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Delaware Intellectual Property Litigation

Intellectual Property and Antitrust Litigation in Delaware

Judge Robinson Issues Claim Construction Ruling on Disputed Terms of Two Patents Concerning Measuring, Monitoring and Tracking Enterprise Communications

Posted in District of Delaware, Intellectual Property, Patent Infringement

By Memorandum Order entered by The Honorable Sue L. Robinson in YYZ, LLC, et al. v. Hewlett-Packard Company, Civil Action No. 13-136-SLR (D.Del., December 12, 2014) (consolidated), the Court issued its claim construction of the disputed terms of two patents, U.S. Patent Numbers 7,603,674 (“the ‘674 patent”) and 7,062,749 (“the’749 patent”), which concern measuring, monitoring and tracking enterprise communications and processes.

A copy of the Memorandum Order is attached.

 

Judge Andrews Issues Claim Construction Opinion on Remand Construing Term “Electrode” Consistent with the Court’s Original Construction Before Appeal

Posted in District of Delaware, Intellectual Property, Patent Infringement

By Memorandum Opinion entered by The Honorable Richard G. Andrews in Roche Diagnostics Operations, Inc., et al. v. Abbott Diabetes Care, Inc., et al., Civil Action No. 07-753-RGA (D.Del., December 5, 2014), the Court, on remand from the United States Court of Appeals for the Federal Circuit, construed the term “electrode” consistent with the Court’s original construction of that term before plaintiff’s appeal to the Federal Circuit of the denial of plaintiff’s motion for reconsideration and the entry of summary judgment of non-infringement based on the original “electrode” construction.

A copy of the Memorandum Opinion is attached.

 

Chief Judge Stark Allows Defendants to Amend Their Answer to Add Inequitable Conduct Before USPTO Defense

Posted in Intellectual Property, Patent Infringement

By Memorandum Order entered by The Honorable Leonard P. Stark in Graphics Properties Holdings, Inc. v. Google, Inc., C.A. No. 12-1394-LPS (D.Del., November 20, 2014) (consolidated), the Court granted the motion of defendants Google, Inc., Lenovo Holding Company, Inc. and Lenovo (United States) Inc. to amend their answer pursuant to Federal Rule of Civil Procedure 15(a) to add a defense alleging that the patent-in-suit, U.S. Patent No. 8,144,158 (“the ‘158 patent”), which is a continuation of United States Patent No. 6,650,327 (“the ‘327 patent”), is unenforceable due to plaintiff Graphic Properties’ inequitable conduct before the United States Patent and Trademark Office (“USPTO”). Specifically, defendants claimed that plaintiff and its attorneys withheld a Federal Circuit Order with intent to deceive the USPTO concerning the prior construction of the term “scan conversion” in the ‘327 patent. Id. at 2-3. Plaintiff contended the amendment of the answer would be futile because it did provide the USPTO with actual notice of the District Court Order during the patent prosecution. Id. at 3. The Court concluded that, regardless of whether the examiner was provided with the District Court’s Order, it was undisputed that the examiner was not given the subsequent Federal Circuit Order which contained statements not contained in the District Court’s Order. Id. at 3-4. Thus, the amendment was not futile and leave to amend was granted. Id. at 4-6.

A copy of the Memorandum Order is attached.

 

Judge Andrews Adopts Chief Magistrate Judge Thynge’s Recommended Claim Constructions After Overruling Parties’ Objections

Posted in Intellectual Property, Patent Infringement

By Memorandum Opinion entered by The Honorable Richard G. Andrews in Hand Held Products, Inc. v. Amazon.com, et al., Civil Action No. 12-768-RGA-MPT (D.Del., November 5, 2014), the Court overruled the objections of Plaintiff and Defendants to Chief Magistrate Judge Thynge’s June 24, 2014 Report and Recommendation Regarding Claim Construction.  The claim constructions in the Magistrate’s Report and Recommendation were adopted by the Court.

A copy of the Memorandum Opinion is attached.

After Bench Trial, Judge Sleet Concludes that None of the Asserted Claims of the Patents-in-Suit Are Invalid Due to Obviousness

Posted in Patent Infringement

By Memorandum Opinion entered by The Honorable Gregory M. Sleet in Pfizer Inc., et al. v. Mylan Pharmaceuticals Inc., C.A. No. 10-528-GMS (D.Del., October 22, 2014), the Court, following a four day bench trial and after having considered the entire record in the case and the applicable law, concluded that none of the asserted claims of the patents-in-suit, claims 5 and 21 of U.S. Patent Number 6,573,293 (“the ‘293 patent”) and claims 1 and 2 of U.S. Patent Number 7,125,905 (“the ‘905 patent”), are invalid due to obviousness.  Accordingly, the Court found in favor of Pfizer and against Mylan on the issue of obviousness.

A copy of the Memorandum Opinion is attached.

After Bench Trial, Judge Sleet Concludes that Hospira’s Proposed Product Does Not Infringe the Patent-in-Suit Asserted by Abbvie

Posted in Intellectual Property, Patent Infringement

By Memorandum Opinion entered by The Honorable Gregory M. Sleet in Abbvie Inc. v. Hospira, Inc., C.A. No. 11-648- GMS (D.Del., October 24, 2014), the Court, following a two day bench trial and after having considered the entire record in the case and the applicable law, concluded that (1) the asserted claims of the patent-in-suit, U.S. Patent Number 6,136,799 (“the ‘799 patent”) are not invalid due to obviousness; and (2) Hospira’s proposed product does not infringe the ‘799 patent.

A copy of the Memorandum Opinion is attached.

 

Judge Sleet Grants Nintendo’s Motion to Transfer Patent Infringement Action from Delaware to Washington

Posted in District of Delaware, Intellectual Property, Patent Infringement

By Memorandum Opinion entered by The Honorable Gregory M. Sleet in Ithaca Ventures k.s., et al. v. Nintendo of America Inc., et al., C.A. No. 13-824-GMS (D.Del., September 25, 2014), the Court granted Nintendo’s motion to transfer the patent infringement action to the Western District of Washington pursuant to 28 U.S.C. § 1404(a). In doing so, the Court found that plaintiff Ithaca’s forum choice was not entitled to maximum deference because, although Itahca Development was organized under Delaware law, its principal place of business being in Texas diminished its argument that Delaware was its “home turf.” See id. at 4. The Court also found significant the fact that Ithaca Development was only organized under Delaware law a few weeks before filing the patent infringement action, which suggested to the Court that Ithaca Development’s organization in Delaware was motivated significantly by the subject litigation. See id. Ultimately, the Court concluded that Nintendo met their burden of demonstrating that the interests of justice and convenience strongly favor transfer under the Jumara factors. See id. at 14.

A copy of the Memorandum Opinion is attached.

 

Judge Robinson Grants Defendants’ Motion to Dismiss Based on Lack of Personal Jurisdiction Over Japanese Parent Company in Patent Infringement Action

Posted in District of Delaware, Intellectual Property, Patent Infringement

By Memorandum Opinion entered by The Honorable Sue L. Robinson in Intellectual Ventures I LLC, et al. v. Ricoh Company, Ltd., et al., Civil Action No. 13-474-SLR (D.Del., September 12, 2014), the Court granted defendants’ motion to dismiss the complaint, pursuant to Federal Rule of Civil Procedure 12(b)(2), based on lack of personal jurisdiction over defendant Ricoh Company, Ltd. (“RCL”).

Plaintiffs asserted two bases for personal jurisdiction over RCL under Delaware’s long-arm statute: (1) general jurisdiction under section (c)(4) based on RCL’s systematic presence in Delaware as the head of a “global network;” and (2) “dual jurisdiction” under sections (c)(1) and (c)(4) based on RCL’s intentional injection of products into the “stream of commerce” using established business channels. See id. at 6. In light of the U.S. Supreme Court’s holding earlier this year in Daimler AG v. Bauman, 11-965, 2014 WL 113486, at *10 (January 14, 2014), the District Court found unavailing Plaintiff’s argument that general jurisdiction was appropriate based on RCL’s relationship with its wholly-owned subsidiaries. See id. at 7. The Court also found that there was no evidence in the record to support a finding of dual jurisdiction. See id. at 8. Because Plaintiffs did not establish personal jurisdiction over RCL under Delaware’s long-arm statute, the Court noted that it did not need to address whether the exertion of jurisdiction over RCL would satisfy the Due Process Clause. See id.

A copy of the Memorandum Opinion is attached.

The take away from this Opinion is that, when drafting Complaints where you have defendants that are entities that are not Delaware corporations, parties need to be mindful to be specific enough in their allegations of jurisdiction that they set forth and establish the appropriate bases for personal jurisdiction over the foreign entity under the Delaware long-arm statute and why the exercise of such jurisdiction comports with the Due Process Clause. Plaintiffs need to be prepared, if there is a jurisdictional challenge, to present sworn affidavits or other competent evidence to meet their burden of establishing with reasonable particularity that sufficient “minimum contacts” have occurred between the foreign defendant and Delaware to support personal jurisdiction in the District of Delaware.

 

Judge Andrews Grants Defendant NetApp’s Motion for Attorneys’ Fees in Patent Infringement Action Under the Court’s Inherent Powers

Posted in District of Delaware, Intellectual Property, Patent Infringement

By Memorandum Opinion entered by The Honorable Richard G. Andrews in Parallel Iron LLC v. NetApp Inc., Civil Action No. 12-769-RGA (D.Del., September 12, 2014), the Court granted the motion for attorneys’ fees of defendant NetApp Inc. after finding that plaintiff Parallel Iron LLC “did act in bad faith, vexatiously, and wantonly as it brought this suit without a good faith basis and then continued to litigate the case via a misleading and prejudicial litigation strategy.” Upon reviewing in camera all materials that Parallel Iron had gathered and created during its pre-suit investigation, the Court determined that Parallel Iron initiated the suit without a good faith belief that NetApp infringed the patents-in-suit. Id. at 11.

Interestingly, in the opinion, the Court initially denies NetApp’s motion for attorneys’ fees under 35 U.S.C. § 285 after finding that NetApp was not a “prevailing party” in the action as required by that statute. See id. at 4-8. A copy of the Memorandum Opinion is attached.

The take away from this opinion is that parties initiating patent infringement actions in the District of Delaware should take the time to be diligent and thorough in conducting their pre-suit investigations of patent infringement.  The accuser must be able to show by documentary evidence a good faith belief that the accused products actually infringe the patents-in-suit and should be able to specifically identify the accused infringing products in their initial disclosures required by the Default Standard for Discovery in the District.

 

Judge Fallon Strikes Plaintiff’s Opening Summary Judgment and Daubert Papers Due to Plaintiff’s Violation of Page Limitation on Briefs

Posted in Antitrust and Patent Misuse, Intellectual Property, Patent Actions, Patent Infringement

By Memorandum Opinion entered by The Honorable Sherry R. Fallon in Monec Holdings AG v. Motorola Mobility, Inc., et al., Civil Action No. 11-798-LPS-SRF (D.Del., September 5, 2014), the Court granted the motion of defendants HTC Corporation and HTC America, Inc. (collectively, “HTC”) to strike the opening summary judgment and Daubert filings of plaintiff Monec Holding AG (“Monec”).

In support of their motion, HTC asserted that Monec improperly exceeded the page limits for its summary judgment briefing by including factual material, citations and legal analysis in the attached exhibits. Id. at 2. In response, Monec alleged that the exhibit in dispute, a witness Declaration, contained only facts and citations, as opposed to legal argument. Id. at 3.

Upon review, the Court found that the infringement portion of Monec’s opening brief contained no legal analysis and HTC had to refer to the exhibit in dispute in order to respond to Monec’s submissions. Id. Thus, the Court concluded that HTC was prejudiced by Monec’s improper reliance on the exhibit in dispute to convey its legal arguments, because HTC had to respond to the 272 page exhibit within the court’s page limitations on briefs. Id. Accordingly, the Court granted HTC’s motion to strike without prejudice, giving Monec the opportunity to file amended opening briefs and supporting documents within fourteen (14) days of the Court’s Order.

The take away for litigants from this Case is that the Court’s page limitations are real and need to be taken seriously, substantive legal arguments on infringement and other issues have to be made in the brief, and litigants need to be mindful that they are not attempting to use exhibits to the brief in an improper manner to attempt to circumvent applicable page limitations.

A copy of the Memorandum Opinion is attached.