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Magistrate Judge Christopher J. Burke recently considered defendants Ubisoft Entertainment SA and Ubisoft Inc.’s motion to dismiss plaintiff Princeton Digital Image Corp.’s claims in its Third Amended Complaint for indirect and willful infringement of U.S. Patent No. 5,513,129.  Princeton Digital Image Corp. v. Ubisoft Entm’t SA, No. 13-335-LPS-CJB (D. Del. Nov. 4, 2016).  Regarding indirect infringement, Defendants argued that the Third Amended Complaint failed to allege actual knowledge of the patent-in-suit prior to the lawsuit, and that the original Complaint failed to put Defendants on notice of Plaintiff’s claims after the suit was filed.  Id. at 8.  Judge Burke agreed.

Regarding pre-suit knowledge, Judge Burke found that Plaintiff’s allegation that Defendants had knowledge merely because it was aware of a patent that described the patent-in-suit was “too tenuous to permit the reasonable inference that Defendants had actual knowledge of the [patent-in-suit].”  Id. at 13. Regarding post-suit knowledge, Judge Burke found that the patent-in-suit expired three months after the original Complaint was filed, and that Complaint did not provide any basis for the indirect infringement allegations now pled in the Third Amended Complaint.  Id. at 18-21.  Similarly, Judge Burke also recommended dismissing Plaintiff’s claims of willful infringement because the Third Amended Complaint failed to adequately allege that Defendants had pre-suit knowledge of the patent-in-suit; and because the original Complaint did not plead indirect infringement (willful or otherwise) or how Defendants’ actions in the three month window between the filing of the suit and the expiration of the patent were “an ‘egregious’ case of infringement of the patent.”  Id. at 23-25.

Princeton Digital Image Corp. v. Ubisoft Entertainment SA, No. 13-335-LPS-CJB

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Judge Sue L. Robinson recently considered Defendants’ motion for judgment on the pleadings that the patents-in-suit, related to mobile phones and devices using the LTE standard, claim patent-ineligible subject matter under 35 U.S.C. § 101.  Evolved Wireless, LLC v. Apple, Inc., et al., No. 15-542-SLR, et al. (D. Del. Oct. 31, 2016).  Defendants argued that the claims of the patents were merely “directed to a mathematical algorithm for generating a code sequence” and were therefore not protected by our patent laws.  Id. at 8.

Judge Robinson disagreed.  In reaching that conclusion, Judge Robinson found that:

The ‘916 and ‘481 patents describe problems and solutions firmly rooted in technology used for wireless communications. Specifically, the ‘916 patent explains that the number of code sequences available in the prior art to maintain orthogonality was “limited.” As a result, telecommunication systems either had a higher level of interference or were only able to serve a limited number of mobile phones for a particular base station.  The ‘916 patent relates to a technique for optimizing the number of unique code sequences with orthogonality, overcoming the limitations rooted in prior art.

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Declaratory judgment plaintiff Pride Manufacturing filed suit seeking a declaratory judgment that Defendant Evolve Golf’s design patent and US trademark are invalid and not infringed. Evolve answered the complaint, asserting counterclaims of trademark infringement but admitting the Pride does not infringe the design patent. Evolve then sent Pride a release and covenant not-to-sue on the design patent. Nevertheless, Judge Robinson heard and decided cross motions, Evolve’s motion to dismiss for lack of subject matter jurisdiction and Pride’s motion for judgment of non-infringement. Pride Manufacturing Co., LLC v. Evolve Golf, Inc., C.A. No. 15-1034-SLR, Memo. at 1 (D. Del. Oct. 31, 2016).

Judge Robinson first recognized that a “covenant not-to-sue deprives the court of declaratory judgment jurisdiction relating to claims addressed by the covenant.” Id. at 4. Her Honor was “satisfied that, despite the covenant’s lack of any specific product descriptions, the covenant meets the purpose of removing any concern of liability for infringement of the patent currently in suit.” Id. at 5. Thus, the motion to dismiss for lack of jurisdiction was granted and the motion for judgment denied as moot, but, as Judge Robinson explained, “a controversy still exists regarding the trademark infringement claims and counterclaims.” Id.

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In a recent Order, Judge Gregory M. Sleet granted defendants’ motion to stay pending inter partes review and the resolution of defendants’ motion to dismiss in part. Amkor Technology, Inc. v. Synaptics, Inc., et al., C.A. No. 15-910-GMS (D. Del. Oct. 25, 2016). Plaintiff’s complaint pleads thirteen counts, but only Count I asserts patent infringement, specifically, infringement of U.S. Patent No. 7,358,174 (“the ’714 patent”). Judge Sleet stayed Count I of the matter pending resolution of the inter partes review of the ’714 patent, but otherwise denied the motion to stay. Judge Sleet observed that “[i]t does not appear that a PTAB decision will impact any other claims in the Complaint besides the claim of patent infringement.” Id. at 3 n.5

Considering the traditional stay factors, Judge Sleet first concluded that defendants “would not gain a tactical advantage as a result of a stay of the ’174 patent infringement claim, and Plaintiff is unlikely to suffer undue prejudice.” Id. at 2. Judge Sleet found no evidence that defendants were attempting to gain an unfair tactical advantage, noting that “defendants filed the inter partes petitions for U.S. Patent No. 7,358,174 on April 8, 2016—six months earlier than the statutory deadline.” Id. at 2. n.2 Moreover, “Defendants moved to stay the case less than three weeks after filing the petitions for inter partes review.” Id. As to any undue prejudice, Judge Sleet noted that the “Patent Trial and Appeal Board (“PTAB”) has . . . decided to institute inter partes review” and that “the parties do not appear to be direct competitors.” Id. Plaintiff argued “that [it] face[d] the risk of losing market share and goodwill because Defendants fed confidential information and trade secrets to Plaintiff’s primary competitor,” but Judge Sleet found plaintiff’s argument to present “a separate issue from Defendants’ alleged infringement of the ’174 patent.” Id.

Judge Sleet also determined that “the issues before the court—with regard to Count I—will be simplified by the recently instituted inter partes review proceedings of all currently asserted claims.” Id. at 2-3. Finally, Judge Sleet noted that “[a]lthough a trial date has been set, the fact that this case remains in an early stage reinforces the prospect that a stay of Count I pending review will advance the interests of judicial economy.” Id. at 3.

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In a recent Memorandum, Judge Gregory M. Sleet denied defendant’s (“HTC”) motion to dismiss plaintiffs’ (“Philips”) direct infringement claims, but granted defendant’s motion to dismiss plaintiffs’ contributory infringement claims. Koninklijke Philips N.V., et al., v. ASUSTek Computer, Inc., et al., C.A. No. 15-1125-GMS (D. Del. Oct. 25, 2016). As to the direct infringement claims, HTC contended that Philips’ “use of exemplary—rather than exhaustive—lists of products and claims renders the [first amended complaint] deficient.” Id. at 7. Judge Sleet found, however, that Philips’ direct infringement claims passed muster under Twombly/Iqbal, observing that “[h]ere, Philips provides specific details of at least one of the method and device claims allegedly infringed under each patent-in-suit, specific examples of at least one product HTC manufactures or sells that contains mechanisms or processes performing the identified functions, and specific examples of the class of products which also contain these Accused Functionalities.” Id. at 8. Judge Sleet further explained that Philips’ “allegations are far more detailed than those dismissed in the cases HTC cites. Those cases featured general categories of products such as ‘computer chips, motherboards, and computers.’” Id.

Despite finding Philips’ claims of direct infringement sufficient, Judge Sleet ultimately dismissed Philips’ claims for contributory infringement. Judge Sleet explained as follows: “Here, Philips has specified the categories of products alleged to contributorily infringe as well as the Accused Functionalities they possess. Philips, however, provides no facts supporting the inference that the Accused Functionalities have no substantial non-infringing use beyond the assertion that ‘upon information and belief . . . the only use for the [ ] Accused Functionality is infringing the patent’ and that the ‘Defendants know’ this. This is insufficient, and the court will grant HTC’s Motion to Dismiss.” Id. at 9. Judge Sleet, however, granted Philips leave to amend its complaint to properly allege a claim for contributory infringement. Id. at 10.

Koninklijke Philips N.V., et al., v. ASUSTek Computer, Inc., et al., C.A. No. 15-1125-GMS (D. Del. Oct. 25, 2016).

 

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Chief Judge Leonard P. Stark recently issued the pretrial order resolving motions in limine and setting time allocations for trial.  Andover Healthcare, Inc. v. 3M Company, No. 13-843-LPS (D. Del. Oct. 27, 2016).  Regarding time for trial, the parties requested 41 hours to be split equally between the parties.  Judge Stark rejected this request:

Considering that this is a one patent case, with two asserted claims, four accused products, a single plaintiff and single defendant, at most five invalidity defenses .(written description, enablement, indefiniteness, anticipation, obviousness), damages, and willfulness, and given the number of witnesses the parties intend to call, the Court has determined that the parties will be allocated a maximum of 14 to 16 hours per side for their trial presentations, with the final amount to be determined after further discussion at the pretrial conference.

Id. at ¶ 2.

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In Vehicle IP v. AT&T Mobility LLC, et al., C.A. No. 09-1007-LPS (D. Del. Oct. 20, 2016) (unsealed Oct. 27, 2016), Chief Judge Leonard P. Stark granted-in-part the Defendants’ motion to sever their cases, concluding that joinder under Rule 20 was impermissible as to infringement and damages, and denying the motion with respect to invalidity.

Plaintiff had accused the two groups of defendants, who were competitors of each other, of infringement by different products, but Plaintiff argued that joinder was proper under Rule 20 because the Defendants “advance largely identical arguments on all the key issues in the case . . . ; the allegedly infringing acts occurred during the same time period . . . ; Defendants used identically-sourced components in their respective products . . . ; and Defendants used similar development and manufacturing methods[.]” Id. at 3.

As to infringement, the Court observed that the infringement analysis would differ between the two defendant groups, and that they had engaged different infringement experts. Id. at 4. Severance was proper even if the accused products were the same in relevant respects: Plaintiff “has not argued that there was any relationship between the [defendant groups]; in fact, they are direct competitors, which weighs heavily against joinder. Other factors weighing against joinder include that there is no assertion [Plaintiff] of licensing or technology agreements between the [defendant groups], and that there is no claim for lost profits. Although there is some similarity in the development and manufacturing of the accused products and some components (such as cell phones) come from the same sources, those overlaps are due to the fact that the accused products are cell phone applications, and these components are not part of the infringement dispute. While both groups of Defendants are accused of infringing during the same time period, this factor does not outweigh the other considerations weighing in favor of severance.” Id. Furthermore, in light of Defendants’ argument that consolidation under Rule 42 would be prejudicial due to the high likelihood of jury confusion, the Court granted the motion to sever with respect to infringement and damages. Id. at 5.

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In this multidistrict litigation, a protective order was originally entered in a case between Plaintiff Bear Creek Technologies and Defendant Verizon while the Verizon case was pending in the Eastern District of Virginia. The Verizon case was then transferred to the MDL in the District of Delaware after entry of the protective order. The protective order in question bars the Plaintiff’s litigation counsel from participating in prosecution activities except that the “prosecution bar does not apply to any reexamination proceedings before the [USPTO] that is initiated by any Verizon defendant in this action.” The Plaintiff therefore sought a modification of the protective order because it “exempted reexamination proceeding initiated by Verizon, but did not extend the exemption to proceedings initiated by other parties” and the Plaintiff sought to have the protective order recognize “that the case now involves multiple defendants.” In re: Bear Creek Technologies Inc., MDL No. 12-2344-GMS, Amended Or. at 1-2 (D. Del. Oct. 20, 2016). Judge Sleet, however, declined to modify the protective order, agreeing with Verizon that because “the Protective Order has already been decided by another court, Bear Creek must show, on a counsel-by-counsel basis, that an exemption for a particular attorney or a particular purpose is warranted and Bear Creek has not made this showing.” Id. at 2-3 (citing In re Deutsche Bank Trust Co. Ams., 605 F.3d 1373 (Fed. Cir. 2010)).

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Judge Gregory M. Sleet recently denied a motion to stay pending ex parte reexamination in Polar Electro OY v. Suunto OY, et al., C.A. No. 11-1100-GMS (D. Del. Oct. 31, 2016).  Judge Sleet explained that a review of Public Pair indicated that the PTO withdrew previous rejections of the claims subject to the ex parte reexamination and allowed newly presented claims.  As a result, prosecution on the merits was now closed, and the Court therefore exercised its discretion to deny the motion to stay. Continue reading

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In Sony Corporation v. Pace PLC, et al., C.A. No. 15-288-SLR (D. Del. Oct. 24, 2016), Judge Sue L. Robinson issued a claim construction order in which Her Honor concluded that one preamble of an asserted claim was limiting.   The preamble recited: “[a]n information reproducing device for reproducing an information recording medium in which audio data of plural channels are multiplexedly recorded, the information reproducing device comprising:”.

This preamble explained the purpose of the claimed device, and the “recording medium” was not discussed in the body of the claim. Thus, its presence in the preamble gave was necessary to give meaning to the claim. Id. at 3. The preamble also provided an antecedent basis for terms in the body of the claim. Id. Finally, the Court observed that the parties already agreed that the preamble of another claim in this patent that was similar to the disputed preamble was limiting. Id.

Sony Corporation v. Pace PLC, et al., C.A. No. 15-288-SLR (D. Del. Oct. 24, 2016)

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