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Judge Andrews recently bifurcated a case in which the plaintiff and defendant each asserted one patent against the other into two one-patent trials.  Viatech Techs., Inc. v. Microsoft Corp., C.A. No. 14-1226-RGA (D. Del. June 6, 2016).  The patents related to the same technology, and the defendant’s asserted patent was referenced as prior art to the plaintiff’s asserted patent.  However, the Court decided “that it would likely be better to schedule two trials rather than one,” explaining:

First, patent trials are difficult enough for juries without adding to the degree of difficulty.  Trying both patents in one case would involve additional infringement analysis and damages analysis over a trial on just one patent. Extra testimony can lead to confusion.  Second, it appears that Defendant’s assertion of its patent against Plaintiff’s product is of lesser importance in the scheme of things.  Although there was briefing on asserted claim disputes on both patents, the parties agreed that the ten most important ones all related to Plaintiff’s patent.  My judgment is that resolution of the claims involving Plaintiff’s patent will likely resolve the entire case.  Depending on the schedule, it may never be necessary to resolve the claim disputes on Defendant’s patent.  Thus, I think scheduling separate trials is likely to result in economy.

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Judge Richard G. Andrews recently granted a defendant’s motion for certification of partial final judgment under Rule 54(b), finding that the balance of factors under the relevant Third Circuit test favored certification.  Interdigital Commc’ns, Inc. v. ZTE Corp., C.A. No. 13-009-RGA (D. Del. June 7, 2016).  A jury found in favor of the plaintiff on infringement of three patents, one of which was subsequently deemed unpatentable during inter partes review.  The Court deferred ruling on post-trial motions related to that one patent pending the resolution of the plaintiff’s appeal of the PTAB ruling, but ruled on post-trial motions relating to the other two patents (the “power ramp-up patents”).  As a result, with respect to the power ramp-up patents, all that remained in the district court was a trial on damages.  In analyzing the Third Circuit factors under Berckeley Inv. Grp., Ltd. v. Colkitt, 455 F.3d 195, 203 (3d Cir. 2006), Judge Andrews found:  (1) there was no overlap between  the power ramp-up patents and the third patent (the patentability of which was currently on appeal); (2) the need for appellate review of liability for infringement of the power ramp-up patents would not be mooted by any further developments in the district court; (3) there was no risk that the Federal Circuit would be asked to consider the same issues with respect to the power ramp-up patents a second time; and (4) appellate review of liability for infringement of the power ramp-up patents could obviate entirely the need for a damages trial on those two patents.  On balance, these factors favored granting the defendant’s motion for certification of partial final judgment under Rule 54(b).

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In IControl Networks, Inc. v. Zonoff Inc., C.A. No. 15-1109-GMS (D. Del. June 6, 2016), defendant filed a motion to dismiss, contending that plaintiff’s complaint had failed to plausibly state a claim for willful infringement. The Court rejected this argument, noting that plaintiff’s “reliance upon ‘information and belief’ in its pleadings is not deficient given the further information here demanded by [defendant] lies uniquely within the control of the defendant” and that the complaint went “beyond mere legal conclusions and [made] sufficient factual allegations to state a claim.” Id. at 1-2 n.1 (citations and quotation marks omitted). Defendant also argued that plaintiff’s claim for pre-suit damages should be dismissed as not complying with the patent marking statute (35 U.S.C. § 287), but the Court rejected the premise that “the requirements of § 287 are equivalent to the Federal Circuit’s requirements of a ‘statement that the plaintiff has given the defendant notice’ in an infringement complaint. . . . the court sees no reason to dismiss claims for pre-suit damages at this stage.” Id. at 2 n.1 (citations omitted).

Finally, the Court rejected defendant’s argument that plaintiff’s indirect infringement allegations had to enumerate the specific patent claims asserted, citing the District’s Default Standard for Discovery that “contains a procedural mechanism for the identification of specific asserted claims, and the court sees no need to depart from that process here.” Id. Accordingly, the Court denied defendant’s motion to dismiss and for a more definite statement.

 

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In a recent Report and Recommendation, Magistrate Judge Christopher J. Burke construed seven claim terms from U.S. Patent No. RE40,000 (the “’000 patent”), which is directed to a method of using carvedilol to decrease the risk of mortality caused by congestive heart failure (“CHF”). GlaxoSmithKline LLC et al. v. Glenmark Pharmaceuticals Inc., USA, et al., C.A. Nos. 14-877, 14-878-LPS-CJB (D. Del. June 3, 2016). In the course of construing those terms, Judge Burke found that the term “”decreasing mortality caused by congestive heart failure,” which appears in the preamble of claim 1, should limit the claim. In support of this finding, Judge Burke first noted that as in this case, “[t]he Federal Circuit has held that language in the preamble of a claim constitutes a limitation if the preamble sets forth the objective of the method, and the body of the claim directs that the method be performed on someone ‘in need.’” Id. at 14. Second, Judge Burke found that “the term ‘said patient’ in the claim body relies on and derives antecedent basis from ‘a patient in need [of having their risk of mortality decreased]’ in the preamble.” Id. at 15. Third, Judge Burke noted that “[i]t cannot be seriously disputed that, at a minimum, a significant portion of the applicant’s arguments for patentability was that the drug’s usefulness in decreasing mortality of CHF patients was something distinct from its usefulness in treating symptoms of CHF.” Id. at 16.

In support of their argument that the preamble limitation was non-limiting–which was ultimately rejected–defendants had asserted that “GSK’s claims impermissibly recite merely a particular result of a known use.” Id. at 9. Judge Burke concluded, however, that whether “the claims improperly recite a particular result of a known use of carvedilol is more amenable to resolution on a motion for summary judgment of invalidity.” Id. at 17.

GlaxoSmithKline LLC et al. v. Glenmark Pharmaceuticals Inc., USA, et al., C.A. Nos. 14-877, 14-878-LPS-CJB (D. Del. June 3, 2016).

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Judge Sleet’s recent order construing terms of patents in suit in this case between Bristol-Myers Squibb and Merck & Co. includes an interesting discussion of a limiting claim preamble. As Judge Sleet explained, the “parties’ dispute focuses primarily on whether a limitation should be incorporated in the terms that indicates the goal of the treatment” of metastasis of cancer cells using anti-PD-1 antibodies. “In the patents at issue, the claims explain what the method of treatment consists of, yet Merck would also have the court construe treatment to require the attempted result based upon the goal identified in the preamble: suppression of metastasis or proliferation of cancer cells. The court declines to limit the terms in this way.” Bristol-Myers Squibb Co., et al. v. Merck & Co., Inc., et al., C.A. No. 14-1131-GMS, order at 1 n.1 (D. Del. June 6, 2016).

Further, Merck argued that certain “wherein” clauses should be deemed limiting in that they require a particular effect, citing Griffin v. Bertina, 285 F.3d 1029 (Fed. Cir. 2002). Judge Sleet found, however, that although “that case did feature ‘wherein’ clauses like the patents at issue, the court is persuaded that in this case there will not be confusion about the reason for administering anti-PD-1 antibodies.” Id.

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Judge Richard G. Andrews recently considered defendants’ motion to dismiss for lack of standing.  Acceleration Bay LLC v. Activision Blizzard, Inc., et al., Nos. 15-228-RGA, 15-282-RGA, 15-311-RGA (D. Del. Jun. 3, 2016).  Plaintiff claimed it owned the patents-in-suit after purchasing them from Boeing Intellectual Property Licensing Company.  Id. at 2.  Defendants filed the motion to dismiss after acquiring the purchase agreement between plaintiff and Boeing, pursuant to which Boeing assigned “all right, title and interest” to the patents, subject to certain of Boeing’s “pre-existing licenses.”  Id. at 4.  Judge Andrews found that, since Boeing conditioned the assignment on the terms of the licenses Boeing retained, Boeing “did not convey ‘entire patent[s], an undivided part or share of [any] patent, or all rights under the patents[s] in a specified geographical region of the United States.'”  Id. at 5 (quoting Rite-Hite Corp. v. Kelley Co., Inc., 56 F.3d 1538, 1551 (Fed. Cir. 1995)).  Further, Judge Andrews found that the purchase agreement could not convey standing because “Boeing retained the right to sue within its field of use.”  Id. at 6.  “The Federal Circuit has concluded that an exclusive field of use licensee does ‘not hold all substantial rights in the full scope of the … patent,’ and therefore lacks standing.”  Id. at 6-7 (quoting Int’l Gamco, Inc. v. Multimedia Games, Inc., 504 F.3d 1273, 1280 (Fed. Cir. 2007)).  Boeing also retained, among other things, the right to practice the patented methods, which also “weigh[ed] against a finding that Boeing transferred all substantial rights.”  Id. at 7-8 (citing Abbott Labs. v. Diamedix Corp., 47 F.3d 1128, 1132-33 (Fed. Cir. 1995)).

In sum, having found that plaintiff lacked prudential standing, the Court held that the actions must be dismissed unless Boeing was joined as a plaintiff.  Id. at 10.  Judge Andrews gave plaintiff 14 days to join Boeing or the cases would be dismissed.  Id. at 10-11.

Acceleration Bay v. Activision Blizzard, No. 15-228-RGA

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Judge Richard G. Andrews recently rejected the parties’ request to redact a hearing transcript.  ViaTech Techs., Inc. v. Microsoft Corporation, No. 14-1226-RGA (D. Del. Jun. 6, 2016).  Relying on Mosaid Tech Inc. v. LSI Corp, 878 F. Supp. 2d 503 (D. Del. 2012) and Pansy v. Borough of Stroudsburg, 23 F.3d 772, 786 (3d Cir. 1994), Judge Andrews found that the parties did not establish good cause to seal the designated portions of the transcript.  Id. at 1-2.  Judge Andrews noted that the parties did not submit an affidavit or declaration showing “why disclosure of the information might cause a clearly defined serious injury to” the parties.  Id. at 2.  The sole fact that information had been designated as confidential under a protective order was insufficient to establish a “clearly defined and serious injury.”  Id.  Although there is not much interest in the information in the proposed redactions (i.e., discovery issues), “once [such information] is disclosed in a judicial proceedings [sic], it is in the public interest to be able to understand the proceedings before a judge, and redaction of the transcript hinders that public interest.”  Id.  Further, even if the information were “redaction-worthy” they were “significantly broader” than appropriate or necessary.  Id.

ViaTech v. Microsoft, No. 14-1226 (Redaction)

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In Inventor Holdings, LLC v. Bed Bath & Beyond Inc., C.A. No. 14-448-GMS (D. Del. May 31, 2016), Judge Gregory M. Sleet considered defendant’s motion for attorneys’ and experts’ fees and costs pursuant to Section 285. The case had been dismissed based on defendant’s Section 101 motion based on the Alice test. The court granted the motion as to attorneys’ fees and costs, but denied it as to experts’ fees and costs.

The Court concluded that plaintiff’s “infringement claims rested on patents whose validity are objectively invalid under current interpretations of [Section 101],” such that “whatever merit [plaintiff’s] claims had at the outset of litigation, by the time of the Alice decision, the business method claims . . . were objectively ineligible under § 101.” Id. at 4-5.

Having found the case to be exceptional based on the above, the Court awarded attorneys’ fees from the time the Alice decision had issued. But the Court declined to award experts’ fees and costs under its inherent authority, finding the award of attorneys’ fees to be “sufficient to achieve the goals envisioned by section 285.” Id. at 7.

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On March 10, 2016, Magistrate Judge Sherry R. Fallon issued a report and recommendation denying plaintiff Intellectual Ventures I LLC’s (“IV”) motion to compel defendant Ricoh Electronics, Inc. (“REI”) to produce certain documents in the possession of Ricoh Company, Ltd. (“RCL”), and to produce 30(b)(6) witnesses to testify regarding certain RCL documents that had been produced. Intellectual Ventures I LLC v. Ricoh Americas Corporation, et al., C.A. No. 13-474-SLR-SRF (D. Del. Mar. 10, 2016) (public version published Mar. 17, 2016). Defendant REI is a U.S. company and wholly owned subsidiary of the other defendant to this action, Ricoh Americas Corp. (“RAC”). RCL is Japanese company that is the parent of RAC, REI, and other Ricoh entities. RCL designs and manufactures the products accused of infringement in this action, and exports them to REI in the U.S., who transfers the accused products to RAC for distribution and sales in the U.S. In September 2014, Judge Robinson dismissed RCL as a party for lack of personal jurisdiction. Following RCL’s dismissal, REI did not provide discovery regarding the design, structure, and operation of the accused products, asserting that those documents were in RCL’s control. REI eventually produced a Technical Assistance Agreement (“TAA”) between RCL and REI, and a number of other RCL documents, but IV still found the production deficient. IV thus moved to compel REI after a motion for issuance of letters rogatory was denied by Japanese authorities. Id. at. 1-2.

Denying IV’s motion to compel document production, Judge Fallon first found that “REI does not have control over the missing documents in RCL’s possession under the terms of the TAA.” Id. at 4. Judge Fallon further explained that “IV . . . failed to establish the existence of an agency relationship between REI and RCL in accordance with Third Circuit precedent.” Id. at 5. Denying the motion to compel the production of a 30(b)(6) witness, Judge Fallon noted that “REI has shown that its ability to prepare witnesses to discuss documents from another corporate entity is substantially limited. Specifically, REI does not design the products, and employees of REI do not have personal knowledge of the technical details set forth in the documents produced by RCL.” Id. at 6. Judge Fallon explained that although “[t]he duty of preparation goes beyond the designee’s personal knowledge and matters in which the designee was personally involved, . . . a corporate subsidiary cannot be expected to acquire all of the knowledge of the parent company and testify on that information in a manner that would effectively result in an end-run around Judge Robinson’s ruling on the motion to dismiss and the denial of the Hague Convention request by the Japanese authorities.” Id.

On May 23, 2016, Judge Robinson concluded that there were no legal errors in Judge Fallon’s analysis and therefore adopted the Report & Recommendation. Intellectual Ventures I LLC v. Ricoh Americas Corporation, et al., C.A. No. 13-474-SLR (D. Del. May 23, 2016). Judge Robinson further explained, however, that “[i]t was not until October 2015 that REI produced [the] Technical Assistance Agreement (“TAA”) between RCL and REI. The TAA was executed in October 2005 and, therefore, was known or should have been known to REI before this litigation commenced (March 2013). The TAA limits the flow of information from RCL to REI in several ways, from the narrow scope of products to the nature of the information provided.” Id. at 2. According to Judge Robinson, pursuant to the TAA, “RCL has agreed to provide only information related to REI’s non-infringement defenses, as opposed to all relevant core technical information.” Id. Judge Robinson continued:

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Judge Mary Pat Thynge recently recommended the Court grant Illumina’s motion to amend its Answer and Counterclaims to assert inequitable conduct.  Cornell University v. Illumina, Inc., No. 10-433-LPS-MPT (D. Del. May 27, 2016).  In its motion, Illumina alleged “the applicants and prosecuting attorney of the [] patents violated their duty of candor to the PTO by filing a false or misleading 37 C.F.R. § 1.131 declaration” during prosecution regarding the applicants reduction to practice of the claimed methods.  Id. at 2.  According to Illumina, absent the false or misleading statement, the patents would not have issued.  Id. at 2-3.

Judge Thynge found that there was good cause to amend and no undue delay, despite the fact that the deadline to amend pleadings had passed, based on the fact that the underlying facts supporting the amendment were obtained and confirmed during discovery, in particular through deposition testimony.  Id. at 10-13.    The basis for Cornell’s opposition was futility because the proposed amended pleading did not adequately plead inequitable conduct.  Id. at 13.  Judge Thynge disagreed, finding that the inequitable conduct allegations were pled with particularity, “identify[ing] the specific who, what, when, where and how of the material misrepresentation or omission committed before the PT0.”  Id. at 14 (citing Exergen v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1328 (Fed. Cir. 2009).  The “who” identified by Illumina were the specific applicants and prosecution counsel.  Id. at 14.  “What” information was purportedly misrepresented to the PTO was the date of the applicants’ reduction to practice.  Id. at 14-15. The “when” identified was the date of the declaration in question as well as “the actions the PTO took before and after the filing of that declaration.”  Id. at 15.  Illumina identified the declaration as “where” the misrepresentation occurred, and detailed “how” the declaration and purported misrepresentation resulted in the PTO’s issuance of the patents.  Id. at 15-16.

Cornell responded that the proposed pleading failed to plead that the declaration was material and that the persons identified had specific intent to deceive the PTO.  Id. at 16.  Regarding materiality, Cornell pointed to evidence “inconsistent with defendant’s allegations and reading of the [declaration].”  Id. at 18-19.  Judge Thynge determined, however, that at the pleading stage “plaintiffs’ evidence is irrelevant and the court can not address the merits of that evidence.”  Id. at 19.  Judge Thynge concluded, therefore, that Illumina sufficiently alleged that the declaration contained a material false or misleading misrepresentation.  Id.  Regarding intent to deceive, Cornell argued that “there can be no finding of deceptive intent, nor a reasonable inference of deceptive intent because [the applicants] testified they believed the declaration to be true at the time of filing and that [prosecution counsel] also testified he took steps to ensure that the inventors understood what the declaration, and the specific sentence at issue, meant before they signed the declaration.”  Id. at 19-20.  Judge Thynge noted that Cornell’s argument again “relies on assertions of fact requiring the court to address the merits of the evidence[.]”  Id. at 20.  Based on the allegations in the proposed pleading, Judge Thynge determined Illumina adequately pled specific intent.  Id. at 20.

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