In a recent memorandum, Judge Sue L. Robinson denied without prejudice the defendants’ motions to dismiss for failure to state a claim in nine related cases. Network Congestion Solutions, LLC v. AT&T Inc., et al., Civ. Nos. 14-894-SLR, 14-895-SLR, 14-896-SLR, 14-897-SLR, 14-898-SLR, 14-899-SLR, 14-901-SLR, 14-902-SLR, 14-903-SLR, and 14-904-SLR (D. Del. June 4, 2015). The complaints asserted infringement of a method claim by “accused ‘network congestion management practices’ . . . used by defendants internally to provide better service to their customers.” Id. at 4. Judge Robinson explained, “[a] rational query is whether there is any way for a patent holder, such as plaintiff, to present—in a complaint—the kind of factual detail defendants suggest is required under the Iqbal/Twombly standard. Drawing on my judicial experience and common sense, I would say ‘no.’” Id. Judge Robinson added, “if the practices identified by plaintiff operate through defendants’ proprietary software, then it is reasonable to conclude that the notice requirements have been met, based on the quantity and quality of publicly available information. To follow defendants’ reasoning would deny an entire class of patent holders the opportunity to even get before a court to test a strength of their intellectual property rights through discovery, let alone to enforce such rights. Id. at 4-5. The Court noted that the plaintiff provided more information about its allegations in its opposition to the motion to dismiss, and denied the motions to dismiss without prejudice to renew if the plaintiff failed to amend its complaints to incorporate that additional information.
Judge Robinson recently faced the question of the application of two pre-litigation agreements between Boston Scientific, Medtronic, and their predecessors to the awarding of attorneys’ fees at the end of the litigation. The specific agreements at issue included a provision requiring reimbursement of the prevailing party’s attorneys’ fees if infringement litigation arose between the parties. This provision applied to the instant litigation because the later agreement modified the earlier agreement in order to substitute successors in interest but did not eliminate the attorneys’ fee provision of the earlier agreement. Medtronic, Inc. v. Boston Scientific Corp., C.A. No. 07-823-SLR, Memo. at 7-8 (D. Del. May 27, 2015). Furthermore, although one of the defendants was not a signatory to the agreement at issue, Judge Robinson concluded that the defendant was bound by that agreement because it had enjoyed the benefits of the agreement and had engaged in a course of conduct that showed it adopted the agreement. Id. at 8-9.
Judge Robinson also determined that the declaratory judgment plaintiff, Medtronic, was not time-barred from moving for attorneys’ fees under the agreements. The agreement at issue required only a determination of the prevailing party for its “loser pays” provision to apply. Accordingly, there were no issues of fact to present to a jury and Medtronic had not waived its entitlement to attorneys’ fees by failing to offer proof at trial or present the claim in the pretrial order. Judge Robinson therefore concluded that the request for attorneys’ fees post-trial was timely. Id. at 4-6.
In a recent decision, Judge Sue L. Robinson ruled on a number of post-trial motions in a dispute over digital camera technology. Intellectual Ventures I, LLC, et al. v. Canon Inc., et al., Civ. No. 11-792-SLR (D. Del. May 18, 2015). Notably, Judge Robinson found that the defendant waived its right to pursue two purportedly renewed motions for judgment as a matter of law. First, Judge Robinson explained that although the defendant moved pursuant to Rule 50(a) for a judgment of no infringement of one asserted patent, and the defendant argued in opposition to the plaintiff’s Rule 50(a) motion with respect to the validity of that same patent, the defendant failed to, itself, move pursuant to Rule 50(a) for judgment of invalidity as a matter of law. Judge Robinson found, therefore, that the defendant waived its right to file a renewed motion for judgment as a matter of law seeking to invalidate that patent. Id. at 11 n.2. With respect to another patent, the Court found that the defendant waived its right to pursue a renewed motion for judgment as a matter of law of obviousness, because its Rule 50(a) motion was limited to arguments relating to anticipation. Id. at 19 n.6.
Judge Robinson granted the plaintiff’s motion for a new trial with respect to the jury’s finding of no induced infringement of two patents. As the Court explained, the defendant had represented that it did not intend to argue non-infringement, and the defendant in fact offered no expert testimony on non-infringement. Instead, the defendant called a fact witness who discussed the operation of the accused technology, and then used that testimony as “the bedrock for its closing argument to the jury that the accused devices do not meet the ‘digital image magnification’ limitation of the claims.” Id. at 45-46. Judge Robinson explained that the defendant’s counsel “improperly played the role of expert witness by inferring from factual testimony that the accused devices do not meet the claim limitations.” Id. at 46. Although the defendant argued that a limiting instruction cured any prejudice this caused, the Court disagreed and explained that “[t]he court promised that it would correct any counter-mischief by Canon’s counsel in this regard. . . . It does now by granting IV’s motion for a new trial on infringement . . . .” Id. at 47.
In Cox Communications Inc, et al. v. Sprint Communications Company L.P., et al., C.A. No. 12-487-SLR (D. Del. May 15, 2015), Judge Sue L. Robinson granted Plaintiffs’ motion for partial summary judgment as to the indefiniteness of the term “processing system” found in four of the patents-in-suit owned by Defendants that share a specification. Defendants offered a proposed construction for this term, citing the opinion of its expert, while Plaintiffs’ expert opined that there was no known, well-understood meaning for this term and that the term was only described functionally. Id. at 6-7. The Court concluded that this term was indefinite, finding that there was no established meaning in the art for this term and that the” claim language and specification do not provide structural limitations for the ‘processing system’ and do not inform those skilled in the art about the scope of the invention with reasonable certainty.” Id. at 10-11.
Judge Sue L. Robinson recently denied defendants’ motion to partially stay this case pending inter partes review of four of the ten patents in suit. Intellectual Ventures I LLC v. Toshiba Corporation, C.A. No. 13-453-SLR-SRF (D. Del. May 15, 2015). Judge Robinson began the Court’s analysis by recognizing how the America Invents Act changed the “playing field” for patent disputes:
I start with the recognition that the instant litigation reflects a business dispute between patent owners and alleged infringers. Traditionally, most business disputes were, and should have been, resolved through a business solution; because businesses are really people, business solutions are not generally reached without the motivating force of a firm trial date. Of course, the traditional playing field for patent disputes has been dramatically altered by such legislation as the AIA and its far-reaching ramifications, including its intrusion into the courtroom and the exercise of judicial discretion, and the generation of a cottage industry for administrative review of patent validity.
Rather than resolving business disputes, we are now reviewing patents through the administrative lens of the PTO, which has had to increase its size by several thousand employees (a 31 % increase in personnel) to take on the tasks assigned by Congress. Consistent with its mandate, the PTAB has accepted 65% of the patent claims challenged through IPR, and has found 38% of those claims invalid. It perhaps is understandable, then, that I approach this exercise with a degree of cynicism. Nevertheless, with this context in mind, I will analyze the facts of record under the appropriate standard of review.
Id. at 3-5.
Turning to the motion to stay, Judge Robinson noted that because Intellectual Ventures’ core business is licensing patents, it would suffer undue prejudice if the case is stayed. Id. at 6. And, Judge Robinson found that Toshiba did not demonstrate “a clear case of hardship or inequity if the motion for stay is denied.” Id. Because Toshiba chose to challenge validity through an IPR proceeding it “cannot complain that it is being prejudiced by the dual track proceedings it initiated.” Id. Judge Robinson also found that a stay would not simplify issues because the technology at issue in the IPR patents overlaps with the patents not subject to IPR, so discovery would proceed regardless of a stay. Id. at 7. For that reason, and because the IPR proceedings would conclude prior to claim construction, the status of the case weighed against stay. “Rather than stay and fragment the litigation process, it makes imminent sense to proceed with the litigation and take whatever guidance and valuable analysis provided by the PTAB into account as is appropriate.” Id. at 7-8.
Judge Robinson recently denied a motion to dismiss filed by a declaratory judgment defendant and patent owner. The plaintiff, Corning Inc., filed a declaratory judgment suit in Delaware seeking judgment that it does not infringe the defendant’s, DSM, patents and that those patents are invalid. DSM responded with a motion to dismiss, arguing that Corning’s claims arise from the parties’ supply agreement, which contained an Illinois forum selection clause. Corning responded to the motion by arguing that its patent claims do not relate to the supply agreement and are therefore not governed by that clause. DMS then filed a suit asserting both breach of contract and patent infringement claims in the Northern District of Illinois. Corning Inc. v. DSM Desotech, Inc., et al., C.A. No. 14-1081-SLR, Memo. Or. at 1-2 (D. Del. Apr. 16, 2015).
Judge Robinson denied the motion to dismiss, finding “no dispute that the breach of contract claims belong in Illinois . . . [or] that Corning filed its declaratory judgment action in Delaware first and that, as such, DSM’s patent infringement claims are compulsory counterclaims in the Delaware case.” Id. at 2. Thus, there were “no overlapping substantive issues between the breach of contract claim and the patent infringement and invalidity claims . . . [and the] mere possibility of . . . a factual overlap . . . supports neither a motion to dismiss nor a motion to transfer.” Id. at 3.
Judge Sue L. Robinson recently issued the Court’s Memorandum Order determining the appropriate amount of fees awarded to Amazon.com. Technology Innovations, LLC v. Amazon.com, Inc., C.A. No. 11-690-SLR (D. Del. April 20, 2015). The fees were awarded as a result of Judge Robinson’s previous decision sanctioning Technology Innovations for its “objectively unreasonable” claim construction positions. See previous decisions here and here. Amazon.com requested over $100,000 in fees. After reviewing each category of claimed fees, Judge Robinson awarded Amazon.com $51,046. Among other things, Judge Robinson awarded half the requested amount for briefing a motion to dismiss and Amazon’s reply to the Court’s show cause order, determining that the number of timekeepers used to produce 38 pages of briefing was excessive. Id. at 2, 3. Judge Robinson also reduced the requested reimbursement related to invalidity contentions, finding that the Court “ha[d] no basis to award a $470 hourly rate to a third year associate[,]” and lowering the rate to $250. Id.
Judge Sue L. Robinson recently dismissed willful infringement claims in two cases filed by Spherix Inc. Spherix Inc. v. Cisco Sys., Inc., Civ. No. 14-393-SLR (D. Del. Mar. 30, 2015); Spherix Inc. v. Juniper Networks, Inc., Civ. No. 14-578-SLR (D. Del. Mar. 30, 2015). The willfulness claims were based on the allegation that the defendants had knowledge of the patents-in-suit “from the date of the Nortel patent auction, as each of these patents were part of the patent portfolio for sale.” Judge Robinson noted that the Nortel patent portfolio “contained more than 6,000 patents” and declined to infer knowledge of the patents-in-suit “from the defendant’s participation in a bidding process on a portfolio containing over 6,000 patents.” With respect to one patent asserted against Juniper Networks, which was one of thirty-one references cited by the PTO examiner during prosecution of one of Juniper Network’s patents, Judge Robinson found that the allegations willfulness were insufficient, explaining, “the fact that the ‘123 patent was referenced during prosecution of two of defendant’s over 1,700 patents . . . is not compelling evidence of knowledge . . . .”
In Apeldyn Corp. v. Sony Corp. et al., C.A. No. 11-440-SLR (D. Del. Apr. 2, 2015), Judge Sue L. Robinson granted defendants’ motion for summary judgment of non-infringement and motion for summary judgment of invalidity of U.S. Patent No. 5,347,382 (“the ‘832 patent”). Defendants moved for summary judgment of non-infringement of claim 20 of the ’832 patent on the basis of collateral estoppel. As Judge Robinson explained, “[t]he parties do not dispute that the same patent, the same claim, and the same accused products are at issue in the present case as were at issue in the 08-568 case [previously litigated in the District of Delaware]. Rather, the parties dispute whether: (1) the issue was actually litigated; and (2) plaintiff was ‘deprived of crucial evidence’ in the 08-568 case and, therefore, did not have a full and fair chance to litigate the issue in question.” Id. at 12. As to whether the issue was previously litigated, Judge Robinson noted that “the court’s analysis regarding the drive signal pertained to both claim 1 and claim 20,” and thus concluded that “the issue before the court was actually litigated.” Id. at 13. Moreover, while plaintiff alleged that the inventor of the ‘832 patent “recently discovered a way to measure voltage from the circuitry on a broken LCD,” Judge Robinson explained that “the court [was] not persuaded that plaintiff was deprived of crucial evidence that resulted in an inability to fully and fairly litigate the issue in question in the 08-568 case.” Id. at 13-18. Judge Robinson therefore granted defendants’ motion for summary judgment of non-infringement due to collateral estoppel. Id. at 18.
As to defendants’ motion for summary judgment of invalidity, defendants argued that claim 20 of the ‘382 patent “was anticipated by four separate prior art references.” Id. Judge Robinson explained that although “all four prior art references were before the examiner during reexamination, plaintiff’s invalidity expert . . . only noted a single difference between the prior art references and claim 20.” Id. at 19. Judge Robinson ultimately concluded that “[a]s the concept of switching between intermediate values is the only alleged difference between claim 20 and the prior art, the court grants defendants’ summary judgment of invalidity of claim 20.” Id. at 22.
Judge Sue L. Robinson recently granted Automatic Transactions, LLC’s (“ATL”) motions to dismiss declaratory judgment claims seeking to invalidate 14 of its 28 patents. NRC Corp. v. Automated Transactions, LLC, Civ. No. 14-779-SLR; Nautilus Hyosung America, Inc. v. Automated Transactions, LLC, Civ. No. 14-1189-SLR (D. Del. Mar. 30, 2015). The declaratory judgment claims were filed at around the same time ATL moved to dismiss a number of infringement cases against the declaratory judgment plaintiffs’ customers. ATL offered the dismissed customers covenants not to sue, but did not make the same offers to the declaratory judgment plaintiffs. However, ATL’s managing member represented that “ATL has no plans to initiate any legal proceedings related to its patent portfolio[,]” and ATL further represented that it “has wound down its litigation efforts” and “has decided to sell its patent portfolio rather than engage in any further enforcement efforts.” Id. at 3-4. As a result, and in the interest of preserving judicial resources, Judge Robinson granted the motions to dismiss, without prejudice to their renewal if either ATL or another owner of the patents attempts in the future to enforce them against either the declaratory judgment plaintiffs or their customers. Id. at 4.