By Memorandum Opinion entered by The Honorable Leonard P. Stark in Fairchild Semiconductor Corp. et al. v. Power Integrations, Inc., C.A. No. 12-540-LPS (D.Del. March 16, 2018), the Court denied Defendant Power Integrations, Inc.’s motion for entry of final judgment pursuant to Rule 58 of the Federal Rules of Civil Procedure as to induced infringement of its U.S. Patent No. 7,995,359 (“the ‘359 patent”) by Plaintiffs Fairchild Semiconductor Corporation and Fairchild (Taiwan) Corporation (collectively, “Fairchild”) and ordered a new trial on the issues of induced infringement and damages for that infringement. The Court did so after concluding that the induced infringement jury instruction that it gave the jury during the trial constituted plain error, was a miscarriage of justice and the only option left was to order a new trial on induced infringement pursuant to the Court’s inherent authority. See id. at *11-12.

A copy of the Memorandum Opinion is attached.

By Memorandum Opinion entered by The Honorable Leonard P. Stark in Vehicle IP, LLC v. AT&T Mobility LLC, et al., Civil Action No. 09-1007-LPS (D.Del., December 30, 2016), the Court granted defendants Telecommunication Systems, Inc., Networks in Motion, Inc., and Cellco Partnership (collectively, the “TCS Defendants”) motion for partial summary judgment of no willful infringement and denied a number of other motions to exclude and motions for summary judgment or partial summary judgment filed by the parties.

In evaluating the TCS Defendants’ motion for partial summary judgment of no willful infringement, the Court recognized that the “willfulness inquiry asks whether a party has engaged in ‘conduct warranting enhanced damages,’ under 35 U.S.C. § 284, behavior the Supreme Court has described as ‘willful, wanton, malicious, bad-faith, deliberate, consciously wrongful, flagrant, or [] characteristic of a pirate.’” Id. at *15. In granting the motion, the Court found that Vehicle IP did “not identify evidence, beyond pre-suit knowledge of the patent, that could show that the TCS Defendants’ infringement was ‘egregious’, ‘deliberate,’ wanton,’ or otherwise characteristic of the type of infringement that warrants the Court exercising its discretion to impose the ‘punitive’ sanction of enhanced damages.” Id. at *17. The Court noted that a party’s pre-suit knowledge of a patent is not sufficient, by itself, to find willful misconduct of the type that may warrant an award of enhanced damages. Id. Therefore, based on the record before it, the Court concluded that “no reasonable jury could find willful infringement” of the patent-in-suit by the TCS Defendants. Id.

A copy of the Memorandum Opinion is attached.

The general take away is that, in order to make a showing of willful infringement, the patentee must prove, among other things, that the accused infringer acted with a specific intent to infringe. In making that showing, the patentee must present some evidence beyond the accused infringer’s pre-suit knowledge of the patent to show that the accused infringer’s conduct was egregious, deliberate, wanton, or otherwise characteristic of the type of infringement that warrants the Court exercising its discretion to impose the punitive sanction of enhanced damages. For example, in making its showing, the patentee should consider presenting evidence to show that (1) the accused infringer intentionally and specifically relied on the pre-suit knowledge of the patent in developing its infringing products; and/or (2) the accused infringer hired a specific employee who previously worked for the patentee because of his or her specific knowledge of the patented invention. The patentee should be mindful of the record and make sure that it contains sufficient evidence of the infringer’s specific intent to infringe and “willfulness” in order to survive a partial motion for summary judgment of no willfulness and to get the issue to the jury.

By Memorandum Opinion entered by the The Honorable Sue L. Robinson in Takeda Pharmaceuticals U.S.A., Inc. v. West-Ward Pharmaceutical Corp., et al., Civil Action No. 14-1268-SLR (D.Del., May 18, 2016), the Court granted Defendants’ motion to dismiss Plaintiff’s first amended complaint pursuant to Federal Rule of Civil Procedure 12(b)(6) after finding that Plaintiff’s claims for indirect infringement failed to state a plausible claim for relief.  In reaching its conclusion, the Court, among other things, found that the Mitigare™ label does not infringe and is not a sufficient catalyst to constitute active steps to encourage direct infringement. Id. at 16-17.  The Court reasoned that (1) like the generic in AstraZeneca Pharmaceuticals LP v. Apotex Corp., 2010 WL 5376310 (D.Del., December 22, 2010) aff’d, 669 F.3d 1370 (Fed. Cir. 2012), Defendant specified that Mitigare™ is for the prevention of gout flares and warned that its drug is not indicated for the treatment of acute gout flares, and (2) allowing Takeda to proceed with its claims would be akin to allowing Takeda to expand the scope of its exclusivity over the treatment of gout with colchicine. Id. at 15.

A copy of the Memorandum Opinion is attached.

By Memorandum Order entered in IPVenture Inc. v. Lenovo Group, Limited, et al., Civil Action No. 11-588-RGA (D.Del., January 8, 2013), the Honorable Richard G. Andrews granted in substantial part the motions of defendant Dell and other defendants seeking the dismissal of the claims of indirect infringement and willfulness asserted in the Second Amended Complaint of plaintiff IPVenture Inc. (“IPVenture”).

A complete copy of the Memorandum Order is attached.
 

Continue Reading Judge Andrews Grants in Substantial Part Defendants’ Motion to Dismiss IP Venture’s Claims of Indirect Infringement and Willfulness

By Memorandum Order entered by The Honorable Leonard P. Stark in British Telecommunications PLC v. Google Inc., C.A. No. 11-1249-LPS (D.Del., September 20, 2012), the Court granted Plaintiff British Telecommunications PLC’s motion for leave to file a First Supplemental Complaint to include claims of infringement against a new product and/or service introduced by defendant Google after the filing of the original complaint and claims of indirect infringement based on Google’s knowledge of the patents-in-suit since at least the date of the filing of the original complaint on December 15, 2011.

In granting Plaintiff’s motion for leave to amend, the Court recognized the Third Circuit’s liberal approach to granting leave to amend and found there was no evidence of undue delay, bad faith or dilatory motive by Plaintiff. Id. at 2. The Court also rejected Defendant’s argument that the motion was futile because Plaintiff failed to state a plausible claim of indirect infringement. Id. In doing so, Judge Stark made it clear that, for purposes of indirect infringement occurring after the filing date, his expressed view is that “an accused infringer is on notice of the patent(s)-in-suit once an initial pleading identifies the patents-in-suit.” Id. (quoting Softview LLC v. Apple Inc., 2012 WL 3061027, at *7 (D.Del., July 26, 2012).

A complete copy of the Memorandum Order is attached.
 

By Memorandum Opinion entered by the Honorable Leonard P. Stark in Tarkus Imaging, Inc. v. Adobe Systems, Inc., et al., C.A. No. 10-63-LPS (D.Del., June 14, 2012), the Court denied defendants’ motions for summary judgment of non-infringement, invalidity and no indirect infringement concluding that the record evidence raised genuine issues of material fact. The Court explained that, in large part, the subject “summary judgment motions present a ‘battle of the experts’ that is not amenable to resolution prior to the presentation of evidence, including testimony.” Id. at 2.

A complete copy of the Opinion is attached.
 

By Memorandum Opinion entered by The Honorable Sue L. Robinson in Intermec Technologies Corp. v. Palm Inc., Civil Action No. 07-272-SLR (D.Del., September 15, 2011), the Court granted Defendant Palm Inc.’s (“Palm”) motion for summary judgment relating to its infringement counterclaims in part by finding no invalidity as to its U.S. Patent Nos. 6,665,803 (“the ‘803 patent”) and 7,096,049 (“the ‘049 patent”). The Court denied Palm’s motion for summary judgment of infringement of the ‘803 and ‘049 patents against Plaintiff Intermec Technologies Corp. (“Intermec”). Id. at 50. The Court also granted Intermec’s motion for summary judgment as to no infringement of claims 17, 18 and 22 of the ‘803 patent and claim 17 of the ‘049 patent. Id. at 51.

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

By Memorandum Opinion entered by the Honorable Sue L. Robinson in EON Corp. IP Holdings LLC v. FLO TV Inc., et al., Civil Action Action No. 10-812-SLR (D.Del., July 12, 2011), the Court granted in part and denied in part defendants’ motion to dismiss the second amended complaint of plaintiff Eon Corp. IP Holdings LLC. (“EON”). In its second amended complaint, EON asserted claims against defendants FLO TV Inc. (“FLO TV”), MobiTV, Inc. (“MobiTV”), U.S. Cellular Corp. (“U.S. Cellular”), LG Electronics MobileComm USA, Inc. (“LG”), Motorola Mobility (“Motorola”), Samsung Telecommunications America LLC (“Samsung”), Sprint Nextel Corp. (“Sprint”), Research in Motion Corp (“RIM”), HTC America Inc. (“HTC”), Palm, Inc. (“Palm”),. Kyocera Communications Inc. (“Kyocera”), LetsTalk.com, Inc. (“LetsTalk.com”), Qualcomm, Inc. (“Qualcomm”), GoTV Networks, Inc. (“GoTV”), Cellco Partnership d/b/a Verizon Wireless (“Verizon Wireless”), SPB Software, Inc. (“SPB”) and Simplexity, LLC d/b/a Wirefly (“Wirefly”) (collectively, “defendants”) seeking damages and injunctive relief for defendants’ alleged direct, indirect, and joint infringement of U.S. Patent No. 5,663,757, entitled “Software Controlled Multi-Mode Interactive TV Systems” (the ‘757 patent). In denying defendants’ motion to dismiss with respect to the direct infringement claims, the Court found that EON’s second amended complaint satisfied the minimal requirements for pleading direct infringement without the benefits of discovery. See id. at 5. In granting defendants’ motion to dismiss with respect to the joint and indirect infringement claims, the Court found the EON’s second amended complaint failed to adequately set forth the requisite knowledge element for indirect infringement and failed to identify any one defendant as exercising “control or direction” over the allegedly infringing acts of the other defendants (in other words, failed to identify a single mastermind) necessary to set forth a claim for joint infringement. See id. at 9-12.

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

By Memorandum Order entered by The Honorable Sue L. Robinson in Minkus Electronic Display Systems, Inc. v. Adaptive Micro Systems LLC, Civil Action No. 10-666-SLR (D.Del., March 16, 2011), the Court granted defendants’ motions to dismiss for failure to state a claim for indirect infringement. Id. at 7. In their motions, defendants argued that plaintiff failed to alleged sufficient facts to establish that: (1) a third party infringed the patent-in-suit prior to the filing of the first amended complaint as a result of any acts by defendants; (2) any specific product that is not capable of a substantial non-infringing use was sold by defendants prior to the filing of the first amended complaint; and (3) defendants possessed the requisite knowledge and intent to indirectly infringe the patent-in-suit at the time of the alleged infringement. Id. at 4. After analyzing defendants’ contentions, the Court concluded that plaintiff failed to allege sufficient facts that would allow the court to infer that defendants had any knowledge of the patent-in-suit at the time there were committing the allegedly infringing activities. Id. at 6-7. Rather, the first amended complaint simply contained a mere recitation of the elements of indirect infringement, which the Court found insufficient. Id. at 7.

A complete copy of the Memorandum Order is attached hereto.