Header graphic for print

Delaware Intellectual Property Litigation

Intellectual Property and Antitrust Litigation in Delaware

After Bench Trial, Judge Sleet Concludes that Hospira’s Proposed Product Does Not Infringe the Patent-in-Suit Asserted by Abbvie

Posted in Intellectual Property, Patent Infringement

By Memorandum Opinion entered by The Honorable Gregory M. Sleet in Abbvie Inc. v. Hospira, Inc., C.A. No. 11-648- GMS (D.Del., October 24, 2014), the Court, following a two day bench trial and after having considered the entire record in the case and the applicable law, concluded that (1) the asserted claims of the patent-in-suit, U.S. Patent Number 6,136,799 (“the ‘799 patent”) are not invalid due to obviousness; and (2) Hospira’s proposed product does not infringe the ‘799 patent.

A copy of the Memorandum Opinion is attached.

 

Judge Sleet Grants Nintendo’s Motion to Transfer Patent Infringement Action from Delaware to Washington

Posted in District of Delaware, Intellectual Property, Patent Infringement

By Memorandum Opinion entered by The Honorable Gregory M. Sleet in Ithaca Ventures k.s., et al. v. Nintendo of America Inc., et al., C.A. No. 13-824-GMS (D.Del., September 25, 2014), the Court granted Nintendo’s motion to transfer the patent infringement action to the Western District of Washington pursuant to 28 U.S.C. § 1404(a). In doing so, the Court found that plaintiff Ithaca’s forum choice was not entitled to maximum deference because, although Itahca Development was organized under Delaware law, its principal place of business being in Texas diminished its argument that Delaware was its “home turf.” See id. at 4. The Court also found significant the fact that Ithaca Development was only organized under Delaware law a few weeks before filing the patent infringement action, which suggested to the Court that Ithaca Development’s organization in Delaware was motivated significantly by the subject litigation. See id. Ultimately, the Court concluded that Nintendo met their burden of demonstrating that the interests of justice and convenience strongly favor transfer under the Jumara factors. See id. at 14.

A copy of the Memorandum Opinion is attached.

 

Judge Robinson Grants Defendants’ Motion to Dismiss Based on Lack of Personal Jurisdiction Over Japanese Parent Company in Patent Infringement Action

Posted in District of Delaware, Intellectual Property, Patent Infringement

By Memorandum Opinion entered by The Honorable Sue L. Robinson in Intellectual Ventures I LLC, et al. v. Ricoh Company, Ltd., et al., Civil Action No. 13-474-SLR (D.Del., September 12, 2014), the Court granted defendants’ motion to dismiss the complaint, pursuant to Federal Rule of Civil Procedure 12(b)(2), based on lack of personal jurisdiction over defendant Ricoh Company, Ltd. (“RCL”).

Plaintiffs asserted two bases for personal jurisdiction over RCL under Delaware’s long-arm statute: (1) general jurisdiction under section (c)(4) based on RCL’s systematic presence in Delaware as the head of a “global network;” and (2) “dual jurisdiction” under sections (c)(1) and (c)(4) based on RCL’s intentional injection of products into the “stream of commerce” using established business channels. See id. at 6. In light of the U.S. Supreme Court’s holding earlier this year in Daimler AG v. Bauman, 11-965, 2014 WL 113486, at *10 (January 14, 2014), the District Court found unavailing Plaintiff’s argument that general jurisdiction was appropriate based on RCL’s relationship with its wholly-owned subsidiaries. See id. at 7. The Court also found that there was no evidence in the record to support a finding of dual jurisdiction. See id. at 8. Because Plaintiffs did not establish personal jurisdiction over RCL under Delaware’s long-arm statute, the Court noted that it did not need to address whether the exertion of jurisdiction over RCL would satisfy the Due Process Clause. See id.

A copy of the Memorandum Opinion is attached.

The take away from this Opinion is that, when drafting Complaints where you have defendants that are entities that are not Delaware corporations, parties need to be mindful to be specific enough in their allegations of jurisdiction that they set forth and establish the appropriate bases for personal jurisdiction over the foreign entity under the Delaware long-arm statute and why the exercise of such jurisdiction comports with the Due Process Clause. Plaintiffs need to be prepared, if there is a jurisdictional challenge, to present sworn affidavits or other competent evidence to meet their burden of establishing with reasonable particularity that sufficient “minimum contacts” have occurred between the foreign defendant and Delaware to support personal jurisdiction in the District of Delaware.

 

Judge Andrews Grants Defendant NetApp’s Motion for Attorneys’ Fees in Patent Infringement Action Under the Court’s Inherent Powers

Posted in District of Delaware, Intellectual Property, Patent Infringement

By Memorandum Opinion entered by The Honorable Richard G. Andrews in Parallel Iron LLC v. NetApp Inc., Civil Action No. 12-769-RGA (D.Del., September 12, 2014), the Court granted the motion for attorneys’ fees of defendant NetApp Inc. after finding that plaintiff Parallel Iron LLC “did act in bad faith, vexatiously, and wantonly as it brought this suit without a good faith basis and then continued to litigate the case via a misleading and prejudicial litigation strategy.” Upon reviewing in camera all materials that Parallel Iron had gathered and created during its pre-suit investigation, the Court determined that Parallel Iron initiated the suit without a good faith belief that NetApp infringed the patents-in-suit. Id. at 11.

Interestingly, in the opinion, the Court initially denies NetApp’s motion for attorneys’ fees under 35 U.S.C. § 285 after finding that NetApp was not a “prevailing party” in the action as required by that statute. See id. at 4-8. A copy of the Memorandum Opinion is attached.

The take away from this opinion is that parties initiating patent infringement actions in the District of Delaware should take the time to be diligent and thorough in conducting their pre-suit investigations of patent infringement.  The accuser must be able to show by documentary evidence a good faith belief that the accused products actually infringe the patents-in-suit and should be able to specifically identify the accused infringing products in their initial disclosures required by the Default Standard for Discovery in the District.

 

Judge Fallon Strikes Plaintiff’s Opening Summary Judgment and Daubert Papers Due to Plaintiff’s Violation of Page Limitation on Briefs

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

By Memorandum Opinion entered by The Honorable Sherry R. Fallon in Monec Holdings AG v. Motorola Mobility, Inc., et al., Civil Action No. 11-798-LPS-SRF (D.Del., September 5, 2014), the Court granted the motion of defendants HTC Corporation and HTC America, Inc. (collectively, “HTC”) to strike the opening summary judgment and Daubert filings of plaintiff Monec Holding AG (“Monec”).

In support of their motion, HTC asserted that Monec improperly exceeded the page limits for its summary judgment briefing by including factual material, citations and legal analysis in the attached exhibits. Id. at 2. In response, Monec alleged that the exhibit in dispute, a witness Declaration, contained only facts and citations, as opposed to legal argument. Id. at 3.

Upon review, the Court found that the infringement portion of Monec’s opening brief contained no legal analysis and HTC had to refer to the exhibit in dispute in order to respond to Monec’s submissions. Id. Thus, the Court concluded that HTC was prejudiced by Monec’s improper reliance on the exhibit in dispute to convey its legal arguments, because HTC had to respond to the 272 page exhibit within the court’s page limitations on briefs. Id. Accordingly, the Court granted HTC’s motion to strike without prejudice, giving Monec the opportunity to file amended opening briefs and supporting documents within fourteen (14) days of the Court’s Order.

The take away for litigants from this Case is that the Court’s page limitations are real and need to be taken seriously, substantive legal arguments on infringement and other issues have to be made in the brief, and litigants need to be mindful that they are not attempting to use exhibits to the brief in an improper manner to attempt to circumvent applicable page limitations.

A copy of the Memorandum Opinion is attached.

 

Chief Judge Stark Denies Toshiba’s Motion for Summary Judgment of Non-Infringement of Patent-in-Suit

Posted in Patent Infringement

By Memorandum Order entered by The Honorable Leonard P. Stark in St. Clair Intellectual Property Consultants, Inc. v. Toshiba Corporation, et al., Civil Action No. 09-354-LPS (D.Del., August 27, 2014), the Court denied the Motion for Summary Judgment of Non-Infringement of U.S. Patent No. 5,630,163 of defendants’ Toshiba Corporation, Toshiba America Information Systems, Inc. and Toshiba America, Inc. (collectively, “Toshiba”).

Toshiba moved for summary judgment of non-infringement contending that its “accused products do not infringe the ‘130 patent because they are not sold with pluggable cards inserted into the systems.” Id. at 3. St. Clair countered with the opinion and deposition testimony of its expert who opined, among other things, that (1) it is possible for a system to infringe even if it does not have a card, as long as it is able to receive a card and (2) a person of ordinary skill in the art would understand that the ‘130 patent requires that a computer system have the ability to plug a card, but does not require that the system actually have the card. Id. at 4. The Court concluded that the record created a genuine dispute of material fact as to infringement of the ‘130 patent and, therefore, denied the motion for summary judgment.

A copy of the Memorandum Opinion is attached.

 

Chief Judge Stark Grants Defendant’s Motion to Transfer Patent Infringement Case to Southern District of Ohio

Posted in Intellectual Property, Patent Infringement

By Memorandum Order entered by The Honorable Leonard P. Stark in Nalco Co. v. AP Tech Group Inc., Civil Action No. 13-1063-LPS (D.Del., August 8, 2014), the Court granted Defendant AP Tech Group, Inc.’s motion to transfer the patent infringement case from the District of Delaware to the Southern District of Ohio pursuant to 28 U.S.C. § 1404(a).  In granting the motion to transfer, the Court found that defendant’s choice of forum, the relative convenience of the parties, the fact that plaintiff’s claims arise from products developed, marketed, and sold in the Southern District, and the fact that all of defendant’s books and records are kept in the Southern District all weighed in favor of transfer.  Id. at 1-3.  The Court also noted that plaintiff’s choice of forum was given less deference under the circumstances because Delaware is not plaintiff’s “home turf.”  Id.

For all of these reasons, the Court concluded that Defendant met its heavy burden of demonstrating that the case should be transferred to the Southern District of Ohio.  Id. at 3.  A copy of the Memorandum Order is attached.

Judge Robinson Grants Defendants’ Motion for Partial Summary Judgment of No Willfulness

Posted in Intellectual Property, Patent Infringement

By Memorandum Order entered by The Honorable Sue L. Robinson in Anesta AG, et al. v. Mylan Pharmaceuticals, Inc., et al., Civil Action No. 08-889-SLR (D.Del., August 14, 2014), the Court granted defendants’ motion for partial summary judgment of no willfulness with respect to their infringement of the patents-in-suit based upon defendants’ at risk launch of their generic versions of plaintiffs’ Amrix® products. The Court agreed with defendants that, “although their launch was at risk, it was not illegal when it took place and, absent a directive from the Federal Circuit to recall their generic products, defendants had no legal obligation to do so.” Id. at 4.

A copy of the Memorandum Order is attached.

 

Judge Sleet Grants Plaintiffs’ Motion to Dismiss Defendant’s Counterclaims of Invalidity

Posted in Intellectual Property, Patent Infringement

By Memorandum Opinion entered by The Honorable Gregory M. Sleet in EMC Corp., et al. v. Zerto, Inc., Civil Action No. 12-956-GMS (D.Del., July 31, 2014), the Court granted the motion of plaintiffs, EMC Corporation and EMC Israel Development Center, Ltd., to dismiss the counterclaims of defendant, Zerto, Inc., asserting invalidity of the five patents-in-suit.  In their motion to dismiss, plaintiffs asserted that defendant’s counterclaims of invalidity should be dismissed because they failed to satisfy the Twombly/Iqbal pleading standard.  Id. at 1.  In response, defendant argued that its invalidity counterclaims were pled with the degree of particularity required in Federal Rule of Civil Procedure Form 18, contained enough specificity to identify a plausible claim for relief, and put plaintiffs on notice of the invalidity allegations.  Id. at 2.

The Court was not persuaded by defendant’s arguments.  The Court explained that “the District of Delaware has not adopted local patent rules governing pleadings standards or service of factual contentions for invalidity counterclaims.”  Id. at 3.  In addition, “the Federal Circuit has explained that ‘Form 18 should be strictly construed as measuring only the sufficiency of allegations of direct infringement.’”  Id.  Thus, the Court recognized that the pleadings standards set forth in Twombly and Iqbal do apply to counterclaims of invalidity.  Id.  As a result, the Court concluded that defendant’s counterclaims of invalidity did not contain sufficient factual matter to satisfy the pleadings standards set forth in Twombly and IqbalId. at 4.

A copy of the Memorandum Opinion is attached.

Judge Andrews Grants Partial Summary Judgment After Finding Asserted Claim of Comcast’s Patent Is Not Patentable Subject Matter

Posted in Intellectual Property, Patent Infringement

By Memorandum Opinion entered by The Honorable Richard G. Andrews in Comcast IP Holdings I, LLC v. Sprint Communications Company L.P., Civil Action No. 12-205-RGA (D.Del., July 16, 2014), the Court granted defendant Sprint’s Motion for Partial Summary Judgment that the Asserted Claims of U.S. Patent No. 6,873,694 (“the ‘694 patent”) are Invalid Under 35 U.S.C. § 101. Specifically, the Court concluded that Claim 21, the only asserted claim of the ‘694 patent, is drawn to an abstract idea and its two steps describe the simple concept of determining if a decision is required. Id. at 4-6. The Court recognized that a decision is a “basic tool of scientific and technological work” and, thus, is a patent ineligible abstract idea. Id. at 7. After analyzing the additional limitations imposed by Claim 21, the Court also concluded that “the idea of a decision has not been sufficiently limited by the claim to prevent the claim from ‘cover[ing] the full abstract idea itself.’” Id. at 7.

A copy of the Memorandum Opinion is attached.