By Memorandum Opinion entered by The Honorable Richard G. Andrews in D&M Holdings Inc. et al. v. Sonos, Inc., Civil Action No. 16-141-RGA (D.Del. April 18, 2017), the Court granted Defendant’s Motion to Dismiss Plaintiff’s First and Third Counterclaims for Patent Infringement after finding that the asserted claims in the patents that are the subject of those counterclaims are drawn to abstract ideas and do not provide an inventive concept. Specifically, the Court found that U.S. Patent No. 7,343,435 (“the ‘435 patent”) is directed to the abstract idea of receiving, detecting, and storing information and does not provide an inventive concept. Id. at *9-12. The Court also found that U.S. Patent No. 7,305,694 (“the ‘694 patent”) is directed to the abstract idea of selecting a receiver connection for a piece of media based on the media’s encoding format and does not provide an inventive concept. Id. at *16-19.

A copy of the Memorandum Opinion is attached.

 

On April 13, 2017, the United States Court for the District of Delaware announced that The Honorable Gregory M. Sleet will take senior status as of May 1, 2017.  Judge Sleet has served as a District Judge for the District of Delaware since 1998.  He served as Chief Judge for the District of Delaware from 2007 to 2014.

The Court’s announcement notes that Judge Sleet has handled one of the busiest, most complex dockets in the nation during his nearly 19 years on the bench and has served with great distinction.  The Court’s announcement also notes that Judge Sleet intends to render substantial judicial service as a Senior Judge.

Given the announcement earlier this year that Senior Judge Sue Robinson will retire in August, the District of Delaware will have two District Judge vacancies as of May 1, 2017.  The Court hopes to fill the vacancies in a timely manner.

A copy of the Court’s announcement is attached.

By Memorandum Opinion entered by The Honorable Gregory M. Sleet in IP Communication Solutions, LLC v. Viber Media (USA) Inc., Civil Action No. 16-134-GMS (D.Del. April 5, 2017), the Court granted in part Defendant’s motion to dismiss complaint for failure to state a claim. Specifically, the Court granted Defendant’s motion to dismiss as to Plaintiff’s claim of induced infringement but denied Defendant’s motion as to Plaintiff’s claim of direct infringement. Id. at *7 and 9.

In denying Defendant’s motion to dismiss as to Plaintiff’s claim of direct infringement, the Court concluded that Plaintiff had met its burden under Twombly/Iqbal. Id. at *4. The Court distinguished this case from the cases cited by Defendant and concluded that Plaintiff’s claim chart plausibly alleged how Defendant’s network-based system provides VoIP services in a way that meets all of the claim limitations of the patent-in-suit. Id. at *6. Thus, the Court noted that it was unclear how, in this circumstance, Plaintiff could have been any more specific about what aspects of Defendant’s technology infringe the identified claim limitations of the patent-in-suit. Id.

In granting Defendant’s motion to dismiss as to Plaintiff’s claim of induced infringement, the Court concluded that Plaintiff failed to provide facts that would allow the Court to reasonably infer that Defendant had the specific intent to induce infringement. Id. at *7. In other words, the complaint failed to allege facts supporting how Defendant specifically instructed or directed customers to use Defendant’s application and corresponding server system in a manner that would infringe the patent-in-suit. Id. at *8. Thus, Plaintiff did not meet its pleading burden with respect to its claim for induced infringement. Id. at *8-9.

A copy of the Memorandum Opinion is attached.

The general takeaway is that Form 18 no longer provides the proper measure for the sufficiency of a complaint that alleges infringement. Plaintiffs in infringement action need to be mindful to plead enough specific facts in their claims to meet the requirements of Twombly/Iqbal.

By Memorandum Opinion entered by The Honorable Richard G. Andrews in Sonos, Inc. v. D&M Holdings Inc. et al., Civil Action No. 14-1330-RGA (D.Del. March 13, 2017), the Court denied Defendants’ Motion for Partial Judgment on the Pleadings for Lack of Patent-Eligible Subject Matter under Section 101 of the Patent Act, 35 U.S.C. § 101. The patents at issue in the motion were U.S. Patent Nos. 8,588,949 (“the ‘949 patent”), 7,571,014 (“the ‘014 patent”), 9,202,509 (“the ‘509 patent”), and 9,219,959 (“the ‘959 patent”). Id. at *2. Defendants moved for partial judgment claiming that those patents are directed to patent ineligible subject matter. Id.

After evaluation of Defendants’ motion and the patents at issue, the Court found that the patents at issue claim patent eligible subject mater and are not drawn to an abstract idea. Id. at *5-16. Thus, it was unnecessary for the Court to proceed past step one of the Mayo/Alice analysis for determining patent subject matter eligibility in reaching its conclusion. Id.

A copy of the Memorandum Opinion is attached.

By Memorandum Opinion entered by The Honorable Leonard P. Stark in Reckitt Benckiser LLC v. Aurobindo Pharma Ltd., Civil Action No. 14-1203-LPS (D.Del. March 6, 2017), the Court granted Defendants’ motion for summary judgment of non-infringement of the asserted claims of U.S. Patent No. 6,955,821 (“the ‘821 patent”) and U.S. Patent No. 7,838,032 (“the ‘032 patent”) with respect to Defendants’ proposed generic version of Mucinex® DM, an extended-release tablet that contains dextromethorphan hydrobromide and guaifenesin. The claim limitations of the patents-in-suit require the claimed drug product to include both an immediate-release formulation and a sustained release formulation of the drug guaifenesin. Id. at *6. Defendants moved for summary judgment on the basis that Plaintiff failed to present sufficient evidence that Defendants’ proposed product has two distinct formulations, as required by each asserted claim. Id. at *6-7.

The Court agreed with Defendants that summary judgment was warranted. Id. at *7. The Court explained that, on the record created by the parties and taking all of the evidence in the light most favorable to Plaintiff and drawing all reasonable inferences in Plaintiff’s favor, no reasonable factfinder could find that Defendants’ proposed product contains the two distinct formulations required by the asserted claims. Id.

A copy of the Memorandum Opinion is attached.

By Memorandum Opinion entered by The Honorable Gregory M. Sleet in Recro Gainesville LLC v. Actavis Laboratories FL, Inc., Civil Action No. 14-1118-GMS (D.Del. February 24, 2017)(consolidated), the Court, following a three-day bench trial and having considered the entire record in the case and the applicable law, concluded that Actavis’ proposed ANDA products infringe all of the asserted claims of U.S. Patent No. 9,132,096 (“the ‘096 patent”) and U.S. Patent No. 6,902,742 (“the ‘742 patent”). As a result, the Court ordered that, pursuant to 35 U.S.C. §271(e)(4)(A), the effective date of any FDA approval of Actavis’ proposed ANDA products shall not be earlier than the later expiration date of the ‘096 and ‘742 patents. Id. at *28. The Court, pursuant to 35 U.S.C. §271(e)(4)(B), also enjoined Actavis, its officers, agents, attorneys, and employees, and those acting in privity or concert with any of them, from engaging in the commercial manufacture, use, offer to sell, or sale within the United States, or importation into the United States of Actavis’ ANDA products prior to the expiration of the ‘096 and’742 patents. Id.

A copy of the Memorandum Opinion is attached.

By Memorandum Opinion entered by The Honorable Leonard P. Stark in Intellectual Ventures I LLC et al. v. Symantec Corp. et al., C.A. No. 13-440-LPS (D.Del. February 13, 2017), the Court granted Defendants’ motion for summary judgment of patent ineligibility upon finding that the claims at issue – claims 25 and 33 of U.S. Patent No. 5,537,533 (“the ‘533 patent”) – (1) are directed to an abstract idea, and (2) fail to include any inventive concept sufficient to elevate them into patent-eligible applications of the abstract idea of backing up data. Id. at *3-11.

In so ruling, the Court agreed with Symantec that the claims at issue simply recite the basic steps of copying data from one location to another several times and sending a confirmation that the data has been received; and this is something humans and institutions have been doing for centuries, even before computers. Id. at *8. The Court also agreed that, although the claims invoke existing computer functionality as a tool to better back up data, the claims do not themselves purport to improve anything about the computer or network itself. Id. at *8-9. For example, unlike Enfish and McRo, the claims do not improve the way computers store information or otherwise function and do not otherwise provide an inventive concept. Id. Therefore, the court agreed with Symantec that the claims lack anything sufficient to transform the abstract idea into patent-eligible subject matter. Id.

A copy of the Memorandum Opinion is attached.

The general take away is that simply citing to generic computer components or functionality when describing an abstract idea, law of nature, or physical phenomena without some new, additional improvement, unique combination or something else that can be considered an inventive concept is not going to transform patent-ineligible subject matter into patent-eligible under 35 U.S.C. §101. Whenever a patent possibly claims an abstract idea, law of nature or physical phenomena, an analysis of the claims under the two-step process set forth in Mayo should be performed.

By Memorandum Opinion entered by The Honorable Richard G. Andrews in Endo Pharmaceuticals Inc. et al. v. Actavis Inc. et al., Civil Action No. 14-1381-RGA (D.Del. February 8, 2017), the Court granted defendant Teva Pharmaceuticals USA, Inc.’s motion to dismiss Counts II and VI of the Complaint for failure to state a claim pursuant to Federal Rule of Civil Procedure 12(b)(6). With respect to Counts II and VI, Teva argued that it was not a proper defense because “all alleged infringing activity had ceased” prior to Teva’s acquisition of Defendant Actavis. Id. at *1. Plaintiffs responded that as “owner and real party in interest . . . it is plausible that Teva [would be] liable for the past infringements.” Id. The Court noted that, while Teva may ultimately be financially liable for the past infringements, Plaintiffs had not pled that Teva is an infringer. Thus, the Court found that Teva was not a proper defendant as to the counts based on acts of infringement that occurred prior to Teva’s acquisition of Actavis. Id. Therefore, Counts II and VI of the Complaint were dismissed as to Teva.

A copy of the Memorandum Opinion is attached.

The United States District Court for the District of Delaware announced that, effective February 3, 2017, the Honorable Sue L. Robinson, transitioned to Senior Judge.  In the announcement, the Court also set forth certain changes to its case assignment practices given Judge Robinson’s transition to a Senior United States District Judge.  In short, Judge Robinson will not be assigned any new criminal cases or new civil cases.  Until the vacancy is filled, all new criminal cases will be assigned to Chief Judge Stark, Judge Sleet and Judge Andrews.  Until the vacancy is filled, all new civil cases will be assigned to Chief Judge Stark, Judge Sleet, Judge Andrews and a new docket referred to as “Vacant Judgeship” or “VAC”.  The cases assigned to VAC will also be referred to one of the Magistrate Judges – Judge Thynge (“MPT”), Judge Burke (“CJB”), and Fallon (“SRF”).

A copy of the Court’s Announcement is attached.

By Memorandum Order entered by The Honorable Leonard P. Stark in Yodlee, Inc. v. Plaid Technologies Inc., Civil Action No. 14-1445-LPS-CJB (D.Del. January 27, 2017), the Court overruled the objections of both parties and adopted in full the Report and Recommendation previously entered by United States Magistrate Judge Christopher J. Burke concluding that defendant’s motion to dismiss the asserted patent infringement claims should be granted in part and denied in part for the reasons set forth in Judge Burke’s detailed 35 U.S.C. § 101 analysis. The Court also granted in part and denied in part defendant’s motion for summary judgment seeking judgment of patent ineligibility with respect to all asserted claims of the seven patents in suit. Id. at *3.

A copy of the Memorandum Order is attached.