Header graphic for print

Delaware Intellectual Property Litigation

Intellectual Property and Antitrust Litigation in Delaware

District of Delaware Enters Amended Local Civil Rules Effective August 1, 2016

Posted in Antitrust and Patent Misuse, District of Delaware, Intellectual Property, Patents

Through Order entered by Chief Judge Leonard P. Stark and pursuant to the authority vested in the Court by Rule 83 of the Federal Rules of Civil Procedure, the United States District Court for the District of Delaware amended its Local Rules of Civil Practice and Procedure. The revised Local Rules become effective on August 1, 2016.

Copies of the Revised Local Rules of Civil Practice and Procedure of the United States District Court for the District of Delaware and the implementing Order are attached.

Chief Judge Stark Grants Monetary and Other Sanctions against Defendant for Spoliation of ESI in Antitrust Action

Posted in Antitrust and Patent Misuse, Intellectual Property

By Memorandum Opinion entered by The Honorable Leonard P. Stark in GN Netcom, Inc. v. Plantronics, Inc., Civil Action No. 12-1318-LPS (D.Del., July 12, 2016) (redacted), the Court granted in part Plaintiff’s Motion for Sanctions arising from the deletion of emails by a senior executive of Defendant who was responsible for all domestic sales functions and ultimately responsible for the execution and implementation of the Plantronics Only Distributor (“POD”) program and agreements which are the focus of the claims asserted in the antitrust action.  The record contained evidence that, after the filing of the lawsuit and despite Defendant promptly issuing a litigation hold to relevant employees upon receiving Plaintiff’s demand letter, updating the litigation hold after the lawsuit was filed, providing training sessions and sending quarterly reminders to ensure compliance, the senior executive of Defendant deleted certain emails that should have been preserved in the anticipation or conduct of litigation, instructed others in the company to delete certain emails, and Defendant otherwise engaged in spoliation of electronically stored information (“ESI”). Id. at * 1-18.  The Court found that (1) Defendant, due to its senior executive’s deletion of emails and his instructing others to delete certain emails, failed to take reasonable steps to preserve ESI which cannot be restored or replaced; (2) Defendant did so in bad faith with the intent to deprive Plaintiff from using the information contained in the emails; and (3) Plaintiff is prejudiced by the loss of the emails. Id. at *18-26.

The Court next evaluated the appropriate sanctions to impose and decided to impose against Defendant the following: (1) monetary sanctions in the form of the reasonable fees and costs incurred by Plaintiff in connection with the spoliation disputes; (2) punitive sanctions in the amount of $3 million dollars; (3) possible evidentiary sanctions during trial, if requested in the future by Plaintiff and found by the Court to be warranted; and (4) sanction instructions to the jury that it “may” – as opposed to that it “must” – draw an adverse inference that emails destroyed by Defendant would have been favorable to Plaintiff’s case and/or unfavorable to Defendant’s defense. Id. at *26-30.

A copy of the redacted public version of the Opinion is attached.

Of particular note is the fact that, in rendering its ruling in the Opinion, the Court applied Federal Rule of Civil Procedure 37(e) as revised by the December 1, 2015 amendment.

Judge Andrews Denies Defendants’ Motion to Dismiss After Concluding Patent Does Claim Patent-Eligible Subject Matter Under Mayo/Alice Analysis

Posted in Intellectual Property, Patent Infringement

By Memorandum Opinion entered by The Honorable Richard G. Andrews in Idexx Laboratories, Inc. v. Charles River Laboratories, Inc., Civil Action No. 15-668-RGA (D.Del., July 1, 2016), the Court denied Defendants’ motion to dismiss for failure to state a claim after concluding that the representative claim, claim 1 of U.S. Patent No. 8,927,298 (“the ‘298 patent”), includes the “inventive concept” of using DBS technology to monitor the health of rodent populations by analyzing blood for biomarkers of infectious disease.  The Court noted that “[t]he advances over the prior art are clear.  The invention permits one to monitor the health of rodent populations without euthanizing animals, waiting for blood to clot in a centrifuge, or shipping blood serum overnight in a refrigerated container.” Id. at *12.  Thus, the Court concluded that “[t]his inventive concept is sufficient to ‘transform the abstract idea . . . into a patent-eligible application of that idea.’” Id.

 A copy of the Memorandum Opinion is attached.

The general take away is that, under the Mayo/Alice analysis, the fact that a patent claims are drawn to a patent-ineligible concept such as an abstract idea does not end the inquiry.  One must then ask whether the claims provide an inventive concept.  An inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces.

Judge Robinson Denies Plaintiff’s Motion for Preliminary Injunction in Action Alleging Misappropriation of Trade Secrets and Other Claims

Posted in Intellectual Property, Patent Infringement

By Memorandum Order entered by The Honorable Sue L. Robinson in Adtile Technologies, Inc. v. Perion Network Ltd., et al., Civil Action No. 15-1193-SLR (D.Del., June 23, 2016), the Court denied plaintiff Adtile Technologies, Inc.’s motion for preliminary injunction after concluding that Adtile had not shown likelihood of success on the merits of the claims asserted:  Delaware statutory misappropriation of trade secrets, common law misappropriation of confidential information, copyright infringement, and Lanham Act false designation of origin and unfair competition.  In reaching its conclusion, the court determined that Adtile’s trade secrets and confidential information were not sufficiently delineated from what is either publicly available or discernable from visual details of published Motion Ads. Id. at *13.  The Court also noted that the fact that Adtile included, without attribution, the handphone image in two ads provided to Undertone as deliverables under the License Agreement weakened Adtile’s copyright and trademark infringement arguments. Id.

A copy of the Memorandum Order is attached.

The general take away is the granting of a preliminary injunctions is considered an “extraordinary remedy” that will only be granted in limited circumstances. Parties seeking preliminary injunctions must demonstrate the fundamental requirements of likelihood of success on the merits and irreparable harm if relief is not granted to have any chance of obtaining a preliminary injunction.

Judge Robinson Grants Plaintiff’s Motion for Summary Judgment Finding Microsoft Liable to Pay $10 Million Under Patent License Agreement

Posted in Intellectual Property, Patent Infringement, Patents

By Memorandum Opinion entered by The Honorable Sue L. Robinson in Unwired Planet, Inc. v. Microsoft Corporation, Civil Action No. 14-967-SLR (D.Del., June 15, 2016), the Court granted plaintiff Unwired Planet, Inc.’s Motion for Summary Judgment after concluding that the agreement between Unwired Planet and Lenovo PC International Limited satisfied the conditions of a “Qualifying Agreement” in Section 5.1.3 of the patent license agreement entered between Unwired Planet and Microsoft Corp. for Microsoft to pay Unwired Planet an additional $10 Million as a Qualifying Agreement License Fee.

A copy of the Memorandum Opinion is attached.

The general take away is that parties have a right to enter into good and bad contracts – the law enforces both particularly when they involve sophisticated parties.

Judge Andrews Grants Defendants’ Motion for Certification of Partial Final Judgment as to Finding of Liability for Infringement of Patents

Posted in Intellectual Property, Patent Actions, Patent Infringement

By Memorandum Opinion entered by The Honorable Richard G. Andrews in InterDigital Communications, Inc. v. ZTE Corp., Civil Action No. 13-009-RGA (D.Del., June 7, 2016), the Court granted Defendants’ motion seeking certification of partial final judgment, pursuant to Federal Rule of Civil Procedure 54(b), as to jury’s finding of liability against Defendants for infringement of U.S. Patent Numbers 7,190,966 and 7,286,847 (collectively, “the power ramp-up patents”).  In so ruling, the Court found that an entry of judgment as to patent infringement liability, when only a damages trial remains, is a final judgment for purposes of Rule 54(b). Id. at *4.  The Court also concluded that, after evaluating the five factors set forth by the Third Circuit to assess whether there exists any just reason for delay, there was no just reason for delay. Id. at *4-6.

A copy of the Memorandum Opinion is attached.

Judge Andrews Concludes Boeing is A Required Plaintiff in Patent Infringement Action

Posted in Intellectual Property, Patent Actions, Patent Infringement

By Memorandum entered by The Honorable Richard G. Andrews in Acceleration Bay LLC v. Activision Blizzard, Inc., Civil Action No. 15-228-RGA (D.Del., June 3, 2016) (consolidated), the Court held that, unless Boeing joins the action within fourteen (14) days, Defendants’ motion to dismiss for lack of standing will be granted because Boeing is a required party under Federal Rule of Civil Procedure 19(a).  In reaching its holding, the Court concluded that Acceleration Bay was an exclusive licensee rather than the owner of the patents-in-suit. Id. at *3-5.  Thus, given that Boeing did not transfer all substantial rights to Acceleration Bay under the provisions of the purchase agreement, Boeing maintained a right to sue on the patents-in-suit as well and Boeing’s absence would place Defendants at substantial risk of multiple suits and multiple liabilities for the same act of infringement if Boeing was not required to be a party in the action. Id. at *10.

A copy of the Memorandum is attached.

The general takeaway is whether one labels a transfer of a particular right or interest under a patent an assignment or license is not determinative of whether the provision is an assignment or license. Rather, what is determinative of whether a transfer is an assignment or license is the legal effect of the provision.  Unlike an assignee that may sue in its own name, a licensee having fewer than all substantial patent rights that seeks to enforce its rights in a patent generally must sue jointly with the patent owner.

Judge Robinson Grants Defendants’ Motion to Dismiss Amended Complaint in ANDA Action

Posted in Intellectual Property, Patent Actions, Patent Infringement

By Memorandum Opinion entered by the The Honorable Sue L. Robinson in Takeda Pharmaceuticals U.S.A., Inc. v. West-Ward Pharmaceutical Corp., et al., Civil Action No. 14-1268-SLR (D.Del., May 18, 2016), the Court granted Defendants’ motion to dismiss Plaintiff’s first amended complaint pursuant to Federal Rule of Civil Procedure 12(b)(6) after finding that Plaintiff’s claims for indirect infringement failed to state a plausible claim for relief.  In reaching its conclusion, the Court, among other things, found that the Mitigare™ label does not infringe and is not a sufficient catalyst to constitute active steps to encourage direct infringement. Id. at 16-17.  The Court reasoned that (1) like the generic in AstraZeneca Pharmaceuticals LP v. Apotex Corp., 2010 WL 5376310 (D.Del., December 22, 2010) aff’d, 669 F.3d 1370 (Fed. Cir. 2012), Defendant specified that Mitigare™ is for the prevention of gout flares and warned that its drug is not indicated for the treatment of acute gout flares, and (2) allowing Takeda to proceed with its claims would be akin to allowing Takeda to expand the scope of its exclusivity over the treatment of gout with colchicine. Id. at 15.

A copy of the Memorandum Opinion is attached.

Judge Sleet Concludes that Defendants Did Not Prove Invalidity of Asserted Claim in ANDA Action

Posted in Intellectual Property, Patent Actions, Patent Infringement

Following a four day bench trial in a consolidated ANDA action before The Honorable Gregory M. Sleet in Genzyme Corp., et al. v. Dr. Reddy’s Laboratories, Ltd., et al., Civil Action Nos. 13-1506 and 13-1508-GMS (D.Del., May 11, 2016), the Court issued its findings of fact and conclusions of law pursuant to Federal Rule of Civil Procedure 52(a) and specifically concluded that Defendants failed to establish by clear and convincing evidence that claim 19 of U.S. Patent No. 7,897,590 (“the ‘590 patent”) is invalid due to obviousness.

A copy of the Memorandum setting forth the Court’s findings of fact and conclusions of law is attached.

Chief Judge Stark Grants JHU’s Motion for Partial Summary Judgment of a Priority Date of No Later Than June 5, 2003 for Count in Interference

Posted in Intellectual Property, Patent Actions, Patent Infringement, Patents

By Memorandum Opinion entered by The Honorable Leonard P. Stark in Johns Hopkins University v. 454 Life Sciences Corp., Civil Action No. 13-1853-LPS (D.Del., May 2, 2016), the Court granted John Hopkins University’s (“JHU”) motion for partial summary judgment of a priority date of no later than June 5, 2003 with respect to the Count in the Interference.  The Interference involves a single count with the interfering subject matter represented by claim 1 of  Plaintiff JHU’s U.S. Patent Application No. 12/361,690 (JHU’s “’690 application”) and claim 52 of Defendant 454 Life Sciences Corporation’s U.S. Patent Application No. 13/33,240 (454’s “’240 application”).

Among other things, JHU cited the Decision and Final Judgment of the Board of Patent Appeals and Interferences (“the Board”) in its favor on the issue. Id. at 11.  In its decision, the Board concluded that “JHU had established by a preponderance of the evidence that it conceived of the subject matter of the Count by June 5, 2003 and that the JHU inventors were reasonably diligent for the month of June 5, 2003 until the filing of provisional application No. 60/485,301 on July 5, 2003, i.e., JHU’s constructive reduction to practice.” Id. at 11-12.  In granting JHU’s motion for summary judgment on the issue, the District Court determined that JHU “met its burden at summary judgment by producing evidence which shows, by a preponderance of the evidence, conception and diligent reduction to practice sufficient to support a priority date of June 5, 2003.” Id. at 16.  The District Court also found that 454 failed to raise any genuine issues of material fact with respect to the evidence relied on by JHU. Id.

A copy of the Memorandum Opinion is attached.