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In a recent claim construction opinion, Judge Richard G. Andrews construed the following terms of U.S. Patent Nos. 7,945, 736 B2, 7,948,921 B1, and 7,630,295 B2:

“configure(d),” id. at 1-3;
“data packet,” id. at 3-6; and
“communications interface configured to process the signal to activate and deactivate the link,” id. at 6-7.

Riverbed Technology, Inc. v. Silver Peak Systems, Inc., C.A. No. 11-484-RGA (D. Del. Jul. 23, 2013).

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Judge Robinson recently considered a motion for leave to file a second amended complaint filed by plaintiffs in Novartis Vaccines and Diagnostics, Inc., et al. v. Medimmune, LLC, et al., C.A. No. 11-84-SLPR (D. Del. July 22, 2013). Plaintiffs previously filed a first amended complaint, and then a supplemental complaint adding Novartis Pharma AG, exclusive licensee of the patent-in-suit, as a co-plaintiff. Id. at 1. Over six months later, when defendant Alexion raised a concern that the amended complaint included “an erroneous assertion that both [plaintiffs] were alleging infringement by Alexion[,]” plaintiffs proposed amending the complaint a second time to clarify the allegations of infringement by Alexion and remove claims against MedImmune, who had previously settled with plaintiffs. Id. at 3. Defendant Biogen refused to consent to the proposed amendment. Id. at 3-4.

Judge Robinson analyzed whether plaintiffs had good cause, under Fed. R. Civ. P. 16(b), for delaying nine months after the deadline to amend pleadings to file its motion to amend. Id. at 5. Judge Robinson found that the delay was not of plaintiffs’ making because defendants did not raise the issue with its interpretation of the infringement claims in the supplemental complaint until over six months after the deadline. Id. After the concern was raised, Plaintiffs behaved diligently, making “three separate proposed revisions” and engaging in several meet and confer sessions with defendants. Id. at 5-6.

Judge Robinson then considered the factors to determine whether leave to amend should be given:

(1) whether the amendment has been unduly delayed; (2) whether the amendment would unfairly prejudice the non-moving party; (3) whether the amendment is brought for some improper purpose; and (4) whether the amendment is futile.

Id. at 6 (citing Foman v. Davis, 371 U.S. 178, 182 (1962)).

The only factor at issue was defendant Biogen’s claim that plaintiffs’ allegation of willful infringement and request for treble damages was futile. Id. Judge Robinson noted that “allegations of willfulness and requesting treble damages have appeared in all three of the complaints filed in this action.” Id. at 3 n.1. Regardless, Judge Robinson found that plaintiffs’ claims were not fuitle after analyzing the claims under In re Seagate Tech., LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007). Specifically, plaintiffs provided evidence that Biogen knew about the alleged infringement at least two months prior to plaintiffs’ filing of the suit. Id. at 7. Judge Robinson rejected Biogen’s argument that plaintiffs’ willfulness claims were barred because Novartis Pharma did not become the exclusive licensee of the patent-in-suit until 18 months after the filing of the suit. Id. 7. Judge Robinson noted that “courts have upheld willfulness claims based on conduct occurring before a plaintiff had standing to sue. Id. at 7-8.

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In a recent memorandum order, Judge Sue L. Robinson denied defendants’ request to preclude plaintiffs “from presenting testimony or evidence relating to [defendants’] prior product ActiTUF.” Invista North America S.A.R.L. et al. v. M&G USA Corp. et al., C.A. No. 11-1007-SLR-CJB (D. Del. Jul. 16, 2013). Defendants argued that “ActiTUF is a plastics product with an iron-based system, rather than the cobalt-based system allegedly developed by [plaintiffs],” and thus “testimony or evidence relating to ActiTUF is not relevant to the issues at trial and will likely confuse a jury.” Id. at 1. Plaintiffs, on the other hand, argued that “ActiTUF is relevant to at least the state of the art at the time of the invention and secondary considerations.” Id. Specifically, plaintiffs asserted that they would “present evidence at trial regarding how the inventors of its claimed inventions looked to improve on the problems with ActiTUF’s iron-based system.” Id. at 2. Ultimately denying defendants’ request, Judge Robinson found that, “although ActiTUF is not an accused product in this litigation, testimony or evidence relating to it is relevant to the state of the art at the time of the invention and secondary considerations.” Id. She also noted that “[s]uch evidence would not likely confuse a jury because there is no dispute that ActiTUF uses a different approach and is not covered by the patents at issue.” Id.

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Special Master B. Wilson Redfearn recently issued rulings and recommendations on issues relating to the parties’ protective order. Eon Corp. IP Holdings, LLC v. FLO TV Inc., et al., C.A. No. 10-812 (RGA) (D. Del. July 10, 2013). First considered was the defendants’ argument that the prosecution bar be extended to include reexamination and resissue proceedings to guard against the “significant risk of plaintiff’s inadvertent use of defendants’ confidential information” absent such an extension. Id. at 2. Special Master Redfearn denied the requested extension, noting that the defendants failed to “substantiate any actual risk that might be incurred.” Id. He explained that in the context of reexamination, the “[d]efendants’ confidential information is basically irrelevant to” the determination of patentability over specific prior art.” Id. (quoting Xerox Corp. v. Google, Inc., 270 F.R.D. 182, 184 (D. Del. 2010)). Special Master Redfearn recommended, therefore, that the defendants’ request be denied for failure to satisfy their burden of demonstrating that the proposed extension of the prosecution bar was necessary. Id.
Special Master Redfearn also denied the defendants’ request that the defendants’ respective in-house counsel be permitted access to settlement materials between the plaintiff and settling defendants. The defendants sought in-house counsel access to “settlement and licensing information,” which Special Master Redfearn viewed as seeking “the specifics, and particularly the amounts, of the settlements with the dismissed defendants, as well as the monetary terms of the licenses, should such exist.” Id. at 3 n.4. Special Master Redfearn explained, “[t]his is not a situation where specific damages and/or settlement details in one case would affect the damages in other cases. Essentially each cause of action stands on its own and, as such, is subject to independent appraisal.” Id. at 4. Based on that, as well as the fact that the issue of damages was bifurcated and the defendants in any event failed to provide any legal support for their request, Special Master Redfearn recommended denial of the request. Id.

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Chief Judge Gregory M. Sleet recently granted several defendants’ motions to stay pending inter partes reexamination in a Multidistrict Litigation (“MDL”) transferred to the District of Delaware in May 2012. In re: Bear Creek Technologies Inc. (‘722 Patent Litigation), MDL No. 12-md-2344-GMS (D. Del. Jul. 17, 2013). The plaintiff had sued defendants for patent infringement related to voice-over internet protocol products in the Eastern District of Virginia in February 2011. Id. at 2. All defendants save one had been severed for misjoinder in August 2011. Id. Around that same time, a non-party to the current MDL, Cicso, had also filed a request for inter partes reexamination of the patent-in-suit. Id. at 4. All defendants, both those who had moved to stay and those who did not oppose these motions, had agreed to be bound by the results of this reexamination if the Court stayed the litigation. Id. at 4 & n.2.

The Court concluded that the relevant factors favored the grant of a stay. Not only had the PTO preliminarily rejected all claims of the patent-in-suit, but this reexamination “also raises questions as to the effective priority date for the Patent, the determination of which could impact issues of validity and obviousness.” Id. at 6-7 n.8. The Court therefore concluded that the reexamination could simplify issues for trial and that “the court and the parties’ time and resources could be wasted” absent a stay. Id. at 7 n.8. It further noted that it was “unpersuaded by [plaintiff’s] contention that the asserted claims will be confirmed in reexamination because they have not been cancelled in two prior ex parte reexaminations.” Id.

Most of the MDL cases were in the early phases of litigation, and this fact also favored a stay. Id. The Court also stayed two actions that had progressed further. One was into claim construction and early discovery but was still “sufficiently early to be a neutral factor in the stay analysis.” Id. (internal quotation marks omitted). The other was “significantly further along” but the Court still stayed this action. Prior to the MDL transfer, the parties were well into fact and expert discovery and had participated in a Markman hearing, but this action had been stayed pending the MDL determination and “as a result, a Markman construction was not issued.” Id. Additional discovery was likely to take place “due to the ‘passage of time’ since the initial discovery, the pending Markman construction, . . . [defendant’s] modifications and updates to its telecommunications network,” and also because the parties could supplement discovery following the Court’s issuance of a Markman decision. Id. “In view of these factors and the MDL coordination of these cases, the court concludes that [this action] should be stayed along with the other actions.” Id.

Finally, the Court disagreed with plaintiff’s arguments that it would be prejudiced. Plaintiff argued that “the defendants will benefit from the inter partes reexamination in that Cisco can ‘audition’ the invalidity arguments the defendants would present at trial and learn which are successful.” Id. But the defendants’ agreement to be bound by this reexamination meant that they would be “estopped from challenging the validity of the [patent-in-suit] as obvious . . . based on the combinations of prior art presented by Cisco.” Id. “Despite [Plaintiff’s] assertion that this estoppel is too limited and does not protect its interests, the court finds the defendants’ estoppel sufficient to guard against prejudice.” Id. (internal citations omitted). The Court also disagreed that the reexamination would cause unnecessary and unfair delay. “[T]he examiner responsible for the reexamination is already familiar with the [patent] family, having previously examined the patent-in-suit and its parent . . . . Moreover, this examiner had previously decided the priority date issue that is raised in the . . . reexamination by virtue of the [parent patent] examination.” Id. at 8 n.8. Finally, the plaintiff was a non-practicing entity that could be adequately compensated by money damages. Id.

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The Federal Circuit Advisory Council announced today its adoption of a Model Order Limiting Excess Patent Claims and Prior Art. The Council offered the Model Order “to aid trial courts in the exercise of their discretion in crafting orders tailored to the facts and circumstances of each case.” In adopting the Order, the Council considered several key issues, such as:

What. What should be limited—number of claims, number of prior art references, number of invalidity theories, number of terms for claim construction, number of accused products, or some combination?

Timing. When should the limits on asserted claims and prior art references
take effect? Should the limits be applied only once, or should a phased
approach gradually narrowing the scope of the case be followed? How
should the need for discovery be balanced against the value of early
streamlining?

Limitations. How should limits be formulated? Should the limits on
number of claims apply per case or per patent? How should the limits be
adjusted based on the variety of case-specific factors that courts have
considered? How can the due process rights of litigants be protected?

Effect. What effect does the judgment have on non-elected patent claims
and prior art references?

The Council concluded that “default numerical limits on the number of asserted patent claims and prior art references are workable.” And, a “phased implementation” of numerical limits would “balance the need for discovery against the benefits of early streamlining.”

The Model Order is attached below.

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Chief Judge Gregory Sleet recently construed the terms of two patents held by L’oréal and covering certain sunscreen compositions. Judge Sleet construed the following terms of the patents-in-suit:
– “cosmetically acceptable vehicle”
– “effective amount”
– “effective amount of at least 1% by weight”
– “cosmetic screening composition”
– “cosmetic”
– “cosmetically acceptable vehicle”
L’oréal S.A., et al. v. Johnson & Johnson Consumer Co., Inc., et al., C.A. No. 12-98-GMS, Order at 2-8 (D. Del. July 19, 2013). Judge Sleet also refused to construe certain preamble terms—including terms used in one claim at issue that was a Jepson claim—which did not recite “additional structure or steps underscored as important by the specification” and were therefore not claim limitations requiring construction. Id. at 2-4 n.2.

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Chief Judge Gregory Sleet recently construed the terms of four patents related to semiconductor packaging. Judge Sleet construed the following terms of the patents-in-suit:
– “a top surface”
– “the second metal layer serves as a reference to”
– “layer(s)”
– “top layer”
– “bottom layer”
– “isolating ground trace”
– “to isolate the signal traces and thereby provide noise shielding”
– “to isolate the two groups of signals”
– “to create a bottom-layer isolating ground trace”
– “identifying one or more groups of signals that need to be isolated due to noise”
– “to provide noise shielding”
– “to create a second-layer isolating ground trace”
Invensas Corp. v. Renesas Elecs. Corp., C.A. No. 11-448-GMS at 1-8 (D. Del. July 15, 2013). Judge Sleet also refused to construe two terms “in the absence of a genuine dispute” because the parties had reached agreement on constructions for the terms and refused to find that method claims of one patent-in-suit were required to be performed in the order recited. Id. at 3 n.3-5.

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Judge Sue L. Robinson recently denied a defendant’s motion for reconsideration of a summary judgment ruling of indirect infringement. INVISTA North America S.à.r.l. v. M&G USA Corp., Civ. No. 11-1007-SLR-CJB (D. Del. July 12, 2013). The defendant argued that the Court’s summary judgment ruling “misapprehended the facts supporting [the defendant’s] position” when it found that the defendant had submitted no evidence to create a genuine issue of material fact on the question of whether the accused products include “at least some trace amount of cobalt salt . . ., even if some of it complexes.” Id. at 3; see also summary judgment ruling, discussed here at 24-25. As the Court explained, the ruling was based on the defense expert’s own testimony (which was ignored in the defendant’s motion for reconsideration) that the expert “didn’t have an opinion about the cobalt . . . .” Id. at 3 n. 2. The Court explained that the defendant’s “attempt to create an opinion from an expert who has provided sworn testimony that he has no opinion on the relevant issue cannot sustain a motion for reconsideration or create any credibility issues for a jury.” Id. at 4.

The Court also rejected the defendant’s untimely attempt to submit in opposition to summary judgment a former employee and prosecution consultant’s declarations and testimony, which provided data and opinions drawn from that data. Id. at 4-5. The consultant was listed by the defendant as a fact witness, and he never prepared an expert report. Id. at 4-8. The Court considered the defendant’s proffer, but found that the data did not “include self-evident facts that cobalt neodecanoate complexes completely” and that the opinions drawn from the data “would clearly require scientific, technical, or other specialized knowledge” — i.e, expert testimony. Id. at 6. The Court explained that the witness’s proposed testimony on the issue in the litigation context would “not [be] within the purview of a fact witness and, most significantly, [his] testimony (whether fact or expert) regarding the extent to which cobalt neodecanoate complexes was never vetted during discovery and, submitted on the eve of trial, is untimely.” Id. at 8.

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Judge Richard G. Andrews recently considered defendant Yamaha Corp. of America’s motion to dismiss Black Hills Media LLC’s amended complaint for failure to state a claim of patent infringement. Black Hills Media LLC v. Yamaha Corp. of America, C.A. No. 12-635-RGA (D. Del. July 12, 2013). Judge Andrews denied Yamaha’s motion as to the claims of direct infringement because the claims complied with the Federal Rules of Civil Procedure’s Form 18. Id. at 1. Yamaha argued, among other things, that plaintiff had to “state that by its complaint, it [was] giving notice of direct infringement.” Id. Judge Andrews noted, however, that there was no support that dismissal would be proper simply for failing to state that the plaintiff was giving notice by filing the complaint. Id. Doing so “would be exalting form over substance[.]” Id. at 1-2. Judge Andrews did, however, dismiss without prejudice plaintiff’s indirect and willful infringement claims. Id. at 2. Among other things, plaintiff failed to allege facts that would make “the claim of prior knowledge of the patents plausible[.]” Id. at 1-2.

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