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By Memorandum Opinion and Order entered by The Honorable Leonard P. Stark in Enzo Life Sciences, Inc. v. Hologic Inc. et al., Civil Action No. 16-894-LPS-CJB (D.Del. October 15, 2018), the Court entered its Markman ruling construing eight (8) terms in dispute in U.S. Patent No. 6,221,581 (“the ‘581 patent”).

Copies of the Memorandum Opinion and Order are attached.

By Memorandum Opinion entered by The Honorable Leonard P. Stark in Visual Effect Innovations, LLC v. Sony Electronics Inc., Civil Action No. 17-1276-LPS (D.Del. September 30, 2018), the Court denied Sony’s partial motion to dismiss the Complaint for failure to state a claim pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure based on Sony’s contention that the asserted claims of U.S. Patent Numbers 9,699,444 (“the ‘444 patent”) and 9,716,874 (“the ‘874 patent”) are not directed to patent-eligible subject matter under 35 U.S.C. § 101.

The claims asserted from the ‘444 patent and ‘874 patent relate to the modification of image frames in a video stream. Id. at *1. In its complaint asserting patent infringement against Sony, Visual Effect Innovations, LLC (“VEI”) asserts that Sony makes TVs that modify image frames in a manner that infringe claim 26 of the ‘444 patent and claim 1 of the ‘874 patent. Id. In its motion to dismiss, Sony claimed that the asserted claims are invalid under 35 U.S.C. § 101 because they are directed to the abstract idea of image manipulation and do not contain an inventive concept “because the recited processor and storage elements are generic computer components, and the rest of the limitations do not result in the display of the recited images in any unconventional manner.” Id. at 10.

In denying Sony’s motion to dismiss, the Court found that Sony did not meet its burden to justify dismissal. Id. at *11. In other others, the Court could not conclude that, “taken as an ordered combination, the claims were well-understood, routine or conventional methods and apparatuses for image manipulation.” Id. Also, the Court noted that “the patent-eligibility inquiry could be impacted both by claim construction and by further factual development concerning the use of flicker described by the patents at the time of the inventions.” Id. Thus, the Court denied the motion without prejudice to Sony’s ability to raise another Section 101 challenge during the summary judgment stage of the case. Id. at *11-12.

A copy of the Memorandum Opinion is attached.

By Memorandum Opinion entered by The Honorable Leonard P. Stark in Biomerieux, S.A. et al. v. Hologic, Inc. et al., Civil Action 18-21-LPS (D.Del. September 26, 2018), the Court denied the motion of defendant Grifols S.A. (“GSA”) to dismiss the patent infringement claims asserted against it for lack of personal jurisdiction pursuant to Federal Rule of Civil Procedure 12(b)(2). In their complaint, plaintiffs alleged that three of the Procleix® branded test products of GSA and defendant Grifols Diagnostic Solutions, Inc (“GDS”) infringe two U.S. patents owned by plaintiffs. Id. at *1. GSA is a Spanish corporation with a principal place of business in Barcelona, Spain. In its motion to dismiss, GSA claimed that there was no basis for personal jurisdiction over it in Delaware and submitted declarations in support of its lack of jurisdiction claims. Id. Plaintiffs pointed to public documents that they believed showed sufficient “minimum contacts” with Delaware by GSA that established a prima facie showing of jurisdiction. Id. at *3-6. The Court agreed with Plaintiffs and concluded that Plaintiffs had made a prima facie showing of sufficient minimum contacts with Delaware by GSA that justified the exercise of personal jurisdiction over GSA. Id. at *6. Plaintiffs also persuaded the Court that Rule 4(k)(2) of the Federal Rules of Civil Procedure provided an additional basis for finding personal jurisdiction in the case. Id.

A copy of the Memorandum Opinion is attached.

By Memorandum Opinion entered by The Honorable Leonard P. Stark in Align Technology, Inc. v. 3Shape A/S et al., Civil Action No. 17-1646-LPS-CJB (D.Del. September 7, 2018) and Align Technology, Inc. v. 3Shape A/S et al., Civil Action No. 17-1647-LPS-CJB (D.Del. September 7, 2018), the Court denied defendants’ motion to dismiss in part in both actions with respect to the motion’s assertions that the Complaint failed to plausibly allege direct, indirect and willful infringement of the asserted patents under Rule 12(b)(6) of the Federal Rules of Civil Procedure. The Court granted defendants’ motion to dismiss in part in the 1646 action after finding that claim 1 of United States Patent Number 7,112,065 (“the ‘065 patent”) is directed to the “abstract concept of modifying a finish line of a dental prosthesis – – a concept well-known in the prior art” and, thus, is directed to patent-ineligible subject matter under 35 U.S.C. § 101. Id. at *22-27. The Court also granted defendants’ motion to dismiss in part in the 1647 action after finding that claim 1 of United States Patent Number 6,227,850 (“the ‘850 patent”) is directed to an abstract idea, does not include an inventive concept and, thus, is directed to patent-ineligible subject matter under Section 101. Id. at *27-32.

A copy of the Memorandum Opinion is attached.

By Memorandum Opinion entered by The Honorable Richard G. Andrews in Acceleration Bay LLC v. Activision Blizzard, Inc., Civil Action No. 16-453-RGA (D.Del., August 28, 2018), the Court, among other things, granted Defendants’ Motion for Summary Judgment on claims 11, 15 and 16 of U.S. Patent Number 6,732,147 (“the ‘147 patent”) and claims 19 and 22 of U.S. Patent No. 6,829,634 (“the ‘634 patent”). In doing so, the Court found that each asserted “computer readable medium” claim in those claims is invalid as including non-statutory subject matter and therefore directed to patent-ineligible material. Id. at *20-23.

A copy of the Memorandum Opinion is attached hereto.

By Memorandum and Order entered by The Honorable Richard G. Andrews in AVM Technologies, LLC v. Intel Corp., Civil Action No. 15-0033-RGA-MPT (D.Del. August 14, 2018), the Court denied Defendant’s Motion for Judgment as a Matter of Law on the Issue of Invalidity, Plaintiff’s Renewed Motion for Judgment as a Matter of Law or in the Alternative a New Trial on the Issue of Infringement, and Plaintiff’s Motion for a New Trial on the Issue of Damages. In denying the motions, the Court did not disturb the jury’s verdict.

Copies of the Memorandum and Order are attached.

By Memorandum entered by The Honorable Leonard P. Stark in Westinghouse Air Brake Technologies Corp. v. Siemens Industry Inc., Civil Action No. 17-1687-LPS (D.Del. August 2, 2018), the Court denied Plaintiff Westinghouse Air Brake Technologies Corporation’s (d/b/a Wabtec Corporation) Motion for Preliminary Injunction to enjoin Defendant Siemens Industry, Inc. (“Siemens”) from infringing claims 4, 6 and 24 of U.S. Patent No. 8,478,463 (“the ‘463 patent”) by selling the on-board unit component of Siemens’ positive training control (“PTC”) system, known as Trainguard, in the United States. Following a full evidentiary hearing, the Court denied Wabtec’s Motion for Preliminary Injunction upon concluding that, although Wabtec demonstrated that it will likely prove infringement, Siemens established that it is more likely than not to prove by clear and convincing evidence that the ‘463 patent is invalid in light of the Kull prior art reference. Id. at *2. The Court also concluded that the public interest and the balance of harms weigh more in favor of denying the requested injunctive relief – “as an injunction might cause Siemens to lose the benefit of its substantial investment in developing a competing technology, and because of the harm that would result from altering the status quo of a two-player market.” Id. at *2-3.

A copy of the Memorandum is attached.

By Memorandum and Order entered by The Honorable Gregory M. Sleet in Rothschild Mobile Imaging Innovations, LLC v. Mitek Systems, Inc. et al., Civil Action No. 14-617-GMS (D.Del. July 27, 2018), the Court denied defendant Mitek Systems, Inc.’s motion for attorneys’ fees and expenses pursuant to 35 U.S.C. § 285, 28 U.S.C. § 1927, and the court’s inherent power. Although the parties did not dispute and the Court recognized that Mitek is the prevailing party as required by 35 U.S.C. § 285, the Court denied the motion because it did not find the case to be exceptional. Id. at *6-12. The Court also refused to grant attorneys’ fees or impose sanctions against the losing plaintiff under 28 U.S.C. § 1927, or the court’s inherent power for the same reasons it found the case to not be exceptional. Id. at *12.

Copies of the Memorandum and Order are attached.

By Memorandum Opinion entered by U.S. Magistrate Judge Sherry R. Fallon in Fraunhofer-Gesellschaft Zur Forderung Der Angewandten Forschung E.V. v. Sirus XM Radio Inc., Civil Action 17-184-JFB-SRF (D.Del. July 20, 2018), plaintiff Fraunhofer’s motion for leave to amend its patent infringement complaint pursuant to Federal Rule of Civil Procedure 15(a)(2) was denied. Although Fraunhofer was able to establish good cause for its failure to seek leave to amend the complaint prior to the expiration of the December 14, 2017 deadline set forth in the scheduling order, the Court concluded that Fraunhofer’s proposed amended complaint would be futile under Federal Rule of Civil Procedure 15(a) because Fraunhofer’s proposed amended complaint does not remedy the dispositive deficiency of the original complaint by pleading that SXM’s predecessors failed to fulfill their obligations under the sublicense agreement. Id. at *5-12.

A copy of the Memorandum Opinion is attached.

Given that the Memorandum Opinion was issued by a U.S. Magistrate Judge pursuant to 28 U.S.C. § 636, Federal Rule of Civil Procedure 72(a) and D.Del. LR 72.1(a)(2), the parties may serve and file written objections to the Memorandum Opinion within fourteen (14) days after being served with a copy of the Memorandum Opinion.

By Memorandum Order entered by The Honorable Leonard P. Stark in North Atlantic Operating Co., Inc. et al. v. Dunhuang Group/d/b/a DHgate et al., Civil Action No. 18-154-LPS (D.Del. July 11, 2018), the Court granted in part Petitioners North Atlantic Operating Company, Inc. and National Tobacco Company, L.P.’s Motion to Compel Non-Party Dunhung Group d/b/a DHgate, DHlink, DHport, and DHpay to Comply with Plaintiffs’ Subpoena Duces Tecum (“Motion to Compel”) to the extent it requested the Court to transfer the Motion to Compel to the United States District Court for the Eastern District of Michigan. In so ordering, the Court found that “extraordinary circumstances exist in this case, such that transfer is warranted so as to not disrupt the issuing court’s management of the Underlying Action.” Id. at *3.

A copy of the Memorandum Order is attached.