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Judge Richard G. Andrews recently issued an order in Taser International, Inc. v. Karbon Arms, LLC, C.A. 11-426-RGA (D. Del. Nov. 28, 2012), construing over twenty disputed claim terms across four patents related to “the technology of electronic control devices.” Id. at 1. The following claim terms of U.S. Patent Nos. 6,999,295; 7,782,592; 7,602,597; and 7,800,885 were construed:

-“a dual operating mode”
-“a first mode”
-“a second mode”
-“power supply”
-“sourcing, for a first period, electricity”
-“reducing an output voltage magnitude capability of the source”
-“after reducing”
-“sourcing electricity for a second period longer than the first period”
-“a stimulus signal”
-“series of pulses”
-“a particular pulse of the series”
-“determining”
-“stage”
-“after ionization of air in the circuit”
-“generating a first compliance signal of the current”
-“a first maximum amplitude”
-“generating a second compliance signal of the current”
-“being less than”
-“a second maximum amplitude”
-“a respective effective duration”
-“differ”
-“a sequence [of compliance signals]”
-“a series of compliance signal groups”
Id. at 2-3. Judge Andrews reserved decision on one term, “tailoring a compliance signal group,” pending further briefing. Id. at 3.

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Judge Leonard P. Stark recently construed seven of nine disputed claim terms of U.S. Patent No. 7,831,690, entitled “Appliance Metaphor For Adding Media Function To A Webpage.” Augme Technologies, Inc. v. Pandora Media, Inc., C.A. No. 11-379-LPS (D. Del. Dec. 5, 2012). Judge Stark construed the following terms:
• “media appliance metaphor”
• “Web page”
• “adding a media function to a Web page”
• “processor platform”
• “server system”
• “automatically provided”
• “customized by said server in accordance with information content of said Web page”
Id. at 5-13.

Judge Stark found that it was unnecessary to construe the remaining two disputed terms because subparts of those terms already had established constructions that rendered the meanings of the two larger terms self-evident. Id. at 10-11. For example, he found that it was unnecessary to construe the following claim term: “formed by a server system as a service response in response to information provided by said processor platform to said server system.” Id. at 11 (emphasis added). The terms “server system,” “service response,” and “processor platform,” had established constructions, and it was therefore unnecessary to provide a “separate construction of [the] larger term.” Id.

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Judge Leonard Stark recently issued a claim construction opinion in patent infringement litigation related to the active ingredients in the drug Nuedexta and the use of those ingredients to treat neurological disorders. See Avanir Pharmaceuticals, Inc. v. Actavis South Atlantic LLC, C.A. No. 11-704-LPS, slip op. (D. Del. Dec. 3, 2012). Judge Stark construed the following terms of the patents-in-suit:

– “A method for treating pseudobulbar affect or emotional lability”
– “Dextromethorphan in combination with quinidine”
– “A unit dosage formulation for treatment of chronic or intractable pain”
– “A debrisoquin hydroxylase inhibitor”
– “A combined dosage which renders the dextromethorphan therapeutically effective in substantially reducing chronic or intractable pain without causing unacceptable side effects”
In construing the last of these claim terms, Judge Stark rejected the Defendants’ attempt to “limit the term to a numerical range that may appear in the written description or in other claims” when the “claim term is expressed in general descriptive words.” Id. at 9 (citing Conoco, Inc. v. Energy & Envtl. Int’l, L.C., 460 F.3d 1349, 1358 (Fed. Cir. 2006)). This was particularly incorrect because “adopting the Defendants’ proposed dosage of quinidine of between 50 mg/day to 300 mg/day would lead to the improper result of independent claim 18 having narrower claim scope than dependent claim 21, which depends from claim 18.” Id.

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Judge Leonard Stark recently issued a claim construction opinion in a patent dispute related to an assembly for mounting a mirror to a motor vehicle. See Rosco, Inc. v. Velvac Inc., C.A. No. 11-117-LPS, slip op. (D. Del. Dec. 4, 2012). Judge Stark construed the following terms of the patent-in-suit:

– “a structural portion of the vehicle”
– “attachment to”
– “connection to” and “connected to”
– “engine bay”
– “inside the engine bay”
– “below the hood of the vehicle”
– “positioned below the hood when the hood is in a closed position”
– “vehicle bulkhead” or “bulkhead”
Each of these terms related to the manner in which the mirror assembly was connected to the vehicle and what portion of the vehicle it was connected to. For each term, Judge Stark either sided with the Plaintiff, in one case adding one clarifying limitation, or gave the term is plain and ordinary meaning. Id. at 7-16.

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In a recent memorandum opinion, Judge Leonard P. Stark ruled that a defendant was barred by issue preclusion from arguing that the patent at issue is invalid or unenforceable, under any theory, because the defendant’s parent company had controlled an affiliate’s earlier litigation which resulted in a ruling that the same patent was not invalid or unenforceable. Astrazeneca UK Ltd., et al. v. Watson Laboratories, Inc. (NV), et al., C.A. No. 10-915-LPS (D. Del. Nov. 14, 2012). The Court agreed with the plaintiffs that invalidity and unenforceability represent “single issues” for purposes of issue preclusion—such that the defendant was not only barred from litigating the same invalidity and unenforceability theories that the affiliate had argued unsuccessfully in the earlier litigation, but was barred from asserting any invalidity or unenforceability theories. Id. at 11-12. The Court rejected the plaintiffs’ argument, though, that another generic manufacturer and co-defendant was a proxy of the issue precluded defendant who also should be barred from arguing invalidity and unenforceability. Id. at 13-14.

The Court also considered the defendant’s motion for summary judgment of non-infringement under the doctrine of equivalents, which argued that “because the patentees used narrow claim language, Plaintiffs are precluded from relying on the doctrine of equivalents to expand the patent’s scope.” Id. at 4. The plaintiffs responded that “the doctrine of equivalents applies and protects patentees from infringers who make insubstantial changes to the claimed invention.” Id. The Court denied the motion without prejudice, finding that “the most appropriate course is to hear all of the evidence at trial and make a conclusion on the doctrine of equivalents thereafter.” Id. at 9.

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Due to problems encountered in conforming to the PDF/A standard, the District of Delaware has indefinitely suspended the requirement that was to take effect January 1, 2013, that all documents filed into CM/ECF conform with the PDF/A standard.

The Court has announced that the filing of documents in PDF Standard format will remain acceptable until further notice.

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Judge Leonard P. Stark recently granted defendants’ motion to exclude the testimony of plaintiffs’ legal expert, who was offered to testify as to substantive issues regarding the patent-in-suit, U.S. Patent No. RE37,314. He also granted defendants’ motion to exclude the testimony of plaintiffs’ technical expert to the extent that the expert would be offered to provide testimony as to “state of mind.” AstraZeneca UK Limited v. Watson Laboratories, Inc., C.A. No. 10-915-LPS (D. Del. Nov. 14, 2012).

Regarding plaintiffs’ legal expert, Judge Stark noted that the District of Delaware has a “well-established practice of excluding the testimony of legal experts, absent extraordinary circumstances.” Id. at 2. Despite the legal expert’s experience as a PTO examiner, a Special Program Examiner, and an Administrative Patent Judge on the Board of Patent Appeals and Interferences, Judge Stark found “no reason to depart from” the District of Delaware’s well-established practice in this case. Id. at 2-3. Turning to plaintiffs’ technical expert, Judge Stark noted that “[g]enerally, expert witnesses are not permitted to testify regarding intent, motive, or state or mind, or evidence by which such state of mind rnay be inferred.” Id. at 4. He therefore excluded the testimony of plaintiffs’ technical expert to the extent that the expert would offer opinions regarding what the inventors or corporate plaintiff “knew” about the prior art or what they “intended.” Id. Defendants’ motion to exclude was denied, however, to the extent that the expert would provide “testimony as to what one of ordinary skill in the art would understand about rosuvastatin zinc or other zinc salts in the context of the patent-in-suit.” Id. Judge Stark noted that “[s]o long as [the expert’s] focus is on what one of ordinary skill in the art would understand – and not on what the inventors or [corporate plaintiff] knew or intended – [the expert’s] testimony will be permitted.” Id.

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Judge Richard G. Andrews recently denied a plaintiff’s motion to disqualify one of a defendant’s attorneys and his firm. Walker Digital, LLC v. Axis Communications AB, et al., C.A. No. 11-558-RGA (D. Del. Nov. 21, 2012).
The Court concluded that the current patent infringement suit was not substantially related to the “junior prosecution work,” id. at 6, the attorney had done for the plaintiff while working for a different law firm. Id. at 7. While the Court recognized that the plaintiff’s “general patent prosecution or claim drafting strategies” may have been disclosed in the prior representation, it concluded that, even if the attorney had been privy to these “general confidences,” they were not relevant to the present action, which involved “different patents and a different subject matter.” Id. at 6. Additionally, the Court noted that the scope of the patents in suit would not be determined by the plaintiff’s “subjective intent or business strategy.” Id. And “it [was] not apparent at all how confidential knowledge of [the plaintiff’s] strategies and plans fifteen years ago could be relevant to any issue in the case, or harmful to [the plaintiff] in some other way.” Id. at 6.

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Chief Judge Gregory M. Sleet recently denied defendant Apple Inc.’s motion to transfer the case to the Northern District of California. Smart Audio Technologies, LLC v. Apple, Inc., C.A. No. 12-134-GMS (Nov. 16, 2012). In its opinion the Court discussed the evolution of its decisions since Jumara was decided, concluding that “judges within this district have made subtle adjustments to the language employed in performing the transfer analysis,” although “the substance of the inquiry has remained constant.” Id. at 3. Specifically, Delaware judges have issued decisions “along two methodological branches . . . the ‘Affymetrix approach’ and the ‘modern approach.’” Id. at 5. Judge Sleet noted that under both approaches, the Court weighs the “balance of convenience” by looking at the Jumara factors and then makes the determination of whether the balance is tipped in favor of transfer. Id. at 6. The approaches differ, however, in how they consider plaintiff’s choice of forum. Under the Affymetrix approach, plaintiff’s choice of forum is “the paramount consideration” and is separated from the weighing of the other Jumara factors. Id. This factor establishes the defendant’s burden, such that the defendant is required “to demonstrate that the interests of justice and convenience weigh strongly in favor of transfer[,]” despite plaintiff’s forum selection. Id. at 7 (emphasis in original). The modern approach, however, “treats the plaintiff’s forum preference as an independent Jumara factor to be considered within the balance of convenience analysis[,] but imposes the same heavy burden on defendant. Id. at 7-8. The modern approach only gives plaintiff’s forum choice increased weight when the plaintiff has chosen to litigate on its home turf or selected the forum for “other rational and legitimate reasons.” Id. at 9. Judge Sleet noted that the differences of the two approaches is not troubling because any difference would fall within the Court’s discretion to decide whether transfer is warranted, and the balance of factors “is a fundamentally case-by-case, fact-specific inquiry.” Id. at 10.

Regarding the case at hand, Plaintiff Smart Audio, a Texas company with a principal place of business in Texas, argued that its forum choice should be given deference because Smart Audio had rational and legitimate reasons for litigating in Delaware. Id. at 12. Judge Sleet noted that while Smart Audio’s forum choice, as a Jumara factor, is entitled to “something more than minimal weight” for having rational reasons to sue in Delaware, its forum choice is not entitled to the substantial deference had Smart Audio sued on its home turf. Id. at 12-13 (citing In re Link_A_Media Devices Corp., 662, F.3d. 1221 (Fed. Cir. 2011)). Judge Sleet then discussed the remaining Jumara factors. Regarding where the claim arose, Judge Sleet concluded that the factor weighed slightly in favor of transfer because “while the infringing products were sold nationwide, at least some of the research and development activities relating to those products occurred in the proposed transferee district.” Id. at 14-15. Likewise, the location of books and records factor weighed slightly in Apple’s favor because “its documents relating to the design and development” of the accused products are located in California. Id. at 17-18. However, certain public interest factors weighed strongly against transfer, such as the existence of related lawsuits in Delaware. The remaining factors were either inapplicable or neutral. The Court ultimately concluded that transfer was not warranted: “Even if the court could say that the balance of convenience tilts somewhat toward transfer, Apple certainly has not shown that the interests of convenience and justice strongly favor its position.” Id. at 21.

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Judge Sue Robinson has issued a memorandum order on a patent infringement defendant’s motion to exclude several claims of the patent-in-suit from consideration at trial. See MobileMedia Ideas, LLC v. Apple Inc., C.A. No. 10-258-SLR (D. Del. Nov. 15, 2012). During the pendency of the case, the PTO conducted an ex parte reexamination of the patent-in-suit and concluded that three claims were patentable as amended. After the PTO had concluded its reexamination, the defendant requested that Judge Robinson exclude the three amended claims from the upcoming trial, which was only a few weeks away and would proceed on the unamended claims. The plaintiff sought inclusion of the three amended claims in the trial, in place of the three original claims. Judge Robinson ultimately ordered that the claims be excluded. Id. at 6.

Judge Robinson explained that reexamined claims must be “legally identical to their original counterpart . . . [meaning] ‘without substantive change.’” Id. at 4 (citing Laitram Corp. (Laitram II), 163 F.3d 1342, 1346 (Fed. Cir. 1998)). Essentially, “the scope of the claims [must be] identical.” Id. She pointed out that the amendments to the claims at issue “incorporate limitations from other claims of the [patent-in-suit] . . . [but] the combination of elements in amended claim 1 did not exist in a single claim prior to the issuance of the reexamination certificate” and experts had not had the opportunity to address the combination of elements in one claim. Id. at 4-5. Accordingly, Judge Robinson found that the claim at issue and claims dependent on it had substantively changed during reexamination and that “proceeding with the reexamined claims at this stage may open the door to new infringement theories and opinions at trial that have not been vetted through discovery.” Id. at 5-6. Additionally, the defendant would be “unduly prejudiced . . . [because it had] framed its invalidity defenses for the [patent-in-suit] in light of the original claims.” Id. at 6. Accordingly, Judge Robinson excluded the amended claims from trial.

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