Judge Gregory M. Sleet recently transferred a case to the Central District of California, finding that all but two Jumara factors weighed in favor of transfer. Blackbird Tech LLC v. TuffStuff Fitness, International, Inc., C.A. No. 16-733-GMS (D. Del. Apr. 27, 2017). Judge Sleet explained that the plaintiff’s forum choice weighed in favor of maintaining the litigation in Delaware, but it did not warrant maximum deference because “Delaware is not its ‘home turf’ or principal place of business.” The Court found that the convenience of witnesses weighed against transfer, but only slightly. However, “several factors counsel transfer: the defendant’s choice of forum, convenience of the parties, location where the claim arose, the location of relevant books and records, and court congestion.” With respect to court congestion, the Court noted that the time to trial in the Central District of California was roughly five months shorter than that in Delaware, and the overall disposition time in the Central District of California was roughly four months shorter than in Delaware.
In a recent order, Judge Richard G. Andrews denied a plaintiff’s attempt to introduce new asserted claims that the plaintiff did not include in its earlier preliminary list of asserted claims. Acceleration Bay LLC v. Activision Blizzard, Inc., C.A. No. 16-453-RGA (D. Del. Apr. 13, 2017). The Court explained, “‘Preliminary’ refers to time. It does not mean ‘subject to change at whim.’ As Defendants point out, the goal is to narrow the case into something that could be triable. When one side or the other seeks to replace newly-identified weaklings with more robust claims, that side is going in the wrong direction.” However, Judge Andrews explained that such substitution could potentially be permitted following a showing of good cause, which neither addressed during the dispute. Therefore, the Court explained, “while Plaintiff is not permitted to substitute on this record, I make this ruling without prejudice to Plaintiff seeking, now or at a later time, to demonstrate good cause.”
Judge Richard G. Andrews recently considered the motions in limine included in the pretrial order filed in advance of trial. AVM Technologies LLC v. Intel Corporation, No. 15-33-RGA (D. Del. Apr. 19, 2017). Judge Andrews granted AVM’s motion in limine to exclude references to decisions or orders from plaintiff’s prior lawsuits and reserved decision on whether to preclude the use of testimony of AVM’s expert from prior litigation, who are not experts in this case. Judge Andrews determined that the probative value of any prior litigation evidence would be substantially outweighed by unfair prejudice. Id. at 1-2. Regarding the expert testimony, Judge Andrews determined that the testimony might be permissible, “with the proviso that the experts cannot be identified as being AVM’s experts in prior litigation.” Id. at 2. Ultimately, Judge Andrews reserved decision until he could review the proposed testimony and discuss the issue at the upcoming pretrial conference. Id.
Judge Andrews also granted Intel’s motion in limine to exclude evidence that the circuit patented in Intel’s patent copies the asserted patent. Id. at 4. Judge Andrews noted that although AVM argued “that the ‘941 patent and related testimony show that Intel ‘knowingly employed delay and simultaneous activation’ in the accused circuits[,]” AVM did not actually allege that the circuit in question is accused of infringement or that its experts have opinions regarding the circuit. Id.
Judge Andrews recently granted a motion to dismiss for lack of patentable subject matter directed to a patent that included the following representative claim:
1. A method of determining a recovery state in a data stream, comprising:
receiving a compressed data stream;
detecting a compression block boundary in the compressed data stream;
detecting an archive block boundary in the compressed data stream;
detecting a file boundary in the compressed data stream; and
in response to the detection of the compression block boundary, the archive block boundary, and the file boundary, saving a recovery state for the compressed data stream;
wherein the recovery state includes a position of the compression block boundary, and a position of the file boundary.
Judge Andrews found this patent was “directed to the abstract idea of receiving, detecting, and storing information” because “as the Federal Circuit has held numerous times, collecting information is ‘within the realm of abstract ideas’” and “[t]his is precisely the kind of claim that the Federal Circuit has found to be an abstract idea.” D&M Holdings Inc., et al. v. Sonos, Inc., C.A. No. 16-141-RGA, Memo. Op. at 6-9 (D. Del. Apr. 18, 2017). Judge Andrews also found a lack of specificity or inventive concept in the claims, leading to his decision to grant the Section 101 motion.
On another patent-in-suit, however, Judge Andrews found that the patent was not ineligible and “agree[d] with Plaintiffs that Defendant has oversimplified and ignored specific limitations in this claim. This claim is more specific than claim 1 of the ’435 patent and calls for more than simply receiving, manipulating, and storing data.” Id. at 12-14.
On a third patent-in-suit, Judge Andrews “decline[d] to opine on” patentability because “construction of at least some of the disputed terms could impact the § 101 analysis, particularly as there is a dispute over whether the structure in several of the means-plus-function terms, which are found in claims that were not briefed or argued, is a specific device or merely a general purpose computer.” Id. at 14-16.
Finally, a fourth patent-in-suit was directed to an abstract idea without an inventive concept, in part because Judge Andrews “agree[d] with Defendant that this claim is directed to the automation of a process that can be (and has been) performed by humans.” Id. at 16-19. The representative claim at issue for this patent read:
18. A method for controlling a receiver having a plurality of receiver connections, the method comprising:
querying a user to select a receiver connection of the plurality of receiver connections to correspond with each encoding format of a plurality of encoding formats;
retrieving media unit data that identifies an encoding format of a playable piece of media selected to be played by the receiver, wherein the identified encoding format is one of the plurality of encoding formats;
retrieving receiver-connection data that identifies the receiver connection corresponding with the identified encoding format; and
sending to the receiver a control signal instructing the receiver to use the identified receiver connection for receiving a media signal of the selected media.
In a detailed Report and Recommendation issued in International Business Machines Corporation v. The Priceline Group Inc., et al., C.A. No. 15-137-LPS-CJB (D. Del. Apr. 10, 2017), Magistrate Judge Christopher J. Burke recommended that Plaintiff’s motion to dismiss Defendants’ inequitable conduct counterclaim and to strike their corresponding affirmative defense be granted-in-part.
Defendants’ inequitable conduct allegations fell into three separate “theories”: “allegations relating to the failure to disclose (1) certain prior art references against [two asserted patents] . . . (2) commercialization efforts . . . [and] (3) co-pending patent applications and office actions related to those applications.” Id. at 12. Plaintiff challenged the sufficiency of Defendants’ allegations of materiality and intent, and also that the inequitable conduct allegations regarding certain patents could “infect” others.
As a threshold matter, Defendants contended that because “‘Rule 12(b)(6) doesn’t permit piecemeal dismissals of parts of claims[,]’ . . . if any one theory of inequitable conducts passes muster under Rule 9(b), then all of Defendants’ theories set out in the counterclaim should survive, even if some are clearly insufficiently pleaded.” Id. at 13. The Court disagreed, citing, inter alia, case law from this District where portions of inequitable conduct claims were dismissed, and further observing that Defendants’ single-count approach to their pleading was confusing and may frustrate the particularity requirements of Rule 9(b). See id. at 13-16.
The United States District Court for the District of Delaware announced today that the Honorable Gregory M. Sleet will become a Senior United States District Court Judge as of May 1, 2017, and intends to render substantial judicial service in that role going forward.
The Court’s official announcement regarding Judge Sleet can be viewed HERE.
In Cloud Satchel LLC v. Amazon.com, Inc., C.A. No. 13-941-SLR & v. Barnes & Noble, Inc., C.A. No. 13-942-SLR (D. Del. Mar. 30. 2017), Senior Judge Sue L. Robinson had previously ruled on summary judgment that the patents-in-suit were invalid under Section 101. Plaintiff moved for relief from judgment, arguing that the Court’s “decisions had been called into question by three Federal Circuit cases that issued after the Federal Circuit’s affirmance in this case” (i.e., the Federal Circuit’s Enfish, BASCOM, and Rapid Litigation decisions). Id. at 2.
The Court denied the motions, observing that controlling Third Circuit precedent has consistently held that intervening changes in the law “rarely justify relief from final judgments.” Id. at 2 (citations omitted) (emphasis in original). The Court concluded that, while Section 101 jurisprudence “has been an evolving one,” the subsequent Federal Circuit cases “simply reflect the reality that different panels may describe, interpret and/or apply existing precedent differently in light of different facts. The Federal Circuit decisions identified by plaintiff are the kind of ‘intervening developments in the law’ that result from our system of common law, and plaintiff has filed to adduce evidence that the Federal Circuit’s pronouncement of invalidity was either an extreme or unexpected hardship.” Id. at 3.
In Impax Labs., Inc., et al. v. Lannett Holdings Inc., et al., C.A. No. 14-984-RGA, 14-999-RGA (D. Del. Mar. 29, 2017), Judge Richard G. Andrews issued a post-trial decision regarding Plaintiffs’ standing to bring suit and Defendants’ allegations of invalidity of Plaintiffs’ patents.
As to standing, Defendants argued that the “exact ownership arrangement of the patents” was not clear. Id. at 3. The Court examined a chain of ownership where the patents-in-suit were not always specifically called out as being part of various transfers. See id. at 5-6. But the Court concluded that there was “no reason to believe” there was any gap in ownership, crediting the statements of a declaration submitted by Plaintiffs post-trial and accepted by the Court (see id. at 4-5). Id. at 6. While, based on the documents at issue, it appeared possible that one of the named Plaintiffs no longer had an ownership interest in the patents, that did not impact the others’ standing to bring suit, and Defendants had only moved to dismiss “in toto for lack of standing.” Id. at 7.
As to Defendants’ anticipation and obviousness arguments, the Court found that they had not met their burden to show invalidity, and that Plaintiffs had presented evidence of secondary considerations of non-obviousness. See id. at 16-35.
Judge Sleet recently ruled on a motion to dismiss direct and indirect infringement claims in a case involving VoIP technology. IP Communication Solutions, LLC v. Viber Media (USA) Inc., C.A. No. 16-134-GMS (D. Del. Apr. 5, 2017). The defendant argued that the allegations of direct infringement failed to adequately put it on notice of what it was to defend, and cited as support cases in which allegations relating to unidentified products were dismissed. Judge Sleet disagreed with the defendant’s reliance on those cases, and explained that in those cases the alleged infringers marketed a number of products that could possibly infringe product claims. On the contrary, here, the defendant marketed a single mobile VoIP client application supported by a server that together were alleged to perform a number of steps that would infringe method claims, so the defendant could not persuasively argue that it was not on notice of what the claims targeted simply because the claims did not specifically identify the accused instrumentality. With respect to indirect infringement, however, Judge Sleet agreed with the defendant that the evidence relied upon (webpages showing how customers use the VoIP application to make calls) did not rise to the level of showing that the defendant “specifically instructed or directed customers to use the Viber application and corresponding server system in a manner that would infringe.”
Judge Gregory M. Sleet recently considered defendants’ motion to stay pending inter partes review of six of the eleven patents-in-suit. Koninklijke Philips N.V., et al. v. ASUSTek Computer Inc., et al., Nos. 15-1125-GMS, 15-1126-GMS, 15-1127-GMS, 15-1128-GMS, 15-1130-GMS, 15-1131-GMS, 15-1170-GMS (D. Del. Mar. 30, 2017). Judge Sleet denied the motion without prejudice to renew upon institution of the petitions by the U.S. Patent and Trademark Office. Id. at 1 n.1.