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In BASF Corporation v. Johnson Matthey Inc., C.A. No. 14-1204-SLR-SRF (D. Del. Feb. 9, 2016), Judge Sue L. Robinson concluded that certain disputed claim terms of U.S. Patent No. 8,524,185 were indefinite.

The terms “material composition A effective for catalyzing NH3 oxidation”, “material composition B effective to catalyze selective catalytic reduction (SCR) of NOx” , “material composition further effective to catalyze SCR of NOx”, and “a material composition B free from precious metal effective for catalyzing selective catalytic reduction (SCR) of NOx” was indefinite because

Each claim fails to limit the “material composition A” or the “material composition B” to any specific materials. Rather than explicitly defining [them], the claims utilize functional language, specifically “effective,” to purportedly define them. In other words, the claims recite a performance property the composition must display, rather than its actual composition. Moreover, none of the claims recite a minimum level of function needed to meet this “effective” limitation nor a particular measurement method to determine whether a composition is “effective” enough to fall within the claims. Without such information, a person of ordinary skill in the art could not determine which materials are within the “material composition A” or “material composition B” limitation, and which are not.

Id. at 5. Furthermore, “a practically limitless number of materials exist that would ‘catalyze SCR of NOx . . . indicating that the claims, as written, fail to sufficiently identify the materials compositions.” Id. at 5 n.10.

The Court also construed the following terms:

monolithic catalyst substrate; and

an overcoat washcoat layer coated over a total length of the monolithic substrate from the inlet end to the outlet end / an overcoat washcoat layer coated over a total length of the honeycomb substrate from the inlet end to the outlet end of the substrate.

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Judge Andrews recently denied a series of motions to “preclude untimely evidence from trial” in which a plaintiff argued that various prior art evidence was disclosed late and therefore could not be used at trial. Judge Andrews first found that certain references which were used only as background references, not to meet elements in obviousness combinations, should not be excluded because they had been disclosed in various ways, including as prior art for a different patent-in-suit or by an expert in a claim construction declaration. Additionally, the plaintiff’s expert had addressed these opportunities in his validity report. HSM Portfolio LLC, et al. v. Elpida Memory Inc., et al., C.A. No. 11-770-RGA, Memo. Or. at 2-4 (D. Del. Feb. 11, 2016).

Judge Andrews also refused to exclude declarations and letters directed to corroborating the dates of public availability of various prior art references. His Honor explained that “[b]ecause Plaintiffs were dilatory in their interrogatory responses pertaining to the prior art, Defendant did not know that Plaintiffs intended to argue that certain references did not qualify as prior art until after Defendant’s invalidity report was due” and characterized this situation as “a problem of Plaintiffs’ own making.” Id. at 4.

In the same order, Judge Andrews also granted the defendant’s motion to strike “a new infringement theory [advanced for the first time] in their reply [expert] report.” Indeed, even though the defendant had served a supplemental non-infringement report to address the new theory, Judge Andrews found that this did not cure the prejudice because “[if] Plaintiffs had timely disclosed this infringement theory, Defendant may have been able to assert different theories of non-infringement and invalidity.” Id. at 5-6.

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In Forest Laboratories, Inc., et al. v. Teva Pharmaceuticals USA, Inc., et al., C.A. No. 14-121-LPS, C.A. No. 14-200-LPS, C.A. No. 14-686-LPS (D. Del. Feb. 9, 2016), Chief Judge Leonard P. Stark recently issued in limine rulings in advance of the pretrial conference for an upcoming ANDA bench trial.  Defendants requested Judge Stark exclude one of Plaintiffs’ witnesses due to late identification as a trial witness.  Judge Stark denied the request but permitted Defendants a two-hour deposition of the witness “to mitigate any unfair surprise.”  Id. at 2.  Judge Stark granted Plaintiffs’ request to exclude a new non-infringement theory disclosed by Defendants on January 26, 2016.  Id.  Judge Stark disagreed with Defendants that the late disclosure “was justified as a response to arguments in an expert report filed . . . more than two months before Defendants disclosed their new theory, given the proximity to trial.”  Id.

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In a recent Report and Recommendation, Magistrate Judge Christopher J. Burke considered defendants’ motions under FRCP 12(b)(6) and 12(c), which argued that all claims of plaintiff’s U.S. Patent No. 8,271,974 (the “’974 patent”) are directed to non-patent eligible subject matter under 35 U.S.C. § 101. Kaavo Inc. v. Cognizant Technology Solutions Corp., C.A. Nos 14-1192, 14-1193-LPS-CJB (D. Del. Feb. 5, 2016). The ’974 patent is entitled “Cloud Computing Lifecycle Management for N-tier Applications,” and according to its Abstract, relates to “[m]ethods, devices, and systems for management of a cloud computing environment for use by a software application.” Id. at 2.

Judge Burke first examined independent claim 1 of the ’974 patent, and recommend that defendants’ motions be granted with respect to that claim. Under the first step of Alice, Judge Burke concluded that claim 1 was directed to the abstract idea of “setting up and managing a cloud computing environment,” which Judge Burke found has “no particular concrete or tangible form” and is “devoid of a concrete or tangible application.” Id. at 13. Judge Burke also concluded that claim 1 lacked an inventive concept under the second step of Alice, finding that “claim 1 lacks the requisite element or combination of elements that would be sufficient to ensure that the claim amounts to something more than the abstract idea of ‘setting up and managing a cloud computing environment[.]’” Id. at 18. Judge Burke explained that claim 1, “on its face, does not appear to specify any meaningful, particularized technological or procedural limitations on that idea.” Id. Stated differently, “the words of claim 1 appear to contain almost ‘no restriction on how’ the claim’s six ‘determining,’ ‘sending’ or ‘receiving’ steps are to be accomplished; the claim simply appears to ‘describe[] the [sought-after] effect or result’ of the steps.” Id.

Judge Burke found that claim 1 adequately represented the remaining independent claims at issue, and concluded that those remaining independent claims were similarly directed to patent-ineligible subject matter. Id. at 32. Accordingly, Judge Burke recommended that defendants’ motions regarding the remaining independent claims be granted.

With one exception, Judge Burke recommended that defendants’ motions regarding the dependent claims at issue be denied without prejudice. Judge Burke reasoned that “[t]he Court is not prepared to take the significant step of finding such claims ineligible when they are addressed in such a cursory manner by the movant in the first instance.” Id.

UPDATE: On March 31, 2016, Chief Judge Leonard P. Stark adopted Judge Burke’s Report and Recommendation in full.

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In a recent Order, Judge Richard G. Andrews denied in part defendant’s motion to redact a hearing transcript. M2M Solutions LLC v. Motorola Solutions Inc., C.A. No. 12-33-RGA (D. Del. Feb. 2, 2016). Judge Andrews granted the motion with respect to portions of the transcript regarding profits, third party license agreement royalties, and the index, but denied the remainder of the motion. Judge Andrews was unpersuaded that the “disclosure of the other information will work any clearly defined and serious injury to [defendant].”

Judge Andrews’ decision was guided by Mosaid Tech Inc. v. LSI Corp., 878 F. Supp. 2d 503 (D. Del. 2012) and the factors set forth in Pansy v. Borough of Stroudsburg, 23 F.3d 772 (3d Cir. 1994). Judge Andrews explained as follows:

Simply because the parties have designated the information as confidential, highly confidential, confidential – attorneys’ eyes only, etc., under a protective order is irrelevant to the present issue, that is, whether the information should be redacted from a judicial transcript. There is not much public interest in the information that is exchanged in discovery. Once, however, it is disclosed in a judicial proceedings, it is in the public interest to be able to understand the proceedings before a judge, and redaction of the transcript hinders that public interest. Nevertheless, there are things that might be appropriately sealed in a public proceeding, such as the pricing terms in license agreements, some other non-public financial information, trade secrets, and other proprietary technology. Information in a transcript may hint at some of these things without actually threatening any “clearly defined and serious injury.” Things that typically weigh against the necessity of sealing include that the information is old, or general, or already in the public record, and was relevant to the judicial proceeding. Further, if there is a need for redactions, the proposed redactions should be as narrow as possible.

Judge Andrews also noted that defendant had not “submitted an affidavit/declaration in support of its motion.”

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On May 19 and 20, 2016 the District of Delaware and the Delaware Chapter of the Federal Bar Association will co-host the District’s Second Bench and Bar Conference.   This year’s Bench and Bar Conference will be held at the Chase Center on the Riverfront, located in downtown Wilmington, DE. Lodging for out-of-town guests will be reserved at a discounted rate at the Westin Hotel, which is adjacent to the Chase Center. The Bench and Bar Conference will include plenary CLE sessions, as well as breakout CLE sessions in the areas of Intellectual Property, Bankruptcy, and Criminal Law.

Additional information will be forthcoming over the next few months.

 

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In Bradium Technologies LLC v. Microsoft Corporation, C.A. No. 15-31-RGA (D. Del. Feb. 2, 2016), Judge Richard G. Andrews granted-in-part Defendant’s motion to dismiss pre- and post-suit indirect infringement claims and willfulness claims. The Court granted the motion as to pre-suit induced and contributory infringement, but denied it as to infringement from the date of the complaint, explaining that the complaint’s allegations of pre-suit knowledge were conclusory. Id. at 1 n.1. For example, meetings that took place prior to the issuance o the patents-in-suit, “[h]aving one of the asserted patents cited by the patent examiner on an issued Microsoft patent,” and “vague licensing letters” were insufficient to show pre-suit knowledge Id.

The Court also granted the motion as to willfulness. Id. at 2.

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Judge Andrews recently denied a patent infringement Plaintiff’s opposed motion for a continuance of trial, suggested that his forthcoming pre-trial rulings would not affect the trial sufficiently to justify a continuance, and encouraged the parties to work cooperatively to resolve scheduling issues. As His Honor wrote, “[t]rial is scheduled for April 11, 2016, more than two months from now. It has been on the schedule, without objection, since March 17, 2015. . . . Thus, whatever logistical difficulties Plaintiff’s counsel has, they have existed for more than ten months, and it is too late to raise them now. I also note that lead counsel’s firm’s website states that the firm has ‘nearly 200 attorneys in our IP Department.’ If help is needed, resources appear to be available.” M2M Solutions LLC v. Enfora Inc., et al., C.A. No. 12-32-RGA, Memo. Or. at 1 (D. Del. Feb. 3, 2016).

Judge Andrews continued, “I agree with Defendants that [an expert’s] work schedule does not take precedence over the trial date. I also note that Plaintiff does not seem to be trying very hard to come up with an alternative. For example, perhaps she could give a trial deposition while she’s here for [a related] case. . . . In addition, I note that inventor testimony is optional. I’m sure counsel can think of some other alternatives to postponing the trial.” Id. at 2.

His Honor also noted: “I would expect counsel will be able to make informed decisions about what is likely [regarding pretrial issues], and, in any event, assume that I will decide the summary judgment issues in such a way that we will have a trial on infringement and invalidity. Daubert issues are likely to be resolved similarly to those in, the [related] case, which should be forthcoming shortly. I do not expect to schedule any hearings or arguments on the remaining issues in this case. . . . [And] the parties should meet and confer . . . and decide on a schedule to exchange supplemental damages reports.” Id. at 1-2.

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In Chestnut Hill Sound Inc. v. Apple Inc., C.A. No. 15-261-RGA (D. Del. Jan. 28, 2016), Judge Richard G. Andrews addressed how the Court should handle the stay it had imposed pending the PTAB’s institution decision on inter partes review. At this time, the PTAB had instituted review on one patent-in-sui, for which Plainitff asserted 61 claims against Defendant, but there was an additional patent in the case that was not involved in any IPR for which Plaintiff asserted 14 claims against Defendant.

The Court set ten days for Plaintiff “to decide whether it wants to elect to proceed on the presently asserted claims of the [patent not in IPR] and no more than ten claims of the [patent in IPR]. If Plainitff so chooses, [the Court would] lift the stay now.”

Ultimately, Plaintiff chose to proceed as proposed by the Court, but requested that its deadline to elect the ten claims from the IPR patent be 30 days after the scheduling conference, and requested that the stay be lifted.  D.I. 50.

Update: On February 16, 2016, Judge Andrews rejected Plaintiff’s request to have its election deadline extended and to drop claims without dismissing them with prejudice (D.I. 50 at n.2), explaining that such a proposal was inconsistent with the Court’s intent to simplify the proceedings and “threatened to multiply the proceedings.  If Plaintiff wants to proceed now, it needs to do two things. It needs to elect ten claims of the ‘063 patent, and dismiss the remainder with prejudice.”  Alternatively, Plaintiff could wait until January 2017 and proceed on all claims surviving the PTAB proceedings.

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Chief Judge Stark recently issued a claim construction order involving both alleged means-plus-function claims and a limiting preamble. With regard to the term “cavity forming structure,” Judge Stark found that “the claim language is sufficiently definite and provides sufficient structure for the basic function of ‘forming a cavity’” and that “Defendants have not put forth any expert testimony or other evidence to support their contrary view.” Accordingly, Judge Stark found the term should not be construed under § 112 ¶ 6. Orthopoenix LLC v. Dfine Inc., et al., C.A. No. 13-1003-LPS, Memo. Or. at 2 (D. Del. Feb. 2, 2016). Judge Stark also considered whether the claim preamble “a device for insertion into a vertebral body to apply a force” was limiting and determined that it was because it “provide[s] the antecedent basis for at least the ‘for capable of compacting cancellous bone and moving fractured cortical bone’ referred to in the claim.” Id. at 7.

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