In a recent Memorandum Order, Judge Sue L. Robinson granted defendant’s motion to strike a paragraph of plaintiff’s answer to defendant’s counterclaims. Netgear, Inc. v. Ruckus Wireless, Inc., C.A. No. 10-999-SLR (D. Del. Oct. 2, 2013). The paragraph contained “a litany of ‘admissions’ which go far beyond defendant’s description of” the technology at issue contained in its counterclaim allegations. Id. at 3-4. Furthermore, “[p]laintiff’s answer includes material that was the subject of motions for summary judgment and claim construction,” including assertions that were grounded in disputed constructions of a claim term. Id. at 4-5. The Court explained that “[p]laintiff cannot legitimately argue that the material contained in [the paragraph] is not improper and goes far beyond the scope of defendant’s allegation. Plaintiff’s ‘admissions’ contain issues of material fact over which the parties’ experts disagree. To allow plaintiff’s answer to stand as written would cause prejudice to defendant by misrepresenting the record.” Id. at 5. As a result, the Court granted the motion to strike this paragraph of plaintiff’s answer.
Judge Hillman, sitting by designation from the District of New Jersey, has issued a Markman opinion in the patent dispute between Evonik Degussa GmbH and Materia Inc. The case involves two patents assigned to plaintiff Evonik, which are asserted against Materia, and a third patent assigned to third party plaintiff the University of New Orleans Foundation, which is asserted against Evonik. All three patents claim catalysts that facilitate olefin methathesis reactions. Evonik Degussa GmbH v. Materia Inc., et al., C.A. No. 09-636, at 1-9 (D. Del. Sept. 30, 2013). The Court construed the following terms of the patents-in-suit:
– “N-heterocyclic Carbene”
The Court also adopted the parties’ agreed-upon construction of the term “Neutral Electron Donor.” Id. at 9-59.
On Thursday, October 10, 2013, the Federal Circuit will hear oral arguments in the Ruby R. Vale Moot Courtroom at Widener Law School in Wilmington. The Court will hear arguments in four cases from 2:00 p.m. to 4:00 p.m. You can find more information here and here.
Following the oral arguments, the Intellectual Property Section of the Delaware Chapter of the Federal Bar Association will host a Roundtable Discussion featuring the Visiting Judges of the Court of Appeals for the Federal Circuit; and Chief Judge Gregory M. Sleet and Judge Sue L. Robinson of the U.S. District Court for the District of Delaware. A reception will immediately follow. More details below.
Judge Andrews recently considered General Motor’s motion to stay pending resolution of its supplier’s declaratory judgment action filed against plaintiff, Pragmatus. Pragmatus Telecom LLC v. General Motors LLC, C.A. No. 12-1545-RGA (D. Del. Oct. 3, 2013). Judge Andrews noted that in many circumstances motions to stay customer cases can be resolved easily. In those cases:
[t]he supplier makes a product, transfers it to the customer, and the customer sells it to third parties. The resolution of the supplier case will almost certainly resolve the customer case. If the supplier wins, the patent holder is collaterally estopped against the customer. If the supplier loses, the patent holder cannot get any additional damages against the customer.
Id. at 1.
The case at hand, however, did not present such an easy question. Even though the customer agreed to be bound by the Court’s infringement decision in the supplier action, “‘with respect to infringement or non-infringement’ of the patents ‘based on [the customer’s] use of the supplier’s technology'”, such an agreement would not “have as much value as a representation that the customer will be bound by the validity/invalidity decision.” Id. at 2 (alteration in original). At least under the facts of this case, and with the absence of such an agreement to be bound, Judge Andrews determined that the equities did not support the granting of a stay. Id.
In Netgear, Inc. v. Ruckus Wireless, Inc., C.A. No. 10-999-SLR (D. Del. Sept. 30, 2013), Judge Sue L. Robinson recently considered a number of motions and cross-motions for summary judgment, a Daubert motion, and construed several claim terms. The five patents-in-suit in this case are “directed to wireless communications systems, which use radio waves to communicate.” Id. at 2.
The Court denied plaintiff’s motions for summary judgment for infringement and validity, and granted-in-part defendant’s motion for summary judgment of invalidity (as to four of the patents-in-suit) and non-infringement (as to three of the patents-in-suit). In the course of construing disputed claim terms, the Court found a number of claim limitations, across four patents-in-suit, indefinite. The Court therefore granted summary for invalidity as to the asserted claims of these four patents. Because “the court [could not] complete a meaningful infringement analysis” and because the claims were invalid, the Court additionally granted summary judgment for non-infringement of three of these patents. See, e.g., id. at 24 n.2.
The Court also considered other invalidity arguments with regard to U.S. Patent Nos. 6,621,454 (the ‘454 Patent), 7,263,143 (the ‘143 Patent), and 5,507,035 (the ‘035 Patent). As to the ‘454 Patent, the Court denied competing motions for summary judgment as to enablement because the plaintiff had offered “some” evidence of support for the limitation in the claim at issue, and therefore genuine issues of material fact remained. Id. at 34-35. The Court also denied plaintiff’s motion for summary judgment of no invalidity due to obviousness and/or anticipation because genuine issues of material fact remained. Id. at 36. As to the ‘143 Patent, defendant argued the asserted claims did not meet the requirements of 35 U.S.C. § 101, but the Court concluded that the defendants had not identified clear and convincing evidence of invalidity under this section. Id. at 40. The Court also denied competing summary judgment motions on invalidity of the ‘143 Patent for lack of written description. Id. at 40-42. Finally, as to the ‘035 Patent, the Court concluded that it did not recite patent eligible subject matter under § 101: “[t]he ‘035 patent is an abstract idea, a strategy which consists of making random selections over multiple attempts, determining whether the attempt is successful and, if not, trying again. That the strategy is limited to the field of antenna diversity does not transform the abstract subject matter into patent eligible subject matter. . . . Moreover, the reference in the patent to a controller and means to accomplish certain functions does not supply an inventive concept that represents a nontrivial, nonconventional human contribution or materially narrows the claims relative to the abstract idea they embrace. . . . The recited means are also not indispensable to the claimed strategy.” Id. at 48-49 (internal citations and quotation marks omitted).
Defendant had moved to exclude the testimony of plaintiff’s expert regarding the source code related to the patents-in-suit, arguing that “he did not review the entirety of the source code, rather, he reviewed selections of source code provided to him by counsel” and because the expert did not test any accused infringing products. Id. at 49-50. The Court denied this motion because the expert “was not required to test the accused products. Defendant has not shown that [the expert’s] testimony is based on unreliable sources, indeed, it is based on defendant’s source code and the testimony of defendant’s witnesses. Defendant’s concerns go to the weight of the testimony and may properly be addressed on cross-examination.” Id. at 50.
Finally, the Court construed a number of disputed terms across the five patents-in-suit. As noted above, the Court concluded that several disputed terms were indefinite. Having found that other terms were not indefinite, the Court construed those terms:
“[O]ptimal conditions,” id. at 18-20;
“[M]eans, responsive to said conditions, for selecting at least one of said beams having one of said orthogonal polarizations for data transmissions from said first transmitter,” id. at 22-23;
“[M]eans to analyze the topology broadcast messages and enter in said topology table the network addresses of the wireless node transmitting the topology broadcast message and network addresses of other nodes contained in the topology broadcast messages; and,” id. at 25-26;
“[M]ultibeam antenna,” id. at 32-33;
“[S]canner,” id. at 33 (defendant argued this was means-plus-function limitation and moved for summary judgment for invalidity for indefiniteness; the Court concluded that this was was not a means-plus-function limitation and denied summary judgemnt. Id. at 33 n.10);
“[P]eriodicity,” id. at 33 & 38;
“[A] data transmission antenna pattern with a null in the direction of said interference,” id. at 33-34;
“[G]ain control circuit,” id. at 37;
“[R]eceiver gain,” id.
In a recent order, Judge Sue L. Robinson found that defendant’s “non-infringement arguments relating to the limitations in claim 1 . . . , having been proposed for the first time in [defendant’s expert’s] June 14, 2013 Rebuttal Report and [the expert’s] September 16, 2013 Supplemental Report . . . , may not be raised at trial.” Vehicle IP, LLC v. Werner Enterprises, Inc., C.A. No. 10-503-SLR (D. Del. Sept. 20, 2013). As Judge Robinson explained, “the non-infringement arguments in dispute were introduced for the first time through [defendant’s] expert without any of the underlying factual bases being vetted through fact discovery.” Id. at 1. For instance, Judge Robinson found certain arguments were waived because they were not “raised in response to plaintiff’s infringement contentions,” and were raised for the first time in the defendant’s expert’s Rebuttal Report. Id. at 2. Judge Robinson also found other non-infringement arguments waived because they were not raised during claim construction, or were inconsistent with the Court’s claim construction and were raised for the first time in the expert’s Supplemental Report. Id.
In a footnote, Judge Robinson explained that “[w]hile expert discovery is part of the discovery process, it is the part where the experts opine on the facts vetted during fact discovery; the facts vetted during fact discovery are those identified as relevant to the parties’ respective contentions. By not timely identifying its non-infringement contentions, defendant has turned the process on its head, to the detriment of both the court and the plaintiff.” Id. at 1 n.1
In a recent memorandum opinion, Judge Leonard P. Stark found that plaintiff did not overcome its presumption of prosecution history estoppel and therefore entered judgment in favor of defendant on plaintiff’s claims of infringement under the doctrine of equivalents for claims 1, 3, and 6 of U.S. Patent No. 5,865,866 (“the ‘866 Patent”), and claim 2 of U.S. Patent No. 5,873,862 (“the ‘862 Patent”). ICU Medical, Inc. v. Rymed Technologies, Inc., C.A. No. 07-468-LPS (D. Del. Sept. 30, 2013). This opinion comes after a May 2012 bench trial, where Judge Stark considered “the viability of the jury’s verdict of infringement under the doctrine of equivalents, in light of prosecution history estoppel.” Id. at 1.The parties were in agreement that “the presumption of prosecution history estoppel applies, and further agree[d] that [plaintiff had] an opportunity to attempt to rebut that presumption by showing that the rationale for the amendment bore no more than a tangential relation to the equivalent in question.” Id. at 7.
First, Judge Stark found that plaintiff failed to carry its burden in establishing that the amendments 1, 3, and 6 of the ‘866 Patent “bore no more than a tangential relation to the equivalent in question.” Id. at 7, 20. Judge Stark noted, among other things, that “[t]he prosecution history is silent as to why [plaintiff] followed the Examiner’s recommendation and added the configuration limitations and not just the O-ring elements limitation that [plaintiff] believed was necessary to overcome the prior art rejection. Simply following the Examiner’s unexplained suggestion, without any explanation from [plaintiff], does not, on this prosecution history, suffice to satisfy the tangentiality exception.” Id. at 14. Judge Stark also noted “the Court is unable to conclude, on the record before it, that the PTO necessarily would have allowed an amended claim 1” without the limitations that plaintiff claimed were tangential to patentability (i.e., configuration limitations). Id. at 16.
Judge Stark similarly found that plaintiff failed to carry its burden in overcoming the presumption of prosecution history estoppel with respect to claim 2 of the ‘862 Patent. Id. at 20. Judge Stark noted that with respect to claim 2, plaintiff had a “stronger argument that there is an objectively discemable reason for the amendment, an amendment which added the O-ring elements but no additional limitations relating to their configuration.” Id. at 19-20. However, “the Court [was] uncertain whether “the ‘equivalent in question’ [was] the O-ring elements.” Id. at 20. As Judge Stark explained, the finding of infringement of equivalence may have been predicated on a finding of the presence of O-ring elements only by equivalence, yet the existence of O-ring elements was not tangential to the claim amendment.” Id.
Chief Judge Gregory M. Sleet recently granted a Delaware corporation’s motion to transfer to the Southern District of Ohio. Verint Systems Inc., et al. v. CallCopy, Inc., C.A. No. 13-562-GMS (D. Del. Sept. 23, 2013). The plaintiffs in the case were Delaware corporations with principal places of business in New York and Georgia. The defendant was a Delaware corporation with its principal place of business in Columbus, Ohio. Weighing the Jumara factors, Chief Judge Sleet concluded that only one factor weighed against transfer—the plaintiffs’ choice of forum—and that factor was not given maximum weight because the plaintiffs’ principal places of business were not located in Delaware. Id. at 4. On the other hand, three factors were found to slightly favor transfer: where the claim arose, the location of books and records, and “practical considerations.”
Although the “where the claim arose” factor typically is neutral when the defendant operates on a national level, here the defendant argued that it “never had a Delaware customer, and that the Accused Products have not been sold in Delaware, are marketed solely in and from Columbus, Ohio, and were developed in Columbus, Ohio.” Id. at 4. The plaintiffs argued that the defendant “solicits sales in Delaware via its website …, and maintains sales positions that service the greater Philadelphia area, Baltimore, and New York City,” but the Court found that the “where the claim arose” factor weighed slightly in favor of transfer to Ohio. Id. at 4-5. The Court also found that the location of books and records in Ohio slightly favored transfer. Id. at 6.
Although the Court found the “convenience of the parties” factor neutral, the considerations involved in weighing that factor resulted in the Court finding that “practical considerations” favored transfer. Specifically, the Court found that while the plaintiffs would have to travel to either forum, the defendant’s traveling costs would be “substantially reduce[d]” if the litigation were transferred to Ohio. This consideration was given more weight because the plaintiffs were far larger than the defendant (“$796 million corporation with 3,200 employees” versus “$20 million corporation with 134 employees”). Those considerations did not result in a finding that the “convenience of the parties” factor weighed in favor of transfer because the defendant had chosen to incorporate in Delaware and, “therefore, [could not] argue that it is an inconvenient forum,” but Chief Judge Sleet found that those considerations warranted transferring the litigation to Ohio based on practical considerations. Id. at 5, 7.
In a recent decision, Judge Stark granted a patent infringement defendant’s motion to amend its answer to add claims of inequitable conduct, unclean hands, and breach of contract. Defendant Amneal filed the motion to amend on the last day of fact discovery, well after the scheduling order deadline to amend pleadings. Accordingly, Amneal had to show good cause to modify the case schedule under Rule 16(b)(4). Galderma Labs. Inc., et al. v. Amneal Pharma., LLC, et al., C.A. No. 11-1106-LPS, Memo. Order at 1-2 (D. Del. Sept. 30, 2013). Judge Stark found that Amneal had shown good cause because Amneal did not learn of the facts underlying its new claims until approximately one month before filing its motion. At that time, Amneal learned at its deposition of prosecution counsel that counsel had only disclosed a portion of the data of which counsel was aware to the PTO and that litigation counsel had improperly participated in patent prosecution. Accordingly, the proposed amendment was timely. Id. at 2. Judge Stark further explained that the amendment would not be futile because the amended pleading raised questions for the Court to consider, and the amendment would not cause undue prejudice because it was filed nearly a year before trial was to begin, leaving sufficient time for the limited discovery required. Id. at 2-3.
Judge Gregory M. Sleet recently granted-in-part defendants’ motion to stay litigation against defendant Bruker-AXS, Inc.’s customers pending the plaintiff’s suit against the manufacturer of the accused products, Bruker-AKS, Inc. Vertical Analytics LLC v. Bruker-AXS, Inc., et al, C.A. No. 12-1187-GMS (D. Del. Sept. 27, 2013). Judge Sleet denied defendants’ request to stay the entire litigation, but did stay discovery against the defendant customers until plaintiff could demonstrate that it needed such discovery because the information obtained from defendant Bruker-AXS, Inc., was insufficient. Id. at 1-2.