Judge Gregory M. Sleet recently transferred a case to the Central District of California, finding that all but two Jumara factors weighed in favor of transfer. Blackbird Tech LLC v. TuffStuff Fitness, International, Inc., C.A. No. 16-733-GMS (D. Del. Apr. 27, 2017). Judge Sleet explained that the plaintiff’s forum choice weighed in favor of maintaining the litigation in Delaware, but it did not warrant maximum deference because “Delaware is not its ‘home turf’ or principal place of business.” The Court found that the convenience of witnesses weighed against transfer, but only slightly. However, “several factors counsel transfer: the defendant’s choice of forum, convenience of the parties, location where the claim arose, the location of relevant books and records, and court congestion.” With respect to court congestion, the Court noted that the time to trial in the Central District of California was roughly five months shorter than that in Delaware, and the overall disposition time in the Central District of California was roughly four months shorter than in Delaware.
The United States District Court for the District of Delaware announced today that the Honorable Gregory M. Sleet will become a Senior United States District Court Judge as of May 1, 2017, and intends to render substantial judicial service in that role going forward.
The Court’s official announcement regarding Judge Sleet can be viewed HERE.
Judge Sleet recently ruled on a motion to dismiss direct and indirect infringement claims in a case involving VoIP technology. IP Communication Solutions, LLC v. Viber Media (USA) Inc., C.A. No. 16-134-GMS (D. Del. Apr. 5, 2017). The defendant argued that the allegations of direct infringement failed to adequately put it on notice of what it was to defend, and cited as support cases in which allegations relating to unidentified products were dismissed. Judge Sleet disagreed with the defendant’s reliance on those cases, and explained that in those cases the alleged infringers marketed a number of products that could possibly infringe product claims. On the contrary, here, the defendant marketed a single mobile VoIP client application supported by a server that together were alleged to perform a number of steps that would infringe method claims, so the defendant could not persuasively argue that it was not on notice of what the claims targeted simply because the claims did not specifically identify the accused instrumentality. With respect to indirect infringement, however, Judge Sleet agreed with the defendant that the evidence relied upon (webpages showing how customers use the VoIP application to make calls) did not rise to the level of showing that the defendant “specifically instructed or directed customers to use the Viber application and corresponding server system in a manner that would infringe.”
Judge Gregory M. Sleet recently considered defendants’ motion to stay pending inter partes review of six of the eleven patents-in-suit. Koninklijke Philips N.V., et al. v. ASUSTek Computer Inc., et al., Nos. 15-1125-GMS, 15-1126-GMS, 15-1127-GMS, 15-1128-GMS, 15-1130-GMS, 15-1131-GMS, 15-1170-GMS (D. Del. Mar. 30, 2017). Judge Sleet denied the motion without prejudice to renew upon institution of the petitions by the U.S. Patent and Trademark Office. Id. at 1 n.1.
Judge Gregory M. Sleet recently considered defendants’ motion to stay pending inter partes review of one patent in suit. f’Real Foods, LLC v. Hamilton Beach Brands, Inc., No. 16-41-GMS (D. Del. Mar. 9, 2017). Judge Sleet denied the motion, finding that the plaintiff would suffer undue prejudice and because the litigation at issue “will be minimally simplified.” Id. at 2. Judge Sleet importantly noted that the parties are direct competitors and that the Patent Trial and Appeal Board instituted inter partes review on only one claim of one of the patents in suit. Id. at 2, n.3. Further, there were many issues in the litigation that would not be impacted by the inter partes review, namely “the litigation of the two patents-in-suit for which Defendants have not sought IPR, trademark infringement issues, and Defendants inequitable conduct and antitrust counterclaims.” Id. at 3, n.4 (internal quotations omitted).
Judge Gregory M. Sleet, recently granted defendants’ motion for summary judgment of non-infringement based on upon the Court’s construction of the limitation “changing [price] information.” Quest Licensing Corporation v. Bloomberg L.P., No. 14-561-GMS (D. Del. Jan. 19, 2017). Defendants argued that summary judgment was appropriate because “defendants’ accused systems do not receive or supply ‘only data that has changed’ as required by all of the asserted claims of the patent-in-suit.” Id. at 3. Judge Sleet agreed. The Court previously construed the term “changing information” to mean “only [price] data that has changed,” and it was undisputed that the accused systems receive and supply information that “always includes non-changing information such as the stock symbol.” Id. at 5-6. Judge Sleet was not persuaded that the Court should revisit its claim construction ruling. Id. at 6.
In IOENGINE, LLC v. Interactive Media Corp. d/b/a/ Kanguru Solutions, C.A. No. 14-1571-GMS, Judge Gregory M. Sleet denied Defendant’s motion for summary judgment of invalidity and non-infringement of the independent claims of the patent-in-suit (U.S. Patent No. 8,539,047), based on the contention that the patent was directed to patent-ineligible subject matter. Defendant argued the claims were directed to the abstract idea of “providing communication with computing devices.” The Court disagreed, finding the claims analogous to those held to not be abstract ideas in McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016), as they recited “a specific arrangement of components and a very specific implementation and structure of the executable program code.” Id. at 2 n.2 (citing McRo). The claims were also distinguishable from those in Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014) as they defined “a tangible portable device with an unconventional hardware configuration that is able to run specific program code to provide the claimed functionality.” Id. “More important, the court agrees, as [Plaintiff] maintains, that the Independent Claims of the ‘047 patent are directed to a “specific asserted improvement in computer capabilities,” not to an abstract idea “for which computers are invoked merely as a tool,” citing the specification as support. Id. Having concluded the claims were not directed the abstract ideas, the Court did not reach step two of the Alice test.
In a recent Memorandum, Judge Gregory M. Sleet denied defendant Imation Corp.’s (“Imation”) motion to dismiss plaintiff IOENGINE, LLC’s (“IOENGINE”) complaint for lack of standing pursuant to Federal Rules of Civil Procedure 12(c) and 12(b)(1). The inventor of the patent-in-suit, United States Patent No. 8,539,047 (“the ’047 patent”), purported to assign the ’047 patent to IOENGINE LLC on October 7, 2014, but IOENGINE LLC’s Certificate of Formation was not filed with the office of the Secretary of State of Delaware until October 8, 2014. Id. at 2. Imation argued that IOENGINE LLC “did not exist at the time of the proferred assignment and therefore could not have received any rights” in the ’047 patent.” Id. at 5. The court agreed that “IOENGINE did not formally exist and could not, as a de jure entity, have obtained ownership of the ’047 patent on October 7, 2014.” Id. at 7.
The court ultimately recognized, however, that IOENGINE was a de facto LLC at the time of the patent assignment on October 7, 2015, and therefore concluded that IOENGINE has standing to bring suit. Id. at 10. Specifically, the court looked to the Delaware “common law-doctrine of de facto incorporation.” Id. at 8. The court could not find “any principled reason to conclude that a limited liability company would or should be treated differently from a corporation when considering the de facto formation of one or the other.” Id. When considering de facto formation, the court focused on facts demonstrating “a good faith, bona fide attempt to comply with the statutory requirements of formation of a limited liability company.” Id. at 10. For example, on October 7, 2014, the formation documents for IOENGINE were finalized, executed, and notarized, and its Delaware registered agent was designated. Id. at 9. The court therefore found that IOENGINE was a de facto LLC on October 7, 2014, and denied Imation’s motion to dismiss. Id. at 10.
Judge Gregory M. Sleet recently issued an Order construing various terms across U.S. Patent Nos. 6,417,175 and 8,247,400. Forest Laboratories, LLC v. Apotex Corp., C.A. No. 15-018-consol. (D. Del. Nov. 8, 2016). Notably, Judge Sleet construed the preamble term “a method for treating a bacterial infection” to be limiting. Id. at 4 n.5. Defendants argued that the preamble was not limiting and “merely statement of intended outcome.” Defendants attempted to analogize the preamble to the preamble at issue in Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368 (Fed. Cir. 2001). In Bristol-Myers, “the Federal Circuit found no error in the district court’s interpretation of the phrase ‘for reducing hematologic toxicity’ as non-limiting.” The Federal Circuit found that “the steps of the claimed infusion method are performed the same way regardless of whether there is a reduction in hematologic toxicity” and that “[t]he preamble did not alter or explain the meaning of the term ‘effective amount,’ found in the body of the claim.” Id.
Judge Sleet found defendants’ argument unpersuasive, and was guided by Judge Andrews’ analysis in Sanofi v. Lupin Atlantis Holdings S.A., 2016 WL 5842327 (D. Del. Oct. 3, 2016). Judge Sleet observed that “[t]he claims at issue here do not provide a definition for ‘effective amount’ in the body of the claim. Instead, ‘effective amount’ derives its meaning from the preamble.” Judge Sleet distinguished this case from Bristol-Myers, where “the preamble did not provide antecedent basis for any terms in the body of the claims.” Rather, in Bristol-Myers, “the body of the claim provided the definition for ‘an antineoplastically effective amount’ because the dosage requirements outlined in the claims were described as antineoplastically effective in the specification.” Judge Sleet ultimately determined that “[b]ecause the meaning of effective amount is unclear without the preamble, the preamble is construed as limiting.” Id.
In a recent Order, Judge Gregory M. Sleet granted defendants’ motion to stay pending inter partes review and the resolution of defendants’ motion to dismiss in part. Amkor Technology, Inc. v. Synaptics, Inc., et al., C.A. No. 15-910-GMS (D. Del. Oct. 25, 2016). Plaintiff’s complaint pleads thirteen counts, but only Count I asserts patent infringement, specifically, infringement of U.S. Patent No. 7,358,174 (“the ’714 patent”). Judge Sleet stayed Count I of the matter pending resolution of the inter partes review of the ’714 patent, but otherwise denied the motion to stay. Judge Sleet observed that “[i]t does not appear that a PTAB decision will impact any other claims in the Complaint besides the claim of patent infringement.” Id. at 3 n.5
Considering the traditional stay factors, Judge Sleet first concluded that defendants “would not gain a tactical advantage as a result of a stay of the ’174 patent infringement claim, and Plaintiff is unlikely to suffer undue prejudice.” Id. at 2. Judge Sleet found no evidence that defendants were attempting to gain an unfair tactical advantage, noting that “defendants filed the inter partes petitions for U.S. Patent No. 7,358,174 on April 8, 2016—six months earlier than the statutory deadline.” Id. at 2. n.2 Moreover, “Defendants moved to stay the case less than three weeks after filing the petitions for inter partes review.” Id. As to any undue prejudice, Judge Sleet noted that the “Patent Trial and Appeal Board (“PTAB”) has . . . decided to institute inter partes review” and that “the parties do not appear to be direct competitors.” Id. Plaintiff argued “that [it] face[d] the risk of losing market share and goodwill because Defendants fed confidential information and trade secrets to Plaintiff’s primary competitor,” but Judge Sleet found plaintiff’s argument to present “a separate issue from Defendants’ alleged infringement of the ’174 patent.” Id.
Judge Sleet also determined that “the issues before the court—with regard to Count I—will be simplified by the recently instituted inter partes review proceedings of all currently asserted claims.” Id. at 2-3. Finally, Judge Sleet noted that “[a]lthough a trial date has been set, the fact that this case remains in an early stage reinforces the prospect that a stay of Count I pending review will advance the interests of judicial economy.” Id. at 3.