In Eon Corp. IP Holdings LLC v. FLO TV Inc., C.A. No. 10-812-SLR (D. Del. July 12, 2011), Judge Robinson recently evaluated the sufficiency of plaintiff’s patent infringement claims under Twombly and Iqbal. Judge Robinson found that plaintiff’s direct infringement claims passed muster. Id. at 5. Plaintiff’s indirect infringement claims, however, did not fare as well. Plaintiff alleged that “users of defendants’ subscription units commit the requisite acts of direct infringement required for indirect infringement liability[,]” and that “defendants knew or should have known of the [patent-in-suit] before the infringing acts occurred because some of defendants entered into licensing agreements with a third party and obtained rights to two patents that cite the [patent-in-suit] as prior art[.]” Id. at 6. Judge Robinson found that plaintiff did not allege sufficient facts to allow the court to infer that defendants had knowledge of the patent-in-suit, because “the link between the [patent-in-suit] and defendants involved in licensing agreements with a third party is too tenuous to sustain an allegation of knowledge.” Id. at 7-8. Plaintiff’s joint infringement claims failed because its complaint “did not provide specific facts explaining any alleged relationships among defendants,” or that “any defendant  exercise[ed] ‘control or direction’ over the allegedly infringing acts of other parties.” Id. at 12.
Judge Robinson: Motion to Dismiss Patent Suit Denied Where Claim Construction Is Necessary to Resolve Dispute
In Internet Media Corp. v. Hearst Newspapers, LLC, C.A. No. 10-690-SLR (D. Del. June 28, 2011), Judge Robinson denied the defendant's motion to dismiss a patent infringement suit because the defendant's argument would require construction of an asserted claim. Id. at 7. The defendant argued that the complaint should be dismissed because the asserted patent "is indefinite as a matter of law[.]" Id. at 4. "Specifically, defendant argues that claim one is a means-plus-function claim relating to the use of computers, thus requiring that the specification disclose an algorithm by which the computer performs the recited function." Id. The "[d]efendant argues that the court need not construe the asserted claim and must simply look to the specification to see if an algorithm is disclosed." Id. at 6. The court, however, found that "[s]ome degree of claim construction is necessary to determine if the apparent means-plus-function claim is actually a means-plus-function claim, or if the claim itself recites enough structure to overcome the presumption of 35 U.S.C. § 112 ¶ 6." Id. at 7. Further, "the court would need to construe the claim in order to determine what algorithm to look for in the specification and what elements are necessary in said algorith to satisfy § 112 ¶ 6." Id. Thus, because claim construction "is properly reserved for summary judgment[,]" Judge Robinson denied the defendant's motion to dismiss. Id.
In OSI Pharmaceuticals, Inc. v. Mylan Pharmaceuticals, Inc., C.A. No. 09-185-SLR (D. Del. June 30, 2011), Judge Robinson recently issued an order enjoining an ANDA defendant "from launching its generic drug until the court's decision issues" because the stipulated post-trial briefing schedule would exceed "what the court estimates to be the expiration of the 30-month stay invoked by operation of the filing of this lawsuit[.]" Id.
On June 8th, Judge Robinson denied two motions to transfer. We reported on one last week -- Marvell International Ltd. v. Link_A_Media Devices Corp., C.A. No. 10-869-SLR (D. Del. June 8, 2011). The second denial, in XPRT Ventures, LLC v. eBay, Inc., C.A. No. 10-595-SLR (D. Del. June 8, 2011), again emphasized that (1) the defendants are Delaware corporations, (2) that judicial congestion in the District of Delaware is not a factor, and (3) that "[i]n this electronic age, there are no substantial burdens associated with discovery or witness availability that support the need to transfer." Id. at 6-7.
One interesting wrinkle in this second denial is that the plaintiff in XPRT had previously disclosed some of the subject matter to the defendants under a confidentiality agreement with a forum selection clause. The Court held, however, that the "Agreement's forum selection clause controls only breaches of confidentiality," due to language in the clause stating that it applied to breaches "arising out of this Agreement" and because "the Agreement explicitly states that there is no bar from bringing patent infringement cases." Id. at 6.
In Ricoh Company, Ltd. v. Oki Data Corporation, Civ. No. 09-695-SLR (D. Del. Jun. 9, 2011), Judge Robinson denied the plaintiffs' request to consolidate cases and lift stay.
The plaintiffs had represented that the asserted patents were "clearly related" to asserted patents in an earlier suit between the parties. In response, Judge Robinson noted that, even if the court were to assume that the plaintiffs' representations were correct, the court could not accommodate the plaintiffs' request to have additional time for discovery in the court's present 2012 trial calendar. Id. at 1. Judge Robinson also noted that consolidating cases would have turned a six-patent case into an eight-patent case, which would have required even more trial time. Id.
Judge Robinson then denied the plaintiffs' request to lift stay because the "plaintiffs intend to pursue its appeal of the ITC's adverse ruling to the Federal Circuit absent consolidation." Id. at 1-2.
In Everglades Interactive, LLC v. Playdom, Inc., Civ. No. 10-902-SLR (D. Del. Jun. 8, 2011), Judge Robinson denied the defendants' motion to transfer the case from the District of Delaware to the Northern District of California.
The defendants argued, inter alia, that the Northern District of California was "the more convenient and appropriate venue" because Northern California was the principal place of business for the U.S. defendants as well as the plaintiff. Id. at 5. But after noting that all of the U.S. defendants were incorporated in Delaware, id. at 2, the court reiterated -- "consistent with its usual mantra" -- that defendants who choose to incorporate in Delaware "must also bear the burden of being eligible to be haled to Delaware for lawsuits[,]" id. at 6.
In Medicis Pharm. Corp. v. Nycomed US Inc., C.A. No. 10-1099-SLR (D. Del. June 16, 2011), the "plaintiff filed two identical actions against defendant" in the District of Delaware and the Southern District of New York. Id. at 2. The "defendant moved to transfer the instant action to the Southern District of New York[,]" and Judge Robinson granted this motion. Id. at 2. Although the court noted that "plaintiff's choice of forum is given paramount consideration," Judge Robinson stated that "the case at bar shares common questions of law and fact with the first [previously transferred] actions, which are now proceeding in the Southern District of New York." Id. at 4-5. "Thus, it is in the interest of judicial economy to transfer the current lawsuit to the Southern District of New York so that both courts may avoid redundant efforts and the possibility of inconsistent results." Id. at 5.
In Marvell International Ltd. v. Link_A_Media Devices Corp. , C.A. No. 10-869-SLR (D. Del. June 8, 2011), Judge Robinson recently denied defendant’s motion to transfer the action to the Northern District of California. Defendant argued that transfer was appropriate because its principal place of business was in California, the events surrounding the litigation arose outside Delaware, defendant was a regional corporation, relevant documents and non-party witnesses were in California, the court congestion in Delaware, and that plaintiff did not sue on its home turf. Id. at 2. Plaintiff disagreed that transfer was appropriate because defendant was a Delaware corporation, because Delaware court’s have expertise in patent litigation and because defendant has not specified any document or witness that cannot be produced in Delaware. Id. Judge Robinson noted that “plaintiff’s choice of forum is of paramount consideration” and defendant’s burden to prove that transfer is warranted remains unchanged even though plaintiff chose to sue in a forum other than its home turf. Id. at 3. Judge Robinson also noted that “because [defendant] is a Delaware corporation, it has no reason to complain about being sued in Delaware.” Id. at 4. Judge Robinson also found that defendant was an international company, rather than regional, evidenced by its offices around the globe. Id. Furthermore, the congestion of the court was a “non-issue”; and defendant’s argument about the location of discovery was not persuasive because “[i]n this electronic age, there are no substantial burdens associated with discovery or witness availability that support the need for transfer.” Id. at 5.
Judge Robinson denied a motion for reconsideration of her November 18, 2010 opinion in Kenexa Brassring, Inc. v. Taleo Corporation because the motion was untimely and not effected by the change in law set forth in the Federal Circuit's opinion in Centillion Data Sys., LLC v. Qwest Commc'ns Int'l, Inc. C.A. No. 07-521-SLR, Memo. Order (D. Del. May 26, 2011). The Court found that plaintiff's motion was filed more than five months after her opinion in violation of Local Rule 7.1.5 which requires that motions for reargument be filed within 14 days "after the Court issues its opinion or decision." Id. at 2 (internal citations omitted).
The Court further found that plaintiff's motion failed on the merits. The Federal Circuit's opinion in the Centillion case dealth with "use" for purposes of infringement and found that for "use" to constitute infringement, "a party must put the invention into service . . ." and "use each and every element . . . of a claimed [system]." Id. at 2-3 (internal citations omitted). Here, defendant did not "use" the "entire claimed system" and therefore Centillion does not change the Court's analysis. Id. at 3.
Last week, Judge Robinson issued an opinion in Accenture Global Serv. v. Guidewire Software, Inc., C.A. No. 07-826-SLR (D. Del. May 31, 2011). The case involves patents directed towards the processing of insurance claims. The Court previously stayed the case pending the Supreme Court's decision in Bilski. Last week, Judge Robinson granted the motion for invalidity of the patents at issue because they are directed towards abstract and unpatentable ideas in light of the Supreme Court's decision in Bilski. According to the Court,
The court concludes that the '284 and '111 patents are directed to abstract and, therefore, unpatentable, methods and systems for generating file notes and tasks to be performed for insurance claims. . . . The patents are directed to concepts for organizing data rather than to specific devices or systems, and limiting the claims to the insurance industry does not specify the claims sufficiently to allow for their survival.Id. at 12.