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In a recent Order, Magistrate Judge Christopher J. Burke resolved the parties’ various source code and other discovery disputes. International Business Machines Corporation v. The Priceline Group Inc., C.A. No. 15-147-LPS-CJB (D. Del. Sept. 29, 2016). First, Judge Burke granted in part plaintiff’s request that defendants be required to supplement responses to certain interrogatories in order “to identify documents sufficient to show how the Accused Instrumentalities carry out the identified functionality.” Id. at 1-2. Judge Burke granted the request to the extent that “any non-source code documents exist that describe the functionality in question and have not yet been identified,” and explained that defendants “shall describe and identify above-referenced documents sufficient to show how the referenced functionality works with regard to the Accused Instrumentalities.” Id.

Judge Burke, however, denied plaintiff’s request that defendants be required “to identify[] those portions of the computer source code that implement the functionality in question.” Id. at 2. Judge Burke explained that “armed with the road maps and the source code, ‘the burden of deriving or ascertaining [the requested information] will be substantially the same for either party’ and therefore Defendants have properly complied with Federal Rule of Civil Procedure 33(d) by referencing the source code in response to these Interrogatories.” Id. at 2. Judge Burke further noted that “[i]n similar circumstances, where a plaintiff has access to the source code and the task of requiring a defendant to sift through its source code to identify accused features would be unduly burdensome, courts have denied requests like [plaintiff’s] here.” Id. at 2-3.

Judge Burke also denied plaintiff’s request that defendants provide a witness pursuant to Rule 30(b)(6) to testify with respect to two topics plaintiff noticed. Id. at 3-4. As Judge Burke explained, “it would be unduly burdensome [on Defendants] to prepare corporate witnesses on the topics, which cover details of the thousands of files made available for review”; and “because the ‘topics are framed to paraphrase claim limitations, [they are] thus … de facto contention deposition categories and more properly the subject of expert testimony.’” Id. at 4.

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Chief Judge Leonard P. Stark recently considered Defendants’ motion for judgment on the pleadings that the asserted claims of the patent-in-suit are invalid under 35 U.S.C. § 101.  Vehicle IP, LLC v. AT&T mobility LLC, et al., No. 09-1007-LPS (D. Del. Sept. 29, 2016).  The patent-in-suit, U.S. Patent No. 5,987,377, discloses methods and systems involving:

a dispatch for generating destination information for a vehicle; a communications link coupled to the dispatch; and a mobile unit coupled to the communications link for receiving the destination information generated by the dispatch, wherein the mobile unit can determine vehicle position and, based on that position, calculate the estimated time of arrival (“ETA”) at a destination identified by the vehicle.

Id. at 1.  Defendants argued that the asserted claims were unpatentable because they claim the abstract idea of “calculating, at a vehicle, its expected time of arrival at a location.”  Id. at 8.  Judge Stark disagreed, at least at this stage:

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Chief Judge Leonard P. Stark recently considered defendants’ motion for attorneys’ fees, filed after the case was dismissed following the Court’s finding all claims invalid for indefiniteness.  Sarif Biomedical LLC v. Brainlab, Inc., No. 13-846-LPS (D. Del. Sept. 27, 2016).  Defendants argued the case was exceptional because the claim terms at issue were “obviously indefinite” because “there [was] no legitimate argument that the specification contains a structure corresponding to the claimed function, and Plaintiff’s efforts to argue to the contrary suggest that Plaintiff did not perform a ‘legitimate pre-filing investigation.'”  Id. at 3.  Further, the Patent Trial and Appeal Board declined to institute petitions for Inter Partes Review because it believed the claims to be indefinite.  Id. at 1-2.  Judge Stark ultimately concluded that Plaintiff had a “good faith” belief that the claims were not indefinite, providing “detailed arguments, grounded in the intrinsic evidence, in support of its proposed constructions.”  Id. at 3.  Moreover, “[t]he Court did not find any of Plaintiff’s positions or expert witnesses to be unusually weak, and Defendants’ briefing on this motion has not persuaded the Court otherwise.”  Id.  Judge Stark also did not find Plaintiff’s conduct unreasonable following the PTAB proceeding.

It is not unusual for a party to refine and revise its claim construction positions over the course of litigation. It can also be reasonable for a party to propose different constructions in PTAB and District Court proceedings, as the PTAB must give claim terms their “broadest reasonable construction,” whereas District Courts give them the meaning they would have to a “person of ordinary skill in the art at the time of the invention.”

Id. at 4 (quoting Cuozzo Speed Techs., LLC v. Lee, 2016 WL 3369425, at *10 (U.S . June 20, 2016)).  Judge Stark also compared this case “to the full panoply of patent cases” before the Court and concluded “nothing about the instant case stands out as ‘exceptional’ in any respect, including the substantive strength of Plaintiff’s unsuccessful positions or the manner in which Plaintiff litigated the case.”  Id. at 5-6.

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Chief Judge Leonard P. Stark recently denied a motion for judgment on the pleadings under section 101.  MAZ Encryption Technologies LLC v. Blackberry Corp., C.A. No. 13-304-LPS (D. Del. Sept. 29, 2016).  At issue were claims describing “a process that enables frictionless, ‘behind-the-scenes’ encryption – when a user closes or saves a file, the invention automatically obtains an appropriate encryption key, encrypts the file, and saves the encrypted file in EDMS.”  Id. at 10.  In so ruling, Chief Judge Stark rejected the defendant’s analogy between the claimed invention and “how an old hotel would store and keep track of the keys to its patrons’ rooms.”  Id. at 15.  The Court explained, “Defendant’s analogy is unpersuasive.  It fails to capture the key inventive aspect touted in the ‘681 patent:  handling encryption operations without requiring user input, that is, ‘transparently.'”  Id. at 16 (emphasis in original).  Chief Judge Stark added that the defendant’s analogy failed because each of the purportedly analogous steps performed in connection with how an old hotel would store and keep track of room keys were manually performed by a hotel clerk.  Id. at 16.  Overall, the Court found that the claims were not directed to an abstract idea under the Alice/Mayo analysis.  Instead, in the Rule 12(c) posture, the Court was required to accept as true the specification’s statements that the claimed invention was a technical solution to problems in the prior art.  Id. at 10-11.  The Court therefore denied the motion for judgment on the pleadings, but noted that several of the defendant’s arguments that could have been considered in a different procedural context–because they relied on extrinsic evidence–could not be considered in the context of the motion the defendant elected to bring.

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Chief Judge Leonard P. Stark recently ruled on a motion filed by a plaintiff’s claimed successor-in-interest to reopen an administratively closed case, to substitute itself for the plaintiffs, and to consolidate the case with two related cases.  Inline Connection Corp. v. Verizon Internet Servs., Inc., Consol. C.A. No. 05-866 (D. Del. Sept. 28, 2016).  The case was administratively closed in 2009, and then in August 2013 the Clerk of Court removed the administrative closure notation from the docket and invoked its Standing Order Regarding Return of Sealed Documents.  More than two years later, in October 2015, United Access (which describes itself as the successor-in-interest to the plaintiffs in the case) filed the motion at issue.  The defendants argued that the case was terminated more than two years ago and, if it was not terminated, the plaintiffs should not be replaced by United Access because the presence of the plaintiffs is vital to the defendants’ asserted claims and defenses.  Chief Judge Stark found that the case was not terminated, though.  Although the defendants argued that they were entitled to assume the case was terminated when the Clerk of Court invoked the standing order regarding sealed documents, Chief Judge Stark explained that “a self-executing order may not mature into a final judgment without an order of dismissal.”  Id. at 6.  With respect to United Access’s motion to substitute itself for the plaintiffs, the Court found that substitution would not be appropriate because it was not even clear that the plaintiffs were aware of the motion.  The Court therefore found that it would be appropriate to join United Access as a plaintiff, but not to substitute it in place of the plaintiffs.  Finally, Chief Judge Stark found that consolidating this case with two related cases was not clearly warranted and would result in logistical challenges, and so would not be ordered at this time.  Instead, the parties (including the original plaintiffs) were directed to submit a joint status report proposing how the case should proceed.

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In Contour IP Holding, LLC, et al. v. GoPro, Inc., C.A. No. 15-1108-LPS-CJB (D. Del. Sept. 16, 2016), Magistrate Judge Christopher J. Burke recommended granting Plaintiffs Contour IP Holding and iON Worldwide, Inc.’s motion to dismiss iON from the lawsuit with prejudice, due to the fact that iON was not a necessary party and lacks standing to maintain infringement claims in the case. The Report and Recommendation noted, but provided no further comment on, the fact that Defendant did not oppose the motion “in principle,” provided that the dismissal was with prejudice and that it would reserve all rights and remedies against iON related to the case, including seeking attorneys’ fees, and that it also reserved its rights and remedies against the other Plaintiff in connection with its addition of iON to the case.

Contour IP Holding, LLC, et al. v. GoPro, Inc., C.A. No. 15-1108-LPS-CJB (D. Del. Sept. 16, 2016)

 

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In JSDQ Mesh Technologies LLC v. Fluidmesh Networks, LLC (f/k/a Fluidmesh Networks, Inc.), C.A. No. 16-212-GMS (D. Del. Sept. 6, 2016), Judge Gregory M. Sleet denied Defendant’s motion to dismiss due to patent ineligible subject matter. The Court did not engage in a detailed Alice inquiry, as the motion was denied based on three threshold concerns. First, the Court concluded that Defendant had failed to establish a representative claim, as it had not identified “a consistent abstract idea upon which to base its motion” and had not provided “meaningful analysis for each of the challenged patent claims at issue.” Id. at 5. Second, while Plaintiff had not provided any reason why claim construction would impact the Section 101 analysis, the Court was “not inclined to dismiss the claims absent claim construction or appropriate discovery.” Id. at 6. Finally, the Court concluded that it could not yet determine “whether there is any set of facts that could be proven that would result in the challenged claims being patent-eligible. . . . The briefing and evidence now before the court are inadequate to permit a conclusive answer[.]” Id. at 6-7 (emphasis in original).

JSDQ Mesh Technologies LLC v. Fluidmesh Networks, LLC (fka Fluidmesh Networks, Inc.), C.A. No. 16-212-GMS (D. Del. Sept. 6, 2016)

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Following a five-day trial in May 2016 in ART+COM Innovationpool GmbH v. Google Inc., C.A. No. 14-217-TBD (D. Del. Sept. 9, 2016), after which the jury returned a verdict of non-infringement and invalidity of the asserted patent, Judge Timothy B. Dyk, sitting by designation, considered (1) Plaintiff’s motion for relief from judgment under Rule 60(b); (2) Plaintiff’s motions for post-trial relief; and (3) Defendant’s renewed motion for judgment as a matter of law as to Section 101 invalidity.

The Court denied the Rule 60(b) motion. Plaintiff argued that the Court should have excluded the testimony of a fact witness who Defendant had retained as a consultant. The Court observed that case law “establish[ed] that a party can enter into agreements with fact witnesses that compensate those witnesses for consulting work and not trial testimony.” 60(b) Decision at 5. The Court concluded that this was the case here where there was no evidence that Defendant had compensated the witness for his testimony or that the consulting fees impacted the testimony, nor was the witness’s fee unreasonably high, even though the fee was five times more than his salary, in light of his expertise and the complexity of the case. Id. at 6-7. In light of Plaintiff’s opportunity to depose and fully cross-examine the witness, the Court also concluded that the consulting agreement had not prejudiced Plaintiff. Id. at 8-9.

The Court also denied Plaintiff’s motions for post-trial relief. Plaintiff had moved for judgment as a matter of law as to infringement and as to no invalidity, both of which the Court denied. See Post-Trial Relief Decision at 4-21. For example, as to invalidity based on a particular reference, the Court disagreed with Plaintiff that “the public must be able to ascertain the individual elements of an invention for [this particular reference] to constitute a public use.” Id. at 16. Rather, “[t]he critical inquiry is whether the invention is used without restriction of any kind.” Id. at 17. Here, the reference “was publicly demonstrated at two technical conferences, to attendees with knowledge in the art, without restriction or effort to maintain confidentiality,” and these acts were sufficient to constitute public use.” Id. at 18-19.

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In a recent Memorandum Opinion, Judge Richard G. Andrews granted defendant’s motion to dismiss plaintiffs’ complaint for failure to state a claim, on the ground that plaintiffs’ asserted patent , U.S. Patent No. 8,976,955 (“the ’955 patent”), fails to claim patentable subject matter under 35 U.S.C. § 101. Nice Systems Ltd. v. Clickfox, Inc., C.A. No. 15-743-RGA (D. Del. Sept. 15, 2016). The ’955 patent is directed to a “system and method of tracking user web interactions and using that information to generate real-time recommendations when a contact center agent is later contacted by that user.” Id. at 2. Under step one of the Mayo/Alice analysis, Judge Andrews found that “the claims are directed to the abstract idea of cross-channel customer service, i.e., gathering customer information from one communication channel and using it to engage the customer via another communication channel.” Id. at 7. Under step two, Judge Andrews concluded that the “claims . . . do not add any inventive concept to the abstract idea of cross-channel customer service.” Id. at 12. As Judge Andrews explained, “Plaintiffs’ arguments—focusing on the fact that the claims require automatic, real-time analysis—confirm that the claims are merely directed to using generic computer components to add efficiency and speed to the abstract idea of cross-channel customer service.” Id. at 12-13. Judge Andrews also noted that “unlike in DDR Holdings, the problem the ’955 patent purportedly addresses is not itself inherently limited to the specific technological environment claimed by the patentee.” Id. at 14.

Nice Systems Ltd. v. Clickfox, Inc., C.A. No. 15-743-RGA (D. Del. Sept. 15, 2016).

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Magistrate Judge Sherry R. Fallon recently considered plaintiff’s motion to compel defendant to supplement its document production and responses to certain interrogatories.  Regarding production of core technical documents, Plaintiff requested certain categories of documents, including:

(1) requirement and in-house technical specifications; (2) design documents; (3) scope of work documents and schedules; (4) vendor specifications; (5) complete functional programming guides; (6) testing documents; (7) deployment documents; (8) maintenance documents; (9) internal user guides; (10) system integration documents; (11) engineer training documents; (12) system architecture documents, and (13) complete architectural design documents.

Novanta Corporation v. Iradion Laser, Inc., No. 15-1033-SLR-SRF (D. Del. Sept. 16, 2016).  Defendant argued that it complied with the requirements of the Scheduling Order and that the categories of documents identified by plaintiff does not exist.  Id. at 4.

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