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In a recent Memorandum Order, Magistrate Judge Christopher J. Burke denied plaintiffs’ (“Integra”) motion for leave to file an amended complaint, concluding that “to grant the Motion would cause substantial and undue prejudice to Defendant.” Integra LifeSciences Corp. v. Hyperbranch Medical Technology, Inc., C.A. No. 15-819-LPS-CJB (D. Del. Feb. 16, 2017). First, Judge Burke observed that the parties and Court have “spent substantial time and effort attempting to address and narrow the issues in what is already a large, complex matter.” Id. at 2.  As Judge Burke explained, the action is a “six-patent case” and one patent “involves complicated chemical technologies.” Id. Judge Burke further explained that the “parties . . . proceeded through a lengthy and involved preliminary injunction phase,” and since then, they “have expended more time on discovery (and on discovery disputes), have narrowed the number of claims and references at issue, and are currently in the midst of claim construction briefing (involving 20 disputed claim terms).” Id.

Second, Judge Burke found that the additions in the proposed Amended Complaint, which sought to add two new patents, “are not minor.” Id. While Judge Burke acknowledged that there is some overlap between the operative complaint and proposed Amended Complaint, he observed that the new patents had different inventors and implicated embodiments not directly at issue with the original patents. Id. at 2-3. Judge Burke further observed that defendant “is  . . . understandably concerned with how a jury will be able to grasp its arguments at trial, were a case as large as this to become ever larger after amendment.” Id. at 3.

Third, Judge Burke found that “were the Motion granted, this would surely do violence to the current case schedule.” Id. Judge Burke explained that “the addition of the new patents will no doubt necessitate significant additional fact and expert discovery, claim construction and discovery dispute proceedings, and dispositive motion practice.” Id. Further, “[t]he current trial date would surely be lost, and the case schedule would no doubt need to be pushed back by many months (at least).” Id.

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In Callwave Communications, LLC v. Verizon Services Corp., et al., C.A. No. 12-1704-RGA (D. Del. Feb. 13, 2017), Judge Richard G. Andrews granted Plaintiff’s motion to enforce the settlement agreement between Plaintiff and intervenor Telecommunication System Inc. (“TCS”) who had indemnified Defendants. The parties disagreed as to whether an agreement had been reached in principle, where TCS had agreed to Plaintiff’s terms via email, the parties had filed a stipulation to stay the case pending finalization of the agreement, and where “drafts, comments, and edits were exchanged.” Id. at 2. In the intervening period, the Court had granted another party’s Section 101 motion to invalidate one of the patents-in-suit.

Applying Delaware law, the Court observed that “[o]bjective indicators demonstrate that a contract was made. First, the August 8th email clearly demonstrates that TCS believed an agreement had been reached. The August 8th agreement set out the payment terms and a July 21st email set out the boundaries of the license Callwave would offer TCS. Intermediate emails demonstrated that the terms from the July 21st email carried through and were part of the agreement struck on August 8th. For example, a July 22nd email thanked Callwave for ‘agreeing to the terms, other than payment’ and confirming that the covenant not to sue would allow damages to accrue. These emails used the language of contract – ‘this formal offer’ – and the language of resolution -‘my client accepts.’ Second, the stipulation filed with this court clearly indicates an agreement had been reached.” Id. at 3 (internal citations omitted). Additionally, “the tenor of the comments in the drafts reflect an effort to memorialize an agreement already reached.” Id. The fact that some open terms remained regarding, for example, assignability, notice, choice of law, and confidentiality did not mean that the contract did not contain “all essential terms” and was thus enforceable under Delaware law. Id. at 4.

Having found an enforceable contract existed, the Court ordered specific performance, including all terms “either explicitly agreed to or included in responding drafts without comment or suggested revision.” Id. at 4.

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In W.L. Gore & Associates, Inc. v. C.R. Bard, Inc., et al., C.A. No. 11-515-LPS (D. Del. Feb. 8, 2017), Chief Judge Leonard P. Stark issued decisions on various motions in limine prior to the parties’ upcoming pretrial conference.

Regarding Plaintiff’s motion to exclude “evidence and argument relating to discovery disputes,” the Court granted the motion in part, explaining that “[i]t would be improper, irrelevant, unfairly prejudicial, and confusing to the jury for the parties to refer to or re-fight discovery disputes at trial. Any minimal probative value there may be would be substantially outweighed by the countervailing concerns of Federal Rule of Evidence 403.” Id. at 1. However, “where relevant,” the Court would permit the parties to “make reference to the timing with which an expert was provided with particular evidence – and how that evidence did (or did not) impact the expert’s analysis and opinion- but without stating or suggesting to the jury that such production was late, untimely, or in any manner improper.” Id. The Court denied Plaintiff’s motion to preclude arguments purportedly contrary to the Court’s claim construction because it was not persuaded that certain slides to be used in Defendants’ opening statement were contrary to the Court’s claim construction. Id. at 2.

As for Defendants’ motions in limine, the Court first granted their motion to exclude evidence or argument relating to a certain product of Defendants not marketed in the U.S during the term of the patent-in-suit, explaining that “Plaintiff’s allegations as to the ‘apparent infringement’ of the patent-in-suit by these stent grafts are untimely and unsupported by evidence in the record. Permitting Plaintiff to do as it proposes would be unfairly prejudicial to Defendants – who have had no incentive or opportunity in this action to develop non-infringement evidence relating to these products – and confusing to the jury, concerns that substantially outweigh whatever minimal probative value this evidence might have.” Id. But the Court denied Defendants’ motion to exclude Defendants’ license agreements resulting from settlement, as their concerns could be adequately addressed through cross-examination. Id. at 3.

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Chief Judge Stark recently issued an order addressing several motions to strike or supplement contentions and to strike expert reports. Judge Stark first found that the plaintiff’s “final infringement contentions fail to provide Defendants adequate notice of ‘how the accused products allegedly meet [a certain] limitation’” because the contentions addressed only half of the Court’s claim construction of that limitation and appeared to rely, instead, on the plaintiff’s proposed construction, which had been rejected. Intellectual Ventures I LLC v. AT&T Mobility LLC, et al., C.A. No. 13-1668-LPS, Memo. Or. at 3-4 (D. Del. Feb. 14, 2017). Judge Stark found that this “failure to serve infringement contentions that apply the Court’s claim construction was neither substantially justified nor harmless,” which supported striking the contentions. Id. For the same reasons, Judge Stark also struck the plaintiff’s doctrine of equivalents contention for the same patent, which the plaintiff contended was “based on the same evidence” as its deficient literal infringement contention. Id. at 6. Judge Stark denied, however, a motion to strike the plaintiff’s infringement theory for a separate patent, which the defendant claimed was untimely because it was served two weeks before the close of fact discovery. The Court agreed that the “infringement theory, which is contained in its timely served infringement contentions, should not be stricken. While it appears [the plaintiff] had formulated its [theory] prior to August 2016, it was appropriately pursuing discovery with respect to that theory·in the preceding months, and it permissibly relied on the opportunity provided in the scheduling order to finalize infringement contentions after the Court’s claim construction order.” Id. at 9-10.

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Chief Judge Stark recently considered several pre-trial motions for summary judgment in this litigation between Plaintiff Intellectual Ventures and Defendant Symantec. Two of the summary judgment motions at issue were cross-motions directed to Section 101 patent eligibility. Judge Stark ultimately found that the claims at issue, directed to a method of remote mirroring of data for back-up purposes, were not patent eligible. Intellectual Ventures I LLC, et al. v. Symantec Corp., et al., C.A. No. 13-440-LPS, Memo. Op. at 7-11 (D. Del. Feb. 13, 2017). Judge Stark first found that the claims were directed to “the abstract idea of backing up data. The claims recite the basic steps of copying data from one location to another several times and sending a confirmation that the data has been received. It is undisputed that institutions have long backed up data in general, and the specification even describes long-practiced methods of backing up digital data. Additionally, courts have found similar claims – about storing or copying information – as being within the realm of abstract ideas.” Id. at 8. And although the patent specification described several disadvantages of prior art back-up methods, “[t]he claims do not provide any concrete details that limit the claimed invention to a specific solution to the problem of remote back-up of digital data. The claims simply rely on functional language to describe copying and confirmation steps. Additionally, the claims use existing computer functionality as a tool to better back up data and do not themselves purport to improve anything about the computer or network itself. . . . The specification’s insistence that the claimed invention is an ‘advancement’ over the prior art does not overcome the Court’s conclusion that the claims as written focus on an abstract idea.” Id. at 8-9. Moreover, the claim limitations did not contain an inventive concept because “the patent’s claimed solution merely restates the problem to provide ‘a method for remote mirroring of digital data,’ in which ‘the data copied’ is ‘a substantially concurrent copy.’ Such attempt to claim ‘the abstract idea of a solution to the problem in general,’ as opposed to a particular solution, confirms the patent ineligibility of these claims.” Id. at 11.

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In Bio-Rad Laboratories Inc. v. Thermo Fisher Scientific Inc., C.A. No. 16-358-RGA (D. Del. Jan. 31, 2017), Judge Richard G. Andrews denied Defendant’s motion to dismiss Plaintiff’s willfulness allegations.  Noting that “[a]t the pleading stage, it is not necessary to show that the case is egregious,” id. at 2, the Court went on to observe that the complaint alleged that Plaintiff “gave [Defendant] notice of its infringement of the patent-in-suit as early as March 2013. On January 2014, proposed licensing terms were sent to [Defendant].  On May 6, 2015, [Plaintiff] sent a letter to [Defendant] of a reminder that sales of the accused products constitute infringement of the patent-in-suit.  [Plaintiff] alleges that [Defendant], or one of its subsidiary or affiliated companies directed the filing of the opposition to a European patent that is a counterpart to the patent-in-suit. Accused products continue to be sold.”  Id. at 3.  The Court concluded that foregoing facts sufficiently alleged willfulness.

Bio-Rad Laboratories Inc. v. Thermo Fisher Scientific Inc., C.A. No. 16-358-RGA (D. Del. Jan. 31, 2017)

 

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Judge Andrews recently denied a motion to amend filed by a Defendant seeking to add a defense of inequitable conduct to its answer. “As an initial matter, [Judge Andrews] reject[ed] Defendants’ assertions that the current motion is not subject to the more stringent ‘good cause’ standard of Rule 16(b),” which is applicable after the scheduling order’s deadline for amendment of pleadings has passed. “Defendants argue that because they ‘openly disclosed their legally sufficient theories of inequitable conduct’ prior to the deadline, the current proposed amendment should not be subject to the ‘good cause’ standard. This is incorrect. Disclosing a legal theory is not the equivalent of substantively amending a pleading.” Sonos, Inc. v. D&M Holdings Inc., et al., C.A. No. 14-1330-RGA, Memo. Op. at 3 (D. Del. Feb. 3, 2017). The Defendant had filed two separate motions to amend with different accompanying proposed amended answers and elected to rely on the later of the two, which was filed after this deadline. Accordingly, the good cause standard applied.

Judge Andrews also found that the Defendant had not met the good cause standard because it had not shown that the prior deadline could not be met, despite its diligence. “The only argument Defendants make in support of diligence, the only factor important in the Rule 16 analysis, is that they ‘have diligently pursued their request for leave since August 1, 2016.’ This is the wrong time frame for the diligence analysis, however. To show good cause, Defendants must show diligence in pursuing their inequitable conduct defense prior to the deadline for amendments; whether Defendants acted diligently, after the deadline, in addressing the deficiencies Plaintiff identified in their First Amended Answer is simply irrelevant. Furthermore, Defendants have not argued that their defense is based on newly disclosed evidence that could not have been obtained prior to the deadline. Nor could they. The inequitable conduct allegations in the proposed Second Amended Answer rest entirely on information that was publicly available months or even years before the deadline for amendments.” Id. at 3-4.

Finally, Judge Andrews explained that “[e]ven if were to find some hint of good cause for this amendment, I am dubious about whether Defendants’ pleading is sufficient . . . [because] Defendants’ identification of the required “who” is murky at best, with most allegations centering on Sonos’s current in-house counsel, an attorney who was not even employed by Sonos until March 2014, years after the occurrence of much of the alleged misconduct. In addition, Defendants’ allegations of intent revolve around Sonos’ s attorneys’ knowledge of the existence of prior art references cited during prosecution of some patents, but not others. This alone is insufficient.” Id. at 4 n.2.

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Chief Judge Leonard P. Stark recently considered the parties’ motions to strike expert reports   Intellectual Ventures I LLC v. AT&T Mobility LLC, et al., No. 12-193-LPS, 13-1632-LPS, 13-1633-LPS, 13-1635-LPS, 13-1636-LPS, 13-1637-LPS, 15-799-LPS, 15-800-LPS (D. Del. Jan. 31, 2017).

Regarding defendants’ motion to strike portions of the reply report of Dr. Vojcic, Judge Stark granted the motion in part finding that Dr. Vojcic did improperly introduce new opinions in his reply report when he corrected an error identified by defendants’ expert and revised his opinions in reply.  Id.  at 3-4.  Judge Stark did not strike the new opinions, but granted defendants leave to serve sur-reply reports and compelled Dr. Vojcic to produce a supplemental reply report “limited to the bases for his new opinions.”  Id. at 5.  Judge Stark also required plaintiff to pay 2/3 of the “reasonable expert costs incurred in connection with the preparation of sur-reply reports.”  Id. at 6.

Regarding defendant T-Mobile’s motion to strike portions of the reply report of Mr. Bratic, Judge Stark concluded that the relevant factors favored exclusion.  The portions in question were a “confirmatory analysis” submitted in response to defendants’ expert’s criticism of the absence of evidence supporting Mr. Bratic’s conclusions in his opening report.  Judge Stark determined exclusion was warranted because the evidence on which the reply report was based was available to Mr. Bratic at the time he served his opening report and his reply report “gives an entirely new, different theory,” rather than merely respond to defendant’s rebuttal opinions.  Id. at 7.  Exclusion, rather than cure, was warranted due to the nature of the prejudice to defendants and plaintiff’s violation of the scheduling order:

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Chief Judge Leonard P. Stark recently considered several disputes, including intervenor Adobe System Incorporated’s motion to amend its complaint in intervention and further request for attorneys’ fees.  Princeton Digital Image Corporation v. Office Depot Inc., et al., No. 13-239-LPS, 12-287-LPS, 13-288-LPS, 13-289-LPS, 13-326-LPS, 13-330-LPS, 13-331-LPS, 13-404-LPS, 13-408-LPS (D. Del. Jan. 27, 2017).  Previously, Adobe requested to intervene in these suits, and the Court granted the request, on the basis that the defendants were Adobe’s customers.  Id. at 3.  Adobe filed a complaint in intervention, and plaintiff responded to that complaint in all but one suit–the Nordstrom suit.  Id.  The Clerk subsequently entered default and plaintiff moved to set aside the default.  While the Court granted plaintiff’s motion, the Court also granted Adobe monetary sanctions.  The parties, however, were unable to agree to the requisite amount of fees.  Moreover, Adobe subsequently filed a motion to amend its complaint in intervention to add a claim for restitution damages, which plaintiff opposed.

Regarding the motion to amend, plaintiff argued that the amendment was futile and that Adobe failed to comply with Local Rule 7.1.1 regarding meeting and conferring on non-case dispositive motions.  Judge Stark granted the motion to amend.  Judge Stark agreed with Adobe that it “could prove restitution damages if it is ultimately determined that Adobe did not get the benefit of its bargain in [a license agreement with plaintiff], because at least some of Adobe’s customers were not protected from suit, as provided for in the agreement.”  Id. at 6.  Judge Stark did note that Adobe failed to comply with Local Rule 7.1.1 but, “under the totality of circumstances,” denial of Adobe’s motion was not warranted.  Id.  Regarding the monetary sanctions previously ordered, Judge Stark used the hourly rate Adobe proposed because plaintiff submitted no evidence in support of its proposed rate.  Id. at 8-9.  Judge Stark also deferred determining the reasonableness of the hours spent on the default-related issues until Adobe had produced billing summaries.  Id. at 9.

Princeton Digital Image Corp. v. Office Depot Inc., No. 13-239-LPS

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Judge Richard G. Andrews recently granted motions to dismiss direct, indirect, and willful infringement claims under Rule 12(b)(6) in five related cases.  Network Managing Solutions, LLC v. AT&T Inc., et al., C.A. No. 16-295, 16-296, 16-297, 16-298, 16-299 (RGA) (D. Del. Feb. 3, 2017).  The Court found insufficient the allegation that the “3rd Generation Partnership Project Standards incorporate the technologies covered by the patents” because it was pled on information and belief.  The Court explained, “Plaintiff knows its own patents.  The standards are public.  Saying on ‘information and belief’ that the standards ‘incorporate the fundamental technologies’ covered by the patents, without more, is insufficient to plausibly allege that the practice the standard necessarily means that a defendant also practices the patent.”  The Court found the indirect infringement allegations insufficient for the additional reasons that the complaint failed to identify any third party that actually infringes, and failed to plausibly claim that the Defendants specifically intended to induce infringement.  In turn, while recognizing that the plaintiff adequately alleged knowledge of its patent, the Court dismissed the willful infringement claim because it was based on insufficiently pled infringement claims.

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