Delaware Patent Litigation Report

Delaware Patent Litigation Report

Claim term relating to cellular transceivers is construed

Posted in Claim Construction

Interdigital Communiciations, Inc., et al. v. Nokia Corporation, et al, C.A. No. 13-010 – RGA , April 24, 2015

Andrews, J.  Claim construction decision issues.

The disputed technology relates to a cellular transceiver configured to communicate with a cellular wireless network.  With trial scheduled to begin April 27, 2015, at the pre-trial conference the court invited the parties at the pretrial conference to submit letters regarding whether additional claim construction was needed before trial.  The plaintiff requested construction of “configured to communicate  . . . via a plurality of assigned physical channels.”  Defendants requested construction of “a plurality of assigned physical channels.”

Summary judgment of no willful infringement is granted

Posted in Exceptional Case/Willfulness, Summary Judgment

Fairchild Semiconductor Corporation, et al. v. Power Integrations, Inc, C.A. No. 12-540 – LPS, April 23, 2015.

Stark, C. J.  Plaintiffs’ motion for summary judgment of no willful infringement is granted.  Oral argument took place on March 3, 2015. Trial is scheduled for May 26, 2015.

The first prong of Seagate can not be satisfied because Plaintiffs’ assertion of non-infringement is reasonable.  They contend the accused products lack the required “soft start circuit means” and that the accused products were redesigned versions consistent with that defendant had previously indicated would be non-infringing.

Two of the three patents-in-suit are patent ineligible; the invention in the third is patentable

Posted in Invalidity, JMOL/New Trial

Intellectual Ventures I LLC v. Symantec Corporation, et al; Intellectual Ventures I LLC  v. Trend Micro Incorporated, et al., C.A. Nos. 10-1067 – LPS; 12-1581–LPS, April 22, 2015.

Stark, C. J.  Defendants’ motions for judgment of patent invalidity are granted in part and denied in part.

A trial against Symantec resulted in a jury verdict of $17 million. A section 101 decision was reserved for post-trial briefing.  The Trend Micro trial is scheduled for May. The standard of proof on a § 101 motion is unsettled by the judge finds that under the clear and convincing standard it would find the ‘050 and ‘142 patents to be patent ineligible. The court would not find the ‘610 patent, ineligible even under the lesser preponderance of the evidence standard The ‘050 patent relates to a method of receiving information related to a file from a querying computer.  The court finds the claims are directed to an abstract idea and not necessarily rooted in computer technology.  The limitations do not add an “inventive concept” as they do nothing more than limit the abstract idea  to SPAM email detection. The claims of the ‘142 patent are directed to generic implementation of an abstract idea – implementing well-known post office functionality using a computer. The ‘610 patent, on the other hand, is directed to screening for computer viruses, which has computer-centric implications which cannot be broadly abstracted away.

Magistrate recommends dismissing certain induced infringement claims

Posted in Dismissal

Glaxosmithkline LLC, et al. v. Glenmark Generics Inc., USA, et al, C.A. Nos. 14-877–LPS–CJB; 14-878–LPS-CJB, April 22, 2015.

Burke, M. J.  Report and Recommendation recommends granting in part and denying in part defendants’ motions to dismiss.

The disputed technology relates to carvedilol, initially patented 20 years ago for the treatment of hypertension, and now for the treatment of chronic heart failure.  Defendants filed ANDAs for generic versions of the drug tablets with a section iii carve out relating to the CHF indication.  Both defendants launched their generic products and amended their labels for both indications.  Thereafter, one defendant switched back to its original label.  The complaints were amended and motions to dismiss the indirect infringement claims followed.  The Magistrate recommends finding that the induced infringement claims are insufficiently plead with respect to time periods when the labels did not include the CHF indication, but sufficiently plead when both indications were on the labels.  He recommends dismissal without prejudice.  With respect to contributory infringement, the magistrate finds enough factual specificity to put defendants on notice of their claims of contributory infringement.

Words of degree used in oral contraceptive patent are indefinite

Posted in Claim Construction, Evidence, Indefiniteness, Invalidity, Summary Judgment

Bayer Intellectual Property GMBH, et al. v. Warner Chilcott Company, LLC, et al, C.A. No. 12-1032-GMS, April 21, 2015.

Sleet, J.  Defendant’s motion for summary judgment based on indefiniteness is granted.

The disputed technology relates to an oral contraceptive regimen.  During claim construction proceedings, the court found it was unable to construe the disputed terms containing words of degree – “High,” “low,” “satisfactory,” and “reliable.”  The court determined that it was unable to discern the metes and bounds of the asserted claims and this summary judgment motion based on indefiniteness followed.  The intrinsic record fails to assign meaning to these words of degree.  Plaintiff contends one skilled in the art would understand what they mean.  Even if the court were to accept newly offered extrinsic evidence on the meaning of the disputed terms, the court would still find the patent to be indefinite because the intrinsic record fails to provide objective boundaries for those of skill in the art.  This decision necessarily eliminates plaintiff’s interference allegations regarding one of defendant’s patents.

Judge declines to sever and stay as trial date approaches

Posted in Equitable Defenses and Remedies, Infringement, Invalidity, Inventor Issues, Motion for Judgment on the Pleadings, Reexamination/Reissue/Interference/inter partes review, Summary Judgment

Fairchild Semiconductor Corporation, et al. v. Power Integrations, Inc, C.A. No. 12-540 – LPS, April 15, 2015 (unsealed April 20, 2015).

Stark, C. J.  Defendant’s motion to sever and stay claims regarding one patent is denied.  Plaintiff’s motion for judgment on the pleadings is deferred for further briefing.  Defendant’s motion for summary judgment is granted to the extent that plaintiff is precluded from re-litigating literal infringement of one patent-in-suit by LinkSwitch-II products and remains pending in other respects.  Plaintiff’s motion for summary judgment regarding priority date is denied.  Defendant’s motion for summary judgment is granted in part and mooted in part.  Argument on these motions took place on March 3, 2015.

Trial in this case is scheduled to begin May 26, 2015.  All asserted claims from the ‘972 patent have been finally rejected by the Examiner and plaintiff is appealing.  Defendant moves to sever and stay those claims.  The court declines to stay because it would only minimally simplify the case for trial and prejudice the plaintiff.  The weightiest factor is that discovery is completed and trial is about to begin.  Plaintiff seeks to preclude defendant from re-litigating the validity of the ‘972 patent (claim preclusion), and also to preclude defendant from litigating both the validity of that patent as well as the direct infringement component to prove induced infringement (issue preclusion).  Plaintiff has met its burden to show that the accused products in this case are essentially the same as in a prior case, and that the scope of the asserted claims is the also the same.  The court directs the parties to advise how the resolution of these issues impacts plaintiff’s motion as to claim and/or issue preclusion with respect to infringement and/or validity.  Defendant’s motion regarding barring re-litigation of literal infringement of the ‘972 patent is granted, the jury in prior litigation having found no literal infringement.  The parties dispute whether the ‘915 patent is prior art to the ‘457 patent and have both moved for summary judgment.  The ‘915 patent is prior art unless the ‘457 patent is entitled to an earlier priority date.  The court concludes that defendant has met its burden regarding conception and reduction to practice with respect to the earlier date.

Judgment on the pleadings of validity is granted

Posted in Invalidity, Motion for Judgment on the Pleadings

Messaging Gateway Solutions, LLC v. Amdocs, Inc., et al, C.A. Nos. 14-732- RGA; 14-733- RGA; 14-734- RGA14-735- RGA; 14-736- RGA; 14-737- RGA; April 15, 2015.

Andrews, J.  Defendants’ motions for judgment on the pleadings of invalidity pursuant to section 101 are denied.  Plaintiff’s motion for judgment on the pleadings of validity pursuant to section 101 is granted.

The court raises the issue of the correct standard of proof to apply in a 101 case but does not reach that issue. Defendants claim that the representative claim is abstract and thus unpatentable because it relates to receiving a message in one format, changing it into another format, and sending to its destination.  Plaintiff claims the claim is securely tethered to a tangible idea of a particular way to allow a mobile device to communicate with an Internet server.  The court finds that the claim is directed to the abstract idea of translation.  It also finds that the claim contains an inventive concept sufficient to render it patent-eligible.  The claim is directed to a problem unique to text-message telecommunication and the solution is tethered to the technology that created the problem. It also contains sufficient limitations to prevent it from preempting an abstract idea.  Questions of obviousness and novelty are issues for another day.

Court declines to order discovery for foreign proceedings

Posted in Discovery, Evidence

In Re Application of Gilead Pharmasset LLC, C.A. No. 14-243- GMS, April 14, 2015.

Sleet, J.  Petitioner’s application for leave to take discovery pursuant to 28 U.S.C.  § 1782 from respondent, a Delaware corporation, for use in foreign litigation is denied.

The court has the discretion to order the discovery, but is not required to do so.  The statutory requirements are met because the party from whom discovery is sought is a participant in the foreign proceeding and is subject to this court’s personal jurisdiction. The factors to consider do not weigh heavily one way or the other.  Because the petitioner has made no effort to obtain the discovery sought in the foreign proceedings, the court exercises its discretion to deny the request  in light of the Intel factors.

Motions to stay pending resolution of Rule 12 motions is granted.

Posted in Dismissal, Stay

Kaavo Inc. v. Cognizant Technology Solutions Corporation, et al, C.A. Nos. 14-1192-LPS-CJB; 14-1193-LPS-CJB, April 9, 2015.

Burke, M. J.  Defendants’ motions to stay proceedings pending resolution of Rule 13 motions to dismiss are granted.

Defendants’ motions to dismiss are based on their assertion that the patent-in-suit is not directed to patent-eligible subject matter under section 101. The court finds that the fact that the motions to dismiss, if decided in defendants’ favor, would be entirely case-dispositive as to all asserted claims inured to defendants’ benefit.  However, the court generally does not try to evaluate the legal merits of the motions to dismiss in deciding whether to grant the stay, and here it notes little efficiency would be gained if the motions are denied.  Here, the court finds that the prospect of simplification weighs slightly in favor of a stay.  The fact that the cases are at very early stages and discovery has not yet begun strongly favors a stay. Courts consider whether the parties are competitors, and due to the scant record on this point this factor weighs only slightly against the stay.  The timing of the stay request does not suggest gamesmanship, but the potential for substantial delay if the stay is granted weighs only slightly against the stay.  Had plaintiff made a stronger showing that the parties were competitors, the outcome might have been different.

Summary judgment finding recommended as to non-willfulness but not as to non-infringement

Posted in Exceptional Case/Willfulness, Infringement, Summary Judgment

Impulse Technology Ltd. v. Microsoft Corporation, et al, C.A. Nos. 14-586-RGA-CJB; April 9, 2015.

Burke, C. J.  Report and Recommendation that Defendant’s motion for summary judgment of noninfringement of claim 11 of the patent-in-suit be denied, and for non-willfulness be granted.

The non-infringement argument turns on the claim term “training sequence.”  The court notes that if defendant’s argument were accepted, two claims of the patent would be co-extensive. Alternative arguments were rejected, and the court found that material issues of fact remain as to infringement.  As for the willfulness argument, the court finds that defendant’s non-infringement argument alone is not sufficient to preclude a willfulness determination.  However, the court has determined that issues of fact remain, and noted that many aspects of defendant’s arguments were well-taken. Plaintiff cannot demonstrate that defendant acted willfully.