Articles Posted in Christopher J. Burke, Magistrate Judge

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On January 23, 2017, Magistrate Judge Christopher J. Burke issued a standing order regarding courtroom opportunities for newer attorneys. The standing order explains that “[t]he Court is cognizant of a growing trend in which fewer cases go to trial, and in which there are generally fewer opportunities in court for speaking or ‘stand-up’ engagements. This is especially true for newer attorneys, that is, attorneys practicing for less than seven years (‘newer attorney(s )’).” Id. at 1. The standing order goes on:  “Recognizing the importance of the development of future generations of practitioners through courtroom opportunities, the undersigned Judge encourages the participation of newer attorneys in proceedings in my courtroom—particularly as to oral argument on motions where the newer attorney drafted or contributed significantly to the briefing for the motion.”

Accordingly, Judge Burke adopted the following procedures regarding oral argument as to pending motions:

  1. After a motion is fully briefed, either as part of a Request for Oral Argument, or in a separate Notice filed thereafter, a party may alert the Court that, if argument is granted, it intends to have a newer attorney argue the motion (or a portion of the motion).
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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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Magistrate Judge Christopher J. Burke recently recommended granting-in-part and denying-in-part a motion to dismiss invalidity and non-infringement counterclaims.  Princeton Digital Image Corp. v. Konami Digital Entertainment Inc., C.A. No. 12-1461-LPS-CJB (D. Del. Jan. 19, 2017).  Judge Burke recommended denial of the motion to dismiss the invalidity counterclaim based on a theory of estoppel resulting from two IPR proceedings because neither IPR proceeding “resulted in a ‘final written decision’ as to the validity of” the claims at issue.  Judge Burke recommended granting the motion to dismiss the non-infringement counterclaim, with leave to amend, finding that the counterclaim contained “no facts of any kind, let alone sufficient facts to make out a plausible claim” under Twombly/Iqbal.

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Magistrate Judge Christopher J. Burke recently issued a Report and Recommendation recommending denial of defendant Glenmark’s motion for leave to amend its Answer to plead equitable estoppel and laches.  GlaxoSmithKline LLC and Glenmark Pharmaceuticals Inc., USA, No. 14-877-LPS-CJB (D. Del. Dec. 15, 2016).  Glenmark filed its motion about eight months after the deadline to amend pleadings set forth in the Scheduling Order.  Id. at 2.  Judge Burke concluded that Glenmark did not have good cause to amend after this deadline because “Glenmark’s proposed defenses are based on facts that have existed (and have been known to the parties) for quite some time.”  Id.at 4-5.  Judge Burke further noted that:

even if Glenmark’s failure to add these defenses by the February 15, 2016 deadline did not demonstrate a lack of diligence, its failure to do so over the next eight months surely does. In the interval, fact discovery closed, expert discovery began in earnest and the case moved much closer to trial. If new defenses were to be litigated in this matter, at a minimum, Glenmark should have moved to add them well before the filing of the instant motion.

Id. at 5-6.  Glenmark argued that good cause existed because it retained new counsel in September 2016, but Judge Burke disagreed noting that “new counsel’s entry into a case does not serve as a magic wand that enables the party to conjure up a showing of good cause.”  Id. at 6.

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Magistrate Judge Christopher Burke recently considered a motion to dismiss this patent-infringement action for lack of subject matter jurisdiction, granting-in-part as to one of plaintiff Adidas’ counts, but denying-in-part as to other portions of the complaint. In an earlier action, Unequal Technologies sued Reebok, which is wholly owned by Adidas AG. The earlier suit ended when Unequal provided two different versions of a covenant not to sue that extended only to Reebok products. Adidas then filed the instant action, seeking a declaration that the covenant is binding and applicable to Adidas products as well and that Adidas does not infringe the three patents-in-suit covered by the covenant. Declaratory judgment defendant Unequal responded to the complaint with a motion to dismiss for lack of subject matter jurisdiction. Adidas AG, et al. v. Unequal Techs. Co., et al., C.A. No. 16-52-LPS-CJB, Report and Recommendation at 1-6 (D. Del. Nov. 23, 2016).

Judge Burke first found that the second-issued of the two covenants not to sue had superseded the first-issued and was, therefore, the only covenant in effect. In reaching this conclusion, Judge Burke noted that the record “overwhelmingly indicates that the First Covenant was not operative, because even after it was sent to Reebok, the parties were still negotiating over the final form that the covenant would take.” Thus, Judge Burke found, there was no plausible claim that the first covenant was enforceable, and the Court need not even address whether the first covenant’s terms covered Adidas products. This portion of Adidas’ complaint was, therefore, dismissed. Id. at 7-16.

Based on the same prior suit against Reebok and resulting covenant not to sue, Adidas claimed that there was declaratory judgment jurisdiction for its claims of non-infringement. As Judge Burke explained in assessing jurisdiction, “The mere fact that Defendants had ‘filed infringement suits against other parties for other products[,]’ does not, ‘in the absence of any act directed toward [Plaintiffs], meet the minimum standard’ for declaratory judgment jurisdiction. This is so even where, as here, a defendant had previously sued one of a plaintiff’s subsidiaries. Plaintiffs’ Complaint, however, goes beyond simply alleging that Defendants had previously sued Reebok” because the complaint also alleged that Unequal had sought discovery into Adidas products. Id. at 17 (citations omitted). Thus, “it was then reasonable for [Adidas} to think that [Unequal] believed that such products infringed the patents-in-suit. Indeed, in the context of a patent infringement case, that is what the term ‘Accused Products’ suggests. As a result, it seems strange to ask whether, at the time of the instant suit, there was a ‘substantial controversy’ brought on by [Unequal] about whether [Adidas’] products at issue infringed the patents-in-suit. [Unequal] had, after all, already pretty clearly stated that they did.” Id. at 18.

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Magistrate Judge Burke’s Markman report and recommendation in this case is interesting for a few reasons. Procedurally, it followed argument at two separate Markman hearings, one early in the case before a stay pending IPR, and a second hearing following an IPR decision invalidating all claims at issue in the IPR and addressing only the three dependent claims remaining as valid and at issue in this litigation. Princteon Digital Image Corp. v. Konami Digital Entertainment Inc., et al., C.A. No. 12-1461-LPS-CJB, Report and Recommendation at 1-7 (D. Del. Dec. 2, 2016).

Judge Burke also addressed an indefiniteness argument regarding the claim term “virtual environment,” which was defined in the patent specification as follows: “The terms ‘virtual environment,’ ‘virtual world,’ and ‘virtual reality’ are used interchangeably to describe a computer-simulated environment (intended to be immersive) which includes a graphic display (from a user’s first person perspective, in a form intended to be immersive to the user), and optionally also sounds which simulate environmental sounds.” This definition led to a dispute as to the meaning of “immersive” and whether this term provides sufficient objective boundaries to avoid indefiniteness. Id. at 21. The parties did not dispute that “immersive” was a term of degree, but disputed whether the patent provided a definite “lower boundary of immersiveness.” Id. at 24-26. Judge Burke concluded that the claim was not indefinite, however, because at least four portions of the specification helped to suggest boundaries for the term “immersive.” Id. at 26-32.

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Magistrate Judge Christopher J. Burke recently recommended that a motion to dismiss filed by Toshiba entities be granted because the complaint against them failed to distinguish between the entities and thereby failed to plausibly allege direct infringement against any one of them.  North Star Innovations, Inc. v. Toshiba Corp., et al., C.A. 16-115-LPS-CJB (D. Del. Dec. 6, 2016).  As Judge Burke explained, “nowhere in any part of the [complaint] is it clearly alleged that either Defendant takes part in any specific infringing act–instead, it is vaguely alleged that they may commit one ‘or’ another ‘or’ some ‘or’ all of the relevant possible acts that would amount to direct infringement.” (emphasis in original).  Judge Burke added, “[t]his leaves the reader confused about which, if any, of these acts are actually being attributed to each Defendant.  And if the Court wished to assure itself that there is a plausible claim that each Defendant has committed at least one such wrongful act in the United States . . ., it could not do so, since there are no other factual allegations about the nature of Defendants’ business, nor their activities in the United States.” (emphasis in original).

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Magistrate Judge Christopher J. Burke recently recommended the denial of § 101 motions relating to cloud computing environment technology.   Kaavo Inc. v. Amazon.com Inc., et al., C.A. No. 15-638-LPS-CJB (D. Del. Nov. 3, 2016); Kaavo Inc. V. Tier 3, Inc., et al., C.A. No. 15-640-LPS-CJB (D. Del. Nov. 3, 2016).  For purposes of its analysis, the Court focused on the defendants’ argument that the patent-in-suit was directed to “an abstract idea . . . of setting up and managing a computing environment.”  Id. at 9.  The Court ultimately agreed that the patent was directed to an abstract idea, but recommended denial of the § 101 motion under the second “inventive concept” prong of Alice, namely because, on the record before the Court, certain claim language “renders it more plausible that claim 11 describes a sufficiently specific way of ‘setting up a cloud computing environment’,”  id. at 22 (emphasis added), and “there appear to be disputed issues of fact here that, when resolved, will bear on whether claim 11’s method would risk disproportionately tying up the use of the underlying ideas[,] . . . or cover all possible ways to achieve the provided result[.]”  Id. at 23 (quotation marks omitted).

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Magistrate Judge Christopher J. Burke recently considered defendants Ubisoft Entertainment SA and Ubisoft Inc.’s motion to dismiss plaintiff Princeton Digital Image Corp.’s claims in its Third Amended Complaint for indirect and willful infringement of U.S. Patent No. 5,513,129.  Princeton Digital Image Corp. v. Ubisoft Entm’t SA, No. 13-335-LPS-CJB (D. Del. Nov. 4, 2016).  Regarding indirect infringement, Defendants argued that the Third Amended Complaint failed to allege actual knowledge of the patent-in-suit prior to the lawsuit, and that the original Complaint failed to put Defendants on notice of Plaintiff’s claims after the suit was filed.  Id. at 8.  Judge Burke agreed.

Regarding pre-suit knowledge, Judge Burke found that Plaintiff’s allegation that Defendants had knowledge merely because it was aware of a patent that described the patent-in-suit was “too tenuous to permit the reasonable inference that Defendants had actual knowledge of the [patent-in-suit].”  Id. at 13. Regarding post-suit knowledge, Judge Burke found that the patent-in-suit expired three months after the original Complaint was filed, and that Complaint did not provide any basis for the indirect infringement allegations now pled in the Third Amended Complaint.  Id. at 18-21.  Similarly, Judge Burke also recommended dismissing Plaintiff’s claims of willful infringement because the Third Amended Complaint failed to adequately allege that Defendants had pre-suit knowledge of the patent-in-suit; and because the original Complaint did not plead indirect infringement (willful or otherwise) or how Defendants’ actions in the three month window between the filing of the suit and the expiration of the patent were “an ‘egregious’ case of infringement of the patent.”  Id. at 23-25.

Princeton Digital Image Corp. v. Ubisoft Entertainment SA, No. 13-335-LPS-CJB

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In Toshiba Samsung Storage Technology Korea Corporation v. LG Electronics, Inc., et al., C.A. No. 15-691-LPS-CJB (D. Del. Sept. 20, 2016) (unsealed Sept. 28, 2016) Magistrate Judge Christopher J. Burke denied Defendants’ motion to dismiss due to lack of standing. The parties had consented to Judge Burke conducting any and all proceedings and entering a final order with regard to Defendants’ motion to dismiss. Id. at 4.

Defendants argued that Plaintiff had not obtained all substantial rights to the patents-in-suit when third party Samsung had executed an assignment agreement with Plaintiff, because Samsung retained “the right to practice the patents, the right to license the patents, and the right to re-acquire the patents at no cost.” Id. at 9. The Court concluded that the most important factor in the “all substantial rights” analysis – the right to sue – weighed in favor of Plaintiff. Id. at 25. Having first interpreted disputed portions of the assignment agreement, the Court concluded that Plaintiff had the exclusive right to sue, and the presence of a covenant not to sue a “future licensee” not named in the agreement did not divest Plaintiffs its standing due to the mere possibility that such “future licensee” could be Defendants. See id. at 17-20. Second, “the Court [was] also swayed by the apparent intent of the parties in drafting the Agreement, as reflected by some of the wording in the document.” Id. at 26. Third, it concluded that the limits on transfer were “not so stringent as to suggest” a lack of standing where Samsung’s right of first refusal allowed only for “the possibility of re-acquiring the Assigned Patents, only if [Plaintiff] decides to transfer, sell or abandon the patents[.]” Id. at 27 (emphasis in original). Fourth, it was “important that the Agreement provides [Plaintiff] other rights indicative of ownership. For example, [Plaintiff] enjoys exclusive rights to all proceeds and other benefits obtained from its enforcement actions, and the right to make, use and sell products or services under the Assigned Patents.” Id. at 28.

Accordingly, and “[t]aking all of these considerations into account, and based on the record before it, the Court conclude[d] that the Agreement did transfer from Samsung to [Plaintiff] all substantial rights in the Assigned Patents,” and denied Defendants’ motion. Id. at 28.

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