By Memorandum Opinion entered by The Honorable Leonard P. Stark in Align Technology, Inc. v. 3Shape A/S et al., Civil Action No. 17-1646-LPS-CJB (D.Del. September 7, 2018) and Align Technology, Inc. v. 3Shape A/S et al., Civil Action No. 17-1647-LPS-CJB (D.Del. September 7, 2018), the Court denied defendants’ motion to dismiss in part in both actions with respect to the motion’s assertions that the Complaint failed to plausibly allege direct, indirect and willful infringement of the asserted patents under Rule 12(b)(6) of the Federal Rules of Civil Procedure. The Court granted defendants’ motion to dismiss in part in the 1646 action after finding that claim 1 of United States Patent Number 7,112,065 (“the ‘065 patent”) is directed to the “abstract concept of modifying a finish line of a dental prosthesis – – a concept well-known in the prior art” and, thus, is directed to patent-ineligible subject matter under 35 U.S.C. § 101. Id. at *22-27. The Court also granted defendants’ motion to dismiss in part in the 1647 action after finding that claim 1 of United States Patent Number 6,227,850 (“the ‘850 patent”) is directed to an abstract idea, does not include an inventive concept and, thus, is directed to patent-ineligible subject matter under Section 101. Id. at *27-32.

A copy of the Memorandum 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., 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 Opinion entered by U.S. Magistrate Judge Sherry R. Fallon in Fraunhofer-Gesellschaft Zur Forderung Der Angewandten Forschung E.V. v. Sirus XM Radio Inc., Civil Action 17-184-JFB-SRF (D.Del. July 20, 2018), plaintiff Fraunhofer’s motion for leave to amend its patent infringement complaint pursuant to Federal Rule of Civil Procedure 15(a)(2) was denied. Although Fraunhofer was able to establish good cause for its failure to seek leave to amend the complaint prior to the expiration of the December 14, 2017 deadline set forth in the scheduling order, the Court concluded that Fraunhofer’s proposed amended complaint would be futile under Federal Rule of Civil Procedure 15(a) because Fraunhofer’s proposed amended complaint does not remedy the dispositive deficiency of the original complaint by pleading that SXM’s predecessors failed to fulfill their obligations under the sublicense agreement. Id. at *5-12.

A copy of the Memorandum Opinion is attached.

Given that the Memorandum Opinion was issued by a U.S. Magistrate Judge pursuant to 28 U.S.C. § 636, Federal Rule of Civil Procedure 72(a) and D.Del. LR 72.1(a)(2), the parties may serve and file written objections to the Memorandum Opinion within fourteen (14) days after being served with a copy of the Memorandum Opinion.

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.

By Memorandum Order entered by The Honorable Gregory M. Sleet in Amgen Inc. v. Macleods Pharmaceuticals, Ltd., Civil Action No. 17-817-GMS (D.Del. December 19, 2017) (consolidated), the Court denied the Motion for Judgment on the Pleadings of defendants Macleods Pharmaceuticals, Ltd. and Macleods Pharma USA, Inc. (collectively, “Macleods”).

Plaintiff Amgen filed the patent infringement action against Macleods s for infringement of one or more claims of Amgen’s U.S. Patent No. 9,375,405 (“the ‘405 patent”) after Macleods filed its Abbreviated New Drug Application (“ANDA”) seeking approval to manufacture, use and/or sell of a generic version of Amgen’s Sensipar® product prior to the expiration of the ‘405 patent. In its Motion for Judgment on the Pleadings, Macleods claimed that its ANDA products do not contain any of the listed excipients required by the ‘405 patent; thus, Amgen could only assert a claim under the doctrine of equivalents. Id. at *2. Macleods also asserted that any claim by Amgen under the doctrine of equivalents was barred by the doctrine of prosecution history estoppel. Id.

In response, among other things, Amgen argued that Macleods motion should be converted into a motion for summary judgment because it required resolving factual issues and, if converted, should be denied because there are material facts in dispute. Id. at *3. The Court agreed that the motion should have been brought as a motion for summary judgment given the presence of material factual disputes, but decided not to convert the motion into a motion for summary judgment. Id. Instead, the Court found that there are material disputes of facts between the parties concerning the prosecution history of the ‘405 patent and denied Macleods’ Motion for Judgment on the Pleadings. Id. at *3-5.

A copy of the Memorandum Order is attached.

By Memorandum Opinion entered by The Honorable Gregory M. Sleet in Jedi Technologies, Inc. v. Spark Networks, Inc. et al., Civil Action No. 16-1055-GMS (D.Del. August 3, 2017), the Court granted defendants’ motion to dismiss plaintiff’s patent infringement action under Federal Rule of Civil Procedure 12(b)(6) after finding that plaintiff’s patents claim ineligible subject matter under 35 U.S.C. § 101. Specifically, the Court found that the asserted claims of the patents-in-suit, U.S. Patent Nos. 7,885,977 (“the ‘977 patent”), 8,417,729 (“the ‘729 patent”), 8,930,406 (“the ‘406 patent”), and 9,432,315 (“the ‘315 patent”), are invalid under § 101 because each claim the abstract concept of matching online chatters based on criteria such as personality or location without providing the kind of meaningful limitations needed to make the subject matter patent-eligible. Id.at *12-13. In other words, the Court found that the patents-in-suit do nothing more than “recite the performance of some business practice known from the pre-Internet world along with the requirement to perform it on the Internet.” Id.at *16.

Ultimately, the Court invalidated pursuant to 35 U.S.C. § 101 claims 1, 2, 4 and 5 of the ‘977 patent, claims 26, 27, 29, 30 and 31 of the ‘729 patent, claims 3, 4, and 6 of the ‘406 patent, and claims 1, 2, 3, 4, 6, 7, 8, and 9 of the ‘315 patent for claiming ineligible subject matter and having no inventive concept. See Order.

Copies of the Court’s Memorandum Opinion and Order are attached.

By Memorandum Opinion entered by The Honorable Leonard P. Stark in Enzo v. Gen-Probe Inc., Civil Action No. 12-104-LPS (consolidated) (D.Del., June 28, 2017), the Court granted the motion of defendants Gen-Probe Incorporated and Hologic, Inc. for summary judgment of invalidity of U.S. Patent No. 6,992,180 (“the ‘180 patent”) on nonenablement grounds. In doing so, the Court found that there was no genuine dispute of fact that the ‘180 patent specification lacks enablement and that a reasonable jury could not find for Enzo. Id.at *14. “Instead, the only conclusion a reasonable jury could reach is that clear and convincing evidence proves the ‘180 patent is invalid for nonenablement.” Id.

The Court explained that, based on the record, a reasonable factfinder could only find: (1) the quantity of experimentation necessary to arrive at embodiments equal to the full scope of the claims is undue; (2) insufficient direction or guidance is presented in the ‘180 patent to allow a person of ordinary skill in the art (“POSA”) to avoid undue experimentation; (3) an insufficient number of working examples are present; (4) the invention arises in a field of art that was highly unpredictable at the time of the invention; (5) the prior art showed that the pertinent field was unpredictable; (6) although the relative skill of those in the art was high, persons of ordinary skill in the art at the time of the invention did not have sufficient knowledge to fill in what was missing from the ’180 patent; (7) the art was highly unpredictable; and (8) the claims in the ‘180 patent are extremely broad. Id.at *16. Accordingly, the Court concluded that the specification of the ‘180 patent did not sufficiently teach those of ordinary skill in the art how to make and use the full scope of the claimed invention without undue experimentation. Thus, summary judgment that the ‘180 patent is invalid for nonenablement was warranted.

A copy of the Memorandum Opinion is attached.

By Memorandum Opinion entered by The Honorable Leonard P. Stark in Intel Corp. v. Future Link Systems, LLC, Civil Action No. 14-377-LPS (D.Del. June 1, 2017), the Court denied (1) the motion of Plaintiff Intel Corporation to exclude royalty opinions of Defendant Future Link Systems, LLC’s damages experts, and (2) the motion of Defendant Future Link Systems, LLC to preclude the expert testimony of the damages expert of Plaintiff Intel Corporation. Both Plaintiff’s and Defendant’s motions attacked the apportionment methodology of the opposing damages expert and, thus, claimed the opinions were unreliable. Id. at * 2-10. In both instances, the Court found the experts’ methodology sufficiently reliable and found that questions about fact comparability are best left for cross-examination during trial. Id.

A copy of the Memorandum Opinion is attached.

Today, through a unanimous decision of the Court delivered by Justice Thomas (with the exception of Justice Gorsuch who took no part in the consideration or decision of the case), the U.S. Supreme Court in TC Heartland LLC v. Kraft Foods Group Brands LLC, 581 U.S. _____ (2017) reversed the Federal Circuit in ruling that 28 U.S.C. § 1400(b) remains the only applicable patent venue statute, the term “residence” in 28 U.S.C. § 1400(b) refers only to the State of incorporation of a domestic corporation, and that 28 U.S.C. § 1391 did not supplement or modify § 1400(b) or the Supreme Court’s prior decision in Fourco Glass Co. v. Transmirra Products Corp., 353 U.S. 222 226 (1957). Thus, given today’s ruling, patent infringement lawsuits will only be able to be filed in judicial districts in states where the infringing defendant is incorporated or in judicial districts where defendant has committed acts of infringement and has a regular and established place of business.

A copy of the U.S. Supreme Court’s Opinion is attached.

The general take away is that, if a patent infringement action is filed against a defendant in a state where defendant is not incorporated or in a state where defendant does not have a regular and established place of business and/or has not committed acts of infringement, the allegedly infringing defendant should move to dismiss or transfer the action for lack of venue.

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.