By Memorandum Opinion entered by The Honorable Colm F. Connolly in Deere & Company v AGCO Corp. et al., Civil Action No. 18-827-CFC (D.Del. February 19, 2019), the Court granted in part and denied in part the identical motions of defendants AGCO Corporation and Precision Planting LLC to dismiss Plaintiff Deere & Company’s claims for enhanced damages based on willful infringement for failure to state a claim upon which relief could be granted pursuant to Federal Rule of Civil Procedure 12(b)(6).

Deere alleged that it was entitled to enhanced damages under Section 284 of the Patent Act because (1) Defendants engaged in post-suit willful infringement of the eight patents asserted in Counts 4 and 7-12 of the amended complaints; (2) Defendants engaged in willful infringement of the four patents asserted in Counts 1, 2, 5 and 6 of the amended complaints after Deere sent Precision Planting a letter on August 11, 2017; and (3) Defendants engaged in willful infringement of U.S. Patent No. 10,004,173 (the “#173 Patent”) after Deere notified Defendants’ counsel on June 27, 2018 that Defendants’ activities infringed the #173 Patent. Id. at *11-12.

In support of their motions to dismiss Deere’s claims for enhanced damages, Defendants argued that “Deere’s willfulness allegations should be dismissed in their entirety because ‘Deere nowhere alleges – much less provides supporting facts that could show – that either defendant, at any point in time before or after the suits were filed, deliberately copied the asserted patents, attempted to conceal its allegedly infringing behavior, or engaged in any other conduct outside the standards of commerce in the agricultural industry.’” Id. at *12. While the Court acknowledged that enhanced damages under Section 284 were intended to only be awarded in egregious cases of misconduct that involve more than typical infringement, it recognized the Federal Circuit’s holdings binding on it setting forth the low threshold to plead a willfulness-based enhanced damages claim. Id. Specifically, the court noted that the Federal Circuit in Artic Cat, WesternGeco, and WCM made it clear that, to plead a willfulness-based enhanced damages claim, “a plaintiff need only allege facts that plausibly show that a risk of infringement was made known to a defendant or was sufficiently obvious that it should have been known to a defendant.” Id.

After analyzing Deere’s claims for willfulness-based enhanced damages based on that pleading standard, the Court determined that Deere’s allegations of willful infringement of the eight patents asserted in Counts 3-4 and 7-12 of the amended complaints easily met the threshold. Id. at *13-14. The Court also determined that Deere’s allegations of willful infringement of the #173 Patent asserted in Count 13 of the amended complaints also met the threshold. Id. at *15-16. Accordingly, the Court denied Defendants’ motion to dismiss the claims for enhanced damages alleged in Counts 3-4, 7-12 and 13 of the amended complaints. Id. at *13-16.

On the other hand, the Court determined that Deere’s allegations of willful infringement of the four patents asserted in Counts 1, 2, 5 and 6 of the amended complaints did not meet the threshold. Id. at *14-15. In making that determination, the Court noted that the August 2017 letter was the only alleged source of Defendants’ knowledge of the four patents asserted in Counts 1, 2, 5 and 6. Id. The Court also noted that the amended complaints did not allege that the August 2017 letter identified the accused products, the pertinent combination of the accused products, or how the combination of the accused products infringed the patents-in-suit. Id. Thus, the Court determined there was no sufficient pleading that “Defendants knew or should have known from the alleged contents of the August 2017 letter that Defendants’ activities constituted a sufficient risk of infringement to make them cease those activities.” Id. at *15. Accordingly, the Court granted Defendants’ motion to dismiss the claims for enhanced damages alleged in Counts 1, 2, 5 and 6 of the amended complaints. Id.

A copy of the Memorandum Opinion is attached.

By Memorandum Opinion and Order entered by The Honorable Maryellen Noreika in Agrofresh Inc. v. Mirtech, Inc. et al., Civil Action No. 16-662-MN-SRF (D.Del. January 2, 2019), the Court overruled-in-part and sustained-in-part Plaintiff’s objections to Magistrate Judge Sherry Fallon’s Claim Construction Report and Recommendation (D.I. 247). The Court ultimately entered its Markman ruling construing seven (7) disputed claims in the patents-in-suit, U.S. Patent Nos. 6,017,849, 6,313,068 and 9,394,216.

Copies of the Memorandum Opinion and Order are 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 Opinion entered by The Honorable Leonard P. Stark in Visual Effect Innovations, LLC v. Sony Electronics Inc., Civil Action No. 17-1276-LPS (D.Del. September 30, 2018), the Court denied Sony’s partial motion to dismiss the Complaint for failure to state a claim pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure based on Sony’s contention that the asserted claims of U.S. Patent Numbers 9,699,444 (“the ‘444 patent”) and 9,716,874 (“the ‘874 patent”) are not directed to patent-eligible subject matter under 35 U.S.C. § 101.

The claims asserted from the ‘444 patent and ‘874 patent relate to the modification of image frames in a video stream. Id. at *1. In its complaint asserting patent infringement against Sony, Visual Effect Innovations, LLC (“VEI”) asserts that Sony makes TVs that modify image frames in a manner that infringe claim 26 of the ‘444 patent and claim 1 of the ‘874 patent. Id. In its motion to dismiss, Sony claimed that the asserted claims are invalid under 35 U.S.C. § 101 because they are directed to the abstract idea of image manipulation and do not contain an inventive concept “because the recited processor and storage elements are generic computer components, and the rest of the limitations do not result in the display of the recited images in any unconventional manner.” Id. at 10.

In denying Sony’s motion to dismiss, the Court found that Sony did not meet its burden to justify dismissal. Id. at *11. In other others, the Court could not conclude that, “taken as an ordered combination, the claims were well-understood, routine or conventional methods and apparatuses for image manipulation.” Id. Also, the Court noted that “the patent-eligibility inquiry could be impacted both by claim construction and by further factual development concerning the use of flicker described by the patents at the time of the inventions.” Id. Thus, the Court denied the motion without prejudice to Sony’s ability to raise another Section 101 challenge during the summary judgment stage of the case. Id. at *11-12.

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 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 Richard G. Andrews in TQ Delta, LLC v. Zyxel Communications, Inc. et al., Civil Action No. 13-02013-RGA (D.Del. May 8, 2018) (consolidated), the Court rendered its Markman ruling construing thirteen (13) disputed terms in U.S. Patent Nos. 7,796,705 (“the ‘705 patent”), 8,335,956 (“the ‘956 patent”), 8,407,546 (“the ‘546 patent”), 8,468,411 (“the ‘411 patent”), 8,595,577 (“the ‘577 patent”), and 8,645,784 (“the ‘784 patent”).

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.