In their answer in this patent infringement action, Defendants asserted an affirmative defense of inequitable conduct. The inequitable conduct defense alleged that the inventor and prosecuting attorney of the patent-in-suit had failed to disclose to the PTO an arguably-relevant interference and that the patent-in-suit would not have been granted but for that failure to disclose the interference. The interference in question involved both a patent application and an issued patent. The patent-in-suit claims priority to one application, which in turn claims priority to the application subject to the interference. Defendants argued that because the interference concluded with a determination that this application had been invented “by another,” the subject matter of the patent-in-suit had also been invented by another. Plaintiff moved to strike the affirmative defense, and Judge Stark granted the motion, finding that the Board of Patent Appeals and Interferences had made no priority determination but instead disposed of the interference a barred by the applicable statue of repose. Thus, the interference in question was not material to patentability, rendering the inequitable conduct defense implausible. Elm 3DS Innovations, LLC v. Micron Tech., Inc., et al., C.A. No. 14-1431-LPS, Memo. Or. at 1-3 (D. Del. Aug. 10, 2015).
Judge Andrews recently considered post-trial motions after a jury found Comcast infringed all asserted claims of the patents-in-suit. Sprint Commc’ns Co. L.P. v. Comcast IP Holdings, LLC, C.A. No. 12-1013-RGA (Aug. 7, 2015). Comcast moved for judgment as a matter of law on the issue of infringement. Comcast argued, among other things, that its accused networks “do not and cannot contain multiple, unique ring terminals-and thus do not infringe the asserted patent claims.” Id. at 5. Viewing the evidence in Sprint’s favor, Judge Andrews found that “a reasonable jury could not have concluded that a combination of interface cards meets the Court’s construction of ‘ring terminal.'” Id. at 11. Judge Andrews found that the testimony of Sprint’s expert was contradicted by the platform manuals. Id. Judge Andrews also found that the platforms in the accused networks share multiple rings, therefore a reasonable jury could not have found infringement. Id. at 15.
In the alternative, Comcast also moved for a new trial arguing, among other things, that Sprint presented a new infringement theory based on expert testimony not previously disclosed. Id. at 21. Judge Andrews agreed. Prior to trial, Comcast filed a motion in limine to preclude the expert’s testimony that “a single interface card is a ‘ring terminal'” because it was not disclosed in his expert report. Judge Andrews reserved decision. Id. at 23. After Comcast renewed the argument post-trial, Judge Andrews found that Comcast was entitled to a new trial because Sprint’s concession at oral argument that “a single interface card is not the ring terminal” was in direct conflict with Sprint’s arguments at summary judgment and its expert’s testimony at trial. Id. at 25.
Judge Richard G. Andrews recently stayed two cases pending inter partes review. MiiCs & Partners Am. Inc. v. Toshiba Corp., et al., C.A. Nos. 14-803-RGA, 14-804-RGA (D. Del. Aug. 11, 2015). Judge Andrews found that inter partes review “has the potential to simplify the issues for trial . . . the law of probabilities makes it almost certain that the PTAB will grant at least some of the petitions, and that some of the claims will eventually be rejected or modified, and others of them, even if neither rejected nor modified, will garner additional prosecution history that may be relevant to claim construction.” Id. at 2. The Court added that the case was still relatively early in the schedule, with no depositions yet conducted, and expert discovery a long way off. Finally, the plaintiffs were non-practicing entities, such that “[i]t does not appear that they will suffer any undue prejudice if the motion is granted.” Id. at 3. Overall, the Court found that “this seems pretty close to the classic case for granting a stay pending inter partes review.” Id.
In a recent opinion, Judge Richard G. Andrews granted defendants’ motion to dismiss plaintiff’s claims of direct and indirect infringement. M2M Solutions LLC v. Telit Communication, C.A. No. 14-1103-RGA (D. Del. Aug. 5, 2015). As to plaintiff’s allegations of direct infringement, Judge Andrews observed that plaintiff’s decision to lump two defendants together in addressing its direct infringement claim cannot pass muster under Form 18, which also requires the identification of the accused product, process or method for each defendant. Indeed, Plaintiff’s complaint does not identify which particular defendant or defendants are responsible for which allegedly infringing products, process or method.” Id. at 6. Plaintiff argued that it was appropriate to group “Telit UK and Telit US under an umbrella term” based on “Telit UK’s public representations suggesting its actual control over Telit US.” Id. Judge Andrews found, however, that although “Plaintiff allege[d] the existence of a parent-subsidiary relationship” it failed to “present facts that demonstrate the parent’s effective control over the subsidiary.” Id. at 7.
As to inducement, Judge Andrews found that plaintiff failed to sufficiently plead knowledge that the infringer’s acts constituted infringement. Specifically, plaintiff asserted in its complaint that “[u]pon information and belief, Telit has performed the acts that constitute inducement of infringement with the knowledge or willful blindness that the acts induced thereby would constitute direct infringement by its customers.” Id. at 8. Judge Andrews reasoned that plaintiff’s assertion was based “on no factual allegations [and therefore] cannot pass muster under the plausibility standards.” Id. Further, Judge Andrews also found that plaintiff failed to sufficiently plead a “specific intent to infringe” because it “fus[ed] the two Defendants as one.” Id. at 9. Specifically, Judge Andrews explained that when articulating inducement allegations, plaintiff has to identify “which particular Defendant or Defendants are said to have disseminated the training or instructional materials at issue.” Id. at 10. Judge Andrews also dismissed plaintiff’s contributory infringement claim because plaintiff “lump[ed]” the defendants together, and because “[t]he contributory infringement claim [was] factually too conclusory to state a claim.” Id. at 10 & n.5, 11.
Judge Richard G. Andrews recently granted a motion for judgment on the pleadings that seven asserted patents claimed subject matter that is not patent-eligible under 35 U.S.C. § 101. Personalized Media Commc’ns, LLC v. Amazon.com, Inc., et al., C.A. No. 13-1608-RGA (D. Del. Aug. 10, 2015). Each of the patents was directed generally to “the use of control and information signals embedded in electronic media content to generate output for display that is personalized and relevant to a user.” Judge Andrews found that the patents were not patent-eligible under § 101, because they claimed, respectively, the abstract ideas of: “using personal information to create a customized presentation,” “updating operating instructions,” “decryption,” “completing partial instructions,” “promoting programming,” “receiving instructions for ordering,” and “providing personalized recommendations.”
Judge Robinson recently granted a motion to dismiss a Hatch-Waxman case for lack of personal jurisdiction because the defendant had almost no connection to Delaware. Although Defendant currently conducts drug and business development only in Massachusetts and New York and is incorporated in Virginia, Plaintiff “point[ed] to [Defendant’s] long-standing former incorporation in the State of Delaware . . . from 2002 to 2014” in support of jurisdiction. Purdue Pharma L.P., et al. v. Collegium Pharm., Inc., C.A. No. 15-260-SLR, Memo. Op. at 7-8 (D. Del. Aug. 6, 2015). Recognizing that “the traditional grounds for exercising general jurisdiction over drug company defendants in Hatch-Waxman litigation have been narrowed” recently, Judge Robinson granted the motion to dismiss because there was no general jurisdiction: “[Defendant] is not currently incorporated in Delaware, nor is Delaware its principal place of business.” Id. at 8-9. Further, “the grounds for establishing specific jurisdiction asserted at bar are not compelling . . . . [Defendant] did not send its Paragraph IV Notice Letter to [Plaintiff] in Delaware; [Defendant] is not registered to do business in Delaware; [Plaintiff] did not prepare its NDA in Delaware. Although [Defendant] worked with a Delaware corporation to conduct clinical trials for its NDA submission, there is no indication of record that the trials themselves took place in Delaware. Likewise, although oxycodone, the API used in [Defendant’s proposed] product, is manufactured in Wilmington, Delaware . . . oxycodone is a basic API that is the subject of numerous patents and is commercially available in at least two dosage forms. Even if such a contact were held to satisfy Delaware’s long-arm statute, the court concludes that it would not pass constitutional muster.” Id. at 10.
Having found that the Court lacked jurisdiction, Judge Robinson next had to decide between transfer to the Southern District of New York, where Defendant had consented to jurisdiction and favored transfer, and the District of Massachusetts, where Plaintiff had filed a “back-up action” and favored: “There is no doubt that jurisdiction can be exercised over [Defendant] in Massachusetts, where [Defendant] continues to be headquartered and to engage in drug and business development and investment activities. . . . [A] straightforward venue like Massachusetts is the most reasonable solution to the parties’ dispute in this regard.” Id. at 11-12.
Judge Richard G. Andrews recently considered Defendant Micron Technology Inc.’s motion to exclude plaintiff Semcon Tech LLC’s damages expert who estimated a reasonable royalty “for a method claim for a manufacturing process.” Semcon Tech LLC v. Micron Technology Inc., C.A. No. 12-532-RGA (D. Del. Aug. 5, 2015). Judge Andrews determined that he could not determine “based on the briefing” whether the expert’s methodology was sound or “whether his estimates include any required effort at apportionment.” Id. at 1. Therefore, Judge Andrews scheduled a Daubert hearing at which the expert would testify “subject to cross-examination.” Id. Judge Andrews also requested Micron advise the Court if it intended to provide an alternative theory of an appropriate reasonable royalty and to submit a letter explaining such theory. Id. at 2.
Chief Judge Leonard P. Stark recently granted a plaintiff’s request for an order compelling supplemental responses to contention interrogatories relating to the plaintiff’s license agreements with non-party patentees. Intel Corp. v. Future Link Sys., LLC, C.A. No. 14-377-LPS (D. Del. Aug. 5, 2015). The Court noted that the defendant spent “the vast majority of its preliminary responsive contentions to complain about Plaintiff’s allegedly deficient document production and discovery responses[,]” but explained that “Defendant ‘may not avoid its obligations under the Court’s schedule by arguing, generically, that Intel has not “met its burden” to prove it is licensed . . . . [Defendant] needs to explain why.’” Id. at 2 (emphasis in original ). The Court also rejected the Defendant’s argument that Intel’s license claim “is not suitable for early summary judgment. On the contrary, Plaintiff has identified specific license provisions, products, and arguments for why it thinks five of the patents-in-suit are licensed. . . . Certain of the issues likely to be presented on summary judgment – for example, the applicability of certain license provisions to the five patents-in-suit – are questions of law (contract interpretation).” Id. at 3.
In a recent Memorandum Order, Judge Richard G. Andrews denied plaintiffs’ motion for reargument as to the court’s order severing defendant Nokia Corporation for a separate trial. Interdigital Communications, Inc. v. Nokia Corp., C.A. No. 13-10-RGA (D. Del. Jul. 29, 2015). Judge Andrews noted that plaintiffs requested reargument on the ground that the court’s decision to sever was “sua sponte and there was no opportunity for briefing.” Id. at 2. Judge Andrews explained, however, that “Nokia Corporation no longer makes or imports the accused products,” and that there is “no relief [the court] could grant against Nokia Corporation.” Id. Further, Judge Andrews pointed to the fact “there is a significant likelihood of juror confusion between Nokia, Inc. and Nokia Corporation.” Id. Finally, Judge Andrews noted that “Nokia Corporation’s presence would serve only to confuse the jury and potentially result in multiple opening arguments and examinations.” Id.
In a recent Order, Judge Gregory M. Sleet granted defendants’ motion for leave to amend its answer to include allegations that the asserted patents are unenforceable due to inequitable conduct. Lifeport Sciences LLC v. Endologix, Inc., C.A. No. 12-1791-GMS (D. Del. Jul. 29, 2015). Judge Sleet noted that plaintiff opposed the amendment on the grounds that “defendant unduly delayed in filing the motion” and that “it would [be] prejudiced if the court were to allow the amendment at this stage of litigation.” Id. at 1. Judge Sleet rejected plaintiff’s arguments, explaining that “the parties specifically built into their scheduling order a deadline . . . to amend the pleadings to allege inequitable conduct, whether by affirmative defense or in a counterclaim,” and that defendant filed its motion by the deadline in the scheduling order. Id. at 2. Judge Sleet added that “[e]ven assuming the plaintiff is correct that the defendant could have filed it[s] motion sooner, the court cannot say the delay was undue or that the plaintiff will be prejudiced when this was explicitly contemplated as a possibility.” Id.