By Memorandum Order entered by The Honorable Richard G. Andrews in T-JAT Systems 2006 LTD. v. Expedia, Inc. (DE) et al., Civil Action No. 16-581-RGA (D.Del. January 29, 2019), the Court denied Plaintiff’s motion for reconsideration of the Court’s prior opinion and order granting Defendants’ motion to dismiss the action for patent infringement against Defendant Expedia-WA, a Washington corporation, for improper venue. In opposition to Defendants’ motion to dismiss, Plaintiff argued that venue over Expedia-WA exists “under 28 U.S.C. §1400(b), which provides that a patent infringement action may be brought in any district ‘where the defendant has committed acts of infringement and has a regular and established place of business.’” Id. at *2. The Court granted Defendants’ motion to dismiss after finding that Plaintiff failed to show Expedia-WA has a regular and established place of business in Delaware. Id.

In its motion for reconsideration, Plaintiff raised a new theory for venue. Id. In short, Plaintiff asserted that venue in Delaware is proper with respect to Expedia-WA because Expedia-WA wholly owns CSC Holdings Inc. (“CSC Holdings”), which wholly owns CruiseShipCenters International, Inc. (“CSC International”), and CSC International has a regular and established place of business in Delaware. Id.

After considering the parties’ respective arguments and considering evidence outside of the Complaint through a Notice of Subsequent Authority filed by Plaintiff, the Court concluded that Plaintiff did not present any new evidence warranting reconsideration and the Court did not commit a clear error of law or fact. Id. at *5-10. As part of its analysis, the Court noted the fact that CSC International operates a Delaware store did not change the outcome of the motion to dismiss because “Plaintiff fail[ed] to show that CSC International is a place of business ‘of the defendant,’ as required to establish proper venue for Expedia-WA.” Id. at *7. In other words, the Court concluded that Plaintiff did not provide any evidence that Expedia-WA engages in business from CSC International’s Delaware location. Id. at *9.

Interestingly, in its brief, Plaintiff did include a screenshot of the Google Maps result for CSC International’s Delaware location which showed a storefront sign that read “Expedia cruiseship centers” and argued that it showed that Expedia-WA ratified the Delaware location as its own. Id. However, the Court noted that the use of the Expedia logo at CSC International’s Delaware location is by itself insufficient to show that the Delaware location is a place of business of Expedia-WA. Id.

A copy of the Memorandum Order is attached.

The opinion leaves me wondering whether the result would have been any different if Plaintiff had included all of its venue assertions in the original complaint or an amended complaint before the Court issued its ruling on Defendants’ motion to dismiss. The standard on the motion for reconsideration likely made it more difficult for Plaintiff to survive the challenge to venue after the Court had previously granted the motion to dismiss.

By Memorandum Opinion entered by The Honorable Richard G. Andrews in Alarm.com, Inc. et al. v. Securenet Technologies LLC, Civil Action No. 15-807-RGA (D.Del. January 8, 2019), the Court granted-in-part Defendant’s Motion to Exclude the Opinions of Brett Reed.

With respect to Mr. Reed’s lost profits opinion, Defendant argued that the Court should exclude the entirety of Mr. Reed’s lost profits opinion because (1) there was a defect in his analysis of the manufacturing and marketing prong of Panduit; or (2) it contains an opinion as to Plaintiff Alarm.com’s entitlement to its lost profits prior to the date from which Plaintiff Alarm.com is legally entitled to claim lost profits. Id. at *3. Plaintiffs responded that Mr. Reed’s lost profits opinion should not be excluded because (1) the challenge to the Panduit analysis done by Mr. Reed goes to the weight of the evidence; and (2) Mr. Reed’s opinion merely addresses alternative lost profits scenarios without purporting to determine the date from which Plaintiff Alarm.com is legally entitled to claim lost profits. Id.

After considering the arguments, the Court agreed with Plaintiffs that any defect in Mr. Reed’s Panduit analysis goes to the weight and credibility of his opinion instead of its admissibility and, thus, those opinions were not excluded. Id. The Court agreed with Defendants that, to the extent Mr. Reed’s lost profits opinion provides opinions that are inconsistent with the starting date of March 8, 2017 for lost profits recovery, those opinions were excluded. Id. at *4.

The Court goes on in the opinion to exclude other opinions of Mr. Reed as to the failure of others, copying, and praise by others and refuses to exclude his opinion on commercial success. Id. at *4-10.

Copies of the Memorandum and Opinion are attached.

By Memorandum Order entered by The Honorable Richard G. Andrews in TC Technology LLC v. Sprint Corp. et al., Civil Action 16-153-RGA (D.Del. December 13, 2018), the Court granted-in-part and denied-in-part defendants’ motion to compel production of non-privileged documents after finding, among other things, that Plaintiff and its joint owners had a shared legal interest in acquiring and enforcing the patent at-issue in the action and that Plaintiff met its burden of establishing the common interest privilege with respect to the disputed communications with its joint owners. Id. at *1-11. The Court also ordered Plaintiff to produce certain documents related to non-legal communications for in camera review. Id. at *11.

A copy of the Memorandum Order is attached.

By Memorandum Order entered by The Honorable Richard G. Andrews in Nox Medical EHF v. Natus Neuorology Inc., Civil Action No. 15-709-RGA (D.Del. December 7, 2018), the Court granted Plaintiff’s Motion for Reconsideration upon acknowledging that it did not appreciate the differences between U.S. Patent No. 9,059,532 (“the ‘532 Patent”) and its European counterpart when it initially denied Plaintiff’s Motion for Enhanced Damages after the jury’s finding of willful infringement by Defendant. However, after reconsideration and changing its view on the second Read factor, the Court still did not find that Defendant’s behavior was “willful, wanton, malicious, bad-faith, deliberate, consciously wrong, flagrant, or-indeed-characteristic of a pirate.” Id. at *4. Thus, the Court did not believe that enhanced damages were appropriate and again denied Plaintiff’s Post-Trial Motion for Enhanced Damages. Id. at *4-8.

A copy of the Memorandum Order is attached.

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 Order entered by The Honorable Richard G. Andrews in Dragon Intellectual Property, LLC v. Dish Network, LLC, Civil Action No. 13-02066-RGA (D.Del. November 7, 2018) (consolidated), the Court denied the motions of Defendants DISH Network, LLC and Sirius XM Radio Inc. requesting the Court to declare the case exceptional and award reasonable attorneys’ fees pursuant to 35 U.S.C. § 285. In denying the motions, the Court explained that the moving defendants are not prevailing parties because the previous judgments of non-infringement in the cases were vacated and, thus, the Court has not awarded “actual relief on the merits.” Id. at *2.

The Court also denied Defendants’ motions seeking an award of fees from Plaintiff’s former attorneys pursuant to 28 U.S.C. §1927. Id. at *3. Defendants identified three issues with Plaintiff’s counsel’s representation of Plaintiff that they believed entitled Defendants to an award of attorneys’ fees against Plaintiff’s counsel pursuant to 28 U.S.C. §1927. Id. The Court disagreed and found that the conduct identified by Defendants was not sufficient to support an award of fees pursuant to Section 1927 under the Third Circuit standard. Id. at *3-4.

A copy of the Memorandum Order is attached.

By Memorandum Order entered by The Honorable Richard G. Andrews in Bio-Rad Laboratories, Inc. et al. v. 10X Genomics, Inc., Civil Action No. 15-152-RGA (D.Del. November 2, 2018), the Court denied Defendant’s motion to exclude the Supplemental Expert Report and Opinion of Plaintiffs’ damages expert, James E. Malackowski, and preclude Plaintiffs from presenting lost profits at trial.

By way of background, the Court entered a prior Daubert order which excluded Mr. Malackowski’s lost profits opinion regarding a two-supplier market and his reasonable royalty opinion to the extent that he failed to account for apportionment. Id. at *1. The Court subsequently granted Plaintiffs’ request to supplement Mr. Malackowski’s report and Plaintiffs subsequently conceded that they would not present a claim for lost profits at trial. Id. Thus, the only issue before the Court on Defendant’s motion to exclude the Supplemental Expert Report is whether it filled the gap in Mr. Malackowski’s initial reasonable royalty opinion with respect to apportionment. Id.

Defendant’s main argument was that Mr. Malackowski’s apportionment methodology remained flawed because he relied on qualitative, rather than quantitative, analyses. Id. However, the Court noted that Defendant’s theory conflicts with the general understanding that “any reasonable royalty analyses necessarily involves an element of approximation and uncertainty.” Id. After considering the parties’ briefing and oral argument, the Court concluded that “Mr. Malackowski’s supplemental report fills the gaps in his initial report at least to the extent necessary to make his reasonable royalty opinion admissible.” Id. at *4. The Court also rejected the remaining arguments made by Plaintiffs to exclude the supplemental report and testimony with respect to the reasonable royalty and apportionment.

A copy of the Memorandum Order 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 Opinion entered by The Honorable Richard G. Andrews in Novartis Pharmaceuticals Corp. et al. v. Mylan Pharmaceuticals Inc., Civil Action No. 17-389-RGA (D.Del. June 29, 2018), the Court rendered its Markman ruling construing three (3) terms in dispute in the asserted claims of U.S. Patent Nos. 8,778,962 (“the ‘962 patent”) and 8,617,598 (“the ‘598 patent”).

A copy of the Memorandum Opinion is attached.