In John H. Stephenson v. Game Show Network, LLC, et al., C.A. No. 12-614-SLR (D. Del. July 11, 2017), Judge Sue L. Robinson denied Defendants’ motion requesting an exceptional case finding and for attorneys’ fees. Defendants essentially argued the case was exceptional due to Plaintiff’s litigation conduct where Defendants’ “initial evaluation of the [patent-in-suit] as invalid was ultimately determined to be correct by the PTAB.” Id. at 4. But the Court found the case and the conduct of Plaintiff to be typical among patent cases. Id. at 5. In fact, it was Defendants who had “filed every motion on the docket.” Id. In sum, “[t]he fact that defendants maintained from the outset that the [patent-in-suit] was invalid does not change this modest case into an exceptional one.” Id.
Judge Robinson recently denied a motion to dismiss under Section 101, finding that the invention in question was not directed to an abstract idea. The claim in question, claim 17 of U.S. Patent No. 7,058,524, reads as follows:
A method of measuring power consumption information on a power line comprising:
measuring current fluctuations in the power line;
calculating power consumption information from the current fluctuations in a processor;
converting the power consumption information into IP-based power consumption information in the processor; and
transmitting the IP-based power consumption information from the processor to a destination autonomously in IP format over an external power line network.
The defendant advanced several arguments that each aspect of this claim was directed to an abstract idea of “measuring and transmitting power consumption information that has been performed for years by human meter readers” and “measure[ing] and transmit[ting] power consumption information using admittedly conventional technologies.” Specifically, the defendant argued that “(1) the steps of claim 17 ‘do not involve any scientific or technical innovation, but merely recite a way of measuring and transmitting power consumption information;’ (2) ‘[p]ower utility companies have measured power consumption information for decades using human meter readers;’ [and] (3) ‘the specification expressly acknowledges that the claimed invention could be performed by a meter-reading human’ which is ‘an indication that the claimed invention is directed to an abstract idea.’” Smart Meter Techs. Inc. v. Duke Energy Corp., C.A. No. 16-208-SLR, Memo. Or. at 4-8 (D. Del. July 11, 2017). Judge Robinson rejected these arguments, finding that the specification supports a broader reading of the claim than these characterizations that includes a number of embodiments and possible benefits of the invention, only one of which is replacing human meter readers, and “a claim is not ‘directed to’ a specific embodiment when multiple embodiments are potentially covered by the claim limitations.” Id. at 8-9.
Judge Robinson has issued an order denying a motion for preliminary injunction in a case under the Patent Act, the Defend Trade Secrets Act, and Delaware state law. The case involves a dispute over “hair styling products in the newly-created ‘bond builder’ market category.” The Plaintiffs developed this product and “revenues quickly grew to the tens of millions of dollars.” Defendant L’Oréal then expressed interested in purchasing Plaintiff Olaplex, but eventually withdrew that interest and launched competing products. Plaintiffs brought suit alleging that L’Oréal’s new products infringe the patent-in-suit. Liqwd, Inc., et al. v. L’Oréal USA, Inc., et al., C.A. No. 17-14-SLR, Memo. Or. at 2-3 (D. Del. July 6, 2017).
Addressing possible irreparable harm, Judge Robinson concluded, crediting the testimony of Plaintiffs’ expert over that of Defendants’ expert, that “defendants are [Plaintiff] Olaplex’s direct competitor in what is a two-player national market. . . . [t]he record shows that Olaplex will continue to face price pressures and declining revenues based upon competition by the accused products. . . . As the ‘bond builder’ market category is new and growing, it is likely that plaintiffs will be harmed by direct competition in their primary market. . . . Therefore, irreparable harm weighs in favor of plaintiffs.” Id. at 13-14. Judge Robinson also concluded that the balance of equities favored Plaintiffs, considering that “Olaplex is a one-product company focused on a specific market category from which it derives all of its revenues [while] Defendants are elements of a multinational corporate entity, and the accused products account for a small percentage of revenues.” Id. at 14.
Addressing the likelihood of success injunction factor, on the other hand, Judge Robinson concluded that “[w]ere the court inclined to accept plaintiffs’ contention that applicant acted as its own lexicographer, the court would most likely conclude that claim 1 is indefinite.” Id. at 3-8. Judge Robinson concluded that the Plaintiffs had not demonstrated a likelihood of success in proving infringement due to possible indefiniteness and because “the specification does not support the meaning plaintiffs now assert” under plain and ordinary meaning or the patentee’s lexicon. Moreover, Plaintiffs did not satisfy the knowledge prong of providing induced infringement. Id. at 9-10. Because “plaintiffs have not demonstrated a likelihood of success on the merits with respect to induced patent infringement . . . the public interest [factor also] weighs against an injunction.” Id. at 14. The Defendants, however, did not demonstrate a likelihood of prevailing on invalidity. Id. at 10-12. For these reasons, Judge Robinson declined to issue a preliminary injunction.
Judge Robinson recently considered the parties’ briefing in connection with submission of the final judgment, staying defendant’s declaratory judgment claim of non-infringement for the remaining claim at issue pending appeal. Quest Integrity USA, LLC v. Cokebusters USA Inc., No. 14-1483-SLR (D. Del. Jun. 30, 2017). Judge Robinson previously denied defendants’ motions for summary judgment as to invalidity and non-infringement, but upon a motion for reconsideration, granted defendant’s motion as to invalidity. Id.at 1-2. At the pretrial conference, the parties indicated they preferred not to go to trial on the remaining issues, instead appealing the Court’s summary judgment rulings, but the parties could not agree to a form of judgment. Id.at 2-3. Judge Robinson bifurcated and stayed non-infringement of the remaining claim at issue, but indicated that the appeal should include non-infringement of the other claim (as well as invalidity). Id. at 3-4. Judge Robinson ordered the parties to submit a final judgment consistent with those rulings.
Judge Sue L. Robinson recently ordered defendants asserting an opinion-of-counsel defense to “product all documents and communications, whether listed on defendants’ privilege log or not, other than communications with trial counsel, that address” validity or infringement of the patent-in-suit. Johns Hopkins Univ. v. Alcon Labs., Inc., Civ. No. 15-525-SLR/SRF (D. Del. June. 14, 2017). The defendants argued that the “Federal Circuit has explained that the Rule 502(a) ‘limited the effect of waiver by strongly endorsing fairness balancing.'” Judge Robinson explained, though, that under Seagate, which is “still good law” in this respect, “relying on in-house counsel’s advice to refute a charge of willfulness triggers waiver of the attorney-client privilege . . . [and] asserting the advice of counsel defense waives work product protection and the attorney-client privilege for all communications on the same subject matter, as well as any documents memorializing attorney-client communications.” This broad waiver, the Court explained, is in fact rooted in principles of fairness, to avoid situations where a party may use privilege as both a sword and a shield.
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.
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.
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.
Judge Robinson recently considered defendants’ request to compel plaintiff to produce documents identified on plaintiff’s privilege log. Intellectual Ventures I, LLC v. Toshiba Corp., et al., No. 13-453-SLR. Judge Robinson reviewed the documents in camera and denied the request finding that the documents “all involve communications to lawyers seeking legal advice. Plaintiff’s business model does not change the character of the communications at issue.”
In Cloud Satchel LLC v. Amazon.com, Inc., C.A. No. 13-941-SLR & v. Barnes & Noble, Inc., C.A. No. 13-942-SLR (D. Del. Mar. 30. 2017), Senior Judge Sue L. Robinson had previously ruled on summary judgment that the patents-in-suit were invalid under Section 101. Plaintiff moved for relief from judgment, arguing that the Court’s “decisions had been called into question by three Federal Circuit cases that issued after the Federal Circuit’s affirmance in this case” (i.e., the Federal Circuit’s Enfish, BASCOM, and Rapid Litigation decisions). Id. at 2.
The Court denied the motions, observing that controlling Third Circuit precedent has consistently held that intervening changes in the law “rarely justify relief from final judgments.” Id. at 2 (citations omitted) (emphasis in original). The Court concluded that, while Section 101 jurisprudence “has been an evolving one,” the subsequent Federal Circuit cases “simply reflect the reality that different panels may describe, interpret and/or apply existing precedent differently in light of different facts. The Federal Circuit decisions identified by plaintiff are the kind of ‘intervening developments in the law’ that result from our system of common law, and plaintiff has filed to adduce evidence that the Federal Circuit’s pronouncement of invalidity was either an extreme or unexpected hardship.” Id. at 3.