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.
In a recent Memorandum, Judge Gregory M. Sleet denied defendant’s (“HTC”) motion to dismiss plaintiffs’ (“Philips”) direct infringement claims, but granted defendant’s motion to dismiss plaintiffs’ contributory infringement claims. Koninklijke Philips N.V., et al., v. ASUSTek Computer, Inc., et al., C.A. No. 15-1125-GMS (D. Del. Oct. 25, 2016). As to the direct infringement claims, HTC contended that Philips’ “use of exemplary—rather than exhaustive—lists of products and claims renders the [first amended complaint] deficient.” Id. at 7. Judge Sleet found, however, that Philips’ direct infringement claims passed muster under Twombly/Iqbal, observing that “[h]ere, Philips provides specific details of at least one of the method and device claims allegedly infringed under each patent-in-suit, specific examples of at least one product HTC manufactures or sells that contains mechanisms or processes performing the identified functions, and specific examples of the class of products which also contain these Accused Functionalities.” Id. at 8. Judge Sleet further explained that Philips’ “allegations are far more detailed than those dismissed in the cases HTC cites. Those cases featured general categories of products such as ‘computer chips, motherboards, and computers.’” Id.
Despite finding Philips’ claims of direct infringement sufficient, Judge Sleet ultimately dismissed Philips’ claims for contributory infringement. Judge Sleet explained as follows: “Here, Philips has specified the categories of products alleged to contributorily infringe as well as the Accused Functionalities they possess. Philips, however, provides no facts supporting the inference that the Accused Functionalities have no substantial non-infringing use beyond the assertion that ‘upon information and belief . . . the only use for the [ ] Accused Functionality is infringing the patent’ and that the ‘Defendants know’ this. This is insufficient, and the court will grant HTC’s Motion to Dismiss.” Id. at 9. Judge Sleet, however, granted Philips leave to amend its complaint to properly allege a claim for contributory infringement. Id. at 10.
In this multidistrict litigation, a protective order was originally entered in a case between Plaintiff Bear Creek Technologies and Defendant Verizon while the Verizon case was pending in the Eastern District of Virginia. The Verizon case was then transferred to the MDL in the District of Delaware after entry of the protective order. The protective order in question bars the Plaintiff’s litigation counsel from participating in prosecution activities except that the “prosecution bar does not apply to any reexamination proceedings before the [USPTO] that is initiated by any Verizon defendant in this action.” The Plaintiff therefore sought a modification of the protective order because it “exempted reexamination proceeding initiated by Verizon, but did not extend the exemption to proceedings initiated by other parties” and the Plaintiff sought to have the protective order recognize “that the case now involves multiple defendants.” In re: Bear Creek Technologies Inc., MDL No. 12-2344-GMS, Amended Or. at 1-2 (D. Del. Oct. 20, 2016). Judge Sleet, however, declined to modify the protective order, agreeing with Verizon that because “the Protective Order has already been decided by another court, Bear Creek must show, on a counsel-by-counsel basis, that an exemption for a particular attorney or a particular purpose is warranted and Bear Creek has not made this showing.” Id. at 2-3 (citing In re Deutsche Bank Trust Co. Ams., 605 F.3d 1373 (Fed. Cir. 2010)).
Judge Gregory M. Sleet recently denied a motion to stay pending ex parte reexamination in Polar Electro OY v. Suunto OY, et al., C.A. No. 11-1100-GMS (D. Del. Oct. 31, 2016). Judge Sleet explained that a review of Public Pair indicated that the PTO withdrew previous rejections of the claims subject to the ex parte reexamination and allowed newly presented claims. As a result, prosecution on the merits was now closed, and the Court therefore exercised its discretion to deny the motion to stay. Continue reading
In JSDQ Mesh Technologies LLC v. Fluidmesh Networks, LLC (f/k/a Fluidmesh Networks, Inc.), C.A. No. 16-212-GMS (D. Del. Sept. 6, 2016), Judge Gregory M. Sleet denied Defendant’s motion to dismiss due to patent ineligible subject matter. The Court did not engage in a detailed Alice inquiry, as the motion was denied based on three threshold concerns. First, the Court concluded that Defendant had failed to establish a representative claim, as it had not identified “a consistent abstract idea upon which to base its motion” and had not provided “meaningful analysis for each of the challenged patent claims at issue.” Id. at 5. Second, while Plaintiff had not provided any reason why claim construction would impact the Section 101 analysis, the Court was “not inclined to dismiss the claims absent claim construction or appropriate discovery.” Id. at 6. Finally, the Court concluded that it could not yet determine “whether there is any set of facts that could be proven that would result in the challenged claims being patent-eligible. . . . The briefing and evidence now before the court are inadequate to permit a conclusive answer[.]” Id. at 6-7 (emphasis in original).
Judge Gregory Sleet recently denied a motion to dismiss a Hatch-Waxman case filed by Plaintiff AstraZeneca shortly before the case was to begin trial. Certain defendants in the consolidated cases had converted their Paragraph IV certifications to Paragraph III certifications and filed motions to dismiss arguing that “by converting to a Paragraph III certification, [they are] no longer engaged in the highly artificial act of infringement that confers subject matter jurisdiction under 35 U.S.C. § 27l(e)(2) . . . [because they do] not seek approval until the expiration of the [patent-in-suit].” AstraZeneca AB v. Aurobindo Pharma Ltd., et al., C.A. No. 14-664-GMS, Order at 2 n.3 (D. Del. Sept. 15, 2016) (internal citations omitted). Judge Sleet found, however, that “subject matter jurisdiction remains because the conduct at issue is capable of repetition, yet evading review . . . [because] a patent owner would be prevented from fully litigating its claims of infringement if every time a Paragraph IV filer amended its certification from IV to III, or some other designation, the court was determined to be deprived of subject matter jurisdiction.” Id.
Moreover, Judge Sleet found “circumstantial, if not direct, evidence that supports the conclusion that there is a reasonable expectation that the same controversy involving these parties will recur. . . . [including the] amended Paragraph III Certification transmitted to the FDA . . . [which stated that Defendant] ‘Wockhardt Bio AG maintains the already submitted Paragraph IV certification for said patent.’ When taken together, the reasonable inference to be drawn from the cited evidence supports the conclusion that there is a reasonable expectation that Astra Zeneca may well again at some future time be required to assert its interests in the [patent-in-suit].” Id.
In In re Rembrandt Technologies, LP Patent Litigation, MDL No. 07-md-1848-GMS (D. Del. Aug. 24, 2016), Judge Gregory M. Sleet considered specific fees and costs requested by all other parties adverse to Rembrandt (“AOPs”), having already determined that the case was exceptional.
The Court found the AOPs’ attorney fee rates to be reasonable, noting that “[w]hile local rates typically apply in determining reasonableness, the court finds that as a complex multi-district litigation, ‘national’ rates are appropriate in this case.” Id. at 1 n.2. But the Court found several categories of requested fees and expenses to be unreasonable, and denied the request for experts’ fees and costs, fees related to one party’s bankruptcy, fees for time spend on secretarial or clerical work, and pre-judgment interest. See id. at 2.