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In a recent memorandum order, Judge Robinson provided rulings and guidance on several evidentiary issues in advance of trial. Ladatech, Inc. v. Illumina, Inc., et al., C.A. No. 09-627-SLR (D. Del. Feb. 14, 2012). First, the Court rejected the defendants’ proposed jury instruction that would have required the plaintiff to show evidence of a “lack of good faith” by the defendants to prove inducement to infringe. Judge Robinson explained, “Defendants may properly argue that Illumina possessed a good faith belief that its directions to customers would not cause the acts that constitute infringement. . . . [but] Illumina’s lack of good faith is not an element of plaintiff’s prima facie case[.]” Id. at 1-2 (emphasis in original). Next, Judge Robinson ruled that, given the parties’ stipulation that Illumina knew of the patent at issue, any evidence regarding failed licensing attempts between the plaintiff and defendants was not necessary to plaintiff’s proving that Illumina intended to induce infringement, and would be more prejudicial and potentially confusing than probative. Id. at 2-3. Judge Robinson disagreed, however, with the defendants’ argument that evidence of licensing attempts also should be inadmissible under Rule 408, explaining that “[t]here is no indication that the parties’ discussions took place while litigation was pending (such that defendants’ license request(s) could be deemed an offer of settlement).” Id. at 2 n.2 (citing SanDisk Corp. v. STMicroelectronics, Inc., 480 F.3d 1372, 1375 n.1 (Fed. Cir. 2007)). Finally, Judge Robinson provided guidance on the parties’ use of the reexamination file wrapper at trial, and cautioned that “it has been the court’s observation that reexamination evidence is, at best, confusing vis-à-vis the complex invalidity standards the jury is asked to apply. . . . Therefore, the parties are required to give notice to each other (and to the court) prior to referencing the reexamination at trial. Id. at 4.

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On February 2, 2012, Judge Stark issued a Memorandum Opinion construing the following claim term of AstraZeneca’s U.S. Patent No. RE37,314 directed to novel compounds that inhibit the biosynthesis of cholesterol, including the active ingredient in CRESTOR®:

“a cation capable of forming a non-toxic pharmaceutically acceptable salt”
AstraZeneca UK Ltd. v. Watson Laboratories, Inc., C.A. No. 10-915-LPS (D. Del. Feb. 2, 2012). The Court agreed with defendant Watson Laboratories that “the specification provide[d] an express definition that limit[ed] the term … to an alkali metal ion, alkaline earth metal ion, or ammonium ion”

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Following the pretrial conference in Sunovion Pharmaceuticals, Inc. v. Dey Pharma., L.P., et al., C.A. No. 06-113-LPS, Judge Stark recently ruled on a couple of issues relating to expert testimony, including granting in part defendants’ motion for reconsideration of the Court’s prior ruling striking defendants’ expert report in its entirety as untimely. Id. at 1. In their motion for reconsideration, defendants argued that the Court had, in its prior ruling, “ignored the proper burden-shifting framework for proving anticipation” and erred in excluding their expert’s report as untimely, “resulting in manifest injustice.” Id. at 1. In addtion, defendants argued that the entirety of their expert’s report was timely and should not have been stricken by the Court, because, among other things, it appropriately responded to assertions made by plaintiff’s expert in his report. Id. at 2-3. The Court agreed in part, ruling that defendants’ expert report would not be stricken in its entirety, and that their expert would be permitted to testify at trial consistent with a certain, non-stricken portion of his report. Id. at 3. The Court noted that the non-stricken portion of the report from which testimony at trial would be permitted concerned an issue that defendants were not obligated to anticipate would be put in dispute or otherwise were not required to address in their opening report. Id. at 3. The Court made clear, however, that those portions of defendants’ expert report that were not “timely disclosed in the opening round of expert reports” and that “did not require advance knowledge of [plaintiff’s expert’s] report” would remain stricken. Id. at 3. In addition to ruling on defendants’ motion for reconsideration, the Court reaffirmed that “disputes as to whether specific expert testimony is improper as beyond the scope of prior disclosures [would] have to await trial and, likely, post-trial motions.” Id. at 4. The Court cautioned that “where an expert’s trial testimony was not adequately disclosed in an expert’s report, a new trial may be warranted.” Id. at 5 (citation omitted). This practice is consistent with how Judge Stark has generally handled beyond the scope of expert report objections raised at trial in previous cases.

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Dear Colleague,
Managing IP and Delaware IP Law Blog invite you to the US Patent Reform Forum on March 27, 2012 at the Willard InterContinental in Washington D.C.

Free for IP counsel, academics and research institutes

The forum brings together top officials, leading counsel at U.S. corporations and their private practice advisers to discuss the recently enacted Leahy-Smith America Invents Act.

Easy ways to register:
Visit: www.managingip.com/USPatentforum2012
Email: mfabri@euromoneyplc.com
Call: +1 212 901 3828
Topics on the agenda include:
• Roundtable: AIA rulemaking overview
• An Industry Perspective: We lobbied the cause; the act was passed – where did we land?
• Key considerations: The Joinder Provision; ITC proceedings and the new rules on false
marking
• In focus: Post Grant Review and litigation strategies under AIA
• First-to-file system: Implications of a significant change in the law
• AIA and NPEs: Impact or more of the same?

Speakers:
• Judge Paul Michel
• Gary Griswold, former chairman, The Coalition for 21st Century Patent Reform
• Bob Stoll, former commissioner for USPTO
• Robert Armitage, senior VP and general counsel, Eli Lilly
• Phil Johnson, chief intellectual property counsel, Johnson & Johnson
• Sherry Knowles, principle, Knowles Intellectual Property Strategies
• F. Scott Kieff, professor of law, George Washington University
• Dan McCurdy, chairman, PatentFreedom
• Brent Bellows, Knowles Intellectual Property Strategies
For more information about the agenda, please see the brochure here: http://www.managingip.com/pdfs/USPatentForum.pdf

The forum is free for IP counsel. Places are allocated on a first come, first served basis, please register in advance to secure yours.

We look forward to you joining our debate in March.

Kind regards,
James Nurton
Managing editor
www.managingip.com

Pilar Kraman
Managing editor
www.delawareiplaw.com

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In Intellectual Ventures I LLC v. Altera Corp., C.A. No. 10-1065-LPS, after carefully considering and analyzing the Federal Circuit’s recent decision in In re Link_A_Media Devices Corp., 662 F.3d 1221, 1224 (Fed. Cir. 2011), Judge Stark denied defendants’ motions to transfer venue to the Northern District of California. Id. at 1. In this case, plaintiffs, both Delaware limited liability companies with their principal places of business in Washington, initially filed suit against three of the four defendants in the District of Delaware for patent infringement, and later amended the Complaint to add the fourth defendant. Id. at 2-3. All four defendants are Delaware corporations with headquarters on the West Coast, with three of the four defendants being headquartered and having their principal places of business in California. Id. at 1-2, 13. In addition, all four defendants have research and development facilities in the Northern District of California, where most of the development activities for the various accused products are alleged to have occurred. Id. at13. Based in large part on these grounds, the defendants moved to transfer the case to the Northern District of California. Id. at 3, 13. The Court, however, denied defendants’ motions, concluding that, overall, defendants had “failed to satisfy their burden of showing that the balance of convenience factors and interests of justice weigh strongly in favor of transfer.” Id. at 24. In analyzing the relevant private and public interest factors identified by the Third Circuit, the Court concluded, among other things, that because a corporate entity’s state of incorporation was part of its “home turf,” plaintiff’s choice of Delaware as a litigation forum in this action was entitled to “paramount consideration.” Id. at 12. Most notably, in considering and distinguishing the Federal Circuit’s ruling in Link_A_Media, the Court offered the following observations: (1) “while Link_A_Media certainly contains guidance for how this Court must conduct its review of a motion to transfer, the decision has not altered the fundamental fact that Section 1404(a) is intended to place discretion in the district court to adjudicate motions for transfer according to an ‘individualized, case-by-case consideration of convenience and fairness”; (2) unlike here, “the plaintiff in Link_A_Media was not a Delaware entity and . . . had no connection to Delaware whatsoever” and (3) “the Federal Circuit believed the District Court in Link_A_Media had accorded dispositive weight to a single private factor (defendant’s state of incorporation) and had refused to consider two other private factors (convenience of witnesses and location of books and records).” Id. at 10 (internal quotations and citations omitted). This decision provides yet another example of and further insight as to the Court’s analysis of motions to transfer post-Link_A_Media.

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Chief Judge Sleet construed the following terms relating to several “camera-on-a-chip” patents in a recent Order in Sirona Dental Systems, Inc., et al. v. Danaher Corp., et al., C.A. No. 10-288 (GMS) (D. Del. Jan. 26, 2012):

“readout circuit”
“a photoreceptor”
“sensing node”
“signal controlling device”
“timing circuit”
“correlated double sampling”
“single chip camera device”
“control portion”
“noise reduction circuit”
“fixed pattern noise reduction circuits”
“a follower transistor, receiving information from said photoreceptor indicative of said light”
“a select transistor, selecting said each pixel cell for readout”
“associated device, associate[d] with processing said light from said photoreceptors”
“formed in substrate adjacent said plurality of pixel[] cells”
“image processing device”
The Court agreed with the defendant’s contention that “associated device, associate[d] with processing said light from said photoreceptors” was a means-plus-function term, despite the absence of the words “means for,” explaining that “here, the term ‘associated’ which modifies ‘device,’ is not defined in the specification and there is no suggestion that it has a generally understood meaning in the art. Therefore, the court finds that ‘associated device’ does not connote sufficient structure to a person of ordinary skill in the art ot avoid § 112 treatment.” Id. at 7-8 n.30. The Court rejected the defendant’s contention that “image processing device” also was a means-plus-function term, explaining “[a]lthough this term uses the word ‘device,’ the additional words ‘image processing’ add sufficient structure to overcome the presumption that § 112 applies. The claim makes clear that the image processing device is a particular type of device that connotes sufficient structure to a person of ordinary skill in the art.” Id. at 8 n.31.

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Judge Joseph Farnan originally held a Markman hearing in Magnetar Techs. Corp. v. Six Flags Theme Parks Inc. on October 15, 2009. After Judge Farnan retired, the court reassigned the case and held another Markman hearing on April 14, 2011. The case involves technology for brakes on amusement park rides such as rollercoasters. Judge Stark has now issued an opinion construing the following claims:

– “fin extending from an underside of said car (and lengthwise of said car)”
– “change the spaced apart relationship”
– “as a function of velocity of the member between the arrays”
Magnetar Techs. Corp. v. Six Flags Theme Parks Inc., C.A. No. 07-127-LPS-MPT, at 9-16 (D. Del. Feb. 1, 2012).

The court also concluded that “material handling” (Plaintiff’s proposal) or “material handling car” (Defendant’s proposal) was not a limitation of the asserted claims. The phrase “material handling” appeared only in the preamble, and was not a claim limitation under Catalina Mktg. Int’l v. Coolsavings.com, Inc., 289 F.3d 801 (Fed. Cir. 2002), because:

– the preamble did not provide an antecedent basis to an element of the claim,
– the preamble was not “essential to understand limitations or terms in the claim body,”
– the preamble did not provide “additional structure or steps underscored as important by the specification,” and
– there was no “clear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art.”
Magnetar Techs. Corp. v. Six Flags Theme Parks Inc., C.A. No. 07-127-LPS-MPT, at 6-9 (D. Del. Feb. 1, 2012).

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Judge Stark recently construed the following terms relating to patented technology that “provide[s] a more personalized experience for internet users based on an individual user’s interests” by “filter[ing] information available on the internet to target more relevant internet search results, advertisements, news, and other information . . . .” Personalized User Model LLP v. Google Inc., Civ. No. 09-525-LPS (D. Del. Jan. 25, 2012).

“user” or “user u”
“user-specific data files”
“monitored user interactions with the data”
“parameters”
“estimating parameters of a learning machine”
“learning machine”
“User Model specific to the user”
“user-specific learning machine”
“document”
“estimating”
“probability”
“unseen document”
“estimating a probability P(u/d) that an unseen document d is of interest to the user u”
“estimating a posterior probability P(u/d,q) that a document d is of interest to the user u given a query q submitted by the user”
“present” and “presenting”
“user interest information derived from the User Model”
“documents of interest to the user”
“documents not of interest to the user”
In construing the final two terms, the Court rejected the defendant’s argument that “of interest” and “not of interest” were indefinite, explaining that to the extent those terms are subjective, they describe a user’s subjective reaction that can be determined based on objective criteria described in the specification. Id. at 44-45.

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Judge Robinson has issued a memorandum opinion considering summary judgment on several issues in LadaTech, LLC v. Illumina, Inc., C.A. No. 09-627-SLR (D. Del. Jan. 24, 2012). The plaintiff, LadaTech, accused defendants Illumina and Solexa of direct and indirect infringement of a patent directed to a method of amplifying a mixture of different sequence duplex DNA fragments and a method of isolating complex DNA fragments. The claims at issue on summary judgment concerned only the former. The court issued a separate claim construction opinion and considered motions for summary judgment on noninfringement, invalidity, patent expiration, and no anticipation.

Finding that her claim construction order had resolved many of the arguments raised, Judge Robinson refused several bases for summary judgment of noninfringement, because “[t]he infringement dispute is, essentially, one of claim construction.” Id. at 21. She did, however, grant summary judgment with respect to only one of the defendant’s accused products and the use of third party products, finding no “evidence that any customer actually performed the method of the ‘023 patent using [the accused third party product.]” Id. at 27-28.

Judge Robinson also denied the defendants motion for summary judgment of invalidity and expiration of the patent-in-suit. Under the claim construction adopted by the court, there was no dispute that one of the limitations was well known in the art. Therefore, the written description was not inadequate for failure to sufficiently disclose this limitation. Furthermore, she rejected the defendants’ argument that plaintiffs had lost small entity status and paid a deficient fee, and thus their patent had expired. Under Federal Circuit precedent, the court had no obligation or authority to analyze whether a patent has expired due to fee deficiency. Id. at 28-36.

Finally, the court granted the plaintiff’s motion for summary judgment of no anticipation for two separate prior art references. Again, the court found that the claim construction it had adopted had largely resolved the defendants’ arguments regarding both references. Id. at 36-46.

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In Ladatech, LLC v. Illumina, Inc., C.A. No. 09-627-SLR (D. Del. Jan. 24, 2012), Judge Robinson construed the following terms of U.S. Patent No. 6,107,023 which is directed toward DNA sequencing technology:

“A method of amplifying a mixture of different sequence duplex DNA
fragments, comprising:”
“linker”
“double-stranded linker”
“Both strands of the fragments, at both fragment ends”
“Single fragment strand”
“Primer”
“A primer”
“Whose sequence is complementary to a linker region on each fragment
strand”
“Linker region”
“Each fragment strand”
“Repeating said denaturing, hybridizing, and converting steps until a
desired degree of amplification is achieved”

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