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Delaware Intellectual Property Litigation

Intellectual Property and Antitrust Litigation in Delaware

Magistrate Judge Burke Grants Defendants’ Motion to Stay Patent Infringement Action Pending Decision on Defendants’ Motion to Dismiss

Posted in Intellectual Property, Patent Infringement

By Memorandum Order entered by The Honorable Christopher J. Burke in Kaavo Inc. v. Cognizant Technology Solutions Corp., Civil Action No. 14-1192-LPS-CJB (D.Del., April 9, 2015) (consolidated), the Court granted Defendants’ motion to stay the proceedings in the patent infringement action pending resolution of Defendants’ motions to dismiss which assert that the patent-in-suit, United States Patent No. 8,271,974 (“the ‘974 patent”), is not directed to a patent-eligible subject matter under 35 U.S.C. § 101.  In weighing the three applicable factors for evaluating a motion to stay, the Court found that simplification of the issues weighed slightly in favor of the stay, the status of the litigation (which is in its very beginning stages) weighed strongly in favor of the stay, and the undue prejudice factor weighed against the stay.  Id. at 2-11.  On balance, the Court concluded that the possibility of simplifying the issues of the case at a very early stage of the litigation was compelling enough to grant the stay under the circumstances.  Id. at 11.

A copy of the Memorandum Order is attached.

Judge Robinson Grants Defendants’ Motion for Summary Judgment of Non-Infringement of Patent Due to Collateral Estoppel

Posted in Intellectual Property, Patent Infringement

By Memorandum Opinion entered by The Honorable Sue L. Robinson in Apeldyn Corp. v. Sony Corp., et al., Civil Action No. 11-440-SLR (D.Del., April 2, 2015), the Court granted Defendants’ Motion for Summary Judgment of Non-Infringement due to collateral estoppel.  In doing so, the Court found that (1) the parties did not dispute that the same patent, the same claim and the same accused products at issue in the instant case were at issue in Civil Action 08-568; (2) the same issue before the Court in the instant case was actually litigated before in Civil Action 08-568, and (3) Plaintiff had a full and fair opportunity to litigate the issue in Civil Action 08-658.  See id. at 11-18.

A copy of the Memorandum Opinion is attached.

Judge Andrews Grants Amazon’s Motion to Dismiss After Finding Patent-in-Suit Invalid After Applying Alice Framework

Posted in Intellectual Property, Patent Infringement

By Memorandum Opinion entered by The Honorable Richard G. Andrews in Tuxis Technologies, LLC v. Amazon.com, Inc., Civil Action No. 13-1771-RGA (D.Del., March 25, 2015), the Court granted Defendant Amazon’s Motion to Dismiss the patent infringement action for failure to state a claim after finding all claims of the patent-in-suit, U.S. Patent Number 6,055,513 (“the ‘513 patent”), invalid because they are drawn to a patent-ineligible subject matter.  Applying the two-step framework outlined in the U.S. Supreme Court’s decision in Alice Corp. v. CLS Bank International, 134 S.Ct. 2347 (2014), the Court found that (1) the claims of the ‘513 patent are directed to the abstract idea of “upselling,” which is a longstanding commercial practice; and (2) while limitations narrow the scope of the claims, the patent does not contain an “inventive concept.”  Id. at 4-9.

A copy of the Memorandum Opinion is attached.

Judge Sleet Adopts Magistrate Judge Fallon’s Report and Recommendation to Grant Defendants’ Motion for Summary Judgment Finding Patents-in-Suit Invalid

Posted in District of Delaware, Intellectual Property, Patent Infringement

By Memorandum Opinion entered by The Honorable Gregory M. Sleet in Tenon & Groove, LLC, et al. v. Plusgrade S.E.C., et al., Civil Action No. 12-1118-GMS-SRF (D.Del., March 11, 2015), the Court overruled the objections filed by plaintiffs and adopted the Report and Recommendation of Magistrate Judge Sherry Fallon to find the patents-in-suit invalid under 35 U.S.C. § 101 and to grant defendants’ motion for summary judgment.  Significantly, in adopting Magistrate Judge Fallon’s Report and Recommendation, the Court agreed with Magistrate Judge Fallon’s finding that the patents-in-suit, U.S. Patent Nos. 7,418,409 (“the ‘409 Patent”) and 8,145,536 (“the ‘536 Patent”), are directed to patent-ineligible abstract ideas and fail the two-prong approach outlined in Alice Corp. v. CLS Bank International, 134 S.Ct. 2347 (2014), and other § 101 decisions.  Id. at 2-9.

During its analysis, the Court noted that the Federal Circuit, in Ultramercial Inc. v. Hulu, LLC, 772 F.3d 709, 714-715 (Fed. Cir. 2014), had already rejected plaintiff’s position that “abstract ideas remain patent-eligible under § 101 as long as they are new ideas, not previously well known, and not routine activity.”  Id. at 6.  The Court also agreed that the patents-in-suit failed to claim an “inventive concept” that renders the claims patent eligible.  Id. at 7.

A copy of the Memorandum Opinion is attached.

The takeaway from this case is that a patent needs to recite more than generic computer implementation of an abstract idea to satisfy the two-prong approach of Alice Corp.  There must be some “inventive concept” claimed in the patent that amounts to significantly more than the abstract idea itself to transform a patent-ineligible abstract idea into a patent-eligible invention.

 

Judge Andrews Issues Markman Opinion in InterDigital Action Construing Four Disputed Terms in Patents-in-Suit

Posted in Intellectual Property, Patent Infringement

By Memorandum Opinion entered by The Honorable Richard G. Andrews in InterDigital Communications, Inc., et al. v. ZTE Corp., et al., Civil Action No. 13-00009-RGA (D.Del., March 6, 2015) (consolidated), the Court rendered its Markman Opinion construing two (2) disputed terms in U.S. Patent No. 8,380,244 (the ‘244 patent”) and two (2) disputed terms in U.S. Patent No. 7,941,151 (“the ‘151 patent”).

A copy of the Memorandum Opinion is attached.

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.