In a recent memorandum opinion, Judge Sue L. Robinson granted a defendant’s motion for summary judgment of non-infringement under the doctrine of equivalents. Auxilium Pharmaceuticals, Inc. v. Upsher-Smith Laboratories, Inc., Civ. No. 13-148-SLR (D. Del. Dec. 4, 2013). The parties had stipulated previously that the defendant’s pharmaceutical formulation did not literally infringe the plaintiff’s patented methods for treating hypogonadism using a specific formulation of testosterone gel. The claims in the patents in suit focused on cyclic Hsieh enhancers, whereas the defendant’s formulation used Dudley enhancers, which the patentee gave up during prosecution. As the Court explained, “a large number of enhancers were known in the art, many of which the patentees referenced in their specification. The patentees specifically discussed the straight chain Dudley enhancers in the specification and, thereafter, differentiated the cyclic Hsieh enhancers.” Id. at 13. Further, the patentees “argued during prosecution that their invention was not obvious in light of Dudley enhancers . . . .” Id. The Court therefore found that the plaintiff could not recover through the doctrine of equivalents what it surrendered during prosecution. Id. at 13-14.
Judge Sue L. Robinson denied defendant’s request to claw back certain documents that defendant initially produced “without claiming protection from disclosure under either the attorney-client privilege or the work product doctrine.” Pfizer Inc., et al. v. Lupin Pharm., Inc., et al., C.A. No. 12-808-SLR, slip. op. at 1 (D. Del. Dec. 2, 2013). Defendant produced “100 documents related to experiments conducted by scientists in [defendant’s] Intellectual Property Management Group,” and defendant sought to claw back those documents as protected under the attorney-client privilege or the work product doctrine. Id. at 2. Judge Robinson found it clear that these documents were not protected under the attorney-client privilege, as “they were neither created with the knowledge of . . . counsel, nor were they shared with . . . counsel contemporaneously.” Id.
The “harder question,” as Judge Robinson explained, was whether these documents were protected under the work product doctrine, which does not require attorney involvement for document protection. Id. at 3. Judge Robinson recognized that “the documents at issue were generated under the complex administrative paradigm created under the Hatch-Waxman Act,” and that “litigating the validity of patents is contemplated under the statute.” Id. at 3-4. However, Judge Robinson “decline[d] to equate the ordinary course of business of a generic manufacturer (testing compounds in order to develop bioequivalent drugs) with the more specific conduct associated with anticipation of litigation (e.g., testing the compounds of the prior art in order to invalidate a patent), especially where, as here, there [was] no indication that the [defendant] scientists were doing anything other than pursuing general scientific research on [defendant’s] prospective drug(s).” Id. at 4. Judge Robinson therefore found that defendant failed to meet its burden to demonstrate the documents at issue were protected from disclosure and denied defendant's requested claw back. Id.
Judge Robinson decides various summary judgment motions, motions to exclude experts and provides guidance as to the Court's preferences for citations to the record
Judge Sue L. Robinson recently considered various motions for summary judgment, motions to strike and exclude testimony, and issued claim constructions of the terms of the patents-in-suit (Patent Nos. 6,874,049, 6,708,259, and 6,647,450). Cradle IP, LLC v. Texas Instruments, Inc., C.A. No. 11-1254 (D. Del. Nov. 20, 2013).
Before analyzing the eight motions before the Court, Judge Robinson noted that to determine summary judgment the court must confirm "the parties have cited evidence in support of their arguments"; and that "the evidence demonstrates the proposition for which it is cited." Id. at 11-12. In that respect, Judge Robinson noted that the "the parties could not have been less helpful to the court." The specific issues with the parties' record cites included:
[T]he parties (and their experts) cited to documents by their Bates-stamp numbers, with no indicia of their location in the record. Even when the parties were kind enough to locate the document in question by an exhibit number, it was often difficult to discern which of the volumes containing identical exhibit numbers was actually referenced. To add insult to injury, the parties organized the appendices so that the exhibits were not necessarily included in numerical order because, e.g., one exhibit had to be sealed. In sum, it was a rare occurrence that a brief cited evidence by an exhibit number that was clearly identified by the appendix in which it resided.
Id. at 12.
Turning to the motions to strike and exclude expert testimony, Judge Robinson granted Texas Instrument's motion striking "new theories" from Cradle IP's expert's declarations. Id. at 13. "As far as the court can tell, the declaration is longer than his two expert reports combined, and primarily cites to itself as authority." Id. Judge Robinson also granted Texas Instrument's motion to strike that related to a third party declaration not vetted in discovery. Id. Judge Robinson denied the remaining motions to strike that related to supplemental expert reports. Id. at 14. "[T]he court has neither the time nor the resources - nor even the record - to recreate the parties' tortuous litigation strategies insofar as determining whether plaintiff had cause to file a supplemental report in the first instance and whether it ventured into new theories which demanded a response by defendant in the second instance." Id. Judge Robinson also denied Texas Instrument's motion to exclude Cradle IP's expert on secondary considerations, finding that Texas Instrument's complaints went to the weight of the evidence. Id. Judge Robinson did, however, grant Cradle IP's motion to strike an expert declaration because it contained disclosures that had not been vetted through discovery. Id.
Turning to the summary judgment motions, Judge Robinson granted-in-part Texas Instrument's motions for summary judgment of non-infringement and denied its motion for summary judgment of invalidity. Regarding the '049 patent, Judge Robinson granted Texas Instrument's motion that "that Cradle has not shown that Tl has made, used, sold, or offered to sell the 'entire patented invention' or that any of its customers have employed the 'entire patented invention in the required configuration set forth in the apparatus claims.'" Id. at 22-23. Judge Robinson found that there was "no evidence to show that Tl or its customers used the apparatus in combined mode. To the contrary, the only evidence provided shows that the software needed for the apparatus to operate in combined mode was not even developed." Id. at 24. Judge Robinson also granted Texas Instrument's motion as to the method claim 6, that Cradle IP "failed to provide evidence to show that either TI or its customers have actually performed 'all of the steps of the claimed method.'" Id. at 25. Regarding the '259 patent, Judge Robinson granted Texas Instrument's motion that Cradle IP provided no evidence of direct infringement of the method claims, finding that "at best" Cradle IP has shown that the products are capable of operating in an infringing manner, rather than evidence of use. Id. at 31. Regarding the '450 patent, Judge Robinson granted Texas Instrument's motion. The Court found that "Cradle fail[ed] to identify evidence to support a finding of a genuine issue of material fact, instead pointing only to a conclusory opinion, unsupported by evidence, in [its expert's] declaration." Id. at 40.
Judge Robinson also construed the following claim terms of the patents-in-suit:
"A system bus that allows only one bus transaction in any one clock cycle"
"Any processor requesting access to the shared resource"
"The shared resource is available/unavailable for access"
"The shared resource has just been made available for
"Idle Memory Transfer Controller"
"Split transaction global bus"
"Acknowledgment of command receipt"
"Releasing the split transaction global bus"
Judge Robinson denies early Rule 11 motion, but cautions plaintiff that the court will entertain renewed motion after claim construction
Judge Sue. L. Robinson recently considered an early Rule 11 motion filed by several defendants in HBAC Matchmaker Media, Inc. v. CBS Interactive Inc., et al., C.A. Nos. 13-428, 13-430, 13-433, 13-434, 13-435, 13-437, 13-438 (D. Del. Nov. 18, 2013). Prior to filing the motion, defendants wrote plaintiff requesting that it withdraw its claims because the complaints accused websites, whereas the patents-in-suit were directed to "targeted advertising in the context of television and radio." Id. at 2. At the Rule 16 scheduling conference, Judge Robinson asked the plaintiff to provide the court for in camera review the materials it relied upon in performing its pre-filing investigation. Id. Plaintiff submitted emails prior to the filing date evidencing that plaintiff reviewed press articles on the use of targeting advertising at issue in the claims. Id. at 4. Plaintiff also submitted emails discussing the patents and alleged infringement, claim charts which were the subject of pre-suit emails, and evidence that plaintiff used tools to analyze network traffic between a viewer’s computer and defendants' servers. Id.
Defendants argued that plaintiff's "conclusory" assertions that it had a reasonable basis for finding infringement were insufficient because "plaintiff's purported infringement theory include[d] no code comparison whatsoever" and plaintiff provided no "details regarding [its] infringement analysis or underlying claim construction positions regarding the code comparison and instructions/commands limitations." Id. at 3-4.
Judge Robinson denied defendants' motion, declining to "engage in a claim construction exercise" at this early point in the case. Id. at 4. But, Judge Robinson noted that "plaintiff may well be stretching the meaning of two older patents (clearly directed at television and radio)," and cautioned the plaintiff that it would entertain a renewed Rule 11 motion and/or an attorneys' fees motion under 35 U.S.C. § 285 after discovery and claim construction is completed. Id. at 5. Judge Robinson also stated that the court might permit early claim construction of "dispositive limitations" after the parties exchange "fundamental documents." Id.
Judge Robinson denies in part plaintiff’s requests to strike expert reports and for “follow-up” discovery
Judge Sue L. Robinson recently considered plaintiff’s request to strike three supplemental expert reports, and with respect to one report, plaintiff’s alternative request for “follow-up” discovery. Aeritas, LLC v. United Alaska Air Grp., Inc., C.A. No. 11-967-SLR (D. Del. Oct. 25, 2013). With respect to the report for which plaintiff made the alternative request, Judge Robinson denied both plaintiff’s request to strike and the alternative request for follow-up discovery. Id. at 2. Judge Robinson found that plaintiff already had an opportunity to pursue related discovery, noting that “defendants timely shared with plaintiff the information they obtained through their discovery efforts.” Id. Judge Robinson further explained that “without any real indication that plaintiff’s proposed follow-up discovery will yield any substantive results, the court finds the prospect of prejudice too speculative to justify re-opening discovery at this stage of the proceedings.” Id. Judge Robinson also denied plaintiff’s request to strike a different report, noting that it was responsive to another expert’s report. Id. Judge Robinson, however, granted plaintiff’s request to strike one expert’s supplemental report, explaining that it was “nothing more than an effort to rectify his opening report by more clearly articulating his opinions, something he should have done in the first instance.” Id.
Judge Sue L. Robinson recently reconsidered an earlier decision (discussed here) to defer ruling on a motion for attorneys' fees filed by defendants. Walker Digital, LLC v. Expedia, Inc., et al., Civ. No. 11-313-SLR (D. Del. Oct. 25, 2013); Walker Digital, LLC v. Amazon.com, Inc., Civ. No. 12-140-SLR (D. Del. Oct. 25, 2013); Walker Digital, LLC v. Barnes & Noble, Inc., Civ. No. 12-141-SLR (D. Del. Oct. 25, 2013); Walker Digital, LLC v. Expedia, Inc., Civ. No. 12-142-SLR (D. Del. Oct. 25, 2013). Judge Robinson addressed the merits of the motion and denied it, finding that the defendants did not prevail on the merits for purposes of § 285, but instead had their cases dismissed "based on business arrangements . . . and the resulting consequences of such" after the plaintiff assigned its patents to eBay as part of a settlement. Moreover, Judge Robinson found that the case was not exceptional despite that the plaintiff continued litigating long after assigning the patents away, explaining "[t]he eBay settlement agreement was complex and negotiated in the midst of litigation. The attorneys involved in the litigation were not involved in these negotiations . . . With arguably valuable property rights at stake, it is not surprising that plaintiff chose to have the court resolve the dispute rather than amicably resolve such with defendants."
Judge Robinson next clarified that the earlier dismissal of the cases (discussed here) for lack of standing was with prejudice. The plaintiff argued that it had not had sufficient opportunity to cure the standing defect, but the Court disagreed, explaining that in its opposition to the motions to dismiss, “plaintiff has offered no evidence that it has a plan to cure the standing defect, stating only that it ‘has been and currently is engaged in continued discussions with eBay regarding ownership of the patents-in-suit.’” Therefore, the Court (by way of clarification for appeal) confirmed that its earlier dismissal was with prejudice.
Judge Robinson finds reissue patent invalid under Section 251(d), grants summary judgment of noninfringement
Judge Sue L. Robinson recently granted defendants’ motions for summary judgment of noninfringement because the Court found a reissue patent invalid under 35 U.S.C. § 251. Arcelormittal France, et al. v. AK Steel Corporation, et al., C.A. No. 10-050-SLR (D. Del. Oct. 25, 2013). In this action, the Federal Circuit had issued a mandate following a jury trial, affirming the district court’s construction of a certain limitation in independent claim 1 of U.S. Patent No. 6,296,805 (“the ‘805 patent”). Id. at 1-2. Following the Federal Circuit’s decision, the USPTO reissued the ‘805 patent as U.S. Patent No. RE44,153E (“the RE153 patent”), allowing a new dependent claim 23 “which effectively broadens the scope of the RE153 patent.” Id. at 2. Independent claim 1 of the RE153 patent included the same claim limitations that had been construed by the Federal Circuit in the ‘805 patent. Id.
Defendants moved for summary judgment of “noninfringement implementing the mandate on remand” and also argued that all of the broadened claims of the reissue patent were invalid under 35 U.S.C. § 251(d) (disallowing reissued patents that enlarge the scope of claims of the original patent unless applied for two years from grant of original, which was not the case here). Id. at 2, 5. There was no evidence that defendants infringed claim 1 of the ‘805 patent as construed by the Federal Circuit. Id. at 6.
Plaintiff argued that the case was now governed by the RE153 patent, and that the Court could revisit the construction of claim 1 of the ‘805 patent, and thus the issue of infringement, “in light of the reissue prosecution history which provides important new intrinsic evidence, which differs materially from the evidence of record when the claim construction was first decided.” Id. at 6 (internal citations and quotation marks omitted). The Court declined to do so, explaining that other courts, including the Federal Circuit, had refused to construe the claims of an original patent in light of a reissue patent. Id. at 7. Instead, the Court concluded that, under Section 251 and its case law, it must “compare the scope of the original claim 1 to the reissued claim 1 (as it must be construed to accommodate new dependent claim 23).” Id. at 7-8. And “[t]hat exercise leads inexorably to the determination that, rather than ‘further limiting’ claim 1, dependent claim 23 broadens the scope of claim 1 in contravention of § 251.” Id. at 8.
Having made this determination, the Court addressed the proper scope of the RE153 patent’s invalidity. Id. at 9. Plaintiff argued that it would be most equitable to only find claim 23 invalid. Id. “Having given this matter considerable thought,” the Court rejected this argument, concluding that “the mandate of the Federal Circuit has been insolubly devitalized by the reissue process. The patent at issue before the Federal Circuit . . . has been surrendered . . . . With the only patent at issue in this case being the RE153 patent, and with said patent having been improperly broadened in violation of § 251(d), the court declines to exercise its inherent equitable powers to resurrect the original scope of the ‘805 patent” Id. at 10. The Court further noted that, because plaintiff attempted to “captur[e] more acts of infringement under the broadening scope of new dependent claim 23 of the RE153 patent” more than two years from the grant of the ‘805 patent, this “intentional strategy to avoid the consequences of this court’s narrow construction” contravened the “fundamental purpose of § 251, that is, repose.” Id. at 10.
As a result, the Court invalidated the RE153 patent under Section 251(d) and granted defendants’ motions for summary judgment. Id. at 11.
Judge Robinson orders parties' experts to appear in Court in order to resolve plaintiff's motion to strike defendant's non-infringement expert report
Judge Sue L. Robinson recently considered plaintiff's request to strike portions of defendant's non-infringement expert report because it was based on modifed source code not made available to plaintiff. Juniper Networks, Inc. v. Palo Alto Networks, Inc., C.A. No. 11-1258 (D. Del. Oct. 28, 2013). Defendant did not dispute plaintiff's argument, but argued that its actions were justified because "plaintiff did not allude to source code at all until its expert's initial infringement expert report, and, further, that plaintiff's expert did not disclose any details about his test environment, nor did he ask for the ability to edit the code while preparing his report. Id. at 1.
Judge Robinson noted that the court could not "discern how much of this controversy [was] attorney-generated, and how much of this controversy truly reflect[ed] prejudicial conduct by either party." Id. at 2. Therefore, Judge Robinson ordered that, "absent a consensual resolution to this dispute," the parties' experts would be expected to testify on November 15, at the hearing previously scheduled for claim construction and summary judgment, regarding "the information the parties would need in order to vet the testing and, coincidentally, the information the court needs to resolve the dispute." Id. The Court would then decide the dispute, with the losing party to pay the costs of the proceeding. Id.
After trial regarding infringement of Netgear, Inc.'s U.S. Patent Nos. 6,621,454 and 7,263,143, the jury returned a verdict finding the patents valid and finding that Netgear had not proved that Ruckus Wireless, Inc. infringed the patents. Netgear, Inc. v. Ruckus Wireless, Inc., C.A. No. 10-999-SLR (D. Del. Oct. 31, 2013). The Court's pretrial decisions and claim construction can be found here, here, and here.
Judge Robinson orders plaintiffs to supplement their contentions regarding damages related to defendants' at-risk launch of a generic product
Judge Sue L. Robinson recently issued a Memorandum Order in a multi-district litigation ordering plaintiffs to supplement responses to defendants' damages contention interrogatory. In re: Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litigation, C.A. No. 09-MD-2118-SLR (D. Del. Oct. 22, 2013). This litigation involved unique circumstances in that plaintiffs were "pursuing an infringement action in an ANDA case after judgment of infringement and validity ha[d] been entered, seeking damages relating to defendants' at-risk launch[.]" Id. at 3 n.3. Defendants served an interrogatory requesting plaintiffs' contentions regarding plaintiffs' claim of damages related to defendants' at-risk launch of a generic product. Id. at 1-2. Plaintiffs initially objected to providing any response stating that damages discovery was in its early stages, that damages was the subject of expert discovery, and that plaintiffs need to view defendants' sales data before responding. Id. at 2. Two months before the close of fact discovery, Plaintiffs supplemented their response by identifying "hundreds of pages of documents from which defendants could 'derive the information requested by' the interrogatory." Id.
Judge Robinson found Plaintiffs' supplementation insufficient:
I recognize that the identification of documents in lieu of a substantive response to an interrogatory is generally appropriate. I disagree that it is an appropriate response to a contention interrogatory, however, unless such documents specifically identify the contention in the first instance (unlikely) or provide specific data supporting the contention that has already been described. In this case, given that plaintiffs have yet to articulate their contentions with any particularity, I find it hard to believe that these documents are particularly helpful.
Id. Furthermore, Judge Robinson held that although the calculation of damages is the proper subject of an expert opinion, the facts on which an expert relies are properly the subject of fact discovery. Id. at 2-3. Therefore, "parties are required to disclose such facts before the facts are massaged and manipulated by their expert witnesses." Id. at 3.