Chief Magistrate Judge Mary Pat Thynge recently issued a report recommending that a motion to dismiss a claim for joint infringement be granted. Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, et al., C.A. No. 14-1006-RGA-MPT (D. Del. May 13, 2015). Judge Thynge explained that “to survive a motion to dismiss the claim of joint infringement, a plaintiff must plead facts sufficient to allow a reasonable inference that various parties perform all of the claimed steps; and one party exercises the requisite ‘direction or control,’ such that performance of every step is attributable to the controlling party.” Id. at 8. Judge Thynge found that the plaintiff’s allegations were sufficient to support an inference that all steps claimed in the patents-in-suit were carried out by defendants and various third parties. However, “[h]ere, plaintiff sets forth an unsupported proposition that Comcast and NBCU control or direct the third parties, despite conceding the issue of control and direction turns on whether the third parties had discretion to perform the claim limitations.” Id. at 11. In this case, Judge Thynge found that “plaintiff cannot plausibly allege the third parties were contractually obligated to perform all of the steps enumerated in plaintiff’s patents because the terms of the contract between defendants and the third parties are unknown to plaintiff.” Id. “Thus, it is merely possible—rather than plausible—that defendants control and direct the third parties.” Id. at 12.
Chief Magistrate Judge Mary Pat Thynge recently issued a report recommending the denial of a plaintiff’s motion which sought to accelerate an appeal of the Court’s ruling that Claims 113 and 114 of U.S. Patent No. 7,783,299 are invalid. TruePostition, Inc. v. Polaris Wireless, Inc., C.A. No. 12-646-RGA-MPT (D. Del. Mar. 3, 2015). Claims 113 and 114 previously had been found indefinite after a Markman hearing, but the parties were still litigating factual issues relating to a third claim, Claim 98. With respect to Rule 54(b) certification, Judge Thynge explained, “the three asserted claims must be viewed as part of a single action for relief based on infringement. Claims 113 and 114 have been resolved; Claim 98 has not. As a result, the single right of action for relief based on infringement of the ‘299 Patent is not final within the meaning of Rule 54(b).” Id. at 8. With respect to voluntary dismissal without prejudice under Rule 41(a)(2) of the remaining Claim 98 infringement claim, Magistrate Judge Thynge viewed such a dismissal as unwarranted given that the parties already had expended significant amounts of their time, and the Court’s time, on issues relating to the Claim 98. Id. at 13-14. As a result, the plaintiff’s motion was denied.
In Hand Held Products, Inc. v. Amazon.com, Inc., et al., C.A. No. 12-768-RGA-MPT (D. Del. June 24, 2014), Magistrate Judge Mary Pat Thynge construed several terms of U.S. Patent No. 6,015,088, entitled “Decoding of Real Time Video Imaging.” For a number of the disputed claims, the Court analyzed defendants’ arguments for indefiniteness under the standard recently revised by the Supreme Court in Nautilus, Inc. v. Biosig Instruments, Inc., No. 13-369, 2014 WL 2440536 (U.S. June 2, 2014) and concluded that four means-plus-function terms (“processing means for processing an imaged target,” “display means for continually displaying a real-time image of said target from said imaging and processing means,” “image capture means for selectively capturing at least one image displayed by said display means,” and “output means for outputting the decoded bar-coded information to said display means”) did not adequately disclose a structure and thus were indefinite. The Report and Recommendation also addressed whether the steps of the patent’s method claims have to be performed in the recited order, concluding that parts did and parts did not. See id. at 10-13.
The Court construed the following terms:
“having at least one of optically readable and bar coded information contained thereupon”; “having at least one of optically readable and bar coded information contained therein”
“continually displaying a real time image of said target”
“selectively capturing and storing an instantaneous image of said target into the memory of a computer”; “selectively capturing . . . an instantaneous image”; “selectively capturing at least one image displayed by said display means”
“bar-coded information”; “bar-code readable information”
“decoding bar-code information if bar-code readable information is contained on said instantaneous stored image”
“imaging means for imaging a target of interest, said target having at least one of optically readable and bar-coded information contained therein”
“target . . . therein”
“scanning means for scanning said at least one captured image and for determining the presence of bar-coded information in the field of view of said at least one captured image”
“decoding means for decoding any bar-coded information detected by said scanning means”
“discrimination means for discriminating the type of bar-coded information present in said at least one captured image”
Among the flurry of pre-trial activity recently in the Magnetar Technologies case, which involves patents directed toward magnetic braking systems used in amusement park rides, was a report and recommendation by Magistrate Judge Thynge in which she granted a motion to exclude the plaintiffs’ infringement expert, Mark Hanlon. Magnetar Techs. Corp., et al. v. Six Flags Theme Parks, Inc., et al., C.A. No. 07-127-LPS-MPT, Report and Recommendation at 1 (D. Del. Feb. 7, 2014).
The defendants first contended in their motion that Mr. Hanlon lacked any specialized knowledge to support his expert opinions because he had not identified any experience with the technology of the patents-in-suit and had admitted multiple times during his deposition that he was not an expert. According to the defendants, Mr. Hanlon’s knowledge was “only general in nature” and that plaintiffs could not explain how Mr. Hanlon’s various work experiences qualified him as an expert in the technology of the patents-in-suit. The plaintiffs responded that the specific knowledge defendants would require – the design of magnetic arrays and the theory of magnetic brakes – was not necessary because Mr. Hanlon had experience as an expert in the “design and structure of amusement park rides” and “the mounting of magnetic brakes.” Id. at 2-4. Judge Thynge found that Mr. Hanlon had “the necessary skill and knowledge as evidenced from his previously described past work experience, his curriculum vitae, his educational background, and his previous involvement in eight magnet eddy braking projects,” which gave him “the qualifications to testify about magnetic brakes, and is capable of identifying the components of a magnetic brake assembly.” Id. at 10-11. Mr. Hanlon was not qualified, however, to testify as to the “theory of operation or the design of magnetic brakes.” Id. at 11.
Second, the defendants requested the Mr. Hanlon’s infringement opinion be excluded because it was “completely unsupported and ungrounded in fact” because it failed to “identify how any accused ride meets the limitations of any asserted claim.” The plaintiffs responded that Mr. Hanlon’s analysis was adequately based on data, principles, specific identified documents, and his own personal knowledge and experience. Id. at 4-5. Here, Judge Thynge found broadly that Mr. Hanlon’s opinion “lack[ed] the proper grounds for his conclusions, because it [was] void of the necessary analysis for comparing each element of the claim to the accused product.” Id. at 11. Judge Thynge explained that Mr. Hanlon’s opinions generally simply “state[ed] the claim limitations followed by general references to several documents and [a] deposition . . . . Nowhere does Hanlon explain why the documents or deposition are relevant to the technology involved or to [the asserted claims], how they show why [the asserted claims] cover the accused product, or how they demonstrate or provide the required analysis of the claim elements to the accused product.” Id. at 16. Judge Thynge concluded: “Ipse dixit is defined as ‘something asserted but not proved,’ which exemplifies Hanlon’s expert report. Hanlon only provides data and a conclusion, with the chasm between not bridged by any analysis. Without an explanation for his reliance on and the relevance of the cited documents, the court cannot find any good grounds for his conclusions. Therefore, Hanlon’s expert report is stricken.” Id. at 22.
In Magnetar Technologies Corp., et al. v. Six Flags Theme Parks, Inc., et al., C.A. No. 07-127-LPS-MPT (D. Del. Feb. 7, 2014), Magistrate Judge Mary Pat Thynge issued a report and recommendation for the parties’ motions for summary judgment of infringement, non-infringement, and invalidity. Plaintiffs alleged that defendants’ roller coasters and other amusement park rides infringed the two patents-in-suit (the “‘125 Patent” and the “‘237 Patent”).
As to the ‘125 Patent, the Court granted defendants’ motion for summary judgment of invalidity, accepting the majority of defendants’ arguments. First, the Court concluded that the only asserted claim included an error that rendered it fatally indefinite under Section 112. This claim referenced both “a track having two parallel rails” as well as “magnet assemblies mounted between said tracks.” Id. at 4 (emphasis added). Defendants argued that “the plain error is that the magnets cannot be mounted between plural ‘tracks,’ because there is only one track recited.” Id. The Court agreed with the argument that “there are purportedly at least two reasonable ways to correct the error, which would result in corrected claims of different scopes.” Id. at 5. Therefore, “the appropriate correction would be subject to reasonable debate” and the claim was invalid as being insolubly ambiguous. Id. at 9. Second, the Court concluded that the patent failed to name an inventor. See id. at 9-17. Third, defendants argued that the patent was invalid under Section 102’s on-sale bar, pointing to alleged sales to United Airlines and to the City of Denver. Id. at 19. The Court agreed that plaintiffs had in fact made a commercial offer of sale to United Airlines, even though no fixed price had been set. Id. at 27-29. It denied summary judgment as to the alleged sale to the City of Denver, however, finding insufficient evidence. Id. at 29. Finally, the Court concluded that the asserted claim was obvious in light of various combinations of prior art. See id. at 29-38.
The Court denied plaintiffs’ motion for summary judgment of infringement of the ‘125 Patent by certain accused roller coaster rides. Plaintiffs argued that defendants had offered no facts as to why these rides did not infringe, citing, inter alia, defendants’ lack of substantive non-infringement contentions. Id. at 40-41; 42-43. In response, defendants argued that plaintiffs had never articulated their infringement contentions during discovery, pointing to plaintiffs’ interrogatory responses as well as their infringement expert’s report, and had raised new infringement arguments for the first time in their summary judgment opening brief. Id. at 41-44. The Court agreed that “by not disclosing the specific evidentiary support for their infringement contentions until this time, defendants have been deprived of a meaningful opportunity to respond to that evidence” and therefore denied plaintiffs’ motion for summary judgment. Id. at 44. Notably, in a separate opinion issued on the same day (D.I. 404), the Court had recommended striking the report of plaintiff’s infringement expert, and therefore did not consider that report. Id. at 40.
The Court granted-in-part defendants’ motion for non-infringement of the ‘125 Patent with respect to different accused roller coaster rides. Id. at 38. Defendant articulated three different categories of these rides, arguing that each category did not infringe. The Court granted the motion as to one category because it had struck plaintiffs’ infringement expert report, and there was no other testimony to support infringement. Id. at 49. As to the second category, defendants based their non-infringement argument on a certain interpretation of a term not construed by the Court. Id. at 49-50. The Court found that questions of fact existed as to the claim interpretation and therefore denied the motion as to this category of rides. Id. at 51. As to the third and final category, the Court granted summary judgment as to two of the three rides in this category, id. at 53-54, and denied summary judgment on the third, finding that genuine issues of material fact existed, id. at 54-55.
As to the ‘237 Patent, the Court granted defendants’ motion as to non-infringement and denied their motion as to invalidity of this patent. As to non-infringement, the Court found that defendants had shown that the accused products did not meet all limitations of the asserted claims. See id. at 70-74. As to invalidity, defendants argued that this patent failed to meet the written description requirement if the accused claims were read to cover the accused products, explaining that the “broad construction [of a term] plaintiffs successfully argued for is not supported by the specification.” Id. at 58-59. The Court found that defendants had not met their burden in this respect, and denied the motion. Id. at 59-60. The Court also found that questions of fact existed as to whether the patent was obvious. Id. at 64-65.
Magistrate Judge Thynge recently recommended the denial of the defendants’ motion for summary judgment based on failure to mark and laches. Magnetar Technologies Corp. v. Six Flags Theme Parks Inc., Civ. No. 07-127-LPS-MPT (D. Del. Feb. 7, 2014). The plaintiffs were the assignee and its field-limited exclusive licensee of U.S. Patent No. 5,277,125. With respect to marking, the defendants argued that the original patent owner did not comply with the marking statute, 35 U.S.C § 287(a), because it failed to mark a baggage claim system (the “IABHS”) it sold to the Denver International Airport in the early 1990s, and then never corrected that alleged failure during periodic servicing and provisioning of parts for the IABHS over the years. As a result, the defendants argued that the plaintiffs could not recover any damages relating to infringement before 2007 when the defendants received actual notice of the patent-at-issue and the plaintiffs’ infringement claims. The plaintiffs disagreed, and argued that the original patent owner sold and installed the IABHS before the issuance of the patent-at-issue, such that marking was not required under § 287(a), and further that the marking statute imposed no requirement to mark the IABHS after the issuance of the patent during the course of servicing and the provision of parts.
Magistrate Judge Thynge agreed with the plaintiffs that if the IABHS was sold and installed before the issuance of the ‘125 patent, marking was not required at that time or at any subsequent time during the course of servicing. However, Judge Thynge found that the record was not clear with respect to whether the IABHS was sold and installed prior to or subsequent to the issuance of the patent. Id. at 6. As a result, if a jury were to find that “the [IABHS] was made or sold subsequent to the issuance of the patent, damages may be limited accordingly” under § 287(a). Id. at 13.
Judge Thynge also recommended denial of the defendants’ laches motion, finding genuine issues of material fact existed regarding whether the original patent owner or the plaintiffs had constructive knowledge of the allegedly infringing roller coasters (especially given that neither plaintiff worked in the same field as the defendants), and whether the roller coasters’ infringing components were “open and notorious to the public.” Id. at 21-22. Based on this and other considerations, Judge Thynge found that in this case “laches is best considered based upon a fully developed record.” Id. at 26.
Magistrate Judge Mary Pat Thynge recently considered defendants’ motion to exclude the testimony of Magnetar’s lay opinion witness — the founder and President of Magnetar, and named inventor on one of the patents-in-suit. Magnetar Techs. Corp., et al. v. Six Flags Theme Parks Inc., et al., C.A. No. 07-127-LPS-MPT (D. Del. Feb. 7, 2014). The witness had a bachelor’s degree in mechanical engineering and 43 years of experience working as an engineer. Id. at 2. Magnetar disclosed the witness with a list of 14 possible subject areas for his testimony. Defendants objected to four categories:
(1) relationship of Magnetar’s brakes to claim 3 of the ‘125 patent; (2) advantages of magnetic brakes over other types of brakes, including friction brakes; (3) importance of roller coasters to amusement park rides; and, (4) importance of magnetic brakes in the construction of roller coasters.
Id. at 5.
Judge Thyne analyzed the relevance of the proffered testimony under the Georgia-Pacific factors. Judge Thynge found the witness’s testimony relevant to factors one through three, seven and fifteen because his testimony regarding why he sought a license and the established royalty rate is relevent to a hypothetical negotiation. Id. at 6-9. Judge Thynge found, however, that the witness’s testimony was irrelevant under factors nine and ten. Id. at. 10-11. His testimony related to “the advantages of magnetic brakes over other types of brakes in commercial rides,” rather than the advantages of the patents-in-suit compared to other technology. Id. at 10 Because factor nine requires “a nexus . . . between magnetic brakes in general and the patented technology in the instant matter[,]” the witness’s testimony was irrelevant. Id. Judge Thynge also found the witness’s testimony irrelevant under factor eight, which requires evidence of the established profitability, commercial success and popularity of the patented product. Id. at 12. Likewise, the witness’s testimony was irrelevant under factor thirteen for failing to offer evidence “attributing revenue to non-patented elements of roller coasters.” Id. at 13.
Judge Thynge then analyzed whether the relevant categories of the witness’s testimony was appropriate lay opinion testimony under Federal Rule of Evidence 701. Id. at 17. Rule 701(a) requires the witness to have first-hand knowledge such that “the witness’s perception provide[s] a truly rational basis for his or her opinion.” Id. at 17-18. Judge Thynge found the witness qualifed under Rule 701(a) because he had “more than mere first-hand knowledge of the relationship of Magnetar’s brakes to claim 3 of the [patent-in-suit]–he directly participated in negotiations of the license agreement between Magnetar and G&T.” Id. Judge Thynge also found the witness qualified under Rule 701(b). The witness had “sufficient personal knowledge of the [patent-in-suit], Magnetar’s brakes, and the license agreement between Magnetar and G&T.” Id. at 19.
Magistrate Judge Mary Pat Thynge recently issued a report recommending the proper construction of claim terms relating to geolocation systems. TruePosition, Inc. v. Polaris Wireless, Inc., C.A. No. 12-646-RGA-MPT (D. Del. Feb. 4, 2014). The following claim terms of U.S. Patent No. 7,783,299 were construed by Judge Thynge:
“means for monitoring” (as used in claim 113 and as used in claim 114);
“means for detecting” (as used in claim 113 and as used in claim 114);
“means for initiating” (as used in claim 113 and as used in claim 114); and
“in response” (as used in each of claims 98, 113, and 114).
Magistrate Judge Thynge found that the ’299 patent “does not disclose an algorithm to perform the “means for detecting” function in claims 113 and 114 and, as a result, recommended that those claims be found invalid as indefinite under 35 U.S.C. § 112, ¶2.
Magistrate Judge Mary Pat Thynge recently recommended that defendant First Midwest Bancorp’s (“FMBI”) motion to dismiss be granted in part. Strikeforce Technologies, Inc. v. Phonefactor, Inc., et al., C.A. No. 13-490-RGA-MPT, Report and Recommendation (D. Del. Nov. 13, 2013), amended, Report and Recommendation (Amended) (D. Del. Nov. 14, 2013) (minor corrections to original) (“Amended Report”).
Plaintiff argued that FMBI’s subsidiary, First Midwest Bank, infringed its patent and that FMBI was liable under both alter ego and agency theories. Amended Report at 3. The Court concluded that plaintiff had not sufficiently alleged facts to establish an alter ego theory of liability, but that it had alleged enough facts to support “pure agency liability.” Id. at 7.
As to alter ego, the Court explained that the
allegations regarding the relationship between FMBI and First Midwest Bank establish that the two entities are commingled. FMBI and First Midwest Bank have a nearly identical board of officers and directors; the majority of FMBI’s assets are attributable to First Midwest Bank; both corporations employ the same governance polices [sic] and procedures; both corporations operate from the same location in Illinois. While these allegations meet the first element [of alter ego liability], StrikeForce has not alleged any facts suggesting fraud or injustice in FMBI’s use of the corporate form [i.e., the required second element to establish alter ego liability].
Id. at 8. Plaintiff argued that fraud was not required to be pled under the alter ego theory and that the theory was “muddled, and the cases outside the realm of patent infringement cannot be applied wholesale.” Id. at 9. The Court recognized that, under Third Circuit law, a plaintiff need not prove actual fraud and may allege facts “suggest[ing] fraud or injustice,” but here, plaintiff did not address any factors that suggested “fraud or other similar injustice in the structure of FMBI and First Midwest Bank. Contrary to [plaintiff’s] first argument, fraud or some other similar injustice is a required element for finding alter ego liability.” Id. at 9-10. Plaintiff also “suggest[ed] that if allowed to conduct discovery, it would provide this court all the factors necessary to conduct a meaningful alter ago analysis,” but the Court found that the argument “undermin[ed] the purpose of the well-pled complaint requirement.” Id. at 10.
As to the agency theory, the Court concluded that plaintiff’s allegations “reasonably support the inference that FMBI directed First Midwest Bank’s act of infringement,” citing similar facts quoted above relating to the entities’ relationship to conclude that the allegations “suggest a close connection in the operations of the two companies, making it reasonable to infer FMBI authorized or directed” activities related to plaintiff’s infringement allegations. Id. at 11. The Court also explained that plaintiff need not allege facts supporting fraud or injustice under a “pure agency” theory; it would be required to do so under an “agency akin to an alter ego theory.” Id. at 12.
FMBI also argued that plaintiff did not allege “enough plausible facts to suggest that discovery would uncover sufficient evidence to support either alter ego or agency liability. FMBI urges the court dismiss the claims against it because having a regulated wholly-owned subsidiary should not subject a parent corporation to discovery expenses based on mere allegations of a typical corporate structure.” Id. at 13. While recognizing “the burden of litigation,” the Court concluded that plaintiff’s agency claim was plausible under Rule 12(b)(6) and should not be dismissed. Id. at 13-14.
Magistrate Judge Mary Pat Thynge recently recommended a denial of a defendant’s motion to amend its answer to add a counterclaim for inequitable conduct. Pfizer Inc. v. Sandoz Inc., C.A. No. 12-654-GMS/MPT (D. Del. Nov. 4, 2013). As Judge Thynge explained, “[i]n considering whether the grant the motion under Rule 15(a), the court considers . . . undue delay by the movant, unfair prejudice to the nonmovant, improper purpose and futility. The movant, however, must also satisfy the good cause requirement of Rule 16(b) by demonstrating that the amendment could not have been reasonably sought in a timely manner despite diligence.” Id. at 7-8.
With respect to the defendant’s six month delay in filing a motion to amend, Judge Thynge found that the “timing of defendant’s motion . . . strongly suggests the delay is improper. Defendant had the requisite documents in its possession, at the latest, within a few weeks of the deadline to amend pleadings. In addition, defendant delayed four months from the final deposition to file the present motion.” Id. at 10. Accordingly, Judge Thynge found undue delay for purposes of Rule 15(a). Judge Thynge added that there was no good cause for the delay under Rule 16(b), because all that the defendant provided was the “bare assertion” that the record was “tortuous” as justification for its delay. Id. at 10-11. Further, Judge Thynge found that amendment would be futile, because the proposed amended counterclaim did not meet Rule 9(b)’s pleading requirements for inequitable conduct. Finally, addressing the prejudice an amendment would cause the plaintiff, Judge Thynge explained that the prejudice “is the significantly compressed time frame for developing a response to the [inequitable conduct] allegations prior to trial, while defendant used approximately fourteen months to develop its inequitable conduct defense.” Id. at 12.