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.
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.”
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.
Judge Richard G. Andrews recently considered motions in limine filed in advance of the bench trial in Novartis Pharmaceuticals Corporation v. West-Ward Pharmaceuticals International Limited, No. 15-474-RGA (D. Del. Jun. 30, 2017). Plaintiffs moved to exclude certain “points” of Defendant’s invalidity experts disclosed during deposition. Judge Andrews ordered that Plaintiffs could serve limited reports responding to those points and then Defendants could serve limited reports in reply. Id. at 1-2. Judge Andrews denied Defendant’s motion in limine seeking to limit Plaintiffs’ expert’s testimony on “unexpected results” because it was conclusory. “If the testimony turns out to be conclusory, it will carry no weight in the final analysis; but, whether it is conclusory is something I will better understand after hearing it.” Id.at 2. Defendant also sought to preclude “Plaintiffs from responding to Defendant’s obviousness arguments with what it calls ‘post art,’ that is, art which is after the relevant dates . . . for considering the state of the art for obviousness analysis.” Id. at 2-3. Judge Andrews denied the motion noting that while “post art” has limitations, it is possible that it may be offered for a purpose that is relevant and appropriate, such as “to show circumstantially what was know or unknown earlier[.]” Id.at 3.
In Omeros Corporation v. Par Sterile Products, LLC, et al., C.A. No. 15-773-RGA (D. Del. June 22, 2017) (“June 22 Order”), Judge Richard G. Andrews considered several of Plaintiff’s motions in limine in advance of the pre-trial conference and, following the conference, issued a subsequent ruling on one of the motions. C.A. No. 15-773-RGA (D. Del. June 29, 2017) (“June 29 Order”).
The Court granted-in-part a motion to exclude expert testimony regarding EPO practices. The Court observed that the expert’s potential “minimal knowledge about how the EPO posts and indexes documents, his testimony about how the EPO works, including when and how filings with it become public, could possibly be helpful.” June 22 Order at 1. But the Court granted the motion to exclude testimony “about whether and when EPO filings in general become prior art, and whether the particular EPO filing in this case is prior art, [as this] is a legal question that [the Court] will decide, and his opinion on that would not be helpful.” Id.
The Court deferred decision on Plaintiff’s motion to exclude an SEC document filed by Plaintiff that contained statements Defendants wished to use as prior art, observing that “neither party’s papers cited any cases dealing with an analogous situation, that is, relevant art discussion cleverly concealed in an irrelevant document from a completely unrelated field of endeavor. . . . before making a final ruling on this, [the Court would] give each side [leave] to file a supplemental letter with any results of a search for cases with closer facts to those presented here.” Id. at 2. In the subsequent ruling, the Court declined to exclude the document, noting that “Defendants cited two cases . . . that seem . . . to support their position. If a press release can be prior art, see In re Morsa, 713 F .3d 104, 109 (Fed. Cir. 2013), why not a SEC filing? While the Federal Circuit has not addressed the question, the District Court for the District of New Jersey accepted, over objection, an Annual Report filed with the SEC as prior art.” June 29 Order at 1.
Judge Richard G. Andrews recently considered defendants’ renewed motion to dismiss plaintiffs’ amended complaint. Sipco, LLC v. Streetline, Inc., No. 16-830-RGA (D. Del. Jun. 21, 2017). Judge Andrews previously granted defendants’ first motion to dismiss finding that the complaint made “no attempt to connect anything in the patent claims to anything about any of the accused products.” Id. at 1. Plaintiffs’ amended complaint added allegations describing the accused product “in some detail,” but Judge Andrews noted that the description would only be understandable “(if at all) by a person of ordinary skill in the art.” Id. Judge Andrews noted that “it is incumbent on a plaintiff to provide a readable document that plausibly alleges infringement.” Id. at 3 (citing Twombly). In the Court’s view, “providing  a copy of the patent and a description of the product, at least in this case, [did] not meet the required standard.” Id. Judge Andrews noted that the Court was “disappointed that Plaintiffs did not take [the Court’s] last order a little more seriously,” but ultimately gave Plaintiffs one more opportunity to amend their complaint to “make plausible allegations of infringement.” Id. at 4.
Judge Richard G. Andrews recently granted a defendant’s motion for summary judgment of non-infringement under the doctrine of equivalents. Blackbird Tech, LLC d/b/a Blackbird Technologies v. Lululemon Athletica, Inc., C.A. No. 15-930-RGA (D. Del. June 14, 2017). At issue was patented sports bra technology, and whether the defendant’s product infringed where the straps of its product were sewn, rather than laminated, to the cups of the bra. The plaintiff did not allege literal infringement, but alleged infringement under the doctrine of equivalents on the basis that one of skill in the art would have viewed sewing as interchangeable with laminating for purposes of attaching the bra straps to the cups. Judge Andrews explained, though, that the doctrine of equivalents is “limited by the dedication-disclosure rule, which prevents a patent holder from disclosing a broader invention than is claimed and then recaptur[ing] subject matter deliberately left unclaimed.” Id. at 3-4 (internal quotation marks omitted). The Court found that because the specification discussed both sewing and laminating, but only laminating was claimed, the sewing of the bra straps to the cups was disclosed and dedicated to the public, and the defendant’s product therefore could not be found to infringe under the doctrine of equivalents. Id. at 4-5.
Judge Richard G. Andrews recently denied the parties’ joint request to modify the case schedule, without prejudice to be renewed as directed in the Court’s order. AstraZeneca LP v. Sigmapharm Laboratories, LLC, No. 15-1000-RGA (D. Del. June 9, 2017). In particular, the Court noted that the bases for the parties’ request, the complexity of the case and the change in counsel of several defendants, should not require a continuance of the trial and pretrial conference dates. Therefore, Judge Andrews would extend the close of fact discovery, subject to the parties either expediting expert discovery or forgoing Daubert motions so that the trial schedule could be maintained.
Judge Richard G. Andrews recently considered plaintiff’s motion to compel third party Broadcom to produce documents in response to a subpoena. TQ Delta LLC v. 2Wire Inc., No. 13-1835-RGA (D. Del. June 13, 2017). Broadcom opposed the motion arguing that plaintiff was required to file the motion in the district where compliance was required, i.e., the Central District of California. Id. at 2. Judge Andrews agreed. “While the Rules specifically provide for jurisdiction here, in the district where the litigation is pending, for issuance of the subpoena, they vest jurisdiction over compliance with the subpoena in the ‘district of compliance.'” Id. at 3. Because Broadcom is a California corporation with its principal place of business in Irvine, California, there was “no reasonable basis for Plaintiff to believe that the District of Delaware was the proper jurisdiction for Plaintiff’s motion.” Id. Judge Andrews also ordered briefing on Broadcom’s request for attorneys’ fees for having to oppose the motion. Id. at 3-4.
UPDATE: On August 9, Judge Andrews issued a subsequent order denying Broadcom’s request for attorneys fees. Judge Andrews found that Broadcom’s motion was “substantially justified” under Rule 37 both because “Broadcom had already actively participated in this case in this court” and because of a “similar [but] not the same” situation in another case before Judge Andrews in which His Honor “resolved a motion to compel involving a non-party over jurisdictional objections similar to those here.” TQ Delta LLC v. 2Wire Inc., C.A. No. 13-1835-RGA, Memo. Or. at 1-2 (D. Del. Aug. 9, 2017).
In B. Braun Melsungen AG, et al. v. Becton, Dickinson and Company, et al, C.A. No. 16-411-RGA (D. Del. June 9, 2017), Judge Richard G. Andrews recently denied a motion for judgment on the pleadings seeking to invalidate three asserted patents based on a fourth asserted patent claimed to be 102(b) prior art. The defendants’ motion was premised on the argument that the three patents were not entitled to a priority date earlier than the fourth asserted patent because, while the three patents included reference to prior-filed applications, “[w]hat was missing in each application was the relationship between the applications and the chain of priority.” Id. at 4. The plaintiffs successfully obtained certificates of correction to address these relationships, but the defendants argued that such an error could not be corrected by a certificate of correction without re-examination, and therefore the certificates of correction were invalid and the patents were not entitled to the earlier priority dates. Id. Judge Andrews disagreed, and found that the “changes made by the certificate of correction were ‘of a minor character'” and did not require re-examination. Id. at 5-6. The Court noted further that the PTO “has a long-standing practice of correcting priority claims through certificates of correction.” Id. at 7. As a result, the Court could not find that the defendants proved by clear and convincing evidence that the certificates of correction were invalid in denying the motion for judgment on the pleadings.