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Magistrate Judge Christopher J. Burke recently issued a Report and Recommendation on claim construction, construing terms and applying the doctrine of issue preclusion with regard to the proper function for one term in dispute.  Princeton Digital Image Corporation v. Konami Digital Entertainment, No. 12-1461-LPS-CJB (D. Del. June 16, 2017).  Defendants argued that issue preclusion applied because during prior inter partes review proceedings, plaintiff argued for a function for the term that it now opposes before this court.  Id. at 6-7.  Judge Burke agreed:

The Federal Circuit has recently explained that “administrative decisions by the [PTAB] can ground issue preclusion in district court when the ordinary elements of issue preclusion are met[.]” SkyHawke Techs., LLC v. Deca Int’l Corp., 828 F.3d 1373, 1376 (Fed. Cir. 2016). Issue preclusion (often referred to as the doctrine of “collateral estoppel”) applies when “(1) the identical issue was previously adjudicated; (2) the issue was actually litigated; (3) the previous determination was necessary to the decision; and (4) the party being precluded from relitigating the issue was fully represented in the prior action.” Fairchild Semiconductor Corp. v. Power Integrations, Inc., C.A. No. 12-540-LPS, 2015 WL 1905871, at *1 (D. Del. Apr. 23, 2015) (quoting Jean Alexander Cosmetics, Inc. v. L ‘Orea! USA, Inc., 458 F.3d 244, 249 (3d Cir. 2006)).

Id.at 8.  All prongs of the test were met because the PTAB previously adjudicated the issue of the proper function for the term in question, the PTAB adopted the function using the same standard for claim construction applicable in this case, and the Final Written Decision was a “final and valid judgment.”  Id. at 8-9.

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Judge Richard G. Andrews recently denied the parties’ joint request to modify the case schedule, without prejudice to be renewed as directed in the Court’s order.  AstraZeneca LP v. Sigmapharm Laboratories, LLC, No. 15-1000-RGA (D. Del. June 9, 2017).  In particular, the Court noted that the bases for the parties’ request, the complexity of the case and the change in counsel of several defendants, should not require a continuance of the trial and pretrial conference dates.  Therefore, Judge Andrews would extend the close of fact discovery, subject to the parties either expediting expert discovery or forgoing Daubert motions so that the trial schedule could be maintained.

AstraZeneca LP, et al. v. Sigmapharm Laboratories, LLC, et al., C.A. No. 15-1000-RGA

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Judge Richard G. Andrews recently considered plaintiff’s motion to compel third party Broadcom to produce documents in response to a subpoena.  TQ Delta LLC v. 2Wire Inc., No. 13-1835-RGA (D. Del. June 13, 2017).  Broadcom opposed the motion arguing that plaintiff was required to file the motion in the district where compliance was required, i.e., the Central District of California.  Id. at 2.  Judge Andrews agreed. “While the Rules specifically provide for jurisdiction here, in the district where the litigation is pending, for issuance of the subpoena, they vest jurisdiction over compliance with the subpoena in the ‘district of compliance.'”  Id. at 3.  Because Broadcom is a California corporation with its principal place of business in Irvine, California, there was “no reasonable basis for Plaintiff to believe that the District of Delaware was the proper jurisdiction for Plaintiff’s motion.”  Id.  Judge Andrews also ordered briefing on Broadcom’s request for attorneys’ fees for having to oppose the motion.  Id. at 3-4.

TQ Delta v. 2Wire Inc., No. 13-1835-RGA (D. Del. June 13, 2017)

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Judge Sue L. Robinson recently granted in part a motion for judgment as a matter of law on damages “because defendant did not present opinion testimony from an expert witness on damages, and ‘the amount of damages has not been put in dispute.'”  Ironworks Patents, LLC v. Apple, Inc., Civ. No. 10-258-SLR (D. Del. June 12, 2017).  The motion sought an increase in the $3 million damages awarded by the jury to $17.9 million, the amount proposed by the plaintiff’s expert and unrebutted by any defense expert.  The defendant argued that because the burden of proving damages was on the plaintiff, it was not required to “disprove” the damages theory of the plaintiff’s expert.  The Court explained, though, that “once a plaintiff has come forward with ‘reliable and sufficient evidence’ supporting its damages theory, the burden shifts to the defendant.  Id. at 24.  Here, the defendant failed to rebut the plaintiff’s damages theory through actual expert evidence (as opposed to attorney argument).  The jury’s award of $3 million, the Court found, was below the lowest amount discussed by the plaintiff’s expert, which the Court found was supported by sufficient evidence.  Id. at 27.  The Court therefore adjusted the damages award to $8,940,544, the lowest amount discussed by the plaintiff’s expert.  Id.

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In B. Braun Melsungen AG, et al. v. Becton, Dickinson and Company, et al, C.A. No. 16-411-RGA (D. Del. June 9, 2017), Judge Richard G. Andrews recently denied a motion for judgment on the pleadings seeking to invalidate three asserted patents based on a fourth asserted patent claimed to be 102(b) prior art.  The defendants’ motion was premised on the argument that the three patents were not entitled to a priority date earlier than the fourth asserted patent because, while the three patents included reference to prior-filed applications, “[w]hat was missing in each application was the relationship between the applications and the chain of priority.”  Id. at 4.  The plaintiffs successfully obtained certificates of correction to address these relationships, but the defendants argued that such an error could not be corrected by a certificate of correction without re-examination, and therefore the certificates of correction were invalid and the patents were not entitled to the earlier priority dates.  Id.  Judge Andrews disagreed, and found that the “changes made by the certificate of correction were ‘of a minor character'” and did not require re-examination.  Id. at 5-6.  The Court noted further that the PTO “has a long-standing practice of correcting priority claims through certificates of correction.”  Id. at 7. As a result, the Court could not find that the defendants proved by clear and convincing evidence that the certificates of correction were invalid in denying the motion for judgment on the pleadings.

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Chief Magistrate Judge Mary Pat Thynge recently issued a Report and Recommendation regarding plaintiff’s motion to dismiss defendant’s counterclaims for sham litigation, violation of the Sherman Act, Robinson-Patman Act, and unfair practices under state law.  Varentec, Inc. v. Gridco, Inc., No. 16-217-RGA-MPT (D. Del. June 6, 2017).  Judge Thynge found that defendant failed to adequately plead these claims, but recommended that plaintiff’s motion be granted without prejudice as Judge Thynge could not determine on the current record whether amendment would be futile.  Id. at 7-25.

Varentec, Inc. v. Gridco, Inc., No. 16-217-RGA-MPT (D. Del. June 6, 2017)

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In Paltak Holdings, Inc. v. Riot Games, Inc., C.A. No. 16-1240-SLR (D.Del. May 15, 2017), Judge Sue L. Robinson denied Defendant’s motion to dismiss due to lack of patentable subject matter. The patents-in-suit “related to distribution of messages between computers in interactive environments, such as online gaming,” and Defendant argued they were directed to the abstract idea of “group communication that uses an agent to aggregate those communications for delivery.” Id. at 1, 4. The Court disagreed, finding the claims distinguishable from claims previously held unpatentable by the Federal Circuit. Id. at 8. In addition to agreeing with Plaintiff that the claims were not directed to an abstract idea, the Court also observed that Defendant had not carried its burden to show an abstract idea because the comparisons it attempted to draw would require consideration of matters outside the pleadings. Id. at 8-9.

Paltak Holdings, Inc. v. Riot Games, Inc., C.A. No. 16-1240-SLR (D.Del. May 15, 2017)

 

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In Judge Sue L. Robinson’s claim construction opinion in C.R. Bard, Inc. et al. v. Angiodynamics, Inc., C.A. No. 15-218-SLR-SRF (D. Del. May 19, 2017), the Court held that the preambles found in the asserted patents were limiting, namely, “an assembly for identifying a power injectable vascular access port, comprising “; “a method of performing a power injection procedure, comprising”; and “a system for identifying a power injectable vascular access port.”

Here, “given the undisputed focus of each of the asserted patents is on how to identify or use a power injectable vascular access port, the Federal Circuit’s decisions in On Demand Machine Corp. v. Ingram Industries, Inc., 442 F.3d 1331 (Fed. Cir. 2006) and Corning Glass Works v. Sumitomo Electric U.S.A., Inc., 858 f.2d 1251 (Fed. Cir. 1989), resonate most directly to the facts at bar” in that the preambles “’serve[d] to focus the reader on the invention that is being claimed’ and ‘state[d] the framework of the invention,’” and gave “life and meaning” to the inventions claimed. Id. at 2. Citing the patent, the Court observed that “the inventors . . . recognized that (1) power injection procedures require a vascular port structured to accommodate the fluid flow rate and pressure rates of such a procedure; and (2) it was important to identify the access port as being structured for power injection. . . . As the court understand the claims at issue, then, the focus is on how to make a power injectable vascular access port identifiable, not necessarily on how to make a power injectable vascular access port.” Id.

C.R. Bard, Inc. et al. v. Angiodynamics, Inc. (D. Del. May 19, 2017)

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The United States District Court for the District of Delaware today announced a new procedure for the assignment of cases to visiting judges in light of the District’s two District Judge vacancies. The Court’s announcement includes the following key points:

1. The Clerk of Court will immediately start reassigning a portion of Senior Judge Robinson’s cases to a visiting judge, with the majority of the remainder of her cases to be reassigned once she retires in July.

2. All new civil cases will continue to be assigned to Chief Judge Stark, Judge Andrews, Senior Judge Sleet, and the Vacant Judgeship docket.

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Judge Andrews recently issued a claim construction decision in this case, which included construction of several means-plus-function limitations which were found to be indefinite as well as limitations which were found not to be means-plus-function limitations or were not indefinite despite being claimed in means-plus-function format.

Judge Andrews found that a “JavaScript cookie” described in the specification of the patent-in-suit could not be the structure of a § 112(f) claim, as argued by the plaintiff, because it “does not have a role until after the preconditions [of the claimed function] are met. The JavaScript cookie, therefore, is not the structure performing the function . . . . Thus, this is a means-plus-function term with no corresponding structure, and the claim is therefore indefinite.” Sound View Innovations, LLC v. Facebook, Inc., C.A. No. 16-116-RGA, Memo. Op. at 16-20 (D. Del. May 19, 2017). Judge Andrews also found that a separate claim term was indefinite under § 112(b) because it was an apparatus claim that recites a method step and a person of ordinary skill would not know “if the apparatus itself would infringe or if the apparatus would have to be used in a certain way to infringe.” Id. at 20-24.

For the term “an aging controller that monitors a measurable characteristic of said memory and deletes ones of said multiple versions of said ones of said data records in response to said time stamp and said measurable characteristic thereby to increase a capacity of said memory,” Judge Andrews found that no construction was necessary because Defendant did not overcome the presumption that the term, which does not use the word “means,” is not subject to § 112(f). Specifically, Defendant did not prove that the word “controller” is a functional term or nonce term lacking in structure. Id. at 9-12. Judge Andrews also found terms that included the word “means” and were subject to § 112(f) were not indefinite. Id. at 13-16.

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