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Delaware Intellectual Property Litigation

Intellectual Property and Antitrust Litigation in Delaware

Judge Robinson Denies Defendant’s Motion for Judgment on the Pleadings in Design Patent Infringement Action

Posted in Patent Infringement

By Memorandum Opinion entered by The Honorable Sue L. Robinson in Poly-America, L.P. v. API Industries, Inc., Civil Action No. 13-693-SLR (D.Del., April 10, 2014), the Court denied defendant API Industries, Inc.’s motion for judgment on the pleadings after concluding that the patented design and the accused design “are not plainly dissimilar” and refusing to pronounce, as a matter of law, that the overall visual differences between the accused design and patented design are greater than the differences between the patented design and the prior art. The Court noted that “the accused design and the patented design appear the same in general appearance and effect” but an issue of fact remains. Id. at 6.

A copy of the Memorandum Opinion is attached.

 

Judge Robinson Grants Amazon’s Motion for Summary Judgment of Invalidity and Concludes that Sanctions Are Warranted in Patent Infringement Action

Posted in Antitrust and Patent Misuse, Intellectual Property, Patent Infringement

By Memorandum Opinion entered by The Honorable Sue L. Robinson in Technology Innovations, LLC v. Amazon.com, Inc., Civil Action No. 11-690-SLR (D.Del., March 31, 2014), the Court granted defendant Amazon’s motion for summary judgment of invalidity of U.S. Patent No. 7,429,965 (“the ‘965 patent”). The Court also found that plaintiff’s assertion of U.S. Patent No. 5,517,407 (“the ‘407 patent”) against defendant Amazon’s Kindle product warranted sanctions because the claims and specification made it clear that the invention refers only to printed materials and not an electronic book. Id. at 11-24. Accordingly, the Court found that plaintiff’s assertion of infringement of the ‘407 patent by the Kindle was not “objectively reasonable under the circumstances.” Id. at 24.

A copy of the Memorandum Opinion is attached.

 

Chief Judge Sleet Grants Zynga’s Motion to Transfer Patent Infringement Action to Northern District of California

Posted in Intellectual Property, Patent Infringement

By Memorandum Opinion entered by The Honorable Gregory M. Sleet in Segan LLC v. Zynga Inc., Civil Action No. 11-670-GMS (D.Del., March 19, 2014), the Court granted defendant Zynga’s Motion to Transfer the patent infringement action to the U.S. District Court for the Northern District of California. In doing so, the Court found that Zynga met its burden of demonstrating that the interests of justice and convenience strongly favored transfer and that, of the Jumara factors, only plaintiff’s forum preference weighed against transfer. See id. at 3-9.

A copy of the Memorandum Opinion is attached.

 

Chief Judge Sleet Grants Motion to Transfer Constant Contact’s Action Seeking Declaratory Judgment that Umbanet’s Patents Are Invalid

Posted in Intellectual Property, Patent Infringement

By Memorandum Opinion entered by The Honorable Gregory M. Sleet in Constant Contact Inc. v. Umbanet Inc., Civil Action No. 12-1467 (D.Del., March 12, 2014), the Court granted defendant Umbanet’s Motion to Transfer the declaratory judgment action filed by plaintiff Constant Contact to the United States District Court for the District of New Jersey. Umbanet had previously filed suit in the District of New Jersey against one of the customers of Constant Contact alleging that its customer’s use of Constant Contact’s “Email Marketing” service infringed U.S. Patent Nos. 7,076,730 and 7,444,374 (collectively, “the patents-in-suit”). Constant Contact’s complaint sought a declaratory judgment that the patents-in-suit are invalid and that none of its customers are infringing the patents-in-suit by using Constant Contact’s email marketing products. See id. at 1-2.

After analyzing the Jumara factors, the Court ultimately concluded that transfer of the declaratory judgment action to the District of New Jersey would best serve the interests of justice and convenience. See id. at 2-10. A copy of the Memorandum Opinion is attached.

 

Judge Andrews Grants Defendants’ Motion for Summary Judgment Based on Invalidity After Finding Eight Terms of Patent-in-Suit Indefinite for Failure to Disclose Algorithm

Posted in Intellectual Property, Patent Infringement

By Memorandum Opinion entered by The Honorable Richard G. Andrews in EON Corp. IP Holdings, LLC v. FLO TV Incorporated, et al., Civil Action No. 10-812-RGA (D.Del., March 4, 2014), the Court granted Defendants’ Motion for Summary Judgment Based on Invalidity after finding that eight terms of the patent-in-suit, U.S. Patent No. 5,663,757 (“the ‘757 patent”), were computer-implemented means-plus function claims and those claim terms were indefinite for failing to disclose an algorithm to accomplish the function. See id. at 3-23.

In reaching its decision, the Court determined that a general purpose computer with off-the-shelf software in 1991 could not perform the claimed functions without special programming. See id. As a result, the Court found that the exception carved out by the Federal Circuit in In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) did not apply, the disclosure of an algorithm to accomplish the claimed functions was required, and the patentee could not rely on a general purpose computer to satisfy the structure requirement of 35 U.S.C. § 112, ¶ 6 (now § 112(f)).

A copy of the Memorandum Opinion is attached.

 

Judge Andrews Grants Microsoft’s Motion for Summary Judgment in Part in Infringement Action

Posted in District of Delaware, Intellectual Property, Patent Actions, Patent Infringement

By Memorandum Opinion entered by The Honorable Richard G. Andrews in Robocast, Inc. v. Microsoft Corporation, Civil Action 10-1055-RGA (D.Del., February 21, 2014), the Court granted Defendant Microsoft Corporation’s Omnibus Motion for Summary Judgment in part and denied it in part. The Court also denied Plaintiff Robocast, Inc.’s Motion for Summary Judgment of No Unenforceability and No Unclean Hands.

A copy of the Memorandum Opinion is attached.

 

Judge Robinson Issues Early Claim Construction Ruling on Three Potentially Dispositive Claim Terms in Cyberfone Cases

Posted in Intellectual Property, Patent Infringement

By Memorandum Opinion entered by The Honorable Sue L. Robinson in four alleged patent infringement cases brought by Cyberfone against over a hundred defendants, the first case being captioned as Cyberfone Systems, LLC v. ZTE (USA), Inc., Civil Action No. 11-827-SLR, the Court issued its early claim construction ruling on three (3) common claim terms that were considered by the parties to be potentially dispositive to the claims at issue in the cases. In the opinion, the Court construed the three terms, some or all of which are found in U.S. Patent Nos. 6,044,382 (“the ‘382 patent”), 5,805,676 (“the ‘676 patent”), 5,987,103 (“the ‘103 patent”) and 7,334,024 (“the ‘024 patent”) as follows: (1) “form driven operating system” means “firmware – a set of instructions programmed on a hardware device, that, together with forms, operates to control a microprocessor without the need for a conventional operating system (such as DOS or Windows)”; (2) “client module” means “firmware – a set of instructions programmed on hardware device – that, together with forms, operates to control a microprocessor without the need for a conventional operating system (such as DOS or Windows)”; and (3) “transaction assembly server” means “firmware – the set of instructions programmed on a hardware device.”

A copy of the Memorandum Opinion is attached.

 

Judge Andrews Denies Plaintiff’s Request for a Single Trial in Patent Infringement Action Filed After Effective Date of America Invents Act

Posted in Intellectual Property, Patent Infringement

By Memorandum Order entered by The Honorable Richard G. Andrews in EON Corp. IP Holdings LLC v. FLO TV Incorporated, et al., Civil Action No. 10-812-RGA (D.Del., January 30, 2014), the Court denied Plaintiff’s motion for a single trial of its infringement and invalidity claims against nine (9) remaining defendants. In so ruling, Judge Andrews noted that “I believe having a single joint trial would not only be completely unfair and prejudicial to the Defendants, and sufficient reason to sever the case into various smaller units, but it would also be reversible error.” Id. at 1.

The Court also denied Plaintiff’s request seeking to sever the invalidity defenses into a separate trial under Federal Rule 42(b) and have one invalidity trial. Id. at 2. The Court did recognize that “[o]ne invalidity trial would make a certain amount of sense.” Id. However, ultimately, the Court denied the request and decided to proceed by scheduling nine separate one week trials on infringement so each defendant can be judged on its own merits. Id.

Worth noting is the fact that this case was filed by Plaintiff after the effective date of the Leahy-Smith America Invents Act of 2011 (the “AIA”) and the Court commented in its analysis that it did not believe the defendants were properly joined in the first place. A complete copy of the Memorandum Order is attached.

 

Judge Robinson Grants Motorola’s Motions for Summary Judgment of Invalidity and Non-Infringement in Part in Patent Infringement Action filed by Intellectual Ventures

Posted in District of Delaware, Intellectual Property, Patent Infringement

By Memorandum Opinion entered by The Honorable Sue L. Robinson in Intellectual Ventures I, et al. v. Motorola Mobility, LLC, Civil Action No. 11-908-SLR (D.Del., January 2, 2014), the Court granted defendant Motorola’s motions for summary judgment of invalidity in part and motion for summary judgment of non-infringement in part.

A copy of the Memorandum Opinion is attached.

 

Judge Stark Issues Markman Opinion in Helios Software Action Construing Twenty-One Disputed Terms in Patents

Posted in District of Delaware, Intellectual Property, Patent Infringement

By Memorandum Opinion entered by The Honorable Leonard P. Stark in Helios Software, LLC, et al. v. Awareness Technologies, Inc., et al., Civil Action No. 11-1259-LPS (D.Del., December 19, 2013) and Helios Software, LLC, et al. v. Spectorsoft Corp., Civil Action No. 12-081-LPS (D.Del., December 19, 2013), the Court set forth its Markman ruling construing twenty-one (21) disputed terms of the patents-in-suit in the two actions: U.S. Patent Nos. 6,978,304, 7,634,571 and 7,958,237.

Copies of the Memorandum Opinion and accompanying Order are attached.