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In a recent report and recommendation, Magistrate Judge Mary Pat Thynge recommended that several affirmative defenses be stricken.  Sonos, Inc. v. D&M Holdings Inc., C.A. No. 14-1330-RGA-MPT (D. Del. Aug. 10, 2016).  Of note, Judge Thynge explained that the defendants’ § 288 defense should be stricken because there was no allegation that any asserted patent “has been found invalid before the commencement of the present action.”  Judge Thynge also recommended that the defendant’s equitable estoppel and unclean hands affirmative defenses be stricken for failure to allege facts supporting those defenses with the particularity required by Rule 9(b).  Next, the Court recommended the striking of the defendant’s patent misuse defense, which was supported by arguments in the defendant’s answering brief, but not in allegations in the affirmative defense, itself.  Judge Thynge explained, “D&M is required to assert a basis showing an anticompetitive effect in its pleadings; delegating this in its answering brief is not sufficient.”  Finally, Judge Thynge explained that the defendant’s prosecution laches defense “is limited to a one sentence conclusory statement, containing no information to support the elements of unreasonable and inexcusable delay,” warranting that it, too, be stricken.  The Court noted, however, that it would allow D&M leave to amend the pleadings to address these deficiencies.

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Magistrate Judge Christopher J. Burke recently considered the parties’ discovery disputes in Princeton Digital Image Corp. v. Konami Digital Entertainment Inc., et al., No 12-1461-LPS-CJB (D. Del. Aug. 4, 2016).  Among other things, Judge Burke granted defendants’ request regarding plaintiff’s infringement contentions.  In particular, Judge Burke ordered plaintiff to serve claim charts for “accused mobile game titles” separate from the “console-based game titles.”  Id. at 2.  Judge Burke also ordered supplemental contentions for the console-based game titles that “shall more clearly set out what aspects of the accused products are said to relate to which elements of the referenced portion of the claim that is at issue.”  Id.  As an example, Judge Burke stated that a sufficient format “that would provide such clarity would be: ‘the means for prerecording consists of [X elements of accused game].'”  Id. at 2-3 n.1.  Judge Burke also noted that plaintiff should serve these supplemental contentions in short order as they “will be drawing solely on the substance of Plaintiff’s current knowledge of the accused products[.]”  Id. at 2-3.

Princeton Digital Image Corp. v. Konami Digital Entertainment Inc., No. 12-1461-LPS-CJB

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Judge Gregory Sleet recently considered a request to compel the production of “approximately seventy documents disclosed to prospective litigation funding organizations, which [the plaintiff] claims is protected as work product” and which “were prepared by counsel and the inventor . . . for litigation funders in anticipation of and during litigation.” IOENGINE, LLC v. Interactive Media Corp., et al., C.A. No. 14-1571-GMS, Order at 2 n.1 (D. Del. Aug. 3, 2016). Judge Sleet agreed that the documents in question were protected by the work-product doctrine, recognizing that “[i]n recent cases, other courts have found that documents prepared for litigation-funders are protected, reasoning that ‘[l]itigation strategy, matters concerning merits of claims and defenses and damages would be revealed if the documents were produced.’” Id. (quoting Devon It, Inc. v. IBM Corp., No. CIV.A. 10-2899, 2012 WL 4748160, at *1 (E.D. Pa. Sept. 27, 2012)).

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In a recent Memorandum Order, Chief Magistrate Judge Mary Pat Thynge considered Plaintiff SunPower Corporation’s (“SunPower”) motion, pursuant to Local Rule 7.1.5, seeking (i) clarification of the court’s April 1, 2016 Memorandum and Order with respect to infringement by defendant PanelClaw, Inc. under the doctrine or equivalents; and (2) reconsideration of the court’s construction of the term “disposed as a layer.” SunPower Corporation v. PanelClaw, Inc., C.A. No. 12-1633-MPT (D. Del. Jul. 26, 2016). Judge Thynge first clarified that the court’s “April 1, 2016 Memorandum and Order granting summary judgment of non-infringement was limited to literal infringement and did not grant summary judgment of non-infringement under the doctrine of equivalents.” Id. at 3. Judge Thynge then denied SunPower’s request for reconsideration, noting that its “argument fails to demonstrate an error of apprehension, or the need to correct manifest errors of law or fact, requiring the court to reconsider its construction of the ‘disposed as a layer’ term.” Id. at 5. Judge Thynge explained: “As the court noted in its April 1, 2016 Memorandum, the construction adopted by the PTAB, and subsequently this court, is the construction SunPower proposed during the IPR.” Id. According to Judge Thynge, “[t]he court considered SunPower’s arguments to the PTAB, the reasoning of the PTAB, construction of the term by another district court, and its own review of the figures and specification of the ‘788 patent to reach its construction.” Id.

SunPower Corporation v. PanelClaw, Inc., C.A. No. 12-1633-MPT (D. Del. Jul. 26, 2016).

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In a recent order, Judge Gregory M. Sleet denied a plaintiff’s motion for leave to amend its complaint to allege additional facts relating to two theories of inequitable conduct already in the case.  Gilead Sciences, Inc. v. Abbvie, Inc., C.A. No. 13-2034 (GMS) (D. Del. July 28, 2016).  The plaintiff, Gilead, acknowledged that it sought to amend its complaint, out of an abundance of caution, to add factual detail elaborating on its existing allegations.  The Court denied the motion, explaining that “Gilead need not amend its complaint to specify every detail learned during discovery.”

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Judge Stark recently considered Heartland’s motion to compel discovery on the subject of why Kraft and its agents failed to disclose the Ackilli reference to the PTO during prosecution of one of the patents-in-suit.  Kraft Food Group Brands, LLC v. TC Heartland, LLC, et al., No. 14-028-LPS-CJB (D. Del. July 25, 2016).  Judge Stark granted the motion, finding that Kraft intentionally waived attorney-client privilege when it responded to Heartland’s interrogatory, asking for facts of certain individuals’ awareness of the Ackilli reference and why he or she did not disclose the reference to the PTO, with information about what “what a single Kraft patent attorney [Ms. Mitchell] knew about Ackilli and why she did not disclose the application to the Patent Office.”  Id. at 1-3.  Judge Stark ordered the parties to submit additional briefs on the scope of such waiver as to other individuals:

given that Kraft has indicated that it may defend itself against Heartland’s inequitable conduct allegations by arguing that Kraft or its agents were unaware that Ackilli should have been disclosed, Kraft’s decision to put in the record evidence to support this view constitutes waiver of information about other individuals who may have had a different perspective.

Id. at 3.

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 Chief Magistrate Judge Mary Pat Thynge recently considered defendants motion to dismiss Nexeon Limited’s amended complaint alleging direct and indirect infringement of the patents-in-suit. Nexeon Limited v. EaglePicher Technologies, LLC, et al., No. 15-955-RGA-MPT (D. Del. Jul. 26, 2016).  Defendants previously moved to dismiss Nexeon’s original complaint prompting Nexeon to file a first amended complaint.  Id. at 1.  Defendants again moved to dismiss arguing that the amended complaint still fails to adequately state of claim for direct and indirect infringement.  Regarding direct infringement, Judge Thynge noted that the complaint was filed prior to the amendment to the Federal Rules and the court “has discretion whether to apply the post-December 1, 2015 direct infringement pleading standard to the amended complaint.”  Id. at 9.  Judge Thynge decided that, in this case, Form 18 should be used to analyze the sufficiency of Nexeon’s amended complaint; and concluded that the requirements of Form 18 were met.  Id. at 9-11.  Regarding indirect infringement, Judge Thynge determined that Nexeon adequately pled inducement finding facts in the complaint alleging “specific intent for its customers to infringe and knowledge that the acts constituted infringement.”  Id. at 12-14.  Judge Thynge determined, however, that defendants’ motion should be granted with respect to Nexeon’s allegations of contributory infringement because Nexeon failed to plead that there are no substantial non-infringing uses.  Id. at 14-15.

Nexeon Limited v. EaglePicher Technologies, LLC, No. 15-955-RGA-MPT

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Judge Robinson recently issued a decision addressing the types of taxable costs that should be approved in a bill of costs. Among the guidelines that Her Honor set forth for that case were:

– Depositions that were “cited as important considerations in granting summary judgment” were reimbursable costs, because even if the Court “only cited the most critical pages of the depositions” in support of its decision, “that does not mean that the remainder of the depositions were not reviewed and used in a broader sense.” Apeldyn Corp. v. Sony Corp., et al., C.A. No. 11-440-SLR-SRF, Memo. Or. at 4-5 (D. Del. July 27, 2016).

– The costs of videotaping the deposition of an expert witness was not a reimbursable cost because the expert’s testimony “was not used in connection with the motion practice and, as an expert, it would be exceedingly rare for [the witness] to testify at trial via deposition (videotaped or otherwise).” Id. at 5.

– The costs of Bates labeling document productions were reimbursable as a “real-world necessity . . . [and] part of ‘making copies’ particularly in complex litigation requiring a large amount of documents to be produced.” Id. at 6.

– Costs associated with formatting e-discovery were only partially reimbursable due to inconsistencies in the defendants’ invoices, the lack of reliable information about the extent of certain formatting, and the fact that defendants “chose to oppose an early resolution and proceed with discovery.” Id. at 7-8.

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In MobileMedia Ideas, LLC v. Apple Inc., C.A. No. 10-258-SLR (D. Del. July 21, 2016), Judge Sue L. Robinson denied Defendant’s motion for summary judgment regarding damages as well as its nd Daubert motion, and also denied Plaintiff’s Daubert motion.

As to the summary judgment motion, the Court disagreed with Defendant that the doctrine of intervening rights would apply to this case based on amendments Plaintiff had made during reexamination, as the Court concluded that the claims had remained substantially identical in scope. See id. at 3-9. The Court also denied the damages motion as to failure to mark. Reviewing case law that was split on the issue, the Court concluded that the burden of proof lies with an alleged infringer to “come forward with particular unmarked products allegedly triggering § 287” where, as here, there was a question as to whether the patentee actually marketed a product in the United States that practiced the patent-in-suit. Id. at 10. As Defendant had not met this burden, the motion for summary judgment was denied.

The Court also denied Defendant’s motion to exclude the testimony of Plaintiff’s technical expert, rejecting Defendant’s narrowing of “the field of pertinent art” in a way that would exclude the expert’s “opinions as outside his general experience.” Id. at 11. The Court also rejected Defendant’s criticisms of the reasonable royalty calculation of Plaintiff’s damages expert, who relied on royalty rates from a prior litigation, because he “offer[ed] reasons for his patent selection and acknowledges and adjusts the royalty rate for the differing circumstances of the prior litigation.” Id. at 13. Defendant also sought to exclude a question in Plaintiff’s survey evidence related to the claimed invention’s footprint in the marketplace as being too broad, but the Court concluded that the survey question was “sufficiently tied to [the technical expert’s] opinion regarding the benefit of the patent.” Id. at 15.

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Judge Leonard P. Stark recently issued a memorandum order addressing a number of privilege log disputes.  Idenix Pharmaceuticals, Inc. v. Gilead Sciences, Inc., C.A. No. 13-1987-LPS (D. Del. July 20, 2016) (and related cases, C.A. No. 14-109-LPS and C.A. No. 14-846-LPS).  Among other rulings, Judge Stark found the following:

(1) a communication between a non-lawyer employee and another non-lawyer employee who was the “liaison with patent attorneys” was properly withheld as privileged.  Id. at 5.

(2) an email between non-lawyers that discussed the terms for engaging patent prosecution counsel was not privileged.  Id. at 5-6.

(3) a “scientific document” attached to a privileged email was not privileged.  Id. at 6-7.

(4) a non-lawyer employee’s email to other non-lawyer employees expressing views on a competitor’s patent was not privileged.  Id. at 9.

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