By Memorandum Opinion entered by The Honorable Maryellen Noreika in Viretem Ventures, LLC v. YouTube, LLC and Google, LLC, Civil Action No. 18-917 – MN (D.Del. May 16, 2019), the Court denied the motion of Defendants YouTube, LLC (“YouTube”) and Google LLC(“Google”) to transfer venue of the patent infringement action asserted by Plaintiff Virentem Ventures LLC (“Plaintiff”) to the Northern District of California pursuant to 28 U.S.C. § 1404(a). Plaintiff, YouTube and Google are all Delaware corporations with their principal places of business in California. Id. at *1.

After analyzing and weighing the twelve Jumara factors, the Court determined that six of the factors are neutral, three weigh to varying degrees against transfer and three weigh in favor of transfer. Id. at *3-11. Of particular note in the Court’s analysis is that it rejected Defendants’ argument that Plaintiff’s choice of forum should be afforded minimal weight and less deference “because Plaintiff chose to litigate in the forum where it is incorporated, rather than the forum where its principal place of business is located.” Id. at *3-4. The Court followed the balancing principles set forth in Shutte v. Armco Steel Corp., 431 F.2d 22, 25 (3d Cir. 1970) and gave the Plaintiff’s forum choice paramount consideration in balancing the Jumara factors. Ultimately, the Court decided that Defendants failed to demonstrate that the Jumara factors weigh strongly in favor of transfer.

A copy of the Court’s Memorandum Opinion is attached.

By Memorandum Order entered by The Honorable Richard G. Andrews in M. Denise Tolliver v. Highmark BCBSD, Inc., Civil Action No. 18-797-RGA (D.Del. May 13, 2019), the Court denied Plaintiff’s motion for reconsideration of the Court’s previous order denying remand to state court. In denying the motion, the Court explained that “[t]he purpose of a motion for reconsideration is to ‘correct manifest errors of law or fact or to present newly discovered evidence. A proper Rule 59 (e) motion must rely on one of three grounds: (1) an intervening change in controlling law; (2) the availability of new evidence; or (3) the need to correct a clear error of law or prevent manifest injustice. A motion for reconsideration is not an appropriate vehicle to reargue issues that the court has already considered and decided.’” Id. at *1 (internal citations omitted).

Plaintiff’s motion did not allege any intervening change in controlling law, the availability of new evidence as to timeliness or waiver of removal, or a clear error of law in the Court’s previous decision denying the remand. Id. at *1-2. Instead, Plaintiff’s motion focused on the state court’s dismissal of her state law claims which were irrelevant to the merits of removal to federal court. Id. Thus, Plaintiff’s motion failed to meet the standard for reconsideration of the remand order. Id.

A copy of the Memorandum Order is attached.

By Memorandum Opinion entered by The Honorable Colm F. Connolly in Ultravision Technologies, LLC v. RMG Networks Holding Corp., Civil Action No. 18-1333-CFC (D.Del. May 6, 2019), the Court granted Defendant’s motion to transfer the patent infringement action to the United States District Court for the Northern District of Texas pursuant to 28 U.S.C. § 1404(a). In so ruling, the Court determined that six of the twelve Jumara factors favored transfer, two factors weighed against transfer, and four factors were neutral. Id. at *3-7.

A copy of the Memorandum Opinion is attached.

By Memorandum Opinion entered by The Honorable Maryellen Noreika in Agrofresh Inc. v. Hazel Technologies, Inc., Civil Action No. 18-1486 –MN (D.Del. April 25, 2019), the Court denied Defendant’s motion to dismiss Plaintiff’s claim of direct infringement of U.S. Patent Nos. 6,017,849 (“the ‘849 Patent”) and 6,313,068 (“the ‘068 Patent”) after finding that Plaintiff’s complaint identified Defendant’s accused product, the specific claims in the asserted patents that Defendant’s accused product allegedly infringed, and how the accused product purportedly infringed those claims. Following the Federal Circuit’s prior decision in Disc Disease Sols. Inc. v. VGH Sols., Inc., 888 F.3d 1256 (Fed. Cir. 2018), and a similar conclusion reached in Primos Tech., Inc. v. Samsung Elec. Co., No. 18307-RGA, 2018 WL 5630585, *4 (D.Del. Oct. 31, 2018), the Court concluded that Plaintiff’s allegations were sufficient under the plausibility standard of Iqbal/Twombly. Id. at *3-4.

A copy of the Memorandum Opinion is attached.

By Memorandum Order entered by The Honorable Richard G. Andrews in Express Mobile, Inc. v. Liquid Web, LLC, Civil Action No. 18-1177-RGA (D.Del. April 18, 2019), the Court granted Defendants’ motions to dismiss as to past damages and denied their motions as to direct infringement.

With respect to past damages, Defendants argued that Plaintiff failed to plead compliance with the marking statute and that was a basis to dismiss Plaintiff’s claims to the extent that they sought past damages. Id. at *3. Importantly, a patentee who makes or sells a patented article must mark the articles to recover past damages pursuant to 35 U.S.C. §287(a). Id. The burden is on the patentee to plead compliance with §287(a). Id.

In this action, Plaintiff alleged that Defendants infringed U.S. Patent Nos. 6,546,397, 7,594,168, 9,471,287 and 9,928,044 through their use of certain website building tools. In response to Defendants’ motion dismiss as to past damages, Plaintiff alleged that there was no evidence that there was anything for it to mark, but did not argue that it pled compliance with the marking statute, §287(a). Id. at *3-4.

In considering the motions to dismiss, the Court noted that, at the motion to dismiss stage, it is only concerned with the sufficiency of the claims. Id. at *4. It explained that “[a] claim for past damages requires pleading compliance with the marking statute – even when compliance is achieved, factually, by doing nothing at all.” Id. Given that Plaintiff did not plead compliance with the marking statute, it failed to state a claim for past damages. Id.

A copy of the Memorandum Order is attached.

By Memorandum Order entered by The Honorable Colm J. Connolly in F’Real Foods, LLC et al. v. Hamilton Beach Brands, Inc. et al., Civil Action No. 16-41-CFC (D.Del. April 12, 2019), the Court denied Defendants’ motion to exclude the testimony of Plaintiffs’ damages expert, Dr. Michael P. Akemann, on lost profits and reasonable royalty. Defendants argued that “Dr. Akemann’s lost profits opinion [was] based on assumptions that are purely speculative and contrary to record evidence” and that “his reasonable royalty opinion is unreliable and must be excluded because he fail[ed] to properly apportion value between the patented and unpatented features of the accused products.” Id. at *1. Defendants did not challenge Dr. Akemann’s knowledge, training, expertise, or the facts underlying his opinions. Id. at *1-2. Ultimately, the Court found that Defendants’ challenges went to the weight of the expert’s opinions and not to their admissibility. Id. at *2. Thus, Defendants’ motion to exclude the expert testimony on lost profits and reasonable royalty was denied. Id. at *3.

A copy of the Memorandum Opinion is attached.

By Memorandum Order entered by The Honorable Richard G. Andrews in Bio-Rad Laboratories, Inc. v. 10X Genomics, Inc., Civil Action No. 18-1679-RGA (D.Del. April 8, 2019), the Court denied Defendant’s motion to dismiss for lack of patent eligibility under 35 U.S.C. § 101. The patents in-suit, U.S. Patent Nos. 9,562,837 (“the ‘837 patent”) and 9,896,722 (“the ‘722 patent”), claim technology related to handling samples in a way that reduces sample contamination and sample loss. Id. at *1. In its motion, Defendant asserted that the patents in-suit “are directed to ‘the natural phenomenon of allowing two different liquids of different densities to separate from each other.’” Id. at *5. Plaintiff responded that the patents are not that simple. Rather, the “the patents are directed to the patent-eligible result of a method and apparatus to reduce sample contamination when handling samples.” Id. The Court agreed with Plaintiff and denied the motion to dismiss. Id. at *5-7.

A copy of the Memorandum Order is attached.

By Memorandum Opinion entered by The Honorable Leonard P. Stark in 3 Shape A/S v. Align Technology, Inc., the Court denied Defendant’s motion to dismiss Plaintiff’s claims for direct, indirect and willful infringement pursuant to Federal Rule of Civil Procedure 12(b)(6). In short, Defendant argued that Plaintiff’s pre-suit induced infringement and contributory and willful infringement claims failed to meet the pleading standards set forth in Ashcroft v. Iqbal, 556 U.S. 662 (2009), and Bell Atl. Corp. v. Twombly, 550 U.S. 544 (2007). Id. at *1. The Court disagreed finding that the Complaint sufficiently pled claims for direct, contributory and willful infringement. Id. at *2-7.

A copy of the Memorandum Opinion is attached.

By Memorandum Order entered by The Honorable Leonard P. Stark in The Gillette Company LLC v. Dollar Shave Club, Inc., et al., Civil Action No. 15-1158-LPS-CJB (D.Del. March 21, 2019), the Court, among other things, denied Plaintiff’s motion seeking summary judgment as to the date of conception for the ‘513 patent. Plaintiff sought summary judgment that the invention of the ‘513 Patent was conceived in February 1998, which would have been before the prior art in the Bray Patent. Id. at *1-2.

After considering Plaintiff’s motion, the Court determined that there was a genuine dispute of material fact as to whether conception occurred in February 1998 or not until Spring 1999. Id. at *2-3. The Court noted that a reasonable juror could find that conception of the claims of the ‘513 Patent did not occur in February 1998 because of several reasons and concluded that what the inventors knew and appreciated in February 1998 was a material fact to be determined by the trier of fact. Id. at *3. Thus, plaintiff’s motion for summary judgment on the date of conception was denied. Id.

A copy of the Memorandum Order is attached.

By Memorandum Opinion entered by the Honorable Maryellen Noreika in Cignex Datamatics, Inc. v. Lam Research Corp., Civil Action No. 17-320-MN (D.Del. March 11, 2019), the Court denied the motion of defendant Lam Research Corporation seeking a finding of spoliation and entry of sanctions against plaintiff Cignex Datamatics, Inc. for failure to preserve the emails of certain employees of plaintiff that worked on the software development project that was the subject of the breach of contract litigation between plaintiff and defendant.

Upon evaluation of the motion, the Court found that, since the issue of spoliation turned on plaintiff’s loss of ESI, Federal Rule of Civil Procedure 37(e) governed the analysis. Id. at*7. The Court did find that plaintiff should have preserved at least some of the email accounts identified by defendant but failed to take reasonable steps to do so after litigation was reasonably anticipated. Id. As to the third threshold issue of Rule 37(e), the Court found that defendant did not make a showing that the lost emails could not be restored or replaced through additional discovery. Id. at *8. The Court also found that defendant did not make a sufficient showing to invoke the intentional and willful spoliation analysis of Rule 37(e)(2); rather, it was appropriate to proceed under the negligence spoliation analysis of Rule 37(e)(1). Id. at *9. The Court thereafter found that there was not a sufficient showing on the record for the Court to find that defendant was prejudiced by the loss of the ESI and, thus, imposing a curative measure under Rule 37(e)(1) would be inappropriate. Id. at *10-11.

A copy of the Memorandum Opinion is attached.