Plaintiff asked Judge Farnan to construe five claim terms, whereas defendant put forth three claim terms (down from its initial 31 claim terms, narrowed after the Markman hearing).
The construction of the eight disputed terms are as follows:
Context
“environment”
Judge Farnan found that this construction, proposed by plaintiff, was supported by the specification, and rejected defendants claim differentiation argument stating that “the specification should prevail over claim differentiation principles.” Id. at 10.
Component
“a computer-related entity, either hardware, a combination of hardware and software, software, or software in execution.”
Judge Farnan rejected defendant’s argument that means-plus-function treatment was appropriate thereby construing the term as expressly defined in the specification. Id. at 14.
Ordering
“organizing”
Judge Farnan rejected defendant’s proposed construction because it read in a limitation not supported by the claim or the specification. Id. at 15.
Traversing
“navigation according to a specific path or route”
Many-to-many Functionality
“two or more users able to access two or more data files”
Judge Farnan rejected defendant’s argument that the claim term was indefinite. Id. at 22-24.
Dynamically
“automatically and in response to the preceding event”
Judge Farnan rejected plaintiff’s argument that the claim term required no construction because it is commonly used in the field, “and one of ordinary skill in the art understands its meaning.” Id. at 24.
Metadata
Term given its plain and ordinary meaning
Judge Farnan determined that defendant’s proposed construction “import[ed] unnecessary and unwarranted limitations” into the claim term. Id. at 27. Furthermore, the proposed construction was not supported by the prosecution history. Id. at 28.
Accesses [the data]
Term given its plain and ordinary meaning
Leader Technologies, Inc. v. Facebook, Inc., C.A. No. 08-862-JJF (D. Del. Mar. 9, 2010)
]]>Plaintiff's motion to strike was denied due to a lack of prejudice, and the fact that they had actual notice. Defendants' on-sale bar motion was denied because they provided no "clear and convincing evidence that [supposed on-sale bar product] met all of the limitations of an asserted claim," because it was missing some enabling portions of the specification, and "the (albeit few) missing enabling portions of the specification may have been added" after the critical date. Id. at 19.
Defendant's anticipation motion was denied because there are still issues of fact (as evidenced, according to the Court, by the fact that Defendant submitted over 5000 pages of material to the Court for consideration), and because "defendant's wholesale grouping of limitations [in its anticipation analysis] does not allow for the requisite demonstration of the manner in which the elements of the asserted preior art system are arranged." Id. at 38-41.
One final item of interest was how the Court, in denying Defendant's indefiniteness motion, used Defendant's own anticipation motion against it:
Notably, defendant has moved for summary judgment that claim 6 of the '284 patent is anticipated and obvious in view of the three prior art systems noted supra. Certainly defendant's assertion that the claim can be (positively) contrasted with the prior art is at odds with the assertion that the bounds of the claim are indeterminable.Id. at 41-42 (emphasis added). ]]>
Magsil Corp. v. Seagate Technology, C.A. No. 08-940 (D. Del. Mar. 1, 2010)
]]>
"No attorney or other individual who has access to the other parties' [confidential information] . . . shall be involved thereafter in the prosecution or drafting of patent applications, claim language for patent applications, or arguments made in support of patent applications, excluding a patent in reexamination [involving an] . . . opposing party in this case, before the [PTO or foreign agencies], and proceedings related to [the patent-in-suit] . . . . [A]ny individual's participation in reexamination proceedings(s) also is expressly conditioned on his/her/its legal obligation, established by Order of the Court, not to use in any way an opposing party's [confidential information] to draft new claims, or to amend previously existing claims, through the reexamination process. The above conditions and exclusions continue for a period of one year following the final resolution [of the case]."
Apeldyn Corp. v. AU Optronics Corp., C.A. No. 08-568-SLR (D. Del. March 1, 2010) (Poppiti. S.M.).
Congratulations Karen!
]]>
Addressing this broader issue, the Court answered no, thereby eliminating a potential avenue for recovery:
"[T]he only bases [plaintiff] Edwards has asserted for its contention that CoreValve was on notice of such claims are a single sentence in a CoreValve expert report that contains what is, at most, an oblique reference to § 271(f); a formalistic recitation in the original complaint of all possible modes of infringement under § 271 that Edwards might later assert; and an assertion made long after the close of discovery that Edwards 'reserved its rights' to assert § 271(f)."
By doing so, the Court reinforced once again the practice in this district that general statements in pleadings more often than not cause disclosure problems further down the road.
Edwards Lifesciences AG v. CoreValve Inc., C.A. No. 08-91-GMS (D. Del. Feb. 26, 2010) (Sleet, C.J.).
"It is the court's opinion that an expectation of change does not constitute an intervening change. . . . The court recognizes that the Federal Circuit has heard oral argument in Ariad Pharms., Inc. v. Eli Lilly & Co. and that the Federal Circuit's forthcoming decision in that case may alter the scope and purpose of the written description requirement. However, this court . . . is constrained to follow existing standards under Federal Circuit law, and Federal Circuit precedent 'clearly recognizes a separate written description requirement.' " (slip op. at 19)
Cordance Corp. v. Amazon.com Inc., C.A. No. 06-491-MPT (D. Del. Feb. 22, 2010) (Thynge, M.J.).
]]>
The Court's application of the anticipation and obviousness tests was relatively straightforward. It turned on the Federal Circuit's holding that "[t]he disclosure of a range 'is only that of a range, not a specific [point] in that range[, i.e.] the disclosure of a range is no more a disclosure of the end points of the range than it is each of the intermediate points." Atofina v. Great Lakes Chemical Corp., 441 F.3d 991 (Fed. Cir. 2006). The patents involved amino acid gaps in a protein to assist in blood clotting; because the range of gaps did not line up properly under Atofina, the court held that the prior patent did not anticipate the subsequent ones. Id. at 18-24.
Along the way, the court also clarified that patent term extensions under the Hatch-Waxman Act apply to the patent itself, not to specific claims within the patent. Id. at 16.
]]>"truncated Factor VIII Protein which is an active procoagulant"
A Factor VIII protein that promotes blood coagulation and lacks a portion of the amino acid sequence of the human Factor VIII protein.
"having a peptide sequence of human factor VIII:C but lacking a peptide region selected from the group consisting of"
Having the amino acid sequence of the human Factor VIII protein lacking only the particular segment of the human Factor VIII protein in one of the specified alternatives (a), (b) or (c).
Here, plaintiff had argued for a broad interpretation of the claim (i.e., "lacking a peptide region of at least the regions identified in (a), (b) or (c)."). Id. at 3. Plaintiff argued, among other things, that the PTO's granting of a term extension for its patent based on its construction of the relevant claim be given great deference. Id. However, Judge Robinson noted that "[c]laim construction is a matter of law and, therefore, does not fall within the PTO's technical expertise (assuming that the PTO went through the claim construction exercise in the first instance)." Id. at 4.
]]>