motion for reconsideration

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 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 Order entered by The Honorable Leonard P. Stark in Siemens Industry, Inc. v. Westinghouse Air Brake Tech. Corp. et al., Civil Action No. 16-284-LPS (D.Del. June 20, 2018), the Court denied Plaintiff Siemens Industry, Inc.’s motion asking the Court to reconsider its construction of the terms “vital” and “safety critical” provided in the Court’s Memorandum Opinion and Order dated November 6, 2017. Defendants opposed the motion. Id. at *1.

Siemens argued that “reconsideration is required to correct certain factual and legal errors in the Court’s interpretation of the intrinsic and extrinsic evidence of record that resulted in erroneous constructions.” Id. at *2. Among other things, Siemens argued that, when the Court’s constructions are substituted for “vital” and “safety critical” in the claims, the claims no longer make grammatical sense. Id. at *3.

“Pursuant to Local Rule 7.1.5, motions for reconsideration should be granted ‘sparingly.’” Id. at *1. The Court noted that motions for reconsideration may be granted only if the movant can show one of the following: (i) there has been an intervening change in controlling law; (ii) new evidence is available that was not available when the court made its decision; and (iii) there is a need to correct a clear error of law or fact to prevent manifest injustice. Id. at *2. The Court did not find any reason warranting reconsideration and, therefore, denied Siemen’s motion. Id. at *3-4.

A copy of the Memorandum Order is attached.

By Memorandum Opinion entered by The Honorable Leonard P. Stark in Intellectual Ventures I LLC v. T-Mobile USA, Inc. et al., Civil Action No. 13-1632-LPS (D.Del. August 23, 2017) (consolidated), the Court denied Plaintiff’s motion for reconsideration of a prior Order of the Court and granted in part and denied in part Defendants’ motion for summary judgment.

Specifically, the Court denied Plaintiff’s motion for reconsideration of the Court’s December 30, 2016 Memorandum Opinion which granted Defendants’ motion for judgment on the pleadings that certain claims of U.S. Patent Nos. 6,115,737 (“the ‘737 patent”), 8,078,200 (“the ‘200 patent”), and 7,450,957 (“the ‘957 patent”) are patent-ineligible under 35 U.S.C. § 101. In denying Plaintiffs’ motion for reconsideration, the Court found that Plaintiffs failed to demonstrate an intervening change in controlling law, the availability of new evidence, or the need for the Court to correct a clear error of law or fact that warranted reconsideration. Id. at *1-14.

With respect to Defendants’ motion for summary judgment, the Court denied Defendants’ motion for summary judgment that claims 1, 7, and 8 of the ‘0032 patent are patent-ineligible under 35 U.S.C. § 101 after finding that those claims are not directed to an abstract idea and, thus, are patent eligible. Id. at *15-19. The Court granted Defendants’ motion for summary judgment that claims 17, 20 and 24 of the ‘490 patent and claim 17 of the ‘306 patent are patent-ineligible under § 101 after finding that those claims are not directed to patent-eligible subject matter. Id. at *19-27. The Court also granted Defendants’ motion for summary judgment that claims 1, 5 and 9 of the ‘352 patent are patent-ineligible under § 101 after concluding that those claims are not directed to patent-eligible subject matter. Id. at *27-33.

A copy of the Memorandum Opinion is attached.

By Memorandum Opinion entered by The Honorable Gregory M. Sleet in Pfizer Inc., et al. v. Sandoz Inc., et al., Civil Action No. 13-1110-GMS (D.Del.,  November 4, 2015), the Court denied Defendants’ Motion to Amend Findings and Judgment on Anticipation of U.S. Patent No. 6,858,650 (“the ‘650 Patent”).  During the four day bench trial, Plaintiffs moved, pursuant to Federal Rule of Civil Procedure 52(c), for judgment on partial findings on the issue of anticipation of the ‘650 Patent.  Id. at 1.  The Court granted Plaintiffs’ motion during the trial upon finding the ‘650 Patent was not anticipated by the reference to fesoterodine in the PCT/EP99/03212 (“the ‘212 Application”) because both inventions were the work of Dr. Meese.  Id.  The Court reasoned that “[a] patentee’s ‘own work may not be considered prior art in the absence of a statutory basis.’” (citing Riverwood Int’l Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1355 (Fed. Cir. 2003)).

In their Motion to Amend Findings and Judgment on Anticipation, Defendants, for the first time according to the Court, claimed that the ‘212 Application should not be considered Dr. Meese’s own work because there were two inventors listed on the ‘212 Application – Dr. Meese and Dr. Sparf.  Id. at 2-3.  Thus, Defendants asserted that the ‘212 Application should be considered the work of a separate inventive entity and may be considered prior art.  Id.

In denying Defendants’ Motion, the Court found that Defendants had not raised the issue before and deprived the Court of the opportunity to fully hear evidence on the issue.  Id. at 3.  In addition, the Court found that, even if Defendants did not waive the argument, the fact that the ‘212 Application lists two inventors is not dispositive and the evidence on the record was sufficient to support the Court’s original ruling.  Id.  Specifically, the Court found that the record was sufficient to support a finding that Dr. Meese alone invented the form of fesoterodine disclosed in the ‘212 Application.  Id. at 4-5.  Thus, there was no clear error of fact.  Id. at 5.

Copies of the Memorandum Opinion and accompanying Order are attached.

The take away from this case is that counsel have to be very aware of the record and must be diligent to provide written notice of any claims and/or defenses and to expressly rebut any contested assertions in the Pretrial Order.  Counsel should not assume the Court will recognize a line of questioning on an issue during trial by itself as sufficient to satisfy the requirement for notice of a party’s position on an issue.

By Memorandum Order entered by The Honorable Leonard P. Stark in Sunovion Pharmaceuticals, Inc. v. Actavis, Inc., et al., Civil Action No. 12-993-LPS (D.Del., June 3, 2014), the Court denied defendant Actavis, Inc.’s motion for reconsideration of the Court’s Markman Order concerning the construction of the term “levalbuterol” as “substantially optically pure levalbuterol.” Actavis argued that the Court made three errors in adopting its construction. The Court noted that reconsideration should be granted only sparingly, rejected Actavis’ arguments and concluded that defendant’s motion did not demonstrate any of the grounds on which the Court would grant reconsideration. Id. at 1-3.

A copy of the Memorandum Order is attached.

 

By Memorandum Opinion entered by The Honorable Sue L. Robinson in Golden Bridge Technology, Inc. v. Apple Inc., et al., Civil Action No. 10-428-SLR (D.Del., April 25, 2013), the Court, as a practical matter, denied plaintiff Golden Bridge Technology, Inc.’s motion for reconsideration of the Court’s Order of April 9, 2013 granting summary judgment of non-infringement in favor of defendant Apple. The Court noted that, although it previously granted the motion for reconsideration, it did explain at the time that it was only granting to review the merits of the motion and not to grant the relief sought. The Court apologized for any confusion this may have caused. Id. at *1, fn1. The Court ultimately concluded that, despite plaintiff’s supplemental submissions and citations to the record, there is no expert testimony or evidence of record that raises a genuine issue of material fact to preclude summary judgment under the Court’s claim construction. Id. at 6.

A copy of the Memorandum Opinion is attached.