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Judge Richard G. Andrews construed the following claim terms of U.S. Patent Nos. 7,945,736; 7,948,921; and 7,630,295 that cover technology related to dynamic load management of network memory, automatic network optimization, and network device continuity:

“configured”
“data packet”
“communications interface configured to process the signal to activate and deactivate the link”
Riverbed Technology, Inc. v. Silver Peak Sys., Inc., C.A. No. 11-484-RGA (D. Del. July 30, 2013)

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In Gevo, Inc. v. Butamax Advanced Biofuels LLC, et al., C.A. No. 13-576-SLR (D. Del. Jul. 26, 2013), Judge Sue L. Robinson recently considered several motions for summary judgment, construed disputed claim terms and ruled on a motion to exclude expert testimony.

The Court construed the following terms of U.S. Patent Nos. 8,017,375 (“the ‘375 patent”) and 8,017,376 (“the ‘376 patent”), which relate to the production of biomass-derived biofuels:

a ketol-acid reductoisomerase, id. at 6-7;
an a-ketoisovalerate decarboxylase from Lactococcus lactis, id. at 7;
wherein said recombinant yeast microorganism has reduced endogenous PDC activity as compared to the corresponding yeast microorganism that has not been engineered to have reduced endogenous PDC activity, id.;
is further engineered or selected to grow on glucose independently of C2-compounds at a growth rate substantially equivalent to the growth rate of the corresponding yeast microorganism that has not been engineered to have reduced endogenous PDC activity, id. at 8;
activator of ferrous transport (Aft) proteins, id. at 10;
which increase the dehydratase activity of DHAD, id.;
wherein said ketol-acid reductoisomerase is an NADH-dependant ketol-acid reductoisomerase, id. at 10-11; and
a constitutively active Aft protein, id. at 11.

The Court granted one defendant’s motion for summary judgment of non-infringement as to the ‘376 patent and as to certain claims of the ‘375 patent, finding the doctrine of equivalents inapplicable. See id. at 17-27. Plaintiff also did not argue that defendant literally infringed the ‘375 patent and conceded that fact with respect to the ‘376 patent. Id. at 23, 27.

The Court also granted the same defendant’s motion for summary judgment as to the invalidity of the ‘375 patent. Defendant argued lack of both written description and enablement. This patent claimed the creation of significantly higher yields of the patented invention than the yields the inventor had actually obtained. Id. at 32. The Court concluded that the patent was invalid for lack of written description because “persons skilled in art would [not] recognize in the patent’s disclosure a description of the higher yields of the claimed invention.” Id. at 33. “The parties’ experts agree that the technology at issue is both complex and unpredictable. . . . The specification provides no detail on how to practice claim 1 to achieve higher yields.” Id. The patent was also invalid for lack of enablement, for similar reasons. See id. at 36.

The Court did not grant either parties’ motions for summary judgment on the validity/invalidity of the ‘376 patent, finding that there were issues of material fact as to whether the patent was invalid for lack of enablement, specifically issues “bearing on the disclosures and the amount of experimentation required to practice the full scope of the claims.” Id. at 38.

Defendant also argued that the ‘376 patent was anticipated by defendant’s International Patent Application. The Court did not address the substance of this argument because issues of material fact remained as to whether the inventors of the ‘376 patent conceived and reduced their invention to practice before the priority date of the International Patent Application. Id. at 43-44. The Court did note that “if [this application] is found to be anticipatory, [plaintiff] is precluded from making substantive arguments against anticipation as it did not do so herein.” Id. at 44 n.29.

Finally, both defendants moved to exclude the testimony of plaintiff’s expert. The Court denied this Daubert motion because defendants’ “arguments that [the expert] did not independently conduct experiments as part of his analysis do not preclude his testimony or opinions.” Id. at 44.

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Magistrate Judge Christopher J. Burke recently issued an order resolving several discovery disputes and reminding litigants that a party opposing discovery on the basis of alleged undue burden typically must do more than simply argue that it will be burdened. E.I. du Pont de Nemours and Co. v. Heraeus Precious Metals North Am. Conshohocken LLC, C.A. No. 11-773-SLR-CJB (D. Del. July 26, 2013). Although Judge Burke found that information regarding the plaintiff’s conductive pastes used for non-photovoltaic applications was relevant to the defendant’s invalidity defenses, the Court did not order production of all such information, because “the burden for [the plaintiff] to produce ‘potentially thousands of records’ regarding ‘at least 1,500 products’ (nearly all of which are non-photovoltaic products) spanning ‘multiple years’ outweighs its likely benefit to [the defendant].” Id. at 2. The Court made this ruling even though the plaintiff failed to provide affidavits or other evidence to support its undue burden argument, which the Court noted would have been preferable. Id. at 2 n.1. Notably, though, the Court explained that the requested information was not truly needed by the defendant in light of admissions made by the plaintiff. Id. at 2-3 n.2.

Judge Burke next considered whether pre-2003 information in an electronic database was inaccessible under Rule 26(b)(2)(B). Here, because the plaintiff did not support its “inaccessibility” argument with an affidavit or other evidence, the Court could “not conclude that the data here is inaccessible.” Id. at 4. Similarly, the plaintiff argued that it would be unduly burdened by an order requiring that it produce batch-by-batch quality control data from pre-2006 testing, but the Court found that the argument was “brief,” “not particularly specific,” and moreover did “not provide the Court with enough detail regarding the likely time, cost or effort associated with the proposed search, sufficient to conclude that the request is unduly burdensome . . . .” Id. at 4 n.5. On the final issue, the Court ordered that [the plaintiff] identify certain ingredients in its pre-2006 conductive pastes, explaining that the plaintiff made “no attempt to specifically combat the relevance of this data, nor to make concrete the burden it would face in responding to this portion of the request.” Id. at 5.

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Special Master B. Wilson Redfearn recently considered plaintiff’s motion to compel a defendant’s response to its Interrogatories 1 and 10, which requested the following:

Interrogatory 1: Identify and describe in detail your expectations of sales and actual sales of the Relevant Products or Relevant Services and mobile devices.

Interrogatory 10: Describe all communications between you and any mobile network operator (e.g., Sprint, U.S. Cellular) regarding the sale or potential sale of Relevant Products.

EON Corp. IP Holdings, LLC v. Flo TV Inc., et al., C.A. No. 10-812-RGA (D. Del. Jul. 23, 2013) (emphasis added). As Special Master Redfearn explained, “the case has been bifurcated,” but plaintiff argued that the “information sought through these interrogatories is relevant to the infringement issues because it is probative of commercial success, a secondary consideration of nonobviousness.” Id. at 1. Defendant, on the other hand, argued that before it is required to respond, plaintiff must “first show a specific nexus between the commercial success of the product and the alleged infringing features.” Id. at 3. Special Master Redfearn disagreed with defendant’s contention and found that plaintiff “is allowed to propound discovery for the purpose of developing factual information which could assist in showing that its invention is valid, i.e., it can propound discovery which it reasonably believes will permit it to argue at trial that there was commercial success, which supports its position on nonobviousness (rebutting the invalidity contentions).” Id. at 4.

Nevertheless, Special Master Redfearn found that the scope of Interrogatory 1 should be narrowed. Specifically, Special Master Redfearn explained that defendant “must furnish actual sales information concerning its ‘Relevant Products,’” but “its response can be limited to (1) sales which involve products using the accused features; and (2) products which were sold within thirty-six months after they were put on the market.” Id.

Further, Special Master Redfearn concluded that Interrogatory 10 should be denied as “ambiguous and overbroad.” Id. at 5. He explained that “[i]n order for an interrogatory (or interrogatories) of this nature to be properly formed for a company the size of [defendant], with a national and international sales force, the Plaintiff would have to set out the type of communications to which it refers; narrow the persons (or at least the internal entities) from whom the information is being sought; and set out the relevant time period.” Id. at 4-5. The Special Master noted that “[e]ven then, there could well be valid objections on the basis of relevancy.” Id. at 5.

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Plaintiff buySAFE filed a patent infringement action against Google on buySAFE’s U.S. Patent No. 7,644,019. The patent-in-suit relates to providing a guaranty service for online transactions, and buySAFE alleged that it covers a Google service called “Trusted Stores” by which Google provides consumers with information about quality online shopping experiences. The parties agreed that early claim construction would likely streamline the case and, accordingly, stayed discovery until after claim construction. The claim construction disputes were limited to two terms. BuySafe, Inc. v. Google Inc., C.A. No. 11-1282-LPS, Memorandum Opinion at 1-4 (D. Del. July 29, 2013).

Judge Stark first construed plaintiff’s proposed term, “transaction performance guaranty,” and defendant’s proposed term, “guaranty.” Finding that the issues for both terms were identical, Judge Stark adopted Plaintiff’s proposed construction for both. Id. at 5-7. On the second term at issue, “underwriting,” Judge Stark adopted a construction that the parties agreed to during oral argument at the Markman hearing and further found that the term was not indefinite. Id. at 7-9.

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In a recent memorandum opinion, Judge Leonard P. Stark construed thirteen disputed claim terms across U.S. Patent Nos. 5,885,270 (“the ’270 Patent) and 5,885,272 (“the ’272 Patent”). Walker Digital, LLC v. Google Inc., C.A. No. 11-318-LPS (D. Del. Jul. 25, 2013). As Judge Stark explained, “the patents-in-suit – issued on the same date, listing the same named inventors, and sharing substantially identical specifications – relate to establishing anonymous communications.” Id. at 1. Judge Stark construed the following disputed terms:
-“cryptographic operation,” as it appears in claim 3 of the ‘272 Patent.

– “cryptographic key,” as it appears in claim 3 of the ‘272 Patent.

– “authenticating authorship,” as it appears in claim 2 of the ‘272 Patent.

– “said [___],”as it appears in all asserted claims of the ‘270 Patent and ‘272 Patent.

– “identity”/ “identity of said first party”/ “identity of said second party,” as it appears in all asserted claims of the ‘270 Patent.

– “anonymous party,” as it appears in all asserted claims of the ‘270 Patent.

– “party data,” as it appears in all asserted claims of the ‘270 Patent and ‘272 Patent.

– “party rule,” as it appears in all asserted claims of the ‘270 patent and ‘272 Patent.

– “rule for releasing said identity of said … party,” as it appears in all asserted claims of the ‘270 Patent, and “rule for releasing said [first/second party] data,” as it appears in all asserted claims of the ‘270 Patent and ‘272 Patent.

– “releasing/release said second party data pursuant to said second party rule,” as it appears in all asserted claims of the ‘272 Patent.

– “exchanging said first and second data, except said identifies of said first and second parties, between said first and second parties” / “exchange said first and second data, except said identities, between said first and second parties” as it appears in all asserted claims of the ‘270 Patent.

– “after said exchanging step” / “after said exchanging operation,” as it appears in all asserted claims of the ‘270 Patent.

– “receiving/receive a request from said second party for said first party information data; releasing/release said second party data pursuant to said second party rule; determining/determine, based on said second party data, whether said at least one first party rule has been satisfied; and if said at least one first party rule has been satisfied, providing/provide, to said second party, said first party information data for which said at least one first party rule has been satisfied,” as it appears in all asserted claims of the ‘272 Patent.

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Special Master Paul M. Lukoff recently ruled on a dispute “over so-called third party consultants and the impact of their presence on what might otherwise be privileged communications.” Robocast, Inc. v. Apple, Inc., C.A. No. 11-235-RGA; Robocast, Inc. v. Microsoft Corporation, C.A. No. 10-1055-RGA, slip. op. at 2 (D. Del. Jul. 19, 2013). Special Master Lukoff addressed the issue on a document-by-document basis and ordered that some of the documents on plaintiff’s log were to be produced, as the presence of third parties had waived attorney-client privilege. Id. at 13-14.

As a preliminary matter, the Special Master examined, on a document-by-document basis, whether plaintiff complied with FRCP 26(b)(5)(A), which obligates a party claiming privilege to describe the withheld documents with sufficient detail, or whether noncompliance with this rule resulted in waiver. While the Special Master disagreed with plaintiff’s argument that some Delaware cases “stand for the proposition that the privilege proponent must always be given further opportunity, in the face of a Rule 26(b)(5)(A) challenge, to take another stab at an adequate description” (and in this case the plaintiff had already amended its log several times, id. at 3-5) the Special Master found “very few” Rule 26(b)(5)(A) issues in plaintiff’s current log. Id. at 4 n.5.

Turning to the specific issue in dispute, the Special Master observed that there was a “possibly irreconcilable split” between Third Circuit (non-Delaware) district courts as to the proper test for whether a non-employee was the “functional equivalent” of an employee for purposes of attorney-client privilege. Id. at 6-7. Additionally, there was no Third Circuit case “explicitly adopt[ing] the functional equivalent concept in any form.” Id. However, this issue “pose[d] no obstacle” to resolving this dispute because: (i) the Special Master was “comfortable with the notion that some functions of a relatively small company like [plaintiff] might be best or necessarily accomplished through independent contractors and/or non-employee consultants;” (ii) Third Circuit precedent made clear that “there is no discernible bright line to be followed when the privilege is assessed;” and (iii) “even if one adopts and then adheres to one interpretation of the functional equivalent test or the other, each individual document must be reviewed on a case-by-case basis to determine if it was created for the purpose of providing or obtaining legal advice.” Id. at 7 (internal citations omitted).

With these principles in mind, the Special Master examined the duties of various non-employees and discussed how their duties may or may not waive privilege when they were privy to communications. Id. at 7-11. The Special Master further explained that his “rationale for making any such determination [of waiver] will not be founded on [the third party’s] status as an ‘outsider’ or the ‘functional equivalent’ of a [plaintiff] employee, but rather on the individual’s relative position with respect to obtaining legal advice.” Id. at 13.

Special Master Lukoff mapped out his Rule 26(b)(5)(A) and privilege conclusions in a “lengthy chart,” and ordered plaintiff to produce copies of all documents in the log that the Special Master had concluded were not privileged based on waiver. Id. at 13-14.

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In a recent post-trial opinion, Judge Sue L. Robinson considered infringement of U.S. Patent Nos. 6,200,604 (“the ’604 Patent”); 6,974,590 (“the ’590 Patent”); and 8,119,158 (“the ’158 Patent”), and the validity of U.S. Patent No. 8,092,832 (“the ’832 Patent”) and the ’158 Patent in this ANDA litigation. Cephalon Inc. et al. v. Mylan Pharmaceuticals Inc. et al., C.A. No. 11-164-SLR (D. Del. Jul. 22, 2013). Plaintiffs initiated this litigation after defendants filed ANDA No. 202577, which sought to market generic fentanyl citrate buccal tablets, a medication that aids breakthrough cancer pain. Id. at 1-2.

Before addressing infringement and validity, Judge Robinson was required to construe two disputed claim terms. “Providing a solid oral dosage form” was given its ordinary meaning, and “pH adjusting substance is not a component of said effervescent material” was construed to mean “pH adjusting substance is in addition to the components of said effervescent agent.” Id. at 13-18. Turning to the infringement of the asserted claims of the ’590 and ’604 Patents, Judge Robinson noted that the “only limitation of the asserted claims . . . that [defendants] argue[] is not met by the ANDA product ‘is at least one [salival activated] effervescent agent in an amount sufficient to increase absorption.’” Id. at 20. Judge Robinson ultimately determined that plaintiffs demonstrated that defendants’ ANDA practiced “each and every requirement of the disputed limitations.” Id. at 38. Further, there was no “genuine dispute of material fact that [defendants] will encourage use through its product labeling and sale of its generic tablets and is aware that the label presents infringement problems.” Id. at 37. Moreover, because “[t]he only authorized use for the ANDA products would infringe” the asserted claims, there was “no substantial noninfringing use.” Id. at 38. Judge Robinson thus concluded that defendants indirectly infringed the asserted claims of the ’590 and ’604 Patents through induced infringement and contributory infringement. Id. Next, Judge Robinson considered infringement of the ’158 Patent, noting that “[t]he only dispute for infringement is whether the ANDA products meet the limitation ‘wherein said pH adjusting substance is not a component of said effervescent material.’” Id. Defendants did “not offer any noninfringement defense under the court’s construction” of that limitation, and Judge Robinson concluded that defendants directly and indirectly infringed the ’158 Patent. Id. at 39-40.

Judge Robinson next considered whether the ’604 Patent anticipated certain asserted claims of the ’92,832 and ’158 Patents. Judge Robinson noted that those claims required dosages between 100 and 800 mcg of fentanyl free base. Id. at 43. Defendants’ expert argued that a “person of ordinary skill in the art would understand a ‘pharmaceutically effective amount’ taught by the ’604 Patent includes fentanyl free base in the range of 100 to 800 mcg,” because a person of ordinary skill in the art would have would have looked at “Actiq®, an FDA-approved product and recognized that its range of fentanyl, 200-1600 mcg, was pharmaceutically effective.” Id. at 43-44. Judge Robinson noted, however, that “extrinsic evidence of anticipation ‘must make clear that the missing descriptive matter is necessarily present in the thing described in the reference.’” Id. at 44. As Judge Robinson explained, Actiq® was “not mentioned in the ’604 patent or incorporated therein.” Id. Because Judge Robinson found that the “’604 patent does not disclose the claimed amounts of fentanyl, the [’92,832 and ’158 Patents] are not invalid for anticipation.” Id. at 43.
Judge Robinson also considered whether the asserted claims of the ’92,832 and ’158 Patents were obvious “in view of the ’604 patent in combination with the Actiq® brochure and the Handbook.” Id. at 45. Judge Robinson noted that defendants’ expert did “not offer an opinion that one of ordinary skill in the art, absent the benefit of . . . internal observations and documents, would have had any reasons to suspect stability issues, and therefore, be motivated to solve such issues. He cannot rely on the problems that the inventors ‘unexpected[ly]’ ran into in order to support a person of ordinary skill’s motivation to combine.” Id. at 51. Because defendants did not provide sufficient evidence of motivation to use “SSG, alone or combination with mannitol,” defendants failed to carry its burden of showing obviousness. Id. at 53. Judge Robinson additionally assessed secondary considerations of nonobviousness. Judge Robinson found “unexpected results . . . sufficiently supported by [plaintiffs’] testing,” which weighed in favor of nonobviousness. Id. at 53-56. On the other hand, Judge Robinson found that considerations of commercial success, praise, failure of others, and long-felt need did not weigh in favor of a finding of nonobviousness. Id. at 56-61. However, on balance, Judge Robinson concluded that defendants failed to demonstrate by clear and convincing evidence that the asserted claims of the ’92,832 and ’158 Patents were obvious in light of the prior art references. Id. at 61.

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Judge Stark recently considered AT&T’s motion to dismiss United Access Technologies, LLC’s amended complaint based on laches. United Access Technologies, LLC v. AT&T Corp., et al., C.A. No. 11-338-LPS (D. Del. Jul. 26, 2013). AT&T argued that laches barred plaintiff’s claims because “with full knowledge of AT&T’ s relevant activities, Plaintiff sat on its patent rights for nearly nine years without attempting to enforce them against AT&T.” Id. at 1-2. Plaintiff’s predecessor had previously sued AT&T in 2002 for infringement of several of the same patents-in-suit, but, after voluntarily dismissing the suit plaintiff waited nine years (and until after the patents expired) to file suit again. Id. at 2. Plaintiff responded that, among other things, “its alleged delay [was] not apparent from the face of the Amended Complaint, and therefore the laches defense is not amenable to resolution on a motion to dismiss. Id. Judge Stark agreed. “‘[A] ruling on the defendant’s defense of laches would necessarily involve a fact-intensive analysis and balancing of equities that would require the Court to consider matters outside the pleadings that are in dispute.’ Discovery will be required before the laches defense can be fairly evaluated.” Id. (quoting Lennon v. Seaman, 63 F. Supp. 2d 428, 439 (S.D.N.Y. 1999)).

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Judge Leonard Stark recently issued a claim construction opinion for patents relating generally to programmable logic devices and clock management for dynamic integrated circuits. Plaintiff Intellectual Ventures brought suit against several circuit companies, and after settlement with several defendants, only Altera and Xilinx remain. The Court held a Markman hearing in May, and Judge Stark has now construed the following terms, adopting the plaintiffs’ proposals for all but three terms for which he adopted a modified versions of the defendants’ proposals:
– “application specific field programmable gate array (‘ASFPGA’)”
– “fixed functional unit(s)”
– “bus interface(s)”
– “peripheral component interconnect”
– “application specific integrated circuit (‘ASIC’)”
– “during normal operation of the ASIC”
– “complements”
– “configured to”
– “individually programmable”
– “reconfigurable processor core”
– “whole processor unit(s)”
– “a controller having a plurality of clock outputs each coupled to a respective clock input of one of the whole processor units, wherein the controller is configured to independently vary a clock frequency of each whole processor unit”
– “each module having a defined function”
– “power-down” and “power-up”
Intellectual Ventures I LLC, et al. v. Altera Corp., et al., C.A. No. 10-1065-LPS, Memorandum Opinion at 4-22 (D. Del. July 26, 2013).

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