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In a recent memorandum opinion, Chief Judge Gregory M. Sleet granted defendant’s motion to transfer venue to the Eastern District of Michigan. Joao Control & Monitoring Systems, LLC v. Ford Motor Company, C.A. No. 12-1479-GMS (D. Del. Aug. 21, 2013). Plaintiff is a limited liability company organized under the laws of the State of Delaware and lists its principal place of business as the residence of the inventor of the patents-in-suit in New York. Id. at 1. Defendant is a Delaware corporation with its principal place of business in Michigan. Id. at 1-2.

First, Judge Sleet determined that this action could have been brought in the Eastern District of Michigan, as defendant maintains “its principal place of business in Dearborn, Michigan, which is located in the proposed transferee forum.” Judge Sleet also noted that plaintiff “is currently litigating a suit against [defendant] in the Eastern District of Michigan.” Id. at 4.

Turning to the Jumara private interest factors, Judge Sleet found that “because [plaintiff] chose to litigate in the forum where it was formed, rather than the forum where its principal place of business is located, its choice is entitled to less deference than it would typically receive in this analysis.” Id. at 6. Defendant’s forum preference, on the other hand, was “legitimate and rational” and therefore weighed in favor of transfer. Id. at 7. Addressing whether “the claims arose elsewhere, Judge Sleet noted that “[t]o some extent, [infringement] claims ar[i]se where the allegedly infringing products [a]re designed and manufactured.” Id. at 7. Accordingly, Judge Sleet found that factor to weigh “on the transfer side of the balance” because the infringement claims arose “from infringing products that were designed and manufactured in a single, discrete location.” Id. at 8. Judge Sleet next found that the “convenience of the parties” weighed slightly in favor of transfer, because while it appeared that “each [party] [had] sufficient financial resources to litigate in either forum,” defendant’s “decision to incorporate in Delaware suggests that the inconvenience of litigation here is somewhat less than the court would ordinarily presume it to be in this case.” Id. at 9-10. Judge Sleet found “the convenience of the witnesses” to be neutral since defendant was able to specifically identify only one third-party witness outside of the District of Delaware’s subpoena power. Id. at 12. Additionally, Judge Sleet explained that “because [defendant’s] principal place of business and much, if not all, of its materials relevant to the accused technology are located in the Eastern District of Michigan,” the “location of books and records” weighed slightly in favor of transfer. Id. at 13.

Judge Sleet next addressed the Jumara public interest factors. Accounting for “practical considerations that make the trial easy, expeditious, or inexpensive,” Judge Sleet found transfer favored by the fact that “neither party has facilities, offices, or employees in Delaware.” Id. at 15. Judge Sleet further noted that “both parties are currently litigating in the Eastern District of Michigan,” and the instant litigation “involves patents related to the patents-in-suit in the Eastern District of Michigan.” Id. at Judge Sleet additionally found that neither district “has a local interest in this action that would weigh in favor of transfer.” Id. at 17.
Judge Sleet concluded that in “[c]onsidering the Jumara factors as a whole, . . . [defendant] has met its burden of demonstrating that the interests of justice and convenience strongly favor transfer.” Id. at 18.

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Judge Richard G. Andrews recently decided defendants’ motion to dismiss for lack of personal jurisdiction or, in the alternative, to transfer the case to the Northern District of California in Round Rock Research LLC v. ASUSTeK Computer Inc., et al., C.A. No. 11-978-RGA (D. Del. Aug. 20, 2013).

The Court first concluded that plaintiff had not established personal jurisdiction over defendant ACI, a California company, with regard to two out of its ten counts that dealt with two different patents. For one patent, plaintiff had not sufficiently alleged that sales of named accused products had taken place in Delaware, and for the other, it had not sufficiently shown that sales of accused products had taken place prior to the filing of the complaint. See id. at 6-7.

The Court then dismissed the Taiwanese defendant, ASUSTeK, because plaintiff “ha[d] not established that there is personal jurisdiction . . . generally.” Id. at 12. Plaintiff could not establish jurisdiction under the specific jurisdiction provisions of the Delaware long-arm statute, see id. at 7-8, but the Court also considered whether “dual jurisdiction” was an available theory, under which there could be “jurisdiction under a blend of” specific and general jurisdiction provisions of the long-arm statute. Id. at 8. Although other Delaware state and federal decisions have accepted the “dual jurisdiction” theory based on their interpretation of a footnote in LaNuova D&B, S.p.A. v. Bowe Co., Inc., 513 A.2d 764,768 (Del. 1986), see id. at 7-10, the Court did not accept the theory. The Court explained that it did not believe that the dicta in this “footnote supports the conclusion that [the Delaware] Superior Court has interpreted it to have [i.e., to recognize dual jurisdiction].” Id. at 10.

The Court then denied the motion to transfer to the Northern District of California. The remaining defendant ACI was incorporated and headquartered in California, while the plaintiff was a Delaware company with its principal place of business in New York. The Court found that that the Jumara factors weighing in favor of transfer did not outweigh plaintiff’s forum choice or the fact that three other actions were filed contemporaneously in Delaware by plaintiff, making the balance of conveniences “tip[] strongly enough” in favor of keeping the case in Delaware. Id. at 19. The Court had also gained familiarity with the patents-in-suit in the related actions through a Markman hearing held after the filing of the motion to transfer. Id. at 18 (see link for the Court’s denial of a motion to transfer to the N.D. Cal. in one of the related cases). While the Court explained that “[s]ubsequent events while a motion to transfer has been pending should not be taken into account,” here “it [had been] predictable that [the Court] would likely be gaining [knowledge of the patents-in-suit] through the related cases” and therefore the Court’s familiarity with the patents was “a legitimate concern to factor into the analysis.” Id. (citing In re EMC, 501 F. App’x 973, 976 (Fed. Cir. 2013)).

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In a recent claim construction Order, Chief Judge Gregory M. Sleet construed the following terms of U.S. Patent No. RE41,555, entitled “Antibody purification:”
“selectively eluting [the monomeric IgG antibody] from the support” and “the
antibody selectively eluted;”
“monomeric IgG antibody”
GlaxoSmithKline LLC v. Genentech, Inc., C.A. No. 10-799-GMS (D. Del. Aug. 22, 2013).

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Judge Richard G. Andrews recently denied all post-trial motions in a dispute over patented medical devices. St. Jude Medical Cardiology Division, Inc., et al. v. Volcano Corp., C.A. No. 10-631-RGA (D. Del. Aug. 22, 2013). The Court held separate trials on the patents asserted by the plaintiffs and the defendant, with the jury finding in relevant part that (1) defendant did not infringe the asserted claims of plaintiffs’ U.S. Patents No. 6,112,598 or 6,248,083; (2) defendant proved by clear and convincing evidence that plaintiffs’ U.S. Patents No. 5,983,624 and 6,196,989 are invalid as anticipated and obvious; and (3) plaintiffs did not infringe defendant’s U.S. Patent No. 6,976,965 under the doctrine of equivalents. The parties filed a total of six post-trial motions, but the Court denied each, finding that the evidence put before the jury was sufficient to sustain the verdicts.

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Judge Stark recently had occasion to consider a patent plaintiff’s request for a temporary restraining order and preliminary injunction filed after a jury found the plaintiff’s patents valid and infringed. The plaintiff, Synthes, asked the court to enjoin exportation of accused products for sales overseas. Depuy Synthes Prods., LLC v. Globus Med., Inc., C.A. No. 11-652-LPS, Memo. Order at 1 (D. Del. Aug. 22, 2013). Judge Stark found, however, that the plaintiff had not demonstrated irreparable harm. Judge Stark’s finding was based on evidence, presented at trail and in the briefing on the motion, showing that consumers use the defendant, Globus’, products for reasons other than the patented features. Judge Stark further pointed out that “[e]ven if Synthes could establish that Globus’ remaining inventory is purchased based on the patented features, ‘lost sales standing alone are insufficient to prove irreparable harm.’” Id. at 2-3 (citations omitted). Accordingly, there was no “clear showing” of a risk of irreparable harm. Finally, Judge Stark found that “Synthes may be adequately compensated through a reasonable royalty.” Id. at 4. For these reasons, Judge Stark denied the motion for a temporary restraining order and preliminary injunction.

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Judge Andrews recently granted a patent plaintiff’s motion to file amended pleadings, filed two days before the scheduling order’s deadline “to amend of supplement the pleadings.” “The main thrust of the amended pleadings would be to assert some of the four asserted patents, previously unasserted again some of the seven of the defendants, against those defendants.” HSM Portfolio LLC, et al. v. Fujitsu Ltd., et al., C.A. No. 11-770-RGA, Order at 1 (D. Del. Aug. 20, 2013). Judge Andrews found that “[w]hile there are indeed issues concerning delay and unfair prejudice, I believe that the case is still at a fairly early stage, and any issues of prejudice can be dealt with by extending the schedule.” Id.

Judge Andrews went on to address arguments raised by individual defendants specific to their own cases. In this context, he found that:
1. Two patents possibly subject to a laches defense would be better dealt with “at a later stage of the case”
2. The fact that additional patents would “not generate much in the way of damages” did not demonstrate futility
3. Plaintiffs had not “pleaded facts sufficient to support the argument that Spansion is an agent of [defendant] AMD. Thus, while I will allow the amendment, I expect that AMD will file the motion to dismiss that it has proffered.”
In addition to granting the motion to amend, Judge Andrews also ordered the parties to meet and confer and submit a status report on scheduling within four weeks and ordered that “scheduling deadlines relating to the defendants who opposed the motion to amend . . . during the next six weeks (or until there is an agreed-upon schedule, whichever occurs later)” would not be enforced. Id. at 1-2.

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Chief Judge Gregory M. Sleet recently granted defendant’s motion to stay pending reexamination. Celorio v. On Demand Books LLC, C.A. No. 12-821-GMS (D. Del. Aug. 21, 2013). In doing so, Judge Sleet examined the following factors: “(1) whether a stay would unduly prejudice or present a clear tactical disadvantage to the non-moving party; (2) whether a stay will simplify the issues in question and trial of the case; and (3) whether discovery is complete and a trial date has been set.” Id. at 2 n.1 (quotations omitted). Regarding the first factor, Judge Sleet noted that any stay pending reexamination will delay final resolution of the case. Therefore, that fact alone is insufficient to establish that any prejudice from the delay is “undue.” Id. As such, the court must look at “sub-factors,” such as “the timing of the stay request”; “the relationship between the parties”; “the related question of whether the plaintiff may be compensated through future money damages”: and “the status of the reexamination proceedings.” Id. Judge Sleet determined that any delay will not result in undue prejudice or present a tactical disadvantage to plaintiff. In particular, Judge Sleet found that because the petition for reexamination and the motion to stay were filed early in the case, the Court could not conclude that defendant was attempting to gain an unfair tactical advantage. Id. Further, plaintiff’s five-year delay of filing the case after it became aware of defendant’s alleged infringement demonstrated that plaintiff did not consider “this to be a ‘time of the essence matter’ or that, absent expeditious litigation, he [would] suffer undue prejudice.” Id. In addition, plaintiff could be compensated for any delay through money damages. Id.

Regarding simplification of issues, Judge Sleet determined that this factor favored a stay. “[R]egardless of the PTO’s conclusion, the results of the reexamination proceeding will aid in simplifying or eliminating the overlapping issues before the court. Indeed, even if the PTO were to ultimately confirm all of the claims, the court would likely benefit from the expert analysis the PTO conducts, thus further simplifying issues before the court.” Id. at 3 n.1. Judge Sleet determined that the early stage of the case also favored a stay, as no scheduling order had been entered and no trial date had been set. Id.

Judge Sleet also specifically rejected plaintiff’s argument that defendant was “estopped from seeking a stay because it filed a counterclaim for declaratory relief pursuant to the Declaratory Judgment Act (‘DJA’).” Id. Judge Sleet noted:

Celorio [did] not cite any case law supporting his argument and instead provide[d] citations to cases detailing the parameters of the DJA and rules regarding binding admissions in responsive pleadings. None of the cases Celorio cite[d] suggested that once a party has filed a claim under the DJA, it should be barred from requesting a stay and the court [had] not uncovered such precedent.

Id.

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In a recent claim construction opinion, Judge Richard G. Andrews construed seven terms from U.S. Patent Nos. 7,012,916; 7,206,304; 7,903,641; 8,170,008; 8,189,565; 8,204,046; and 8,223,752 (collectively, the “Low Patents”), which each relate to “facilitating the integration of traditional telephone networks with computer networks.” Comcast IP Holdings I, LLC v. Sprint Communications Company et al., C.A. No. 12-205-RGA (D. Del. Aug. 16, 2013). Judge Andrews also construed three terms from an unrelated patent, U.S. Patent No. 6,873,694 (the “’694 Patent”), which teaches “systems and methods to optimize a telephony network.” Judge Andrews construed the following seven terms from the Low Patents:

– “switched telecommunication system I telecommunication system”
– “requesting . . . a communication to be set up through the switched telecommunication
system”
– “telecommunications system control apparatus”
– “URI I uniform resource identifier (URI) I universal resource identifier (URI) I universe
resource name (URN)”
– “DNS-type database system I DNS-type distributed database system”
– “Domain name system signaling”
– “A substantial portion of the number string”
Judge Andrews also construed the following three terms from the ’694 Patent:

– “Dial-up prompt [parameter]”
– “Telephony parameter”
– “Telephone usage of the telephony network”

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Judge Richard G. Andrews recently denied defendant Par Pharmaceutical’s motion to preclude the testimony of Plaintiff’s expert. Novartis Pharms. Corp., et al. v. Actavis South Atlantic LLC, et al., C.A. No. 11-1077-RGA (D. Del. Aug. 16, 2013). Par raised three issues with the expert’s testimony: “(1) the ‘forced degradation’ or ‘stress’ testing; (2) whether acetaldehyde or anything else is an antioxidant; and (3) why [the expert did] not address, or did not perform, other techniques.” Id. at 1. Judge Andrews determined that the second and third issues were not appropriate under Daubert. Regarding the first issue, Judge Andrews noted that the Court’s pre-trial “gate-keeper” function is not as important for a bench trial, and so, live testimony and cross-examination would more likely lead to a correct decision about whether the expert’s testimony is appropriate under Daubert. Id. Judge Andrews denied Par’s motion, instructing Par to preserve the objection at trial by making an objection during the expert’s testimony. Judge Andrews further instructed that: “Failure to [object] at the appropriate time will result in the objection being waived”; that “[t]he Court will consider granting a continuing objection”; and that [t]he Court will only consider evidence actually adduced at trial (whether through cross-examination or testimony from other witnesses) in ruling on any renewed motion.” Id. at 2.

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Judge Robinson recently granted a motion to dismiss a § 285 counterclaim for attorneys’ fees relating to an allegedly frivolous and eventually withdrawn claim, but ordered the plaintiff to show cause why it should not be sanctioned under Rule 11 for its prosecution of that claim. Technology Innovations, LLC v. Amazon.com, Inc., Civ. No. 11-690-SLR (D. Del. Aug. 15, 2013). The plaintiff alleged infringement of two patents, one of which (the ‘407 patent) previously had been asserted in the Southern District of Texas. The defendant claimed that during the course of the litigation in Texas, the plaintiff agreed not to pursue the ‘407 infringement claim because of the “high unlikelihood of infringement.” Id. at 1-2. As a result, when the plaintiff asserted the ‘407 infringement claim in Delaware, the defendant moved for Rule 11 sanctions. Id. The Court denied that motion without prejudice as premature (previously discussed here). Almost a year later, after the defendant answered, filed counterclaims, and engaged in discovery regarding the ‘407 patent, the plaintiff amended its complaint to remove allegations relating to the ‘407 patent and to provide an affirmative statement of non-liability with respect to that patent. Id. at 2. The defendant answered and asserted a counterclaim under § 285 for attorneys’ fees in connection with the plaintiff’s continued prosecution of the withdrawn allegations. The plaintiff then moved to dismiss that counterclaim.

The Court reviewed the history of § 285, and cases applying it, and concluded that § 285 attorneys’ fees “can only be awarded after the substantive issues in the case have been resolved and the prevailing party has been determined.” Id. at 7. The Court therefore granted the motion to dismiss the § 285 counterclaim, since the “prevailing party” could not be determined until the claims relating to the other asserted patent were tried. Id. at 8. However, the Court noted that “Rule 11 is not circumscribed by the time-oriented limitations of § 285.” Id. at 8. Because the plaintiff continued to assert the ‘407 patent for nearly a year after the Court denied without prejudice the original motion for Rule 11 sanctions, the defendant was forced to respond to the complaint, file counterclaims, and engage in discovery during that time. As a result, Judge Robinson ordered the plaintiff to show cause why its filing of the eventually withdrawn ‘407 patent infringement claim was not sanctionable under Rule 11. Id at 9.

UPDATE:  In an October 22, 2014 order on a motion for reconsideration, Judge Robinson clarified that the analytical framework for the award of fees should have been 35 U.S.C. 285, rather than Rule 11.  A link to that order appears below.

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