In a recent memorandum opinion, Judge Richard G. Andrews denied motions for summary judgment of non-infringement and invalidity, but granted a motion for summary judgment of no willful infringement and no infringement by products shipped abroad. M2M Solutions LLC v. Motorola Solutions, Inc., et al., C.A. No. 12-33-RGA (D. Del. Jan. 6, 2016). The plaintiff’s willfulness claim was based entirely on the post-litigation assertion of what the plaintiff characterized as objectively unreasonable defenses. Judge Andrews explained, “Plaintiff presents no evidence of pre-suit knowledge or conduct tending to establish objective recklessness. Plaintiff simply argues the merits of Defendants’ post-suit defenses. It has therefore not provided the necessary clear and convincing evidence to meet the objective first prong of Seagate.” Id. at 35. In a footnote, Judge Andrews added that “Defendants’ potentially dispositive claim construction arguments were reasonable, which in itself also prevents Plaintiff from proving the objective prong of Seagate.” Id. n. 14.
Judge Andrews also granted a motion for summary judgment that offers made in the United States for foreign sales of infringing products, absent evidence that those infringing products ended up being imported into the United States, could not be the basis for a finding of infringement. The Court explained that the Plaintiff “offers no evidence through which a jury could quantify, for purposes of calculating damages, how many of those products shipped abroad actually made it into the United States, if any. . . . Rather than providing an estimate of how many of these products enter the U.S. based on some reasonable projection grounded in facts, Plaintiff seeks to include all products shipped abroad in its damages calculation without proving that a single product shipped abroad actually made it into the U.S. . . . [B]ecause Plaintiff has failed to offer a shred of evidence that a single product shipped abroad, let alone all of them, made it into the U.S., the presumption against extraterritorial application of U.S. patent law must govern.” Id. at 47.