By Memorandum Opinion entered by The Honorable Leonard P. Stark in Vehicle IP, LLC v. AT&T Mobility LLC, et al., Civil Action No. 09-1007-LPS (D.Del., December 30, 2016), the Court granted defendants Telecommunication Systems, Inc., Networks in Motion, Inc., and Cellco Partnership (collectively, the “TCS Defendants”) motion for partial summary judgment of no willful infringement and denied a number of other motions to exclude and motions for summary judgment or partial summary judgment filed by the parties.

In evaluating the TCS Defendants’ motion for partial summary judgment of no willful infringement, the Court recognized that the “willfulness inquiry asks whether a party has engaged in ‘conduct warranting enhanced damages,’ under 35 U.S.C. § 284, behavior the Supreme Court has described as ‘willful, wanton, malicious, bad-faith, deliberate, consciously wrongful, flagrant, or [] characteristic of a pirate.’” Id. at *15. In granting the motion, the Court found that Vehicle IP did “not identify evidence, beyond pre-suit knowledge of the patent, that could show that the TCS Defendants’ infringement was ‘egregious’, ‘deliberate,’ wanton,’ or otherwise characteristic of the type of infringement that warrants the Court exercising its discretion to impose the ‘punitive’ sanction of enhanced damages.” Id. at *17. The Court noted that a party’s pre-suit knowledge of a patent is not sufficient, by itself, to find willful misconduct of the type that may warrant an award of enhanced damages. Id. Therefore, based on the record before it, the Court concluded that “no reasonable jury could find willful infringement” of the patent-in-suit by the TCS Defendants. Id.

A copy of the Memorandum Opinion is attached.

The general take away is that, in order to make a showing of willful infringement, the patentee must prove, among other things, that the accused infringer acted with a specific intent to infringe. In making that showing, the patentee must present some evidence beyond the accused infringer’s pre-suit knowledge of the patent to show that the accused infringer’s conduct was egregious, deliberate, wanton, or otherwise characteristic of the type of infringement that warrants the Court exercising its discretion to impose the punitive sanction of enhanced damages. For example, in making its showing, the patentee should consider presenting evidence to show that (1) the accused infringer intentionally and specifically relied on the pre-suit knowledge of the patent in developing its infringing products; and/or (2) the accused infringer hired a specific employee who previously worked for the patentee because of his or her specific knowledge of the patented invention. The patentee should be mindful of the record and make sure that it contains sufficient evidence of the infringer’s specific intent to infringe and “willfulness” in order to survive a partial motion for summary judgment of no willfulness and to get the issue to the jury.

By Memorandum Opinion entered by The Honorable Richard G. Andrews in InterDigital Communications, Inc. v. ZTE Corp., Civil Action No. 13-009-RGA (D.Del., June 7, 2016), the Court granted Defendants’ motion seeking certification of partial final judgment, pursuant to Federal Rule of Civil Procedure 54(b), as to jury’s finding of liability against Defendants for infringement of U.S. Patent Numbers 7,190,966 and 7,286,847 (collectively, “the power ramp-up patents”).  In so ruling, the Court found that an entry of judgment as to patent infringement liability, when only a damages trial remains, is a final judgment for purposes of Rule 54(b). Id. at *4.  The Court also concluded that, after evaluating the five factors set forth by the Third Circuit to assess whether there exists any just reason for delay, there was no just reason for delay. Id. at *4-6.

A copy of the Memorandum Opinion is attached.

By Memorandum entered by The Honorable Richard G. Andrews in Acceleration Bay LLC v. Activision Blizzard, Inc., Civil Action No. 15-228-RGA (D.Del., June 3, 2016) (consolidated), the Court held that, unless Boeing joins the action within fourteen (14) days, Defendants’ motion to dismiss for lack of standing will be granted because Boeing is a required party under Federal Rule of Civil Procedure 19(a).  In reaching its holding, the Court concluded that Acceleration Bay was an exclusive licensee rather than the owner of the patents-in-suit. Id. at *3-5.  Thus, given that Boeing did not transfer all substantial rights to Acceleration Bay under the provisions of the purchase agreement, Boeing maintained a right to sue on the patents-in-suit as well and Boeing’s absence would place Defendants at substantial risk of multiple suits and multiple liabilities for the same act of infringement if Boeing was not required to be a party in the action. Id. at *10.

A copy of the Memorandum is attached.

The general takeaway is whether one labels a transfer of a particular right or interest under a patent an assignment or license is not determinative of whether the provision is an assignment or license. Rather, what is determinative of whether a transfer is an assignment or license is the legal effect of the provision.  Unlike an assignee that may sue in its own name, a licensee having fewer than all substantial patent rights that seeks to enforce its rights in a patent generally must sue jointly with the patent owner.

By Memorandum Opinion entered by the The Honorable Sue L. Robinson in Takeda Pharmaceuticals U.S.A., Inc. v. West-Ward Pharmaceutical Corp., et al., Civil Action No. 14-1268-SLR (D.Del., May 18, 2016), the Court granted Defendants’ motion to dismiss Plaintiff’s first amended complaint pursuant to Federal Rule of Civil Procedure 12(b)(6) after finding that Plaintiff’s claims for indirect infringement failed to state a plausible claim for relief.  In reaching its conclusion, the Court, among other things, found that the Mitigare™ label does not infringe and is not a sufficient catalyst to constitute active steps to encourage direct infringement. Id. at 16-17.  The Court reasoned that (1) like the generic in AstraZeneca Pharmaceuticals LP v. Apotex Corp., 2010 WL 5376310 (D.Del., December 22, 2010) aff’d, 669 F.3d 1370 (Fed. Cir. 2012), Defendant specified that Mitigare™ is for the prevention of gout flares and warned that its drug is not indicated for the treatment of acute gout flares, and (2) allowing Takeda to proceed with its claims would be akin to allowing Takeda to expand the scope of its exclusivity over the treatment of gout with colchicine. Id. at 15.

A copy of the Memorandum Opinion is attached.

Following a four day bench trial in a consolidated ANDA action before The Honorable Gregory M. Sleet in Genzyme Corp., et al. v. Dr. Reddy’s Laboratories, Ltd., et al., Civil Action Nos. 13-1506 and 13-1508-GMS (D.Del., May 11, 2016), the Court issued its findings of fact and conclusions of law pursuant to Federal Rule of Civil Procedure 52(a) and specifically concluded that Defendants failed to establish by clear and convincing evidence that claim 19 of U.S. Patent No. 7,897,590 (“the ‘590 patent”) is invalid due to obviousness.

A copy of the Memorandum setting forth the Court’s findings of fact and conclusions of law is attached.

By Memorandum Opinion entered by The Honorable Leonard P. Stark in Johns Hopkins University v. 454 Life Sciences Corp., Civil Action No. 13-1853-LPS (D.Del., May 2, 2016), the Court granted John Hopkins University’s (“JHU”) motion for partial summary judgment of a priority date of no later than June 5, 2003 with respect to the Count in the Interference.  The Interference involves a single count with the interfering subject matter represented by claim 1 of  Plaintiff JHU’s U.S. Patent Application No. 12/361,690 (JHU’s “’690 application”) and claim 52 of Defendant 454 Life Sciences Corporation’s U.S. Patent Application No. 13/33,240 (454’s “’240 application”).

Among other things, JHU cited the Decision and Final Judgment of the Board of Patent Appeals and Interferences (“the Board”) in its favor on the issue. Id. at 11.  In its decision, the Board concluded that “JHU had established by a preponderance of the evidence that it conceived of the subject matter of the Count by June 5, 2003 and that the JHU inventors were reasonably diligent for the month of June 5, 2003 until the filing of provisional application No. 60/485,301 on July 5, 2003, i.e., JHU’s constructive reduction to practice.” Id. at 11-12.  In granting JHU’s motion for summary judgment on the issue, the District Court determined that JHU “met its burden at summary judgment by producing evidence which shows, by a preponderance of the evidence, conception and diligent reduction to practice sufficient to support a priority date of June 5, 2003.” Id. at 16.  The District Court also found that 454 failed to raise any genuine issues of material fact with respect to the evidence relied on by JHU. Id.

A copy of the Memorandum Opinion is attached.

By Memorandum Opinion entered by The Honorable Leonard P. Stark in Walker Digital, LLC v. Google, Inc., Civil Action No. 11-318-LPS (D.Del., April 12, 2016), the Court granted defendant Google’s Motion for Review Taxation of Costs.  In doing so, the Court rejected plaintiff Walker Digital’s argument that Google’s motion to review costs was procedurally improper, granted Google’s request for costs related to depositions of technical and non-technical witnesses, the Rule 30(b)(6) witnesses of both parties, both sides’ expert witnesses, the named inventors of the patents-in-suit, the prosecuting attorneys, the inventors of prior art, and other witnesses in the requested amount of $49,912.47, granted Google’s request for costs incurred in the production of a technology tutorial submitted to the Court as part of the claim construction process and exhibits used at the claim construction hearing in the amount of $19,672.57, granted Google’s request to recover a portion of its costs incurred in the conversion of electronic documents to TIFF images pursuant to the parties’ stipulation as to the format in which ESI documents were to be produced during discovery in the amount of $1,922.05, and granted Google’s request for costs of obtaining transcripts of court proceedings in the amount of $1,018.06. Id. at 5-12.

A copy of the Memorandum Opinion is attached.

By Memorandum Opinion entered by The Honorable Mary Pat Thynge in SunPower Corp. v. PanelClaw, Inc., Civil Action No. 12-1633-MPT (D.Del., April 1, 2016), the Court granted defendant PanelClaw’s motion for summary judgment of non-infringement of U.S. Patent No. 5,505,788 (“the ‘788 patent”).[1]  In granting defendant’s motion for summary judgment of non-infringement of the ‘788 patent, the Court adopted the construction of the phrases “disposed as a layer” and “as a layer on top of said roofing membrane” in claim 1 of the ‘788 patent rendered by the Patent Trial and Appeal Board (“PTAB”) during the inter partes review (“IPR”) for the ‘788 patent.

A copy of the Memorandum Opinion is attached.

[1] The parties consented to Chief Magistrate Judge Thynge’s jurisdiction in the case for all purposes, including trial and final judgment.

By Memorandum Order entered by The Honorable Leonard P. Stark in S3 Graphics Co., Ltd. v. ATI Technologies ULC, et al., Civil Action No. 11-1298-LPS (D.Del., December 11, 2015), the Court dismissed without prejudice the parties’ declaratory judgment claims and affirmative defenses relating to the existence of an implied license. The Court concluded that it lacked subject matter jurisdiction over the parties’ implied license claims and defenses because an implied license is an affirmative defense to a claim of patent infringement and the parties agreed that the case does not involve any allegations of patent infringement. Id. at 3. Thus, there was no case or controversy for declaratory judgment purposes and dismissal of the implied license claims for lack of subject matter was warranted. Id.

A copy of the Memorandum Order is attached.

Gregory B. Williams, a partner in the Wilmington, DE and Philadelphia, PA offices of Fox Rothschild, has been named to Delaware Today’s Top Lawyer List for 2015 for Civil Litigation.  Greg, an experienced litigator and trial attorney with more than 20 years of experience, has a diverse practice focused on commercial, intellectual property and other business litigation for a wide range of clients, including manufacturers, technology companies, financial institutions, retailers, government entities, educational institutions, and faith-based organizations.  Greg, the former office managing partner of Fox Rothschild’s Wilmington office and the first African-American to serve on the firm’s Executive Committee in the firm’s more than 100 years history is also a former President of the Delaware State Bar Association and a former President of the Barristers’ Association of Philadelphia.