By Memorandum Order entered by The Honorable Leonard P. Stark in Pacific Biosciences of California, Inc. v. Oxford Nanopore Technologies, Inc. et al., Civil Action No. 17-275-LPS (D.Del. June 12, 2019), the Court granted Plaintiff’s motion for reconsideration of the portion of the Court’s Claim Construction Order that determined that the term “kinetic steps” in claim 1 of U.S. Patent No. 9,678,056 is indefinite. Initially, the Court concluded that “claim 1 ‘requires that the enzymatic reaction be able to be characterized in terms of a precise number of steps,’ but that a POSA would not ‘be able to determine the number of kinetic steps and each step’s rate constant . . . with reasonable certainty.’” Id. at *2-3. In support of its motion for reconsideration, Plaintiff contended that reargument was appropriate because the Court misapprehended the claim language, failed to consider an expert’s opinions and defendant’s IPR petition, and lacked the opportunity to consider a document newly-produced by Defendant. Id. at *3.

After review of the evidence, the Court concluded that it had misapprehended certain factual arguments and would benefit from the presentation of additional evidence before making a final determination on indefiniteness. Id. Thus, in granting the motion for reconsideration, the Court concluded that further proceedings were necessary to resolve the indefiniteness dispute because it was no longer persuaded that a POSA (person of ordinary skill in the art) must be able to determine the number of kinetic steps in a reaction as well as each step’s rate constant. Id. at *3-6.

A copy of the Memorandum Order is attached.

By Memorandum Opinion entered by The Honorable Maryellen Noreika in Abbott Cardiovascular Systems, Inc. et al. v. Edwards Lifesciences Corp. et al., Civil Action No. 19-149-MN (D.Del. June 6, 2019), the Court denied the motion for preliminary injunction of Plaintiffs, Abbott Cardiovascular Systems, Inc. and Evalve, Inc., seeking to enjoin Defendants, Edwards Lifesciences Corp. and Edwards Lifesciences, LLC, from manufacturing their PASCAL mitral valve system in the United States.  Plaintiffs claimed that Defendants’ product infringed claims of U.S. Patent Numbers 7,288,097 (“the ‘097 patent), 6,752,813 (“the ‘813 patent”), 7,563,267 (“the ‘267 patent”, 7,736,388 (“the ‘388 patent”) and 8,057,493 (“the ‘493 patent”) (collectively, “the patents-in-suit”).  Id. at *4.

In denying the motion, the Court found that, although Plaintiffs did show a likelihood of success as to infringement of the asserted claims of the ’097 and ’813 patents, they failed to show that the obviousness challenges asserted by Defendants lacked substantial merit.  Id. at * 7-60.  Plaintiffs also did not clearly show that they were likely to suffer irreparable harm if an injunction was not granted, and that the public interest weighed in favor of enjoining the U.S. manufacture of the PASCAL mitral valve system for sale in Europe.  Id.  In fact, the Court found that the public interest weighed against granting the preliminary injunction because the products are not interchangeable products, do not involve interchangeable procedures, and healthcare providers and patients would benefit from having both of the potentially life-saving products available in the market.  Id. at *59.

A copy of the Memorandum Opinion is attached.

The case is yet another example of the fact that preliminary injunctions and TROs are extraordinary reliefs and are only granted in the District of Delaware in rare situations after a movant clearly establishes (1) a likelihood of success on the merits of the claims, (2) irreparable harm is likely if an injunction is not granted, (3) the balance of the equities tips in favor of the movant, and (4) granting an injunction is in the public interest.

By Memorandum Order entered by The Honorable Maryellen Noreika in Agrofresh Inc. v. Essentiv LLC et al., Civil Action No. 16-662-MN (D.Del. May 31, 2019), the Court granted the motion to stay of defendants pending resolution of plaintiff’s appeal to the Federal Circuit of the Patent Trial and Appeal Board’s (“PTAB”) Final Written Decision in the inter partes review (“IPR”) of U.S. Patent No. 9,394,216 (“the ‘216 patent”) finding that all claims of the ‘216 patent are unpatentable.  In so ruling, the Court determined that (1) the potential for simplification of the issues in the case is substantial; (2) although the case is at an advanced stage than is typical for a motion to stay, the likelihood that the issues involved in summary judgement and trial will be simplified by a stay outweighs any weight to be given to the stage of the proceedings factor; (3) neither the timing of Defendants’ request for the IPR nor the timing of their request for a stay support a conclusion that Defendants are pursuing an inappropriate tactical advantage; and (4) Defendants and Plaintiff are not currently competitors.  Thus, Plaintiff’s damages, if any, are monetary and could be remedied by the award of interest if Plaintiff ultimately prevails.  Id. at *1-5.

A copy of the Memorandum Order is attached.

The general take away from this ruling is that, if there is substantial potential for simplification of the issues for summary judgment or trial by a ruling in the IPR of the patent-in-suit, the parties should consider filing a motion to stay the infringement action in the district court.

By Memorandum Opinion entered by The Honorable Maryellen Noreika in Viretem Ventures, LLC v. YouTube, LLC and Google, LLC, Civil Action No. 18-917 – MN (D.Del. May 16, 2019), the Court denied the motion of Defendants YouTube, LLC (“YouTube”) and Google LLC(“Google”) to transfer venue of the patent infringement action asserted by Plaintiff Virentem Ventures LLC (“Plaintiff”) to the Northern District of California pursuant to 28 U.S.C. § 1404(a). Plaintiff, YouTube and Google are all Delaware corporations with their principal places of business in California. Id. at *1.

After analyzing and weighing the twelve Jumara factors, the Court determined that six of the factors are neutral, three weigh to varying degrees against transfer and three weigh in favor of transfer. Id. at *3-11. Of particular note in the Court’s analysis is that it rejected Defendants’ argument that Plaintiff’s choice of forum should be afforded minimal weight and less deference “because Plaintiff chose to litigate in the forum where it is incorporated, rather than the forum where its principal place of business is located.” Id. at *3-4. The Court followed the balancing principles set forth in Shutte v. Armco Steel Corp., 431 F.2d 22, 25 (3d Cir. 1970) and gave the Plaintiff’s forum choice paramount consideration in balancing the Jumara factors. Ultimately, the Court decided that Defendants failed to demonstrate that the Jumara factors weigh strongly in favor of transfer.

A copy of the Court’s Memorandum Opinion is attached.

By Memorandum Order entered by The Honorable Richard G. Andrews in M. Denise Tolliver v. Highmark BCBSD, Inc., Civil Action No. 18-797-RGA (D.Del. May 13, 2019), the Court denied Plaintiff’s motion for reconsideration of the Court’s previous order denying remand to state court. In denying the motion, the Court explained that “[t]he purpose of a motion for reconsideration is to ‘correct manifest errors of law or fact or to present newly discovered evidence. A proper Rule 59 (e) motion must rely on one of three grounds: (1) an intervening change in controlling law; (2) the availability of new evidence; or (3) the need to correct a clear error of law or prevent manifest injustice. A motion for reconsideration is not an appropriate vehicle to reargue issues that the court has already considered and decided.’” Id. at *1 (internal citations omitted).

Plaintiff’s motion did not allege any intervening change in controlling law, the availability of new evidence as to timeliness or waiver of removal, or a clear error of law in the Court’s previous decision denying the remand. Id. at *1-2. Instead, Plaintiff’s motion focused on the state court’s dismissal of her state law claims which were irrelevant to the merits of removal to federal court. Id. Thus, Plaintiff’s motion failed to meet the standard for reconsideration of the remand order. Id.

A copy of the Memorandum Order is attached.

By Memorandum Opinion entered by The Honorable Colm F. Connolly in Ultravision Technologies, LLC v. RMG Networks Holding Corp., Civil Action No. 18-1333-CFC (D.Del. May 6, 2019), the Court granted Defendant’s motion to transfer the patent infringement action to the United States District Court for the Northern District of Texas pursuant to 28 U.S.C. § 1404(a). In so ruling, the Court determined that six of the twelve Jumara factors favored transfer, two factors weighed against transfer, and four factors were neutral. Id. at *3-7.

A copy of the Memorandum Opinion is attached.

By Memorandum Opinion entered by The Honorable Maryellen Noreika in Agrofresh Inc. v. Hazel Technologies, Inc., Civil Action No. 18-1486 –MN (D.Del. April 25, 2019), the Court denied Defendant’s motion to dismiss Plaintiff’s claim of direct infringement of U.S. Patent Nos. 6,017,849 (“the ‘849 Patent”) and 6,313,068 (“the ‘068 Patent”) after finding that Plaintiff’s complaint identified Defendant’s accused product, the specific claims in the asserted patents that Defendant’s accused product allegedly infringed, and how the accused product purportedly infringed those claims. Following the Federal Circuit’s prior decision in Disc Disease Sols. Inc. v. VGH Sols., Inc., 888 F.3d 1256 (Fed. Cir. 2018), and a similar conclusion reached in Primos Tech., Inc. v. Samsung Elec. Co., No. 18307-RGA, 2018 WL 5630585, *4 (D.Del. Oct. 31, 2018), the Court concluded that Plaintiff’s allegations were sufficient under the plausibility standard of Iqbal/Twombly. Id. at *3-4.

A copy of the Memorandum Opinion is attached.

By Memorandum Order entered by The Honorable Richard G. Andrews in Express Mobile, Inc. v. Liquid Web, LLC, Civil Action No. 18-1177-RGA (D.Del. April 18, 2019), the Court granted Defendants’ motions to dismiss as to past damages and denied their motions as to direct infringement.

With respect to past damages, Defendants argued that Plaintiff failed to plead compliance with the marking statute and that was a basis to dismiss Plaintiff’s claims to the extent that they sought past damages. Id. at *3. Importantly, a patentee who makes or sells a patented article must mark the articles to recover past damages pursuant to 35 U.S.C. §287(a). Id. The burden is on the patentee to plead compliance with §287(a). Id.

In this action, Plaintiff alleged that Defendants infringed U.S. Patent Nos. 6,546,397, 7,594,168, 9,471,287 and 9,928,044 through their use of certain website building tools. In response to Defendants’ motion dismiss as to past damages, Plaintiff alleged that there was no evidence that there was anything for it to mark, but did not argue that it pled compliance with the marking statute, §287(a). Id. at *3-4.

In considering the motions to dismiss, the Court noted that, at the motion to dismiss stage, it is only concerned with the sufficiency of the claims. Id. at *4. It explained that “[a] claim for past damages requires pleading compliance with the marking statute – even when compliance is achieved, factually, by doing nothing at all.” Id. Given that Plaintiff did not plead compliance with the marking statute, it failed to state a claim for past damages. Id.

A copy of the Memorandum Order is attached.

By Memorandum Order entered by The Honorable Colm J. Connolly in F’Real Foods, LLC et al. v. Hamilton Beach Brands, Inc. et al., Civil Action No. 16-41-CFC (D.Del. April 12, 2019), the Court denied Defendants’ motion to exclude the testimony of Plaintiffs’ damages expert, Dr. Michael P. Akemann, on lost profits and reasonable royalty. Defendants argued that “Dr. Akemann’s lost profits opinion [was] based on assumptions that are purely speculative and contrary to record evidence” and that “his reasonable royalty opinion is unreliable and must be excluded because he fail[ed] to properly apportion value between the patented and unpatented features of the accused products.” Id. at *1. Defendants did not challenge Dr. Akemann’s knowledge, training, expertise, or the facts underlying his opinions. Id. at *1-2. Ultimately, the Court found that Defendants’ challenges went to the weight of the expert’s opinions and not to their admissibility. Id. at *2. Thus, Defendants’ motion to exclude the expert testimony on lost profits and reasonable royalty was denied. Id. at *3.

A copy of the Memorandum Opinion is attached.

By Memorandum Order entered by The Honorable Richard G. Andrews in Bio-Rad Laboratories, Inc. v. 10X Genomics, Inc., Civil Action No. 18-1679-RGA (D.Del. April 8, 2019), the Court denied Defendant’s motion to dismiss for lack of patent eligibility under 35 U.S.C. § 101. The patents in-suit, U.S. Patent Nos. 9,562,837 (“the ‘837 patent”) and 9,896,722 (“the ‘722 patent”), claim technology related to handling samples in a way that reduces sample contamination and sample loss. Id. at *1. In its motion, Defendant asserted that the patents in-suit “are directed to ‘the natural phenomenon of allowing two different liquids of different densities to separate from each other.’” Id. at *5. Plaintiff responded that the patents are not that simple. Rather, the “the patents are directed to the patent-eligible result of a method and apparatus to reduce sample contamination when handling samples.” Id. The Court agreed with Plaintiff and denied the motion to dismiss. Id. at *5-7.

A copy of the Memorandum Order is attached.