The Local Rules of the District of Delaware, as annotated by the attorneys of Young Conaway Stargatt & Taylor, LLP, are now available online in HTML webpage format, which some may find easier to search and navigate than other electronic formats. Click HERE to follow the link. Be sure to bookmark and share the page. Paper copies of the annotated Rules, as well as electronic copies formatted for use with tablets or e-readers, are available upon request.
In a declaratory judgment action in which Geotag accuses Google’s advertisement products of infringement, Judge Richard G. Andrews ruled on several motions for summary judgment filed by Google, the plaintiff and counterclaim-defendant. Microsoft Corporation, et al. v. Geotag, Inc., C.A. No. 11-00175-RGA (D. Del. Apr. 10, 2014).
The Court denied Google’s motion for partial summary judgment on the basis of laches. Google argued that Geotag had actual or constructive notice of alleged infringement since 2003 and that a presumption of laches applied, citing information from a Google site available since 2003, as well as Google and third-party blog posts and articles from 2003-2005. Id. at 5. The Court agreed with GeoTag that, based on its review of the content of these sites, these facts were insufficient to put Geotag on notice of potential infringement. There was no showing of actual notice, and “none of the publications are sufficiently detailed to establish constructive notice or to trigger GeoTag’s duty to investigate, even had GeoTag known of them.” Id. at 6-7. As Google’s motion relied on the six-year presumption of laches and the Court found that it had not shown that the presumption applied, the motion for summary judgment was denied. Id. at 7. The Court also denied a motion for summary judgment of invalidity based on both anticipation and obviousness. See id. at 7-11.
However, the Court granted Google’s motion for summary judgment of noninfringement, finding that the accused system did not practice the patent’s “dynamic replication” requirement. See id. at 11-18.
In Intellectual Ventures I LLC v. Xilinx, Inc., C.A. No. 10-1065-LPS (D. Del. Apr. 21, 2014), Judge Leonard P. Stark granted defendant’s motion for summary judgment on damages and willfulness in part. Prior to the summary judgment opinion, Judge Stark had excluded plaintiff’s sole damages expert as unreliable and denied plaintiff’s request to supplement its damages report. Id. at 2.
Judge Stark granted defendant’s motion for summary judgment of no willful infringement based on defendant’s assertion that plaintiff “cannot satisfy the objective prong of a willfulness claim.” Id.at 6. Judge Stark found that defendant had “at least one reasonable defense to each allegation of infringement.” Id. at 7. Specifically, Judge Stark explained that defendant raised non-infringement defenses that were not unreasonable, and that the PTO’s rejection and plaintiff’s cancellation of certain claims of three patents-in-suit further demonstrated the reasonableness of these defenses. Id. at 6-7. Judge Stark also granted defendant’s summary judgment motion of no damages for distributor sales, as the basis for those damages relied on the testimony of the excluded damages expert. Id. at 7.
Defendant also moved the Court to rule as matter of law that plaintiff cannot prove any damages on the grounds that plaintiff’s “only support for damages comes from [the excluded] expert opinion.” Id. at 3. Judge Stark denied defendant’s motion, noting that there was “sufficient evidence in the record”—independent of the excluded expert testimony—“from which a jury could find a reasonable royalty.” Id. Such evidence included, for example, agreements between the parties and the testimony of defendant’s damages expert. Id.
Judge Stark also denied defendant’s motion that requested the Court to rule as a matter of law that plaintiff cannot provide any damages for induced infringement on the basis that plaintiff had “no evidence concerning the actual use of the accused products.” Id. at 4. Judge Stark explained that plaintiff’s expert asserted that the accused software product had “default settings” that met each limitation at issue. Id. Despite the fact that customers could change the defaults settings, Judge Stark found there was sufficient evidence such that a reasonable jury could find that “the product, as sold, necessarily infringes the patents-in-suit.” Id.
Judge Stark denied defendant’s request that the Court rule as a matter of law that plaintiff was not entitled to “pre-suit damages for induced infringement, or willful infringement or enhanced damages, because [plaintiff] bases these claims solely on information [plaintiff] exchanged with [defendant] pursuant to a contractual business relationship, and those contracts preclude [plaintiff] from using that information to support [plaintiff]’s case.” Id. at 5. Judge Stark found, however, that a genuine issue of material fact existed as to whether plaintiff notified defendant of the patents-in-suit pursuant to the parties’ contractual business relationship. Id.
In a recent decision, Judge Sue L. Robinson granted defendants’ motion for a stay pending inter partes review. Peschke Map Technologies, LLC v. J.J. Gumberg, et al., Civ. No. 12-1525-SLR, 12-1527-SLR, 12-1528-SLR, 12-1530-SLR, 12-1572-SLR, 12-1574-SLR (D. Del. Apr. 24, 2014). The PTAB’s decision on the inter partes review is due in November 2014, just 10 days before the pretrial conference was scheduled to be held. Nevertheless, Judge Robinson explained that “it makes more sense to stay litigation pending the decision of the PTAB in November than to try to accommodate plaintiff’s needs for further discovery in the remaining months leading to trial in December. A stay should clarify, if not simplify, the issues for trial and, should the cases not be resolved administratively, the court will set a new trial schedule expeditiously . . . .”
Judge Robinson has issued a supplemental permanent injunction in the Invista v. M&G USA case, which involves resins manufactured by the parties and sold to customers to make containers. Following a jury trial, Judge Robinson had previously granted a permanent injunction. The previous injunction had not, however, addressed sales for exportation outside of the United States under 35 U.S.C. § 271(f). In considering the request for the new injunction, Judge Robinson pointed out that although the plaintiff had not “specifically invoke[d] 35 U.S.C. § 271(f) in connection with the [patent-in-suit], Invista did ask in its complaint for an injunction permanently enjoining [the defendant] from ‘. . . exporting out of the United States any products that infringe any claims of the patents-in-suit . . ., or by supplying or causing to be supplied any products that induce or contribute to the same by others, including third parties outside of the United States.’” Invista N. Am. S.A.R.L., et al. v. M&G USA Corp., et al., C.A. No. 11-1007-SLR-CJB, Order at 1-2 (D. Del. Apr. 21, 2014). Because there are no non-infringing uses of the products found to infringe, Judge Robinson agreed that the plaintiff would be irreparably harmed if the defendant “manufactures such resins, regardless of who the customers are.” Id. Her Honor therefore permanently enjoined the plaintiff “from infringing the [patent-in-suit] by manufacturing, using, importing, selling, and/or offering to sell in the United States, or exporting from the United States” the infringing products until the expiration of the patent-in-suit. Judge Robinson did, however, order that the injunction not take effect for ten days in order to allow an immediate appeal to the Federal Circuit. Id. at 2-3.
Judge Leonard P. Stark recently considered several summary judgment motions and motions to exclude expert testimony, among others, in Intellectual Ventures I LLC v. Check Point Software, et al., C.A. Nos. 10-1067-LPS, 12-1581-LPS (D. Del. Mar. 31, 2014 – public version released Apr. 14, 2014).
Judge Stark largely denied the parties’ motions to exclude experts, including Symantec’s motion to exclude Plaintiff’s expert for applying the Entire Market Value Rule. Id. at 8-25. Judge Stark found that the expert’s opinion was “permissible” in light of the circumstances that the patent-at-issue was “the essence of the ‘security-as-service’ products.” Id. at 13. Judge Stark did strike the portion of Symantec’s infringement expert’s opinion that contradicted the Court’s construction of the term “indication of a characteristic.” Id. at 24. Judge Stark also largely denied the parties’ summary judgment motions finding that “genuine disputes of material fact preclude[d] summary judgment.” Id. at 27. Judge Stark did, however, grant summary judgment of no willful infringement, finding that Plaintiff could not meet the objective prong of Seagate in light of Symantec’s “reasonable claim construction positions, legitimate defenses to infringement, and credible invalidity arguments.” Id. at 37. Judge Stark also granted Plaintiff’s motion for partial summary judgment on Trend Micro’s affirmative defenses, finding that Trend Micro put forth insufficient evidence in support of the defenses. Id. at 38-41.
Judge Stark also denied Symantec’s and Trend Micro’s motions for leave to amend their answers to add an antitrust-related claim. Judge Stark found that the evidence underlying the proposed additional claim was known or should have been known to defendants prior to the deadline to amend pleadings in May 2012. Id. at 41-44. Last, Judge Stark denied Defendants’ motion for sanctions for Plaintiff’s failure to “fulfill its duty to preserve the database created by the inventors” of one of the patents-in-suit. Id. at 44. Judge Stark found that a CD containing the database was misplaced in 2006, but Plaintiff’s “conduct in attempting to locate the CD is inconsistent with a suggestion of bad faith misconduct and intentional destruction of evidence.” Id. at 47. Further, Judge Stark found that no evidence indicated that in 2006 litigation was “either pending or reasonably foreseeable.” Id.
In Interdigital Communications, Inc. et al. v. ZTE Corp., et al., C.A. No. 13-009-RGA and Interdigital Communications, Inc. et al. v. Nokia Corp., et al., C.A. No. 13-010-RGA (D. Del. Apr. 22, 2014), Judge Richard G. Andrews recently construed disputed terms found in U.S. Patent Nos. 7,190,966; 7,286,847; 7,941,151; and 8,380,244:
“generated using [a same/a portion of a/a remainder of the] code”
“successively transmits signals; successively transmitted signals”
“[a/the] same physical downlink control channel”
“utilizing the radio resources for the uplink shared channel or the downlink shared
Channel.” This term appeared in claim 1 and 16 of the ‘151 patent. The Court held that claim 16 was invalid as indefinite: “the Plaintiffs ask the Court to rewrite a method step in an apparatus claim to preserve its validity. The Court finds that this correction is subject to reasonable debate and therefore will not redraft the claim.” Id. 8. The Court did construe this term as used in claim 1 of the same patent. Id. at 7-8.
“channel assignment information”
“configured to communicate with an IEEE 802.11 wireless local area network”
“maintain a communication session with the cellular wireless network in an absence of
the plurality of assigned physical channels”
“assigned physical channels,” “release, ” “allocate,” and “deallocate”
Judge Burke recently considered INVISTA’s motion for contempt and for modification of the protective order. INVISTA N. Am. S.a.r.l., et al. v. M&G USA Corp., et al., C.A. No. 11-1007-SLR-CJB (D. Del. Apr. 25, 2014). Previously, a jury found in favor of INVISTA and, following post-trial motions, Judge Robinson entered judgment in favor of INVISTA and granted INVISTA’s motion for a permanent injunction. In support of its contempt motion, INVISTA argued that M&G filed a petition in Virginia state court seeking an order requiring discovery from INVISTA, that “willfully violated three orders of the Court,” including the protective order Id. at 8 (internal quotations omitted). Judge Burke denied INVISTA’s motion finding that clear and convincing evidence did not demonstrate that M&G “knowingly disobeyed a valid order of this Court.” Id. at 10. For example, while one such order denied M&G’s motion to compel the discovery, that denial was “in the context of ‘this patent infringement action[.]'” Id. at 11 (emphasis and alteration in orginal). Judge Burke also found that M&G did not disobey the protective order in this case when it publicly filed the Virginia petition using information from a confidential document inadvertently produced in this case. Judge Burke found that the protective order’s restrictions did not apply to information that was in the possession of M&G before it was “transmitted” by INVISTA to M&G in the litigation. Id. at 18.
In a recent order, Judge Sue L. Robinson denied a plaintiff’s motion for a 90 day stay to permit it to select new counsel. In re: Automated Transaction LLC Patent Litig., No. 13-MD-2429-SLR (D. Del. Apr. 17, 2014). In its motion to stay, the plaintiff argued that a stay was appropriate and would allow it to retain new counsel who “will prepare a Motion before the Court as to why the forensic examination [of Defendants’ ATMs and networks] should take place before construction of any claim terms . . . .” (D.I. 144) Judge Robinson rejected that argument and explained that, “in light of the age and history of this MDL action, plaintiff’s motion for a stay is denied and defendants’ motion for the claim construction process to move forward promptly is granted.”
Following a jury trial, Judge Richard G. Andrews recently entered judgment on the jury’s verdict, pursuant to Rule 58(b)(2), that Claims 15, 16, 17, 19, 20, 21, 50, 60, 63, 70, 73 and 80 of L-3’s U.S. Patent No. 5,541,654 are valid. L-3 Communications Corp. v. Sony Corp., et al., C.A. No. 10-734-RGA (D. Del. Apr. 21, 2014).