By Memorandum Opinion entered by The Honorable Maryellen Noreika in Agrofresh Inc. v. Hazel Technologies, Inc., Civil Action No. 18-1486 –MN (D.Del. April 25, 2019), the Court denied Defendant’s motion to dismiss Plaintiff’s claim of direct infringement of U.S. Patent Nos. 6,017,849 (“the ‘849 Patent”) and 6,313,068 (“the ‘068 Patent”) after finding that Plaintiff’s complaint identified Defendant’s accused product, the specific claims in the asserted patents that Defendant’s accused product allegedly infringed, and how the accused product purportedly infringed those claims. Following the Federal Circuit’s prior decision in Disc Disease Sols. Inc. v. VGH Sols., Inc., 888 F.3d 1256 (Fed. Cir. 2018), and a similar conclusion reached in Primos Tech., Inc. v. Samsung Elec. Co., No. 18307-RGA, 2018 WL 5630585, *4 (D.Del. Oct. 31, 2018), the Court concluded that Plaintiff’s allegations were sufficient under the plausibility standard of Iqbal/Twombly. Id. at *3-4.

A copy of the Memorandum Opinion is attached.

By Memorandum Order entered by The Honorable Richard G. Andrews in Express Mobile, Inc. v. Liquid Web, LLC, Civil Action No. 18-1177-RGA (D.Del. April 18, 2019), the Court granted Defendants’ motions to dismiss as to past damages and denied their motions as to direct infringement.

With respect to past damages, Defendants argued that Plaintiff failed to plead compliance with the marking statute and that was a basis to dismiss Plaintiff’s claims to the extent that they sought past damages. Id. at *3. Importantly, a patentee who makes or sells a patented article must mark the articles to recover past damages pursuant to 35 U.S.C. §287(a). Id. The burden is on the patentee to plead compliance with §287(a). Id.

In this action, Plaintiff alleged that Defendants infringed U.S. Patent Nos. 6,546,397, 7,594,168, 9,471,287 and 9,928,044 through their use of certain website building tools. In response to Defendants’ motion dismiss as to past damages, Plaintiff alleged that there was no evidence that there was anything for it to mark, but did not argue that it pled compliance with the marking statute, §287(a). Id. at *3-4.

In considering the motions to dismiss, the Court noted that, at the motion to dismiss stage, it is only concerned with the sufficiency of the claims. Id. at *4. It explained that “[a] claim for past damages requires pleading compliance with the marking statute – even when compliance is achieved, factually, by doing nothing at all.” Id. Given that Plaintiff did not plead compliance with the marking statute, it failed to state a claim for past damages. Id.

A copy of the Memorandum Order is attached.

By Memorandum Order entered by The Honorable Colm J. Connolly in F’Real Foods, LLC et al. v. Hamilton Beach Brands, Inc. et al., Civil Action No. 16-41-CFC (D.Del. April 12, 2019), the Court denied Defendants’ motion to exclude the testimony of Plaintiffs’ damages expert, Dr. Michael P. Akemann, on lost profits and reasonable royalty. Defendants argued that “Dr. Akemann’s lost profits opinion [was] based on assumptions that are purely speculative and contrary to record evidence” and that “his reasonable royalty opinion is unreliable and must be excluded because he fail[ed] to properly apportion value between the patented and unpatented features of the accused products.” Id. at *1. Defendants did not challenge Dr. Akemann’s knowledge, training, expertise, or the facts underlying his opinions. Id. at *1-2. Ultimately, the Court found that Defendants’ challenges went to the weight of the expert’s opinions and not to their admissibility. Id. at *2. Thus, Defendants’ motion to exclude the expert testimony on lost profits and reasonable royalty was denied. Id. at *3.

A copy of the Memorandum Opinion is attached.

By Memorandum Order entered by The Honorable Richard G. Andrews in Bio-Rad Laboratories, Inc. v. 10X Genomics, Inc., Civil Action No. 18-1679-RGA (D.Del. April 8, 2019), the Court denied Defendant’s motion to dismiss for lack of patent eligibility under 35 U.S.C. § 101. The patents in-suit, U.S. Patent Nos. 9,562,837 (“the ‘837 patent”) and 9,896,722 (“the ‘722 patent”), claim technology related to handling samples in a way that reduces sample contamination and sample loss. Id. at *1. In its motion, Defendant asserted that the patents in-suit “are directed to ‘the natural phenomenon of allowing two different liquids of different densities to separate from each other.’” Id. at *5. Plaintiff responded that the patents are not that simple. Rather, the “the patents are directed to the patent-eligible result of a method and apparatus to reduce sample contamination when handling samples.” Id. The Court agreed with Plaintiff and denied the motion to dismiss. Id. at *5-7.

A copy of the Memorandum Order is attached.

By Memorandum Opinion entered by The Honorable Leonard P. Stark in 3 Shape A/S v. Align Technology, Inc., the Court denied Defendant’s motion to dismiss Plaintiff’s claims for direct, indirect and willful infringement pursuant to Federal Rule of Civil Procedure 12(b)(6). In short, Defendant argued that Plaintiff’s pre-suit induced infringement and contributory and willful infringement claims failed to meet the pleading standards set forth in Ashcroft v. Iqbal, 556 U.S. 662 (2009), and Bell Atl. Corp. v. Twombly, 550 U.S. 544 (2007). Id. at *1. The Court disagreed finding that the Complaint sufficiently pled claims for direct, contributory and willful infringement. Id. at *2-7.

A copy of the Memorandum Opinion is attached.

By Memorandum Order entered by The Honorable Leonard P. Stark in The Gillette Company LLC v. Dollar Shave Club, Inc., et al., Civil Action No. 15-1158-LPS-CJB (D.Del. March 21, 2019), the Court, among other things, denied Plaintiff’s motion seeking summary judgment as to the date of conception for the ‘513 patent. Plaintiff sought summary judgment that the invention of the ‘513 Patent was conceived in February 1998, which would have been before the prior art in the Bray Patent. Id. at *1-2.

After considering Plaintiff’s motion, the Court determined that there was a genuine dispute of material fact as to whether conception occurred in February 1998 or not until Spring 1999. Id. at *2-3. The Court noted that a reasonable juror could find that conception of the claims of the ‘513 Patent did not occur in February 1998 because of several reasons and concluded that what the inventors knew and appreciated in February 1998 was a material fact to be determined by the trier of fact. Id. at *3. Thus, plaintiff’s motion for summary judgment on the date of conception was denied. Id.

A copy of the Memorandum Order is attached.

By Memorandum Opinion entered by the Honorable Maryellen Noreika in Cignex Datamatics, Inc. v. Lam Research Corp., Civil Action No. 17-320-MN (D.Del. March 11, 2019), the Court denied the motion of defendant Lam Research Corporation seeking a finding of spoliation and entry of sanctions against plaintiff Cignex Datamatics, Inc. for failure to preserve the emails of certain employees of plaintiff that worked on the software development project that was the subject of the breach of contract litigation between plaintiff and defendant.

Upon evaluation of the motion, the Court found that, since the issue of spoliation turned on plaintiff’s loss of ESI, Federal Rule of Civil Procedure 37(e) governed the analysis. Id. at*7. The Court did find that plaintiff should have preserved at least some of the email accounts identified by defendant but failed to take reasonable steps to do so after litigation was reasonably anticipated. Id. As to the third threshold issue of Rule 37(e), the Court found that defendant did not make a showing that the lost emails could not be restored or replaced through additional discovery. Id. at *8. The Court also found that defendant did not make a sufficient showing to invoke the intentional and willful spoliation analysis of Rule 37(e)(2); rather, it was appropriate to proceed under the negligence spoliation analysis of Rule 37(e)(1). Id. at *9. The Court thereafter found that there was not a sufficient showing on the record for the Court to find that defendant was prejudiced by the loss of the ESI and, thus, imposing a curative measure under Rule 37(e)(1) would be inappropriate. Id. at *10-11.

A copy of the Memorandum Opinion is attached.

The United States District Court for the District of Delaware has announced the selection of Jennifer L. Hall to fill the new United States Magistrate Judge position in the District of Delaware.  A copy of the Court’s announcement is attached.

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 Opinion entered by The Honorable Maryellen Noreika in Prescient Medicine Holdings, LLC v. Laboratory Corp. of America Holdings, et al., Civil Action No. 18-600-MN (D.Del. February 14, 2019), the Court granted Defendants’ motion to dismiss all claims of the Complaint pursuant to Federal Rule of Civil Procedure 12(b)(6) after finding that Plaintiff failed to allege sufficient facts to assert its antitrust claims.

In its Complaint, Plaintiff alleged that Defendants conspired to exclude Plaintiff from providing laboratory testing services to the Delaware market in violation of Sections 1 and 2 of the Sherman Act and Section 16 of the Clayton Act. Id. at *1. In response, Defendants filed a motion to dismiss all claims of the Complaint pursuant to Federal Rule of Civil Procedure Rule 12(b)(6). Id. Specifically, Defendants argued that Plaintiff’s alleged antitrust claims failed because they did not plead sufficient facts to show antitrust standing and a relevant market. Id. at *3.

Upon review, the Court agreed that Plaintiff’s Complaint did not plead sufficient facts to show the threshold requirement of antitrust standing and relevant market. Id. at *3-12. Accordingly, the Court granted Defendants’ motion to dismiss the federal antitrust claims and also dismissed Plaintiff’s accompanying state law claims after refusing to exercise supplemental jurisdiction over those claims because it had dismissed the federal antitrust claims over which it had original jurisdiction. Id.

A copy of the Memorandum Opinion is attached.