Delaware Patent Litigation Report

Court construes patents directed to intervertebral implants

Kenneth L. Dorsney — Tue, 14 May 2013 08:58:07 -0500

DePuy Synthes Products, LLC v. Globus Medical Inc., C.A. No. 11-652-LPS, May 7, 2013.

Stark, J. Claim construction opinion.

The parties completed claim construction briefing on June 8, 2012. The Court conducted a Markman hearing on July 9, 2012. The Court construed the following disputed terms:

“[front] plate/plate;”

“front plate;”

“securing plate;”

“upper surface [of the plate];”

“lower surface [of the plate];”

“upper plane [of the body];”

“underside plane [of the body]” and “lower plane [of the body];”

“plate top surface located generally on the upper plane/plate top surface;”

“plate lower surface located generally on the lower plane/plate lower surface;”

“borehole;”

“being anchorable within the first and second boreholes and the first and second partial boreholes;”

“first and second boreholes of the front plate diverge when viewed from the front surface/diverge;”

“captured between the front plate and the securing plate;”

“located between the plate and the securing plate;”

“contained between the adjacent vertebral bodies when the implant is inserted between the adjacent vertebral bodies;”

“positioned between the upper and lower planes;”

“the first and second boreholes of the front plate and the first and second heads are covered at least partly by the securing plate/covered at least partly by the securing plate;”

“the securing plate at least partially covering each of the plurality of boreholes/the securing plate at least partially covering;”

“the securing mechanism at least partially covering each of the plurality of boreholes/the securing mechanism at least partially covering;”

“attaching a securing plate with a fastening agent over the first and second head portions of the first and second fixation elements;”

“partial boreholes in communication with the front surface and the upper side/underside of the body;”

“non-metallic material;”

“the first height being substantially equal to the second height so that the three dimensional body and the plate are contained between the adjacent vertebral bodies when the implant is inserted between the adjacent vertebral bodies/the first height being substantially equal to the second height;”

“the second height being generally equal to the first height;”

“the first and second heads and the first and second boreholes and partial boreholes positioned substantially between the upper and underside planes/positioned substantially between the upper and underside planes;”

“securing mechanism;”

“fastening agent;”

“upper surface;”

“lower surface;”

“upper side;”

“underside;”

“upper vertebra;”

“lower vertebra;”

“upper endplate;” and

“lower endplate.”

Claims are construed relating to computer databases and search engine technology

Mary Matterer — Mon, 13 May 2013 11:47:34 -0500

Microsoft Corp. et al. v. Geotag, Inc., C.A. No. 11-175-RGA, May 3, 2013.

Andrews, J. The court issues a claim construction opinion in this declaratory judgment action concerning terms from one patent which disclose computer software informational databases integrated with search engine technology that allow users to find points of interest according to desired geographic regions.

The parties proposed 31 terms for construction and the court construes the following 20 terms grouped as follows:

The “Hierarchy” Phrases

1. A database of information organized into a hierarchy of geographical areas wherein entries to each one of said geographical areas is further organized into topics

2. Narrower geographical area

3. Geographical area of relatively smaller expanse

4. Broader geographical area

5. Geographical area of relatively larger expanse

The “Dynamic Replication” Phrases

6. Dynamically replicating

7. Dynamically replicating an entry from broader geographical area into said geographical area

8. Wherein within said hierarchy of geographical areas at least one of said entries associated with a broader geographical area is dynamically replicated into at least one narrower geographical area

9. Wherein at least one of said entries in said geographical area of relatively larger expanse is dynamically replicated into at least one of said geographical areas of smaller expanse

The “Topics” Phrases

10. Topics

11. Wherein said topics are hierarchically organized

The “Entries” Phrases

12. Entry, entries

Additional Terms and Phrases (all given plain and ordinary meaning)

13. Database

14. On-line information

15. Organizing a database of on-line information into a plurality of geographic areas

16. Organizer

17. Search engine

18. Virtual geographic environment

19. Said search engine further configured to select one of said hierarchy of geographical areas prior to selection of a topic so as to provide a geographical search area

Said search engine further configured to select at least one geographical area in said hierarchy of geographical areas so as to define a geographical search area.

Claim construction opinion issues regarding computer search technology

Mary Matterer — Tue, 07 May 2013 10:11:28 -0500

Collarity, Inc. v. Google Inc., C.A. No. 11-1103-MPT, May 6, 2013.

Thynge, MJ. The court construes six disputed terms contained in one patent-in-suit.

Claims are construed relating to computer search technology. Claim construction briefing was completed March 20, 2013 and a Markman hearing was held on April 18, 2013. The court construed the following disputed terms:

Keyword

Association graph

Anchor keyword

Non-anchor keyword

Designating, by the search system, one or more keywords as anchor keywords and the remaining keywords as non-anchor keywords

Order of steps

Lack of subject matter jurisdiction defense fails in DJ action

Mary Matterer — Tue, 07 May 2013 10:07:00 -0500

Butamax™Advanced Biofuels LLC, et al., v. Gevo, Inc., C.A. No. 12-1301-SLR, May 2, 2013.

Robinson, J. Defendant’s motion to dismiss for lack of subject matter jurisdiction is denied.

Plaintiffs seek a declaratory judgment of noninfringement of a patent entitled “recovery of Higher Alcohols from Dilute Aqueous Solutions.” The parties dispute whether there is an actual controversy. Defendant had earlier asserted infringement claims over a different patent which was similarly directed to the production of bio-isobutanol from fermentation broths. The court finds that under a totality of circumstances review, the pattern of litigation between the parties and the close relationship between the patents are sufficient to show the existence of an actual controversy.

Claim construction of patent directed to mesalamine

Mary Matterer — Tue, 07 May 2013 09:58:25 -0500

Warner Chilcott Company, LLC v. Zydus Pharmaceutical (USA) Inc. et al,. C.A. No. 11-1105-RGA, April 22, 2013.

Andrews, J. Claim construction opinion.

The court construed the following disputed terms in U.S. Patent No 6,893,662, which is directed to formulations and methods of delivering mesalamine:

Coating layer;

Inner coating layer and outer coating layer;

An inner coating layer and an outer coating layer;

The inner coating layer is not the same as the outer coating layer;

Selected from the group consisting of;

Polymethacrylates and anionic polymethacrylates;

Poly(methacrylic acid, methyl methacrylate) 1:2 and poly(methacrylic acid, methyl methacrylate) 1:1;

Enteric polymer;

Mixtyures;

The outer coating layer is applied after the inner coating layer but before the inner coating layer is dried or cured.

Defendant will not be prejudiced by plaintiff's amended complaint

Kenneth L. Dorsney — Thu, 02 May 2013 10:07:19 -0500

Invensas Corporation v. Renesas Electronics Corporation, C.A. No. 11-448-GMS-CJB, April 24, 2013.

Burke, MJ. Motion to amend the complaint is granted.

Plaintiff moved to amend the complaint eight months after the scheduling order was entered on the last day permitted under the scheduling order to add an additional wholly-owned subsidiary defendant. The motion was granted. Defendant asserted delay and prejudice in opposing the motion. The court did not find undue delay based on plaintiff’s contention that it had just recently learned of the new defendant and had filed the motion timely under the scheduling order. The court also found no prejudice, as the proposed amendment added no new theories of liability.

Court declines to change its summary judgment finding of non-infringement

Kenneth L. Dorsney — Thu, 02 May 2013 09:55:03 -0500

Golden Bridge Technology, Inc. v. Apple Inc., et al., C.A. No. 10-428-SLR, April 25, 2013.

Robinson, J. Plaintiff’s motion for reconsider is denied.

Plaintiff moved for reconsideration of the court’s April 9, 2013, summary judgment finding of non-infringement. The motion was denied. Despite new attorney argument, the record evidence remains consistent with the court’s prior finding of non-infringement under the operating claim construction. Plaintiff’s supplemental submissions and citations to the record do not raise a genuine issue of material fact to preclude summary judgment under the court’s claim construction.

Discovery from non-party must come from U.S. entity and not foreign affiliate

Mary Matterer — Tue, 30 Apr 2013 17:18:54 -0500

Cradle IP LLC v. Texas Instruments, Inc., C.A. No. 11-1254-SLR, April 29, 2013.

Robinson, J. Non-party’s motion to quash is denied in part; plaintiff’s cross-motion to compel is granted in part.

The accused technology involves microprocessor chips. The discovery subpoenaed from a non-party relates to based transceiver stations that defendant has identified as incorporating the accused devices. The dispute centers on whether the non-party, a U.S. entity, has control over documents in the possession, custody or control of the non-party’s Finnish sister affiliate. The court concludes that there is insufficient justification to disregard the separate and distinct identities of the sister entities notwithstanding the difficulty in pursuing source code due to Finnish law. However, the motion to compel is granted to the extent the U.S. entity has an employee or representative with knowledge without the need to obtain documents from the Finnish entity and who is within the subpoena power of the court, which may include the New Jersey office of the U.S. entity. Also, a subpoena requesting documents as well as a deposition is proper if it issues from the place of deposition.

Court does not quash subpoena directed to patent prosecution law firm

Mary Matterer — Mon, 15 Apr 2013 18:07:00 -0500

Robocast, Inc. v. Microsoft Corporation, C.A. No. 13-104-RGA, April 12, 2013.

Andrews, J. Motion to quash subpoena is denied.

Law firm that prosecuted the patent at issue moved to quash a third party subpoena for testimony and documents. The motion was denied. The bare assertion that nine days was not a reasonable amount of time does not meet the movant’s burden, movant failed to demonstrate how the information sought will be cumulative or intrusive, and a blanket assertion of privilege is insufficient.

Balance of the equities warrants denial of motion to stay pending reexamination

Kenneth L. Dorsney — Fri, 12 Apr 2013 10:26:02 -0500

Walker Digital, LLC., v. Google, Inc., et al., C.A. No. 11-309-SLR, April 11, 2013.

Robinson, J. Plaintiff’s motion to file amended complaint is denied. Defendant’s motion to stay pending reexamination is denied.

Plaintiff moved for leave to file a first amended complaint. The motion was denied. Plaintiff’s assertions in support of amendment are insufficient at this stage of the case to demonstrate good cause under Akamai. Defendant’s motion to stay pending reexamination is denied. The judicial process has proceeded far enough that a stay would unduly prejudice plaintiff. The parties were engaged in summary judgment briefing and trial was scheduled to commence in fall of 2013.

Claim construction report and recommendation is confirmed over objection

Kenneth L. Dorsney — Fri, 12 Apr 2013 10:20:24 -0500

Lambda Optical Solutions, LLC v. Alcatel-Lucent USA Inc. et al., C.A. No. 10-487-RGA-CJB, April 11, 2013.

Andrews, J. Plaintiff’s objections to report and recommendation are overruled.

The magistrate judge issued a claim construction report and recommendation. Plaintiff filed objections. The court overruled the objections and confirmed the magistrate judge’s construction of “optical access ingress subsystem” and “at least one of.” De novo review by the court added to the magistrate’s reasoning in support of the construction but did not require alteration.

Court construes patents directed to telecommunication technology

Kenneth L. Dorsney — Wed, 10 Apr 2013 11:37:07 -0500

Golden Bridge Technology, Inc. v. Apple Inc. et al., C.A. Nos. 10-428-SLR and11-165-SLR, April 9, 2013

Robinson, J. Claim construction opinion. Plaintiff’s motion for partial summary judgment of infringement was denied. Defendant’s motion for summary judgment of non-infringement was granted. Defendant’s motion for summary judgment of invalidity was denied.

Claim construction argument was held on March 19, 2013. The parties narrowed the claim construction dispute to two terms for purposes of summary judgment. Those terms were as follows:

“access preamble/preamble;” and

“discrete power level.”

The court then granted defendant’s motion for summary judgment of non-infringement and denied plaintiff’s motion for partial summary judgment of infringement. Finally, the denied defendant’s summary judgment of invalidity.

Court strikes expert testimony directed to the inventors' diligence

Kenneth L. Dorsney — Wed, 10 Apr 2013 11:05:22 -0500

Golden Bridge Technology, Inc. v. Apple Inc. et al., C.A. No. 10-428-SLR, April 9, 2013.

Robinson, J. The parties’ respective Daubert motions are granted-in-part and denied-in-part.

The respective parties filed four motions to exclude or strike expert testimony. Defendant’s motion to exclude certain of plaintiff’s experts’ opinions regarding validity, attorney diligence, and infringement is granted-in-part and denied-in-part. It is granted as to attorney diligence, as the testimony is based not on records but on speculation and not helpful to the jury. Plaintiff’s motion to exclude or strike defendant’s expert’s opinions and testimony regarding the inventors’ diligence and failure to meet the written description requirement is granted-in-part and denied-in-part. The motion is granted as it relates to diligence, as the expert is unqualified to make the opinion. Finally, the parties cross-moved to strike testimony as to the claim limitation “spreading.” The motions were denied. Plaintiff’s concerns can be addressed on cross-examination and plaintiff’s expert’s testimony was not untimely

A genuine issue of material fact exists regarding the teaching of the prior art

Kenneth L. Dorsney — Wed, 10 Apr 2013 11:00:09 -0500

Cellectis S.A. v. Precision Biosciences, Inc et al., C.A. No. 11-173-SLR, April 9, 2013.

Robinson, J. The parties’ respective summary judgment motions were denied. Plaintiff’s motion to exclude testimony by defendant’s expert is denied.

Plaintiffs’ motion for summary judgment of infringement is denied. Defendant’s cross-motion for summary judgment of no literal infringement is denied. The dispute between the parties’ respective experts raises genuine issues of material fact. Plaintiffs’ motion for summary judgment of no invalidity for anticipation is denied. A genuine issue of material fact exists regarding what is taught by the prior art reference. Plaintiffs’ motion to exclude testimony by defendant’s expert is denied. The expert’s opinions are not unreliable or unhelpful, when measured by the relatively low standard at this stage of the proceedings.

The court also construed the following disputed terms:

“monomer of an I-Crel meganuclease variant . . . ;”

“modified DNA cleavage specificity . . . ;”

“a single-chain chimeric meganuclease . . . ;” and

“variant of the wild-type monomer from I-Crel.”

Summary judgment and Daubert rulings issue

Mary Matterer — Mon, 08 Apr 2013 11:07:32 -0500

Masimo Corporation v. Philips Electronics North America Corporation, et al., C.A. No. 09-80-LPS-MPT, April 2, 2013

Thynge, J. The court makes recommendations on 9 out of 11 summary judgment motions and 4 Daubert motions in a 200-page Report and Recommendation. The remaining issues are to be addressed in a separate opinion.

The disputed technology relates to pulse oximetry. The court recommends that:

plaintiff’s sj motion of infringement if the ‘222 patent be denied due to conflicting expert testimony.
defendants’ sj motion of invalidity of the ‘222 patent claims be granted in part and denied in part; and that it be It granted with respect to written description and denied as to anticipation.
defendants’ sj motion of invalidity of the ‘984 patent claims be denied based on factual questions remaining.
defendants’ sj motion of non-infringement of the ‘984 patent claims be granted.
defendants’ sj motions of non-infringement and invalidity of the ‘272 patent claims be denied based on factual questions remaining.
plaintiff’s motion to exclude testimony of John M Turner and its sj motions of noninfringement and invalidity of the ‘074 patent be denied. Any purported deficiency in expert’s testimony goes to weight.
defendants’ sj motion for sj of invalidity of anticipation of EP ‘117 be denied; its motion of invalidity of written description be granted; and its motion for sj of invalidity for lack of enablement be denied.
plaintiff’s sj motion of no literal infringement of the ‘535 patent claim be denied; its sj DOE motion based on vitiation, prosecution history estoppel and disclosed but unnamed embodiment be granted; its sj motion of invalidity of the ‘535 patent claims be denied.

defendants’ sj motion based on laches with respect to three patents be denied.

Court recommends against dismissing infringement claims

Mary Matterer — Mon, 08 Apr 2013 10:54:21 -0500

T5 Labs (Delaware) LLC v. Gaikai Inc., C.A. No. 12-1281-SLR-MPT, April 5, 2013.

Thynge, J. Report and Recommendation that defendant’s motion to dismiss for failure to state a claim for direct and indirect infringement be denied.

Plaintiff has adequately plead direct infringement by specifically alleging that defendant’s “cloud-based gaming applications and service” infringed the patent-in-suit. Also, the facts as alleged present a reasonable inference of defendant knowingly and intentionally encouraging others to infringe, namely its customers and end users. Therefore, plaintiff has a sufficiently pled an inducement claim against defendant. Finally, plaintiff provides facially plausible claims and adequate notice to defendant, which includes identifying the method or system at issue, defendant’s GPU cloud, and satisfying the pleading requirements of Twombly and Iqbal, and thereby has properly plead contributory infringement.

Foreign defendant and joint infringement claims are dismissed but induced infringement claim survives

Mary Matterer — Mon, 08 Apr 2013 10:45:52 -0500

Intellectual Ventures I LLC, et al., v. Nikon Corporation, et al., C.A. No. 11-1025-SLR, April 1, 2013.

Robinson, J. One defendant’s motion to dismiss for lack of personal jurisdiction is granted. Defendants’ motion to dismiss claims for induced and joint infringement is granted as to joint infringement.

Defendant moving on jurisdictional grounds is a Japanese entity that manufactures DSLR cameras in Japan and sells them to Nikon Corp. Plaintiff’s argument that the court has jurisdiction based on defendant receiving revenues from Nikon’s Delaware sales fails. While companies in the same business group may be subject to an agency theory such that sales of one can be attributed to another, the facts do not establish such agency relationship here. The defendant’s conduct is directed by its parent and is limited to Japan. Plaintiff’s argument that jurisdiction exists based upon a dual jurisdiction theory also fails. Plaintiffs’ claims of induced infringement are adequately plead where plaintiffs have sufficiently identified, for purposes of Rule 8, that defendants' customers directly infringe, that defendants encourage the infringement through their marketing and selling, and that defendants had the requisite knowledge. With respect to joint infringement, plaintiffs have not alleged any relationship between the remaining defendants that could plausibly lead to a showing that Nikon Corporation exercises control or direction over its co-defendants.

Court lacks personal jurisdiction over one defendant

Mary Matterer — Mon, 08 Apr 2013 10:24:03 -0500

M2M Solutions LLC v. Simcom Wireless Solutions Co. et al., C.A. No. 12-034-RGA, April 1, 2013.

Andrews, J. Defendant Micron Electronics LLC’s motion to dismiss for lack of personal jurisdiction is granted. Jurisdictional discovery is denied.

The disputed patents concern “machine-to-machine” technology. The court finds that plaintiff failed to make a prima facie case for personal jurisdiction. Its request for jurisdictional discovery is denied and defendant’s motion to dismiss is granted. Plaintiff has no physical presence, employees or third-party distribution network in Delaware. It does have a web-site accessible in Delaware, but it is a passive web-site, not accepting orders from anywhere, including Delaware. No evidence was offered that any of defendant’s products have entered Delaware.

Judgment in favor of plaintiffs is awarded in ANDA case

Mary Matterer — Mon, 08 Apr 2013 09:59:48 -0500

In re: Armodafinil Patent Litigation MDL No. 10-md-2200-GMS, C.A. Nos. 10-cv-007-GMS, 10-cv-055-GMS, 11-cv-782-GMS, 10-cv-210-GMS, 10-cv-695-GMS, and 10-cv-1078-GMS, March 30, 2013.

Sleet, J. Court rules on post-trial motions and makes findings of fact and conclusions of law concerning the validity of the patents-in suit in favor of plaintiff Cephalon.

The disputed patents relate to armodafinil, marketed as Nuvigil®. A 4-day bench trial was held on July 17 through July 20, 2012. The court finds that the asserted claims of the patents-in-suit are not invalid as anticipated or as obvious. Defendants are enjoined from commercially manufacturing, using, offering for sale, or selling their proposed ANDA products prior to the expiration of the ‘570 patent and the FDA is enjoined from approving the ANDAs. Plaintiff’s motion for JMOL is terminated as moot. Plaintiff’s Rule 52(c) motion is granted and defendants’ Rule 52(c) motion is denied. The clerk is directed to enter final judgment in favor of plaintiffs and against defendants.

Court declines to exclude expert testimony challenged in 7 Daubert motions

Mary Matterer — Mon, 08 Apr 2013 09:52:25 -0500

St. Clair Intellectual Property Consultants, Inc., v. Acer, Inc., et al., C.A. Nos. 09-354-LPS and 10-282-LPS, March 29, 2013.

Stark, J. The court denies seven Daubert motions.

Defendants’ challenged experts include Mr. Gross, Dr. Lorin Hitt, Portia Bass, John C. Jarosz, Charles A. Martinez. Plaintiff’s challenged expert include Ted Drake, Michael J. Wagner and Dr. Christopher R. Knittel. The court adopts both sides’ defensive positions and allows these experts’ testimony to be challenged on cross-examination.