In a recent report and recommendation, Magistrate Judge Mary Pat Thynge recommended that several affirmative defenses be stricken. Sonos, Inc. v. D&M Holdings Inc., C.A. No. 14-1330-RGA-MPT (D. Del. Aug. 10, 2016). Of note, Judge Thynge explained that the defendants’ § 288 defense should be stricken because there was no allegation that any asserted patent “has been found invalid before the commencement of the present action.” Judge Thynge also recommended that the defendant’s equitable estoppel and unclean hands affirmative defenses be stricken for failure to allege facts supporting those defenses with the particularity required by Rule 9(b). Next, the Court recommended the striking of the defendant’s patent misuse defense, which was supported by arguments in the defendant’s answering brief, but not in allegations in the affirmative defense, itself. Judge Thynge explained, “D&M is required to assert a basis showing an anticompetitive effect in its pleadings; delegating this in its answering brief is not sufficient.” Finally, Judge Thynge explained that the defendant’s prosecution laches defense “is limited to a one sentence conclusory statement, containing no information to support the elements of unreasonable and inexcusable delay,” warranting that it, too, be stricken. The Court noted, however, that it would allow D&M leave to amend the pleadings to address these deficiencies.
In a recent Memorandum Order, Chief Magistrate Judge Mary Pat Thynge considered Plaintiff SunPower Corporation’s (“SunPower”) motion, pursuant to Local Rule 7.1.5, seeking (i) clarification of the court’s April 1, 2016 Memorandum and Order with respect to infringement by defendant PanelClaw, Inc. under the doctrine or equivalents; and (2) reconsideration of the court’s construction of the term “disposed as a layer.” SunPower Corporation v. PanelClaw, Inc., C.A. No. 12-1633-MPT (D. Del. Jul. 26, 2016). Judge Thynge first clarified that the court’s “April 1, 2016 Memorandum and Order granting summary judgment of non-infringement was limited to literal infringement and did not grant summary judgment of non-infringement under the doctrine of equivalents.” Id. at 3. Judge Thynge then denied SunPower’s request for reconsideration, noting that its “argument fails to demonstrate an error of apprehension, or the need to correct manifest errors of law or fact, requiring the court to reconsider its construction of the ‘disposed as a layer’ term.” Id. at 5. Judge Thynge explained: “As the court noted in its April 1, 2016 Memorandum, the construction adopted by the PTAB, and subsequently this court, is the construction SunPower proposed during the IPR.” Id. According to Judge Thynge, “[t]he court considered SunPower’s arguments to the PTAB, the reasoning of the PTAB, construction of the term by another district court, and its own review of the figures and specification of the ‘788 patent to reach its construction.” Id.
Chief Magistrate Judge Mary Pat Thynge recently considered defendants motion to dismiss Nexeon Limited’s amended complaint alleging direct and indirect infringement of the patents-in-suit. Nexeon Limited v. EaglePicher Technologies, LLC, et al., No. 15-955-RGA-MPT (D. Del. Jul. 26, 2016). Defendants previously moved to dismiss Nexeon’s original complaint prompting Nexeon to file a first amended complaint. Id. at 1. Defendants again moved to dismiss arguing that the amended complaint still fails to adequately state of claim for direct and indirect infringement. Regarding direct infringement, Judge Thynge noted that the complaint was filed prior to the amendment to the Federal Rules and the court “has discretion whether to apply the post-December 1, 2015 direct infringement pleading standard to the amended complaint.” Id. at 9. Judge Thynge decided that, in this case, Form 18 should be used to analyze the sufficiency of Nexeon’s amended complaint; and concluded that the requirements of Form 18 were met. Id. at 9-11. Regarding indirect infringement, Judge Thynge determined that Nexeon adequately pled inducement finding facts in the complaint alleging “specific intent for its customers to infringe and knowledge that the acts constituted infringement.” Id. at 12-14. Judge Thynge determined, however, that defendants’ motion should be granted with respect to Nexeon’s allegations of contributory infringement because Nexeon failed to plead that there are no substantial non-infringing uses. Id. at 14-15.
Magistrate Judge Thynge has issued a Report and Recommendation addressing whether there is an actual case or controversy within the meaning of the Declaratory Judgment Act over a suit in which the plaintiff seeks judgment of a defendant’s willful infringement based on the defendant’s filing of a New Drug Application with the FDA. Both the plaintiff and the defendant in this case filed NDAs with the FDA and neither party’s NDA has been approved. The parties in the case are also parties to an interference in the PTO in which the defendant is the senior party. Clarus Therapeutics, Inc. v. Lipocine Inc., C.A. No. 15-1004-RGA-MPT, Report and Recommendation at 1-5 (D. Del. June 23, 2016).
Given these facts, Judge Thynge found “significant, concrete steps to conduct infringing activity” as well as ripeness for judicial resolution: “Defendant not only has a working product, but also has an NDA before the FDA for review. Additionally, plaintiff notes defendant’s market research, hiring of new sales and marketing personnel, saving for manufacture of commercial quantities of its product, manufacture of launch supplies, and anticipation of the manufacturing agreements. Defendant contends the prerequisite FDA approval for commercialization and entry into the market is uncertain and, if approval is eventually given, commercial launch will not be immediate. While this may be accurate, defendant’s conduct is still indicative of meaningful preparation for the making, launch, and use of [its drug product] that satisfies the immediacy requirement for declaratory judgment jurisdiction.” Id. at 8-11.
Moreover, “the PTAB’s decision in the upcoming Interference will not determine the issue of infringement central to plaintiff’s complaint. Due to the lack of further factual development needed and the PTAB’s inability to hear plaintiff’s infringement claim in the forthcoming Interference, the issue is fit for judicial decision.” Id. at 11. Judge Thynge therefore recommended that the defendant’s motion to dismiss be denied.
Judge Mary Pat Thynge recently recommended the Court grant Illumina’s motion to amend its Answer and Counterclaims to assert inequitable conduct. Cornell University v. Illumina, Inc., No. 10-433-LPS-MPT (D. Del. May 27, 2016). In its motion, Illumina alleged “the applicants and prosecuting attorney of the  patents violated their duty of candor to the PTO by filing a false or misleading 37 C.F.R. § 1.131 declaration” during prosecution regarding the applicants reduction to practice of the claimed methods. Id. at 2. According to Illumina, absent the false or misleading statement, the patents would not have issued. Id. at 2-3.
Judge Thynge found that there was good cause to amend and no undue delay, despite the fact that the deadline to amend pleadings had passed, based on the fact that the underlying facts supporting the amendment were obtained and confirmed during discovery, in particular through deposition testimony. Id. at 10-13. The basis for Cornell’s opposition was futility because the proposed amended pleading did not adequately plead inequitable conduct. Id. at 13. Judge Thynge disagreed, finding that the inequitable conduct allegations were pled with particularity, “identify[ing] the specific who, what, when, where and how of the material misrepresentation or omission committed before the PT0.” Id. at 14 (citing Exergen v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1328 (Fed. Cir. 2009). The “who” identified by Illumina were the specific applicants and prosecution counsel. Id. at 14. “What” information was purportedly misrepresented to the PTO was the date of the applicants’ reduction to practice. Id. at 14-15. The “when” identified was the date of the declaration in question as well as “the actions the PTO took before and after the filing of that declaration.” Id. at 15. Illumina identified the declaration as “where” the misrepresentation occurred, and detailed “how” the declaration and purported misrepresentation resulted in the PTO’s issuance of the patents. Id. at 15-16.
Cornell responded that the proposed pleading failed to plead that the declaration was material and that the persons identified had specific intent to deceive the PTO. Id. at 16. Regarding materiality, Cornell pointed to evidence “inconsistent with defendant’s allegations and reading of the [declaration].” Id. at 18-19. Judge Thynge determined, however, that at the pleading stage “plaintiffs’ evidence is irrelevant and the court can not address the merits of that evidence.” Id. at 19. Judge Thynge concluded, therefore, that Illumina sufficiently alleged that the declaration contained a material false or misleading misrepresentation. Id. Regarding intent to deceive, Cornell argued that “there can be no finding of deceptive intent, nor a reasonable inference of deceptive intent because [the applicants] testified they believed the declaration to be true at the time of filing and that [prosecution counsel] also testified he took steps to ensure that the inventors understood what the declaration, and the specific sentence at issue, meant before they signed the declaration.” Id. at 19-20. Judge Thynge noted that Cornell’s argument again “relies on assertions of fact requiring the court to address the merits of the evidence[.]” Id. at 20. Based on the allegations in the proposed pleading, Judge Thynge determined Illumina adequately pled specific intent. Id. at 20.
Chief Magistrate Judge Mary Pat Thynge recently found that a plaintiff’s motion to compel sought discovery that was disproportional under Rule 26. AVM Technologies, LLC v. Intel Corp., C.A. No. 15-33-RGA/MPT (D. Del. May 3, 2016). Specifically, the plaintiff sought discovery of “products that are not accused and pre-date the accused products because documents created when features were introduced would more likely address their purpose and the problems to be resolved.” Such information, the plaintiff argued, “would refuse Intel’s defense of lack of utility, noninfringing technology and also Intel’s arguments of accidental occurrence.” Intel argued in response that it had produced a substantial number of documents relating to, among others, the immediate predecessor generations of products not accused.” Intel added that the plaintiff’s motion, if granted, would require Intel to search and produce “a range of documents covering over 20 years” relating to “nearly every microprocessor made by Intel.” Judge Thynge focused on the proportionality requirement of Rule 26, and explained that the Court is required to “evaluate the parties’ arguments and reasoning for or against the requested production on the bases of the production sought, the other production to date, the degree of the requested production’s relevance, and the burdens imposed on the party from whom the production is requested.” In post-hearing submissions, the plaintiff accepted Intel’s compromise offer to search a high level database, and to then search across hits from that database using the search terms requested by the plaintiff. As a result, Judge Thynge denied the plaintiff’s motion but ordered Intel to perform the agreed upon searches.
In Sunpower Corporation v. PanelClaw, Inc., C.A. No. 12-1633-MPT (D. Del. Apr. 1, 2016), the parties had stipulated to Defendant’s filing of an early motion for summary judgment on limited issues. Id. at 2. To that end, Defendant moved for summary judgment of non-infringement on one patent and invalidity of another patent under Section 112 and/or Section 101. Chief Magistrate Judge Mary Pat Thynge granted the motion as to non-infringement, but denied the motion as to invalidity.
Defendant based its non-infringement defense on the PTAB’s construction of a certain term during the inter partes review. As this patent was expired, the PTAB did not adopt the broadest reasonable construction, instead applying a standard of review similar to that of district courts. Id. at 9-10. The Court found the PTAB’s construction “well-reasoned and persuasive” and adopted it, see id. at 13-14, and then concluded that Defendant’s accused products did not infringe one of the asserted patents, rejecting Plaintiff’s position that it was too early in the case to determine infringement where Defendant’s evidence of non-infringement was taken from Plaintiff’s own infringement contentions. See id. at 15.
Defendant also argued that the second patent-in-suit was invalid as indefinite, citing “certain statements and conclusion the PTAB made [regarding anticipation] in its  IPR decision, and the testimony of [Plaintiff’s] expert . . . as part of that IPR.” Id. at 17. But the Court agreed that Defendant had not met its burden based on the current record, noting that it was not bound by the PTAB’s discussion and that another district court had successfully construed the portion of the claim that Defendant argued was indefinite. Id. at 19-20. As to Defendant’s enablement, written description and/or inoperability, the Court concluded that its “conclusory” attorney arguments were insufficient. See id. at 24-25.
Chief Magistrate Judge Mary Pat Thynge recently issued a Report and Recommendation regarding defendant Amazon.com, Inc.’s motion for summary judgment of non-infringement. Hand Held Products, Inc. v. Amazon.com, Inc., et al., C.A. No. 12-768-RGA-MPT (D. Del. Jan. 21, 2016). The accused products at issue are Amazon mobile apps used by consumers to find and purchase Amazon products from their smartphones. Id. at 5. “One way the Amazon Apps can be used to find a product on Amazon is by scanning the barcode of the product.” Id. This barcode scanning ability is the feature accused of infringing the patent-in-suit. Id. Based on the Court’s claim construction, Amazon argued that “it is undisputed that a user of the Accused Apps cannot take the requisite snapshot by pressing a shutter button, setting a timer, or in any other manner.” Id. at 8 (emphasis in original). The Court agreed. “[T]he Accused Apps provide no mechanism by which a user selects an instant in time to capture a barcode image and, therefore, the Accused Apps do not infringe the asserted claims of the [patent-in-suit].” Id. (emphasis in original).
UPDATE: On March 31, 2016, Judge Andrews overruled the plaintiff’s objections to Chief Magistrate Judge Thynge’s report and recommendation, adopted it without modification, and granted summary judgment of non-infringement. Hand Held Products, Inc. v. Amazon.com, Inc., et al., C.A. No. 12-768-RGA-MPT (D. Del. Mar. 31, 2016)
In Verisign, Inc. v. XYZ.com, LLC, et al., C.A. No. 15-mc-175-RGA-MPT (D. Del. Dec. 4, 2015), Chief Magistrate Judge Mary Pat Thynge considered a motion to quash subpoenas. The plaintiff in a false advertising action in the Eastern District of Virginia had served subpoenas on two non-parties, requesting documents related to the sale of a top-level domain name to defendants, agreements and communications related to this domain name and the plaintiff, and communications referencing other domain names. See id. at 3 (listing requested categories of documents).
The Court first found that defendants did have standing to challenge the subpoena, where the non-parties had not objected to the subpoena, explaining that while “[c]ourts have held that parties . . . do not have standing to a subpoena if they are not the target of the subpoena . . . other courts have found that parties who claim privilege or a personal right in the subpoenaed information from a nonparty have standing to object.” Id. at 4-5. Here, defendants alleged that the subpoenas requested “documents between defendants and KBE, who has worked closely with defendants on business transactions, and require the nonparties to disclose confidential information and trade secrets. These representations demonstrate sufficient interest in the requested documents to determine defendants’ standing.” Id. at 5.
The Court also concluded that plaintiff had not provided a reasonable time for response to the subpoenas. Although the non-parties had agreed to a short production turnaround period (five days from service), “the time allotted for compliance was unreasonable and effectively gave defendants one business day [due to holidays] and a total of five days to seek protection of documents, in which they had a sufficient interest.” Id. at 6.
Ultimately, the Court did order production of the subpoenaed documents over defendants’ objections that the requested information was irrelevant to the case in Virginia, that the documents could have been sought through defendants, and that the subpoenas requested proprietary information from whose production defendants would suffer irreparable harm. The Court did observe that it “question[ed] plaintiff’s need to subpoena [certain requested categories] when production of these documents was potentially obtainable from defendants. If any issue arose regarding such production, it then could have been addressed by the court having more familiarity with the underlying matter. To address defendants’ concerns, however, production of the above categories is ordered under the ‘Attorney’s Eyes Only’ designation provided for in the protective order [in the underlying action]. [However], as [one category of] requested documents, the court [found] there was no evidence that these documents contain trade secrets or confidential information of defendants.” Id. at 11.
Chief Magistrate Judge Thynge recently issued a report and recommendation in which she recommended denial of plaintiffs Astellas Pharma and Celgene Corp.’s motions to dismiss and motions to strike counterclaims, each of which she found to have been adequately plead. The challenged counterclaims and defenses were directed to (1) an improper continuation application under § 102(b) without which, the defendant alleged, the patents-in-suit would not have issued, (2) an improper priority date under § 120 due to failure to name the “true inventors” in the earlier application and an effort to amend inventorship that would result in no common inventors, and (3) improper inventorship under § 256 because the original patent was disclaimed under § 253 before any effort to correct inventorship, which Judge Thynge found to involve “sufficient facts to support improper inventorship, which warrants discovery on this issue.” Celgene Corp., et al. v. Fresenius Kabi USA, LLC, C.A. No. 14-571-RGA, Report and Recommendation at 6-8 (D. Del. Dec. 7, 2015).
Judge Thynge also rejected challenges to the defendant’s corresponding affirmative defenses, which were “neither improperly plead nor redundant. Affirmative defenses differ from counterclaims and are governed by Fed. R. Civ. P. 8, rather than Rule 13. Generally affirmative defenses must be initially pled or be subject to waiver of the defense. A counterclaim is governed by Rule 13. The party raising either an affirmative defense or a counterclaim bears the burden of proof. Counterclaims and affirmative defenses that raise the similar contentions are not improper.” Id. at 8. Additionally, because “[m]otions to strike under Rule 12(f) require a showing of prejudice” and the plaintiffs had not “alleged nor demonstrated any prejudice due to the analogous nature between defendants’ counterclaims and affirmative defenses,” Rule 12 provided no basis to strike the affirmative defenses. Id.