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Chief Judge Gregory M. Sleet recently granted several defendants’ motions to stay pending inter partes reexamination in a Multidistrict Litigation (“MDL”) transferred to the District of Delaware in May 2012. In re: Bear Creek Technologies Inc. (‘722 Patent Litigation), MDL No. 12-md-2344-GMS (D. Del. Jul. 17, 2013). The plaintiff had sued defendants for patent infringement related to voice-over internet protocol products in the Eastern District of Virginia in February 2011. Id. at 2. All defendants save one had been severed for misjoinder in August 2011. Id. Around that same time, a non-party to the current MDL, Cicso, had also filed a request for inter partes reexamination of the patent-in-suit. Id. at 4. All defendants, both those who had moved to stay and those who did not oppose these motions, had agreed to be bound by the results of this reexamination if the Court stayed the litigation. Id. at 4 & n.2.

The Court concluded that the relevant factors favored the grant of a stay. Not only had the PTO preliminarily rejected all claims of the patent-in-suit, but this reexamination “also raises questions as to the effective priority date for the Patent, the determination of which could impact issues of validity and obviousness.” Id. at 6-7 n.8. The Court therefore concluded that the reexamination could simplify issues for trial and that “the court and the parties’ time and resources could be wasted” absent a stay. Id. at 7 n.8. It further noted that it was “unpersuaded by [plaintiff’s] contention that the asserted claims will be confirmed in reexamination because they have not been cancelled in two prior ex parte reexaminations.” Id.

Most of the MDL cases were in the early phases of litigation, and this fact also favored a stay. Id. The Court also stayed two actions that had progressed further. One was into claim construction and early discovery but was still “sufficiently early to be a neutral factor in the stay analysis.” Id. (internal quotation marks omitted). The other was “significantly further along” but the Court still stayed this action. Prior to the MDL transfer, the parties were well into fact and expert discovery and had participated in a Markman hearing, but this action had been stayed pending the MDL determination and “as a result, a Markman construction was not issued.” Id. Additional discovery was likely to take place “due to the ‘passage of time’ since the initial discovery, the pending Markman construction, . . . [defendant’s] modifications and updates to its telecommunications network,” and also because the parties could supplement discovery following the Court’s issuance of a Markman decision. Id. “In view of these factors and the MDL coordination of these cases, the court concludes that [this action] should be stayed along with the other actions.” Id.

Finally, the Court disagreed with plaintiff’s arguments that it would be prejudiced. Plaintiff argued that “the defendants will benefit from the inter partes reexamination in that Cisco can ‘audition’ the invalidity arguments the defendants would present at trial and learn which are successful.” Id. But the defendants’ agreement to be bound by this reexamination meant that they would be “estopped from challenging the validity of the [patent-in-suit] as obvious . . . based on the combinations of prior art presented by Cisco.” Id. “Despite [Plaintiff’s] assertion that this estoppel is too limited and does not protect its interests, the court finds the defendants’ estoppel sufficient to guard against prejudice.” Id. (internal citations omitted). The Court also disagreed that the reexamination would cause unnecessary and unfair delay. “[T]he examiner responsible for the reexamination is already familiar with the [patent] family, having previously examined the patent-in-suit and its parent . . . . Moreover, this examiner had previously decided the priority date issue that is raised in the . . . reexamination by virtue of the [parent patent] examination.” Id. at 8 n.8. Finally, the plaintiff was a non-practicing entity that could be adequately compensated by money damages. Id.

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The Federal Circuit Advisory Council announced today its adoption of a Model Order Limiting Excess Patent Claims and Prior Art. The Council offered the Model Order “to aid trial courts in the exercise of their discretion in crafting orders tailored to the facts and circumstances of each case.” In adopting the Order, the Council considered several key issues, such as:

What. What should be limited—number of claims, number of prior art references, number of invalidity theories, number of terms for claim construction, number of accused products, or some combination?

Timing. When should the limits on asserted claims and prior art references
take effect? Should the limits be applied only once, or should a phased
approach gradually narrowing the scope of the case be followed? How
should the need for discovery be balanced against the value of early
streamlining?

Limitations. How should limits be formulated? Should the limits on
number of claims apply per case or per patent? How should the limits be
adjusted based on the variety of case-specific factors that courts have
considered? How can the due process rights of litigants be protected?

Effect. What effect does the judgment have on non-elected patent claims
and prior art references?

The Council concluded that “default numerical limits on the number of asserted patent claims and prior art references are workable.” And, a “phased implementation” of numerical limits would “balance the need for discovery against the benefits of early streamlining.”

The Model Order is attached below.

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Chief Judge Gregory Sleet recently construed the terms of two patents held by L’oréal and covering certain sunscreen compositions. Judge Sleet construed the following terms of the patents-in-suit:
– “cosmetically acceptable vehicle”
– “effective amount”
– “effective amount of at least 1% by weight”
– “cosmetic screening composition”
– “cosmetic”
– “cosmetically acceptable vehicle”
L’oréal S.A., et al. v. Johnson & Johnson Consumer Co., Inc., et al., C.A. No. 12-98-GMS, Order at 2-8 (D. Del. July 19, 2013). Judge Sleet also refused to construe certain preamble terms—including terms used in one claim at issue that was a Jepson claim—which did not recite “additional structure or steps underscored as important by the specification” and were therefore not claim limitations requiring construction. Id. at 2-4 n.2.

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Chief Judge Gregory Sleet recently construed the terms of four patents related to semiconductor packaging. Judge Sleet construed the following terms of the patents-in-suit:
– “a top surface”
– “the second metal layer serves as a reference to”
– “layer(s)”
– “top layer”
– “bottom layer”
– “isolating ground trace”
– “to isolate the signal traces and thereby provide noise shielding”
– “to isolate the two groups of signals”
– “to create a bottom-layer isolating ground trace”
– “identifying one or more groups of signals that need to be isolated due to noise”
– “to provide noise shielding”
– “to create a second-layer isolating ground trace”
Invensas Corp. v. Renesas Elecs. Corp., C.A. No. 11-448-GMS at 1-8 (D. Del. July 15, 2013). Judge Sleet also refused to construe two terms “in the absence of a genuine dispute” because the parties had reached agreement on constructions for the terms and refused to find that method claims of one patent-in-suit were required to be performed in the order recited. Id. at 3 n.3-5.

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Judge Sue L. Robinson recently denied a defendant’s motion for reconsideration of a summary judgment ruling of indirect infringement. INVISTA North America S.à.r.l. v. M&G USA Corp., Civ. No. 11-1007-SLR-CJB (D. Del. July 12, 2013). The defendant argued that the Court’s summary judgment ruling “misapprehended the facts supporting [the defendant’s] position” when it found that the defendant had submitted no evidence to create a genuine issue of material fact on the question of whether the accused products include “at least some trace amount of cobalt salt . . ., even if some of it complexes.” Id. at 3; see also summary judgment ruling, discussed here at 24-25. As the Court explained, the ruling was based on the defense expert’s own testimony (which was ignored in the defendant’s motion for reconsideration) that the expert “didn’t have an opinion about the cobalt . . . .” Id. at 3 n. 2. The Court explained that the defendant’s “attempt to create an opinion from an expert who has provided sworn testimony that he has no opinion on the relevant issue cannot sustain a motion for reconsideration or create any credibility issues for a jury.” Id. at 4.

The Court also rejected the defendant’s untimely attempt to submit in opposition to summary judgment a former employee and prosecution consultant’s declarations and testimony, which provided data and opinions drawn from that data. Id. at 4-5. The consultant was listed by the defendant as a fact witness, and he never prepared an expert report. Id. at 4-8. The Court considered the defendant’s proffer, but found that the data did not “include self-evident facts that cobalt neodecanoate complexes completely” and that the opinions drawn from the data “would clearly require scientific, technical, or other specialized knowledge” — i.e, expert testimony. Id. at 6. The Court explained that the witness’s proposed testimony on the issue in the litigation context would “not [be] within the purview of a fact witness and, most significantly, [his] testimony (whether fact or expert) regarding the extent to which cobalt neodecanoate complexes was never vetted during discovery and, submitted on the eve of trial, is untimely.” Id. at 8.

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Judge Richard G. Andrews recently considered defendant Yamaha Corp. of America’s motion to dismiss Black Hills Media LLC’s amended complaint for failure to state a claim of patent infringement. Black Hills Media LLC v. Yamaha Corp. of America, C.A. No. 12-635-RGA (D. Del. July 12, 2013). Judge Andrews denied Yamaha’s motion as to the claims of direct infringement because the claims complied with the Federal Rules of Civil Procedure’s Form 18. Id. at 1. Yamaha argued, among other things, that plaintiff had to “state that by its complaint, it [was] giving notice of direct infringement.” Id. Judge Andrews noted, however, that there was no support that dismissal would be proper simply for failing to state that the plaintiff was giving notice by filing the complaint. Id. Doing so “would be exalting form over substance[.]” Id. at 1-2. Judge Andrews did, however, dismiss without prejudice plaintiff’s indirect and willful infringement claims. Id. at 2. Among other things, plaintiff failed to allege facts that would make “the claim of prior knowledge of the patents plausible[.]” Id. at 1-2.

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Judge Leonard P. Stark recently construed fifteen disputed claim terms across U.S Patent Nos. 7,691,057; 7,819,801; and 7,905,840, each entitled “Surgical Access System and Related Methods.” NuVasive, Inc. v. Globus Medical, Inc., C.A. No. 10-849-LPS (D. Del. Jul. 12, 2013). The three patents-in-suit relate “to a surgical access system and methods for performing surgery — particularly lumbar surgery, commonly referred to as minimally invasive spinal lumbar surgery.” Id. at 1. Judge Stark noted that in November 2011, the Court ordered plaintiff “to reduce the number of asserted claims from 55 to 15” and the parties “to reduce the number of proposed claim terms to be construed at this point in the case to no more than 15.” Id. at 1 n.1. Judge Stark construed the following fifteen disputed terms:
– “handle assembly”
– “handle assembly being capable of moving said plurality of retractor blades”
– “pivoting said first and second pivotable arm members relative to one another”
– “actuating”
– “coupled” / “coupling”
– “rigidly coupled”
– “being positioned to abut one another and form a closed perimeter”
– “closed position”
– “open position”
– “being positioned generally away from one another and forming an open perimeter”
– “opened”
– “groove”
– “neuromonitoring/nerve monitoring”
– “trans-psoas”
– “using [at least one] stimulation electrode”

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In a recent claim construction opinion, Judge Richard G. Andrews construed the following terms of U.S. Patent Nos. 7,582,717 and 7,598,343: “pharmaceutical batches,” id. at 1-3; “wherein the batches have a pH adjusted by a base,” id. at 3-6; and “efficient mixing,” id. at 6-11. The Medicines Company v. Teva Parenteral Medicines, Inc., et al., C.A. No. 09-750-RGA (D. Del. Jul. 11, 2013).

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In a recent memorandum order, Judge Richard G. Andrews granted Adobe Systems, Inc.’s (“Adobe”) motion to intervene in two actions pending in the District of Delaware, C.A. Nos. 11-812-RGA and 12-1440-RGA. Select Retrieval LLC v. Amerimark Direct LLC, et al., C.A. No. 11-812-RGA (D. Del. Jul. 3, 2013). Judge Andrews also granted defendants’ motions to sever in C.A. No. 11-812, but denied defendants’ motions to stay in both actions.

Judge Andrews explained that while plaintiff has not sued Adobe, it has sued at least five of its customers in the District of Delaware. Id. at 2. Moreover, “there is litigation on the same patent between the Plaintiff and other Adobe clients” at least in the Southern District of California, Oregon, Illinois, and Maine. Id. Judge Andrews additionally noted that Adobe had filed a declaratory judgment against plaintiff in the Southern District of California, but there has recently been little activity in that action. Id. at 1-2.

Considering Adobe’s motion to intervene, Judge Andrews was guided by Fed. R. Civ. P. 24(a). First, Judge Andrews considered “the extent to which Adobe’s technology was at issue” and “whether Adobe has . . . a duty to defend and indemnify its clients” to determine whether Adobe had a “significant protectable interest.” Id. at 2-3. Judge Andrews noted that plaintiff “did not dispute that Adobe had a duty to defend and indemnify its five clients.” Id. Moreover, Judge Andrews noted that “[t]he fact that Adobe has acknowledged its duty to defend and indemnify is a fairly strong indicator that its technology is indeed at issue in these cases.” Id. at 3. Judge Andrews further explained that “the fact that these five Adobe clients (as well as at least four more Adobe clients in the four related cases) all are alleged to infringe the patent suggests that Adobe’s technology may be the common link that provides a basis to believe each of the nine or more companies infringes the patent.” Id. Judge Andrews thus found it unnecessary “to delve into the technology here to conclude that Adobe does have a significant protectable interest.” Id. Finding the remainder of the Rule 24(a) factors to weigh in Abode’s favor, Judge Andrews granted Adobe’s motion to intervene. Id.

With respect to the motion to stay the litigation, defendants argued for application of the “customer suit exception.” Judge Andrews first distinguished the instant matter from Pragmatus Telecom, LLC v. Advanced Store Co., Inc., C.A. No. 12-88-RGA (D.Del. Jul. 10, 2012) (discussed previously here), where defendants had also argued in favor of the customer suit exception. Id. at 3-4. Judge Andrews noted that in this case, the “manufacturer declaratory judgment is in another district” (weighing in favor of applying the exception). Id. at 4. On the other hand, in this action, “customer defendants have not agreed to be bound by the results.” Id. Moreover, Judge Andrews found that “given the lack of activity in the declaratory judgment action, I cannot think that [granting stay] presents a particularly fair (to the Plaintiff) alternative to the pending litigation.” Id. On balance, Judge Andrews found there were “too many loose ends,” and denied defendants’ motions to stay the litigation. Id.

Judge Andrews had no “hesitation in concluding that the four Adobe customers [in C.A. 11-812] are not properly joined to cases involving other defendants using technology obtained elsewhere.” Id. at 3. Judge Andrews thus granted defendants’ motions to sever, but the cases against them were consolidated with those of the other defendants for all purposes other than trial. Id. at 4.

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Chief Judge Gregory M. Sleet recently construed the claim terms of U.S. Patent Nos. 5,780,676 and 5,962,731 relating to plaintiff’s Targretin® drug indicated for the treatment of cutaneous T-cell lymphoma. Eisai, Inc. v. Banner Parmacaps Inc., et al., C.A. No. 11-901-GMS (D. Del. July 2, 2013). The Court construed the following terms:

“co-transfection assay”
“useful to treat skin cancer”
In construing the terms, the Court rejected defendants’ proposed construction for “co-transfection assay” that was defined through reference to an article published in Science magazine. Id. at. n.1 After the Markman hearing, the defendants submitted a supplemental letter brief proposing a new construction that excluded reference to to the article. Id. The Court agreed with plaintiff that the supplemental brief was untimely, but did not reach the decision on whether it should consider the brief regardless:

The court agrees that the timing of the defendants’ proposed construction comes late in the claim construction process and, without the court granting leave for further briefing, limits the plaintiff’s opportunity to fully respond to the merits of the new proposed construction. However, because the court agrees with the plaintiff’s proposed construction of this term, it does not need to reach a decision on whether the defendants’ second proposed construction should be considered.

Id.

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