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Delaware Intellectual Property Litigation

Intellectual Property and Antitrust Litigation in Delaware

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.

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.