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.

By Memorandum Opinion entered by The Honorable Leonard P. Stark in Citrix Systems, Inc. v. Workspot, Inc., Civil Action No. 18-588-LPS (D.Del. August 16, 2019), the Court denied the motion for preliminary injunction sought by plaintiff, Citrix Systems, Inc. In its complaint, Citrix asserted claims of infringement of U.S. Patent Nos. 7,949,677 (“the ‘677 patent”), 8,341,732 (“the ‘732 patent”), 7,594,018 (“the ‘018 patent”), and 8,135,843 (“the ‘843 patent”). Id. at *1. Citrix moved for a preliminary injunction seeking to enjoin defendant Workspot from infringement of the asserted patents and making false and misleading statements about Citrix’s products. Id.

In denying Citrix’s motion for preliminary injunction, the Court noted that “Federal Circuit law provides the standard for granting an application for a preliminary injunction of patent infringement, and Third Circuit law provides the standard for a preliminary injunction of false and misleading statements.” Id. A plaintiff seeking a preliminary injunction must show that (1) it is likely to succeed on the merits; (2) it is likely to suffer irreparable harm if preliminary relief is not granted; (3) the balance of equities weigh in its favor; and (4) an injunction is in the public interest. Id. at *1-2.

After analyzing the various factors in the context of Citrix’s case, the Court concluded that Citrix could not show that it was likely to succeed on the merits of its claims or that it would suffer irreparable harm if the preliminary injunction was not granted. Id. at *2-10. In its analysis, the Court found that Workspot had raised a substantial question as to Citrix’s infringement theories of the ’677 and ‘843 patents. Id. at *3-5. The Court also found that Citrix failed to demonstrate a likelihood of success on the merits of its false and misleading statements claim. Id. at *5-8. The Court also found that Citrix failed to show a causal nexus between the alleged false statements and the purported harm and, thus, could not meet its burden with respect to irreparable harm. Id. at *9-10.

A copy of the Memorandum Opinion is attached.

As a matter of general observation, motions for preliminary injunction are rarely granted in the District of Delaware. Experienced Delaware counsel should be able to discuss and evaluate the probability of success of motions for preliminary injunction and other possible alternatives and strategies with clients and out of state counsel.

The Honorable Sherry R. Fallon in Broadsoft, Inc. v. Callwave Communication, LLC, Civil Action No. 13-711-RGA (D.Del. August 8, 2019) issued a Magistrate Judge Opinion, pursuant to 28 U.S.C. § 636(b)(1)(A), Federal Rule of Civil Procedure 72(a) and District of Delaware Local Rule 72(a)(2), denying Plaintiff Broadsoft, Inc.’s motion to declare the case exceptional under 35 U.S.C. §285. “Section 285 provides that ‘[t]he court in exceptional cases may award reasonable attorney fees to the prevailing party’” 35 U.S.C. § 285.

Broadsoft was the prevailing party in the action, wherein it asserted claims for declaratory judgment of non-infringement and invalidity of four of Defendant Callawave’s patents, including U.S. Patent Numbers 8,351,591 (“the ‘591 patent”) and 7,822,188 (“the ‘188 patent”). Id. at *1. The Court entered judgment in favor of Broadsoft in the action after granting Broadsoft’s motion for judgment on the pleadings based on patent ineligibility under 35 U.S.C. § 101 and granting Broadsoft’s motion for summary judgment of invalidity of the ‘591 and ‘188 patents. Id. at *2. Thus, the only question to be decided by the Court with respect to Broadsoft’s motion seeking attorney fees under § 285 was whether the case was “exceptional.” Id. at *3.

When considering whether a case is exceptional, district courts exercise their discretion on a case-by-case basis and should consider the totality of the circumstances. Id. As the U.S. Supreme Court set forth in Octane Fitness, cases that merit an award of attorney fees include “the rare case in which a party’s unreasonable conduct – while not necessarily independently sanctionable – is nonetheless so ‘exceptional’ as to justify an award of attorney fees” or “a case presenting either subjective bad faith or exceptionally meritless claims.” Id. (citations omitted).

After analyzing the totality of the circumstances in the instant action, the Court concluded that neither Callwave’s substantive positions in the case nor its litigation conduct were so unreasonable or vexatious to warrant finding the case exceptional and awarding attorneys’ fees pursuant to §285. Id. at *3-13. Thus, the Court denied Broadsoft’s motion seeking to declare the case exceptional under 35 U.S.C. §285.

A copy of the Memorandum Opinion  is attached.

This ruling is another reminder for counsel and their clients that declaring a case “exceptional” and “award[ing] attorneys’ fees under §285 is not intended to be an ‘ordinary thing in patent cases,’ and that it should be limited to circumstances in which it is necessary to prevent a ‘gross injustice’ or bad faith litigation.” Id. at *13 (citations omitted).

By Memorandum Order issued by The Honorable Richard G. Andrews in Compagnie Des Grands Hotels d’Afrique S.A. v. Starman Hotel Holdings LLC, Civil Action No. 18-00654 RGA (D.Del. July 26, 2019), the Court granted the motion of Defendant for issuance of a letter request to obtain evidence in the United Kingdom of Great Britain and Northern Ireland through the Hague Convention. Plaintiff opposed the motion claiming the evidence sought was irrelevant to the alter ego theory at issue in the matter, more easily obtained from Plaintiff, and that the request was a collateral attack on the International Chamber of Commerce arbitration award. Id. at *1 and 5.

In granting Defendant’s motion for the letter request, the Court noted that (1) both the United States and the United Kingdom are signatories of the Hague Convention; (2) courts “routinely issue such letters where the movant makes a reasonable showing that the evidence sought may be material or may lead to the discovery of material evidence; and (3) it was reasonable to conclude that documents possessed by Travelodge, the Guarantor, would contain information relevant to the alter ego issue – the potential undercapitalization of Woodman. Id. at *1-6.

A copy of the Memorandum Order, which contains a concise and helpful summary of the standards for the issuance of letters of request to obtain evidence in foreign countries that are signatories to the Hague Convention, is attached.

By Memorandum Opinion entered by The Honorable Richard G. Andrews in Viatech Technologies, Inc. v. Microsoft Corp., Civil Action No. 17-570-RGA (D.Del. July 18, 2019), the Court granted Defendant’s motion to dismiss in part by dismissing Plaintiff’s claims of direct and indirect infringement asserted in Count II of the Second Amended Complaint under the Kessler doctrine. The Kessler doctrine fills the gap between the doctrines of claim preclusion and issue preclusion and intends to prevent an adjudged non-infringer from repeated harassment for continuing its business as usual post-final judgment in a patent action. Id. at *5.

In Brain Life, LLC v. Elekta Inc., 746 F.3d 1045, 1055 (Fed. Cir. 2014), the Federal Circuit held as follows:

The principle that, when an alleged infringer prevails in demonstrating noninfringement, the specific accused device(s) acquires the “status” of a noninfringing device vis-à-vis the asserted patent claims is an essential fact of a patent infringement claim. The status of an infringer is derived from the status imposed on the thing that is embraced by the asserted patent claims. And, when the devices in the first and second suits are “essentially the same,” the “new” product(s) also acquires the status of a noninfringing device vis-à-vis the same accusing party or its privies.

“Thus, where a second suit accuses the same or “essentially the same” product of infringing acts post-final judgment in the first suit, the Kessler doctrine will prevent the suit.” Viatech at *5. Given that Count II of Plaintiff’s Second Amended Complaint accused the Software Protection Platform (SPP) and Office Software Protection Platform (OSPP) when used to protect Windows or Office products of infringement, the Court determined that these products were accused in the previous suit between the parties where the SPP and OSPP software in Windows and Office products was determined not to infringe the asserted claims of U.S. Patent No. 6,920,567 (“the ‘567 patent”). Id. at *11-12. Accordingly, in granting Defendant’s motion to dismiss in part, the Court ruled that the dismissal of Count II of Plaintiff’s Second Amended Complaint fell squarely within the Kessler doctrine. Id. at *12-13.

A copy of the Memorandum Opinion is attached.

By Memorandum Opinion entered by The Honorable Richard G. Andrews in CFL Technologies LLC v. Osram Sylvania, Inc. et al., Civil Action No. 18-1445-RGA (D.Del. July 8, 2019), the Court granted Defendants’ motion to dismiss Plaintiff’s claims of willful infringement of U.S. Patent Numbers 5,510,680 (“the ‘680 patent”), 5,510,681 (“the ‘681 patent”), 6,172,464 (“the ‘464 patent”), and 5,757,140 (“the ‘140 patent”). In granting the motion, the Court explained that, in order to “state a claim of willful infringement, the patentee must allege facts in the pleading plausibly demonstrating that the accused infringer had committed subjective willful infringement as of the date of the filing of the willful infringement claim.” Id. at *16.

In their motion to dismiss Plaintiff’s willfulness claims, Defendants argued that they could not have acted egregiously when they had “(1) knowledge that the ’680, ‘681, and ‘464 patents had been repeatedly found unenforceable by multiple federal courts, including a case where OSRAM was [a] party, and (2) a good-faith belief that the ‘140 and ‘213 patents [were] also likely unenforceable for the same reasons.” Id. The Court agreed with Defendants finding that, “[g]iven the factual background, Plaintiff’s allegations that Defendants knew the patents-in-suit were enforceable are not plausible.” Id. Thus, the Court granted Defendants’ motion to dismiss Plaintiff’s willfulness claims.

A copy of the Memorandum Opinion is attached.

By Memorandum Opinion entered by The Honorable Colm F. Connolly in HIP, Inc. v. Hormel Foods Corp. et al., Civil Action No. 18-1615-CFC (D.Del. June 24, 2019), the Court granted Defendants Motion for Summary Judgment of Indefiniteness and declaring U.S. Patent Number 9,510,610 (“the ‘610 patent”) invalid under 35 U.S.C. § 112. The ‘610 patent is directed to a method of producing a pre-cooked sliced bacon product on an industrial scale. Id. at *5. “A preamble to claims 1 and 3 recites ‘[a] process . . . to produce a pre-cooked sliced bacon product resembling a pan-fried bacon product.’” Id.

In support of their motion for summary judgment, Defendants contended that the “resembling a pan-fried bacon product” language rendered the ‘610 patent indefinite. Id. In granting Defendants’ motion for summary judgment and declaring the ‘610 patent invalid, the Court initially noted that the parties stipulated to the Court making subsidiary factual findings and weighing the testimony of their respective experts in deciding whether, as a matter of law, the ‘610 patent was indefinite. Id. at *3. The Court determined that neither the claims nor the written description of the ‘610 patent clarified the scope of the term “resembling a pan-fried bacon product” or provided any objective criteria to identify or measure the distinguishing features of pan-fried bacon. Id. at *5-13. On the contrary, the Court determined that the term “resembling a pan-fried bacon product” is “purely subjective and depends on the unpredictable vagaries of any one person’s opinion.” Id. at *13. Accordingly, the Court held that the ‘610 patent fails to meet the definiteness requirement of 35 U.S.C. § 112 and is invalid. Id.

A copy of the Memorandum Opinion is attached.

By Memorandum Order entered by The Honorable Richard G. Andrews in TQ Delta, LLC v. 2Wire, Inc., Civil Action No. 13-1835-RGA (D.Del. June 24, 2019), the Court denied Plaintiff’s Motion for Reconsideration of the Court’s April 25, 2019 Order regarding Claim 17 of ‘881 Patent. In its motion for reargument/reconsideration, Plaintiff claimed that the Court made two clear errors of law in its prior Order. First, Plaintiff claimed that the Court made a clear error of law by deciding to not construe the claim term “to reduce a difference in latency.” Id. at *1. Second, Plaintiff claimed that the Court made a clear error of law when it decided that “To the extent Defendant wants to argue that infringement of the claim element is not shown because there is no evidence of an actual reduction in the difference of configuration latency, or that the specification does not provide written description for the term ‘reduce,’ it may do so.” Id. at *2. Ultimately, in denying the motion for reconsideration, the Court found that both underlying issues were questions of fact for the jury to decide. Id. at *2-3.

A copy of the Memorandum Order is attached.