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In LG Electronics, Inc. v. Asko Appliances, Inc., C.A. No. 08-828-RGA (D. Del. June 22, 2012), Judge Andrews granted-in-part defendants’ motion to exclude plaintiff’s expert. Judge Andrews determined that the expert was not qualified to opine as to whether any reference was “prior art”, but could opine as to “what different references teach, and to differentiate and compare references.” Id. at 1. Judge Andrews also found that while the expert was qualified to opine about the secondary consideration of copying (due to “his expert ability to review and compare washing machine motors, their development, and their installation”), the expert could not opinion on other secondary considerations, such as commercial success, because the opinion was based on the expert’s review of industry documents and knowledge of plaintiff’s corporate witness, rather than his own expertise in the industry. Id. at 2.

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Judge Stark recently considered summary judgment motions from defendants Canon and Adobe in a patent infringement action brought by Tarkus Imaging. Tarkus Imaging, Inc. v. Adobe Systems, Inc., C.A. No. 10-63-LPS (D. Del. June 14, 2012). Judge Stark ultimately concluded that summary judgment was not appropriate on any point because “the portions of this case at issue in the pending summary judgment motions present a ‘battle of the experts’ that is not amendable to resolution prior to presentation of evidence, including testimony.” Id. at 1-2.

Specifically, with regard to Canon’s motion for summary judgment of non-infringement, “[t]he Court [was] not persuaded, at this stage of the proceedings, by Canon’s contentions that Tarkus is barred from asserting doctrine of equivalents infringement theories due to application of prosecution history estoppel or that Tarkus has failed to create a genuine dispute of material fact because Tarkus’s expert has not identified specifically infringing source code.” Id. at 5. The Court also denied Adobe’s motions for summary judgment of non-infringement and no indirect infringement. On the issue of indirect infringement, Adobe argued that it had no knowledge of the patent-in-suit, but the Court found that Tarkus had “presented evidence that creates a dispute of fact as to whether Adobe was willfully blind to the existence of the [patent-in-suit].” Id. at 8-9.

Finally, the Court denied Canon’s motion for summary judgment that Tarkus’s patent was invalid on the ground that a claim term lacked an antecedent basis and was therefore indefinite. An expert opinion, the Court said, “based on the plain language of the claims and the specification, is sufficient to create a genuine dispute as to whether a person of ordinary skill in the art could determine the scope of the claim and the meaning of [the claim term] despite the lack of express antecedent basis [for that term]. As a claim term without an explicit antecedent basis may nevertheless be definite if the term ‘has a reasonably ascertainable meaning . . . decided in context,’ summary judgment is not warranted based on the present record.” Id. at 10-11.

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In St. Jude Medical v. Volcano Corporation, C.A. No. 16-631-RGA-MPT (D. Del. June 15, 2012), Judge Andrews recently considered the parties’ motions to strike expert reports. Plaintiff moved to strike the expert report of defendant’s patent law expert. Id. at 1. Judge Andrews granted plaintiff’s motion finding that the contents of the report, which was “akin to a legal brief” on patent law, was not the appropriate subject of expert testimony and would not assist the trier of fact. Id. Defendant moved to strike the expert reports of plaintiff’s inequitable conduct experts. Id. Noting that no inequitable conduct defenses would be presented to a jury, and noting that portions of the reports might be inadmissible or irrelevant, Judge Andrews declined to strike the reports because parts of the reports were admissible and would assist the Court as the trier of fact on inequitable conduct. Id. at 2.

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In United Access Technologies, LLC v. Earthlink, Inc. C.A. No. 02-272-MPT (D. Del. June 14, 2012), Judge Thynge recently considered defendant’s bill of costs submitted after the Court’s opinion, that reversed the jury’s verdict as to invalidity but upheld the jury’s verdict of non-infringement, was affirmed on appeal. Id. at 1-3. Plaintiff objected to defendant’s bill of costs arguing, among other things, that defendant was not the prevailing party because defendant was unsuccessful on its counterclaim of invalidity. Id. at 4 Judge Thynge disagreed. Defendant was the prevailing party because the relief it received on the merits, i.e., that it did not infringe plaintiff’s patent and was free to continue operating its DSL business, altered the legal relationship between the parties. Id. at 9. It was irrelevant that defendant was unsuccessful on its invalidity counterclaims. Because plaintiff’s patent is presumed valid, the court’s finding that defendant failed to carry its burden to prove invalidity did not “materially alter the legal relationship between the parties by modifying [defendant’s] behavior in a way that directly benefitted [plaintiff.]” Id.

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Magistrate Judge Schneider of the District of New Jersey recently reminded parties of the appropriate showing that must be made in connection with a motion for leave to amend infringement and invalidity contentions. Bayer CropSciences AG v. Dow AgroSciences LLC, C.A. No. 10-1045 (RMB/JS) (D. Del. June 7, 2012). The Court explained, “the key fact courts should look at to determine whether good cause exists to grant an amendment to a contention is the diligence of the moving party. Diligence has two aspects to it. One is whether the moving party acted diligently to discover that an amendment was appropriate. The second aspect is whether the moving party promptly moved to amend its contentions after it learned an amendment was necessary.” Id. at 3 (citing O2 Micro Intern. Ltd. v. Monolithic Power Systems, Inc., 467 F.3d 1355, 1365-67 (Fed. Cir. 2006)). In denying the motion, the Court explained, “good cause is not established simply because a party desires to respond to an amended contention. Otherwise, there would be a never ending series of amendments.” Id. at 4. In this case, Dow’s motion “did not demonstrate why its latest proposed amendment could not have been asserted earlier or why Bayer’s amendment was not anticipated.” Id.

The Court also rejected Dow’s attempt to amend its contentions through an incorporation by reference of its summary judgment briefs, explaining “[t]he Patent Rules [of the District of New Jersey] incorporated into the Court’s Scheduling Order provides that contentions may only be amended by motion. The mere fact of filing a brief is insufficient to amend a contention.” Id. at 5. Moreover, the Court explained that “Dow has not demonstrated why the contentions in its briefs were not included in its earlier filed contentions.” Id. at 6. Finally, the Court denied Dow’s attempt to add two prior art references “that were both discovered recently,” explaining that Dow’s motion “did not attempt to establish good cause for its failure to previously identify the references.” Id.

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Magistrate Judge Burke recently issued a report and recommendation construing claims relating to a low-viscosity gel composition that operates as a “delivery system” for pharmaceutical ingredients in the treatment of skin disorders. See Medicis Pharmaceutical Corp. v. Actavis Mid Atlantic LLC, C.A. No. 11-409-LPS-CJB (D. Del. June 12, 2012). The “delivery system” was described as follows: “through the use of a ‘lightly cross-linked polyacrylic acid polymer[],’ which has a low viscosity relative to its concentration in aqueous solutions . . . the gel composition offers two principal advantages: (1) more appealing cosmetic characteristics, such as a reduction in a ‘sticky’ feel or residue; and (2) more accurate application through improved flow and pourability.” Id. at 3.

Magistrate Judge Burke recommended the adoption of the parties’ agreed-upon construction of the following claim terms, finding that they were consistent with the intrinsic record:

— “for a period of time sufficient to improve the skin disorder” construed to mean “over a course of treatment of sufficient duration to improve the skin disorder
— “base to adjust pH.” construed to mean “a basic compound that can be used to adjust pH.”
Also recommended were the following constructions of disputed terms:

— “lightly cross-linked polyacrylic acid polymer” construed to mean “a cross-linked polymer of acrylic acid with a viscosity of less than about 15,000 cP, where the polymer is in a 0.5% solution at pH 7.5, as measured by a Brookfield viscometer at 20 rpm”.

— “container” as recited in “a container that accurately administers a portion of the composition” construed to mean “a container that has a sufficiently small orifice tip to dispense quantities of the low-viscosity gel composition in accordance with treatment instructions”
— “container” as recited in “a container from which drops are accurately administered” construed to mean “a container that has a sufficiently small orifice tip to dispense generally spherical quantities of the low-viscosity gel composition in accordance with treatment instructions”
UPDATED: Judge Stark adopted Judge Burke’s Report and Recommendation on July 16, 2012 after neither party filed an objection. Medicis Pharma. Corp. v. Actavis Mid Atlantic LLC, C.A. No. 11-409-LPS-CJB (D. Del. Jul. 16, 2012).

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In St. Jude Medical, et al. v. Volcano Corp., C.A. No. 10-631-RGA (D. Del. June 5, 2012), Judge Andrews recently affirmed and overruled objections to the Magistrate Judge’s decision to exclude certain prior art evidence that was not properly disclosed by plaintiffs until nearly three months after the close of fact discovery. Id. at 2-3. In the opinion, the Court noted that plaintiffs’ invalidity contentions were “useless in terms of giving [d]efendant any information about what theories [plaintiffs] would actually pursue.” Id. at 3. The Court also noted that plaintiffs’ contentions included as invalidating prior art “100 patents, 21 publications, and 92 prior art systems” and that those references that were excluded were “buried amidst” these many other invalidating references. Id. at 3. The Court ultimately held that the Magistrate Judge’s decision to exclude the prior art references was neither “clearly erroneous” nor an “abuse of discretion”; concluding rather, that it was a sanction appropriately “tailored to the nature and extent of the violation.” Id. at 4.

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Judge Stark recently issued a final pretrial order with rulings on eight different motions in limine in Tarkus Imaging, Inc. v. Adobe Systems, Inc., C.A. No. 10-63-LPS (D. Del. May 31, 2012).  Judge Stark’s in limine rulings included the following:
1.    A non-expert witness and that witness’s opinions not previously disclosed under Rule 26 are not per se inadmissible, but specific portions of testimony should be addressed by objection pursuant to the Court’s normal procedures.
2.    Defendants may not be barred wholesale from introducing undisclosed expert testimony.  Rather, objections to testimony beyond the scope of expert reports should be addressed pursuant to the Court’s normal procedures, and Defendants may elicit fact testimony from fact witnesses regarding how accused products work.
3.    Parties are not permitted to argue who “won” or “lost” claim construction, but Defendants may defend willfulness allegations by contending that their proposed constructions were reasonable.
4.    Evidence of usage or sale of components that are not the accused functionality is allowed because it is probative of induced infringement and the potential for prejudice does not outweigh the evidence’s probative value.
5.    Parties may not present evidence that other parties did not comply with the discovery rules.  Allowing the parties to relitigate discovery disputes at trial would be unfairly prejudicial, confusing, and a waste of time.

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In Walker Digital LLC, et al. v. Multi-State Lottery Assoc., C.A. No. 10-1113-RGA (D. Del. June 7, 2012), Judge Andrews construed the following terms of U.S. Patent No. 7,740,537 which claims a system and method to allow a lottery player to increase payout received for winning a lottery game:

“multiplier”

“is applied to”

“in which”

“lottery terminal” (no construction necessary)

“lottery server” (no construction necessary)

“redemption value”

“determine a price”

“store an indication of a price”

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In Tarkus Imaging, Inc. v. Adobe Systems, Inc., et al., C.A. No. 10-63-LPS (D. Del. June 5, 2012), Judge Stark granted Adobe Systems, Inc.’s motion for summary judgment of no willful infringement, explaining that because Adobe asserted “reasonable claim construction positions under which Adobe would not infringe . . . and credible non-infringement theories even under the Court’s different constructions[,]” the plaintiff could not show by clear and convincing evidence that Adobe acted despite an objectively high likelihood that it infringed a valid patent. Id. at 3-4 (discussing first prong of the Federal Circuit’s test for establishing willful infringement under In re Seagate Technology, LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007)). The Court explained that although it “did not ultimately adopt Adobe’s constructions for [the terms ‘output device’ and ‘pictorial dynamic range’] . . . the fact that Adobe asserted reasonable constructions under which its products would not infringe precludes a finding that the first prong of Seagate is satisfied.” Id. at 4. As a result, “the Court should not put the issue of willfulness – including the second “subjective” prong – before a jury.” Id. at 3 (citing Powell v. Home Depot U.S.A., Inc., 663 F.3d 1221, 1236 (Fed. Cir. 2011) (satisfying the objective first prong of the willfulness test is “a predicate to the jury’s consideration of the second prong”)). Moreover, the Court explained that Adobe asserted reasonable non-infringement theories even under the Court’s claim construction, also leading to the conclusion that the first prong of the Seagate test could not be satisfied. Id. at 5.

The Court acknowledged that the parties presented genuine disputes of material fact, but explained that those disputed facts related to the subjective second prong of the willfulness test under Seagate, “an inquiry that must not be put before the jury given Tarkus’s failure to satisfy the [objective] first prong.” Id. at 6.

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