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Delaware Intellectual Property Litigation

Intellectual Property and Antitrust Litigation in Delaware

Chief Judge Stark Denies Toshiba’s Motion for Summary Judgment of Non-Infringement of Patent-in-Suit

Posted in Patent Infringement

By Memorandum Order entered by The Honorable Leonard P. Stark in St. Clair Intellectual Property Consultants, Inc. v. Toshiba Corporation, et al., Civil Action No. 09-354-LPS (D.Del., August 27, 2014), the Court denied the Motion for Summary Judgment of Non-Infringement of U.S. Patent No. 5,630,163 of defendants’ Toshiba Corporation, Toshiba America Information Systems, Inc. and Toshiba America, Inc. (collectively, “Toshiba”).

Toshiba moved for summary judgment of non-infringement contending that its “accused products do not infringe the ‘130 patent because they are not sold with pluggable cards inserted into the systems.” Id. at 3. St. Clair countered with the opinion and deposition testimony of its expert who opined, among other things, that (1) it is possible for a system to infringe even if it does not have a card, as long as it is able to receive a card and (2) a person of ordinary skill in the art would understand that the ‘130 patent requires that a computer system have the ability to plug a card, but does not require that the system actually have the card. Id. at 4. The Court concluded that the record created a genuine dispute of material fact as to infringement of the ‘130 patent and, therefore, denied the motion for summary judgment.

A copy of the Memorandum Opinion is attached.

 

Chief Judge Stark Grants Defendant’s Motion to Transfer Patent Infringement Case to Southern District of Ohio

Posted in Intellectual Property, Patent Infringement

By Memorandum Order entered by The Honorable Leonard P. Stark in Nalco Co. v. AP Tech Group Inc., Civil Action No. 13-1063-LPS (D.Del., August 8, 2014), the Court granted Defendant AP Tech Group, Inc.’s motion to transfer the patent infringement case from the District of Delaware to the Southern District of Ohio pursuant to 28 U.S.C. § 1404(a).  In granting the motion to transfer, the Court found that defendant’s choice of forum, the relative convenience of the parties, the fact that plaintiff’s claims arise from products developed, marketed, and sold in the Southern District, and the fact that all of defendant’s books and records are kept in the Southern District all weighed in favor of transfer.  Id. at 1-3.  The Court also noted that plaintiff’s choice of forum was given less deference under the circumstances because Delaware is not plaintiff’s “home turf.”  Id.

For all of these reasons, the Court concluded that Defendant met its heavy burden of demonstrating that the case should be transferred to the Southern District of Ohio.  Id. at 3.  A copy of the Memorandum Order is attached.

Judge Robinson Grants Defendants’ Motion for Partial Summary Judgment of No Willfulness

Posted in Intellectual Property, Patent Infringement

By Memorandum Order entered by The Honorable Sue L. Robinson in Anesta AG, et al. v. Mylan Pharmaceuticals, Inc., et al., Civil Action No. 08-889-SLR (D.Del., August 14, 2014), the Court granted defendants’ motion for partial summary judgment of no willfulness with respect to their infringement of the patents-in-suit based upon defendants’ at risk launch of their generic versions of plaintiffs’ Amrix® products. The Court agreed with defendants that, “although their launch was at risk, it was not illegal when it took place and, absent a directive from the Federal Circuit to recall their generic products, defendants had no legal obligation to do so.” Id. at 4.

A copy of the Memorandum Order is attached.

 

Judge Sleet Grants Plaintiffs’ Motion to Dismiss Defendant’s Counterclaims of Invalidity

Posted in Intellectual Property, Patent Infringement

By Memorandum Opinion entered by The Honorable Gregory M. Sleet in EMC Corp., et al. v. Zerto, Inc., Civil Action No. 12-956-GMS (D.Del., July 31, 2014), the Court granted the motion of plaintiffs, EMC Corporation and EMC Israel Development Center, Ltd., to dismiss the counterclaims of defendant, Zerto, Inc., asserting invalidity of the five patents-in-suit.  In their motion to dismiss, plaintiffs asserted that defendant’s counterclaims of invalidity should be dismissed because they failed to satisfy the Twombly/Iqbal pleading standard.  Id. at 1.  In response, defendant argued that its invalidity counterclaims were pled with the degree of particularity required in Federal Rule of Civil Procedure Form 18, contained enough specificity to identify a plausible claim for relief, and put plaintiffs on notice of the invalidity allegations.  Id. at 2.

The Court was not persuaded by defendant’s arguments.  The Court explained that “the District of Delaware has not adopted local patent rules governing pleadings standards or service of factual contentions for invalidity counterclaims.”  Id. at 3.  In addition, “the Federal Circuit has explained that ‘Form 18 should be strictly construed as measuring only the sufficiency of allegations of direct infringement.’”  Id.  Thus, the Court recognized that the pleadings standards set forth in Twombly and Iqbal do apply to counterclaims of invalidity.  Id.  As a result, the Court concluded that defendant’s counterclaims of invalidity did not contain sufficient factual matter to satisfy the pleadings standards set forth in Twombly and IqbalId. at 4.

A copy of the Memorandum Opinion is attached.

Judge Andrews Grants Partial Summary Judgment After Finding Asserted Claim of Comcast’s Patent Is Not Patentable Subject Matter

Posted in Intellectual Property, Patent Infringement

By Memorandum Opinion entered by The Honorable Richard G. Andrews in Comcast IP Holdings I, LLC v. Sprint Communications Company L.P., Civil Action No. 12-205-RGA (D.Del., July 16, 2014), the Court granted defendant Sprint’s Motion for Partial Summary Judgment that the Asserted Claims of U.S. Patent No. 6,873,694 (“the ‘694 patent”) are Invalid Under 35 U.S.C. § 101. Specifically, the Court concluded that Claim 21, the only asserted claim of the ‘694 patent, is drawn to an abstract idea and its two steps describe the simple concept of determining if a decision is required. Id. at 4-6. The Court recognized that a decision is a “basic tool of scientific and technological work” and, thus, is a patent ineligible abstract idea. Id. at 7. After analyzing the additional limitations imposed by Claim 21, the Court also concluded that “the idea of a decision has not been sufficiently limited by the claim to prevent the claim from ‘cover[ing] the full abstract idea itself.’” Id. at 7.

A copy of the Memorandum Opinion is attached.

 

Judge Stark Denies Google’s Motion to Stay Patent Litigation Pending Patent Appeal

Posted in Intellectual Property, Patent Infringement

By Memorandum Order entered by The Honorable Leonard P. Stark in Walker Digital, LLC v. Google, Inc., Civil Action No. 11-318-LPS (D.Del., June 24, 2014), the Court denied defendant Google, Inc.’s (“Google”) motion to stay proceedings pending covered business method review by the Patent Trial and Appeal Board after weighing the pertinent factors and concluding that those factors disfavored granting the requested stay.

A copy of the Memorandum Order is attached.

 

Judge Stark Grants MACOM’s Preliminary Injunction to Enjoin Laird from Supplying Ford with GPS Modules that Likely Infringe MACOM’s ‘349 Patent

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

By Memorandum Order entered by The Honorable Leonard P. Stark in M/A- COM Technology Solutions Holdings, Inc. v. Laird Technologies, Inc., C.A. 14-181-LPS (D.Del., June 13, 2014), the Court granted Plaintiff M/A-Com Technology Solutions Holdings, Inc.’s (“MACOM”) Motion for Preliminary Injunction seeking to enjoin Defendant Laird Technologies, Inc. (“Laird”) from supplying Ford Motor Company (“Ford”) with GPS modules that MACOM contends infringe its patent, U.S. Patent No. 6,272,349 (“the ‘349 Patent”). In granting the preliminary injunction in this patent infringement action, the Court found that (1) MACOM is likely to succeed on the merits (meaning that MACOM demonstrated that it is likely to prove infringement of the ’349 patent and Laird did not raise a substantial question of patent validity); (2) MACOM met its burden to show that it will suffer irreparable harm in the absence of preliminary relief; (3) the balance of the equities tip in MACOM’s favor; and (4) the public interest favors granting the preliminary injunction. Id. at 2-16.

A complete copy of the Memorandum Order is attached.

 

Judge Stark Denies Defendant’s Motion for Reconsideration of Court’s Claim Construction Order

Posted in District of Delaware, Patent Infringement

By Memorandum Order entered by The Honorable Leonard P. Stark in Sunovion Pharmaceuticals, Inc. v. Actavis, Inc., et al., Civil Action No. 12-993-LPS (D.Del., June 3, 2014), the Court denied defendant Actavis, Inc.’s motion for reconsideration of the Court’s Markman Order concerning the construction of the term “levalbuterol” as “substantially optically pure levalbuterol.” Actavis argued that the Court made three errors in adopting its construction. The Court noted that reconsideration should be granted only sparingly, rejected Actavis’ arguments and concluded that defendant’s motion did not demonstrate any of the grounds on which the Court would grant reconsideration. Id. at 1-3.

A copy of the Memorandum Order is attached.

 

Judge Robinson Grants JP Morgan’s Motion for Summary Judgment of Invalidity of Patents-in-Suit

Posted in District of Delaware, Intellectual Property, Patent Infringement

By Memorandum Opinion entered by The Honorable Sue L. Robinson in Pi-Net International Inc. v. JPMorgan Chase & Co., Civil Action No. 12-282 SLR (D.Del., May 14, 2014), the Court, among other things, granted defendant JP Morgan’s motion for summary judgment of invalidity of the patents-in-suit, U.S. Patent Nos. 5,987,500 (“the ‘500 patent”), 8,037,158 (“the ‘158 patent”), and 8,108,492 (“the ‘492 patent”), after finding several of the asserted claims invalid for indefiniteness.  For example, with respect to the ‘492 patent, the Court found the limitations “value-added network (‘VAN’) switch,” “switching,” “service network,” and “computer system executing the back-end transactional application for processing the transaction request in real-time” were indefinite.  Id. at 11.  Thus, the Court concluded that independent claims 1 and 10 of the ‘492 patent, which each contained those limitations, were invalid for indefiniteness.  Id.  The Court made similar findings with respect to the ‘500 patent and the ‘158 patent.  See id. at 12-24.

A copy of the Memorandum Opinion is attached.

Magistrate Judge Burke Issues Report and Recommendation on Claim Construction Ruling on Disputed Terms in Five Patents-in-Suit in Action Against Yahoo!

Posted in Intellectual Property, Patent Infringement

In Pragmatus AV, LLC v. Yahoo! Inc., Civil Action No. 11-902-LPS-CJB (May 15, 2014), the Honorable Christopher J. Burke issued his Report and Recommendation on the construction of 16 dsiputed terms of five patents, U.S. Patent Numbers 5,689,641, 6,237,025, 6,351,762, 5,854,893, 7,185,054, and 5,896,500, all of which which relate to the field of distributed multimedia collaboration.

A complete copy of the Report and Recommendation is attached.