By Memorandum Opinion entered by The Honorable Richard G. Andrews in Finnavations LLC v. Payoneer, Inc., Civil Action No. 18-444-RGA (D.Del. November 26, 2018) (consolidated), the Court granted defendants’ motion to dismiss under 35 U.S.C. §101 after concluding that the asserted claims of the patent-in-suit, U.S. Patent No. 9,569,755 (“the ‘755 Patent”), are directed to patent ineligible subject matter and do not contain an inventive concept.

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 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 Opinion entered by The Honorable Richard G. Andrews in TQ Delta, LLC v. ZyXel Communications, Inc. et al., Civil Action No. 13-02013-RGA (D.Del. June 12, 2018), the Court denied Defendants’ Motion for Expedited Consideration of a Preliminary Injunction seeking to enjoin Plaintiff from pursuing an action in the High Court of Justice of London, England against ZyXel UK and ZyXel Communications A/S (incorporated in Denmark) for infringement of two European patents. One of the two patents in suit in the UK action is the counterpart to the claims in the Family 5 patents asserted in the instant action. Id. at *2.

In denying Defendants’ motion, the Court explained that the Third Circuit has adopted the restrictive approach as a test for determining whether an anti-suit injunction should be entered to restrain the advancement of a foreign parallel proceeding. Id. at *3. Under the restrictive approach, anti-suit injunctions against foreign proceedings are rarely granted. Id. District courts may appropriately enjoin “foreign parallel proceedings only to protect jurisdiction or an important public policy.” Id. The Third Circuit’s jurisprudence instructs that, although comity is a consideration in federal and state litigation, comity should weigh even more heavily in the court’s analysis of anti-suit injunction in the international context. Id. Domestic and foreign parallel proceedings may ordinarily proceed simultaneously “at least until one has reached the stage where its ruling becomes res judicata.” Id.

Applying the restrictive approach to the circumstances in the instant action, the Court found that the UK action will not usurp this Court’s jurisdiction or threaten an important public policy. Id. at *4-8. Thus, the UK action should proceed parallel to the instant action, and an injunction is not warranted. Id.

A copy of the Memorandum Opinion is attached.

By Memorandum Opinion entered by The Honorable Gregory M. Sleet in Genentech, Inc. et al. v. Amgen Inc., Civil Action No. 17-1407-GMS (D.Del. April 17, 2018), the Court granted defendant Amgen’s motion to dismiss the claim of plaintiffs Genetech and City of Hope (collectively “Genetech”) requesting a declaratory judgment that Amgen cannot market Mvasi™ before December 18, 2018.

Mvasi™ is a biosimilar version of Genetech’s Avastin®. During the “patent dance” prescribed by the Biologics Price Competition and Innovation Act (“BPCIA”), 42 U.S.C. § 262(l), Amgen made a statement pursuant to 42 U.S.C. §262(l)(3)(B) that it did not intend to begin commercial marketing of Mvasi™ before December 18, 2018. Id. at *1. Amgen later provided notice that it would not start commercial marketing of Mvasi™ before April 4, 2018 – eight months earlier than the date it previously provided. Genetech filed its claim requesting a declaratory judgment seeking to enforce Amgen’s earlier representation that it would not commence the commercial marketing of Mvasi™ before December 18, 2018. Id. at *3. Amgen moved to dismiss Genetech’s commercial marketing claim asserting that it failed to state a claim and that the Court lacked subject matter jurisdiction under Federal Rules of Civil Procedure 12(b)(6) and 12(b)(1). Id. at *1.

Upon review, the Court determined there was not yet an “actual controversy” to warrant the Court exercising jurisdiction over Genentech’s commercial marketing claim under the Declaratory Judgment Act. Id. at *4. In other words, because it was already beyond April 4, 2018 and, other than the notice of commercial marketing, there was no indication that Mvasi™ had actually launched or would be launched before December 18, 2018, the commercial marketing claim was not of “sufficient immediacy” to warrant the issuance of a novel declaratory judgment. Id. The Court noted that, if the claim ripens into an “actual controversy” – meaning Amgen launches Mvasi™ before December 18, 2018 – there would be an opportunity for Genentech to seek a temporary restraining order or preliminary injunction at that time. Id.

A copy of the Memorandum Opinion is attached.

By Order entered by The Honorable Gregory M. Sleet in Alarm.com, Inc., et al. v. Securenet Technologies, Civil Action No. 15-807-GMS (D.Del. April 6, 2018), the Court rendered its Markman ruling construing three (3) disputed terms and certain variants of one term in U.S. Patent Nos. 7,885,635 (“the ‘635 patent”), 8,073,931 (“the ‘931 patent”), 8,473,619 (“the ‘619 patent”), and 8,478,844 (“the ‘844 patent”).

A copy of the Markman Order is attached.

By Memorandum Opinion entered by The Honorable Richard G. Andrews in IPA Technologies, Inc. v. Amazon.com, Inc. et al., Civil Action No. 16-1266-RGA (D.Del. March 31, 2018) (consolidated), the Court granted Defendants’ motions to dismiss as to claim 1 of U.S. Patent No. 6,742,021 (“the ‘021 patent”), claim 1 of U.S. Patent No. 6,523,061 (“the ‘061 patent”), and claim 1 of U.S. Patent No. 6,757,718 (“the ‘718 patent”) after finding that those claims are each drawn to an abstract idea and that none of them provide an inventive concept. In reaching its findings, the Court noted, among other things, that the subject claims are “aspirational in nature and devoid of any implementation details or technical description” that would permit the Court to conclude that any of the subject claims as a whole are directed to something other than the abstract idea of retrieving electronic data in response to a spoken request, and transmitting the retrieved data to a user. Id. at *18.

A copy of the Memorandum Opinion is attached.

By Opinion entered by The Honorable Leonard P. Stark in Idenix Pharmaceuticals LLC et al. v. Gilead Sciences, Inc., Civil Action No. 14-846-LPS (D.Del. February 16, 2018), the District Court granted in part Defendant Gilead Sciences, Inc.’s renewed motion for judgment as a matter of law (“JMOL Motion”) after finding that the asserted claims of the patent-in-suit, U.S. Patent No. 7,608,597 (“the ‘597 patent”) are invalid for failure to meet 35 U.S.C. § 112’s enablement requirements. The Court denied Defendant’s JMOL Motion as to damages and written description. Id. at *2 and 51.

By way of background, the science involved in this case involves groundbreaking work by both parties in the field of treatments for the Hepatitis C virus infection. The ‘597 patent is entitled “Methods and Compositions for Treating Hepatitis C Virus. It was issued on October 27, 2009. Id. at *1. Prior to trial, Defendant Gilead stipulated that, under the Court’s claim construction, its accused products, Harvoni and Sovaldi, infringe the asserted claims of Idenix’s ‘597 patent. Id. At the end of a two week trial in December 2016, the jury found that Gilead failed to prove that the asserted claims are invalid and awarded Idenix $2.54 billion in damages. Id. Thereafter, Gilead renewed its JMOL motion, which the Court had taken under advisement during trial and later denied as moot and with the opportunity to renew following entry of judgment. Id.

In its JMOL motion, Gilead asked the Court to set aside the jury’s verdict on grounds that Idenix’s asserted patent claims are invalid for failure to meet 35 U.S.C. §112’s written description and enablement requirements. Id. Alternatively, Gilead requested the Court to reduce the $2.54 billion damages award as unsupported by the evidence. Id.

After reviewing the record and evaluating the JMOL motion, the Court found that “a reasonable jury, even taking all the evidence in the light most favorable to Idenix and drawing all reasonable inferences in favor of Idenix, could only have concluded that Idenix’s ‘597 patent is invalid due to lack of enablement. The only reasonable finding, based on the trial record, is that Gilead met its burden to prove nonenablement by clear and convincing evidence. The trial revealed that there are no genuinely disputed material facts with respect to enablement.” Id. at *50-51. Accordingly, the Court concluded that Gilead is entitled to judgment as a matter of law that the asserted claims of the ‘597 patent are invalid for lack of enablement. Id. at *51.

The effect of the Court’s Order will be the setting aside of the jury’s $2.54 billion damages award to Idenix.  A copy of the 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. January 17, 2018) (consolidated), the Court rendered its Markman ruling construing eight (8) disputed terms in U.S. Patent Nos. 6,701,344 (“the ‘344 patent”), 6,714,966 (“the ‘966 patent”), 6,829,634 (“the ‘634 patent”), 6,910,069 (“the ‘069 patent”), 6,732,147 (“the ‘147 patent”), and 6,920,497 (“the ‘497 patent”).

A copy of the Memorandum Opinion is attached.

By Memorandum Order entered by The Honorable Leonard P. Stark in Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc. et al., Civil Action No. 04-1371-LPS (D.Del., December 8, 2017), the Court dismissed without prejudice U.S. Patent No. 6,229,366 (“the ‘366 patent”) from the action, which was filed more than a dozen years ago, given that the U.S. Patent and Trademark Office allowed amended claims during Fairchild’s ex parte reexamination, issued a reexamination certificate and the reexamination amendments effected a substantive change in claim scope. Thus, any cause of action predicated on the original claims of the ‘366 patent was extinguished when the reexamination certificate issued. Id. at *5.

A copy of the Memorandum Order is attached.