The Honorable Sherry R. Fallon in Broadsoft, Inc. v. Callwave Communication, LLC, Civil Action No. 13-711-RGA (D.Del. August 8, 2019) issued a Magistrate Judge Opinion, pursuant to 28 U.S.C. § 636(b)(1)(A), Federal Rule of Civil Procedure 72(a) and District of Delaware Local Rule 72(a)(2), denying Plaintiff Broadsoft, Inc.’s motion to declare the case exceptional under 35 U.S.C. §285. “Section 285 provides that ‘[t]he court in exceptional cases may award reasonable attorney fees to the prevailing party’” 35 U.S.C. § 285.

Broadsoft was the prevailing party in the action, wherein it asserted claims for declaratory judgment of non-infringement and invalidity of four of Defendant Callawave’s patents, including U.S. Patent Numbers 8,351,591 (“the ‘591 patent”) and 7,822,188 (“the ‘188 patent”). Id. at *1. The Court entered judgment in favor of Broadsoft in the action after granting Broadsoft’s motion for judgment on the pleadings based on patent ineligibility under 35 U.S.C. § 101 and granting Broadsoft’s motion for summary judgment of invalidity of the ‘591 and ‘188 patents. Id. at *2. Thus, the only question to be decided by the Court with respect to Broadsoft’s motion seeking attorney fees under § 285 was whether the case was “exceptional.” Id. at *3.

When considering whether a case is exceptional, district courts exercise their discretion on a case-by-case basis and should consider the totality of the circumstances. Id. As the U.S. Supreme Court set forth in Octane Fitness, cases that merit an award of attorney fees include “the rare case in which a party’s unreasonable conduct – while not necessarily independently sanctionable – is nonetheless so ‘exceptional’ as to justify an award of attorney fees” or “a case presenting either subjective bad faith or exceptionally meritless claims.” Id. (citations omitted).

After analyzing the totality of the circumstances in the instant action, the Court concluded that neither Callwave’s substantive positions in the case nor its litigation conduct were so unreasonable or vexatious to warrant finding the case exceptional and awarding attorneys’ fees pursuant to §285. Id. at *3-13. Thus, the Court denied Broadsoft’s motion seeking to declare the case exceptional under 35 U.S.C. §285.

A copy of the Memorandum Opinion  is attached.

This ruling is another reminder for counsel and their clients that declaring a case “exceptional” and “award[ing] attorneys’ fees under §285 is not intended to be an ‘ordinary thing in patent cases,’ and that it should be limited to circumstances in which it is necessary to prevent a ‘gross injustice’ or bad faith litigation.” Id. at *13 (citations omitted).

By Memorandum Order issued by The Honorable Richard G. Andrews in Compagnie Des Grands Hotels d’Afrique S.A. v. Starman Hotel Holdings LLC, Civil Action No. 18-00654 RGA (D.Del. July 26, 2019), the Court granted the motion of Defendant for issuance of a letter request to obtain evidence in the United Kingdom of Great Britain and Northern Ireland through the Hague Convention. Plaintiff opposed the motion claiming the evidence sought was irrelevant to the alter ego theory at issue in the matter, more easily obtained from Plaintiff, and that the request was a collateral attack on the International Chamber of Commerce arbitration award. Id. at *1 and 5.

In granting Defendant’s motion for the letter request, the Court noted that (1) both the United States and the United Kingdom are signatories of the Hague Convention; (2) courts “routinely issue such letters where the movant makes a reasonable showing that the evidence sought may be material or may lead to the discovery of material evidence; and (3) it was reasonable to conclude that documents possessed by Travelodge, the Guarantor, would contain information relevant to the alter ego issue – the potential undercapitalization of Woodman. Id. at *1-6.

A copy of the Memorandum Order, which contains a concise and helpful summary of the standards for the issuance of letters of request to obtain evidence in foreign countries that are signatories to the Hague Convention, is attached.

By Memorandum Opinion entered by The Honorable Richard G. Andrews in Viatech Technologies, Inc. v. Microsoft Corp., Civil Action No. 17-570-RGA (D.Del. July 18, 2019), the Court granted Defendant’s motion to dismiss in part by dismissing Plaintiff’s claims of direct and indirect infringement asserted in Count II of the Second Amended Complaint under the Kessler doctrine. The Kessler doctrine fills the gap between the doctrines of claim preclusion and issue preclusion and intends to prevent an adjudged non-infringer from repeated harassment for continuing its business as usual post-final judgment in a patent action. Id. at *5.

In Brain Life, LLC v. Elekta Inc., 746 F.3d 1045, 1055 (Fed. Cir. 2014), the Federal Circuit held as follows:

The principle that, when an alleged infringer prevails in demonstrating noninfringement, the specific accused device(s) acquires the “status” of a noninfringing device vis-à-vis the asserted patent claims is an essential fact of a patent infringement claim. The status of an infringer is derived from the status imposed on the thing that is embraced by the asserted patent claims. And, when the devices in the first and second suits are “essentially the same,” the “new” product(s) also acquires the status of a noninfringing device vis-à-vis the same accusing party or its privies.

“Thus, where a second suit accuses the same or “essentially the same” product of infringing acts post-final judgment in the first suit, the Kessler doctrine will prevent the suit.” Viatech at *5. Given that Count II of Plaintiff’s Second Amended Complaint accused the Software Protection Platform (SPP) and Office Software Protection Platform (OSPP) when used to protect Windows or Office products of infringement, the Court determined that these products were accused in the previous suit between the parties where the SPP and OSPP software in Windows and Office products was determined not to infringe the asserted claims of U.S. Patent No. 6,920,567 (“the ‘567 patent”). Id. at *11-12. Accordingly, in granting Defendant’s motion to dismiss in part, the Court ruled that the dismissal of Count II of Plaintiff’s Second Amended Complaint fell squarely within the Kessler doctrine. Id. at *12-13.

A copy of the Memorandum Opinion is attached.

By Memorandum Opinion entered by The Honorable Richard G. Andrews in CFL Technologies LLC v. Osram Sylvania, Inc. et al., Civil Action No. 18-1445-RGA (D.Del. July 8, 2019), the Court granted Defendants’ motion to dismiss Plaintiff’s claims of willful infringement of U.S. Patent Numbers 5,510,680 (“the ‘680 patent”), 5,510,681 (“the ‘681 patent”), 6,172,464 (“the ‘464 patent”), and 5,757,140 (“the ‘140 patent”). In granting the motion, the Court explained that, in order to “state a claim of willful infringement, the patentee must allege facts in the pleading plausibly demonstrating that the accused infringer had committed subjective willful infringement as of the date of the filing of the willful infringement claim.” Id. at *16.

In their motion to dismiss Plaintiff’s willfulness claims, Defendants argued that they could not have acted egregiously when they had “(1) knowledge that the ’680, ‘681, and ‘464 patents had been repeatedly found unenforceable by multiple federal courts, including a case where OSRAM was [a] party, and (2) a good-faith belief that the ‘140 and ‘213 patents [were] also likely unenforceable for the same reasons.” Id. The Court agreed with Defendants finding that, “[g]iven the factual background, Plaintiff’s allegations that Defendants knew the patents-in-suit were enforceable are not plausible.” Id. Thus, the Court granted Defendants’ motion to dismiss Plaintiff’s willfulness claims.

A copy of the Memorandum Opinion is attached.

By Memorandum Opinion entered by The Honorable Colm F. Connolly in HIP, Inc. v. Hormel Foods Corp. et al., Civil Action No. 18-1615-CFC (D.Del. June 24, 2019), the Court granted Defendants Motion for Summary Judgment of Indefiniteness and declaring U.S. Patent Number 9,510,610 (“the ‘610 patent”) invalid under 35 U.S.C. § 112. The ‘610 patent is directed to a method of producing a pre-cooked sliced bacon product on an industrial scale. Id. at *5. “A preamble to claims 1 and 3 recites ‘[a] process . . . to produce a pre-cooked sliced bacon product resembling a pan-fried bacon product.’” Id.

In support of their motion for summary judgment, Defendants contended that the “resembling a pan-fried bacon product” language rendered the ‘610 patent indefinite. Id. In granting Defendants’ motion for summary judgment and declaring the ‘610 patent invalid, the Court initially noted that the parties stipulated to the Court making subsidiary factual findings and weighing the testimony of their respective experts in deciding whether, as a matter of law, the ‘610 patent was indefinite. Id. at *3. The Court determined that neither the claims nor the written description of the ‘610 patent clarified the scope of the term “resembling a pan-fried bacon product” or provided any objective criteria to identify or measure the distinguishing features of pan-fried bacon. Id. at *5-13. On the contrary, the Court determined that the term “resembling a pan-fried bacon product” is “purely subjective and depends on the unpredictable vagaries of any one person’s opinion.” Id. at *13. Accordingly, the Court held that the ‘610 patent fails to meet the definiteness requirement of 35 U.S.C. § 112 and is invalid. Id.

A copy of the Memorandum Opinion is attached.

By Memorandum Order entered by The Honorable Richard G. Andrews in TQ Delta, LLC v. 2Wire, Inc., Civil Action No. 13-1835-RGA (D.Del. June 24, 2019), the Court denied Plaintiff’s Motion for Reconsideration of the Court’s April 25, 2019 Order regarding Claim 17 of ‘881 Patent. In its motion for reargument/reconsideration, Plaintiff claimed that the Court made two clear errors of law in its prior Order. First, Plaintiff claimed that the Court made a clear error of law by deciding to not construe the claim term “to reduce a difference in latency.” Id. at *1. Second, Plaintiff claimed that the Court made a clear error of law when it decided that “To the extent Defendant wants to argue that infringement of the claim element is not shown because there is no evidence of an actual reduction in the difference of configuration latency, or that the specification does not provide written description for the term ‘reduce,’ it may do so.” Id. at *2. Ultimately, in denying the motion for reconsideration, the Court found that both underlying issues were questions of fact for the jury to decide. Id. at *2-3.

A copy of the Memorandum Order is attached.

By Memorandum Order entered by The Honorable Leonard P. Stark in Pacific Biosciences of California, Inc. v. Oxford Nanopore Technologies, Inc. et al., Civil Action No. 17-275-LPS (D.Del. June 12, 2019), the Court granted Plaintiff’s motion for reconsideration of the portion of the Court’s Claim Construction Order that determined that the term “kinetic steps” in claim 1 of U.S. Patent No. 9,678,056 is indefinite. Initially, the Court concluded that “claim 1 ‘requires that the enzymatic reaction be able to be characterized in terms of a precise number of steps,’ but that a POSA would not ‘be able to determine the number of kinetic steps and each step’s rate constant . . . with reasonable certainty.’” Id. at *2-3. In support of its motion for reconsideration, Plaintiff contended that reargument was appropriate because the Court misapprehended the claim language, failed to consider an expert’s opinions and defendant’s IPR petition, and lacked the opportunity to consider a document newly-produced by Defendant. Id. at *3.

After review of the evidence, the Court concluded that it had misapprehended certain factual arguments and would benefit from the presentation of additional evidence before making a final determination on indefiniteness. Id. Thus, in granting the motion for reconsideration, the Court concluded that further proceedings were necessary to resolve the indefiniteness dispute because it was no longer persuaded that a POSA (person of ordinary skill in the art) must be able to determine the number of kinetic steps in a reaction as well as each step’s rate constant. Id. at *3-6.

A copy of the Memorandum Order is attached.

By Memorandum Opinion entered by The Honorable Maryellen Noreika in Abbott Cardiovascular Systems, Inc. et al. v. Edwards Lifesciences Corp. et al., Civil Action No. 19-149-MN (D.Del. June 6, 2019), the Court denied the motion for preliminary injunction of Plaintiffs, Abbott Cardiovascular Systems, Inc. and Evalve, Inc., seeking to enjoin Defendants, Edwards Lifesciences Corp. and Edwards Lifesciences, LLC, from manufacturing their PASCAL mitral valve system in the United States.  Plaintiffs claimed that Defendants’ product infringed claims of U.S. Patent Numbers 7,288,097 (“the ‘097 patent), 6,752,813 (“the ‘813 patent”), 7,563,267 (“the ‘267 patent”, 7,736,388 (“the ‘388 patent”) and 8,057,493 (“the ‘493 patent”) (collectively, “the patents-in-suit”).  Id. at *4.

In denying the motion, the Court found that, although Plaintiffs did show a likelihood of success as to infringement of the asserted claims of the ’097 and ’813 patents, they failed to show that the obviousness challenges asserted by Defendants lacked substantial merit.  Id. at * 7-60.  Plaintiffs also did not clearly show that they were likely to suffer irreparable harm if an injunction was not granted, and that the public interest weighed in favor of enjoining the U.S. manufacture of the PASCAL mitral valve system for sale in Europe.  Id.  In fact, the Court found that the public interest weighed against granting the preliminary injunction because the products are not interchangeable products, do not involve interchangeable procedures, and healthcare providers and patients would benefit from having both of the potentially life-saving products available in the market.  Id. at *59.

A copy of the Memorandum Opinion is attached.

The case is yet another example of the fact that preliminary injunctions and TROs are extraordinary reliefs and are only granted in the District of Delaware in rare situations after a movant clearly establishes (1) a likelihood of success on the merits of the claims, (2) irreparable harm is likely if an injunction is not granted, (3) the balance of the equities tips in favor of the movant, and (4) granting an injunction is in the public interest.

By Memorandum Order entered by The Honorable Maryellen Noreika in Agrofresh Inc. v. Essentiv LLC et al., Civil Action No. 16-662-MN (D.Del. May 31, 2019), the Court granted the motion to stay of defendants pending resolution of plaintiff’s appeal to the Federal Circuit of the Patent Trial and Appeal Board’s (“PTAB”) Final Written Decision in the inter partes review (“IPR”) of U.S. Patent No. 9,394,216 (“the ‘216 patent”) finding that all claims of the ‘216 patent are unpatentable.  In so ruling, the Court determined that (1) the potential for simplification of the issues in the case is substantial; (2) although the case is at an advanced stage than is typical for a motion to stay, the likelihood that the issues involved in summary judgement and trial will be simplified by a stay outweighs any weight to be given to the stage of the proceedings factor; (3) neither the timing of Defendants’ request for the IPR nor the timing of their request for a stay support a conclusion that Defendants are pursuing an inappropriate tactical advantage; and (4) Defendants and Plaintiff are not currently competitors.  Thus, Plaintiff’s damages, if any, are monetary and could be remedied by the award of interest if Plaintiff ultimately prevails.  Id. at *1-5.

A copy of the Memorandum Order is attached.

The general take away from this ruling is that, if there is substantial potential for simplification of the issues for summary judgment or trial by a ruling in the IPR of the patent-in-suit, the parties should consider filing a motion to stay the infringement action in the district court.

By Memorandum Opinion entered by The Honorable Maryellen Noreika in Viretem Ventures, LLC v. YouTube, LLC and Google, LLC, Civil Action No. 18-917 – MN (D.Del. May 16, 2019), the Court denied the motion of Defendants YouTube, LLC (“YouTube”) and Google LLC(“Google”) to transfer venue of the patent infringement action asserted by Plaintiff Virentem Ventures LLC (“Plaintiff”) to the Northern District of California pursuant to 28 U.S.C. § 1404(a). Plaintiff, YouTube and Google are all Delaware corporations with their principal places of business in California. Id. at *1.

After analyzing and weighing the twelve Jumara factors, the Court determined that six of the factors are neutral, three weigh to varying degrees against transfer and three weigh in favor of transfer. Id. at *3-11. Of particular note in the Court’s analysis is that it rejected Defendants’ argument that Plaintiff’s choice of forum should be afforded minimal weight and less deference “because Plaintiff chose to litigate in the forum where it is incorporated, rather than the forum where its principal place of business is located.” Id. at *3-4. The Court followed the balancing principles set forth in Shutte v. Armco Steel Corp., 431 F.2d 22, 25 (3d Cir. 1970) and gave the Plaintiff’s forum choice paramount consideration in balancing the Jumara factors. Ultimately, the Court decided that Defendants failed to demonstrate that the Jumara factors weigh strongly in favor of transfer.

A copy of the Court’s Memorandum Opinion is attached.