Published on:

In Graphic Properties Holdings, Inc. v. Asus Computer International, C.A. No. 13-864-LPS (D. Del. Sept. 29, 2014), Chief Judge Leonard P. Stark denied defendants ASUS Technology Pte Ltd. (“ASUS Singapore”) and ASUSTek Computer Inc.’s (“ASUS Taiwan”) (collectively the “Foreign Defendants”) motion to dismiss for lack of personal jurisdiction and improper venue. First, addressing the long-arm statute prong of the personal jurisdiction inquiry, Judge Stark resolved the issue of whether the Court would recognize a theory of “dual jurisdiction” (i.e., “stream of commerce”) based on “partial satisfaction” of subsections (1) and (4) of the Delaware long-arm statute, 10 Del. C. § 3104. Id. at 4-10. As Judge Stark explained, under a stream of commerce approach, jurisdiction exists when a “defendant displays ‘an intent to serve the Delaware market’ and ‘this intent results in the introduction of [a] product into the market and … plaintiffs cause of action arises from injuries caused by that product.’” Id. at 6. Because the Delaware Supreme Court has not provided an express opinion on this issue, Judge Stark’s role was limited to predicting how the Supreme Court would rule. Id. at 7. Considering that the (i) Delaware Supreme Court has refrained from rejecting the dual jurisdiction theory despite having several opportunities to do so; (ii) that “no Delaware state court has rejected the dual jurisdiction theory”; and (iii) that “Delaware’s long arm statute … is to be broadly construed to confer jurisdiction to the maximum extent possible under the Due Process Clause”, Judge Stark concluded the “Delaware Supreme Court, if faced with the issue, would hold that the ‘stream-of-commerce’ theory does provide a basis for personal jurisdiction under Delaware law, even though the theory is not expressly authorized by Delaware’s long-arm statute.” Id. at 8-9. Judge Stark reached this conclusion notwithstanding the fact that a fellow Judge of the Court reached a “contrary, and not unreasonable” conclusion regarding the stream of commerce theory. Id. at 6-7, 9 (citing Round Rock Research LLC v. ASUSTeK Computer Inc., 967 F. Supp. 2d 969 (D. Del. 2013)).

Applying the stream of commerce theory, Judge Stark explained that “[a] non-resident firm’s intent to serve the United States market is sufficient to establish an intent to serve the Delaware market, unless there is evidence that the firm intended to exclude from its marketing and distribution efforts some portion of the country that includes Delaware.” Id. at 9. In the instant matter, Judge Stark found evidence that the Foreign Defendants not only targeted the United States generally by selling to ASUS Computer International (“ASUS California”) in California, but that they also targeted Delaware specifically given that “there are least three physical resale outlets (Best Buy stores) inside Delaware that stock and sell the accused devices.” Id. at 10. Accordingly, Judge Stark found the long-arm statute prong satisfied.

Judge Stark also found the constitutional due process prong of the personal jurisdiction inquiry satisfied given that the “Foreign Defendants,by way of ASUS California, purposefully ship the accused devices into Delaware through established distribution channels such as Best Buy” and therefore “purposefully avail [themselves] of the privilege of conducting activities within [Delaware], thus invoking the benefits and protections of its laws.” Id. at 12-13.

While denying the motion to dismiss as of the date of the opinion, Judge Stark agreed with the Foreign Defendants’ assertion that “plaintiff only provided facts showing sales of accused devices in Delaware five months after the filing of the Complaint.” Id. at 14. Because a court “cannot base jurisdiction on events that occurred after the filing of [the] complaint” in view of the “arising under” language of Delaware’s long-arm statute, Judge Stark found that the Foreign Defendants will be required to show “[f]acts that the accused devices were on sale in Delaware prior to the filing of this suit” in order for the Court to sustain jurisdiction over the Foreign Defendants. Id. at 13-14. Judge Stark noted that the Court will be “prepared to reevaluate whether it can properly exercise jurisdiction over the Foreign Defendants as the case proceeds.” Id. at 14.

Continue reading

Published on:

Judge Richard G. Andrews recently deferred ruling on the part of a Daubert motion which sought to preclude an expert from offering testimony on § 112 defenses on which the expert testified he deferred to counsel.  IPLearn, LLC v. Blackboard, Inc., C.A. No. 11-876 (RGA) (D. Del. Oct. 2, 2014).  Judge Andrews indicated he likely would exclude the expert’s opinion on § 112 defenses, explaining “I am not convinced that these are [the expert’s] opinions on the § 112 issues.  I am quite sure that the legal citations . . . are not only not his, but to cases that he has not read.  Therefore, I expect that I will exclude the opinions [addressing the § 112 defenses] of the report.  I will, however, give Defendant an opportunity before trial to show that the § 112 opinions are indeed [the expert’s] opinions.”  Id. at 4.  The Court proceeded to schedule a pretrial hearing to examine and cross-examine the expert on his § 112 opinions.

Earlier in the decision, the Court denied the Daubert motion to the extent it sought to exclude the expert based on his unfamiliarity with the presumption of validity and the need to prove invalidity by clear and convincing evidence.  The plaintiff had argued that the defendant’s invalidity expert should be excluded from trial for failure to apply the clear and convincing standard or the presumption of validity.  Judge Andrews agreed with the defendant, though, that the expert’s “failure to offer opinions on legal standards has no relevance because that is not the role of the expert.”  Id. at 2.  As the Court explained, “[c]lear and convincing evidence and the presumption of validity are not standards required of expert opinion on invalidity, but standards used by a factfinder.  These are legal concepts that are for jury determinations, not for expert witnesses.”  Id. at 4.

Continue reading

Published on:

Judge Andrews recently denied a defendant’s Daubert motion, which sought to exclude the plaintiff’s technical expert on a number of grounds. The defendant argued that the expert’s opinions “are too unreliable to be presented to a jury” because the expert “lacks familiarity with the infringing products, relied too heavily on someone else to provide him with relevant segments of source code to review, and used the Court’s claim construction to determine how the products work.” IPLearn, LLC v. Blackboard Inc., C.A. No. 11-876-RGA, Memo. Or. at 1-2 (D. Del. Sept. 29, 2014).

Judge Andrews explained that although the expert in question “never used the allegedly infringing products,” and reviewed only portions of the relevant source code selected by another individual, his opinion was “based on ‘thousands of pages of technical manuals, source code, and depositions transcripts.’” Id. at 2. “Even if [the expert] did not know the qualifications of the individual who selected the pieces of source code, or whether there might be other relevant segments of the source code, he was able to determine whether the sections of code related to the elements relevant to infringement. Therefore, his expert opinion is based on sufficient facts and reliable methods. Whether [the expert] should have consulted the complete source code, and might have missed something that would change his opinion, is an issue for cross-examination and, possibly, contradictory expert testimony by Defendant’s expert.” Id. at 3-4. Indeed, the expert “need not use the product if, as here, he has familiarized himself with it in other ways. Reviewing source code and other materials can be sufficient. [Accordingly] Whether [the expert] should have based his expert opinion on personal use with the product, rather than source code and other materials, is fodder for cross-examination, not a Daubert issue for this Court.” Id. at 2.

Further, Judge Andrews explained that “[w]hether [the expert] relied too heavily on his report in his deposition does not, in my opinion, raise a Daubert issue,” because this argument is essentially the defendant contending that the expert “will be a poor witness.” Id. at 3. Finally, Judge Andrews explained that it was “not self-evident from the deposition transcript cited by Defendant that [the expert’s] reference to the Court’s claim construction was an explanation of how the products work, rather than an application of the construed claims onto the product. . . . [T]he infringement expert[’s] . . . role is to compare the construed claims to the allegedly infringing products. Defendant has not shown that he has not done that.” Id. at 4.

Continue reading

Published on:

In Cirrex Systems LLC v. Verizon Services Corp., et al, C.A. No. 13-921-GMS (D. Del. Oct. 1, 2014), Judge Gregory M. Sleet recently granted defendants’ motion to stay the case, which was brought by a non-practicing entity, pending inter partes review.

The Court had previously advised on a July 2014 teleconference that it may grant defendants’ request for a stay.  Id. at 1 n.1.  During that conference, plaintiff had argued that a stay may impede its access to third-party discovery.  However, the Court now found the prejudice to plaintiff to be neutral here, where plaintiff “may seek to recoup its damages and, as a non-practicing entity, may seek adequate redress for potential ongoing infringement during the length of the stay.”  Id. at 2 n.1.  The Court further concluded that the PTO proceedings would likely aid in simplifying the case, even if the PTO does not find any claims invalid.  Id.  Finally, the stage of the case favored a stay, as the case was still in its early phases, with fact discovery closing in January 2015 and trial set for February 2016.

Continue reading

Published on:

In Comcast IP Holdings I LLC v. Sprint Communications Company LP, et al., C.A. No. 12-205-RGA (D. Del. Sept. 29, 2014), Judge Richard G. Andrews concluded that plaintiff’s damages expert had not adequately apportioned damages and thus the analysis was not admissible.

Defendants had filed a motion in limine seeking to exclude profits and or/revenues relating to the accused products, arguing that plaintiff’s damages expert had violated the entire market value rule because the products also contained unpatented features.  Plaintiff argued its expert had, in fact, apportioned revenues between the patented and unpatented technology in the products.  The Court had requested further submissions on this issue, including a proffer of this expert’s testimony.  Id. at 1.

The Court found the expert’s proffer insufficient.  The expert had identified three different functionalities of the accused products and noted that only one was “substantially implicated by the asserted patents,” but there was no indication that she had performed a “‘numerical calculation’ to arrive at a percentage to apply to the profits.  Apportionment does not seem possible without a numerical calculation. There is no evident apportionment in the proffer,” nor in the expert’s deposition or report. Id. at 2.

On the other hand, the Court recognized that its request for additional submissions had focused on whether the entire market value rule had been violated, and that, if it had specifically asked for more detail on apportionment, the subsequent submissions may have been different.  Therefore, the Court allowed plaintiff to submit a proffer “with some detail as to how much of the revenues and/or profits it apportioned to the patented technology, and what the basis for that apportionment is.”  Id.

Continue reading

Published on:

In a series of related actions, Chief Judge Leonard P. Stark recently construed over twenty disputed terms across six patents, finding several terms to be indefinite.  Graphics Properties Holdings, Inc. v. Asus Computer International, Inc., C. A. No. 12-210-LPS and related actions (D. Del. Sept. 29, 2014).

The Court found that the following means-plus-function terms were indefinite:

“instruction decode means responsive to each two parcel item for determining in one clock cycle whether the two parcel item is a single two parcel instruction having a bit length of 2n bits or two one parcel instructions, each having a bit length of n bits,” id. at 10-14;

“instruction issue means responsive to the instruction decode means for issuing each two parcel instruction for execution during said one clock cycle, and for issuing one then the other of the two one parcel instructions for execution in sequence during said one clock cycle and the next succeeding clock cycle,” id. at 16-17 (noting also that the Court was persuaded by the determination of an ITC judge that this term was indefinite, at n. 8).

The Court also concluded that the term “high information content” was indefinite because there was no guidance in the intrinsic record as to what information content would be “high.”  Id. at 36-37.  The Court pointed out that the Supreme Court’s recent opinion on indefiniteness, Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014), “did not disturb the Federal Circuit’s prior holding that when a word of degree is used, the district court must determine whether the patent’s specification provides some standard for measuring that degree.”  Id. at 37 (citation and alterations omitted).  Here, the patent did not: it only indicated that “‘textual information’ and ‘graphic images’ may be high information content,” but a person of ordinary skill in the art “would be unable to separate textual information and graphic images that contain merely ‘information content’ from text and images that contain ‘high information content.’”  Id.  However, the Court concluded that the term “high resolution” was not indefinite, as defendants argued.  Defendants had, in fact, explained in their alternate construction how a person of ordinary skill in the art would have understood this term, and the intrinsic record supported this alternate construction.  Id. at 35-36.  The Court also rejected defendants’ argument that “large area” was indefinite, id. at 29-30, again finding that the intrinsic record provided a concrete definition for the term where it “provid[ed] a lower limit for what a ‘large area’ means”.  Id. at 30.

The Court also found a preamble term, “hardwired supercomputer,” to be limiting, as the patentee had used this term during prosecution to distinguish prior art.  Id. at 7-8.

The Court also construed the following terms:
“hardwired”
“instruction fetch means for providing an instruction stream of two parcel items in sequence, wherein each two parcel item has a bit length of 2n”
“one clock cycle”/”said one clock cycle”
“rasterization circuit”
“rasterization process which operates on a … floating point format”
“frame buffer”
“color values”
“per-fragment operations”
“logic”
“geometry processor”
“scan converter”
“optical compensation film”
“air gap”
“wide aspect ratio”
“digital computer system,” “information originating source”
“gamma profile”
“gray scale resolution”/”grayscale resolution”
“software controller”
“adjustment circuit”
“gamma value”
“backlight control signal”
“graphics controller”

Continue reading

Published on:

Judge Sleet recently granted Nintendo’s motion to transfer to the Western District of Washington in a case filed against Nintendo by Slovak-Republic-based Ithaca Development. Ithaca Ventures k.s. v. Nintendo of Am. Inc., C.A. No. 13-824-GMS, Memo. Op. at 14 (D. Del. Sept. 25, 2014). Judge Sleet first “agree[d] with Nintendo that Ithaca’s forum choice should not be afforded maximum deference. Even though Ithaca Development is organized under Delaware law, its principal place of business being in Texas diminishes the plaintiffs’ argument that it is at home in Delaware. And Ithaca Development’s organization under Delaware law mere weeks before filing this lawsuit further undermines its position, suggesting to the court that its organization here was motivated significantly by the instant litigation.” Id. at 4. In light of these facts, Judge Sleet concluded that “Ithaca’s forum selection is entitled to some degree of heightened deference, but not to ‘paramount consideration.’” Id. at 4-5.

Among the other factors considered in a transfer analysis, Nintendo’s forum preference clearly favored transfer. Id. at 5. The location where the claims “arose” favored transfer slightly because Nintendo marketed and developed the accused products in Washington, although they were designed and manufactured in Japan. Id. at 5-6. The convenience of the parties also weighed in favor of transfer because Nintendo had an office in Washington where several witnesses worked or could work and Ithaca, by contrast, had no contacts with Delaware. Id. at 6-8. Additionally, Nintendo established that the convenience of witnesses factor favored transfer by showing that it expected a third party witness to have relevant testimony and that the witness was within the subpoena power of the Western District of Washington. Id. at 8-9. Further, the location of Nintendo’s books and records in Washington also favored transfer. Id. at 9-10. Finally, the “congestion” of the District of Delaware’s docket, as compared to the Western District of Washington, weighed slightly in favor of transfer. Id. at 11-12. The remainder of the Third Circuit’s Jumara factors were neutral. Id. at 11-14.

In sum, Judge Sleet explained: “Considering the Jumara factors as a whole, the court concludes that the defendants have met their burden of demonstrating that the interests of justice and convenience strongly favor transfer. Only Ithaca’s forum preference weighs against transfer and, as the court explained above, that preference does not warrant maximum deference in this case. Ithaca’s attempt to manufacture venue by organizing in Delaware just before filing suit mitigates the weight of its choice of forum. In contrast, several factors counsel in favor of transfer.” Id. at 14. Judge Sleet also denied a Rule 11 motion filed by Nintendo as moot in light of the transfer, indicating that the Western District of Washington was the correct venue for the Rule 11 motion once Judge Sleet had found transfer was justified. Id. at 15 n.4.

Continue reading

Published on:

This week, the jury returned a verdict for the plaintiff in this case.  Masimo Corporation v. Philips Electronics North America Corporation, et al., C.A. No. 09-80-LPS (D. Del. Oct. 1, 2014).  The jury found plaintiff’s patents not invalid as anticipated, obvious, for lack of written description, not enabled, and indefinite.  Furthermore, the jury found that a certain product was not an acceptable non-infringing substitute.  Defendants had previously conceded infringement.  The jury awarded plaintiff $466,744,783 in damages for infringement.

Defendants had one remaining asserted patent against plaintiff.  The jury also found that plaintiff had not literally or indirectly infringed this patent.

Continue reading

Published on:

Today, the District of Delaware issued a Standing Order revising the Court’s Administrative Procedures Governing Filing and Service by Electronic Means, setting a new filing and service deadline of 6:00 p.m. ET for all documents other than initial pleadings.  Effective October 16, 2014, section (F) of the Court’s Administrative Procedures will be revised as follows:

(F) Deadlines

Filing documents electronically does not in any way alter any filing deadlines. Aside from initial pleadings, all electronic transmissions of documents (including, but not limited to, motions, briefs, appendices, and discovery responses) must be completed by 6:00 p.m. Eastern Time, in order to be considered timely filed and served that day. All electronic transmissions of initial pleadings must be completed prior to midnight Eastern Time, in order to be considered timely filed that day. When CM/ECF calculates a deadline, it will include intermediate weekends and holidays as prescribed in Fed.R.Civ. P. 6. CM/ECF will also add 3 calendar days for mailing as prescribed in section (E)(5) of these procedures.

Continue reading

Published on:

Chief Judge Leonard P. Stark recently considered Defendants motion to dismiss Robert Bosch LLC’s patent infringement claims for lack of personal jurisdiction.  Robert Bosch LLC v. Alberee Products, Inc., et al., C.A. No. 12-574-LPS (D. Del. Sept. 29, 2014).  Two of the three Defendants are Maryland corporations and the third, API, is a Korean corporation.  Id. at 1.  In its complaint, Bosch alleged that API manufactures windshield wiper blade components in Korea and sells them to companies in the United States, including the Maryland Defendants.  Id. at 3.   Bosch further alleged that the Defendants then worked together from Maryland to assemble the wiper blades to market and sell in the United States.  Id.  Plaintiff pointed to no evidence that Defendants have offices, employees, bank accounts, or property in Delaware; travel to or manufacture anything in Delaware; or otherwise have transacted business or directly sold products in Delaware.  Id. at 4.

Bosch did not allege jurisdiction under any one prong of Delaware’s long arm statute, 10 Del. C. § 3104, but that jurisdiction existed “under a ‘dual jurisdiction’ or ‘stream of commerce’ theory.  Id. at 7.  The concept of dual jurisdiction relates to the situation in which a defendant has sufficient general contacts with Delaware and the plaintiff’s claims arise from those contacts.  Id. at 7-8 (citing LaNuova D & B, S.p.A. v. Bowe Co., 513 A.2d 764 (Del. 1986); Wright v. Am. Home Products Corp., 768 A.2d 518 (Del. Super. 2000); Boone v. Oy Partek Ab, 724 A.2d 1150 (Del. Super. 1997)).  Applying the LaNuova, Wright and Boone cases, this Court has held that “‘[t]he dual jurisdiction concept arises from at least partial satisfaction of subsections (1) and (4) of the Delaware long-arm statute . . . . Dual jurisdiction may be established when a manufacturer has sufficient general contacts with Delaware and the plaintiffs’ claims arise out of those contacts.”‘  Id. at 8 (quoting Belden Techs., Inc. v. LS Corp., 829 F. Supp. 2d 260, 267 (D. Del. 2010)).  Jurisdiction would exist if a defendant intended to serve the Delaware market, resulting in a product entering the market; and the plaintiff’s claim arose from injuries caused by this product.  Id. at 8-9.  Judge Stark noted that another Judge in this District recently concluded that the Delaware Supreme Court would not likely “embrace” the theory of dual jurisdiction, Id. at 9., but Judge Stark disagreed finding that “[t]he Delaware Supreme Court has had several opportunities to reject the dual jurisdiction theory but has refrained from doing so.”  Id. at 10-11.

Judge Stark then turned to whether the Defendants here are subject to jurisdiction under the “dual jurisdiction” theory.  Based on Bosch’s allegations, the only question was “whether any or all of Defendants’ actions in placing wiper blades or wiper blade components into the stream of commerce – where those wiper blades and/or wiper blade components end up allegedly causing injury in Delaware (through the sale of the Goodyear Assurance product at Costco) – are sufficient to satisfy the dual jurisdiction theory.”  Id. at 12.  Regarding the Maryland Defendants, Judge Stark found that because they sell the accused wiper blades to nationwide reseller Costco, with locations in Delaware, Defendants “presumptively intend[] to target the Delaware market.”  Id. at 16.  This intent resulted in the introduction of the accused blades in Delaware, and Bosch’s claims arose from injuries caused by those blades.  Id.  Judge Stark also found that a finding of personal jurisdiction comported with Due Process.  Id. at 16-17.  Regarding API, the Korean Defendant, Judge Stark determined that Bosch did not point to any evidence of an agency relationship between API and the Maryland Defendants, nor did Bosch satisfy the requirements of the dual jurisdiction theory.  Id. at 19-20.  Judge Stark did, however, grant Bosch leave to conduct jurisdictional discovery focused on “the relationship among API [and the Maryland Defendants], and the distribution and sale of the accused products in Delaware and throughout the United States.”  Id. at 21-23.

 

Continue reading

Contact Information