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Morris James Blogs

Jurisdictional discovery is ordered following motion to dismiss for lack of personal jurisdiction

DNA Genotek Inc. v. Spectrum DNA, et al., C.A. No. 15-661 - SLR, February 4, 2016.

Robinson, J. Defendants’ motion to dismiss for lack of personal jurisdiction is denied without prejudice to renew.  Plaintiff’s motion for a preliminary injunction is denied without prejudice to renew.

Defendants are Utah limited liability companies with a principal place of business in Draper, Utah.  They have no facilities, employees, bank accounts, or other physical presence in Delaware.  It is not registered to do business in Delaware. Other than its website it has not shipped any product to Delaware.  Defendants sell their saliva collection devices to Ancestry, which in turn distributes the accused product in Delaware.  Jurisdictional discovery is warranted. Injunctive relief request is deferred until jurisdiction is established.

Claim terms are considered in computer technology case

EMC Corporation, et al. v. Pure Storage, Inc., C.A. No. 13-1985 - RGA, February 2, 2016.

Andrews, J.   Claim construction opinion issues regarding four terms from three patents.  A Markman hearing took place on January 8, 2016

The disputed technology relates to data stream technology. The following terms were considered:

  1. “summary”
  2. “receiving a data stream”
  3. “a respective parity segment”
  4. “each of the groups including N respective semiconductor memory segments”

Claim terms are construed in medical technology case

Orthopheonix LLC v. Dfine Inc., et al.,  C.A. Nos. 13-1003 – LPS; 13-1007-LPS; 13-1628-LPS, February 2, 2016.

Stark, C. J.   Claim construction opinion issues regarding nineteen terms from six patents.  A Markman hearing took place on December 3, 2015.

The disputed technology relates to orthopedic technology. The following terms were considered:

  1. “Cavity forming structure”
  2. “Carried by the shaft”
  3. “Shears cancellous bone in response to rotating the shaft with and about the axis of the cannula”
  4. “Surfacewhich directly contacts cancellous bone in response to [linear] movement of the shaft along the axis of the cannula" "moving the shaft [linearly along [and not rotating about] the axis of the cannula] to cause the surface [to contact cancellous bone] to form a cavity"
  5. “Extending the cavity forming structure in situ radically from the shaft” “cavity forming structure [….] adapted to […] be extended in situ radically from the shaft”
  6. “A cannula having […]an axis establishing a percutaneous path leading into bone”/ “deploying the cannula percutaneously to establish a path leading to inside bone”
  7. “Providing”
  8. “Resilient material”
  9. “The cavity forming structure comprises resilient material”
  10. “Cavity forming structure is adapted to be deployed at an axis that transverses the axis of the shaft”
  11. “A tool according to [claim 1 or claim 5]”
  12. “A system according to claim 11”
  13. “Causing… expandable bodies to assume an expended geometry” “expandable bodies are caused to assume expanded geometries”
  14. "[First or second] body comprising an expandable wall"
  15.  “A device for insertion into a vertebral body to apply a force …”
  16. “"The wall including, when inflated, opposed side surfaces and opposed superior and inferior surfaces extending along an elongated longitudinal axis that is substantially aligned with the axis of the catheter"
  17. "The inflatable body, when inflated within the vertebral body, having ... a height measured between the superior and inferior surfaces of approximately 0.5 cm to 3.5 cm[, an anterior to posterior dimension measured along the elongated axis of approximately 0.5 cm to 3.5 cm, and a side-to-side dimension measured between the opposed side surfaces of approximately 0.5 cm to 3.5 cm]"
  18. “A void creation device including an expandable structure"
  19. “The expandable structure having at least one dimension so that changing the expandable structure from the unexpanded configuration to the expanded configuration ... compacts only a first region of the cancellous bone volume substantially without compacting a second region of the cancellous bone volume different form the first cancellous bone volume"  I "The expandable structure having at least one dimension so that the expandable structure will assume a predetermined shape and size when substantially expanded that compacts only a first volume of the cancellous bone volume to form a void, leaving a second volume of the cancellous bone volume substantially uncompacted by the expandable structure"

Defendants do not infringe due to license agreement

Futurevison.com, LLC v. Cequel Communications, LLC, et al., C.A. No. 13-855-GMS-MPT, February 1, 2016.

Thynge, C.M.J. Defendants’ license defense is granted.

The disputed technology relates to a method for two-way interactivity between the cable office and the cable set top box. Plaintiff entered into an agreement with a patent aggregator RPX and its members to license the patent-in-suit.  Plaintiff contends that defendants are not licensed under the agreement.  The court disagrees with defendants’ contention that as long as a single claim is licensed for a given combination or use, the entire patent is licensed for that use.  However, under the definitions of “licensed product and service” and “combined licensed product and service” the court finds that the services provided by the defendants are already licensed and there is no need for an expanded license as there is no infringement.

Defendants do not infringe due to license agreement

Futurevison.com, LLC v. Cequel Communications, LLC, et al., C.A. No. 13-855-GMS-MPT, February 1, 2016.

Thygne, C.M.J. Defendants’ license defense is granted.

The disputed technology relates to a method for two-way interactivity between the cable office and the cable set top box. Plaintiff entered into an agreement with a patent aggregator RPX and its members to license the patent-in-suit.  Plaintiff contends that defendants are not licensed under the agreement.  The court disagrees with defendants’ contention that as long as a single claim is licensed for a given combination or use, the entire patent is licensed for that use.  However, under the definitions of “licensed product and service” and “combined licensed product and service” the court finds that the services provided by the defendants are already licensed and there is no need for an expanded license as there is no infringement.

Claims are construed in pharma case

Forest Laboratories LLC, et al. v. Sigmapharm Laboratories LLC, et al., C.A. No. 14-1119 – SLR-SRF, January 29, 2016.

Robinson, J.  Claim construction opinion issues regarding six terms from three patents. 

The disputed technology relates to psychiatry pharmaceuticals. The following terms were considered:

  1.  “Tension, excitation, anxiety, and psychotic and schizophrenicdisorders:”
  2. “Administering sublingually or buccally:”
  3. “solid pharmaceutical composition which rapidly disintegrates:”
  4. “Orthorhombic"/"Orthorhombiccrystallineform"/"0rthorhombiccrystal form:”
  5. “Isolated in a form which contains at least about 90 wt. % of the orthorhombic crystalline form:”
  6. “The compound trans-5-chloro-2,3,3a, 12btetrahydro-2-methyl-1 Hdibenz[2,3:6,7]oxepino[4,5-c]pyrrole(Z)-2-butenedioate" and "microcrystalline:"

Claims are construed in communications technology case

TQ Beta LLC v. Dish Network Corporation., et al., C.A. No. 14-848 – LPS-CJB, January 28, 2016

Stark, C. J.   Claim construction opinion issues regarding six terms from one patent.  A Markman hearing took place on November 30, 2015.

The disputed technology relates to streaming technology. The following terms were considered:

  1.  “reproducing the information during a second time frame, wherein a delay between the first time frame and the second time frame is greater than a delay caused by receiving the signal, encoding the received signal, transmitting the encoded signal, receiving the encoded signal, and decoding the encoded signal”
  2. “receiving a signal broadcast in a first geographic location”
  3. “second geographic location”
  4. “means for receiving a second broadcast via a world wide network, the second broadcast including an encoded signal, the encoded signal containing information that was transmitted in a first geographic location in a first time frame using a first broadcast, the first broadcast occurring prior to the second broadcast"
  5. “means for decoding the encoded signal into a decoded signal”
  6. "means, coupled to said decoding means, for reproducing the information in a second geographic location in a second time frame, the second time frame chosen by a user of the information"

Summary judgment of noninfringement is recommended

Hand Held Products, Inc. v. Amazon.com, Inc., et al., C.A. No. 12-768-RGA-MPT, January 21, 2016.

Thynge, C.M. J.   Report and Recommendation recommending that defendant’s motion for summary judgment of non-infringement be granted and that its motion for leave to submit a sur-reply be denied as moot.

The disputed technology relates to image capturing apparatus, in particular to capture bar code information. Defendant argues that the accused apps do not infringe because a user cannot select an image from a live video and communicate that image to the accused apps. The court finds that because the user of the accused apps are unable to make that selection of an instantaneous image to capture, the “selectively capturing” limitation is not met and summary judgment of non-infringement is warranted.

Claims are construed in pharma case

Purdue Pharma L.P., et al. v. Acura Pharmaceuticals, Inc., et al., C.A. No. 15-292-RGA, January 19, 2016.

Andrews, J.   Claim construction opinion issues regarding one term from one patent.  A Markman hearing took place on November 24, 2015

The disputed technology relates to oxycodone product formulation. The following term was considered:

  1. "polyvinylpyrrolidone

Claims are construed in computer technology case

Yodlee, Inc. v. Plaid Technologies, Inc., C.A. No. 14-1445-LPS, January 15, 2016.

Stark, C.J.   Claim construction opinion issues regarding nineteen terms from seven patents.  A Markman hearing took place on November 17, 2015

The disputed technology relates to internet data gathering technology. The following terms were considered:

  1.  "Internet Portal" and "Internet Portal System"
  2. "In an Internet Portal system, a method for gathering data specific to a person from a an Internet Portal from a plurality of internet sites storing data specific to that person, the method comprising the steps of:"
  3. “list of addresses of Internet sites [associated with a specific person, which sites store  information specific to the person]”
  4. “gatherer” “gather[ing] agent” “gathering spitware agent”, “path agents”
  5. “authenticating too each site accessed as the person” “authenticating to the sites as the person”
  6. “gathering cycle”
  7. “end user”
  8. “protocol for instruction the processor how to access the securely stored personal information via the network”
  9. "personal information store" \ [the processor storing the retrieved personal information in a] personal information store [for access by the selected end user]", [storing the retrieved personal information in a] personal information store", "a personal information store [for storing personal information associated with each end user retrieved from the information providers]", "[storing the retrieved personal information in the] personal information store [for accessible to the selected end user]"
  10. “provider store”
  11. “formatted web elements”
  12. “end user data including information identifying the plurality of information providers securely storing the personal information relating to the end user”, “user store[for storing end user data associated with each user, the user store including information identifying the plurality of information providers securely storing the personal information relating to the end user”
  13. “[defining component tasks based on] pre-programed client-related data ‘by software executing  on the Internet-connected subscription server]”
  14. “communication the final results to the client at the client station:
  15. "client profiles […including date relative to information destination on the Internet for a specific client]”
  16. “transmitting the information ‘for the client device for presentation in the format for an Internet browser application] according to the client profiles”
  17. “translating the information into a format compatible with an application, other than an Internet browser application, executable on the client device"; "transforming the record into a second data form specific to an application other than an Internet browser application, the application executable by a digital appliance operated by the client connectable server"
  18. "Transmitting the information for the client device for presentation;” “transmitting the transformed record to the digital appliance for display:"
  19. "a collection function automatically navigating to and retrieving transaction information associated with a specific person or enterprise from third party Internet-connected web sites and gathering information concerning transactions"; "automatically navigating to and retrieving transaction information associated with a specific person or enterprise from third-party Internet connected web sites and gathering information concerning transactions by a collection function of the proprietary software said information"; "a collector function of the software, the collector function navigating to one or more network information sites and retrieving there from financial transaction information regarding the expenditures associated with a specific person or enterprise"; "navigating to one or more network information sites by a collector software function executing from memory of an Internet-connected server and retrieving therefrom financial transaction information regarding expenditures associated with a specific person or enterprise"

Claims are construed in composite materials case

E.I. du Pont de Nemours and Company v. Unifrax I, LLC, C.A. No. 14-1250 – RGA, January 13, 2016

Andrews, J.   Claim construction opinion issues regarding seven terms from one patent.  A Markman hearing took place on December 7, 2015

The disputed technology relates to laminate flame barrier materials. The following terms were considered:

  1. “laminate”
  2. “in order”
  3. “inorganic refractory layer”
  4. “platelets”
  5. “100 % by weight”
  6. “vermiculite”

“wherein the inorganic refectory layer of (iii)comprises platelets in an amount of 100% by weight with a dry areal weight of 15to 50 gsm and a residual moisture content of  not greater than 10 percent by weight”

Patent is invalid under Alice

Motivation Innovations, LLC v. Petsmart, Inc., C.A. No. 13-957 -SLR, January 12, 2016.

Robinson, J. Defendant’s motion for judgment on the pleadings is granted.

The patent-in-suit is directed to redeeming discount offers by associating a machine-readable code with identifying items to be offered at a discount.  Defendant asserts that the technology is patent ineligible under Alice. The court finds that the claims are directed to the use and redemption of coupons, which consists of the abstract idea of using coupons to provide discounts.  The concept of using a machine-readable ID code to take discount offers and track customer purchasing habits do not negate preemption. The claims are invalid under section 101.

Bids to dismiss under Alice and to transfer fail

C.R. Bard, Inc., et al. v. Angiodynamics, Inc., C.A. No. 15-218 -SLR, January 12, 2016.

Robinson, J. Defendant’s motion to dismiss and its motion to transfer are denied. Plaintiff’s motion to file a surreply is denied as moot.

Plaintiff is a Delaware corporation that sells its products in various states but it is not its “home turf.” There is litigation between the parties ongoing in Utah. Since defendant sold accused products in Delaware, it may be said that the claims arise in Delaware.  Plaintiff has chosen an appropriate forum. Defendant claims the case should be dismissed because of unpatentable subject matter of the patents-in-suit.  The patented technology relates to infusing a fluid into a patient. The court finds that the method claims merely describe the abstract mental step of identifying the allowable/intended flow rate of an implanted access port directly from an x-ray image of the implanted port. With respect to the second step in Alice regarding an inventive concept, the court declines to dismiss on the current record as claim construction or discovery may be needed. Similarly with respect to two additional patents-in-suit, the court finds the arguments more properly reserved to analysis on a full record and declines to dismiss.

Claim is construed in ANDA case

Tris Pharma, Inc. v. Actavis Laboratories FL, Inc., et al., C.A. No. 14-1309 – GMS, January 8, 2016.

Sleet, J. Claim construction opinion issues regarding one term from four patents. 

The disputed technology relates to pharmaceuticals. The following term was considered:

  1. “single mean average plasma concentration peak”

Court declines to change trial date to accommodate late-produced documents

Greatbatch Ltd. v. AVX Corporation, et al., C.A. No. 13-723-LPS, January 8, 2016.

Stark, C. J.  Defendants’ motion for reconsideration is denied to the extent it seeks continuance of trial or bifurcation of patent and otherwise without prejudice.

Defendants produced about 170 documents relating to “Ingenio pin washer change”  on essentially the eve of trial.  On January 5 the court awarded sanctions due to the untimely production because it would be prejudicial to plaintiff to prove infringement at trial having just received core technical documents.  Forcing the court to choose between rewarding the defendants with a continuance or bifurcation or proceeding to trial according to schedule and resolving the late production issue against defendants.  Defendants may ask the court to reconsider but without disrupting the long-scheduled trial.