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In Toshiba Samsung Storage Technology Korea Corporation v. LG Electronics, Inc., et al., C.A. No. 15-691-LPS-CJB (D. Del. Sept. 20, 2016) (unsealed Sept. 28, 2016) Magistrate Judge Christopher J. Burke denied Defendants’ motion to dismiss due to lack of standing. The parties had consented to Judge Burke conducting any and all proceedings and entering a final order with regard to Defendants’ motion to dismiss. Id. at 4.

Defendants argued that Plaintiff had not obtained all substantial rights to the patents-in-suit when third party Samsung had executed an assignment agreement with Plaintiff, because Samsung retained “the right to practice the patents, the right to license the patents, and the right to re-acquire the patents at no cost.” Id. at 9. The Court concluded that the most important factor in the “all substantial rights” analysis – the right to sue – weighed in favor of Plaintiff. Id. at 25. Having first interpreted disputed portions of the assignment agreement, the Court concluded that Plaintiff had the exclusive right to sue, and the presence of a covenant not to sue a “future licensee” not named in the agreement did not divest Plaintiffs its standing due to the mere possibility that such “future licensee” could be Defendants. See id. at 17-20. Second, “the Court [was] also swayed by the apparent intent of the parties in drafting the Agreement, as reflected by some of the wording in the document.” Id. at 26. Third, it concluded that the limits on transfer were “not so stringent as to suggest” a lack of standing where Samsung’s right of first refusal allowed only for “the possibility of re-acquiring the Assigned Patents, only if [Plaintiff] decides to transfer, sell or abandon the patents[.]” Id. at 27 (emphasis in original). Fourth, it was “important that the Agreement provides [Plaintiff] other rights indicative of ownership. For example, [Plaintiff] enjoys exclusive rights to all proceeds and other benefits obtained from its enforcement actions, and the right to make, use and sell products or services under the Assigned Patents.” Id. at 28.

Accordingly, and “[t]aking all of these considerations into account, and based on the record before it, the Court conclude[d] that the Agreement did transfer from Samsung to [Plaintiff] all substantial rights in the Assigned Patents,” and denied Defendants’ motion. Id. at 28.

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In Varentec, Inc. v. Gridco, Inc., et al., C.A. No. 16-217-RGA (D. Del. Oct. 3, 2016), Judge Richard G. Andrews denied Plaintiff’s motion for a preliminary injunction that it has filed two months after filing its Complaint. Id. at 1.

As to likelihood of success on the merits, the Court concluded that Plaintiff had not carried its burden to show it will likely prove infringement of the asserted claims. While it concluded that the accused product likely did satisfy one limitation under the doctrine of equivalents based on part on expert testimony offered, it also concluded that the product did not likely satisfy another limitation in the asserted claims. See id. at 9-15. Having concluded this factor was not met, the Court did not address the other preliminary injunction factors, and denied the motion. Id. at 15.

Varentec, Inc. v. Gridco, Inc., et al., C.A. No. 16-217-RGA (D. Del. Oct. 3, 2016)

 

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Judge Stark recently issued two decisions applying collateral estoppel to various defendants based on a prior litigation in which the court had granted summary judgment of no pre-suit damages an the jury had ruled in the defendants’ favor. The Federal Circuit then summarily affirmed that judgment. Defendant Frontier Communications therefore moved for judgment on the pleadings based on collateral estoppel, arguing that the decision against pre-suit damages could not be relitigated. United Access Techs., LLC v. Frontier Commc’ns Corp., et al., C.A. No. 11-341-LPS, Memo. Op. at 1-3 (D. Del. Sept. 30, 2016). Judge Stark found, however, that the issues were not identical because the time periods in question were not identical and that difference “is material because [the] licensees could have, at some point between June 2002 and July 2009, begun to comply with the marking statute.” Id. at 4-5.

Two other defendants moved for judgment on the pleadings on the basis that a finding of summary judgment of non-infringement in the prior litigation estopped the Plaintiff from showing infringement in this case. Although the Federal Circuit had previously determined that collateral estoppel could not apply to a prior jury verdict in this case, the Defendants argued that it could apply to the summary judgment order. United Access Techs., LLC v. CenturyTel Broadband Services, LLC, et al., C.A. No. 11-339-LPS, Memo. Op. at 1-4 (D. Del. Sept. 30, 2016). Judge Stark agreed that the accused products at issue were identical because the Plaintiffs had not identified any differences from the products in the prior case. However, because “the Federal Circuit’s summary affirm Anne neither ‘endorse[d] [n]or reject[ed] . . . the district court’s specific holdings’ regarding claim construction, and because the claim constructions at issue here are not necessary to one of the rationales for affirmance [in the prior case], it is simply not possible to say that this Court’s claim constructions were necessary to the Federal Circuit’s decision. As a result, collateral estoppel does not apply to this Court’s decision.” Id. At 5-6.

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Magistrate Judge Burke denied a motion to disqualify Plaintiff’s counsel, who had previously represented the Defendant from 2008 to 2014 as trademark counsel. There was no dispute that the firm representing the Plaintiff had previously done substantial legal work for the Defendant through a handful of attorneys that had long represented the Defendant in trademark matters both before joining that firm and after leaving it. Regalo Int’l, LLC v. Munchkin, Inc., C.A. No. 15-1103-LPS-CJB, Memo. Or. at 1-6 (D. Del. Sept. 29, 2016).

Given these facts, the Court’s analysis focused only on whether this case was “substantially related” to the prior matters in which Plaintiff’s counsel had represented the Defendant. Although the two representations in question were a patent litigation and trademark counseling and did not involve overlap in the products at issue, the Defendant contended that the firm had high-level strategic knowledge of the Defendant based on handling hundreds of matters for the Defendant in the past. Judge Burke found, however, that this did not establish that “(1) the prior and current representations are sufficiently related for purposes of this inquiry, nor that (2) [the Defendant] has met its burden to demonstrate that any [of its] confidences previously disclosed . . . Are sufficiently ‘relevant’ to the present action or sufficiently ‘detrimental’ . . . in this case.” Id. at 12. Indeed, Judge Burke explained that the Court tends “not to give great weight in this analysis to unfocused concerns that a party’s former counsel knows that party’s ‘playbook.’ Instead, in the main, they tend to require a party who is moving to disqualify counsel in a patent matter to demonstrate a fairly close legal and factual nexus between the present and prior representations.” Id.

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In a recent claim construction order, Judge Richard G. Andrews found preamble language limiting because it provided meaning to terms in two claims and antecedent basis for another claim term.  Sanofi v. Lupin Atlantis Holdings S.A., C.A. No. 15-415-RGA (D. Del. Oct. 3, 2016).  The preamble language at issue was, for claims 1 and 6, “a method of reducing a risk of cardiovascular hospitalization in a patient” and, for claim 9, “a method of reducing a risk of hospitalization for atrial fibrillation in a patient.”  The Court found that the preamble language for claims 1 and 6 gave meaning to the claim term “effective amount” because reading the body of claims 1 and 6 (“administering to said patient an effective amount of dronedrone or a pharmaceutically acceptable salt thereof…”) on its own, without the preamble language, “begs the question, effective for what?”  Id. at 6.  With respect to claim 9, the Court found that the preamble language provided an antecedent basis for the claim term “patient in need of reduction of said risk.”  Id. at 7.  The Court explained that “[w]ithout the phrase ‘reducing a risk of cardiovascular hospitalization,’ the phrase ‘a patient in need of reduction of said risk’ would not have a proper antecedent basis.”  Id. at 8.        Continue reading

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Data Engine Technologies LLC v. Google Inc., C.A. No. 14-1115-LPS (D. Del. Sept. 29, 2016), Chief Judge Leonard P. Stark granted Defendant’s Rule 12(c) motion because the Court concluded that asserted claims of certain of the patents-in-suit were directed to patent-ineligible subject matter.

The patents-in-suit at issue relate to electronic spreadsheets. Id. at 1. The Court’s analysis divided the patents into two groups. First, as to the “Tab Patents,” the patent containing the claim the Court determined was representative “broadly cover[ed] methods for rendering electronic, three-dimensional spreadsheets, wherein individual spreadsheet pages may be labeled and selected via user input such that selected pages are shown while others are ‘obscure[ d].’” Id. at 10. The second group of claims within an additional patent related to tracking changes and versions within a spreadsheet. See id. at 14.

By the time of decision, the Court had already issued its opinion on claim construction, therefore the Court applied those constructions to its decision to the extent necessary. Id. at 1-2. Additionally, because the motion presented an issue of law, the Court “rejected consideration of all extrinsic evidence presented by the parties and relie[d] only on the pleadings and patents, which were attached as exhibits to the complaint, and ma[de] its ruling as a matter of law.” Id. at 16 n.4.

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Judge Robinson recently considered a motion to stay litigation in a case where “the parties are competitors that have aggressively pursued their respective legal options to further their respective business interests . . . [including] expedited review of the [patent-in-suit], and fil[ing] suit against defendant shortly after its issuance.” Husqvarna AB, et al. v. The Toro Co., C.A. No. 15-856-SLR, Memo. Or. at 3 (D. Del. Sept. 20, 2016). Because the defendant “promptly filed its request for reexamination” and the motion to stay pending the reexamination, Judge Robinson concluded that “the parties are disadvantaged to an equal degree in the market place and in terms of their legal dispute.” Id. Moreover, the “second factor, simplifying the issues for trial, is also a draw . . . [because] the issues in the litigation are broader than those presented in the reexamination and it is possible that at least some claims of the [patent-in-suit] will survive the PTO’s scrutiny.” Id. Judge Robinson ultimately granted the motion to stay, however, because it would promote judicial economy, given that the “court has not yet directed its scarce resources to the merits of this dispute, while the PTO has . . . [thus] it should be the PTO, not the court, that conducts this essentially first substantive review of the validity of the [patent-in-suit].” Id. at 4.

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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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