By Memorandum Order entered by The Honorable Colm F. Connolly in Pharmacyclics LLC et al. v. Cipla Limited, et al., Civil Action No. 18-192-CFC/CJB (D.Del. November 10, 2020) (Consolidated), the Court granted Plaintiffs’ request to preclude Defendant Sandoz from maintaining its theory that U.S. Patent No. 10,106,548 (“the ‘548 patent”) is invalid under 35 U.S.C. § 102(f) because the ‘548 patent did not disclose as inventors unidentified employees of Pharmorphix.

The Court granted Plaintiff’s request to preclude Sandoz’s invalidity defense based on the undisclosed inventorship theory because Sandoz failed to disclose the theory in its final invalidity contentions and did not disclose the theory until the eve of trial and almost eight months after it served its final invalidity contentions.  Id. at *2-6.  The Court found that “Sandoz’s disclosure of its inventorship theory on the eve of trial and almost eight months after it served its final contentions was unjustified, prejudiced Plaintiffs, and deprived Plaintiffs of the opportunity to cure any prejudice.”  Id. at *6.  After concluding that the balance of the relevant factors weighed in favor of Plaintiffs’ request to preclude Sandoz from pursuing its inventorship theory, the Court granted the request.  Id.

A copy of the Memorandum Order is attached.

By Memorandum Opinion entered by The Honorable Maryellen Noreika in Mixing & Mass Transfer Technologies, LLC v. SPX Corporation et al., Civil Action No. 19-529-MN (D.Del. November 4, 2020), the Court denied the SPX Defendants’ motion for attorneys’ fees after finding that Defendants were not a prevailing party.

By way of background, between 2005 and 2007, Plaintiff and a division of SPX were involved in litigation.  In 2007, the litigation was resolved by Settlement Agreement between Plaintiff and SPX.  Id.at *1.  The Settlement Agreement contained a general waiver and release and included a provision for attorneys’ fees for the prevailing party in the event any party breached the Settlement Agreement and any other party was required to bring legal proceedings to enforce the Settlement Agreement.  Id.at *2.

In 2019, Plaintiff filed an action against the SPX Defendants asserting patent infringement claims, unfair competition and false advertising claims under the Lanham Act, and other common law claims.  Id. at *2.  In response, Defendants filed a motion to dismiss all claims for failure to state a claim based on the general waiver and release provision contained in the Settlement Agreement.  Defendants contended those provisions in the Settlement Agreement released them from all of the claims asserted by Plaintiff.  Id.  After oral argument on the motion to dismiss, the Court dismissed two of the six claims without prejudice and thereafter Plaintiff voluntarily dismissed without prejudice the remaining four claims.  Id. at * 2-3.  Thereafter, Defendants filed their motion seeking attorneys’ fees.  Id. at *3.

Defendants argued that attorneys’ fees should be granted on two grounds:  (1) the Settlement Agreement; and (2) the alleged exceptional nature of the case.  Id. at *4.  The Court recognized that both grounds required Defendants to be a “prevailing party.”  Id.  Plaintiffs disputed whether Defendants were a prevailing party because the Court only dismissed two of the six claims without prejudice and Plaintiff voluntarily dismissed the remaining four claims without prejudice.  Id. at *5.  Defendants argued that they were a prevailing party because “they prevented [Plaintiff’s] attempts to alter the legal relationship between the parties” and a stipulated dismissal with prejudice entered by the Court can constitute a “judgment” for purposes of a motion for attorneys’ fees under Federal Rule of Civil Procedure 54, citing Keith Manufacturing Co. v. Butterfield, 955 F.3d 936, 939-40 (Fed. Cir. 2020).

After evaluation of both sides arguments, the Court found that neither the Court’s dismissal of two claims without prejudice nor the voluntary dismissals without prejudice would materially alter the legal relationship of the parties.  Id. at *5-6.  The Court reasoned that“[n]either dismissal would prevent Plaintiff from reasserting those same claims against Defendants in another action.”  Id. at *6.  Thus, “in the Court’s view, [a dismissal without prejudice], is not the type of ‘material alteration of the legal relationship of the parties’ that is the touchstone of the prevailing-party inquiry.”  Id. (quoting CRST Van Expedited Inc. v. E.E.O.C., 136 S.Ct. 1642, 1646 (2016)).

Accordingly, having found Defendants were not a prevailing party for purposes of eligibility for attorneys’ fees under the Settlement Agreement or 35 U.S.C. § 285, the Court denied the motion.

A copy of the Memorandum Opinion is attached.

 

By Memorandum Opinion entered by The Honorable Leonard P. Stark in Osseo Imaging, LLC v. Planmeca USA Inc., Civil Action No. 17-1386-LPS (D.Del. October 28, 2020), the Court, inter alia, denied Defendant’s motion for summary judgment of no infringement with respect to literal infringement and granted Defendant’s motion for summary judgment of no infringement with respect to the doctrine of equivalents.

By way of background, Plaintiff Osseo owns a family of patents relating to dental and orthopedic imaging.  Id. at *1.  The Asserted Patents relate to X-ray imaging “that combines ‘densitometry (that is, quantitatively calculated bone density) with tomographic modeling.’”  Id.  Plaintiff accuses Defendant Planmeca’s 3D Imaging Systems with Romexis software (the “Accused Systems”), contending the Accused Systems produce 3D X-ray models of a patient’s dental structure using cone beam computed tomography (“CBCT”).  Id.

Defendant moved for summary judgment of no infringement of the Asserted Claims either literally or under the doctrine of equivalents.  Id. at *4.  In sum, Defendant contended that Plaintiff could not prove literal infringement because its infringement theory includes the incorrect premise that Hounsfield Unit values (“HU values”) used in the Accused Systems are “quantitative calculations of bone density.”  Id. at *5.

The Court, agreeing with Plaintiff, found that, taking the evidence in the light most favorable to Plaintiff, a reasonable fact finder could find that HU values used in the Accused Systems meet the “densitometry” limitation which the Court construed to mean “quantitatively calculated bone density.”  Id.  Thus, the Court denied Defendant’s motion for summary judgment of no literal infringement.  Id. at *7.

The Court granted Defendant’s motion for summary judgment of no infringement under the doctrine of equivalents after finding that Plaintiff merely reasserted its literal infringement arguments as doctrine of equivalent arguments and failed to provide particularized testimony and linking arguments in support of its doctrine of equivalents theory and Plaintiff’s expert failed to provide particularized testimony on a limitation-by-limitation basis.  Id. at *8-9.  In other words, Plaintiff’s repackaged literal infringement theory, without particularized linking evidence on a limitation-by-limitation basis, was insufficient to survive summary judgment of no infringement under the doctrine of equivalents.  Id.

A copy of the Memorandum Opinion is attached.

A general take away for parties asserting infringement claims under the doctrine of equivalents is that simply repackaging your literal infringement theory and its supporting evidence as evidence of your infringement claim under the doctrine of equivalents – without the particularized linking evidence on a limitation-by-limitation basis required to prove a claim of infringement under the doctrine of equivalents – is unlikely to survive summary judgment.

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.