Judge Leonard Stark recently decided several summary judgment motions in the ongoing patent infringement dispute between patent-owner Personalized User Model, L.L.P. and Google. The patents-in-suit relate generally to methods for “providing a more personalized experience for internet users based on individual user interests.” Personalized User Model, L.L.P. v. Google Inc., C.A. No. 09-525-LPS, Memo. Op. at 1-2 (D. Del. Sept. 20, 2013). With only one exception, Judge Stark denied all motions for summary judgment including for findings of non-infringement, invalidity, breach of contract, declaration of ownership, and lack of standing. Considering Google’s motion for summary judgment of non-infringement, Judge Stark denied the motion with respect to two patents-in-suit, but granted it with respect to a third patent. That third patent, the ’031 patent, had been asserted earlier in the case, but the plaintiff dropped the asserted claims of the ’031 patent in response to the Court’s order to reduce the number of asserted claims to fifteen. The plaintiff argued that the Court could not grant summary judgment over unasserted claims “because the Court does not have jurisdiction over claims that have been voluntarily withdrawn.” Judge Stark noted, however, that the “parties have failed to come to an agreement regarding a stipulation of dismissal of the ’031 patent claims, so the Court believes it still has jurisdiction over claims relating to this patent. As there is no evidence to support a finding of infringement of the ’031 patent, the Court will grant summary judgment of non-infringement.” Id. at 8-9.
In Transcenic, Inc. v. Google Inc, et al., C.A. No. 11-582-LPS (D. Del. Sept. 17, 2013), Judge Leonard P. Stark construed the following disputed terms of U.S. Patent No. RE 42,289, entitled “Spatial Referenced Photographic System With Navigation Arrangement:”
“launch pad control”
“means for displaying.”
The Court adopted plaintiff’s proposed constructions with a few modifications, except where it resolved the parties’ dispute over a term and concluded that no construction was needed. See id. at 9. The Court concluded that the following terms would be given their plain and ordinary meaning: “image,” “orientation of the image,” “yaw orientation of the respective image,” and “multiple images aligned in a panorama.”
Special Master Lukoff recently considered Apple and Microsoft’s request to order plaintiff to produce early surveys commissioned by one of plaintiff’s experts in anticipation of issuing his expert reports. Robocast, Inc. v. Apple, Inc., et al., C.A. No. 11-235-RGA, C.A. No. 10-1055-RGA (D. Del. Sept. 18, 2013). The early surveys were conducted prior to the surveys which formed the basis of plaintiff’s expert’s opinions. Id. 1-2. The parties’ dispute hinged on the interpretation of the phrase “the facts or data considered by the witness in forming [the opinions],” found in Rule 26(a)(2)(B)(ii). Id. at 2. Plaintiff argued that production was not required because the expert did not consider those prior surveys when reaching his conclusions, and could not have considered them since the expert deleted the earlier surveys from his computer. Id. at 2. Defendants, on the other hand, argued that under Rule 26 the expert must have considered the surveys, even based only on the similarity of all the surveys. Id at 3. Moreover, defendants argued that the term “considered,” for purposes of Rule 26, has been defined by courts to mean “reviewed.” Id. “As such, a review having occured, there is no question about whether the expert had ‘considered’ the earlier surveys.” Id.
Special Master Lukoff noted that there was no reason to doubt that Plaintiff’s expert deleted the prior surveys and could not remember them when drafting his expert reports. Id. However, when construing Rule 26 “using common sense,” Special Master Lukoff determined that it would be “impossible to believe that an expert whose opinions are predicated upon the creation of a statistically-meaningful effort could have, in the statistical sense, completely ignored the data that had been previously collected by him.” Id. at 4. Ultimately, Special Master Lukoff noted that it was a close call, but, since there was “sufficient ambiguity” as to whether the prior surveys played a role in the expert’s final reports, the plaintiff was ordered to immediately produce those prior surveys (including questions and answers) to the defendants. Id. at 5-6.
Judge Andrews has issued an opinion granting Sony’s motion for summary judgment of non-infringement that Sony’s CMOS semiconductor image sensors do not infringe L-3’s U.S. Patent No. 5,541,654. The ’654 patent includes the step of a “photovoltaic element which provides electric charge” and a step of “storing electric charge.” At the Markman hearing, Judge Andrews agreed with Sony that these two steps must be accomplished by “separate and distinct” elements. L-3 Commc’ns Corp. v. Sony Corp., et al., C.A. No. 10-734-RGA, Memo. Op. at 1-3 (D. Del. Sept. 19, 2013). At the summary judgment stage, Judge Andrews found that Sony’s accused product performed these steps at a single circuit element rather than separate and distinct elements. Thus, there was no literal infringement. Id. at 10. Judge Andrews then went on to explain that a finding of equivalence under the doctrine of equivalents would “‘overtake the statutory function of the claims in defining the scope of the patentee’s exclusive rights,’ as the claim requires two elements, not one. . . . [And a] single element is the antithesis of the requirement for two separate and distinct elements.” Id. at 11.
Judge Richard G. Andrews recently issued an order granting a defendant’s motion to stay pending inter partes reexamination following the PTO’s rejection of all relevant independent claims and issuance of a Right of Appeal Notice. Riverbed Technology Inc. v. Silver Peak Systems Inc., C.A. No. 11-484-RGA (D. Del. Sept. 11, 2013). The plaintiff had indicated that it did not wish to proceed with litigation on the lone asserted patent that was not subject to the reexamination proceeding. As Judge Andrews explained, “[w]ithout going into great detail, simplification favors a stay.” The Court added that while the plaintiff would be prejudiced by a stay because the parties are competitors, the prejudice would not be undue.
In a recent order, Judge Richard G. Andrews granted plaintiff’s Motion for Award of Damages and Attorney’s Fees (“the Motion”) in part and awarded plaintiff damages and costs totaling $58,105. Parallel Networks, LLC v. Outspark, Inc., C.A. No. 13-181-RGA (D. Del. Sept. 10, 2013). Judge Andrews did not award attorney’s fees. Id. Prior to the filing of plaintiff’s Motion, Judge Andrews had entered default judgment against defendant. (D.I. 17.)
In a recent memorandum opinion, Judge Sue L. Robinson denied plaintiff’s motion for reargument pursuant to Local Rule 7.1.5 regarding claim construction and related summary judgment holdings for U.S. Patent No. RE 39,231 (“the ‘231 Patent”). MobileMedia Ideas, LLC v. Apple, Inc., C.A. No. 10-258-SLR-MPT (D. Del. Sept. 5, 2013). Specifically, plaintiff asserted that “given the rules of claim construction, [the court’s] constructions essentially read out the subject matter of asserted dependent claim 2,” and reargument was therefore warranted. Id. at 5. Denying plaintiff’s motion for reargument, Judge Robinson explained that plaintiff “seeks reargument solely on the basis that the court made an error not of reasoning but of apprehension; it asserts that such an error arose when the court construed claim 12 to exclude the subject matter of dependent claim 2.” Id. at 6. Judge Robinson noted that “the court considered the relationship between claims 12 and 2.” Id. Judge Robinson further explained that the “grounds asserted for reargument merely constitute [plaintiff’s] disagreement with the court’s conclusions and rehash [plaintiff’s] claim construction and summary judgment arguments.” Id. Plaintiff did not identify “any change in law, new evidence, or error in apprehension.” Judge Robinson thus denied plaintiff’s motion for reargument regarding the ‘231 Patent. Id.
Judge Robinson then noted that “the court recognizes that its intention may be subject to misinterpretation and, as such, will clarify its summary judgment memorandum opinion and order regarding the ‘231 patent.” Id. Regarding the construction of claim 2, Judge Robinson explained “the limitation ‘to change a volume of the generated alert sound’ [from independent claim 12] is not interchangeable with, or encompassing of, ‘to stop the sound’ [from dependent claim 2]. The specification of the ‘231 patent does not disclose a device with the option of either stopping an alert sound or changing its volume.” Id. at 7. Judge Robinson further noted that “[t]he fact that, on reexamination, the patentee did not follow normal drafting protocol to make the new independent claims inclusive of some of the dependent claims – as opposed to those dependent claims being narrower and in alternative form – is not a problem the court can remedy.” Id. at 8.
We previously reported on Judge Robinson’s decision to preclude an untimely invalidity theory in Vehicle IP v. Werner Enterprises. On the same day as that decision, Judge Robinson also issued rulings on claim construction and summary judgment, including a ruling that the defendant’s motion for summary judgment of invalidity was moot given the court’s preclusion decision. The patent-in-suit relates to methods and systems for automatically determining the fuel taxes owed to various states by a truck owner whose trucks travel on those states’ roads. Judge Robinson first construed the following terms of the patent-in-suit:
– “Determine a tax in response to the distance traveled by the vehicle within the region”
– “Determining the tax in each [of the two] taxing region[s] in response to the predetermined vehicle positions”
– “Position fix[es]”
– “Generating geographic information”
– “Generating a table” / “referencing a table”
Vehicle IP, LLC v. Werner Enterprises, Inc., C.A. No. 10-503-SLR, Memo. Op. at 13-34 (D. Del. Sept. 9, 2013).
Judge Robinson then considered cross motions for summary judgment of infringement and noninfringement of two asserted claims. Whether Judge Robinson could grant summary judgment for these claims turned on whether the accused system calculated taxes owed “without the need for any human intervention.” Because the “court’s construction differ[ed] from both parties’ proposed constructions and, given the complexity of the accused system, the court [could not] determine at the summary judgment stage” that this was the way the accused system operated. With respect to several other claims, however, Judge Robinson found that there was sufficient factual information to determine that the accused system did not “directly use predetermined vehicle position information.” She therefore granted summary judgment of noninfringement with respect to those claims. Id. at 40-44.
In Vehicle IP LLC v. Werner Enterprises Inc., 10-cv-503-SLR (D. Del. Sept. 9, 2013), Judge Robinson granted plaintiff’s motion in limine to preclude defendant’s evidence of invalidity regarding alleged use of the accused system before the priority date of the asserted patent. Despite disclosing the prior use of the accused system on an early list of potential prior art references and including some elements of the theory in final interrogatory responses, Judge Robinson found that defendant “consciously disavowed this theory by removing it from its March 25, 2013 final invalidity contentions,” which lead plaintiff to “complete fact discovery under the premise that [defendant] would not be asserting any theory of invalidity based on the [alleged prior-use of the accused system].” Defendant’s revival attempt through an expert report, “substantially devoted to the [prior-use] theory,” served less than two months after service of the final invalidity contentions, was unavailing.
Judge Robinson also alluded to her prior order limiting the number of prior art references or combinations that could be asserted per claim in the final invalidity contentions. Defendant challenged whether the prior-use system should be considered a “reference” for purposes of the limiting order and final contentions because the prior-use system is only applicable to the case if it’s later use as the accused system is deemed to infringe. This too was unavailing.
Practitioners should note that Judge Robinson’s orders limiting the number of invalidity references are intended to apply to all prior art evidence, including non-publication prior art such as prior-use evidence. This ruling should also serve as a cautionary reminder to practitioners to serve thorough and complete “final” contentions before the close of fact discovery or risk preclusion.
Judge Christopher J. Burke recently issued a report and recommendation on defendant Philips’ motion to dismiss plaintiff Advanced Optical Tracking’s (“AOT”) induced infringement claims. Advanced Optical Tracking, LLC v. Koninklijke Philips N.V., et al, C.A. No. 12-1292-LPS-CJB (D. Del. Sept. 9, 2013). In deciding the motion, Judge Burke noted that in order to survive a motion to dismiss an induced infringement claim, “a patentee must plead facts ‘plausibly showing that [the alleged infringer] specifically intended [a third party] to infringe the patents-in-suit and knew that the [third party’s] acts constituted infringement.'” Id. at 4 (quoting In re Bill of Lading Transmission & Processing Sys. Patent Litig., 681 F.3d 1323, 1339 (Fed. Cir. 2012)) (alteration in original). Philips argued that AOT’s allegations failed to adequately plead pre-filing knowledge of the patent-in-suit, knowledge of the alleged inducement, or facts to satisify the intent requirement for an induced infringement claim. Id. Judge Burke disagreed.
Contrary to Philips’ contentions, AOT’ s allegations of pre-suit knowledge are accompanied by basic factual content meant to bolster the claim. Here, the [Complaint] identifies September 19, 2012 notice letters that are asserted to have provided Defendants with knowledge of the inducement claims, and explains how that notification was allegedly sent to Defendants. Additionally, AOT’s allegations indicate that these letters not only identified the patent-in-suit and the induced infringement claim, but that they also identified the accused products at issue, the alleged direct infringers (Defendants’ suppliers, distributors, and resellers)/ how the alleged direct infringers were alleged to have infringed the patent (i.e., through the manufacture, use, sale and offer for sale of the accused products) and certain exemplary actions by which Defendants were asserted to have acted to induce infringement (i.e., by “entering into, performing, and requiring performance under manufacturing, supply, and distribution agreements” with those suppliers, distributors, and resellers).
Id. at 6.
Regarding intent, Judge Burke found that AOT’s allegations, “while not robust,” were sufficiently pled. Id. at 8. The Complaint contended that “Defendants, with knowledge that the accused products infringed the patent-in-suit, continued to require performance of contractual agreements entered into with their suppliers, distributors and resellers-agreements mandating that those entities manufacture, supply and distribute the accused products.” Id. at 9. Philips argued that the Complaint did not set forth additional facts, such as the content of the agreements or the nature of the relationship between Defendants and the third parties. Id. Judge Burke found, however, that the AOT was not required to “rule out all possible non-infringing eventualities; it need simply assert enough facts to provide Defendants with fair notice of facially plausible claims.” Id.