Following a three-day bench trial in the matter on June 5-7, 2017 and after having considered the entire record in the case and the applicable law, the Court, through Trial Opinion, entered by The Honorable Richard G. Andrews in Orexigen Therapeutics, Inc. v. Actavis Laboratories FL, Inc., Civil Action No. 15-451-RGA (D.Del. October 13, 2017), found that (1) Defendant failed to prove by clear and convincing evidence that claims 26 and 31 U.S. Patent No. 7,462,626 (“the ‘626 patent”), claim 1 of U.S. Patent No. 7,375,111 (“the ‘111 patent”), and claim 11 of U.S. Patent No. 8,916,195 (“the ‘195 patent”) are invalid; and (2) Plaintiff proved by a preponderance of the evidence that Defendant’s ANDA product directly infringes claim 1 of the ‘111 patent and indirectly infringes claims 26 and 31 of the ‘626 patent and claim 11 of the ‘195 patent.

A copy of the Trial Opinion is attached.

By Memorandum Order entered by The Honorable Leonard P. Stark in GN Netcom, Inc. v. Plantronics, Inc., Civil Action No. 12-1318-LPS (D.Del. September 29, 2017), the Court denied Defendant Plantronics, Inc.’s motion for summary judgment which contended that any foreclosure effect of Defendant’s exclusive dealing arrangement with its distributors was negated by Plaintiff GN Netcom, Inc.’s ability to circumvent the exclusive dealing arrangement by accessing the end-users directly. In other words, Plantronics argued that GN could not show substantial foreclosure of the market for the telephone headsets at issue because GN could make sales calls directly to the contact center and office end-users with delivery effected by any of the hundreds of resellers that GN uses, including some of the Plantronics Only Distributors (“PODs”) themselves. Id. at *5. As support for the proposition, Plantronics referred to GN’s recent, successful history of reaching out to end users in this manner (“solution selling”), which resulted in significant “wins” and growth in market share for GN. Id.

The Court, however, noted that “[t]he core question presented by the motion is whether, taking the evidence in the light most favorable to GN, Plantronics has demonstrated that a reasonable juror could find only that GN had adequate, ‘available,’ ‘viable,’ and/or ‘effective,’ alternative means of distribution, notwithstanding Plantronics’ POD program. The ‘mere existence of other avenues of distribution’ is not enough on its own. Instead, there must be an ‘assessment of [the alternative means’] overall significance to the market,’ and such alternative means must be ‘practical or feasible in the market as it exists and functions.” Id. at *6.

Ultimately, the Court found that Plantronics could not meet the summary judgment standard to show that the only reasonable conclusion to be drawn from the record is that distribution through PODs is an adequately available, viable and/or effective means of distribution for GN. Id. at *8-9. Although the Court noted the record contains substantial evidence from which a jury might reasonably find that GN could adequately compete for business, Plantronics failed to show that was the only conclusion a jury could reasonably reach. Id. at *9. Thus, summary judgment was denied.

A copy of the Memorandum Order is attached.

An interesting and notable take away from this case is that, due to certain discovery spoliation by Plantronics concerning the deletion of emails, the Court had previously imposed monetary and evidentiary sanctions on Plantronics, including a permissive adverse inference instruction to be given at trial and being required to seek leave of Court before filing any motion for summary judgment – given the impact that the spoliation and permissive adverse inference could have on the resolution of any motion for summary judgment. See id. at *2. It leaves one wondering whether this would have been a case appropriate for summary judgment but for the sanctions and adverse inferences against Plantronics due to its spoliation.

By Memorandum Opinion entered by The Honorable Leonard P. Stark in International Business Machines Corp. v. The Priceline Group Inc. et al., Civil Action No. 15-137-LPS (D.Del. September 18, 2017), the Court, among other things, granted plaintiff International Business Machines Corporation’s (“IBM’s”) motion for summary judgment on no anticipation of the asserted claims of U.S. Patent No. 5,796,967 (“the ‘967 patent”) in light of the Apple HyperCard System.

IBM asserted that Defendants could not show by clear and convincing evidence that the system was known or in prior use before the effective filing date of the ‘967 patent because evidence was lacking that the HyperCard system was (1) connected to a network, or (2) configured in the manner that Defendants’ expert relied on in his anticipation theories. Id. at *13. The Court found that Defendants did not provide substantial evidence that could support a jury finding that the HyperCard System, as disclosed by the first edition of the Goodman Handbook (the only handbook pre-dating the patent), was enabling. Id. at *16. The Court reasoned that the handbook only addressed what could be done in the future and never discussed any configurations that Defendants’ expert relied on or identified as a specific network to which the system could connect. Id.

A copy of the Memorandum Opinion is attached.

Following a five-day bench trial in the matter in February 2017 and after having considered the entire record in the case and the applicable law, the Court, through Memorandum, entered by The Honorable Gregory M. Sleet in Tris Pharma, Inc. v. Actavis Laboratories FL, Inc., Civil Action No. 14-1309-GMS (consolidated) (D.Del. September 6, 2017), entered judgment in favor Defendant Actavis Laboratories FL, Inc. (“Actavis”) after concluding that all asserted claims of the patents-in-suit are invalid due to obviousness. The patents-in-suit in the action are U.S. Patent Nos. 8,465,765 (“the ‘765 patent”), 8,563,033 (“the ‘033 patent”), 8,778,390 (“the ‘390 patent”), 8,956,649 (“the ‘649 patent”) and 9,040,083 (“the ‘083 patent”).

After assessing the four considerations of an obviousness analysis – (1) the scope and content of the prior art; (2) the level of ordinary skill in the art; (3) the differences between the claimed subject matter and the prior art; and (4) secondary considerations of nonobviousness, such as commercial success, long-felt but unsolved need, failure of others, acquiescence of others in the industry that the patent is valid, and unexpected results – the Court concluded that the asserted claims are invalid as obvious under 35 U.S.C. §103. Id. at 26-45.

Copies of the Memorandum and Order are attached.

By Memorandum Opinion entered by The Honorable Leonard P. Stark in Intellectual Ventures I LLC v. T-Mobile USA, Inc. et al., Civil Action No. 13-1632-LPS (D.Del. August 23, 2017) (consolidated), the Court denied Plaintiff’s motion for reconsideration of a prior Order of the Court and granted in part and denied in part Defendants’ motion for summary judgment.

Specifically, the Court denied Plaintiff’s motion for reconsideration of the Court’s December 30, 2016 Memorandum Opinion which granted Defendants’ motion for judgment on the pleadings that certain claims of U.S. Patent Nos. 6,115,737 (“the ‘737 patent”), 8,078,200 (“the ‘200 patent”), and 7,450,957 (“the ‘957 patent”) are patent-ineligible under 35 U.S.C. § 101. In denying Plaintiffs’ motion for reconsideration, the Court found that Plaintiffs failed to demonstrate an intervening change in controlling law, the availability of new evidence, or the need for the Court to correct a clear error of law or fact that warranted reconsideration. Id. at *1-14.

With respect to Defendants’ motion for summary judgment, the Court denied Defendants’ motion for summary judgment that claims 1, 7, and 8 of the ‘0032 patent are patent-ineligible under 35 U.S.C. § 101 after finding that those claims are not directed to an abstract idea and, thus, are patent eligible. Id. at *15-19. The Court granted Defendants’ motion for summary judgment that claims 17, 20 and 24 of the ‘490 patent and claim 17 of the ‘306 patent are patent-ineligible under § 101 after finding that those claims are not directed to patent-eligible subject matter. Id. at *19-27. The Court also granted Defendants’ motion for summary judgment that claims 1, 5 and 9 of the ‘352 patent are patent-ineligible under § 101 after concluding that those claims are not directed to patent-eligible subject matter. Id. at *27-33.

A copy of the Memorandum Opinion is attached.

By Memorandum Opinion entered by The Honorable Leonard P. Stark in Enzo Life Sciences, Inc. v. Abbott Laboratories et al., Civil Action No. 12-274-LPS (D.Del. August 18, 2017 (public version), the Court granted Defendants Abbott Laboratories and Abbott Molecular, Inc.’s Motion for Summary Judgment of Invalidity of U.S. Patent No. 8,097,405 (“the ‘405 patent”) for Nonenablement. “Enablement” requires the specification of a patent to “teach those of skill in the art how to make and how to use the invention as broadly as it is claimed.” Id.at *15 (quoting In re Goodman, 11 F.3d 1046, 1050 (Fed. Cir. 1993). “To prove a claim is invalid for lack of enablement, a challenger must show by clear and convincing evidence that a person of ordinary skill in the art would not be able to practice the claimed invention without ‘undue experimentation.’” Id. (quoting Alcon Research Ltd. v. Barr Labs., Inc., 745 F.3d 1180, 1188 (Fed. Cir. 2014). After applying the foregoing standard to the record evidence and having taken that evidence in the light most favorable to the plaintiff, the Court concluded that there was no genuine dispute of fact and “the only conclusion a reasonable jury could reach is that clear and convincing evidence proves the ‘405 patent is invalid for nonenablement.” Id. The Court also explained how its prior conclusions in a related case, Enzo Life Sciences, Inc. v. Gen-Probe Inc., Civil Action No. 12-104-LPS, factored into its finding of nonenablement with respect to the ‘405 patent. Id.at *15-16.

 A copy of the Memorandum Opinion is attached.

By Memorandum Order entered by The Honorable Leonard P. Stark in The Gillette Co. v. Dollar Shave Club, Inc. et al., Civil Action No. 15-1158-LPS-CJB (D.Del. August 7, 2017), the Court overruled the parties’ objections to the Memorandum Order issued on March 7, 2017 by Magistrate Judge Burke denying defendants’ motion to stay the action pending arbitration and adopted Judge Burke’s Order. Specifically, the Court overruled defendants’ objections to Judge Burke’s determinations that the Court, and not the Arbitral Tribunal, should decide the threshold issue of arbitrability and that there is a genuine issue of material fact as to whether a valid arbitration agreement exists. Id.at *1-5. The Court also overruled plaintiff’s objection to Judge Burke’s determination that, assuming there is a valid arbitration agreement, the current disputes fall within the scope of the arbitration agreement. Id.at *5-8. Lastly, the Court denied plaintiff’s motion to enjoin arbitration finding that plaintiff had failed to meet its burden to show that it was likely to succeed on the merits, that it would be irreparably harmed from the ongoing arbitration, or that the balance of harms or the public interest favored enjoining the arbitration. Id.at *8-10.

A copy of the Reacted Public Version of Memorandum Order is attached.

By Memorandum Opinion entered by The Honorable Gregory M. Sleet in Jedi Technologies, Inc. v. Spark Networks, Inc. et al., Civil Action No. 16-1055-GMS (D.Del. August 3, 2017), the Court granted defendants’ motion to dismiss plaintiff’s patent infringement action under Federal Rule of Civil Procedure 12(b)(6) after finding that plaintiff’s patents claim ineligible subject matter under 35 U.S.C. § 101. Specifically, the Court found that the asserted claims of the patents-in-suit, U.S. Patent Nos. 7,885,977 (“the ‘977 patent”), 8,417,729 (“the ‘729 patent”), 8,930,406 (“the ‘406 patent”), and 9,432,315 (“the ‘315 patent”), are invalid under § 101 because each claim the abstract concept of matching online chatters based on criteria such as personality or location without providing the kind of meaningful limitations needed to make the subject matter patent-eligible. Id.at *12-13. In other words, the Court found that the patents-in-suit do nothing more than “recite the performance of some business practice known from the pre-Internet world along with the requirement to perform it on the Internet.” Id.at *16.

Ultimately, the Court invalidated pursuant to 35 U.S.C. § 101 claims 1, 2, 4 and 5 of the ‘977 patent, claims 26, 27, 29, 30 and 31 of the ‘729 patent, claims 3, 4, and 6 of the ‘406 patent, and claims 1, 2, 3, 4, 6, 7, 8, and 9 of the ‘315 patent for claiming ineligible subject matter and having no inventive concept. See Order.

Copies of the Court’s Memorandum Opinion and Order are attached.

By Memorandum Opinion entered by The Honorable Gregory M. Sleet in Koniklijke Philips N.V. v. HTC Corp., Civil Action No. 15-1125-GMS (D.Del. July 18, 2017), the Court denied Defendants’ Joint Motion to Transfer Venue which sought to transfer venue of the patent infringement action to either the Northern District of California, the Western District of Washington, or the Eastern District of New York pursuant to 28 U.S.C. § 1406, or alternatively to transfer all actions to the Northern District of California pursuant to 28 U.S.C. § 1404(a). In denying the motion, the Court found that, through their conduct in actively litigating the suit in the District of Delaware since December 2015 coupled with their withdrawal of their original motion to dismiss for improper venue following the Federal Circuit’s decision in TC Heartland, 821 F.3d 1338(Fed. Cir. 2016), defendants waived any right to challenge venue in the District of Delaware. Id.at *5-8. The Court also found that, although defendants pleaded the affirmative defense of improper venue in their answer to the second amended complaints, the affirmative defense of improper venue may be waived by a defendant’s subsequent actions through the course of litigation and the totality of defendants’ actions made it clear that they submitted to venue in the District of Delaware. Id.at *9-10.

A copy of the Memorandum Opinion is attached.

The general take away is that, if you are a party asserting the affirmative defense of improper venue, you need to assert and preserve the affirmative defense in a timely manner in your responsive pleading or motion and be mindful that your subsequent actions in litigating the case do not provide grounds for a finding of waiver.

By Memorandum Opinion entered by The Honorable Gregory M. Sleet in Nespresso USA, Inc. v. Ethical Coffee Company SA, Civil Action Np. 16-194-GMS (D.Del. July 13, 2017), the Court granted the motion to dismiss for lack of personal jurisdiction under Federal Rule of Civil Procedure 12(b)(2) of Counterclaim Defendants Nestle Nespresso SA, Nestle SA (“Nestle”) and Nestec SA (“Nestec). In granting the motion, the Court found that neither Nestle or Nestec are “at home” in Delaware and, thus, cannot be subject to general jurisdiction in Delaware. Id.at *5. With respect to specific juridisction, the Court found that Counterclaim Plaintiff Ethical Coffee Company (“ECC”) failed to make a prima facie showing that Nestle or Nestec would be subject to personal jurisdiction in Delaware under a stream of commerce theory or an agency theory. Id.at *6-9. The Court also disagreed with ECC’s position that Federal Rule of Civil Procedure 4(k)(2) gave the Court personal jurisdiction over Nestle and Nestec explaining that, since minimum contacts had not been established through either stream of commerce or agency approach, personal jurisdiction could not be predicated on Rule 4(k)(2). Id.at *10.

A copy of the Memorandum Opinion is attached.