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Magistrate Judge Burke denied a motion to disqualify Plaintiff’s counsel, who had previously represented the Defendant from 2008 to 2014 as trademark counsel. There was no dispute that the firm representing the Plaintiff had previously done substantial legal work for the Defendant through a handful of attorneys that had long represented the Defendant in trademark matters both before joining that firm and after leaving it. Regalo Int’l, LLC v. Munchkin, Inc., C.A. No. 15-1103-LPS-CJB, Memo. Or. at 1-6 (D. Del. Sept. 29, 2016).

Given these facts, the Court’s analysis focused only on whether this case was “substantially related” to the prior matters in which Plaintiff’s counsel had represented the Defendant. Although the two representations in question were a patent litigation and trademark counseling and did not involve overlap in the products at issue, the Defendant contended that the firm had high-level strategic knowledge of the Defendant based on handling hundreds of matters for the Defendant in the past. Judge Burke found, however, that this did not establish that “(1) the prior and current representations are sufficiently related for purposes of this inquiry, nor that (2) [the Defendant] has met its burden to demonstrate that any [of its] confidences previously disclosed . . . Are sufficiently ‘relevant’ to the present action or sufficiently ‘detrimental’ . . . in this case.” Id. at 12. Indeed, Judge Burke explained that the Court tends “not to give great weight in this analysis to unfocused concerns that a party’s former counsel knows that party’s ‘playbook.’ Instead, in the main, they tend to require a party who is moving to disqualify counsel in a patent matter to demonstrate a fairly close legal and factual nexus between the present and prior representations.” Id.

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In a recent claim construction order, Judge Richard G. Andrews found preamble language limiting because it provided meaning to terms in two claims and antecedent basis for another claim term.  Sanofi v. Lupin Atlantis Holdings S.A., C.A. No. 15-415-RGA (D. Del. Oct. 3, 2016).  The preamble language at issue was, for claims 1 and 6, “a method of reducing a risk of cardiovascular hospitalization in a patient” and, for claim 9, “a method of reducing a risk of hospitalization for atrial fibrillation in a patient.”  The Court found that the preamble language for claims 1 and 6 gave meaning to the claim term “effective amount” because reading the body of claims 1 and 6 (“administering to said patient an effective amount of dronedrone or a pharmaceutically acceptable salt thereof…”) on its own, without the preamble language, “begs the question, effective for what?”  Id. at 6.  With respect to claim 9, the Court found that the preamble language provided an antecedent basis for the claim term “patient in need of reduction of said risk.”  Id. at 7.  The Court explained that “[w]ithout the phrase ‘reducing a risk of cardiovascular hospitalization,’ the phrase ‘a patient in need of reduction of said risk’ would not have a proper antecedent basis.”  Id. at 8.        Continue reading

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Data Engine Technologies LLC v. Google Inc., C.A. No. 14-1115-LPS (D. Del. Sept. 29, 2016), Chief Judge Leonard P. Stark granted Defendant’s Rule 12(c) motion because the Court concluded that asserted claims of certain of the patents-in-suit were directed to patent-ineligible subject matter.

The patents-in-suit at issue relate to electronic spreadsheets. Id. at 1. The Court’s analysis divided the patents into two groups. First, as to the “Tab Patents,” the patent containing the claim the Court determined was representative “broadly cover[ed] methods for rendering electronic, three-dimensional spreadsheets, wherein individual spreadsheet pages may be labeled and selected via user input such that selected pages are shown while others are ‘obscure[ d].’” Id. at 10. The second group of claims within an additional patent related to tracking changes and versions within a spreadsheet. See id. at 14.

By the time of decision, the Court had already issued its opinion on claim construction, therefore the Court applied those constructions to its decision to the extent necessary. Id. at 1-2. Additionally, because the motion presented an issue of law, the Court “rejected consideration of all extrinsic evidence presented by the parties and relie[d] only on the pleadings and patents, which were attached as exhibits to the complaint, and ma[de] its ruling as a matter of law.” Id. at 16 n.4.

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Judge Robinson recently considered a motion to stay litigation in a case where “the parties are competitors that have aggressively pursued their respective legal options to further their respective business interests . . . [including] expedited review of the [patent-in-suit], and fil[ing] suit against defendant shortly after its issuance.” Husqvarna AB, et al. v. The Toro Co., C.A. No. 15-856-SLR, Memo. Or. at 3 (D. Del. Sept. 20, 2016). Because the defendant “promptly filed its request for reexamination” and the motion to stay pending the reexamination, Judge Robinson concluded that “the parties are disadvantaged to an equal degree in the market place and in terms of their legal dispute.” Id. Moreover, the “second factor, simplifying the issues for trial, is also a draw . . . [because] the issues in the litigation are broader than those presented in the reexamination and it is possible that at least some claims of the [patent-in-suit] will survive the PTO’s scrutiny.” Id. Judge Robinson ultimately granted the motion to stay, however, because it would promote judicial economy, given that the “court has not yet directed its scarce resources to the merits of this dispute, while the PTO has . . . [thus] it should be the PTO, not the court, that conducts this essentially first substantive review of the validity of the [patent-in-suit].” Id. at 4.

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In a recent Order, Magistrate Judge Christopher J. Burke resolved the parties’ various source code and other discovery disputes. International Business Machines Corporation v. The Priceline Group Inc., C.A. No. 15-147-LPS-CJB (D. Del. Sept. 29, 2016). First, Judge Burke granted in part plaintiff’s request that defendants be required to supplement responses to certain interrogatories in order “to identify documents sufficient to show how the Accused Instrumentalities carry out the identified functionality.” Id. at 1-2. Judge Burke granted the request to the extent that “any non-source code documents exist that describe the functionality in question and have not yet been identified,” and explained that defendants “shall describe and identify above-referenced documents sufficient to show how the referenced functionality works with regard to the Accused Instrumentalities.” Id.

Judge Burke, however, denied plaintiff’s request that defendants be required “to identify[] those portions of the computer source code that implement the functionality in question.” Id. at 2. Judge Burke explained that “armed with the road maps and the source code, ‘the burden of deriving or ascertaining [the requested information] will be substantially the same for either party’ and therefore Defendants have properly complied with Federal Rule of Civil Procedure 33(d) by referencing the source code in response to these Interrogatories.” Id. at 2. Judge Burke further noted that “[i]n similar circumstances, where a plaintiff has access to the source code and the task of requiring a defendant to sift through its source code to identify accused features would be unduly burdensome, courts have denied requests like [plaintiff’s] here.” Id. at 2-3.

Judge Burke also denied plaintiff’s request that defendants provide a witness pursuant to Rule 30(b)(6) to testify with respect to two topics plaintiff noticed. Id. at 3-4. As Judge Burke explained, “it would be unduly burdensome [on Defendants] to prepare corporate witnesses on the topics, which cover details of the thousands of files made available for review”; and “because the ‘topics are framed to paraphrase claim limitations, [they are] thus … de facto contention deposition categories and more properly the subject of expert testimony.’” Id. at 4.

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Chief Judge Leonard P. Stark recently considered Defendants’ motion for judgment on the pleadings that the asserted claims of the patent-in-suit are invalid under 35 U.S.C. § 101.  Vehicle IP, LLC v. AT&T mobility LLC, et al., No. 09-1007-LPS (D. Del. Sept. 29, 2016).  The patent-in-suit, U.S. Patent No. 5,987,377, discloses methods and systems involving:

a dispatch for generating destination information for a vehicle; a communications link coupled to the dispatch; and a mobile unit coupled to the communications link for receiving the destination information generated by the dispatch, wherein the mobile unit can determine vehicle position and, based on that position, calculate the estimated time of arrival (“ETA”) at a destination identified by the vehicle.

Id. at 1.  Defendants argued that the asserted claims were unpatentable because they claim the abstract idea of “calculating, at a vehicle, its expected time of arrival at a location.”  Id. at 8.  Judge Stark disagreed, at least at this stage:

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Chief Judge Leonard P. Stark recently considered defendants’ motion for attorneys’ fees, filed after the case was dismissed following the Court’s finding all claims invalid for indefiniteness.  Sarif Biomedical LLC v. Brainlab, Inc., No. 13-846-LPS (D. Del. Sept. 27, 2016).  Defendants argued the case was exceptional because the claim terms at issue were “obviously indefinite” because “there [was] no legitimate argument that the specification contains a structure corresponding to the claimed function, and Plaintiff’s efforts to argue to the contrary suggest that Plaintiff did not perform a ‘legitimate pre-filing investigation.'”  Id. at 3.  Further, the Patent Trial and Appeal Board declined to institute petitions for Inter Partes Review because it believed the claims to be indefinite.  Id. at 1-2.  Judge Stark ultimately concluded that Plaintiff had a “good faith” belief that the claims were not indefinite, providing “detailed arguments, grounded in the intrinsic evidence, in support of its proposed constructions.”  Id. at 3.  Moreover, “[t]he Court did not find any of Plaintiff’s positions or expert witnesses to be unusually weak, and Defendants’ briefing on this motion has not persuaded the Court otherwise.”  Id.  Judge Stark also did not find Plaintiff’s conduct unreasonable following the PTAB proceeding.

It is not unusual for a party to refine and revise its claim construction positions over the course of litigation. It can also be reasonable for a party to propose different constructions in PTAB and District Court proceedings, as the PTAB must give claim terms their “broadest reasonable construction,” whereas District Courts give them the meaning they would have to a “person of ordinary skill in the art at the time of the invention.”

Id. at 4 (quoting Cuozzo Speed Techs., LLC v. Lee, 2016 WL 3369425, at *10 (U.S . June 20, 2016)).  Judge Stark also compared this case “to the full panoply of patent cases” before the Court and concluded “nothing about the instant case stands out as ‘exceptional’ in any respect, including the substantive strength of Plaintiff’s unsuccessful positions or the manner in which Plaintiff litigated the case.”  Id. at 5-6.

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Chief Judge Leonard P. Stark recently denied a motion for judgment on the pleadings under section 101.  MAZ Encryption Technologies LLC v. Blackberry Corp., C.A. No. 13-304-LPS (D. Del. Sept. 29, 2016).  At issue were claims describing “a process that enables frictionless, ‘behind-the-scenes’ encryption – when a user closes or saves a file, the invention automatically obtains an appropriate encryption key, encrypts the file, and saves the encrypted file in EDMS.”  Id. at 10.  In so ruling, Chief Judge Stark rejected the defendant’s analogy between the claimed invention and “how an old hotel would store and keep track of the keys to its patrons’ rooms.”  Id. at 15.  The Court explained, “Defendant’s analogy is unpersuasive.  It fails to capture the key inventive aspect touted in the ‘681 patent:  handling encryption operations without requiring user input, that is, ‘transparently.'”  Id. at 16 (emphasis in original).  Chief Judge Stark added that the defendant’s analogy failed because each of the purportedly analogous steps performed in connection with how an old hotel would store and keep track of room keys were manually performed by a hotel clerk.  Id. at 16.  Overall, the Court found that the claims were not directed to an abstract idea under the Alice/Mayo analysis.  Instead, in the Rule 12(c) posture, the Court was required to accept as true the specification’s statements that the claimed invention was a technical solution to problems in the prior art.  Id. at 10-11.  The Court therefore denied the motion for judgment on the pleadings, but noted that several of the defendant’s arguments that could have been considered in a different procedural context–because they relied on extrinsic evidence–could not be considered in the context of the motion the defendant elected to bring.

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Chief Judge Leonard P. Stark recently ruled on a motion filed by a plaintiff’s claimed successor-in-interest to reopen an administratively closed case, to substitute itself for the plaintiffs, and to consolidate the case with two related cases.  Inline Connection Corp. v. Verizon Internet Servs., Inc., Consol. C.A. No. 05-866 (D. Del. Sept. 28, 2016).  The case was administratively closed in 2009, and then in August 2013 the Clerk of Court removed the administrative closure notation from the docket and invoked its Standing Order Regarding Return of Sealed Documents.  More than two years later, in October 2015, United Access (which describes itself as the successor-in-interest to the plaintiffs in the case) filed the motion at issue.  The defendants argued that the case was terminated more than two years ago and, if it was not terminated, the plaintiffs should not be replaced by United Access because the presence of the plaintiffs is vital to the defendants’ asserted claims and defenses.  Chief Judge Stark found that the case was not terminated, though.  Although the defendants argued that they were entitled to assume the case was terminated when the Clerk of Court invoked the standing order regarding sealed documents, Chief Judge Stark explained that “a self-executing order may not mature into a final judgment without an order of dismissal.”  Id. at 6.  With respect to United Access’s motion to substitute itself for the plaintiffs, the Court found that substitution would not be appropriate because it was not even clear that the plaintiffs were aware of the motion.  The Court therefore found that it would be appropriate to join United Access as a plaintiff, but not to substitute it in place of the plaintiffs.  Finally, Chief Judge Stark found that consolidating this case with two related cases was not clearly warranted and would result in logistical challenges, and so would not be ordered at this time.  Instead, the parties (including the original plaintiffs) were directed to submit a joint status report proposing how the case should proceed.

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In Contour IP Holding, LLC, et al. v. GoPro, Inc., C.A. No. 15-1108-LPS-CJB (D. Del. Sept. 16, 2016), Magistrate Judge Christopher J. Burke recommended granting Plaintiffs Contour IP Holding and iON Worldwide, Inc.’s motion to dismiss iON from the lawsuit with prejudice, due to the fact that iON was not a necessary party and lacks standing to maintain infringement claims in the case. The Report and Recommendation noted, but provided no further comment on, the fact that Defendant did not oppose the motion “in principle,” provided that the dismissal was with prejudice and that it would reserve all rights and remedies against iON related to the case, including seeking attorneys’ fees, and that it also reserved its rights and remedies against the other Plaintiff in connection with its addition of iON to the case.

Contour IP Holding, LLC, et al. v. GoPro, Inc., C.A. No. 15-1108-LPS-CJB (D. Del. Sept. 16, 2016)

 

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