Judge Richard G. Andrews recently denied without prejudice a motion to dismiss for lack of patentable subject matter under 35 U.S.C. § 101. Pacific Biosciences of California, Inc. v. Oxford Nanopore Technologies, Inc., No. 17-275-RGA (D. Del. Nov. 9, 2017). Judge Andrews decided that, while it may be appropriate in some circumstances to decide such a motion at the pleading stage, “Plaintiff briefed the motion as though it were a summary judgment motion . . . and at argument both sides referred to an understanding of the technology and the state of the art at the time of the invention.” Id. at 2. Therefore, “[u]nder the circumstances of this case, and considering the technology of the patent being asserted, [the Court did] not think patent-ineligibility [wa]s something that [the Court could] fairly decide on a motion to dismiss.” Id.
Following a jury trial in E.I. Dupont de Nemours and Company v. Unifrax I LLC, C.A. No. 14-1250-RGA, in which Defendant’s product was found to infringe the asserted patent, Judge Richard G. Andrews ruled on: (1) Defendant’s renewed motions for judgment as a matter of law and request for a new trial; and (2) Plaintiff’s Motion for a Permanent Injunction, Supplemental Damages and Interest (D. Del. Sept. 12, 2017).
The Court denied Defendant’s motions. As to JMOL, the Court found that there was sufficient evidence to support the jury’s findings on infringement and no invalidity. Notably, the Court rejected Defendant’s attempt to make a new claim construction argument not presented in its Markman briefing, noting that it has “numerous opportunities to raise this specific issue prior to trial,” including during summary judgment, and had waived the argument. Id. at 3-4. The Court also rejected the request for a new trial for the same reasons that the JMOL motion was denied. The Court also rejected Defendant’s arguments that certain of Plaintiff’s cross-examination mislead the jury, and disagreed that the jury had been improperly instructed on conception. Id. at 5-6.
In a separate opinion addressing Plaintiff’s motion, the Court granted a permanent injunction. Irreparable harm existed where Plaintiff had shown a causal connection between Defendant’s sales and harm to Plaintiff, and where Plaintiff and Defendant were the only competitors in the relevant market: “Defendant’s predecessor . . . product was dissatisfactory to Boeing. There is evidence that the predecessor product would not have qualified under Boeing’s new specification. Defendant’s . . . product uses Plaintiffs patented flame barrier laminate design to qualify for this specification and compete in this market. Defendant is Plaintiffs only competitor in Boeing’s flame barrier laminate market. Plaintiff projected that its Nomex XF would have sales of $32 million in 2013 to 2015. Defendant’s presence in the market directly reduced Plaintiffs sales.” Id. at 3. Money damages were inadequate where Plaintiff “would be forced to compete against a rival gaining market share with Plaintiff’s technology” and where Plaintiff never agreed to royalty payments to license its technology, and similarly, the balance of hardships weighed in Plaintiff’s favor where the absence of an injunction would require Plaintiff to compete against its patented invention. Id. at 4. Finally, the Court ruled an injunction would not harm the public interest. “Defendant argue[d] that an injunction would harm the public interest because the public is better off with a multiple-supplier market for products affecting public safety,” but the Court was persuaded by Plaintiff’s evidence that no such public safety concern was present and the Court “was not concerned with Plaintiff’s ability to supply its product.” Further, “copies of patented inventions have the effect of inhibiting innovation and incentive. Guarding against such copies could foster the development of more technologies aimed at enhancing public safety.” Id. at 5 (citations and internal quotation marks omitted).
Judge Richard G. Andrews recently considered plaintiff Acceleration Bay LLC’s various discovery motions. Acceleration Bay LLC v. Activision Blizzard, Inc., et al., No. 16-453-RGA, No. 16-454-RGA, No. 16-455-RGA (Sept. 7, 2017). Regarding defendants’ interrogatory responses, Judge Andrews declined to order defendants to supplement specific interrogatories, in part due to plaintiff’s conclusory or vague theories. For example, plaintiff sought supplementation of interrogatories seeking non-infringing alternatives, and non-infringement theories. Id. at 3, 4. Defendants argued that supplementation was not warranted, in part “due to the vagueness of Plaintiff’s infringement contentions and because Plaintiff has the burden of proving the lack of non-infringement alternatives.” Id. Judge Andrews agreed. Id. at 3, 4. Plaintiff also sought supplementation regarding defendants’ damages theories. Again, defendants argued that their response was reasonable in light of plaintiff’s “conclusory” damage claim. Id. Again, Judge Andrews agreed. Id. at 4.
In a series of related actions brought by Acceleration Bay LLC, Judge Richard G. Andrews denied Defendants’ motion to dismiss due to allegedly patent-ineligible subject matter of three asserted patents. Acceleration Bay LLC v. Activision Blizzard, Inc., C.A. No. 16-453-RGA (D. Del. Aug. 29, 2017). The claims at issue related to a “broadcast channel for a subset of  computers of an underlying network.” Id. at 2. The Court concluded that the claims were not directed to an abstract idea, rather “an innovative network structure for the distribution of data as the number of participants in a computer network is scaled.” Id. at 6. The Court rejected Defendants’ analogy to the claims as “the schoolyard game of ‘telephone,’” as analogy did not “present the same communication scaling issues as those that arise in computer networks.” Id. at 7. The Court instead analogized the claims at issue to those in the Enfish case as requiring “a specific type of communication structure designed to improve the way computers communicate as participants scale.” Id.
Judge Richard G. Andrews recently granted summary judgment of non-infringement and invalidity relating to a patent claiming a system for locating and identifying portable devices using ultrasonic base stations. Centrak, Inc. v. Sonitor Technologies, Inc., C.A. No. 14-183-RGA (D. Del. Aug. 30, 2017). The plaintiff’s infringement theory was based on the defendant’s “making and using” a system covered by U.S. Patent No. 8,604,909, in this case by “installing” the system at customer hospitals. Judge Andrews found, however, that while the defendant was involved in the installation in various ways (e.g., evaluating the appropriate system to install based on the customer hospital’s layout, providing the customer hospital with network infrastructure requirements, and working with the hospital customer, post-installation, to troubleshoot the system), there was no evidence in the record that “Defendant makes the system. The testimony cited indicates that Defendant does not itself install the system. Furthermore, Plaintiff has not provided any evidence of contracts entered into between Defendant and third party installers that would indicate that the installation is done at Defendant’s direction or behest.” The plaintiff next argued that even if the defendant does not actually install the system, “the customer’s actions in making the claimed invention are attributable to” the defendant. Id. at 10. Judge Andrews rejected this argument, explaining that the Federal Circuit’s Centillion decision “is still good law and applies to the system claims in this case. Plaintiff must prove that Defendant makes or uses the entire system, including all claimed elements, in order to prove infringement. Id. at 11. While the troubleshooting allegations could give rise to a “use” infringement claim, Judge Andrews found that the vague record evidence relating to the troubleshooting did not demonstrate that the entire system was “used” during testing.
Judge Andrews also found that all asserted claims of the ‘909 patent were invalid for failure to satisfy the written description requirement. The specification disclosed radio frequency and infrared base stations, but only “contemplated” ultrasonic base stations. Judge Andrews explained that “[m]ere contemplation . . . is not sufficient to meet the written description requirement. . . . [I]t seems clear to me that electromagnetic radiation and sound waves are not simply two species of the same genus; rather these are two completely different types of phenomena.” Id. at 15. The Court agreed with the defendant that the practical difference between using ultrasonic base stations instead of infrared base stations is substantial, and therefore the patent failed to provide written description support for the use of the former. Id. at 15-16.
Judge Richard G. Andrews recently granted a motion to dismiss upon consideration of an an affirmative defense under 35 U.S.C. § 252 relating to claims re-issued following inter partes reexamination. Waters Techs. Corp. v. Aurora SFC Sys. Inc., Civ. No. 11-708-RGA (D. Del. Aug. 21, 2017). Judge Andrews explained that, as currently plead, “it is not plausible that a substantive limitation was not added to the Amended Claims,” because “[n]one of the Asserted Claims that came out of reexamination had a differential pressure transducer limitation[,]” meaning that the claims had substantively changed for purposes of section 252. Id. at 6. In fact, the plaintiff did not disagree, but instead “only argues that this decision is premature absent claim construction and discovery.” Id. Judge Andrews disagreed, and explained that it was implausible to infer that no substantial changes resulted from the IPR. Therefore, the Court dismissed the plaintiff’s claims based on section 252 with respect to infringement prior to the re-issuance.
In Ferring Pharmaceuticals, Inc. v. Teva Pharmaceuticals USA, Inc., Civ. No. 17-435-RGA (D. Del. Aug. 24, 2017), Judge Richard G. Andrews ruled that it would be inappropriate to add a second in-house designee under the protective order to review an ANDA, as well as sensitive financial and economic data of the adverse party. The would-be second in-house attorney was a competitive decisionmaker, willing to sign a competitive decisionmaking bar, and would “be the key decision maker in any settlement negotiation in this case.” But Judge Andrews found that “no matter how much good faith is being shown, . . . doubling the distribution by adding a competitive decisionmaker to the recipient list significantly increases the risk [of improper disclosure] without necessarily conferring any particular benefit . . . .”
In MiiCs & Partners America, Inc., et al. v. Toshiba Corporation, et al., C.A. No. 14-803-RGA (D. Del. Aug. 11, 2017), Judge Richard G. Andrews granted motions for partial summary judgment of non-infringement filed by certain Defendants as well as by intervenor Samsung. The motions were based on various license agreements. Having examined their terms, the Court concluded that the licenses entitled the movants to summary judgment of non-infringement. Included in the Court’s analysis is discussion of the Supreme Court’s recent Impression Products, Inc. v. Lexmark Int’l, Inc., 137 S. Ct. 1523 (2017) decision on patent exhaustion. See id. at 13-15. The Court analyzed one of the license agreements through the lens of that decision in rejecting Plaintiffs’ argument that the license prohibited to whom license products could be sold or for what purpose, and that the licensees had violated the terms of the license by selling component to Defendants for placement in end-user products. The Court noted that the “Lexmark decision was an outgrowth of in the law’s preference against restraints on alienation. . . . It explained that the patent exhaustion doctrine ‘marks the point where patent rights yield to the common law principle against restraints on alienation.’ . . . Thus, to the extent a contract ought to be interpreted against the backdrop of public policy, a reading of a license agreement that purports to restrict such alienation would be disfavored. These licenses, anyhow, unambiguously contain no such restriction.” Id. at 14-15.
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.”