In his Report and Recommendation entered in Bear Box LLC et al. v. Lancium LLC et al., Civil Action No. 21-534-MN-CJB (D.Del. January 18, 2022), the Honorable Christopher J. Burke recommends that the Court grant Defendants’ Motion for Judgment on the Pleadings seeking the dismissal of Counts III, IV and V of Plaintiff’s Amended Complaint which purport to assert state law claims for conversion, unjust enrichment, and negligent misrepresentation.  Counts I and II of Plaintiff’s Amended Complaint purport to assert claims to correct the inventorship for United States Patent No. 10,608,433 (“the ‘433 patent”) which purportedly claims proprietary technology for energy-efficient cryptocurrency mining systems.  Id. at *1-4.  In recommending the Court to grant Defendants’ Motion for Judgment on the Pleadings with respect to the dismissal of Counts III, IV and V of Plaintiff’s Amended Complaint, Judge Burke agreed that Plaintiff’s conversion and unjust enrichment claims (Counts III and IV) are preempted by federal patent law, and that Plaintiff’s negligent misrepresentation claim (Count V) is deficient as a matter of law due to its failure to include the requisite duty owed by Defendants.  Id. at *4-12.

A copy of the Report and Recommendation is attached.

By Memorandum Opinion entered by the Honorable Maryellen Noreika in TRUSTID, Inc. v. Next Caller, Inc., Civil Action No. 18-172-MN (D.Del. January 5, 2022), the Court granted Defendant Next Caller’s post-trial renewed motion for judgment as a matter of law of no false advertising under the Lanham Act and to take away the jury’s award of punitive damages.  At the conclusion of the jury trial, the jury found Defendant liable for false advertising under the Lanham Act, 15 U.S.C. § 1125, for its statement in marketing its VeriCall solution that VeriCall will “increase 10% IVR Containment Rate.”  Id. at *3.  As a result, the jury awarded Plaintiff $1.44 million in compensatory damages and an additional $1.44 million in punitive damages.  Id.  Following the verdict, both Plaintiff and Defendant filed post-trial motions.

The Court granted Defendant’s motion for two reasons.  First, the Court found that there was insufficient evidence for the jury to have found Defendant liable for false advertising under the Lanham Act because there was not sufficient evidence presented for Plaintiff to prove the required element of actual deception regarding the 10% IVR statement.  Id. at *13-16.  Second, the Court recognized that punitive damages are not recoverable under the Lanham Act.  Id. at *17-18.  Accordingly, the Court granted Defendant’s motion for judgment as a matter of law of no false advertising and no punitive damages.  Id. at *18.

A copy of the Memorandum Opinion is attached.

By Memorandum Order entered by the Honorable Leonard P. Stark following oral argument in Invitae Corp. v. Natera, Inc., Civil Action No. 21-669-LPS (D.Del. November 29, 2021), the Court denied defendant Natera’s motion to dismiss plaintiff’s claims of patent infringement under 35 U.S.C. §101 after rejecting defendant’s assertion that the patent-in-suit, U.S. Patent No. 10,604,799 (“the ‘799 patent”), was directed to the abstract idea of “an algorithmic method of manipulating and combining genetic sequence data using an [intermediate] data set.”

In its reasoning, the Court noted that what Natera stated was an abstract idea; however, the Court disagreed that Claim 1 was directed to what Natera stated.  Id. at *4.  Rather, the Court agreed with Invitae that Claim 1 is directed to a “technological solution to the technological problem of how to better assemble DNA sequences [. . .] in a more computationally efficient and overall improved way.”  Id. at *4-5.  Thus, the Court found that “the claim process provides solutions to technical problems in the prior art” and, in the Court’s view, “is analogous to claims the Federal Circuit found to be patent eligible” in McRo, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016).

A copy of the Memorandum Order is attached.  Note this was the first of the three Section 101 motions from separate cases decided in one hearing by Judge Stark during his latest Section 101 motion day on November 22, 2021.

The Court noted in its Memorandum Order that “[it] continues to find that its procedure of addressing multiple Section 101 motions from separate cases in one hearing is an efficient use of judicial resources and a beneficial tool for resolving the merits of Section 101 motions.”

By Memorandum Opinion entered by The Honorable Richard G. Andrews in United Therapeutics Corporation v. Liquidia Technologies, Inc., Civil Action No. 20-755-RGA (D.Del. November 18, 2021), the Court issued its claim construction of the two remaining disputed terms of U.S. Patent No. 9,604,901 (“the ‘901 patent”) relating to “an improved process to convert benzindene triol to treprostinil via salts of treprostinil and to purify treprostinil.”  The Court adopted the plain and ordinary meaning of the disputed term “pharmaceutical batch” (claims 1-4, 6 and 8) and adopted Defendant’s proposed construction of the disputed term “contacting the solution comprising treprostinil from step (b) with a base to form a salt of treprostinil” (claims 1 and 8).

A copy of the Memorandum Opinion is attached.

By Memorandum Order entered by the Honorable Leonard P. Stark in Emerson Radio Corp. v. Emerson Quiet Kool Co. Ltd., Civil Action No. 20-1652-LPS (D.Del. November 5, 2021), the Court granted the motion for partial summary judgment of Plaintiff Emerson Radio Corp. as to the affirmative defenses of laches, acquiescence, and statute of limitations of Defendants as to Defendants’ allegedly infringing use of the EMERSON QUIET KOOL trademark.

In so ruling, the Court found that Defendants’ affirmative defenses of laches and acquiescence failed as a matter of law because (1) they were based on an alleged 2017 assignment of the EMERSON QUIET KOOL trademark from American Ductless AC Corp. (“American Ductless”) to Defendant Emerson Quiet Kool Co. Ltd., and (2) there was no genuine dispute of material fact that the alleged assignment of the trademark was invalid because there was no consideration paid to American Ductless.  Id. at *3-4.  The Court also found that there was no genuine dispute of material fact that the instances of Defendants’ alleged infringing activities occurred within the six-year limitations period preceding the filing of the lawsuit by Plaintiff.  Id. at *6.

A copy of the Memorandum Order is attached.

By Memorandum Opinion entered by the Honorable Richard G. Andrews in IPA Technologies, Inc. v. Amazon.com, Inc. et al., Civil Action No. 16-1266-RGA (D.Del. October 28, 2021), the Court granted Amazon’s Motion for Summary Judgment of Non-Infringement of U.S. Patent Nos. 6,851,115 (“the ‘115 patent”) and 7,069,560 (“the ‘560 patent”) after finding that Plaintiff has no evidence of every limitation of the asserted claims being present in Alexa because Alexa does not meet the required ICL service request limitation found in the asserted claims of the patents-in-suit.

A copy of the Memorandum Opinion is attached.

By Memorandum Order entered by the Honorable Maryellen Noreika in Vertigo Media, Inc. et al. v. Earbuds Inc., Civil Action No. 21-120-MN (D.Del. October 14, 2021), the Court denied plaintiffs Vertigo Media, Inc. and Remote Media LLC’s motion for preliminary injunction in their action against defendant Earbuds Inc. claiming infringement of several claims of U.S. Patent Nos. 9,549,024 (“the ‘024 Patent”), 10,198,777 (“the ‘777 Patent”), and 10,116,616 (“the ‘616 Patent”).  In denying plaintiffs’ motion for preliminary injunction, the Court found that plaintiffs did not sufficiently demonstrate that they would suffer irreparable harm in the absence of a preliminary injunction and did not meet their burden of proving a likelihood of success on the merits.  Id. at *7-12.

A copy of the Memorandum Order is attached.

A general take away for practitioners from this case is a reminder that a preliminary injunction is an “extraordinary remedy” that will not be routinely granted in the District of Delaware.  A preliminary injunction will be granted only when the moving party shows (1) a likelihood of success on the merits; (2) irreparable harm if an injunction is not granted; (3) the balance of equities tips in favor of the moving party; and (4) an injunction is in the public interest.  The Court cannot and will not grant a preliminary injunction unless the moving party makes a clear showing of irreparable harm and likelihood of success on the merits.  To make a “clear showing”, the moving party has to put forth evidence supporting its claims.  Unverified allegations in the complaint and/or attorney argument in briefs or elsewhere, unsupported by sworn affidavits or testimony, clearly will not suffice.  Also, if the alleged damages can be quantified and/or fully compensated by an award of money damages, more likely than not there will be no finding of “irreparable” harm.