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Morris James Blogs

Court permits additional discovery relating to collateral estoppel defense

Arcelormittal France, et al. v. AK Steel Corporation, C.A. No. 13-685 - SLR, April 19, 2016.

Robinson, J. Defendant’s motion to dismiss based on collateral estoppel is denied.

At issue in this case is a reissued patent.  It was obtained during the appeal in a related matter where the court had ruled for defendants (including the defendant in this case).  The appellate court reversed a claim construction for “hot-rolled steel sheet” and also reversed the jury’s verdict of anticipation ‘805 patent and determined that a new trial was needed with respect to obviousness because of the construction it had considered.  It found 2 of the 25 claims previously invalidated to be valid. On remand the court would not allow the record to be reopened in the absence of evidence of past infringement of the patent as newly construed.  Proof of non-infringement by collateral estoppel is appropriate only where there is a close identity between the relevant features of the accused device and the device previously determined to be non-infringing.  Defendant claims that accused steel sheet products in the instant case are not materially different from those accused in the prior litigation. In view of the procedural complexity the court determines to allow discovery on whether the accused steel products had changed and will thereafter hold a status conference.

Disputes regarding prosecution bar in a protective order are resolved

Boston Scientific Corporation, et al. v. Cook Group Incorporated, et al., C.A. No. 15-980 – LPS-CJB, April 18, 2016.

Burke, M. J. Court resolves disputes regarding a protective order dispute.

The court adopts defendants’ proposal as to the scope of the subject matter that a prosecution bar shall cover. The bar extends to qualified persons who are “regularly involved in (directly or by means of supervision) the preparation of patent applications related to endoscopic hemostatic clips” as well as anyone involved in (directly or by means of supervision) the preparation or prosecution of any patent application or patent relating to one or more of the patents-in-suit. Defendant has shown that there is risk of harm from inadvertent use of protected information. As for a second area of contention, defendant has pointed with specificity to the history between the parties to explain why the risk would be more acute than is usually the case during post grant proceedings.  The prosecution bar shall extend to post-grant proceedings regarding the patents-in-suit or related applications and/or patents. Plaintiff’s arguments were supported only by attorney argument.  The court acknowledges that the second issue was a closer call and would consider a motion to modify it if there is evidence to warrant it.

Court resolves prosecution bar dispute

TQ Delta, LLC v. Comcast Corporation, et al., C.A. Nos. 15-611 – RGA; 15-612-RGA; 15-613-RGA; 15-614-RGA; 15-615-RGA; 15-616-RGA, April 13, 2016.

Thynge, C. M. J. The court resolves a dispute regarding the scope of the prosecution bar.

The court orders that the disputed portion of the prosecution bar shall read as follows:

“…. . claims directed to technology (i) concerning transmission and

reception of diagnostics for or about communication channels; (ii)

concerning scrambling of information modulated on carrier signals in a

communication system; or (iii) concerning low power mode for a

transceiver in a communication system, that has been provided for review by such outside counsel expert, or consultant in any HIGHLY


CONFIDENTIAL – SOURCE CODE Protected Material produced by a Defendant.

IT IS FURTHER ORDERED that to avoid any issues as to whether such outside expert or consultant reviewed any Highly Confidential – Attorneys’ Eyes Only or Highly Confidential – Source Code Protected Material produced by a Defendant, it will be presumed that if such materials, documents, information or the like were provided for review, that such outside expert or consultant reviewed such materials, documents, information or the like.”

Bill of costs that was untimely due to clerical error was not stricken

St. Clair Intellectual Property Consultants, Inc. v. Toshiba Corporation, et al., Inc., C.A. No. 09-354-KAJ, April 13, 2016.

Jordan,  J. (sitting by designation) Plaintiff’s motion for an extension to file a bill of costs is granted. Defendant’s motion to strike the bill of costs is denied.

The deadline for filing defendants’ bill of costs was November 16, 2015. It was not filed until November 23, 2015 and plaintiff moved to strike it as untimely and waived.  Defendants’ failure was caused by an error in the calendaring system.  The court reasons that the error was clerical rather than legal and denies the motion to strike.

Court awards costs to the prevailing party in excess of the costs taxable by the clerk under rule 54.1

Walker Digital, LLC v. Google, Inc., C.A. No. 13-318 - LPS, April 12, 2016. (redacted)

Stark, C. J. Defendant’s motion to review taxation of costs is granted.

Defendant sought costs as the prevailing party in the amount of $83,346.60.  The clerk of the court limited the taxable costs to $2,911.31 pursuant to local rule 54.1denying the remainder.  The court rejects the argument that defendant’s motion was procedurally improper. The court finds it has the discretion to award certain deposition costs in the amount of $49,912.47 even assuming the requirements of the local rule 54.1 are not satisfied and does so. Costs of a technology tutorial in the amount of $19,672.57 are also awarded as specifically requested by the court.  The court also awards $1,922.05 for the conversion of electronic documents to TIFF images.  Finally, the costs for obtaining hearing transcripts in the amount of $1,018.06 are awarded.

Summary judgment of non-infringement and invalidity is denied

MobileMedia Ideas, LLC v. Apple Inc., C.A. No. 10-258 - SLR, April 11, 2016.

Robinson, J. Defendant’s motion for summary judgment of non-infringement and invalidity of one patent-in-suit is denied.

The disputed patent relates to communication terminal equipment and call incoming control method. The parties dispute whether there is sufficient structure to describe an alert sound generator, or whether the term is indefinite.  The court finds that one skilled in the art would recognize the structure in the specification and associate it with the corresponding functions of the claim. The term is not indefinite. With respect to non-infringement, the court, viewing the facts in the light most favorable to the plaintiff, finds there is an insufficient record and denies defendant’s motion for summary judgment of non-infringement.

Summary Judgment and Daubert motions are decided

SRI International, Inc. v. Cisco Systems, Inc., C.A. No. 13-1534 - SLR, April 11, 2016.

Robinson, J. Defendant’s motions for summary judgment of invalidity under sections 101, 102(b), and 103 are denied; defendant’s motion barring pre-suit damages based on laches is denied; defendant’s motion for summary judgment of non-infringement is denied.  Defendant’s motion to exclude certain expert testimony regarding lump sum settlement agreements is granted in part and denied in part; defendant’s motion to exclude expert testimony regarding apportionment is denied.  Plaintiff’s motion for summary judgment that two references are not prior art is granted in part and denied in part.  The court sua sponte grants summary judgment of no anticipation by a third prior art reference.

The disputed patents relate to monitoring and surveillance of computer networks for intrusion detection.  The first step of Alice is generally a given in computer-implemented patents because they generally involve abstract ideas. The second step is the more difficult part. The claims at bar are necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.  As for step two, the court finds an inventive concept and defendant’s invalidity motion is denied. Defendant’s anticipation motion is denied and the court sua sponte grants summary judgment of no anticipation.  The court finds that one prior art reference was not publicly available, and that a second reference included in in conference materials was published and therefore grant’s plaintiff’s motion in part.  As for infringement, the parties dispute whether the accused sensors meet the limitation “detecting suspicious network activity based on analysis of network traffic data.  Expert opinions present factual disputes and defendant’s motion is denied in this regard. With respect to laches, plaintiff should have known of its claims against defendant, but plaintiff persuades the court of the reasonableness of its conduct based upon the fact that it was engaged in other litigation. Expert testimony regarding settlement agreements reached in litigation is excluded; licenses entered into as a product of business negotiations outside the context of litigation are properly considered. Defendant may challenge plaintiff’s expert on apportionment on cross examination.

Claims are construed in security devices case

Icontrol Networks, Inc. v. Zonoff Inc., C.A. No. 14-1199 – GMS, April 11, 2016.

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

The disputed technology relates to security monitoring systems. The following terms were considered:

  1. “control unit for receiving signals from a variety of detection devices monitoring events pertaining to security” and “control unit”
  2. "programmable storage means storing automatic evaluation routine to initiate the automatic transfer of information to a chosen remote user terminal"
  3. “proprietary to the security system”
  4. “gateway registry”
  5. “Associative binding”
  6. “initiating, by the gateway, all communications with a network operation server using the assigned server address”

Inequitable conduct counterclaim is dismissed

Evonik Degussa GmbH v. Materia Inc., C.A. No. 09-636-NLH-JS, April 6, 2016.

Hillman, J. (sitting by designation) Defendant’s motion to dismiss inequitable conduct counterclaim is granted.  The counterclaim is dismissed as moot.  Oral argument took place on March 29, 2016.

The court on December 21, 2015 granted plaintiff’s motion for partial summary judgment of non-infringement of the ‘590 patent and defendant provided a covenant not to sue, mooting plaintiff’s counterclaim of invalidity.  The parties disagree whether the covenant moots the inequitable conduct counterclaim.  The court finds that the covenant is sufficiently broad to remove any case or controversy and dismisses the inequitable conduct counterclaim. However, evidence relating to inequitable conduct may still be relevant to other issues remaining in the case.

Report and recommendation regarding motion to dismiss is denied in part and granted in part

Pfizer Inc., et al. v. Mylan Inc., et al., C.A. No. 15-26 – SLR-SRF, April 4, 2016.

Fallon, M. J. Report and recommendation recommending that defendants’ motion to dismiss for lack of personal jurisdiction and failure to state a claim be denied in part and granted in part.

The disputed technology in this ANDA case is tigecycline compositions and methods of preparation used for treatment of infections.  The court finds it has specific jurisdiction over defendant Agila because it filed the ANDA and plans to market its generic product throughout the United States, including Delaware.  The court need not apply federal long-arm jurisdiction for this Indian defendant pursuant to Rule 4(k)(2) since due process is satisfied under 4(k)(1)(A). Defendant MPI is subject to jurisdiction in Delaware because it registered to do business in Delaware. The court finds there is no basis to exercise general jurisdiction over Mylan based on agency and recommends jurisdictional discovery be permitted on the agency relationship between Mylan and Agila regarding the filing of the ANDA. Finally, there is insufficient reason to dismiss MPI as an improper party for failure to state a claim. A declaration submitted in support of the motion to dismiss was outside the pleadings. Accepting the allegations in the complaint as true at this stage of the litigation, the court recommends denying the Rule 12(b)(6) motion to dismiss MPI without prejudice.

Summary judgment granted as to non-infringement and denied as to invalidity

SunPower Corporation v. PanelClaw, Inc., C.A. No. 12-1633 - MPT, April 1, 2016.

Thynge, M. J. Defendant’s motion for summary judgment is granted in part and denied in part.

The disputed technology relates to solar powered roofing.  Defendant moves for summary judgment of non-infringement of the ‘788 patent and that asserted claims of the ‘988 patent are invalid due to indefiniteness, lack of enablement, and failure to meet the written description requirement and/or under section 101 as inoperative and lacking utility.  The court adopts the PTAB’s claim construction and finds defendant’s accused products do not infringe as they do not meet the “disposed as a layer” limitation.  The court agrees with plaintiff that defendant has not met its burden of clear and convincing evidence to demonstrate that the asserted claims of the ‘988 patent are indefinite. The PTAB’s discussion is not determinative. The fact that another district court has construed the Whereby Clause while facing similar invalidity arguments convinces this court to proceed with the Markman process and denies the motion with respect to indefiniteness. The court agrees with plaintiff that attorney argument in support of enablement and written description arguments is insufficient for summary judgment in favor of defendant.

Invalidity and non-infringement motions are denied

M2M Solutions LLC v. Sierra Wireless America, Inc., et al., C.A. No. 12-30 - RGA, March 31, 2016.

Andrews, J. Defendants’ motion for summary judgment of invalidity and for non-infringement is denied.

The disputed technology relates to a programmable communicator device capable of receiving and authenticating transmissions and storing them and further contemplates a remotely programmable device that allows for remote data monitoring. Defendants claim that the patent is invalid for failure to meet written description and enablement requirements, that it is indefinite because the process module claim limitation is an improper hybrid claim with both apparatus and method steps, and that it contains means-plus-function claim terms without sufficient corresponding structure.  Defendants provide insufficient evidence regarding what a POSITA would understand with respect to written description and enablement. Defendants’ arguments regarding indefiniteness were rejected in related litigation and likewise fail to persuade the court in this case.  Attorney conclusory arguments do not meet the burden of demonstrating insufficient structure. Defendants’ non-infringement arguments likewise fail. Defendants address only one of four ways the plaintiff’s expert claims the accused products meet the programmable interface limitation. Defendants further misinterpret the court’s claim construction. With respect to the “permitted callers” claim term, the parties had agreed that the accused products do not infringe under the court’s claim construction and the court directed them to file a stipulation regarding this understanding. They have not done so, and the court declines to grant summary judgment based on a draft agreement.

Court denies fee application

Apeldyn Corporation v. Sony Corporation, et al., C.A. No. 11- 440 - SLR, March 31, 2016.

Robinson, J. Defendants’ motion for attorney fees is denied.

Defendants argue that this is an exceptional case because plaintiff pursued objectively unreasonable infringement and validity positions, which were barred by collateral estoppel. Defendants had opposed the filing of an early summary judgment motion on estoppel claiming the refusal was due to “new testing.”  In the fee motion, the parties focus on the same arguments presented in the summary judgment briefing, for which the court expended considerable effort in reaching its invalidity determination and resolving claim construction.  The court does not find the case exceptional meriting attorney fees.

Magistrate’s report with recommendation to deny dismissal of induced infringement claim is adopted

Elm 3DS Innovations, LLC v. Samsung Electronics Co., Ltd., et al., C.A. No. 14-1430 – LPS- CJB, March 31, 2016.

Stark, C. J. Defendants’ objections to the magistrate’s report and recommendation are overruled and defendants’ motion is denied.

Defendants contend that the report erred in finding that the factual allegations provided a plausible basis for inferring induced infringement because it incorrectly concluded that defendants had actual knowledge of the patent-in-suit before the lawsuit was filed and that they specifically intended to encourage infringement. The court cannot say at this stage whether defendants’ knowledge of the patent-in-suit may not be inferred from their participation in the semiconductor market where it was common knowledge. This it finds no error in the magistrate’s decision.  The court further disagrees that the report erred in finding defendant’s knowledge of and intent to induce infringement.

Court rules on objections to report and recommendation regarding section 101 unpatentability arguments

Kaavo Inc. v. Cognizant Technology Solutions Corporation, et al.,  C.A. Nos. 14-1192 – LPS-CJB; 14-1193 - LPS-CJB, March 31, 2016.

Stark, C. J. Court rules on objections to magistrate’s report and recommendations regarding defendants’ assertions that asserted claims in the patents-in-suit were directed to unpatentable subject matter.  Briefing on objections was completed on March 10, 2016.

The court agrees with the report’s articulation of a narrower abstract idea than that proposed by defendants and concludes that certain asserted claims are drawn to the abstract idea of “setting up and managing a cloud computing environment.” Also, Alice steps 2 and 3 do not provide the inventive concepts needed to impart patentability.  Plaintiff’s arguments on point were not considered since they had not been presented to the magistrate. The fact that the report adopted a narrower abstract idea than that proposed does not excuse plaintiff’s failure to raise all of its arguments to the magistrate.  The magistrate did not err in finding he lacked an adequate basis to assess the patentability of the remaining dependent claims. Should the parties seek leave to file an early motion for summary judgment they must follow the court’s procedures and local rules and those issues are referred to the magistrate.