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In a recent memorandum opinion, Judge Richard G. Andrews denied plaintiff’s motion for entry of judgment, in which it requested that the Court “exercise its discretion to enter final judgment consistent with the summary ruling by either: (1) Proceeding to final judgment of non-infringement and dismissing any outstanding counterclaims without prejudice; or (2) Proceeding to final judgment of non-infringement pursuant to Rule 54(b) and staying the counterclaims pending resolution of the appeal.” L-3 Communications Corporation v. Sony Corporation et al., C.A. No. 10-734-RGA (D. Del. Oct. 4, 2013).

As Judge Andrews noted, “[t]he decision of whether to dismiss a counterclaim of invalidity where the Court has found no infringement is soundly within the Court’s discretion.” Id. at 1. Judge Andrews further noted that “[a]lternatively, under Federal Rule of Civil Procedure 54(b), the Court may determine that there is no ‘just reason for delay’ and direct the entry of final judgment of non-infringement while staying the remaining invalidity counterclaims.” Id. Denying plaintiff’s motion, Judge Andrews explained that “[h]ere, trial is scheduled to start less than a month away. Most of the preparation has already occurred. To delay would be a waste of the resources that have already been expended.” Id. at 2. Judge Andrews additionally denied plaintiff’s argument that Court “no longer has jurisdiction because there is no longer a case or controversy because the patent in suit has expired.” Id. As Judge Andrews explained, “[h]ere, the infringement dispute between [plaintiff] and [defendant] is not over, as the claim construction will likely be appealed. The fact that the patent has subsequently expired has no bearing on the infringement allegations.” Id.

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In Vehicle IP, LLC v. Werner Enterprises, Inc., C.A. No. 10-503-SLR (D. Del. Oct. 1, 2013), the jury returned a verdict finding that plaintiff had not proved that defendant’s system infringed the asserted claims of the patent in suit and that defendant had not proved that the same claims were invalid due to lack of enablement. Prior to trial, Judge Robinson precluded defendant from arguing at trial an untimely raised invalidity theory, and an untimely raised non-infringement theory. Prior to trial, Judge Robinson also granted summary judgment of non-infringement as to certain claims.

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In a recent Order, Judge Sue L. Robinson “confirm[ed]” her position on early summary judgment:

“The court will not entertain motions for summary judgment before the close of discovery unless: (a) the parties stipulate to the underlying facts of a dispute [either by agreement or presumption] (turning the exercise into resolving a question of law); or (b) the issue in dispute is dispositive, meaning that the court’s decision (regardless of its outcome) becomes the law of the case.”
In re: Automated Transaction LLC Patent Litigation, MDL Civ. No. 13-2429-SLR, at 1 (D. Del. Oct. 8, 2013). As to (b), the Court explained that it had “neither the time nor the resources to engage in multiple summary judgment exercises per case.” Id.

Additionally, plaintiff had requested that damages and willfulness not be bifurcated, as is Judge Robinson’s standard practice. The Court granted this request, “given the MDL status of this litigation.” Id. at 1.

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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.

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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”
– “And”
– “Aryl”
The Court also adopted the parties’ agreed-upon construction of the term “Neutral Electron Donor.” Id. at 9-59.

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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.

FBA Federal Circuit Reception

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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.

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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.

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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

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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.

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