Delaware Patent Litigation Report

Delaware Patent Litigation Report

Claims are construed regarding technology for redeeming discount offers

Posted in Claim Construction, Motion to Strike/Preclude

Motivation Innovations LLC v. Ulta Salon Cosmetics & Fragrance Inc., C.A. No. 11-615-SLR, July 22, 2014.

Robinson, J.  Claims are construed regarding methods for redeeming discount offers; defendant’s motion to strike plaintiff’s late claim construction positions is denied.

Defendant’s motion to strike is denied since defendant itself  reserved the right to modify its own positions, and since claim construction is a matter of law and focuses on intrinsic evidence.  The following claims are construed:

  1. A circulation medium
  2. Associating said identification code with data identifying items which are to be offered at a discount/ associating said identification code means . . . with data identifying items to be offered at a discount
  3. Associating said identification code means with the addressee of the circulation medium and with data identifying items to be offered at a discount
  4. Addressable by said identification code
  5. Means for reading said identification code provided with said circulation medium
  6. Using said code reading means to read the identification code indicia means and to create a data file
  7. Any discount corresponding to an item listed in said data is deducted from the price of the item in the tabulation
  8. Providing as a part of said identification code identification indicia means on said medium for identifying the addressee of said medium
  9. The user
  10. Using each data file . . . as a means to study buying habits of the recipient of the medium
  11. Means associated with said code reading means for tabulating sales of items so that any discount corresponding to an item listed in said data is deducted from the price of the item in the tabulation
  12. Means for tabulating items
  13. Means for tabulating items and for recording the items purchased by the nearer of the circulation medium
  14. Means for calculating the at least one discount on the item offered at discount by said identification code means


Summary judgment and rulings limiting expert testimony issue

Posted in Daubert/Experts, Infringement, Invalidity, Motion to Strike/Preclude, Obviousness, Summary Judgment

Motivation Innovations LLC v. Ulta Salon Cosmetics & Fragrance Inc.., C.A. No. 11-615-SLR, July 22, 2014.

Robinson, J.  Defendant’s motion for summary judgment of invalidity is denied; its motion for summary judgment of non-infringement is granted; defendant’s motion to exclude expert testimony is granted in part and denied in part.

The patent-in-suit discloses claims and methods for redeeming discount offers.  Defendant’s indefiniteness argument was not reached since the court construed the means-plus-function claims as having a structure, and that the specification adequately disclosed an algorithm. Defendant’s anticipation argument is rejected due to superficial analysis of coupons (not the claimed method). Plaintiff’s expert Wasilew qualifies as an expert.  Although he lacks formal education he has 38 years of experience with systems such as those used by defendant, programming language experience, and work designing retail POS devices.  Defendant’s motion to exclude this expert’s testimony which is inconsistent with the court’s claim construction is granted.  Defendant does not literally infringe because the barcode does not identify a file which contains specific items offered at discount; instead, it identifies files which contain items ineligible to receive a discount. Plaintiff’s expert offered an opinion regarding a POS machine not requiring an algorithm. The court construed the claim as a POS with an algorithm disclosed in the specification, and noted that the parties’ experts may need to supplement their opinions to comport with the court’s claim construction.  The court further finds no literal infringement of barcode limitations. Defendant’s motion to exclude DOE testimony is denied since the opinions were contained in the expert’s report and were timely supplemented after inspection of defendant’s system. Defendant’s motion for non-infringement under the DOE is granted, rejecting the argument that the identification of items ineligible for a discount is the equivalent of identification of items eligible for a discount.

Motion to preclude expert testimony is denied

Posted in Delaware Procedure/Rules, Discovery, Motion to Strike/Preclude

Helios Software, LLC, et al. v. SpectorSoft Corporation, C.A. No. 12-081-LPS, July 18, 2014.

Stark, J.  Plaintiff’s motion to exclude portions of expert testimony of Christian B. Hicks based on discussions with defendant’s employee is denied.

Although defendant’s witness had been identified in defendant’s initial disclosures, his name had been withdrawn after plaintiff asked defendant to shorten its witness list.  Defendant’s expert identified discussions with this employee in his expert report and subsequent deposition.  Plaintiff did not disclose the claim of direct infringement by reason of testing until the last day of fact discovery.  The court finds that prejudice to plaintiff can be cured by a short deposition of this witness, which will not disrupt the trial.  Plaintiff’s motion is therefore denied and defendant is ordered to make the witness available for deposition limited to three hours.

Amended answer is stricken with costs awarded; further amendment is permitted

Posted in Amendment of Pleadings, Costs, Motion to Strike/Preclude, Sanctions

Helios Software, LLC, et al. v. SpectorSoft Corporation, C.A. No. 12-081-LPS, July 18, 2014.

Stark, J.  Plaintiff’s motion to strike defendant’s amended answer and to award costs and expenses incurred in presenting this motion is granted.  Defendant’s request for leave to file an amended pleading to update its answer and counterclaim is granted.

On December 19, 2013, the court granted defendant’s motion for leave to file an amended responsive pleading to add a claim of inequitable conduct.  However, the defendant amended with a pleading significantly different from the amended answer it had proposed to the court, containing sixteen new paragraphs over eight additional pages.  The court was troubled that defendant modified the amended pleading without seeking the court’s approval.  A proposed modified pleading mitigates any prejudice to plaintiff.  An exhibit relevant to inequitable conduct is not a back-channel attempt to introduce hearsay evidence into the record.

Summary judgment motion based on license defense fails

Posted in Case Summaries, Estoppel, Infringement, License Defense, Summary Judgment

Comcast IP Holdings I, LLC v. Sprint Communications Company L.P., et al. C.A. No. 12-205-RGA, July 15, 2014.

Andrews, J.  Defendant’s motion for summary judgment that claims are barred by license and estoppel is denied.

Plaintiff acquired the disputed patent from Hewlett-Packard subject to outstanding licenses, one of which was with a manufacturer of many of the devices Defendant uses. Defendant argues it has both an express and implied license.  The court denies defendant’s motion for summary judgment, finding that defendant has not proven that the license covers the asserted patents.  The court asked whether summary judgment for plaintiff should be awarded without a competing motion from plaintiff. The parties submitted briefing on that issue and the court finds that the record is not sufficiently developed to grant summary judgment in plaintiff’s favor.

Inequitable conduct amendment is allowed; other amendments are disallowed as untimely

Posted in Amendment of Pleadings, Equitable Defenses and Remedies, Inventor Issues, On-sale bar, Unfair Competition

Cot’n Wash, Inc., et al. v. Henkel Corporation, et al., C.A. No. 12-650-SLR and Cot’n Wash, Inc., et al. v. The Sun Products Corporation, C.A. No. 12-651-SLR, July 11, 2014.

Robinson, J.  Henkel’s motion to file second amended answer is denied.  Sun’s motion to amend its answer is denied with respect to a false marking counterclaim and granted as to inequitable conduct.

The scheduling order has no specific deadline for amending.  Fact discovery ended January 20, 2014 and expert discovery ended March 1, 2014.  Henkel seeks to amend to add counterclaims of false marking, false advertising and deceptive trade practices.  Sun seeks to include a counterclaim of unenforceability due to inequitable conduct.  The court notes that courts in this circuit have denied motions to amend based solely on unexplained delay.  In this case, defendants filed their motions nearly three months after they sent their proposed amendments to plaintiff and two weeks after the close of fact discovery.  Given lack of justification for not filing earlier, the court finds undue delay.  With respect to inequitable conduct, however, Sun obtained the information relevant to this claim one week before raising it.  Defendants’ conclusory allegations regarding false marking do not plead sufficient facts to indicate a “plausible causal connection” between the alleged false marking and the alleged injury.  With respect to inequitable conduct, the amendment is not futile because defendant alleged the who, what, where, and how of the material misrepresentations before the PTO.

Bid for a preliminary injunction fails

Posted in Damages, Equitable Defenses and Remedies, Invalidity, Preliminary Injunction

Antares Pharma, Inc. v. Medac Pharma, Inc., et al., et al., C.A. No. 14-270-SLR, July 10, 2014.

Robinson, J.  Plaintiff’s amended motion for preliminary injunction is denied.

The disputed technology relates to a methotrexate injection product.  The court found that plaintiff has not carried its burden of proving likelihood of success on the merits that defendant’s products infringe claims directed to a “jet injector.”  The “recapture rule” was applied, and the court found that surrendered subject matter has crept back into the reissue claims.  Plaintiff did carry the burden of proving irreparable harm.  As the sole company presently marketing the product in the U.S., plaintiff successfully argued that launch of a competing product would force a renegotiation of current formulary tier and pricing structure in addition to price erosion and threatening the brand.  The balancing of harm is a neutral factor since a delayed launch would also cause damages.  The public interest factor is also neutral.

Terms relating to levoleucovorin products are construed in ANDA case

Posted in Claim Construction

Spectrum Pharmaceuticals, Inc., et al. v. Innopharma, Inc., et al., C.A. No. 12-260-RGA-CJB, July 2, 2014.

Burke, M.J.  Report and recommendation regarding claim construction issues in ANDA case.  The court construes 10 terms from one patent relating to levoleucovorin products, generic versions of Fusilev®.  A Markman hearing was held July 23,2013.  Briefing on additional authority was submitted and another hearing took place on February 14, 2014.  Additional briefing took place regarding a term that arose after a discovery dispute.

The parties agreed on 9 proposed constructions which the court adopted.  The remaining disputed terms are:

  1. Mixture/ percentage
  2. Said composition being of a quantity at least sufficient to provide multiple doses of said mixture of (6S) and (6R) diastereoisomers in an amount of 2000 mg per dose

Reargument and reconsideration motions are denied

Posted in Infringement, Reconsideration/Reargument, Summary Judgment

Masimo Corporation v. Philips Electronic North America Corporation, et al., C.A. No. 90-080-LPS-MPT, July 2, 2014.

Stark, J.  Defendants’ motion for reargument of the court’s March 31, 2014 ruling which overruled objections that certain claims are not infringed was denied.  Plaintiff’s motion for reconsideration that no claims of a second patent were infringed was denied.

The court did not misapprehend defendants’ argument, but rather rejected it.  With respect to plaintiff’s motion, the court agreed with defendants that summary judgment of non-infringement was not limited to literal infringement.

Claim construction opinion issues with respect to online banking products

Posted in Claim Construction

Joao Bock Transaction Systems, LLC v. Jack Henry & Associates, Inc., C.A. No. 12-1138-SLR, June 30, 2014.

Robinson, J.  The court discusses the multiple definitions the patentees provided during the claim amendment process which were not included in the specification, were not the subject of examiner’s comments, and which were made years later for litigation purposes.  Claims added in the disjunctive obscure rather than narrow the scope of the claims.  The definitions are not “clearly stated” as required for public notice under §112.  The court construes the following terms:

1. at least one of …and

2. communication device

3. processes/ processing

4. receiver

5. signal

6. transmitter

7. banking transaction

8. central transaction processing computer

9. electronic mail message

10. limitation/ restriction

11. network computer

12. processing device

13. real time

14. transaction

15. transaction security apparatus

16. transmit(s)/ transmitted

17.communication device associated with an individual account

18. containing information for authorizing or disallowing the transaction

19. determines whether the banking transaction is allowed or disallowed

20. information regarding a banking transaction

21. internet transaction

22. automated teller machine account

23. transmitter, wherein the transmitter transmits a second signal to the communication device or to a second communication device associated with the individual account holder, wherein the second signal contains information regarding the banking transaction

24. transmitter, wherein the transmitter transmits a periodic transaction record to the communication device or to a second communication device associated with the individual account holder, wherein the periodic transaction record shows a transaction or transactions on the checking account for a time period, wherein the periodic transaction record is transmitted to the communication device or to the second communication device at least one of automatically and in response to a request for the periodic transaction record

25. transmitter, wherein the transmitter transmits a second signal to the communication device or to a second communication device associated with the individual account holder, wherein the second signal contains information regarding the transaction