By Memorandum Opinion entered by The Honorable Colm F. Connolly in Deere & Company v AGCO Corp. et al., Civil Action No. 18-827-CFC (D.Del. February 19, 2019), the Court granted in part and denied in part the identical motions of defendants AGCO Corporation and Precision Planting LLC to dismiss Plaintiff Deere & Company’s claims for enhanced damages based on willful infringement for failure to state a claim upon which relief could be granted pursuant to Federal Rule of Civil Procedure 12(b)(6).

Deere alleged that it was entitled to enhanced damages under Section 284 of the Patent Act because (1) Defendants engaged in post-suit willful infringement of the eight patents asserted in Counts 4 and 7-12 of the amended complaints; (2) Defendants engaged in willful infringement of the four patents asserted in Counts 1, 2, 5 and 6 of the amended complaints after Deere sent Precision Planting a letter on August 11, 2017; and (3) Defendants engaged in willful infringement of U.S. Patent No. 10,004,173 (the “#173 Patent”) after Deere notified Defendants’ counsel on June 27, 2018 that Defendants’ activities infringed the #173 Patent. Id. at *11-12.

In support of their motions to dismiss Deere’s claims for enhanced damages, Defendants argued that “Deere’s willfulness allegations should be dismissed in their entirety because ‘Deere nowhere alleges – much less provides supporting facts that could show – that either defendant, at any point in time before or after the suits were filed, deliberately copied the asserted patents, attempted to conceal its allegedly infringing behavior, or engaged in any other conduct outside the standards of commerce in the agricultural industry.’” Id. at *12. While the Court acknowledged that enhanced damages under Section 284 were intended to only be awarded in egregious cases of misconduct that involve more than typical infringement, it recognized the Federal Circuit’s holdings binding on it setting forth the low threshold to plead a willfulness-based enhanced damages claim. Id. Specifically, the court noted that the Federal Circuit in Artic Cat, WesternGeco, and WCM made it clear that, to plead a willfulness-based enhanced damages claim, “a plaintiff need only allege facts that plausibly show that a risk of infringement was made known to a defendant or was sufficiently obvious that it should have been known to a defendant.” Id.

After analyzing Deere’s claims for willfulness-based enhanced damages based on that pleading standard, the Court determined that Deere’s allegations of willful infringement of the eight patents asserted in Counts 3-4 and 7-12 of the amended complaints easily met the threshold. Id. at *13-14. The Court also determined that Deere’s allegations of willful infringement of the #173 Patent asserted in Count 13 of the amended complaints also met the threshold. Id. at *15-16. Accordingly, the Court denied Defendants’ motion to dismiss the claims for enhanced damages alleged in Counts 3-4, 7-12 and 13 of the amended complaints. Id. at *13-16.

On the other hand, the Court determined that Deere’s allegations of willful infringement of the four patents asserted in Counts 1, 2, 5 and 6 of the amended complaints did not meet the threshold. Id. at *14-15. In making that determination, the Court noted that the August 2017 letter was the only alleged source of Defendants’ knowledge of the four patents asserted in Counts 1, 2, 5 and 6. Id. The Court also noted that the amended complaints did not allege that the August 2017 letter identified the accused products, the pertinent combination of the accused products, or how the combination of the accused products infringed the patents-in-suit. Id. Thus, the Court determined there was no sufficient pleading that “Defendants knew or should have known from the alleged contents of the August 2017 letter that Defendants’ activities constituted a sufficient risk of infringement to make them cease those activities.” Id. at *15. Accordingly, the Court granted Defendants’ motion to dismiss the claims for enhanced damages alleged in Counts 1, 2, 5 and 6 of the amended complaints. Id.

A copy of the Memorandum Opinion is attached.

By Memorandum Order entered by The Honorable Richard G. Andrews in T-JAT Systems 2006 LTD. v. Expedia, Inc. (DE) et al., Civil Action No. 16-581-RGA (D.Del. January 29, 2019), the Court denied Plaintiff’s motion for reconsideration of the Court’s prior opinion and order granting Defendants’ motion to dismiss the action for patent infringement against Defendant Expedia-WA, a Washington corporation, for improper venue. In opposition to Defendants’ motion to dismiss, Plaintiff argued that venue over Expedia-WA exists “under 28 U.S.C. §1400(b), which provides that a patent infringement action may be brought in any district ‘where the defendant has committed acts of infringement and has a regular and established place of business.’” Id. at *2. The Court granted Defendants’ motion to dismiss after finding that Plaintiff failed to show Expedia-WA has a regular and established place of business in Delaware. Id.

In its motion for reconsideration, Plaintiff raised a new theory for venue. Id. In short, Plaintiff asserted that venue in Delaware is proper with respect to Expedia-WA because Expedia-WA wholly owns CSC Holdings Inc. (“CSC Holdings”), which wholly owns CruiseShipCenters International, Inc. (“CSC International”), and CSC International has a regular and established place of business in Delaware. Id.

After considering the parties’ respective arguments and considering evidence outside of the Complaint through a Notice of Subsequent Authority filed by Plaintiff, the Court concluded that Plaintiff did not present any new evidence warranting reconsideration and the Court did not commit a clear error of law or fact. Id. at *5-10. As part of its analysis, the Court noted the fact that CSC International operates a Delaware store did not change the outcome of the motion to dismiss because “Plaintiff fail[ed] to show that CSC International is a place of business ‘of the defendant,’ as required to establish proper venue for Expedia-WA.” Id. at *7. In other words, the Court concluded that Plaintiff did not provide any evidence that Expedia-WA engages in business from CSC International’s Delaware location. Id. at *9.

Interestingly, in its brief, Plaintiff did include a screenshot of the Google Maps result for CSC International’s Delaware location which showed a storefront sign that read “Expedia cruiseship centers” and argued that it showed that Expedia-WA ratified the Delaware location as its own. Id. However, the Court noted that the use of the Expedia logo at CSC International’s Delaware location is by itself insufficient to show that the Delaware location is a place of business of Expedia-WA. Id.

A copy of the Memorandum Order is attached.

The opinion leaves me wondering whether the result would have been any different if Plaintiff had included all of its venue assertions in the original complaint or an amended complaint before the Court issued its ruling on Defendants’ motion to dismiss. The standard on the motion for reconsideration likely made it more difficult for Plaintiff to survive the challenge to venue after the Court had previously granted the motion to dismiss.

By Memorandum Opinion entered by The Honorable Richard G. Andrews in Alarm.com, Inc. et al. v. Securenet Technologies LLC, Civil Action No. 15-807-RGA (D.Del. January 8, 2019), the Court granted-in-part Defendant’s Motion to Exclude the Opinions of Brett Reed.

With respect to Mr. Reed’s lost profits opinion, Defendant argued that the Court should exclude the entirety of Mr. Reed’s lost profits opinion because (1) there was a defect in his analysis of the manufacturing and marketing prong of Panduit; or (2) it contains an opinion as to Plaintiff Alarm.com’s entitlement to its lost profits prior to the date from which Plaintiff Alarm.com is legally entitled to claim lost profits. Id. at *3. Plaintiffs responded that Mr. Reed’s lost profits opinion should not be excluded because (1) the challenge to the Panduit analysis done by Mr. Reed goes to the weight of the evidence; and (2) Mr. Reed’s opinion merely addresses alternative lost profits scenarios without purporting to determine the date from which Plaintiff Alarm.com is legally entitled to claim lost profits. Id.

After considering the arguments, the Court agreed with Plaintiffs that any defect in Mr. Reed’s Panduit analysis goes to the weight and credibility of his opinion instead of its admissibility and, thus, those opinions were not excluded. Id. The Court agreed with Defendants that, to the extent Mr. Reed’s lost profits opinion provides opinions that are inconsistent with the starting date of March 8, 2017 for lost profits recovery, those opinions were excluded. Id. at *4.

The Court goes on in the opinion to exclude other opinions of Mr. Reed as to the failure of others, copying, and praise by others and refuses to exclude his opinion on commercial success. Id. at *4-10.

Copies of the Memorandum and Opinion are attached.

By Memorandum Opinion and Order entered by The Honorable Maryellen Noreika in Agrofresh Inc. v. Mirtech, Inc. et al., Civil Action No. 16-662-MN-SRF (D.Del. January 2, 2019), the Court overruled-in-part and sustained-in-part Plaintiff’s objections to Magistrate Judge Sherry Fallon’s Claim Construction Report and Recommendation (D.I. 247). The Court ultimately entered its Markman ruling construing seven (7) disputed claims in the patents-in-suit, U.S. Patent Nos. 6,017,849, 6,313,068 and 9,394,216.

Copies of the Memorandum Opinion and Order are attached.

By Memorandum Order entered by The Honorable Richard G. Andrews in TC Technology LLC v. Sprint Corp. et al., Civil Action 16-153-RGA (D.Del. December 13, 2018), the Court granted-in-part and denied-in-part defendants’ motion to compel production of non-privileged documents after finding, among other things, that Plaintiff and its joint owners had a shared legal interest in acquiring and enforcing the patent at-issue in the action and that Plaintiff met its burden of establishing the common interest privilege with respect to the disputed communications with its joint owners. Id. at *1-11. The Court also ordered Plaintiff to produce certain documents related to non-legal communications for in camera review. Id. at *11.

A copy of the Memorandum Order is attached.

By Memorandum Order entered by The Honorable Richard G. Andrews in Nox Medical EHF v. Natus Neuorology Inc., Civil Action No. 15-709-RGA (D.Del. December 7, 2018), the Court granted Plaintiff’s Motion for Reconsideration upon acknowledging that it did not appreciate the differences between U.S. Patent No. 9,059,532 (“the ‘532 Patent”) and its European counterpart when it initially denied Plaintiff’s Motion for Enhanced Damages after the jury’s finding of willful infringement by Defendant. However, after reconsideration and changing its view on the second Read factor, the Court still did not find that Defendant’s behavior was “willful, wanton, malicious, bad-faith, deliberate, consciously wrong, flagrant, or-indeed-characteristic of a pirate.” Id. at *4. Thus, the Court did not believe that enhanced damages were appropriate and again denied Plaintiff’s Post-Trial Motion for Enhanced Damages. Id. at *4-8.

A copy of the Memorandum Order is attached.

By Memorandum Opinion entered by The Honorable Richard G. Andrews in Finnavations LLC v. Payoneer, Inc., Civil Action No. 18-444-RGA (D.Del. November 26, 2018) (consolidated), the Court granted defendants’ motion to dismiss under 35 U.S.C. §101 after concluding that the asserted claims of the patent-in-suit, U.S. Patent No. 9,569,755 (“the ‘755 Patent”), are directed to patent ineligible subject matter and do not contain an inventive concept.

A copy of the Memorandum Opinion is attached.

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.