February 7, 2014

Judge Robinson issues claim construction related to telecommunications technologies

In a recent memorandum opinion, Judge Sue L. Robinson construed three disputed claim terms across U.S. Patent Nos. 6,044,382; 5,805,676; 5,987,103; and 7,334,024, which each relate to telecommunications technologies. Cyberfone Systems, LLC v. ZTE (USA) Inc., et al., C.A. Nos. 11-827, 11-830, 11-833, 11-834-SLR (D. Del. Feb. 4, 2014). Specifically, Judge Robinson construed the three disputed claim terms as follows:

-The limitation “form driven operating system” means “firmware - a set of instructions programmed on a hardware device - that, together with forms, operates to control a microprocessor without the need for a conventional operating system (such as DOS or Windows).”

-The limitation “client module” means “firmware - a set of instructions programmed on a hardware device - that, together with forms, operates to control a microprocessor without the need for a conventional operating system (such as DOS or Windows).”

-The limitation “transaction assembly server” means “firmware - the set of instructions programmed on a hardware device.”

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February 5, 2014

Judge Robinson denies motion for leave to amend answer with antitrust and conspiracy claims

Judge Sue L. Robinson recently denied a defendant’s motion for leave to amend its answer. Round Rock Research v. Sandisk Corporation, C.A. No. 12-569-SLR (D. Del. Jan. 30, 2014). The Court explained that

defendant requests the opportunity to expand the scope of the [case] . . . by amending its answer to include monopolization and conspiracy claims. Although the motion is timely, in terms of case management, [the Court] conclude[s] that the complex issues identified in the motion should be litigated as a separate case, given the fact that the patent dispute to date has been sufficiently vexatious and [the Court] would likely bifurcate the antitrust and conspiracy claims from the patent claims in any event.

Id. at 1.

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January 30, 2014

Judge Robinson Grants Motion to Dismiss for Lack of Declaratory Judgment Jurisdiction

We previously reported on Judge Robinson’s denial of Gevo’s motion to dismiss Butamax’s declaratory judgment action for lack of subject matter jurisdiction based on her determination that a sufficient controversy existed to exercise declaratory judgment jurisdiction. Judge Robinson has now considered Gevo’s renewed motion to dismiss for lack of subject matter jurisdiction and this time has granted dismissal. Butamax Advanced Biofuels LLC, et al. v. Gevo, Inc., C.A. No. 12-1301-SLR, Memo. at 1-6 (D. Del. Jan. 28, 2014).

Although Butamax and Gevo have engaged in “an extensive pattern of litigation . . . [with] eleven cases pending between the parties,” that litigation has become less related to the patent at issue in this declaratory judgment action. This declaratory judgment case and another related infringement case involve Gevo’s patents for isobutanol recovery. The remainder of the patents at issue between the parties in the various cases relate to creating isobutanol through genetically engineered organisms. Because Gevo’s infringement case involving the related, isobutanol recovery patent was voluntarily dismissed in May, and because there was no evidence of Butamax’s final commercialization process for isobutanol recovery, Judge Robinson found that the pattern of litigation of unrelated patents alone was no longer sufficient to sustain an actual controversy. Id. at 4-5.

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January 20, 2014

Judge Robinson construes claim terms, rules on host of pretrial motions.

In two recent memorandum opinions issued on the same day, Judge Sue L. Robinson ruled on a host of pretrial motions and construed claim terms of patents relating to the receipt and descrambling of encrypted broadcast signals. British Telecommunications PLC v. Coxcom, Inc., et al., Civ. No. 10-658-SLR (“First Opinion”); 11-843 (D. Del. Jan. 13, 2014) (“Second Opinion”).

In the First Opinion, the following claim limitations were construed by the Court:

Plaintiff’s U.S. Patent No. 6,473,742:

--“means for loading the store with such data”
--“to enable or disable reception [of transmissions] in dependence on the result of the comparison”
--“means for comparing received identifiers with the contents of the store and to enable or disable reception in dependence on the result of the comparison”
--“wherein each of the fixed and removable parts has] means storing a verification number”

Plaintiff’s U.S. Patent No. 6,538,989:

--“flow based packets”
--“packet buffer”
--“packet buffer size”
--“controlling the first packet buffer size”

Plaintiff’s U.S. Patent No. 5,142,532:

--“a bidirectional broadband and telephone network”
--“for information packets to travel without interference to and from a plurality of receiving stations”
--“round-trip delay”
--“adjusting the round-trip delay to ensure correct spacing of the information packets during passage through the network”
--“enforcing allocation thereto to ensure each station’s minimum bandwidth requirements is [sic] fulfilled”
--“wherein the requesting step includes … generating a further request if an error is detected”

Plaintiff’s U.S. Patent No. 5,526,350:

--“switching means”

Plaintiff’s U.S. Patent No. 5,923,247:

--“ conditions causing unavailability of a system”

Based on the Court’s constructions, the Court denied motions for summary judgment on non-infringement and validity grounds, except for the following:

The Court granted Defendant’s motion for summary judgment of non-infringement of the ‘742 patent, because the defendant’s accused product included a second level decryption that did not meet the requirements of the limitations. First Opinion at 17. The Court also granted Defendant’s motion for summary judgment of non-infringement, explaining that the ‘350 patent specification failed to provide sufficient structure to perform the function, such that the term is indefinite. Specifically, the Court explained, “[w]ithout an example or description of a non-voice traffic switching device, the specification does not provide sufficient structure of the means-plus-function claim limitation, which requires two switching means.” For the same reason, the Court granted Defendant’s motion for summary judgment that the ‘350 patent is invalid as indefinite. Id. at 27-28.

The Court next considered Defendant’s Daubert motion to exclude Plaintiff’s expert. The Court first found that Defendant’s arguments as they related to direct infringement went to the weight of the expert’s testimony, not its admissibility, so the Daubert motion was denied with respect to direct infringement testimony. But the Court reached a different conclusion regarding the expert’s testimony relating to infringement under the doctrine of equivalents. The Court agreed with Defendant that Plaintiff’s expert “presented conclusions for each limitation, he did not articulate how the accused devices would equivalently perform each limitation.” Id. at 38-39. Therefore, the Court granted Defendant’s Daubert motion with respect to doctrine of equivalents testimony.

The Court also granted Plaintiff’s motion to strike an employee’s declaration in support of one of Defendant’s motions for summary judgment, finding that it was undisclosed expert testimony: “As [Defendant] did not identify [the employee] as an expert witness, nor were his opinions vetted through discovery, the court grants [Plaintiff’s] motion to exclude.” Id. at 12.

The Court also granted Defendant’s motion to strike portions of declarations submitted by two of Plaintiff’s expert. Defendant argued that the declarations included opinion testimony that had not been previously disclosed, which the Plaintiff disputed. However, the Court concluded that if the opinions had previously been disclosed in expert reports, “[Plaintiff] should have referenced those documents.” Id. at 12.

In the Court’s Second Opinion, the Court first granted Defendant’s motion to strike portions of Plaintiff’s expert’s declarations, finding that the declarations inappropriately provided “additional examples of non-infringing uses, some conclusory explanations, and comparisons to claim limitations” that were consistent with Plaintiff’s earlier expert disclosures, but had not “been vetted through discovery” and/or were conclusory and therefore not appropriate for review on summary judgment. Second Opinion at 4.

The Court next found, after interpreting under New York law a cross-licensing agreement between Plaintiff and a third party supplier to Defendant, that it could not conclude that Defendant was an “authorized third party” under that agreement, and therefore that it could not find that Defendant was impliedly licensed to use the patents. With respect to another third party supplier license, the Court rejected Defendant’s argument seeking an implied license, because that license specifically precluded the conferring of any implied licenses. Id. at 6-12.

Finally, the Court denied Defendant’s motion for summary judgment that the patents were unenforceable under the patent exhaustion doctrine as a result of the third party licensee’s sales to Defendant. The Court explained that neither party provided sufficient evidence of non-infringing uses to support the patent exhaustion defense. Id. at 15-19.

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January 16, 2014

Judge Robinson issues rulings related to subpoenas and withheld documents

In Round Rock Research LLC v. Sandisk Corp., C.A. No 12-569-SLR (D. Del. Jan. 9, 2014), Judge Sue L. Robinson ruled on two discovery issues. The first issue related to defendant’s request for information from a third party (Micron) relating to its waiver and estoppel defenses. See id. at D.I. 96, 101 (letters outlining disputes). The Court allowed defendant to depose Micron, at its own cost, only on issues related to what Micron disclosed to plaintiff, not what plaintiff subsequently disclosed to third parties. Id. at 1-2. Furthermore, “plaintiff's independent evaluation of said patents and its licensing strategies based upon such an evaluation are not relevant to defendant's waiver or estoppel defenses.” Id. at 2.

Second, after reviewing in camera documents that were withheld as privileged or work product, the Court ruled that the documents need not be produced because they were irrelevant, based on the Court’s assessment of what was relevant to defendant’s waiver and estoppel defenses. Id. at 2. Even though the Court had found it unnecessary to decide whether these documents were privileged, the Court did “take the opportunity to observe that, when trying to divine the distinction between the business of licensing and preparing for anticipated litigation, some documents - like claim charts - are both useful business tools and essential litigation obligations. In this regard, in balancing the need for production against the historic protection from discovery of attorney-client communications and attorney work product, I believe the balance should be struck in favor of protection.” Id. at 2 n.3.

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January 9, 2014

Judge Robinson grants-in-part motions for summary judgment of invalidity and non-infringement, construes claims

In Intellectual Ventures I, LLC, et al. v. Motorola Mobility, LLC, C.A. No. 11-908-SLR (D. Del. Jan. 2, 2014), defendant had moved for summary judgment of invalidity and non-infringement of six patents-in-suit. Judge Sue L. Robinson granted summary judgment of non-infringement as to the one of the patents-in-suit, finding that the accused product performed steps expressly prohibited by this patent. Id. at 22-24. The Court also granted summary judgment of invalidity as to a different patent because it determined that the combination of two prior art references rendered this patent obvious. Id. at 38-40. Specifically, the Court concluded that one reference’s “warning of increased costs” as to the a stated object of the patent’s invention did not teach away from combining the two references. Id. at 40.

The Court denied the remaining motions because genuine issues of material fact existed. In denying defendant’s motions, the Court, among other issues, concluded that: plaintiff was not precluded from applying the doctrine of equivalents as to a certain patent due to amendment of claims during prosecution because “the claim of equivalence are for aspects of the invention that have only a peripheral relation to the reason the amendment was submitted," id. at 35; defendant’s own patent was not entitled to the priority date of an abandoned “grandparent application” (and therefore did not qualify as prior art) because there were key differences between the disclosures in defendant’s patent and those of the grandparent application, id. at 46-49; one patent-in-suit was not entitled to an earlier priority date based on PowerPoint presentation by its inventor because metadata showing its creation date was insufficient to show reduction to practice, id. at 61-63.

The Court also construed the following terms:

“at the second device, [of] the single combined file irrespective of user action at the second device,” id. at 17-18;

"absent non-transient intermediate storage of the selected file on an intervening communications device of the communications network,” id.;

“Receive the selected file and associated text file absent initiation of retrieval of the selected file from the intervening communications device by the second device and absent user action at the second device," id. at 18-19;

“delivery report,” id. at 19;

“Authenticating device of the communications network;” id. at 19-20;

“A polarization converter ... to polarize the light from the illumination uniformizing means into a polarized light,” id. at 30-31;

“A light source, comprising an ‘array of a plurality of light emitting devices,’” id. at 31-32;

“Presenting a directory of software [updates] available for installation on the user station,” id. at 41-42;

“Presenting a directory of software [updates] available for installation on the user station and not already installed on the user station,” id. at 43;

“Content,” id. at 50-51;

“Effect presentation ... with a user interface that is customized to the respective publishers,” id. at 51-52;

“Allocating is responsive to at least one field in the packet header,” id. at 57-59;

“Central processor,” id. at 65-66;

“Detachable headset,” id. at 66-67.

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December 23, 2013

Judge Robinson denies motion to dismiss based on covenant not to sue

In Gevo, Inc. v. Butamax Advanced Biofuels LLC, et al., C.A. Nos. 12-301-SLR, 12-448-SLR (D. Del. Dec. 16, 2013), Judge Robinson denied plaintiff’s motion to dismiss Butamax Advanced Biofuel LLC’s (“defendant”) counterclaims of invalidity and non-infringement based on plaintiff’s covenant not to sue. The covenant not to sue provided that plaintiff would not sue “for the use of ‘Accused Technology,’ defined as certain modified recombinant organisms.” Id. at 2. Judge Robinson explained that because plaintiff was willing to dismiss its infringement claims, and only defendant’s counterclaims would remain, the case would transform into a declaratory judgment action. Id. at 3 n.2.

Under the totality of the circumstances, Judge Robinson found an actual controversy between the parties to exist and denied plaintiff’s motion to dismiss, citing to “the pattern of litigation between the parties[,] . . . the unpredictability of the art,” and the defendant’s “desire to use the alleged infringing strains.” Id. at 5. Specifically, Judge Robinson noted that there are “eleven cases pending between the parties,” which are “direct competitors and are in a race to develop bio-isobutanol technology.” Id. at 4. Further, as Judge Robinson explained, “the covenant not to sue casts a cloud over [defendant’s] research efforts,” noting that the parties “already disagree[d] “on how to interpret ‘Accused Technologies’ in the covenant not to sue.” Id. at 4 & n.5.That is, there was disagreement on whether the covenant covered “future commercial strains” with a “different genetic background.” Id. at 4. Judge Robinson additionally noted that defendant stated “that it will likely resume using the alleged infringing strains if the litigation is resolved in its favor.” Id.

While a “justiciable controversy” was found in these “unusual circumstances,” Judge Robinson did not intend the “memorandum to commend [defendant’s] decision to oppose dismissal or the parties’ inability to find a non-litigation oriented means to pursue their technology interests.” Id. at 5 & n.6.

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December 13, 2013

Judge Robinson clarifies decision that invalidated patent

In Arcelormittal France, et al. v. AK Steel Corporation, et al., C.A. Nos. 10-050, 13-685-SLR and Arcelormittal France, et al. v. Severstal Dearborn, LLC, et al., C.A. No. 13-686-SLR (D. Del. Dec. 5, 2013) (“Clarification Opinion”), Judge Sue L. Robinson clarified that the Court’s prior opinion granting defendants’ motion for summary judgment in C.A. No. 10-050 (“Summary Judgment Opinion”) did invalidate plaintiff’s entire reissue patent as violative of 35 U.S.C. § 251(d).

“In response to the court’s request that the parties identify any issues pertaining to [C.A. No. 10-050-SLR]’s related cases, [plaintiff sought] to clarify the court’s invalidity ruling, specifically asking whether the court invalidated the entire reissued patent or whether [dependent] claims 24 and 25 remain valid.” Clarification Opinion at 1. On summary judgment, defendants had argued that claims 1-23 of the reissue patent were invalid as violative of Section 251(d), but not claims 24 and 25. See Summary Judgment Opinion at 9. However, the Court confirmed that the entire patent was invalid, explaining that allowing these two claims to stand would “end-run the consequences of violating 35 U.S.C. § 251(d).” Clarification Opinion at 2. “If dependent claims 24 and 25 are not invalidated, [plaintiff] would have successfully accomplished, through the addition of claims, what the Federal Circuit prohibited in [Quantum Corp. v. Rodime, PLC, 65 F.3d 1577 (Fed. Cir. 1995), on which the Court relied in its Summary Judgment Opinion], i.e., retaining the original scope of its claims. As a matter of policy, such a consequence would encourage applicants to circumvent unfavorable litigation outcomes, thereby burdening both the PTO and the courts with competing administrative and judicial submissions.” Id.

Because the Court had found the entire patent invalid, and C.A. No. 10-050-SLR’s related actions (Nos. 13-685 and 13-686) involved infringement of claims 24 and 25, the Court would also enter judgment for defendants in those actions. Id. at 2 n.4.

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December 6, 2013

Judge Robinson grants motion for summary judgment of non-infringement.

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.

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December 6, 2013

Judge Robinson denies defendant’s request to claw back documents in ANDA litigation

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.

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