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In John H. Stephenson v. Game Show Network, LLC, et al., C.A. No. 12-614-SLR (D. Del. July 11, 2017), Judge Sue L. Robinson denied Defendants’ motion requesting an exceptional case finding and for attorneys’ fees. Defendants essentially argued the case was exceptional due to Plaintiff’s litigation conduct where Defendants’ “initial evaluation of the [patent-in-suit] as invalid was ultimately determined to be correct by the PTAB.” Id. at 4. But the Court found the case and the conduct of Plaintiff to be typical among patent cases. Id. at 5. In fact, it was Defendants who had “filed every motion on the docket.” Id. In sum, “[t]he fact that defendants maintained from the outset that the [patent-in-suit] was invalid does not change this modest case into an exceptional one.” Id.

John H. Stephenson v. Game Show Network, LLC, et al., C.A. No. 12-614-SLR (D. Del. July 11, 2017)

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Nespresso USA file a declaratory judgment complaint against Ethical Coffee Company requesting judgment that Nespresso does not infringement ECC’s patent.  Nespresso USA, Inc. v. Ethical Coffee Company SA, No. 16-194-GMS (D. Del. July 13, 2017).  In response, ECC filed a counterclaim against Nespresso, as well as three additional defendants which are Switzerland corporations.  The Swiss Defendants moved to dismiss for lack of personal jurisdiction.   Judge Sleet granted the motion.  In doing so, Judge Sleet found that general jurisdiction was not present because “there [were] no ties between the companies and Delaware that render them essentially at home in this state[.]”  Id. at 5.  Regarding specific jurisdiction, Judge Sleet found that the Swiss Defendants were not subject to personal jurisdiction under the stream of commerce theory because they did not “did not introduce the Nespresso machines into the stream of commerce,” therefore ECC could not demonstrate that they “placed–or otherwise influenced the placement of–the Nespresso machines into either the United States market generally or the Delaware market specifically.”  Id. at 6-7.  Nor could the Swiss Defendants be held responsible for the actions of their subsidiary, Nespresso, because the mere ownership of a subsidiary or a patent, without more, does not justify the assertion of personal jurisdiction on the parent/foreign patentee. Id.at 7.  Judge Sleet also found a lack of evidence to support personal jurisdiction under an agency theory.  Id.at 8-9.  Because of the “bare assertions” in this case, Judge Sleet denied ECC’s request for jurisdictional discovery.  Id. at 14.

Nespresso USA, Inc. v. Ethical Coffee Company SA, No. 16-194-GMS

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Judge Robinson recently denied a motion to dismiss under Section 101, finding that the invention in question was not directed to an abstract idea. The claim in question, claim 17 of U.S. Patent No. 7,058,524, reads as follows:

A method of measuring power consumption information on a power line comprising:
measuring current fluctuations in the power line;
calculating power consumption information from the current fluctuations in a processor;
converting the power consumption information into IP-based power consumption information in the processor; and
transmitting the IP-based power consumption information from the processor to a destination autonomously in IP format over an external power line network.

The defendant advanced several arguments that each aspect of this claim was directed to an abstract idea of “measuring and transmitting power consumption information that has been performed for years by human meter readers” and “measure[ing] and transmit[ting] power consumption information using admittedly conventional technologies.” Specifically, the defendant argued that “(1) the steps of claim 17 ‘do not involve any scientific or technical innovation, but merely recite a way of measuring and transmitting power consumption information;’ (2) ‘[p]ower utility companies have measured power consumption information for decades using human meter readers;’ [and] (3) ‘the specification expressly acknowledges that the claimed invention could be performed by a meter-reading human’ which is ‘an indication that the claimed invention is directed to an abstract idea.’” Smart Meter Techs. Inc. v. Duke Energy Corp., C.A. No. 16-208-SLR, Memo. Or. at 4-8 (D. Del. July 11, 2017). Judge Robinson rejected these arguments, finding that the specification supports a broader reading of the claim than these characterizations that includes a number of embodiments and possible benefits of the invention, only one of which is replacing human meter readers, and “a claim is not ‘directed to’ a specific embodiment when multiple embodiments are potentially covered by the claim limitations.” Id. at 8-9.

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Judge Robinson has issued an order denying a motion for preliminary injunction in a case under the Patent Act, the Defend Trade Secrets Act, and Delaware state law. The case involves a dispute over “hair styling products in the newly-created ‘bond builder’ market category.” The Plaintiffs developed this product and “revenues quickly grew to the tens of millions of dollars.” Defendant L’Oréal then expressed interested in purchasing Plaintiff Olaplex, but eventually withdrew that interest and launched competing products. Plaintiffs brought suit alleging that L’Oréal’s new products infringe the patent-in-suit. Liqwd, Inc., et al. v. L’Oréal USA, Inc., et al., C.A. No. 17-14-SLR, Memo. Or. at 2-3 (D. Del. July 6, 2017).

Addressing possible irreparable harm, Judge Robinson concluded, crediting the testimony of Plaintiffs’ expert over that of Defendants’ expert, that “defendants are [Plaintiff] Olaplex’s direct competitor in what is a two-player national market. . . . [t]he record shows that Olaplex will continue to face price pressures and declining revenues based upon competition by the accused products. . . . As the ‘bond builder’ market category is new and growing, it is likely that plaintiffs will be harmed by direct competition in their primary market. . . . Therefore, irreparable harm weighs in favor of plaintiffs.” Id. at 13-14. Judge Robinson also concluded that the balance of equities favored Plaintiffs, considering that “Olaplex is a one-product company focused on a specific market category from which it derives all of its revenues [while] Defendants are elements of a multinational corporate entity, and the accused products account for a small percentage of revenues.” Id. at 14.

Addressing the likelihood of success injunction factor, on the other hand, Judge Robinson concluded that “[w]ere the court inclined to accept plaintiffs’ contention that applicant acted as its own lexicographer, the court would most likely conclude that claim 1 is indefinite.” Id. at 3-8. Judge Robinson concluded that the Plaintiffs had not demonstrated a likelihood of success in proving infringement due to possible indefiniteness and because “the specification does not support the meaning plaintiffs now assert” under plain and ordinary meaning or the patentee’s lexicon. Moreover, Plaintiffs did not satisfy the knowledge prong of providing induced infringement. Id. at 9-10. Because “plaintiffs have not demonstrated a likelihood of success on the merits with respect to induced patent infringement . . . the public interest [factor also] weighs against an injunction.” Id. at 14. The Defendants, however, did not demonstrate a likelihood of prevailing on invalidity. Id. at 10-12. For these reasons, Judge Robinson declined to issue a preliminary injunction.

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Judge Richard G. Andrews recently considered motions in limine filed in advance of the bench trial in Novartis Pharmaceuticals Corporation v. West-Ward Pharmaceuticals International Limited, No. 15-474-RGA (D. Del. Jun. 30, 2017).  Plaintiffs moved to exclude certain “points” of Defendant’s invalidity experts disclosed during deposition.  Judge Andrews ordered that  Plaintiffs could serve limited reports responding to those points and then Defendants could serve limited reports in reply.  Id. at 1-2.  Judge Andrews denied Defendant’s motion in limine seeking to limit Plaintiffs’ expert’s testimony on “unexpected results” because it was conclusory.  “If the testimony turns out to be conclusory, it will carry no weight in the final analysis; but, whether it is conclusory is something I will better understand after hearing it.”  Id.at 2.  Defendant also sought to preclude “Plaintiffs from responding to Defendant’s obviousness arguments with what it calls ‘post art,’ that is, art which is after the relevant dates . . . for considering the state of the art for obviousness analysis.”  Id. at 2-3.  Judge Andrews denied the motion noting that while “post art” has limitations, it is possible that it may be offered for a purpose that is relevant and appropriate, such as “to show circumstantially what was know or unknown earlier[.]”  Id.at 3.

Novartis v. West-Ward, No. 15-474-RGA (D. Del. Jun. 30, 2017)

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In a series of related actions brought by Enzo Life Sciences, Chief Judge Leonard P. Stark denied all Defendants’ motion for summary judgment of invalidity of the patent-in-suit for lack of written description, but granted certain Defendants’ motion for summary judgment of invalidity of that patent for nonenablement. The patent-in-suit related to nucleic acid hybridization technology involving non-porous solid supports. E.g., Enzo Life Sciences, Inc. v. Gen-Probe Incorporated, C.A. No. 12-104-LPS (D. Del. June 28, 2018).

As to the written description motion, the Court found that genuine disputes of material fact existed that precluded summary judgment. See id. at 8, 10. But as to nonenablement, the Court concluded that the patent was invalid. Defendants argued that the specification lacked “any meaningful disclosure . . . on how to make and use the vast number of phosphate-labeled polynucleotides covered by the asserted claims.” Id. at 11 (alteration in original) (citations and quotation marks omitted). Observing that the claims were “extremely broad,” the Court agreed that the patent was nonenabling, agreeing with Defendants’ comparison to Federal Circuit authority. See id. at 14-17.

E.g., Enzo Life Sciences, Inc. v. Gen-Probe Incorporated, C.A. No. 12-104-LPS (D. Del. June 28, 2018)

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Judge Robinson recently considered the parties’ briefing in connection with submission of the final judgment, staying defendant’s declaratory judgment claim of non-infringement for the remaining claim at issue pending appeal.  Quest Integrity USA, LLC v. Cokebusters USA Inc., No. 14-1483-SLR (D. Del. Jun. 30, 2017).  Judge Robinson previously denied defendants’ motions for summary judgment as to invalidity and non-infringement, but upon a motion for reconsideration, granted defendant’s motion as to invalidity.  Id.at 1-2.  At the pretrial conference, the parties indicated they preferred not to go to trial on the remaining issues, instead appealing the Court’s summary judgment rulings, but the parties could not agree to a form of judgment.  Id.at 2-3.  Judge Robinson bifurcated and stayed non-infringement of the remaining claim at issue, but indicated that the appeal should include non-infringement of the other claim (as well as invalidity).  Id. at 3-4.  Judge Robinson ordered the parties to submit a final judgment consistent with those rulings.

Quest Integrity USA, LLC v. Cokebusters USA Inc., No. 14-1483-SLR (D. Del. June 30, 2017)

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Judge Richard G. Andrews recently considered defendants’ renewed motion to dismiss plaintiffs’ amended complaint.  Sipco, LLC v. Streetline, Inc., No. 16-830-RGA (D. Del. Jun. 21, 2017).  Judge Andrews previously granted defendants’ first motion to dismiss finding that the complaint made “no attempt to connect anything in the patent claims to anything about any of the accused products.”  Id. at 1.  Plaintiffs’ amended complaint added allegations describing the accused product “in some detail,” but Judge Andrews noted that the description would only be understandable “(if at all) by a person of ordinary skill in the art.”  Id.  Judge Andrews noted that “it is incumbent on a plaintiff to provide a readable document that plausibly alleges infringement.”  Id. at 3 (citing Twombly).  In the Court’s view, “providing [] a copy of the patent and a description of the product, at least in this case, [did] not meet[] the required standard.”  Id.  Judge Andrews noted that the Court was “disappointed that Plaintiffs did not take [the Court’s] last order a little more seriously,” but ultimately gave Plaintiffs one more opportunity to amend their complaint to “make plausible allegations of infringement.”  Id. at 4.

Sipco, LLC v. Streetline, Inc., No. 16-830-RGA

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Judge Richard G. Andrews recently granted a defendant’s motion for summary judgment of non-infringement under the doctrine of equivalents.  Blackbird Tech, LLC d/b/a Blackbird Technologies v. Lululemon Athletica, Inc., C.A. No. 15-930-RGA (D. Del. June 14, 2017).  At issue was patented sports bra technology, and whether the defendant’s product infringed where the straps of its product were sewn, rather than laminated, to the cups of the bra.  The plaintiff did not allege literal infringement, but alleged infringement under the doctrine of equivalents on the basis that one of skill in the art would have viewed sewing as interchangeable with laminating for purposes of attaching the bra straps to the cups.  Judge Andrews explained, though, that the doctrine of equivalents is “limited by the dedication-disclosure rule, which prevents a patent holder from disclosing a broader invention than is claimed and then recaptur[ing] subject matter deliberately left unclaimed.”  Id. at 3-4 (internal quotation marks omitted).  The Court found that because the specification discussed both sewing and laminating, but only laminating was claimed, the sewing of the bra straps to the cups was disclosed and dedicated to the public, and the defendant’s product therefore could not be found to infringe under the doctrine of equivalents.  Id. at 4-5.

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Magistrate Judge Burke recent issued a memorandum order addressing the scope of discovery into a defendant’s products that are not “specifically-accused products.” Judge Burke reached slightly different conclusions with respect to different sets of asserted patents. For one set of patents, Judge Burke agreed with the Defendant’s arguments that the Plaintiff’s infringement contentions do not provide “sufficiently particularized information, so as to allow it to assess which non-specifically-accused products have the same attributes as the specifically-accused product . . . e.g., how they would be ‘reasonably similar’ to the accused products at issue.” Because of this lack of information about similarity, Judge Burke denied Plaintiff’s request for discovery “about non-specifically-accused products that allegedly infringe these two patents” but stated that Plaintiff could renew the request if “in the future, Plaintiffs provide greater specificity to Defendant as to what characteristics an unaccused product would have such that it would satisfy these limitations.” Tessera, Inc., et al. v. Broadcom Corp., C.A. No. 16-380-LPS-CJB, Memo. Or. at 1-2 (D. Del. June 16, 2017).

With respect to a separate set of asserted patents, Judge Burke was “not necessarily convinced that (as Defendant suggests) Defendant does not have enough information to understand which of its unaccused products share ‘the same or reasonably similar circuitry[,]’ as the two specifically-accused products.” However, there were “over 100 discrete products” at issue, and Judge Burke found that not only did he lack “information as to whether, in fact, all or any such products do in fact share the same relevant circuity” but also the record evidence “indicates that Defendant would face a significant burden were it required to prepare the relevant schematics for review and/or to assess whether the relevant circuit’s design is the same or similar to the accused design.” Again, however, Judge Burke indicated that the outcome might be different if “Plaintiffs’ request had been targeted toward a smaller number of specifically-unaccused products, or if Plaintiffs had information that called into question the magnitude of the burden that Defendant says it would face.” Id. at 2-3.

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