By Memorandum Opinion entered by The Honorable Richard G. Andrews in Rondevoo Technologies, LLC v. Aernos, Inc., Civil Action No. 19-680-RGA (D.Del. March 24, 2020), the Court granted Defendant’s Rule 12(b)(6) motion to dismiss for failure to state a claim on the basis that plaintiff’s complaint failed to state a claim because the asserted claims of the patents-in-suit are ineligible for patent protection under 35 U.S.C. § 101. Specifically, the Court found that the asserted claims of U.S. Patent Numbers 9,453,814 (“the ‘814 patent”) and 9,927,391 (“the ‘391 patent”) are (1) directed to the unpatentable abstract idea of sensing, and (2) the claims do not contain an inventive concept sufficient to transform the claimed abstract idea into a patent eligible application of an abstract idea. Id. at *3-12. The Court also found that plaintiff could not amend its complaint to state a claim upon which relief could be granted under the circumstances. Id. at*13.

A copy of the Memorandum Opinion is attached.

On March 22, 2020, Delaware Governor John Carney issued his Fourth and Fifth Modifications of the Declaration of a State of Emergency in the State of Delaware Due to a Public Health Threat. The latest Stay at Home Order follows Pennsylvania, New York, New Jersey and some other states closing nonessential business and commercial establishments in the State of Delaware. The order takes effect on tomorrow, Tuesday, March 24, 2020, at 8:00 a.m. and remains in effect “until May 15, 2020, or the public health threat of COVID-19 has been eliminated… .” Violations constitute a criminal offense.

 

 

By Memorandum Opinion entered by The Honorable Colm F. Connolly in Genentech, Inc. et al. v. Amgen Inc., Civil Action No. 17-1407-CFC, Consolidated (D.Del. March 9, 2020), the Court issued its claim construction opinion construing the remaining disputed claim term, “following fermentation,” in the patent-in-suit, United States Patent Number 8,574,869. Based on the extrinsic evidence and the Court’s reconsideration of the intrinsic evidence in light of the extrinsic evidence presented, the Court concluded that a person of ordinary skill in the art would understand “following fermentation” to mean “after the earlier of harvesting or purification has begun.” Id. at *2. Thus, the Court construed the term accordingly. Id. at *2-18.

A copy of the Memorandum Opinion is attached.

By Memorandum Order entered by The Honorable Leonard P. Stark in Pacific Biosciences of California, Inc. v. Oxford Nanopore Technologies, Inc. et al., Civil Action No. 17-275-LPS-CJB (D.Del. February 27, 2020), the Court rendered its rulings on five of the six motions in limine filed by the parties in preparation for the trial scheduled to start on March 9, 2020. By way of example, in granting Plaintiff’s motion in limine number 3, the Court ruled that Defendants were precluded from using pejorative terms such as “non-practicing entity,” “NPE,” and “paper patents” to characterize Plaintiff or its patents and from presenting evidence about the consequences of the litigation to the jury. Id. at *2.

A copy of the Memorandum Order is attached.

By Memorandum Order entered by The Honorable Colm F. Connolly in Genentech, Inc. et al. v. Amgen, Inc., Civil Action No. 17-1407-CFC, Consol. (D.Del. February 12, 2020), the Court denied Defendant’s motion for leave to amend its First Amended Answer, Affirmative Defenses and Counterclaims to add an affirmative defense and counterclaim that U.S. Patent No. 8,574,869 (“the ‘869 Patent”) is unenforceable due to Plaintiff’s inequitable conduct before the United States Patent and Trademark Office (“the PTO”). The Court denied the motion for leave to amend after finding that (1) the “good cause” standard under Federal Rule of Civil Procedure 16(b) applied to the motion to amend as opposed to the standard under Federal Rule of Civil Procedure 15(a); and (2) Plaintiff, by its own admission, had the ability in July 2019 to plead with particularity the alleged inequitable conduct defense and counterclaim but unduly delayed by waiting until September 2019 to seek leave to add that defense and counterclaim. Id. at *2-3. Thus, the Court found that Plaintiff failed to show good cause for its delay and denied the motion. Id.

A copy of the Memorandum Order is attached.

By Order entered by Chief Judge Leonard P. Stark on January 31, 2020, the United States District Court for the District of Delaware added three Delaware attorneys to its Special Masters Panel in complex civil cases. The three Delaware attorneys added are Helena Rychlicki, Chad Stover and Gregory B. Williams (partner at Fox Rothschild LLP and founder and author of Fox Rothschild’s Delaware Intellectual Property Litigation Blog). The three new Special Masters are appointed for four year terms ending on January 31, 2024.

A copy of the Order is attached.

By Memorandum Order entered by The Honorable Leonard P. Stark in Peeble Tide LLC v. Arlo Technologies, Inc., Civil Action No. 19-769-LPS (D.Del. January 31, 2020), the Court granted Defendants’ motions to dismiss in three separate patent infringement cases brought by Plaintiff Peeble Tide LLC after finding that the two patents asserted, U.S. Patent Numbers 10,261,739 and 10,303,411 are invalid under 35 U.S.C. § 101 because they are directed to patent ineligible subject matter under the Alice analysis. The Court also denied different Defendants’ motions to dismiss in five separate patent infringement cases brought by Plaintiff Mimzi, LLC after finding that Defendants could not meet their burden at Step Two of the Alice analysis with respect to the one patent asserted in those actions, U.S. Patent Number 9,128,981. Id. at *4-7.

A copy of the Memorandum Order is attached.

A notable practice point is that the Court noted in its Memorandum Order that it “continues to find its experimental procedure of addressing multiple Section 101 motions from separate cases in one hearing is an efficient use of judicial resources and a beneficial tool for resolving the merits of Section 101 motions.” Id. at *1.

By Memorandum Order entered by The Honorable Colm F. Connolly in CareDx, Inc. v. Natera, Inc., Civil Action No. 19-662-CFC (D.Del. January 24, 2020), the Court adopted the Report and Recommendation of Magistrate Judge Christopher J. Burke recommending that Judge Connolly deny in part and grant part Defendant’s motion to dismiss Plaintiff’s complaint. Defendant filed objections to the Magistrate Judge’s recommendations that Judge Connolly deny the motion to dismiss with respect to Counts One and Three of Plaintiff’s complaint. Id. at *1. Count One purports to allege false advertising under the Lanham Act, 15 U.S.C. § 1125(a) and Count Three purports to allege unfair competition. Id.

 Defendant made two objections in response to the recommendation to deny the motion to dismiss with respect to Count One. First, Defendant asserted that the Magistrate Judge made an error in concluding that the allegations of potential future harm are sufficient to establish the proximate cause element of the Lanham Act claim. Id. at *2. Second, Defendant asserted that the Magistrate Judge made an error in concluding that the complaint “alleges facts that would show that the at-issue statements are false and misleading.” Id. Upon review and evaluation, Judge Connolly was not persuaded by any of Defendant’s arguments that the Magistrate Judge erred in denying Defendant’s motion to dismiss Count I. Id. at *2-5.

With respect to Count Three, Defendant asserted that the Magistrate Judge made an error in not dismissing the unfair competition claim “because the [c]omplaint failed to allege with sufficient particularity ‘a reasonable expectation of entering a valid business relationship, with which the defendant wrongly interferes, and thereby defeats plaintiff’s legitimate expectancy and causes him harm.’” Id. at *5. Upon review and evaluation, Judge Connolly agreed with the Magistrate Judge that the allegations in Count Three of the complaint provided adequate notice to Defendant of the unfair competition claim even though those allegations “could have been more factually robust.” Id.

Accordingly, the Court denied Defendant’s motion to dismiss with respect to Counts One and Three of the complaint.

A copy of the Memorandum Order is attached.

By Memorandum Order entered by The Honorable Leonard P. Stark in Cirba Inc. d/b/a Densify) et al. v. VMware, Inc., Civil Action No. 19-742-LPS (D.Del. January 7, 2020), the Court granted Defendant VMware’s motion to exclude certain testimony of Plaintiffs’ trademark expert, Vincent Mayfield. While the Court rejected VMware’s argument that Mr. Mayfield’s opinions constitute improper expert testimony, it agreed with VMware that Mr. Mayfield lacked the qualifications to offer his expert opinions. Id. at *4.

In so ruling, the Court noted that Mr. Mayfield’s qualifications rested largely on his significant experience as an IT professional. Id. The Court explained that, while practical experience could be grounds for qualifying an expert under Daubert, the “qualifying expert must provide some reliable methodology or principles by which he formed his opinion. Mr. Mayfield has not done so here.” Id. at *4-5.

A copy of the Memorandum Order is attached.

The takeaway is that, in any expert report, a party’s expert should sufficiently set forth his or her qualifications (education, experience, etc.) and the reliable methodology and/or principles on which his or her opinions are based. The more widely accepted and tested the methodology and/or principles are in the particular subject matter, the more difficult any Daubert challenge.