Delaware Patent Litigation Report

Delaware Patent Litigation Report

Claims are construed regarding HVAC technology

Posted in Claim Construction

Carrier Corporation v. Goodman Global, et al. (2), C.A. No. 12-930 – SLR, August 14, 2014.

Robinson, J. The court construes 10 terms from one patent.

The following terms are construed:

  1. HVAC units
  2. Indoor unit/ outdoor unit
  3. Data bus
  4. Central control
  5. Control algorithms
  6. Optimal control strategy
  7. Determining an optimal control strategy for said indoor unit and said outdoor unit, selecting a particular one of said optimal control strategies, selecting one of said plurality of control algorithms and determine optimum control algorithms
  8. Characteristic(s) and characteristic information
  9. Said control
  10. Connectivity kit

Defendants’ late direct infringement defense precludes summary judgment

Posted in Infringement, Invalidity, Motion to Strike/Preclude, Sanctions

Carrier Corporation v. Goodman Global, et al., C.A. No. 12-930 – SLR, August 14, 2014.

Robinson, J. Defendants’ motions for summary judgment of non-infringement and invalidity are denied. Defendants’ motion to strike and exclude certain expert testimony is granted in part and denied in part. Plaintiff’s motions for summary judgment of no invalidity are denied.

The disputed technology relates to controls for HVAC systems.  Defendants argue that since they sell only individual units and not systems, it cannot be liable for direct infringement of systems. Defendants’ failure to articulate this defense with clarity so plaintiff could respond and the schedule adjusted if necessary results in denial of its motion. This issue should have been vetted through discovery. The court will address at the pretrial conference whether defendant will be precluded from presenting such a defense at trial. Issues of fact preclude summary judgment regarding indirect infringement. With respect to invalidity based upon anticipation, the court disagrees with defendants that no expert testimony is required.  Plaintiff’s cross-motion is denied since the court is left without the essential analysis. Both parties’ motions with respect to obviousness are denied due to disputed issues of material fact.  Defendants are precluded from relying on prior art disclosed nine months after the deadline since it was not properly vetted through discovery. The motion to strike opinions of Blackburn and Henze with respect to commercial success is granted only in part.

At risk launch before invalidity reversal was not willful

Posted in Damages, Daubert/Experts, Exceptional Case/Willfulness, Sanctions, Summary Judgment

Anesta AG, et al. v. Mylan Pharmaceuticals, Inc., C.A. No. 08-889 – SLR, August 14, 2014.

Robinson, J. Defendants’ motions for summary judgment of no lost profits is denied and of no willfulness is granted. Defendants’ motion to exclude expert testimony is denied.

The court previously found that defendants infringed but that the patents-in-suit were invalid.  Defendants launched at risk and the court enjoined sales pending appeal and required a recall.  The Federal Circuit reversed the injunction order only as to the recall.  On appeal, the invalidity determination was reversed. The subject motions relate to damages.  Defendants committed no illegalities during the launch and judgment of no willfulness was granted. With respect to lost profits, price elasticity was not discussed by plaintiff’s expert Dr. Maness in his report.  Plaintiffs may present a lost profits analysis and the expert will be limited to the evidence of record.

Case is transferred to Ohio

Posted in Jurisdiction/Venue/Standing, Transfer

Nalco Company v. AP Tech Group Inc., C.A. No. 13-1063 – LPS, August 8, 2014.

Stark, J. Defendant’s motion to transfer to the Southern District of Ohio is granted.

All but one of the Jumara factors are either neutral or weigh in favor of transfer.  Plaintiff’s choice of forum weighs against transfer.  However, since Delaware is not plaintiff’s home turf, that factor is entitled to less deference. Plaintiff is an Illinois corporation with its principal place of business in Illinois. Defendant is a small regional company with only12 employees,  all employed in Ohio. Defendant is a Delaware corporation but that fact is not dispositive. Its headquarters is 450 miles closer to plaintiff’s principal place of business than is Wilmington, Delaware.

Claim construction opinion issues relating to intraluminal graft devices

Posted in Claim Construction

W.L. Gore & Associates, Inc. v. C.R. Bard, Inc., et al., C.A. No. 11-515 – LPS – CJB, August 8, 2014.

Burke, M.J. The Magistrate issues a report and recommendation regarding the proper construction of six disputed terms.

The court construes the following terms:

  1. Tubular, diametrically adjustable/ diametrically adjustable/stent
  2. Wall
  3. Multiplicity/openings
  4. Covering
  5. The first tubular covering is affixed to the second tubular covering … through openings through the wall of the stent
  6. Collapsed diameter/ enlarged diameter

The decision here is without prejudice to challenge a claim as indefinite at the summary judgment stage.

Early claim construction opinion issues in computer data processing system dispute

Posted in Claim Construction

Technology Innovations Associates v. Google, Inc., C.A. No. 13-355-LPS, August 7, 2014.

Stark, J. The court conducted an early, limited claim construction proceeding on one term. Briefing was completed on July 11, 2014 and a Markman hearing was held on July 21, 2014.

The disputed technology relates to a computer data processing system for the management of data objects. The court agreed to an early claim construction relating to a single term – “sticky path” – as likely to facilitate a just, speedy, and inexpensive determination of this action. The court construes that term and adopts the agreed-upon constructions of 4 more terms.

Complaint withstands challenge as claim splitting and as collateral attack

Posted in Dismissal, Equitable Defenses and Remedies, Invalidity

Vehicle Interface Technologies, LLC v. Jaguar Land Rover North America, LLC, C.A. No. 14-339 – RGA, August 6, 2014.

Andrews, J. Defendant’s Motion to dismiss complaint is denied.

Defendant claims that this action is barred by the doctrine of claim splitting and also argues that it is an impermissible collateral attack on this court’s previous order which excluded the newly alleged infringing products from the first lawsuit. The defendant previously relied on the functional differences between the first accused products and newly accused products in successfully preventing the new products from being joined in the lawsuit.  Plaintiff then filed a second lawsuit accusing those products it had not been able to join in the first lawsuit. Defendant now seeks to dismiss the second action. Defendant now relies on the similarities between the products to argue claim splitting and collateral estoppel. The court now finds that the doctrine of claim splitting does not bar this suit, nor is the current action an impermissible collateral attach.

Invalidity counterclaim insufficiently pled

Posted in Amendment of Pleadings, Dismissal

EMC Corporation, et al. v. Zerto, Inc., C.A. No. 12-956 – GMS, July 31, 2014

Sleet, J. Plaintiffs’ motion to dismiss defendant’s invalidity counterclaims  and defendant’s motion to amend to add inequitable conduct counterclaims are granted.

Defendant alleged that one or more claims are invalid due to “failure to comply with the conditions of patentability specified by Title 35 of the United States Code, including without limitation 35 U.S.C. §§ 101, 102, 103 and 112.” The court finds these are merely bare-bones legal conclusions devoid of supporting factual allegations, insufficient under Twombly and Iqbal. The court finds that defendant’s timely motion to amend its counterclaims to assert inequitable conduct sets forth sufficient facts.  One counterclaim asserts violations of the duty to disclose prior art and the duty of candor and good faith. The second alleges plaintiff filed an application for an invention which merely combined two existing prior art products without sufficient detail to allow the PTO to determine if the combination was inventive. The motions to dismiss and amend are granted.

Claims are construed regarding electronic check processing software

Posted in Claim Construction

Mitek Systems, Inc. v. TIS America, et al., C.A. No. 12-1208 – RGA, August 6, 2014.

Andrews, J. Claim construction opinion issues on four terms. Oral argument was held on August 5, 2014.

The following terms were construed:

  1. Smaller color image
  2. Configured
  3. Entering the extracted financial content from identified the at least one field into a new financial document with at least one corresponding field

Adapted to be recognized by at least one financial processing system

Reconsideration regarding design patent is denied

Posted in Infringement, Reconsideration/Reargument, Summary Judgment

Poly-America, L.P. v. API Industries, Inc., C.A. No. 13-693 – SLR, August 6, 2014.

Robinson, J. Defendant’s motion for reconsideration is denied.

The accused design is for an empty six-sided folding box.  Applying the “ordinary observer “test for a design patent the court rejected defendant’s argument that the ordinary observer of the accused product should not be the retail consumer but rather the industrial purchaser for businesses that assemble the retail product. The court also rejects the argument that perception of the hypothetical purchaser must include all views shown in the design patent figures. The court noted that articles which are concealed in normal use are not proper subjects for design patents, and the flaps depicted in the patent are not visible at any time during normal use. Reconsideration is accordingly denied.