By Memorandum Opinion entered by The Honorable Colm F. Connolly in Boston Scientific Corp. et al. v. Nevro Corp., Civil Action No. 18-0644-CFC (D.Del. November 25, 2019), the Court granted Defendant’s Motion to Dismiss with respect to Plaintiffs’ claims for direct infringement under 35 U.S.C. § 271(a) in Counts I through VII and IX of the Complaint. The Court also granted Defendant’s Motion to Dismiss with respect to the claims for induced and contributory infringement and the claims for enhanced damages in nine counts.

In granting Defendant’s Motion to Dismiss the claims for direct infringement in Counts I through VII and IX of the Complaint, the Court found that the allegations in those counts of Plaintiffs’ Complaint fell short of the Iqbal/Twombly pleading standard because they failed to show how the accused products plausibly read on the asserted claim elements. Id. at *5-9. Although Plaintiffs attempted to attach 144 pages of exhibits to their Complaint to show the basis for their infringement claims, the Court found that they made no attempt to connect specific components of the accused systems to elements of the asserted claims. Id. at *8. The court noted that “[a] defendant should not be required to comb through 144 pages of exhibits to understand the bases of a plaintiff’s claims, and a court should not have to parse 144 pages of exhibits to determine if they state facts sufficient to demonstrate a plaintiff’s entitlement to relief. Id. at *9.

A copy of the Memorandum Opinion is attached.

By Order entered by The Honorable Jennifer L. Hall in Pacific Biosciences of California, Inc. v. Oxford Nanopore Technologies, Inc. et al., Civil Action No. 17-275-LPS (D.Del., November 4, 2019), the Court denied Defendants’ motion to redact portions of the hearing transcript from a discovery teleconference on August 14, 2019. The Court noted that, “although there is no presumptive right of public access to discovery motions and supporting documents filed with the court, the public does have a right of access to hearing transcripts.” Id. at *1.

In denying Defendants’ motion, the Court explained that the party seeking closure of a hearing or sealing of part of the judicial record has the burden to show that the material is the kind of information that courts will protect and its disclosure would result in a “clearly defined and serious injury to the party seeking closure.” Id. In this instance, the Court found that Defendants failed to meet their burden to show that disclosure of the unredacted transcript would result in a “clearly defined and serious injury” to them. Id. at *2. The information that Defendants sought to redact did not contain trade secrets, scientific data, strategic plans or financial information and the Court found that merely stating that the proposed redactions contained discussions of documents marked “Confidential” or “Highly Confidential” was not sufficient for Defendants to meet their burden. Id.

A copy of the Order is attached.

This decision serves as a reminder of the importance the Court places in the public having access to judicial proceedings. Parties and counsel should not assume that the Court will seal information, documents and/or transcripts simply because they are marked Confidential or Highly Confidential and one or more of the parties want them sealed. The required showing to seal the information, documents and/or transcripts is necessary.

By Memorandum Order entered by The Honorable Colm F. Connolly in F’Real Foods, LLC v. Welbilt, Inc., Civil Action No. 19-1028-CFC (D.Del., October 31, 2019), the Court granted Defendant’s motion to stay the patent infringement action filed in the District of Delaware until the resolution of the parallel patent infringement filed by Plaintiff against Defendant’s business partner in the Southern District of Florida. Upon evaluation of the pertinent factors, the Court found that a stay of the District of Delaware action would (1) promote judicial economy by assuring that the issues of infringement and invalidity are not tried twice in duplicative litigation; (2) simplify the issues to be tried in the District of Delaware or entirely moot them; and (3) not cause prejudice to either party. Id. at *3-6.

A copy of the Memorandum Order is attached.

By Memorandum Order entered in Trimr, LLC v. PerfectShaker, Inc., et al., C.A. No. 18-1640-MN (D.Del., October 28, 2019), The Honorable Maryellen Noreika construed three (3) terms in dispute in the patent-in-suit, U.S. Patent No. 9,839,888 (“the ‘888 Patent”).

A complete copy of the Memorandum Order is attached.

By Memorandum Order entered by The Honorable Richard G. Andrews in TC Technology LLC v. Sprint Corp., Civil Action No. 16-153 – RGA (D.Del. October 18, 2019), the Court granted Defendants’ motion to exclude a portion of Plaintiff’s damages expert’s opinion relating to a 5% royalty rate after finding that (1) the opinion failed to analyze the comparability between the patent-in-suit and the VoIP patents; (2) the VoIP patents are no longer part of the case and, therefore, a VoIP-related damages assessment is irrelevant to the issues remaining; and (3) any evidence about the VoIP patents would only serve to confuse the issues, mislead the jury and/or waste time.

A copy of the Memorandum Order is attached.

By Order issued by Chief Judge Stark, the United States District Court for the District of Delaware announced that it is hosting its biennial District of Delaware Bench and Bar Conference on April 30 and May 1, 2020. In order to promote the Conference and facilitate the participation of as many members of the Bar as possible, the Court extended any filing or service obligations falling on April 30 or May 1, 2020 to Monday, May 4, 2020. The general extension is subject and subordinate to any subsequent order from the presiding judge in any particular matter.

A copy of the Court’s Order is attached.

By Memorandum Opinion entered by The Honorable Richard G. Andrews in Manufacturing Resources Int’l, Inc. v. Civiq Smartscapes, LLC et al., Civil Action No. 17-269-RGA (D.Del. September 30, 2019), the Court granted Plaintiff’s Motion for Leave to Supplement Its Damages Expert Opinion in the patent infringement action. Specifically, the Court permitted Plaintiff’s damages expert to: (1) supplement her previously stricken opinion relating to the calculation of lost profits without using information obtained during settlement discussions; (2) supplement her report to address other concerns of the Court relating to lost profits; and (3) supplement her report to address concerns about apportionment in her previously stricken reasonable royalty analysis. Id. at *1.

Defendants asserted that they would be unduly prejudiced if Plaintiff’s damages expert was allowed to submit the supplemental expert opinions. Id. at *2. After analyzing the five Pennypack factors under the circumstances, the Court did not find that the inclusion of the amended supplemental damages report would be unduly prejudicial to Defendants. Id. at *2-4. On the contrary, the Court noted that any perceived prejudice under the circumstances could be cured by supplemental responsive expert reports and/or by allowing defendants to conduct additional depositions. Id. at *4.

A copy of the Memorandum Opinion is attached.

By Memorandum Order entered by The Honorable Leonard P. Stark in Align Technology, Inc. v. 3Shape A/S, et al., Civil Action No. 18-1949-LPS-CJB (D.Del. September 19, 2019) the Court granted Defendants’ motion to dismiss in part and denied it in part. In doing so, the Court found that claims 1-9, 16, 17 and 21 of U.S. Patent No. 7,357,634 (the ‘634 Patent) are invalid because those claims are directed to patent-ineligible subject matter pursuant to 35 U.S.C. § 101 and do not provide an inventive concept. Id. at *1-9. The Court denied the motion with respect to claims 10-15, 18-20, 22 and 23 of the ‘634 Patent and claims 1-20 of U.S. Patent No. 9,844,420 (“the ‘420 Patent). Id.

A copy of the Memorandum Order is attached.

By Memorandum Order entered by The Honorable Richard G. Andrews in Dasso International, Inc. et al. v. Moso North America, Inc. et al., Civil Action No. 17-01574 –RGA (D.Del. September 6, 2019), the Court found that any claim of privilege asserted by Plaintiffs over emails between Plaintiffs, Plaintiffs’ counsel and individuals at HDT, the exclusive licensee of the Chinese counterpart to Plaintiffs’ U.S. Patent No. 8,709,578 (“the ‘578 Patent”), were waived and did not fall within the “common interest doctrine.” In so ruling, the Court found that, in the litigation, Plaintiffs consistently denied any official corporate relationship with HDT, emphasized that HDT was not a party to the litigation, and failed to show that Plaintiffs and HDT share an identical legal interest. Id. at *1-3. Thus, given the undisputed disclosure of the subject emails to HDT, any claim of privilege over those emails was waived. Id. at *3.

The Court also rejected Plaintiffs claim that HDT was acting as a consulting expert pursuant to Federal Rule of Civil Procedure 26(b)(4)(D). Id. at *3-4. The Court noted that, during the discovery conference, Plaintiffs’ counsel represented that communicating with HDT was the only means he had of getting factual information about Plaintiffs’ product. Id. at *4. The Court determined that such a representation indicates that HDT must be treated as an ordinary witness rather than an expert in the case. Id. Also, Plaintiffs failed to produce any evidence showing that they employed HDT as an expert in the case. Id. Accordingly, the subject emails were found to be subject to discovery. Id.

A copy of the Memorandum Order is attached.

By Memorandum Order entered by The Honorable Colm F. Connolly in Advanced Micro Devices, Inc. et al. v. MediaTek Inc. et al., Civil Action No. 19-70-CFC (D.Del. August 29, 2019), the Court granted Defendants’ motion to stay the district court patent infringement action alleging that Defendants were infringing U.S. Patent Numbers 7,633,506 (“the ‘506 patent”) and 7,796,133 (“the ‘133 patent”) pending final resolution of the United States International Trade Commission’s (“ITC”) Investigation No. 337-TA-1044. Defendants are also parties to the ITC investigation. The ITC issued a notice, on August 22, 2018, that announced that the investigation was terminated and that the ITC had “determined to affirm” an Administrative Law Judge’s final Initial Determination that Defendants infringe the ‘506 patent and do not infringe the ‘133 patent. Id. at*1-2. Defendants appealed the ITC’s determination that Defendants infringe the ‘506 patent to the Federal Circuit and, thereafter, filed a motion to stay the district court case “until the final resolution” of Investigation No. 337-TA-1044. Id. at *2.

Upon consideration, the Court decided to exercise its discretion and grant Defendants’ motion to stay. Id. at *4-7. In doing so, the Court determined that a stay would (1) likely simplify the issues in question and trial of the case; (2) promote judicial economy and minimize burdening third parties; (3) not cause undue delay since discovery has not begun, no trial date has been set and there is no scheduling order in place; and (4) not cause undue prejudice to Defendants. Id.

A copy of the Memorandum Opinion is attached.