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In a recent Memorandum Order, Chief Judge Leonard P. Stark ruled on two issues following the pretrial conference. Intellectual Ventures I LLC v. Symantec Corp., C.A. No. 10-1067-LPS (D. Del. Jan. 21, 2015). First, Judge Stark ruled that “[t]he two newly-accused products will not be the subject of the trial beginning next week.” Id. at 1. Judge Stark provided this ruling, however, without prejudice to plaintiff “to seek relief related to [the newly-accused products] through an appropriate post-trial proceeding in this case or by filing a new suit.” Id.

Second, Judge Stark found that defendant would “not be permitted to present its false marking ‘defense’ at the forthcoming trial.” Id. Judge Stark explained that with respect to two of the three asserted patents, plaintiff is asserting only method claims, and “the marking requirement does not apply to method claims.” Id. With respect to the remaining patent-in-suit, Judge Stark found that “as an exercise of its discretion and as proper case management, that it would be unfairly prejudicial to [plaintiff] to allow [defendant], at nearly the final moment before trial (i.e., listing it as a contested issue in the proposed pretrial order), to put [plaintiff] in a position in which it must prove that it (or its predecessors and/or licensees) marked [its] embodiments.” Id. at 2. Specifically, defendant “mistakenly or misleadingly” identified failure to mark as an affirmative defense in its answer, but did not discuss § 287 in its responses to interrogatories, did not provide expert discovery on failure to mark, and did not propose a jury instruction on failure to mark at the time the parties exchanged instruction proposals. Id. On balance, Judge Stark determined that defendant “failed to give [plaintiff] adequate, meaningful notice that it contested marking,” and defendant therefore “waived and/or abandoned its right to contest marking at the forthcoming trial.” Id. at 2-3.

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Chief Judge Stark recently issued a memorandum order with helpful guidance for parties regarding jury instructions in patent infringement cases. His Honor explained that an instruction on the entire market value rule should be read to the jury, “as doing so will assist the jurors’ understanding of the evidence on damages,” but that an “overly narrow” interpretation of the law governing the entire market value rule would be rejected. Intellectual Ventures I LLC v. Symantec Corp., C.A. No. 10-1067-LPS, Memo. Or. at 1 (D. Del. Jan. 23, 2014). Such an instruction should be read, Judge Stark explained, both when the plaintiff’s expert first addressed entire market value rule damages and again as part of final instructions. Id.

The specific instructions adopted by Judge Stark on the entire market value rule, reasonable royalty, the Georgia-Pacific factors, and damages generally are found in the Court’s order below.

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In Vehicle Interface Technologies, LLC v. Ford Motor Company and its related case against Jaguar Land Rover North America, Judge Richard G. Andrews recently granted the defendants’ motions for summary judgment of invalidity based on anticipation.  C.A. Nos. 12-1284-RGA, 12-1285-RGA (D. Del. Jan. 21, 2015).  The patent-in-suit is U.S. Patent No. 6,842,677, entitled “Vehicle User Interface System and Method.”  Defendants argued anticipation based on the prior sale of the 2001 Mercedes-Benz E-Class.  Id. at 3.  The only disputed issue was the construction of one term (“page”), as plaintiff conceded that if the Court adopted defendants’ construction, then the patent-in-suit was anticipated by this prior art reference.  Id. at 5.  Having adopted defendants’ construction, id. at 10, the Court concluded that the reference was anticipatory and granted defendants’ motion.  Id. at 11-12.

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In a series of related cases brought by Joao Bock Transaction Systems, LLC, Judge Sue L. Robinson granted defendants’ motions to stay pending a final determination by the Federal Circuit in a different case brought by this plaintiff and involving the same patent-in-suit.  E.g. Joao Bock Transaction Systems, LLC v. Capital One Financial Corporation, et al., C.A. No. 14-425-SLR (D. Del. Jan. 12, 2015) (related cases 14-529, 14-530). Because the Federal Circuit will decide whether this patent is invalid under Section 101, a stay would simplify the cases’ issues and streamline the litigations.  Id. at 2.  The Court pointed out that “under the circumstances at bar, the movants are not seeking an undue litigation advantage, but simply seeking the guidance of the Federal Circuit (as is this court) before having to invest in potentially needless litigation.”  Id. at 2-3.

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Chief Judge Stark recently granted Defendant Trend Micro’s motion to transfer a patent infringement suit brought by Selene Communication Technologies to the Northern District of California. Considering the Third Circuit’s Jumara factors, His Honor found “that the factors, in total, weigh sufficiently strongly in favor of transfer.” Selene Commc’n Techs., LLC v. Trend Micro Inc., et al., C.A. No. 14-435-LPS, Memo. Or. at 1 (D. Del. Jan. 16, 2015).

Initially, Judge Stark explained that the plaintiff’s choice of forum and incorporation in Delaware were not dispositive. “[T]he deference to be given to Selene’s choice of forum is reduced because Selene’s principal place of business is in Shaker Heights, Ohio. Additionally, Selene was only created in 2011 and has only owned the patent-in-suit since July 2013.” Id. at 1-2.

On the other hand, the defendants’ choice of forum weighed in favor of transfer because one defendant is a California corporation and the other is a Delaware corporation, but both have significant operations in Cupertino, California. Thus, “Defendants have legitimate and rational reasons for their choice of forum, and therefore, it is entitled to weight, but not the same weight as Plaintiffs’ choice of forum.” Id. at 2. The location where the claim arose also weighed in favor of transfer because “research and development of the allegedly infringing products occurred primarily in the Northern District” of California and “the patent-in-suit was, until July 2013, held by . . . a California company with a principal place of business in Menlo Park, California, meaning that any harm from infringement prior to that date was suffered primarily in the Northern District.” Id. at 2-3. Additionally, the convenience of witnesses weighed in favor of transfer because, although there was no evidence that third party witnesses would refuse to testify without a subpoena, three of the four inventors reside in the Northern District. Id. at 3.

Judge Stark concluded: “The remaining Jumara factors are either neutral or slightly favor transfer. Overall, then, the Court concludes that Trend Micro has met its burden to show that the pertinent factors weigh strongly in favor of transfer.” Id. at 3-4.

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In a recent Memorandum Order, Magistrate Judge Christopher J. Burke denied plaintiff’s motion to lift the stay pending inter partes review (“IPR”) in two related actions. Princeton Digital Image Corp. v. Konami Digital Entertainment Inc., C.A. Nos. 12-1461, 13-335-LPS-CJB (D. Del. Jan. 14, 2015). Defendants had filed two petitions for IPR of the patent-in-suit, U.S. Patent No. 5,513,129 (“the ‘129 patent”), and the PTAB granted each petition in part. Id. at 2-3. As Judge Burke explained, only “three claims from the ‘129 Patent’s 23 claims are not currently under review in [the] two IPR proceedings: claims 14, 19, and 20.” Id. Each of those three claims are dependent claims, depending from two independent claims under review. Plaintiff thus requested that the Court lift the stay “at least with respect to claims 14, 19, and 20.” Id. at 3.

Judge Burke found, however, that “were Plaintiff’s request to lift the stay granted-either as to claims 14, 19 and 20, or as to all claims-that could significantly complicate the issues in these actions and lead to inefficiency.” Id. at 4. Judge Burke further explained that “the ongoing IPR proceedings could simplify issues at play in this case-even as to the few dependent claims (claims 14, 19 and 20) that the PTAB does not currently have under review.” Id. at 5. Lastly, Judge Burke noted that as of the current date, “all but three of the [the ‘129 patent’s] claims are under review,” which was less than the six claims not under review at the time the court initially granted stay. Id. at 6. Judge Burke therefore concluded that “any changed circumstances since the date of the Court’s Order on the stay motions do not favor Plaintiff’s position” regarding simplification of the issues, and “[i]f anything, . . . the rationale for a stay [with respect to simplification] is stronger now as compared to when the Court initially granted the stay.” Id.

Turning to plaintiff’s argument regarding undue prejudice, Judge Burke explained that since the Court’s original order granting stay, “the most significant changed circumstance is the fact that the PTAB has initiated its review” in response to a second IPR petition. Id. at 7. Judge Burke found that “[t]he additional delay likely associated with that proceeding will mean that relevant PTAB proceedings will remain ongoing longer than was expected at the time of the Court’s prior Order,” but also explained that “[t]he mere potential for delay . . . is insufficient to establish undue prejudice.” Id. at 7-8. Judge Burke further noted that the “other relevant subfactors” related to undue prejudice (the timing of the request for review, the timing of the request for a stay, and the relationship of the parties) favored stay. Id. at 8. On balance, Judge Burke found the “undue prejudice” factor to be neutral. Id. at 8.

Considering the factors discussed, Judge Burke concluded that “overall, the calculus still supports a stay.” Id. at 8.

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In Invista North America S.A.R.L., et al. v. M&G USA Corporation, et al., C.A. No. 11-1007-SLR, defendants filed motions to stay the bifurcated damages and willfulness stages of the case, and for relief from judgment under Rule 60(b), following entry of final judgment of infringement for plaintiffs.

In addition to appealing that judgment, defendants had also filed requests for reexamination with the PTO, and the PTO subsequently issued an office action rejecting all claims of the patent-in-suit as invalid.  As a result, even though the Federal Circuit affirmed the district court’s final judgment, defendants moved to stay the damages and willfulness portions of the case, and for relief from judgment under Rule 60(b) in light of the reexamination process.

Judge Robinson denied both motions.  (D. Del. Jan. 14, 2015).  A stay would “impose a clear tactical disadvantage to [plaintiffs], the party with a final judgment in hand obtained at great cost, given the fact that [defendants had] defended itself vigorously.”  Id. at 3.  Instead, once damages had been determined, the Court would “consider whether it is appropriate to maintain the status quo at that point in time, depending on the status of the reexamination proceeding.”  Id. at 4.

As to the 60(b) motion, the Court concluded that the PTO’s non-final office action was “simply a preliminary determination of its legal conclusions, [and] it does not constitute the kind of ‘new evidence’ that courts generally view as sufficient to change the outcome of the trial.”  Id. at 5.  The Court also rejected defendants’ other arguments that plaintiffs “made post-verdict ‘contradictory representations’ to the European Patent Office” warranting relief, and that the recent Federal Circuit decisions regarding indefiniteness should be considered pursuant to Rule 60, “despite the fact that [defendants] never presented the defense of indefiniteness at trial or on appeal.”  Id.  Finally, the Court disagreed that an injunction was no longer equitable I light of the PTO’s rejections; it “decline[d] to nullify a remedy approved by the Federal Circuit on the basis of reexamination proceedings still in their infancy.”  Id. at 6.

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In a recent Order, Judge Gregory M. Sleet ruled that a plaintiff/assignee lacked standing to assert privilege over communications between its assignor and the assignor’s counsel, explaining that the assignment of a patent, on its own, does not result in the assignee “inheriting” the assignor’s attorney-client privilege with respect to the prosecution of the patent.  Green Mountain Glass, LLC v. Saint-Gobain Containers, Inc., C.A. No. 14-392-GMS (D. Del. Jan. 14, 2015).  Rather, Judge Sleet explained, the privilege analysis depends on a close review of the facts to determine whether the assignment resulted in a “transfer of control of the business and the continuation of the business under new management,” as opposed to simply the transfer of an asset.  Id. at 2 n.1 (quoting SimpleAir, Inc. v. Microsoft Corp., 2013 WL 4574594, at *2 (E.D. Tex. Aug. 27, 2013)).  In this case, the Court found that the assignor and assignee entities “were certainly not strangers to one another,” but saw “no relationship that would support a transfer of privilege.”  The Court acknowledged that “a planned stock-for-stock merger” could support a showing that “a continuous relationship existed between” the assignor and the assignee, but noted that in this case “the anticipated merger did not occur.”  Id. at 2 n.1.  As a result, the Court viewed the assignment as a mere transfer of assets, with no transfer of privilege.

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Chief Judge Stark recently denied a plaintiff’s Rule 60 motion to set aside a jury verdict.  Power Integrations, Inc. v. Fairchild Semiconductor Int’l Inc., et al., C.A. No. 08-309-LPS (D. Del. Jan. 13, 2015).  Judge Stark found the motion was untimely, coming more than 30 months after the verdict and 19 months after the Court’s rulings on post-trial motions.  Further, the Court found that the plaintiff had not identified any new evidence that existed at trial but were not discoverable at that time.  Rather, the Court explained the motion was based on evidence which came into existence after trial through events occurring in a related case and reexamination.

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Chief Judge Leonard P. Stark recently considered a motion dismiss plaintiff’s ANDA infringement action for lack of personal jurisdiction, applying the recent Supreme Court decision Daimler AG v. Bauman, 134 S. Ct. 746 (2014).  Acorda Therapeutics, Inc. v. Mylan Pharms. Inc., C.A. No. 14-935-LPS (D. Del. Jan. 14, 2015).  Judge Stark agreed that Daimler “altered the analysis with respect to general jurisdiction[,]” but unlike the recent decision by Judge Sleet, found that “Mylan Pharma consented to this Court’s exercise of personal jurisdiction when it registered to do business and appointed an agent for service of process in the State of Delaware.”  Id. at 1.  Regarding Mylan Pharma’s co-defendant and corporate parent, Mylan Inc., while it is not registered to do business in Delaware, Plaintiffs allege “a non-frivolous claim that Mylan Inc. used Mylan Pharma as its agent in connection with the ANDA filing giving rise to this litigation.”  Id. at 2.  Therefore, as to Mylan Inc., jurisdictional discovery was warranted.

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