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Magistrate Judge Burke recent issued a memorandum order addressing the scope of discovery into a defendant’s products that are not “specifically-accused products.” Judge Burke reached slightly different conclusions with respect to different sets of asserted patents. For one set of patents, Judge Burke agreed with the Defendant’s arguments that the Plaintiff’s infringement contentions do not provide “sufficiently particularized information, so as to allow it to assess which non-specifically-accused products have the same attributes as the specifically-accused product . . . e.g., how they would be ‘reasonably similar’ to the accused products at issue.” Because of this lack of information about similarity, Judge Burke denied Plaintiff’s request for discovery “about non-specifically-accused products that allegedly infringe these two patents” but stated that Plaintiff could renew the request if “in the future, Plaintiffs provide greater specificity to Defendant as to what characteristics an unaccused product would have such that it would satisfy these limitations.” Tessera, Inc., et al. v. Broadcom Corp., C.A. No. 16-380-LPS-CJB, Memo. Or. at 1-2 (D. Del. June 16, 2017).

With respect to a separate set of asserted patents, Judge Burke was “not necessarily convinced that (as Defendant suggests) Defendant does not have enough information to understand which of its unaccused products share ‘the same or reasonably similar circuitry[,]’ as the two specifically-accused products.” However, there were “over 100 discrete products” at issue, and Judge Burke found that not only did he lack “information as to whether, in fact, all or any such products do in fact share the same relevant circuity” but also the record evidence “indicates that Defendant would face a significant burden were it required to prepare the relevant schematics for review and/or to assess whether the relevant circuit’s design is the same or similar to the accused design.” Again, however, Judge Burke indicated that the outcome might be different if “Plaintiffs’ request had been targeted toward a smaller number of specifically-unaccused products, or if Plaintiffs had information that called into question the magnitude of the burden that Defendant says it would face.” Id. at 2-3.

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Senior District Judge Sleet recently considered a motion to dismiss on Section 101 grounds that challenged a patent claiming “a computer implemented method of displaying search results.” As an initial matter, Judge Sleet found that it was appropriate to consider Section 101 arguments at the pleadings stage because the plaintiff “failed to identify any specific claim construction issues that could impact the analysis.” Blackbird Tech LLC v. Advanced Discovery Inc., et al., C.A. No. 16-413-GMS, Memo. at 7-8 (D. Del. June 26, 2017).

Judge Sleet went on to find that “the claims of the asserted patent are drawn to the steps of 1) conducting a search based on a search query, 2) determining a concept associated with a search query, 3) and then ranking the search results based on which documents are most relevant to that concept [which are] merely ‘generalized steps to be performed on a computer using conventional computer activity’ and therefore an abstract idea.” Id. at 8. Moreover, there was no inventive concept to transform the abstract idea into patentable subject matter: “The court is unable to discern the inventive contribution to the art made by claims that merely provide for conducting a search, determining a concept associated with the search, ranking the search results, and then displaying the results. Rather, the claims recite generic computer components . . . to perform the very same sorting and rankings steps that humans can perform using pen and paper.” Id. at 10-11.

Judge Sleet did not invalidate every asserted claim, however. The plaintiff argued that “the validity of claims 2-9, 11-15, 17-24, and 26-30 should be upheld because defendants failed to carry their burden of establishing a representative claim. Although [the defendant] conducted a thorough analysis of each of the ‘specifically asserted claims of the ’717 patent, it undisputedly failed to identify a representative claim. Because [the plaintiff] has properly raised the representative claim issue, the court concludes that [the defendant] cannot meet is burden of establishing the § 101 defense with respect to each of the twenty-six dependent claims that were not addressed in the briefing.” Id. at 8 n.1.

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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 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.

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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.

UPDATE: On August 9, Judge Andrews issued a subsequent order denying Broadcom’s request for attorneys fees. Judge Andrews found that Broadcom’s motion was “substantially justified” under Rule 37 both because “Broadcom had already actively participated in this case in this court” and because of a “similar [but] not the same” situation in another case before Judge Andrews in which His Honor “resolved a motion to compel involving a non-party over jurisdictional objections similar to those here.” TQ Delta LLC v. 2Wire Inc., C.A. No. 13-1835-RGA, Memo. Or. at 1-2 (D. Del. Aug. 9, 2017).

TQ Delta LLC v. 2Wire Inc., C.A. No. 13-1835-RGA (D. Del. Aug. 9, 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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