Chief Judge Leonard P. Stark recently considered Kraft’s Daubert motions to exclude the testimony of TC Heartland’s experts. Kraft Foods Group Brands LLC v. TC Heartland, LLC, No. 14-28-LPS (D. Del. Jan. 12, 2017). Judge Stark struck the testimony of TC Heartland’s non-infringement expert’s opinions concerning the asserted claims’ packaging limitations because such testimony was inconsistent with the Court’s claim construction order. Id.at 2-4. Judge Stark denied, however, Kraft’s motion to exclude the testimony of TC Heartland’s damages expert. Kraft argued that the expert’s testimony on the availability and cost of a non-infringing alternative, stemming from unsubstantiated conversations with TC Heartland employees, was not based on “a reliable factual foundation.” Id. at 4. Judge Stark disagreed, noting that the employees in question were deposed and available to testify at trial, and that Kraft’s objections were fodder for cross-examination. Id. at 5. Kraft also moved to strike the expert’s testimony related to criticism’s of Kraft’s damages expert’s calculations. Judge Stark denied the motion as to these grounds as well because those issues “go to weight rather than admissibility.” Id. at 5-6.
Judge Sue L. Robinson revisited the scope of the statutory estoppel applicable in view of instituted IPR proceedings. Intellectual Ventures I LLC v. Toshiba Corporation, No. 13-453-SLR (D. Del. Jan. 11, 2017). Judge Robinson previously held that Toshiba was not estopped from presenting a certain obviousness combination at trial because an IPR was not instituted on that ground. Judge Robinson revisited this decision following supplemental papers submitted in conjunction with the pretrial conference and concluded that, while the Court’s “first look” at the issue was incomplete, the ultimate decision should remain unchanged. Id. at 1, 3. Judge Robinson described the issue at hand as a situation in which “the invalidity ground at issue (the Fuse combination) was never raised in the IPR, but reasonably could have been raised during the IPR[.]” Id. at 2. Absent specific guidance from the Federal Circuit as to this specific fact pattern, Judge Robinson described the options facing the Court:
[Plaintiff]’s reasoning leads to the conclusion that the PTAB is meant to be the invalidity arbiter of first resort and, therefore, a company that seeks an IPR must bring to the PTAB’s attention every ground the company has reason to think might be relevant; otherwise, it will be estopped from pursuing that ground in litigation. That outcome appears to be inconsistent with all of the limitations imposed by the PTAB on IPR proceedings (e.g., page limits for petitions, 14 point type, and portrait-view claim charts) and leaves for trial only those references initially rejected by the PTAB. On the flip side of the coin is [Defendant]’s reasoning, which leads to the conclusion that a company can play games between the PTAB (IPR) and the courts (litigation), asserting some references in connection with the IPR but reserving some for litigation.
Id. at 3. Ultimately, Judge Robinson held that since it is not the Court’s “place to make policy decisions, I am not inclined to change my original decision, with the hopes that any appeal may clarify the issue for future judges in future cases.” Id.
In TQ Delta LLC v. Pace PLC, et al., C.A. No. 13-1835-RGA (D. Del. Jan. 5, 2017), Judge Richard G. Andrews recently resolved the parties’ dispute with regard to the use of conflicts counsel for Plaintiff, which had been ordered by the Court in connection with taking certain third-party discovery. Having summarized the few relevant cases on this topic cited by the parties, the Court ordered that conflicts counsel was to be walled off from Plaintiff’s lead counsel, but not its Delaware counsel. Among other parameters, conflicts counsel could receive unredacted filings, discovery served to date, infringement and validity contentions, and Plaintiff’s expert opinions, but conflicts counsel could not receive “any tutorial” from the lead counsel and would not receive any draft discovery directed to the third party. Conflicts counsel could provide discovery from the third party to Delaware counsel, who could then provide the discovery to lead counsel.
The Court ruled that this wall would continue at least through the close of discovery, but may need to be “relaxed at some point before trial,” the details to be determined at a later date. However, any examination of the third party’s witnesses at trial would need to be done by conflicts counsel.
In three recent Orders, Judge Noel L. Hillman, sitting by designation, ruled on defendant’s (“Materia”) motions in limine. Judge Hillman first denied Materia’s motion in limine regarding plaintiff’s (“Evonik”) expert, ruling that “Evonik’s expert, Dr. Cooper, may be permitted to testify, as may any expert or fact witness from Materia, on the nature and quantity of any inoperable embodiments of a patent claim including ‘NHC’ as construed by the Court.” Evonik Degussa GmbH v. Materia, Inc., C.A. No. 09-636-NHL-JS (D. Del. Jan. 6, 2017).
Next, Judge Hillman granted and denied in part Materia’s motion in limine to exclude “certain argument or evidence based on Materia’s invocation of attorney-client privilege.” Specifically, Judge Hillman ruled that Materia’s motion “is granted in that Evonik is precluded from asking any questions which are reasonably likely to elicit an answer precluded by privilege. The Motion is denied in that Evonik may use a privilege log– in a redacted form so as to preclude any reference to privilege or confidentiality– to prove a fact established by the log.” Evonik Degussa GmbH v. Materia, Inc., C.A. No. 09-636-NHL-JS (D. Del. Jan. 9, 2017).
Finally, Judge Hillman granted Materia’s motion to preclude “Evonik from referencing or introducing at trial evidence related to the underlying substantive issues and allegations of the Boulder litigation . . . to the extent that Evonik is barred from introducing in its case-in-chief any evidence related to the underlying substantive issues and allegations of the Boulder litigation.” Judge Hillman noted, however, that “Evonik may seek leave of Court to use such evidence on cross-examination, or any rebuttal case, to demonstrate a witness’s prior inconsistent statement or to assess a witness’s credibility.” Evonik Degussa GmbH v. Materia, Inc., C.A. No. 09-636-NHL-JS (D. Del. Jan. 10, 2017).
Chief Judge Leonard P. Stark recently considered the parties motions for summary judgment and motions to exclude expert testimony in Vehicle IP, LLC v. AT&T Mobility LLC, et al., No. 09-1007-LPS (D. Del. Dec. 30, 2016). Judge Stark denied all the motions except one: defendants’ motion for summary judgment of no willful infringement. Plaintiff’s willfulness allegations were supported by testimony from one of the inventors of the patent-in-suit who later worked on developing an accused product. Id. at 17. Judge Stark held that such evidence was not enough because “a party’s pre-suit knowledge of a patent is not sufficient, by itself, to find ‘willful misconduct’ of the type that may warrant an award of enhanced damages.” Id. (citing Halo Elecs., Inc. v. Pulse Elecs., Inc., 136 S. Ct. 1923, 1936 (Breyer, J., concurring)). Judge Stark noted that the type of evidence absent from the record that may support a claim of willful infringement, other than pre-suit knowledge of the patent-in-suit, would include evidence that the inventor in question or defendant “intentionally relied on [the inventor’s] alleged prior knowledge of the patent in developing its products [or that the inventor] was hired because of his knowledge of the  patent.” Id.(internal quotations omitted). Because no reasonable jury could find willful infringement, the Court granted defendants’ motion.
In IOENGINE, LLC v. Interactive Media Corp. d/b/a/ Kanguru Solutions, C.A. No. 14-1571-GMS, Judge Gregory M. Sleet denied Defendant’s motion for summary judgment of invalidity and non-infringement of the independent claims of the patent-in-suit (U.S. Patent No. 8,539,047), based on the contention that the patent was directed to patent-ineligible subject matter. Defendant argued the claims were directed to the abstract idea of “providing communication with computing devices.” The Court disagreed, finding the claims analogous to those held to not be abstract ideas in McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016), as they recited “a specific arrangement of components and a very specific implementation and structure of the executable program code.” Id. at 2 n.2 (citing McRo). The claims were also distinguishable from those in Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014) as they defined “a tangible portable device with an unconventional hardware configuration that is able to run specific program code to provide the claimed functionality.” Id. “More important, the court agrees, as [Plaintiff] maintains, that the Independent Claims of the ‘047 patent are directed to a “specific asserted improvement in computer capabilities,” not to an abstract idea “for which computers are invoked merely as a tool,” citing the specification as support. Id. Having concluded the claims were not directed the abstract ideas, the Court did not reach step two of the Alice test.
In a recent Memorandum, Judge Gregory M. Sleet denied defendant Imation Corp.’s (“Imation”) motion to dismiss plaintiff IOENGINE, LLC’s (“IOENGINE”) complaint for lack of standing pursuant to Federal Rules of Civil Procedure 12(c) and 12(b)(1). The inventor of the patent-in-suit, United States Patent No. 8,539,047 (“the ’047 patent”), purported to assign the ’047 patent to IOENGINE LLC on October 7, 2014, but IOENGINE LLC’s Certificate of Formation was not filed with the office of the Secretary of State of Delaware until October 8, 2014. Id. at 2. Imation argued that IOENGINE LLC “did not exist at the time of the proferred assignment and therefore could not have received any rights” in the ’047 patent.” Id. at 5. The court agreed that “IOENGINE did not formally exist and could not, as a de jure entity, have obtained ownership of the ’047 patent on October 7, 2014.” Id. at 7.
The court ultimately recognized, however, that IOENGINE was a de facto LLC at the time of the patent assignment on October 7, 2015, and therefore concluded that IOENGINE has standing to bring suit. Id. at 10. Specifically, the court looked to the Delaware “common law-doctrine of de facto incorporation.” Id. at 8. The court could not find “any principled reason to conclude that a limited liability company would or should be treated differently from a corporation when considering the de facto formation of one or the other.” Id. When considering de facto formation, the court focused on facts demonstrating “a good faith, bona fide attempt to comply with the statutory requirements of formation of a limited liability company.” Id. at 10. For example, on October 7, 2014, the formation documents for IOENGINE were finalized, executed, and notarized, and its Delaware registered agent was designated. Id. at 9. The court therefore found that IOENGINE was a de facto LLC on October 7, 2014, and denied Imation’s motion to dismiss. Id. at 10.
In Boston Scientific Corp., et al. v. Edwards Lifesciences Corp., et al., C.A. No. 16-275-SLR-SRF (D. Del. Dec. 27, 2016), Magistrate Judge Sherry R. Fallon denied Defendants’ request to include in the protective order an objection procedure for disclosure of confidential material to non-U.S. counsel in counterpart litigation. The Court concluded that the following provision would reveal counsel’s work product because it would reveal which documents were “important to Plaintiffs”: “Prior to disclosure of Protected Material to Designated Foreign Counsel, the Party seeking disclosure shall provide written notice to the Producing Party identifying (i) the names of the Designated Foreign Counsel and (ii) the specific Protected Material sought to be disclosed to the Designated Foreign Counsel.” Id. at 2.
Defendants argued that the provision was necessary to provide a mechanism by which disclosure of sensitive documents could be objected to, and maintained that “foreign counsel access is unnecessary for coordinating litigation strategy.” Id. at 3. It further argued that the provision was “modeled after a provision in [another case’s] protective order.” Id. However, the Court observed that “the [other order’s] provision upon which [the proposed provision] is modeled relates to the use of documents in foreign actions. Whereas, in the present case, there is no pending request to use the documents in foreign litigation. Plaintiffs previously agreed that the documents would not be used in any foreign litigation. Therefore, the addition of [the provision] is unnecessary.” Id. (emphasis in original).
Chief Judge Stark has granted a motion for judgment on the pleadings pursuant to Fed. R. Civ. P. 12(c) on the grounds that certain claims of certain patents asserted by Intellectual Ventures are invalid under 35 U.S.C. § 101.
Judge Stark’s opinion addressed three patents. The first, U.S. Patent No. 6,115,737, discloses “a system that facilitates network based interactions between a customer and a service provider.” Intellectual Ventures I LLC v. AT&T Mobility LLC, et al., C.A. No. 12-193-LPS, Memo. Op. at 11 (D. Del. Dec. 30, 2016). Judge Stark found that the challenged claims of this patent were “directed to the abstract idea of account management” which the patent specification makes clear is “a fundamental economic practice long prevalent in our system of commerce.” Moreover, the added limitations of “accessing a network, entering a request, displaying the request, accepting the request via a CCSN/IG, and remotely processing the request” were insufficient to add an inventive step to this abstract idea, particularly because the specification describes “the CCSN/IG as a standard gateway, running standard software, using well-known protocols.” Id. at 12-16.
The other two patents-in-suit, Nos. 8,078,200 and 7,450,957, were each directed to a “method and system for controlling the use of a short message service . . . [that] enables users to block and screen short message service (“SMS”) messages based on predetermined criteria.” Id. at 20. Judge Stark found this to be an abstract idea because the common specification “acknowledges that ‘[t]he concept of blocking and screening messages is a . . . long-practice concept’ . . . [in which] each step in claim 1 – receiving, screening, and the forwarding or blocking a message based on predetermined criteria – could be analogously performed by a human, instead of by a computer.” Id. at 21. Further, the claims at issue “provide[d] no further inventive concept” because “[l]imiting the claims to ‘one field of use’ – here, SMS technology – is insufficient to confer patent eligibility.” Id. at 22-23.
An additional interesting point in Judge Stark’s analysis concerns the claim construction order, which the Court issued in March 2015. The plaintiff argued that the claim construction order relied on factual matters outside of the pleadings and, therefore, a Rule 12(c) judgment on the pleadings could not be based on the claim construction order. Judge Stark rejected this argument, finding that because claim constructions is a question of law, “the Court may take notice of and rely on its claim construction opinion without converting Defendants’ Motion into a motion for summary judgment.” Id. at 9-10.
Chief Judge Leonard P. Stark recently issued the Court’s claim construction rejecting defendants’ indefiniteness arguments and finding the preamble limiting. Mayne Pharma Int’l Pty Ltd. v. Merck & Co., Inc., No. 15-438-LPS (D. Del. Dec. 27, 2016). The preamble of the asserted claims stated “A pharmaceutical composition, consisting essentially of ….” Judge Stark found the preamble limiting “because it provides antecedent basis for the term ‘the composition,’ which appears in the wherein clauses of claims 9 and 12.” Id. at 14. Judge Stark construed the to mean “any composition suited for pharmaceutical use” in accord with its plain and ordinary meaning. Id. at 14-15. In doing so, Judge Stark rejected defendants’ proposed construction, “a medicinal drug preparation for administration to patients,” because defendants’ proposal improperly narrowed the scope of the claims. Id. Judge Stark also rejected defendants’ indefiniteness arguments regarding the terms “consisting essentially of,” “wherein in vivo the composition provides a mean Cmax of at least 100 ng/ml, after administration in the fasted state,” “‘wherein in vivo the composition provides a mean AUC of at least 800 ng.h/ml, after administration in the fasted state,” and “polymer having acidic functional groups.” Id. at 5-13, 16-17.