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Judge Richard G. Andrews recently issued an order, sua sponte, striking 10 of 11 summary judgment briefs filed by a defendant, finding that the anticipated volume of the briefing related to summary judgment motions was excessive. The lone brief that was not struck was unopposed. XpertUniverse Inc. v. Cisco Systems Inc., C.A. No. 09-157-RGA (D. Del. Jan. 2, 2013). Judge Andrews estimated that the Court would need to review and consider 600 or more pages of briefing in connection with the 11 summary judgment briefs, 3 Daubert motions, and one motion for “terminating sanctions”, and noted that this volume of briefing would not be accepted by any other District Court judge. Judge Andrews explained, “Chief Judge Sleet does not allow summary judgment briefing absent an approval process. Judge Robinson would allow a maximum of 200 pages total of briefing in connection with these motions. Judge Stark would allow a maximum of 100 pages of total briefing.” Id. at 1-2. Finding that the volume of briefing in the instant case would be excessive if permitted to go forward, Judge Andrews struck 10 of the summary judgment briefs, as well as answering briefs that had been filed, adding “[t]he Defendant may choose to pursue such of these ten motions as it wishes, but must submit only one brief of no more than 40 pages . . . Plaintiff may respond with a no more than 40 page brief . . . and Defendant may reply with a no more than 20 page brief . . . .” Id. at 2.

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Judge Leonard P. Stark recently construed six of seven disputed claim terms of U.S. Patent Nos. 7,136,995 and 7,900,057, entitled “Cryptographic Device” and “Cryptographic Serial ATA Apparatus and Method,” respectively. Enova Technology Corporation v. Initio Corporation, et al., C.A. No. 10-04-LPS (D. Del. Dec. 28, 2012). The following terms were construed:

-“encrypted” (and variations, including “encryption,” “encrypt,” “encrypting”)
-“passed through”
-“a data stream interceptor that distinguishes between command/control and data signal transfers”
-“transparently”
-“host”
-“said SATA protocol stack is operatively coupled to a USB (Universal Serial Bus) interface via a SATA-to-USB protocol translator”
The Court concluded that “cryptographic Serial ATA (SATA) apparatus” was not a claim limitation because it appeared in the preamble of claim 1 and did not “breath life” into dependent claims 13-15, as argued by Defendants. Id. at 9. Therefore, no construction was required. Id.

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After an eleven day trial before Chief Judge Gregory M. Sleet, a jury recently returned a defense verdict in litigation involving computer security products. Finjan, Inc. v. Symantec Corp., et al., C.A. No. 10-593 (GMS) (D. Del. Dec. 20, 2012). The jury found that none of the three defendants literally infringed the patents asserted against them, and that every asserted claim of those patents was invalid in any event as both anticipated and obvious.

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In CIF Licensing, LLC d/b/a GE Licensing v. Agere Systems LLC, C.A. No. 07-170-LPS (D. Del. Dec. 3, 2012), Judge Leonard P. Stark decided several post-trial motions. This patent infringement action had been assigned to and tried before Judge Joseph J. Farnan, Jr.; upon his retirement the case was transferred to Judge Stark. Id. at 1.
Among the numerous post-trial motions that Judge Stark considered was Defendant’s motion for a trial on the remaining defenses of laches, patent license, and patent exhaustion. Id. at 4-5. Judge Stark granted the motion for a new trial on the exhaustion defense and denied the motion as to laches and license, relying largely on Judge Farnan’s pre- and post-trial orders.
Judge Stark denied Defendant’s request for a trial on the laches and license defenses because Judge Farnan had “already ruled” on the merits of these defenses and because Judge Stark agreed with Judge Farnan’s conclusions. Id. at 5, 7. Following oral argument on cross-motions for summary judgment, Judge Farnan had ruled the laches defense to be “‘without merit’” and had “‘tentatively rule[d]’” the license defense to be “‘amenable to disposition on summary judgment’” as well. Id. at 3. He had added that the license defense was “‘inapplicable to the infringement claims at issue.’” Id. Defendant was not permitted to present evidence on any of its defenses to the jury but Judge Farnan “indicated that Defendant would be permitted to renew the motions at the conclusion of the case.” Id. at 3. The jury returned a verdict, discussed here, of invalidity as to three out of the four patents-in-suit and willful infringement as to the remaining patent. Id. at 2. In his written post-trial order, Judge Farnan granted Plaintiff’s motions for summary judgment that its claims were not barred by laches and that Defendant was not licensed to the patents-in-suit, observing that he had decided both defenses were “‘without merit’” at oral argument. Id. at 3-4.
On the other hand, Judge Stark granted Defendant’s motion for a trial on the exhaustion defense because it had “received relatively little attention” at oral argument, and “[n]either at the conclusion of the Oral Argument nor in any subsequent oral or written order did Judge Farnan describe the exhaustion defense as having ‘no merit.’” Id. at 9. While Judge Farnan’s post-trial order had denied defendant’s motion for summary judgment of non-infringement due to patent exhaustion, Judge Stark observed that “Judge Farnan expressly granted [Defendant] ‘leave to renew [its motion] in the form of a post-trial motion.’” Id. Judge Stark additionally noted that “a trial [was] necessary to resolve [Defendant’s] exhaustion defense” because there were several significant factual disputes between the parties on this issue. Id. at 9-10.

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Judge Sue Robinson recently granted defendants’ motion for leave to amend their answers to add the affirmative defense of intervening rights in a consolidated ANDA litigation action. See Senju Pharmaceutical Co., et al. v. Lupin Limited, et al., C.A. No. 11-271-SLR (consolidated), Slip Op. (D. Del. Dec. 14, 2012). Plaintiffs’ original complaint alleged infringement of U.S. Patent Nos. 6,333,045 and 5,880,283. Id. at 2. Prior to this motion, “plaintiffs further amended their complaint to allege infringement of [U.S. Patent No. 6,333,045] as reexamined by defendants’ ANDA No. 202-653 and also by defendants’ ANDA No. 202-709.” Id. at 2-3. Defendants subsequently “answered the amended complaints and counterclaimed to each.” Id. at 3. Approximately nine months after plaintiffs answered defendants’ counterclaims, defendants moved for leave to further amend their answers with an affirmative defense of intervening rights. Id.

Judge Robinson noted that leave to amend “shall be freely given when justice so requires.” Id. at 3 (quoting Foman v. Davis, 371 U.S. 178, 182 (1962) (quoting Fed. R. Civ. P. 15(a))). Judge Robinson then explained that under the doctrine of intervening rights, “an infringer who was engaged in allegedly infringing activities (or ‘substantial preparation was made by the infringer’ to do so) before a reexamination certificate issued may continue to infringe said claims, if the court determines that the reexamined claims are broader in scope than the original claims, and to the extent and under such terms as the court deems equitable. . . .” Id. at 4. Thus, “the doctrine of intervening rights is a defense to infringing activity occurring after reexamination.” Id.

Plaintiffs argued that defendants’ amendment would be “futile, apparently because defendants have not conceded that they have engaged in infringing activity.” Id. Judge Robinson disagreed, and noted that “at this stage of the proceedings, defendants need not so concede, but may advance the defense of intervening rights based on plaintiffs’ allegation that ‘[d]efendants have made, and will continue to make, substantial preparation in the United States to manufacture, sell, offer to sell, and/or use within the United States, and/or import into the United States the [d]efendants’ gatifloxacin ophthalmic solution which is the subject of ANDA’ No. 202-653 and No. 202-709.” Id. 4-5. Further, defendants “contend that each ANDA sets forth preparation steps sufficient to allow the proposed affirmative defense.” Id. at 5. Thus, in light of the fact that defendants demonstrated that there is “at least some evidence to support an affirmative defense of intervening rights,” Judge Robinson granted defendants’ motion for leave to amend their answers. Id.

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Upon motion for clarification of the Court’s June 22, 2012 claim construction opinion, Judge Andrews recently issued revised constructions of two terms of the patents in suit. United Video Properties, Inc., et al. v. Amazon.com, Inc., et al., C.A. No. 11-003-RGA (D. Del. Dec. 14, 2012). Judge Andrews revised its constructions of the terms “electronic television program guide” and “interactive program guide” in order to make clear that the terms “require the respective applications to provide current and forward-looking program schedule and channel information — i.e., information concerning what programs are currently airing and when programs will air in the future, and on what channel.” Id. at 1. The Court also clarified that the term “displaying” as used in the ‘268 patent relates to “television and not other forms of ‘overlaying’ on a screen such as when a program ‘window’ on a computer screen is overlaid on top of a user’s desktop and other program windows.” Id. at 2.

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Judge Stark recently engaged in extensive claim construction of disputed claim terms of four patents related to systems for protecting against computer viruses and spam emails. See Intellectual Ventures I LLC v. Check Point Software Techs. Ltd., et al., C.A. No. 10-1067-LPS, Slip Op. (D. Del. Dec. 12, 2012). The terms the Court construed in this multi-defendant case were:

– “data file(s)”
– “determining . . . whether each received content identifier matches a characteristic of other identifiers”
– “file content identifier”/“file content ID”/“digital content identifier”/“digital content ID”
– “digital content identifier created using a mathematical algorithm unique to the message content”
– “file content identifier generator agent(s)”
– “an indication of the characteristic”/“identify the existence or absence of said characteristic”/“indicating the presence or absence of a characteristic”
– “characterizing the files on the server system based on said digital content identifiers received relative to other digital identifiers collected in the database”
– “database of business rules”/“business rules”
– “[combines/combining] the [email message/data object] with a new distribution list . . . and a rule history . . .”
– “an organizational hierarchy of a business, the hierarchy including a plurality of roles, each role associated with a user”
– “persistently storing,” “primary message store . . . for receiving an non-persistently storing e-mail messages,” and “secondary message store . . . for receiving therefrom, and persistently storing an e-mail message”
– “automatically reviewing the [email message/data object] after a specified time interval to determine an action to be applied”
– “rule engine”
– “routing a call between a calling party and a called party of a telephone network”
– “within the telephone network”
– “identification code”
– “converting . . . from an executable format to a non-executable format”
– “forwarding the non-executable format”
– “retains an appearance, human readability, and semantic content of the e-mail message”
– “deactivating the hypertext link”

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Magistrate Judge Sherry R. Fallon recently recommended that the court grant defendant Staples, Inc.’s 12(b)(6) motion to dismiss claims made against it for indirect and willful infringement of U.S. Patent No. 6,216,139. Execware, LLC v. Staples, Inc., C.A. No. 11-836-LPS-SRF (D. Del. Dec. 10, 2012).
Judge Fallon first addressed plaintiff’s indirect infringement claims, which included claims of induced and contributory infringement, and noted that in order to survive a motion to dismiss, a plaintiff must (1) “adequately plead a claim for direct infringement,” and (2) “plead sufficient facts . . . for the Court to infer that the defendants had knowledge of [the plaintiff’s] patents and that their products infringed on those patents.” Id. at 4-5 (quoting Trading Techs. Int’l, Inc. v. BCG Partners, Inc., 2011 WL 43946581, at *3 (N.D. Ill. Sept. 2, 2011) (emphasis in original)). To adequately plead direct infringement, a plaintiff must provide the level of detail required by Form 18 of the Federal Rules of Civil Procedure. Id. at 4. Judge Fallon found that plaintiff failed to provide such detail. Id. at 7. Despite identifying Staples’ customers as the alleged direct infringers, the amended complaint did not “allege that Staples’ customers actually used the accused software, or that Staples caused its customers to directly infringe the ’139 patent.” Id. at 6-7. As a result, Judge Fallon recommended the dismissal of the plaintiff’s direct infringement claim. Id. at 6-8.

Judge Fallon further recommended that if the court did not adopt her recommendation regarding direct infringement, plaintiff’s indirect infringement claim should be “limited from the date of filing of the complaint.” Id. at 8. In reaching her recommendation, Judge Fallon relied on a line of District of Delaware rulings in concluding “that a plaintiff may plead actual knowledge of the patents-in-suit as of the filing of the initial complaint to state a cause of action limited to the defendant’s post-litigation conduct, and a defendant’s decision to continue its conduct despite knowledge gleaned from the complaint is sufficient to establish the intent element required to state a claim for indirect infringement.” Id. at 10 (citing Apeldyn Corp. v. Sony Corp., 852 F. Supp. 2d 568, 573-74 (D. Del. 2012); Walker Digital, LLC v. Facebook, Inc., 852 F. Supp. 2d 559, 565-66 (D. Del. 2012)). Because the plaintiff’s amended complaint alleged that Staples had knowledge of the patent only after the filing of the complaint, Judge Fallon explained that the indirect infringement claims should be limited to activity after the filing date. Id.

Turning to the plaintiff’s wilfull infringement claim, Judge Fallon noted that in order to overcome a motion to dismiss, a plaintiff must plead “facts giving rise to at least a showing of objective recklessness of the infringement risk.” Id. at 11 (quoting St. Clair Intellectual Prop. Consultants, Inc. v. Hewlett-Packard Co., 2012 WL 1134318, at *2-3 (D. Del. Mar. 28, 2012)). Judge Fallon further noted that the “Federal Circuit has held that a patentee cannot recover enhanced damages based solely on the accused infringer’s post-filing conduct when the patentee has not sought a preliminary injunction.” Id. at 12. Because the plaintiff failed to plead that Staples had “pre-suit knowledge of the ‘139 patent,” Judge Fallon recommended that the court dismiss its wilfull infringement claim. Id. at 12-13.

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Judge Richard G. Andrews recently construed two disputed claim terms of U.S. Patent No. 5,187,512, entitled “Film Cassette Containing Pre-Exposed Film,” relating to “apparatus and processes for pre-exposing only certain portions of the frames of a film strip before the strip is exposed in a camera.” Universal Innovations, LLC v. CS Industries, Inc., et al., C.A. No. 11-501-RGA, at 2 (D. Del. Dec. 11, 2012). Judge Andrews construed the following means-plus-function terms:

“Means for defining (a) two film holding cavities and (b) an exposure frame opening located intermediate said cavities”
“Means for configuring said exposure frame opening such that the periphery of said opening corresponds with the periphery of said unexposed portion of said frame so as to prevent further exposure of said first latent image during the forming of a second latent image in the unexposed portion of said frame by image carrying light rays passing through said exposure frame opening during an exposure”
Id. at 3, 5.

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A jury returned a verdict in favor of a plaintiff today, finding after a week long trial held before Judge Sue L. Robinson that Apple’s iPhone infringes three of the plaintiff’s patents: U.S. Patent Nos. 6,070,068; 6,253,075; and 6,427,078. MobileMedia Ideas, LLC v. Apple Inc., C.A. No. 10-258-SLR (D. Del. Dec. 14, 2012). The jury rejected Apple’s arguments that each of the three patents is invalid. A trial on damages has not yet been scheduled.

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