In the Report and Recommendation entered in Helios Streaming, LLC et al. v. Vudu, Inc., Civil Action No. 19-1792-CFC-SRF (D.Del. May 11, 2020), the Honorable Sherry R. Fallon recommends the Court grant defendant Vudu’s partial motion to dismiss plaintiffs’ claims of induced infringement asserted in Count I, Counts II through V, and Count VII of the complaint for failure to state a claim under Federal Rule of Civil Procedure 12(b)(6). Specifically, Judge Fallon recommends the dismissal of those claims after finding that the complaint does not sufficiently allege that (1) Vudu had knowledge of the patents asserted in Counts II through V and VII prior to the filing of the complaint; and (2) Vudu had knowledge its conduct induced infringement of the patent asserted in Count I of the complaint. Id. at *2-6.

A copy of the Report and Recommendation is attached.

By Memorandum Order entered by The Honorable Richard G. Andrews in Malvern Panalytical, Inc. v. TA Instruments-Waters, LLC et al., Civil Action No. 19-2157-RGA (D.Del., May 5, 2020), the Court granted Defendants’ partial motion to dismiss in part by dismissing the willfulness and contributory infringement claims asserted in Plaintiff’s amended complaint.

Plaintiff’s amended complaint asserts five (5) patents and identifies the accused products by name. Id. at *1. Defendants filed a partial motion to dismiss Plaintiff’s amended complaint asserting, among other things, that Plaintiff did not sufficiently allege willfulness as to the asserted patents and any contributory and/or induced infringement claims. Id.

Upon evaluation, the Court found that, although it was a close call, Plaintiff did not sufficiently allege willfulness as to the two (2) Plotnikov patents that are asserted. Id. The Court also found that Plaintiff did not sufficiently allege willfulness as to the three (3) Broga patents asserted. Id. In fact, “other than the assertion that Plaintiff and Defendants are competitors in a two-player industry, there are no factual assertions that begin to suggest, prior to the filing of the complaint, [Defendants had] actual knowledge as to the Broga patents.” Thus, the Court dismissed the willfulness claims with leave to amend in accordance with the scheduling order.

With respect to the alleged contributory infringement claims, the Court found that they appear to be nothing more than “meaningless additional boilerplate.” Id. at *2. Plaintiff failed to assert a plausible contributory infringement theory. Specifically, “[e]ach of the accused products is not alleged, as is required by 35 U.S.C. § 271(c), to be a ‘component’ that a customer uses as part of some other system that infringes or as a ‘material or apparatus for use in practicing a patented process.’” Id. Thus, the Court also dismissed the contributory infringement claims.

The Court denied the partial motion to dismiss with respect to the induced infringement claims after finding that it was sufficient at the pleading stage for Plaintiff to plausibly allege the ‘induced” part of induced infringement by alleging that Defendants (1) had actual knowledge of the asserted patents since the filing of the original complaint, and (2) provides product literature that instructs customers how to use the accused products in an infringing manner. Id.

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

In Romag Fasteners, Inc. v. Fossil Group, Inc., No. 18-233, 590 U.S. _____ (2020), the United States Supreme Court held that a plaintiff in a trademark infringement action, brought under 15 U.S.C. § 1125(a), that alleges and proves trademark infringement is not required to show that the defendant willfully infringed the plaintiff’s trademark as a precondition to a disgorgement of profits award. In so ruling, the Supreme Court clarified that the Lanham Act does require the showing of willful infringement as a precondition to disgorgement of profits in an action brought under 15 U.S.C. § 1125(c) but does not require the same precondition for claims brought under § 1125(a).

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

By Memorandum Order entered by The Honorable Colm F. Connolly in Sound View Innovations, LLC v. Delta Air Lines, Inc., Civil Action No. 19-659-CFC (D.Del. April 3, 2020) (consolidated), the Court denied the Federal Rule of Civil Procedure 12(b)(6) motions to dismiss filed by Defendants in three actions. Defendants argued in support of their motions that the claims asserted against them are invalid under 35 U.S.C. § 101 because the patent claims asserted fail to claim patentable subject matter. Id. at *1. Specifically, Defendants argued that the claims asserted are “patent-ineligible because they are directed to abstract ideas and do not contain an inventive concept.” Id. at *5.

In denying the motions, the Court determined that it need not and “does not decide whether the asserted patents are directed to abstract ideas because statements in the specifications of the asserted patents that are alleged or incorporated by reference in the complaints plausibly establish that the asserted claims contain an inventive concept.” Id. Thus, accepting as true the facts in the complaints and viewing those facts in the light most favorable to plaintiff, the Court concluded that dismissal of the claims was not proper via a motion to dismiss. Id. at *6-11.

A copy of the Memorandum Order is attached.

By Opinion entered by The Honorable Leonard P. Stark in Belcher Pharmaceutical, LLC v. Hospira, Inc., Civil Action No. 17-775-LPS (D.Del. March 31, 2020), following a two day bench trial and post-trial briefing in the action filed by plaintiff Belcher under the Hatch-Waxman Act as a result of defendant Hospira’s attempt to bring to market a bioequivalent of plaintiff’s product, the Court ruled in favor of defendant Hospira concluding that (1) defendant Hospira’s product does not infringe U.S. Patent No. 9,283,197 (“the ‘197 Patent”); (2) the ‘197 Patent is invalid for obviousness and other reasons; and (3) the ‘197 Patent is unenforceable due to inequitable conduct.

 A copy of the Opinion is attached.

By Memorandum Opinion entered by The Honorable Richard G. Andrews in Rondevoo Technologies, LLC v. Aernos, Inc., Civil Action No. 19-680-RGA (D.Del. March 24, 2020), the Court granted Defendant’s Rule 12(b)(6) motion to dismiss for failure to state a claim on the basis that plaintiff’s complaint failed to state a claim because the asserted claims of the patents-in-suit are ineligible for patent protection under 35 U.S.C. § 101. Specifically, the Court found that the asserted claims of U.S. Patent Numbers 9,453,814 (“the ‘814 patent”) and 9,927,391 (“the ‘391 patent”) are (1) directed to the unpatentable abstract idea of sensing, and (2) the claims do not contain an inventive concept sufficient to transform the claimed abstract idea into a patent eligible application of an abstract idea. Id. at *3-12. The Court also found that plaintiff could not amend its complaint to state a claim upon which relief could be granted under the circumstances. Id. at*13.

A copy of the Memorandum Opinion is attached.

On March 22, 2020, Delaware Governor John Carney issued his Fourth and Fifth Modifications of the Declaration of a State of Emergency in the State of Delaware Due to a Public Health Threat. The latest Stay at Home Order follows Pennsylvania, New York, New Jersey and some other states closing nonessential business and commercial establishments in the State of Delaware. The order takes effect on tomorrow, Tuesday, March 24, 2020, at 8:00 a.m. and remains in effect “until May 15, 2020, or the public health threat of COVID-19 has been eliminated… .” Violations constitute a criminal offense.



By Memorandum Opinion entered by The Honorable Colm F. Connolly in Genentech, Inc. et al. v. Amgen Inc., Civil Action No. 17-1407-CFC, Consolidated (D.Del. March 9, 2020), the Court issued its claim construction opinion construing the remaining disputed claim term, “following fermentation,” in the patent-in-suit, United States Patent Number 8,574,869. Based on the extrinsic evidence and the Court’s reconsideration of the intrinsic evidence in light of the extrinsic evidence presented, the Court concluded that a person of ordinary skill in the art would understand “following fermentation” to mean “after the earlier of harvesting or purification has begun.” Id. at *2. Thus, the Court construed the term accordingly. Id. at *2-18.

A copy of the Memorandum Opinion is attached.