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Judge Sue Robinson recently considered motions to transfer and dismiss filed by patent infringement defendant Callidus Software. Plaintiff Versata Software is a Delaware corporation with a principal place of business in Texas, and Defendant Callidus is a Delaware corporation with a principal place of business in California. Callidus moved to transfer to the Northern District of California and to dismiss under Rule 12(b)(6), and Judge Robinson denied both motions. See Versata Software, Inc., et al. v. Callidus Software Inc., C.A. No. 12-931-SLR, Memo. Op. at 1-2 (D. Del. May 16, 2013).

Referring to her previous decision in Helicos Biosciences Corp. v. Illumina, Inc., 858 F. Supp. 2d 367 (D. Del. 2012), Judge Robinson noted that both parties preferred venue would be a legitimate venue. But because “‘convenience’ is separately considered in the transfer analysis, the court decline[d] [to] elevate a defendant’s choice of venue over that of a plaintiff based on defendant’s convenience.” Id. at 3-4. Carefully weighing all of the Third Circuit’s Jumara factors, Judge Robinson ultimately concluded that “Versata chose a legitimate forum which all parties have in common—their state of incorporation. As is usual in these cases, the convenience factors do not weigh in favor of transfer, because discovery is a local event and trial is a limited event. Although Delaware is not the locus of any party’s business activities, it is a neutral forum and no more inconvenient for Calllidus than Texas, the locus of Versata’s business activities. Given that both Versata and Callidus have experience litigating in multiple jurisdictions, the court is not persuaded that transfer is warranted in the interests of justice.” Id. at 3-6.

Judge Robinson then turned to Callidus’ motion to dismiss for failure to state a claim. Her Honor first found that with respect to “Versata’s claims of direct infringement . . . Versata’s complaint sufficiently identifies the accused software . . . as required by Fed. R. Civ. P. Form 18.” Id. at 9. Consistent with her practice in previous cases, Judge Robinson also found that Versata had adequately plead indirect infringement. Relying on Walker Digital LLC v. Facebook, Inc., 852 F. Supp. 2d 559 (D. Del. 2012), Judge Robinson held that the complaint’s allegation of knowledge of infringement as of the date of filing provided adequate notice under Global-Tech. Id. Furthermore, the pleading of induced infringement without identification of a specific customer was adequately supported because Callidus “licenses and/or sells the accused products” and Versata also alleged direct infringement. Finally, the pleading of contributory infringement was adequately supported because Versata alleged direct infringement and knowledge of lack of substantial non-infringing uses. Id. at 10. For these reasons, Judge Robinson found that all of the allegations of the complaint “satisfied the requirements of Twombly and Iqbal.” Id. at 7-10.

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In Pfizer Inc. et al. v. Sandoz Inc., C.A. No. 12-654-GMS-MPT (D. Del. May 7, 2013), Chief Judge Gregory M. Sleet recently issued an order construing the following six disputed terms of U.S. Patent No. 8,026,276, which is alleged to cover a pharmaceutical that treats advanced renal cell carcinoma:
– “CCI-779”
– “w/v”
– “w/v of citric acid”
– “parenteral composition”
– “preparing”
– “combining”

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In Collarity, Inc. v. Google, Inc., C.A. No. 11-1103-MPT (D. Del. May 6, 2013), Magistrate Judge Mary Pat Thynge recently construed the following disputed claim terms of U.S. Patent No. 7,756,855, entitled “Search Phrase Refinement by Search Term Replacement:”
-“keyword,” id. at 4-8;
-“association graph,” id. at 8-10;
-“anchor keyword/non-anchor keyword,” id. at 10-12;
-“designating, by the search system, one or more keywords as anchor keywords and the remaining keywords as non-anchor keywords,” id. at 12-14;
-“order of steps,” id. at 14-19.

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Magistrate Judge Burke recently issued a thorough report and recommendation on claim construction in a patent infringement dispute between plaintiff Impulse Technology and defendants, Microsoft and the makers of several games for Microsoft’s Xbox 360 system and Kinect sensor. See Impulse Tech. Ltd. v. Microsoft Corp., C.A. No. 11-586-RGA-CJB, Report and Recommendation at 1-4 (D. Del. May 13, 2013). In addition to the parties’ agreed-upon constructions, Judge Burke construed the following disputed terms related to tracking the position of a player in physical and virtual spaces:

– “a tracking system”
– “defined physical space” and “first/second physical space”
– “virtual space”
– “player virtual location[s] in a virtual space corresponding to the physical location[s] of the player[s]”
– “positioning the representation of the user on the monitor” and “moving the representation of the user to reflect movement of the user”
– “representation”
– “overall physical location”
– “moving in the physical space”
– “[the view is from a] point of view in the virtual space corresponding to a location on a line directed outward from the display into the physical space”
Id. at 61-62.

UPDATE:
In a recent Order, Judge Richard G. Andrews adopted Judge Burke’s recommended constructions, but provided additional clarification as to the proper construction of the following terms: “overall physical location” and “‘positioning the representation of the user’ and ‘moving the representation of the user to reflect movement of the user.'” Impulse Technology Ltd. v. Microsoft Corporation, et al., C.A. No. 11-586-RGA-CJB (D. Del. Sept. 19, 2013).

Judge Andrews adopted Judge Burke’s recommended constructions, but provided additional clarification as to the proper construction of the following terms: “overall physical location” and “‘positioning the representation of the user’ and ‘moving the representation of the user to reflect movement of the user.'” See id. at 1-3.

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Magistrate Judge Sherry R. Fallon recently recommended the dismissal of a pro se patent infringement complaint filed against the United States, various United States officials, and Kannalife Sciences, Inc. McDowell v. U.S., et al., C.A. No. 12-1302-SLR-SRF (D. Del. May 10, 2013). The pro se plaintiff was the inventor of U.S. Patent No. 7,597,910, “directed to compositions and methods for treating prostate disorders using a mixture of cannabis, shiitake mushrooms, and maitake mushrooms,” but had assigned the patent to SLGM Medical Research Institute. Id. at 1, 5. The inventor argued that he had standing to bring the complaint because he and SLGM Medical Research were “one and the same,” but Magistrate Judge Fallon rejected that argument, explaining that “only the owner of the patent has standing to sue.” Id. at 5. Magistrate Judge Fallon also recommended that the complaint against the United States and its officials be dismissed for lack of subject matter jurisdiction on the basis that 28 U.S.C. § 1498 requires that patent infringement actions against the United States be filed in the United States Court of Federal Claims. Id. at 6.

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In a recent order, Chief Judge Gregory M. Sleet denied defendant’s motion to dismiss plaintiff’s claims of direct, contributory, and induced infringement for failure to state a claim upon which relief may be granted. Segan LLC v. Zynga Inc., C.A. No. 11-670-GMS (D. Del. May 2, 2013). Plaintiff is asserting U.S. Patent No. 7,054,928 (the “’928 Patent”), which includes two independent claims, one system claim and one method claim. Id. at 1 n.1. With respect to plaintiff’s claims for direct infringement, defendant argued that “it cannot possibly directly infringe either the system or methods claims” because direct infringement requires a party to “commit all the acts necessary to infringe . . . either personally or vicariously,” and plaintiff’s asserted claims “require activity by multiple actors.” Id. Judge Sleet explained, however, that with respect to the “use” of a system, “physical or direct control of all the elements of a system is not required—the user must simply cause those elements to work for their patented purpose.” Id. at 2 n.1. In light of that standard, Judge Sleet found that plaintiff sufficiently pled direct infringement, as plaintiff alleged that defendant “has used its own games on social media websites.” Id.

Defendant also argued that plaintiff’s indirect infringement claims should be dismissed for failure to adequately plead “the requisite underlying direct infringement [and] the necessary knowledge and intent.” Id. Judge Sleet found, however, that plaintiff sufficiently pled the direct infringement prong by alleging that “on any given day 60,000,000 people (i.e., users) play Defendant’s games on social websites” and that the “games’ users . . . put the invention into service, control the operation of the system as a whole and obtain [a] benefit from it.” Id. Further, with respect to the knowledge and intent requirements for induced infringement, Judge Sleet contrasted the instant complaint from the deficient complaint in Chalumeau Power Sys. LLC v. Alcatel-Lucent, C.A. No. 11-1175-RGA (D. Del. Jul. 18, 2012) (discussed previously here). Id. at 3 n.1. In the Chalumeau complaint, there were “only insufficient factual assertions to support the legal conclusion of actual knowledge, and no factual assertions at all to support the legal conclusion of specific intent.” Id. In the instant matter, Judge Sleet found that knowledge was sufficiently pled since plaintiff alleged that it sent a letter to defendant’s officers with a full copy of the asserted patent on June 30, 2011. Id. Further, Judge Sleet found that plaintiff provided “several factual assertions permitting a reasonable inference that [defendant] acted with the requisite specific intent.” Id. With respect to the contributory infringement claim, Judge Sleet again found knowledge sufficiently pled based on the allegations related to plaintiff’s letter with the asserted patent attached. Id. Further, Judge Sleet found that plaintiff provided allegations sufficient to permit “the reasonable inference that [defendant] was aware that its games were ‘especially adapted for use in infringement’ of the ’928 Patent.” Id. Specifically, plaintiffs alleged that “[d]efendant has specifically designed, developed, and acquired [its] on-line games for game players to use on target websites” and that defendant “admits in its amended IPO statement that its games require game players (users) to access the internet, Facebook (or any target website [defendant] engages).” Id.

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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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