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Morris James Blogs

Claims are construed in pharma case

Orexo AB, et al. v. Actavis Elizabeth LLC, C.A. No. 14-829 – LPS, October 6, 2015.

Stark, C. J.   Claim construction opinion issues regarding four terms from two patents. 

The following terms were considered:

  1. Carrier particles
  2. Presented at the exterior surfaces of the carrier particles/ presented upon the surface of carrier particles
  3. Pharmacologically-effective amount
  4. In contact with

Magistrate recommends granting dismissal of certain claims as patent ineligible.

Versata Software, Inc., et al. v. Netbrain Technologies, Inc., et al., C.A. Nos. 13-676  – LPS-CJB; C.A. No. 13-678  – LPS-CJB, September 30, 2015.

Burke, M. J.  Report and Recommendation, recommending that certain claims be dismissed as ineligible for patent protection under § 101; and recommending denying the motion to dismiss as to remaining claims without prejudice to renew later.  Oral argument took place on August 26, 2014.

There are five unrelated patents asserted. One patent describes its invention as a hierarchy for representing a plurality of catalog items stored in a database, which is an abstract idea. No inventive concept is involved in the asserted claims, merely generic computer technology. Thus the court recommends dismissal of the asserted claims in this patent. The asserted claims in a second patent are directed to organizing and presenting information – another abstract idea. They too contain no inventive element, merely an instruction to apply it.”  Asserted claims from a third patent are drawn to the abstract concept of displaying data in hierarchical form. Again, an inventive concept is missing. The same is true with respect to asserted claims from a fourth patent directed to researching data using features and product numbers, and a fifth patent relating to a dynamic content caching framework.  The court recommends granting dismissal of these claims, and denying dismissal as to remaining claims without prejudice to renew a section 101 challenge later.

All claims of the disputed patent are patent-ineligible

Inventor Holdings, LLC  v. Gameloft, Inc., et al., C.A. Nos. 14-1067 – LPS; C.A. No. 14-1068 – LPS; C.A. No. 14-1070 – LPS; C.A. No. 14-1071 – LPS; C.A. No. 14-1072 – LPS; C.A. No. 14-1073 – LPS, September 30, 2015.

Stark, C. J.   Defendants’ motion for judgment on the pleadings and motions to dismiss regarding patent-ineligible subject matter are granted.

The disputed technology relates to a method and apparatus for distributing promotions to potential participants.  Defendants contend all claims of the patent-in-suit are patent-ineligible under Mayo and Alice.  The court considers construction of “unlocked outcome” and “unlock code.” The claims are directed to the economic strategy and abstract idea of providing an “unlock code” in exchange for a qualifying activity for an outcome to reveal the benefit of the “locked outcome.”  Simply appending conventional steps, specified at a high rate of generality, is not enough to supply an inventive concept. The fact that the claims are limited to mobile devices does not save them from being patent-ineligible.

Claim construction is needed prior to ruling on patent ineligibility motion

Execware, LLC v. BJ’s Wholesale Club, Inc., et al., C.A. Nos. 14-233 - LPS; C.A. No. 14-234-LPS; C.A. No. 14-235 LPS; C.A. No. 14-240 –LPS; September 30, 2015.

Stark, C. J.  Defendants’ objections to magistrate’s report and recommendation regarding unpatentability of asserted claims are sustained in part and overruled in part; the report and recommendation is adopted in part and rejected in part.

The court disagrees with the magistrate’s approach in deciding a Rule 12 motion of presuming that the claims are to be construed in the manner most favorable to plaintiff.  The proper construction of a patent is a question of law.  In this case, the challenged claims are not so clear on their face that formal claim construction is unnecessary. Formal claim construction is needed to determine whether claim 1 is directed to an abstract idea and whether it includes an inventive concept under Alice. Defendants’ motions based on patent ineligibility are denied without prejudice to renew as summary judgment motions after claim construction and discovery are completed.

Attorneys fees are awarded pursuant to § 285

Nova Chemicals Corporation (Canada), et al. v. The Dow Chemical Company, C.A. No. 13-1601– LPS, September 30, 2015.

Stark, C. J.  Defendant’s motion for sanctions pursuant to § 285 is granted and denied in all other respects.

Plaintiff filed an independent action in equity to set aside a prior judgment of infringement.  No bad faith was found and the court declined to sanction pursuant to 28 U.S.C. § 1927.  However, The court found this case to be exceptional under § 285 both in the substantive strength of plaintiff’s litigating position and in the manner in which the case was litigated. Less inflammatory means to address the issues were available rather than the exceptional remedy to set aside a prior judgment based on serious allegations of fraud on the court.  The extensive pre-suit investigation resulted in implausible theories.  This case stands out from others which this court has been involved in. Attorneys fees are awarded.

Recommendation for attorneys fees is returned to magistrate for further consideration

 Magnetar Technologies Corp., et al. v. Six Flags Theme Parks, Inc., et al., C.A. No. 07-127 – LPS, September 30, 2015.

Stark, C. J.  Report and Recommendation regarding defendants’ motion for attorneys fees is returned to magistrate with further instructions. Defendants’ motion is denied without prejudice.

The magistrate recommended granting attorneys fees under §285 based on plaintiff’s objectively unreasonable position on inventorship and reliance on an expert report in view of the totality of the circumstances. The magistrate had rejected a majority of the specific contentions including finding that infringement claims were not frivolous and plaintiffs’ motives were not improper. The Magistrate is asked whether she is entering an order, which is reviewed for clear error, or proposed findings of fact and conclusions of law, which the court reviews de novo. There is one factual error that the parties agree should be corrected. The court further asks whether attorneys fees are warranted (1) because plaintiff’s litigation conduct is such that the court should deter; (2) because defendants are deserving of compensation; and, most importantly (3) in light of the totality of circumstances is the case as a whole exceptional under  § 285.

Attorneys fees are not awarded despite plaintiff’s lack of standing

Clouding IP, LLC v. EMC Corporation, et al., C.A. No. 13-1455– LPS, September 30, 2015.

Stark, C. J.  Defendants’ motion for attorneys fees is denied.

Defendants claimed that plaintiff filed massive patent litigation in seriatim while it was on notice of doubts about its standing to sue.  It continued litigating after the court dismissed the complaint for lack of standing and after reargument on standing.  It caused the parties to incur over $3 million in fees.  Plaintiff, even as an NPE, has a right to vindicate its patent rights. Defendants complained that plaintiff did not perform an adequate pre-suit investigation and continued litigating after it knew or should have known of its standing problems. Nothing about the case is exceptional compared to the full panoply of cases this court has been involved with.

Induced infringement claims are sufficiently pled

Elm 3DS Innovations, LLC v. Samsung Electronics Co., Ltd., et al., C.A. No 14-1430 – LPS- CJB, September 29, 2015.

Burke, M. J.  Report and Recommendation recommending that the motion to dismiss plaintiff’s induced infringement claims be denied.

The disputed technology relates to semiconductor chips.  Defendants claim that pre-suit induced infringement claims are insufficiently pled due to lack of direct evidence indicating defendants’ knowledge.  The court finds that defendants’ knowledge of related patents as well as the ubiquity of the disputed patent in the industry, taken together, make it plausible that defendants were aware of the patent prior to suit. It also finds it plausible that defendants were aware of customers’ infringement.  Intent is found in the allegations that defendants, through marketing materials, encouraged the sale of the allegedly infringing apparatus.

Objections to magistrate’s rulings on claim construction, summary judgment and Daubert motion are considered

W.L. Gore & Associates, Inc. v. C.R. Bard, Inc., et al., C.A. No. 11-515 – LPS, September 28, 2015.

Stark, C. J.   Defendants’ objections to recommended claim constructions are overruled and the magistrate’s report is adopted.  Defendants’ objections to recommended denials of defendants’ invalidity summary judgment motion and Daubert motion are overruled and those recommendations are adopted. Plaintiff’s motions objections are sustained in part and overruled in part.

The magistrate issued a Report and Recommendation on claim construction on August 8, 2014.  The court relies on the magistrate’s detailed reasoning provided in his claim construction report in overruling plaintiff’s objections. On June 17, 2015, the magistrate issued a Report and Recommendation recommending that (1) Defendants’ motion for summary judgment of invalidity be denied; (2) Defendants’ motion for summary judgment of non-infringement as to the thickness limitation be granted in part and denied in part, and (3) Defendants’ Daubert motion to exclude certain testimony from plaintiff’s expert Robert C. Gorman be denied.  With respect to invalidity, the court agrees that the proper standard for indefiniteness was applied. As for the Daubert motion, the court agrees that defendants’ arguments go to the weight and not admissibility of the challenged testimony. With respect to the non-infringement motion, the court agrees with plaintiff that no temporal restriction should be read into the claim.  Remaining objections are overruled.

Court adopts magistrate’s recommendation finding personal jurisdiction

Kraft Foods Group Brands LLC v. TC Heartland, LLC, et al., C.A. No 14-28 – LPS, September 24, 2015.

Stark, C. J.  Report and Recommendation that defendant’s motion to dismiss for lack of personal jurisdiction and transfer be denied is adopted and the objections are overruled.

The court finds that Report correctly concluded that the Court's personal jurisdiction analysis is not governed by Sears, Roebuck & Co. v. Sears plc (concerning tradename infringements), but rather by Beverly Hills Fan Co. v. Royal Sovereign Corp., which continues to govern the due process analysis in a patent case and in no way suggests that personal jurisdiction in a patent case, once found to exist, is limited to acts of infringement occurring within the forum state.

Certain claims from one patent are found to be patent ineligible

Endo Pharmaceuticals Inc., et al. v. Actavis Inc., et al., C.A. No 14-1381 – RGA, September 23, 2015.

Thynge, M. J.  Report and Recommendation that defendants’ motion to dismiss certain counts of the complaint as invalid as directed to unpatentable subject matter under §101, and as insufficiently pled as to induced infringement, be granted.

The disputed patent relates to a method of treating pain utilizing controlled release oxymorphone.   Following Mayo and Alice, the court finds that the disputed steps in administering the drug do not transform the natural law into a patentable application of that law. The administering step merely instructs physicians to dispense the drug for the treatment of pain in a well-known manner, while using natural law to manage the dosage.  In addition, there are numerous references which preempt future inventions and discoveries in this field.  In light of this determination, the court finds it need not address the adequacy of the induced infringement claims.

Magistrate’s recommendations on validity and noninfringement are adopted

Impulse Technology Ltd. v. Microsoft Corporation, et al., C.A. No 11-586 – RGA, September 22, 2015.

Andrews, J.  Magistrate’s Reports and Recommendations regarding denial of summary judgment of invalidity is adopted and granting summary judgment of noninfringement are adopted.

No objections were filed with respect to the recommended denial of summary judgment of invalidity and that recommendation is therefore adopted.  With respect to infringement, the court rejects the argument that the magistrate used the incorrect claim construction and there are issues of fact precluding summary judgment.  Finally, it rejects plaintiff’s argument that infringement under the doctrine of equivalents is still viable.  The accused product operates in essentially the opposite way than described in the claims.

Motions to strike filed by both sides are denied

Greatbatch Ltd. v. AVX Corporation, et al., C.A. No 13-723 – LPS, September 22, 2015.

Stark, C. J.  Defendants’ motion to strike plaintiff’s theory of infringement is denied.  Plaintiff’s motion to strike newly disclosed prior art is denied.

Defendants move to strike plaintiff’s “Percolation Network” theory of infringement.  The theory is undeniably important to plaintiff’s case and therefore the court is reluctant to strike it.  Defendants have not shown unfair surprise or prejudice. Other Pennypack factors also weigh in Plaintiff’s favor – no evidence of bad faith or disruption of trial. Any prejudice has been or can be cured.  Plaintiff’s motion to strike newly disclosed prior art is denied. Plaintiff has not articulated unfair prejudice it may suffer, and any prejudice is outweighed by the importance of the information.  Exclusion is an extreme sanction not normally imposed absent a showing of willful deception or flagrant disregard of a court order.  Defendants met the deadline for finally identifying invalidity contentions.

Defendant is not liable for pre-suit damages for all except one patents-in-suit

Robert Bosch LLC v. Alberee Products, Inc., et al., C.A. No 12-574 – LPS, September 16, 2015.

Stark, C. J.  Defendant Costco’s motion to dismiss claims for pre-suit notice damages and pre-suit indirect infringement is granted in part and denied as to the ‘419 patent. Plaintiff’s request for leave to amend its complaint is denied as moot.

The disputed technology relates to windshield wiper blades. Argument took place on June 8, 2015.  Plaintiff’s motion to emend the complaint is mooted by the conversion of defendant’s unopposed motion to dismiss into a summary judgment motion based on documents produced in discovery.  Plaintiff concedes that it failed to mark its patented wiper blades.  With respect to one patent-in-suit, plaintiff contends it was not required to mark because none of its products was an embodiment of that patent.  There is a material dispute as to that patent. With respect to the other patents, the lack of marking limits damages to when Costco received notice of the alleged infringement. An email from a third party did not satisfy notice requirements because it was not plaintiff’s affirmative act.

Transfer motion is denied

Par Pharmaceutical, Inc., et al. v. Breckenridge Pharmaceutical, Inc., et al., C.A. No. 15-486 - SLR, September 10, 2015.

Robinson, J. Defendants’ motion to transfer is denied. Motion to dismiss for lack of jurisdiction after ANDA issued is denied

Instead of applying admittedly neutral Jumara factor arguments, Defendants urge the court to transfer instead based on the singular fact that the Maryland court had rendered a decision on a related patent and, thus, any forum but Maryland should be rejected as an exercise in forum shopping. The court declines to characterize the plaintiffs form choice as forum shopping when defendants’ transfer motion does the same thing. Defendant’s motion to dismiss count III of the complaint claiming the court was divested of jurisdiction once the FDA approved Defendant’s ANDA. No authority was provided in support of that motion and it is denied.