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In Lifeport Sciences LLC, et al. v. Cook Incorporation, et al., C.A. No. 13-362-GMS (D. Del. Feb. 5, 2015), Judge Gregory M. Sleet granted defendants’ motion for judgment on the pleadings regarding one of the patents-in-suit, finding that this patent was subject to a covenant not to sue between the parties.

Plaintiffs’ predecessor-in-interest had entered into an agreement (“2003 Agreement”) with defendants not to sue them or their customers for infringement of a certain family of products which “are or have been sold commercially anywhere in the world.”  Id. at 1 n.1.  The parties disagreed whether this agreement would apply to products sold after the effective date of the agreement.  Applying Indiana law, the Court agreed with defendants’ interpretation that “the use of ‘are or have been sold’ . . . created an ongoing covenant not to sue, not limited in time by the effective date of the 2003 Agreement. The Plaintiffs place unwarranted emphasis on the argument that ‘are’ and ‘have been’ represent only present and past tense, but not future. This simplistic view ignores the fact that present-tense language may also imply future action as well.”  Id. at 2 n.2.  Further, plaintiffs’ reading would render “are” superfluous.  Id. at 3 n.2.  The Court was also not persuaded by plaintiffs’ citations to other sections of this agreement.  Id.

In its analysis, the Court pointed out that while presenting matters outside the pleadings on a 12(d) motion typically converts it to a motion for summary judgment, here the agreement at issue was attached to defendants’ answer, “the parties did not dispute its authenticity, and plainly the Plaintiffs’ claim arising from [this patent] implicates the 2003 Agreement.  Thus, the court may appropriately consider the 2003 Agreement at this stage.”  Id. at 2 n.2.

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Judge Richard G. Andrews recently granted Defendant’s letter request to file an early motion for partial summary judgment in light of the Court’s view that “there is a reasonable possibility that Plaintiff is estopped from asserting that lenalidomide can meet the claim limitations requiring thalidomide under the doctrine of equivalents.”  Andrulis Pharms. Corp. v. Celgene Corp., C.A. No. 13-1644-RGA (D. Del. Feb. 6, 2015).  In its letter request (D.I. 59) defendant argued that “early summary judgment [was] appropriate because Andrulis concede[d] that [the accused product] does not literally infringe and because prosecution history estoppel is a purely legal issue based on indisputable facts that bars Andrulis’s allegation that [the accused product] infringes under the doctrine of equivalents.”  D.I. 59 at 1.  Judge Andrews also cautioned defendant to not file a motion staying discovery pending the Court’s resolution of the partial summary judgment motion because the Court would not use its discretion to grant such a motion.

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In a recent order, Judge Gregory M. Sleet denied the parties’ motions to exclude the testimony of various experts. In particular, Judge Sleet denied plaintiffs’ motion to exclude defendant’s technical and damages experts, and defendant’s motion to exclude plaintiffs’ damages expert. L’Oréal S.A. v. MSD Consumer Care, Inc., C.A. No. 12-99-GMS (D. Del. Feb. 4, 2015).

Judge Sleet found that while the defendant’s technical expert possessed “extraordinary skill in the art of photochemistry,” he did “not satisfy his own definition of one having ordinary skill in the art” as to the subject matter in dispute. Id. at 1 n.1. Judge Sleet explained why the Court would nevertheless permit defendant’s technical expert to testify. Id. Judge Sleet found that “[w]hile there may not be absolute overlap between the fields of photochemistry and sunscreen formulation, the court is convinced that the nexus is sufficiently close such that [the expert’s] testimony is ‘likely to assist the trier of fact to understand the evidence or to determine infringement’ or invalidity.” Judge Sleet further noted that “[t]his is not a situation where [the expert’s] expertise is so far removed from the subject sub-specialty, that he is rendered unqualified to offer his opinion to the fact finder.” Id.

 

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Judge Sue L. Robinson recently granted a defendant’s motion for summary judgment of no remedies.  Rosebud LMS, Inc. d/b/a Rosebud PLM v. Adobe Systems Inc., Civ. No. 14-194-SLR (D. Del. Feb. 5, 2015).  Because it was undisputed that the plaintiff’s patent issued after the defendant discontinued its accused product, the Court explained that the only remedies potentially available were provisional remedies under 35 U.S.C. § 154(d), based on the publication of the patent application.  Id. at 3-4.  Here, however, Judge Robinson found that the plaintiff failed to prove that the defendant had actual notice of the published patent application.  Specifically, the Court rejected the argument that the defendant had an affirmative duty to search patent applications because of the parties’ litigation history.  Id. at 6.  The Court also found that the other purported evidence of actual notice showed, at best, constructive notice, which was not sufficient for purposes of awarding provision remedies under § 154(d).  Id. at 6-7.

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In The Money Suite Company v. 21st Century Insurance and Financial Services, Inc., et al., C.A. No. 13-984-GMS (D. Del. Jan. 27, 2015) and a series of related actions (Nos. 13-986, 13-1747, and 13-1748-GMS), Judge Gregory M. Sleet granted defendants’ joint motion to dismiss (or for judgment on the pleadings), on the basis that the patent-in-suit was invalid as an abstract idea under Section 101.  The patent is directed to “a computerized method for generating price quotes for financial products.”  Id. at 2.

Citing Alice Corp., the Court concluded that the patent was indeed directed to an abstract idea, noting that the “concept is not dissimilar from those discussed by recent [Section] 101 court cases,” including Alice CorpId. at 5.  Furthermore, the patent’s “outlined sequence of steps [e.g., “the use of front-end network gateways to allow users to interface with remote servers in order to generate a price quote for financial products,” id. at 7] is neither inventive nor sufficiently narrow to alleviate preemption concerns.  The use of front-end network gateways . . . is not new[.]”  Id.  Further, “[l]eaving open the possibility of practicing the idea of price quoting financial products manually does not save the [patent-in-suit, as plaintiff contended].  This was the very concern underlying the court’s rationale in Alice: monopolizing computerized implementations while allowing the public to practice the idea ‘by hand’ does not comport with [Section] 101.”  Id. at 9.  The Court also distinguished the patent-in-suit from the patent upheld as valid in DDR Holdings, LLC v. Hotels.com, 773 F.3d 1245 (Fed. Cir. 2014), explaining that the generation of price quotes for financial products was “undeniably a pre-Internet concept,” and thus the asserted claims did “precisely what DDR Holdings explains is fatal to many computer-based patents.”  Id. at 10.

As a result, the Court granted the defendants’ joint motion to dismiss based on Section 101 invalidity.  Id. at 11.

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In Round Rock Research, LLC v. Sandisk Corporation, C.A. No. 12-569-SLR (D. Del. Feb. 4, 2015), Judge Sue L. Robinson considered a number of motions for summary judgment regarding infringement and invalidity based on anticipation.

The Court granted two of plaintiff’s motions for summary judgment of no anticipation, granted defendant’s motion for partial summary judgment of invalidity based on anticipation regarding to other claims, and denied defendant’s motion for partial summary judgment of non-infringement.  All of the motions related to one of the five patents-in-suit being litigated at this stage, U.S. Patent No. 6,060,719, entitled “Hybrid Memory Management.”

As to one of plaintiff’s motions for no anticipation, Defendant rebutted with the contention that even if a single limitation was not disclosed by two different references, “both references [still] disclose the missing material through incorporation by reference of various other patents.”  Id. at 15.  But the Court explained that “[p]roving invalidity through anticipation is a disciplined process that requires showing ‘that the four corners of a single, prior art document describe every element of the claimed invention[]’ . . .  Allowing incorporation by reference for purposes of anticipation in the manner attempted by [defendant] would be contrary to the court’s understanding of accepted litigation practice.”  Id. at 18 (citations omitted).  Accordingly, the Court concluded that neither reference at issue anticipated the asserted claims, and granted plaintiff’s motion for summary judgment of no anticipation.   Plaintiff had also filed a second motion for summary judgment of no invalidity, and because defendant conceded that the reference at issue was a basis for obviousness rather than anticipation, the Court granted this motion as well.  Id. at 18 n.6.

As to defendant’s own motion for summary judgment of invalidity, the dispute centered around whether the ‘719 patent was entitled to a priority date that pre-dated a certain reference.  Late in the case, Plaintiff attempted to offer an attorney declaration to swear behind this reference , which defendant argued should be stricken as untimely.  Id. at 21.  The Court agreed, explaining that plaintiff was “proffering through [the] attorney a legal position never identified during discovery.”  Id. at 21-22.  As plaintiff did not present a substantive rebuttal to defendant’s anticipation argument, the Court granted defendant’s motion.  Id. at 23.

As to defendant’s motion of non-infringement, the Court concluded that issues of material fact existed, including disputes between the parties’ expert, and denied the motion.  See id. at 13-14.

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(Feb. 6, 2015 ) In the second verdict of the day from the District of Delaware, a jury awarded Intellectual Ventures I LLC a sum of $17 million from Symantec Corporation for infringement of two of three asserted patents, in the case of  Intellectual Ventures I LLC v. Symantec Corporation, C.A. No. 10-1067-LPS.

2015.02.06 Verdict Form, Intellectual Ventures I LLC v. Symantec Corporation, C.A. No. 10-1067-LPS

In an unrelated patent infringement verdict rendered from the J. Caleb Boggs Federal Building earlier in the day, a jury awarded Sprint $27.6M from Comcast.

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(Feb. 6, 2015) Today a jury in the District of Delaware awarded $27.6 million to Sprint Communications Company, L.P. from Comcast Cable Communications, LLC and Comcast IP Phone, LLC for patent infringement of all asserted claims of U.S. Patent Nos. 5,742,605 and 6,108,339. Comcast IP Holdings I LLC v. Sprint Communications Company LP et al., D. Del., 1:12-cv-01013-RGA.

This is the first patent damages award by a Delaware jury in 2015.  In 2014, nearly one billion dollars in patent infringement damages were awarded by Delaware juries.

As between the parties to today’s verdict, a jury previously returned a $7.5 million verdict to Comcast from Sprint for patent infringement found in a separate Delaware suit, Comcast IP Holdings I LLC v. Sprint Communications Co. LP et al., D. Del., 1:12-cv-00205-RGA (see http://www.delawareiplaw.com/2014/10/verdict-comcast-ip-holdings-v-sprint-12-205-rga.html), from which counterclaims were previously severed to create the suit just tried.

A third patent infringement suit between the parties, Sprint Communications Company L.P. v. Comcast Cable Communications, LLC et al., D. Kan., 2:11-cv-02684, remains pending in Kansas.

2015.02.06 Verdict Form, Comcast IP Holdings I LLC v. Sprint Communications Company LP et al., D. Del., 1:12-cv-01013-RGA

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The Delaware Chapter of the Federal Bar Association announced today that the first District of Delaware Bench and Bar Conference will be held on May 7-8, 2015 at the Hotel DuPont in Wilmington, Delaware.  The event will feature judges from the District of Delaware, Third Circuit, and Federal Circuit; as well as other distinguished speakers.  More details regarding the program agenda and events, such as dinner at Winterthur, will follow over the next few weeks.

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Judge Andrews recently resolved a novel dispute involving anticipation by a prior art patent. On defendant Comcast’s motion for summary judgment of invalidity, Comcast and plaintiff Sprint agreed that the prior art patent in question discloses each of the elements of the asserted patent claims. Sprint Commc’ns Co. v. Comcast IP Holdings, LLC, et al., C.A. No. 12-1013-RGA, Memo. Or. at 4 (D. Del. Jan. 30, 2015). Sprint argued, however, that under section 102(e), anticipation requires a prior art invention “by another.” Because the prior art at issue shared an inventor with the asserted patent, Sprint reasoned, this requirement was not met. Id. at 5. Examining the testimony of this common inventor, however, Judge Andrews determined that “even though [the common inventor] was an inventor of both the [asserted patent] and the [prior art] patent, the two patents do not share a common inventive entity, as there is no evidence from which the factfinder could conclude that [the common inventor] was solely responsible for the asserted claims . . . and the anticipating disclosures . . . .” Id. at 5-6.

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