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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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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.

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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.

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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.

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In Finjan, Inc. v. Symantec Corp. et al., C.A. No. 10-593-GMS (D. Del. Sept. 19, 2013), Chief Judge Gregory M. Sleet denied several post-trial motions. Following a thirteen-day jury trial in December 2012, the jury returned “a unanimous verdict in favor of each of the defendants on the issues of infringement with respect to each asserted claims on the patents-in-suit,” U.S. Patent Nos. 6,480,962 and 6,092,194. Id. at 1-2. The jury additionally found “that the asserted claims of the patents -in-suit were invalid due to obviousness and anticipation.” Id. at 2. During the trial, defendants and plaintiff had moved for judgment as matter of law (“JMOL”) on numerous grounds pursuant to Fed. R. Civ. P. 50(a), and the court denied all of those motions. Id. at 1. After the trial, plaintiff filed renewed motions for JMOL, and, in the alternative, moved the court for a new trial. Judge Sleet first denied plaintiff’s renewed motions for JMOL with respect to invaldity, finding that defendants introduced substantial evidence sufficient to support a jury verdict of invalidity on the grounds of obviousness and anticipation. Judge Sleet similarly denied plaintiff’s renewed motions for JMOL with respect to the jury’s verdict of non-infringement. Judge Sleet additionally denied plaintiff’s alternative motion for a new trial.

Judge Sleet also denied one defendant’s motion for attorney’s fees. Judge Sleet noted, among other things, that “this case does not rise to a level of bad faith or vexatious litigation that warrants an award of attorney fees and costs.” Id. at 83. He similarly noted that “[f]or the most part, the parties defended their respective positions throughout this litigation in apparent good faith and the court does not find evidence in the record sufficient to support the assertion that [plaintiff] acted in subjective bad faith or conducted litigation in a manner warranting attorney fees.” Id. at 83.

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Judge Leonard Stark recently decided several summary judgment motions in the ongoing patent infringement dispute between patent-owner Personalized User Model, L.L.P. and Google. The patents-in-suit relate generally to methods for “providing a more personalized experience for internet users based on individual user interests.” Personalized User Model, L.L.P. v. Google Inc., C.A. No. 09-525-LPS, Memo. Op. at 1-2 (D. Del. Sept. 20, 2013). With only one exception, Judge Stark denied all motions for summary judgment including for findings of non-infringement, invalidity, breach of contract, declaration of ownership, and lack of standing. Considering Google’s motion for summary judgment of non-infringement, Judge Stark denied the motion with respect to two patents-in-suit, but granted it with respect to a third patent. That third patent, the ’031 patent, had been asserted earlier in the case, but the plaintiff dropped the asserted claims of the ’031 patent in response to the Court’s order to reduce the number of asserted claims to fifteen. The plaintiff argued that the Court could not grant summary judgment over unasserted claims “because the Court does not have jurisdiction over claims that have been voluntarily withdrawn.” Judge Stark noted, however, that the “parties have failed to come to an agreement regarding a stipulation of dismissal of the ’031 patent claims, so the Court believes it still has jurisdiction over claims relating to this patent. As there is no evidence to support a finding of infringement of the ’031 patent, the Court will grant summary judgment of non-infringement.” Id. at 8-9.

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In Transcenic, Inc. v. Google Inc, et al., C.A. No. 11-582-LPS (D. Del. Sept. 17, 2013), Judge Leonard P. Stark construed the following disputed terms of U.S. Patent No. RE 42,289, entitled “Spatial Referenced Photographic System With Navigation Arrangement:”
“database”
“a database”
“camera path”
“launch pad control”
“means for displaying.”
The Court adopted plaintiff’s proposed constructions with a few modifications, except where it resolved the parties’ dispute over a term and concluded that no construction was needed. See id. at 9. The Court concluded that the following terms would be given their plain and ordinary meaning: “image,” “orientation of the image,” “yaw orientation of the respective image,” and “multiple images aligned in a panorama.”

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Special Master Lukoff recently considered Apple and Microsoft’s request to order plaintiff to produce early surveys commissioned by one of plaintiff’s experts in anticipation of issuing his expert reports. Robocast, Inc. v. Apple, Inc., et al., C.A. No. 11-235-RGA, C.A. No. 10-1055-RGA (D. Del. Sept. 18, 2013). The early surveys were conducted prior to the surveys which formed the basis of plaintiff’s expert’s opinions. Id. 1-2. The parties’ dispute hinged on the interpretation of the phrase “the facts or data considered by the witness in forming [the opinions],” found in Rule 26(a)(2)(B)(ii). Id. at 2. Plaintiff argued that production was not required because the expert did not consider those prior surveys when reaching his conclusions, and could not have considered them since the expert deleted the earlier surveys from his computer. Id. at 2. Defendants, on the other hand, argued that under Rule 26 the expert must have considered the surveys, even based only on the similarity of all the surveys. Id at 3. Moreover, defendants argued that the term “considered,” for purposes of Rule 26, has been defined by courts to mean “reviewed.” Id. “As such, a review having occured, there is no question about whether the expert had ‘considered’ the earlier surveys.” Id.

Special Master Lukoff noted that there was no reason to doubt that Plaintiff’s expert deleted the prior surveys and could not remember them when drafting his expert reports. Id. However, when construing Rule 26 “using common sense,” Special Master Lukoff determined that it would be “impossible to believe that an expert whose opinions are predicated upon the creation of a statistically-meaningful effort could have, in the statistical sense, completely ignored the data that had been previously collected by him.” Id. at 4. Ultimately, Special Master Lukoff noted that it was a close call, but, since there was “sufficient ambiguity” as to whether the prior surveys played a role in the expert’s final reports, the plaintiff was ordered to immediately produce those prior surveys (including questions and answers) to the defendants. Id. at 5-6.

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Judge Andrews has issued an opinion granting Sony’s motion for summary judgment of non-infringement that Sony’s CMOS semiconductor image sensors do not infringe L-3’s U.S. Patent No. 5,541,654. The ’654 patent includes the step of a “photovoltaic element which provides electric charge” and a step of “storing electric charge.” At the Markman hearing, Judge Andrews agreed with Sony that these two steps must be accomplished by “separate and distinct” elements. L-3 Commc’ns Corp. v. Sony Corp., et al., C.A. No. 10-734-RGA, Memo. Op. at 1-3 (D. Del. Sept. 19, 2013). At the summary judgment stage, Judge Andrews found that Sony’s accused product performed these steps at a single circuit element rather than separate and distinct elements. Thus, there was no literal infringement. Id. at 10. Judge Andrews then went on to explain that a finding of equivalence under the doctrine of equivalents would “‘overtake the statutory function of the claims in defining the scope of the patentee’s exclusive rights,’ as the claim requires two elements, not one. . . . [And a] single element is the antithesis of the requirement for two separate and distinct elements.” Id. at 11.

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Judge Richard G. Andrews recently issued an order granting a defendant’s motion to stay pending inter partes reexamination following the PTO’s rejection of all relevant independent claims and issuance of a Right of Appeal Notice. Riverbed Technology Inc. v. Silver Peak Systems Inc., C.A. No. 11-484-RGA (D. Del. Sept. 11, 2013). The plaintiff had indicated that it did not wish to proceed with litigation on the lone asserted patent that was not subject to the reexamination proceeding. As Judge Andrews explained, “[w]ithout going into great detail, simplification favors a stay.” The Court added that while the plaintiff would be prejudiced by a stay because the parties are competitors, the prejudice would not be undue.

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