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In Videoshare, LLC v. Google, Inc., et al., C.A. No. 13-990-GMS (D. Del. Aug. 2, 2016), Judge Gregory M. Sleet granted Defendants’ Motion for Judgment on the Pleadings based on Section 101. The two patents-in-suit “describe[] a method and system for sharing streaming video over a network,” with one of the patents having an additional requirement of having an associated advertisement. Id. at 1-2. Defendants argued they were invalid “for claiming the patent-ineligible abstract idea of translating (converting) content and sharing the translated content (such as video segments), with or without accompanying advertisements.” Id. at 3 (internal quotation marks omitted).

Applying the Alice test and looking to recent Federal Circuit decisions for guidance, the Court found that Defendants had shown invalidity by clear and convincing evidence. Id. at 5. In terms of defining what the patents were directed to under step 1 of the Alice inquiry, the Court rejected Defendants’ articulation of above-quoted the abstract idea as too high a level of abstraction, but also rejected Plaintiff’s articulation of what the patents were directed to as “loaded with nearly every step or feature recited in the claims, thereby defeating the distillative purpose of the ‘directed to’ inquiry.” Id. at 9. Instead, the Court concluded, based in part on the patents’ specifications, that the patents were “directed to preparing a video in streaming video format for sharing over a computer network.” Id. This was an abstract idea because “the claims are not directed to an improvement in computer functionality, and the physical components of the claim merely provide a generic environment for carrying out the abstract idea.” Id. at 11. To that end, the Court was not persuaded that Plaintiff had invented anything that resulted in an improvement to computer functionality, for example, it had not invented “the technology that converts video files into streaming format.” Id. at 12. Furthermore, “[t]he ordered arrangement of such conventional features provides no discernable benefits to computer functionality. This stands in stark contrast to claims [in the recent Enfish and Bascom Federal Circuit decisions] which achieved such improvements to computing technology.” Id. at 13.

Turning to the second step of Alice, the Court concluded that the claims did not contain an inventive concept, as they recited computer capabilities that were routine and conventional. See id. at 17-18. In particular, the Court found these claims distinguishable from those in DDR Holdings that were “necessarily rooted in computer technology”: “[t]he instant claims require a series of conventional steps that could be done on a general purpose computer by a human to instead be done in an automated fashion on a receiving computer via the Internet. In this regard, manually following the claimed conventional steps does not lead to an unconventional result, and . . . automation of these conventional steps does not save the patents from ineligibility. In this way, unlike DDR Holdings, the instant claims do nothing more than conform to the routine and conventional.” Id. at 2.

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In a recent Report and Recommendation, Magistrate Judge Sherry R. Fallon recommended that the court deny defendant Baker Hughes, Incorporated’s (“Baker”) motion to transfer venue to the Southern District of Texas pursuant to 28 U.S.C. § 1404(a). Smith International, Inc. v. Baker Hughes Incorporated, C.A. No. 16-56-SLR-SRF (D. Del. Aug. 10, 2016). Judge Fallon concluded that “Baker has not shown that the Jumara factors as a whole weigh strongly in favor transfer.” Id. at 12. Judge Fallon explained that “[o]nly Baker’s forum preference weighs in favor of transfer, and that preference does not warrant maximum deference. On the other hand, the remaining factors are neutral or weigh in favor of [plaintiff] Smith.” Id. Further, “in the present action, [plaintiff] Smith chose a legitimate forum because Delaware is the state of incorporation of both parties.” Id. While Judge Fallon “recognize[d] that it may be more expensive and inconvenient for Baker to litigate in Delaware instead of Texas,” the court declined “to elevate the convenience of one party over the other,’ as ‘discovery is a local event and trial is a limited event.’” Id. at 13. Judge Fallon found that “Delaware imposes no ‘unique or unexpected burden’ on Baker, such that transfer is warranted in the interests of justice.” Id.

Smith Int’l, Inc. v. Baker Hughes Inc., No. 16-56-SLR-SRF (D. Del. Aug. 10, 2016).

UPDATE: Judge Robinson recently overruled objections to Judge Fallon’s Report & Recommendation and affirmed the denial of Baker’s motion to transfer.

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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].”

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In a recent Report and Recommendation, Magistrate Judge Sherry R. Fallon recommend that the court deny defendant’s motion to transfer to the District of Minnesota pursuant to 28 U.S.C. § 1404(a). Husqvarna AB et al. v. The Toro Company, C.A. No. 15-856-SLR-SRF (D. Del. Aug. 11, 2016). Judge Fallon found that “[o]nly [defendant’s] forum preference for its ‘home district’ and the limitations of some [of defendant’s] witnesses to appear in person for trial weigh in favor of transfer.” Id. at 16. Judge Fallon explained that “[i]n the present action, [plaintiffs] chose a legitimate forum, [defendant’s] state of incorporation.” Id. While Judge Fallon recognized “that it may be more expensive and inconvenient for [defendant] to litigate in Delaware than in Minnesota,” Judge Fallon declined “to elevate the convenience of one party over the other,’ as ‘discovery is a local event and trial is a limited event.’” Id. Judge Fallon concluded that “Delaware imposes no ‘unique or unexpected burden’ on [defendant], such that transfer is warranted in the interests of justice.” Id. According to Judge Fallon, defendant failed to show that the Jumara factors a whole weigh in favor of transfer, and therefore recommended that the court deny defendant’s motion.

Husqvarna AB et al. v. The Toro Company, C.A. No. 15-856-SLR-SRF (D. Del. Aug. 11, 2016).

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In a recent Memorandum, Judge Gregory M. Sleet granted defendants’ motion for leave to amend to add declaratory judgment counterclaims for U.S. Patent Nos. 9,295,802 (“the ’802 patent”); 9,265,911 (“the ’911 patent”); and 9,279,794 (“the ’794 patent”) in this ANDA litigation regarding plaintiffs’ product INOmax®. Mallinckrodt Hospital Products IP Ltd., et al. v. Praxair Distribution, Inc., et al., C.A. No. 15-170-GMS (D. Del. Aug. 2, 2016). The ’802 patent, ’911 patent and ’794 patent each issued to plaintiffs after the filing of this action. Id. at 2. Shortly after the patents issued, they were added to the Orange Book listing for INOmax®. Id. Defendants sought to have the newly-issued patents added to the case by stipulation of the parties, but plaintiffs disagreed. Id. at 2-3. Soon after plaintiffs noted their disagreement, defendants filed expedited Paragraph IV Certifications regarding the newly-issued patents. Id. at 3.

Granting defendants’ motion, Judge Sleet first explained that “adding the new patents to this case will conserve judicial and party resources, because the alternative would require the parties to initiate a new lawsuit. The court does not find any inference of bad faith on the part of the Plaintiffs.” Id. at 4. Next, Judge Sleet found that Plaintiffs would not be prejudiced by the addition of the new patents. Specifically, Judge Sleet noted that two of the newly-added patents were continuations of a patent already being asserted in the case. Id. Judge Sleet also noted that “Plaintiffs cannot claim surprise or lack of notice, as the Defendants notified them of their intent to add the new patents to the suit nearly two weeks before filing an expedited Paragraph IV certification for the new patents and over two weeks before seeking leave to amend.” Id. at 5.

Finally, Judge Sleet considered whether such amendment would be futile. Plaintiffs argued that defendants’ amendment would be futile because the court lacks subject matter jurisdiction over the new patents. Id. Specifically, plaintiffs contended that “since the Defendants’ Motion to Amend was filed four days after the Defendants’ expedited Paragraph IV certification and lacked an offer of confidential access to the ANDA, it fails the provisions of§ 355(j)(5)(C)(i)(I) and must be denied.” Id. Rejecting plaintiffs’ argument, Judge Sleet “decline[ed] to follow a form-over-function approach”:

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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.

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Magistrate Judge Christopher J. Burke recently considered the parties’ discovery disputes in Princeton Digital Image Corp. v. Konami Digital Entertainment Inc., et al., No 12-1461-LPS-CJB (D. Del. Aug. 4, 2016).  Among other things, Judge Burke granted defendants’ request regarding plaintiff’s infringement contentions.  In particular, Judge Burke ordered plaintiff to serve claim charts for “accused mobile game titles” separate from the “console-based game titles.”  Id. at 2.  Judge Burke also ordered supplemental contentions for the console-based game titles that “shall more clearly set out what aspects of the accused products are said to relate to which elements of the referenced portion of the claim that is at issue.”  Id.  As an example, Judge Burke stated that a sufficient format “that would provide such clarity would be: ‘the means for prerecording consists of [X elements of accused game].'”  Id. at 2-3 n.1.  Judge Burke also noted that plaintiff should serve these supplemental contentions in short order as they “will be drawing solely on the substance of Plaintiff’s current knowledge of the accused products[.]”  Id. at 2-3.

Princeton Digital Image Corp. v. Konami Digital Entertainment Inc., No. 12-1461-LPS-CJB

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Judge Gregory Sleet recently considered a request to compel the production of “approximately seventy documents disclosed to prospective litigation funding organizations, which [the plaintiff] claims is protected as work product” and which “were prepared by counsel and the inventor . . . for litigation funders in anticipation of and during litigation.” IOENGINE, LLC v. Interactive Media Corp., et al., C.A. No. 14-1571-GMS, Order at 2 n.1 (D. Del. Aug. 3, 2016). Judge Sleet agreed that the documents in question were protected by the work-product doctrine, recognizing that “[i]n recent cases, other courts have found that documents prepared for litigation-funders are protected, reasoning that ‘[l]itigation strategy, matters concerning merits of claims and defenses and damages would be revealed if the documents were produced.’” Id. (quoting Devon It, Inc. v. IBM Corp., No. CIV.A. 10-2899, 2012 WL 4748160, at *1 (E.D. Pa. Sept. 27, 2012)).

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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.

SunPower Corporation v. PanelClaw, Inc., C.A. No. 12-1633-MPT (D. Del. Jul. 26, 2016).

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In a recent order, Judge Gregory M. Sleet denied a plaintiff’s motion for leave to amend its complaint to allege additional facts relating to two theories of inequitable conduct already in the case.  Gilead Sciences, Inc. v. Abbvie, Inc., C.A. No. 13-2034 (GMS) (D. Del. July 28, 2016).  The plaintiff, Gilead, acknowledged that it sought to amend its complaint, out of an abundance of caution, to add factual detail elaborating on its existing allegations.  The Court denied the motion, explaining that “Gilead need not amend its complaint to specify every detail learned during discovery.”

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