Judge Gregory M. Sleet recently construed the claim term “physiologically required amounts” following a four-day bench trial on infringement of plaintiff’s U.S. Patent No. 5,989,581. Merck Sharp & Dohme B.V. v. Warner Chilcott Company, LLC, C.A. No. 13-2088-GMS (D. Del. Feb. 25, 2016). During the trial, Judge Sleet determined that the parties disputed the meaning of the term and it was appropriate for the Court to resolve the dispute. Judge Sleet ordered post-trial claim construction briefing and subsequently issued an order construing the term to mean “the amounts of the progestogenic compound and the estrogenic compound required by the body to achieve the full therapeutic effect.”
In a recent memorandum order, Judge Richard G. Andrews denied a plaintiff’s motion to substitute into the case an individual in place of a corporate plaintiff whose patents were invalidated at trial. Pi-Net Int’l Inc. v. JPMorgan Chase & Co., C.A. No. 12-282-RGA (D. Del. Feb. 22, 2016). Judge Andrews explained the patents at issue were transferred to the individual post-trial. The Court denied the motion, explaining:
There are no equities or interests that support allowing Dr. Arunachalam to continue to litigate the case. She used the corporate form to bring the lawsuit. The corporation lost. Dr. Arunchalam pro se has a history of ignoring the Court’s rules, and, indeed, to her detriment, has ignored the Court of Appeals’ rules also. Dr. Arunachalam repetitively files motions that no lawyer would file, such as the motions to recuse just about every single judge who is assigned to her cases. Dr. Arunachalam’s motion in this case states nothing about whether she would accept the litigation liabilities that Pi-Net might have incurred. (There is a pending section 285 motion.)
The Court proceeded to deny the defendants’ motion for attorneys’ fees, finding that the number of theories upon which the defendant proved invalidity was not a basis to find the case exceptional. The Court also found no evidence that Dr. Arunachala knew the patents were invalid, or held an unreasonable belief in their validity. Finally, Judge Andrews noted that the plaintiff’s settlement demand that was 100 times larger than the amount for which the plaintiff was settling similar cases was an indication of bad faith litigation, but was not itself determinative.
Following an appeal from the Federal Circuit, Judge Richard G. Andrews recently denied defendant’s motion for attorneys’ fees and granted defendant’s (“Newegg”) motion for costs in Pragmatus Telecom LLC v. Newegg, Inc., C.A. No. 12-1533-RGA (D. Del. Feb. 18, 2015). As to the motion for attorneys’ fees, Judge Andrews was required to determine whether the case was “exceptional” under 35 U.S.C. § 285. To that end, Judge Andrews first considered whether the case was litigated by plaintiff (“Pragmatus”) in an “unreasonable manner.” Id. at 3-7. Judge Andrews explained that “the core of Newegg’s motion revolves around its argument that this lawsuit was brought ‘for the sole purpose of extracting a nuisance settlement rather than resolving a meritorious claim.’” Id. at 6. Judge Andrews found, however, that “[w]hile Newegg criticizes Pragmatus for bringing suit against customers who use the live chat technology, rather than the suppliers who make and sell the technology, I cannot find this case exceptional simply because Plaintiff did something that is expressly allowed and contemplated by the Patent Act.” Id. Moreover, Judge Andrews noted that “[u]nlike in Monolithic Power or Eon-Net, Newegg does not persuasively point to any recurring patterns in Pragmatus’ litigation conduct, nor to any other aggravating factors-such as false testimony, destruction of evidence, or offensive conduct-that led those courts to find litigation misconduct.” Id. Next, Judge Andrews considered the “substantive strength” of Pragmatus’ litigation position. Id. at 7-10. Among other things, Judge Andrews found that “what is relevant to the present motion is that Newegg’s barebones non-infringement arguments do not come close to demonstrating that Pragmatus’ claims were exceptionally meritless.” Id. at 8. Judge Andrews thus denied Newegg’s motion for attorneys’ fees.
Turning to the motion for costs, Judge Andrews explained that “[t]he Federal Circuit’s decision dictates that Newegg is a prevailing party.” Id. at 10. Finding that “Pragmatus has not set forth any persuasive reason justifying a denial of costs,” Judge Andrews referred the proper calculation of costs to the Clerk of Court. Id.
In Carrier Corporation v. Goodman Global, Inc., C.A. No. 12-930-SLR (D. Del. Feb. 22, 2016), Judge Sue L. Robinson recently considered post-trial motions filed following a jury trial at which the jury returned a verdict for Carrier. Judge Robinson’s decisions prior to trial on summary judgment, claim construction, and motions in limine can be accessed here, here, and here. Judge Robinson denied in part and granted in part Goodman’s motion for judgment as a matter of law and, in the alternative, for a new trial. Goodman argued that a new trial was warranted because “Carrier made improper arguments to the jury concerning indemnity, presented a moving target of ‘copying,’ and compared invalidating a patent to the termination of parental rights.” Id. at 31-32.
Regarding indemnification, Carrier’s counsel argued during closing that Goodman knew of the infringement but “tried to put the exposure on Emerson” based on an indemnity clause in the contract between Emerson and Goodman. Id. at 33-34. Judge Robinson noted that Federal Rule of Evidence 411 states that evidence of whether or not a person is insured against liability is not admissible to prove negligence or wrongful behavior. Id. at 34. The indemnification issue “came up in connection with the use of a standard purchase order unrelated to the issues of patents or infringement.” Id. at 35. A new trial as to indirect infringement was warranted because Carrier’s counsel “exploited” the standard purchase order evidence during closing argument. Id.
Regarding copying and the appropriate burden of proof, Carrier’s counsel told the jury during opening statements that that this was a case about two companies, “[one], and innovator, and one an imitator.” Id. at 35. Subsequently, at sidebar, the parties agreed to take the issue of copying out of the case, but at closing Carrier’s counsel reiterated the copying evidence and tied it to its claims of infringement. Id. at 36. Carrier’s counsel also compared the standard of proof for invalidating a patent to that for terminating a person’s parental rights. Id. After a sidebar, Judge Robinson read a curative instruction to disregard any description of burden of proof other than as set forth in the jury instructions and that copying was not at issue. Id. at 37. Judge Robinson determined, however, that despite the curative instruction a new trial was warranted because “the trial record was complex enough and, more significantly, balanced enough to make any gratuitous argument sufficient to tip the balance for the wrong reason.” Id.
Magistrate Judge Christopher J. Burke recently resolved several discovery disputes raised by both sides in Integra LifeSciences Corp., et al. v. HyperBranch Medical Technology, Inc., C.A. No. 15-819-LPS-CJB (D. Del. Feb. 12, 2016). Judge Burke ordered defendant to produce five samples of each accused product sold or offered for sale, as “[t]he samples are indisputably relevant to the claims and defenses in the matter.” Id. at ¶ 1. Judge Burke also ordered Plaintiffs to obtain and produce certain documents that “remain[ed]” with third-party Medtronic. Id. at ¶ 2. Judge Burke found that the documents were “under the ‘control’ of at least certain Plaintiffs for purposes of Federal Rule of Civil Procedure 34(a)” because Plaintiffs have the contractual right to the documents pursuant to a Stock Purchase Agreement. Id. at ¶¶ 2-3. Finally, Judge Burke ordered Plaintiffs to supplement their response to Defendant’s interrogatory which “requested, inter alia, that as to claim 6 of [the patent-in-suit], Plaintiffs identify the priority date of claim 6, and ‘provide all of the factual and legal bases for that contention, and identify all documents and evidence [Plaintiffs] claim supports that contention.'” Id. at ¶ 5 (last alteration in original). Judge Burke agreed with Defendant that Plaintiffs’ response was “clearly deficient” demonstrated by the fact they provided a “more full explanation” in their discovery dispute letter. Id.
In International Business Machines Corporation v. The Priceline Group, et al., C.A. No. 15-137-LPS-CJB (D. Del. Feb. 16, 2016), Judge Christopher J. Burke recommended that Defendants’ motion to dismiss due to lack of patent-eligible subject matter be denied. Defendants argued the asserted claims were directed to patent-ineligible abstract ideas.
The Court examined the subject matter eligibility of each of the four patents-in-suit in turn. The Court concluded that the first patent was not directed to an abstract idea. “Defendants contend that the claims of the ‘601 patent “attempt to monopolize an abstract idea[,]” which they articulate as “keeping track of prior communications during a conversation between computers.”” Id. at 14. But the Court agreed “with Plaintiff that Defendants’ articulation does not capture the true character of the ‘601 patent’s invention,” Id. at 14. One issue with Defendants’ position was that they focused “not on the words of the patent; instead, Defendants focused largely on allegations in Plaintiffs Complaint” in a way that improperly broadened what the idea of the patent’s claims were. Id. at 14. “The ‘innovation over the prior art’ described in the patent’s specification . . . is not simply ‘keeping track of prior communications during a conversation between computers.’ Instead, it is to a new way of accomplishing that-an assertedly better method than existed in the prior art.” Id at 16 (emphasis in original). “In sum, the heart of the invention is more particular than simply ‘keeping track of communications’ amongst computers-it is the specific concept of recursively embedding state in continuations, in order to keep track of that content. By oversimplifying (and thus misidentifying) the basic character [the] patent, Defendants have failed to meet their burden of demonstrating that the claim is directed to an abstract idea.” Id. at 20.
The Court recommended denial of the motion without prejudice with respect to this patent on the grounds that it was premature, rather than conclude the patent could not be drawn to an abstract idea as a matter of law, explaining that the Court had relied on Plaintiff’s proposed claim construction in its analysis and that those constructions could end up being disputed and not adopted. Id. at 21.
Even though it was unnecessary to consider the second prong of Alice, the Court then did so “for the sake of completeness,” and concluded that “it is plausible that the ‘recursively embedding’ limitation amounts to a concrete application of the asserted abstract idea. A morenrobust record would also be needed on the subjects of preemption and innovation, which could impact the subject matter eligibility of the claim.” Id. at 22-23.
The second patent “describe[d] an invention meant to improve upon then-current single-sign-on (‘SSO’) technology.” Id. at 30. The Court concluded that the patent was not directed to an abstract idea, again concluding that Defendants’ articulation of what the patent covered was overbroad. And, again, the Court recommended denial without prejudice and then engaged in Alice’s second step for the sake of completeness, agreeing that “it is plausible that the claim contains an inventive concept sufficient to withstand Defendants’ Motion.” Id. at 38-39.
The third and fourth patents, which are related with similar specifications and were considered together, are directed at “enabl[ing] a user to navigate easily through multiple applications in an interactive service” and “provid[ing] a method for presenting relevant advertising to a user of an interactive service without distracting the user or disrupting the user’s session.” Id. at 45-46. Here, the Court concluded that “[t]he heart of these inventions are as Defendants have described them-generating partitioned screen displays for users from information stored at the user’s computer.” Id. at 48. And the Court agreed with Defendants that these patents were directed at abstract ideas: “the concepts of locally storing information and resources at a user’s computer and presenting a partitioned display are abstractions ‘devoid of a concrete or tangible application.’ People have been locally storing information and presenting displays of information with or without computer-based help for years. (See, e.g., D.I. 19 at 21 (Defendants describing an individual creating a copy of a document that is also stored in a file room to avoid having to visit the file room each time she needs to use the document)). These concepts are comparable to other similar concepts that have been deemed to be abstract in recent cases.” Id. at 48 (citations omitted). However, the Court then concluded that Defendants had not met their burden of demonstrating that these patents were devoid of inventive concepts under Alice’s second prong.
Accordingly, the Court recommended denial of the motion as to all four patents-in-suit.
UPDATE: On March 30, 2016, Chief Judge Leonard P. Stark adopted Judge Burke’s Report and Recommendation in full.
In a recent Memorandum Order, Magistrate Judge Christopher J. Burke denied defendant’s motion to stay pending resolution of defendant’s petition for inter partes review (“IPR”), with leave to renew the motion after the PTAB’s determination on whether to institute an IPR proceeding. Advanced Microscopy Inc. v. Carl Zeiss Microscopy, LLC, C.A. No. 15-516-LPS-CJB (D. Del. Feb. 11, 2016). Judge Burke noted “that this course-as opposed to a decision to grant a stay pending the PTAB’s ruling-is the better approach here.” Id. at 2.
First, Judge Burke explained that there is “good reason to believe that the PTAB’s decision will come before the parties have engaged in a large-scale expenditure of resources on document production or on claim construction-related activity.” Id. Judge Burke further explained that “denial of the instant motion without prejudice to renew will allow for a better, more fully developed record as to the ‘simplification of issues’ factor.” Id. at 3. In particular, “[i]f the PTAB does institute a review, the Court can examine the grounds upon which review has been granted (including which of the claims of the patent-in-suit would be the subject of that review), so as to determine the effect that the PTAB’s decision could have on simplifying this case.” Id.
Judge Burke explained that “as time has passed since the new IPR process was instituted, the Court has become less and less sure about the merit of granting a stay in favor of an IPR proceeding, when the PTAB has not even weighed in on whether to institute review.” Id. at 4. Judge Burke noted that “[a]s compared to the results from IPR institution decisions in 2013, more recent data suggests that review is being instituted in far fewer cases.” Id.
Judge Burke further noted that “the Court is . . . impacted by Chief Judge Stark’s views on this subject.” Id. at 5. Judge Burke first noted that “[i]n mid-2014, Chief Judge Stark issued ‘Revised Procedures for Managing Patent Cases.’” Id. Judge Burke reads that procedure in relevant part “as expressing Chief Judge Stark’s preference that, in the main, cases filed by a plaintiff should move forward.” Id. Judge Burke also noted that “in recent opinions, Chief Judge Stark has . . . stated that ‘[g]enerally, the ‘simplification’ issue does not cut in favor of granting a stay prior to the time the PTAB decides whether to grant the petition for inter partes review.’” Id.
The U.S. District Court for the District of Delaware is seeking public comment on proposed revised local rules of practice and procedure. The proposed amendments were recommended by the Lawyers Advisory Committee of the United States District Court for the District of Delaware, and approved by the Court.
A copy of the proposed rules may be accessed here.
Per the Court’s Public Notice, all comments and suggestions with respect to the Rule revisions should be forwarded to the Office of the Clerk at the addresses below, no later than April 1, 2016:
Judge Andrews recently resolved several motions for summary judgment and to exclude evidence and testimony in the patent battle between EMC and PureStorage. Among these, Defendants PureStorage moved for summary judgment of invalidity of a patent-in-suit, and Plaintiff EMC responded with two declarations swearing behind the reference relied upon by Defendant. The Defendant then moved to strike these declarations and attached documents for having been disclosed too late. EMC Corp., et al. v. Pure Storage, Inc., C.A. No. 13-1985-RGA, Memo. Op. at 20 (D. Del. Feb. 11, 2016).
Judge Andrews ultimately determined that the evidence should not be stricken. In support of this conclusion, Judge Andrews found that the swearing behind evidence was “of critical importance to the issue of invalidity” and that there was “no reason to believe, at this point, that the trial will be disrupted if the declarations are not struck.” Id. at 23. Judge Andrews further found that there was no incurable prejudice to the Defendant because “aside from the [reference at issue,] all but one of Pure’s invalidity references predate March 2002,” so it had not shown prejudice “on the ground that, had it known earlier that EMC would assert a March 2002 conception date, it would have searched for prior art dated before March 2002.” Id. Moreover, Judge Andrews found no bad faith or willfulness, accepting as reasonable EMC’s explanation that the newly disclosed documents had been in the declarant’s possession, not EMC’s, and therefore EMC had not sought evidence of earlier conception and reduction to practice until they had received PureStorage’s expert report that fully described the relevant anticipation theory. Id. at 24-25.
In addition to other motions, Judge Andrews also addressed a motion to exclude expert opinions that were supposedly inconsistent with the Court’s claim construction order. Ultimately, His Honor found that “[w]hen a court does not construe a term or orders that ordinary meaning applies, expert testimony on the understanding of a skilled artisan is appropriate to assist the jury.” Thus most of the expert’s opinions were permissible with the exception of two parts of the expert’s opinions that took positions regarding claim scope contradictory to the Court’s recent supplemental claim construction order. Id.at 35-37.
Judge Andrews recently issued a memorandum opinion addressing summary judgment motions in HSM Portfolio LLC, et al. v. Elpida Memory Inc., et al., C.A. No. 11-770-RGA (D. Del. Feb. 11, 2016). The Court first granted the defendant’s motion for summary judgment of non-infringement of the plaintiff’s ‘853 patent, explaining that “[t]he patent requires . . . that for a product to infringe, it must satisfy the predetermined factor limitation, when the predetermined factor is calculated using Equation (37).” The Court found “two independent reasons for concluding that the algebraically-reduced expression for K,” the calculation used by the plaintiff’s expert, “is not Equation (37).” Summary judgment of literal infringement was therefore denied. The Court also granted the defendant’s motion for summary judgment of non-infringement of the ‘853 patent under the doctrine of equivalents, finding that “[a]n equation that arrives at a scaling factor based on information that is derived from a completed circuit – though ideal for proving infringement – is not, as a matter of law, equivalent to an equation which utilizes prefabrication information to arrive at a predetermined factor. This would read ‘predetermined’ out of the claims.”
The Court next considered the defendant’s motion for summary judgment of non-infringement of the ‘212 patent, directed to a clocked latch. The Court explained that in its claim construction order, it held that the “clock input signal must have multiple pulses with intervals between those pulses.” Here, though, the plaintiff failed to identify any evidence that the accused products had components “capable of receiving a periodic signal with a constant frequency used for synchronization,” so summary judgment of no literal infringement was granted. The Court also found that the disclosure-dedication rule did not apply and could not be used to render a “logic signal” described in the specification unclaimed and therefore in the public domain. The Court found that it was not clear that the “logic signal” was not, in fact, claimed, and moreover it was not clear from the specification that the “logic signal” was an alternative to the claimed “clock input signal.” Continue reading