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.

 

By Order entered by The Honorable Gregory M. Sleet in Avid Technology, Inc. v. Harmonic Inc., Civil Action No. 12-627-GMS (D.Del. May 2, 2017), the Court rendered its Markman ruling construing three (3) disputed terms in U.S. Patent No. 5,495,291 (“the ‘291 patent”). The ‘291 patent relates to methods and apparatus for a video decompression system for decompressing consecutive streams of compressed video data to provide continuous, uninterrupted decompressed video data output stream.

A copy of the Markman Order is attached.

By Memorandum Order entered by The Honorable Gregory M. Sleet in Blackbird Tech LLC d/b/a Blackbird Technologies v. TuffStuff Fitness et al., Civil Action No. 16-733-GMS (D.Del. April 27, 2017), the Court granted the motion to transfer venue to the United States District Court for the Central District of California of defendant TuffStuff Fitness International Inc. After analyzing the Jumara factors, the Court found that TuffStuff met its burden of demonstrating that the interests of justice and convenience strongly favor transfer. Id. at *3-12. Although plaintiff’s forum preference weighed against transfer, the Court explained that plaintiff’s preference did not warrant maximum deference in this case, particularly because Delaware is not its “home turf” or principal place of business. Id. On the other hand, several factors weighed in favor of transfer: defendant’s choice of forum, convenience of the parties, location where the claim arose, the location of relevant books and records, and difference in court congestion. Id.

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

 

By Memorandum Opinion entered by The Honorable Richard G. Andrews in D&M Holdings Inc. et al. v. Sonos, Inc., Civil Action No. 16-141-RGA (D.Del. April 18, 2017), the Court granted Defendant’s Motion to Dismiss Plaintiff’s First and Third Counterclaims for Patent Infringement after finding that the asserted claims in the patents that are the subject of those counterclaims are drawn to abstract ideas and do not provide an inventive concept. Specifically, the Court found that U.S. Patent No. 7,343,435 (“the ‘435 patent”) is directed to the abstract idea of receiving, detecting, and storing information and does not provide an inventive concept. Id. at *9-12. The Court also found that U.S. Patent No. 7,305,694 (“the ‘694 patent”) is directed to the abstract idea of selecting a receiver connection for a piece of media based on the media’s encoding format and does not provide an inventive concept. Id. at *16-19.

A copy of the Memorandum Opinion is attached.

 

On April 13, 2017, the United States Court for the District of Delaware announced that The Honorable Gregory M. Sleet will take senior status as of May 1, 2017.  Judge Sleet has served as a District Judge for the District of Delaware since 1998.  He served as Chief Judge for the District of Delaware from 2007 to 2014.

The Court’s announcement notes that Judge Sleet has handled one of the busiest, most complex dockets in the nation during his nearly 19 years on the bench and has served with great distinction.  The Court’s announcement also notes that Judge Sleet intends to render substantial judicial service as a Senior Judge.

Given the announcement earlier this year that Senior Judge Sue Robinson will retire in August, the District of Delaware will have two District Judge vacancies as of May 1, 2017.  The Court hopes to fill the vacancies in a timely manner.

A copy of the Court’s announcement is attached.

By Memorandum Opinion entered by The Honorable Gregory M. Sleet in IP Communication Solutions, LLC v. Viber Media (USA) Inc., Civil Action No. 16-134-GMS (D.Del. April 5, 2017), the Court granted in part Defendant’s motion to dismiss complaint for failure to state a claim. Specifically, the Court granted Defendant’s motion to dismiss as to Plaintiff’s claim of induced infringement but denied Defendant’s motion as to Plaintiff’s claim of direct infringement. Id. at *7 and 9.

In denying Defendant’s motion to dismiss as to Plaintiff’s claim of direct infringement, the Court concluded that Plaintiff had met its burden under Twombly/Iqbal. Id. at *4. The Court distinguished this case from the cases cited by Defendant and concluded that Plaintiff’s claim chart plausibly alleged how Defendant’s network-based system provides VoIP services in a way that meets all of the claim limitations of the patent-in-suit. Id. at *6. Thus, the Court noted that it was unclear how, in this circumstance, Plaintiff could have been any more specific about what aspects of Defendant’s technology infringe the identified claim limitations of the patent-in-suit. Id.

In granting Defendant’s motion to dismiss as to Plaintiff’s claim of induced infringement, the Court concluded that Plaintiff failed to provide facts that would allow the Court to reasonably infer that Defendant had the specific intent to induce infringement. Id. at *7. In other words, the complaint failed to allege facts supporting how Defendant specifically instructed or directed customers to use Defendant’s application and corresponding server system in a manner that would infringe the patent-in-suit. Id. at *8. Thus, Plaintiff did not meet its pleading burden with respect to its claim for induced infringement. Id. at *8-9.

A copy of the Memorandum Opinion is attached.

The general takeaway is that Form 18 no longer provides the proper measure for the sufficiency of a complaint that alleges infringement. Plaintiffs in infringement action need to be mindful to plead enough specific facts in their claims to meet the requirements of Twombly/Iqbal.

By Memorandum Opinion entered by The Honorable Richard G. Andrews in Sonos, Inc. v. D&M Holdings Inc. et al., Civil Action No. 14-1330-RGA (D.Del. March 13, 2017), the Court denied Defendants’ Motion for Partial Judgment on the Pleadings for Lack of Patent-Eligible Subject Matter under Section 101 of the Patent Act, 35 U.S.C. § 101. The patents at issue in the motion were U.S. Patent Nos. 8,588,949 (“the ‘949 patent”), 7,571,014 (“the ‘014 patent”), 9,202,509 (“the ‘509 patent”), and 9,219,959 (“the ‘959 patent”). Id. at *2. Defendants moved for partial judgment claiming that those patents are directed to patent ineligible subject matter. Id.

After evaluation of Defendants’ motion and the patents at issue, the Court found that the patents at issue claim patent eligible subject mater and are not drawn to an abstract idea. Id. at *5-16. Thus, it was unnecessary for the Court to proceed past step one of the Mayo/Alice analysis for determining patent subject matter eligibility in reaching its conclusion. Id.

A copy of the Memorandum Opinion is attached.

By Memorandum Opinion entered by The Honorable Leonard P. Stark in Reckitt Benckiser LLC v. Aurobindo Pharma Ltd., Civil Action No. 14-1203-LPS (D.Del. March 6, 2017), the Court granted Defendants’ motion for summary judgment of non-infringement of the asserted claims of U.S. Patent No. 6,955,821 (“the ‘821 patent”) and U.S. Patent No. 7,838,032 (“the ‘032 patent”) with respect to Defendants’ proposed generic version of Mucinex® DM, an extended-release tablet that contains dextromethorphan hydrobromide and guaifenesin. The claim limitations of the patents-in-suit require the claimed drug product to include both an immediate-release formulation and a sustained release formulation of the drug guaifenesin. Id. at *6. Defendants moved for summary judgment on the basis that Plaintiff failed to present sufficient evidence that Defendants’ proposed product has two distinct formulations, as required by each asserted claim. Id. at *6-7.

The Court agreed with Defendants that summary judgment was warranted. Id. at *7. The Court explained that, on the record created by the parties and taking all of the evidence in the light most favorable to Plaintiff and drawing all reasonable inferences in Plaintiff’s favor, no reasonable factfinder could find that Defendants’ proposed product contains the two distinct formulations required by the asserted claims. Id.

A copy of the Memorandum Opinion is attached.