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 . . . .”
Judge Andrews recently resolved pre-trial motions in this trademark infringement dispute between two cruise lines. In a memorandum opinion filled with nautical analogies and Gilligan’s Island references, Judge Andrews addressed numerous Daubert and summary judgment motions.
In addressing Daubert challenges, Judge Andrews generally allowed much of the proffered testimony. His Honor excluded, however, certain portions of testimony, including one of the defendant’s experts, who opined that there was a likelihood of confusion between plaintiff’s and defendant’s marks. The expert, however, did not conduct a survey to measure consumer confusion and Judge Andrews found that the expert’s report was “nothing more than a recitation of facts paired with bare assertions.” The expert was permitted, however, to testify regarding the plaintiff’s use of the defendant’s marks a “paid search keywords” because his opinion included explanation of how consumers search for products and citations to research that provided context. American Cruise Lines, Inc. v. HMS American Queen Steamboat Co., et al., C.A. No. 13-324-RGA, Memo Op. at 8-11 (D. Del. Aug. 14, 2017). Judge Andrews also allowed an expert who offered “testimony on the policies and procedures of the USPTO [which] is of the type courts generally admit,” finding that the testimony “is admissible to the extent it is relevant, if at all, and to the extent it focuses on the policies and practices of the USPTO [but it] is excluded to the extent is explains the law.” Id. at 12-13.
Additionally, Judge Andrews granted partial summary judgment that the defendant’s failure to turn over a website domain name breached a prior settlement agreement between the parties governing the use of the Great American Steamboat Company mark. Id. at 25-26. On the same basis, the Court also declined to issue summary judgment that the defendant did not commit cybersquatting by registering the domain name. Id. at 26-31. Judge Andrews also granted summary judgment of no fraudulent procurement and no abandonment. Id. at 31-36.
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.”
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.