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.

By Memorandum Opinion entered by The Honorable Richard G. Andrews in Novartis Pharmaceuticals Corp., et al. v. Zydus Noveltech Inc., Civil Action No. 14-1104-RGA (D.Del., August 7, 2015), the Court granted Defendant Zydus Noveltech Inc.’s motion to dismiss based on lack of personal jurisdiction.

Plaintiffs did not dispute the lack of general jurisdiction over Defendant in Delaware.  Id. at 9.  However, Plaintiffs argued that Delaware had specific jurisdiction over Defendant for two reasons:  (1) Defendant directed its notice of ANDA filing to Novartis Pharmaceuticals, a Delaware corporation; and (2) Defendant would eventually, if authorized by the FDA, sells its generic product in Delaware.  Id. at 10.  Defendant disputed jurisdiction in Delaware arguing, among other things, that sending a notice letter to Novartis Pharmaceuticals, a Delaware corporation, at its offices in New Jersey was not sufficient to establish jurisdiction over it in Delaware.  Id.

The Court agreed that Defendant’s activities had not been purposefully directed at Delaware such that the Court could exercise specific jurisdiction over Defendant.  Id. at 11.  The Court reasoned that Defendant does not conduct business in Delaware, has not registered to do business in Delaware, does not have an agent to accept process in Delaware, has not previously litigated in Delaware at all, has no property, staff or offices in Delaware, and no work related to preparing the ANDA or product was conducted in Delaware.  Id. at 11-12.  The Court noted that, although Defendant probably anticipated being sued in Delaware, Defendant’s anticipation by itself was not enough for specific jurisdiction.  Id.  The Court also noted that “[s]pecific jurisdiction cannot be exercised merely because an ANDA notice letter was sent to a Delaware corporation, in another state, because to do so would offend traditional notions of fair play and substantial justice.”  Id. at 12.

A copy of the Memorandum Opinion is attached.

The takeaway from this case is that, in order for personal jurisdiction in the District of Delaware to exist over a non-resident defendant in the ANDA context, there must be more evidence of minimum contacts with Delaware than simply the filing by the non-resident defendant of an ANDA directed to a Delaware corporation.  At the very least, the non-resident defendant must have actually sent the notice of the ANDA filing to the Delaware corporation in Delaware (as opposed to some out of state location), conduct some business in Delaware, be registered to do business in Delaware, and/or have some other minimum contacts with Delaware that do not offend traditional notions of fair play and substantial justice.

By Memorandum Order entered by The Honorable Leonard P. Stark in InterDigital, Inc., et al. v. Wistron Corp., Civil Action No. 15-478-LPS (D.Del., June 18, 2015), the Court granted the emergency motion of Plaintiffs, InterDigital, Inc., InterDigital Technology Corporation, IPR Licensing, Inc., and InterDigital Patent Holding, Inc., to remand the action to the Delaware Chancery Court.

On June 5, 2015, Plaintiffs filed a verified complaint in the Delaware Chancery Court against defendant Wistron Corporation (“Wistron”), a Taiwanese corporation, seeking a temporary restraining order, preliminary injunction and permanent injunction to prevent Wistron from advancing suit filed in the Intellectual Property Court of Taiwan.  Thereafter, Wistron filed a Notice of Removal of the Chancery Court action to the District of Delaware.  Id. at 1.

Plaintiffs’ remand motion asserted that Plaintiffs and Defendants are parties to a Patent Licensing Agreement (“PLA”) which contains a forum selection clause whereby the parties “irrevocably consent to exclusive jurisdiction and venue of the state and federal courts in the State of Delaware” and such language constitutes a waiver of the right to remove to federal court if one party files suit in a Delaware state court.  Id. at 2.  The Court agreed with Plaintiffs that such language “at least arguably constitutes a contractual waiver of the parties’ right to remove should the other party to the PLA choose to file in Delaware state court.  Id.  Given that the Court must resolve all doubts in favor of remand in the context of removal, the Court granted Plaintiffs’ motion to remand the action to Delaware Chancery Court.  Id. at 2-3.

A copy of the Memorandum Order is attached.

The take away from the decision is that, in entering into licensing or other agreements containing forum selection clauses consenting to exclusive jurisdiction and venue of the state and federal courts of Delaware or another particular state, consider whether your client wants to maintain the right to remove an action filed in state court to federal court.  If so, you should make sure there is language included in the forum selection clause specifically maintaining the right of removal to federal court.

By Memorandum Opinion entered by The Honorable Sherry R. Fallon in Monec Holdings AG v. Motorola Mobility, Inc., et al., Civil Action No. 11-798-LPS-SRF (D.Del., September 5, 2014), the Court granted the motion of defendants HTC Corporation and HTC America, Inc. (collectively, “HTC”) to strike the opening summary judgment and Daubert filings of plaintiff Monec Holding AG (“Monec”).

In support of their motion, HTC asserted that Monec improperly exceeded the page limits for its summary judgment briefing by including factual material, citations and legal analysis in the attached exhibits. Id. at 2. In response, Monec alleged that the exhibit in dispute, a witness Declaration, contained only facts and citations, as opposed to legal argument. Id. at 3.

Upon review, the Court found that the infringement portion of Monec’s opening brief contained no legal analysis and HTC had to refer to the exhibit in dispute in order to respond to Monec’s submissions. Id. Thus, the Court concluded that HTC was prejudiced by Monec’s improper reliance on the exhibit in dispute to convey its legal arguments, because HTC had to respond to the 272 page exhibit within the court’s page limitations on briefs. Id. Accordingly, the Court granted HTC’s motion to strike without prejudice, giving Monec the opportunity to file amended opening briefs and supporting documents within fourteen (14) days of the Court’s Order.

The take away for litigants from this Case is that the Court’s page limitations are real and need to be taken seriously, substantive legal arguments on infringement and other issues have to be made in the brief, and litigants need to be mindful that they are not attempting to use exhibits to the brief in an improper manner to attempt to circumvent applicable page limitations.

A copy of the Memorandum Opinion is attached.


By Memorandum Order entered by The Honorable Leonard P. Stark in M/A- COM Technology Solutions Holdings, Inc. v. Laird Technologies, Inc., C.A. 14-181-LPS (D.Del., June 13, 2014), the Court granted Plaintiff M/A-Com Technology Solutions Holdings, Inc.’s (“MACOM”) Motion for Preliminary Injunction seeking to enjoin Defendant Laird Technologies, Inc. (“Laird”) from supplying Ford Motor Company (“Ford”) with GPS modules that MACOM contends infringe its patent, U.S. Patent No. 6,272,349 (“the ‘349 Patent”). In granting the preliminary injunction in this patent infringement action, the Court found that (1) MACOM is likely to succeed on the merits (meaning that MACOM demonstrated that it is likely to prove infringement of the ‘349 patent and Laird did not raise a substantial question of patent validity); (2) MACOM met its burden to show that it will suffer irreparable harm in the absence of preliminary relief; (3) the balance of the equities tip in MACOM’s favor; and (4) the public interest favors granting the preliminary injunction. Id. at 2-16.

A complete copy of the Memorandum Order is attached.


By Memorandum Opinion entered by The Honorable Sue L. Robinson in Versata Software, Inc., et al. v. Callidus Software, Inc., Civil Action No. 12-931-SLR (D.Del., May 8, 2014), the Court denied defendant Callidus Software, Inc.’s motion to stay pending post-grant review of the patents-in-suit pursuant to the “covered business method” (“CBM”) patent review process provided for under the Leahy-Smith America Invents Act (“AIA”), § 18(a), 37 C.F.R. 42.300(a) with respect to two of the three patents-in-suit. In considering the motion, the Court recognized the legislative history of the CBM post-grant review process, the fact that Congress “place[d] a very heavy thumb on the scale in favor of a stay being granted,” and that the AIA “provides an immediate appeal of a denial of a stay by a district court to the United States Court of Appeals for the Federal Circuit.” Id. at 3-4. However, despite those things, the Court concluded that a complete stay, under the circumstances of the instant action, would not simplify the issues or reduce the burdens of litigation. Thus, the court denied the motion to stay as to the ‘024 and ‘304 patents and granted the stay as to the ‘326 patent.

A copy of the Memorandum Opinion is attached.


By Memorandum Opinion entered by The Honorable Richard G. Andrews in Robocast, Inc. v. Microsoft Corporation, Civil Action 10-1055-RGA (D.Del., February 21, 2014), the Court granted Defendant Microsoft Corporation’s Omnibus Motion for Summary Judgment in part and denied it in part. The Court also denied Plaintiff Robocast, Inc.’s Motion for Summary Judgment of No Unenforceability and No Unclean Hands.

A copy of the Memorandum Opinion is attached.


By Memorandum Order entered by the Honorable Richard G. Andrews in L-3 Communications Corporation v. Sony Corporation, et al., Civil Action No. 10-734-RGA (D.Del., October 16, 2013), the Court denied Plaintiff L-3 Communications Corporation’s Motion for Partial Summary Judgment that U.S. Patent No. 5,541,654 (the ”Roberts patent”) is not invalid in light of U.S. Patent No. 5,543,838 (the “Xerox patent”).

The Roberts patent was filed on June 17, 1993. The Xerox patent was allegedly filed on August 31, 1993. In the action, Defendants asserted that the Xerox patent was prior art under 35 U.S.C. §102(g), based on a reduction to practice prior to the critical date of the Roberts patent. Id. at 1. However, in order to prove that the Xerox patent was prior art under section 102(g), Defendants had to show either (i) that the invention was actually reduced to practice prior to June 17, 1993, or (ii) that there was a diligent pursuit of a constructive reduction to practice between June 16, 1993 and August 31, 1993. Id. Because Defendants could not prove either, the Court granted L-3 Communications Corporation’s Motion for Partial Summary Judgment. Id. at 1-3.

A complete copy of the Memorandum Order is attached.