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Delaware Intellectual Property Litigation

Intellectual Property and Antitrust Litigation in Delaware

Judge Sleet Grants Intel’s Motion to Transfer Patent Infringement Action to Oregon

Posted in Intellectual Property, Patent Infringement

By Memorandum Opinion entered by The Honorable Gregory M. Sleet in Memory Integrity, LLC v. Intel Corporation, Civil Action No. 13-1804-GMS (D.Del., February 13, 2015), the Court granted the motion of Defendant Intel Corporation (‘Intel”) to transfer venue of the patent infringement action to the District of Oregon pursuant to 28 U.S.C. § 1404(a).  The Court considered the Jumara factors as a whole and concluded that Intel had met its burden of demonstrating that the interests of justice and convenience favored transfer.  Id. at 3-11.

Several factors were found by the Court to favor transfer including (1) the location where the claim arose; (2) the location of relevant books and records; and (3) practical considerations that might make trial easier and less expensive.  Id.  On the other hand, only plaintiff’s forum preference weighed against transfer and that preference was not afforded maximum deference in this action because of plaintiff’s minimal connection to Delaware.  Id. at 4.

A copy of the Memorandum Opinion is attached.

Fox Rothschild Named a “Go-To Law Firm” by Several in Annual Survey of Fortune 500 Companies

Posted in Antitrust and Patent Misuse, District of Delaware, Intellectual Property, Patent Infringement, Patents

Recognized for its strategic litigation and intellectual property work, Fox Rothschild LLP was recently named a “Go-To Law Firm” by several clients in a survey of Fortune 500 companies conducted by American Lawyer Media (ALM).  The article can be found at http://www.foxrothschild.com/newspubs/newspubsArticle.aspx?id=19327354477.  In the article, Gregory B. Williams is recognized for leading Fox’s team of attorneys representing Walmart Stores, Inc., which recognized Fox as a “go-to” firm for its contract litigation work.

Judge Robinson Grants Adobe’s Motion for Summary Judgment of No Remedies in Patent Infringement Action Seeking Pre-Issuance Damages

Posted in District of Delaware, Intellectual Property, Patent Infringement

By Memorandum Opinion entered by The Honorable Sue L. Robinson in Rosebud LMS, Inc. v. Adobe Systems Incorporated, Civil Action No. 14-194-SLR (D.Del., February 5, 2015), the Court granted the motion for summary judgment of no remedies of defendant Adobe Systems Incorporated (“Adobe”) after finding that the evidence submitted by plaintiff Rosebud did not show “actual notice” of the published patent application which resulted in the patent-in-suit, U.S. Patent No. 8,578,280 (“the ‘280 patent”).

Plaintiff Rosebud was seeking to recover provisional remedies under 35 U.S.C. § 154(d) based on the publication of the ‘280 patent application on December 29, 2011. See id. at 3-4. The parties did not dispute that the accused feature of Adobe’s product was discontinued and could not have been used after January 2013 and the ‘280 patent did not issue until November 5, 2013. Id. Accordingly, in order to recover the extraordinary remedy of pre-issuance damages provided for in 35 U.S.C. § 154(d), plaintiff had to show, among other things, that Adobe had “actual notice” of the published patent application as opposed to constructive notice of the published patent application. Id. at 3-7.

A copy of the Memorandum Opinion is attached.

 

Judge Sleet Dismisses Patent Infringement Action after Finding Patent Invalid Because It Claims an Abstract Idea

Posted in Intellectual Property, Patent Infringement

By Memorandum Opinion entered by The Honorable Gregory M. Sleet in The Money Suite v. 21st Century Insurance and Financial Services, Inc., et al., Civil Action No. 13-984-GMS (D.Del., January 27, 2015) (consolidated), the Court granted defendants’ joint motion to dismiss all of the actions filed by plaintiff against them alleging infringement of U.S. Patent No. 6,684,189 (“the ‘189 Patent”) after finding that the ‘189 patent was invalid under 35 U.S.C. § 101 because it claimed a patent-ineligible subject matter. In so ruling, the Court found that the ‘189 Patent and all of its 887 claims are invalid because they claim an abstract idea – providing price quotes for various financial products and services – without meaningfully narrowing the scope of coverage. See id. at 5.

A copy of the Memorandum Opinion is attached.

The takeaway from this case is that, when evaluating a patent that potentially claims an abstract idea, isolate the independent claim(s) and carefully evaluate whether there are sufficient inventive elements such that the claimed invention is significantly more than a patent on an ineligible concept using the two-step framework set forth by the U.S. Supreme Court in Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S.Ct. 2347, 2355 (2014).

 

 

Chief Judge Stark Grants Defendants’ Motion to Transfer Patent Infringement Action to Northern District of California

Posted in Intellectual Property, Patent Infringement

By Memorandum Order entered by The Honorable Leonard P. Stark in Selene Communication Technologies, LLC v. Trend Micro Inc., et al., Civil Action No. 14-435-LPS (D.Del., January 16, 2015), the Court granted defendants’ motion to transfer the action to the United States District Court for the Northern District of California (“Northern District”), pursuant to 28 U.S.C. § 1404(a). After evaluating and weighing the Jumara factors, the Court found that the factors, in total, weighed strongly in favor of transfer.

In so ruling, the Court concluded that Plaintiff’s choice of forum in the District of Delaware was entitled to less deference because Plaintiff’s principal place of business was in Ohio. Id. at 1-2. The Court also concluded that Defendants’ choice of forum was entitled to some weight because Defendants maintained their principal place of businesses in the Northern District. Id. at 2. The Court also concluded that the location where the claim arose and the convenience of the witnesses weighed in favor of transfer. Id. at 2-3. Of particular note was the fact that three of the four inventors, who are third-party witnesses, reside in the Northern District. Id. at 3.

A copy of the Memorandum Order is attached.

Judge Robinson Denies Defendants’ Motion to Stay and Motion for Relief from Final Judgment on the Basis of Infant Reexamination Proceedings

Posted in District of Delaware, Intellectual Property, Patent Infringement

By Memorandum Order entered by The Honorable Sue L. Robinson in Invista North America S.A.R.L., et al. v. M&G USA Corporation, et al., Civil Action No. 11-1007-SLR (D.Del., January 14, 2015), the Court denied related motions filed by defendants M&G USA Corporation and M&G Polymers USA, LLC (collectively “M&G”) seeking to stay the action pending the completion of the reexamination process of the patent-in-suit by the United States Patent and Trademark Office (“PTO”) and seeking relief from the final judgment previously entered against M&G, which was affirmed by the Federal Circuit Court of Appeals.

In so ruling, the Court noted at the outset that it was “only because damages and willfulness were bifurcated is it possible for M&G to even posit the suggestion that it get yet another bite at the apple (its Rule 60(b) motion) or that the day of reckoning be further postponed pending completion of the reexamination process.” Id. at 2. The Court also expressed regret that the prior practice of bifurcating had led to this end. Id.

Nonetheless, the Court denied M&G’s motion to stay finding that “a stay would impose a clear tactical disadvantage to Invista, the party with a final judgment in hand obtained at great cost, given the fact that M&G has defended itself vigorously.” Id. at 3. The Court concluded that the better path is to take the litigation to its finality – meaning completing the damages phase of the litigation – so that Invista could enforce its judgment promptly. Id. at 4. The Court also denied M&G’s motion for relief from the final judgment under Federal Rule of Civil Procedure 60(b) after rejecting M&G’s claims of new evidence and the other grounds that allegedly justified relief from the final judgment. Id. at 4-6.

The lesson of this case is that, in a bifurcated case, the PTO’s grant of the request for reexamination of the patent-in-suit and rejection of patent claims after a final judgment has already been issued does not guarantee that the damages phase in the ongoing litigation will be stayed and/or relief from judgment granted.

A copy of the Memorandum Order is attached.

 

Judge Stark Grants Motion in Limine in Part Precluding Defendant from Referring to Plaintiff as “Patent Troll” During Trial

Posted in Intellectual Property, Patent Infringement

By Memorandum Order entered by The Honorable Leonard P. Stark in Intellectual Ventures I LLC v. Symantec Corporation, Civil Action No. 10-1067-LPS (D.Del., January 6, 2015), the Court granted Plaintiff Intellectual Ventures I LLC’s (“IV”) motion in limine seeking to preclude argument and evidence disparaging IV’s business model and practices to the extent that Defendant Symantec Corporation (“Symantec”) may not refer to IV as a “patent troll” during trial. However, the Court denied the motion in limine to the extent that Symantec is permitted to present argument and evidence that IV does not practice the patents-in-suit, which the Court noted is relevant to damages.

A copy of the Memorandum Order is attached.

 

 

Judge Robinson Issues Claim Construction Ruling on Disputed Terms of Two Patents Concerning Measuring, Monitoring and Tracking Enterprise Communications

Posted in District of Delaware, Intellectual Property, Patent Infringement

By Memorandum Order entered by The Honorable Sue L. Robinson in YYZ, LLC, et al. v. Hewlett-Packard Company, Civil Action No. 13-136-SLR (D.Del., December 12, 2014) (consolidated), the Court issued its claim construction of the disputed terms of two patents, U.S. Patent Numbers 7,603,674 (“the ‘674 patent”) and 7,062,749 (“the’749 patent”), which concern measuring, monitoring and tracking enterprise communications and processes.

A copy of the Memorandum Order is attached.

 

Judge Andrews Issues Claim Construction Opinion on Remand Construing Term “Electrode” Consistent with the Court’s Original Construction Before Appeal

Posted in District of Delaware, Intellectual Property, Patent Infringement

By Memorandum Opinion entered by The Honorable Richard G. Andrews in Roche Diagnostics Operations, Inc., et al. v. Abbott Diabetes Care, Inc., et al., Civil Action No. 07-753-RGA (D.Del., December 5, 2014), the Court, on remand from the United States Court of Appeals for the Federal Circuit, construed the term “electrode” consistent with the Court’s original construction of that term before plaintiff’s appeal to the Federal Circuit of the denial of plaintiff’s motion for reconsideration and the entry of summary judgment of non-infringement based on the original “electrode” construction.

A copy of the Memorandum Opinion is attached.

 

Chief Judge Stark Allows Defendants to Amend Their Answer to Add Inequitable Conduct Before USPTO Defense

Posted in Intellectual Property, Patent Infringement

By Memorandum Order entered by The Honorable Leonard P. Stark in Graphics Properties Holdings, Inc. v. Google, Inc., C.A. No. 12-1394-LPS (D.Del., November 20, 2014) (consolidated), the Court granted the motion of defendants Google, Inc., Lenovo Holding Company, Inc. and Lenovo (United States) Inc. to amend their answer pursuant to Federal Rule of Civil Procedure 15(a) to add a defense alleging that the patent-in-suit, U.S. Patent No. 8,144,158 (“the ‘158 patent”), which is a continuation of United States Patent No. 6,650,327 (“the ‘327 patent”), is unenforceable due to plaintiff Graphic Properties’ inequitable conduct before the United States Patent and Trademark Office (“USPTO”). Specifically, defendants claimed that plaintiff and its attorneys withheld a Federal Circuit Order with intent to deceive the USPTO concerning the prior construction of the term “scan conversion” in the ‘327 patent. Id. at 2-3. Plaintiff contended the amendment of the answer would be futile because it did provide the USPTO with actual notice of the District Court Order during the patent prosecution. Id. at 3. The Court concluded that, regardless of whether the examiner was provided with the District Court’s Order, it was undisputed that the examiner was not given the subsequent Federal Circuit Order which contained statements not contained in the District Court’s Order. Id. at 3-4. Thus, the amendment was not futile and leave to amend was granted. Id. at 4-6.

A copy of the Memorandum Order is attached.