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Delaware Intellectual Property Litigation

Intellectual Property and Antitrust Litigation in Delaware

Judge Sleet Denies Defendants’ Post-Trial Proposed Finding of Invalidity of Patents-in-Suit Due To Obviousness

Posted in Intellectual Property, Patent Infringement, Patents

By Memorandum Opinion entered by The Honorable Gregory M. Sleet in Pfizer Inc. v. Sandoz Inc., et al., Civil Action No. 13-110-GMS (D.Del., Apr. 20, 2016), the Court denied defendants’ post-trial proposed finding that the Court find the patents-in-suit were invalid due to obviousness under 35 U.S.C. § 103.  After having conducted a four-day bench trial in 2015 and considering the entire record in the case and the applicable law, the Court concluded that none of the asserted claims of the patents-in-suit were invalid due to obviousness and directed the Clerk of Court to enter final judgment in favor of the Plaintiffs. Id. at 1-19.

A copy of the Memorandum Opinion is attached.

Chief Judge Stark Grants Prevailing Defendant’s Motion for Review Taxation of Costs

Posted in Intellectual Property, Patent Actions, Patent Infringement

By Memorandum Opinion entered by The Honorable Leonard P. Stark in Walker Digital, LLC v. Google, Inc., Civil Action No. 11-318-LPS (D.Del., April 12, 2016), the Court granted defendant Google’s Motion for Review Taxation of Costs.  In doing so, the Court rejected plaintiff Walker Digital’s argument that Google’s motion to review costs was procedurally improper, granted Google’s request for costs related to depositions of technical and non-technical witnesses, the Rule 30(b)(6) witnesses of both parties, both sides’ expert witnesses, the named inventors of the patents-in-suit, the prosecuting attorneys, the inventors of prior art, and other witnesses in the requested amount of $49,912.47, granted Google’s request for costs incurred in the production of a technology tutorial submitted to the Court as part of the claim construction process and exhibits used at the claim construction hearing in the amount of $19,672.57, granted Google’s request to recover a portion of its costs incurred in the conversion of electronic documents to TIFF images pursuant to the parties’ stipulation as to the format in which ESI documents were to be produced during discovery in the amount of $1,922.05, and granted Google’s request for costs of obtaining transcripts of court proceedings in the amount of $1,018.06. Id. at 5-12.

A copy of the Memorandum Opinion is attached.

Judge Thynge Grants Defendant’s Motion for Summary Judgment of Non-Infringement After Adopting the PTAB’s Construction of Phrases in Patent’s Independent Claim

Posted in Intellectual Property, Patent Actions, Patent Infringement

By Memorandum Opinion entered by The Honorable Mary Pat Thynge in SunPower Corp. v. PanelClaw, Inc., Civil Action No. 12-1633-MPT (D.Del., April 1, 2016), the Court granted defendant PanelClaw’s motion for summary judgment of non-infringement of U.S. Patent No. 5,505,788 (“the ‘788 patent”).[1]  In granting defendant’s motion for summary judgment of non-infringement of the ‘788 patent, the Court adopted the construction of the phrases “disposed as a layer” and “as a layer on top of said roofing membrane” in claim 1 of the ‘788 patent rendered by the Patent Trial and Appeal Board (“PTAB”) during the inter partes review (“IPR”) for the ‘788 patent.

A copy of the Memorandum Opinion is attached.

[1] The parties consented to Chief Magistrate Judge Thynge’s jurisdiction in the case for all purposes, including trial and final judgment.

Judge Robinson Denies Prevailing Defendants’ Motion for Attorneys’ Fees Under 35 U.S.C. § 285

Posted in Intellectual Property, Patent Infringement

By Memorandum Order entered by The Honorable Sue L. Robinson in Apeldyn Corp. v. Sony Corp., et al., Civil Action No. 11-440-SLR (D.Del., March 31, 2016), the Court denied defendants’ motion for attorneys’ fees after finding the case did not warrant exceptional case status under 35 U.S.C. § 285.  By way of background, the Court had previously granted defendants’ motion for summary judgment of non-infringement due to collateral estoppel and defendants’ motion for summary judgment of invalidity, and entered judgment for defendants in the patent infringement action. Id. at 2.  Plaintiff appealed the Court’s summary judgment decisions to the Federal Circuit and the Federal Circuit affirmed the Court’s summary judgment ruling of non-infringement. Id. at 3.  Thereafter, in moving for attorneys’ fees as the prevailing party under § 285, defendants argued that the case was an exceptional case because plaintiff pursued objectively unreasonable infringement and validity positions which were barred by collateral estoppel. Id. at 4.  However, the Court disagreed with defendants and, in denying their motion for attorneys’ fees, found the case was not exceptional under 35 U.S.C. § 285 because defendants opposed the filing of an early motion for summary judgment of collateral estoppel and wanted to proceed with discovery and summary judgment briefing. Id. In addition, the Court was not persuaded that plaintiff was so lacking a good faith belief of validity as to merit awarding exceptional case status under 35 U.S.C. § 285. Id.

A copy of the Memorandum Order is attached.

The general takeaway for parties in a patent infringement action is to keep in mind that opposing a proposed Scheduling Order that includes an opportunity for early resolution through early summary judgment, claim construction or otherwise may be used against you in the future in the event that you are ultimately the prevailing party and desire to seek attorneys’ fees under 35 U.S.C. § 285.

Judge Sleet Denies Defendant’s Rule 12(b)(6) Motion to Dismiss Claiming Alleged Subject Matter Ineligibility of Patent

Posted in Intellectual Property, Patent Infringement

By Memorandum Order entered by The Honorable Gregory M. Sleet in Bristol-Myers Squibb Co., et al. v. Merck & Co., Inc., et al., Civil Action No. 15-560-GMS (D.Del., March 17, 2016), the Court denied defendant’s motion to dismiss the complaint which argued that the patent-in-suit, United States Patent No. 9,067,999 (“the ‘999 patent”), claims ineligible subject matter pursuant to 35 U.S.C. § 101.  In denying the motion, the Court found that defendant had not met its burden to prove by clear and convincing evidence that the ‘999 patent is invalid on its face for failing to cover patent-eligible subject matter under 35 U.S.C. § 101. Id. at 3.

A copy of the Memorandum Order is attached.

Chief Judge Stark Denies Defendant’s Motion for Judgment as a Matter Law on Noninfringement, Invalidity and Damages Following Jury Verdict of Infringement

Posted in Intellectual Property, Patent Infringement

By Memorandum Order entered by The Honorable Leonard P. Stark in Intellectual Ventures I LLC v. Symantec Corp., Civil Action No. 10-1067-LPS (D.Del., March 10, 2016), the Court denied defendant’s motion for judgment as a matter of law (“JMOL”) on noninfringement, invalidity and damages with respect to U.S. Patent No. 5,987,610 (“the ‘610 patent”).  In doing so, the Court found there was a legally sufficient evidentiary basis to support the jury verdict of infringement and no invalidity of claim 7 of the ‘610 patent – for which the jury awarded plaintiff damages in the amount of $8 million following a 10-day jury trial.  Id. at 1-2.

A copy of the Memorandum Order is attached.

Judge Robinson Denies Non-Practicing Entity Defendant’s Motion to Dismiss Declaratory Judgment Action for Lack of Subject Matter Jurisdiction

Posted in Intellectual Property, Patent Infringement

By Memorandum Order entered by The Honorable Sue L. Robinson in Draeger Medical Systems, Inc. v. My Health, Inc., Civil Action No. 15-248-SLR (D.Del., March 3, 2016), the Court denied the motion of defendant, My Health, Inc., seeking to dismiss the complaint in the declaratory judgment action on grounds that plaintiff, Draeger Medical Systems, Inc., failed to identify actions sufficient to give rise to an “actual case or controversy” as required by Article III of the U.S. Constitution.[1]  In denying the motion, the Court found that the actions of the non-practicing entity defendant, through its agent, in sending Draeger Medical a letter claiming that Draeger Medical’s Infinity M300 system utilized the technology claimed and disclosed in the ‘985 patent, a Notice of Infringement of the ‘985 patent, a copy of the ‘985 patent, and a detailed and studied claim chart prepared with input from legal counsel and titled “Pre-filing Investigation Claim Chart” were sufficient to create an actual case or controversy necessary to support subject matter jurisdiction. See id. at * 4-7.

The Court noted that the same facts were sufficient to support subject matter jurisdiction in the Federal Circuit’s seminal case on the issue, SanDisk Corp. v. STMicroelectronics, Inc., 480 F.3d 1372, 1382 (finding jurisdiction where defendant provided a “thorough infringement analysis” prepared by legal experts, stated that plaintiff’s conduct infringed its patents, and claimed that plaintiff would need to pay a royalty for its infringing product). Id. at *5.  In reaching its conclusion, the Court also found that the fact that Draeger Medical never contacted or attempted to engage in license negotiations with defendant before filing the declaratory judgment action did not weigh against subject matter jurisdiction under the totality of the circumstances. Id. at *6-7.

A copy of the Memorandum Order is attached.

The takeaway is that this case may provide additional support for the strategy of not engaging in or not waiting to participate in negotiations of a license agreement with a non-practicing entity that sends your company or client a letter claiming infringement of a patent along with claim charts or other legal materials before offensively filing a declaratory judgment action when there are solid grounds for invalidity of the patent at issue, non-infringement and/or other affirmative defenses to the claim of infringement.

[1] The Complaint in the declaratory judgment action seeks a declaratory judgment of non-infringement and invalidity of U.S. Patent No. 6,612,985 (“the ‘985 patent”).

Judge Sleet Issues Order Construing Remaining Term in Dispute During Bench Trial of Infringement Action

Posted in Intellectual Property, Patent Infringement

By Memorandum Order entered by The Honorable Gregory M. Sleet in Merck Sharp & Dohme B.V. v. Warner Chilcott Company, LLC, Civil Action No. 13-2088-GMS (D.Del., February 25, 2016), the Court rendered its construction of the term “physiologically required amounts,” which remained in dispute in U.S. Patent No. 5,989,581 ( “the ‘581 patent”) during the four-day bench trial.  In its Memorandum Order, the Court adopted the plaintiff’s proposed construction of the term in dispute.

A copy of the Memorandum Order is attached.

Judge Andrews Denies Motion for Attorneys’ Fees of Prevailing Party But Awards Costs

Posted in Intellectual Property, Patent Infringement

By Memorandum Opinion entered by The Honorable Richard G. Andrews in Pragmatus v. Newegg Inc., Civil Action No. 12-1533-RGA (D.Del., February 18, 2016), the Court denied Defendant Newegg’s Motion for Attorneys’ Fees but granted its Motion for Costs.  In doing so, the Court concluded that Newegg was the “prevailing party” but the case was not “exceptional.”

By way of background, Plaintiff Pragmatus sued Defendant Newegg alleging that Newegg’s use of live chat technology on its website infringed certain patents. Id. at 1.  Suppliers of the live chat technology used by Newegg on its website subsequently filed declaratory judgment actions against Pragmatus and reached settlements with Pragmatus.  Believing that, in light of the settlements with the suppliers, the activities that formed the basis of the infringement allegations against Newegg were now licensed, Pragmatus filed an unopposed motion to dismiss, pursuant to Federal Rule of Civil Procedure 41(a)(2), which was granted by the Court the same day. Id.

Newegg subsequently filed a motion seeking attorneys’ fees and costs. Id. After briefing and oral argument on the issues, the District Court issued a memorandum opinion denying Newegg’s motion on the ground that it was not a prevailing party under 35 U.S.C. § 285 and Federal Rule of Civil Procedure 54(d)(1). Id. at 1-2.  The United States Court of Appeals for the Federal Circuit subsequently reversed that decision and, in doing so, held “that ‘Newegg must be regarded as the prevailing party in the underlying litigation,’” and remanded the case for a determination of whether Newegg was entitled to attorney fees and costs.  Id. at 2.  Thus, on remand, the District Court had to decide whether the case was exceptional. Id.

After consideration of Newegg’s arguments, the District Court concluded the case was not exceptional under § 285 and denied the motion for attorneys’ fees. Id. at 10.  The Court noted that the Federal Circuit’s ruling dictated that Newegg be considered a prevailing party and that, pursuant to Federal Rule of Civil Procedure 54(d)(1) and Local Rule 54.1(a)(1), the prevailing party is entitled to costs. Id. Pragmatus asked the Court to exercise its discretion and deny Newegg costs for various reasons; however, the District Court declined to do so and referred the calculation of the costs to be awarded to the Clerk of Court. Id.

A copy of the Memorandum Opinion is attached.

The general takeaway from the case is as follows: just because one is a prevailing party, does not automatically mean that it will recover attorneys’ fees under 35 U.S.C. § 285.  The prevailing party must still show by a preponderance of the evidence that the case is “exceptional” for some reason.

Judge Andrews Grants Defendant’s Motion to Strike Plaintiffs Expert’s Reply Infringement Report With Respect to New Infringement Theory Asserted Therein

Posted in Intellectual Property, Patent Infringement

By Memorandum Order entered by The Honorable Richard G. Andrews in HSM Portfolio LLC, et al. v. Elpida Memory Inc., et al., Civil Action No. 11-770-RGA (D.Del., February 11, 2016), the Court, among other things, granted Defendant’s motion to strike (D.I. 1049)  with respect to the new infringement theory for the ‘949 patent raised in Plaintiffs Expert’s Reply Infringement Report.

In its motion to strike, Defendant contended that, in Plaintiffs Expert’s Initial Infringement Report, Plaintiffs only “accused Micron’s 6T SRAM memory cells of infringing the ‘949 patent, and not a ‘sense amplifier’ that would sense the output from those memory cells.” Id. at *5.  Defendant then contended that, in Plaintiffs Expert’s Reply Infringement Report, “Plaintiffs accused an entirely new circuit – a ‘sense amplifier.’” Id. Plaintiffs responded by stating that their expert and Defendant’s expert disagreed regarding what constitutes a sense amplifier.  Id.  However, Plaintiffs conceded that the sense amplifier referred to in their Expert’s Reply Infringement Report was not charted in Plaintiffs Expert’s Initial Infringement Report or included in the invalidity contentions. Id.

The Court concluded that Plaintiffs should not be permitted to advance a new infringement theory in their reply report. Id. The court noted that, while it is true that Defendant filed a supplemental non-infringement report that responded to this new infringement theory, it was not convinced that was sufficient to cure the prejudice. Id. at *5-6.

A copy of the Memorandum Order is attached.

The takeaway from the case in general is that counsel and their infringement experts should be working together to make sure that they are identifying and charting all of the accused products during discovery in the action and are updating and supplementing the pleadings and discovery responses as necessary so that there can be no legitimate motions to strike asserting claims of new infringement theories after the close of discovery.