By Memorandum Opinion entered by The Honorable Richard G. Andrews in TQ Delta, LLC v. 2Wire, Inc., Civil Action No. 13-1835-RGA (D.Del. July 14, 2021), the Court denied Defendant’s motion to exclude the testimony of Plaintiff’s expert witness relating to the testing of the accused infringing products with regard to the Family 4 Patents.  In support of its motion, Defendant argued that (1) Plaintiff’s expert tests are not relevant to the question of infringement because the tests on which the opinions are based do not show how the accused products process a bit stream; and (2) Plaintiff expert’s opinions on the testing are unreliable because he did not perform or observe the tests.  Id. at *4.

Upon evaluation of Defendant’s arguments, the Court found that Plaintiff’s expert tests are relevant to the issue of infringement, the fact that Plaintiff’s expert did not perform the testing himself does not make his opinions on the tests inherently unreliable, and the reliability of Plaintiff expert’s testimony can be tested during trial through cross-examination and other methods.  Id. at *4-8.  Thus, the Court denied Defendant’s motion.  Id. at *8.

A copy of the Memorandum Opinion is attached.

Effective July 1, 2021, the Honorable Colm F. Connolly became Chief Judge in the United States District Court for the District of Delaware.  Chief Judge Connolly assumed the role from the Honorable Leonard P. Stark, who served the District of Delaware well as Chief Judge since 2014.

Thank you Chief Judge Stark for your leadership, dedication, innovation and hard work during your term as Chief Judge!  The District remains at the front of the pack and you passed the baton to a very capable leader in Chief Judge Connolly.  May GOD continue to bless you both!


By Memorandum Order entered by The Honorable Maryellen Noreika in Sentient Sensors, LLC v. Cypress Semiconductor Corp., Civil Action No. 19-1868-MN (D.Del. June 24, 2021), the Court denied Defendant Cypress Semiconductor Corporation’s motion seeking further construction of the claim term “embedded” which appears in numerous claims of the patent-in-suit, U.S. Patent No. 6,938,177 (“the ‘177 patent”).  Plaintiff Sentient Sensors, LLC was opposed to Defendant’s motion.

In denying the motion, the Court noted that “District courts have ‘considerable latitude in determining when to resolve issues of claim construction’ [and]  . . .  [t]he Federal Circuit has repeatedly upheld a district court’s decision to revisit claim construction as the case progresses, including at trial.”  Id. at *1-2.  In this instance, the Court explained that it had already expended extraordinary resources to address numerous issues and decide motions related to claim construction and infringement in the case and Defendant had ample opportunity, including when the Court previously construed the term “embedded” to raise its proposed construction of “embedded” included in its latest motion.  Id. at *2-3.

Accordingly, the Court denied the motion for further construction at the current time but advised the parties that, during the pretrial conference, the Court will address whether additional construction of the term “embedded” is necessary and, if so, how it should be accomplished.  Id. at *3.  The Court also instructed the parties that they should be prepared to go to trial without delay, including having their experts prepared to opine on infringement and validity issues using any of the constructions of “embedded” proposed by either party during the litigation including the latest construction offered by Plaintiff in its motion for further construction.  Id.

A copy of the Memorandum Order is attached.

By Memorandum Opinion entered by The Honorable Maryellen Noreika in SIPCO, LLC v. Aruba Networks, LLC et al., Civil Action No. 20-537-MN (D.Del. June 9, 2021), the Court denied Defendants’ motion for judgment on the pleadings on Counts III and IV of Plaintiff’s Complaint pursuant to Rule 12(c) of the Federal Rules of Civil Procedure after concluding that Defendants failed to show that there are no material issues of fact and they are entitled to judgment as a matter of law.

By way of background, Plaintiff SIPCO is a research, development and technology company that was assigned various patents by its founder, T. David Petite, relating to moving data over wired and wireless networks.  On February 13, 2020, SIPCO advised defendant Aruba, a subsidiary of defendant Hewlett Packard Enterprise Company, in writing that, it infringed certain SIPCO patents through Aruba’s sale of certain products.  Id. at *1.  After receiving no response from Aruba, SIPCO filed its Complaint asserting that Aruba infringed certain SIPCO patents, including U.S. Patent Numbers 8,335,304 (“the ‘304 patent”) (Count III) and 8,924,587 (“the ‘587 patent”) (Count IV).  Id.  Defendants answered SIPCO’s Complaint and, thereafter, filed their partial motion for judgment on the pleadings asking the Court to dismiss Counts III and IV with prejudice.  Id.

In their motion, Defendants argued that the Court should grant judgement on the pleadings as to Counts III and IV on two bases.  First, Defendants asserted that SIPCO lacked standing to assert the ‘304 patent and the ‘587 patent.  Id. at *2.  Second, Defendants asserted that SIPCO failed to plead that it or any of its licensees complied with the notice by marking requirement of 35 U.S.C. § 287(a) with respect to the ‘304 patent and, thus, SIPCO cannot recover damages for the alleged infringement of the ‘304 patent.  Id.

After evaluating both of Defendants’ arguments, the Court found that Defendants failed to show that SIPCO lacked standing to assert the ‘304 patent and/or the ‘587 patent.  Id. at *3-5.  Instead, the public filings showed that SIPCO was assignee throughout the lifetime of the asserted patents and had standing to sue for any infringement of the patents.  Id.  The Court also found that Defendants did not establish that SIPCO was required to mark and failed to do.  Id. at *5-6.  SIPCO asserted that Defendants infringed at least claim 7 of the ‘304 patent.  Claim 7 is a method claim and, thus, the marking requirement of 35 U.S.C. § 287(a) did not apply because, as the Federal Circuit has held, for a claimed method or process there is nothing to mark to provide notice of infringement.  In fact, the Federal Circuit has “held that 35 U.S.C. § 287(a) did not apply where the patentee only asserted the method claims of a patent which included both method and apparatus claims.”  Id. at *6 (quoting Crown Packaging Tech., Inc. v. Reexam Beverage Can Co., 559 F.3d 1308, 1316-17 (Fed. Cir. 2009).  Accordingly, Defendants’ motion for judgment on the pleadings as to Counts III and Count IV of Plaintiff’s Complaint was denied.

A copy of the Memorandum Opinion is attached.

By Memorandum Opinion entered by the Honorable Richard G. Andrews in Peleton Interactive, Inc. v. ICON Health & Fitness, Inc., Civil Action No. 20-662-RGA (D.Del. May 28, 2021), the Court granted in part and denied in part Peleton’s Partial Motion to Dismiss ICON’s First Amended Counterclaims.  In doing so, among other things, the Court concluded that Peleton’s statements describing itself in its advertisements as an “innovator” and “hardcore technology company” are non-actionable puffery under the Lanham Act.  Id. at *13.

A copy of the Memorandum Opinion is attached.

By Memorandum Opinion entered by The Honorable Colm F. Connolly in CareDx, Inc. v. Natera, Inc., Civil Action No. 19-662-CFC-CJB (D.Del. May 7, 2021), the Court granted Natera’s motion to exclude at trial the opinions of CareDx’s damages expert relating to “corrective advertising damages.”  CareDx sought to offer the damages expert’s testimony at trial in support of its claims for damages against Natera under § 1117(a)(2) of the Lanham Act.  Id. at *1.  CareDx’s Lanham Act claims were based on allegations that Natera falsely represented that Natera’s Prospera kidney transplant test is superior to CareDx’s Allosure Kidney test.  Id.

“According to CareDx, ‘[u]nder 15 U.S.C. § 1117(a)(2), a successful false advertising plaintiff can recover the costs of any completed advertising that actually and reasonably responds to the defendant’s offending ads.’”  Id.  CareDx wanted to offer the expert’s testimony at trial to establish the actual cost of the corrective advertising efforts it took in 2019 and the first half of 2020 and the projected cost of its corrective advertising efforts for the second half of 2020 and 2021.  Id. at *3.  The problem, however, was that CareDx’s damages expert relied solely on the deposition testimony of CareDx’s Chief Executive Officer about what the company’s total spend on marketing, sales and investor relations was in 2019 and what percentage of that total spend was directed, in some form or fashion, to defending against Natera’s alleged claims about Allosure.  Id. at *3-5.  CareDx’s damages expert did nothing independently, let alone scientific, to verify the CEO’s cost estimates.  Id. at *6.

Natera moved to exclude CareDx damages expert’s testimony on corrective advertising damages under Rules 702 and 403 of the Federal Rules of Evidence.  Upon review and evaluation of the opinions of the CareDx damages expert on corrective advertising damages, the Court concluded that the opinions were nothing more than simple math calculations and did not contain specialized knowledge outside of a juror’s common understanding.  Id. at *5.  Thus, the opinions were inadmissible because, among other things, they failed to meet the “qualification” and “fit” requirements of Rule 702 and their probative value was substantially outweighed by the danger of misleading the jury in violation of Rule 403.  Id. at *5-7.

A copy of the Memorandum Opinion is attached.