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In a decision unsealed on May 3, 2013, Judge Leonard P. Stark rejected both parties’ inequitable conduct defenses, finding that neither proved by clear and convincing evidence that the other intended to deceive the PTO. Power Integrations, Inc. v. Fairchild Semiconductor Int’l Inc., et al., C.A. No. 08-309-LPS (D. Del. Apr. 25, 2013). The Court found that the inventor of the Defendant’s asserted patent “was generally aware of the existence of” two patents allegedly intentionally withheld from the PTO, but that “does not mean he also was aware of those patents’ specific disclosures.” Id. at 7. Quoting the Federal Circuit’s decision in Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1330 (Fed. Cir. 2009), Judge Stark explained that “one cannot assume that an individual, who generally knew that a reference existed, also knew of the specific material information contained in that reference.” Id. at 8. Moreoever, the Court noted that the inventor believed his patent was “limited to frequency jitter on the primary side of a power converter,” whereas the allegedly withheld patents, “in [the inventor’s] mind, related to secondary side jitter control.” Id. Although the Court ultimately concluded that the inventor’s patent “was not limited to primary side applications, the Court’s subsequent conclusion does not render [the inventor’s] state of mind in 2004-2007 unreasonable . . . .” Id. Overall, the Court found the testimony of the defendant’s inventor to be credible, and therefore found that the plaintiff failed to show deceptive intent by clear and convincing evidence. Id. at 8-10.

The Court next addressed the defendant’s inequitable conduct defense, which was based on an alleged “misrepresentation” to the PTO during reexamination. Id. at 11. Specifically, the defendant argued that in response to a rejection during reexamination of certain claims as anticipated by a reference, the plaintiff argued that the reference “did not disclose a ‘maximum duty cycle signal provided by an oscillator,’” implicitly asserting that such an oscillator would be novel. Id. at 11-12. According to the defendant, such oscillators were well known in the art, and “the Examiner only withdrew the rejection because he mistakenly believed that an oscillator providing a maximum duty cycle was novel.” Id. at 12. The Court noted, however, that the plaintiff had disclosed other prior art referencing such oscillators, and in any event because the rejection was based on claims initially found to be anticipated, “[t]he arguments [the inventor] presented to the PTO were limited to the specific disclosure of the [specific] reference and focused on the differences between that reference and the claims.” Id. at 13. Accordingly, the Court found that no misrepresentation had been made to the PTO. Further, because the Examiner “identified an oscillator with a maximum duty cycle signal in at least one additional prior art reference,” the Court could not “conclude that the Examiner considered the oscillator to be a point of novelty.” Id. In short, the inventor “credibly testified that he believed the Examiner was aware that oscillators with maximum duty cycle signals were known in the prior art. . . . This belief is more than reasonable given that the Examiner expressly identified such an oscillator in the Office Action and signed several Information Disclosure Statements indicating that he considered the references [the Plaintiff] submitted that disclose this feature.” Id.

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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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