Judge Andrews recently denied a request by a patent-infringement defendant for a new trial date to accommodate a partial scheduling conflict with its expert. The conflict, as stated by Judge Andrews, was due to a mix-up that resulted in “Defendant’s main expert [making] other professional plans for the trial week of January 23, 2017 . . . ‘to attend and speak each day’ of” a conference in Florida. Judge Andrews noted that “Plaintiff’s team seems to have made plans based on the scheduled trial dates” and explained “[w]hile I appreciate that Defendant wants to have its main expert available and present for the entire trial, I have to balance that against the inconvenience moving the trial would cause to Plaintiff. Defendant will be able to have its expert present his testimony, whether it is by live video, deposition, or by missing a day of the conference.” E.I. DuPont de Nemours and Co. v. Unifrax I LLC, C.A. No. 14-1250-RGA, Order at 1-2 (D. Del. Sept. 13, 2016).
In a recent Order, Judge Richard G. Andrews granted in part defendants’ motion to preclude plaintiffs’ expert. Impax Laboratories Inc. v. Lannett Holdings Inc., C.A. No. 14-984-RGA (D. Del. Sept. 6, 2016) (consolidated). Judge Andrews explained that the expert at issue “is a doctor and a very well-qualified migraine expert. He is not an economist, an accountant, a statistician, or a businessman.” Id. at 2. Judge Andrews found that the expert is “qualified to have an opinion on nexus [related to commercial success], but there is no evidence of any academic or experiential basis that would permit him to express quantitative business opinions.” Id. Judge Andrews therefore concluded that the expert may not testify “to his opinions on commercial success.” Id.
Judge Andrews otherwise denied defendants’ motion to preclude, explaining:
While I acknowledge the “gate-keeper” function of a federal trial judge, it is not so important that it be done pretrial when the trial is a bench trial. Live testimony and cross-examination are much more likely to result in a correct decision from me about whether the experts are giving appropriate scientific testimony. Thus, while I am denying most of the motion for now, Defendants may make (and, indeed, in order to preserve the issue, must make) objections at appropriate times. I expect Plaintiffs will lay appropriate foundation for [their expert] as part of their case. Failure to make a timely appropriate objection will result in the objection being waived. The Court will only consider evidence actually adduced at trial (whether through cross-examination or testimony from other witnesses) in ruling on any renewed motion.
In a memorandum order issued yesterday, Judge Sue L. Robinson granted defendants’ motion to amend to add the defense of improper inventorship. Intellectual Ventures I LLC v. Toshiba Corp. et al., Civ. No. 13-453-SLR (D. Del. Sept. 7, 2016). The motion was filed shortly before the close of expert discovery and following the deposition of a third party who, defendants argued, should have been listed as an inventor of U.S. Patent No. 5,938,742. The Court granted the motion even though it was filed “17 years after the ‘742 patent issued, and more than one year after the court-ordered deadline for amended pleadings[,]” and with trial set to begin in January 2017. Id. at 4. Judge Robinson explained, “[b]ecause the court is not prepared at this juncture to evaluate the quality or quantity of evidence defendants cite in their papers, and because the court recognizes the importance of proper inventorship, the motion to amend shall be granted.” Id. at 5. However, Judge Robinson added that due to the “extraordinary delay between issuance of the ‘742 patent and the assertion of improper inventorship, as well as the fact that, in most instances, the remedy for improper inventorship is a certificate of correction, not invalidation[,]” “the court will bifurcate the newly-added defense to allow for additional discovery and a separate motion practice and trial[.]” Id.
In a recent Memorandum Order, Magistrate Judge Christopher J. Burke denied plaintiff’s motion to compel, pursuant Fed. R. Civ. P. 34(a), defendant Konami Digital Entertainment Inc. (“Konami US”) to produce core technical documents regarding certain accused products that are in the possession of Konami US’s foreign affiliate. Princeton Digital Image Corp. v. Konami Digital Entertainment, Inc., et al., C.A. No. 12-1461-LPS-CJB (D. Del. Aug. 31, 2016). Specifically, plaintiff requested that Konami US be ordered to “supplement its core technical document production . . . to include the technical documents describing the features of each accused game title, including the functional requirements, technical specifications, test plans and other relevant technical documents” by producing records in the possession of Konami US’s non-party sister entity, Konami Digital Entertainment, Ltd. (“Konami Japan”). Id. at 1. Konami US and Konami Japan are owned by a common parent company. Id.
In arguing that Konami US “has control over core technical documents in the possession of Konami Japan,” plaintiff asserted that “[Konami US] had acted with [Konami Japan] in effecting the transaction giving rise to suit and is litigating on its behalf[.]” Id. at 2-3. Judge Burke rejected this argument, observing that plaintiff “has pointed to very little evidence with regard to the relationship between Konami US and Konami Japan.” Id. at 4. Judge Burke further explained that plaintiff “has not offered an articulation as to what it would mean for Konami US, in this patent litigation matter, to have ‘acted with’ Konami Japan to ‘effect’ the relevant ‘transaction[s].’” Id. at 6. Plaintiff also failed to offer “any other information about Konami Japan’s connection to the instant litigation.” Id.
Judge Burke similarly found that “the Court has no basis to conclude that Konami US ‘is litigating on [Konami Japan’s] behalf.’” Id. at 7-8. Judge Burke noted, for example, that “[t]here is no record here of . . . Konami Japan employees directing the course of this litigation or making important strategic decisions in the matter for Konami US.” Id. at 8. Judge Burke further explained as follows: “That Konami Japan has, in at least one instance, made evidence (source code) in its possession accessible to Konami US . . . simply in order to . . . ‘protect its employees from time-consuming work in connection with’ this matter . . . cannot be enough to make this showing under Rule 34(a).” Id.
Chief Judge Leonard P. Stark recently considered defendants’ motion to dismiss based on lack of prudential standing of plaintiff when it filed the original complaint in 2012. Intellectual Ventures I LLC v. AT&T Mobility, LLC, et al., C.A. No. 12-193-LPS, 13-1632-LPS, 15-799-LPS, 15-800-LPS (D. Del. Aug. 25, 2016). Judge Stark previously granted a motion to dismiss for lack of standing because the licensor of the patent-in-suit retained certain rights over the patent. Id. at 2. Judge Stark gave plaintiff leave to amend to add the licensor as a plaintiff, but instead, in 2013 plaintiff purchased the patent from the licensor and amended its complaint re-adding the patent. Id. at 3-4. The defendants again moved to dismiss because the court already held plaintiff lacked prudential standing to assert the patent and cannot retroactively cure the standing defect by executing a nunc pro tunc agreement. Judge Stark agreed, finding that after the Federal Circuit’s decision in Alps South, LLC v. Ohio Willow Wood Co., 787 F.3d 1379 (Fed. Cir. 2015) the “post-filing agreement between . . . a patent infringement plaintiff who lacked all substantial rights in the patent on which it was suing at the time it filed suit and . . . the owner of the patent-in-suit, and holder of substantial rights in the patent-in-suit, as of the date of the filing of the suit – cannot retroactively cure the prudential standing defect.” Id. at 10.
Judge Richard G. Andrews recently construed claims related to LCD technology. MiiCs & Partners Am., Inc. v. Toshiba Corp., C.A. No. 14-803-RGA (D. Del. Aug. 31, 2016). Of note, Judge Andrews found that the preamble of three claims “carries patentable weight and is limiting to the claimed ‘liquid crystal display apparatus.’” Id. at 16. The Court explained, after considering the title (“Liquid Crystal Display Apparatus and Method for Lighting Backlight Thereof”), abstract (beginning: “In the liquid crystal display, . . .), and specification (describing the invention and its embodiments as “a liquid crystal display apparatus” fifteen times), “it is inconceivable that a reader would come away with anything but a firm conviction that the inventor invented and intended the claims to encompass a liquid crystal display apparatus, rather than some vague combination of two backlights.” Id. at 17-18.
In In re Rembrandt Technologies, LP Patent Litigation, MDL No. 07-md-1848-GMS (D. Del. Aug. 24, 2016), Judge Gregory M. Sleet considered specific fees and costs requested by all other parties adverse to Rembrandt (“AOPs”), having already determined that the case was exceptional.
The Court found the AOPs’ attorney fee rates to be reasonable, noting that “[w]hile local rates typically apply in determining reasonableness, the court finds that as a complex multi-district litigation, ‘national’ rates are appropriate in this case.” Id. at 1 n.2. But the Court found several categories of requested fees and expenses to be unreasonable, and denied the request for experts’ fees and costs, fees related to one party’s bankruptcy, fees for time spend on secretarial or clerical work, and pre-judgment interest. See id. at 2.
Judge Andrews recently considered several post-trial motions in a case relating to data storage systems including de-duplication of data. The Court largely denied the motions for judgment as a matter of law and new trial, but found one basis on which to grant the Defendant’s motion for a new trial. One anticipatory reference predated the patent-in-suit by several months, but the inventor testified that he had conceived of the invention earlier. Due to a lack of corroborating evidence, however, the Court found that it had been error to allow the jury to determine whether the reference was or was not prior art. EMC Corp., et al. v. Pure Storage, Inc., C.A. No. 13-1985-RGA, Memo. Op. at 12-18 (D. Del. Sept. 1, 2016). The Plaintiff, Judge Andrews explained, “failed to meet its burden of production with respect to an earlier date of conception. [Plaintiff] did not produce independent corroborating evidence of [the inventor’s]. The [allegedly corroborating] whiteboard photographs are not independently corroborative of [the inventor’s] testimony because [the inventor] took the photographs and had control of the camera, the photograph file names, and the metadata . . . [and] uncovered the photographs in 2015. Further, there is no evidence that [the inventor] showed the whiteboard markings or photographs of them to anyone other than his co-inventors around the time the markings were made.” Id. at 16 (internal citations omitted). The evidence provided, therefore, was both not “independent” and could not be reliably dated and were therefore insufficient to corroborate the testimony regarding conception. Id. at 16-17. Accordingly, Judge Andrews found, the jury “should have been instructed that the [reference at issue] is prior art,” and a new trial was warranted. Moreover, Judge Andrews found that the Defendant was entitled to judgment that the reference at issue disclosed certain elements of the claims and that the Plaintiff was not entitled to judgment that any claim element was missing; accordingly, the Court ordered a new trial on anticipation.
Judge Andrews recently issued a decision finding the claims of one of seven patents-in-suit ineligible under Section 101 as claiming an abstract idea. Sound View Innovations, LLC v. Facebook, Inc., C.A. No. 16-116-RGA, Memo. Op. at 1-2 (D. Del. Aug. 30, 2016). The patent-in-suit, U.S. Patent No. 8,095,593 claims a “method for managing electronic information” consisting of several steps. The Defendant contended that the claims were “directed to the abstract idea of managing information and preferences among members of a community,” which could be “performed mentally using pen and paper.” Id. at 7.
Judge Andrews explained that the “patent does not, as [Plaintiff] argues, provide ‘computer-specific solutions’” but rather “seeks to make a non-technological improvement to the non-technological problem of providing a user with information that is better suited to the user.” Id. at 8-9. Instead, the claims were “directed to the concept of offering more meaningful information to an individual based on his own preferences and the preferences of a group of people with whom he is in pre-defined relationships.” Id. at 10. Moreover, “[n]one of the claims offers a meaningful limitation beyond linking the abstract idea to generic or functionally-described computer components.” Id. at 10-14.
Judge Andrews also rejected the Defendant’s contention that he should consider the PTAB’s § 101 rejection during prosecution of a related application that included a claim that was substantially similar to a claim asserted in this case. Because the PTAB’s decision occurred before the Alice decision, however, Judge Andrews explained, “the PTAB decision has no relevance, even as persuasive authority, to the§ 101 motion under consideration.” Id. at 6-7.
This case involves several consolidated Hatch-Waxman cases filed by AstraZeneca against various defendants. Several of the defendants filed petitions for inter partes review and moved to join them with the petition previously filed by one defendant in June 2015 and instituted in May 2016. The PTAB’s decision on that first IPR must be issued by May 2017, but a trial in the consolidated litigation is scheduled to begin before Judge Sleet in September 2016. Given the institution decision by the PTAB, the defendants who filed the second wave of IPR petitions moved to stay the District Court litigation. AstraZeneca AB v. Aurobindo Pharma Ltd., et al., C.A. No. 14-664-GMS, Order at 1-2 (D. Del. Aug. 23, 2016).
Judge Sleet denied the motion to stay, finding that all of the factors considered in the stay analysis “weigh strongly against the imposition of a stay.” Id. at 2 n.3. Perhaps most importantly, Judge Sleet explained that “a stay would unduly prejudice AstraZeneca [because this] two-year-old case is within one month of trial [and the] parties have expended considerable resources and effort in preparing for this trial.” Id. Judge Sleet continued: “At this late date, the IPR Defendants are asking the court to delay trial for almost a year. The IPR Defendants have not presented any explanation for the lengthy delay in submitting their IPR petitions . . . [and] the 30-month stay of FDA approval will expire for most defendants’ ANDAs before [the IPR decision, requiring AstraZeneca] . . . to request preliminary injunctions to prevent the defendants from launching their products before the validity of the RE’l86 patent is resolved.” Id.