Articles Posted in Richard G. Andrews

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Judge Andrews recently issued a memorandum order ruling on the Defendants’ motion to exclude testimony of Plaintiffs’ damages expert in MiiCs & Partners, Inc., et al. v. Funai Electric Co., Ltd., et al., C.A. No. 14-804-RGA, Memo. Or. (D. Del. Dec. 7, 2017). The Defendants lodged several challenges to the Plaintiffs’ expert’s opinion. First, Judge Andrews found that, for one patent-in-suit, the expert’s use of a “5% to 10% cost-savings benefit” provided by the Plaintiffs’ technical expert “demonstrates that he properly apportioned damages and profits between the patented and unpatented features.” Id. at 4-5. For a second patent-in-suit, however, Judge Andrews found “no basis for concluding that he apportioned between the patented and unpatented features” because the “only place where [the expert] appears to consider the profit attributable to the inventions, as distinguished from unpatented features, is in his discussion of Georgia-Pacific Factor 13 . . . [which] lacks any meaningful analysis or attempt to quantify the portion of realizable profit that should be attributed to the patented feature of the smallest salable unit.” Id. at 6.

Moreover, the Defendants argued, and Judge Andrews agreed, that an unaccepted offer to license a portfolio of over 360 patents was not a reliable starting point for the hypothetical negotiation as to one patent-in-suit because it was only an offer, it was not a comparable number of patents, its timing suggested that it was litigation-influenced, and it involved different parties. Id. at 7-8.

Finally, Judge Andrews rejected the use of a “composite royalty rate,” which the Defendants characterized as “appl[ying] a royalty base that includes units accused under any asserted patent to a royalty rate with contributions from every asserted patent.” Id. at 10. This approach, Judge Andrews found, “assigns to each accused product the same per-unit royalty regardless of how many patents that product is accused of infringing.” Id. at 11. Judge Andrews also rejected several other arguments for excluding other portions of the proffered expert testimony.

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On August 24, 2017, in Ferring Pharmaceuticals, Inc. v. Teva Pharmaceuticals USA, Inc., Civ. No. 17-435-RGA, Judge Richard G. Andrews ruled that it would be inappropriate to add plaintiff’s Global Head of IP as an in-house designee under the protective order, finding that such person was a competitive decision maker.  See previous Order here.  On December 11, 2017, however, Judge Andrews changed course, granting plaintiff’s motion for reconsideration and allowing plaintiff’s designee access to Defendant’s ANDA and ANDA-related material.   Judge Andrews found that this was a close question, but credited the designee’s declaration and the fact that a “two-year post-litigation bar from relevant prosecution activities (including supervisory responsibility for those activities) ma[de] the risk of inadvertent disclosure acceptably low, while at the same time allowing [the designee] to do his job of ‘overseeing and managing this litigation.'”

Ferring Pharms Inc. v. Teva Pharms USA, Inc., No. 17-435-RGA (D. Del. Dec. 11, 2017)

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Judge Andrews recently issued an order denying defendant’s motion to strike 60 pages of briefing on three Daubert motions.  B. Braun Melsungen AG v. Becton, Dickinson and Company, No. 16-411-RGA (D. Del. Dec. 5, 2017).  Judge Andrews denied the motion because, even though he wished “Plaintiffs had exercised some judgment about which Daubert issues were worth pursuing,” there is no rule preventing Plaintiffs from filing 60 pages of briefing.  Judge Andrews added, however, that Defendants can take heart in the fact that “excessive briefing of Daubert issues is usually a sign of weakness, not of strength.”  Id. at 1.

B.Braun 16-411

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In a recent memorandum order, Judge Richard G. Andrews granted a motion for summary judgment after requesting at oral argument supplemental briefing on the proper construction of one claim limitation.  MiiCs & Partners, Inc. v. Funai Electric Co., Ltd., C.A. No. 14-804-RGA (D. Del. Dec. 1, 2017).  Judge Andrews explained that the parties’ briefing made clear that “the issue here boils down to one of claim construction,” and the Court therefore requested supplemental briefing on whether the limitation “said liquid crystal layer being divided into a plurality of regions having different orientation of liquid crystal for one of said pixel electrodes” was drawn to capability/function (which would be required for a finding of infringement), or if instead it was structural.  The Court found that “the disputed limitation is not properly understood as drawn to capability[,]” and summary judgment of non-infringement was therefore warranted.

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Judge Richard G. Andrews recently denied without prejudice a motion to dismiss for lack of patentable subject matter under 35 U.S.C. § 101.  Pacific Biosciences of California, Inc. v. Oxford Nanopore Technologies, Inc., No. 17-275-RGA (D. Del. Nov. 9, 2017).  Judge Andrews decided that, while it may be appropriate in some circumstances to decide such a motion at the pleading stage, “Plaintiff briefed the motion as though it were a summary judgment motion . . . and at argument both sides referred to an understanding of the technology and the state of the art at the time of the invention.”  Id. at 2.  Therefore, “[u]nder the circumstances of this case, and considering the technology of the patent being asserted, [the Court did] not think patent-ineligibility [wa]s something that [the Court could] fairly decide on a motion to dismiss.”  Id.

Pacific Biosciences 17-275

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Following a jury trial in E.I. Dupont de Nemours and Company v. Unifrax I LLC, C.A. No. 14-1250-RGA, in which Defendant’s product was found to infringe the asserted patent, Judge Richard G. Andrews ruled on: (1) Defendant’s renewed motions for judgment as a matter of law and request for a new trial; and (2) Plaintiff’s Motion for a Permanent Injunction, Supplemental Damages and Interest (D. Del. Sept. 12, 2017).

The Court denied Defendant’s motions. As to JMOL, the Court found that there was sufficient evidence to support the jury’s findings on infringement and no invalidity. Notably, the Court rejected Defendant’s attempt to make a new claim construction argument not presented in its Markman briefing, noting that it has “numerous opportunities to raise this specific issue prior to trial,” including during summary judgment, and had waived the argument. Id. at 3-4.  The Court also rejected the request for a new trial for the same reasons that the JMOL motion was denied.  The Court also rejected Defendant’s arguments that certain of Plaintiff’s cross-examination mislead the jury, and disagreed that the jury had been improperly instructed on conception. Id. at 5-6.

In a separate opinion addressing Plaintiff’s motion, the Court granted a permanent injunction. Irreparable harm existed where Plaintiff had shown a causal connection between Defendant’s sales and harm to Plaintiff, and where Plaintiff and Defendant were the only competitors in the relevant market: “Defendant’s predecessor . . . product was dissatisfactory to Boeing. There is evidence that the predecessor product would not have qualified under Boeing’s new specification. Defendant’s . . . product uses Plaintiffs patented flame barrier laminate design to qualify for this specification and compete in this market. Defendant is Plaintiffs only competitor in Boeing’s flame barrier laminate market. Plaintiff projected that its Nomex XF would have sales of $32 million in 2013 to 2015. Defendant’s presence in the market directly reduced Plaintiffs sales.” Id. at 3.  Money damages were inadequate where Plaintiff “would be forced to compete against a rival gaining market share with Plaintiff’s technology” and where Plaintiff never agreed to royalty payments to license its technology, and similarly, the balance of hardships weighed in Plaintiff’s favor where the absence of an injunction would require Plaintiff to compete against its patented invention. Id. at 4.  Finally, the Court ruled an injunction would not harm the public interest.  “Defendant argue[d] that an injunction would harm the public interest because the public is better off with a multiple-supplier market for products affecting public safety,” but the Court was persuaded by Plaintiff’s evidence that no such public safety concern was present and the Court “was not concerned with Plaintiff’s ability to supply its product.”  Further, “copies of patented inventions have the effect of inhibiting innovation and incentive. Guarding against such copies could foster the development of more technologies aimed at enhancing public safety.” Id. at 5 (citations and internal quotation marks omitted).

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Judge Richard G. Andrews recently considered plaintiff Acceleration Bay LLC’s various discovery motions. Acceleration Bay LLC v. Activision Blizzard, Inc., et al., No. 16-453-RGA, No. 16-454-RGA, No. 16-455-RGA (Sept. 7, 2017). Regarding defendants’ interrogatory responses, Judge Andrews declined to order defendants to supplement specific interrogatories, in part due to plaintiff’s conclusory or vague theories.  For example, plaintiff sought supplementation of interrogatories seeking non-infringing alternatives, and non-infringement theories.  Id. at 3, 4.  Defendants argued that supplementation was not warranted, in part “due to the vagueness of Plaintiff’s infringement contentions and because Plaintiff has the burden of proving the lack of non-infringement alternatives.”  Id. Judge Andrews agreed.  Id. at 3, 4.  Plaintiff also sought supplementation regarding defendants’ damages theories.  Again, defendants argued that their response was reasonable in light of plaintiff’s “conclusory” damage claim.  Id.  Again, Judge Andrews agreed.  Id. at 4.

Acceleration Bay LLC v. Activision Blizzard, Inc., No. 16-453-RGA (Sept. 7, 2017)

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In a series of related actions brought by Acceleration Bay LLC, Judge Richard G. Andrews denied Defendants’ motion to dismiss due to allegedly patent-ineligible subject matter of three asserted patents. Acceleration Bay LLC v. Activision Blizzard, Inc., C.A. No. 16-453-RGA (D. Del. Aug. 29, 2017).  The claims at issue related to a “broadcast channel for a subset of [] computers of an underlying network.” Id. at 2.  The Court concluded that the claims were not directed to an abstract idea, rather “an innovative network structure for the distribution of data as the number of participants in a computer network is scaled.” Id. at 6.  The Court rejected Defendants’ analogy to the claims as “the schoolyard game of ‘telephone,’” as analogy did not “present the same communication scaling issues as those that arise in computer networks.” Id. at 7. The Court instead analogized the claims at issue to those in the Enfish case as requiring “a specific type of communication structure designed to improve the way computers communicate as participants scale.” Id.

Acceleration Bay LLC v. Activision Blizzard, Inc., C.A. No. 16-453-RGA (D. Del. Aug. 29, 2017)

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Judge Richard G. Andrews recently granted summary judgment of non-infringement and invalidity relating to a patent claiming a system for locating and identifying portable devices using ultrasonic base stations.  Centrak, Inc. v. Sonitor Technologies, Inc., C.A. No. 14-183-RGA (D. Del. Aug. 30, 2017).  The plaintiff’s infringement theory was based on the defendant’s “making and using” a system covered by U.S. Patent No. 8,604,909, in this case by “installing” the system at customer hospitals.  Judge Andrews found, however, that while the defendant was involved in the installation in various ways (e.g., evaluating the appropriate system to install based on the customer hospital’s layout, providing the customer hospital with network infrastructure requirements, and working with the hospital customer, post-installation, to troubleshoot the system), there was no evidence in the record that “Defendant makes the system.  The testimony cited indicates that Defendant does not itself install the system.  Furthermore, Plaintiff has not provided any evidence of contracts entered into between Defendant and third party installers that would indicate that the installation is done at Defendant’s direction or behest.”  The plaintiff next argued that even if the defendant does not actually install the system, “the customer’s actions in making the claimed invention are attributable to” the defendant.  Id. at 10.  Judge Andrews rejected this argument, explaining that the Federal Circuit’s Centillion decision “is still good law and applies to the system claims in this case.  Plaintiff must prove that Defendant makes or uses the entire system, including all claimed elements, in order to prove infringement.  Id. at 11.  While the troubleshooting allegations could give rise to a “use” infringement claim, Judge Andrews found that the vague record evidence relating to the troubleshooting did not demonstrate that the entire system was “used” during testing.

Judge Andrews also found that all asserted claims of the ‘909 patent were invalid for failure to satisfy the written description requirement.  The specification disclosed radio frequency and infrared base stations, but only “contemplated” ultrasonic base stations.  Judge Andrews explained that “[m]ere contemplation . . . is not sufficient to meet the written description requirement. . . . [I]t seems clear to me that electromagnetic radiation and sound waves are not simply two species of the same genus; rather these are two completely different types of phenomena.”  Id. at 15.  The Court agreed with the defendant that the practical difference between using ultrasonic base stations instead of infrared base stations is substantial, and therefore the patent failed to provide written description support for the use of the former.  Id. at 15-16.

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Judge Richard G. Andrews recently granted a motion to dismiss upon consideration of an an affirmative defense under 35 U.S.C. § 252 relating to claims re-issued following inter partes reexamination.  Waters Techs. Corp. v. Aurora SFC Sys. Inc., Civ. No. 11-708-RGA (D. Del. Aug. 21, 2017).  Judge Andrews explained that, as currently plead, “it is not plausible that a substantive limitation was not added to the Amended Claims,” because “[n]one of the Asserted Claims that came out of reexamination had a differential pressure transducer limitation[,]” meaning that the claims had substantively changed for purposes of section 252.  Id. at 6.  In fact, the plaintiff did not disagree, but instead “only argues that this decision is premature absent claim construction and discovery.”  Id.  Judge Andrews disagreed, and explained that it was implausible to infer that no substantial changes resulted from the IPR.  Therefore, the Court dismissed the plaintiff’s claims based on section 252 with respect to infringement prior to the re-issuance.

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