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Delaware Intellectual Property Litigation

Intellectual Property and Antitrust Litigation in Delaware

Chief Judge Stark Grants Plaintiffs’ Emergency Motion to Remand Action Involving Patent Dispute to Chancery Court

Posted in Intellectual Property, Patent Actions

By Memorandum Order entered by The Honorable Leonard P. Stark in InterDigital, Inc., et al. v. Wistron Corp., Civil Action No. 15-478-LPS (D.Del., June 18, 2015), the Court granted the emergency motion of Plaintiffs, InterDigital, Inc., InterDigital Technology Corporation, IPR Licensing, Inc., and InterDigital Patent Holding, Inc., to remand the action to the Delaware Chancery Court.

On June 5, 2015, Plaintiffs filed a verified complaint in the Delaware Chancery Court against defendant Wistron Corporation (“Wistron”), a Taiwanese corporation, seeking a temporary restraining order, preliminary injunction and permanent injunction to prevent Wistron from advancing suit filed in the Intellectual Property Court of Taiwan.  Thereafter, Wistron filed a Notice of Removal of the Chancery Court action to the District of Delaware.  Id. at 1.

Plaintiffs’ remand motion asserted that Plaintiffs and Defendants are parties to a Patent Licensing Agreement (“PLA”) which contains a forum selection clause whereby the parties “irrevocably consent to exclusive jurisdiction and venue of the state and federal courts in the State of Delaware” and such language constitutes a waiver of the right to remove to federal court if one party files suit in a Delaware state court.  Id. at 2.  The Court agreed with Plaintiffs that such language “at least arguably constitutes a contractual waiver of the parties’ right to remove should the other party to the PLA choose to file in Delaware state court.  Id.  Given that the Court must resolve all doubts in favor of remand in the context of removal, the Court granted Plaintiffs’ motion to remand the action to Delaware Chancery Court.  Id. at 2-3.

A copy of the Memorandum Order is attached.

The take away from the decision is that, in entering into licensing or other agreements containing forum selection clauses consenting to exclusive jurisdiction and venue of the state and federal courts of Delaware or another particular state, consider whether your client wants to maintain the right to remove an action filed in state court to federal court.  If so, you should make sure there is language included in the forum selection clause specifically maintaining the right of removal to federal court.

Chief Judge Stark Issues Claim Construction Ruling on Disputed Terms of Patent Entitled “Remote Order System” in Infringement Actions Against Several On-Line Travel Sites

Posted in Intellectual Property, Patent Infringement

By Memorandum Opinion entered by The Honorable Leonard P. Stark in Cronos Technologies, LLC v. Expedia, Inc., Civil Action No. 13-1538-LPS (D.Del., June 8, 2015) (consolidated), the Court issued its claim construction opinion on the disputed terms of U.S. Patent Number 5,664,110 (“the ‘110 Patent”) entitled “Remote Ordering System”, which issued on September 2, 1997.  The ‘110 Patent is also the patent-in-suit in the infringement actions pending against PriceLine.com (Civil Action No. 13-1541-LPS) and Travelocity.com (Civil Action No. 13-1544-LPS) as well.

A complete copy of the Memorandum Opinion is attached.

Judge Robinson Denies Defendants’ Motions to Dismiss Complaint Alleging Infringement of Methods Patent

Posted in Intellectual Property, Patent Infringement

By Memorandum Order entered by The Honorable Sue L. Robinson in Network Congestion Solutions, LLC v. AT&T Inc., et al., Civil Action No. 14-894-SLR (D.Del., June 4, 2015), the Court denied defendants’ motions to dismiss plaintiff’s complaint alleging infringement of U.S. Patent No. 6,826,620 (“the ‘620 patent”) after concluding that the adequate notice requirements under Twombly standard were met.

A copy of the Memorandum Order is attached.

Judge Robinson Grants Plaintiff’s Motion for New Trial on Infringement of Some Patents-in-Suit

Posted in Intellectual Property, Patent Infringement

By Memorandum Opinion entered by The Honorable Sue L. Robinson in Intellectual Ventures I, LLC, et al. v. Canon Inc., et al., Civil Action No. 11-792-SLR (D.Del., May 18, 2015), the Court granted plaintiff’s alternative motion for a new trial regarding infringement of U.S. Patent Numbers 6,121,960 (“the ‘960 patent”) and 5,754,348 (“the ‘348 patent”) after concluding that defense counsel in his closing argument improperly played the role of expert witness by inferring from factual testimony that the accused devices did not meet the claim limitations arguments.  The court found such argument to be contrary to a pre-trial agreement that defendant would not present any evidence of non-infringement, including evidence of a lack of a subjective intent to infringe, particularly given that the Court previously barred certain testimony from plaintiff’s witnesses on the topic during the trial.  Id. at 40-47.

A copy of the Memorandum Opinion is attached.

Judge Robinson Grants Plaintiffs’ Motion for Partial Summary Judgment of Invalidity Finding Patent Claim Indefinite

Posted in Intellectual Property, Patent Infringement

By Memorandum Order entered by The Honorable Sue L. Robinson in Cox Communications Inc., et al. v. Sprint Communications L.P., et al., Civil Action No. 12-487-SLR (D.Del., May 15, 2015), the Court granted plaintiffs’ for partial summary judgment upon concluding that the limitation “processing system” contained in the claims of the patents-in-suit is indefinite under 35 U.S.C. § 112.  In reaching its conclusion, the Court found that “the claim language and the specification do not provide structural limitations for the ‘processing system’ and do not inform those skilled in the art about the scope of the invention with reasonable certainty.”  Id. at 11.

A copy of the Memorandum Opinion is attached.

Chief Judge Stark Grants Plaintiffs’ Motion for Summary Judgment in Part as to No Invalidity of Patent-in-Suit

Posted in Intellectual Property, Patent Infringement

By Memorandum Opinion entered by The Honorable Leonard P. Stark in Fairchild Semiconductor Corp. v. Power Integrations, Inc., Civil Action No. 12-540-LPS (D.Del., May 4, 2015), the Court granted plaintiffs’ motion for summary judgment in part as to no invalidity of U.S. Patent Number 7,525,259 (“the ‘259 patent”) due to lack of enablement, lack of written description, or indefiniteness under 35 U.S.C. § 112.  The Court also granted in part and denied in part plaintiffs’ motion for summary judgment on other grounds and granted in part and denied in part as moot defendant’s motion for summary judgment on other grounds.

A copy of the Memorandum Opinion is attached.

Judge Robinson Denies Defendants’ Motion to Dismiss Antitrust Complaint

Posted in Antitrust and Patent Misuse, District of Delaware

By Memorandum Opinion entered by The Honorable Sue L. Robinson in Apotex, Inc., et al. v. Senju Pharmaceutical Co., Ltd., et al., Civil Action No. 12-196-SLR (D.Del., May 1, 2015), the Court denied defendants’ Rule 12(b)(6) motion to dismiss a complaint alleging antitrust violations by defendants under Section 2 of the Sherman Act.  In denying the motion, the Court concluded that plaintiffs alleged a plausible relevant market and offered enough explanation as to why the market should be limited to at least get pass the motion to dismiss stage.  Id. at 5.  The court recognized that “in the case at bar, as in most cases, proper market definition can be determined only after a factual inquiry into the commercial realities faced by consumers.”  Id.

A copy of the Memorandum Opinion is attached.

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.