April 18, 2014

Judge Andrews Dismisses Unsupported Willfulness Allegations

Judge Richard Andrews recently granted motions to dismiss claims of willful infringement in two cases brought by Steelhead Licensing LLC. Judge Andrews explained that there was apparently no reason for use of the word “willful” in the complaints because the plaintiff seemed to have no facts in support of an allegation of willfulness. Judge Andrews therefore granted the motions to dismiss willfulness, stating that “Plaintiff, who I would expect might have an interest in moving this case along, puts itself at the mercy of the Defendants, who can stall by making a motion to dismiss, and the Court, whose default decisional standard is LILO.” Steelhead Licensing LLC v. Charter Commc’ns Inc., et al., C.A. No. 13-2075-RGA, 13-2076-RGA, Order at 1-2 (D. Del. Apr. 10, 2014).

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April 16, 2014

Judge Andrews Claim Construction Order

Judge Richard G. Andrews construed the following claim terms of U.S. Patents Nos. 6,335,031 and 6,316,023 at issue in the Novartis Pharmaceuticals Corp., et al. v. Alvogen Pine Brook, Inc., et al., C.A. No. 13-52-RGA (consol.) (D. Del. Apr. 7, 2014) litigation:

"antioxidant"
"about 0.01 to about 0.5 percent by about 0.01 to about 0.5 percent by
weight"
"diluent or carrier"
"a/the composition"
"an amount of antioxidant effective to stabilize Compound A from degradation"
"stabilizing"

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April 11, 2014

Judge Andrews denies partial summary judgment motion of indefiniteness

In a recent memorandum opinion, Judge Richard G. Andrews denied defendant’s partial summary judgment motion of indefiniteness. Pi-Net International Inc. v. JPMorgan Chase & Co., C.A. No. 12-282-RGA (D. Del. Apr. 7, 2014). Given the potential for judicial efficiency, Judge Andrews had granted defendants leave to file their partial motion for summary judgment, in which it was argued that the following five terms, which appeared in several claims of the three patents-in-suit, were indefinite:

(1) "means for transmitting a transaction request from said transactional application";
(2) "means for processing said transaction request";
(3) "a computer system executing the Back-end transactional application for processing the transaction request in real-time";
(4) "keeping a transaction flow captive";
(5) "routed transactional data structure."

Id. at 2. As to the first two terms, defendant argued that the terms were “computer-implemented means-plus-function terms for which no algorithm is disclosed.” Id. Judge Andrews explained that in general, when there exists the “special case where the corresponding structure of a means-plus-function term is a computer, the patent must disclose an algorithm for performing the claimed function.” Id. at 6. Judge Andrews further explained, however, that there is a “narrow” exception to that general rule: the Federal Circuit has held that “it is ‘not necessary to disclose more structure than the general purpose processor’ when the claimed functions ‘can be achieved by any general purpose computer without special programming.’” Id. (quoting In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011)).

As Judge Andrews explained, “[a]t this stage, the Court cannot rule out the possibility that a general purpose computer without special programming could perform the claimed function, or that an algorithm is disclosed.” Id. at 8. Specifically, Judge Andrews explained that defendant argues strenuously that the terms are invalid because the functions at issue require more than simply plugging in a general purpose computer.” Id. at 12. Judge Andrews explained, however, that in order to agree with defendant’s position, “an expert opinion comparing the functional capabilities of a general purpose computer during the relevant time frame with the disputed functionalities might have been helpful.” Id. Defendant, however, did not provide any such opinion. Judge Andrews thus concluded that based on the current record, which lacked “the benefit of a claim construction hearing, it [was] difficult to say that no disputed issue of material fact exists regarding whether the claimed functions could have been performed by a general purpose computer without special programming.” Id. at 13. Judge Andrews additionally noted that even if the exception for a “general purpose processor” did not apply, “the flow chart in Figure 8, common to all three patent specifications, might be sufficient to satisfy the algorithm requirement.” Id. at 12.

As to the third term, Judge Andrews noted in a parenthetical that a court will not construe a limitation as a means-plus-function term if it contains a term that "is used in common parlance or by persons of skill in the pertinent art to designate structure." Id. at 13. As Judge Andrews explained, the claim term at issue included “computer system,” and therefore could not be said to be “devoid of anything that can be construed as structure.”Id. at 15. In other words, “[a] computer system is a physical structure that [was] sufficient to prevent [defendant] from rebutting the presumption” that a term that does not contain the word “means” should not be construed as a means-plus-function term. Id.

As to the last two terms, plaintiff asserted that they were “insolubly ambiguous because the patentee did not define them in the specification or the prosecution history and they do not have a generally accepted meaning to a PHOSITA.” Id. at 2-3. Judge Andrews explained that “[a]lthough it does appear that the link between [plaintiff’s expert’s] cited passages and his proposed definitions is somewhat tenuous in places, there is no competing declaration or affidavit from [a defendant] expert for the Court to rely upon.” Id. at 16. That is, “[w]ithout an opposing expert to identify the deficiencies, if any, in [plaintiff’s expert’s] declaration, it is difficult to say that his opinion regarding a PHOSITA's understanding of the claim language is incorrect.” Id.

In accordance with the analysis above, Judge Andrews denied defendant’s partial motion for summary judgment.

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April 8, 2014

Judge Andrews Construes Terms of Blood Pressure Patent

Judge Andrews recently issued his amended construction of several disputed terms in U.S. Patent No. 6,565,514, a blood pressure system patent asserted by St. Jude against Volcano Corp. The Court construed the following terms:
- “Displaying said graph”
- “of the data resulting from said calculation”
- “Detecting continuously at least two physiological variables, arterial pressure (Pa) and distal coronary pressure (Pd), derived from the guidewire-mounted pressure sensor”
- “Sensor element”

In construing these terms, Judge Andrews also found that the term “of the data resulting from said calculation” was not indefinite. St. Jude Med., Cardiology Div., Inc., et al. v. Volcano Corp., C.A. No. 12-441-RGA, Or. at 1-5 (D. Del. Apr. 1, 2014).

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March 12, 2014

Judge Andrews denies unopposed motion to seal transcript

Judge Richard G. Andrews recently denied plaintiff Novartis Pharmaceuticals Corporation's unopposed motion to seal the transcript of a court conference. Novartis Pharmaceuticals Corporation, et al. v. Actavis South Atlantic LLC, et al., C.A. No. 11-1077-RGA (consol.) (D. Del. Mar. 10, 2014). In the Court's view, the portions of the transcript that Novartis requested the Court seal, "reflect[ed], at most, that Novartis engages in typical settlement discussions, which everybody in the pharmaceutical industry already must know." Id. Because Judge Andrews did not find that the disclosure of the information would harm Novartis's business, Judge Andrews denied the unopposed motion. Id.

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March 11, 2014

Judge Andrews grants objections, denies Special Master’s conclusion on spoliation and adverse inference instruction

In Robocast, Inc. v. Microsoft Corp., C.A. No. 10-1055-RGA (D. Del. Feb. 25, 2014), Judge Richard G. Andrews granted defendant’s objections related to plaintiff’s request for an adverse inference instruction that the Special Master had previously granted. Judge Andrews concluded that “[w]hile the Special Master's opinion was logical and well-reasoned, I find that bad faith is required in order for an adverse inference instruction to be appropriate. Because I cannot find that [defendant] acted in bad faith, I will not give an adverse inference instruction.” Id. at 3. In reaching this determination, Judge Andrews relied on a Third Circuit opinion in which the Court held that “where there is no showing that the evidence was destroyed in order to prevent it from being used by the adverse party, a spoliation instruction is improper.” Id. at 3 (quoting US. v. Nelson, 481 F. App’x 40, 42 (3d Cir. 2012)). Judge Andrews therefore concluded that “in order for a spoliation instruction to be proper in this case, there must be a showing that [defendant] destroyed, or was willfully blind to the destruction of, the . . . source code, in order to prevent its use by [plaintiff].” Id. The Special Master, however, had found only that defendant’s failure to preserve evidence was “negligent rather than willful or grossly negligent.” Id.

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March 8, 2014

Judge Andrews denies motion to dismiss amended complaint.

Judge Richard G. Andrews recently denied a defendant’s motion to dismiss the plaintiff’s amended complaint for failure to give fair notice of which of the defendant’s products or services allegedly infringe the plaintiff’s patent. Online News Link LLC v. Wayfair LLC, C.A. No. 13-1440-RGA (D. Del. Feb. 21, 2014). The amended complaint alleged infringement by the defendant’s email system, and attached as exhibits screenshots of emails that were sent by the defendant’s system. Judge Andrews found “not persuasive” the defendant’s argument that it was not fairly put on notice of which products or services the plaintiff was alleging infringe, and explained “[Defendant] is in a position to know which system sends the emails exemplified by the exhibits. Without discovery, Plaintiff could not pursue its claims because Defendant’s use of the accused system is private.” The defendant’s motion to dismiss was therefore denied.

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March 6, 2014

Judge Andrews construes terms of computer-implemented means-plus-function claims, finding all terms indefinite

Judge Richard G. Andrews recently construed eight terms from computer-implemented means-plus-function claims of U.S. Patent No. 5,663,757, titled "Software controlled multi-mode interactive TV systems." Eon Corp. IP Holdings LLC v. Flo TV Inc., et al., C.A. Nos. 10-812-RGA, 13-910-RGA (D. Del. Mar. 4, 2014). In order to construe a means-plus-function limitation, the court must first determine the claimed function, then "'identify the corresponding structure in the written description that performs the function.'" Id. at 6 (quoting Applied Med. Res. Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1332 (Fed. Cir. 2006)). Where the corresponding structure is a computer, however, the patent must do more than simply disclose a general purpose computer as the structure; the patent must disclose an algorithm for performing the claimed function. Id.

The Federal Circuit recognizes a narrow exception to this general rule: "[I]t is 'not necessary to disclose more structure than the general purpose processor' when the claimed functions 'can be achieved by any general purpose computer without special programming.' Id. at 7 (quoting In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011)). "Examples of functions that can be carried out by a general purpose computer without special programming include: processing, receiving, and storing. By contrast, any function that involves more than merely plugging in a general-purpose computer requires special programming." Id. (internal citations and quotations omitted).

In light of this law, Judge Andrews construed the following disputed means-plus-function claim terms, finding all of the terms indefinite for failing to disclose a sufficient corresponding structure:

"Means under control of said replaceable software means for indicating acknowledging of shipment of an order from a remote station"

"Means controlled by replaceable software means operable with said operation control
system for reconfiguring the operating modes by adding or changing features and introducing
new menus"

"Means responsive to said self contained software for establishing a mode of
operation for selection of one of a plurality of authorized television program channels"

"Means establishing a first menu directed to different interactively selectable program
theme subsets available from said authorized television program channels"

"Means for causing selected themes to automatically display a second menu"

"Means controlled by replaceable software means operable with said operation control
system for establishing and controlling a mode of operation that records historical operating data of the local subscriber's data processing station"

"Means controlled by replaceable software means operable with said operation control
system for establishing and controlling fiscal transactions with a further local station"

"Means for establishing an accounting mode of operation for maintaining and reporting fiscal transactions incurred in the operation ofthe local subscriber's data processing station"

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February 28, 2014

Judge Andrews rules on motions for summary judgment

In Robocast, Inc. v. Microsoft Corporation, C.A. No. 10-1055-RGA (D. Del. Feb. 21, 2014), Judge Richard G. Andrews ruled on defendant’s Omnibus Motion for Summary Judgment as well as plaintiff’s Motion for Summary Judgment of No Unenforceability and No Unclean Hands. The Court granted defendant’s motion in part, and denied plaintiff’s motion. The patent-in-suit, U.S. Patent No. 7,155,451 (the “’451 Patent”) is entitled “Automated browsing system for publishers and users on networks serving internet and remote devices,” and the accused products “can be grouped into two categories: video playlists and changing tiles.” Id. at 3.

Defendant argued that 1) its products do not directly infringe and that plaintiff did not timely disclose a doctrine of equivalents theory; 2) its products do not indirectly infringe; 3) plaintiff cannot assert priority to earlier-filed applications and cannot show prior invention; and 4) defendant has not willfully infringed. Id. at 3. The Court found that genuine issues of material fact remained as to the majority of defendant’s arguments for no direct or indirect infringement, but did grant summary judgment as to no infringement by two accused products in the first category, id. at 8-9, and no infringement of two accused products in the second category, id. at 11. The Court found issues of material fact remained relating to the priority and prior invention issues. See id. at 14-17.

The Court granted defendant’s motion as to willful infringement. As to pre-suit willfulness, plaintiff pointed to “discussions between [the inventor] and employees [of defendant] involving the evaluation of [plaintiff’s] technology” as well as allegations that defendants were aware of the pendency of plaintiff’s patent. Id. at 19-20. These facts did not support a willfulness finding. First, “there [was] no evidence in the record that [defendant] used the specific technology which [plaintiff] demonstrated.” Id. at 20. Citing an SDNY case as persuasive, the Court also observed that “[i]f . . . [defendant] had copied the identical technology, then it might [form] a basis for a finding of willfulness. Here, the accused video playlists are entirely distinct from the web page slideshows which were demonstrated to [defendant]. Just because [defendant] was shown one embodiment does not put them on notice to investigate if distinct technologies might read on the patent which later issued from a demonstration of one particular embodiment.” Second, “[t]here appears to be no controlling case law for the proposition that [defendant] was obligated to have undertaken an affirmative investigation to determine if [the inventor’s] application had matured into a patent.” Id. at 19. Because plaintiff did not move for a preliminary injunction and defendant’s defenses were reasonable, the Court would also not allow a finding of willfulness based on post-suit conduct. Id. at 20-21.

As to plaintiff’s motion for no inequitable conduct and no unclean hands, defendant had alleged that the ‘451 patent was unenforceable, based on either theory, because the inventor submitted a false declaration attempting to swear behind a certain reference. Id. at 22. The application for which the declaration was submitted was abandoned, but the same reference was disclosed and overcome during prosecution of the ‘451 patent, without any reference to the allegedly false declaration. Id. Defendant claimed that the abandoned parent application rendered its child (the application that issued as the ‘451 patent) unenforceable under the “doctrine of infectious unenforceability.” Id.

The Court interpreted Federal Circuit case law related to inequitable conduct for divisional applications to hold that, in the context of continuation applications,

inequitable conduct infects the invention itself, and all claims which form a part of that invention. . . . Continuation applications . . . relate to the same invention. If a patentee who has engaged in inequitable conduct included the invention in one application, all the claims would be unenforceable. If the same patentee split the claims into two applications, why should the result be any different? To hold otherwise would fly in the face of the rule that inequitable conduct renders all claims unenforceable, not just the particular claims to which the inequitable conduct is directly connected.

Id. at 24 (internal citations and quotation marks omitted). Therefore, because it “appeared at a minimum some claims in the ‘451 patent indeed could have been included in the [abandoned] application,” and thus could be unenforceable, the Court denied summary judgment on this issue. Id. at 25. The Court also denied summary judgment on no unclean hands, noting that “[t]he fact that the documents might have been forged before the start of litigation is irrelevant. It is the reliance on forged documents that would be misconduct” forming a basis for unclean hands. Id.

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February 21, 2014

Judge Andrews Construes Terms of Mobile Device Patents and Finds Prior ITC Claim Construction Persuasive

Judge Andrews recently issued his construction of dispute claim terms in the patent infringement action filed by plaintiff Openwave Systems, Inc., which is now known as Unwired Planet. Openwave Systems, Inc. v. Apple Inc., et al., C.A. No. 11-765-RGA, Memo. Op. at 1 (D. Del. Feb. 19, 2014). At issue were three claim terms appearing across three patents that were construed as a group: “mobile device,” “wireless mobile telephone,” and “two way communication device.” The only dispute in construing these terms was whether the patentee had disclaimed mobile devices containing “computer modules” as the defendant contended. In a previous ITC investigation, the ALJ had agreed with the defendants that there was such a disclaimer. Judge Andrews explained that this decision, while not binding, was persuasive, and His Honor construed the terms in the same manner as the ALJ. Id. at 2-3. In adopting this construction, Judge Andrews noted that it did not read out a preferred embodiment of the invention, id. at 4, and that it relied only on a disavowal of claim scope that was clear and unambiguous, id. at 4-6.

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