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.

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.