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By Memorandum Opinion and Order entered by The Honorable Maryellen Noreika in Invensas Corporation v. Samsung Electronics Co., Ltd. et al., Civil Action No. 17-1363-MN (D.Del. November 16, 2018), the Court entered its Markman ruling construing three (3) terms in dispute in U.S. Patent Numbers 6,232,231 (“the ‘231 Patent”) and 6,849,946 (“the ‘946 Patent”).

Ultimately, the Court agreed with Plaintiff Invensas’s proposed construction for all three (3) terms in dispute finding (1) the terms “substantially planar” and “substantially co-planar” are not indefinite and that, based on the specification, a person of ordinary skill in the art (“POSA”) would understand the term “substantially planar” means “substantially flat” and the term “substantially co-planar” means “substantially at the same elevation”; (2) the specification, when read in its entirety, discloses that “dummy connectors” may be connected to a power supply or ground, but does not require that they be connected to a source that can supply a power or ground voltage as Samsung’s proposed construction would require; and (3) the term “plurality of laterally spaced dummy trenches” means “two or more dummy trenches arranged with spaces between their sides.” Id. at *5-9.

Copies of the Memorandum Opinion and Order are attached.

This is the first opinion that I have reviewed that was issued by Judge Noreika. The opinion is clear, concise, well-reasoned and easy to follow. Not an easy task to accomplish in the patent area. It appears that Judge Noreika is off to an excellent start on the bench.

By Memorandum Order entered by The Honorable Richard G. Andrews in Dragon Intellectual Property, LLC v. Dish Network, LLC, Civil Action No. 13-02066-RGA (D.Del. November 7, 2018) (consolidated), the Court denied the motions of Defendants DISH Network, LLC and Sirius XM Radio Inc. requesting the Court to declare the case exceptional and award reasonable attorneys’ fees pursuant to 35 U.S.C. § 285. In denying the motions, the Court explained that the moving defendants are not prevailing parties because the previous judgments of non-infringement in the cases were vacated and, thus, the Court has not awarded “actual relief on the merits.” Id. at *2.

The Court also denied Defendants’ motions seeking an award of fees from Plaintiff’s former attorneys pursuant to 28 U.S.C. §1927. Id. at *3. Defendants identified three issues with Plaintiff’s counsel’s representation of Plaintiff that they believed entitled Defendants to an award of attorneys’ fees against Plaintiff’s counsel pursuant to 28 U.S.C. §1927. Id. The Court disagreed and found that the conduct identified by Defendants was not sufficient to support an award of fees pursuant to Section 1927 under the Third Circuit standard. Id. at *3-4.

A copy of the Memorandum Order is attached.

By Memorandum Order entered by The Honorable Richard G. Andrews in Bio-Rad Laboratories, Inc. et al. v. 10X Genomics, Inc., Civil Action No. 15-152-RGA (D.Del. November 2, 2018), the Court denied Defendant’s motion to exclude the Supplemental Expert Report and Opinion of Plaintiffs’ damages expert, James E. Malackowski, and preclude Plaintiffs from presenting lost profits at trial.

By way of background, the Court entered a prior Daubert order which excluded Mr. Malackowski’s lost profits opinion regarding a two-supplier market and his reasonable royalty opinion to the extent that he failed to account for apportionment. Id. at *1. The Court subsequently granted Plaintiffs’ request to supplement Mr. Malackowski’s report and Plaintiffs subsequently conceded that they would not present a claim for lost profits at trial. Id. Thus, the only issue before the Court on Defendant’s motion to exclude the Supplemental Expert Report is whether it filled the gap in Mr. Malackowski’s initial reasonable royalty opinion with respect to apportionment. Id.

Defendant’s main argument was that Mr. Malackowski’s apportionment methodology remained flawed because he relied on qualitative, rather than quantitative, analyses. Id. However, the Court noted that Defendant’s theory conflicts with the general understanding that “any reasonable royalty analyses necessarily involves an element of approximation and uncertainty.” Id. After considering the parties’ briefing and oral argument, the Court concluded that “Mr. Malackowski’s supplemental report fills the gaps in his initial report at least to the extent necessary to make his reasonable royalty opinion admissible.” Id. at *4. The Court also rejected the remaining arguments made by Plaintiffs to exclude the supplemental report and testimony with respect to the reasonable royalty and apportionment.

A copy of the Memorandum Order is attached.

By Memorandum Order 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. October 25, 2018), the Court denied Power Integration’s Motion to Preclude Evidence Under Daubert. In short, the Court concluded that (1) the challenged expert, Dr. Hanfield, is sufficiently qualified to provide reliable and helpful testimony on the topics that he has been offered; (2) Dr. Hanfield is highly experienced in supply chain management is a preeminent figure in the field and has coauthored textbooks; (3) there is a reasonable factual basis to find that the relevant market is within Dr. Hanfield’s area of expertise and he need not have the very specific and particularized additional experience that defendant claims is required; (4)a reasonable jury could find that Dr. Hanfield’s opinion is supported by the evidence; and (5) defendant’s concerns go to the weight the  jury may choose to attribute to Dr. Hanfield’s opinions and not their admissibility. Id. at *1-2.

A copy of the Memorandum Order is attached.

By Memorandum Opinion and Order entered by The Honorable Leonard P. Stark in Enzo Life Sciences, Inc. v. Hologic Inc. et al., Civil Action No. 16-894-LPS-CJB (D.Del. October 15, 2018), the Court entered its Markman ruling construing eight (8) terms in dispute in U.S. Patent No. 6,221,581 (“the ‘581 patent”).

Copies of the Memorandum Opinion and Order are attached.

By Memorandum Opinion entered by The Honorable Leonard P. Stark in Visual Effect Innovations, LLC v. Sony Electronics Inc., Civil Action No. 17-1276-LPS (D.Del. September 30, 2018), the Court denied Sony’s partial motion to dismiss the Complaint for failure to state a claim pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure based on Sony’s contention that the asserted claims of U.S. Patent Numbers 9,699,444 (“the ‘444 patent”) and 9,716,874 (“the ‘874 patent”) are not directed to patent-eligible subject matter under 35 U.S.C. § 101.

The claims asserted from the ‘444 patent and ‘874 patent relate to the modification of image frames in a video stream. Id. at *1. In its complaint asserting patent infringement against Sony, Visual Effect Innovations, LLC (“VEI”) asserts that Sony makes TVs that modify image frames in a manner that infringe claim 26 of the ‘444 patent and claim 1 of the ‘874 patent. Id. In its motion to dismiss, Sony claimed that the asserted claims are invalid under 35 U.S.C. § 101 because they are directed to the abstract idea of image manipulation and do not contain an inventive concept “because the recited processor and storage elements are generic computer components, and the rest of the limitations do not result in the display of the recited images in any unconventional manner.” Id. at 10.

In denying Sony’s motion to dismiss, the Court found that Sony did not meet its burden to justify dismissal. Id. at *11. In other others, the Court could not conclude that, “taken as an ordered combination, the claims were well-understood, routine or conventional methods and apparatuses for image manipulation.” Id. Also, the Court noted that “the patent-eligibility inquiry could be impacted both by claim construction and by further factual development concerning the use of flicker described by the patents at the time of the inventions.” Id. Thus, the Court denied the motion without prejudice to Sony’s ability to raise another Section 101 challenge during the summary judgment stage of the case. Id. at *11-12.

A copy of the Memorandum Opinion is attached.

Yesterday, the United States Court for the District of Delaware provided an update on its case assignments and Magistrate Judges utilization plan in light of the last week’s retirement of Judge Gregory M. Sleet.

The update advised that, with few exceptions, all open cases that were formerly assigned to Judge Gregory M. Sleet (GMS docket) have been reassigned to one of the four active District of Delaware District Judges. Newly-filed cases are being assigned in essentially equal numbers to the four active District of Delaware District Judges: Chief Judge Leonard P. Stark (LPS docket), Judge Richard G. Andrews (RGA docket), Judge Colm F. Connolly (CFC docket), and Judge Maryellen Noreika (MN docket).

With respect to utilization of the three Magistrate Judges in the District of Delaware, going forward, in newly-filed cases, Chief Magistrate Judge Mary Pat Thynge will work with all four active District Judges. Magistrate Judge Christopher Burke will be paired with Chief Judge Stark and Judge Noreika, and Magistrate Judge Sherry Fallon will be paired with Judge Andrews and Judge Connolly. Each District Judge will determine how he or she will utilize the Magistrate Judges.

A copy of the District of Delaware’s Updated case assignment and Magistrate Judge utilization plan is attached.

By Memorandum Opinion entered by The Honorable Leonard P. Stark in Biomerieux, S.A. et al. v. Hologic, Inc. et al., Civil Action 18-21-LPS (D.Del. September 26, 2018), the Court denied the motion of defendant Grifols S.A. (“GSA”) to dismiss the patent infringement claims asserted against it for lack of personal jurisdiction pursuant to Federal Rule of Civil Procedure 12(b)(2). In their complaint, plaintiffs alleged that three of the Procleix® branded test products of GSA and defendant Grifols Diagnostic Solutions, Inc (“GDS”) infringe two U.S. patents owned by plaintiffs. Id. at *1. GSA is a Spanish corporation with a principal place of business in Barcelona, Spain. In its motion to dismiss, GSA claimed that there was no basis for personal jurisdiction over it in Delaware and submitted declarations in support of its lack of jurisdiction claims. Id. Plaintiffs pointed to public documents that they believed showed sufficient “minimum contacts” with Delaware by GSA that established a prima facie showing of jurisdiction. Id. at *3-6. The Court agreed with Plaintiffs and concluded that Plaintiffs had made a prima facie showing of sufficient minimum contacts with Delaware by GSA that justified the exercise of personal jurisdiction over GSA. Id. at *6. Plaintiffs also persuaded the Court that Rule 4(k)(2) of the Federal Rules of Civil Procedure provided an additional basis for finding personal jurisdiction in the case. Id.

A copy of the Memorandum Opinion is attached.

By Memorandum Opinion entered by The Honorable Leonard P. Stark in Align Technology, Inc. v. 3Shape A/S et al., Civil Action No. 17-1646-LPS-CJB (D.Del. September 7, 2018) and Align Technology, Inc. v. 3Shape A/S et al., Civil Action No. 17-1647-LPS-CJB (D.Del. September 7, 2018), the Court denied defendants’ motion to dismiss in part in both actions with respect to the motion’s assertions that the Complaint failed to plausibly allege direct, indirect and willful infringement of the asserted patents under Rule 12(b)(6) of the Federal Rules of Civil Procedure. The Court granted defendants’ motion to dismiss in part in the 1646 action after finding that claim 1 of United States Patent Number 7,112,065 (“the ‘065 patent”) is directed to the “abstract concept of modifying a finish line of a dental prosthesis – – a concept well-known in the prior art” and, thus, is directed to patent-ineligible subject matter under 35 U.S.C. § 101. Id. at *22-27. The Court also granted defendants’ motion to dismiss in part in the 1647 action after finding that claim 1 of United States Patent Number 6,227,850 (“the ‘850 patent”) is directed to an abstract idea, does not include an inventive concept and, thus, is directed to patent-ineligible subject matter under Section 101. Id. at *27-32.

A copy of the Memorandum Opinion is attached.