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In a recent Order, Magistrate Judge Joel Schneider of the District of New Jersey, sitting by designation, denied a defendant’s motion for attorneys’ fees, filed after the defendant prevailed on summary judgment and the plaintiff noticed its appeal. Bayer CropScience AG, et al., v. Dow AgroSciences LLC, C.A. No. 12-256 (RMB/JS) (D. Del. Jan. 10, 2014). Given that the plaintiff’s appeal of the summary judgment order was pending, the Court recognized it could either rule on the defendant’s motion for fees, defer ruling until after the appeal, or deny the motion without prejudice to refile at a later date. It viewed the first option as inefficient in light of the U.S. Supreme Court’s anticipated June 2014 decision in Icon Health & Fitness, Inc. v. Octane Fitness, a decision the Court anticipated would help “define and clarify the standard the Court must use to decide whether this is an exceptional case.” The Court also “[saw] no benefit to indefinitely delaying a ruling on [the plaintiff’s] motion” pending the resolution of the appeal, because such a potentially lengthy delay could result in faded memories about the issues addressed in the motion, especially if any of the attorneys involved left their current law firms. The Court decided, therefore, that the best option was to deny the motion without prejudice to the defendant’s re-filing it within 20 days of the Supreme Court’s issuance of its opinion in Octane Fitness.

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We previously reported on Judge Sleet’s in limine rulings directed to Section 271(f) and European Patent Office proceedings in patent litigation related to aortic valve stents between Edwards Lifesciences and Medtronic Corevalve. After a jury trial last week, the jury awarded Edwards Lifesciences lost profit damages and reasonable royalties.

The verdict form has been made public and shows that the jury found direct infringement, willful infringement, infringement pursuant to Section 271(f), and that the patents-in-suit were valid. The jury awarded $388.8 million of lost profits and $4.8 million of reasonable royalty for infringing sales not subject to lost profits.

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Chief Judge Gregory M. Sleet recently considered defendant’s letter request to file a summary judgment motion on the issue of whether the Certificate of Correction for the patent-in-suit was invalid because the error it corrected was not minor under 35 U.S.C. § 255. Cubist Pharmaceuticals, Inc. v. Hospira, Inc., C.A. No. 12-367-GMS (D. Del. Jan. 15, 2014). Judge Sleet denied the request because “[w]hile the instant issue is a question of law, the court found in its claim construction order that ‘the determination of whether the stereochemistry correction is properly considered a correction of ‘minor character’ presents questions requiring expert testimony regarding the nature of the error and its correction.'” Id. at 2. Because underlying issues of fact remained as to whether the Certificate of Correction was invalid, Judge Sleet denied defendant’s request. Id.

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Judge Richard G. Andrews recently issued the Court’s modified claim constructions after ordering the parties to reargue claim terms, “as a result of the Court becoming more familiar with the technology at issue in this case.” Inventio AG v. Thyssenkrupp Elevator Americas Corp., C.A. No. 08-874-RGA (D. Del. Jan. 14, 2014). The Court’s original opinion construing the claim terms of the patents-at-issue, U.S. Patent Nos. 6,935,465 and 6,892,861, was issued by Judge Robreno, sitting by designation.

Judge Andrews construed the following terms:

“elevator control”
“at least one of [A] and [B]”
“interrupting at least one existing car call transmitter line between at least one car call
transmitter and the elevator control”
“interrupting at least one existing electrical floor call transmitter line between at least
one floor call transmitter and the elevator control”
“the elevator control being disconnected from the hall call transmitters and the car call
transmitters of the elevator installation”
“modernized” and “modernizing”
“elevator installation”

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Judge Richard G. Andrews recently denied defendants’ Daubert motion to exclude the testimony of plaintiff’s computer forensics expert. Robocast, Inc. v. Microsoft Corporation, C.A. No. 10-1055-RGA; Robocast, Inc. v. Apple, Inc., C.A. No. 11-235-RGA (D. Del. Jan. 13, 2014). Plaintiff offered this expert in rebuttal to defendants’ computer forensics expert who may testify as to “suspicious metadata” that recorded the creation date of a letter that was “essential” to defendants’ inequitable conduct and unclean hands defenses and that may also impact the date of conception. Id. at 2. Defendants argued that plaintiff’s expert did not “tie his theories to the facts of the case, and that therefore his testimony is not helpful to the jury.” Id. at 1. However, the Court found that “many jurors may indeed be confused by the concept of metadata, and [the expert’s] testimony may be helpful.” Id. at 1-2. The Court also did not find the expert’s theories unreliable. Id. at 3. “The underlying story” behind the expert’s explanation of the metadata “may or may not be plausible. Its status, however, is irrelevant to whether [the expert’s] proposed testimony meets Daubert’s reliability requirement.” Id. at 3 n.3.

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In two recent memorandum opinions issued on the same day, Judge Sue L. Robinson ruled on a host of pretrial motions and construed claim terms of patents relating to the receipt and descrambling of encrypted broadcast signals. British Telecommunications PLC v. Coxcom, Inc., et al., Civ. No. 10-658-SLR (“First Opinion”); 11-843 (D. Del. Jan. 13, 2014) (“Second Opinion”).

In the First Opinion, the following claim limitations were construed by the Court:

Plaintiff’s U.S. Patent No. 6,473,742:

–“means for loading the store with such data”
–“to enable or disable reception [of transmissions] in dependence on the result of the comparison”
–“means for comparing received identifiers with the contents of the store and to enable or disable reception in dependence on the result of the comparison”
–“wherein each of the fixed and removable parts has] means storing a verification number”
Plaintiff’s U.S. Patent No. 6,538,989:

–“flow based packets”
–“packet buffer”
–“packet buffer size”
–“controlling the first packet buffer size”
Plaintiff’s U.S. Patent No. 5,142,532:

–“a bidirectional broadband and telephone network”
–“for information packets to travel without interference to and from a plurality of receiving stations”
–“round-trip delay”
–“adjusting the round-trip delay to ensure correct spacing of the information packets during passage through the network”
–“enforcing allocation thereto to ensure each station’s minimum bandwidth requirements is [sic] fulfilled”
–“wherein the requesting step includes … generating a further request if an error is detected”
Plaintiff’s U.S. Patent No. 5,526,350:

–“switching means”
Plaintiff’s U.S. Patent No. 5,923,247:

–“ conditions causing unavailability of a system”
Based on the Court’s constructions, the Court denied motions for summary judgment on non-infringement and validity grounds, except for the following:

The Court granted Defendant’s motion for summary judgment of non-infringement of the ‘742 patent, because the defendant’s accused product included a second level decryption that did not meet the requirements of the limitations. First Opinion at 17. The Court also granted Defendant’s motion for summary judgment of non-infringement, explaining that the ‘350 patent specification failed to provide sufficient structure to perform the function, such that the term is indefinite. Specifically, the Court explained, “[w]ithout an example or description of a non-voice traffic switching device, the specification does not provide sufficient structure of the means-plus-function claim limitation, which requires two switching means.” For the same reason, the Court granted Defendant’s motion for summary judgment that the ‘350 patent is invalid as indefinite. Id. at 27-28.

The Court next considered Defendant’s Daubert motion to exclude Plaintiff’s expert. The Court first found that Defendant’s arguments as they related to direct infringement went to the weight of the expert’s testimony, not its admissibility, so the Daubert motion was denied with respect to direct infringement testimony. But the Court reached a different conclusion regarding the expert’s testimony relating to infringement under the doctrine of equivalents. The Court agreed with Defendant that Plaintiff’s expert “presented conclusions for each limitation, he did not articulate how the accused devices would equivalently perform each limitation.” Id. at 38-39. Therefore, the Court granted Defendant’s Daubert motion with respect to doctrine of equivalents testimony.

The Court also granted Plaintiff’s motion to strike an employee’s declaration in support of one of Defendant’s motions for summary judgment, finding that it was undisclosed expert testimony: “As [Defendant] did not identify [the employee] as an expert witness, nor were his opinions vetted through discovery, the court grants [Plaintiff’s] motion to exclude.” Id. at 12.

The Court also granted Defendant’s motion to strike portions of declarations submitted by two of Plaintiff’s expert. Defendant argued that the declarations included opinion testimony that had not been previously disclosed, which the Plaintiff disputed. However, the Court concluded that if the opinions had previously been disclosed in expert reports, “[Plaintiff] should have referenced those documents.” Id. at 12.

In the Court’s Second Opinion, the Court first granted Defendant’s motion to strike portions of Plaintiff’s expert’s declarations, finding that the declarations inappropriately provided “additional examples of non-infringing uses, some conclusory explanations, and comparisons to claim limitations” that were consistent with Plaintiff’s earlier expert disclosures, but had not “been vetted through discovery” and/or were conclusory and therefore not appropriate for review on summary judgment. Second Opinion at 4.

The Court next found, after interpreting under New York law a cross-licensing agreement between Plaintiff and a third party supplier to Defendant, that it could not conclude that Defendant was an “authorized third party” under that agreement, and therefore that it could not find that Defendant was impliedly licensed to use the patents. With respect to another third party supplier license, the Court rejected Defendant’s argument seeking an implied license, because that license specifically precluded the conferring of any implied licenses. Id. at 6-12.

Finally, the Court denied Defendant’s motion for summary judgment that the patents were unenforceable under the patent exhaustion doctrine as a result of the third party licensee’s sales to Defendant. The Court explained that neither party provided sufficient evidence of non-infringing uses to support the patent exhaustion defense. Id. at 15-19.

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Vehicle Interface Technologies has asserted a patent against several automotive manufacturers that claims a user interface for various systems of an automobile including both information about the vehicle and information for other “optional subsystems” of the vehicle. The only claim term disputed by the parties for Markman purposes was “wherein the fixed area and the selectable area each comprise a unique and static portion of the display.” Vehicle Interface Techs., LLC v. Ferrari N. Am., et al., C.A. Nos. 12-1283-RGA, Memo. Op. at 5 (D. Del. Jan. 13, 2014). Judge Andrews noted that the parties were essentially in agreement as to most of the term and that he agreed that portion was correct.

The only disputed part of the term was, therefore, “whether to include the additional limitation that a selectable area cannot display vehicle information, as the Defendants propose.” This dispute arose from an argument made in prosecution to overcome a prior art reference that disclosed vehicle information and selectable information in the same display area. Id. at 5-6. Judge Andrews found that the prosecution history “makes it clear that it is the fixed and selectable areas that must be separate, and not necessarily the content in those respective areas.” Id. at 6-7. Furthermore, the claims and the specification conflicted with the Defendants’ proposed limitation. Id. at 7-8. Accordingly, Judge Andrews found that it would be incorrect to include the Defendants’ proposed limitation and adopted the construction “Wherein the fixed area and the selectable area have non-overlapping and non-moving boundaries and the fixed area does not display any of the plurality of pages.”

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In a recent order, Chief Judge Gregory M. Sleet granted defendant’s (“Level 3”) motion to stay pending the inter partes review (“IPR”) of U.S. Patent No. 7,724,879. AIP Acquisition LLC v. Level 3 Communications, LLC, C.A. No. 12-617-GMS, Order (D. Del. Jan. 9, 2014). Plaintiff (“AIP”) is also pursuing related actions against at least 5 other defendants (“Cable Defendants”) in the District of Delaware. See C.A. Nos. 12-1688; 12-1689; 12-1690; 12-1691; 12-1692-GMS. At the time of the memorandum order, AIP was asserting against Level 3 U.S. Patents Nos. 6,757,275; 7,486,662; and 7,724,879 (“the ‘879 Patent”). Order at 1 n.1. Further, against all but one Cable Defendant, AIP asserted two additional patents, U.S. Patent Nos. 6,496,579 and 6,078,654. Order at 1 n.2 The Cable Defendants did not join Level 3’s IPR, but did not oppose a stay of their cases or the Level 3 case. Id. at 4 n.3.

Judge Sleet concluded that a stay would “simplify the issues before the court and conserve judicial resources.” Id. at 4. As Judge Sleet explained, in the PTO’s decision granting Level 3’s IPR petition, the PTO found that Level 3 “demonstrate[d] a reasonable likelihood of prevailing on its challenge to patentability of [all claims] of the ’879 patent.” Id. at 5. Judge Sleet thus concluded that granting stay would allow “the court and the parties to avoid wasting resources on a Markman hearing and at trial to address claims that have a ‘reasonable likelihood’ of being amended or canceled.” Id. at 5. Judge Sleet also noted, among other things, that while AIP was asserting against Level 3 two patents other than the ‘879 patent, the parties determined that only the ‘879 patent required claim construction. Id. at 6. Judge Sleet additionally found a stay would simplify the issues for trial because Level 3 would be “estopped from asserting invalidity arguments that were raised or reasonably could have been raised during the IPR proceeding,” and the Cable Defendants, although not parties to the IPR, had stipulated to be estopped from raising certain arguments based on the IPR proceedings. Id. at 5.

Judge Sleet found that the remaining stay factors did not “alter the balancing analysis,” and ultimately concluded that stay would “simplify issues before the court and [would] not unduly prejudice AIP.” Id. at 4, 6. Judge Sleet granted Level 3’s motion to stay and also stayed each of the related Cable Defendant cases.

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In Round Rock Research LLC v. Sandisk Corp., C.A. No 12-569-SLR (D. Del. Jan. 9, 2014), Judge Sue L. Robinson ruled on two discovery issues. The first issue related to defendant’s request for information from a third party (Micron) relating to its waiver and estoppel defenses. See id. at D.I. 96, 101 (letters outlining disputes). The Court allowed defendant to depose Micron, at its own cost, only on issues related to what Micron disclosed to plaintiff, not what plaintiff subsequently disclosed to third parties. Id. at 1-2. Furthermore, “plaintiff’s independent evaluation of said patents and its licensing strategies based upon such an evaluation are not relevant to defendant’s waiver or estoppel defenses.” Id. at 2.

Second, after reviewing in camera documents that were withheld as privileged or work product, the Court ruled that the documents need not be produced because they were irrelevant, based on the Court’s assessment of what was relevant to defendant’s waiver and estoppel defenses. Id. at 2. Even though the Court had found it unnecessary to decide whether these documents were privileged, the Court did “take the opportunity to observe that, when trying to divine the distinction between the business of licensing and preparing for anticipated litigation, some documents – like claim charts – are both useful business tools and essential litigation obligations. In this regard, in balancing the need for production against the historic protection from discovery of attorney-client communications and attorney work product, I believe the balance should be struck in favor of protection.” Id. at 2 n.3.

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Chief Judge Gregory M. Sleet recently considered defendant Metlife’s motion to dismiss plaintiff’s patent infringement action on the basis that plaintiff’s patent, U.S. Patent No. 6,684,189, fails to claim patentable subject matter. The Money Suite Company v. Metlife, Inc., C.A. No. 13-1748-GMS (D. Del. Jan. 9, 2014). Metlife alleged that “the ‘189 patent is directed to an abstract idea — using a computer to generate a quote for a financial product product– and is thus non-patentable subject matter.” Id. at 3. Judge Sleet noted that the Federal Circuit is divided on the applicability of “[t]he abstract idea judicial exception to patent eligibility under § 101 of the Patent Act” to computer-implemented inventions. Id. The United States Supreme Court recently granted cert in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, the outcome of which may substantially affect the issues implicated by Metlife’s motion. As such, Judge Sleet sua sponte stayed this and other related cases pending the Supreme Court’s ruling. Id. at 4. The Supreme Court will hear argument in Alice Corp on March 31 (see SCOTUS Blog for coverage).

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