By Memorandum Opinion entered by The Honorable Gregory M. Sleet in Recro Gainesville LLC v. Actavis Laboratories FL, Inc., Civil Action No. 14-1118-GMS (D.Del. February 24, 2017)(consolidated), the Court, following a three-day bench trial and having considered the entire record in the case and the applicable law, concluded that Actavis’ proposed ANDA products infringe all of the asserted claims of U.S. Patent No. 9,132,096 (“the ‘096 patent”) and U.S. Patent No. 6,902,742 (“the ‘742 patent”). As a result, the Court ordered that, pursuant to 35 U.S.C. §271(e)(4)(A), the effective date of any FDA approval of Actavis’ proposed ANDA products shall not be earlier than the later expiration date of the ‘096 and ‘742 patents. Id. at *28. The Court, pursuant to 35 U.S.C. §271(e)(4)(B), also enjoined Actavis, its officers, agents, attorneys, and employees, and those acting in privity or concert with any of them, from engaging in the commercial manufacture, use, offer to sell, or sale within the United States, or importation into the United States of Actavis’ ANDA products prior to the expiration of the ‘096 and’742 patents. Id.

A copy of the Memorandum Opinion is attached.

By Memorandum Opinion entered by The Honorable Leonard P. Stark in Intellectual Ventures I LLC et al. v. Symantec Corp. et al., C.A. No. 13-440-LPS (D.Del. February 13, 2017), the Court granted Defendants’ motion for summary judgment of patent ineligibility upon finding that the claims at issue – claims 25 and 33 of U.S. Patent No. 5,537,533 (“the ‘533 patent”) – (1) are directed to an abstract idea, and (2) fail to include any inventive concept sufficient to elevate them into patent-eligible applications of the abstract idea of backing up data. Id. at *3-11.

In so ruling, the Court agreed with Symantec that the claims at issue simply recite the basic steps of copying data from one location to another several times and sending a confirmation that the data has been received; and this is something humans and institutions have been doing for centuries, even before computers. Id. at *8. The Court also agreed that, although the claims invoke existing computer functionality as a tool to better back up data, the claims do not themselves purport to improve anything about the computer or network itself. Id. at *8-9. For example, unlike Enfish and McRo, the claims do not improve the way computers store information or otherwise function and do not otherwise provide an inventive concept. Id. Therefore, the court agreed with Symantec that the claims lack anything sufficient to transform the abstract idea into patent-eligible subject matter. Id.

A copy of the Memorandum Opinion is attached.

The general take away is that simply citing to generic computer components or functionality when describing an abstract idea, law of nature, or physical phenomena without some new, additional improvement, unique combination or something else that can be considered an inventive concept is not going to transform patent-ineligible subject matter into patent-eligible under 35 U.S.C. §101. Whenever a patent possibly claims an abstract idea, law of nature or physical phenomena, an analysis of the claims under the two-step process set forth in Mayo should be performed.

By Memorandum Opinion entered by The Honorable Richard G. Andrews in Endo Pharmaceuticals Inc. et al. v. Actavis Inc. et al., Civil Action No. 14-1381-RGA (D.Del. February 8, 2017), the Court granted defendant Teva Pharmaceuticals USA, Inc.’s motion to dismiss Counts II and VI of the Complaint for failure to state a claim pursuant to Federal Rule of Civil Procedure 12(b)(6). With respect to Counts II and VI, Teva argued that it was not a proper defense because “all alleged infringing activity had ceased” prior to Teva’s acquisition of Defendant Actavis. Id. at *1. Plaintiffs responded that as “owner and real party in interest . . . it is plausible that Teva [would be] liable for the past infringements.” Id. The Court noted that, while Teva may ultimately be financially liable for the past infringements, Plaintiffs had not pled that Teva is an infringer. Thus, the Court found that Teva was not a proper defendant as to the counts based on acts of infringement that occurred prior to Teva’s acquisition of Actavis. Id. Therefore, Counts II and VI of the Complaint were dismissed as to Teva.

A copy of the Memorandum Opinion is attached.

The United States District Court for the District of Delaware announced that, effective February 3, 2017, the Honorable Sue L. Robinson, transitioned to Senior Judge.  In the announcement, the Court also set forth certain changes to its case assignment practices given Judge Robinson’s transition to a Senior United States District Judge.  In short, Judge Robinson will not be assigned any new criminal cases or new civil cases.  Until the vacancy is filled, all new criminal cases will be assigned to Chief Judge Stark, Judge Sleet and Judge Andrews.  Until the vacancy is filled, all new civil cases will be assigned to Chief Judge Stark, Judge Sleet, Judge Andrews and a new docket referred to as “Vacant Judgeship” or “VAC”.  The cases assigned to VAC will also be referred to one of the Magistrate Judges – Judge Thynge (“MPT”), Judge Burke (“CJB”), and Fallon (“SRF”).

A copy of the Court’s Announcement is attached.

By Memorandum Order entered by The Honorable Leonard P. Stark in Yodlee, Inc. v. Plaid Technologies Inc., Civil Action No. 14-1445-LPS-CJB (D.Del. January 27, 2017), the Court overruled the objections of both parties and adopted in full the Report and Recommendation previously entered by United States Magistrate Judge Christopher J. Burke concluding that defendant’s motion to dismiss the asserted patent infringement claims should be granted in part and denied in part for the reasons set forth in Judge Burke’s detailed 35 U.S.C. § 101 analysis. The Court also granted in part and denied in part defendant’s motion for summary judgment seeking judgment of patent ineligibility with respect to all asserted claims of the seven patents in suit. Id. at *3.

A copy of the Memorandum Order is attached.

By Memorandum Opinion entered by The Honorable Gregory M. Sleet in Quest Licensing Corp. v. Bloomberg L.P. et al., Civil Action No. 14-561-GMS (D.Del., January 19, 2017), the Court granted Defendants’ Motion for Summary Judgment of Non-Infringement of U.S. Patent No. 7,194,468 (“the ‘468 patent”).

By way of background, the ‘468 patent discloses an apparatus and method enabling a subscriber to receive via mobile telecommunications network information that is updated in real time such as financial market information. Id. at *2. Significantly, all of the asserted claims of the ‘468 patent require receiving and/or supplying “changing information.” Id. In its claim construction order, the Court construed the term “changing information” to mean “only [price] data that has changed.” Id. at *5.

Defendants moved for summary judgment of non-infringement asserting that the defendants’ accused systems do not receive or supply “only data that has changed” as required by all of the asserted claims of the ‘468 patent. Id. at *3. Defendants argued that “it is undisputed that defendants’ accused systems receive and supply transaction information – such as stock trades, bids and quotes – that always includes non-changing information such as the stock symbol.” Id. at *5. Plaintiff Quest argued that there exists a material factual dispute as to whether sending non-repeating price data along with a ticker symbol or other identifier falls within the scope of the claims. Id. Quest also argued that, under the Court’s construction of “changing information”, the attachment of the stock symbol or other identifier does not preclude a finding of infringement. Id.

Ultimately, the Court agreed with Defendants. Given the record, the Court found, as a matter of law, that Defendants’ accused systems receive and supply financial exchange transaction information that always includes a unique identifier that does not change. Id. at *5-6. Thus, the Court concluded that Defendants’ accused systems do not infringe the ‘468 patent. Id. at *5-8. The Court found important the fact that, in an explanation provided to the Patent Trial and Appeal Board (“PTAB”) in its Preliminary Response to the Covered Method Patent Review (“CBMR”), Quest stated that the “claims also provide for an apparatus whereby only changed information of interest to the subscriber is sent to that subscriber’s mobile device.” Id. at *6.

A copy of the Memorandum Opinion is attached.

By Memorandum Order entered by The Honorable Leonard P. Stark in Kraft Foods Group Brands LLC v. TC Heartland, LLC et al., Civil Action No. 14-28-LPS, the Court denied the Heartland defendants’ motion to stay all case-dispositive matters in the patent infringement action, including dispositive pre-trial rulings and the trial, pending the ruling by the U.S. Supreme Court on the venue issue before it through its granting of the Heartland defendants’ petition for a writ of certiorari on December 14, 2016.

In denying the motion for partial stay, the Court found important the facts that the case has been pending for three years and the Heartland defendants had never before requested a stay or expressed concern about the case moving forward, Kraft and the Heartland defendants are competitors and any delay would be prejudicial to Kraft, and denying the stay would enable the parties to complete the remaining discovery and get the case ready for trial later in 2017, regardless of which District the trial is held. Id. at *4-5. The Court noted that the directive of Federal Rule of Civil Procedure 1 of securing a “just, speedy and inexpensive determination” is better served by the Court deciding the ripe motions before it rather than possibly leaving for some judge in another District to have to untangle. Id. at *5. The Court, however, did move the trial date from May to October 2017 to allow time for the parties to receive the Supreme Court’s decision before trial. Id. at *5-6.

A copy of the Memorandum Order is attached.

By Memorandum Opinion entered by The Honorable Leonard P. Stark in Vehicle IP, LLC v. AT&T Mobility LLC, et al., Civil Action No. 09-1007-LPS (D.Del., December 30, 2016), the Court granted defendants Telecommunication Systems, Inc., Networks in Motion, Inc., and Cellco Partnership (collectively, the “TCS Defendants”) motion for partial summary judgment of no willful infringement and denied a number of other motions to exclude and motions for summary judgment or partial summary judgment filed by the parties.

In evaluating the TCS Defendants’ motion for partial summary judgment of no willful infringement, the Court recognized that the “willfulness inquiry asks whether a party has engaged in ‘conduct warranting enhanced damages,’ under 35 U.S.C. § 284, behavior the Supreme Court has described as ‘willful, wanton, malicious, bad-faith, deliberate, consciously wrongful, flagrant, or [] characteristic of a pirate.’” Id. at *15. In granting the motion, the Court found that Vehicle IP did “not identify evidence, beyond pre-suit knowledge of the patent, that could show that the TCS Defendants’ infringement was ‘egregious’, ‘deliberate,’ wanton,’ or otherwise characteristic of the type of infringement that warrants the Court exercising its discretion to impose the ‘punitive’ sanction of enhanced damages.” Id. at *17. The Court noted that a party’s pre-suit knowledge of a patent is not sufficient, by itself, to find willful misconduct of the type that may warrant an award of enhanced damages. Id. Therefore, based on the record before it, the Court concluded that “no reasonable jury could find willful infringement” of the patent-in-suit by the TCS Defendants. Id.

A copy of the Memorandum Opinion is attached.

The general take away is that, in order to make a showing of willful infringement, the patentee must prove, among other things, that the accused infringer acted with a specific intent to infringe. In making that showing, the patentee must present some evidence beyond the accused infringer’s pre-suit knowledge of the patent to show that the accused infringer’s conduct was egregious, deliberate, wanton, or otherwise characteristic of the type of infringement that warrants the Court exercising its discretion to impose the punitive sanction of enhanced damages. For example, in making its showing, the patentee should consider presenting evidence to show that (1) the accused infringer intentionally and specifically relied on the pre-suit knowledge of the patent in developing its infringing products; and/or (2) the accused infringer hired a specific employee who previously worked for the patentee because of his or her specific knowledge of the patented invention. The patentee should be mindful of the record and make sure that it contains sufficient evidence of the infringer’s specific intent to infringe and “willfulness” in order to survive a partial motion for summary judgment of no willfulness and to get the issue to the jury.

By Memorandum Order entered by The Honorable Sue L. Robinson in Takeda Pharmaceuticals U.S.A., Inc. v. West-Ward Pharmaceutical Corp., Civil Action No. 14-1268-SLR (D.Del., December 14, 2016), the Court granted plaintiff Takeda Pharmaceuticals U.S.A., Inc.’s motion filed pursuant to Rules 59(e) and 15(a) of the Federal Rules of Civil Procedure seeking to (1) reopen the judgment of dismissal of the action previously entered under Rule 12(b)(6) for failure to state a claim and (2) to amend the complaint.

In evaluating Takeda’s motion, the Court recognized that, “[w]hen a plaintiff files a Rule 59(e) motion accompanied by a Rule 15(a) motion after the dismissal of a complaint under Rule 12(b)(6), ‘the appropriate manner to dispose of th[e] issue is to consider the motions together and determine what outcome is permitted by consideration of the Rule 15(a) factors.’” Id. at *1-2 (quoting Burtch v. Milberg Factors, Inc., 662 F.3d 212, 231 (3d Cir. 2011)). Under Rule 15(a), leave to amend a complaint is freely granted in the absence of undue delay, bad faith, dilatory motive, unfair prejudice, or futility of amendment. Id. at *2.

In applying the applicable standard, the Court found that Takeda’s motion was timely, and that there was no evidence of bad faith or dilatory motive. Id. at *4. The Court also explained that, although the proposed second amended complaint[1] did not contain all of the who, what, when and where’s of the communications identified therein for Takeda’s asserted claim against Hikma for induced infringement, given the Third Circuit’s standard for reviewing the sufficiency of a complaint that rests upon “information and belief” and given that Hikma would be the actual source of the requisite factual information, the proposed second amended complaint did contain sufficiently detailed allegations to plausibly give rise to a claim for inducement of patent infringement and did give Hikma fair notice of such claim. Id. at *5. Thus, the Court found that amendment of the complaint was not futile. Id. Lastly, because the action had not progressed past the initial pleading, the Court found that there was no undue prejudice to Hikma. Id. Therefore, the Court granted Takeda’s motion.

A copy of the Memorandum Order is attached.

[1] In addition to having previously dismissed Takeda’s original complaint, the Court had previously dismissed Takeda’s first amended complaint after concluding, among other things, that Takeda’s first amended complaint failed to satisfy the pleading standard found in Twombly and Iqbal – i.e., Takeda had failed to provide adequate factual allegations to state a plausible claim for induced infringement. Id. at *3.