By Memorandum Opinion entered by The Honorable Gregory M. Sleet in SurgiQuest v. Lexion Medical, LLC., Civil Action No. 14-382-GMS (D.Del. May 16, 2018), the Court denied Plaintiff/Counterclaim-Defendant SurgiQuest’s renewed motion for judgment as a matter of law (“JMOL Motion”) on the jury’s verdict which found that SurgiQuest had engaged in false and misleading advertising and unfair competition in violation of the Lanham Act and Delaware common law and awarded monetary damages to Defendant/Counterclaim-Plaintiff Lexion Medical, LLC. The Court also denied Lexion’s post-trial motions for permanent injunction, disgorgement of profits, attorneys’ fees and prejudgment interest. Id. at *2. The Court granted Lexion’s motion for postjudgment interest. Id. at *26.

In support of its JMOL motion on the jury’s award of monetary damages, SurgiQuest asserted that no reasonable jury could have awarded money damages because (1) Lexion failed to prove causation between the false advertising claims and damages; (2) the jury instructions on causation and damages were incorrect; and (3) the Court improperly admitted hearsay and salesperson confusion evidence. Id. at *4. In response, Lexion contended that SurgiQuest could not prove a lack of sufficient evidence because the pertinent statements were literally false, consumers purchased SurgiQuest’s product and stopped purchasing Lexion’s product, and the evidence of confusion showed that the false advertising actually deceived a portion of the buying public. Id. at *5.

After considering the entire record in the case, including the evidence in the record, the parties’ post-trial submissions, and the applicable law, the Court agreed with Lexion and concluded that (1) the evidence at trial was sufficient to support the jury’s verdict that there was a causal connection between the false advertising by SurgiQuest and Lexion’s loss; (2) the jury instructions were proper; and (3) the statements alleged by SurgiQuest to be hearsay and salesperson confusion evidence were properly admitted. Id. at *5-13. The Court also concluded that there was sufficient evidence to support the jury’s verdict awarding punitive damages to Lexion. Id. at*13-17.

A copy of the Memorandum Opinion is attached.

By Memorandum Opinion entered by The Honorable Richard G. Andrews in TQ Delta, LLC v. Zyxel Communications, Inc. et al., Civil Action No. 13-02013-RGA (D.Del. May 8, 2018) (consolidated), the Court rendered its Markman ruling construing thirteen (13) disputed terms in U.S. Patent Nos. 7,796,705 (“the ‘705 patent”), 8,335,956 (“the ‘956 patent”), 8,407,546 (“the ‘546 patent”), 8,468,411 (“the ‘411 patent”), 8,595,577 (“the ‘577 patent”), and 8,645,784 (“the ‘784 patent”).

A copy of the Memorandum Opinion is attached.

By Memorandum Opinion entered by The Honorable Richard G. Andrews in State of Delaware v. Purdue Pharma L.P. et al., Civil Action No. 18-383-RGA (D.Del. April 25, 2018), the Court granted Plaintiff State of Delaware’s Motion to Remand the action originally filed by Plaintiff in the Superior Court of Delaware against manufacturers, distributors, and pharmacy retailers of prescription opioids for their roles in Delaware’s opioid crisis. In granting the Motion to Remand the action back to Delaware Superior Court, the District Court found that it lacked federal subject matter jurisdiction over Plaintiff’s claims. Id. at *2.

Specifically, in the action, Plaintiff alleged that Defendants created and fueled the opioid crisis in Delaware by violating the Delaware Controlled Substances Act and the Federal Controlled Substances Act, among other things. Id. However, in its Complaint, Plaintiff alleged only state law claims of consumer fraud, nuisance, negligence, unjust enrichment, and civil conspiracy against McKesson Corporation. Id. Nonetheless, McKesson filed a notice removing the action to the District of Delaware asserting that there was federal question jurisdiction pursuant to the Federal Controlled Substances Act. Id. at *2-3. Thereafter, Plaintiff filed its Motion to Remand the action back to Delaware Superior Court. Id. at *3.

Because there was no dispute that Plaintiff’s claims arose under state law, McKesson had to show that a federal issue is (1) necessarily raised, (2) actually disputed, (3) substantial, and (4) capable of resolution without disrupting the federal-state balance approved by Congress. Id. at *4. Ultimately, the Court found that “the federal issues in [the] case are not necessarily raised, substantial, and possible to entertain without disrupting the congressionally – approved balance between state and federal courts.” Id. at *11. Thus, the Court found that Plaintiff’s state law claims do not “arise under the Constitution, laws or treaties of the United States” and did not confer federal question jurisdiction pursuant to 28 U.S.C. § 1331. Id. at *11.

A copy of the Memorandum Opinion 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. April 17, 2018), the Court granted defendant Amgen’s motion to dismiss the claim of plaintiffs Genetech and City of Hope (collectively “Genetech”) requesting a declaratory judgment that Amgen cannot market Mvasi™ before December 18, 2018.

Mvasi™ is a biosimilar version of Genetech’s Avastin®. During the “patent dance” prescribed by the Biologics Price Competition and Innovation Act (“BPCIA”), 42 U.S.C. § 262(l), Amgen made a statement pursuant to 42 U.S.C. §262(l)(3)(B) that it did not intend to begin commercial marketing of Mvasi™ before December 18, 2018. Id. at *1. Amgen later provided notice that it would not start commercial marketing of Mvasi™ before April 4, 2018 – eight months earlier than the date it previously provided. Genetech filed its claim requesting a declaratory judgment seeking to enforce Amgen’s earlier representation that it would not commence the commercial marketing of Mvasi™ before December 18, 2018. Id. at *3. Amgen moved to dismiss Genetech’s commercial marketing claim asserting that it failed to state a claim and that the Court lacked subject matter jurisdiction under Federal Rules of Civil Procedure 12(b)(6) and 12(b)(1). Id. at *1.

Upon review, the Court determined there was not yet an “actual controversy” to warrant the Court exercising jurisdiction over Genentech’s commercial marketing claim under the Declaratory Judgment Act. Id. at *4. In other words, because it was already beyond April 4, 2018 and, other than the notice of commercial marketing, there was no indication that Mvasi™ had actually launched or would be launched before December 18, 2018, the commercial marketing claim was not of “sufficient immediacy” to warrant the issuance of a novel declaratory judgment. Id. The Court noted that, if the claim ripens into an “actual controversy” – meaning Amgen launches Mvasi™ before December 18, 2018 – there would be an opportunity for Genentech to seek a temporary restraining order or preliminary injunction at that time. Id.

A copy of the Memorandum Opinion is attached.

By Order entered by The Honorable Gregory M. Sleet in Alarm.com, Inc., et al. v. Securenet Technologies, Civil Action No. 15-807-GMS (D.Del. April 6, 2018), the Court rendered its Markman ruling construing three (3) disputed terms and certain variants of one term in U.S. Patent Nos. 7,885,635 (“the ‘635 patent”), 8,073,931 (“the ‘931 patent”), 8,473,619 (“the ‘619 patent”), and 8,478,844 (“the ‘844 patent”).

A copy of the Markman 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. March 31, 2018) (consolidated), the Court granted Defendants’ motions to dismiss as to claim 1 of U.S. Patent No. 6,742,021 (“the ‘021 patent”), claim 1 of U.S. Patent No. 6,523,061 (“the ‘061 patent”), and claim 1 of U.S. Patent No. 6,757,718 (“the ‘718 patent”) after finding that those claims are each drawn to an abstract idea and that none of them provide an inventive concept. In reaching its findings, the Court noted, among other things, that the subject claims are “aspirational in nature and devoid of any implementation details or technical description” that would permit the Court to conclude that any of the subject claims as a whole are directed to something other than the abstract idea of retrieving electronic data in response to a spoken request, and transmitting the retrieved data to a user. Id. at *18.

A copy of the Memorandum Opinion is attached.

By Memorandum Opinion entered by The Honorable Leonard P. Stark in 3G Licensing, S.A. et al. v. Blackberry Ltd. et al., Civil Action No. 17-82-LPS-CJB (D.Del. March 22, 2018) (consolidated), the Court granted Defendants’ motion pursuant to Federal Rule of Civil Procedure 12(c) for judgment on the pleadings that all the claims of U.S. Patent No. 6,212,662 (“the ‘662 patent”) are invalid under 35 U.S.C. § 101. The ‘662 patent is entitled “Method and Devices for the Transmission of Data with Transmission Error Checking” and “[t]he invention relates to a method for the transmission of data with transmission effort checking.” Id. at *1. In short, upon conducting the two step Alice/Mayo analysis, the Court found that the claims of the ‘662 patent were directed to an abstract idea and did not contain an inventive concept. Id. at *11-18. Thus, the Court held that the ‘662 patent is not patent eligible and granted motion for judgment on the pleadings on invalidity in favor of Defendants. Id. at *18.

A copy of the Memorandum Opinion is attached.

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.