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In Warner Chilcott Company, LLC v. Zydus Pharmaceuticals (USA) Inc., et al., C.A. No. 11-1105-RGA (D. Del. Apr. 22, 2013), Judge Richard G. Andrews construed the following disputed terms of U.S. Patent No. 6,893,662, which “relates to formulations and methods of delivering mesalamine to the lowest part of the gastrointestinal tract, especially the colon,” id. at 1:

-“Inner coating layer” and “outer coating layer,” id. at 3-4;
-“The inner coating layer is not the same as the outer coating layer,” id. at 5-7;
-“Selected from the group consisting of,” id. at 7-10;
-“Polymethacrylates” and “anionic polymethacrylates,” id. at 10-12;
-“Poly(methacrylic acid, methyl methacrylate) 1:2” and “poly(methacrylic acid,
methyl methacrylate) 1:1” id. at 12-14;
-“Enteric polymer,” id. at 14-15;
-“Mixtures,” id. at 15-17; and
-“The outer coating layer is applied after the inner coating layer but before the inner
coating layer is dried or cured,” id. at 17-18.

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Magistrate Judge Christopher Burke has issued a memorandum order in a patent infringement case referred to him for pretrial purposes by Chief Judge Gregory Sleet. Judge Burke considered and granted a motion by the plaintiff, filed on the deadline for amendment of pleadings, for leave to file a first amended complaint, adding a subsidiary of the existing defendant as an additional defendant. See Invensas Corp. v. Renesas Elecs. Corp., C.A. No. 11-448-GMS-CJB, Memorandum Order at 1 (D. Del. Apr. 24, 2013).

The parent-defendant, Renesas, argued that plaintiff had delayed in adding the subsidiary, REA. Judge Burke, however, agreed with plaintiffs that there had been no undue delay because “until very close to the deadline for amendment, there had not been a reason or motivation for it to seek to add REA . . . [because plaintiff] felt that it would be uncontested that any sales-related activity conducted by REA as to Renesas’ products in the United States would be activity attributable to Renesas.” Id. at 4-5. After Renesas appeared to assert “the legal theory that REA is a separate entity from Renesas, and that any sales-related activity of REA may not be attributed to its parent,” plaintiff claimed that it filed its motion “in an ‘abundance of caution’ and ‘to ensure that the proper Renesas entities are named in the action.’” In this situation, Judge Burke found that there was no undue delay in filing the motion. Id. at 5-6. Judge Burke also pointed out that “[t]he fact that the Motion was filed within [the] deadline [set by the Scheduling Order for the filing of proposed amendments to pleadings], one agreed to by both parties, strongly supports a conclusion that the amendment was not untimely filed (and, relatedly, that its filing will not work to unfairly prejudice Renesas).” Id. at 6-7.

Judge Burke further found that the risk of prejudice to defendants was minimal, as discovery was ongoing, no trial date had been set, the proposed amendment added no new theories of liability and added only a wholly owned subsidiary of an existing party which would be represented by the same outside counsel as its corporate parent. Under these circumstances, Judge Burke found, “it is reasonable to expect that REA can be integrated into the case without creating significant additional harm to the parties’ pre-trial preparations.” Id. at 7-8.

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Judge Andrews recently issued an order in regard to a discovery dispute over whether plaintiff had to produce communications with a Canadian attorney, formerly employed by plaintiff as its Director of Business Development. Robocast, Inc. v. Apple, Inc., C.A. No. 11-235-RGA (D. Del. April 17, 2013). Judge Andrews held that plaintiff failed “to make a showing that [the attorney] was an individual authorized to give legal advice.” Id. at 2. The Canadian attorney was not a member of the bar of New York, where he was employed by plaintiff, nor was he licensed by the bar of New York to render legal advice as a legal consultant. Id. (citing N.Y.C.L.S. Ct. of App. § 521.1). Therefore, the communications could not be assumed to be privileged. “In fact, the very argument that [the attorney] offered legal advice to [plaintiff] without the New York State Bar’s approval necessarily asserts he was guilty of practicing law without a license, which is a criminal misdemeanor in New York.” Id.

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Chief Judge Gregory M. Sleet recently construed 14 claim terms from U.S. Patent Nos. 6,760,808 and 7,487,309, relating to the reliable and scalable transfer of high-bandwidth streams of data between multiple storage units and multiple applications. Avid Tech., Inc. v. Harmonic, Inc., C.A. No. 11-1040 (GMS) (D. Del. Apr. 15, 2013). The Court construed the following terms:

-“independent storage units”
-“redundancy information”
-“nonsequentially”
-“identifier”
-“identifier of each segment”
-“identifier of the segment”
-“identifier of a segment”
-“identifier of the requested segment”
-“means, operative in response to a request from one of the client systems, for retrieving the requested segment of the file from the storage unit using the information associating the identifier of each segment stored on the storage unit with the location of each segment of the storage unit”
-“means for sending the requested segment to the client system”
-“means for sending a request, for each segment of the data requested by the application, to the storage unit on which the segment is stored”
-“means for selecting one of the storage units on which the segment is stored such that a load of requests on the plurality of storage units is substantially balanced”
-“means for scheduling the transfer of data from the storage unit such that the storage unit efficiently transfers data” and
-“means for distributing each segment, and the redundancy information for each segment, among the plurality of storage units by sending to the storage unit the segment of the data and the identifier of the segment”.

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Chief Judge Gregory Sleet recently issued a claim construction order in a longstanding patent infringement dispute involving interactive program guides for digital satellite broadcasts. See Pegasus Dev. Corp. v. DirecTV, Inc., C.A. No. 00-1020-GMS, Order (D. Del. Apr. 1, 2013). Judge Sleet construed the following terms, several of which he found to be means-plus-function terms and several of which had been previously construed by the Federal Circuit:
– “embedded signals”
– “recording the receipt of and passing to said devices of said embedded signals”
– “decrypting [an encrypted information transmission]”
– “switch means”
– “matrix switch means”
– “a first processor means operatively connected to said plurality of detector means for identifying each detected control signal as having been detected by a particular detector”
– “a second processor means for controlling the output directing function of said switch means”
– “a second processor means for controlling the output function of said switch means”
– “a processor means for controlling the output functions of said matrix switch means and the transfer functions of said storage/transfer means”
– “a processor means for controlling the directing function of said matrix switch means and the transfer functions of said storage/transfer means”
– “storage/transfer means for receiving an storing said control signals and for transferring at least a portion of said control signals for further processing”
– “causing said memory means to transmit selected information of said selected data unit at a selected time”
– “causing a switch associated with said intermediate input means to connect the output of a player associated with said recorder to at least one selected processor at a selected time”
– “member information”
– “outputting data that include additional information besides said input information”
– “assembling output records that include additional information besides said input information”
– “reprogrammable system”
– “reprogram”
– “operating instructions”
– “said memory device”
– “different signals”
– “[selected] television program transmission”
– “locations”
UPDATED:
Chief Judge Sleet had previously ordered the parties to submit supplemental briefing regarding whether the controller and processor “constitute structure corresponding to the claim terms ‘a second processor means for controlling the output directing function of said switch means’ and ‘a second processor means for controlling the output function of said switch means.'” Considering the parties’ supplemental briefing and oral arguments at the Markman hearing, Judge Sleet found that the two terms should be construed as means-plus-function terms with corresponding structures of the “signal processor” and the “cable program controller & computer.” Judge Sleet also refused to alter his previous claim construction to include a “controller” or “processor,” finding that they were sub-parts of the signal processor, and that there was “no need for the court to call out individual components of that processor or recognize it by alternative names.” See Pegasus Dev. Corp. v. DirecTV, Inc., C.A. No. 00-1020-GMS, Supplemental Order at 1-2 (D. Del. Apr. 15, 2013)

UPDATED:
Chief Judge Sleet granted in part plaintiffs’ motion for reargument regarding Judge Sleet’s claim construction order. Judge Sleet amended the Court’s construction of the term “decrypting [an encrypted information transmission]” to mean “using a digital key in conjunction with a set of associated mathematical operations to decipher digital data. This term does not include mere descrambling of an analog television transmission. The decrypting must be of the entire information transmission that is recited in step (b) of claim 14.” See Pegasus Dev. Corp. v. DirecTV, Inc., C.A. No. 00-1020-GMS, Order at 1 (D. Del. May. 15, 2013)

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In a recent Memorandum Opinion, Judge Richard G. Andrews refused to quash a subpoena served on a nonparty law firm that was previously involved in the prosecution of the “parent application” of the patent-in-suit. Robocast, Inc. v. Microsoft Corp., C.A. No. 13-mc-104-RGA , at 1 (D. Del. Apr. 12, 2013). Defendant subpoenaed the firm to testify at a deposition by telephone and to produce documents. Id.

The law firm argued that “the subpoena fails to allow a reasonable time for compliance” where the law firm had nine days to produce documents and provide deposition testimony. Id. at 2. The Court noted that “[n]either Rule 45 nor the Third Circuit . . . have provided a firm rule regarding the number of days that constitute a reasonable time.” Id. The Court concluded that the law firm had not met its burden for quashing the subpoena by merely the “bare assertion” that nine days was an unreasonable time for compliance. Id.

The law firm also argued that the subpoena was unduly burdensome and oppressive because it “subpoena[ed] documents in Delaware while compelling testimony in Pennsylvania,” albeit via telephone, and the information defendant sought was mostly publicly available. Id. The Court did not find either argument persuasive. Id.

Lastly, the law firm claimed that the subpoena sought privileged information. Id. at 3. The Court explained that the firm “will be able to raise the privilege at the time of the deposition and the production of documents,” but “[a] blanket assertion of privilege . . . does not meet the burden of Rule 45(c)(3)(A)(iii).” Id. Therefore the Court would not quash the subpoena on grounds of privilege. Id.

In a footnote, the Court observed that it “is also mindful that inequitable conduct allegations are in the case . . . factual non-privileged information from [this nonparty] witness . . . whose reliability is not reasonably subject to dispute could be very relevant.” Id. at 3 n.3.

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In a recent Memorandum Opinion, Judge Sue L. Robinson construed several claim terms, denied both parties’ motions for summary judgment, and denied plaintiff’s motion to exclude defendant’s expert’s testimony on invalidity. Cellectis S.A. v. Precision Biosciences, Inc., et al., C.A. No. 11-173-SLR (D. Del. Apr. 9, 2013).

The Court first construed the following terms:

-“[M]onomer of an 1-Crel meganuclease variant comprising at least one mutation in the amino acid sequence of SEQ ID NO: 70, wherein said at least one mutation comprises a substitution at one or more of the amino acids residues at positions 44, 68 and 70 and said monomer further comprises at least one additional mutation of an amino acid residue directly contacting a DNA target sequence wherein said amino acid residue directly contacting a DNA target sequence is selected from the group consisting of positions 26, 28, 30, 32,33 and 38 modified DNA cleavage specificity relative to the 1-Crel meganuclease of SEQ ID NO: 70 in at least one nucleotide in the +/- 3 to 5 triplets.” Id. at 4. The Court “decline[d] to construe the first phrase of [this independent claim] without the context of the remainder of the claim. Id.

-“[M]odified DNA cleavage specificity relative to the 1-Crel meganuclease of SEQ ID NO: 70 in at least one nucleotide in the +/- 3 to 5 triplets.” Id. at 7.

-“A single-chain chimeric meganuclease comprising [a] fusion of [two monomers].” Id. at 7-8.

-“[V]ariant of the wild-type monomer from 1-Crel.” Id. at 8-9.

The Court then denied the parties’ motions for summary judgment as to literal infringement and as to no invalidity for anticipation. The parties’ experts disputed the “proper characterization of [defendant’s product]” and thus raised genuine issues of material fact as to literal infringement. Id. at 16. The Court also held that there was a genuine issue of material fact as to whether a piece of prior art “expressly disclose[d] all of the claim limitations and whether the specific substitutions [of the patent-in-suit] would be apparent to one of skill in the art.” Id. at 19.

Finally, the Court denied plaintiff’s Daubert motion to exclude defendant’s expert testimony on best mode and obviousness. Plaintiff argued that the expert’s opinions on best mode made improper inferences based on a limited amount of information, but the Court held that the opinions were “not unreliable or unhelpful, when measured by the relatively low standard at this stage of the proceedings, coupled with the highly subjective nature of the state of mind inquiry” involved in best mode analysis. Id. at 21. As to obviousness, plaintiff argued that the expert’s testimony, which included “his opinions on secondary considerations and motivation to combine and claim charts illustrating his findings,” was too conclusory, but the Court concluded that “[w]hile [plaintiff] may disagree with [this expert’s] analysis and conclusions . . . at most, this goes to the weight of the evidence, which is properly addressed via cross-examination.” Id. at 22.

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Magistrate Judge Mary Pat Thynge recently issued a report recommending that a motion to dismiss allegations of direct, induced, and contributory infringement relating to cloud-based gaming applications be denied. T5 Labs (Delaware) LLC v. Gaikai, Inc., C.A. No. 12-1281 (SLR) (MPT) (D. Del. Apr. 5, 2012). The defendant argued that the complaint failed to provide meaningful notice of which products or services were accused, but Judge Thynge disagreed, explaining that the plaintiff adequately identified the defendant’s “‘cloud’-based gaming applications and service’ or GPU cloud as the infringing method or product.” Id. at 9. This, together with sufficient allegations of jurisdiction, ownership, notice, and a demand for relief, was sufficient to provide the defendant with meaningful notice of the allegations against it, and met the requirements of Form 18 for alleging direct infringement. Id. at 10. Judge Thynge also found that the plaintiff adequately pled induced and contributory infringement under Twombly and Iqbal with respect to post-Complaint conduct. Id. at 11-13.

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Judge Sue Robinson recently denied a patent infringement plaintiff’s motion for leave to file an amended complaint adding claims of induced infringement. See Walker Digital, LLC v. Google, Inc., C.A. No. 11-309-SLR, Memorandum Order at 1 (D. Del. Apr. 11, 2013). Although the plaintiff had included allegations of induced infringement in preliminary infringement contentions, it did not formally move to amend pleadings until significantly later, approximately nine months after the deadline for filing amended pleadings and a month before the close of fact discovery. The plaintiff asserted good cause for its amendment based on (1) the Federal Circuit’s decision in Akamai Techs., Inc. v. Limelight Networks, Inc., 692 F.3d 1301 (Fed. Cir. 2012), (2) defendants’ claim constructions raising the potential need to rely on inducement, and (3) the lack of undue prejudice. Id. at 2. Judge Robinson found that (1) Akamai was inapplicable because the plaintiff did not allege that only some steps were performed by third parties, (2) the defendants’ representations that they did not intend to assert a non-infringement argument based on claim constructions were acceptable and binding, and (3) there was no good cause for plaintiff to amend regardless of whether or not such an amendment would prejudice defendants. Accordingly, she denied the motion to amend. Id. at 2-4.

Judge Robinson also denied the defendants’ request to stay the case pending reexamination. Id. at 4. Between the filing of the motion to stay and Judge Robinson’s decision, the PTO issued an “Action Closing Prosecution” in an inter partes reexamination initiated by defendants, which rejected every claim of the patent-in-suit. Although “there [was] no dispute that a final resolution of the administrative process would simplify the judicial process, and that . . . the administrative process is less expensive than the judicial process,” Judge Robinson found that “the judicial process had proceeded far enough (and the administrative process has not) that a stay would unduly prejudice [the plaintiff.]” Id. at 4-6. The prejudice to plaintiff was not diminished by the fact that “is a non-practicing entity,” because “it is a research-oriented business that will be prejudiced if its rights under the [patent-in-suit] are not adjudicated timely” and there is “no reliable time table to conclusion” of the administrative process. Id. at 5.

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Judge Andrews recently issued a decision after plaintiff filed objections to Magistrate Judge Burke’s Report and Recommendation construing the claims of U.S. Patent No. 6,973,229. Lamda Optical Solutions, LLC v. Alcatel-Lucent USA Inc., C.A. No. RGA-CJB (D. Del. Apr. 11, 2013). Upon de novo review of Magistrate Judge Burke’s constructions, Judge Andrews overruled plaintiff’s objections and adopted the Report and Recommendation in its entirety.

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