Delaware Patent Litigation Report

Delaware Patent Litigation Report

Claim construction opinion issues regarding mobile tracking technology

Posted in Claim Construction

CallWave Communcations, LLC v. AT&T Mobility, LLC, et al., C.A. Nos. 12-1701-RGA; 12-1702-RGA; 12-1703-RGA; 12-1704-RGA; 12-1788-RGA, December 17, 2014.

Andrews, J.  The court construes 15 terms from two patents.

The following terms were construed:

  1. mobile platform;
  2. remote tracking system;
  3. a property that is predetermined for each mobile platform;
  4. determining [determine] for each mobile platform one of the remote tracking systems that is capable of locating said mobile platform;
  5. transmitting [transmit] the location of each mobile platform to said subscriber;
  6. subscriber;
  7. plurality of remote tracking systems
  8. map information;
  9. information . . . related to a user’s purchase request/ purchase request information
  10. causing at least in part an electronic communication to be originated from a mobile device;
  11. electronic communication;
  12. over at least one network;
  13. first destination;
  14. the user is billed for a purchase price associated with the purchase request at least partly in response to the communication;
  15. causing at least in part a charge for the purchase to be billed via a phone bill

Banking software patent is found to be invalid

Posted in Infringement, Invalidity, Summary Judgment

Joao Bock Transaction Systems, LLC v. Jack Henry & Associates, C.A. No. 12-1138-SLR, December 15, 2014.

Robinson, J.  Defendant’s motion for summary judgment of invalidity is granted; plaintiff’s motion for validity is denied. Defendant’s motion for summary judgment of non-infringement is granted; plaintiff’s motion for infringement is denied. Plaintiff’s motion to strike defendant’s motion for summary judgment of invalidity is denied and to strike portions of infringement motion is denied as moot. Defendant’s motion to strike new infringement theories is denied as moot; Defendant’s motion to strike portions of plaintiff’s expert’s report of Alex Cheng is denied as moot.

The disputed technology relates to software for banking. The court applies the analytical framework of Alice to determine that the disputed claims are patent eligible under section 101. The patent uses software to perform tasks familiar in the banking industry.  The fact that there are apparatus claims rather than method claims does not change the analysis.  The preemption inquiry also persuades the court that the claims are not patentable. The claims are invalid, and therefore not infringed.  The court does not reach the remaining issues.

Disputed terms are construes relating to enterprise communications in an asynchronous messaging environment

Posted in Claim Construction

YYZ, LLC v. Hewlett-Packard Company, et al., C.A. Nos. 13-136; -SLR; 13-579; -SLR; 13-581; -SLR, December 12, 2014.

Robinson, J. The court considers 17 disputed terms for claim construction.

The follow terms are construed:

  1. Asynchronous messaging environment;
  2. Process;
  3. Sub process;
  4. Activity;
  5. Original message
  6. Original message data;
  7. Part of said original message data; (not construed)
  8. Monitoring message;
  9. Central message repository;
  10. Providing, through a monitoring message, at least part of said original message data to a central message repository;
  11. Transaction record
  12. Orders;
  13. Reviewing data collected in said transaction record; (not construed)
  14. Reviewing said central message repository; (not construed)
  15. Real time;
  16. Transmitting said original message data from said first activity, via a first monitoring message, to a central message repository;
  17. Secure basis

Court construes disputed terms in buprenorphine dispute

Posted in Claim Construction

Reckitt Benckiser Pharmaceuticals, Inc., et al. v. Watson Laboratories, Inc., et al., C.A. Nos. 13-1674 RGA; 14-422- RGA, December 12, 2014.

Andrews, J.  The judge construes ten  disputed terms from three patents. A Markman hearing was held on December 3, 2014.

The court construes the following terms:

  1. the polyethylene oxide comprises one or more low molecular weight polyethylene oxides and one or more higher molecular weight polyethylene oxides, the molecular weight of the low molecular weight polyethylene oxide being in the range of 100,000 to 300,000 and the molecular weight of the higher molecular weight polyethylene oxide being in the range of 600,000 to 900,000; and the polyethylene oxide of low molecular weight comprises about 60%or more in the polymer component;
  2. molecular weight;
  3. provide a local pH for said composition of a value sufficient to optimize absorption of said buprenorphine, wherein said local pH is from about 3 to about 3.5 in the presence of saliva;
  4. provide a local pH;
  5. bioequivalent absorption of buprenorphine to that of a tablet having an equivalent amount of buprenorphine;
  6. flowable
  7. viscosity sufficient to aid in substantially maintaining non-self aggregating uniformity of the active in the matrix;
  8. substantially uniformly stationed;
  9. taste-masking of the active; and
  10. capable of being dried without loss of substantial uniformity.

Post-trial opinion issues in daptomycin dispute

Posted in Claim Construction, Final Judgment, Indefiniteness, Infringement, Invalidity, JMOL/New Trial

Cubist Pharmaceuticals, Inc. v. Hospira, Inc., C.A. No. 12-367-GMS, December 8, 2014.

Sleet, J.  Post-trial opinion issues in ANDA case after a 5-day bench trial held February 18 through 24, 2014.

The accused product is defendant’s daptomycin.  The court finds that:

  1. The disputed certificate of correction is not invalid and therefore defendant’s product infringes the ‘071 patent;
  2. The ‘071 patent is not invalid;
  3.  The ‘071 patent is not invalid for improper recapture;
  4. Revision to claim construction for “daptomycin” is not warranted and therefore accused products infringe;
  5. Four patents are not invalid for lack of written description;
  6. Asserted claims of the ‘967 patent are invalid due to anticipation;
  7. Asserted claims of ‘967 and ‘689 patents are invalid due to obviousness;
  8. Claim 98 of the ‘238 patent is invalid due to anticipation;
  9. Asserted claims of ‘238 and ‘342 patents are invalid due to obviousness;
  10. Defendant’s 102(f) derivation defense is precluded as untimely;
  11. Each parties’ Rule 52(c) motions are granted in part and denied in part.

Court construes “electrode” on remand as before the appeal

Posted in Claim Construction, Evidence, Invalidity, Reconsideration/Reargument

Roche Diagnostics Operations, Inc., et al. v. Abbott Diabetes Care, Inc., et al., C.A. No. 07-753-RGA, December 5, 2014.

Andrews, J.  Claim construction reissues after remand.

The term “electrode” was originally construed as “microelectrode having a width of 15 µm up to approximately 100 µm.”  Plaintiff moved for reconsideration positing a different construction theory from the one previously advanced, which was denied.  Summary judgment was granted in favor of defendants and plaintiff appealed.  The Federal Circuit remanded to consider the arguments as to the scope of the term “electrode,” enablement, and the propriety of considering new extrinsic evidence presented by plaintiff in support of its new claim construction.  The court heard argument and thereafter construes the term as before: “microelectrode having a width of 15 µm up to approximately 100 µm.”

Design patent for cardboard box is not infringed

Posted in Daubert/Experts, Exceptional Case/Willfulness, Infringement, Invalidity, Summary Judgment

Poly-America, L.P. v API Industries, Inc., C.A. No. 13-693-SLR, November 25, 2014.

Robinson, J.  Plaintiff’s motion for summary judgment of no invalidity is granted.  Plaintiff’s motion for summary judgment that the case is not exceptional is granted.  Defendant’s motion for summary judgment of non-infringement is granted and for invalidity is denied.  Plaintiff’s motion to exclude expert opinions is denied in part with leave to renew remaining arguments.

The patent-in-suit contains a single design claim based on drawings of a six-sided cardboard box with a front opening.  The parties disagree as to whether certain features are ornamental rather than functional and whether the accused designs are substantially similar to the claimed design.  The court finds that the patented and accused designs are not substantially the same.  The court grants plaintiff’s motion for summary judgment of no invalidity due to anticipation because none of the identified prior art contains a dual-sided perforated trapezoidal opening in conjunction with a tabbed upper flap and slots, and therefore the prior art is not substantially the same as the claimed design.  Questions of fact remain regarding invalidity based on obviousness.  Plaintiff’s expert has 40 years of experience in product packaging, enough to meet the liberal standard under FRE 702.  Defendant’s motion to exclude certain opinions is denied in part with leave to renew if the case proceeds to trial.

Court permits defendants to amend to add inequitable conduct claim

Posted in Amendment of Pleadings, Equitable Defenses and Remedies

Graphic Properties Holdings, Inc. v. Google, Inc, et al., C.A. No. 12-1394-LPS; Graphics Properties Holdings, Inc. v. Lenovo Holding Company, Inc., et al., 12-1397-LPS, November 20, 2014.

Stark, C.J.  Defendants’ motion to amend their answers to add a claim of inequitable conduct is granted. The Court heard oral argument on the motion during a teleconference on October 3, 2014.

In a previous appeal, the Federal Circuit stated that the specification of the disputed patent did not disclose or support scan conversion in any format except floating point.  The patent in suit is a continuation from that patent.  Defendants allege that during prosecution of the patent in suit, plaintiff and its attorneys withheld the Federal Circuit Order with the intent to deceive the PTO.  In the application that issued as the ’158 patent, plaintiff and its attorneys claimed a “scan converter being configured to scan convert data received at the input, at least a portion of the data received at the input being in floating point format.”  Plaintiff contends the amendment is futile because it provided the PTO examiner with actual notice of the District Court order.  Defendants’ allegations of inequitable conduct, however, are based on plaintiff’s failure to disclose the Federal Circuit order.  While plaintiff argues amendment would be futile since the appellate order is merely cumulative of the district court order, the court finds that Defendants have articulated a plausible theory to the contrary.  The Amended Answer alleges that the Federal Circuit order is material because it contained adverse statements not contained in the District Court order.

Reargument bid regarding lack of standing opinion fails

Posted in Dismissal, Jurisdiction/Venue/Standing, Reconsideration/Reargument

Clouding IP, LLC v. AT&T Mobility LLC, et al., C.A. Nos. 13-1342 – LPS; 13-1454 – LPS; 13-1455 – LPS; 13-1458 – LPS, November 17, 2014.

Stark, C.J.  Plaintiff’s motion for reargument of July 28, 2014 memorandum Order holding no subject matter jurisdiction due to lack of standing is denied.

Plaintiff argued that it should be given a chance to fix the jurisdictional defect rather than dismiss the action.  The court notes that plaintiff never previously asked for this relief and declined. Plaintiff never , during the months the motion was pending, attempted to cure the defect.  The court declines to grant the plaintiff a “do-over” after all the time the parties and the court have devoted to resolve the motion.  Plaintiff did not seek to cure in a timely manner. An amended patent purchase agreement designed to cure the defect comes too late.

Objections to claim construction Report and Recommendation are overruled

Posted in Appeal of Magistrate Report and Recommendation, Claim Construction, Invalidity, More Definite Statement

Hand Held Products, Inc. v., et al., C.A. No. 12-768 – RGA- MPT, November 5, 2014.

Andrews, J.  The parties’ objections to the magistrate’s report and recommendation regarding claim construction are overruled and the constructions in the 6/24/14 report and recommendation are adopted.

One objection made was that the magistrate applied the wrong standard for indefiniteness since the standard changed by the Nautilus Supreme Court opinion while the claims were under consideration.  The court rejected the argument that Nautilus eliminated the requirement of proving invalidity by clear and convincing evidence.