By Standing Order entered on April 30, 2021, the Honorable Colm F. Connolly, of the United States District Court for the District of Delaware, rolled out the new summary judgment motion practice in all patent cases assigned to him.  Essentially, Judge Connolly is now requiring parties to number the motions for summary judgment that they file with the Court.  Although Judge Connolly is not limiting the number of motions for summary judgment that any party can file with the Court in any given patent action, his new practice will be that, if he denies any motion for summary judgment filed by a given party in a patent action, he generally will not review any subsequent motion for summary judgment filed by that same party in that same action.  Exceptions will be rare (for example, limited to the situation were the prior denial was a very close call.)

The purpose of Judge Connolly’s new summary judgment practice is to further deter and limit parties from filing meritless motions for summary judgment in patent cases assigned to him.  A copy of the Standing Order is attached.

By Memorandum Opinion entered by The Honorable Colm F. Connolly in University of Massachusetts et al. v. L’Oréal USA, Inc., Civil Action No. 17-0868-CFC-SRF (D.Del. April 20, 2021), the Court granted Defendant L’Oréal’s motion for summary judgment of indefiniteness of the skin enhancement claim limitation of U.S. Patent Numbers 6,423,327 (“the ‘327 patent”) and 6,645,513 (“the ‘513 patent”) after finding that the skin enhancement limitation in the independent claims of the patents-in-suit, when viewed in light of the specifications and prosecution histories, fails to inform those skilled in the art about the scope of the invention with reasonable certainty.  The Court also found that, since Plaintiff did not argue that the “dependent claims of [the patents-in-suit] provide clarity regarding the scope of the skin enhancement limitation that is lacking in the independent claims, those dependent claims are also invalid for indefiniteness.”  Id. at *14.

In its analysis, the Court did note that Plaintiff’s claim construction briefing was in contrast to its arguments in defense of L’Oréal’s motion for summary judgment of indefiniteness of the skin enhancement claim limitation and, in fact, supported L’Oreal’s argument that there is a clear distinction in the independent claims between the skin enhancement limitation and the recited concentration range limitation that is applied to the dermal cells.  Id. at *6-13.  The Court agreed with L’Oreal on the issue.  Id.  Ultimately, the Court granted L’Oreal’s motion and found claims 1, 3, 5, 6, 7 and 9 of the ‘327 patent and the ‘513 patent invalid for indefiniteness.  Id. at *14.

Copies of the Memorandum Opinion and corresponding Order are attached.

By Memorandum Opinion entered by The Honorable Richard G. Andrews in In re Chanbond, LLC, Patent Litigation, Civil Action No. 15-842-RGA (D.Del. April 16, 2021) (consolidated), the Court denied Defendants’ motion to reopen discovery to investigate whether Plaintiff Chanbond has standing in the suit given a dispute between Chanbond’s former owner, Chanbond, and Chanbond’s present owner concerning assignment of the patents-in-suit.  In denying Defendants’ motion, the Court, among other things, noted that standing must be present at the time suit is brought and found that Chanbond owned the right, title and interest in and to the patents-in-suit at the time of the filing, still owns such rights, and has standing to bring the suit.  Id. at *5-7.

A copy of the Memorandum Opinion is attached.

By Memorandum Order entered by The Honorable Colm F. Connolly in 10x Genomics, Inc. v. Celsee, Inc., Civil Action No. 19-862-CFC-SRF (D.Del. April 8, 2021), the Court denied Defendant’s Motion for Summary Judgment on Plaintiff’s false advertising claims under the Lanham Act and the Delaware Deceptive Trade Practices Act (“DTPA”) after finding that genuine issues of material fact preclude summary judgment or that the asserted claims do not fail as a matter of law.

A copy of the Memorandum Order is attached.

By Memorandum entered by The Honorable Richard G. Andrews in M2M Solutions LLC et al. v. Sierra Wireless America, Inc. et al., Civil Action No. 14-1102-RGA (D.Del. March 31, 2021), the Court granted Defendants’ motion for summary judgment of noninfringement of U.S. Patent No. 8,648,717 (“the ‘717 Patent”) with respect to the “exclusive set of numbers” limitation and also granted Defendants’ motion for summary judgment with respect to collateral estoppel and noninfringement under the doctrine of equivalents.  In so ruling, the Court adopted in major part the Report and Recommendation of the Magistrate Judge.  Id. at *2-8.

A copy of the Memorandum is attached.

By Memorandum Opinion entered by The Honorable Leonard P. Stark in Stragent, LLC v. BMW of North America, LLC et al., Civil Action No. 20-510-LPS (D.Del. March 25, 2021) (consolidated), the Court denied Defendants’ motions to dismiss Plaintiff’s complaints asserting infringement of U.S. Patent Nos. 9,705,765 (“the ‘765 patent”), 10,002,036 (“the ‘036 patent”), 10,031,790 (“the ‘790 patent”) and 10,248,477 (“the ‘477 patent”) from the use of the AUTOSTAR communication technology in Defendants’ vehicles.

Defendants’ motions to dismiss Plaintiff’s complaints under Federal Rule of Civil Procedure 12(b)(6) were based on three asserted grounds:  (1) claim preclusion based on the dismissals with prejudice entered by the District Court in the Eastern District of Texas in a prior action that Plaintiff brought against some of the Defendants asserting infringement of U.S. Patent Nos. 8,209,705 (“the ‘705 patent”) and 8,566,843 (“the ‘843 patent”) (“Stragent II”); (2) issue preclusion based on final written decisions issued by the Patent Trial and Appeals Board (“PTAB”) in inter partes reviews concerning certain patents; and (3) Plaintiff’s alleged violation of 37 C.F.R. § 42.73(d)(3) which allegedly led to Plaintiff wrongfully obtaining three of the four patents asserted in the action.  Id. at *1-4.  In denying Defendants’ motion to dismiss, the Court found that claim preclusion did not apply because Defendants failed to meet their burden to prove that the claims asserted in the instant action were the same as those alleged in Stragent II.  Id. at *6-13.  The Court also found that issue preclusion did not apply because the inter partes reviews before the PTAB did not adjudicate the identical issues that are presented in the instant action.  Id. at *13-14.  Lastly, the Court found that 37 C.F.R. § 42.73(d)(3) did not have preclusive effect under the circumstances of the instant action.  Id. at *4.

A copy of the Memorandum Opinion is attached.

By Memorandum Opinion entered by The Honorable Leonard P. Stark in Diebold Nixdorf, Inc. et al. v. Hyosung TNS, Inc. et al., Civil Action No. 19-1695-LPS (D.Del. March 4, 2021), the Court granted in part and denied in part Plaintiffs’ motion to dismiss Defendants’ counterclaim, pursuant to Federal Rule of Civil Procedure 12(b)(6), and motion to strike Defendants’ affirmative defense of inequitable conduct, pursuant to Federal Rule of Civil Procedure 12(f), in a patent infringement action.

The counterclaim and affirmative defense of inequitable conduct at issue related to U.S. Patent No. 6,082,616 (“the ‘616 patent”) and were based on: (1) failure by a list of named inventors to disclose to the United States Patent Office (“the PTO”) the 1064i automated teller machine (“ATM”); and (2) failure by two named inventors of the ‘616 patent to disclose to the PTO four prior art patents.  Id. at *2.  After evaluation of the motions, the Court decided to allow the Defendants’ counterclaim and affirmative defense of inequitable conduct to proceed only on the theories based on the non-disclosure of the 1064i ATM and one of the four prior art patents asserted, U.S. Patent No. 5,788,348 (“the ‘348 patent”).  Id. at *2-9.

A copy of the Memorandum Opinion is attached.

By Memorandum Opinion entered in Conformis, Inc. v. Medacta USA, Inc., Civil Action No. 19-1528-RGA (D.Del. March 4, 2021), The Honorable Richard G. Andrews construed the remaining terms in dispute in the four (4) patents-in-suit, U.S. Patent Nos. 8,377,129 (“the ‘129 patent”), 8,460,304 (“the ‘304 patent”), 9,186,161 (“the ‘161 patent”), and 9,295,482 (“the ‘482 patent”), in an infringement action involving patents on surgical tools and implants used in joint replacement surgeries and joint arthroplasties.

A complete copy of the Memorandum Opinion is attached.

 

By Memorandum entered by The Honorable Richard G. Andrews in Viatech Technologies, Inc. v. Microsoft Corp., Civil Action No. 17-570-RGA (D.Del. February 19, 2021), the Court granted Defendant’s motion to strike barring Plaintiff from asserting, and its expert from opining on (1) any theory under the doctrine of equivalents (“DOE”) other than for the terms “user system” and “range of tolerance” and (2) any theory of infringement relying on the graphical user interface (“GUI”) of third party products or generated by server software.  The Court granted Defendant’s motion to strike after finding that Plaintiff’s stricken theories under the DOE and Plaintiff’s GUI literal infringement theory were not timely disclosed in its infringement contentions and during fact discovery; rather, these new infringement theories were disclosed for the first time in Plaintiff’s opening expert report.  Id. at *3-9.  The Court found that the Pennypack factors favored exclusion of the portions of Plaintiff’s expert report that related to the untimely disclosed infringement theories.  Id.

In its Memorandum, the Court noted that “[n]o court likes to say that a party acted in bad faith.”  Id. at *9.  That being said, the Court went on to note that it did “not understand how Plaintiff’s experienced lawyers could have thought that springing clearly new theories on a defendant in opening expert reports was in compliance with the scheduling order, the Rules, or expected standards of practice.”  Id.  Although the Court stopped short of finding that Plaintiff acted in bad faith, the Court noted that “[Plaintiff’s] actions approach that standard.”  Id.

Certainly a situation wise practitioners want to avoid in the future by disclosing all infringement theories in a timely manner.  Copies of the Memorandum and Order are attached.