May 4, 2012

Judge Robinson Issues First Transfer Opinions in Patent Cases Post-Link_A_Media

Judge Robinson recently decided two motions to transfer, her first in patent cases since the Federal Circuit’s decision in Link-A-Media.  In Helicos Biosciences Corp. v. Illumina, Inc. et al., C.A. No. 10-735-SLR, at 3 (D. Del. May 3, 2012), Judge Robinson detailed the  Courts of Appeal’s history of allowing “civil action[s] for patent infringement [to] be brought in the judicial district in which the defendant was incorporated.”  Id. at 3.  As Judge Robinson explained, “by the time Jumara issued in 1995, there was a recognized historical continuum that served as the backdrop for the Third Circuit’s analysis.  First, a defendant’s state of incorporation had always been a predictable, legitimate venue for bringing suit.  Second, a plaintiff, as the injured party, generally had been ‘accorded [the] privilege of bringing an action where he chooses.’”  Id. at 6 (citations omitted).  Indeed, she noted, “the risk associated with the exercise of [judicial] discretion was also recognized . . . as ‘assigning to the trial judge the choice of forums, a prerogative which has previously rested with the plaintiff.’”  Id. (citations omitted).  Judge Robinson noted further that, “[a]lthough transfer is a discretionary decision on the part of a district judge, . . . clearly the Federal Circuit expects an analysis of all the Jumara factors in connection with any transfer decision issued by this court.”  Id. at 8.  She therefore proceeded to address each Jumara factor in turn, explaining why each factor either weighed for or against transfer, or was neutral.  Id. at 9-14.
Ultimately, Judge Robinson found that one factor favored transfer.  Considering the “practical considerations that could make the trial easy, expeditions, or inexpensive” she noted that “[t]he court in Delaware has been criticized for managing its patent docket without the aid of local rules, allowing the judges to vary their case management procedures over time and/or from case to case[,] . . . encouraging parties to settle their disputes, but not shying away from resolving disputes through the adversarial process (including trial) if the parties fail in their efforts to craft a business solution[,] . . . expecting the corporate citizens of Delaware to make themselves available to litigate in Delaware, as has been their historical obligation, and [] making observations about the realities of patent litigation gleaned from the (not insubstantial) experiences of its judges.”  Despite these critiques of the Court, she found that this factor favored transfer, as “trial in the Northern District of California would be easier and less expensive for the defendants.”  Id. at 12.  Because only one factor favored transfer, however, Judge Robinson determined that “defendant [had] not tipped the scales of justice in favor of transfer.”  Id. at 14. 
Similarly, in Cellectis S.A. v. Precision Biosciences, Inc., C.A. No. 11-173-SLR (D. Del. May 3, 2012), Judge Robinson denied a motion to transfer to the Eastern District of North Carolina .  Id. at 18.  Judge Robinson analyzed each Jumara factor.  Finding that two of the eleven factors – “the convenience of the parties” and “practical considerations that could make the trial easy, expeditious, or inexpensive” – weighed in favor of transfer, Judge Robinson concluded that the defendant did not put forth enough evidence to tip the scale in favor of transfer.  Id. at 15-18.

 

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April 30, 2012

Judge Robinson Denies Motion to Dismiss and Rule 11 Motion for Sanctions, Ruling That Dismissal Would be Premature and Sanctions Inappropriate at Early Stage of the Case

In Technology Innovations, LLC v. Amazon.com, Inc., C.A. No. 11-690-SLR, Judge Robinson denied defendant’s motion to dismiss for failure to state a claim and its motion for sanctions under Rule 11. Id. at 1. Plaintiff filed suit against defendant for infringement of two patents-in-suit. Id. at 1-2. In the complaint, Plaintiff alleged that certain of defendant’s e-book products infringed the patents-in-suit. Id. at 2. In response, defendant moved to dismiss the allegations involving one of the patents-in-suit under Rule 12(b)(6). Id. at 2. Specifically, defendant argued that the complaint failed to “allege sufficient facts to support a claim of infringement” of at least one of the patents-in-suit. Id. at 2. In addition, defendant argued that “there is no possible construction for ‘book’ that would cover [any of defendant’s products]” and “therefore, claim construction proceedings [were] not necessary,” and at least one of the patents-in-suit “should be dismissed from the case.” Id. at 3. Plaintiff, on the other hand, argued that the issue was one of claim construction and that dismissal under Rule 12(b)(6) was inappropriate. Id. at 3-4. The Court agreed. Id. at 4. In denying defendant’s motion, the Court made clear that it was “not prepared to engage in a claim construction exercise . . . at this stage of the proceedings, with no context provided by discovery or a motion practice.” Id. at 4. The Court concluded that the complaint “passes muster under Rule 8” and that dismissal based on the current record would, therefore, be “premature.” Id. at 4-5.
In support of its Rule 11 motion for sanctions, defendant argued that sanctions against plaintiff were appropriate because there was “no possibility” of infringement by defendant’s accused products. Id. at 5. The Court disagreed, declining to “award sanctions at this early stage of the case.” Id. at 5. In, however, denying defendant’s Rule 11 motion without prejudice, the Court warned that it would “entertain a renewed motion [for sanctions] if it is later determined, after discovery and a full claim construction record, that plaintiff’s assertion . . . against defendant’s products was so lacking in merit that the imposition of sanctions is warranted.” Id. at 5.

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April 26, 2012

Judge Robinson Finds Personal Jurisdiction over Nevada Defendants, but Orders Transfer

Judge Robinson recently considered motions for a preliminary injunction, to dismiss, and to transfer in a Lanham Act case with colorful facts.  Capriotti’s Sandwich Shop, Inc. v. Taylor Family Holdings, Inc., C.A. No. 12-28-SLR (D. Del. Apr. 25, 2012).  The case involves Capriotti’s, a Nevada corporation with franchised locations primarily in Delaware and Nevada.

Judge Robinson first determined that the defendant, Taylor Family Holdings, was amenable to jurisdiction and venue in the District of Delaware.  TFH had initiated a second case in the Delaware Court of Chancery against Capriotti’s after Capriotti’s filed its complaint and motion for a preliminary injunction in the District Court.  The Chancery litigation was stayed pending the outcome of the District Court litigation, and TFH moved to dismiss for lack of jurisdiction.  Judge Robinson found that on these facts and consistent with various authority, “by filing the suit in the Delaware Court of Chancery, defendants at bar have waived jurisdictional defenses and consented to the jurisdiction of this court.  Defendants ‘can claim no unfairness based upon this court’s exercise of jurisdiction over [them], since one who enjoys the full benefits of access to a forum’s courts as plaintiff may not simultaneously claim immunity from that forum's authority as defendant.’”  Id. at 15-18 (citing Marron v. Whitney Group, 662 F. Supp. 2d 198 (D. Mass. 2009)).

Judge Robinson also heard testimony in support of the motion for a preliminary injunction and determined that a key witness was in Nevada and had not testified in Delaware.  Because of this witness’s absence from the Delaware litigation, Judge Robinson refused to grant a preliminary injunction.  Id. at 19-20.  She also determined that the case was one where “the reasons to transfer strongly favor defendant,” and ordered transfer to the District of Nevada.  Although Delaware was a legitimate venue, the dispute regarding the injunction “arose in Nevada between two Nevada-based businesses and only a Nevada court can exercise personal jurisdiction over critical fact witnesses.”  Id. at 20-21.

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April 25, 2012

Judge Robinson denies motion to stay pending appeal of PTO's rejection of claims on reexamination

Judge Robinson denied today a motion for separate trials on two asserted patents, and for a stay as to one of those patents pending the outcome of an appeal to the Board of Patent Appeals and Interferences (“the Board”). Leo Pharma A/S v. Tolmar, Inc., Civ. No. 10-269-SLR (D. Del. Apr. 25, 2012). In this ANDA case, the plaintiff appealed to the Board the PTO’s rejection of all asserted claims of the ‘013 patent, and represented to the Court that if the Board upheld the PTO’s rejection, an appeal to the Federal Circuit would follow. The defendant argued that the plaintiff’s true motive for the “eleventh hour” motion (discovery was completed and trial was to begin in about two months) was improperly to prolong the 30 month stay under the Hatch-Waxman Act and, further, that the resources of both the Court and the parties would be wasted if separate trials were held on the related patents. The plaintiff, for its part, countered that denying the motion to stay would result in wasted resources because the outcome of the Board appeal (which would post-date the end of trial) likely would narrow the asserted claims tried to the Court. Judge Robinson denied the motion, and explained, “[b]ecause this is a bench trial, the evidence and arguments presented by the parties can be supplemented if need be. Since neither party is willing to abide by the decision of any forum other than the Federal Circuit, this court will do what it is supposed to do, try the case.”

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April 14, 2012

Judge Robinson Denies Defendants’ Motion to Dismiss Claims for Direct, Indirect and Willful Infringement in Multi-Defendant Patent Infringement Suit

In Walker Digital, LLC v. Facebook, Inc., C.A. No. 11-313-SLR, Judge Robinson denied defendants’ motion to dismiss plaintiff’s claims for direct, induced, contributory and willful infringement. Id. at 1. Plaintiff filed suit against multiple defendants for infringement of two patents-in-suit relating to e-commerce transaction technology. Id. at 1-2. Plaintiff alleged that defendants “ha[ve] and continue[] to directly, indirectly and willfully infringe” the patents-in-suit. Id. at 2. Two of the defendants in the case moved to dismiss the allegations against them for failure to state a claim. Id. at 3. These defendants argued that the amended complaint was “ripe for dismissal for failure to state a claim” because: (1) “the accused marketing promotions on their face show that they do not satisfy the ‘unless and until’ claim limitation of the patents-in-suit” and that amended complaint (2) lacks factual allegations sufficient to state a claim for indirect and willful infringement.” Id. at 3. The Court denied defendants' motion.
Regarding the claims for direct infringement, and despite defendants’ arguments to the contrary, the Court concluded that “dismissing the amended complaint on the grounds that it fails to state a claim for direct infringement would be premature” and that the Court was “not prepared to engage in a claim construction exercise at this stage of the proceedings, with no context whatsoever provided by discovery or a motion practice.” Id. at 5. Regarding the claims for inducement, the Court found that the plaintiff’s allegations “pass[ed] muster under Rule 8” and were therefore sufficient for pleading purposes. Id. at 10. Citing the Supreme Court’s decision in Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060, 179 L. Ed. 2d 1167 (2011), the Court noted that “if a complaint sufficiently identifies, for purposes of Rule 8, the patent at issue and allegedly infringing conduct, a defendant’s receipt of the complaint and decision to continue its conduct despite knowledge gleaned from the complaint satisfies the requirements of Global-Tech.” Id. at 11.
Likewise, regarding the claims for contributory infringement, the Court found that the allegations of the amended complaint satisfied each of the elements of contributory infringement; were “facially plausible” and provided defendants “adequate notice” of the claims asserted against them. Id. at 12. Finally, regarding the claims for willfulness, the Court determined that the allegations of the amended complaint were sufficiently pled to state a claim for willful infringement. Id. at 14. The Court noted that the “amended complaint provides evidence that [defendants] had pre-suit knowledge of the patents-in-suit due to . . . interactions with [plaintiff’s] representatives, which occurred before the original complaint was filed” and that the Court can “infer from [defendants’] conduct after plaintiff filed its original complaint that [defendants] knew or should have known the objectively high likelihood that [their] continuous and deliberate actions would constitute infringement of the patents-in-suit.” Id. at 14-15.

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April 10, 2012

Judge Robinson denies 12(b)(6) motions and motion to stay pending resolution of related appeal.

In a recent memorandum opinion, Judge Robinson denied Sony's motions to dismiss inducement and willfulness claims and to stay pending the resolution of an appeal in an earlier related case. Apeldyn Corp. v. Sony Corp., et al., C.A. No. 11-440-SLR (D. Del. Apr. 4, 2012). In denying Sony’s motion to dismiss the inducement claim, the Court explained that a complaint that “sufficiently identifies, for purposes of Rule 8, the patent at issue and the allegedly infringing conduct, [and] a defendant’s receipt of the complaint and decision to continue its conduct despite the knowledge gleaned from the complaint” can satisfy the elements of an inducement claim under Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060, 2068 (2011). Id. at 9. The Court explained that Sony indisputably knew that its conduct was alleged to induce infringement at least as of the filing of the earlier complaint, and Apeldyn sufficiently alleged that Sony continued to engage in that conduct despite its knowledge. Id. at 7. The Court next addressed the willfulness claim, and explained that although “a willfulness claim asserted in the original complaint must necessarily be grounded exclusively in the infringer’s pre-filing conduct,” quoting In re Seagate Tech., LLC, 497 F.3d 1360, 1374 (Fed. Cir. 2007), the “pre-filing conduct” requirement as it related to this second filed action by Apeldyn included the participation in the earlier filed case. Id. at 11. Accordingly, the Court found that Apeldyn’s complaint sufficiently alleged “that Sony had knowledge of the ‘382 patent before filing of the instant suit.” Id. at 12 (emphasis added). Finally, the Court addressed Sony’s motion to stay pending the resolution of the appeal in the earlier case, and explained that although the status of this case favored a stay, the prejudice to Apeldyn weighed against a stay and it was not yet clear whether a stay likely would result in simplification of issues in this case. Id. at 16. The Court therefore denied the motion to stay without prejudice.

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April 6, 2012

Judge Robinson Denies Summary Judgment of Claim Preclusion

Recently, in SRI International, Inc. v. Symantec Corporation, C.A. No. 11-131-SLR (D. Del. Mar. 30, 2012), Judge Robinson denied summary judgment of claim preclusion.  SRI had previously litigated the same patents against Symantec in a separate case.  In that previous case, one witness discussed MSS, the accused product of the present case.  The jury was not, however, asked to determine whether MSS infringed the patents-in-suit.  Symantec then argued in the present case that “because there was mention of MSS during the course of the [previous] case and at trial, SRI should be precluded from pursuing the instant litigation.”  Id. at 9.

Judge Robinson found, however, that Symantec’s position suffered from “two infirmities, both of which are undisputed.  First, despite multiple discovery requests in the [previous] case, Symantec did not provide SRI with any technical data on MSS.  Second, there was no specific judgment entered in the [previous] case about MSS.”  Id. at 9-10.  Because the Court found that Symantec had not proven that MSS was essentially the same as the previously-litigated product, it denied Symantec’s motion for summary judgment.

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April 3, 2012

Judge Robinson Denies Motion to Dismiss Willfulness, Direct and Indirect Infringement Claims, Concludes That the Claims As Pled Satisfied the Pleading Standard of Form 18

In Netgear, Inc. v. Ruckus Wireless, Inc., C.A. No. 10-999-SLR, Judge Robinson denied defendant’s Rule 12(b)(6) motion to dismiss plaintiff’s claims of direct infringement, induced and contributory infringement, and willful infringement. Id. at 1. Plaintiff filed an amended complaint in this action against defendant for infringement of four patents-in-suit relating to wireless communication technology. Id. In the amended complaint, plaintiff alleged that defendant “induces and/or contributes to infringement by third parties, and willfully infringes the patents-in-suit.” Id. at 2. Defendant moved to dismiss these allegations for failure to state a claim. Id. at 1-2. Defendant argued that the amended complaint should be dismissed because it: “(1) lacks basic factual support; (2) fails to comply with Form 18; (3) fails to state a claim for indirect infringement; and (4) fails to sufficiently allege willful infringement.” Id. at 2. The Court, however, disagreed. Regarding the claims for direct infringement, the Court concluded that plaintiff’s amended complaint asserts a cause of action for direct infringement “in a manner sufficient for defendant to formulate a response and defense” and that it “provides sufficient factual support and mimics Form 18.” Id. at 7. In its analysis, the Court noted that because, among other things, the amended complaint mimicked Form 18 and identified, by name, certain of defendant’s products that allegedly infringe the patents-in-suit, it complied with “the level of detail required to satisfy the pleading standard for Form 18.” Id. at 5. Similarly, regarding the sufficiency of plaintiff’s claims for inducement and contributory infringement, the Court held that they too were “facially plausible” and provided “defendant with adequate notice” of plaintiff’s indirect infringement claims. Id. at 10-11. Lastly, regarding the claims for willful infringement, the Court found that plaintiff sufficiently alleged that defendant had “pre-filing knowledge” of at least one of the patents-in-suit and that defendant had “infringed and continues to infringe the patent.” Id. at 11. Moreover, the Court expressly declined “to require more detail with respect to plaintiff’s willful infringement claims than is required by Form 18.” Id. at 11.

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March 23, 2012

Judge Robinson Denies Defendant’s Renewed JMOL Regarding Lost Profits Damages, Awards Plaintiffs Enhanced Damages Under § 284

In Boston Scientific Corp. v. Cordis Corp., C.A. No. 10-315-SLR, Judge Robinson recently denied defendant’s renewed motion for judgment as a matter of law regarding lost profits damages and granted plaintiffs’ motion for enhanced damages -- ultimately doubling the jury’s award. Id. at 37. Following the Court’s grant of summary judgment of infringement in favor of plaintiffs in a patent dispute involving cardiovascular stents, the Court held a jury trial on willfulness and damages. Id. at 3-4. Following that trial, the jury awarded plaintiffs nearly $18.5 million in lost profits damages and $1.0 million in reasonable royalties based on defendant’s infringement. Id. at 4. In post-trial submissions, defendant filed a renewed motion for judgment as a matter of law challenging the jury’s award of lost profits damages. Id. at 7. Defendant argued that the award was not supported by “substantial evidence” because, among other things, plaintiffs had not proven that the defendant’s infringing product was the “but-for cause” of the decline in plaintiffs’ sales. Id. at 7. The Court disagreed. Id. at 25. The Court found that the jury’s award of lost profits was, indeed, supported by sufficient evidence. Id. at 25. Specifically, in its analysis, the Court concluded that there was sufficient evidence to support that a “specific market” existed for defendant’s infringing product and that the demand for defendant’s infringing product and plaintiffs’ product was “interchangeable.” Id. at 23. The Court further concluded that sufficient evidence was presented that, for example, the “doctors’ demand” for defendant’s infringing product would have transferred to plaintiffs’ product in the absence of defendant’s infringing product. Id. at 23.

In addition to denying defendant’s renewed motion for judgment as a matter of law, the Court concluded that, although the case was not necessarily an exceptional one under 35 U.S.C. § 285, plaintiffs were nonetheless entitled to an award of enhanced damages under § 284 and that doubling the jury’s award was “reasonable under the circumstances.” Id. at 36. The Court determined that there existed “clear and convincing evidence that [defendant’s] conduct [was] sufficiently culpable to justify enhanced damages.” Id. at 36. The Court noted that the “Read factors” favoring enhancement included: (1) the extent to which defendant was aware of and investigated the scope of the patent-in-suit, (2) defendant’s litigation conduct, (3) defendant’s financial condition, (4) defendant’s motivation for harm, (5) the non-closeness of the case, and (6) the lack of remedial action on the part of the defendant. Id. at 36. The Court also noted that none of the Read factors specifically weighed against enhancement. Id. at 36.

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March 5, 2012

Court rejects argument that, under the circumstances, lack of Paragraph IV certification means no act of infringement and no jurisdiction.

In a recent memorandum order, Judge Robinson rejected an ANDA defendant’s argument that the Court lacked subject matter jurisdiction over the parties’ dispute because the defendant’s ANDA did not include a Paragraph IV certification relating to the patents-at-issue. Cephalon, Inc. v. Sandoz, Inc., Civ. No. 11-821-SLR (D. Del. Mar. 1, 2012). The plaintiff originally listed two patents in the Orange Book in connection with its approved NDA for FENTORA®. The defendant then filed an ANDA, which included a Paragraph IV certification addressing those two patents. Id. at 1-2. Litigation followed, but was stayed pending the resolution of an appeal of a related case involving the validity of the same patents. Id. at 2.

Meanwhile, on January 4, 2011, the plaintiff was issued two new patents, which the plaintiff waited almost three months to list in the Orange Book in connection with FENTORA®. The Court noted that the defendant did not, and under 21 C.F.R. § 314.94(a)(12)(vi)(1995) was not required to, file an amended Paragraph IV certification because the plaintiff did not list the two new patents within 30 days of their issuance. Id. at 2. The plaintiff then sought to amend the pleadings in the stayed action to assert the two new patents, but the defendant declined to stipulate to such an amendment. Id. As a result, the plaintiff filed a new complaint against the defendant alleging infringement of the two new patents. Id. at 2-3.

In this second action, the defendant argued that the Court lacked subject matter jurisdiction because its ANDA did not include a Paragraph IV certification with respect to the two new patents, and there was, therefore, no artificial act of infringement under § 271(e)(2) creating jurisdiction. Id. at 3. Judge Robinson disagreed, explaining “Where, as here, the jurisdictional trigger was properly pulled by the filing of an ANDA and the initial Paragraph IV certification . . ., the court’s jurisdiction should not be confined simply because [the defendant] was not required to file[] an amended Paragraph IV certification. Clearly, [the defendant] was put on notice of the ‘832 and ‘833 patents.” Id. at 10. The Court “decline[d] to elevate form over substance where the purpose of the administrative process has been served and conclude[d] that jurisdiction under § 271(e)(2) [was] established.” Id. at 10-11. Moreover, the Court explained that it could still exercise jurisdiction over the dispute under the Declaratory Judgment Act if the defendant’s argument relating to § 271(e)(2) were accepted, finding that nothing in the Hatch-Waxman Act precludes a court from exercising jurisdiction based solely on the Declaratory Judgment Act. Id. at 11.

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