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.
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 Maryellen Noreika in ANI Pharmaceuticals, Inc. v. Method Pharmaceuticals, LLC et al., Civil Action No. 17-1097-MN (D.Del. January 11, 2019), the Court granted-in-part Defendants’ Motion to Dismiss under Federal Rule of Civil Procedure 12(b)(2) or, in the Alternative, Transfer Venue to the extent that it sought to transfer the action from the District of Delaware to the Northern District of Texas. The Court denied the portion of Defendants’ Motion that sought dismissal under Federal Rule of Civil Procedure 12(b)(2) finding that the question of personal jurisdiction over defendant Method presented a close call but the Court lacked personal jurisdiction over defendant Tucker. Id. at *12. The Court explained that it would exercise its discretion in transferring the case regardless of the existence of personal jurisdiction over defendant Method because “judicial economy favors the prosecution of a case in its entirety, and that weighs in favor of transferring the case to the Northern District of Texas where there is no question of jurisdiction.” Id.
Ultimately, in analyzing the twelve Jumara factors, the Court found that eight factors weighed in favor of transfer while the remaining four factors were neutral. Id. at *12-19. The Court noted that, although “a plaintiff’s choice of venue is generally provided paramount consideration under Jumara, the Court’s inability to assert personal jurisdiction over one of the defendants undermine[d] that deference here. Id. at *19.
A copy of the Memorandum Opinion is attached.
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.
Wishing all of the readers of the Delaware Intellectual Property Litigation Blog a Happy and Prosperous 2019!
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.