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Judge Hillman, sitting by designation, recently considered plaintiff Evonik Degussa GmbH’s motion for permanent injunction filed following a jury trial after which the jury found in favor of Evonik and awarded damages for past infringement.  Evonik Degussa GmbH v. Materia, Inc., No. 09-636-NLH-JS (Aug. 9, 2017).  Judge Hillman found that, on balance, the four eBay factors supported an injunction, based on facts including:

  • Defendant Materia and Evonik “are direct and primary competitors” for “olefin metathesis catalysts” in the “pharmceutical, oleochemical, fine chemical, and polymer industries.”  Id. at 3, 6.
  • Evonik has never licensed the patented technology to its competitors.  Id. at 3, 6.
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Chief Judge Leonard P. Stark recently considered the parties’ motions in limine  in advance of the trial between Princeton Digital  Image Corporation and intervenor Adobe Systems Inc.  Princeton Digital Image Corproation v. Office Depot Inc., et al., No. 13-239-LPS (August 9, 2017).  For example, Judge Stark denied Adobe’s MIL to preclude a Princeton witness from testifying “about his belief that images appearing on the websites of Adobe’s customers were dynamically generated ‘on the fly.'”  Id. at 1.  Judge Stark found that the testimony was admissible because Princeton did not seek to admit the testimony to prove that defendants’ websites “actually work in a particular way[,]” but offered the testimony to establish why Princeton “believed it had a viable infringement claim” and therefore did not breach a “covenant-not-to-sue in good faith[.]”  Id.  Judge Stark also denied Princeton’s MIL to exclude exhibits relating to settlement because Adobe offered the exhibits “to support its claim that [Princeton] breached the covenant-not-to sue by bring and maintaining suits against Defendants and did so in bad faith[.]”  Id. 3.

Princeton Digital Image Corporation v. Office Depot Inc., No. 13-239-LPS (August 10, 2017)

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Judge Andrews recently granted in part a motion to dismiss infringement claims pursuant to Rule 12(b)(6). The Court first dismissed counts alleging induced, contributory, and willful infringement due to insufficient allegations of pre-suit knowledge. Judge Andrews explained, “Plaintiff’s allegations center on Defendants’ alleged knowledge of applications for different patents in the same family as the ‘520 patent. Knowledge of other patents in the same family as the patent-in-suit can, in some circumstances, allow for a plausible inference that Defendants had actual knowledge of the patent-in-suit. Alleging knowledge of a parent application, however, strains the bounds of plausibility. . . . The only other allegation of knowledge Plaintiff makes is a vague reference to knowledge of Plaintiff’s ‘patent portfolio’ as it relates to the parent application. This, even if true, does not add anything to the allegation of knowledge of the ‘520 patent.” Bayer Healthcare, LLC v. Baxalta Inc., et al., C.A. No. 16-1122-RGA, Memo. Or. at 1-2 (D. Del. Aug. 10, 2017). Judge Andrews also found, however, that the plaintiff’s allegations of “egregiousness” in support of willful infringement were sufficient and that the plaintiff had adequately plead “knowledge that induced acts would cause infringement [and], for the contributory infringement count, knowledge that the component Defendant sells would have no substantial noninfringing uses.” Id. at 2-3. Accordingly, Judge Andrews denied the motion to dismiss but granted the motion solely as to induced, contributory, and willful infringement alleged to have occurred prior to the filing of the complaint.

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Judge Richard G. Andrews recently denied a defendant’s request to renew its venue-based motion to dismiss.  Invidior Inc. v. Mylan Tech., No. 15-1016 (RGA) (D. Del. July 28, 2017).  Quoting Davis v. Smith, 253 F.2d 286, 288 (3d Cir. 1958), the Court explained, “[a] litigant waives its right to contest venue when ‘the litigant performs some act which indicates to the court that [it] elects not to raise [its] privilege of venue.'”  Here, the defendant had earlier filed a motion to dismiss for lack of venue, but then asked the Court to reserve ruling on the motion while it appealed a personal jurisdiction ruling in another case (an appeal which it subsequently lost).  The Court noted that instead of renewing its venue-based motion to dismiss at that point, the defendant engaged in a “flurry of litigation activity . . . including participating in claim construction and discovery, and entering a consent decree for one of the patents at issue in the case.”   Judge Andrews found that the defendant’s renewal of the motion to dismiss for lack of venue, which came over a year after the unsuccessful appeal of the personal jurisdiction issue in the other case, came too late.  “Having actively participated in litigation here for so long, Defendant has communicated its consent to venue here in the District of Delaware.”

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Judge Gregory M. Sleet recently found that four patents relating to the matchmaking of participants in internet chat rooms claimed unpatentable subject matter under § 101.  Jedi Techs., Inc. v. Spark Networks, Inc., et al., C.A. No. 16-1055-GMS (D. Del. Aug. 3, 2017).  The Court found that the lead patent rested upon “the notion of human compatibility and matchmaking, where an individual learns about the personalities and interests of two different individuals and, based upon a certain criteria, determines whether the individuals are compatible.”  This, the Court found, was an abstract idea under Alice, despite the plaintiff’s insistence that “the articulation of the abstract idea fails to account for specific requirements of the independent and dependent claims” — i.e. claimed “automatically prompting,” “collecting pre-existing data that is publicly available,” and “processing user data” steps.  The Court found that these steps were routine data gathering or output steps that could not save the patent claims from being found an abstract idea.  As Judge Sleet explained, “[e]ven if matchmakers traditionally have not relied on the Internet, the mere application of modern technology to the field of ‘invention’ does not somehow transform or otherwise change the character of the abstract idea.”

Under the second prong of Alice, Judge Sleet found no inventive concept sufficient to render the patent claims patent-eligible.  As the Court explained, “the generic computer system contemplated by the patent could be replaced with a human matchmaker who compares two individuals based on submitted or publicly available information, and then sends both chatters a message which prompts their meeting. . . . While the use of a machine might improve the efficiency of the process, this improvement is not the ‘significantly more’ contemplated by Alice that ‘ensure[s] that the patent in practice’ truly adds to the invention.

The Court next found that three other asserted patents, which built upon the lead patent, merely used conventional technology to do additional tasks related to the chat room matchmaking idea that a human otherwise could do.  These patents, like the lead patent, were found to claim unpatentable subject matter.

Judge Sleet denied the defendants’ request for attorneys’ fees under § 285, explaining that “the mere fact that one side’s  arguments prevailed over its opponent’s does not make a § 285 award appropriate.  Furthermore, the Alice analysis is not straightforward, particularly when it comes to software patents such as the patents at issue.”

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Chief Judge Leonard P. Stark recently considered the parties’ summary judgment and Daubert motions in Intel Corporation v. Future Link Systems, LLC, No. 14-377-LPS (July 31, 2017).  Regarding Future Link’s motions, Judge Stark granted summary judgment that RAND licensing requirements did not attach to the asserted claims of the relevant patents, and as to Intel’s equitable estoppel and uneforceability defenses.  Id. at  3-8, 11-12.  Judge Stark also granted Future Link’s Daubert motion, to the extent the experts’ opinions improperly expanded the scope of the claims.  Id. at 23-24

Regarding Intel’s Motions, Judge Stark denied summary judgment as to indefiniteness and non-infringement, finding disputed issues of material fact, but granted-in-part Intel’s motion for summary judgment of no willfulness and no unclean hands.  Regarding willfulness, Judge Stark held that, while “[i]t may be difficult to see how a reasonable factfinder would view the panoply of conduct

alleged by Future Link (if proven) to be ‘egregious … wanton, bad-faith, deliberate, consciously wrongful, flagrant, or – indeed- characteristic of a pirate'”; at this stage the Court could not grant summary judgment of no willful infringement.  Id. at 28-29 (quoting Halo Elecs., Inc. v. Pulse Elecs., Inc., 136 S. Ct. 1923, 1932 (2016)).  Judge Stark found, however, that summary judgment of no unclean hands was appropriate because Future Link had failed to come forward with sufficient evidence to support a finding that Intel acted with unclean hands.  Id. at 29.

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Chief Judge Leonard P. Stark recently issued a memorandum order analyzing waiver of attorney client privilege and work product protection. At issue was the plaintiff patentee’s corporate representative, who had not answered certain questions during a deposition, and certain documents withheld from discovery and interrogatory responses. The defendant argued that the all of this discovery should be made available both because the plaintiff put its “state of mind at the time it filed the underlying infringement suits” at issue and because the plaintiff had “selectively disclosed some attorney-client communications and documents prepared in anticipation of litigation, thereby waiving privilege with respect to communications and documents related to the same subject matter.” Judge Stark found that “this combination – [the plaintiff’s] contention that it brought and litigated the infringement actions in good faith, along with [its] selective use of privileged materials to support that assertion – waives privilege.” Princeton Digital Image Corp. v. Office Depot Inc., C.A. No. 13-239-LPS, Memo. Or. at 1-2 (D. Del. Aug. 1, 2017).

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Judge Jordan recently issued an opinion denying an exceptional case finding after having entered partial summary judgment against the plaintiff and excluding the plaintiff’s direct infringement damages theory. “Viewed in its totality,” Judge Jordan found, the plaintiff’s “conduct over the course of this case does not qualify as exceptional . . . [the plaintiff] succeeded in obtaining discovery that it demanded, worked to narrow the issues in the case, and presented at least one claim that withstood summary judgment.” Parallel Networks Licensing, LLC v. Int’l Bus. Machs. Corp., C.A. No. 13-2072-KAJ, Memo. Op. at 3- (D. Del. July 31, 2017). Moreover, the plaintiff’s “claims were not entirely and objectively baseless . . . [the plaintiff’s] representations . . . are sufficient to show that the pre-suit investigation was enough to avoid the imposition of fees” and the plaintiff did not pursue and case and discovery solely to drive up costs for the defendant. Id. at 4-6.

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Judge Richard G. Andrews recently granted Purdue Pharma L.P.’s motion to file an amended and supplemental complaint to add a patent from the same family already at issue in the case.  Purdue Pharma L.P. v. Epic Pharma, LLC, No. 16-87-RGA (D. Del. Jul. 27, 2017).  In doing so, Judge Andrews also permitted plaintiff to plead allegations of “exceptional case,” but cautioned Purdue Pharma “that I will not allow discovery into those allegations simply because they are stated in the Complaint.  If Plaintiffs become a prevailing party, that would the appropriate time to consider whether to allow any discovery in whether this is an exceptional case.”  Id. at 1.

Purdue Pharma L.P. v. Epic Pharma, No. 16-87 (D. Del. Jul. 27, 2017)

 

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Chief Judge Leonard P. Stark recently ruled on Daubert motions in Greatbatch Ltd. v. AVX Corp., C.A. No. 13-723-LPS (D. Del. July 20, 2017).  Of note, the Court granted a Daubert motion to preclude an expert from testifying “that ‘no reasonable metallurgist’ would relay on certain data,” explaining that such testimony would “improperly usurp[] the Court’s gatekeeping function of determining reasonable reliance.”

The Court also granted-in-part a motion to preclude a plaintiff expert from testifying as to the defendant-employees’ state of mind and intent, explaining that “[s]uch statements are improper legal conclusions based on unscientific interpretation.”  The same expert also was precluded from offering an opinion that the defendant’s earlier products (as well as its current products) infringe, because the expert “offers no analysis to support this opinion and, to the contrary, acknowledged the difference the [earlier] primer could have.”

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