc. v. Cognizant Tech. Solutions Corp., et al., C.A. No. 14-1192-LPS-CJB, C.A. No. 14-1193-LPS-CJB (D. Del. Apr. 9, 2015). In granting the motion to stay, Judge Burke noted that if the motion to dismiss is resolved in defendants’ favor, the motion would be “entirely case-dispositive as to all asserted claims of the one patent-in-suit[.]” Id. at 2. Judge Burke also noted that the cases were in their early stages and no scheduling order had been entered by the Court. Id. at 6. Finally, Judge Burke considered undue prejudice to plaintiff should the Court grant the stay–a subfactor which is “very important” to deciding whether to grant a stay. Id. at 6-7. Important to this determination is whether the parties are direct competitors. Id. at 7. Judge Burke noted that the record was “very sparse on the competition issue.” Id. at 8.
Ultimately, Judge Burke determined that a stay was appropriate:
[T]he possibility of simplification of the issues weighs slightly in favor of a stay, and the status of the litigation weights strongly in favor of a stay. The undue prejudice factor weighs slightly against a stay. Had Plaintiff made a stronger showing that the parties are direct competitors, the Court’s overall conclusion here may have differed. But in the end, the possibility of dramatically simplifying the case, and of realizing such simplification at a very early stage, is compelling enough to warrant grant of Defendants’ motions.
Id. at 10.
Chief Judge Leonard P. Stark has adopted Magistrate Judge Burke’s Report and Recommendation in Forest Laboratories, Inc., et al. v. Amneal Pharmaceuticals, C.A. No. 14-508-LPS, in which Judge Burke denied defendant Mylan’s motion to dismiss for lack of personal jurisdiction. As observed in the Order, two recent decisions regarding similar issues of personal jurisdiction over Mylan – Acorda and AstraZeneca – were certified for interlocutory appeal before the Federal Circuit and the Federal Circuit has granted Mylan permission to appeal these decisions. Memorandum Order at 2 (D. Del. Mar. 30, 2015). Per this Order, either party may similarly file a motion to certify for interlocutory appeal.
The Court reviewed the motion de novo, explaining that “[g]iven the detailed reasoning provided in the Report, as well as the lengthy discussion of the jurisdictional issues in Acorda, and further given that Mylan has in the instant case raised no arguments that are not adequately addressed in Judge Burke’s report and/or Acorda, the Court finds it unnecessary to address Mylan’s Motion to Dismiss or its Objections any further.” Id. at 3.
Magistrate Judge Christopher J. Burke recently recommended that the court deny defendant Ubisoft, Inc.’s (“Ubisoft”) motion for summary judgment as to non-infringement of claim 11 of U.S. Patent No. 6,430,997 (“the ‘997 patent”), but that the court grant Ubisoft’s motion for summary judgment as to no willful infringement of the same claim. Impulse Technology Ltd. v. Microsoft Corp. et al., C.A. No. 11-586-RGA-CJB (D. Del. Apr. 9, 2015). On March 27, 2015, Judge Burke issued a recommendation that the court grant defendants Microsoft Corporation, Electronic Arts, Inc. (“EA”), and Ubisoft’s motion for summary judgment of non-infringement “as to 14 of 15 asserted claims in the case.” Id. at 1 As Judge Burke explained, “[r]emaining to be resolved is Defendant Ubisoft’s argument that summary judgment should be granted to it on the ground that it does not infringe the remaining asserted claim in the case: claim 11 of the ‘997 patent.” Id. Judge Burke’s instant Report and Recommendation addressed that issue, as well as “Ubisoft’s assertion that summary judgment should be granted in its favor on the ground that any infringement of claim 11 of the ‘997 patent was not willful as a matter of law.” Id.
As to the motion for non-infringement, Judge Burke explained that “[i]n light of the intrinsic evidence, the Court recommends that ‘training sequence’ be construed to require only a series of movements or exercises, without regard to whether resistive or reactive training devices are used simultaneously, alternatively, or otherwise.” Id. at 9. Judge Burke further explained that “because Ubisoft’s argument in favor of summary judgment [of non-infringement] was solely premised on an understanding of the claim term that would require alternating between those devices (or at least the non-simultaneous use of such devices), the Court recommends that Ubisoft’s motion be denied.” Id. As to Ubisoft’s motion for summary judgment of no wilfull infringement, Judge Burke first concluded that the “non-infringement argument that Ubisoft presented is not sufficient, on its own, to preclude a determination of willful infringement.” Id. at 10. However, “[i]n light of the relative strength of [its] invalidity defense,” Judge Burke was persuaded that as to claim 11, “Plaintiff cannot demonstrate that Ubisoft acted despite an objectively high likelihood that its actions constituted infringement of a valid patent claim.” Id. at 11. Judge Burke therefore granted the motion as to no willful infringement.
In Apeldyn Corp. v. Sony Corp. et al., C.A. No. 11-440-SLR (D. Del. Apr. 2, 2015), Judge Sue L. Robinson granted defendants’ motion for summary judgment of non-infringement and motion for summary judgment of invalidity of U.S. Patent No. 5,347,382 (“the ‘832 patent”). Defendants moved for summary judgment of non-infringement of claim 20 of the ’832 patent on the basis of collateral estoppel. As Judge Robinson explained, “[t]he parties do not dispute that the same patent, the same claim, and the same accused products are at issue in the present case as were at issue in the 08-568 case [previously litigated in the District of Delaware]. Rather, the parties dispute whether: (1) the issue was actually litigated; and (2) plaintiff was ‘deprived of crucial evidence’ in the 08-568 case and, therefore, did not have a full and fair chance to litigate the issue in question.” Id. at 12. As to whether the issue was previously litigated, Judge Robinson noted that “the court’s analysis regarding the drive signal pertained to both claim 1 and claim 20,” and thus concluded that “the issue before the court was actually litigated.” Id. at 13. Moreover, while plaintiff alleged that the inventor of the ‘832 patent “recently discovered a way to measure voltage from the circuitry on a broken LCD,” Judge Robinson explained that “the court [was] not persuaded that plaintiff was deprived of crucial evidence that resulted in an inability to fully and fairly litigate the issue in question in the 08-568 case.” Id. at 13-18. Judge Robinson therefore granted defendants’ motion for summary judgment of non-infringement due to collateral estoppel. Id. at 18.
As to defendants’ motion for summary judgment of invalidity, defendants argued that claim 20 of the ‘382 patent “was anticipated by four separate prior art references.” Id. Judge Robinson explained that although “all four prior art references were before the examiner during reexamination, plaintiff’s invalidity expert . . . only noted a single difference between the prior art references and claim 20.” Id. at 19. Judge Robinson ultimately concluded that “[a]s the concept of switching between intermediate values is the only alleged difference between claim 20 and the prior art, the court grants defendants’ summary judgment of invalidity of claim 20.” Id. at 22.
Judge Sue L. Robinson recently granted Automatic Transactions, LLC’s (“ATL”) motions to dismiss declaratory judgment claims seeking to invalidate 14 of its 28 patents. NRC Corp. v. Automated Transactions, LLC, Civ. No. 14-779-SLR; Nautilus Hyosung America, Inc. v. Automated Transactions, LLC, Civ. No. 14-1189-SLR (D. Del. Mar. 30, 2015). The declaratory judgment claims were filed at around the same time ATL moved to dismiss a number of infringement cases against the declaratory judgment plaintiffs’ customers. ATL offered the dismissed customers covenants not to sue, but did not make the same offers to the declaratory judgment plaintiffs. However, ATL’s managing member represented that “ATL has no plans to initiate any legal proceedings related to its patent portfolio[,]” and ATL further represented that it “has wound down its litigation efforts” and “has decided to sell its patent portfolio rather than engage in any further enforcement efforts.” Id. at 3-4. As a result, and in the interest of preserving judicial resources, Judge Robinson granted the motions to dismiss, without prejudice to their renewal if either ATL or another owner of the patents attempts in the future to enforce them against either the declaratory judgment plaintiffs or their customers. Id. at 4.
As we previously reported, the Delaware Chapter of the Federal Bar Association and the District of Delaware will hold the first Bench and Bar Conference in Wilmington, Delaware on May 7-8, 2015. Participants can register HERE.
The Conference offers 9 hours of CLE credits, featuring district and appellate judges from across the country, as well as nationally-recognized speakers from both the private and public sectors. The Conference also includes an event Thursday night at Winterthur Museum and Gardens (featuring garden tours, a cocktail reception, dinner, and live entertainment).
For more information, the Conference brochure is included below: