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In JSDQ Mesh Technologies LLC v. Fluidmesh Networks, LLC (f/k/a Fluidmesh Networks, Inc.), C.A. No. 16-212-GMS (D. Del. Sept. 6, 2016), Judge Gregory M. Sleet denied Defendant’s motion to dismiss due to patent ineligible subject matter. The Court did not engage in a detailed Alice inquiry, as the motion was denied based on three threshold concerns. First, the Court concluded that Defendant had failed to establish a representative claim, as it had not identified “a consistent abstract idea upon which to base its motion” and had not provided “meaningful analysis for each of the challenged patent claims at issue.” Id. at 5. Second, while Plaintiff had not provided any reason why claim construction would impact the Section 101 analysis, the Court was “not inclined to dismiss the claims absent claim construction or appropriate discovery.” Id. at 6. Finally, the Court concluded that it could not yet determine “whether there is any set of facts that could be proven that would result in the challenged claims being patent-eligible. . . . The briefing and evidence now before the court are inadequate to permit a conclusive answer[.]” Id. at 6-7 (emphasis in original).

JSDQ Mesh Technologies LLC v. Fluidmesh Networks, LLC (fka Fluidmesh Networks, Inc.), C.A. No. 16-212-GMS (D. Del. Sept. 6, 2016)

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Following a five-day trial in May 2016 in ART+COM Innovationpool GmbH v. Google Inc., C.A. No. 14-217-TBD (D. Del. Sept. 9, 2016), after which the jury returned a verdict of non-infringement and invalidity of the asserted patent, Judge Timothy B. Dyk, sitting by designation, considered (1) Plaintiff’s motion for relief from judgment under Rule 60(b); (2) Plaintiff’s motions for post-trial relief; and (3) Defendant’s renewed motion for judgment as a matter of law as to Section 101 invalidity.

The Court denied the Rule 60(b) motion. Plaintiff argued that the Court should have excluded the testimony of a fact witness who Defendant had retained as a consultant. The Court observed that case law “establish[ed] that a party can enter into agreements with fact witnesses that compensate those witnesses for consulting work and not trial testimony.” 60(b) Decision at 5. The Court concluded that this was the case here where there was no evidence that Defendant had compensated the witness for his testimony or that the consulting fees impacted the testimony, nor was the witness’s fee unreasonably high, even though the fee was five times more than his salary, in light of his expertise and the complexity of the case. Id. at 6-7. In light of Plaintiff’s opportunity to depose and fully cross-examine the witness, the Court also concluded that the consulting agreement had not prejudiced Plaintiff. Id. at 8-9.

The Court also denied Plaintiff’s motions for post-trial relief. Plaintiff had moved for judgment as a matter of law as to infringement and as to no invalidity, both of which the Court denied. See Post-Trial Relief Decision at 4-21. For example, as to invalidity based on a particular reference, the Court disagreed with Plaintiff that “the public must be able to ascertain the individual elements of an invention for [this particular reference] to constitute a public use.” Id. at 16. Rather, “[t]he critical inquiry is whether the invention is used without restriction of any kind.” Id. at 17. Here, the reference “was publicly demonstrated at two technical conferences, to attendees with knowledge in the art, without restriction or effort to maintain confidentiality,” and these acts were sufficient to constitute public use.” Id. at 18-19.

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In a recent Memorandum Opinion, Judge Richard G. Andrews granted defendant’s motion to dismiss plaintiffs’ complaint for failure to state a claim, on the ground that plaintiffs’ asserted patent , U.S. Patent No. 8,976,955 (“the ’955 patent”), fails to claim patentable subject matter under 35 U.S.C. § 101. Nice Systems Ltd. v. Clickfox, Inc., C.A. No. 15-743-RGA (D. Del. Sept. 15, 2016). The ’955 patent is directed to a “system and method of tracking user web interactions and using that information to generate real-time recommendations when a contact center agent is later contacted by that user.” Id. at 2. Under step one of the Mayo/Alice analysis, Judge Andrews found that “the claims are directed to the abstract idea of cross-channel customer service, i.e., gathering customer information from one communication channel and using it to engage the customer via another communication channel.” Id. at 7. Under step two, Judge Andrews concluded that the “claims . . . do not add any inventive concept to the abstract idea of cross-channel customer service.” Id. at 12. As Judge Andrews explained, “Plaintiffs’ arguments—focusing on the fact that the claims require automatic, real-time analysis—confirm that the claims are merely directed to using generic computer components to add efficiency and speed to the abstract idea of cross-channel customer service.” Id. at 12-13. Judge Andrews also noted that “unlike in DDR Holdings, the problem the ’955 patent purportedly addresses is not itself inherently limited to the specific technological environment claimed by the patentee.” Id. at 14.

Nice Systems Ltd. v. Clickfox, Inc., C.A. No. 15-743-RGA (D. Del. Sept. 15, 2016).

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Magistrate Judge Sherry R. Fallon recently considered plaintiff’s motion to compel defendant to supplement its document production and responses to certain interrogatories.  Regarding production of core technical documents, Plaintiff requested certain categories of documents, including:

(1) requirement and in-house technical specifications; (2) design documents; (3) scope of work documents and schedules; (4) vendor specifications; (5) complete functional programming guides; (6) testing documents; (7) deployment documents; (8) maintenance documents; (9) internal user guides; (10) system integration documents; (11) engineer training documents; (12) system architecture documents, and (13) complete architectural design documents.

Novanta Corporation v. Iradion Laser, Inc., No. 15-1033-SLR-SRF (D. Del. Sept. 16, 2016).  Defendant argued that it complied with the requirements of the Scheduling Order and that the categories of documents identified by plaintiff does not exist.  Id. at 4.

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Judge Gregory Sleet recently denied a motion to dismiss a Hatch-Waxman case filed by Plaintiff AstraZeneca shortly before the case was to begin trial. Certain defendants in the consolidated cases had converted their Paragraph IV certifications to Paragraph III certifications and filed motions to dismiss arguing that “by converting to a Paragraph III certification, [they are] no longer engaged in the highly artificial act of infringement that confers subject matter jurisdiction under 35 U.S.C. § 27l(e)(2) . . . [because they do] not seek approval until the expiration of the [patent-in-suit].” AstraZeneca AB v. Aurobindo Pharma Ltd., et al., C.A. No. 14-664-GMS, Order at 2 n.3 (D. Del. Sept. 15, 2016) (internal citations omitted). Judge Sleet found, however, that “subject matter jurisdiction remains because the conduct at issue is capable of repetition, yet evading review . . . [because] a patent owner would be prevented from fully litigating its claims of infringement if every time a Paragraph IV filer amended its certification from IV to III, or some other designation, the court was determined to be deprived of subject matter jurisdiction.” Id.

Moreover, Judge Sleet found “circumstantial, if not direct, evidence that supports the conclusion that there is a reasonable expectation that the same controversy involving these parties will recur. . . . [including the] amended Paragraph III Certification transmitted to the FDA . . . [which stated that Defendant] ‘Wockhardt Bio AG maintains the already submitted Paragraph IV certification for said patent.’ When taken together, the reasonable inference to be drawn from the cited evidence supports the conclusion that there is a reasonable expectation that Astra Zeneca may well again at some future time be required to assert its interests in the [patent-in-suit].” Id.

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Judge Richard G. Andrews recently granted a motion for judgment on the pleadings of invalidity under § 101.  Callwave Commc’ns, LLC v. AT&T Mobility, et al., C.A. Nos. 12-1701-RGA, 12-1704-RGA, 12-1788-RGA (D. Del. Sept. 15, 2016).  The defendants argued that the ’970 patent at issue, entitled “Location Determination System,” “claim[s] the abstract idea of relating location-related information through an intermediary,” through claims “written so broadly that they could be performed entirely by humans.”  Id. at 8.  The plaintiff countered that the ’970 patent describes “a specific technologic problem that arises in the context of complex location tracking systems, then claims a specific solution to that problem.”  Id. at 8-9.  Under the Mayo/Alice analysis, Judge Andrews found that “the claims are directed to the abstract idea of relaying location information via an intermediary.”  Id. at 9.  The Court added that “adding a vaguely defined intermediary that selectively forwards requests and returns responses does not make the underlying abstract idea any more concrete.”  Id. at 10.  “Unlike in Enfish, the claims . . . do not describe an improvement in any sort of technology.  While plaintiff purports to suggest that the asserted claims solve a specific, technological problem, the claims simply describe a vague method of relaying location information via an intermediary.”  Id. at 12.

The Court proceeded to find that the claims were “devoid of any inventive concept” that could save the patent from invalidation, explaining “[t]he only claim elements that describe something even arguably more than just basic steps of requesting location information and responding with the requested information, are the two limitations that state ‘adapted to determine the location of a respective mobile platform according to a property that is predetermined for each mobile platform’ and ‘determining for each mobile platform one of the remote tracking systems that is capable of locating said mobile platform.’”  Id. at 14.  Judge Andrews explained that these two limitations appear “simply directed to looking at a database to figure out what location tracking service is physically capable of locating a particular mobile platform or type of mobile platform.”  Id.  This “vague notion,” Judge Andrews found, “does not add anything of substance to the claims.”  Id.

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Judge Andrews recently denied a request by a patent-infringement defendant for a new trial date to accommodate a partial scheduling conflict with its expert. The conflict, as stated by Judge Andrews, was due to a mix-up that resulted in “Defendant’s main expert [making] other professional plans for the trial week of January 23, 2017 . . . ‘to attend and speak each day’ of” a conference in Florida. Judge Andrews noted that “Plaintiff’s team seems to have made plans based on the scheduled trial dates” and explained “[w]hile I appreciate that Defendant wants to have its main expert available and present for the entire trial, I have to balance that against the inconvenience moving the trial would cause to Plaintiff. Defendant will be able to have its expert present his testimony, whether it is by live video, deposition, or by missing a day of the conference.” E.I. DuPont de Nemours and Co. v. Unifrax I LLC, C.A. No. 14-1250-RGA, Order at 1-2 (D. Del. Sept. 13, 2016).

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In a recent Order, Judge Richard G. Andrews granted in part defendants’ motion to preclude plaintiffs’ expert. Impax Laboratories Inc. v. Lannett Holdings Inc., C.A. No. 14-984-RGA (D. Del. Sept. 6, 2016) (consolidated). Judge Andrews explained that the expert at issue “is a doctor and a very well-qualified migraine expert. He is not an economist, an accountant, a statistician, or a businessman.” Id. at 2. Judge Andrews found that the expert is “qualified to have an opinion on nexus [related to commercial success], but there is no evidence of any academic or experiential basis that would permit him to express quantitative business opinions.” Id. Judge Andrews therefore concluded that the expert may not testify “to his opinions on commercial success.” Id.

Judge Andrews otherwise denied defendants’ motion to preclude, explaining:

While I acknowledge the “gate-keeper” function of a federal trial judge, it is not so important that it be done pretrial when the trial is a bench trial. Live testimony and cross-examination are much more likely to result in a correct decision from me about whether the experts are giving appropriate scientific testimony. Thus, while I am denying most of the motion for now, Defendants may make (and, indeed, in order to preserve the issue, must make) objections at appropriate times. I expect Plaintiffs will lay appropriate foundation for [their expert] as part of their case. Failure to make a timely appropriate objection will result in the objection being waived. The Court will only consider evidence actually adduced at trial (whether through cross-examination or testimony from other witnesses) in ruling on any renewed motion.

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In a memorandum order issued yesterday, Judge Sue L. Robinson granted defendants’ motion to amend to add the defense of improper inventorship.  Intellectual Ventures I LLC v. Toshiba Corp. et al., Civ. No. 13-453-SLR (D. Del. Sept. 7, 2016).  The motion was filed shortly before the close of expert discovery and following the deposition of a third party who, defendants argued, should have been listed as an inventor of U.S. Patent No. 5,938,742.  The Court granted the motion even though it was filed “17 years after the ‘742 patent issued, and more than one year after the court-ordered deadline for amended pleadings[,]” and with trial set to begin in January 2017.  Id. at 4.  Judge Robinson explained, “[b]ecause the court is not prepared at this juncture to evaluate the quality or quantity of evidence defendants cite in their papers, and because the court recognizes the importance of proper inventorship, the motion to amend shall be granted.”  Id. at 5.  However, Judge Robinson added that due to the “extraordinary delay between issuance of the ‘742 patent and the assertion of improper inventorship, as well as the fact that, in most instances, the remedy for improper inventorship is a certificate of correction, not invalidation[,]” “the court will bifurcate the newly-added defense to allow for additional discovery and a separate motion practice and trial[.]”  Id.

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In a recent Memorandum Order, Magistrate Judge Christopher J. Burke denied plaintiff’s motion to compel, pursuant Fed. R. Civ. P. 34(a), defendant Konami Digital Entertainment Inc. (“Konami US”) to produce core technical documents regarding certain accused products that are in the possession of Konami US’s foreign affiliate. Princeton Digital Image Corp. v. Konami Digital Entertainment, Inc., et al., C.A. No. 12-1461-LPS-CJB (D. Del. Aug. 31, 2016). Specifically, plaintiff requested that Konami US be ordered to “supplement its core technical document production . . . to include the technical documents describing the features of each accused game title, including the functional requirements, technical specifications, test plans and other relevant technical documents” by producing records in the possession of Konami US’s non-party sister entity, Konami Digital Entertainment, Ltd. (“Konami Japan”). Id. at 1. Konami US and Konami Japan are owned by a common parent company. Id.

In arguing that Konami US “has control over core technical documents in the possession of Konami Japan,” plaintiff asserted that “[Konami US] had acted with [Konami Japan] in effecting the transaction giving rise to suit and is litigating on its behalf[.]” Id. at 2-3. Judge Burke rejected this argument, observing that plaintiff “has pointed to very little evidence with regard to the relationship between Konami US and Konami Japan.” Id. at 4. Judge Burke further explained that plaintiff “has not offered an articulation as to what it would mean for Konami US, in this patent litigation matter, to have ‘acted with’ Konami Japan to ‘effect’ the relevant ‘transaction[s].’” Id. at 6. Plaintiff also failed to offer “any other information about Konami Japan’s connection to the instant litigation.” Id.

Judge Burke similarly found that “the Court has no basis to conclude that Konami US ‘is litigating on [Konami Japan’s] behalf.’” Id. at 7-8. Judge Burke noted, for example, that “[t]here is no record here of . . . Konami Japan employees directing the course of this litigation or making important strategic decisions in the matter for Konami US.” Id. at 8. Judge Burke further explained as follows: “That Konami Japan has, in at least one instance, made evidence (source code) in its possession accessible to Konami US . . . simply in order to . . . ‘protect[] its employees from time-consuming work in connection with’ this matter . . . cannot be enough to make this showing under Rule 34(a).” Id.

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