By Memorandum Order entered by The Honorable Leonard P. Stark in Alcon Research, Ltd. v. Watson Laboratories, Inc., Civil Action No. 16-129-LPS-SRF (D.Del. November 9, 2017), the Court overruled the objections of plaintiff and defendant and adopted the recommended constructions of two disputed terms in U.S. Patent Nos. 7,947,295 (“the ‘295 patent”) and 8,921,337 (“the ‘337 patent”).

A copy of the Memorandum Order is attached.

By Order entered by The Honorable Leonard P. Stark in Plastic Omnium Advanced Innovation and Research v. Donghee America, Inc. et al., Civil Action No. 16-187-LPS (D.Del. November 6, 2017), the Court rendered its Markman ruling construing twelve (12) disputed terms in U.S. Patent Nos. 6,814,921 (“the ‘921 patent”), 6,866,812 (“the ‘812 patent”), 7,166,253 (“the ‘253 patent”), 8,163,228 (“the ‘228 patent”), 9,079,490 (“the ‘490 patent”), 9,399,326 (“the ‘326 patent”), and 9,399,327 (“the ‘327 patent”) . The asserted patents generally relate to methods for manufacturing automotive fuel tanks. Specifically, they describe and claim processes known in the industry as “twin-sheet blow molding” or “TSBM.” Id. at *1.

A copy of the Markman Opinion is attached

By Order entered by The Honorable Gregory M. Sleet in IYM Technologies LLC v. Advanced Micro Devices, Inc., Civil Action No. 16-649-GMS (D.Del. October 27, 2017), the Court rendered its Markman ruling construing four (4) disputed terms in U.S. Patent No. 7,448,012 (“the ‘012 patent”). The ‘012 patent relates to methods and system for improving integrated circuit layout.

A copy of the Markman Order is attached.

By Memorandum Order entered by The Honorable Leonard P. Stark in Reckitt Benckiser LLC v. Aurobindo Pharma Limited et al., Civil Action No. 14-1203-LP (D.Del. October 16, 2017), the Court denied Defendants motion for attorneys’ fees and expenses under 35 U.S.C. § 285. 35 U.S.C. § 285 provides that, in “exceptional” patent cases, a Court may award “reasonable attorney fees” to the “prevailing party.” “An exceptional case under § 285 is ‘simply one that stands out from others with respect to the substantive strength of a party’s litigating position (considering both the governing law and the facts of the case) or the unreasonable manner in which the case was litigated.” Nova Chems. Corp. (Canada) v. Dow Chem. Co., 856 F.3d 1012, 1016 (Fed. Cir. 2017) (quoting Octane Fitness, LLC v. ICON Healthy & Fitness, Inc., 134 S. Ct. 1749, 1756 (2014)).

In the instant action, following claim construction, the Court allowed Defendants to file a motion for summary judgment of non-infringement. Reckitt Benckiser LLC at *1. After full briefing and a hearing, the Court granted Defendants’ motion for summary judgment of non-infringement finding that “no reasonable factfinder could find that [Defendants’] proposed ANDA product contains two distinct formulations, as required by the asserted claims.” Id. Defendants thereafter sought attorneys’ fees under 35 U.S.C. § 285 contending the case was “exceptional.” Id. at *2.

In considering the motion for attorneys’ fees, the Court noted as follows:

In one way, this case stands out from others: it is an ANDA case that was resolved on summary judgment, a rare occurrence in this Court, which often does not allow summary judgment motions to be filed in an ANDA case. But this fact alone does not make this case per se “exceptional.” That the nature of the narrow dispute presented by the parties turned out to be amenable to summary judgment does not inevitably correlate to an exceptionally weak substantive position or an unreasonable manner of litigation.  Id. at *3. 

Ultimately, after concluding the totality of the circumstances, the Court concluded that the factors weighing against finding the case exceptional outweighed those in favor. Id. at *7. Accordingly, the Court exercised its discretion to deny the request for attorneys’ fees. Id. at *8.

A copy of the Memorandum Order is attached.

Following a three-day bench trial in the matter on June 5-7, 2017 and after having considered the entire record in the case and the applicable law, the Court, through Trial Opinion, entered by The Honorable Richard G. Andrews in Orexigen Therapeutics, Inc. v. Actavis Laboratories FL, Inc., Civil Action No. 15-451-RGA (D.Del. October 13, 2017), found that (1) Defendant failed to prove by clear and convincing evidence that claims 26 and 31 U.S. Patent No. 7,462,626 (“the ‘626 patent”), claim 1 of U.S. Patent No. 7,375,111 (“the ‘111 patent”), and claim 11 of U.S. Patent No. 8,916,195 (“the ‘195 patent”) are invalid; and (2) Plaintiff proved by a preponderance of the evidence that Defendant’s ANDA product directly infringes claim 1 of the ‘111 patent and indirectly infringes claims 26 and 31 of the ‘626 patent and claim 11 of the ‘195 patent.

A copy of the Trial Opinion is attached.

By Memorandum Order entered by The Honorable Leonard P. Stark in GN Netcom, Inc. v. Plantronics, Inc., Civil Action No. 12-1318-LPS (D.Del. September 29, 2017), the Court denied Defendant Plantronics, Inc.’s motion for summary judgment which contended that any foreclosure effect of Defendant’s exclusive dealing arrangement with its distributors was negated by Plaintiff GN Netcom, Inc.’s ability to circumvent the exclusive dealing arrangement by accessing the end-users directly. In other words, Plantronics argued that GN could not show substantial foreclosure of the market for the telephone headsets at issue because GN could make sales calls directly to the contact center and office end-users with delivery effected by any of the hundreds of resellers that GN uses, including some of the Plantronics Only Distributors (“PODs”) themselves. Id. at *5. As support for the proposition, Plantronics referred to GN’s recent, successful history of reaching out to end users in this manner (“solution selling”), which resulted in significant “wins” and growth in market share for GN. Id.

The Court, however, noted that “[t]he core question presented by the motion is whether, taking the evidence in the light most favorable to GN, Plantronics has demonstrated that a reasonable juror could find only that GN had adequate, ‘available,’ ‘viable,’ and/or ‘effective,’ alternative means of distribution, notwithstanding Plantronics’ POD program. The ‘mere existence of other avenues of distribution’ is not enough on its own. Instead, there must be an ‘assessment of [the alternative means’] overall significance to the market,’ and such alternative means must be ‘practical or feasible in the market as it exists and functions.” Id. at *6.

Ultimately, the Court found that Plantronics could not meet the summary judgment standard to show that the only reasonable conclusion to be drawn from the record is that distribution through PODs is an adequately available, viable and/or effective means of distribution for GN. Id. at *8-9. Although the Court noted the record contains substantial evidence from which a jury might reasonably find that GN could adequately compete for business, Plantronics failed to show that was the only conclusion a jury could reasonably reach. Id. at *9. Thus, summary judgment was denied.

A copy of the Memorandum Order is attached.

An interesting and notable take away from this case is that, due to certain discovery spoliation by Plantronics concerning the deletion of emails, the Court had previously imposed monetary and evidentiary sanctions on Plantronics, including a permissive adverse inference instruction to be given at trial and being required to seek leave of Court before filing any motion for summary judgment – given the impact that the spoliation and permissive adverse inference could have on the resolution of any motion for summary judgment. See id. at *2. It leaves one wondering whether this would have been a case appropriate for summary judgment but for the sanctions and adverse inferences against Plantronics due to its spoliation.

By Memorandum Opinion entered by The Honorable Leonard P. Stark in International Business Machines Corp. v. The Priceline Group Inc. et al., Civil Action No. 15-137-LPS (D.Del. September 18, 2017), the Court, among other things, granted plaintiff International Business Machines Corporation’s (“IBM’s”) motion for summary judgment on no anticipation of the asserted claims of U.S. Patent No. 5,796,967 (“the ‘967 patent”) in light of the Apple HyperCard System.

IBM asserted that Defendants could not show by clear and convincing evidence that the system was known or in prior use before the effective filing date of the ‘967 patent because evidence was lacking that the HyperCard system was (1) connected to a network, or (2) configured in the manner that Defendants’ expert relied on in his anticipation theories. Id. at *13. The Court found that Defendants did not provide substantial evidence that could support a jury finding that the HyperCard System, as disclosed by the first edition of the Goodman Handbook (the only handbook pre-dating the patent), was enabling. Id. at *16. The Court reasoned that the handbook only addressed what could be done in the future and never discussed any configurations that Defendants’ expert relied on or identified as a specific network to which the system could connect. Id.

A copy of the Memorandum Opinion is attached.

Following a five-day bench trial in the matter in February 2017 and after having considered the entire record in the case and the applicable law, the Court, through Memorandum, entered by The Honorable Gregory M. Sleet in Tris Pharma, Inc. v. Actavis Laboratories FL, Inc., Civil Action No. 14-1309-GMS (consolidated) (D.Del. September 6, 2017), entered judgment in favor Defendant Actavis Laboratories FL, Inc. (“Actavis”) after concluding that all asserted claims of the patents-in-suit are invalid due to obviousness. The patents-in-suit in the action are U.S. Patent Nos. 8,465,765 (“the ‘765 patent”), 8,563,033 (“the ‘033 patent”), 8,778,390 (“the ‘390 patent”), 8,956,649 (“the ‘649 patent”) and 9,040,083 (“the ‘083 patent”).

After assessing the four considerations of an obviousness analysis – (1) the scope and content of the prior art; (2) the level of ordinary skill in the art; (3) the differences between the claimed subject matter and the prior art; and (4) secondary considerations of nonobviousness, such as commercial success, long-felt but unsolved need, failure of others, acquiescence of others in the industry that the patent is valid, and unexpected results – the Court concluded that the asserted claims are invalid as obvious under 35 U.S.C. §103. Id. at 26-45.

Copies of the Memorandum and Order are attached.

By Memorandum Opinion entered by The Honorable Leonard P. Stark in Intellectual Ventures I LLC v. T-Mobile USA, Inc. et al., Civil Action No. 13-1632-LPS (D.Del. August 23, 2017) (consolidated), the Court denied Plaintiff’s motion for reconsideration of a prior Order of the Court and granted in part and denied in part Defendants’ motion for summary judgment.

Specifically, the Court denied Plaintiff’s motion for reconsideration of the Court’s December 30, 2016 Memorandum Opinion which granted Defendants’ motion for judgment on the pleadings that certain claims of U.S. Patent Nos. 6,115,737 (“the ‘737 patent”), 8,078,200 (“the ‘200 patent”), and 7,450,957 (“the ‘957 patent”) are patent-ineligible under 35 U.S.C. § 101. In denying Plaintiffs’ motion for reconsideration, the Court found that Plaintiffs failed to demonstrate an intervening change in controlling law, the availability of new evidence, or the need for the Court to correct a clear error of law or fact that warranted reconsideration. Id. at *1-14.

With respect to Defendants’ motion for summary judgment, the Court denied Defendants’ motion for summary judgment that claims 1, 7, and 8 of the ‘0032 patent are patent-ineligible under 35 U.S.C. § 101 after finding that those claims are not directed to an abstract idea and, thus, are patent eligible. Id. at *15-19. The Court granted Defendants’ motion for summary judgment that claims 17, 20 and 24 of the ‘490 patent and claim 17 of the ‘306 patent are patent-ineligible under § 101 after finding that those claims are not directed to patent-eligible subject matter. Id. at *19-27. The Court also granted Defendants’ motion for summary judgment that claims 1, 5 and 9 of the ‘352 patent are patent-ineligible under § 101 after concluding that those claims are not directed to patent-eligible subject matter. Id. at *27-33.

A copy of the Memorandum Opinion is attached.

By Memorandum Opinion entered by The Honorable Leonard P. Stark in Enzo Life Sciences, Inc. v. Abbott Laboratories et al., Civil Action No. 12-274-LPS (D.Del. August 18, 2017 (public version), the Court granted Defendants Abbott Laboratories and Abbott Molecular, Inc.’s Motion for Summary Judgment of Invalidity of U.S. Patent No. 8,097,405 (“the ‘405 patent”) for Nonenablement. “Enablement” requires the specification of a patent to “teach those of skill in the art how to make and how to use the invention as broadly as it is claimed.” Id.at *15 (quoting In re Goodman, 11 F.3d 1046, 1050 (Fed. Cir. 1993). “To prove a claim is invalid for lack of enablement, a challenger must show by clear and convincing evidence that a person of ordinary skill in the art would not be able to practice the claimed invention without ‘undue experimentation.’” Id. (quoting Alcon Research Ltd. v. Barr Labs., Inc., 745 F.3d 1180, 1188 (Fed. Cir. 2014). After applying the foregoing standard to the record evidence and having taken that evidence in the light most favorable to the plaintiff, the Court concluded that there was no genuine dispute of fact and “the only conclusion a reasonable jury could reach is that clear and convincing evidence proves the ‘405 patent is invalid for nonenablement.” Id. The Court also explained how its prior conclusions in a related case, Enzo Life Sciences, Inc. v. Gen-Probe Inc., Civil Action No. 12-104-LPS, factored into its finding of nonenablement with respect to the ‘405 patent. Id.at *15-16.

 A copy of the Memorandum Opinion is attached.