Judge Richard G. Andrews recently issued a second supplemental claim construction order construing one disputed claim term. Interdigital Commc’ns, Inc., et al., v. ZTE Corp., et al., C.A. No. 13-00009-RGA (D. Del. Aug. 8, 2014). The Court previously issued a claim construction order that reserved judgment on the term “[re-]synchroniz[ed/ing] to the/a pilot signal” (discussed here, and original claim construction order discussed here). In this second supplemental order, Judge Andrews construed the term to mean “establish a timing reference with a pilot signal.”
Judge Richard Andrews recently issued his construction of several disputed claim terms of patents related to capturing images on mobile devices for document management, particularly processing checks. Mitek Sys., Inc. v. TIS America Inc., et al., C.A. No. 12-1208-RGS, Memo. Op. at 1 (D. Del. Aug. 6, 2014). Judge Andrews construed the following disputed terms:
– “smaller color image”
– “adapted to be recognized by at least one financial processing system”
– “entering the extracted financial content from identified the at least one field into a new financial document with at least one corresponding field”
Interestingly, with respect to the last term, which defendants asserted was insolubly ambiguous, Judge Andrews explained that “[t]he dispute here is that the term recites ‘from identified the,’ rather than ‘from the identified.’ Claim 9, on which claim 10 depends recites ‘from the identified.’ Clearly this term is a typo. It is within my power to correct it, and I therefore do so.” Id. at 4 (citing Novo Industries, L.P. v. Micro Molds Corp., 350 F.3d 1348 (Fed. Cir. 2003)).
In Vehicle Interface Technologies, LLC v. Jaguar Land Rover North America, LLC, C. A. No. 14-339-RGA (D. Del. Aug. 6, 2014), Judge Richard G. Andrews recently denied defendant’s motion to dismiss plaintiff’s complaint. In a prior action between the parties, plaintiff had named additional accused products toward the close of fact discovery; this Court had granted defendant’s request to preclude these additional products from the suit, and on the same day plaintiff filed a new lawsuit including these additional accused products. Id. at 1. Defendant now moved to dismiss this second lawsuit, arguing plaintiff was barred by the doctrine of claim splitting and because the suit was a collateral attack on the Court’s previous order. Id.
In denying the motion as to claim splitting, the Court pointed out that, in the prior suit, defendant “previously relied on the differences between the accused products” to argue plaintiff could not add them, whereas now it pointed out the “similarities between the Plaintiff’s description of the products in the initial and present suit.” Id. at 2 (emphasis added). The Court explained that “[t]his Court denied the Plaintiff’s attempt to amend its [infringement contentions] because the Defendant argued that functional differences between the previously accused product and the newly accused products would cause it undue prejudice. The Defendant cannot have its cake and eat it too. The Court thus does not find the doctrine of claim splitting to bar the current claim against the Defendant.” Id. at 2-3.
As to the collateral attack argument, the Court did not interpret cases cited by defendant as barring plaintiff’s suit because the cases were factually distinguishable. See id. at 3-5. Instead, “[t]he Court’s previous order precluding the Plaintiff from amending its [infringement contentions] was applicable to that case only. The cases cited by the Defendant involve situations where the second action would have the effect of reversing the court’s decision in previous cases. This is not the case here. It therefore follows that this Court does not find the Plaintiff’s current action to be an impermissible collateral attack.” Id. at 5.
In Technology Innovations Associates v. Google, Inc., C.A. No. 13-0355-LPS (D. Del. Aug. 7, 2014), Chief Judge Leonard P. Stark recently construed a single term of the patents-in-suit – “sticky path” – having previously granted defendant’s request for early construction of this term. The Court had agreed that this “proposed early, limited claim construction process would likely facilitate the just, speedy, and inexpensive determination of this action, even if the Court’s construction did not prove to be case dispositive.” Id. at 1. The Court adopted the plaintiff’s proposed construction, although the issue was a “close call.” Id. at 6.
Judge Gregory M. Sleet recently construed the following terms of U.S. Patent Nos. 7,587,508; 7,590,752; 7,779,138; 8,090,862; 8,099,513; and 8,266,315. NonEnd Inventions N.V. v. Spotify USA Inc., C.A. Nos. 12-1041-GMS and 13-389-GMS (D. Del. Aug. 1, 2014).
“network of media players”
“a system for distributing media content”
“first communication channel”
“second communication channel”
In a recent Oral Order, Chief Judge Leonard P. Stark addressed the parties’ protective order dispute and adopted defendant’s proposed prosecution bar, which extended to post-grant proceedings, including inter partes review. M/A-COM Technology Solutions Holdings Inc. v. Laird Technologies Inc., C.A. No. 14-181-LPS, Oral Order (D. Del. July 31, 2014). Judge Stark explained that “[g]ood cause for the requested protection exists, at least to deal with the risk of the patentee strategically narrowing the scope of its claims based on (even inadvertently) information it learns from [defendant’s] highly confidential information.” Judge Stark further explained that “[p]atentee has provided no evidence that it will be unduly prejudiced by [defendant’s] proposed bar,” noting particularly that “there is no evidence that current litigation counsel has ever participated in prosecuting patents for Plaintiff.” Judge Stark concluded that the “balance of interests” favored defendant. The final prosecution bar entered in the matter reads as follows:
Any attorney or agent who receives or reviews any information or documents designated as “Highly Confidential – Outside Attorney Eyes Only” and/or “Confidential” by any party other than his or her client shall not thereafter prosecute, supervise, or materially assist in the prosecution of any patent application, or otherwise in the amendment of any application and/or patent, related to the technology that is the subject matter of this lawsuit during the pendency of this case and for one year after the conclusion of this litigation. To avoid any doubt, for purposes of this paragraph, “prosecution” includes directly or indirectly drafting, amending, advising, or otherwise affecting the scope or maintenance of patent claims of the patent-in-suit, a divisional, a continuation, a continuation-in-part, a re-issue, an ex parte reexamination, a post-grant review, inter partes review, or a foreign counterpart related in any way to the patent-in-suit and/or related to the technology that is the subject matter of this lawsuit.
See D.I. 176.
In Magnetar Technologies Corp., et al. v. Six Flags Theme Parks, Inc., et al., C.A. No. 07-127-LPS (D. Del. July 29, 2014), Chief Judge Leonard P. Stark adopted a number of Magistrate Judge Thynge’s Reports and Recommendations, having heard oral argument on plaintiffs’ objections in April 2014. The Court found the asserted claim of one patent-in-suit invalid and the other patent-in-suit not infringed. As these rulings resolved the case in favor of defendants, the Court also directed that judgment be entered in their favor in this same Memorandum Order.
The Court adopted Judge Thynge’s recommendation to grant defendants’ Daubert motion to exclude plaintiffs’ infringement expert, as the expert’s report did not adequately show how each element of a claim of the patent-in-suit was satisfied (Judge Thynge’s opinion here). Id. at 5-6.
The Court also granted-in-part defendants’ motion to exclude plaintiffs’ lay opinion witness (Judge Thynge’s opinion here), rejecting plaintiffs’ argument that Judge Thynge did not have authority to address this issue because it was a “pretrial matter” going to relevance. Id. at 6 (it was proper and efficient to refer all motions to Judge Thynge, “including those requiring a determination of the relevancy of testimony”).
The Court also adopted Judge Thynge’s rulings on infringement and invalidity (linked here), granting-in-part plaintiffs’ motion for summary judgment of infringement of one claim of a patent-in-suit, but also granting defendants’ motion for summary judgment of invalidity of the same claim. The parties had requested that the Court address infringement even though the Court ruled this claim invalid. Id. at 9.
As to summary judgment on a second patent-in-suit, the Court again accepted Judge Thynge’s recommendations to grant defendants’ motion for summary judgment of non-infringement and to deny plaintiffs’ motion for infringement. Id. at 11.
Judge Sue L. Robinson recently issued a claim construction order in a case alleging infringement of four data storage device patents. Round Rock Research, LLC v. Sandisk Corp., Civ. No. 12-569-SLR (D. Del. July 21, 2014). The following claim terms were construed:
- “control means for generating control signals for controlling operations of the system”
- “default parameter means coupled to the data storage unit for outputting default parameter data rather than the control parameter data in response to a first control signal from the control means”
- “control data word”
- “memory block”
- “an unused control address”
- “y-cycles” / “y-clock cycles”
- “determining usage associated with a logical address” / “to determine usage data of a logical address”
Judge Sleet recently considered and granted two motions directed to the pleadings of a patent infringement case: a plaintiff’s motion to dismiss counterclaims of invalidity and a defendant’s motion for leave to amend its answer in order to add counterclaims of inequitable conduct. EMC Corp., et al. v. Zerto, Inc., C.A. No. 12-956-GMS, Memo. at 1 (D. Del. July 31, 2014).
Addressing first the plaintiff’s motion to dismiss counterclaims of invalidity, Judge Sleet followed Judge Robinson’s reasoning in Senju Pharmaceutical v. Apotex, finding that the pleading standards of Twombly and Iqbal apply to counterclaims of invalidity, despite the lower pleading standard for infringement set forth in Form 18. Like Judge Robinson, Judge Sleet found that “the fact that Form 18 (rather than Twombly and Iqbal) remains the standard for pleading [direct] infringement claims is an insufficient justification for deviating from Twombly and Iqbal for pleading other causes of action.” Id. at 2-3. Accordingly, Judge Sleet granted the motion to dismiss the defendant’s counterclaims.
Turning next to the defendant’s motion for leave to amend its answer to add counterclaims of inequitable conduct, Judge Sleet explained that the motion was timely pursuant to the case scheduling order and that the plaintiff had not alleged that it would cause undue prejudice. Accordingly, the question for the Court to resolve was whether the two proposed counterclaims of inequitable conduct would be futile. The defendant sought to add two counterclaims of unenforceability due to inequitable conduct. Id. at 4-6. The first counterclaim alleged that specific “attorneys violated their duty of candor and good faith by intentionally making misrepresentations to the PTO concerning the prior art status of a reference [the defendant] submitted in connection with its petition for IPR.” This allegation “set forth sufficient facts from which the court may reasonably infer that the identified . . . attorneys made statements and withheld information with the intent to deceive the PTO.” Accordingly, the Court “decline[d] to dismiss [the] counterclaim at this early stage.” Id. at 6.
The second inequitable conduct counterclaim alleged that the plaintiff “filed patent applications for an ‘invention’ that was merely a combination of two existing prior art products and failed to provide the PTO with enough detail about either product to allow it to determine whether the combination was inventive.” Id. Judge Sleet found that the proposed counterclaim identified “specific individuals alleged to have violated their duties of candor and good faith,” “alleged prior art products, the relevant claim limitations, and how/why the prior art would have been material to claim limitations.” Id. Furthermore, it “set forth sufficient facts from which the court may reasonably infer that the identified individuals withheld the prior art information with the intent to deceive the PTO.” Id. at 6-7. Accordingly, the counterclaims satisfied both Rule 9(b) and Exergen, and Judge Sleet granted the defendant leave to amend.
Judge Leonard P. Stark recently dismissed Clouding IP’s claims against numerous defendants finding that Clouding IP lacked standing. Clouding IP, LLC v. Google Inc., et al., C.A No. 12-639-LPS, 12-641-LPS, 12-675-LPS, 13-1338-LPS, 13-1341-LPS, 13-1342-LPS, 13-1453-LPS, 13-1454-LPS, 13-1455-LPS, 13-1456-LPS, 13-1458-LPS (July 28, 2014). The patent assignment agreement at issue covered “the purported sale to Clouding of all title, rights, and interest in the patents, subject to provisions by which Symantec retained particular rights in the patents.” Id. at 1-2. Judge Stark found that Clouding did not have “prudential standing,” however, finding that:
The transfer of “all rights, title, and interest” in the patents identified in the Agreement was made “subject to the terms of this Agreement including the License set forth in Section 4.5. Under the Agreement, . . . Clouding encumbered its right to sell or assign the patents, grant an exclusive license, indulge infringement, allow the patent to lapse, and dictate the terms of licenses. Thus, based on the clear language of the transfer provisions, Symantec did not convey any entire patent, an undivided part or share of any entire patent, or all rights under any patent in a specified geographical region of the United States. Consequently, Clouding does not hold formal legal title.”
Id. at 11. In particular, under the Agreement, Symantec retained the right to “make, use, sell offer to sell, and import the claimed inventions in all the patents”; the right to sublicense to its customers; and, most importantly, the right to bring suit. Id. at 14-15. Judge Stark also determined that the Agreement included a “restraint on alienation” imposed on Clouding in which Clouding may not, under certain scenarios, make an assignment of the patents to another party without Symantec’s consent. Id. at 17. Accordingly, since Symantec did not transfer formal legal title to Clouding such that Clouding would qualify as the “effective” patentee, Clouding lacked standing to sue for infringement of the patents-in-suit. Id. at 20.
UPDATE November 18, 2014: Clouding IP moved for reargument of Judge Stark’s July 28 decision to dismiss its cases for lack of standing. Clouding IP, LLC v. AT&T Mobility LLC, et al., C.A No. 13-1342-LPS, 13-1454-LPS, 13-1455-LPS, 13-1458-LPS (D. Del. Nov. 17, 2014). Clouding IP asked the Court to reconsider its decision “in order to grant Clouding IP relief it never previously sought: a change to try to fix its jurisdictional defect in prudential standing.” Id. at 1. Judge Stark denied Clouding IP’s motion declining to “provide Plaintiff with what amounts to a ‘do over’ after all the time the parties and Court devoted to analyzing the facts and circumstances that Plaintiff was (to all appearances) content to have the Court evaluate.” Id. at 2.