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.

By Memorandum entered by The Honorable Richard G. Andrews in M2M Solutions LLC et al. v. Sierra Wireless America, Inc. et al., Civil Action No. 14-1102-RGA (D.Del. March 31, 2021), the Court granted Defendants’ motion for summary judgment of noninfringement of U.S. Patent No. 8,648,717 (“the ‘717 Patent”) with respect to the “exclusive set of numbers” limitation and also granted Defendants’ motion for summary judgment with respect to collateral estoppel and noninfringement under the doctrine of equivalents.  In so ruling, the Court adopted in major part the Report and Recommendation of the Magistrate Judge.  Id. at *2-8.

A copy of the Memorandum is attached.

By Memorandum Opinion entered by The Honorable Leonard P. Stark in Stragent, LLC v. BMW of North America, LLC et al., Civil Action No. 20-510-LPS (D.Del. March 25, 2021) (consolidated), the Court denied Defendants’ motions to dismiss Plaintiff’s complaints asserting infringement of U.S. Patent Nos. 9,705,765 (“the ‘765 patent”), 10,002,036 (“the ‘036 patent”), 10,031,790 (“the ‘790 patent”) and 10,248,477 (“the ‘477 patent”) from the use of the AUTOSTAR communication technology in Defendants’ vehicles.

Defendants’ motions to dismiss Plaintiff’s complaints under Federal Rule of Civil Procedure 12(b)(6) were based on three asserted grounds:  (1) claim preclusion based on the dismissals with prejudice entered by the District Court in the Eastern District of Texas in a prior action that Plaintiff brought against some of the Defendants asserting infringement of U.S. Patent Nos. 8,209,705 (“the ‘705 patent”) and 8,566,843 (“the ‘843 patent”) (“Stragent II”); (2) issue preclusion based on final written decisions issued by the Patent Trial and Appeals Board (“PTAB”) in inter partes reviews concerning certain patents; and (3) Plaintiff’s alleged violation of 37 C.F.R. § 42.73(d)(3) which allegedly led to Plaintiff wrongfully obtaining three of the four patents asserted in the action.  Id. at *1-4.  In denying Defendants’ motion to dismiss, the Court found that claim preclusion did not apply because Defendants failed to meet their burden to prove that the claims asserted in the instant action were the same as those alleged in Stragent II.  Id. at *6-13.  The Court also found that issue preclusion did not apply because the inter partes reviews before the PTAB did not adjudicate the identical issues that are presented in the instant action.  Id. at *13-14.  Lastly, the Court found that 37 C.F.R. § 42.73(d)(3) did not have preclusive effect under the circumstances of the instant action.  Id. at *4.

A copy of the Memorandum Opinion is attached.

By Memorandum Opinion entered by The Honorable Leonard P. Stark in Diebold Nixdorf, Inc. et al. v. Hyosung TNS, Inc. et al., Civil Action No. 19-1695-LPS (D.Del. March 4, 2021), the Court granted in part and denied in part Plaintiffs’ motion to dismiss Defendants’ counterclaim, pursuant to Federal Rule of Civil Procedure 12(b)(6), and motion to strike Defendants’ affirmative defense of inequitable conduct, pursuant to Federal Rule of Civil Procedure 12(f), in a patent infringement action.

The counterclaim and affirmative defense of inequitable conduct at issue related to U.S. Patent No. 6,082,616 (“the ‘616 patent”) and were based on: (1) failure by a list of named inventors to disclose to the United States Patent Office (“the PTO”) the 1064i automated teller machine (“ATM”); and (2) failure by two named inventors of the ‘616 patent to disclose to the PTO four prior art patents.  Id. at *2.  After evaluation of the motions, the Court decided to allow the Defendants’ counterclaim and affirmative defense of inequitable conduct to proceed only on the theories based on the non-disclosure of the 1064i ATM and one of the four prior art patents asserted, U.S. Patent No. 5,788,348 (“the ‘348 patent”).  Id. at *2-9.

A copy of the Memorandum Opinion is attached.

By Memorandum Opinion entered in Conformis, Inc. v. Medacta USA, Inc., Civil Action No. 19-1528-RGA (D.Del. March 4, 2021), The Honorable Richard G. Andrews construed the remaining terms in dispute in the four (4) patents-in-suit, U.S. Patent Nos. 8,377,129 (“the ‘129 patent”), 8,460,304 (“the ‘304 patent”), 9,186,161 (“the ‘161 patent”), and 9,295,482 (“the ‘482 patent”), in an infringement action involving patents on surgical tools and implants used in joint replacement surgeries and joint arthroplasties.

A complete copy of the Memorandum Opinion is attached.

 

By Memorandum entered by The Honorable Richard G. Andrews in Viatech Technologies, Inc. v. Microsoft Corp., Civil Action No. 17-570-RGA (D.Del. February 19, 2021), the Court granted Defendant’s motion to strike barring Plaintiff from asserting, and its expert from opining on (1) any theory under the doctrine of equivalents (“DOE”) other than for the terms “user system” and “range of tolerance” and (2) any theory of infringement relying on the graphical user interface (“GUI”) of third party products or generated by server software.  The Court granted Defendant’s motion to strike after finding that Plaintiff’s stricken theories under the DOE and Plaintiff’s GUI literal infringement theory were not timely disclosed in its infringement contentions and during fact discovery; rather, these new infringement theories were disclosed for the first time in Plaintiff’s opening expert report.  Id. at *3-9.  The Court found that the Pennypack factors favored exclusion of the portions of Plaintiff’s expert report that related to the untimely disclosed infringement theories.  Id.

In its Memorandum, the Court noted that “[n]o court likes to say that a party acted in bad faith.”  Id. at *9.  That being said, the Court went on to note that it did “not understand how Plaintiff’s experienced lawyers could have thought that springing clearly new theories on a defendant in opening expert reports was in compliance with the scheduling order, the Rules, or expected standards of practice.”  Id.  Although the Court stopped short of finding that Plaintiff acted in bad faith, the Court noted that “[Plaintiff’s] actions approach that standard.”  Id.

Certainly a situation wise practitioners want to avoid in the future by disclosing all infringement theories in a timely manner.  Copies of the Memorandum and Order are attached.

Due to the pandemic, the District Court entered an Order today cancelling all criminal and civil jury trials in the United States District Court for the District of Delaware until on or after April 5, 2021.  Each presiding judge has the discretion to order a jury trial in an emergency or urgent situation.  A copy of the Order is attached.

By Memorandum Order entered by The Honorable Leonard P. Stark in 3Shape A/S v. Align Technology, Inc., Civil Action No. 18-886-LPS (D.Del. February 1, 2021), the Court overruled the objections of Plaintiff 3Shape contending that Judge Hall misapplied the Pennypack factors when she, by Oral Order dated January 9, 2021, denied 3Shape’s requests to (i) strike two paragraphs of Dr. Singh’s expert report and (ii) preclude Defendant Align’s use of two documents at trial.

In overruling 3Shape’s objections and adopting Judge Hall’s Order, the Court found that “Judge Hall appropriately applied the Pennypack factors” and noted that “[t]here is nothing close to an abuse of discretion here.”  Id. at *1.  The Court further explained that Align did not raise a previously-undisclosed invalidity theory based on the documents at issue and any potential prejudice could be cured by inspection of source code, deposition of experts and rebuttal expert reports.  Id. at *2.  The Court further noted that none of the forgoing actions to cure would be particularly burdensome and would not disrupt trial which has yet to be scheduled.  Id.

A takeaway the Court provided litigants going forward is that, “[w]hen a decision of a magistrate judge is going to be reviewed under a deferential abuse of discretion standard – and particularly when it has been the subject of briefing consisting of short letter briefs – parties should carefully consider whether it is a wise use of resources (theirs, opposing counsel’s and the Court’s) to file 10-page briefs seeking a district judge’s review.”

A copy of the Memorandum Order is attached.

 

By Memorandum Order and Amended Judgment by The Honorable Maryellen Noreika in Cignex Datamatics, Inc. v. Lam Research Corporation, Civil Action No. 17-320-MN (D.Del. January 21, 2021), the Court granted with modification Plaintiff’s motion to alter or amend the judgment by adding to the original judgment of $232,039.71 in favor of Plaintiff in the breach of contract action (1) an additional amount of pre-judgment interest in the amount of $60,564.56, calculated as simple interest based on the Delaware legal rate of 5.75% as a fixed rate at the time liability for interest began to accrue, and (2) post-judgment interest at the rate of 0.17% of the entire amount included in the amended judgment to compound annually from the date the amended judgment was entered until the judgment is paid.

In explaining how pre- and post-judgment interest are calculated in federal court contract actions in Delaware based on diversity jurisdiction, the Court explained that pre-judgment interest is awarded as a matter of right and is governed by Delaware law.  Under Delaware law, if there is no expressed contract rate, the legal rate of interest is calculated as set forth in 6 Del. C. Ann. § 2301(a) –  5% over the Federal Reserve discount rate including any surcharge as of the time from which interest is due.  Id. at *3.  The Court explained that the issue of whether prejudgment interest should be compound or simple is a matter within the Court’s discretion, although Delaware courts have traditionally disfavored compound interest.  Id.  On the other hand, awards of post-judgment interest in federal court contract actions in Delaware based on diversity jurisdiction are governed by 28 U.S.C. § 1961.  Id. at *5.  Under §1961(a) the rate of post-judgment interest is the weekly average one year constant maturity Treasury yield for the week preceding entry of the judgment and is compounded annually.  Id. at *6.  In this instance, the post-judgment interest rate was calculated at 0.17% compounded annually.  Id.  The Court explained that post-judgment interest is calculated on the entire amount included in the judgment, which includes prejudgment interest.  Id.

Copies of the Memorandum Order and Amended Judgment are attached.