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Judge Richard G. Andrews recently considered the motions in limine included in the pretrial order filed in advance of trial.  AVM Technologies LLC v. Intel Corporation, No. 15-33-RGA (D. Del. Apr. 19, 2017).  Judge Andrews granted AVM’s motion in limine to exclude references to decisions or orders from plaintiff’s prior lawsuits and reserved decision on whether to preclude the use of testimony of AVM’s expert from prior litigation, who are not experts in this case.  Judge Andrews determined that the probative value of any prior litigation evidence would be substantially outweighed by unfair prejudice.  Id. at 1-2.  Regarding the expert testimony, Judge Andrews determined that the testimony might be permissible, “with the proviso that the experts cannot be identified as being AVM’s experts in prior litigation.”  Id. at 2.  Ultimately, Judge Andrews reserved decision until he could review the proposed testimony and discuss the issue at the upcoming pretrial conference.  Id.

Judge Andrews also granted Intel’s motion in limine to exclude evidence that the circuit patented in Intel’s patent copies the asserted patent.  Id. at 4.  Judge Andrews noted that although AVM argued “that the ‘941 patent and related testimony show that Intel ‘knowingly employed delay and simultaneous activation’ in the accused circuits[,]” AVM did not actually allege that the circuit in question is accused of infringement or that its experts have opinions regarding the circuit.  Id.

UPDATE:  Judge Andrews reviewed the proposed testimony regarding the expert testimony from prior litigation.  Judge Andrews excluded the testimony finding that it was cumulative and unfair.    Technologies LLC v. Intel Corporation, No. 15-33-RGA (D. Del. Apr. 28, 2017).  “A deposition of this sort, that is, of an expert expected to testify at a trial six months later, is one-sided.  It is mostly a cross-examination, with no direct, and with little incentive for redirect.” 2.  Moreover, Judge Andrews determined that “there is substantial risk that the jury will understand the testimony as indicating inconsistency in AVM’s positions.  I think it is clear that an independent expert . . . is not an agent of AVM.  Thus, his testimony cannot be offered to prove AVM’s inconsistency.  Clearly, though, that is the main reason intel wants to offer the evidence.”  Id.  (internal citations omitted).

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In AVM Technologies, LLC v. Intel Corporation, C.A. No. 15-33-RGA (D. Del. Apr. 17, 2017), Judge Richard G. Andrews granted Plaintiff’s motion for summary judgment as to issue preclusion and denied Defendant’s motion for summary judgment as to no damages based on issue preclusion. A prior litigation between the same parties and before Judge Andrews included a grant of Defendant’s motion for summary judgment of no damages, based on Plaintiff’s inability to prove damages as to the particular accused products in the prior case.

Defendant’s issue preclusion argument for this case was “based on its contention that Plaintiff ‘previously sought a lump-sum payment that would compensate it for all alleged infringement of the ‘547 patent by Intel, both past and future.’ According to Defendant, this case presents the same issue because Plaintiff is again seeking a reasonable royalty payment for infringement of the ‘547 patent. If Plaintiff had successfully won on damages in [the first case], Defendant contends, Plaintiff would not be able to seek damages for infringement of the same patent in the instant case.” Id. at 2.  But the Court framed the “issue” in question for collateral estoppel purposes more narrowly than Defendant: “It was whether Plaintiff had sufficient evidence of damages to avoid summary judgment on its suit against two particular accused products. Had the case gone to the jury, and had the jury awarded a lump sum, [the Court] would now have to decide whether the jury’s damages verdict covered non-accused products. But the jury did not have a chance to pass on that, and neither did [the Court].” Id. at 2-3.

Accordingly, the Court concluded that the damages issues between both cases were not identical, and declined to apply issue preclusion against Plaintiff. Id.

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Judge Andrews recently granted a motion to dismiss for lack of patentable subject matter directed to a patent that included the following representative claim:

1. A method of determining a recovery state in a data stream, comprising:
receiving a compressed data stream;
detecting a compression block boundary in the compressed data stream;
detecting an archive block boundary in the compressed data stream;
detecting a file boundary in the compressed data stream; and
in response to the detection of the compression block boundary, the archive block boundary, and the file boundary, saving a recovery state for the compressed data stream;
wherein the recovery state includes a position of the compression block boundary, and a position of the file boundary.

Judge Andrews found this patent was “directed to the abstract idea of receiving, detecting, and storing information” because “as the Federal Circuit has held numerous times, collecting information is ‘within the realm of abstract ideas’” and “[t]his is precisely the kind of claim that the Federal Circuit has found to be an abstract idea.” D&M Holdings Inc., et al. v. Sonos, Inc., C.A. No. 16-141-RGA, Memo. Op. at 6-9 (D. Del. Apr. 18, 2017). Judge Andrews also found a lack of specificity or inventive concept in the claims, leading to his decision to grant the Section 101 motion.

On another patent-in-suit, however, Judge Andrews found that the patent was not ineligible and “agree[d] with Plaintiffs that Defendant has oversimplified and ignored specific limitations in this claim. This claim is more specific than claim 1 of the ’435 patent and calls for more than simply receiving, manipulating, and storing data.” Id. at 12-14.

On a third patent-in-suit, Judge Andrews “decline[d] to opine on” patentability because “construction of at least some of the disputed terms could impact the § 101 analysis, particularly as there is a dispute over whether the structure in several of the means-plus-function terms, which are found in claims that were not briefed or argued, is a specific device or merely a general purpose computer.” Id. at 14-16.

Finally, a fourth patent-in-suit was directed to an abstract idea without an inventive concept, in part because Judge Andrews “agree[d] with Defendant that this claim is directed to the automation of a process that can be (and has been) performed by humans.” Id. at 16-19. The representative claim at issue for this patent read:

18. A method for controlling a receiver having a plurality of receiver connections, the method comprising:
querying a user to select a receiver connection of the plurality of receiver connections to correspond with each encoding format of a plurality of encoding formats;
retrieving media unit data that identifies an encoding format of a playable piece of media selected to be played by the receiver, wherein the identified encoding format is one of the plurality of encoding formats;
retrieving receiver-connection data that identifies the receiver connection corresponding with the identified encoding format; and
sending to the receiver a control signal instructing the receiver to use the identified receiver connection for receiving a media signal of the selected media.

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In a detailed Report and Recommendation issued in International Business Machines Corporation v. The Priceline Group Inc., et al., C.A. No. 15-137-LPS-CJB (D. Del. Apr. 10, 2017), Magistrate Judge Christopher J. Burke recommended that Plaintiff’s motion to dismiss Defendants’ inequitable conduct counterclaim and to strike their corresponding affirmative defense be granted-in-part.

Defendants’ inequitable conduct allegations fell into three separate “theories”: “allegations relating to the failure to disclose (1) certain prior art references against [two asserted patents] . . . (2) commercialization efforts . . . [and] (3) co-pending patent applications and office actions related to those applications.” Id. at 12.  Plaintiff challenged the sufficiency of Defendants’ allegations of materiality and intent, and also that the inequitable conduct allegations regarding certain patents could “infect” others.

As a threshold matter, Defendants contended that because “‘Rule 12(b)(6) doesn’t permit piecemeal dismissals of parts of claims[,]’ . . . if any one theory of inequitable conducts passes muster under Rule 9(b), then all of Defendants’ theories set out in the counterclaim should survive, even if some are clearly insufficiently pleaded.” Id. at 13.  The Court disagreed, citing, inter alia, case law from this District where portions of inequitable conduct claims were dismissed, and further observing that Defendants’ single-count approach to their pleading was confusing and may frustrate the particularity requirements of Rule 9(b). See id. at 13-16.

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The United States District Court for the District of Delaware announced today that the Honorable Gregory M. Sleet will become a Senior United States District Court Judge as of May 1, 2017, and intends to render substantial judicial service in that role going forward.

The Court’s official announcement regarding Judge Sleet can be viewed HERE.

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In Cloud Satchel LLC v., 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.

Cloud Satchel LLC v., Inc., C.A. No. 13-941-SLR & v. Barnes & Noble, Inc., C.A. No. 13-942-SLR (D. Del. Mar. 30. 2017)


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In Impax Labs., Inc., et al. v. Lannett Holdings Inc., et al., C.A. No. 14-984-RGA, 14-999-RGA (D. Del. Mar. 29, 2017), Judge Richard G. Andrews issued a post-trial decision regarding Plaintiffs’ standing to bring suit and Defendants’ allegations of invalidity of Plaintiffs’ patents.

As to standing, Defendants argued that the “exact ownership arrangement of the patents” was not clear. Id. at 3. The Court examined a chain of ownership where the patents-in-suit were not always specifically called out as being part of various transfers. See id. at 5-6. But the Court concluded that there was “no reason to believe” there was any gap in ownership, crediting the statements of a declaration submitted by Plaintiffs post-trial and accepted by the Court (see id. at 4-5). Id. at 6. While, based on the documents at issue, it appeared possible that one of the named Plaintiffs no longer had an ownership interest in the patents, that did not impact the others’ standing to bring suit, and Defendants had only moved to dismiss “in toto for lack of standing.” Id. at 7.

As to Defendants’ anticipation and obviousness arguments, the Court found that they had not met their burden to show invalidity, and that Plaintiffs had presented evidence of secondary considerations of non-obviousness. See id. at 16-35.

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Judge Sleet recently ruled on a motion to dismiss direct and indirect infringement claims in a case involving VoIP technology.  IP Communication Solutions, LLC v. Viber Media (USA) Inc., C.A. No. 16-134-GMS (D. Del. Apr. 5, 2017).  The defendant argued that the allegations of direct infringement failed to adequately put it on notice of what it was to defend, and cited as support cases in which allegations relating to unidentified products were dismissed.  Judge Sleet disagreed with the defendant’s reliance on those cases, and explained that in those cases the alleged infringers marketed a number of products that could possibly infringe product claims.  On the contrary, here, the defendant marketed a single mobile VoIP client application supported by a server that together were alleged to perform a number of steps that would infringe method claims, so the defendant could not persuasively argue that it was not on notice of what the claims targeted simply because the claims did not specifically identify the accused instrumentality.  With respect to indirect infringement, however, Judge Sleet agreed with the defendant that the evidence relied upon (webpages showing how customers use the VoIP application to make calls) did not rise to the level of showing that the defendant “specifically instructed or directed customers to use the Viber application and corresponding server system in a manner that would infringe.”

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Judge Gregory M. Sleet recently considered defendants’ motion to stay pending inter partes review of six of the eleven patents-in-suit.  Koninklijke Philips N.V., et al. v. ASUSTek Computer Inc., et al., Nos. 15-1125-GMS, 15-1126-GMS, 15-1127-GMS, 15-1128-GMS, 15-1130-GMS, 15-1131-GMS, 15-1170-GMS (D. Del. Mar. 30, 2017).  Judge Sleet denied the motion without prejudice to renew upon institution of the petitions by the U.S. Patent and Trademark Office.  Id. at 1 n.1.

Koninklijke Philips N.V. v. ASUSTek Computer Inc., No. 15-1125-GMS

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Magistrate Judge Christopher J. Burke recently denied two co-pending motions to transfer venue to the Northern District of California. Applying the Third Circuit’s Jumara factors in considering whether all relevant factors strongly favored transfer, Judge Burke found that transfer was not warranted. Tessera, Inc., et al. v. Broadcom Corp., C.A. No. 16-379-LPS-CJB, Memo. Op. at 25-26 (D. Del. Mar. 21, 2017).

The plaintiffs’ principal place of business was in the Northern District of California, and the defendants also had significant operations in the Northern District of California, but the plaintiffs were incorporated in Delaware, weighing against transfer. Id. at 7-10. Judge Burke also explained that it was difficult to assess “where the alleged infringement has occurred” because of uncertainty as to the relevant facts and the parties’ unclear submissions on this point. Accordingly, this factor only slightly favored transfer. Id. at 11-14. The convenience of the parties, the convenience of the witnesses, the location of books and records, and practical considerations that could make the trial easy, expeditious, or inexpensive weighed slightly in favor of transfer. All other Jumara factors were neutral. Id. at 14-25.

Judge Burke concluded that “This is, as Broadcom notes, a ‘dispute between California entities.’ And in balancing the Jumara factors, the Court acknowledges that Broadcom has pointed to a number of connections between the Northern District of California and the facts or people involved in this case. This has, in tum, resulted in a greater number of Jumara factors tipping Broadcom’s way, as opposed to Plaintiffs’ way. And yet a close examination of most of the factors favoring Broadcom shows that they do not have much of a practical impact. Had Broadcom been able to make a stronger showing even as to any one of the factors that only slightly tipped in its favor, the outcome may have been different. . . . But Broadcom did not make any such showing. As a result, any inconvenience it faces in trying the case in this District does not seem pronounced. After careful review, the Court is prepared to say that the balance of convenience is in favor of Broadcom. But it cannot conclude that this balance ‘is strongly in favor of’ Broadcom.” Id. at 26.

The case also presented an interesting procedural issue. Judge Burke’s decision addressed two separate civil actions, each of which involved a motion to transfer, which the parties agreed should be resolved together. One civil action, however, was stayed pending an ITC investigation, while the other action was not stayed. As Judge Burke pointed out, the “parties to the action agree that it is proper for the Court to resolve the transfer of venue issue in [the stayed case], even while this stay is pending, and they have cited to case law in support. The Court agrees with the logic set out in the cited cases, and, as a result, will proceed to address the Motions in both cases.” Id. at 5 n.3 (citations omitted).

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