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Judge Gregory M. Sleet recently denied a motion for a Rule 54(b) judgment following an unopposed motion to dismiss accompanied by a covenant not to sue.  Nespresso USA, Inc. v. Ethical Coffee Co. SA, C.A. No. 16-194 (GMS) (D. Del. Sept. 5, 2017).  Judge Sleet explained that, under Curtis-Wright Corp. v. General Electric Co., 446 U.S. 1, 7 (1980), the Court’s granting of the unopposed motion was not an adjudication of the merits of the dispute — “[t]here was no determination by the court as to the validity of the claims at issue or whether they were infringed.”  As a result, Judge Sleet explained that “this does not constitute a final judgment under Fed. R. Civ. P. 54(b) because the claims were dismissed prior to an adjudication on the merits.”

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Chief Judge Leonard P. Stark recently ruled on summary judgment motions in a series of cases filed by Intellectual Ventures.  Intellectual Ventures I LLC v. T-Mobile USA, Inc., C.A. No. 13-1632-LPS (D. Del. Aug. 23, 2017) (and related cases).  Judge Stark granted a motion by T-Mobile seeking summary judgment that Intellectual Ventures’ patent rights were retroactively exhausted by a license agreement between Ericsson Sweden and Ericsson USA, the entity which sold the accused products to T-Mobile.  Intellectual Ventures argued that its patent claims arose before any such license, but the Court explained that under the license agreement at issue, Ericsson Sweden granted a nunc pro tunc license, retroactive to earlier than the date when the patent claims arose.  As a result, the Court found that the license was “sufficient to exhaust IV’s infringement claims on a retroactive basis.”

The Court also granted T-Mobile’s motion for summary judgment of no infringement of another asserted patent under the doctrine of equivalents because “[e]ach allegedly equivalent limitation . . . was amended during prosecution to overcome . . . prior art.”  Judge Stark explained that the amendments at issue were made “to distinguish the invention over [prior art] that contains the equivalent in question . . . .”  Accordingly, the Court granted summary judgment of no infringement based on prosecution history estoppel.

Finally, the Court denied the defendants’ motion for summary judgment of non-infringement of a third asserted patent, finding general disputes of material fact regarding whether the actions of defendants’ customers were attributable to defendants for purposes of the infringement analysis.

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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 . . . .”

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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.

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Judge Sue L. Robinson recently granted in part a motion for judgment as a matter of law on damages “because defendant did not present opinion testimony from an expert witness on damages, and ‘the amount of damages has not been put in dispute.'”  Ironworks Patents, LLC v. Apple, Inc., Civ. No. 10-258-SLR (D. Del. June 12, 2017).  The motion sought an increase in the $3 million damages awarded by the jury to $17.9 million, the amount proposed by the plaintiff’s expert and unrebutted by any defense expert.  The defendant argued that because the burden of proving damages was on the plaintiff, it was not required to “disprove” the damages theory of the plaintiff’s expert.  The Court explained, though, that “once a plaintiff has come forward with ‘reliable and sufficient evidence’ supporting its damages theory, the burden shifts to the defendant.  Id. at 24.  Here, the defendant failed to rebut the plaintiff’s damages theory through actual expert evidence (as opposed to attorney argument).  The jury’s award of $3 million, the Court found, was below the lowest amount discussed by the plaintiff’s expert, which the Court found was supported by sufficient evidence.  Id. at 27.  The Court therefore adjusted the damages award to $8,940,544, the lowest amount discussed by the plaintiff’s expert.  Id.

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Following a successful inception in 2014, Premier Cercle™ is teaming up with Institutional Investor Magazine  and Managing Intellectual Property to organize a sequel of the IP Finance Conference that will showcase and IPF2015_bann_160x600_v1-1 (1) (2)discuss the best practices from patent holders, entitled, investors, bankers, financiers, Private Equity, firms, regulators, plaintiffs and defendants which make the most of their immaterial assets and intangible capital, and optimize their

balance sheet.

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On March 24, the jury in Intellectual Ventures v. Motorola Mobility, C.A. No. 11-908-SLR, returned a verdict of direct, contributory, and induced infringement for plaintiff for one of the patents-in-suit.  For the patent the jury found not infringed, it also found that this patent was invalid as obvious.

UPDATE: The Court released an additional verdict sheet in this case regarding different patent-in-suit.  For this third patent, the jury returned a verdict of direct, contributory, and induced infringement for plaintiff.

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(Feb. 6, 2015 ) In the second verdict of the day from the District of Delaware, a jury awarded Intellectual Ventures I LLC a sum of $17 million from Symantec Corporation for infringement of two of three asserted patents, in the case of  Intellectual Ventures I LLC v. Symantec Corporation, C.A. No. 10-1067-LPS.

2015.02.06 Verdict Form, Intellectual Ventures I LLC v. Symantec Corporation, C.A. No. 10-1067-LPS

In an unrelated patent infringement verdict rendered from the J. Caleb Boggs Federal Building earlier in the day, a jury awarded Sprint $27.6M from Comcast.

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On January 27, 2015, the jury in Round Rock Research, LLC v. Sandisk Corporation, C.A. No. 12-569-SLR returned a verdict finding infringement of some claims, but invalidity as to both patents-in-suit.  The jury found some asserted claims of both patents-in-suit had been directly infringed, but none of the asserted claims were indirectly infringed.  However, the jury also found all of asserted claims invalid as anticipated or obvious.

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On Tuesday, the jury in Interdigital Communications, Inc., et al. v. ZTE Corporation, et al., C.A. No. 13-009-RGA (D. Del. Oct. 28, 2014) returned a verdict for the plaintiffs, finding all asserted claims of the three patents-in-suit infringed and not invalid.

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