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In a recent memorandum opinion, Judge Robinson denied a plaintiff’s post-trial motion for judgment as a matter of law and for a new trial. Solvay, S.A. v. Honeywell Int’l Inc., Civ. No. 06-557-SLR (D. Del. Aug. 20, 2012). The patent-at-issue claimed “processes for making 1,1,1,3,3-pentaflouropropane (‘HFC-245fa’).” Id. at 2. At trial, the jury found that the patent was both anticipated and obvious. Id. at 1. The Court found ample evidence to support the jury’s findings, and denied the plaintiff’s motion for judgment as a matter of law of no anticipation or obviousness. Id. at 9, 12, 17.

The Court also denied the plaintiff’s motion for a new trial, which was based, in part, on the argument that the Court’s jury instructions were inconsistent with the manner in which the Court and the parties originally construed claim 1 of the patent-at-issue. Id. at 17. The Court noted that in its Markman order, it construed a reaction in claim 1 as occurring “at a temperature and under a pressure whereby HFC-245fa and HCl are produced in gaseous form and separated from the reaction mixture in a gas stream[.]” Id. at 17. The Court acknowledged that in the final jury instructions, the same portion of claim 1 was construed slightly differently, to read: “at a temperature and under a pressure whereby HFC-245fa and HCl are produced in gaseous form and continuously separated or drawn off from the reaction mixture in a gas stream”. Id. (emphasis in original). The Court noted, though, that “[t]he threshold issue is whether [the plaintiff] properly objected to the change in instructions, thereby preserving its right to raise the instruction as grounds for a new trial.” Id. at 18. Here, the plaintiff “did not object to the [inclusion of ‘continuously’ or ‘or drawn off’] to the claim construction in its notice of objections to the final jury instruction …, and it did not raise any objection before the instructions were read to the jury.” Id. Further, the plaintiff “conceded that the version of the claim construction including the words ‘continuously’ and ‘or drawn off’ was consistent with the court’s previous construction.” Id. at 18-19 (citing trial transcript). Under the circumstances, the Court explained that a new trial based upon the purported improper jury instruction would not be warranted because there was no “grievous unfairness” resulting from the instruction. Id. at 19.

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Judge Sue L. Robinson recently denied defendants’ joint motion to transfer to the Northern District of California where the patents-in-suit were previously litigated. Mosaid Technologies, Inc. v. Sony Ericsson Mobile Communications (USA) Inc., C.A. No. 11-598-SLR (D. Del. Aug. 16, 2012). Judge Ware of the Northern District of California presided over the two previous cases and was, according to defendants, “extensively familiar with the patents.” Id. at 3. Plaintiff was a Canadian corporation with it’s principal place of business in Texas Id. at. 2. Defendant HTC was a Washington corporation with its principal place of business in Washington, and defendant Sony was a Delaware Corporation with its principal place of business in Georgia. Id. Defendants had argued that several of the Jumara public interest factors favored transfer because of Judge Ware’s “‘substantial investments of both time and resources with respect to the subject matter in this case.” Id. at 7. Judge Robinson found those factors neutral, however, noting that Judge Ware recently announced his retirement planned for this month. Id. Judge Robinson found all other factors neutral as well. For example, she determined that this court was “equally well-suited” to construe an agreement at issue under California law, and the named inventors indicated their willingness to travel to Delaware, as needed. Id. at 7-8. “Insofar as no factors favor[ed] transfer in these circumstances[,]” defendants motion was denied. Id. at 9.

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Judge Robinson has granted early summary judgment of invalidity on one patent in several of the Cyberfone patent infringement cases. See Cyberfone Systems, LLC v. Cellco Partnerhsip, et al., C.A. No. 11-827-SLR through 11-835-SLR (D. Del. Aug. 16, 2012). Judge Robinson first determined that under Bancorp Services, L.L.C. v. Sun Life Assurance Co. of Canada, 2012 WL 3037176 (Fed. Cir. July 27, 2012), the Court need not conduct claim construction prior to proceeding with a § 101 analysis. Rather, an early summary judgment even without the benefit of claim construction was appropriate. Cyberfone at 8-9. She then considered the patentability of the claimed invention and found that the patent-in-suit did not meet the “machine-or-transformation test” for patentability of a process claim under In re Bilski, 545 F.3d 943 (Fed. Cir. 2008). The claimed process neither “transformed” the credit card data collected nor was meaningfully limited in scope by the machine on which it operated. Judge Robinson found that “the use of a telephone to capture data does not make the abstract concepts of sorting and storing data somehow patent-eligible, [and to] the extent that a machine is also involved in the sorting or organizing step . . . [t]he machine is just a general purpose computing device being asked to do some unspecified sorting function.” Cyberfone at 11-15. Finally, Judge Robinson found that even aside from the non-dispositive machine-or-transformation test, the patent was too abstract: “[T]he abstract nature of plaintiff’s patent is plainly apparent. The patent, broken down into its component parts, recites steps by which data is obtained, sorted and stored. These steps represent nothing more than a disembodied concept of data sorting and storage and, therefore, the court finds the abstract nature of this patented process to be manifestly apparent.” Id. at 15-16.

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In St. Clair Intellectual Property Consultants, Inc. v. Apple, Inc., C.A. 10-982-LPS (D. Del.), Judge Stark recently issued a claim construction opinion construing disputed claim terms for six patents-in-suit relating to ways in which a computer system can utilize various techniques to achieve improved power conservation. Id. at 1. In the memorandum opinion, the Court construed the following claim terms and phrases:

– “accumulating”
– “accumulating a count indicating the time duration said CPU has allocated to performing . . . [said] idle class activities within a predetermined time period”
– “accumulating a count related to said idle class code thread occurrence detection”
– “execution of a predefined code thread”
– “single common system bus which directly connects the CPU device with the input/output devices”
– “system bus which directly connects the CPU device with said input/output circuit”
– “system bus which connects the CPU device with the input/output device”
– “generating [or generates] a first inactivity indicator after a first predetermined period of inactivity and a second inactivity indicator a second predetermined period of inactivity after generating the first inactivity indicator”
– “[couples device operating power/coupling said circuit operating power] . . . when the [state controller/computer system] is in said [first/second/third] state”
– “polarity control bit”
– “polarity circuit”
– “idle thread execution completion detection means”
– “processor clock speed control means”
– “selectable connector”
– “selection device”
– “controller”
– “bus processing means”
– “power director means which in response to the mode of operation of the mode controller selectively couples each of the plurality of power control lines to said memory cell associated with that power control line such that a signal is generated on the power control line that is dependent upon the state of the memory cell to which it is coupled”

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In a recent memorandum opinion, Judge Robinson granted a defendant’s motion to stay a second-filed action pending the first-filed court’s determination of where the litigation should proceed in light of the first-filed rule. Cellectis S.A. v. Precision Biosciences, Inc., C.A. Nos. 11-890-SLR, 12-204-SLR (D. Del. Aug. 6, 2012). The declaratory judgment plaintiff, Cellectis, (who was the defendant in a mirror image infringement suit filed first in North Carolina), argued that “the first-filed rule should not apply in the first instance because the North Carolina court lacks jurisdiction over [Cellectis].” Id. at 5. The Court noted, though, that Cellectis had previously sued Precision Biosciences in North Carolina, and therefore “should not oppose litigating in a court in which it previously litigated without complaint.” Id. The Court ultimately held that because it was not “evident that the North Carolina court lacks personal jurisdiction . . . the North Carolina court should make that determination in the first place as the first-filed court.” Id. at 6. The Court stayed the case to allow the North Carolina court time to apply the first-filed rule and determine where the parties’ litigation should proceed. Id.

On a separate issue, Judge Robinson clarified that where a complaint is amended “to add patents that issued after the original complaint was filed,” the determination of whether to permit the amendment is controlled by Federal Rule of Civil Procedure 15(d), as opposed to Rule 15(a). Here, the Court permitted Cellectis to amend its complaint to add newly issued patents under Rule 15(d), explaining that (as with the inquiry under Rule 15(a)) leave should be freely given absent evidence of undue delay, bad faith, or dilatory motive, none of which were present in this case. Id. at 8-9. The Court acknowledged that it appeared Cellectis chose to amend its complaint, rather than file a new action for infringement of the newly issued patents, to avoid “first-to-file complications.” Id. at 8.

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In Monec Holding AG v. Motorola Mobility, Inc., et al., C.A. No. 11-798-LPS-SRF (D. Del.), Magistrate Judge Fallon recently issued a Report and Recommendation recommending that defendants’ motion to dismiss plaintiff’s claims for indirect infringement and willfulness be granted. Id. at 1. In the case, plaintiff filed suit against multiple defendants alleging willful, direct and indirect infringement of a patent relating to an electronic book technology. Id. at 1-2. Specifically, in its first amended complaint, as bases for its claims of indirect infringement and willfulness, plaintiff alleged that: (1) “Defendants instruct their customers, both retailers and end-users, on infringing uses of the Infringing Products”; (2) “Defendants knew or should have known that the Infringing Products were especially made for use in an infringement of [the patent-in-suit]”; and (3) “there is no substantially noninfringing use of the Infringing Products.” Id. at 2. In support of its allegations that defendants had actual knowledge of the patent-in-suit, plaintiff further alleged that because defendants’ competitors had been engaged in litigation with plaintiff involving the same patent at issue in this case, and because that litigation received substantial press coverage, defendants in this case were aware of and would have likely followed and monitored that litigation. Id. at 1-2.

The Court disagreed, concluding that plaintiff had failed to allege sufficient facts from which the Court could infer that defendants had actual knowledge of the patent-in-suit at the time they committed the allegedly infringing activities. Monec Holding at 8-9. The Court found that plaintiff’s assumption that defendants would have known about the patent-in-suit based on the litigation activities of their competitors was not enough. Id. at 8. The Court also found that the plaintiff failed to sufficiently allege willful blindness or that the defendants somehow purposefully avoided knowledge of the patent-in-suit. Id. at 12. In addition, on the issue of intent, the Court found that plaintiff’s “conclusory averments” contained no factual support to establish the requisite intent and that marketing activities of the defendants, absent more, do not demonstrate that defendants knew such activities were infringing or that defendants had the specific intent to encourage another’s infringement. Id. at 13. Likewise, on the issue of willful infringement, the Court found that plaintiff failed to sufficiently allege how or why defendants would have known that the patent-in-suit applied to their allegedly infringing activities or that defendants acted in “deliberate disregard” of plaintiff’s rights. Id. at 16.

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Judge Stark recently issues a Markman opinion construing the claims of patents related to power conservation in computer systems. In St. Clair Intellectual Prop. Consultants, Inc. v. Acer, Inc., et al., C.A. Nos. 09-354-LPS & 09-704-LPS (D. Del. Aug. 7, 2012), Judge Stark construed the following terms:

– “activity value”
– “activity count”
– “monitors/monitoring the activity level [of the] computer system”
– “activity monitor”
– “powered modes”/“powered states”
– “a power switching circuit”
– “predetermined group of the computer system devices/circuits”
– “operating modes”
– “idle threads”
– “clocking said CPU at a second frequency less than said first frequency or by not maintaining clocking of said CPU”
– “special purpose buses each connected to the processor and to one of the external devices and each operating at a different bus bandwidth corresponding to the bus bandwidth associated with the bus device to which it is connected”
– “common bus connecting the plurality of external bus devices to the plurality of special-purpose buses”
– “A data processing system comprising a processor, …. a plurality of special-purpose buses each connected to the processor, … and bus processing means”
– “power switching means for selecting one of said supply voltages as said card voltage”
– “when the input data [at least a subset of the input data] has not been recently updated”

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In Kimberly-Clark Worldwide, Inc. v. Cardinal Health 200, LLC, C.A. No. 11-1228-RGA (D. Del. July 27, 2012), Judge Andrews recently issued a memorandum order dismissing with prejudice defendant’s unclean hands counterclaim and dismissing without prejudice defendant’s state law counterclaims for deceptive trade practices, tortious interference and unfair competition, but denying plaintiffs’ motion to dismiss defendant’s Lanham Act counterclaim. Id. at 1. Plaintiffs filed suit against defendant for infringement of two patents relating to sterilization products and methods used to sterilize surgical instruments. In its answer to the complaint, defendant denied plaintiffs’ claims for patent infringement, asserting a number of affirmative defenses and counterclaims, including counterclaims for: (a) unclean hands; (b) unfair competition and false advertising under the Lanham Act; (c) deceptive trade practices; (d) tortious interference; and (e) common law unfair competition. Id. at 1. In response, plaintiffs moved to dismiss each of these counterclaims under Rule 12(b)(6) for failure to state a claim. The Court granted the motion in part and denied it in part. In granting the motion to dismiss defendant’s unclean hands counterclaim, the Court found that “unclean hands is more in the nature of an affirmative defense than a separate cause of action” and that is was not a “stand-alone” counterclaim. Id. at 2. In granting the motion to dismiss defendant’s counterclaim for deceptive trade practices, the Court found that the counterclaim was lacking because it failed to assert “at a minimum, a violation of a particular state’s deceptive trade practices act, including allegations of which subsection is violated.” Id. at 7. Similarly, with respect to dismissal of defendant’s state law counterclaims for tortious interference and common law unfair competition, relying on post-Twombly cases, the Court concluded that those counterclaims should be dismissed because they failed to identify a valid business relationship or expectancy and how plaintiffs’ conduct allegedly interfered with that business relationship or expectancy. Id. at 8. On the other hand, in denying the motion to dismiss defendant’s Lanham Act counterclaim, the Court concluded that defendant’s noninfringement allegations provided a “sufficiently detailed foundation for alleging that Plaintiffs’ statements of infringement are false” and that defendant’s allegations regarding sham litigation and whether certain statements are literally false were each issues of fact “best left for summary judgment or trial.” Id. at 4-5. Regarding certain oral statements and allegations that customers have been misled, the Court further concluded that those allegations had been sufficiently pled for purposes of surviving the motion to dismiss. Id. at 6-7.

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Today, the Federal Circuit announced that the appeal from Judge Robinson’s decision in Robert Bosch LLC v. Pylon Mfg. Corp., C.A. No. 08-542 (D. Del. 2012) (the Court’s post-trial opinion is discussed here), will be heard en banc to determine whether the Federal Circuit has jurisdiction “to entertain appeals from patent infringement liability determinations when a trial on damages has not yet occurred[,]” and “when willfulness issues are outstanding and remain undecided[.]” In recent years, absent unusual circumstances, Judge Robinson has bifurcated liability and damages in all patent infringement cases before her, such that a trial on damages will commence after the issue of liability is fully adjudicated on appeal.

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