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Delaware Intellectual Property Litigation

Intellectual Property and Antitrust Litigation in Delaware

Judge Andrews Issues Markman Opinion in Infringement Action Construing Seven Disputed Terms in Patents-in-Suit

Posted in District of Delaware, Intellectual Property, Patent Infringement

By Memorandum Opinion entered by The Honorable Richard G. Andrews in Celebrate International, LLC  v. Leapfrog Enterprises, et al., Civil Action No. 14-261-RGA (D.Del., August 28, 2015), the Court issued its Markman opinion construing seven (7) disputed terms in U.S. Patent Nos. 6,256,398 (“the ‘398 patent”) and 6,819,776 (“the ‘776 patent”).

A copy of the Memorandum Opinion is attached.

Judge Sleet Grants Defendant’s Motion Invalidating Patent-in-Suit After Finding Patent-in-Suit Claims Patent-Ineligible Subject Matter

Posted in Intellectual Property, Patent Infringement

By Memorandum Opinion entered by The Honorable Gregory M. Sleet in Inventor Holdings, LLC v. Bed Bath & Beyond Inc., Civil Action No. 14-448-GMS (D.Del., August 21, 2015), the Court granted Defendant Bed Bath & Beyond Inc.’s motion for judgment on the pleadings after finding that the patent-in-suit, U.S. Patent No. 5,862,582 (“the ‘582 patent”), is invalid under 35 U.S.C. § 101 because it claims a patent-ineligible subject matter (an abstract idea) and does not contain an “inventive concept” to meet the framework set forth in Alice Corp. v. CLS Bank Int’l, 134 S.Ct. 2347, 2355 (2014).  In doing so, the Court found that “the ‘582 patent – and all of its seventy-three claims – are invalid under § 101, as they claim the abstract idea of paying for remote orders at local retailers, without reciting meaningful limitations to render the idea patent eligible.”  Id. at *6.

A copy of the Memorandum Opinion is attached.

Judge Andrews Grants Defendant’s Motion to Dismiss Hatch-Waxman Patent Infringement Action Based on Lack of Personal Jurisdiction

Posted in Intellectual Property, Patent Actions, Patent Infringement

By Memorandum Opinion entered by The Honorable Richard G. Andrews in Novartis Pharmaceuticals Corp., et al. v. Zydus Noveltech Inc., Civil Action No. 14-1104-RGA (D.Del., August 7, 2015), the Court granted Defendant Zydus Noveltech Inc.’s motion to dismiss based on lack of personal jurisdiction.

Plaintiffs did not dispute the lack of general jurisdiction over Defendant in Delaware.  Id. at 9.  However, Plaintiffs argued that Delaware had specific jurisdiction over Defendant for two reasons:  (1) Defendant directed its notice of ANDA filing to Novartis Pharmaceuticals, a Delaware corporation; and (2) Defendant would eventually, if authorized by the FDA, sells its generic product in Delaware.  Id. at 10.  Defendant disputed jurisdiction in Delaware arguing, among other things, that sending a notice letter to Novartis Pharmaceuticals, a Delaware corporation, at its offices in New Jersey was not sufficient to establish jurisdiction over it in Delaware.  Id.

The Court agreed that Defendant’s activities had not been purposefully directed at Delaware such that the Court could exercise specific jurisdiction over Defendant.  Id. at 11.  The Court reasoned that Defendant does not conduct business in Delaware, has not registered to do business in Delaware, does not have an agent to accept process in Delaware, has not previously litigated in Delaware at all, has no property, staff or offices in Delaware, and no work related to preparing the ANDA or product was conducted in Delaware.  Id. at 11-12.  The Court noted that, although Defendant probably anticipated being sued in Delaware, Defendant’s anticipation by itself was not enough for specific jurisdiction.  Id.  The Court also noted that “[s]pecific jurisdiction cannot be exercised merely because an ANDA notice letter was sent to a Delaware corporation, in another state, because to do so would offend traditional notions of fair play and substantial justice.”  Id. at 12.

A copy of the Memorandum Opinion is attached.

The takeaway from this case is that, in order for personal jurisdiction in the District of Delaware to exist over a non-resident defendant in the ANDA context, there must be more evidence of minimum contacts with Delaware than simply the filing by the non-resident defendant of an ANDA directed to a Delaware corporation.  At the very least, the non-resident defendant must have actually sent the notice of the ANDA filing to the Delaware corporation in Delaware (as opposed to some out of state location), conduct some business in Delaware, be registered to do business in Delaware, and/or have some other minimum contacts with Delaware that do not offend traditional notions of fair play and substantial justice.

Judge Robinson Strikes Unnecessary and Scandalous Material about Patent Inventor from Defendant’s Answer to Complaint Alleging Patent Infringement

Posted in Intellectual Property, Patent Infringement

By Memorandum Opinion entered by The Honorable Sue L. Robinson in Vite Technologies, LLC v. Smith & Nephew, Inc., Civil Action No. 14-1507-SLR (D.Del., July 23, 2015), the Court granted Plaintiff’s Motion to Strike a number of the paragraphs of the affirmative defenses and counterclaims contained in Defendant’s Answer that referred to a disciplinary action taken by the Medical Board of California against the inventor of the patent-in-suit concerning the billing practices in her physician practice more than a decade after the issuance of the patent-in-suit.  The Court found the challenged material to be both unnecessary and scandalous.  Id. at 3.  Specifically, the Court found “defendant’s use of the Board Decision – which issued more than a decade after the issuance of the ‘892 patent – to be an intentional effort to cast the inventor in a derogatory light at the outset of the case, an effort that adds nothing of value to the allegations of the inventor’s knowledge during the prosecution of the ‘892 patent.”  The Court noted that it refused to allow such a tactic to be the “bellweather of [the] litigation.”  Id. at 4.

A copy of the Memorandum Opinion is attached.

Judge Sleet Applies Judicial Estoppel in Denying Defendants’ Motion to Transfer Venue of Patent Infringement Action to Northern District of Georgia

Posted in Intellectual Property, Patent Infringement

By Memorandum Opinion entered by The Honorable Gregory M. Sleet in AT&T Intellectual Property I, L.P. v. Cox Communications, Inc., et al., Civil Action No. 14-1106-GMS (D.Del., July 9, 2015), the Court denied the motion to transfer of defendants after finding that defendant parent company had made prior inconsistent representations to the Court about the principal places of business for its regional entities in prior actions before the Court where they were the parties seeking to transfer venue to the District of Delaware.  The Court found that defendants were “playing fast and loose with the court” and that such conducted constituted sufficient bad faith to justify application of judicial estoppel.  Id. at 3.  The Court found that denying defendants’ pending motion was a narrowly tailored remedy to address the harm.  Id.

The Court went on to explain that, even if it did not apply judicial estoppel, it would reach the same result and deny defendants’ motion to transfer venue because the Court did not find credible the affidavit of defendants’ in-house intellectual property counsel stating that the principal place of business of all defendants was at the parent company’s headquarters in Atlanta, given the inconsistent representations made to the Court about the principal places of business for the same regional entities in prior actions.  Accordingly, the Court denied defendants’ motion.

A copy of the Memorandum Order is attached.

The take away from the decision is that parties should be careful about taking contrary positions and should avoid making what could be found to be inconsistent representations to the Court, unless there is a sound and justifiable reason to explain the change in position.

Judge Andrews Grants Defendants’ Motion and Declares Dismissed Patent Infringement Case “Exceptional”

Posted in Intellectual Property, Patent Infringement

By Memorandum Opinion entered by The Honorable Richard G. Andrews in Vehicle Operation Technologies LLC v. Ford Motor Company, Civil Action No. 13-539-RGA (D.Del., July 1, 2015), the Court granted Defendants’ Motion to Declare The Cases Exceptional Pursuant to 35 U.S.C. § 285.  In granting Defendants’ Motion, the Court, among other things, rejected Plaintiff’s argument that it would be inequitable and improper to assess fees against a represented party where the underlying Rule 11 violation was premised on a legal argument.  Id. at 5.  The Court noted that Plaintiff was unable to cite any cases supporting its proposition, the Court had previously ruled that any objectively reasonable pre-suit investigation would have revealed that the entire action was meritless; and, thus, the entire litigation was unreasonable.  Id.

The Court further reasoned that Octane Fitness, 134 S.Ct. at 1756 n.6, previously explained that “[o]ne of the factors to consider in deciding whether a case is exceptional is ‘objective unreasonableness (both in the factual and legal components of the case).’”  Id. at 6.  Thus, the Court found that “an objectively unreasonable legal argument is an appropriate consideration in declaring a case exceptional, even if the party is represented.”  Id.

A copy of the Memorandum Opinion is attached.

The take away from the decision is that an objectively unreasonable legal argument can be the basis for the Court’s declaration of a patent infringement action as “exceptional” under 35 U.S.C. § 285.

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.