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Judge Stark recently issued the Court’s claim construction opinion construing the terms of U.S. Patent Nos. 7,846,207, 7,862,616, and 7,875,076. The patents relate to “medical devices called ‘intervertebral implants’ and methods of implanting such devices between adjacent vertebrae in spinal fusion procedures.” Depuy Synthes Products, LLC v. Globus Medical, Inc., C.A. No. 11-652-LPS (D. Del. May 7, 2013).

Judge Stark construed the following terms:

“[front] plate/plate”
“securing plate”
“upper surface [of the plate]”
“lower surface [of the plate]”
“upper plane [of the body]”
“underside plane [of the body]”
“lower plane [of the body]”
“plate top surface located generally on the upper plane/plate top surface”
“plate lower surface located generally on the lower plane/plate lower surface”
“borehole”
“being anchorable within the first and second boreholes and the first and second partial boreholes”
“first and second boreholes of the front plate diverge when viewed from the front surface/ diverge”
“captured between the front plate and the securing plate”
“located between the plate and the securing plate”
“contained between the adjacent vertebral bodies when the implant is inserted between the adjacent vertebral bodies”
“positioned between the upper and lower planes”
“the first and second boreholes of the front plate and the first and second heads are covered at least partly by the securing plate I covered at least partly by the securing plate”
“the securing plate at least partially covering each of the plurality of boreholes/the securing plate at least partially covering”
“the securing mechanism at least partially covering each of the plurality of boreholes/the securing mechanism at least partially covering”
“attaching a securing plate with a fastening agent over the first and second head portions of the first and second fixation elements”
“partial borehole in communication with the front surface and the upperside/underside of the body”
“non-metallic material”
“the first height being substantially equal to the second height so that the three dimensional body and the plate are contained between the adjacent vertebral bodies when the implant is inserted between the adjacent vertebral bodies/the first height being substantially equal to the second height”
“the second height being generally equal to the first height”
“the first and second heads and the first and second boreholes and partial boreholes positioned substantially between the upper and underside planes/positioned substantially between the upper and underside planes”
“securing mechanism”
“fastening agent”
“upper surface”
“lower surface”
“upper side”
“underside”
“upper vertebra”
“lower vertebra”
“upper endplate”
“lower endplate”

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Chief Judge Gregory Sleet recently denied a generic pharmaceutical company’s request for leave to move for summary judgment before a Rule 16(b) conference in an ANDA case. The defendant generic manufacturer sought leave for early summary judgment because the thirty-month stay was set to expire in the coming months and because statements made by the plaintiff’s CEO and counsel supposedly confirmed that defendant’s ANDA product did not have a limitation required in every claim of the patent-in-suit. See Endo Pharms. Inc. v. Mylan Techs. Inc., C.A. No. 11-220-GMS, Order at 1-2 n.1 (D. Del. May 3, 2013).

Judge Sleet, however, found that “summary judgment briefing would be wasteful and premature at this stage.” Judge Sleet accepted three arguments against summary judgment proffered by the plaintiff. First, the plaintiff argued that because it had no opportunity to conduct fact or expert discovery, it would respond to a summary judgment motion with a Rule 56(d) declaration. Second, the plaintiff argued that a supposed limitation of the claims of the patent-in-suit was not actually present in the claims and that claim construction would be necessary to determine what was claimed. Finally, the plaintiff argued that even if there were no literal infringement, it was entitled to assert infringement under the doctrine of equivalents, which would require both discovery and claim construction. Accepting all three of these arguments, Judge Sleet found the “summary judgment request to be inappropriate at this juncture.” Id.

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The jury returned a verdict Friday, May 3, 2013, in Cellectis S.A. v. Precision Biosciences, Inc., C.A. No. 11-173-SLR, finding that Precision Biosciences did not literally or indirectly infringe any claim of U.S. Patent No. 7,897,372, and that the asserted claims were invalid for obviousness and for lack of an adequate written description.

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Judge Robinson recently denied a motion to dismiss for lack of subject matter jurisdiction filed by Gevo in its ongoing biofuel patent infringement dispute with Butamax and DuPont. Butamax filed the action in question against Gevo seeking a declaratory judgment of non-infringement of a certain patent (the “’505 patent”). The ’505 patent is a continuation of a patent at issue in one of the other fifteen cases pending between the parties (the “’808 patent”). Gevo responded with the motion to dismiss, raising a challenge to declaratory judgment jurisdiction. See Butamax Advanced Biofuels LLC v. Gevo, Inc., C.A. No. 12-1301-SLR, Memorandum Order at 1-5 (D. Del. May 2, 2013).

Although the ’505 patent was terminally disclaimed over the ’808 patent, Gevo alleged that claims of the ’505 patent were “distinct from those of the ’808 patent [and] thus, Gevo’s assertion of infringement of the ’808 patent [did] not necessarily implicate the ’505 patent.” Id. at 5. Judge Robinson concluded, however, that “[c]omparing the claims of the ’505 patent and the ’808 patent . . . there are substantial similarities in the claimed subject matter.” Moreover, “the pattern of litigation between the parties and the close relationship between the patents constitute facts sufficient to show the existence of an actual controversy between the parties.” Id. Futhermore, Gevo’s assertion that it “lack[ed] sufficient information regarding the fermentation conditions of Butamax and DuPont’s products to determine if they infringe the ’505 patent” was unconvincing given that “the ’505 patent in a continuation of the ’808 patent and Gevo has not offered Butamax and DuPont a covenant not to sue on the ’505 patent.” Id. at n.3. Accordingly, Judge Robinson found that a sufficient controversy existed for declaratory judgment jurisdiction and denied the motion to dismiss.

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Judge Richard G. Andrews recently issued a claim construction opinion in Microsoft Corporation and Google, Inc. v. Geotag, Inc., C.A. No. 11-175-RGA (D. Del. May 3, 2013), in which plaintiffs filed a declaratory action asserting non-infringement of U.S. Patent No. 5,930,474, which “discloses computer software informational databases integrated with search engine technology that allow users to find points of interest according to desired geographic regions.” Id. at 2. The parties organized the disputed terms into five groups. Id. at 3.

The “hierarchy” phrases, id. at 3-10:
-“a database of information organized into a hierarchy of geographical areas wherein entries to each one of said geographical areas is further organized into topics”
-“narrower geographical area”
-“geographical area of relatively smaller expanse”
-“broader geographical area”
-“geographical area of relatively larger expanse”
The “dynamic replication” phrases, id. at 10-16:
-“dynamically replicating”
-“dynamically replicating an entry from broader geographical area into said geographical area.”
-“wherein within said hierarchy of geographical areas at least one of said entries associated with a broader geographical area is dynamically replicated into at least one narrower geographical area”
-“wherein at least one of said entries in said geographical area of relatively larger expanse is dynamically replicated into at least one of said geographical areas of smaller expanse”
“Topics” phrases, id. at 16-18:
-“topics”
-“wherein said topics are hierarchically organized”
“Entries” phrases, id. at 18-23:
-“entry” and “entries”
Finally, the Court construed nine additional terms and phrases, which, at plaintiffs’ urging, it construed according to their plain and ordinary meanings, id. at 23-25:
-“database”
-“on-line information”
-“organizer”
-“search engine”
-“virtual and geographic environment”
-“said search engine further configured to select one of said hierarchy of geographical areas prior to selection of a topic so as to provide a geographical search area”
-“said search engine further configured to select at least one geographical area in said hierarchy of geographical areas so as to define a geographical search area”
-“directing a search engine executing in a computer to select one or more of said geographical areas so as to select a geographical search area”

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In a recent memorandum opinion, Chief Judge Gregory M. Sleet granted Facebook’s motion to transfer to the Northern District of California a patent case filed against it by a Canadian company and its Delaware subsidiary. Mitel Networks Corp., et al., v. Facebook, Inc., C.A. No. 12-325 (GMS) (D. Del. May 1, 2013). The Court found that only one factor under the Third Circuit’s Jumara analysis weighed in favor of keeping the case in Delaware: the plaintiff’s forum preference. The weight the Court gave that factor was diminished, however, because although the subsidiary plaintiff was incorporated in Delaware, neither plaintiff maintained any operations in Delaware. Id. at 5. Further, the Court found compelling Facebook’s argument (to which the plaintiffs did not respond during briefing) that the Canadian parent company was the real party in interest, and the Delaware subsidiary was added as a co-plaintiff only for jurisdictional purposes. Id. at 4, 6. As a result, the Court found that the plaintiffs’ “forum selection is entitled to some degree of heightened deference, but not to paramount consideration.” Id. at 6 (internal quotation marks omitted). The remaining Jumara factors weighed in favor of transfer to the Northern District of California, or were neutral. The Court therefore concluded that Facebook “met [its] burden of demonstrating that the interests of justice and convenience strongly favor transfer.” Id. at 18.

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Judge Andrews recently construed the terms of U.S Patent No. 8,069,225 claiming “a transaction predictor aimed at speeding up the transmission of transactions over a network.” Riverbed Technology, Inc. v. Silver Peak Systems, Inc., C.A. No. 11-484-RGA (D. Del. May 3, 2013). Terms of the other two patents-in-suit, U.S. Patent Nos. 7,428,573 and 7,849,134, were also at issue; but the Court postponed consideration of those patents because the patents were under reexamination by the PTO. Id. at 1 n.1.

The Court construed the following terms:

“a transaction predictor”
“synthesize, based on past transactions”
“based [at least in part] on past transactions”

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In a recent order, Judge Sue L. Robinson addressed a non-party’s motion to quash plaintiff’s subpoena and plaintiff’s cross-motion to compel. Cradle IP LLC v. Texas Instruments, Inc., C.A. No. 11-1254-SLR (D. Del. Apr. 29, 2013). Plaintiff had filed an action against defendant Texas Instruments, Inc. in late 2011, alleging infringement of U.S. Patent Nos. 6,647,450; 6,874,049; 6,708,259. Id. at 1. In late 2012 and early 2013, plaintiff served subpoenas on a non-party, Nokia Siemen Networks US LLC (“NSN US”), seeking documents and a deposition “related to Nokia Siemens base transceiver stations that [Texas Instruments] . . . identified as incorporating certain of the accused devices.” Id. at 1. Judge Robinson granted plaintiff’s motion to compel, but only to the extent that “NSN US has an employee or representative who has knowledge of the topics identified in the subpoena; does not need to obtain documents or information from [Nokia Siemens Networks Oy] for such knowledge; and lives, works, or regularly transacts business within 100 miles of the designated place of deposition.” Id. at 8. Further, Judge Robinson directed the deposition witness, if any, “to bring responsive documents that NSN US does not need to obtain from [Nokia Siemens Networks Oy], even if such documents are not located within 100 miles of the place of deposition or production.” Id. at 8-9.

With respect to the motions before the court, the “bulk” of the disagreement between plaintiff and NSN US surrounded whether NSN US had “control” over documents or information in the possession, custody, or control of Nokia Siemens Networks Oy (“NSN Oy”)—NSN US’s Finnish sister company that was also a non-party to the action. Id. at 4. Judge Robinson noted that “control is defined as the legal right to obtain the documents required on demand,” and that the court has “declined to apply a broader definition of ‘control’ that would also include an inquiry into the practical ability of the subpoenaed party to obtain documents.” Id. at 3. To determine whether such control was present, Judge Robinson was guided by the court’s previous decision in Power Integrations, Inc. v. Fairchild Semiconductor lnt’l, Inc., 233 F.R.D. 143 (D. Del. 2005). Id. at 3-6. Judge Robinson found that the relationship between NSN US and NSN Oy was similar to the “vendor relationship” between the parties in Power Integrations: “NSN US purchases the Nokia Siemens base station transceivers that are developed by NSN Oy, a separate and distinct corporate entity.” Id. at 4, 6. Although NSN US also conceded it “maintained” the products, the Court found that insufficient “to disregard the separate and distinct corporate identity of NSN US.” Id. at 6. Judge Robinson thus concluded that “NSN has no control over documents or information that it would have to obtain from NSN Oy.” Id.

Judge Robinson, however, was “concerned with certain aspects of NSN US’s motion to quash.” Id. Judge Robinson noted that “it [was] unclear from the record” whether NSN US was in the possession, custody, or control of other information it would not be required to obtain from NSN Oy, such as “supply chain” information or information regarding “certain hardware semaphores and software.” Id. Judge Robinson further found it unclear whether “any NSN US employee or representative within the court’s territorial limits may have knowledge that is responsive to the subpoena.” Id. at 7. Accordingly, Judge Robinson granted plaintiff’s motion to compel to the extent discussed above. Id. at 8-9.

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Chief Judge Gregory M. Sleet recently issued a claim construction order in Edwards Lifesciences, L.L.C., et al. v. Medtronic CoreValve, L.L.C., et al., C.A. No. 12-cv-23-GMS (D. Del. Apr. 23, 2013). The Court construed the following disputed claim terms of U.S. Patent No. 8,002,825, entitled “Implantable Prosthetic Valve for Treating Aortic Stenosis”:

-“a prosthetic valve for implantation in a stenosed aortic valve”
-“metallic frame having intersecting bars”
-“frame made with intersecting metallic bars”
-“Frame”
-“18 French arterial introducer”
-“the frame being expandable”
-“a flexible valvular structure”
-“internal cover”
-“comprises a concave shape profile” and “shape comprising a concave profile”
-“wherein the frame is configured to be expanded by a balloon”

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In a recent memorandum opinion, Chief Judge Gregory M. Sleet adopted Magistrate Judge Thynge’s report and recommendation, denying defendant’s renewed motion to stay the patent litigation proceedings pending inter partes reexamination. ImageVision.Net, Inc. v. Internet Payment Exchange, Inc., C.A. No. 12-054-GMS-MPT (D. Del. Apr. 22, 2013). In June 2012, after filing for inter partes reexamination, defendant had filed its first motion to stay. Id. at 1. Judge Sleet adopted in part the magistrate judge’s report and recommendation and denied that motion. Id. After the PTO granted defendant’s request for inter partes reexamination in December 2012, defendant filed a renewed motion to stay—the motion at issue in Judge Sleet’s recent memorandum opinion. Id. at 1-2.

First, Judge Sleet held that “the granting of an inter partes reexamination under the AlA” should not “displace the three-factor test that has been traditionally employed in assessing a motion to stay.” Id. at 5. The three-factor test, as Judge Sleet explained, “is capable of incorporating any changes resulting from the AlA.” Id. Specifically, Judge Sleet noted that to the extent defendant “focus[ed] on the more searching standard applied by the PTO in granting a reexamination request” under the AIA, the court could account for that standard pursuant to the three-factor test’s “issue simplification factor.” Id.
Having determined that application of the three-factor test was appropriate, Judge Sleet then assessed whether the magistrate judge erred in her application of that test in her report and recommendation (the “R&R”). First, with respect to prejudice to the non-moving party, Judge Sleet noted that while “delay does not, by itself, amount to undue prejudice,” Magistrate Judge Thynge properly based her finding of undue prejudice on the “potential for delay” and “the parties’ competitive relationship.” Id. at 6-7. Second, with respect to the “simplification of the issues,” defendant argued that Magistrate Judge Thynge had not given enough weight to the PTO’s grant of the reexamination request, since “[i]f . . . all claims of the [the patent-in-suit under reexamination] are invalid, then every other issue in the case will be moot.” Id. at 8-9. Judge Sleet explained that “[w]hile this may be true,” the R&R was still not in error–defendant “fail[ed] to recognize the speculative nature of its reexamination predictions, and the PTO’s published statistics [that] suggest that at least some claims will survive intact or in an amended form.” Id. at 9. Third, with respect to the “stage of the ligation,” defendant emphasized that discovery was not complete and that no exact trial date was set. Id. at 9-10. Judge Sleet explained, however, that Magistrate Judge Thynge “properly examined this factor in light of other decisions from this district and found it significant that the parties have already engaged in substantial discovery.” Id. at 10. Judge Sleet adopted the R&R, finding that Magistrate Judge Thynge’s “treatment of the three factors” was “neither clearly erroneous nor contrary to law.” Id.

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