By Memorandum Order entered by The Honorable Sue L. Robinson in Paltalk Holdings, Inc. v. Riot Games, Inc., Civil Action No. 16-1240-SLR (D.Del. May 15, 2017), the Court denied Defendant’s Motion to Dismiss which asserted that dismissal of the Complaint was appropriate because the asserted patents do not claim patent eligible subject matter under 35 U.S.C. § 101. The patents-in-suit are U.S. Patent Numbers 5,822,523 (“the ‘523 patent”) and 6,226,686 (“the ‘686 patent”). The ‘523 patent and the ‘686 patent relate to distribution of messages between computers in interactive environments, such as online gaming. Id. at *1. The Court disagreed with Defendant’s assertions and found that the claims at issue are not directed to an abstract idea. Id. at *10.

A copy of the Court’s Memorandum Order is attached.

The United States District Court for the District of Delaware announced that, effective February 3, 2017, the Honorable Sue L. Robinson, transitioned to Senior Judge.  In the announcement, the Court also set forth certain changes to its case assignment practices given Judge Robinson’s transition to a Senior United States District Judge.  In short, Judge Robinson will not be assigned any new criminal cases or new civil cases.  Until the vacancy is filled, all new criminal cases will be assigned to Chief Judge Stark, Judge Sleet and Judge Andrews.  Until the vacancy is filled, all new civil cases will be assigned to Chief Judge Stark, Judge Sleet, Judge Andrews and a new docket referred to as “Vacant Judgeship” or “VAC”.  The cases assigned to VAC will also be referred to one of the Magistrate Judges – Judge Thynge (“MPT”), Judge Burke (“CJB”), and Fallon (“SRF”).

A copy of the Court’s Announcement is attached.

By Memorandum Order entered by The Honorable Sue L. Robinson in Takeda Pharmaceuticals U.S.A., Inc. v. West-Ward Pharmaceutical Corp., Civil Action No. 14-1268-SLR (D.Del., December 14, 2016), the Court granted plaintiff Takeda Pharmaceuticals U.S.A., Inc.’s motion filed pursuant to Rules 59(e) and 15(a) of the Federal Rules of Civil Procedure seeking to (1) reopen the judgment of dismissal of the action previously entered under Rule 12(b)(6) for failure to state a claim and (2) to amend the complaint.

In evaluating Takeda’s motion, the Court recognized that, “[w]hen a plaintiff files a Rule 59(e) motion accompanied by a Rule 15(a) motion after the dismissal of a complaint under Rule 12(b)(6), ‘the appropriate manner to dispose of th[e] issue is to consider the motions together and determine what outcome is permitted by consideration of the Rule 15(a) factors.’” Id. at *1-2 (quoting Burtch v. Milberg Factors, Inc., 662 F.3d 212, 231 (3d Cir. 2011)). Under Rule 15(a), leave to amend a complaint is freely granted in the absence of undue delay, bad faith, dilatory motive, unfair prejudice, or futility of amendment. Id. at *2.

In applying the applicable standard, the Court found that Takeda’s motion was timely, and that there was no evidence of bad faith or dilatory motive. Id. at *4. The Court also explained that, although the proposed second amended complaint[1] did not contain all of the who, what, when and where’s of the communications identified therein for Takeda’s asserted claim against Hikma for induced infringement, given the Third Circuit’s standard for reviewing the sufficiency of a complaint that rests upon “information and belief” and given that Hikma would be the actual source of the requisite factual information, the proposed second amended complaint did contain sufficiently detailed allegations to plausibly give rise to a claim for inducement of patent infringement and did give Hikma fair notice of such claim. Id. at *5. Thus, the Court found that amendment of the complaint was not futile. Id. Lastly, because the action had not progressed past the initial pleading, the Court found that there was no undue prejudice to Hikma. Id. Therefore, the Court granted Takeda’s motion.

A copy of the Memorandum Order is attached.

[1] In addition to having previously dismissed Takeda’s original complaint, the Court had previously dismissed Takeda’s first amended complaint after concluding, among other things, that Takeda’s first amended complaint failed to satisfy the pleading standard found in Twombly and Iqbal – i.e., Takeda had failed to provide adequate factual allegations to state a plausible claim for induced infringement. Id. at *3.

By Memorandum Opinion entered by The Honorable Sue L. Robinson in Merck Sharp & Dohme Corp. v. Teva Pharmaceuticals USA, Inc., Civil Action No. 14-874-SLR (D.Del., November 16, 2016), the Court found the asserted claims of U.S. Patent No. 6,127,353 (“the ‘353 patent”) are valid but that defendant does not infringe the asserted claims of the ‘353 patent with its ANDA product.[1] Specifically, the Court found in favor of plaintiff Merck and against defendant as to defendant’s asserted affirmative defenses of invalidity of the ‘353 patent based on obviousness-type double patenting and alleged lack of an adequate written description of the invention as required by 35 U.S.C. § 112, ¶ 1. Id. at *2-7. The Court found in favor of defendant and against plaintiff Merck as to the infringement of the ‘353 patent after finding that plaintiff had not established, by a preponderance of the evidence, the presence of mometasone furoate monohydrate (“MFM”) in defendant’s ANDA product during its two-year shelf life. Id. at *8-24.

A copy of the Memorandum Opinion is attached.

[1] The ‘353 patent is listed in the Food and Drug Administration’s publication titled Approved Drug Products with Therapeutic Equivalence Evaluations, which is known as the “Orange Book”, for the nasal spray, Nasonex®. This action arose out of the filing of an Abbreviated New Drug Application (“ANDA”) by defendant Teva seeking to produce and market a generic mometasone furoate nasal spray.

By Memorandum Order entered by The Honorable Sue L. Robinson in Intellectual Ventures I LLC, et al. v. Toshiba Corp., et al., Civil Action No. 13-453-SLR (D.Del. September 7, 2016), the Court granted defendants’ motion to amend their answer to include a defense of improper inventorship with respect to U.S. Patent No. 5,938,742 (“the ‘742 patent”) more than one year after the deadline in the Court’s Scheduling Order for the filing motions to join parties and/or to amend the pleadings and more than seventeen years after the issuance of the ‘742 patent.  Defendants moved to amend to include the defense of improper inventorship based on information obtained during the June 1, 2016 deposition of the individual the defendants claim is a co-inventor that was not named in the ‘742 patent. Id. at *1-2.

Despite the facts that the case was filed in 2013 and trial is scheduled to start on January 17, 2017, the Court recognized the importance of proper inventorship and granted the motion to amend. Id. at *5.  However, the Court also noted that it “recognizes the extraordinary delay between the issuance of the ‘742 patent and the assertion of improper inventorship, as well as the fact that, in most instances, the remedy for improper inventorship is a certificate of correction, not invalidation.” Id. Thus, the Court bifurcated the newly-added defense to allow for additional discovery and a separate motion practice and trial. Id.

A copy of the Memorandum Order is attached.

By Memorandum Order entered by The Honorable Sue L. Robinson in Adtile Technologies, Inc. v. Perion Network Ltd., et al., Civil Action No. 15-1193-SLR (D.Del., June 23, 2016), the Court denied plaintiff Adtile Technologies, Inc.’s motion for preliminary injunction after concluding that Adtile had not shown likelihood of success on the merits of the claims asserted:  Delaware statutory misappropriation of trade secrets, common law misappropriation of confidential information, copyright infringement, and Lanham Act false designation of origin and unfair competition.  In reaching its conclusion, the court determined that Adtile’s trade secrets and confidential information were not sufficiently delineated from what is either publicly available or discernable from visual details of published Motion Ads. Id. at *13.  The Court also noted that the fact that Adtile included, without attribution, the handphone image in two ads provided to Undertone as deliverables under the License Agreement weakened Adtile’s copyright and trademark infringement arguments. Id.

A copy of the Memorandum Order is attached.

The general take away is the granting of a preliminary injunctions is considered an “extraordinary remedy” that will only be granted in limited circumstances. Parties seeking preliminary injunctions must demonstrate the fundamental requirements of likelihood of success on the merits and irreparable harm if relief is not granted to have any chance of obtaining a preliminary injunction.

By Memorandum Opinion entered by The Honorable Sue L. Robinson in Unwired Planet, Inc. v. Microsoft Corporation, Civil Action No. 14-967-SLR (D.Del., June 15, 2016), the Court granted plaintiff Unwired Planet, Inc.’s Motion for Summary Judgment after concluding that the agreement between Unwired Planet and Lenovo PC International Limited satisfied the conditions of a “Qualifying Agreement” in Section 5.1.3 of the patent license agreement entered between Unwired Planet and Microsoft Corp. for Microsoft to pay Unwired Planet an additional $10 Million as a Qualifying Agreement License Fee.

A copy of the Memorandum Opinion is attached.

The general take away is that parties have a right to enter into good and bad contracts – the law enforces both particularly when they involve sophisticated parties.

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 by The Honorable Sue L. Robinson in Apeldyn Corp. v. Sony Corp., et al., Civil Action No. 11-440-SLR (D.Del., March 31, 2016), the Court denied defendants’ motion for attorneys’ fees after finding the case did not warrant exceptional case status under 35 U.S.C. § 285.  By way of background, the Court had previously granted defendants’ motion for summary judgment of non-infringement due to collateral estoppel and defendants’ motion for summary judgment of invalidity, and entered judgment for defendants in the patent infringement action. Id. at 2.  Plaintiff appealed the Court’s summary judgment decisions to the Federal Circuit and the Federal Circuit affirmed the Court’s summary judgment ruling of non-infringement. Id. at 3.  Thereafter, in moving for attorneys’ fees as the prevailing party under § 285, defendants argued that the case was an exceptional case because plaintiff pursued objectively unreasonable infringement and validity positions which were barred by collateral estoppel. Id. at 4.  However, the Court disagreed with defendants and, in denying their motion for attorneys’ fees, found the case was not exceptional under 35 U.S.C. § 285 because defendants opposed the filing of an early motion for summary judgment of collateral estoppel and wanted to proceed with discovery and summary judgment briefing. Id. In addition, the Court was not persuaded that plaintiff was so lacking a good faith belief of validity as to merit awarding exceptional case status under 35 U.S.C. § 285. Id.

A copy of the Memorandum Order is attached.

The general takeaway for parties in a patent infringement action is to keep in mind that opposing a proposed Scheduling Order that includes an opportunity for early resolution through early summary judgment, claim construction or otherwise may be used against you in the future in the event that you are ultimately the prevailing party and desire to seek attorneys’ fees under 35 U.S.C. § 285.

By Memorandum Order entered by The Honorable Sue L. Robinson in Draeger Medical Systems, Inc. v. My Health, Inc., Civil Action No. 15-248-SLR (D.Del., March 3, 2016), the Court denied the motion of defendant, My Health, Inc., seeking to dismiss the complaint in the declaratory judgment action on grounds that plaintiff, Draeger Medical Systems, Inc., failed to identify actions sufficient to give rise to an “actual case or controversy” as required by Article III of the U.S. Constitution.[1]  In denying the motion, the Court found that the actions of the non-practicing entity defendant, through its agent, in sending Draeger Medical a letter claiming that Draeger Medical’s Infinity M300 system utilized the technology claimed and disclosed in the ‘985 patent, a Notice of Infringement of the ‘985 patent, a copy of the ‘985 patent, and a detailed and studied claim chart prepared with input from legal counsel and titled “Pre-filing Investigation Claim Chart” were sufficient to create an actual case or controversy necessary to support subject matter jurisdiction. See id. at * 4-7.

The Court noted that the same facts were sufficient to support subject matter jurisdiction in the Federal Circuit’s seminal case on the issue, SanDisk Corp. v. STMicroelectronics, Inc., 480 F.3d 1372, 1382 (finding jurisdiction where defendant provided a “thorough infringement analysis” prepared by legal experts, stated that plaintiff’s conduct infringed its patents, and claimed that plaintiff would need to pay a royalty for its infringing product). Id. at *5.  In reaching its conclusion, the Court also found that the fact that Draeger Medical never contacted or attempted to engage in license negotiations with defendant before filing the declaratory judgment action did not weigh against subject matter jurisdiction under the totality of the circumstances. Id. at *6-7.

A copy of the Memorandum Order is attached.

The takeaway is that this case may provide additional support for the strategy of not engaging in or not waiting to participate in negotiations of a license agreement with a non-practicing entity that sends your company or client a letter claiming infringement of a patent along with claim charts or other legal materials before offensively filing a declaratory judgment action when there are solid grounds for invalidity of the patent at issue, non-infringement and/or other affirmative defenses to the claim of infringement.

[1] The Complaint in the declaratory judgment action seeks a declaratory judgment of non-infringement and invalidity of U.S. Patent No. 6,612,985 (“the ‘985 patent”).