Magistrate Judge Christopher J. Burke recently considered plaintiffs’ motion to exclude defendants’ expert’s testimony regarding “how the dispensing of prescription drugs occurs at pharmacy, and to discuss the factors that influence which product ultimately is dispensed for a particular prescription.” GlaxoSmithKline LLC, et al., v. Glenmark Pharmaceuticals Inc., USA, No. 14-877-LPS-CJB, at 3 (D. Del. May 2, 2017). Judge Burke found the expert’s proposed testimony was sufficiently reliable as “Defendants  sufficiently explained how [the expert’s] past and present work experience provide[d] a firm foundation for her opinions.” Id. at 7. Judge Burke also found that the expert’s proposed testimony fit the facts of the case because the expert’s testimony would be “based on her experience working with and overseeing numerous pharmacies in the United States regarding how [the relevant] prescriptions are filled.” Id.at 11.
In a detailed Report and Recommendation issued in International Business Machines Corporation v. The Priceline Group Inc., et al., C.A. No. 15-137-LPS-CJB (D. Del. Apr. 10, 2017), Magistrate Judge Christopher J. Burke recommended that Plaintiff’s motion to dismiss Defendants’ inequitable conduct counterclaim and to strike their corresponding affirmative defense be granted-in-part.
Defendants’ inequitable conduct allegations fell into three separate “theories”: “allegations relating to the failure to disclose (1) certain prior art references against [two asserted patents] . . . (2) commercialization efforts . . . [and] (3) co-pending patent applications and office actions related to those applications.” Id. at 12. Plaintiff challenged the sufficiency of Defendants’ allegations of materiality and intent, and also that the inequitable conduct allegations regarding certain patents could “infect” others.
As a threshold matter, Defendants contended that because “‘Rule 12(b)(6) doesn’t permit piecemeal dismissals of parts of claims[,]’ . . . if any one theory of inequitable conducts passes muster under Rule 9(b), then all of Defendants’ theories set out in the counterclaim should survive, even if some are clearly insufficiently pleaded.” Id. at 13. The Court disagreed, citing, inter alia, case law from this District where portions of inequitable conduct claims were dismissed, and further observing that Defendants’ single-count approach to their pleading was confusing and may frustrate the particularity requirements of Rule 9(b). See id. at 13-16.
Magistrate Judge Christopher J. Burke recently denied two co-pending motions to transfer venue to the Northern District of California. Applying the Third Circuit’s Jumara factors in considering whether all relevant factors strongly favored transfer, Judge Burke found that transfer was not warranted. Tessera, Inc., et al. v. Broadcom Corp., C.A. No. 16-379-LPS-CJB, Memo. Op. at 25-26 (D. Del. Mar. 21, 2017).
The plaintiffs’ principal place of business was in the Northern District of California, and the defendants also had significant operations in the Northern District of California, but the plaintiffs were incorporated in Delaware, weighing against transfer. Id. at 7-10. Judge Burke also explained that it was difficult to assess “where the alleged infringement has occurred” because of uncertainty as to the relevant facts and the parties’ unclear submissions on this point. Accordingly, this factor only slightly favored transfer. Id. at 11-14. The convenience of the parties, the convenience of the witnesses, the location of books and records, and practical considerations that could make the trial easy, expeditious, or inexpensive weighed slightly in favor of transfer. All other Jumara factors were neutral. Id. at 14-25.
Judge Burke concluded that “This is, as Broadcom notes, a ‘dispute between California entities.’ And in balancing the Jumara factors, the Court acknowledges that Broadcom has pointed to a number of connections between the Northern District of California and the facts or people involved in this case. This has, in tum, resulted in a greater number of Jumara factors tipping Broadcom’s way, as opposed to Plaintiffs’ way. And yet a close examination of most of the factors favoring Broadcom shows that they do not have much of a practical impact. Had Broadcom been able to make a stronger showing even as to any one of the factors that only slightly tipped in its favor, the outcome may have been different. . . . But Broadcom did not make any such showing. As a result, any inconvenience it faces in trying the case in this District does not seem pronounced. After careful review, the Court is prepared to say that the balance of convenience is in favor of Broadcom. But it cannot conclude that this balance ‘is strongly in favor of’ Broadcom.” Id. at 26.
The case also presented an interesting procedural issue. Judge Burke’s decision addressed two separate civil actions, each of which involved a motion to transfer, which the parties agreed should be resolved together. One civil action, however, was stayed pending an ITC investigation, while the other action was not stayed. As Judge Burke pointed out, the “parties to the action agree that it is proper for the Court to resolve the transfer of venue issue in [the stayed case], even while this stay is pending, and they have cited to case law in support. The Court agrees with the logic set out in the cited cases, and, as a result, will proceed to address the Motions in both cases.” Id. at 5 n.3 (citations omitted).
On January 23, 2017, Magistrate Judge Christopher J. Burke issued a standing order regarding courtroom opportunities for newer attorneys. The standing order explains that “[t]he Court is cognizant of a growing trend in which fewer cases go to trial, and in which there are generally fewer opportunities in court for speaking or ‘stand-up’ engagements. This is especially true for newer attorneys, that is, attorneys practicing for less than seven years (‘newer attorney(s )’).” Id. at 1. The standing order goes on: “Recognizing the importance of the development of future generations of practitioners through courtroom opportunities, the undersigned Judge encourages the participation of newer attorneys in proceedings in my courtroom—particularly as to oral argument on motions where the newer attorney drafted or contributed significantly to the briefing for the motion.”
Accordingly, Judge Burke adopted the following procedures regarding oral argument as to pending motions:
- After a motion is fully briefed, either as part of a Request for Oral Argument, or in a separate Notice filed thereafter, a party may alert the Court that, if argument is granted, it intends to have a newer attorney argue the motion (or a portion of the motion).
In a recent Memorandum Order, Magistrate Judge Christopher J. Burke denied plaintiffs’ (“Integra”) motion for leave to file an amended complaint, concluding that “to grant the Motion would cause substantial and undue prejudice to Defendant.” Integra LifeSciences Corp. v. Hyperbranch Medical Technology, Inc., C.A. No. 15-819-LPS-CJB (D. Del. Feb. 16, 2017). First, Judge Burke observed that the parties and Court have “spent substantial time and effort attempting to address and narrow the issues in what is already a large, complex matter.” Id. at 2. As Judge Burke explained, the action is a “six-patent case” and one patent “involves complicated chemical technologies.” Id. Judge Burke further explained that the “parties . . . proceeded through a lengthy and involved preliminary injunction phase,” and since then, they “have expended more time on discovery (and on discovery disputes), have narrowed the number of claims and references at issue, and are currently in the midst of claim construction briefing (involving 20 disputed claim terms).” Id.
Second, Judge Burke found that the additions in the proposed Amended Complaint, which sought to add two new patents, “are not minor.” Id. While Judge Burke acknowledged that there is some overlap between the operative complaint and proposed Amended Complaint, he observed that the new patents had different inventors and implicated embodiments not directly at issue with the original patents. Id. at 2-3. Judge Burke further observed that defendant “is . . . understandably concerned with how a jury will be able to grasp its arguments at trial, were a case as large as this to become ever larger after amendment.” Id. at 3.
Third, Judge Burke found that “were the Motion granted, this would surely do violence to the current case schedule.” Id. Judge Burke explained that “the addition of the new patents will no doubt necessitate significant additional fact and expert discovery, claim construction and discovery dispute proceedings, and dispositive motion practice.” Id. Further, “[t]he current trial date would surely be lost, and the case schedule would no doubt need to be pushed back by many months (at least).” Id.
Magistrate Judge Christopher J. Burke recently recommended granting-in-part and denying-in-part a motion to dismiss invalidity and non-infringement counterclaims. Princeton Digital Image Corp. v. Konami Digital Entertainment Inc., C.A. No. 12-1461-LPS-CJB (D. Del. Jan. 19, 2017). Judge Burke recommended denial of the motion to dismiss the invalidity counterclaim based on a theory of estoppel resulting from two IPR proceedings because neither IPR proceeding “resulted in a ‘final written decision’ as to the validity of” the claims at issue. Judge Burke recommended granting the motion to dismiss the non-infringement counterclaim, with leave to amend, finding that the counterclaim contained “no facts of any kind, let alone sufficient facts to make out a plausible claim” under Twombly/Iqbal.
UPDATE: On March 30, 2017, Judge Stark adopted, over objection, Magistrate Judge Burke’s report and recommendation that the motion to dismiss should be denied. Judge Stark agreed that the defendants are not estopped from asserting invalidity of claims that were not the subject of both an instituted IPR and a final written decision.
Magistrate Judge Christopher J. Burke recently issued a Report and Recommendation recommending denial of defendant Glenmark’s motion for leave to amend its Answer to plead equitable estoppel and laches. GlaxoSmithKline LLC and Glenmark Pharmaceuticals Inc., USA, No. 14-877-LPS-CJB (D. Del. Dec. 15, 2016). Glenmark filed its motion about eight months after the deadline to amend pleadings set forth in the Scheduling Order. Id. at 2. Judge Burke concluded that Glenmark did not have good cause to amend after this deadline because “Glenmark’s proposed defenses are based on facts that have existed (and have been known to the parties) for quite some time.” Id.at 4-5. Judge Burke further noted that:
even if Glenmark’s failure to add these defenses by the February 15, 2016 deadline did not demonstrate a lack of diligence, its failure to do so over the next eight months surely does. In the interval, fact discovery closed, expert discovery began in earnest and the case moved much closer to trial. If new defenses were to be litigated in this matter, at a minimum, Glenmark should have moved to add them well before the filing of the instant motion.
Id. at 5-6. Glenmark argued that good cause existed because it retained new counsel in September 2016, but Judge Burke disagreed noting that “new counsel’s entry into a case does not serve as a magic wand that enables the party to conjure up a showing of good cause.” Id. at 6.
Magistrate Judge Christopher Burke recently considered a motion to dismiss this patent-infringement action for lack of subject matter jurisdiction, granting-in-part as to one of plaintiff Adidas’ counts, but denying-in-part as to other portions of the complaint. In an earlier action, Unequal Technologies sued Reebok, which is wholly owned by Adidas AG. The earlier suit ended when Unequal provided two different versions of a covenant not to sue that extended only to Reebok products. Adidas then filed the instant action, seeking a declaration that the covenant is binding and applicable to Adidas products as well and that Adidas does not infringe the three patents-in-suit covered by the covenant. Declaratory judgment defendant Unequal responded to the complaint with a motion to dismiss for lack of subject matter jurisdiction. Adidas AG, et al. v. Unequal Techs. Co., et al., C.A. No. 16-52-LPS-CJB, Report and Recommendation at 1-6 (D. Del. Nov. 23, 2016).
Judge Burke first found that the second-issued of the two covenants not to sue had superseded the first-issued and was, therefore, the only covenant in effect. In reaching this conclusion, Judge Burke noted that the record “overwhelmingly indicates that the First Covenant was not operative, because even after it was sent to Reebok, the parties were still negotiating over the final form that the covenant would take.” Thus, Judge Burke found, there was no plausible claim that the first covenant was enforceable, and the Court need not even address whether the first covenant’s terms covered Adidas products. This portion of Adidas’ complaint was, therefore, dismissed. Id. at 7-16.
Based on the same prior suit against Reebok and resulting covenant not to sue, Adidas claimed that there was declaratory judgment jurisdiction for its claims of non-infringement. As Judge Burke explained in assessing jurisdiction, “The mere fact that Defendants had ‘filed infringement suits against other parties for other products[,]’ does not, ‘in the absence of any act directed toward [Plaintiffs], meet the minimum standard’ for declaratory judgment jurisdiction. This is so even where, as here, a defendant had previously sued one of a plaintiff’s subsidiaries. Plaintiffs’ Complaint, however, goes beyond simply alleging that Defendants had previously sued Reebok” because the complaint also alleged that Unequal had sought discovery into Adidas products. Id. at 17 (citations omitted). Thus, “it was then reasonable for [Adidas} to think that [Unequal] believed that such products infringed the patents-in-suit. Indeed, in the context of a patent infringement case, that is what the term ‘Accused Products’ suggests. As a result, it seems strange to ask whether, at the time of the instant suit, there was a ‘substantial controversy’ brought on by [Unequal] about whether [Adidas’] products at issue infringed the patents-in-suit. [Unequal] had, after all, already pretty clearly stated that they did.” Id. at 18.
Magistrate Judge Burke’s Markman report and recommendation in this case is interesting for a few reasons. Procedurally, it followed argument at two separate Markman hearings, one early in the case before a stay pending IPR, and a second hearing following an IPR decision invalidating all claims at issue in the IPR and addressing only the three dependent claims remaining as valid and at issue in this litigation. Princteon Digital Image Corp. v. Konami Digital Entertainment Inc., et al., C.A. No. 12-1461-LPS-CJB, Report and Recommendation at 1-7 (D. Del. Dec. 2, 2016).
Judge Burke also addressed an indefiniteness argument regarding the claim term “virtual environment,” which was defined in the patent specification as follows: “The terms ‘virtual environment,’ ‘virtual world,’ and ‘virtual reality’ are used interchangeably to describe a computer-simulated environment (intended to be immersive) which includes a graphic display (from a user’s first person perspective, in a form intended to be immersive to the user), and optionally also sounds which simulate environmental sounds.” This definition led to a dispute as to the meaning of “immersive” and whether this term provides sufficient objective boundaries to avoid indefiniteness. Id. at 21. The parties did not dispute that “immersive” was a term of degree, but disputed whether the patent provided a definite “lower boundary of immersiveness.” Id. at 24-26. Judge Burke concluded that the claim was not indefinite, however, because at least four portions of the specification helped to suggest boundaries for the term “immersive.” Id. at 26-32.
Magistrate Judge Christopher J. Burke recently recommended that a motion to dismiss filed by Toshiba entities be granted because the complaint against them failed to distinguish between the entities and thereby failed to plausibly allege direct infringement against any one of them. North Star Innovations, Inc. v. Toshiba Corp., et al., C.A. 16-115-LPS-CJB (D. Del. Dec. 6, 2016). As Judge Burke explained, “nowhere in any part of the [complaint] is it clearly alleged that either Defendant takes part in any specific infringing act–instead, it is vaguely alleged that they may commit one ‘or’ another ‘or’ some ‘or’ all of the relevant possible acts that would amount to direct infringement.” (emphasis in original). Judge Burke added, “[t]his leaves the reader confused about which, if any, of these acts are actually being attributed to each Defendant. And if the Court wished to assure itself that there is a plausible claim that each Defendant has committed at least one such wrongful act in the United States . . ., it could not do so, since there are no other factual allegations about the nature of Defendants’ business, nor their activities in the United States.” (emphasis in original).