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Delaware Intellectual Property Litigation

Intellectual Property and Antitrust Litigation in Delaware

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.

Chief Judge Stark Issues Markman Opinion in Infringement Action Construing Six (6) Disputed Terms in Patent-in-Suit

Posted in Intellectual Property, Patent Infringement

By Memorandum Opinion entered by The Honorable Leonard P. Stark in TQ Beta LLC v. Dish Network Corp., Civil Action No. 14-848-LPS-CJB (D.Del., January 28, 2016), the Court rendered its Markman opinion construing six (6) disputed terms in U.S. Patent No. 7,203,456 (“the ‘456 patent”).  The ‘456 patent relates to technology for streaming content from a home receiver to a remote media player via a world-wide network.

A copy of the Memorandum Opinion is attached.

Chief Judge Stark Issues Markman Opinion in Infringement Action Construing Twenty (20) Disputed Terms in Patents-in-Suit

Posted in Intellectual Property, Patent Infringement

By Memorandum Opinion entered by The Honorable Leonard P. Stark in Yodlee, Inc. v. Plaid Technologies, Inc., Civil Action No. 14-1445-LPS (D.Del., January 15, 2016), the Court rendered its Markman opinion construing twenty (20) disputed terms in U.S. Patent Nos. 6,199,077 (“the ‘077 patent”), 6,317,783 (“the ‘783 patent”), 6,510,451 (“the ‘451 patent”), 7,263,548 (“the ‘548 patent”), 7,424,520 (“the ‘520 patent”), 7,752,535 (“the ’535 patent”), and 8,266,515 (“the ‘515 patent”).

A copy of the Memorandum Opinion is attached.

Judge Sleet Issues Markman Opinion in Infringement Action Construing Disputed Term in Four Patents-in-Suit

Posted in Intellectual Property, Patent Infringement

By Order entered by The Honorable Gregory M. Sleet in Tris Pharma v. Actavis Laboratories FL, Inc., et al., Civil Action No. 14-1309-GMS (D.Del., January 8, 2016), the Court rendered its Markman opinion construing the disputed term “single mean average plasma concentration peak” in U.S. Patent Nos. 8,465,765 (“the ‘765 patent”), 8,563,033 (“the ‘033 patent”), 8,778,390 (“the ‘390 patent”), and 8,956,649 (“the ‘649 patent”) to have its plain and ordinary meaning.  In reaching its claim construction, the Court rejected the proposed construction submitted by defendant Actavis and partially rejected the proposed construction submitted by plaintiff. Id. at 1.  The Court concluded that neither party’s proposed construction would add needed clarity to the scope of the claim. Id.

A copy of the Order is attached.

Judge Andrews Grants Alleged Infringing Defendants’ Motion for Summary Judgment Related to Damages

Posted in Intellectual Property, Patent Infringement

By Memorandum Opinion entered by The Honorable Richard G. Andrews in M2M Solutions LLC v. Motorola Solutions Inc., et al., Civil Action No. 12-33-RGA (D.Del., January 6, 2016), the Court granted the motion for summary judgment of Defendants Telit Communications PLC and Telit Wireless Solutions Inc. related to damages after concluding that Defendants were entitled to (1) judgement as a matter of law of no willful infringement, (2) summary judgment of no infringement by products made and shipped outside of the United States, and (3) summary judgment of non-infringement by Defendant Telit Communications PLC.

With respect to the judgment as a matter of law of no willful infringement, the Court noted that, in order to show willful infringement, a patentee must meet the two-part test set forth by the Federal Circuit in In re Seagate Tech., LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007) (en banc). Id. at 33.  The first prong – the objective prong – ‘requires a patentee ‘to show by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent.’” Id. The “objective prong of Seagate tends not to be met where an accused infringer relies on a reasonable defense to a charge of infringement.” Id. If the first prong is met, the second prong – the subjective prong – requires the patentee to demonstrate that the objectively-defined risk (determined by the record developed in the infringement proceeding) was either known or so obvious that it should have been known to the infringer. Id. at 34.  “If a court finds for the alleged infringer with regard to the first prong, it cannot send the question of willfulness to the jury, since proving the objective prong is a predicate to consideration of the subjective prong.” Id.

In the instant action, the Court found that Plaintiff failed to make the necessary and clear showing to meet the first prong because Plaintiff presented no evidence of pre-suit knowledge or conduct tending to establish objective recklessness. Id. at 35.  Accordingly, Defendants were entitled to judgment as a matter of law of no willful infringement.

A copy of the Memorandum Opinion is attached.

Chief Judge Stark Dismisses Parties’ Implied License Claims and Defenses Based on Lack of Subject Matter Jurisdiction

Posted in Intellectual Property, Patent Actions

By Memorandum Order entered by The Honorable Leonard P. Stark in S3 Graphics Co., Ltd. v. ATI Technologies ULC, et al., Civil Action No. 11-1298-LPS (D.Del., December 11, 2015), the Court dismissed without prejudice the parties’ declaratory judgment claims and affirmative defenses relating to the existence of an implied license. The Court concluded that it lacked subject matter jurisdiction over the parties’ implied license claims and defenses because an implied license is an affirmative defense to a claim of patent infringement and the parties agreed that the case does not involve any allegations of patent infringement. Id. at 3. Thus, there was no case or controversy for declaratory judgment purposes and dismissal of the implied license claims for lack of subject matter was warranted. Id.

A copy of the Memorandum Order is attached.

Chief Judge Stark Denies Defendants’ Motion to Stay in Patent Action

Posted in District of Delaware, Patent Infringement

By Memorandum Order entered by The Honorable Leonard P. Stark in Greatbatch Ltd. v. AVX Corp., et al., Civil Action No. 13-723-LPS (D.Del., December 10, 2015), the Court denied the motion to stay of Defendants AVX Corporation and AVX Filters Corporation pending (1) appeal of a final written decision by the Patent Trial and Appeal Board (“PTAB”) in an inter partes review (“IPR”) proceeding related to U.S. Patent No. 5,905,627 (“the ‘627 patent”) and (2) resolution of proceedings related to an application for reissue of the ‘627 patent. After evaluating and weighing the three factors the Court typically considers when deciding a motion to stay, the Court found that those factors did not favor granting the motion to stay.

A copy of the Memorandum Order is attached.

Chief Judge Stark Issues Markman Opinion in Infringement Action Construing Ten Disputed Terms in Patents-in-Suit

Posted in District of Delaware, Patent Infringement

By Memorandum Opinion entered by The Honorable Leonard P. Stark in Masimo Corp. v. Philips Electronics North America Corp., et al., Civil Action No. 09-80-LPS (D.Del., December 1, 2015) (consolidated), the Court rendered its Markman Opinion construing ten (10) disputed terms in U.S. Patent Nos. 6,157,850 (“the ‘850 patent”), 7,509,154 (“the ‘154 patent”), 8,019,400 (“the ‘400 patent”), and 5,337,745 (“the ‘745 patent”). The patents disclose methods and devices for measuring the concentration of oxygen in blood. The Memorandum Opinion adopts in part the recommendations contained in Chief Magistrate Judge Thynge’s Report and Recommendation.

A copy of the Memorandum Opinion is attached.

Judge Robinson Grants AstraZeneca’s Motion for Preliminary Injunction Against Generic Drug Manufacturer in Trademark Infringement Action

Posted in District of Delaware, Intellectual Property

By Memorandum Opinion and Order entered by The Honorable Sue L. Robinson in AstraZeneca AB, et al. v. Camber Pharmaceuticals, Inc., Civil Action No. 15-927-SLR (D.Del., November 19, 2015), the Court granted the AstraZeneca plaintiffs’ motion for a preliminary injunction against defendant Camber Pharmaceuticals thereby enjoining defendant from selling its generic esomeprazole product (a purple-colored generic version of Nexium®), subject to the narrow exception set forth in paragraph 3 of the Court’s Order.

Weighing all of the factors discussed in the preliminary injunctive relief analysis in the “totality of the circumstances” as set forth in Kos. Pharms., Inc. v. Andrx Corp., 369 F.3d 700, 711 (3d Cir. 2004), the Court concluded that AstraZeneca had carried its burden to prove that it would likely succeed on the merits of the case pursuant to the Lapp factors analysis, that it would likely suffer “irreparable harm” if the requested relief was not granted, and that the balance of hardships and the public interest weigh in its favor.  Id. at 5-14.

Copies of the Memorandum Opinion and Order are attached.

Greg B. Williams Named a 2015 Top Lawyer by Delaware Today

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

Gregory B. Williams, a partner in the Wilmington, DE and Philadelphia, PA offices of Fox Rothschild, has been named to Delaware Today’s Top Lawyer List for 2015 for Civil Litigation.  Greg, an experienced litigator and trial attorney with more than 20 years of experience, has a diverse practice focused on commercial, intellectual property and other business litigation for a wide range of clients, including manufacturers, technology companies, financial institutions, retailers, government entities, educational institutions, and faith-based organizations.  Greg, the former office managing partner of Fox Rothschild’s Wilmington office and the first African-American to serve on the firm’s Executive Committee in the firm’s more than 100 years history is also a former President of the Delaware State Bar Association and a former President of the Barristers’ Association of Philadelphia.