Delaware IP Law Blog

Judge Robinson recently considered a motion to dismiss defendant's counterclaims and to strike certain affirmative defenses related to the invalidity of the patent in suit, as well as certain background information. Joao Bock Transaction Systems, LLC v. Jack Henry & Associates, Inc., C.A. No. 12-1138-SLR (D. Del. June 13, 2013). Judge Robinson denied plaintiff's motion finding that defendant's counterclaims provided sufficient detail to give rise to a plausible claim for relief. Id. at 4-5. Specifically, defendant's answer and counteclaim "include[d] numerous details indicating why Jack Henry believe[d] the '003 patent [was] invalid," such as because the patent in suit was a continuation of a patent determined to be invalid, and because prior art existed prior to a year before the patent application. Id. at 5.

Judge Robinson also denied plaintiff's motion to strike. Regarding defendant's introductory section, Judge Robinson found that the material, including references to prior litigation, had "evidentiary or legal signifcance," and should not be stricken. Id. at 5-6. Judge Robinson declined to strike defendant's affirmative defenses, finding that sufficient supporting facts were present in defendant's responsive pleading. Id. at 6.

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In a recent memorandum opinion, Judge Sue L. Robinson denied a defendant’s motion to transfer to the Central District of California litigation involving a patented codec used for encoding video onto Blue-ray discs. FastVDO LLC v. Paramount Pictures Corp., Civ. No. 12-1427-SLR (D. Del. June 4, 2013). The plaintiff was a Florida limited liability company with headquarters in Florida, and was significantly smaller (with significantly less litigation experience) than the defendant, a Delaware corporation with its headquarters in California. Id. at 1, 4. The defendant argued that the allegedly infringing coding was performed by authoring houses operating primarily in California, but the Court disagreed, noting that the authoring houses were headquartered in California, but performed coding in facilities located in Indiana, Pennsylvania, and New York. Id. at 1. As a result, and combined with the fact that Blue-ray discs are sold across the country, the Court found that the alleged infringement did not occur principally in California. Id. at 4. The Court gave little weight to the defendant’s argument that the authoring houses’ documents would be outside the Court’s subpoena power, explaining that since “the authoring houses manufacture the Blue-ray discs at the behest of [defendant], it is unlikely they would refuse any reasonable request to produce information from their business partner in electronic format.” Id. at 5. The Court also found that while trial would be less expensive for the defendant in California, it would be more expensive for the plaintiff than litigating in Delaware. As a result, the Court explained that “[a]lthough Delaware is not the locus of any party’s business activities, it is a neutral forum and no more inconvenient for [defendant] than Florida, the locus of [plaintiff’s] business activities.” Id. at 6. All of this, combined with the fact that 24 other Blue-ray cases filed by the plaintiff were pending in Delaware, convinced the Court that transfer was not warranted. Id. at 7-8.

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In a recent order, Judge Sue L. Robinson denied defendant’s motion for leave to amend paragraph 19 of its answer, which responded to plaintiff’s infringement allegations regarding U.S. Patent No. 6,647,450. Cradle IP, LLC v. Texas Instruments, Inc., C.A. No. 11-1254-SLR (D. Del. May 23, 2013). In paragraph 19, defendant originally alleged that it had made, used, sold, or offered to sell microprocessor and OMAP devices “utilizing split transaction buses with target device command buffers (insofar as that phrase is given its common meaning and not necessarily the meaning that may be ascribed to it as a result of any claim construction).” Id. at 1-2. On January 23, 2013, more than two months after the deadline to amend the pleadings, defendant filed its motion for leave, seeking to change paragraph 19 such that it would state that defendant “denies that its OMAP devices utilize split transaction buses with target device command buffers.” Id. at 3. Because defendant moved to amend its answer after the deadline to amend the pleadings, Judge Robinson’s analysis was guided by both Rules 15(a)(2) and 16(b)(4) of the Federal Rules of Civil Procedure. See id. at 3-7.

With respect to Rule 15(a)(2), Judge Robinson first addressed whether defendant’s delay was undue. Id. at 4. Defendant argued that its delay would “not place an unwarranted burden on the court or [plaintiff] because it put [plaintiff] on notice of its proposed amendment before any depositions occurred and before the close of fact discovery.” Id. at 4. Judge Robinson found, however, that defendant failed to explain why it “did not seek to amend before the expiration of the deadline to amend pleadings,” and also found that the amendment was not “based on any new evidence that has emerged during discovery.” Id. at 5. Judge Robinson therefore found the delay undue “[g]iven the lack of proper justification.” Id. Judge Robinson further found that the undue delay would be prejudicial to defendant. Id. at 7. The amendment, Judge Robinson explained, “does not merely add particularity to its pleadings; it seeks to remove a qualification in its answer such that the response becomes an outright denial.” Id. at 7. Judge Robinson further explained that plaintiff “relied upon [defendant’s] answer and prepared its case in accordance with those pleadings” and that “[t]o allow [defendant] to change the landscape of the litigation at this late date would be prejudicial to [plaintiff].” Id. Given that defendant’s undue delay would result in prejudice to plaintiff, Judge Robinson found that defendant failed to satisfy Rule 15(a)(2). See id. at 6-7.

Judge Robinson additionally found that defendant failed to meet the “good cause” requirement for amendment pursuant to Fed. R. Civ. P. 16(b)(4). Id. at 7-8. Judge Robinson noted that “the good cause standard under Rule 16(b) hinges on diligence of the movant, and not on prejudice to the non-moving party.” Id. at 7. As Judge Robinson explained, defendant failed to offer “any explanation as to why it could not reasonably meet the scheduling order’s November 1, 2012 deadline for amending the pleadings.” Id. at 8.

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Judge Sue L. Robinson recently transferred a case between two Delaware corporations to the Northern District of California. Fortinet, Inc. v. FireEye, Inc., Civ. No. 12-1066-SLR (D. Del. May 16, 2013). Both parties were headquartered in Northern California. The plaintiff was significantly larger than the defendant, and had previously been involved at least five times in litigation in the Northern District of California. Id. at 1. The defendant, on the other hand, had no federal litigation history. Id. at 1-2. The Court recognized that the plaintiff’s preferred venue “remains a significant factor” in the Jumara analysis, id. at 4, but found that on balance, the case presented “extenuating circumstances”, including that both parties were headquartered in Northern California, the defendant was smaller and had no federal litigation experience, and the plaintiff was pursuing, in addition to its patent infringement claims, California state law claims for misappropriation of trade secrets and intentional interference with contractual relations and prospective economic advantage. Id. at 7.

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Judge Sue Robinson recently considered motions to transfer and dismiss filed by patent infringement defendant Callidus Software. Plaintiff Versata Software is a Delaware corporation with a principal place of business in Texas, and Defendant Callidus is a Delaware corporation with a principal place of business in California. Callidus moved to transfer to the Northern District of California and to dismiss under Rule 12(b)(6), and Judge Robinson denied both motions. See Versata Software, Inc., et al. v. Callidus Software Inc., C.A. No. 12-931-SLR, Memo. Op. at 1-2 (D. Del. May 16, 2013).

Referring to her previous decision in Helicos Biosciences Corp. v. Illumina, Inc., 858 F. Supp. 2d 367 (D. Del. 2012), Judge Robinson noted that both parties preferred venue would be a legitimate venue. But because “‘convenience’ is separately considered in the transfer analysis, the court decline[d] [to] elevate a defendant’s choice of venue over that of a plaintiff based on defendant’s convenience.” Id. at 3-4. Carefully weighing all of the Third Circuit’s Jumara factors, Judge Robinson ultimately concluded that “Versata chose a legitimate forum which all parties have in common—their state of incorporation. As is usual in these cases, the convenience factors do not weigh in favor of transfer, because discovery is a local event and trial is a limited event. Although Delaware is not the locus of any party’s business activities, it is a neutral forum and no more inconvenient for Calllidus than Texas, the locus of Versata’s business activities. Given that both Versata and Callidus have experience litigating in multiple jurisdictions, the court is not persuaded that transfer is warranted in the interests of justice.” Id. at 3-6.

Judge Robinson then turned to Callidus’ motion to dismiss for failure to state a claim. Her Honor first found that with respect to “Versata’s claims of direct infringement . . . Versata’s complaint sufficiently identifies the accused software . . . as required by Fed. R. Civ. P. Form 18.” Id. at 9. Consistent with her practice in previous cases, Judge Robinson also found that Versata had adequately plead indirect infringement. Relying on Walker Digital LLC v. Facebook, Inc., 852 F. Supp. 2d 559 (D. Del. 2012), Judge Robinson held that the complaint’s allegation of knowledge of infringement as of the date of filing provided adequate notice under Global-Tech. Id. Furthermore, the pleading of induced infringement without identification of a specific customer was adequately supported because Callidus “licenses and/or sells the accused products” and Versata also alleged direct infringement. Finally, the pleading of contributory infringement was adequately supported because Versata alleged direct infringement and knowledge of lack of substantial non-infringing uses. Id. at 10. For these reasons, Judge Robinson found that all of the allegations of the complaint “satisfied the requirements of Twombly and Iqbal.” Id. at 7-10.

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Judge Robinson recently denied a motion to dismiss for lack of subject matter jurisdiction filed by Gevo in its ongoing biofuel patent infringement dispute with Butamax and DuPont. Butamax filed the action in question against Gevo seeking a declaratory judgment of non-infringement of a certain patent (the “’505 patent”). The ’505 patent is a continuation of a patent at issue in one of the other fifteen cases pending between the parties (the “’808 patent”). Gevo responded with the motion to dismiss, raising a challenge to declaratory judgment jurisdiction. See Butamax Advanced Biofuels LLC v. Gevo, Inc., C.A. No. 12-1301-SLR, Memorandum Order at 1-5 (D. Del. May 2, 2013).

Although the ’505 patent was terminally disclaimed over the ’808 patent, Gevo alleged that claims of the ’505 patent were “distinct from those of the ’808 patent [and] thus, Gevo’s assertion of infringement of the ’808 patent [did] not necessarily implicate the ’505 patent.” Id. at 5. Judge Robinson concluded, however, that “[c]omparing the claims of the ’505 patent and the ’808 patent . . . there are substantial similarities in the claimed subject matter.” Moreover, “the pattern of litigation between the parties and the close relationship between the patents constitute facts sufficient to show the existence of an actual controversy between the parties.” Id. Futhermore, Gevo’s assertion that it “lack[ed] sufficient information regarding the fermentation conditions of Butamax and DuPont’s products to determine if they infringe the ’505 patent” was unconvincing given that “the ’505 patent in a continuation of the ’808 patent and Gevo has not offered Butamax and DuPont a covenant not to sue on the ’505 patent.” Id. at n.3. Accordingly, Judge Robinson found that a sufficient controversy existed for declaratory judgment jurisdiction and denied the motion to dismiss.

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In a recent order, Judge Sue L. Robinson addressed a non-party’s motion to quash plaintiff’s subpoena and plaintiff’s cross-motion to compel. Cradle IP LLC v. Texas Instruments, Inc., C.A. No. 11-1254-SLR (D. Del. Apr. 29, 2013). Plaintiff had filed an action against defendant Texas Instruments, Inc. in late 2011, alleging infringement of U.S. Patent Nos. 6,647,450; 6,874,049; 6,708,259. Id. at 1. In late 2012 and early 2013, plaintiff served subpoenas on a non-party, Nokia Siemen Networks US LLC (“NSN US”), seeking documents and a deposition “related to Nokia Siemens base transceiver stations that [Texas Instruments] . . . identified as incorporating certain of the accused devices.” Id. at 1. Judge Robinson granted plaintiff’s motion to compel, but only to the extent that “NSN US has an employee or representative who has knowledge of the topics identified in the subpoena; does not need to obtain documents or information from [Nokia Siemens Networks Oy] for such knowledge; and lives, works, or regularly transacts business within 100 miles of the designated place of deposition.” Id. at 8. Further, Judge Robinson directed the deposition witness, if any, “to bring responsive documents that NSN US does not need to obtain from [Nokia Siemens Networks Oy], even if such documents are not located within 100 miles of the place of deposition or production.” Id. at 8-9.

With respect to the motions before the court, the “bulk” of the disagreement between plaintiff and NSN US surrounded whether NSN US had “control” over documents or information in the possession, custody, or control of Nokia Siemens Networks Oy (“NSN Oy”)—NSN US’s Finnish sister company that was also a non-party to the action. Id. at 4. Judge Robinson noted that “control is defined as the legal right to obtain the documents required on demand,” and that the court has “declined to apply a broader definition of ‘control’ that would also include an inquiry into the practical ability of the subpoenaed party to obtain documents.” Id. at 3. To determine whether such control was present, Judge Robinson was guided by the court’s previous decision in Power Integrations, Inc. v. Fairchild Semiconductor lnt’l, Inc., 233 F.R.D. 143 (D. Del. 2005). Id. at 3-6. Judge Robinson found that the relationship between NSN US and NSN Oy was similar to the “vendor relationship” between the parties in Power Integrations: “NSN US purchases the Nokia Siemens base station transceivers that are developed by NSN Oy, a separate and distinct corporate entity.” Id. at 4, 6. Although NSN US also conceded it “maintained” the products, the Court found that insufficient “to disregard the separate and distinct corporate identity of NSN US.” Id. at 6. Judge Robinson thus concluded that “NSN has no control over documents or information that it would have to obtain from NSN Oy.” Id.

Judge Robinson, however, was “concerned with certain aspects of NSN US’s motion to quash.” Id. Judge Robinson noted that “it [was] unclear from the record” whether NSN US was in the possession, custody, or control of other information it would not be required to obtain from NSN Oy, such as “supply chain” information or information regarding “certain hardware semaphores and software.” Id. Judge Robinson further found it unclear whether “any NSN US employee or representative within the court’s territorial limits may have knowledge that is responsive to the subpoena.” Id. at 7. Accordingly, Judge Robinson granted plaintiff’s motion to compel to the extent discussed above. Id. at 8-9.

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In a recent Memorandum Opinion, Judge Sue L. Robinson construed several claim terms, denied both parties’ motions for summary judgment, and denied plaintiff’s motion to exclude defendant’s expert’s testimony on invalidity. Cellectis S.A. v. Precision Biosciences, Inc., et al., C.A. No. 11-173-SLR (D. Del. Apr. 9, 2013).

The Court first construed the following terms:

-“[M]onomer of an 1-Crel meganuclease variant comprising at least one mutation in the amino acid sequence of SEQ ID NO: 70, wherein said at least one mutation comprises a substitution at one or more of the amino acids residues at positions 44, 68 and 70 and said monomer further comprises at least one additional mutation of an amino acid residue directly contacting a DNA target sequence wherein said amino acid residue directly contacting a DNA target sequence is selected from the group consisting of positions 26, 28, 30, 32,33 and 38 modified DNA cleavage specificity relative to the 1-Crel meganuclease of SEQ ID NO: 70 in at least one nucleotide in the +/- 3 to 5 triplets.” Id. at 4. The Court “decline[d] to construe the first phrase of [this independent claim] without the context of the remainder of the claim. Id.

-“[M]odified DNA cleavage specificity relative to the 1-Crel meganuclease of SEQ ID NO: 70 in at least one nucleotide in the +/- 3 to 5 triplets.” Id. at 7.

-“A single-chain chimeric meganuclease comprising [a] fusion of [two monomers].” Id. at 7-8.

-“[V]ariant of the wild-type monomer from 1-Crel.” Id. at 8-9.

The Court then denied the parties’ motions for summary judgment as to literal infringement and as to no invalidity for anticipation. The parties’ experts disputed the “proper characterization of [defendant’s product]” and thus raised genuine issues of material fact as to literal infringement. Id. at 16. The Court also held that there was a genuine issue of material fact as to whether a piece of prior art “expressly disclose[d] all of the claim limitations and whether the specific substitutions [of the patent-in-suit] would be apparent to one of skill in the art.” Id. at 19.

Finally, the Court denied plaintiff’s Daubert motion to exclude defendant’s expert testimony on best mode and obviousness. Plaintiff argued that the expert’s opinions on best mode made improper inferences based on a limited amount of information, but the Court held that the opinions were “not unreliable or unhelpful, when measured by the relatively low standard at this stage of the proceedings, coupled with the highly subjective nature of the state of mind inquiry” involved in best mode analysis. Id. at 21. As to obviousness, plaintiff argued that the expert’s testimony, which included “his opinions on secondary considerations and motivation to combine and claim charts illustrating his findings,” was too conclusory, but the Court concluded that "[w]hile [plaintiff] may disagree with [this expert’s] analysis and conclusions . . . at most, this goes to the weight of the evidence, which is properly addressed via cross-examination.” Id. at 22.

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Judge Sue Robinson recently denied a patent infringement plaintiff’s motion for leave to file an amended complaint adding claims of induced infringement. See Walker Digital, LLC v. Google, Inc., C.A. No. 11-309-SLR, Memorandum Order at 1 (D. Del. Apr. 11, 2013). Although the plaintiff had included allegations of induced infringement in preliminary infringement contentions, it did not formally move to amend pleadings until significantly later, approximately nine months after the deadline for filing amended pleadings and a month before the close of fact discovery. The plaintiff asserted good cause for its amendment based on (1) the Federal Circuit’s decision in Akamai Techs., Inc. v. Limelight Networks, Inc., 692 F.3d 1301 (Fed. Cir. 2012), (2) defendants’ claim constructions raising the potential need to rely on inducement, and (3) the lack of undue prejudice. Id. at 2. Judge Robinson found that (1) Akamai was inapplicable because the plaintiff did not allege that only some steps were performed by third parties, (2) the defendants’ representations that they did not intend to assert a non-infringement argument based on claim constructions were acceptable and binding, and (3) there was no good cause for plaintiff to amend regardless of whether or not such an amendment would prejudice defendants. Accordingly, she denied the motion to amend. Id. at 2-4.

Judge Robinson also denied the defendants’ request to stay the case pending reexamination. Id. at 4. Between the filing of the motion to stay and Judge Robinson’s decision, the PTO issued an “Action Closing Prosecution” in an inter partes reexamination initiated by defendants, which rejected every claim of the patent-in-suit. Although “there [was] no dispute that a final resolution of the administrative process would simplify the judicial process, and that . . . the administrative process is less expensive than the judicial process,” Judge Robinson found that “the judicial process had proceeded far enough (and the administrative process has not) that a stay would unduly prejudice [the plaintiff.]” Id. at 4-6. The prejudice to plaintiff was not diminished by the fact that “is a non-practicing entity,” because “it is a research-oriented business that will be prejudiced if its rights under the [patent-in-suit] are not adjudicated timely” and there is “no reliable time table to conclusion” of the administrative process. Id. at 5.

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Golden Bridge Technology (“GBT”) sued Apple and other defendants (the “Apple action”), and Amazon.com, Inc. and other defendants in two separate actions alleging infringement of U.S. Patent No. 6,574,267 C1 and 7,359,427. The patents-in-suit “relate generally to wireless cellular networks and teach a method for establishing a communication link between a mobile station, such as a cellular telephone, and a base station.” Golden Bridge Technology Inc. v. Apple Inc., et al., C.A. Nos. 10-428-SLR, 11-165-SLR (D. Del. Apr. 9, 2013) (Claim Construction Memorandum Opinion). The cases were consolidated for claim construction but claims other than those against Apple were stayed.

Judge Robinson held oral argument on claim construction on March 19, 2013 and recently issued her claim construction Opinion, construing the following terms of the patents-in-suit:

“Access Preamble”/“Preamble”
“Discrete Power Level”

In construing “Access Preamble”/“Preamble,” the Court considered the estoppel effect of the construction of claims of the ‘267 patent in a prior suit filed by GBT in Texas against other defendants. The Court held that collateral estoppel was not applicable because the issues decided by the Texas Court were not identical to this case. Specifically, the ‘427 patent, although a related patent, was not issued until after the conclusion of the Texas case, and the ‘267 patent was reexamined after the Texas case concluded, resulting in different claims and additional prosecution history. Id. at 9.

Following the Court’s claim construction Opinion, Judge Robinson issued the Court’s Memorandum Opinion on Summary Judgment in the Apple Action. Golden Bridge Technology Inc. v. Apple Inc., et al., C.A. No. 10-428-SLR (D. Del. Apr. 9, 2013) (Summary Judgment Memorandum Opinion). Judge Robinson considered GBT’s motion for partial summary judgment of infringement and Apple’s motions for summary judgment of non-infringement and invalidity. Judge Robinson denied GBT’s motion and granted Apple’s motion as to non-infringement. Although Judge Robinson found that Apple’s accused products and related processes practiced “the ‘discrete power level’ limitation” of the asserted claims, GBT did not identify “a genuine issue of material fact regarding the limitation of ‘spreading the access preamble” or of a “spread across preamble.” Id. at 14-15. Therefore, summary judgment of non-infringement was appropriate.

In the Apple action, Judge Robinson also considered various motions to exclude and strike expert testimony. Golden Bridge Technology Inc. v. Apple Inc., et al., C.A. No. 10-428-SLR (D. Del. Apr. 9, 2013) (Memorandum Order). Apple moved to strike GBT’s untimely expert opinions and moved to exclude certain other expert opinions. Id. at 2. GBT also filed two Daubert motions. Id. The Court granted-in-part GBT’s Daubert motion that sought to exclude opinions on the inventors’ lack of diligence in preparing and filing the patent application, and failure to meet the written description requirements of 35 U.S.C. § 112. Judge Robinson excluded the expert’s opinions on diligence because the expert was not a patent attorney or an expert in patent law. Id. at 3. Judge Robinson denied Apple’s Daubert motion that sought to exclude an expert’s rebuttal opinion on validity, a rebuttal opinion on attorney diligence, and two experts’ opinions and untimely supplements regarding infringement. Id. at 4. The court granted Apple’s motion as to attorney diligence, finding it would not be helpful to the jury, because it was “based not on records but on speculation[.]” Id. Judge Robinson denied Apple’s motion in all other respects. Even though GBT’s experts’ infringement opinions were offered before the court issued its claim construction, the Court found that any disagreement between the opinions and the Court’s construction “is more properly reserved for cross-examination[.]” Id. at 5.

Finally the Court denied both GBT and Apple’s motions to exclude or strike testimony “regarding the definition of ‘bandwith.’” Id. at 6. The Court found the opinions admissible under Daubert, and any issues with the testimony could be dealt with on cross examination. Id. Furthermore, GBT’s “untimely” expert opinion was admissible because it was “necessary to respond to criticisms lodged by Apple’s expert . . . in his rebuttal report.” Id.

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