Articles Posted in Richard G. Andrews

Published on:

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.

Published on:

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)

 

Published on:

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.

Continue reading

Published on:

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.

Continue reading

Published on:

In a recent Memorandum Order, Judge Richard G. Andrews denied defendant’s (“Sandoz”) motion to dismiss the case for lack of subject matter jurisdiction. Sanofi v. Lupin Atlantis Holdings, SA, C.A. No. 14-415-RGA (D. Del. Jan. 26, 2017). As Judge Andrews explained, Sandoz made a “Paragraph IV” certification in relation to plaintiff Sanofi’s ’900 patent on February 17, 2016. On October 28, 2016, Sandoz changed the Paragraph IV certification to a “Paragraph III” certification. As Judge Andrews explained, a “Paragraph IV certification creates subject matter jurisdiction,” but a Paragraph III certification does not create subject matter jurisdiction “because it represents that the generic will not market its product before the relevant patents expire.” Id. at 2. According to Judge Andrews, the “precise issue raised here is whether a generic who has filed a Paragraph IV certification divests the district court of jurisdiction by the mere act of converting the Paragraph IV certification to a Paragraph III certification.” Id.

In this instance, Judge Andrews found that such conversion did not divest the court of subject matter jurisdiction. First, Judge Andrews found that “I am not deprived of jurisdiction under 35 U.S.C. § 271(e)(2) and 35 U.S.C. § 1338(a) because it is sufficient that the case was initially certified under Paragraph IV.” Id. at 2-3. Judge Andrews also noted that “[i]t . . . appears that 28 U.S.C. § 2201 may confer jurisdiction.” Id. at 3. Second, Judge Andrews concluded that Sandoz’s mootness argument did not have any merit, finding that in this case there was a “reasonable expectation that the wrong will be repeated.” Id. at 3-5. Indeed, Sandoz conceded that it could “convert its Paragraph III certification back to a Paragraph IV at some future date under certain circumstances.” Id. at 3. Further, Judge Andrews noted that “Sanofi makes an adequately supported argument that Sandoz would reconvert back to Paragraph IV.”  Id. at 4. In reaching this conclusion, Judge Andrews distinguished Ferring B.V. Watson Labs, Inc.-Fla., 764 F.3d 1382 (Fed. Cir. 2014) and AstraZeneca AB v. Anchen Pharms Inc., 2014 WL 2611488 (D.N.J. June 11, 2014). Id. at 3-5.

Sanofi v. Lupin Atlantis Holdings, SA, C.A. No. 14-415-RGA (D. Del. Jan. 26, 2017).

Published on:

In a series of related actions, Judge Richard G. Andrews denied Defendants’ motion to exclude portions of the opinion of Plaintiff’s damages expert, following oral argument and a Daubert hearing on the matter. Delaware Display Group LLC, et al. v. Lenovo Group Ltd., et al., C.A. No. 13-2108-RGA (D. Del. Jan. 18, 2017). Defendants argued that the expert failed to properly apportion between patented and unpatented features, that he improperly assigned 100% of his incremental profit to the licensor, and that his royalty rate was improper because it was for a portfolio license where only two patents were asserted in the case. Id. at 6.

As to apportionment, the Court was satisfied from the expert’s testimony at the Daubert hearing that his methodology for apportionment was reliable, “extensively analyz[ing] the patented features and [taking] out what he believed were unpatented features,” and Defendants’ expert’s approach to apportionment did not appear to be “substantially different.” Id. The Court reached the same conclusion as to the expert’s incremental profit methodology, finding it “logical,” not applying an improper “rule of thumb,” and apparently consistent with the approach of the expert of one Defendant. Id. Finally, the expert’s portfolio license methodology was sufficiently reliable. “His belief that during the hypothetical negotiation, one could get a license to both patents without there being royalty stacking, is logical. (Tr. 60:23-61:21, 103:6-104:7). His approach is consistent with that of [one of the Defendant’s experts]. There is no impermissible royalty stacking.” Id. at 6-7.

Having concluded that Defendants’ concerns with the expert went to the weight, rather than admissibility, of the testimony, the Court denied the Daubert motion.

Published on:

In a recent Order, Judge Richard G. Andrews denied plaintiff’s motions seeking to lift the stays in a number of related cases and for leave to file an amended complaint. Arunachalam v. Citizens Financial Group Inc., C.A. Nos. 12-355, 13-1812, 14-91, 14-373-RGA (D. Del. Jan. 12, 2017). Judge Andrews explained that “[b] y the proposed amended complaint, Plaintiff seeks to assert patent 7,340,506 against each Defendant.” Id. at 1. Judge Andrews noted that a CBM trial was instituted on U.S. Patent No. 7,340,506 on November 15, 2016. Id.

Denying plaintiff’s motion to lift the stay and motion for leave to file an amended complaint, Judge Andrews observed:

Maintaining the stay while the PTAB decides the validity challenges raised in the CBM trial of the ‘506 claims represents the proper balancing of the four statutory factors that the court must consider. Since Plaintiff’s other asserted patents have been invalidated, the ‘506 patent is the only patent really at issue in these cases. Resolution of its validity before the PTAB (and Federal Circuit, if there is an appeal) will simplify the issues in the case, and reduce the burden of litigation on the parties and on the court. There have been no proceedings in this case on the ‘506 patent. Thus, three of the four factors clearly favor maintaining the stay. The fourth factor is not so clear based on the present record, but even assuming it favors Plaintiff, the balancing of the factors overall is clearly in favor of maintaining the stay.

Published on:

Judge Andrews recently entered an order denying a final judgment under Rule 54(b) relating to His Honor’s finding of lack of patentable subject matter. Judge Andrews agreed “with Defendant’s argument that Plaintiff’s ‘litigation approach is the definition of piecemeal’” because the Section 101 finding applied to only one out of seven patents-in-suit. As Judge Andrews explained, “Plaintiff says there is nothing to be gained by not allowing Plaintiff an appeal now, but that is not so. Most patent cases, like most other cases, settle. In all likelihood, if there is no appeal now, the Federal Circuit will never have to hear an appeal from this case. Piecemeal appeals tax the resources of the courts of appeals. To me, that is sufficient reason not to enter a Rule 54(b) judgment in this case.” Sound View Innovations, LLC v. Facebook, Inc., C.A. No. 16-116-RGA, Order at 1-2 (D. Del. Jan. 17, 2017).

Continue reading

Published on:

In TQ Delta LLC v. Pace PLC, et al., C.A. No. 13-1835-RGA (D. Del. Jan. 5, 2017), Judge Richard G. Andrews recently resolved the parties’ dispute with regard to the use of conflicts counsel for Plaintiff, which had been ordered by the Court in connection with taking certain third-party discovery. Having summarized the few relevant cases on this topic cited by the parties, the Court ordered that conflicts counsel was to be walled off from Plaintiff’s lead counsel, but not its Delaware counsel. Among other parameters, conflicts counsel could receive unredacted filings, discovery served to date, infringement and validity contentions, and Plaintiff’s expert opinions, but conflicts counsel could not receive “any tutorial” from the lead counsel and would not receive any draft discovery directed to the third party. Conflicts counsel could provide discovery from the third party to Delaware counsel, who could then provide the discovery to lead counsel.

The Court ruled that this wall would continue at least through the close of discovery, but may need to be “relaxed at some point before trial,” the details to be determined at a later date. However, any examination of the third party’s witnesses at trial would need to be done by conflicts counsel.

TQ Delta LLC v. Pace PLC, et al., C.A. No. 13-1835-RGA (D. Del. Jan. 5, 2017)

Published on:

Judge Richard G. Andrews recently denied, in large part, a motion to redact the transcript of a pretrial conference.  Delaware Display Group LLC v. LG Elecs. Inc., C.A. No. 13-2109 (D. Del. Dec. 22, 2016).  The Court explained that “[s]imply because the parties have designated the information as ‘restricted – attorneys’ eyes only,’ or with some lesser designation under a protective order is almost irrelevant to the present issue, that is, whether the information should be redacted from a judicial transcript.”  That is because once the information is “disclosed in a judicial proceeding, it is in the public interest to be able to understand the proceedings before a judge, and redaction of the transcript hinders that public interest.”  The Court acknowledged that the interest in preserving confidentiality of commercially sensitive information will at time justify redacting such information from the public record.  In this case, Judge Andrews found no justification to redact references in the transcript to “license agreements, settlement agreements, and indemnification agreements . . . with little specificity other than the identification of the parties to the agreements.”  The Court did, however, find that reference to “two numbers” was appropriate.

Continue reading

Contact Information