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Judge Richard G. Andrews recently considered Defendant Micron Technology Inc.’s motion to exclude plaintiff Semcon Tech LLC’s damages expert who estimated a reasonable royalty “for a method claim for a manufacturing process.”    Semcon Tech LLC v. Micron Technology Inc., C.A. No. 12-532-RGA (D. Del. Aug. 5, 2015).  Judge Andrews determined that he could not determine “based on the briefing” whether the expert’s methodology was sound or “whether his estimates include any required effort at apportionment.”  Id. at 1.  Therefore, Judge Andrews scheduled a Daubert hearing at which the expert would testify “subject to cross-examination.”  Id.  Judge Andrews also requested Micron advise the Court if it intended to provide an alternative theory of an appropriate reasonable royalty and to submit a letter explaining such theory.  Id. at 2.

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Chief Judge Leonard P. Stark recently granted a plaintiff’s request for an order compelling supplemental responses to contention interrogatories relating to the plaintiff’s license agreements with non-party patentees.  Intel Corp. v. Future Link Sys., LLC, C.A. No. 14-377-LPS (D. Del. Aug. 5, 2015).  The Court noted that the defendant spent “the vast majority of its preliminary responsive contentions to complain about Plaintiff’s allegedly deficient document production and discovery responses[,]” but explained that “Defendant ‘may not avoid its obligations under the Court’s schedule by arguing, generically, that Intel has not “met its burden” to prove it is licensed . . . . [Defendant] needs to explain why.’”  Id. at 2 (emphasis in original ).  The Court also rejected the Defendant’s argument that Intel’s license claim “is not suitable for early summary judgment.  On the contrary, Plaintiff has identified specific license provisions, products, and arguments for why it thinks five of the patents-in-suit are licensed. . . . Certain of the issues likely to be presented on summary judgment – for example, the applicability of certain license provisions to the five patents-in-suit – are questions of law (contract interpretation).”  Id. at 3.

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In a recent Memorandum Order, Judge Richard G. Andrews denied plaintiffs’ motion for reargument as to the court’s order severing defendant Nokia Corporation for a separate trial. Interdigital  Communications, Inc. v. Nokia Corp., C.A. No. 13-10-RGA (D. Del. Jul. 29, 2015). Judge Andrews noted that plaintiffs requested reargument on the ground that the court’s decision to sever was “sua sponte and there was no opportunity for briefing.” Id. at 2. Judge Andrews explained, however, that “Nokia Corporation no longer makes or imports the accused products,” and that there is “no relief [the court] could grant against Nokia Corporation.” Id. Further, Judge Andrews pointed to the fact “there is a significant likelihood of juror confusion between Nokia, Inc. and Nokia Corporation.” Id. Finally, Judge Andrews noted that “Nokia Corporation’s presence would serve only to confuse the jury and potentially result in multiple opening arguments and examinations.” Id.

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In a recent Order, Judge Gregory M. Sleet granted defendants’ motion for leave to amend its answer to include allegations that the asserted patents are unenforceable due to inequitable conduct. Lifeport Sciences LLC v. Endologix, Inc., C.A. No. 12-1791-GMS (D. Del. Jul. 29, 2015). Judge Sleet noted that plaintiff opposed the amendment on the grounds that “defendant unduly delayed in filing the motion” and that “it would [be] prejudiced if the court were to allow the amendment at this stage of litigation.” Id. at 1. Judge Sleet rejected plaintiff’s arguments, explaining that “the parties specifically built into their scheduling order a deadline . . . to amend the pleadings to allege inequitable conduct, whether by affirmative defense or in a counterclaim,” and that defendant filed its motion by the deadline in the scheduling order. Id. at 2. Judge Sleet added that “[e]ven assuming the plaintiff is correct that the defendant could have filed it[s] motion sooner, the court cannot say the delay was undue or that the plaintiff will be prejudiced when this was explicitly contemplated as a possibility.” Id.

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In Lambda Optical Solutions, LLC v. Alcatel-Lucent USA Inc., et al., C.A. No. 10-487-RGA-CJB (D. Del. July 31, 2015), Magistrate Judge Christopher J. Burke recommended denial of Defendants’ motion for summary judgment of invalidity based on anticipation and obviousness. The Court first recommended denial as to anticipation because it concluded that issues of material fact remained as to whether the claimed anticipatory references (printed publications) were enabling.  The Court first concluded, as to whether there is a presumption of enablement of prior art publications, that it was in agreement with other decisions of the District Court that it should presume a printed publication is enabled.  Id. at 11-12.  However, the Court ultimately found that there were genuine issues of material fact as to enablement of the prior art based on how long it took between publications of those articles sand when Defendants introduced an applicable commercial product.  See id. at 13-14. As to obviousness, the Court also found issues of material fact remained upon review of the record, including expert testimony.  As to objective indicia of non-obviousness, the Court accepted Plaintiff’s position that the uncontested commercial success of Defendants’ accused products was relevant and contributed to the defeat of summary judgment: “[w]hile [Defendants] may later prove that all of its products that are at issue at trial do not infringe . . . the evidence put forth by [Plaintiff] as to such products may be considered at the summary judgment stage.”  Id. at 20.

Update: On September 30, 2015, Judge Richard G. Andrews adopted the Report and Recommendation as to its obviousness findings, but denied and returned to the Magistrate Judge’s consideration the issue of anticipation.  The Court rejected the recommended disposition that the motion for summary judgment as to anticipation be denied given the lack of expert testimony on the issue of enablement of certain prior art.  Id. at 3-5.  Instead, the Court concluded that “the dispositive issue for purpose of ruling on the objections is what sort of showing Plaintiff raised about lack of enablement to create a disputed factual issue,” noting that the parties had not focused on this issue in their briefing and “without any relevant expert opinion on enablement, what the records shows in argument about possibly relevant facts. . . . The subject matter is complex, and I do not think, under the circumstances of this case, that attorney argument is an adequate substitute for an analysis by a qualified expert. Expert testimony is, without a doubt, needed on the ultimate issue, should we get there, but I think it is also needed to raise the issue.”  Id. at 3-4, 5.  As a result, the Court “return[ed] the matter to the Magistrate Judge, for such handling as he deems appropriate. One possibility would be to consider the enablement challenge resolved, and proceed to the merits of the anticipation arguments. Another possibility would be to allow the parties to amend their expert reports to address the enablement issue.” Id. at 6.

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In Butamax Advanced Biofuels LLC v. Gevo, Inc., C.A. Nos. 12-1036-SLR; 12-1200-SLR; 12-1300-SLR (D. Del. Aug. 3, 2015), Judge Sue L. Robinson considered the parties’ various dispositive motions on infringement and invalidity.  The Court granted Defendants’ motion as to invalidity for one patent, based on indefiniteness, as well as their motion for summary judgment of no willfulness.

As to one patent, the Court concluded that the asserted claims’ “% identity” language was indefinite.  See id. at 4-13.  It therefore granted summary judgment as to invalidity and did not consider infringement, as the indefiniteness of the claims prevented a “meaningful infringement analysis.”  Id. at 13.

As to another group of patents, however, the Court found issues of material fact remained as to validity and infringement.  As to questions of enablement and written description, it noted that “[t]he art in the case at bar is generally unpredictable. The disagreement between the experts on whether one of ordinary skill could practice the invention without undue experimentation and whether the inventors had possession of the invention present genuine disputes of material fact better left to the province of the jury.”  Id. at 18.  Similarly, as to infringement, it concluded that “the expert opinions are in direct conflict, therefore, there are genuine issues of material fact as to” infringement, and thus denied Plaintiff’s motion for summary judgment of infringement.  Id. at 19.

As to willful infringement, the Court granted Defendants’ motion, noting that the Court had granted their motion as to indefiniteness one one patent, and Defendants had “at minimum . . . credible and reasonable theories supported by expert testimony” for invalidity and non-infringement as to the other patents.  Id. at 20-21.  Additionally, while “[t]he court recognize[d] [Plaintiff’s] arguments against summary judgment of no willfulness based on the concurring opinions in both Halo Elecs., Inc. v. Pulse Elecs.,Inc., 769 F.3d 1371, 1383 (Fed.Cir.2014) (O’Malley, J., concurring), and Bard Peripheral Vascular, Inc. v. W.L. Gore & Associates, Inc., 776 F.3d 837, 847 (Fed. Cir. 2015) (Hughes, J., concurring), calling for a review of the willfulness jurisprudence.  . . . the court decline[d] to depart from the application of the controlling law, Seagate’s two-part test, until such time as the Federal Circuit does so.”  Id. at 21 n.18.

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Magistrate Judge Burke recently denied a defendant’s request to stay a patent infringement case against it pending resolution of its motions to dismiss the case and motion to transfer to the Northern District of California. As Judge Burke explained, “all that has occurred pursuant to the Scheduling Order in the case is that the parties have made some basic initial disclosures,” and “the Court expects to resolve Defendant’s motion to transfer in the near future . . . well before Defendant is required to provide more substantive contentions, and so the Court does not find Defendant’s simplification-related arguments persuasive.” Papst Licensing GMBH & Co. KG v. Lattice Semiconductor Corp., C.A. No. 14-1375-LPS-CJB, Memo. Or. at 1-2 (D. Del. Aug. 3, 2015). Additionally, Judge Burke found that denying the motion to stay would not significantly prejudice any party and would allow the case to proceed on the same schedule as two related cases, each of which also had a similar motion to transfer. Id. The denial was, however, with leave to renew because the Court intended to “address the stay issue again with the parties” once Judge Burke had resolved the motions to transfer. Id. at 2-3.

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Judge Gregory M. Sleet recently denied defendant Zonoff Inc.’s motion to dismiss plaintiff Icontrol Networks, Inc.’s motion to dismiss for failure to state a claim.  Zonoff Inc. v. Icontrol Networks, Inc., C.A. No. 14-1199-GMS (D. Del. July 31, 2015).  Zonoff moved to exclude Icontrol’s claims for failure to adequately plead indirect infringement and joint infringement, and for damages.  Judge Sleet found Icontrol’s allegations of induced infringement sufficient as Icontrol alleged “facts supporting a plausible inference that Zonoff had knowledge of the patents-in-suit”; and “that Zonoff took various actions supporting the plausible inference that it intended its customers to infringe the patents-in-suit.”  Id. at 2 n.1.  Judge Sleet noted that a plaintiff is not required to “‘prove its case at the pleading stage.'”  Id. (quoting In re Bill of Lading Transmission & Processing Sys. Patent Litig., 681 F.3d 1293, 1340 (Fed. Cir. 2012) (summary of opinion by Dennis Crouch available at Patently-O).  Regarding contributory infringement, Judge Sleet found that Icontrol adequately pled that Zonoff’s accused products had no substantial non-infringing uses because it pled that “Zonoff’s software must infringe no matter how it is used . . . . ”  Id.  Judge Sleet also rejected Zonoff’s argument that Icontrol was obligated to plead joint infringement because “the claims at issue are not so clear that the court is able to make such a determination [that the method claims implicate joint infringement] without more information.”  Id.  Finally, Judge Sleet rejected Zonoff’s argument that Icontrol’s claims for damages should be dismissed because Icontrol did not allege that its products complied with the marking statute, 35 U.S.C. § 287.  Id.  Judge Sleet noted that Zonoff had actual notice of infringement at least as of the filing of the complaint and that the “notice requirements imposed by § 287 do not apply to all patented inventions,” such as patents directed to a process or method.  Id.

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Magistrate Judge Christopher J. Burke recently considered defendant Plaid Technologies Inc.’s motion to stay this action pending the Court’s resolution of defendant’s motion to dismiss all claims of the seven asserted patents-in-suit as patent-ineligible under 35 U.S.C. § 101.  Yodlee, Inc. v. Plaid Technologies Inc., C.A. No. 14-1445-LPS-CJB (D. Del. Jul. 20, 2015).  In denying defendant’s motion, Judge Burke noted that if the motion to dismiss is denied, little efficiency would have been gained.  Id. at 4-5.  Moreover, due to the large number of patents and claims at issue (7 and 162, respectively), “it is reasonable to infer that . . . there is a greater likelihood that a portion of the case will survive the motion to dismiss.”  Id. at 5.  Ultimately, Judge Burke noted that this “simplification of the issues” factor was neutral.  Regarding stage of the litigation factor, Judge Burke noted that although some discovery had progressed, the early stage of the litigation favored a stay.  Id.  at 7.  Finally, regarding undue prejudice, Judge Burke found this factor favored a stay noting that the parties are competitors and that there was evidence that competition from defendant had “financially harmed” plaintiff in the past and  likely would in the future.  Id. at 13.

Ultimately, Judge Burke decided a stay was not warranted:

On balance, the possibility of simplification of the issues is neutral, the status of the litigation weighs squarely in favor of a stay, and the prospect of undue prejudice weighs squarely against a stay. While reasonable minds could disagree as to the right outcome, the Court is ultimately persuaded that the prospect for harm to Plaintiff were a stay granted is the most compelling factor here. Therefore, the motion to stay is DENIED.

Id. at 15.

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This case was stayed pending a reexamination at the PTO and, although the stay was lifted in 2013, there had been “no activity since October 2013, while the parties continue[d] with inter partes review and covered-business-method review proceedings.” In March 2015, however, the plaintiff filed a “motion to reopen discovery to gather information concerning the prior art status of a particular reference.” Judge Sleet recently denied that motion. Fifth Market, Inc. v. CME Group, Inc., et al., C.A. No. 08-520-GMS, Or. at 1 (D. Del. July 31, 2015).

Judge Sleet explained his view of the request: “Understandably, the parties have been postponing the litigation of this case while the USPTO reviews the patents-in-suit and after appeals are exhausted. Thus, in the court’s view, this case is effectively, if not formally, stayed. And despite showing no interest in reviving its case in district court, the plaintiff now requests that the court order discovery to aid its efforts before the USPTO. The court declines to do so. . . . In short, [the motion] is improper for a number of reasons . . . . The court will not reopen discovery in this matter unless agreed upon by both parties or better justification is provided.” Id. at 2 n.1. Although the plaintiff claimed it needed the discovery into the alleged prior art for purposes of the IPR and this suit, Judge Sleet found that “plaintiff has made no challenge to the [reference] in this matter, to this court. . . . And the defendants are correct to note that the Protective Order between the parties forecloses the use of discovery materials ‘for any purpose other than prosecuting or defending claims in this action.’” Id. Furthermore, Judge Sleet found that there were procedures for the plaintiff to obtain this discovery in the PTO and that, if those procedures would not allow such discovery, the Court would not “undermine the procedures in place by offering an avenue to circumvent the rules.” Id.

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