By Memorandum Order entered by The Honorable Richard G. Andrews in Ingevity Corp. et al. v. BASF Corp., Civil Action No. 18-1391-RGA (D.Del. October 21, 2020), the Court denied Plaintiff Ingevity’s motion to exclude all or portions of the testimony of two experts of Defendant BASF on the basis of Daubert without prejudice to Plaintiff making any relevant objections to actual testimony during trial.

With respect to both experts, there were no challenges by Plaintiff to their qualifications or whether the experts testimony comported with the methods and principles of their respective subjects of expertise. Id. at *1-2. Rather, Plaintiff sought to exclude the testimony of the experts because they did not identify or state the correct legal standard for “patent misuse,” it was anticipated that the experts would offer opinions not disclosed in their reports, or would testify at trial about matters beyond of their respective areas of expertise. Id. In denying the motion without prejudice, the Court reasoned that it was not going to exclude testimony because an expert does not identify a legal standard or cannot explain legal concepts. Id.. The Court noted that is not particularly relevant to whether the expert’s testimony should be admitted. Id. Also, the Court noted that the argument that an expert is going to give opinions not disclosed in her expert report is not a Daubert argument. Id. In any case, if either expert offers opinions that were not disclosed in their report or attempts to testify about legal concepts, Plaintiff should object at that time. Id.

A copy of the Memorandum Order is attached.

By Memorandum Opinion entered by The Honorable Maryellen Noreika in Dr. Matthias Rath et al. v. Vita Sanotec, Inc. et al., Civil Action No. 17-953-MN (D.Del. October 2, 2020), the Court granted the motion of Plaintiffs Dr. Matthias Rath, Dr. Rath International and Dr. Rath Health Programs B.V. (“Plaintiffs”) seeking attorneys’ fees be assessed against Defendants Vita Sanotec, Inc., Vita Sanotec B.V. and Frank Krailing.

By way of background, Plaintiffs filed the case against Defendants alleging claims for misappropriation of Plaintiffs’ intellectual property and violations of the Lanham Act, 15 U.S.C. §1125 et seq.  Eventually, after Defendants failed to participate in the litigation, default judgment was entered and an order permanently enjoining Defendants from infringing Plaintiffs’ marks and intellectual property, and reserved Plaintiffs’ rights to seek damages and attorneys’ fees.  Id. at *3.  Plaintiffs’ filed their motion for attorneys’ fees more than a year later and thereafter filed a motion seeking entry of final judgment.  Id.  Initially, Plaintiffs’ motion for attorneys’ fees was denied by Chief Magistrate Judge Thygne as untimely because it was purportedly filed beyond the fourteen (14) day filing window set forth in Federal Rule of Civil Procedure 54(d).  Id.  Plaintiffs filed objections to Chief Magistrate Judge Thynge’s Report and the Court allowed Plaintiffs to re-file their motion seeking attorneys’ fees under the Lanham Act.  Id.

Upon evaluation of the re-filed motion for attorneys’ fees, the Court found that Plaintiffs’ motion was timely because the default judgment entered pursuant to Federal Rule of Civil Procedure 55(b) did not dispose of all of the claims among the parties and the judge that entered the default judgment did not direct entry of final judgment under Rule 54(b).  Id. at *5.

After finding Plaintiffs’ motion for attorneys’ fees was timely, the Court also found the case to be exceptional based on the merits of the case and Defendants’ litigation conduct.  Id. at *6-7.  Having found the case to be exceptional, the Court also determined that an award of attorneys’ fees to be appropriate because, among other things, Defendants failed to litigate resulting in default judgment.  Id.  Ultimately, the Court awarded Plaintiffs’ attorneys’ fees in the amount of $204,261.33.  Id. at *9.

A copy of the Memorandum Opinion is attached.

By Memorandum Order entered by The Honorable Maryellen Noreika in New Balance Athletics, Inc. v. USA New Bunren International Co. Ltd., LLC, Civil Action No. 17-1700 (MN), the Court denied Defendant New Bunren’s motion for partial reconsideration of the Court’s prior ruling concluding that Plaintiff New Balance Athletics was entitled to statutory damages under 15 U.S.C. §1117(c) of the Lanham Act.

In its prior opinion, the Court found that Defendant was liable for trademark infringement under 15 U.S.C. §1114, false designation of origin under 15 U.S.C. §1125(a), and federal trademark dilution under 15 U.S.C. §1125(c).  Id. at *2.  All three of those statutes require that the accused mark be used “in commerce.”  Id.  The Court found that Defendant used the marks “in commerce” by advertising and promoting goods bearing the accused marks.  Id.  The Court also found Defendant liable for statutory damages under §1117(c) which requires that a counterfeit mark be used in connection with “the sale, offering for sale, or distribution of goods or services.”  Id.

In its motion for partial reconsideration, Defendant contended that advertising and promotion does not qualify as “sale, offering for sale, or distribution” as a matter of law under §1117(c).  Id. at *3.  Notably, Defendant failed to cite any cases specifically excluding advertising and promotion from “offering for sale” in §1117(c).  Id.  Accordingly, the Court concluded that Defendant did not meet the standard required for the Court to amend or alter its judgment and, therefore, denied Defendant New Bunren’s motion for partial reconsideration.

A copy of the Memorandum Order is attached.

By Memorandum Opinion entered by The Honorable Leonard P. Stark in Data Engine Technologies LLC v. Google LLC, Civil Action No. 14-1115-LPS (D.Del. September 9, 2020), the Court granted defendant Google LLC’s motion for summary judgment of non-infringement with respect to the claims alleging that Google Sheets infringed the asserted claims of U.S. Patent Nos. 5,590,259 (“the ‘259 patent), 5,748,545 (“the ‘545 patent”), and 6,282,551 (“the ‘551 patent”).  The Court found that, “[t]aking the evidence in the light most favorable to DET, no reasonable juror could find that [Google Sheets] meets the three-dimensional spreadsheet limitation.”  Id. at *8.

Noteworthy is the fact the District Court had previously granted Google’s motion for judgment on the pleadings contending that all of the asserted claims were invalid under 35 U.S.C. § 101 because they were directed to nonpatentable subject matter.  Id. at *1.  The Federal Circuit reversed that ruling and remanded for further proceedings after finding that the asserted claims of the ‘259, ‘545, and ‘551 patents are directed to patent-eligible subject matter.  Id. at *2.  It will be interesting to see whether Plaintiff DET appeals the ruling on summary judgment and, if so, what happens at the Federal Circuit.

A copy of the Memorandum Opinion is attached.

By Standing Order entered by Chief District Judge Leonard P. Stark on September 1, 2020, the United States District Court for the District of Delaware announced its plan to transition into Phase 2 of its Re-Opening Guidelines on September 15, 2020, subject to conditions with respect to the coronavirus  in Delaware and the surrounding region.  A few significant matters contained in the Order are as follows: (1) all civil and criminal jury selections and jury trials scheduled to begin before September 15, 2020 are continued pending further Order of the Court; (2) The Court will continue to operate under Phase 1 of the District’s Re-Opening Guidelines through September 14, 2020; (3) Phase 2 of the District’s Re-Opening Guidelines permits the Court to resume conducting jury trials, at the direction of the presiding judge in each individual case, subject to constraints imposed by limited resources and building space.  The Court anticipates that, at least in the initial stages of Phase 2, it will conduct no more than one jury trial at a time and will give priority to criminal trials.

A copy of the Court’s Standing Order is attached.

By Memorandum Order entered by The Honorable Leonard P. Stark in Xcoal Energy & Resources v. Bluestone Energy Sales Corp., Civil Action No. 18-819-LPS (D.Del. August 18, 2020), the Court denied Defendants’ renewed emergency request to convert the remote bench trial scheduled to begin on August 25, 2020 to a partially-remote or in-person trial.

In denying Defendants’ request, the Court explained that the bench trial originally was scheduled to begin on September 16, 2019, the Court had granted Defendants two prior continuances that delayed the start of trial to August 25, 2020, and the parties themselves proposed a partially-remote trial in their joint status report after the start of the COVID-19 pandemic.  Id. at *1-2.  The Court also explained that there is good cause to conduct the trial using videoconferencing technology given the COVID-19 pandemic, the Court used the same technology to conduct the pretrial hearing in the instant action and to conduct a trial in another action with no problems, Plaintiff wished to proceed as scheduled, Defendants failed to address many of the Court’s questions directed to Defendants in their submissions, and despite their belated efforts to convert the August 25th remote bench trial to an in-person trial, Defendants also stated that they were ready for trial to proceed as scheduled.  For all of these reasons, the Court denied Defendants’ request and decided to proceed with a remote bench trial on August 25, 2020.

A copy of the Memorandum Order is attached.

By Memorandum Order entered by The Honorable Richard G. Andrews in Lithero, LLC v. AstraZeneca Pharmaceuticals LP, Civil Action No. 19-2320-RGA (D.Del. August 13, 2020), the Court found that Plaintiff failed to plead a plausible trade secret misappropriation claim under the federal Defend Trade Secrets Act (“DTSA”) despite the fact that the Court had granted Plaintiff’s motion for leave to file its complaint under seal to avoid any possible public disclosure. The Court explained that “to adequately plead trade secret misappropriation under the DTSA, a plaintiff must identify a trade secret with sufficient particularity so as to provide notice to a defendant of what he is accused of misappropriating and for a court to determine whether misappropriation has or is threatened to occur.” Id. at *2 (internal quotations omitted).

In finding that Plaintiff failed to plausibly plead a trade secret misappropriation claim the Court noted that Plaintiff’s complaint only described the alleged trade secret in broad terms and pointed to large, general areas of information that Plaintiff allegedly shared with Defendant but did not identify what constitutes the trade secrets within those general areas. Id. at *3. Without knowing what in those general areas of information shared is a trade secret, the complaint does not put Defendant on sufficient notice of what it is accused of misappropriating. Id. Thus, the Court found that Plaintiff’s complaint failed to plausibly plead a trade secret misappropriation claim and, therefore, granted Defendant’s motion to dismiss the claim.

Also, given that the action was brought under federal question jurisdiction and the trade secret misappropriation claim under the DTSA was the only claim over which the Court had original jurisdiction, the Court declined to exercise supplemental jurisdiction over the remaining state law claims in Plaintiff’s complaint and dismissed the complaint in its entirety without prejudice. Id. at *3-4.

A copy of the Memorandum Order is attached.

By Opinion entered by The Honorable Leonard P. Stark in Bristol-Myers Squibb Co. et al v. Aurobindo Pharma USA Inc. et al., Civil Action No. 17-374-LPS (D.Del. August 5, 2020)(consolidated) following a nine (9) day bench trial, the Court found that defendant Sigmapharm’s ANDA products infringe the asserted claims of U.S. Patent No. 6,967,208 (“the ‘208 patent”) and defendants Sigmapharm, Sunshine Lake and Unichem’s ANDA products infringe the asserted claims of U.S. Patent No. 9,326,945 (“the ‘945 patent”).[1]  The Court also found that none of the asserted claims of the ‘208 patent or the ‘945 patent are invalid.  Id. at *1.

A copy of the Opinion is attached.

[1] Plaintiffs, Bristol-Myers Squibb Company and Pfizer Inc., had originally filed the action against at least twenty-five (25) defendant pharmaceutical companies.  By the time of trial, plaintiffs had resolved their claims with all defendants except Sigmapharm, Sunshine Lake and Unichem.  Plaintiffs and Unichem entered a stipulation of infringement with respect to the asserted claims of the ‘208 patent.  Id. at *1, fn. 1 and 2.

By Memorandum Opinion entered by The Honorable Colm F. Connolly in Dynamic Data Technologies, LLC v. Brightcove Inc. et al., Civil Action No. 19-1190-CFC (D.Del. July 20, 2020), the Court denied in part and granted in part Defendants’ motion to dismiss Plaintiff’s fifteen (15) count complaint for failure to state a claim under Federal Rule of Civil Procedure 12(b)(6). Plaintiff’s complaint included alleged claims of direct infringement and indirect infringement with respect to the fifteen (15) patents-in-suit and a claim for enhanced damages. Each count alleged infringement of one of the fifteen (15) asserted patents. Id. at *2.

With respect to the claims for direct infringement, Defendants argued that every count failed to plausibly allege infringement of the asserted patents because Plaintiff “fail[ed] to allege factual allegations addressing every element of each asserted claim.” Id. at *3. The Court disagreed. Id. The Court explained that “the Federal Rules of Civil Procedure do not require a plaintiff to plead facts establishing that each element of an asserted claim is met. Rather, a plaintiff need only ‘place the potential infringer on notice of what activity is being accused of infringement’ to state a claim for direct infringement.” Id. at *3-4. The Court found that Plaintiff did plausibly plead direct infringement because the allegations in the Complaint give Defendants fair notice of how they may directly infringe the asserted products: (1) Plaintiff identifies Defendants products accused of infringing each of the asserted patents; (2) identifies at least one claim of each asserted patent that the identified accused products infringe; and (3) describes how those products infringe the identified claims. Id.

With respect to the induced infringement claim, the Court found that Plaintiff did not state a claim for induced infringement because it did not plausibly plead that Defendants knew that their products infringe the asserted patents. Id. at *6. The Court explained that “the [C]omplaint itself cannot be the source of the knowledge required to sustain claims of induced infringement.” Id. Thus, because Plaintiff did not plausibly allege knowledge of infringement, the Court granted the motion to dismiss with respect to the induced infringement claim. Id. at *7.

Similarly, because a claim for enhanced damages based on willful infringement requires a Plaintiff to plausibly allege facts establishing Defendants’ knowledge of infringement, the Court also granted the motion to dismiss with respect to Plaintiff’s claim for enhanced damages. Id. at *12-13. In other words, in order to state a claim for enhanced damages based on willful infringement, Plaintiff had to plausibly allege facts establishing that Defendants had knowledge of the asserted patents and that Defendants had knowledge of their infringement of the asserted patents. Id.

A copy of the Memorandum Opinion is attached.

Due to public safety concerns caused by COVID-19, by Standing Order entered by Chief Judge Leonard P. Stark dated July 16, 2020, the United States District Court for the District of Delaware continued all civil and criminal jury selections and jury trials scheduled to begin before August 31, 2020 until further order of the Court.  A copy of the Court’s Standing Order is attached.