In a recent Memorandum Order, Chief Judge Leonard P. Stark granted defendants’ cross motion for partial judgment on the pleadings based on lack of subject matter jurisdiction over the parties’ declaratory judgment claims and affirmative defenses relating to the existence of an implied license (“implied license claims”), and thus dismissed the implied license claims without prejudice. S3 Graphics Co., Ltd. v. ATI Technologies ULC, et al., C.A. No. 11-1298-LPS (D. Del. Dec. 11, 2015). As Judge Stark explained, “[a]n implied license is an affirmative defense to a claim of patent infringement,” and “the parties agree[d] that this case does not involve any allegations of patent infringement.” Id. at 3. Accordingly, Judge Stark concluded that “there is no case or controversy, and the Court must dismiss the parties’ implied license claims.” Id. Judge Stark reached a similar conclusion with respect to “the implied license portion of [plaintiff’s] claim for injunctive relief.” Id. at 4. That is, just as the Court lacks subject matter jurisdiction to determine whether defendants have an implied license to the patents at issue, Judge Stark also found that the “Court lack[s] subject matter jurisdiction to provide [plaintiff] the remedy it requests relating to that claim.” In the same Memorandum Order, Judge Stark also denied plaintiff’s motion for reargument and motion to inspect as moot.
In a recent Memorandum Order, Judge Richard G. Andrews considered defendants’ request to “show that the suboxone film has not achieved commercial success.” Reckitt Benckiser Pharmaceuticals Inc., et al. v. Watson Laboratories Inc., et al., C.A. No. 13-1674-RGA (D. Del. Dec. 15, 2015). Judge Andrews first noted that “Plaintiffs are not claiming commercial success, but are asserting other secondary factors of nonobviousness.” Judge Andrews also noted that “[t]he absence of objective evidence is a neutral factor.” Judge Andrews explained that “marketplace failure could, under the right circumstances, be a ‘negative factor,’” as it “could rebut (in a roundabout way) ‘long-felt need.’” While Judge Andrews “was doubtful that Defendants [can] show marketplace failure,” or “even have a good shot at making commercial results a neutral factor,” Judge Andrews nevertheless found that “Defendants have to decide how to allocate their time. “ Accordingly, Judge Andrews concluded that “if Defendants believe the proffered . . . evidence [regarding commercial success] is a good use of their time, I will allow it.” Judge Andrews reached this conclusion despite the fact that “Plaintiffs unilaterally withdrew their commercial success expert, and Defendants’ expert was to respond to that now foregone evidence.” Judge Andrews did “not see Plaintiffs being unfairly prejudiced by allowing Defendants to put on their evidence.”
In Reckitt Benckiser Pharmaceuticals Inc., et al. v. Watson Laboratories, Inc., et al., C.A. No. 13-1674-RGA; v. Par Pharmaceutical, Inc., et al., C.A. No. 14-422-RGA (D. Del. Dec. 16, 2015), Judge Richard G. Andrews granted-in-part Plaintiffs’ motion in limine to preclude Defendants from offering evidence at trial concerning the an inter partes review of a patent-in-suit.
Defendants were precluded from offering “the PTAB’s factual finding, decisions, and legal conclusions,” but would be allowed to offer opposing party statements admissible under FRE 801(d)(2). Id. at 2. The remainder of documents at issue appeared to be inadmissible hearsay, and the Court thus advised they should not be offered into evidence absent a exception. Id. The Court would permit Defendants at trial to lay a foundation for their expert to rely on a certain declaration from the proceedings (regarding another’s pH measurement), explaining that whether the expert could rely on such data was a factual question that was not amenable to resolution before trial. Id.
Special Master Seville recently decided several discovery disputes arising between plaintiff Callwave and defendants Google and Broadsoft in several related litigations pending before Judge Richard G. Andrews. Callwave Communications, L.L.C. v. AT&T Mobility LLC, et al., C.A. Nos. 12-1701-RGA, 12-1702-RGA, 12-1704-RGA, 13-711-RGA (D. Del. Dec. 17, 2015).
First, Special Master Seville vacated a prior order denying Callwave’s request regarding the production of an expert’s report and testimony from a prior litigation. Id. at ¶ 1-2. Special Master Seville found that the report and testimony related to “opinions on prior art asserted by Google in this litigation and are therefore relevant.” Id. at ¶ 2.
Special Master Seville then considered Callwave’s motion to strike defendants’ expert and defendants’ counter motion to strike Callwave’s new validity opinions and portions of the reply report of its expert. Id. at ¶ 4. After a review of the relevant factors set forth in Meyers v. Pennypack Woods Home Ownership Ass’n, 559 F.2d 894, 904-05 (3d Cir. 1977), Special Master Seville denied both motions. Special Master Seville found no prejudice that could not be cured, no disruption of a trial date (trial was not scheduled), and no bad faith or intentional conduct. Id. at ¶ 10-12.
In this patent litigation between Adidas and Under Armour, Judge Sleet held a Markman hearing on May 14, 2015 and issued a claim construction order on June 15, 2015. The Defendant, Under Armour, subsequently filed a motion to modify the claim construction order based on the fact that the Under Armour had proposed the same construction in filing an inter partes review that it had proposed in the litigation. Although the PTAB did not institute IPR, Under Armour argued that Judge Sleet should adopt the construction advocated before the PTAB because the PTAB had accepted that construction in its denial of IPR. Therefore, Under Armour reasoned, the PTAB’s reliance on that construction means that collateral estoppel should apply. Adidas AG v. Under Armour, Inc., et al., C.A. No. 14-130-GMS, Or. at 2 n.1 (D. Del. Dec. 15, 2015).
Judge Sleet rejected this argument, reasoning that “the PTAB’s choice not to institute and IPR is not the type of adjudication that leads to issue preclusion” because the PTAB adopted Under Armour’s construction only “for purposes of this decision.” Id. Moreover, “the patent owner [Adidas] did not present the PTAB with a different construction than the one it presented to the court. The fact that it did not provide the PTAB with any construction does not weigh in favor of issue preclusion in such a preliminary proceeding. Contrary to the defendants’ assertions, the patentee is not ‘trying to have its cake and eat too.’ The court is not bound by a preliminary claim construction used by the PTAB for the limited purpose of denying an IPR request.” Id.
Intellectual Ventures I, LLC, et al. v. Toshiba Corporation, C.A. No. 13-453-SLR-SRF (D. Del. Dec. 9, 2015), Judge Sue L. Robinson ordered that the stay of Defendant’s antitrust counterclaims remain in place until the patent claims in the case were resolved, “consistent with [Judge Robinson’s] normal practice.” Id. at 1. The Court concluded that “the crux of [Defendant’s] antitrust theories is the ‘poor quality’ of plaintiffs’ patents. . . . So long as [Defendant] relies on the ‘quality’ of the patent portfolio rather than its numerosity and the way it’s asserted . . . Defendant [had] not assuaged the concerns [the Court had] previously identified” with regard to not staying the antitrust claims. See D.I. 96 (March 20, 2015 order granting motion to stay antitrust counterclaims as to those that involve the validity of Plaintiffs’ patent portfolio, but denying motion to the extent the counterclaims relied on “the numerosity and value (i.e., presuming validity) of [Plaintiffs’] patent portfolio” ).
In Verisign, Inc. v. XYZ.com, LLC, et al., C.A. No. 15-mc-175-RGA-MPT (D. Del. Dec. 4, 2015), Chief Magistrate Judge Mary Pat Thynge considered a motion to quash subpoenas. The plaintiff in a false advertising action in the Eastern District of Virginia had served subpoenas on two non-parties, requesting documents related to the sale of a top-level domain name to defendants, agreements and communications related to this domain name and the plaintiff, and communications referencing other domain names. See id. at 3 (listing requested categories of documents).
The Court first found that defendants did have standing to challenge the subpoena, where the non-parties had not objected to the subpoena, explaining that while “[c]ourts have held that parties . . . do not have standing to a subpoena if they are not the target of the subpoena . . . other courts have found that parties who claim privilege or a personal right in the subpoenaed information from a nonparty have standing to object.” Id. at 4-5. Here, defendants alleged that the subpoenas requested “documents between defendants and KBE, who has worked closely with defendants on business transactions, and require the nonparties to disclose confidential information and trade secrets. These representations demonstrate sufficient interest in the requested documents to determine defendants’ standing.” Id. at 5.
The Court also concluded that plaintiff had not provided a reasonable time for response to the subpoenas. Although the non-parties had agreed to a short production turnaround period (five days from service), “the time allotted for compliance was unreasonable and effectively gave defendants one business day [due to holidays] and a total of five days to seek protection of documents, in which they had a sufficient interest.” Id. at 6.
Ultimately, the Court did order production of the subpoenaed documents over defendants’ objections that the requested information was irrelevant to the case in Virginia, that the documents could have been sought through defendants, and that the subpoenas requested proprietary information from whose production defendants would suffer irreparable harm. The Court did observe that it “question[ed] plaintiff’s need to subpoena [certain requested categories] when production of these documents was potentially obtainable from defendants. If any issue arose regarding such production, it then could have been addressed by the court having more familiarity with the underlying matter. To address defendants’ concerns, however, production of the above categories is ordered under the ‘Attorney’s Eyes Only’ designation provided for in the protective order [in the underlying action]. [However], as [one category of] requested documents, the court [found] there was no evidence that these documents contain trade secrets or confidential information of defendants.” Id. at 11.
In a recent memorandum order, Judge Christopher J. Burke denied a defendant’s motion to partially stay a case involving several asserted patents pending the conclusion of the appeal to the Federal Circuit of the PTAB’s decision regarding one of the asserted patents. LG Electronics, Inc. v. Toshiba Samsung Storage Technology Korea Corp., C.A. No. 12-1063-LPS-CJB (D. Del. Dec. 11, 2015). The result of the IPR was a finding that the plaintiff’s patent was unpatentable as anticipated and obvious. The plaintiff appealed that finding and briefing is scheduled to be completed in February 2016. In denying the defendant’s motion to stay pending the outcome of that appeal, Judge Burke’s decision was motivated primarily by the “undue prejudice” factor of the stay analysis. The Court noted that although a case schedule had been set only recently, the case was filed in August 2012, more than three years ago, and the case was delayed due to motion practice by the defendant. Judge Burke explained that “[i]n a vacuum, it does not seem long to wait for another six or seven months for the appeal to conclude before moving forward . . . . But this case cannot be viewed in a vacuum. Instead, it must be viewed in its actual context. . . . [D]elaying the action (in part) by many more months—in addition to the real delay LG has already experienced—is problematic.”
In a recent Order, Judge Richard G. Andrews denied defendants’ motions to dismiss in three related actions. Blackbird Tech LLC v. LEDWholesalers.com Inc. et al., C.A. Nos. 15-60, 15-61, 15-63-RGA (D. Del. Dec. 3, 2015). As Judge Andrews explained, “[t]he main thrust of the motions is to assert that the complaints do not plausibly assert infringement, because they attach a copy of the patent and web shots of the accused products (which appear to be T8 LED tube lights), and it is clear that the pictured products cannot infringe any claim of the asserted patent.” Id. at 1-2. The parties disputed the meaning of certain claim terms, but Judge Andrews found that the “the terminology of the patent claim (while perhaps clear to a POSITA) is not presently clear to me,” and observed this action “seems like a poor candidate for resolution on a motion to dismiss.” Judge Andrew thus denied the motions to dismiss. Id. at 2.
However, Judge Andrews explained that “I am nevertheless concerned about whether I am allowing what might be frivolous litigation to go forward.” Id. at 2. Judge Andrews therefore directed plaintiff “to provide detailed claim charts to each of the three Defendants charting its infringement theories for all asserted claims against at least one of each Defendant’s accused T8 LED tube lights.” Id. at 3. Judge Andrews further directed “[t]he parties . . . to meet-and-confer after the claim charts are filed,” explaining that the parties should discuss, among other things, “whether they can jointly agree upon a way to present the case to me for early resolution.” Id. Judge Andrews ordered the parties to submit a joint status report three business days before the Rule 16 scheduling conference “regarding any agreements or proposals for a means for early resolution of these cases.” Id.
Chief Judge Stark recently denied a motion to stay patent litigation while the defendant pursues an appeal of the PTAB’s decision not to institute inter partes review of the sole asserted claim of the patent-in-suit. Of the factors typically considered in the stay analysis, Judge Stark found that each weighed against a stay. Greatbatch Ltd. v. AVX Corp., et al., C.A. No. 13-723-LPS, Memo. Or. at 1 (D. Del. Dec. 10, 2015).
First, “the Court note[d] that Defendants filed their petition for IPR on the last day permitted by statute. Moreover, Defendants delayed moving for a stay until after completion of discovery, after completion of the parties’ briefing for summary judgment and Daubert motions, almost a year after the PT AB instituted IPR, and less than two months before the pre-trial conference. While delay, by itself, is insufficient to find undue prejudice, here Defendants’ delay in combination with the parties’ status as competitors (or potential competitors) persuade that Court that this first factor weighs against a stay.” Id. at 2.
Second, “the IPR was not instituted as to claim 12, and the PTAB’s final written decision did not directly address claim 12. Any appeal from the PTAB’s decision will also not directly address claim 12. . . . Because the Court already has the benefit of the PT AB’ s final written decision, and because any forthcoming insight regarding the validity of claim 12 from the Federal Circuit or reissue proceedings is wholly speculative at this point, the Court determines that this factor weighs against a stay.” Id. at 3.
Finally, “the Court notes that discovery is complete, the Court has construed the disputed claim terms and ruled on the parties’ multitude of motions, the pretrial conference is less than two weeks away, and a jury trial (which has been on the schedule since April 2014) begins in a month (January 11, 2016).” Id. Moreover, “[t]he discovery process involved at least five discovery teleconferences, an indication of the vast amount of party and judicial resources that have been expended on this litigation, factors that in the overall balancing here – favor staying on course and proceeding to trial on all of the remaining patents-in-suit.” Id. at 3 n.3.