Articles Posted in Leonard P. Stark, Chief Judge

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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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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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Chief Judge Leonard P. Stark recently granted-in-part a defendant’s motion to exclude the testimony of a damages expert.   Yodlee, Inc. v. Plaid Technologies Inc., C.A. No. 14-1445-LPS-CJB (D. Del. Jan. 27, 2017).  On a number of issues, Judge Stark found that the defendant’s criticism of the expert’s analysis went to the weight to be afforded to it, rather than its admissibility.  With respect to apportionment, though, Judge Stark agreed with the defendant that it would be inappropriate to permit the expert to testify in reliance on statements from plaintiff’s employees who were not disclosed under Rule 26 and subject to deposition.  The Court therefore granted the motion to exclude apportionment testimony, but without prejudice to the plaintiff serving a supplemental expert report addressing the deficiencies and supplementing its Rule 26 disclosures.  Similarly, the Court excluded, without prejudice to supplementing the expert’s report, the expert’s “reasonable royalty analysis as using an impermissible rule-of-thumb profit split.”  The Court explained that the expert’s “failure to expressly account for varying pricing structures and the lack of a sufficiently detailed explanation for how he reached the ‘compromises’ [in the expert report] renders [the expert’s] reasonable royalty analysis, as presently articulated, insufficiently reliable.”

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In two recent Memorandum Orders, Chief Judge Leonard P. Stark ruled on the parties’ privilege dispute, and denied defendant Future Link Systems, LLC’s (“Future Link”) motion for reconsideration of the Court’s September 28, 2016 Order granting in part plaintiff Intel Corporation’s (“Intel”) motion for summary judgment on its license claim. Intel Corp. v. Future Link Systems, LLC, C.A. No. 14-377-LPS (D. Del. Jan. 27, 2017).

As to the privilege dispute, Judge Stark denied Intel’s request that Future Link produce certain documents withheld as privileged or attorney work product. Judge Stark did, however, grant in part Future Link’s request that Intel produce certain documents withheld as privileged. As to one document that the Court ordered to be produced, Judge Stark noted that “[t]here is no indication that the document was ever actually sent to a lawyer for legal review, and it is unclear what ‘legal review process’ is referred to in the top-level email.” In addition, according to Judge Stark, “the attached slide-show presentation appears to be entirely technical in nature, raising no issues that would clearly require review by an attorney.” As to another document ordered to be produced, Judge Stark explained that “[t]here is nothing in the content of what was redacted that would indicate what legal advice was sought or obtained, if any. Moreover, there is no indication of any communication to an attorney of the redacted portion of the document for the purpose of obtaining legal advice.” (emphasis in original). As to another such document, Judge Stark noted that “[t]he fact that a document was reviewed by an attorney is not enough, by itself, to make the statements which have been redacted privileged.”

Denying Future Link’s motion for reconsideration, Judge Stark explained that the motion “simply repeats arguments that were previously raised [at the March 1, 2016 hearing], and does not add anything that could not have been presented to the Court before the Court’s September 28, 2016 ruling [on summary judgment].” Judge Stark also found that Future Link’s motion for reconsideration on the licensing issue failed on the merits.

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In a recent Memorandum Opinion, Chief Judge Leonard P. Stark denied defendant Costco Wholesale Corporation’s (“Costco”) motion to dismiss the litigation pursuant to Rule 37(b)(2) for discovery misconduct by plaintiff Robert Bosch LLC (“BLLC”). Robert Bosch LLC v. Alberee Products, Inc., C.A. No. 12-574-LPS (D. Del. Jan. 24, 2017). BLLC failed to comply with the court’s order to produce certain documents by a given deadline following a discovery dispute. See id. at 1-2. BLLC stated reason for not producing the documents is that its parent, Robert Bosch GmbH (“BGmbH”), “refused to search for and produce any documents when BLLC requested BGmbH to do so, even when BLLC’s requests were backed by an order of the Court.” Id. at 2. Costco’s motion pursuant to Rule 37(b)(2) followed. Id. at 3-4.

Denying Costco’s request to dismiss the case, Judge Stark consider the six factors set forth in Poulis v. State Farm Fire & Casualty Co., 747 F.2d 863 (3d Cir. 1984). First, considering BLLC’s responsibility, the Judge Stark noted that “Costco should have been given access to BGmbH-held documents that were responsive to Costco’s requests, regardless of whether such documents were supportive of BLLC’s positions in this litigation. BLLC had effective control over production of such documents.” Id. at 6. On this point, Judge Stark further explained that “[b]ecause BLLC had control over the disputed documents, BLLC is largely responsible for its failure to produce the required documents and the failure to comply with the Court’s . . . Order. Therefore, this first Paulis factor weighs in favor of dismissal.” Id. at 8. Judge Stark also found that Costco was highly prejudiced by BLLC’s misconduct, given that Costco was “deprived of the opportunity to develop its defenses during fact discovery within the necessary context of full production of responsive documents.” Id. at 8. Such prejudice also weighed in favor of dismissal. Id. at 8-9. The Court also found BLLC’s history of dilatoriness in the litigation and willful disobedience of the court’s discovery order to weigh in favor of dismissal. See id. at 9-10.

Ultimately, however, Judge Stark found in this instance that “[l]esser, alternative sanctions are appropriate and will adequately ameliorate the prejudice Costco has suffered.” Id. at 10-11. Indeed, as Judge Stark noted, “[d]ismissal must be a sanction of last, not first, resort.” Id. at 10. Rather than dismissal, Judge Stark required BLLC to pay “Costco’s reasonable attorney’s fees that were caused by BLLC’s discovery misconduct.” Id. at 11. Further, Judge Stark provided that “Costco will be permitted the opportunity to seek further discovery, should it believe any is necessary, in order to ensure that Costco will have received in production all materials and other discovery which it would have obtained had BLLC lived up to its discovery obligations throughout this case.” Finally, Judge Stark ruled that “in connection with submission of the proposed final pretrial order and the final pretrial conference, the Court will consider, if requested by Costco, granting relief in limine to exclude particular late-produced evidence, should Costco be able to persuade the Court that, in light of the totality of applicable considerations, such evidence should be excluded.” Id. at 11.

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In a recent Memorandum Order, Chief Judge Leonard P. Stark denied defendants’ (“Heartland”) request to stay the litigation pending the Supreme Court’s decision regarding the construction of the patent venue statute, 28 U.S.C. § 1400(b). Kraft Foods Group Brands LLC v. TC Heartland, LLC, C.A. No. 14-28-LPS (D. Del. Jan. 12, 2017). The Supreme Court granted Heartland’s petition for a writ of certiorari on the issue on December 14, 2016. Id. at 2 (citing _ U.S._, 2016 WL 4944616 (2016)). Defendants specifically requested that the court stay all case-dispositive matters, but not stay non-dispositive matters, which include a pending discovery dispute. Id. at 3-4.

Denying defendants’ requested stay, Judge Stark observed:

By separate orders that will also be entered today, I have decided all pending motions, including motions for summary judgment (which I have denied in almost all respects), motions to exclude expert evidence (one denied and one granted), and a motion to amend Heartland’s inequitable conduct allegations (which I have granted). The parties and the Court did a great deal of work briefing, arguing, and deciding these motions, and the Court could have issued its decisions at any time after the August 30, 2016 hearing, well before Heartland (after the Court’s express inquiry) finally asked for a (partial) stay on December 20. Even if the result of the Supreme Court’s decision is a determination that this case must be transferred to another District, the case will still need to be tried. I have presided over the case since its inception. The directive of Federal Rule of Civil Procedure 1, that I “administer[]” this case (like all others) with a goal of “secur[ing] [its] just, speedy, and inexpensive determination,” is far better served by me deciding the ripe motions rather than leaving numerous loose threads for (potentially) a judge in another District to have to untangle.

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In Kraft Foods Group Brands LLC v. TC Heartland, LLC d/b/a Heartland Food Products Group, et al., C.A. No. 14-28-LPS (D. Del. Jan. 12, 2017), Chief Judge Leonard P. Stark ruled on Defendants’ motion for summary judgment as to invalidity, as well as their uncontested motion for summary judgment for failure to mark. Defendants argued that two patents-in-suit (the ’557 and ’472 patents) were invalid as obvious, and also that the ’557 patent was invalid as under Section 112’s written description and enablement requirements and because it violated the statutory prohibition against double-patenting.

As to obviousness, the Court concluded that genuine disputes of material fact existed as to both patents, and denied summary judgment. See id. at 3, 5-6. Similarly, as to written description and enablement arguments on the ’557 patent, genuine disputes of material fact existed here, and the Court denied summary judgment. See id. at 4. The Court also disagreed with Plaintiff’s argument that Defendants waived a non-enablement defense because they had not been raised in invalidity contentions and expert reports, but permitted Plaintiff to propose a schedule for taking “additional, limited discovery” into that defense if needed. Id. at 3 n.3.

As to statutory double patenting, Defendants argued that “the April 2010 provisional applications, whose contents were fully incorporated in another [Plaintiff] patent, are invalidating prior art under § 102(e).  In response, [Plaintiff] accuse[d] [Defendants] of impermissibly ‘cloak[ing]’ an undisclosed anticipation defense under the guise of double patenting.” Id. at 4. The Court agreed with Plaintiff that Defendants had not “articulated either the type of double-patenting it alleges or how the law applies to the facts of this case.” Id.  To the extent Defendants advocated a “a species-genus anticipation defense, the record . . . would support a reasonable finding that there is not clear and convincing evidence of invalidity.” Id. at 5. Furthermore, the Court was not persuaded by Defendants that the filing of a terminal disclaimer was irrelevant to this question. Id.

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