By Memorandum Opinion entered by The Honorable Gregory M. Sleet in Koniklijke Philips N.V. v. HTC Corp., Civil Action No. 15-1125-GMS (D.Del. July 18, 2017), the Court denied Defendants’ Joint Motion to Transfer Venue which sought to transfer venue of the patent infringement action to either the Northern District of California, the Western District of Washington, or the Eastern District of New York pursuant to 28 U.S.C. § 1406, or alternatively to transfer all actions to the Northern District of California pursuant to 28 U.S.C. § 1404(a). In denying the motion, the Court found that, through their conduct in actively litigating the suit in the District of Delaware since December 2015 coupled with their withdrawal of their original motion to dismiss for improper venue following the Federal Circuit’s decision in TC Heartland, 821 F.3d 1338(Fed. Cir. 2016), defendants waived any right to challenge venue in the District of Delaware. Id.at *5-8. The Court also found that, although defendants pleaded the affirmative defense of improper venue in their answer to the second amended complaints, the affirmative defense of improper venue may be waived by a defendant’s subsequent actions through the course of litigation and the totality of defendants’ actions made it clear that they submitted to venue in the District of Delaware. Id.at *9-10.

A copy of the Memorandum Opinion is attached.

The general take away is that, if you are a party asserting the affirmative defense of improper venue, you need to assert and preserve the affirmative defense in a timely manner in your responsive pleading or motion and be mindful that your subsequent actions in litigating the case do not provide grounds for a finding of waiver.

By Memorandum Opinion entered by The Honorable Gregory M. Sleet in Nespresso USA, Inc. v. Ethical Coffee Company SA, Civil Action Np. 16-194-GMS (D.Del. July 13, 2017), the Court granted the motion to dismiss for lack of personal jurisdiction under Federal Rule of Civil Procedure 12(b)(2) of Counterclaim Defendants Nestle Nespresso SA, Nestle SA (“Nestle”) and Nestec SA (“Nestec). In granting the motion, the Court found that neither Nestle or Nestec are “at home” in Delaware and, thus, cannot be subject to general jurisdiction in Delaware. Id.at *5. With respect to specific juridisction, the Court found that Counterclaim Plaintiff Ethical Coffee Company (“ECC”) failed to make a prima facie showing that Nestle or Nestec would be subject to personal jurisdiction in Delaware under a stream of commerce theory or an agency theory. Id.at *6-9. The Court also disagreed with ECC’s position that Federal Rule of Civil Procedure 4(k)(2) gave the Court personal jurisdiction over Nestle and Nestec explaining that, since minimum contacts had not been established through either stream of commerce or agency approach, personal jurisdiction could not be predicated on Rule 4(k)(2). Id.at *10.

A copy of the Memorandum Opinion is attached.

By Memorandum Opinion entered by The Honorable Leonard P. Stark in Enzo v. Gen-Probe Inc., Civil Action No. 12-104-LPS (consolidated) (D.Del., June 28, 2017), the Court granted the motion of defendants Gen-Probe Incorporated and Hologic, Inc. for summary judgment of invalidity of U.S. Patent No. 6,992,180 (“the ‘180 patent”) on nonenablement grounds. In doing so, the Court found that there was no genuine dispute of fact that the ‘180 patent specification lacks enablement and that a reasonable jury could not find for Enzo. Id.at *14. “Instead, the only conclusion a reasonable jury could reach is that clear and convincing evidence proves the ‘180 patent is invalid for nonenablement.” Id.

The Court explained that, based on the record, a reasonable factfinder could only find: (1) the quantity of experimentation necessary to arrive at embodiments equal to the full scope of the claims is undue; (2) insufficient direction or guidance is presented in the ‘180 patent to allow a person of ordinary skill in the art (“POSA”) to avoid undue experimentation; (3) an insufficient number of working examples are present; (4) the invention arises in a field of art that was highly unpredictable at the time of the invention; (5) the prior art showed that the pertinent field was unpredictable; (6) although the relative skill of those in the art was high, persons of ordinary skill in the art at the time of the invention did not have sufficient knowledge to fill in what was missing from the ’180 patent; (7) the art was highly unpredictable; and (8) the claims in the ‘180 patent are extremely broad. Id.at *16. Accordingly, the Court concluded that the specification of the ‘180 patent did not sufficiently teach those of ordinary skill in the art how to make and use the full scope of the claimed invention without undue experimentation. Thus, summary judgment that the ‘180 patent is invalid for nonenablement was warranted.

A copy of the Memorandum Opinion is attached.

By Memorandum Order entered by The Honorable Leonard P. Stark in Margaret Kay Young, et al. v. Bristol-Myers Squibb Co. and Pfizer Inc. and 32 similar actions, Civil Action Nos. 17-609-LPS through 17-641-LPS, (D.Del. June 27, 2017), the Court denied Plaintiffs’ motion to remand 33 removed Eliquis® actions to state court. Plaintiffs contended that Defendants’ removal of the actions to federal court was improper under 28 U.S.C. § 1441(b) because Defendants are citizens of Delaware. Id. at*2. Specifically, Plaintiffs contended that the “forum defendant rule” barred Defendants from removing the actions to federal court. Id. Defendants countered contending that, because they removed the cases to federal court before they were served with process, there was no forum defendant who was “properly joined and served” so § 1441(b) did not bar removal. Id.

The Court agreed with Defendants and denied Plaintiffs’ motion to remand. Id. at*3. In doing so, the Court noted that it saw no reason to depart from its prior decisions in Munchel, 2012 WL 4050072, and Hutchins, 2009 WL 192468. Id.

A copy of the Memorandum Order is attached.

By Memorandum Order entered by The Honorable Leonard P. Stark in UCB, Inc., et al. v. Watson Laboratories, Inc. et al., Civil Action No. 14-1083-LPS-SRF (D.Del., May 19, 2017), the Court denied Defendants’ motion for reargument of its Order entered on December 5, 2016, in which the Court denied Plaintiffs’ request for a stay, but ordered Defendants liable for the costs of the litigation from that point forward if either (a) their Abbreviated New Drug Application (“ANDA”) was rejected due to the major deficiencies identified by the FDA or (b) they changed the ANDA formulation in contradiction of the repeated representations to the Court that no such alteration is required.

The Court explained that it denied the motion for reargument for a couple reasons. First, Defendants failed to comply with their obligation to meet and confer with Plaintiffs before filing their motion. Id. at *2. Second, Defendants failed to meet their burden to demonstrate that reargument of the Court’s prior Order was appropriate. Id. Defendants did not point to any change in the controlling law or any new evidence, and defendants’ contentions that the Court made a decision outside of the issues presented by the parties, committed a clear error of law, and created manifest injustice were found to be incorrect. Id. at *2-4.

A copy of the Memorandum Order is attached.

The general takeaway is that motions for reargument are sparingly granted by Courts and, when they are, the movant was able to convince the Court that granting reargument is appropriate because of some intervening change in the controlling law, some new evidence not available at the time the Court made its decision, or there was a need to correct some clear error of law or fact to prevent manifest injustice.

 

By Order entered by The Honorable Richard G. Andrews in Blackbird Tech LLC d/b/a Blackbird Technologies v. Lenovo (United States) Inc., Civil Action No. 16-140-RGA (D.Del. June 19, 2017), the Court rendered its Markman ruling construing the remaining term in dispute in U.S. Patent No. 7,129,931 (“the ‘931 patent”) consistent with plaintiff’s proposed construction of the term. The ‘931 patent relates to a laptop computer with a dual-axis hinge for the monitor and a front-facing port. The remaining dispute in the claim construction was whether the term “port” in claim 1 includes a PC card slot or whether PC card slots were disclaimed during the prosecution of the patent. Id. at *6. After review of the prosecution history, the Court agreed with Plaintiff that PC card slots were clearly disclaimed. Id. at *7-10. Thus, the Court construed the term “port” as an “interface not including a PC card slot.” Id. at *10.

A copy of the Memorandum Opinion is attached.

By Memorandum Opinion entered by The Honorable Leonard P. Stark in Intel Corp. v. Future Link Systems, LLC, Civil Action No. 14-377-LPS (D.Del. June 1, 2017), the Court denied (1) the motion of Plaintiff Intel Corporation to exclude royalty opinions of Defendant Future Link Systems, LLC’s damages experts, and (2) the motion of Defendant Future Link Systems, LLC to preclude the expert testimony of the damages expert of Plaintiff Intel Corporation. Both Plaintiff’s and Defendant’s motions attacked the apportionment methodology of the opposing damages expert and, thus, claimed the opinions were unreliable. Id. at * 2-10. In both instances, the Court found the experts’ methodology sufficiently reliable and found that questions about fact comparability are best left for cross-examination during trial. Id.

A copy of the Memorandum Opinion is attached.

Today, through a unanimous decision of the Court delivered by Justice Thomas (with the exception of Justice Gorsuch who took no part in the consideration or decision of the case), the U.S. Supreme Court in TC Heartland LLC v. Kraft Foods Group Brands LLC, 581 U.S. _____ (2017) reversed the Federal Circuit in ruling that 28 U.S.C. § 1400(b) remains the only applicable patent venue statute, the term “residence” in 28 U.S.C. § 1400(b) refers only to the State of incorporation of a domestic corporation, and that 28 U.S.C. § 1391 did not supplement or modify § 1400(b) or the Supreme Court’s prior decision in Fourco Glass Co. v. Transmirra Products Corp., 353 U.S. 222 226 (1957). Thus, given today’s ruling, patent infringement lawsuits will only be able to be filed in judicial districts in states where the infringing defendant is incorporated or in judicial districts where defendant has committed acts of infringement and has a regular and established place of business.

A copy of the U.S. Supreme Court’s Opinion is attached.

The general take away is that, if a patent infringement action is filed against a defendant in a state where defendant is not incorporated or in a state where defendant does not have a regular and established place of business and/or has not committed acts of infringement, the allegedly infringing defendant should move to dismiss or transfer the action for lack of venue.

By Memorandum Order entered by The Honorable Sue L. Robinson in Paltalk Holdings, Inc. v. Riot Games, Inc., Civil Action No. 16-1240-SLR (D.Del. May 15, 2017), the Court denied Defendant’s Motion to Dismiss which asserted that dismissal of the Complaint was appropriate because the asserted patents do not claim patent eligible subject matter under 35 U.S.C. § 101. The patents-in-suit are U.S. Patent Numbers 5,822,523 (“the ‘523 patent”) and 6,226,686 (“the ‘686 patent”). The ‘523 patent and the ‘686 patent relate to distribution of messages between computers in interactive environments, such as online gaming. Id. at *1. The Court disagreed with Defendant’s assertions and found that the claims at issue are not directed to an abstract idea. Id. at *10.

A copy of the Court’s Memorandum Order is attached.

By Memorandum Opinion entered by The Honorable Richard G. Andrews in Insight Equity d/b/a Vision-Ease Lens Worldwide v. Transitions Optical, Inc., Civil Action No. 10-635-RGA (D.Del. May 9, 2017), the Court granted in part and denied in part Plaintiff’s motion to exclude the expert testimony of Defendant’s expert which defined the relevant market for purposes of the antitrust claims.

Defendant’s expert defined the relevant market in the case to include both photochromic and clear lenses and used two econometric tests – cross-price elasticity of demand and co-price movement – to support her market definition. Id. at * 9. Plaintiff’s motion did not challenge the methodological soundness of cross-price elasticity and co-price movement; rather, it challenged the appropriateness of those tests under the facts and circumstances of the case. Id. at *12. In other words, Plaintiff’s motion challenged the “fit” of the expert’s use of cross-price elasticity of demand and co-price movement given the facts and circumstances of this case. Id.

Ultimately, with the exception of not allowing Defendant’s expert to rely on the co-price movement that she attributed to common components of clear and photochromic lenses, the Court rejected Plaintiff’s challenge and permitted Defendant’s expert to testify on co-price movement and cross-price elasticity of demand in giving her expert opinion on the relevant market for purposes of the antitrust claims. Id. at *14-16.

A copy of the Memorandum Opinion is attached.

The general takeaway is that an expert’s testimony must comply with the three requirements set forth in Daubert v. Merrell Dow Pharma., Inc., 509 U.S. 579, 589 (1993): (1) qualification; (2) reliability, and (3) fit. The Court has a gatekeeping role in assessing whether the proffered testimony complies with the Daubert requirements. However, Courts tend to interpret the qualification, reliability and fit requirements of Daubert liberally when evaluating whether to exclude proffered expert testimony.