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In a recent Order, Judge Richard G. Andrews granted disclosure of four documents of defendants’ “Indian ‘in-house counsel’ or subordinates of ‘in-house counsel’” after determining that the attorney-client privilege did not protect those documents. Reckitt Benckiser Pharmaceuticals v. Dr. Reddy’s Laboratories SA, C.A. No. 14-1451-RGA (D. Del. Nov. 4, 2016).

As Judge Andrews explained, the “dispositive issue is whether under U.S. privilege law, the three Indian in-house employees constitute ‘a member of the bar of a court, or his subordinate.’” Id. at 3. To resolve this issue, Judge Andrews relied on the opinion of Retired Justice Srikrishna, who previously “opined on the role of Indian in-house counsel in the context of the Indian legal system and whose opinion was requested by Circuit Judge Jordan.” Id. (citing Shire Dev. Inc. v. Cadila Healthcare Ltd., C.A. No. 10-581-KAJ (D.I. 209) (D. Del. June 28, 2012)). Judge Andrews explained:

According to Retired Justice Srikrishna’s opinion, there is “only one class of legal practitioners known as advocates” in India. Only advocates are “entitled to practice the profession of law.” Advocates have the “right to practice throughout the territories of India in all courts, before any tribunal or person legally authorized to take evidence or before any other authority . . . .” Generally, only advocates are “entitled to practice in any court or before any authority or person . . . .” “[I]n-house counsel would not come within the definition of ‘advocate.’” “[A] person who is in full time employment of an employer ceases to be an advocate.”

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In a recent Memorandum Order, Judge Sue L. Robinson resolved various disputes, including defendant’s motion for leave to amend with antitrust counterclaims, limitations on asserted claims and prior art, and whether a certain affidavit was protected under the work product doctrine. Quest Integrity USA, LLC v. Clean Harbors Industrial Services, Inc., C.A. Nos. 14-1482, 14-1483-SLR (D. Del. Nov. 1, 2016).

First, Judge Robinson granted defendant Cokebuster USA Inc.’s motion for leave to file Walker Process antitrust counterclaims, as it was “timely filed and sufficiently pled.” Id. at 1. Judge Robinson ruled, however, that “consistent with the court’s practice, the antitrust counterclaims are hereby bifurcated, to be tried (if at all) after the Federal Circuit has had the opportunity to review the merits of the patent litigation on appeal. Any issues related to discovery shall be addressed at that time.” Id. at 1-2.

Second, Judge Robinson denied plaintiff’s motion for reconsideration, in which plaintiff (“Quest”) complained that “placing limits on the number of claims it can assert through expert discovery and trial is prejudicial.” Id. at 2. Judge Robinson found that “by the time the claim limits were imposed . . . , Quest had sufficient information to choose representative claims: (a) fact discovery was substantially completed; (b) the court’s claim construction order had issued; and (c) Quest initiated the litigation with a preliminary injunction proceeding, giving the parties a substantial amount of information at the outset.” Id. at 2-3.

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In a series of related actions brought by United Access Technologies, Chief Judge Leonard P. Stark issued a claim construction opinion in which the Court also considered Defendants’ motion to strike certain proposed constructions as barred by collateral estoppel. E.g., United Access Technologies, LLC v. Centurytel Broadband Services, LLC, et al., C.A. No. 11-339-LPS (D. Del. Nov. 4, 2016). Defendants argued that Plaintiff was collaterally estopped from re-litigating certain constructions, including arguing that the preambles of the asserted claims were not limiting, based on Magistrate Judge Thynge’s ruling in a prior case brought by Plaintiff’s predecessor-in-interest that had construed several of the same claim terms now at issue. Id. at 5. But “[i]n order to fully consider Defendants’ Motion and other arguments relating to estoppel, the Court found it necessary to review in their entirety all of Plaintiff’s arguments regarding the disputed terms. After doing so, the Court determined that none of these arguments provided a persuasive reason for the Court to depart from Judge Thynge’s claim constructions.” Id. As a result, the Court denied the motion to strike as moot and proceeded with claim construction of each disputed term. Id.

E.g., United Access Technologies, LLC v. Centurytel Broadband Services, LLC, et al., C.A. No. 11-339-LPS (D. Del. Nov. 4, 2016)

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Magistrate Judge Christopher J. Burke recently recommended the denial of § 101 motions relating to cloud computing environment technology.   Kaavo Inc. v. Amazon.com Inc., et al., C.A. No. 15-638-LPS-CJB (D. Del. Nov. 3, 2016); Kaavo Inc. V. Tier 3, Inc., et al., C.A. No. 15-640-LPS-CJB (D. Del. Nov. 3, 2016).  For purposes of its analysis, the Court focused on the defendants’ argument that the patent-in-suit was directed to “an abstract idea . . . of setting up and managing a computing environment.”  Id. at 9.  The Court ultimately agreed that the patent was directed to an abstract idea, but recommended denial of the § 101 motion under the second “inventive concept” prong of Alice, namely because, on the record before the Court, certain claim language “renders it more plausible that claim 11 describes a sufficiently specific way of ‘setting up a cloud computing environment’,”  id. at 22 (emphasis added), and “there appear to be disputed issues of fact here that, when resolved, will bear on whether claim 11’s method would risk disproportionately tying up the use of the underlying ideas[,] . . . or cover all possible ways to achieve the provided result[.]”  Id. at 23 (quotation marks omitted).

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Chief Judge Leonard P. Stark recently rules on several Daubert and summary judgment motions in Masimo Corp. v. Philips Electronics North America Corp., et al., C.A. Nos. 09-80-LPS, 11-742-LPS (D. Del. Oct. 31, 2016).  Of note, Chief Judge Stark granted a Daubert motion seeking to preclude a damages expert from testifying regarding the “basis-for-customer-demand” test in connection with a lost profits opinion.  The Court explained that the test was inconsistent with jury instructions in an earlier related case, to which no objections were lodged, and in any event that the “functional unit” test that was a part of the earlier jury instructions was legally correct.  Id. at 6.

Chief Judge Stark also granted a Daubert motion seeking to preclude testimony regarding European Patent Office proceedings, on the basis that the expert was indisputably not an expert on European patent law and also that such testimony would not be helpful to the jury and could potentially be confusing at trial.  Id. at 8-9.

With respect to the summary judgment motions, Chief Judge Stark granted in part Masimo’s motion for summary judgment of infringement because, the Court explained, the defendant’s own expert opined that the accused products infringed, and the license agreement at issue contained an express disclaimer.  The Court noted, “[a]n implied license will not be found where the applicable licensing agreement has an ‘express disclaimer’ limiting the scope of the license.”  Id. at 13-14.

The Court also granted in part a motion for summary judgment of no infringement under the doctrine of equivalents, agreeing with the defendant’s argument that “Masimo is estopped from relying on the doctrine equivalents to prove infringement because Masimo added [the limitations at issue] to overcome rejections for indefiniteness and double patenting during prosecution.”  Id. at 22.  Because Masimo failed to demonstrate that the amendments to add those limitation were narrowing, the Court found that Masimo failed to rebut the presumption (given that the reasons for and impact of Masimo’s amendments were ambiguous) that prosecution history estoppel applied.  Id. at 23-24.

Finally, the Court granted in part Philips’ motion for summary judgment of no willful infringement of one of Masimo’s patents, on the basis that Masimo failed to present any evidence that Philips’ allegedly infringing conduct was “willful, wanton, malicious, [or in] bad faith” under HaloId. at 34.

The remainder of the issues briefed in the parties’ summary judgment motions presented genuine issues of material fact and were therefore denied.

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Magistrate Judge Christopher J. Burke recently considered defendants Ubisoft Entertainment SA and Ubisoft Inc.’s motion to dismiss plaintiff Princeton Digital Image Corp.’s claims in its Third Amended Complaint for indirect and willful infringement of U.S. Patent No. 5,513,129.  Princeton Digital Image Corp. v. Ubisoft Entm’t SA, No. 13-335-LPS-CJB (D. Del. Nov. 4, 2016).  Regarding indirect infringement, Defendants argued that the Third Amended Complaint failed to allege actual knowledge of the patent-in-suit prior to the lawsuit, and that the original Complaint failed to put Defendants on notice of Plaintiff’s claims after the suit was filed.  Id. at 8.  Judge Burke agreed.

Regarding pre-suit knowledge, Judge Burke found that Plaintiff’s allegation that Defendants had knowledge merely because it was aware of a patent that described the patent-in-suit was “too tenuous to permit the reasonable inference that Defendants had actual knowledge of the [patent-in-suit].”  Id. at 13. Regarding post-suit knowledge, Judge Burke found that the patent-in-suit expired three months after the original Complaint was filed, and that Complaint did not provide any basis for the indirect infringement allegations now pled in the Third Amended Complaint.  Id. at 18-21.  Similarly, Judge Burke also recommended dismissing Plaintiff’s claims of willful infringement because the Third Amended Complaint failed to adequately allege that Defendants had pre-suit knowledge of the patent-in-suit; and because the original Complaint did not plead indirect infringement (willful or otherwise) or how Defendants’ actions in the three month window between the filing of the suit and the expiration of the patent were “an ‘egregious’ case of infringement of the patent.”  Id. at 23-25.

Princeton Digital Image Corp. v. Ubisoft Entertainment SA, No. 13-335-LPS-CJB

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Judge Sue L. Robinson recently considered Defendants’ motion for judgment on the pleadings that the patents-in-suit, related to mobile phones and devices using the LTE standard, claim patent-ineligible subject matter under 35 U.S.C. § 101.  Evolved Wireless, LLC v. Apple, Inc., et al., No. 15-542-SLR, et al. (D. Del. Oct. 31, 2016).  Defendants argued that the claims of the patents were merely “directed to a mathematical algorithm for generating a code sequence” and were therefore not protected by our patent laws.  Id. at 8.

Judge Robinson disagreed.  In reaching that conclusion, Judge Robinson found that:

The ‘916 and ‘481 patents describe problems and solutions firmly rooted in technology used for wireless communications. Specifically, the ‘916 patent explains that the number of code sequences available in the prior art to maintain orthogonality was “limited.” As a result, telecommunication systems either had a higher level of interference or were only able to serve a limited number of mobile phones for a particular base station.  The ‘916 patent relates to a technique for optimizing the number of unique code sequences with orthogonality, overcoming the limitations rooted in prior art.

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Declaratory judgment plaintiff Pride Manufacturing filed suit seeking a declaratory judgment that Defendant Evolve Golf’s design patent and US trademark are invalid and not infringed. Evolve answered the complaint, asserting counterclaims of trademark infringement but admitting the Pride does not infringe the design patent. Evolve then sent Pride a release and covenant not-to-sue on the design patent. Nevertheless, Judge Robinson heard and decided cross motions, Evolve’s motion to dismiss for lack of subject matter jurisdiction and Pride’s motion for judgment of non-infringement. Pride Manufacturing Co., LLC v. Evolve Golf, Inc., C.A. No. 15-1034-SLR, Memo. at 1 (D. Del. Oct. 31, 2016).

Judge Robinson first recognized that a “covenant not-to-sue deprives the court of declaratory judgment jurisdiction relating to claims addressed by the covenant.” Id. at 4. Her Honor was “satisfied that, despite the covenant’s lack of any specific product descriptions, the covenant meets the purpose of removing any concern of liability for infringement of the patent currently in suit.” Id. at 5. Thus, the motion to dismiss for lack of jurisdiction was granted and the motion for judgment denied as moot, but, as Judge Robinson explained, “a controversy still exists regarding the trademark infringement claims and counterclaims.” Id.

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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.

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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.

Koninklijke Philips N.V., et al., v. ASUSTek Computer, Inc., et al., C.A. No. 15-1125-GMS (D. Del. Oct. 25, 2016).

 

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