October 11, 2013

Jury returns verdict of no infringement in Vehicle IP, LLC v. Werner Enterprises, Inc., C.A. No. 10-503-SLR

In Vehicle IP, LLC v. Werner Enterprises, Inc., C.A. No. 10-503-SLR (D. Del. Oct. 1, 2013), the jury returned a verdict finding that plaintiff had not proved that defendant's system infringed the asserted claims of the patent in suit and that defendant had not proved that the same claims were invalid due to lack of enablement. Prior to trial, Judge Robinson precluded defendant from arguing at trial an untimely raised invalidity theory, and an untimely raised non-infringement theory. Prior to trial, Judge Robinson also granted summary judgment of non-infringement as to certain claims.

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October 10, 2013

Judge Robinson addresses position on early summary judgment motions, does not bifurcate damages and willfulness

In a recent Order, Judge Sue L. Robinson “confirm[ed]” her position on early summary judgment:

“The court will not entertain motions for summary judgment before the close of discovery unless: (a) the parties stipulate to the underlying facts of a dispute [either by agreement or presumption] (turning the exercise into resolving a question of law); or (b) the issue in dispute is dispositive, meaning that the court’s decision (regardless of its outcome) becomes the law of the case.”

In re: Automated Transaction LLC Patent Litigation, MDL Civ. No. 13-2429-SLR, at 1 (D. Del. Oct. 8, 2013). As to (b), the Court explained that it had “neither the time nor the resources to engage in multiple summary judgment exercises per case.” Id.

Additionally, plaintiff had requested that damages and willfulness not be bifurcated, as is Judge Robinson’s standard practice. The Court granted this request, “given the MDL status of this litigation.” Id. at 1.

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October 9, 2013

Judge Robinson grants motion to strike paragraph of plaintiff’s answer to counterclaims

In a recent Memorandum Order, Judge Sue L. Robinson granted defendant’s motion to strike a paragraph of plaintiff’s answer to defendant’s counterclaims. Netgear, Inc. v. Ruckus Wireless, Inc., C.A. No. 10-999-SLR (D. Del. Oct. 2, 2013). The paragraph contained “a litany of ‘admissions’ which go far beyond defendant’s description of” the technology at issue contained in its counterclaim allegations. Id. at 3-4. Furthermore, “[p]laintiff's answer includes material that was the subject of motions for summary judgment and claim construction,” including assertions that were grounded in disputed constructions of a claim term. Id. at 4-5. The Court explained that “[p]laintiff cannot legitimately argue that the material contained in [the paragraph] is not improper and goes far beyond the scope of defendant's allegation. Plaintiff’s ‘admissions’ contain issues of material fact over which the parties’ experts disagree. To allow plaintiff's answer to stand as written would cause prejudice to defendant by misrepresenting the record.” Id. at 5. As a result, the Court granted the motion to strike this paragraph of plaintiff’s answer.

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October 7, 2013

Judge Robinson grants-in-part defendant’s motions for summary judgment, denies Daubert motion, and construes claim terms

In Netgear, Inc. v. Ruckus Wireless, Inc., C.A. No. 10-999-SLR (D. Del. Sept. 30, 2013), Judge Sue L. Robinson recently considered a number of motions and cross-motions for summary judgment, a Daubert motion, and construed several claim terms. The five patents-in-suit in this case are “directed to wireless communications systems, which use radio waves to communicate.” Id. at 2.

The Court denied plaintiff’s motions for summary judgment for infringement and validity, and granted-in-part defendant’s motion for summary judgment of invalidity (as to four of the patents-in-suit) and non-infringement (as to three of the patents-in-suit). In the course of construing disputed claim terms, the Court found a number of claim limitations, across four patents-in-suit, indefinite. The Court therefore granted summary for invalidity as to the asserted claims of these four patents. Because “the court [could not] complete a meaningful infringement analysis” and because the claims were invalid, the Court additionally granted summary judgment for non-infringement of three of these patents. See, e.g., id. at 24 n.2.

The Court also considered other invalidity arguments with regard to U.S. Patent Nos. 6,621,454 (the ‘454 Patent), 7,263,143 (the ‘143 Patent), and 5,507,035 (the ‘035 Patent). As to the ‘454 Patent, the Court denied competing motions for summary judgment as to enablement because the plaintiff had offered “some” evidence of support for the limitation in the claim at issue, and therefore genuine issues of material fact remained. Id. at 34-35. The Court also denied plaintiff’s motion for summary judgment of no invalidity due to obviousness and/or anticipation because genuine issues of material fact remained. Id. at 36. As to the ‘143 Patent, defendant argued the asserted claims did not meet the requirements of 35 U.S.C. § 101, but the Court concluded that the defendants had not identified clear and convincing evidence of invalidity under this section. Id. at 40. The Court also denied competing summary judgment motions on invalidity of the ‘143 Patent for lack of written description. Id. at 40-42. Finally, as to the ‘035 Patent, the Court concluded that it did not recite patent eligible subject matter under § 101: “[t]he '035 patent is an abstract idea, a strategy which consists of making random selections over multiple attempts, determining whether the attempt is successful and, if not, trying again. That the strategy is limited to the field of antenna diversity does not transform the abstract subject matter into patent eligible subject matter. . . . Moreover, the reference in the patent to a controller and means to accomplish certain functions does not supply an inventive concept that represents a nontrivial, nonconventional human contribution or materially narrows the claims relative to the abstract idea they embrace. . . . The recited means are also not indispensable to the claimed strategy.” Id. at 48-49 (internal citations and quotation marks omitted).

Defendant had moved to exclude the testimony of plaintiff’s expert regarding the source code related to the patents-in-suit, arguing that “he did not review the entirety of the source code, rather, he reviewed selections of source code provided to him by counsel” and because the expert did not test any accused infringing products. Id. at 49-50. The Court denied this motion because the expert “was not required to test the accused products. Defendant has not shown that [the expert's] testimony is based on unreliable sources, indeed, it is based on defendant's source code and the testimony of defendant's witnesses. Defendant's concerns go to the weight of the testimony and may properly be addressed on cross-examination.” Id. at 50.

Finally, the Court construed a number of disputed terms across the five patents-in-suit. As noted above, the Court concluded that several disputed terms were indefinite. Having found that other terms were not indefinite, the Court construed those terms:

“[O]ptimal conditions,” id. at 18-20;

“[M]eans, responsive to said conditions, for selecting at least one of said beams having one of said orthogonal polarizations for data transmissions from said first transmitter,” id. at 22-23;

“[M]eans to analyze the topology broadcast messages and enter in said topology table the network addresses of the wireless node transmitting the topology broadcast message and network addresses of other nodes contained in the topology broadcast messages; and,” id. at 25-26;

“[M]ultibeam antenna,” id. at 32-33;

“[S]canner,” id. at 33 (defendant argued this was means-plus-function limitation and moved for summary judgment for invalidity for indefiniteness; the Court concluded that this was was not a means-plus-function limitation and denied summary judgemnt. Id. at 33 n.10);

“[P]eriodicity,” id. at 33 & 38;

“[A] data transmission antenna pattern with a null in the direction of said interference,” id. at 33-34;

“[G]ain control circuit,” id. at 37;

“[R]eceiver gain,” id.

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October 3, 2013

Judge Robinson precludes defendant from raising untimely non-infringement arguments at trial

In a recent order, Judge Sue L. Robinson found that defendant’s “non-infringement arguments relating to the limitations in claim 1 . . . , having been proposed for the first time in [defendant’s expert’s] June 14, 2013 Rebuttal Report and [the expert's] September 16, 2013 Supplemental Report . . . , may not be raised at trial.” Vehicle IP, LLC v. Werner Enterprises, Inc., C.A. No. 10-503-SLR (D. Del. Sept. 20, 2013). As Judge Robinson explained, “the non-infringement arguments in dispute were introduced for the first time through [defendant’s] expert without any of the underlying factual bases being vetted through fact discovery.” Id. at 1. For instance, Judge Robinson found certain arguments were waived because they were not “raised in response to plaintiff’s infringement contentions,” and were raised for the first time in the defendant’s expert’s Rebuttal Report. Id. at 2. Judge Robinson also found other non-infringement arguments waived because they were not raised during claim construction, or were inconsistent with the Court’s claim construction and were raised for the first time in the expert’s Supplemental Report. Id.

In a footnote, Judge Robinson explained that “[w]hile expert discovery is part of the discovery process, it is the part where the experts opine on the facts vetted during fact discovery; the facts vetted during fact discovery are those identified as relevant to the parties’ respective contentions. By not timely identifying its non-infringement contentions, defendant has turned the process on its head, to the detriment of both the court and the plaintiff.” Id. at 1 n.1

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September 19, 2013

Judge Robinson denies plaintiff’s motion for reargument

In a recent memorandum opinion, Judge Sue L. Robinson denied plaintiff’s motion for reargument pursuant to Local Rule 7.1.5 regarding claim construction and related summary judgment holdings for U.S. Patent No. RE 39,231 (“the ‘231 Patent”). MobileMedia Ideas, LLC v. Apple, Inc., C.A. No. 10-258-SLR-MPT (D. Del. Sept. 5, 2013). Specifically, plaintiff asserted that “given the rules of claim construction, [the court’s] constructions essentially read out the subject matter of asserted dependent claim 2,” and reargument was therefore warranted. Id. at 5. Denying plaintiff’s motion for reargument, Judge Robinson explained that plaintiff “seeks reargument solely on the basis that the court made an error not of reasoning but of apprehension; it asserts that such an error arose when the court construed claim 12 to exclude the subject matter of dependent claim 2.” Id. at 6. Judge Robinson noted that “the court considered the relationship between claims 12 and 2.” Id. Judge Robinson further explained that the “grounds asserted for reargument merely constitute [plaintiff’s] disagreement with the court’s conclusions and rehash [plaintiff’s] claim construction and summary judgment arguments.” Id. Plaintiff did not identify “any change in law, new evidence, or error in apprehension.” Judge Robinson thus denied plaintiff’s motion for reargument regarding the ‘231 Patent. Id.

Judge Robinson then noted that “the court recognizes that its intention may be subject to misinterpretation and, as such, will clarify its summary judgment memorandum opinion and order regarding the ‘231 patent.” Id. Regarding the construction of claim 2, Judge Robinson explained “the limitation ‘to change a volume of the generated alert sound’ [from independent claim 12] is not interchangeable with, or encompassing of, ‘to stop the sound[]’ [from dependent claim 2]. The specification of the ‘231 patent does not disclose a device with the option of either stopping an alert sound or changing its volume.” Id. at 7. Judge Robinson further noted that “[t]he fact that, on reexamination, the patentee did not follow normal drafting protocol to make the new independent claims inclusive of some of the dependent claims - as opposed to those dependent claims being narrower and in alternative form - is not a problem the court can remedy.” Id. at 8.

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September 16, 2013

Judge Robinson Construes Terms of Fuel Tax Patent, Grants Summary Judgment of Noninfringement of Certain Claims

We previously reported on Judge Robinson’s decision to preclude an untimely invalidity theory in Vehicle IP v. Werner Enterprises. On the same day as that decision, Judge Robinson also issued rulings on claim construction and summary judgment, including a ruling that the defendant’s motion for summary judgment of invalidity was moot given the court’s preclusion decision. The patent-in-suit relates to methods and systems for automatically determining the fuel taxes owed to various states by a truck owner whose trucks travel on those states’ roads. Judge Robinson first construed the following terms of the patent-in-suit:
- “Automatically”
- “Determine a tax in response to the distance traveled by the vehicle within the region”
- “Determining the tax in each [of the two] taxing region[s] in response to the predetermined vehicle positions”
- “Dispatch”
- “Distance”
- “Position fix[es]”
- “Generating geographic information”
- “Generating a table” / “referencing a table”
Vehicle IP, LLC v. Werner Enterprises, Inc., C.A. No. 10-503-SLR, Memo. Op. at 13-34 (D. Del. Sept. 9, 2013).

Judge Robinson then considered cross motions for summary judgment of infringement and noninfringement of two asserted claims. Whether Judge Robinson could grant summary judgment for these claims turned on whether the accused system calculated taxes owed “without the need for any human intervention.” Because the “court’s construction differ[ed] from both parties’ proposed constructions and, given the complexity of the accused system, the court [could not] determine at the summary judgment stage” that this was the way the accused system operated. With respect to several other claims, however, Judge Robinson found that there was sufficient factual information to determine that the accused system did not “directly use predetermined vehicle position information.” She therefore granted summary judgment of noninfringement with respect to those claims. Id. at 40-44.

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September 11, 2013

Judge Robinson’s Preclusion of Untimely Invalidity Theory – A Cautionary Tale for Completeness of Final Contentions

In Vehicle IP LLC v. Werner Enterprises Inc., 10-cv-503-SLR (D. Del. Sept. 9, 2013), Judge Robinson granted plaintiff’s motion in limine to preclude defendant’s evidence of invalidity regarding alleged use of the accused system before the priority date of the asserted patent. Despite disclosing the prior use of the accused system on an early list of potential prior art references and including some elements of the theory in final interrogatory responses, Judge Robinson found that defendant “consciously disavowed this theory by removing it from its March 25, 2013 final invalidity contentions,” which lead plaintiff to “complete[] fact discovery under the premise that [defendant] would not be asserting any theory of invalidity based on the [alleged prior-use of the accused system].” Defendant’s revival attempt through an expert report, “substantially devoted to the [prior-use] theory,” served less than two months after service of the final invalidity contentions, was unavailing.

Judge Robinson also alluded to her prior order limiting the number of prior art references or combinations that could be asserted per claim in the final invalidity contentions. Defendant challenged whether the prior-use system should be considered a “reference” for purposes of the limiting order and final contentions because the prior-use system is only applicable to the case if it’s later use as the accused system is deemed to infringe. This too was unavailing.

Practitioners should note that Judge Robinson’s orders limiting the number of invalidity references are intended to apply to all prior art evidence, including non-publication prior art such as prior-use evidence. This ruling should also serve as a cautionary reminder to practitioners to serve thorough and complete “final” contentions before the close of fact discovery or risk preclusion.

Vehicle IP LLC v. Werner Enterprises Inc., 10-cv-503-SLR (D. Del. Sept. 9, 2013)

September 10, 2013

Judge Robinson grants-in-part defendant’s motion for judgment as a matter of law following verdict in plaintiff’s favor

In MobileMedia Ideas, LLC v. Apple, Inc., C.A. No. 10-258-SLR-MPT (D. Del. Sept. 5, 2013), Judge Sue L. Robinson granted defendant’s renewed motion for judgment as a matter of law with respect to invalidity and non-infringement of one patent-in-suit and with respect to invalidity of one claim of another patent-in-suit, and denied the motion in all other respects.

Following a seven-day jury trial in 2012, the jury found direct infringement and validity of the three patents-in-suit. Id. at 1. Defendant renewed its motion for judgment as a matter of law that the asserted claims of the three patents-in-suit were invalid and not infringed. Id. The three patents-in-suit (the ’075, ‘068, and ‘078 patents) “relate to a variety of technologies in information processing, computing, and mobile phones.” Id. at 3.

As to the ‘075 patent, entitled “Method and Apparatus for Incoming Call Rejection,” the Court found that its asserted claims were invalid. There was no dispute that two prior art references disclosed the limitations of the asserted claims, but the parties disputed whether there was sufficient motivation to combine them. Id. at 18. The Court concluded that the plaintiff’s expert had “only offered conclusory testimony” to rebut defendant’s evidence and testimony that a person of ordinary skill would have found it obvious to combine these references. Id. at 19. “In addition, [plaintiff’s] infringement theory conflicts with [its invalidity expert’s] opinion.” See id. at 20-21. Therefore, the Court concluded that “even if the jury had resolved all disputed facts in [plaintiff’s] favor, the evidence could not support a finding” of validity. Id. at 22. As to infringement, the Court also granted defendant’s motion because plaintiff had not presented sufficient evidence to support its infringement theory. See id. at 22-27.

As to the ‘068 patent, entitled “Communication Terminal Device and Method for Controlling a Connecting State of a Call into a Desired Connection State upon a Predetermined Operation by a User,” the Court found one asserted claim valid (Claim 23) and the other asserted claim invalid (Claim 24). Defendant’s anticipation arguments as to Claim 23 were grounded in “an untimely claim construction argument,” and the plaintiff’s expert testimony had provided sufficient support for the jury’s finding of validity. Id. at 35. But for Claim 24, unlike for Claim 23, the parties had identified a relevant “pre-trial dispute in their joint claim construction chart . . . [therefore] the court has a duty to resolve [the dispute].” Id. at 36. The Court went on to clarify the construction of a relevant term, id. at 37, and concluded that the jury’s verdict of validity of Claim 24 was “inconsistent” with the Court’s construction of the term. Id. at 38. As to infringement of the ‘068 patent, the Court denied defendant’s motion. See id. at 38-45. The Court also denied the motion as to infringement and validity of the ‘078 patent, entitled “Device for Personal Communication, Data Collection and Data Processing, and a Circuit Card.” See id. at 47-56.

Finally, the Court denied defendant’s motion for a new trial in the alternative. See id. at 56-62. Defendant argued, inter alia, that plaintiff’s statements at closing arguments that companies from whom it obtained patents “decide to invest in patents to recover research and development costs” were directed to damages and therefore improper as damages had been bifurcated. Id. at 57. The Court concluded that the statements were not directed to damages, but Instead were “used to explain what [plaintiff] does as a non-practicing entity”, and were therefore not improper. Id. at 57-58.

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August 19, 2013

Judge Robinson orders plaintiff to show cause why it should not be sanctioned for prosecution of allegedly frivolous, eventually withdrawn infringement claim.

Judge Robinson recently granted a motion to dismiss a § 285 counterclaim for attorneys’ fees relating to an allegedly frivolous and eventually withdrawn claim, but ordered the plaintiff to show cause why it should not be sanctioned under Rule 11 for its prosecution of that claim. Technology Innovations, LLC v. Amazon.com, Inc., Civ. No. 11-690-SLR (D. Del. Aug. 15, 2013). The plaintiff alleged infringement of two patents, one of which (the ‘407 patent) previously had been asserted in the Southern District of Texas. The defendant claimed that during the course of the litigation in Texas, the plaintiff agreed not to pursue the ‘407 infringement claim because of the “high unlikelihood of infringement.” Id. at 1-2. As a result, when the plaintiff asserted the '407 infringement claim in Delaware, the defendant moved for Rule 11 sanctions. Id. The Court denied that motion without prejudice as premature (previously discussed here). Almost a year later, after the defendant answered, filed counterclaims, and engaged in discovery regarding the ‘407 patent, the plaintiff amended its complaint to remove allegations relating to the ‘407 patent and to provide an affirmative statement of non-liability with respect to that patent. Id. at 2. The defendant answered and asserted a counterclaim under § 285 for attorneys’ fees in connection with the plaintiff’s continued prosecution of the withdrawn allegations. The plaintiff then moved to dismiss that counterclaim.

The Court reviewed the history of § 285, and cases applying it, and concluded that § 285 attorneys’ fees “can only be awarded after the substantive issues in the case have been resolved and the prevailing party has been determined.” Id. at 7. The Court therefore granted the motion to dismiss the § 285 counterclaim, since the “prevailing party” could not be determined until the claims relating to the other asserted patent were tried. Id. at 8. However, the Court noted that “Rule 11 is not circumscribed by the time-oriented limitations of § 285.” Id. at 8. Because the plaintiff continued to assert the ‘407 patent for nearly a year after the Court denied without prejudice the original motion for Rule 11 sanctions, the defendant was forced to respond to the complaint, file counterclaims, and engage in discovery during that time. As a result, Judge Robinson ordered the plaintiff to show cause why its filing of the eventually withdrawn '407 patent infringement claim was not sanctionable under Rule 11. Id at 9.

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