March 29, 2013

Judge Robinson Denies Motion to Sever, Transfer to District of Kansas

Judge Robinson recently denied a patent infringement declaratory judgment defendant’s motion to sever and transfer venue to the District of Kansas. Plaintiff Cox filed a declaratory judgment action in the District of Delaware regarding twelve patents owned by Sprint. Cox filed that action after Sprint had filed infringement suits related to the same twelve patents against Cox and three other defendants in the District of Kansas. In the declaratory judgment suit, Cox also asserted infringement by Sprint of two of its patents, and Sprint answered and asserted counterclaims for infringement of seven additional Sprint patents. Sprint then filed a motion to sever and transfer to the District of Kansas, where Sprint alleged it had previously litigated five of the patents-in-suit and had relevant witnesses and documents. The Judge in Kansas then found that the District of Kansas did not have personal jurisdiction over Cox and that the case should be transferred to Delaware, but the parties did not indicate that this mooted the motion to transfer before the Delaware court. Accordingly, Judge Robinson considered the motion to transfer the Delaware action to Kansas. See Cox Comms. Inc. v. Sprint Comms. Co., C.A. No. 12-487-SLR, Memorandum Order at 1-2 (D. Del. Mar. 27, 2013).

Judge Robinson first found that “exceptional circumstances . . . warrant[ed] departure from the first-to-file rule.” The case, she explained, “is unusual in that the alleged first-filed case, the Kansas litigation, has been transferred to this court. Accordingly, that litigation would be streamlined by having this court also resolve the declaratory judgment claims related to the same patents.” Id. at 4.

Judge Robinson then considered transfer pursuant to § 1404. Relying on her decision in Helicos Biosciences Corp. v. Illumina, Inc., 858 F. Supp. 2d 367 (D. Del. 2012), Judge Robinson observed that a defendant’s state of incorporation—here Delaware—has always been a “predictable, legitimate venue for bringing suit” and that a “plaintiff’s choice of venue should not be lightly disturbed.” Id. at 5 (citations omitted). Accordingly, after considering all of the Third Circuit’s Jumara transfer factors and because “the Kansas litigation has been transferred [to Delaware], the court [found] that the Jumara factors do not weigh in favor of transferring the Cox . . . declaratory judgment claims back to Kansas.” Id. at 6-8. Despite the three other Sprint cases remaining in Kansas, Judge Robinson determined that given “the transfer of [the Cox] case and the Kansas court’s lack of personal jurisdiction over Cox Communications, Sprint [had not] carried its burden of persuading the court, by a preponderance of the evidence, that the Jumara factors favor transfer.” Id. at 9.

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March 22, 2013

Judge Robinson rules on summary judgment motions involving patented biological method of producing isobutanol.

Judge Sue L. Robinson recently issued a memorandum opinion granting summary judgment of invalidity for lack of written description and no infringement under the doctrine of equivalents of a patented method of producing isobutanol using genetically-engineered yeast microorganisms aimed at reducing greenhouse gas emissions. Butamax™ Advanced Biofuels LLC v. Gevo, Inc., Civ. No. 11-54-SLR (D. Del. Mar. 19, 2013). Before addressing the merits of several competing summary judgment motions, the Court construed the disputed claims as follows:

“acetohydroxy acid isomeroreductase” was construed to mean “an enzyme known by the EC number 1.1.1.86 that catalyzes the conversion of acetolactate to 2,3-dihydroxyisovalerate and is NADPH-dependent”

“a recombinant yeast microorganism expressing an engineered isobutanol biosynthetic pathway” was construed to mean “a recombinant yeast microorganism that is genetically transformed such that it expresses the five enzymes that form the biosynthetic pathway described hereafter for the production of isobutanol, wherein one or more of those enzymes is recombinantly expressed”

“(pathway step a;…(pathway step b);…,” etc. was construed to mean “the pathway of steps a-e are contiguous steps such that the product of step a is the substrate for step b; the product of step b is the substrate for step c; etc.”

“The microorganism produces isobutanol as a single product” was construed to mean “[t]he microorganism produces isobutanol without substantial amounts of other fermentation products”

Id. at 8-23.

The Court considered, in light of these claim constructions, the parties competing motions for summary judgment on the question of infringement. The Court first explained that the plaintiff’s “evidence of infringement is less than compelling, nonetheless, . . . it [is] sufficient to withstand [the defendant’s] motion for summary judgment, as it raises genuine issues of material fact as to how a person of ordinary skill in the art at the time the invention was made would determine NADH-dependency.” Id. at 39. The Court granted, however, the defendant’s motion for summary judgment of no infringement under the doctrine of equivalents, which asserted that the defendant’s “NADH-dependent enzyme is not equivalent to an NADPH-dependent enzyme.” Id. at 39-40. In light of its claim construction, the Court disagreed with the plaintiff’s position that “the use of NADH as an electron donor is insubstantially different from the use of NADPH.” Id. at 40 (quoting D.I. 648 at 33).

The Court then considered several competing motions for summary judgment on the question of validity. The defendant argued that claim 12 (“[t]he recombinant yeast microorganism of claim 1 wherein the said microorganism further comprises inactivated genes thereby reducing yield loss from competing pathways for carbon flow”) and claim 13 (“[t]he recombinant yeast microorganism of claim 12, wherein said inactivated genes reduce pyruvate decarboxylase activity”) were invalid for lack of written description. Id. at 50-51. With regard to claim 12, the Court found that the patent “mentions inactivation of genes only once” and that “[n]one of the cited portions of the specification provide a description to one of skill in the art on how to construct a recombinant yeast microorganism with ‘inactivated genes’ to reduce ‘yield loss from competing pathways.’” Id. at 51, 52. “Although the specification may be interpreted as identifying both the . . . problem and the solution, it does not even begin to describe how to put into practice the solution.” Id. at 52. Similarly, the specification nowhere disclosed “inactivated genes” that “reduce pyruvate decarboxylase activity[,]” and the Court found that claim 13 was also invalid for lack of written description.

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March 19, 2013

Judge Robinson Considers Motion to Dismiss Claims of Indirect and Willful Infringement

Judge Sue Robinson has partially granted and partially denied a patent infringement defendant’s motion to dismiss claims of indirect and willful infringement. Consistent with her previous holding in Walker Digital, Judge Robinson found that plaintiff’s claims of both induced and contributory infringement based on notice of the patents-in-suit as of the filing date were facially plausible. Accordingly, she denied the motion to dismiss with respect to these claims of indirect infringement. With respect to willful infringement, however, Judge Robinson explained that the lack of pre-suit knowledge of the patents-in-suit was fatal to claims of willful infringement. Therefore, consistent with her past decisions, Judge Robinson granted the defendant’s motion to dismiss with respect to claims of willful infringement. See Netgear Inc. v. Ruckus Wireless Inc., C.A. No. 10-999-SLR, Memo Order at 1-3 (D. Del. Mar. 14, 2013).

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March 14, 2013

Judge Robinson issues stay pending Fed. Cir. decision on whether it has jurisdiction over appeals when damages trial remains outstanding

Judge Sue L. Robinson recently stayed, in the interest of judicial economy, its decision on the motion to amend judgment filed by defendant, pending the Federal Circuit's decision in Robert Bosch LLC v. Pylon Manufacturing (see discussion here). Asahi Glass Co., Ltd., v. Guardian Indus. Corp., C.A. No. 09-515-SLR (D. Del. Mar. 11, 2013). "The Federal Circuit is currently considering, en banc, its jurisdiction over appeals from patent infringement liability determinations when a trial on damages has not yet occurred and when willfulness issues remain outstanding." Id. A stay was appropriate because the Federal Circuit's decision would have a "direct impact" on the appealability of this case. Id.

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March 13, 2013

Judge Robinson Grants Fees for Plaintiff’s Post-Trial Inequitable Conduct Briefing

Judge Sue Robinson has ordered a patent infringement defendant to reimburse plaintiff’s attorney fees of $23,658 in connection with plaintiff having to respond to defendant’s post-trial briefing on inequitable conduct. See Asahi Glass Co. v. Guardian Indus. Corp., C.A. No. 09-515-SLR, Memorandum Order at 1 (D. Del. Mar. 11, 2013). Judge Robinson previously found that defendant’s theories of inequitable conduct “were either devoid of merit or procedurally barred” and ordered defendant to pay plaintiffs’ reasonable costs in preparing and filing their responsive brief on inequitable conduct. The parties were, however, unable to agree on the amount of plaintiffs’ fees for which defendant was responsible. Id. at 1-2.

Judge Robinson found that a “detailed and reliable reconstruction of time spent” was acceptable to support the request for 20 hours of partner attorney time on the responsive brief. She also found that because only 30.2 hours of associate time were evidenced by client invoices and there was no similar reconstruction of time, only 30.2 hours were allowable as costs, not the 40 requested by plaintiffs. Id. at 4-7. Finally, Judge Robinson found that both the amount of time spent on the brief and the hourly rates charged were reasonable in light of the length of the briefing in question, the importance and high stakes of the issue being briefed, and the prevailing market rates for intellectual property attorneys. Id. at 7-8. Because the defendant demonstrated no sufficient justification for reducing the award, Judge Robinson granted the requested partner, associate, and paralegal fees.

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February 18, 2013

Judge Robinson Denies Motion to Transfer to the Northern District of Texas

In a recent memorandum opinion, Judge Sue Robinson denied a patent infringement defendant’s motion to transfer venue to the Northern District of Texas. Plaintiff Cradle IP was incorporated in Delaware and headquartered in California, while Defendant Texas Instruments was incorporated in Delaware and headquartered in Texas. See Cradle IP, LLC v. Texas Instruments, Inc., C.A. No. 11-1254-SLR, Memo. Op. at 1-2 (D. Del. Feb. 13, 2013).

Referring to her opinion on a similar motion in Helicos Biosciences Corp. v. Illumina, Inc., 858 F. Supp. 2d 367 (D. Del. 2012) (discussed here), Judge Robinson began with “the premise that a defendant’s state of incorporation has always been ‘a predictable, legitimate venue for bringing suit’ and that ‘a plaintiff, as the injured party, generally ha[s] been ‘accorded [the] privilege of bringing an action where he chooses.’’” Cradle IP, LLC v. Texas Instruments, Inc., Memo. Op. at 2. At the same time, Judge Robinson recognized that “the Federal Circuit expects an analysis of all the Jumara factors in connections with any transfer decision,” and proceeded to address each factor in turn. Id. at 3.

Judge Robinson found that the only factor favoring transfer was the “practical considerations that could make the trial easy, expeditious, or inexpensive,” because “trial in the Northern District of Texas would be easier and less expensive for [Texas Instruments, but it] is not evident that trial in Delaware would be easier and less expensive for Cradle IP.” Id. at 8. Every other factor either weighed against transfer or was neutral (the remaining factors were: choice of forum, where the claims arise, the parties’ relative size, convenience of the witnesses, location of books and records, relative administrative difficulty, local interest in deciding local controversies, enforceability of a judgment, public policies of the fora, and the familiarity of the judge with state law). Ultimately, she found, Texas Instruments did not meet its burden of showing that Cradle IP’s choice of forum should be disturbed. Id. at 5-9.

Perhaps most significantly, Judge Robinson declined Texas Instruments’ invitation to “‘accord[] little weight [to the plaintiff’s choice of venue] because [Cradle IP’s] recent incorporation in Delaware is an article of litigation’ and . . . ‘simply a litigation vehicle for [Cradle IP’s parent corporation], designed to give it an anchor, however tenuous, to this District.’” Id. at 4. Judge Robinson explained: “many businesses and academic institutions enforce their patent rights through private companies (like Cradle IP); such a business strategy is not nefarious. The court declines to treat such non-practicing entities as anything less than holders of constitutionally protected property rights, those rights having been legitimized by the Patent & Trademark Office.” Id.

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February 18, 2013

Judge Robinson denies defendant’s motion for leave to amend its pleading with inequitable conduct affirmative defense and counterclaim

Judge Sue L. Robinson recently denied defendant’s motion “seeking to amend its answer and counterclaims to include an affirmative defense and counterclaim of inequitable conduct.” Butamax™ Advanced Biofuels LLC v. Gevo, Inc., C.A. No. 11-54-SLR, at 2 (D. Del. Feb. 13, 2013). Because defendant filed its motion three months after the scheduling order’s deadline to amend the pleadings, defendant was required to show “good cause under Rule 16(b) for its delay.” Id. at 4. Judge Robinson found that defendant had shown good cause, as the information relevant to its inequitable conduct defense and counterclaim was not produced until March 29, 2012—one day before the deadline to amend the pleadings—and defendant was required to sift through the large volume of documents produced to confirm with “particularity” its inequitable conduct theory. Id. at 5-6. Judge Robinson further found that plaintiff would not be prejudiced by this amendment, as “[i]nformation regarding its own inequitable conduct lies largely with plaintiff.” Id. at 6.

Despite these findings, Judge Robinson ultimately concluded that defendant failed to plead inequitable conduct with sufficient particularity and defendant’s amendment was therefore futile. Id. at 7-9. When pleading inequitable conduct, as Judge Robinson explained, the heightened pleading standard of Fed. R. Civ. P. 9(b) applies, which requires a party to identify “the specific who, what, when, where, and how of the material misrepresentation or omission committed before the PTO.” Id. at 4 (quoting Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1327 (Fed. Cir. 2009)). This standard requires the “knowledge” and the “intent to deceive” elements of inequitable conduct to be attributed to a specific individual. See id. at 7-8. Judge Robinson found that the “relationship between the general knowledge allegedly depicted on internal presentation slides” upon which defendant intended to rely “and the named individuals is too tenuous to show ownership of the knowledge or attribute a specific intent to deceive.” Id. at 9. That the named individuals did not withhold this general knowledge was corroborated by “the availability of such general knowledge in other publications, at least one of which was cited in the patent specifications.” Id. Accordingly, defendant’s motion for leave to amend its pleading was denied. Id.

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February 15, 2013

Judge Robinson issues protective order covering documents exchanged with plaintiff’s patent monetization consultant; orders defendant to produce paper copies of improperly redacted documents containing source code.

In a recent memorandum order, Judge Sue L. Robinson found that a plaintiff’s communications with its patent monetization consultant were properly withheld as privileged or work product protected. Walker Digital, LLC v. Google, Inc., Civ. No. 11-309-SLR (D. Del. Feb. 12, 2013). Although the patent monetization consultant clearly “was not retained to provide legal services[,]” id. at 2 n.3, the Court explained that, based on a review of an advisory services agreement and a common interest agreement, “Walker Digital and IPNav do share a common legal interest and, therefore, any Walker Digital communications protected by the attorney-client privilege or work product doctrine do not lose that protection simply because they have been disclosed to IPNav.” Id. at 2.

The Court also granted in part the plaintiff’s motion to compel the production of paper versions of materials previously produced in redacted form. The Court denied the motion to the extent it related to documents with redactions labeled “Redacted – Source Code”, finding that such redactions at least put the plaintiff on notice that the unredacted information could be accessed on the source code computer. Id. at 1 n.1. However, with respect to documents produced with unlabeled redactions, the Court explained that “Google was not justified in simply redacting the information without offering an alternative means of reviewing it. Although Google has now made the unredacted versions available on the source code computer, this effort is too little, too late, for these documents.” As a result, the Court ordered Google to produce paper versions of these documents with source code unredacted. Id. at 2.

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February 12, 2013

Judge Robinson dismisses invalidity counterclaims for failing to comply with Twombly and Iqbal and inequitable counterclaims for failing to meet the Exergen standard

Judge Sue L. Robinson recently granted-in-part Senju’s motion for partial dismissal of Apotex’s counterclaims and to strike certain affirmative defenses. Senju Pharm. Co., Ltd. v. Apotex, Inc., C.A. No. 12-159-SLR (D. Del. Feb. 6, 2013). Senju moved to dismiss Apotex's invalidity counterclaims arguing that that they were deficient because they did not recite factual support and were therefore not in compliance with Fed. R. Civ. P. 8. Id. at 6. In response, Apotex argued that “its invalidity defense is not subject to the heightened pleading standard of Twombly and Iqbal; complies with with Fed. R. Civ. P. Form 18; is pled with same level of detail as Senju’s infringement complaint; and will become more detailed as the lawsuit progresses.” Id. at 6-7. Granting Senju’s motion, Judge Robinson noted that the courts that have declined to apply Twombly and Iqbal to invalidity counterclaims have reasoned that doing so would render those court’s local patent rules “superfluous” and would be inequitable to defendants because it would impose a higher pleading burden than Form 18 requires for plaintiffs. Id. at 7. Judge Robinson found this reasoning unpersuasive, however, because the District of Delaware has not adopted local patent rules. Id. at 8. Furthermore, “Form 18 still requires that some factual underpinning be presented, [and] the fact that Form 18 . . . remains the standard for pleading infringement claims is an insufficient justification for deviating from Twombly and Iqbal for pleading other causes of action. Id. Judge Robinson did not, however, strike Apotex’s invalidity affirmative defenses because they provided fair notice as required by Fed. R. Civ. P. 8(c). “Due to the differences between Rules 8(a) and 8(c) in text and purpose, [] Twombly and Iqbal do not apply to affirmative defenses, which need not be plausible to survive.” Id. at 9-10 (citing Internet Media Corp. v. Hearst Newspapers, LLC, Civ. No. 10-690, 2012 WL 3867165, at *3 (D. Del. Sept. 6, 2012) (internal quotations omitted) (alteration in original).

Judge Robinson also dismissed Apotex’s inequitable conduct counterclaims and related affirmative defenses, with leave to amend, for failing to adequately plead those claims with the particularity required by Exergen and Therasense. Id. at 14-15. Under Exergen, Apotex was required to plead “the specific who, what when, where and how of the material misrepresentation or omission committed before the PTO.” Id. Judge Robinson found that Apotex adequately pled the “how” (“misleading the PTO regarding evidence of obviousness, secondary considerations, and the scope of the patent’s written description) and the “where” (“materials omitted in submissions to the PTO and teachings of the written description”). Id. at 15. Although Judge Robinson found that the “given the volume of materials” submitted during reexamination, the withheld documents were withheld with knowledge and intent to deceive the PTO, Apotex did not adequately plead “who” deceived the PTO. Id. at 15-16. Judge Robinson determined that Apotex’s allegations of “who” were akin to the language found to be deficient in Exergen, i.e., “Exergen, its agents and/or attorneys.” Id. at 16. Apotex’s reference to “general entities” and “the inventors” in its claims would not permit the court “to reasonably infer that any specific individual both knew of the invalidating information and had a specific intent to deceive the PTO.” Id. at 16-17. See also XpertUniverse, Inc. v. Cisco Sys., Inc., 868 F. Supp. 2d 376, 379-83 (D. Del. 2012).

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January 14, 2013

Judge Robinson Enjoins ANDA Defendant from Launching Generic Product

Judge Sue Robinson has issued an order enjoining ANDA defendant Tolmar, Inc. from launching its generic product at the expiration of the 30-month stay. See Leo Pharma A/S v. Tolmar, Inc., C.A. No. 10-269-SLR, Order (D. Del. Jan. 9, 2013). Having been advised that the stay provided by the Hatch-Waxman act expires on January 14, 2013, Judge Robinson enjoined Tolmar from launching its generic product until January 18, 2013 or until the court issues its opinion, whichever is sooner.

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