In a memorandum order issued yesterday, Judge Sue L. Robinson granted defendants’ motion to amend to add the defense of improper inventorship. Intellectual Ventures I LLC v. Toshiba Corp. et al., Civ. No. 13-453-SLR (D. Del. Sept. 7, 2016). The motion was filed shortly before the close of expert discovery and following the deposition of a third party who, defendants argued, should have been listed as an inventor of U.S. Patent No. 5,938,742. The Court granted the motion even though it was filed “17 years after the ‘742 patent issued, and more than one year after the court-ordered deadline for amended pleadings[,]” and with trial set to begin in January 2017. Id. at 4. Judge Robinson explained, “[b]ecause the court is not prepared at this juncture to evaluate the quality or quantity of evidence defendants cite in their papers, and because the court recognizes the importance of proper inventorship, the motion to amend shall be granted.” Id. at 5. However, Judge Robinson added that due to the “extraordinary delay between issuance of the ‘742 patent and the assertion of improper inventorship, as well as the fact that, in most instances, the remedy for improper inventorship is a certificate of correction, not invalidation[,]” “the court will bifurcate the newly-added defense to allow for additional discovery and a separate motion practice and trial[.]” Id.
Judge Sue L. Robinson recently issued an order holding that, absent the parties’ consensual resolution to the dispute over the sufficiency of defendants’ production, the Court will “use an adverse inference jury instruction regarding infringement[.]” Intellectual Ventures I LLC v. Ricoh Americas Corporation, et al., No. 13-474-SLR-SRF (D. Del. Aug. 17, 2016). Judge Robinson previously expressed concern that defendants were attempting to use affirmative evidence from its non-party parent, yet prevented discovery by plaintiff of other evidence. Here, Judge Robinson concluded that the court could not assess whether defendants’ document production was sufficient because apparently defendants’ parent “made its own determinations as to what documents were relevant, without regard either to plaintiff’s document requests or any feedback from the defendant.” Id. at 2. Judge Robinson noted that “it is not generally up to the accused infringer (or its parent) to determine in the first instance what information is sufficient to prove (or not) infringement and, therefore, the court cannot say with any degree of confidence that document production from [defendants’ parent] has been adequate or complete[.]” Id. at 3. While Judge Robinson indicated the Court would use an adverse inference, the Court would not grant summary judgment of infringement. Id.
Judge Robinson recently considered defendant’s motion to dismiss for failure to state a claim, applying Twombly and Iqbal under the amended Federal Rules abrogating Form 18 for pleading direct infringement, and post-Halo Electronics, Inc. v. Pulse Electronics, Inc., 136 S.Ct. 1923, 1932 (2016). Dermafocus LLC v. Ulthera, Inc., No. 15-654-SLR (D. Del. Aug. 11, 2016). Judge Robinson analyzed plaintiff’s claims to assess “plausibility,” noting that “it is logical to presume that a defendant has greater access to and, therefore, more information about its accused method.” Id. at 4-5. Judge Robinson declined to require more of a plaintiff, “[a]bsent specific guidance from the Federal Circuit directing the court to front-load the litigation process by requiring a detailed complaint in every instance[.]” Id. at 5.
Judge Robinson concluded that plaintiff’s direct infringement allegations passed muster because they alleged defendant’s accused system was used in such a manner that infringed claim 1 of the patent-in-suit. Id. at 5-6. Defendant complained that “plaintiff did not specify ‘which particular combinations of components … allegedly infringe when used,’ nor did plaintiff ‘allege how all of the claimed method steps are performed.'” Id. at 6. But, Judge Robinson noted that it was not clear whether the “information demanded by defendant” was available to the public, therefore, “[u]nder these circumstances,” the Court concluded that plaintiff provided “reasonable notice of a plausible claim for direct infringement of at least” claim 1 of the patent in suit. Id. Regarding indirect infringement, Judge Robinson concluded that plaintiff failed to adequately allege pre-suit knowledge of the patent-in-suit. Plaintiff alleged that the patent-in-suit was one of seven prior art references listed in a patent application for which defendant’s founder was a named inventor and applicant. Id. at 8. The patent-in-suit, however, did not come up again during prosecution of that application. Id. Judge Robinson, therefore, concluded that [a]lthough it is certainly conceivable that [the inventor] took note of the [patent-in-suit] a decade ago and shared his knowledge thereafter with others at his company, the court concludes that the allegations are neither likely nor reasonable; i.e., no plausible inference arises from the alleged facts that defendant had knowledge of the [patent-in-suit] in 2005.” Id. at 8-9 (emphasis in original). Judge Robinson also concluded that plaintiff’s allegations of post-suit willful infringement passed muster under Halo, although the Court granted the motion to dismiss as to “pre-complaint willfulness” given the failure to adequately plead pre-suit knowledge. Id. at 11. Although prior to Halo, the Court would have dismissed “allegations of willful infringement based only on post-complaint conduct,” [u]nder the less rigid standard announced in Halo . . . the court will allow plaintiff’s general allegations of willful infringement to withstand the motion to dismiss. Id. at 12.
In Verifone, Inc. v. Poynt Co., C.A. No. 16-105-SLR (D. Del. Aug. 11, 2016), a trademark infringement action, Judge Sue L. Robinson denied Plaintiff’s motion for a preliminary injunction. The majority of the opinion addressed likelihood of success on the merits, looking to whether there was likelihood of confusion between the parties’ marks. See id. at 8 -17. The Court concluded that plaintiff had not shown likelihood of success on the trademark claim. Id. at 17. The irreparable harm factor weighed in Defendant’s favor where it was “about to launch its product and quantifies the monetary damages it would suffer due to delay, recertification, and rebranding,” and where Plaintiff’s evidence of harm to its reputation and goodwill was speculative. Id. at 17-18. As to the balance of hardships, this also favored Defendant who had searched the PTO database before applying for its trademark and where Defendant had offered evidence of damage it would suffer from an injunction. Id. at 18. Finally the public interest factor was “largely neutral” where “the public has an interest in not being deceived or confused,” no confusion was evidence and the common purchases of the parties’ product were sophisticated. Id. at 18-19.
Judge Sue L. Robinson recently denied Mylan ANDA defendants’ motion to dismiss for lack of personal jurisdiction and improper venue. Pfizer Inc. v. Mylan Inc., Civ. No. 15-960-SLR (D. Del. Aug. 12, 2016). The Court explained that, under Daimler, the defendants’ regular and routine litigation in Delaware and systematic placement of goods into the stream of commerce, including Delaware, were insufficient to establish general jurisdiction over them. However, the Court explained that it was indisputable that the defendant that served the notice letter and/or other defendants would eventually market their generic product in Delaware upon FDA approval. This, the Court explained, was a sufficient jurisdictional hook under Delaware’s long-arm statute for specific jurisdiction over the defendant that served the notice letter. The Court next agreed with the plaintiff that specific jurisdiction over that defendant should be imputed to the one other Mylan defendant under an agency theory, but found that “more information regarding Mylan Inc.’s and Mylan N.V.’s role” was needed to determine whether jurisdiction could be imputed to them, also. As a result, the Court granted the plaintiff jurisdictional discovery “to determine whether an agency relationship exists between Mylan Inc. and Mylan N.V. and [the defendant that served the notice letter].”
Judge Robinson recently issued a decision addressing the types of taxable costs that should be approved in a bill of costs. Among the guidelines that Her Honor set forth for that case were:
– Depositions that were “cited as important considerations in granting summary judgment” were reimbursable costs, because even if the Court “only cited the most critical pages of the depositions” in support of its decision, “that does not mean that the remainder of the depositions were not reviewed and used in a broader sense.” Apeldyn Corp. v. Sony Corp., et al., C.A. No. 11-440-SLR-SRF, Memo. Or. at 4-5 (D. Del. July 27, 2016).
– The costs of videotaping the deposition of an expert witness was not a reimbursable cost because the expert’s testimony “was not used in connection with the motion practice and, as an expert, it would be exceedingly rare for [the witness] to testify at trial via deposition (videotaped or otherwise).” Id. at 5.
– The costs of Bates labeling document productions were reimbursable as a “real-world necessity . . . [and] part of ‘making copies’ particularly in complex litigation requiring a large amount of documents to be produced.” Id. at 6.
– Costs associated with formatting e-discovery were only partially reimbursable due to inconsistencies in the defendants’ invoices, the lack of reliable information about the extent of certain formatting, and the fact that defendants “chose to oppose an early resolution and proceed with discovery.” Id. at 7-8.
In MobileMedia Ideas, LLC v. Apple Inc., C.A. No. 10-258-SLR (D. Del. July 21, 2016), Judge Sue L. Robinson denied Defendant’s motion for summary judgment regarding damages as well as its nd Daubert motion, and also denied Plaintiff’s Daubert motion.
As to the summary judgment motion, the Court disagreed with Defendant that the doctrine of intervening rights would apply to this case based on amendments Plaintiff had made during reexamination, as the Court concluded that the claims had remained substantially identical in scope. See id. at 3-9. The Court also denied the damages motion as to failure to mark. Reviewing case law that was split on the issue, the Court concluded that the burden of proof lies with an alleged infringer to “come forward with particular unmarked products allegedly triggering § 287” where, as here, there was a question as to whether the patentee actually marketed a product in the United States that practiced the patent-in-suit. Id. at 10. As Defendant had not met this burden, the motion for summary judgment was denied.
The Court also denied Defendant’s motion to exclude the testimony of Plaintiff’s technical expert, rejecting Defendant’s narrowing of “the field of pertinent art” in a way that would exclude the expert’s “opinions as outside his general experience.” Id. at 11. The Court also rejected Defendant’s criticisms of the reasonable royalty calculation of Plaintiff’s damages expert, who relied on royalty rates from a prior litigation, because he “offer[ed] reasons for his patent selection and acknowledges and adjusts the royalty rate for the differing circumstances of the prior litigation.” Id. at 13. Defendant also sought to exclude a question in Plaintiff’s survey evidence related to the claimed invention’s footprint in the marketplace as being too broad, but the Court concluded that the survey question was “sufficiently tied to [the technical expert’s] opinion regarding the benefit of the patent.” Id. at 15.
In a case involving misappropriation of trade secrets and confidential information, copyright, and Lanham Act false designation of origin and unfair competition claims, Judge Sue L. Robinson denied Plaintiff’s motion for a preliminary injunction. Adtile Technologies Inc. v. Perion Network Ltd., et al, C.A. No. 15-1193-SLR (D. Del. June 23, 2016). Plaintiff develops “mobile ‘Motion Ads,’” i.e. motion-activated advertisements, and had previously entered into a licensing agreement related to such technology with one of the Defendants, but the parties had terminated the agreement over disputes regarding the Defendant’s use of Plaintiff’s technology and Plaintiff’s alleged refusal to provide Motion Ads under the agreement.
The Court concluded that the Plaintiff had not demonstrated a likelihood of success as to any of its claims. Plaintiff’s “trade secrets and confidential information are not sufficiently delineated from what is either publically available . . . or discernable from the Motion Ads . . . . That [Plaintiff] included, without attribution, [certain allegedly copyrighted and trademarked images] in two ads provided to [one Defendant] as deliverables under the License Agreement weakens [Plaintiff’s] copyright and trademark infringement arguments. The court concludes that [Plaintiff] has not shown likelihood of success on the merits.” Id. at 13.
The Court then found that the other eBay factors were largely neutral. As to irreparable harm, while Plaintiff claimed that it was “losing the opportunity to develop its client base,” the Court also observed that “the parties were able to quantify the value of [Plaintiff’s] technology and product” through their license agreement. Id. at 14. Further, the Court could not “delineate on the record at bar what, if any, trade secrets and confidential information [Plaintiff] possesses, which cuts against injunctive relief.” Id. As to balance of hardships, while Plaintiff could lose “significant revenue, a stellar reputation as a technology innovator, and substantial market share,” Defendants “stand to lose substantial contracts and relationships if enjoined. Such a disruption would also cause harm to third parties, which have contracted with [one of the Defendants].” Id. at 15. As to public interest, while the public would have an interest in protecting trade secrets, confidentiality agreements, and copyrighted property, because Plaintiff had not shown a likelihood of success on its causes of action, certain of the information at issue was publicly available, and Plaintiff was “not the only company involved in the making of motion-activated ads, yet it seeks to . . . wholly eliminate one of its competitors,” this factor was also neutral. Id. at 15.
On March 10, 2016, Magistrate Judge Sherry R. Fallon issued a report and recommendation denying plaintiff Intellectual Ventures I LLC’s (“IV”) motion to compel defendant Ricoh Electronics, Inc. (“REI”) to produce certain documents in the possession of Ricoh Company, Ltd. (“RCL”), and to produce 30(b)(6) witnesses to testify regarding certain RCL documents that had been produced. Intellectual Ventures I LLC v. Ricoh Americas Corporation, et al., C.A. No. 13-474-SLR-SRF (D. Del. Mar. 10, 2016) (public version published Mar. 17, 2016). Defendant REI is a U.S. company and wholly owned subsidiary of the other defendant to this action, Ricoh Americas Corp. (“RAC”). RCL is Japanese company that is the parent of RAC, REI, and other Ricoh entities. RCL designs and manufactures the products accused of infringement in this action, and exports them to REI in the U.S., who transfers the accused products to RAC for distribution and sales in the U.S. In September 2014, Judge Robinson dismissed RCL as a party for lack of personal jurisdiction. Following RCL’s dismissal, REI did not provide discovery regarding the design, structure, and operation of the accused products, asserting that those documents were in RCL’s control. REI eventually produced a Technical Assistance Agreement (“TAA”) between RCL and REI, and a number of other RCL documents, but IV still found the production deficient. IV thus moved to compel REI after a motion for issuance of letters rogatory was denied by Japanese authorities. Id. at. 1-2.
Denying IV’s motion to compel document production, Judge Fallon first found that “REI does not have control over the missing documents in RCL’s possession under the terms of the TAA.” Id. at 4. Judge Fallon further explained that “IV . . . failed to establish the existence of an agency relationship between REI and RCL in accordance with Third Circuit precedent.” Id. at 5. Denying the motion to compel the production of a 30(b)(6) witness, Judge Fallon noted that “REI has shown that its ability to prepare witnesses to discuss documents from another corporate entity is substantially limited. Specifically, REI does not design the products, and employees of REI do not have personal knowledge of the technical details set forth in the documents produced by RCL.” Id. at 6. Judge Fallon explained that although “[t]he duty of preparation goes beyond the designee’s personal knowledge and matters in which the designee was personally involved, . . . a corporate subsidiary cannot be expected to acquire all of the knowledge of the parent company and testify on that information in a manner that would effectively result in an end-run around Judge Robinson’s ruling on the motion to dismiss and the denial of the Hague Convention request by the Japanese authorities.” Id.
On May 23, 2016, Judge Robinson concluded that there were no legal errors in Judge Fallon’s analysis and therefore adopted the Report & Recommendation. Intellectual Ventures I LLC v. Ricoh Americas Corporation, et al., C.A. No. 13-474-SLR (D. Del. May 23, 2016). Judge Robinson further explained, however, that “[i]t was not until October 2015 that REI produced [the] Technical Assistance Agreement (“TAA”) between RCL and REI. The TAA was executed in October 2005 and, therefore, was known or should have been known to REI before this litigation commenced (March 2013). The TAA limits the flow of information from RCL to REI in several ways, from the narrow scope of products to the nature of the information provided.” Id. at 2. According to Judge Robinson, pursuant to the TAA, “RCL has agreed to provide only information related to REI’s non-infringement defenses, as opposed to all relevant core technical information.” Id. Judge Robinson continued:
In Invista North America S.A.R.L., et al, v. M&G USA Corporation, et al., C.A. No. 11-1007-SLR (D. Del. May 13, 2016), Judge Sue L. Robinson denied Plaintiffs’ motion for reconsideration of the “amount and manner of payment of the royalty rate to be paid by defendants,” id. at 2, which the Court had placed into escrow when it had also stayed enforcement of an injunction against Defendants pending final resolution of any appeals from the PTO’s final rejection of all claims of the patent-in-suit. The Court’s royalty rate had been based on an “agreement reached by the parties at the damages phase of the case . . . [r]ather than litigate damages, the parties agreed on a lump sum payment for past infringement . . . [m]athematically, defendants paid plaintiffs one (1) cent per pound” of accused product Id. at 2. Neither the Court nor the parties had “engage[d] in a more extensive reasonable royalty analysis,” and the Court declined to do so now and “embrace plaintiffs’ late presentation for immediate implementation” where Plaintiffs’ proposed rate would increase the rate to four cents per pound. Id. at 2-3.
The Court also clarified that its royalty award had not been “the final word on damages related to future infringement.” Id. at 3 (emphasis added). Instead, “if the validity of the [patent-in-suit] were preserved, the parties would either resolve the issue of future damages by settlement or by litigation.” Id. Until that time, the amount of money determined by the one cent per pound royalty rate would continue to be placed into escrow. Id.