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In Draeger Medical Systems, Inc. v. My Health, Inc., C.A. No. 15-248-SLR (D. Del. Mar. 3, 2016), Judge Sue L. Robinson denied Defendant’s motion to dismiss for lack of subject matter jurisdiction, in a declaratory judgment action for non-infringement and invalidity. Defendant, through a third party, had contacted Plaintiff regarding alleged infringement of its patent, and in that communication had informed Plaintiff of Defendant’s efforts to enforce its patent through other litigations, included a claim chart detailing how Plaintiff infringed the Defendant’s patent, and reserved Defendant’s rights to sue and seek damages. Plaintiff had not responded to the letter before filing this action. Defendant argued that there was no subject matter jurisdiction because the foregoing was insufficient to establish an actual case or controversy.

The Court disagreed, holding that the foregoing facts were sufficient based on “the Federal Circuit’s seminal case on this issue [Sandisk, where the Federal Circuit found] jurisdiction where defendant provided a ‘thorough infringement analysis’ prepared by legal experts, stated that plaintiff’s conduct infringed its patents, and claimed that plaintiff would need to pay a royalty for its infringing product.” Id. at 5. The fact that Defendant had informed Plaintiff of prior enforcement of its IP rights also supported a finding of jurisdiction. It was not enough that Defendant’s letter had indicated it was interested in resolution “without litigation.” Id. at 5-6. And, here, “[u]nder the totality of these circumstances, it does not weigh against jurisdiction that [Plaintiff] did not engage in licensing negotiations before initiating a lawsuit or [Defendant] remains interested in a negotiated resolution.” Id. at 6.

Accordingly, the Court denied the motion to dismiss.

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Magistrate Judge Burke recently issued a memorandum order resolving certain discovery disputes in a patent infringement case between Plaintiff GSK and Defendant Teva. There were two main categories of discovery in dispute. First, the parties disputed whether Teva should produce market analyses and sales forecasts as well as business analyses of Teva’s decision to switch from a Paragraph IV certification to a Section viii carve-out for its generic product. Judge Burke accepted GSK’s argument that the information was relevant to induced infringement and to other issues such as objective indicia of non-obviousness, despite Teva’s contention that such documents were irrelevant because “inducement of infringement . . . does not lie when the acts of inducement occurred before there existed a patent to be infringed.” Glaxosmithkline LLC, et al. v. Teva Pharmaceuticals USA, Inc., C.A. No. 14-878-LPS-CJB, Memo. Or. at 1-2 (D. Del. Mar. 3, 2016). Teva also argued that this discovery stretched back in time farther than six years prior to the complaint and were therefore not subject to discovery under the Delaware Default Standard for Discovery absent a showing of good cause. Judge Burke explained that “if the possible existence of some other relevant, non-produced documents was always enough to demonstrate good cause to abandon the Default Standard’s requirements, the Standard would be worth little.” Thus, due to the potential burden of an expansive search, Judge Burke found that good cause had been shown only for a targeted search of the two custodians most likely to have relevant documents dating back to 2007 and ordered the parties to confer about the parameters of that search. Id. at 3-4. Judge Burke also granted GSK’s request that Teva respond to an interrogatory seeking the facts and circumstances regarding its decision to substitute a Section viii carve-out for its Paragraph IV certification. Id. at 5-6.

Second, GSK also sought Teva’s internal analyses regarding manufacturing decisions and patent enforcement. Judge Burke found that these requests “even more clear[ly] . . . could amount to a fishing expedition.” GSK’s proffered explanation of the relevance of this discovery did not adequately counter the “burden the requested searches would impose upon Teva with the potential for little reward.” However, because GSK suggested that it could craft a narrower search, Judge Burked order the parties to confer regarding the potential for such a narrower approach. Id. at 4-5.

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In a series of related actions, Judge Gregory M. Sleet denied the plaintiff’s motion to lift a stay that had been implemented pending inter parties review, where now the PTAB had issued final decisions that were pending appeal to the Federal Circuit. E.g., Safe Storage LLC v. Dell Inc., C.A. No. 12-1624-GMS (D. Del. Mar. 11, 2016). Applying the same legal principles as had been applied to the original grant of the stay, the Court concluded that no relevant factors weighed in favor of lifting the stay. The plaintiff was a non-practicing entity and thus would not suffer a competitive disadvantage. “Statistically, the Federal Circuit likely will rule on the appeals by the end of this year,” and further, its final decision “will simplify the issues for trial, as the Federal Circuit may reverse the PTAB on some or all of the claims. Finally the early stage of litigation favors entering a stay.”  Id. at 1 n.1.

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In EMC Corporation, et al. v. Pure Storage, Inc., C.A. No. 13-1985-RGA (D. Del. Feb. 25, 2016), Judge Richard G. Andrews decided a number of pending motions in limine.

First, the Court concluded that Plaintiffs would not be precluded from introducing evidence of Defendant’s pre-suit knowledge of the patents-in-suit. While Plaintiffs were not seeking pre-suit damages for induced infringement, the Court agreed that knowledge of the patents could still be relevant to the existence of non-infringing alternatives: “[t]hat an accused infringer knew that a particular course of action would constitute patent infringement and yet chose that course anyway could call into question its assertion that acceptable non-infringing alternatives were available.” Id. at 2 (citations omitted). Defendant had also objected to this evidence as overly prejudicial to the extent that it implicated whether Defendant had improper access to the data of a company Plaintiffs had acquired (Data Domain). See id. at 2. The Court found the evidence’s probative value to outweigh any potential unfair prejudice, but recommended that the parties make proposals to reduce the probability that the jury could make improper inferences, and advised that “any hint of argument about improper conduct in relation to Data Domain’s technology would be grounds for a mistrial.” Id. at 5 & n.2. In connection with this motion, the Court also made individual determinations as to the relevance and admissibility of specific deposition testimony and exhibits.

The Court also precluded Plaintiffs from introducing evidence of an IPO valuation of Data Domain and the amount Plaintiffs paid to acquire this company, concluding that Plaintiffs had not shown a nexus between these amounts and the claimed inventions. See id. at 5-6. Even if Plaintiffs could demonstrate such a nexus, the Court concluded that the unfairly prejudicial effect of this evidence outweighed its probative value. Id. at 6.

Finally, the Court granted Plaintiffs’ motion to prevent Defendants from “introducing evidence of or argument based on [its] experts’ testimony that embodiments in the asserted patents’ specifications and commercial embodiments support their views about the plain and ordinary meaning of claim terms.” Id. at 6. The Court concluded that “[t]estimony that embodiments in a patent specification support an expert’s opinions regarding the plain and ordinary meaning of claim terms would amount to claim construction and suggest that literal infringement can be established by a comparison between accused products and specification embodiments” and, similarly, that “[t]estimony that commercial embodiments support an expert’s opinions regarding the plain and ordinary meaning of claim terms would suggest that literal infringement can be established by a comparison between accused products and commercial embodiments.” Id. at 8. However, Defendant’s experts would not be precluded from “making any reference whatsoever to patent specifications and commercial embodiments. Should [Defendant’s] experts refer to specification or commercial embodiments in the course of their testimony regarding the plain and ordinary meaning of claim terms, the determination whether the testimony amounts to claim construction will have to be made on an objection by objection basis in the context of the trial.” Id. at 9. The experts were also not wholly precluded from relying on extrinsic evidence to support their views on plain and ordinary meaning. Id.

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Judge Richard G. Andrews recently considered Apple Inc.’s motion to dismiss Chestnut Hill Sound Inc.’s claims of willful infringement and indirect infringement.  Chestnut Hill Sound Inc. v. Apple Inc., C.A. No. 15-261-RGA (D. Del. Feb. 29, 2016).  Judge Andrews denied the motion as to willfulness allegations based on meetings that took place years before the patents issued because “it is plausible that [Apple] either tracks suggestions of patent infringement, or would be reckless in not doing so.”  But, Judge Andrews did note that Apple may renew the motion if the cases pending before the United States Supreme Court subsequently change the law on willfulness.  Judge Andrews also denied the motion as to inducement claims, but agreed to dismiss Chestnut Hill’s “formulaic” contributory infringement claims.

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Judge Andrews has rejected a challenge to the standing of Plaintiff EMC to sue on two patents. The two patents were originally assigned by their inventors to a company called Data Domain, Inc., which was acquired by EMC in 2009. EMC then reorganized its business in several steps governed by an overarching Reorganization Agreement: “First, Data Domain, Inc. was converted to Data Domain LLC. Second, Data Domain LLC assigned ‘all right, title and interest’ in its intellectual property, including the deduplication patents, to Data Domain Holding, Inc. (‘New Data Domain’). Third, New Data Domain entered a License and Assignment Agreement (‘EIC License Agreement’) with EMC International Company (‘EIC’). Fourth, EIC granted an exclusive sublicense to EMC Information Systems International (‘EISI’). Fifth, New Data Domain transferred ‘all right, title and interest’ in its intellectual property to EMC Corporation. Additionally, EMC Corporation became an authorized reseller of Data Domain products.” EMC Corp., et al. v. Pure Storage, Inc., C.A. No. 13-1985-RGA, Memo. Op. at 2-3 (D. Del. Feb. 29, 2016).

The standing arguments turned on interpretation of the EIC License Agreement between New Data Domain and EIC. According to EMC, The EIC License Agreement granted a limited exclusive license from New Data Domain to EIC but expressly retained the primary right to sue and control litigation, which was subsequently assigned to EMC. According to Defendant Pure Storage, however, the EIC License Agreement, when read in light of the Reorganization Agreement, granted EIC “all substantial rights” in the patents-in-suit, and New Data Domain retained only an ability to “control and direct” infringement litigation on behalf of EIC. Thus, Pure Storage argued, New Data Domain did not retain all substantial rights and did not transfer all substantial rights to EMC. Pure Storage also contended that intrinsic evidence supported its position. Id. at 7-8.

Judge Andrews agreed that the EIC License Agreement and the Reorganization Agreement should be read together and found that the two agreements were not inconsistent or ambiguous. Judge Andrews went on to find that New Data Domain had “retained the primary right to sue for infringement in the EIC License Agreement and subsequently assigned that right to EMC” because: “The EIC License Agreement established that New Data Domain retained the primary right to ‘control and direct the conduct of any actions necessary to prevent or terminate any infringement . . ., including the institution of legal proceedings.’ EIC was granted a secondary right to initiate infringement ‘[i]f New Data Domain fails to take timely action.’ EIC’s right to institute and control infringement litigation is restricted because EIC must submit a written request to take over the conduct and control of infringement litigation and New Data Domain ‘may consent thereto, such consent not to be unreasonably withheld.’” Id. at 9. Important to this finding that New Data Domain had more than mere authority to sue on behalf of EIC was the fact that “New Data Domain could enforce its intellectual property rights without consulting EIC” and that the EIC License Agreement specifically stated that it did not create a principal or agent relationship. Id. at 9-10. Additionally, New Data Domain’s retention of all substantial rights was further supported by the fact that it retained the right to make, use, or sell products embodying the patents at issue and to license the patents outside of its business, which rights later were assigned to EMC. Id. at 11-12. For all of these reasons, the Court held, EMC had standing to sue.

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Judge Andrews recently issued two orders in this case. The first addressed and denied a motion for leave to amend the complaint. Judge Andrews explained that “Plaintiffs proposed amended complaints are boilerplate. Paraphrasing the asserted claim does not suffice. The indirect infringement allegations therefore do not state a claim. As Plaintiff asserts, however, it is early in the case, and if Plaintiff submitted non-boilerplate allegations, it might very well be able to state a claim. It is impossible to say. There would be no prejudice if Plaintiff were able to do so. Thus, the denial is without prejudice should Plaintiff try again within two weeks.” Fo2Go LLC v. Adobe Systems Inc., et al., C.A. No. 15-89-RGA, Or. at 1-2 (D. Del. Feb. 16, 2016).

Additionally, in a separate memorandum opinion, Judge Andrews addressed claim construction issues. The only term in dispute was “server control means for parsing said recipient code from each said message” in representative claim 2 of U.S. Patent No. 7,173,651. Judge Andrews determined that the term was a means-plus-function limitation without corresponding structure and was, therefore, indefinite. In making this finding, Judge Andrews explained that the patentee’s reliance on Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015) was misplaced because Williamson stands for the proposition that absence of the word “means” gives rise to a presumption that the claim is not a means-plus-function limitation, but Williamson held that the converse presumption, applicable in cases such as this where the limitation uses the term “means,” remains unaffected. Fo2Go LLC v. Adobe Systems Inc., et al., C.A. No. 15-89-RGA, Memo. Op. at 4-5 (D. Del. Feb. 24, 2016). Further, because the specification did not disclose the algorithm programed on a special purpose computer to accomplish the claimed function, there was not adequate disclosed structure. The only portions of the specification that the patentee pointed to were “nothing more than a restatement of the function, as recited in the claim.” Id. at 6-7.

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In Cisco Systems, Inc. v. Sprint Communications Co., L.P., C.A. Nos. 15-431-SLR & 15-432-SLR (D. Del. Feb. 19, 2016), Judge Sue L. Robinson granted Defendant Sprint’s motion to dismiss for lack of subject matter jurisdiction.  Plaintiff Cisco had filed invalidity and non-infringement declaratory judgment clams against Defendant.  Defendant had asserted infringement against Plaintiff’s customers based on the use of Cisco products, and some customers had also made demands on Cisco for indemnification.  Id. at 4-5.  The Court held that these facts were insufficient to establish subject matter jurisdiction.  Plaintiff had not established “a reasonable potential that” suit would be brought against it beyond Defendant’s suits against Cisco customers, as required by the Federal Circuit, and while Plaintiff would have standing to bring suit if it had “an obligation to indemnify their customers,” no standing existed based solely on “customer requests without regard to the merits of such requests” based on Federal Circuit precedent.  Id. at 4-5 (emphasis in original).

Plaintiff also argued that Defendant’s “aggressive litigation strategies and [its] refusal to give assurances that it will not enforce its patents against [Plaintiff]” supported jurisdiction.  Id. at 5.  The Court also rejected this argument; while “the Federal Circuit has recognized that a patentee’s refusal to give assurances that it will not enforce its patent is relevant to the determination [of declaratory judgment standing], the Court . . . subsequently explained that such post-complaint facts cannot create jurisdiction where none existed at the time of filing.  With respect to [Plaintiff’s] aggressive licensing and litigation strategies – even in the face of this court’s invalidating various of Sprint’s patents – the prospect of continued litigation against Cisco customers, without more, is insufficient to pass muster under the current legal regime.”  Id. at 5-6 (internal citations and quotation marks omitted).

In a footnote, the Court also clarified that Federal Circuit law did not require Plaintiff’s complaint to “establish its products meet each element of Sprint’s infringement allegations,” as Sprint had argued.  Id. at 6 n.3.

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Judge Gregory M. Sleet recently construed the claim term “physiologically required amounts” following a four-day bench trial on infringement of plaintiff’s U.S. Patent No. 5,989,581.  Merck Sharp & Dohme B.V. v. Warner Chilcott Company, LLC, C.A. No. 13-2088-GMS (D. Del. Feb. 25, 2016).  During the trial, Judge Sleet determined that the parties disputed the meaning of the term and it was appropriate for the Court to resolve the dispute.  Judge Sleet ordered post-trial claim construction briefing and subsequently issued an order construing the term to mean “the amounts of the progestogenic compound and the estrogenic compound required by the body to achieve the full therapeutic effect.”

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In a recent memorandum order, Judge Richard G. Andrews denied a plaintiff’s motion to substitute into the case an individual in place of a corporate plaintiff whose patents were invalidated at trial.  Pi-Net Int’l Inc. v. JPMorgan Chase & Co., C.A. No. 12-282-RGA (D. Del. Feb. 22, 2016).  Judge Andrews explained the patents at issue were transferred to the individual post-trial.  The Court denied the motion, explaining:

There are no equities or interests that support allowing Dr. Arunachalam to continue to litigate the case.  She used the corporate form to bring the lawsuit.  The corporation lost.  Dr. Arunchalam pro se has a history of ignoring the Court’s rules, and, indeed, to her detriment, has ignored the Court of Appeals’ rules also.  Dr. Arunachalam repetitively files motions that no lawyer would file, such as the motions to recuse just about every single judge who is assigned to her cases.  Dr. Arunachalam’s motion in this case states nothing about whether she would accept the litigation liabilities that Pi-Net might have incurred.  (There is a pending section 285 motion.)

The Court proceeded to deny the defendants’ motion for attorneys’ fees, finding that the number of theories upon which the defendant proved invalidity was not a basis to find the case exceptional.  The Court also found no evidence that Dr. Arunachala knew the patents were invalid, or held an unreasonable belief in their validity.  Finally, Judge Andrews noted that the plaintiff’s settlement demand that was 100 times larger than the amount for which the plaintiff was settling similar cases was an indication of bad faith litigation, but was not itself determinative.

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