Delaware IP Law Blog

Judge Robinson recently denied a motion for a preliminary injunction, finding that the proper construction of a disputed claim term rendered the plaintiff unlikely to prevail on its infringement claim, and finding further that the defendant raised a substantial question concerning validity. Butamax Advanced Biofuels LLC v. Gevo, Inc., C.A. No. 11-54-SLR (D. Del. June 19, 2012). The Court rejected the plaintiff’s argument that the disputed term “acetohydroxy acid isomeroreductase” should be given its plain and ordinary meaning, and instead construed the term consistently with the narrower definition given to it in the definitions section of the patent. Id. at 10. In light of that construction, the Court explained that the plaintiff likely could not prove infringement at trial. Id. at 12. Further, the Court explained that to obtain a preliminary injunction, “the patentee must demonstrate that a defendant’s invalidity defense ‘lacks substantial merit.’” Id. at 17-18 (quoting Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1350-51 (Fed. Cir. 2001)). The Court explained, “the fact that the ‘889 patent has been rejected on reexamination, combined with the finding by the court that plaintiff’s likely claim construction is too narrow, demonstrate that defendant’s invalidity defenses do not lack substantial merit.” Id. at 20. The Court issued another opinion in this case two days later addressing various motions.

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Judge Robinson recently considered various motions related to counterclaims in Butamax Advanced Biofuels LLC v. Gevo, Inc., C.A. No. 11-54-SLR (D. Del. June 21, 2012). She first denied Butamax’s motion for judgment of non-infringement on the pleadings, declining “to tackle the issues of claim construction and infringement without the benefit of any introductions to the technology or to the accused ‘product’ but for Butamax’s assertions regarding same. If, however, there are a limited number of critical claim limitations, the court would entertain a course of focused discovery in order to encourage an expedited resolution of the counterclaims.” Id. at 2-3.

Judge Robinson also granted Butamax’s motion to sever counterclaims and try them separately, id. at 3, and Butamax’s motion to amend the pleadings to add allegations of inequitable conduct. She rejected Gevo’s argument that the amendments were intended “to delay the adjudication of Gevo’s counterclaims” and found that Butamax had pled inequitable conduct with sufficient particularly and that its allegations were not futile. Because the “proposed amendment satisfies the . . . pleading standard by identifying the ‘who,’ the ‘what,’ the ‘when,’ the ‘where,’ and the ‘how,’” Judge Robinson allowed the amendment. Id. at 4-6.

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In a recent memorandum order, Judge Robinson rejected the plaintiff’s efforts to present willfulness evidence in the damages phase of trial. IGT v. Bally Gaming Int’l, Inc., et al., C.A. No. 06-282-SLR (D. Del. June 20, 2012). Inconsistently with Judge Robinson’s typical practice, the plaintiff had requested that it be permitted to try willfulness during the liability phase of the case. The Court permitted the plaintiff to do that, but, thereafter, the plaintiff failed to include any information about its willfulness allegations in its interrogatory responses, and the parties engaged in no discovery regarding willfulness at any time. Id. at 1-2. After the Court’s summary judgment rulings largely disposed of the liability phase of the case, the plaintiff sought to present willfulness evidence in the damages phase. Judge Robinson explained, “Plaintiff, over defendants’ objection, requested permission to pursue the issue of willfulness during the liability phase of the case. Although the court generally separates the resolution of liability from the resolution of willfulness and damages, the court granted plaintiff’s request. Plaintiff never brought up the issue of willfulness again until the April 2009 pretrial order. In seeking a second opportunity to pursue its willfulness claim, plaintiff is requesting a second bite at the apple. The court is not inclined to make two exceptions for plaintiff.” Id. at 3.

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Judge Robinson recently issued a memorandum order in Cyberphone Systems, LLC v. Cellco Partnership, et al., C.A. Nos. 11-827-SLR through 11-835-SLR (D. Del. Apr. 30, 2012), denying various motions of certain defendants to dismiss the claims against them.  Among these were motions based on the argument that, although CyberFone filed its complaints on the day before the America Invents Act took effect, these pre-AIA complaints violated Federal Rule of Civil Procedure 20 because they did not “allege joint infringement, or any relationships or common activities among the individual defendants.”  Id. at 2.  Judge Robinson initially noted that “severance, not dismissal, is the correct remedy for misjoinder.”  She then refused to exercise her discretion to sever the claims.  Id. at 2-3.  Similarly, she refused to sever claims against cellular carriers from claims against cellular handset manufacturers based on the customer suit exception.  Id. at 3-4.

Judge Robinson also denied several motions to dismiss “improper” infringement allegations, finding that they complied with Form 18, and denied several motions to dismiss that related to the adequacy of CyberFone’s direct infringement allegations.  She stated:  “[t]he court is not prepared to engage in the claim construction exercise at this stage of the proceedings, with no context whatsoever provided by discovery or a motion practice.”  Id. at 4.  “The court will discuss with the parties, however, the need for an early claim construction of dispositive limitations, once a full and fair exchange of fundamental documents has been accomplished.”  Id. at 4 n.6.

Finally, Judge Robinson reaffirmed her recent decision in Walker Digital that “a defendant’s receipt of the complaint and decision to continue its conduct despite the knowledge gleaned from the complaint satisfies the requirements of Global-Tech [that the defendant have knowledge of the patent].”  On this basis, she refused to dismiss various claims of indirect infringement.  Id. at 6.

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Judge Robinson recently denied, without prejudice, a motion for fees (and motion for joinder) filed by defendants who prevailed on summary judgment. Apeldyn Corp. v. AU Optronics Corp., et al., C.A. No. 08-568-SLR (D. Del. May 3, 2012). The Court noted that under Rule 54(b)(2)(B), it had discretion either to rule on the motion, to defer ruling on the motion, or to deny the motion without prejudice. Id. at 3. Here, because the defendants prevailed on summary judgment and the plaintiff subsequently appealed the decision to the Federal Circuit, the Court exercised its discretion and denied the motion without prejudice, explaining that “[i]f the Federal Circuit affirms, defendants may request a briefing schedule on a joint motion for fees.” Id. at 4.

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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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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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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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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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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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