By Memorandum Opinion entered by The Honorable Leonard P. Stark in Fairchild Semiconductor Corp. et al. v. Power Integrations, Inc., C.A. No. 12-540-LPS (D.Del. March 16, 2018), the Court denied Defendant Power Integrations, Inc.’s motion for entry of final judgment pursuant to Rule 58 of the Federal Rules of Civil Procedure as to induced infringement of its U.S. Patent No. 7,995,359 (“the ‘359 patent”) by Plaintiffs Fairchild Semiconductor Corporation and Fairchild (Taiwan) Corporation (collectively, “Fairchild”) and ordered a new trial on the issues of induced infringement and damages for that infringement. The Court did so after concluding that the induced infringement jury instruction that it gave the jury during the trial constituted plain error, was a miscarriage of justice and the only option left was to order a new trial on induced infringement pursuant to the Court’s inherent authority. See id. at *11-12.

A copy of the Memorandum Opinion is attached.

By Memorandum Opinion entered by The Honorable Gregory M. Sleet in Green Mountain Glass LLC & Culchrome LLC v. Saint-Gobain Containers, Inc. d/b/a Veralla North America, Civil Action No. 14-392 (D.Del. March 8, 2018), the Court, subsequent to a five-day jury trial after which the jury returned a verdict in favor of Plaintiffs on the issue of infringement with respect to all claims of U.S. Patent No. 5,718,737 (“the ‘737 Patent”) and willful infringement of certain claims of the ‘737 patent and after considering the entire record in the case, the substantial evidence in the record, the parties’ post-trial submissions, and the applicable law, decided to deny Defendant’s motion for judgment as a matter of law and all other motions besides Plaintiffs’ motion for prejudgment interest.

A copy of the Memorandum Opinion is attached.

By Memorandum Opinion entered by The Honorable Leonard P. Stark in American Axle & Mfg., Inc. v. Neapco Holdings LLC et al., Civil Action No. 15-1168-LPS (D.Del. February 27, 2018), the Court granted Defendants’ Motion for Summary Judgment of Invalidity of U.S. Patent No. 7,774,911 (“the ‘911 patent”) after finding that it was directed to patent ineligible subject matter under 35 U.S.C. §101.

The ‘911 patent relates generally to shaft assemblies for transmitting rotary power in a driveline and more specifically to a method for attenuating driveline vibrations transmitted through a shaft assembly. Id. at *1-2. Many of the prior art liners attenuated the shell mode vibrations but did not also attenuate bending or torsion mode vibrations. Id. at *2. “The ‘911 patent purports to provide ‘an improved method for damping various types of vibrations in a hollow shaft,’ which facilitates the damping of shell mode vibration as well as bending mode vibration and/or torsion mode vibration.” Id.

In applying the two-part framework of the Alice test to the ’911 patent, the Court agreed with Defendants that (1) the claimed methods are simply the application of laws of nature, Hooke’s law, with the result of friction damping; and (2) the claims do not contain an inventive concept. Id. at *9-16. Thus, the Court found that the asserted claims of the ‘911 patent are not patent-eligible under 35 U.S.C. §101. Id. at *15.

A copy of the Memorandum Opinion is attached.

The takeaway is that drafters of patents for processes claiming patent ineligible subject matter – laws of nature, physical phenomena, and abstract ideas – should be mindful that their patent claims contain some additional features or inventive concept that provide practical assurances that the process is more than a drafting effort designed to monopolize the law of nature itself. Parties sued for infringement of patents that arguably involve laws of nature, physical phenomena and/or abstract ideas should carefully evaluate those patents to determine whether they meet the Alice test.

By Opinion entered by The Honorable Leonard P. Stark in Idenix Pharmaceuticals LLC et al. v. Gilead Sciences, Inc., Civil Action No. 14-846-LPS (D.Del. February 16, 2018), the District Court granted in part Defendant Gilead Sciences, Inc.’s renewed motion for judgment as a matter of law (“JMOL Motion”) after finding that the asserted claims of the patent-in-suit, U.S. Patent No. 7,608,597 (“the ‘597 patent”) are invalid for failure to meet 35 U.S.C. § 112’s enablement requirements. The Court denied Defendant’s JMOL Motion as to damages and written description. Id. at *2 and 51.

By way of background, the science involved in this case involves groundbreaking work by both parties in the field of treatments for the Hepatitis C virus infection. The ‘597 patent is entitled “Methods and Compositions for Treating Hepatitis C Virus. It was issued on October 27, 2009. Id. at *1. Prior to trial, Defendant Gilead stipulated that, under the Court’s claim construction, its accused products, Harvoni and Sovaldi, infringe the asserted claims of Idenix’s ‘597 patent. Id. At the end of a two week trial in December 2016, the jury found that Gilead failed to prove that the asserted claims are invalid and awarded Idenix $2.54 billion in damages. Id. Thereafter, Gilead renewed its JMOL motion, which the Court had taken under advisement during trial and later denied as moot and with the opportunity to renew following entry of judgment. Id.

In its JMOL motion, Gilead asked the Court to set aside the jury’s verdict on grounds that Idenix’s asserted patent claims are invalid for failure to meet 35 U.S.C. §112’s written description and enablement requirements. Id. Alternatively, Gilead requested the Court to reduce the $2.54 billion damages award as unsupported by the evidence. Id.

After reviewing the record and evaluating the JMOL motion, the Court found that “a reasonable jury, even taking all the evidence in the light most favorable to Idenix and drawing all reasonable inferences in favor of Idenix, could only have concluded that Idenix’s ‘597 patent is invalid due to lack of enablement. The only reasonable finding, based on the trial record, is that Gilead met its burden to prove nonenablement by clear and convincing evidence. The trial revealed that there are no genuinely disputed material facts with respect to enablement.” Id. at *50-51. Accordingly, the Court concluded that Gilead is entitled to judgment as a matter of law that the asserted claims of the ‘597 patent are invalid for lack of enablement. Id. at *51.

The effect of the Court’s Order will be the setting aside of the jury’s $2.54 billion damages award to Idenix.  A copy of the Opinion is attached.


The United States District Court for the District of Delaware has announced new procedures for assignment of cases to Senior Judge Gregory M. Sleet in light of Judge Sleet’s retirement from the bench during the fall of 2018 and two current District Judge vacancies on the Court. With respect to new civil cases, for the time being, Senior Judge Sleet will continue to draw a share of new civil cases equal to that of the Court’s active District Judges. The Court has begun the process of reassigning a portion of the civil cases currently on Judge Sleet’s docket – primarily those scheduled for trial in 2018. With respect to criminal cases, Judge Sleet will no longer be assigned new criminal matters beginning sometime in the spring of 2018. At and after that time, all new criminal cases will be assigned to the Court’s active District Judges.

In the announcement, the Court clarified that the procedures for the assignment of cases to the Vacant Judgeship docket (“VAC”) remain unchanged and no new visiting judges have been added to the list since the September 2017 announcement.

A copy of the Announcement is attached.

By Memorandum Opinion entered by The Honorable Gregory M. Sleet in Genentech, Inc. et al. v. Amgen Inc., Civil Action No. 17-1407-GMS (D.Del. January 22, 2018), the Court denied defendant Amgen Inc.’s motion to transfer two patent infringement actions from the United States District Court for the District of Delaware to the United States District Court for the Central District of California where Amgen has a declaratory judgment action pending. Both Plaintiff and Amgen are incorporated in Delaware with their principal places of business in California. Id. at *1.

In support of its motion, Amgen argued that the Jumara factors weighed heavily in favor of transfer and that transfer was warranted under the first-to-file rule. Id. at *4. In weighing the Jumara factors, the Court found that Amgen’s choice of forum weighed in favor of transfer, but not as strongly as Plaintiff’s choice of forum weighed against transfer. Id. Two factors weighed slightly in favor of transfer: where the claims arose and the convenience of the witnesses. Id. The remaining factors weighed against transfer or were neutral. Id. Thus, because the balance of the Jumara factors did not strongly weigh in favor of transfer, the Court found that Amgen did not carry its burden of demonstrating the transfer was warranted under those factors. Id.

With respect to the first-to-file rule, the Court found that the California action was anticipatory in nature, and there are convenience factors that weigh against transfer in addition to the Jumara factors weighing against transfer. Id. at *13-15. Therefore, the Court refused to apply the first-to-file rule in favor of transfer. Id. at *15.

A copy of the Memorandum Opinion is attached.

By Memorandum Opinion entered by The Honorable Richard G. Andrews in Acceleration Bay LLC v. Activision Blizzard, Inc., Civil Action No. 16-453-RGA (D.Del. January 17, 2018) (consolidated), the Court rendered its Markman ruling construing eight (8) disputed terms in U.S. Patent Nos. 6,701,344 (“the ‘344 patent”), 6,714,966 (“the ‘966 patent”), 6,829,634 (“the ‘634 patent”), 6,910,069 (“the ‘069 patent”), 6,732,147 (“the ‘147 patent”), and 6,920,497 (“the ‘497 patent”).

A copy of the Memorandum Opinion is attached.

By Memorandum Opinion entered by The Honorable Richard G. Andrews in Sanofi-Aventis U.S. LLC et al. v. Merck Sharp & Dohme Corp., Civil Action No. 16-812-RGA (D.Del. January 12, 2018), the Court rendered its Markman ruling construing nine (9) disputed terms in U.S. Patent Nos. 8,603,044 (“the ‘044 patent”), 8,679,069 (“the ‘069 patent”), 8,992,486 (“the ‘486 patent”), 9,526,844 (“the ‘844 patent”), 9,533,105 (“the ‘105 patent”), 9,457,152 (“the ‘152 patent”), 9,592,348 (“the ‘348 patent”), 7,476,652 (“the ‘652 patent”), 7,713,930 (“the ‘930 patent”), and 9,604,008 (“the ‘008 patent”) . The patents-in-suit generally relate to a diabetes pharmaceutical, or to pen-type injectors used to administer the pharmaceutical. Id. at *1.

A copy of the Memorandum Opinion is attached.

By Memorandum Opinion entered by The Honorable Leonard P. Stark in GN Netcom, Inc. v. Plantronics, Inc., Civil Action No. 12-1318-LPS (D.Del. January 3, 2018), the Court denied Plaintiff GN Netcom’s motion for a new trial. Following a six-day jury trial, the jury returned a verdict in favor of Defendant Plantronics, Inc. Thereafter, GN Netcom moved for a new trial contending the Court erred and prejudiced GN Netcom’s substantial rights in two ways: (1) with regard to Plantronics’ spoliation of evidence, by providing the jury a permissive adverse instruction rather than a dispositive sanction, and “present[ing] a sanitized version of facts regarding Plantronics’ spoliation that vastly ignored how egregious its misconduct was and how detrimental the consequences were on GN’s case”; and (2) refusing to admit evidence of the government’s notice of disbarment to Plantronics based on the General Services Administration’s review of the Court’s opinion imposing sanctions on Plantronics for its spoliation of evidence. Id. at *3. Upon evaluation of the motion, the Court concluded that GN Netcom failed to show that either of those errors affected its substantial rights. Id. at *4.

A copy of the Memorandum Opinion is attached.