Chief Judge Stark recently considered several pre-trial motions for summary judgment in this litigation between Plaintiff Intellectual Ventures and Defendant Symantec. Two of the summary judgment motions at issue were cross-motions directed to Section 101 patent eligibility. Judge Stark ultimately found that the claims at issue, directed to a method of remote mirroring of data for back-up purposes, were not patent eligible. Intellectual Ventures I LLC, et al. v. Symantec Corp., et al., C.A. No. 13-440-LPS, Memo. Op. at 7-11 (D. Del. Feb. 13, 2017). Judge Stark first found that the claims were directed to “the abstract idea of backing up data. The claims recite the basic steps of copying data from one location to another several times and sending a confirmation that the data has been received. It is undisputed that institutions have long backed up data in general, and the specification even describes long-practiced methods of backing up digital data. Additionally, courts have found similar claims – about storing or copying information – as being within the realm of abstract ideas.” Id. at 8. And although the patent specification described several disadvantages of prior art back-up methods, “[t]he claims do not provide any concrete details that limit the claimed invention to a specific solution to the problem of remote back-up of digital data. The claims simply rely on functional language to describe copying and confirmation steps. Additionally, the claims use existing computer functionality as a tool to better back up data and do not themselves purport to improve anything about the computer or network itself. . . . The specification’s insistence that the claimed invention is an ‘advancement’ over the prior art does not overcome the Court’s conclusion that the claims as written focus on an abstract idea.” Id. at 8-9. Moreover, the claim limitations did not contain an inventive concept because “the patent’s claimed solution merely restates the problem to provide ‘a method for remote mirroring of digital data,’ in which ‘the data copied’ is ‘a substantially concurrent copy.’ Such attempt to claim ‘the abstract idea of a solution to the problem in general,’ as opposed to a particular solution, confirms the patent ineligibility of these claims.” Id. at 11.
In Bio-Rad Laboratories Inc. v. Thermo Fisher Scientific Inc., C.A. No. 16-358-RGA (D. Del. Jan. 31, 2017), Judge Richard G. Andrews denied Defendant’s motion to dismiss Plaintiff’s willfulness allegations. Noting that “[a]t the pleading stage, it is not necessary to show that the case is egregious,” id. at 2, the Court went on to observe that the complaint alleged that Plaintiff “gave [Defendant] notice of its infringement of the patent-in-suit as early as March 2013. On January 2014, proposed licensing terms were sent to [Defendant]. On May 6, 2015, [Plaintiff] sent a letter to [Defendant] of a reminder that sales of the accused products constitute infringement of the patent-in-suit. [Plaintiff] alleges that [Defendant], or one of its subsidiary or affiliated companies directed the filing of the opposition to a European patent that is a counterpart to the patent-in-suit. Accused products continue to be sold.” Id. at 3. The Court concluded that foregoing facts sufficiently alleged willfulness.
Judge Andrews recently denied a motion to amend filed by a Defendant seeking to add a defense of inequitable conduct to its answer. “As an initial matter, [Judge Andrews] reject[ed] Defendants’ assertions that the current motion is not subject to the more stringent ‘good cause’ standard of Rule 16(b),” which is applicable after the scheduling order’s deadline for amendment of pleadings has passed. “Defendants argue that because they ‘openly disclosed their legally sufficient theories of inequitable conduct’ prior to the deadline, the current proposed amendment should not be subject to the ‘good cause’ standard. This is incorrect. Disclosing a legal theory is not the equivalent of substantively amending a pleading.” Sonos, Inc. v. D&M Holdings Inc., et al., C.A. No. 14-1330-RGA, Memo. Op. at 3 (D. Del. Feb. 3, 2017). The Defendant had filed two separate motions to amend with different accompanying proposed amended answers and elected to rely on the later of the two, which was filed after this deadline. Accordingly, the good cause standard applied.
Judge Andrews also found that the Defendant had not met the good cause standard because it had not shown that the prior deadline could not be met, despite its diligence. “The only argument Defendants make in support of diligence, the only factor important in the Rule 16 analysis, is that they ‘have diligently pursued their request for leave since August 1, 2016.’ This is the wrong time frame for the diligence analysis, however. To show good cause, Defendants must show diligence in pursuing their inequitable conduct defense prior to the deadline for amendments; whether Defendants acted diligently, after the deadline, in addressing the deficiencies Plaintiff identified in their First Amended Answer is simply irrelevant. Furthermore, Defendants have not argued that their defense is based on newly disclosed evidence that could not have been obtained prior to the deadline. Nor could they. The inequitable conduct allegations in the proposed Second Amended Answer rest entirely on information that was publicly available months or even years before the deadline for amendments.” Id. at 3-4.
Finally, Judge Andrews explained that “[e]ven if were to find some hint of good cause for this amendment, I am dubious about whether Defendants’ pleading is sufficient . . . [because] Defendants’ identification of the required “who” is murky at best, with most allegations centering on Sonos’s current in-house counsel, an attorney who was not even employed by Sonos until March 2014, years after the occurrence of much of the alleged misconduct. In addition, Defendants’ allegations of intent revolve around Sonos’ s attorneys’ knowledge of the existence of prior art references cited during prosecution of some patents, but not others. This alone is insufficient.” Id. at 4 n.2.
Chief Judge Leonard P. Stark recently considered the parties’ motions to strike expert reports Intellectual Ventures I LLC v. AT&T Mobility LLC, et al., No. 12-193-LPS, 13-1632-LPS, 13-1633-LPS, 13-1635-LPS, 13-1636-LPS, 13-1637-LPS, 15-799-LPS, 15-800-LPS (D. Del. Jan. 31, 2017).
Regarding defendants’ motion to strike portions of the reply report of Dr. Vojcic, Judge Stark granted the motion in part finding that Dr. Vojcic did improperly introduce new opinions in his reply report when he corrected an error identified by defendants’ expert and revised his opinions in reply. Id. at 3-4. Judge Stark did not strike the new opinions, but granted defendants leave to serve sur-reply reports and compelled Dr. Vojcic to produce a supplemental reply report “limited to the bases for his new opinions.” Id. at 5. Judge Stark also required plaintiff to pay 2/3 of the “reasonable expert costs incurred in connection with the preparation of sur-reply reports.” Id. at 6.
Regarding defendant T-Mobile’s motion to strike portions of the reply report of Mr. Bratic, Judge Stark concluded that the relevant factors favored exclusion. The portions in question were a “confirmatory analysis” submitted in response to defendants’ expert’s criticism of the absence of evidence supporting Mr. Bratic’s conclusions in his opening report. Judge Stark determined exclusion was warranted because the evidence on which the reply report was based was available to Mr. Bratic at the time he served his opening report and his reply report “gives an entirely new, different theory,” rather than merely respond to defendant’s rebuttal opinions. Id. at 7. Exclusion, rather than cure, was warranted due to the nature of the prejudice to defendants and plaintiff’s violation of the scheduling order:
Chief Judge Leonard P. Stark recently considered several disputes, including intervenor Adobe System Incorporated’s motion to amend its complaint in intervention and further request for attorneys’ fees. Princeton Digital Image Corporation v. Office Depot Inc., et al., No. 13-239-LPS, 12-287-LPS, 13-288-LPS, 13-289-LPS, 13-326-LPS, 13-330-LPS, 13-331-LPS, 13-404-LPS, 13-408-LPS (D. Del. Jan. 27, 2017). Previously, Adobe requested to intervene in these suits, and the Court granted the request, on the basis that the defendants were Adobe’s customers. Id. at 3. Adobe filed a complaint in intervention, and plaintiff responded to that complaint in all but one suit–the Nordstrom suit. Id. The Clerk subsequently entered default and plaintiff moved to set aside the default. While the Court granted plaintiff’s motion, the Court also granted Adobe monetary sanctions. The parties, however, were unable to agree to the requisite amount of fees. Moreover, Adobe subsequently filed a motion to amend its complaint in intervention to add a claim for restitution damages, which plaintiff opposed.
Regarding the motion to amend, plaintiff argued that the amendment was futile and that Adobe failed to comply with Local Rule 7.1.1 regarding meeting and conferring on non-case dispositive motions. Judge Stark granted the motion to amend. Judge Stark agreed with Adobe that it “could prove restitution damages if it is ultimately determined that Adobe did not get the benefit of its bargain in [a license agreement with plaintiff], because at least some of Adobe’s customers were not protected from suit, as provided for in the agreement.” Id. at 6. Judge Stark did note that Adobe failed to comply with Local Rule 7.1.1 but, “under the totality of circumstances,” denial of Adobe’s motion was not warranted. Id. Regarding the monetary sanctions previously ordered, Judge Stark used the hourly rate Adobe proposed because plaintiff submitted no evidence in support of its proposed rate. Id. at 8-9. Judge Stark also deferred determining the reasonableness of the hours spent on the default-related issues until Adobe had produced billing summaries. Id. at 9.
Judge Richard G. Andrews recently granted motions to dismiss direct, indirect, and willful infringement claims under Rule 12(b)(6) in five related cases. Network Managing Solutions, LLC v. AT&T Inc., et al., C.A. No. 16-295, 16-296, 16-297, 16-298, 16-299 (RGA) (D. Del. Feb. 3, 2017). The Court found insufficient the allegation that the “3rd Generation Partnership Project Standards incorporate the technologies covered by the patents” because it was pled on information and belief. The Court explained, “Plaintiff knows its own patents. The standards are public. Saying on ‘information and belief’ that the standards ‘incorporate the fundamental technologies’ covered by the patents, without more, is insufficient to plausibly allege that the practice the standard necessarily means that a defendant also practices the patent.” The Court found the indirect infringement allegations insufficient for the additional reasons that the complaint failed to identify any third party that actually infringes, and failed to plausibly claim that the Defendants specifically intended to induce infringement. In turn, while recognizing that the plaintiff adequately alleged knowledge of its patent, the Court dismissed the willful infringement claim because it was based on insufficiently pled infringement claims.
Chief Judge Leonard P. Stark recently granted-in-part a defendant’s motion to exclude the testimony of a damages expert. Yodlee, Inc. v. Plaid Technologies Inc., C.A. No. 14-1445-LPS-CJB (D. Del. Jan. 27, 2017). On a number of issues, Judge Stark found that the defendant’s criticism of the expert’s analysis went to the weight to be afforded to it, rather than its admissibility. With respect to apportionment, though, Judge Stark agreed with the defendant that it would be inappropriate to permit the expert to testify in reliance on statements from plaintiff’s employees who were not disclosed under Rule 26 and subject to deposition. The Court therefore granted the motion to exclude apportionment testimony, but without prejudice to the plaintiff serving a supplemental expert report addressing the deficiencies and supplementing its Rule 26 disclosures. Similarly, the Court excluded, without prejudice to supplementing the expert’s report, the expert’s “reasonable royalty analysis as using an impermissible rule-of-thumb profit split.” The Court explained that the expert’s “failure to expressly account for varying pricing structures and the lack of a sufficiently detailed explanation for how he reached the ‘compromises’ [in the expert report] renders [the expert’s] reasonable royalty analysis, as presently articulated, insufficiently reliable.”
In two recent Memorandum Orders, Chief Judge Leonard P. Stark ruled on the parties’ privilege dispute, and denied defendant Future Link Systems, LLC’s (“Future Link”) motion for reconsideration of the Court’s September 28, 2016 Order granting in part plaintiff Intel Corporation’s (“Intel”) motion for summary judgment on its license claim. Intel Corp. v. Future Link Systems, LLC, C.A. No. 14-377-LPS (D. Del. Jan. 27, 2017).
As to the privilege dispute, Judge Stark denied Intel’s request that Future Link produce certain documents withheld as privileged or attorney work product. Judge Stark did, however, grant in part Future Link’s request that Intel produce certain documents withheld as privileged. As to one document that the Court ordered to be produced, Judge Stark noted that “[t]here is no indication that the document was ever actually sent to a lawyer for legal review, and it is unclear what ‘legal review process’ is referred to in the top-level email.” In addition, according to Judge Stark, “the attached slide-show presentation appears to be entirely technical in nature, raising no issues that would clearly require review by an attorney.” As to another document ordered to be produced, Judge Stark explained that “[t]here is nothing in the content of what was redacted that would indicate what legal advice was sought or obtained, if any. Moreover, there is no indication of any communication to an attorney of the redacted portion of the document for the purpose of obtaining legal advice.” (emphasis in original). As to another such document, Judge Stark noted that “[t]he fact that a document was reviewed by an attorney is not enough, by itself, to make the statements which have been redacted privileged.”
Denying Future Link’s motion for reconsideration, Judge Stark explained that the motion “simply repeats arguments that were previously raised [at the March 1, 2016 hearing], and does not add anything that could not have been presented to the Court before the Court’s September 28, 2016 ruling [on summary judgment].” Judge Stark also found that Future Link’s motion for reconsideration on the licensing issue failed on the merits.
The United States District Court for the District of Delaware announced today that, coinciding with the celebration of her birthday, the Honorable Sue L. Robinson has become a Senior United States District Court Judge. Judge Robinson intends to serve the District of Delaware as a Senior Judge until this summer.
The Court, in light of Judge Robinson’s new role, will be modifying case assignment practices effective immediately. Specifically, Judge Robinson will not receive new criminal or civil case assignments. Until the vacancy left by Judge Robinson is filled, some civil cases will be assigned to a “Vacant Judgeship” and referred to one of Magistrate Judges Thynge, Burke, or Fallon, who will have full authority to manage the Vacant Judgeship docket to the extent permitted by law. As needed, cases on Judge Robinson’s docket or the Vacant Judgeship docket will be reassigned to one of the active District Judges.
The Court’s official announcement outlining these changes can be viewed HERE.
In a recent Memorandum Order, Judge Richard G. Andrews denied defendant’s (“Sandoz”) motion to dismiss the case for lack of subject matter jurisdiction. Sanofi v. Lupin Atlantis Holdings, SA, C.A. No. 14-415-RGA (D. Del. Jan. 26, 2017). As Judge Andrews explained, Sandoz made a “Paragraph IV” certification in relation to plaintiff Sanofi’s ’900 patent on February 17, 2016. On October 28, 2016, Sandoz changed the Paragraph IV certification to a “Paragraph III” certification. As Judge Andrews explained, a “Paragraph IV certification creates subject matter jurisdiction,” but a Paragraph III certification does not create subject matter jurisdiction “because it represents that the generic will not market its product before the relevant patents expire.” Id. at 2. According to Judge Andrews, the “precise issue raised here is whether a generic who has filed a Paragraph IV certification divests the district court of jurisdiction by the mere act of converting the Paragraph IV certification to a Paragraph III certification.” Id.
In this instance, Judge Andrews found that such conversion did not divest the court of subject matter jurisdiction. First, Judge Andrews found that “I am not deprived of jurisdiction under 35 U.S.C. § 271(e)(2) and 35 U.S.C. § 1338(a) because it is sufficient that the case was initially certified under Paragraph IV.” Id. at 2-3. Judge Andrews also noted that “[i]t . . . appears that 28 U.S.C. § 2201 may confer jurisdiction.” Id. at 3. Second, Judge Andrews concluded that Sandoz’s mootness argument did not have any merit, finding that in this case there was a “reasonable expectation that the wrong will be repeated.” Id. at 3-5. Indeed, Sandoz conceded that it could “convert its Paragraph III certification back to a Paragraph IV at some future date under certain circumstances.” Id. at 3. Further, Judge Andrews noted that “Sanofi makes an adequately supported argument that Sandoz would reconvert back to Paragraph IV.” Id. at 4. In reaching this conclusion, Judge Andrews distinguished Ferring B.V. Watson Labs, Inc.-Fla., 764 F.3d 1382 (Fed. Cir. 2014) and AstraZeneca AB v. Anchen Pharms Inc., 2014 WL 2611488 (D.N.J. June 11, 2014). Id. at 3-5.