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In a recent Opinion, Judge Noel L. Hillman, sitting by designation, affirmed the May 20, 2016 Order of Magistrate Judge Joel Schneider, in which he sanctioned defendant for “belatedly producing one particular email and other documents.” Evonik Degussa GmbH v. Materia, Inc., C.A. No. 08-636-NLH-JS (D. Del. Dec. 14, 2016). Judge Schneider found that defendant “should have, on more than one occasion, reviewed its production for completeness, and did not.” Id. at 3. Accordingly, Judge Schneider awarded plaintiff “attorneys fees it incurred due to the late production and allowed [plaintiff] additional discovery. Id.

Judge Schneider, however, rejected plaintiff’s assertions that defendant or its attorneys “acted in faith.” Id. at 2. Plaintiff contested Judge Schneider’s finding regarding the “serious of [defendant’s failure]” to procedure certain documents, and argued that the sanction Judge Schneider “imposed was too lenient.” Id. Specifically, plaintiff argued that Judge Schneider should have ruled that: (a) “the belatedly produced documents could not be used by [defendant] at trial,” and (b) plaintiff “is entitled to an adverse inference jury instruction.” Id. at 3.

In support of its argument, plaintiff asserted that “Judge Schneider ‘converted” [plaintiff’s] spoliation motion into a discovery motion under Rule 37, and then [asserted] that Rule 37 requires– as opposed to permits– the Court to preclude [defendant] from relying on the belatedly-produced documents at trial.” Id. at 3-4. Judge Hillman disagreed, explaining that Judge Schneider rejected plaintiff’s “spoliation argument because spoliation requires a finding of bad faith, and then very clearly imposed sanctions pursuant to Fed. R. Civ. P. 26, not Fed. R. Civ. P. 37.” Id. at 4. Plaintiff also reasserted the arguments it presented to Judge Schneider that defendant’s conduct “evidences bad faith.” Id. Judge Hillman found that “Judge Schneider addressed this argument, considered all of the record evidence, and concluded that there was insufficient evidence to support [plaintiff’s] ‘conspiracy theory.’” Id. Judge Hillman found that Judge Schneider’s findings were not clearly erroneous in this regard, and affirmed the court’s Order regarding sanctions.

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Magistrate Judge Christopher Burke recently considered a motion to dismiss this patent-infringement action for lack of subject matter jurisdiction, granting-in-part as to one of plaintiff Adidas’ counts, but denying-in-part as to other portions of the complaint. In an earlier action, Unequal Technologies sued Reebok, which is wholly owned by Adidas AG. The earlier suit ended when Unequal provided two different versions of a covenant not to sue that extended only to Reebok products. Adidas then filed the instant action, seeking a declaration that the covenant is binding and applicable to Adidas products as well and that Adidas does not infringe the three patents-in-suit covered by the covenant. Declaratory judgment defendant Unequal responded to the complaint with a motion to dismiss for lack of subject matter jurisdiction. Adidas AG, et al. v. Unequal Techs. Co., et al., C.A. No. 16-52-LPS-CJB, Report and Recommendation at 1-6 (D. Del. Nov. 23, 2016).

Judge Burke first found that the second-issued of the two covenants not to sue had superseded the first-issued and was, therefore, the only covenant in effect. In reaching this conclusion, Judge Burke noted that the record “overwhelmingly indicates that the First Covenant was not operative, because even after it was sent to Reebok, the parties were still negotiating over the final form that the covenant would take.” Thus, Judge Burke found, there was no plausible claim that the first covenant was enforceable, and the Court need not even address whether the first covenant’s terms covered Adidas products. This portion of Adidas’ complaint was, therefore, dismissed. Id. at 7-16.

Based on the same prior suit against Reebok and resulting covenant not to sue, Adidas claimed that there was declaratory judgment jurisdiction for its claims of non-infringement. As Judge Burke explained in assessing jurisdiction, “The mere fact that Defendants had ‘filed infringement suits against other parties for other products[,]’ does not, ‘in the absence of any act directed toward [Plaintiffs], meet the minimum standard’ for declaratory judgment jurisdiction. This is so even where, as here, a defendant had previously sued one of a plaintiff’s subsidiaries. Plaintiffs’ Complaint, however, goes beyond simply alleging that Defendants had previously sued Reebok” because the complaint also alleged that Unequal had sought discovery into Adidas products. Id. at 17 (citations omitted). Thus, “it was then reasonable for [Adidas} to think that [Unequal] believed that such products infringed the patents-in-suit. Indeed, in the context of a patent infringement case, that is what the term ‘Accused Products’ suggests. As a result, it seems strange to ask whether, at the time of the instant suit, there was a ‘substantial controversy’ brought on by [Unequal] about whether [Adidas’] products at issue infringed the patents-in-suit. [Unequal] had, after all, already pretty clearly stated that they did.” Id. at 18.

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Chief Judge Leonard P. Stark recently considered plaintiff’s motion to vacate summary judgment of no willful infringement in light of the U.S. Supreme Court’s decision Halo Electronics, Inc. v. Pulse Electronics, Inc., 136 S. Ct. 1923 (2016).  Greatbatch Ltd. v. AVX Corporation, No. 13-723-LPS (D. Del. Dec. 13, 2016).  A jury trial was held in January 2016 after which the jury found in plaintiff’s favor and awarded $37.5 million in damages.  Id. at 1-2.  Prior to trial Judge Stark granted defendants’ motion for summary judgment of no willful infringement relying on the objective prong of the Federal Circuit’s test for willful infringement articulated in In re Seagate Technology, LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007).  Subsequently, the Supreme Court issued Halo, abrogating the objective prong of SeagateId. at 2.  In denying plaintiff’s motion to vacate, Judge Stark noted that Halo made it “necessary to reconsider the Willfulness Order, [but did not], in this case, require vacating the prior determination that Greatbatch is unable to prove willfulness.”  Id.  In particular, the record showed that while defendant had pre-suit knowledge of the patents-in-suit, defendant made “good faith efforts to avoid infringement of any valid patents.”  Id. at 7 (emphasis in original).  Further, plaintiff did not “point to evidence from which a reasonable jury could find any infringement of these patents by A VX [that] was ‘egregious,’ ‘deliberate,’ atypical, or otherwise characteristic of the type of infringement that could support a finding of willful infringement.”  Id.

Greatbatch Ltd. v. AVX Corporation, No. 13-723 (D. Del. Dec. 13, 2016)

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In a recent order, Judge Richard G. Andrews ruled on various motions in limine. Delaware Display Group LLC v. LG Electronics Inc., C.A. No. 13-2109-RGA (D. Del. Dec. 1, 2016). Notably, plaintiffs sought to prevent defendants from providing “any comparison between the accused products and alleged prior art.” Id. at 2. Judge Andrews granted and denied plaintiffs’ request in part, without prejudice to timely object to specific testimony at trial. Id.

As Judge Andrews explained, the parties agreed that “‘practicing the prior art’ is not a defense to infringement” and therefore defendants “may not make that argument.” Id. at 2-3. Defendants cited three cases to support their position that they may “argue that Plaintiffs’ patents are invalid because they would prohibit [Defendants] from practicing the prior art.” Id. at 3. Judge Andrew found that “[t]o the extent Defendants are saying, the patents are no different than the prior art, of course, they can argue that.” Id. On the other hand, “[t]o the extent they are saying something more, such as, Defendants’ products practice the prior art, they have a problem.” Id. Judge Andrews noted that the Federal Circuit decision defendants cited did not help their position, and both district court decisions “agree that Defendants cannot compare an accused product to the prior art for purposes of establishing invalidity or non-infringement.” Id.

Judge Andrews granted and denied other motions in limine, some in part, and postponed ruling on another.

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Magistrate Judge Burke’s Markman report and recommendation in this case is interesting for a few reasons. Procedurally, it followed argument at two separate Markman hearings, one early in the case before a stay pending IPR, and a second hearing following an IPR decision invalidating all claims at issue in the IPR and addressing only the three dependent claims remaining as valid and at issue in this litigation. Princteon Digital Image Corp. v. Konami Digital Entertainment Inc., et al., C.A. No. 12-1461-LPS-CJB, Report and Recommendation at 1-7 (D. Del. Dec. 2, 2016).

Judge Burke also addressed an indefiniteness argument regarding the claim term “virtual environment,” which was defined in the patent specification as follows: “The terms ‘virtual environment,’ ‘virtual world,’ and ‘virtual reality’ are used interchangeably to describe a computer-simulated environment (intended to be immersive) which includes a graphic display (from a user’s first person perspective, in a form intended to be immersive to the user), and optionally also sounds which simulate environmental sounds.” This definition led to a dispute as to the meaning of “immersive” and whether this term provides sufficient objective boundaries to avoid indefiniteness. Id. at 21. The parties did not dispute that “immersive” was a term of degree, but disputed whether the patent provided a definite “lower boundary of immersiveness.” Id. at 24-26. Judge Burke concluded that the claim was not indefinite, however, because at least four portions of the specification helped to suggest boundaries for the term “immersive.” Id. at 26-32.

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In Idenix Pharmaceuticals LLC, et al. v. Gilead Sciences, Inc., et al., C.A. Nos. 13-1987-LPS, 14-109-LPS, 14-848-LPS (D. Del. Dec. 4, 2016), Chief Judge Leonard P. Stark considered a number of the parties’ disputes related to introducing deposition testimony and related documents, in anticipation of the trial in this case.  The Court overruled two of these objections as waived; while timely, the objections contained significantly more argument than the pre-trial order allowed for such objections and were essentially improper motions in limineId. at 1-2.  However, the Court also considered and rejected these two objections on their merits.  As to the first, it overruled an objection to testimony related to which of the parties was the true innovator as relevant to willfulness and damages. The Court explained that this evidence involving events taking place prior to issuance of a patent may be relevant to willfulness ecause “the Court [was not] persuaded that the law absolutely precludes pre-patent conduct from being probative of willfulness.”  Id. at 2.  As to the second, the Court ruled the disputed testimony was a party admission and thus admissible, and, furthermore, the “contentions regarding speculation, and its disputes as to whether the evidence on the whole supports the inferences [plaintiffs] will ask the jury to draw, go to the weight and not admissibility of the challenged evidence.”  Id. at 3.

Idenix Pharmaceuticals LLC, et al. v. Gilead Sciences, Inc., et al., C.A. Nos. 13-1987-LPS, 14-109-LPS, 14-848-LPS (D. Del. Dec. 4, 2016)

 

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Chief Judge Leonard P. Stark recently considered plaintiffs’ request to supplement the joint claim chart in Meda Pharmaceuticals Inc. v. Teva Pharmaceuticals USA, Inc., No. 15-785-LPS (D. Del. Dec.7, 2016), to include exhibits from the prosecution history of the patent-in-suit.   Plaintiffs submitted the additional exhibits for inclusion in the chart, and consideration by the Court, just days before the Markman hearing.  Shortly before the request, the Court denied plaintiffs’ motion to amend its complaint to assert the Certificate of Correction in this case, which, if allowed, “would have obviated the need to construe claims 28-30 of the ‘428 patent[.]”  Id. at 1.  The additional exhibits to the joint claim chart included “a listing of claims before allowance” and “a request for expedited issuance of a Certificate of Correction.”  Id.  Defendants opposed the additional exhibits arguing that plaintiffs effectively were seeking to reargue the Court’s denial of the motion to amend, and characterized the Court’s decision on that motion “as holding ‘that the Certificate of Correction is inapplicable and that the Court will construe the uncorrected patent using the existing claim construction briefs as they were submitted.'”  Id. at 2.  Judge Stark disagreed:

The order denied Plaintiffs’ motion for leave to amend the complaint to assert the Certificate of Correction, which would have resolved the parties’ dispute regarding the proper construction of claims 28-30 of the ‘428 patent. The Court’s denial of Plaintiffs’ motion left claims 28-30 in their uncorrected form and needing construction. The Court did not reach any decision regarding what evidence would be considered when construing the claims.

Id. 

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Magistrate Judge Christopher J. Burke recently recommended that a motion to dismiss filed by Toshiba entities be granted because the complaint against them failed to distinguish between the entities and thereby failed to plausibly allege direct infringement against any one of them.  North Star Innovations, Inc. v. Toshiba Corp., et al., C.A. 16-115-LPS-CJB (D. Del. Dec. 6, 2016).  As Judge Burke explained, “nowhere in any part of the [complaint] is it clearly alleged that either Defendant takes part in any specific infringing act–instead, it is vaguely alleged that they may commit one ‘or’ another ‘or’ some ‘or’ all of the relevant possible acts that would amount to direct infringement.” (emphasis in original).  Judge Burke added, “[t]his leaves the reader confused about which, if any, of these acts are actually being attributed to each Defendant.  And if the Court wished to assure itself that there is a plausible claim that each Defendant has committed at least one such wrongful act in the United States . . ., it could not do so, since there are no other factual allegations about the nature of Defendants’ business, nor their activities in the United States.” (emphasis in original).

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Chief Judge Leonard P. Stark recently ruled on several motions in limine in advance of an upcoming jury trial between Idenix and Gilead.  Idenix Pharmaceuticals LLC, et al. v. Gilead Sciences, Inc., et al., C.A. No. 13-1987 (and related cases 14-109-LPS, 14-846-LPS) (D. Del. Nov. 22, 2016).  Of note, Judge Stark denied Idenix’s motion to preclude evidence of certain experiments performed by Idenix, explaining that the “evidence that Plaintiffs may have failed to make a purported embodiment of the patent-in-suit is probative of whether the inventors of the patent-in-suit were in possession of the claimed subject matter as of the filing date; i.e., the evidence is probative of Defendant’s written description defense.”  Judge Stark also denied Idenix’s motion to exclude reference to Idenix’s alleged drafting of claims based on the disclosures of a non-party.  Specifically, the Court found that “[a] reasonable jury could credit Defendant’s evidence that in the immediate aftermath of Pharmasset’s Dr. Schinazi making certain disclosures to Idenix’s patent attorney, Idenix cancelled all pending original claims and added broader claims, which may be probative of Idenix’s inventors not being in possession of the full scope of the ultimately claimed inventions . . . .”

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In a recent Memorandum Order, Chief Judge Leonard P. Stark adopted Magistrate Judge Christopher J. Burke’s Report and Recommendation (the “Report”) dated June 30, 2016 (D.I. 108), which (i) found the terms “access block” and “media block” (collectively, the “block terms”) not indefinite; and (ii) construed the term “providing, by the media block, a clickable icon.” Triplay, Inc. v. Whatsapp, Inc., C.A. No. 13-1703-LPS-CJB (D. Del. Nov. 15, 2016).

First, Defendant (“Whatsapp”) objected to the Report’s conclusion that the block terms are not indefinite, asserting that the block terms must be construed as means-plus-function terms under § 112, ¶ 6. Id. at 2. Judge Stark disagreed, and adopted the Report’s conclusions that the blocks terms should not be construed as mean-plus-function terms, and that the terms are not indefinite. Specifically, Judge Stark found that the rebuttable presumption that § 112 ¶ 6 does not apply was not overcome. Judge Stark observed that the patents at issue “include significantly more detail defining the block terms at issue in this case than the specification of the patent-in-suit” in Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015), cited by Whatsapp in support of its position. Id. at 4. Judge Stark further explained that the patents at issue “disclose adequate structure to define the block terms by describing the internal components and operative algorithms associated with the terms, as explained in the Report.” Id. Judge Stark also found that plaintiff’s (“Triplay”) expert report supported “that a person of ordinary skill in the art would understand, with reasonable certainty, the scope of the algorithmic ‘structure’ invoked by the block terms.” Id. at 5. Judge Stark noted that the “functional language describing the operation of the block terms ‘promotes definiteness because it helps bound the scope of the claims by specifying the operations that the [block terms] must undertake.’” Id. at 7.

Second, Triplay objected to the Report’s construction of the term “providing, by the media block, a clickable icon.” Id. Specifically, Triplay raised two objections: “(1) the phrase ‘clickable icon’ should be limited to a ‘link’ rather than a ‘visual representation that is clickable,’ contrary to the construction recommended in the Report, and (2) the Report erred in declining to construe the larger phrase ‘providing … a clickable icon.’” Id. Denying Triplay’s objections, Judge Stark observed that “[t]here is no clear indication in the intrinsic record that the disputed term should take on any other meaning in the context of the” patents at issue. Id. at 8. Judge Stark further noted that while the “specification can – without an express disavowal – direct a person of ordinary skill in the art to a narrower construction than the words [of a claim] would suggest”, through (for example) an implicit disclaimer, the specifications here do not do so.” Id. (citations omitted).

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