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Chief Judge Leonard P. Stark recently ruled on a motion filed by a plaintiff’s claimed successor-in-interest to reopen an administratively closed case, to substitute itself for the plaintiffs, and to consolidate the case with two related cases.  Inline Connection Corp. v. Verizon Internet Servs., Inc., Consol. C.A. No. 05-866 (D. Del. Sept. 28, 2016).  The case was administratively closed in 2009, and then in August 2013 the Clerk of Court removed the administrative closure notation from the docket and invoked its Standing Order Regarding Return of Sealed Documents.  More than two years later, in October 2015, United Access (which describes itself as the successor-in-interest to the plaintiffs in the case) filed the motion at issue.  The defendants argued that the case was terminated more than two years ago and, if it was not terminated, the plaintiffs should not be replaced by United Access because the presence of the plaintiffs is vital to the defendants’ asserted claims and defenses.  Chief Judge Stark found that the case was not terminated, though.  Although the defendants argued that they were entitled to assume the case was terminated when the Clerk of Court invoked the standing order regarding sealed documents, Chief Judge Stark explained that “a self-executing order may not mature into a final judgment without an order of dismissal.”  Id. at 6.  With respect to United Access’s motion to substitute itself for the plaintiffs, the Court found that substitution would not be appropriate because it was not even clear that the plaintiffs were aware of the motion.  The Court therefore found that it would be appropriate to join United Access as a plaintiff, but not to substitute it in place of the plaintiffs.  Finally, Chief Judge Stark found that consolidating this case with two related cases was not clearly warranted and would result in logistical challenges, and so would not be ordered at this time.  Instead, the parties (including the original plaintiffs) were directed to submit a joint status report proposing how the case should proceed.

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In Contour IP Holding, LLC, et al. v. GoPro, Inc., C.A. No. 15-1108-LPS-CJB (D. Del. Sept. 16, 2016), Magistrate Judge Christopher J. Burke recommended granting Plaintiffs Contour IP Holding and iON Worldwide, Inc.’s motion to dismiss iON from the lawsuit with prejudice, due to the fact that iON was not a necessary party and lacks standing to maintain infringement claims in the case. The Report and Recommendation noted, but provided no further comment on, the fact that Defendant did not oppose the motion “in principle,” provided that the dismissal was with prejudice and that it would reserve all rights and remedies against iON related to the case, including seeking attorneys’ fees, and that it also reserved its rights and remedies against the other Plaintiff in connection with its addition of iON to the case.

Contour IP Holding, LLC, et al. v. GoPro, Inc., C.A. No. 15-1108-LPS-CJB (D. Del. Sept. 16, 2016)

 

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In JSDQ Mesh Technologies LLC v. Fluidmesh Networks, LLC (f/k/a Fluidmesh Networks, Inc.), C.A. No. 16-212-GMS (D. Del. Sept. 6, 2016), Judge Gregory M. Sleet denied Defendant’s motion to dismiss due to patent ineligible subject matter. The Court did not engage in a detailed Alice inquiry, as the motion was denied based on three threshold concerns. First, the Court concluded that Defendant had failed to establish a representative claim, as it had not identified “a consistent abstract idea upon which to base its motion” and had not provided “meaningful analysis for each of the challenged patent claims at issue.” Id. at 5. Second, while Plaintiff had not provided any reason why claim construction would impact the Section 101 analysis, the Court was “not inclined to dismiss the claims absent claim construction or appropriate discovery.” Id. at 6. Finally, the Court concluded that it could not yet determine “whether there is any set of facts that could be proven that would result in the challenged claims being patent-eligible. . . . The briefing and evidence now before the court are inadequate to permit a conclusive answer[.]” Id. at 6-7 (emphasis in original).

JSDQ Mesh Technologies LLC v. Fluidmesh Networks, LLC (fka Fluidmesh Networks, Inc.), C.A. No. 16-212-GMS (D. Del. Sept. 6, 2016)

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Following a five-day trial in May 2016 in ART+COM Innovationpool GmbH v. Google Inc., C.A. No. 14-217-TBD (D. Del. Sept. 9, 2016), after which the jury returned a verdict of non-infringement and invalidity of the asserted patent, Judge Timothy B. Dyk, sitting by designation, considered (1) Plaintiff’s motion for relief from judgment under Rule 60(b); (2) Plaintiff’s motions for post-trial relief; and (3) Defendant’s renewed motion for judgment as a matter of law as to Section 101 invalidity.

The Court denied the Rule 60(b) motion. Plaintiff argued that the Court should have excluded the testimony of a fact witness who Defendant had retained as a consultant. The Court observed that case law “establish[ed] that a party can enter into agreements with fact witnesses that compensate those witnesses for consulting work and not trial testimony.” 60(b) Decision at 5. The Court concluded that this was the case here where there was no evidence that Defendant had compensated the witness for his testimony or that the consulting fees impacted the testimony, nor was the witness’s fee unreasonably high, even though the fee was five times more than his salary, in light of his expertise and the complexity of the case. Id. at 6-7. In light of Plaintiff’s opportunity to depose and fully cross-examine the witness, the Court also concluded that the consulting agreement had not prejudiced Plaintiff. Id. at 8-9.

The Court also denied Plaintiff’s motions for post-trial relief. Plaintiff had moved for judgment as a matter of law as to infringement and as to no invalidity, both of which the Court denied. See Post-Trial Relief Decision at 4-21. For example, as to invalidity based on a particular reference, the Court disagreed with Plaintiff that “the public must be able to ascertain the individual elements of an invention for [this particular reference] to constitute a public use.” Id. at 16. Rather, “[t]he critical inquiry is whether the invention is used without restriction of any kind.” Id. at 17. Here, the reference “was publicly demonstrated at two technical conferences, to attendees with knowledge in the art, without restriction or effort to maintain confidentiality,” and these acts were sufficient to constitute public use.” Id. at 18-19.

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In a recent Memorandum Opinion, Judge Richard G. Andrews granted defendant’s motion to dismiss plaintiffs’ complaint for failure to state a claim, on the ground that plaintiffs’ asserted patent , U.S. Patent No. 8,976,955 (“the ’955 patent”), fails to claim patentable subject matter under 35 U.S.C. § 101. Nice Systems Ltd. v. Clickfox, Inc., C.A. No. 15-743-RGA (D. Del. Sept. 15, 2016). The ’955 patent is directed to a “system and method of tracking user web interactions and using that information to generate real-time recommendations when a contact center agent is later contacted by that user.” Id. at 2. Under step one of the Mayo/Alice analysis, Judge Andrews found that “the claims are directed to the abstract idea of cross-channel customer service, i.e., gathering customer information from one communication channel and using it to engage the customer via another communication channel.” Id. at 7. Under step two, Judge Andrews concluded that the “claims . . . do not add any inventive concept to the abstract idea of cross-channel customer service.” Id. at 12. As Judge Andrews explained, “Plaintiffs’ arguments—focusing on the fact that the claims require automatic, real-time analysis—confirm that the claims are merely directed to using generic computer components to add efficiency and speed to the abstract idea of cross-channel customer service.” Id. at 12-13. Judge Andrews also noted that “unlike in DDR Holdings, the problem the ’955 patent purportedly addresses is not itself inherently limited to the specific technological environment claimed by the patentee.” Id. at 14.

Nice Systems Ltd. v. Clickfox, Inc., C.A. No. 15-743-RGA (D. Del. Sept. 15, 2016).

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Magistrate Judge Sherry R. Fallon recently considered plaintiff’s motion to compel defendant to supplement its document production and responses to certain interrogatories.  Regarding production of core technical documents, Plaintiff requested certain categories of documents, including:

(1) requirement and in-house technical specifications; (2) design documents; (3) scope of work documents and schedules; (4) vendor specifications; (5) complete functional programming guides; (6) testing documents; (7) deployment documents; (8) maintenance documents; (9) internal user guides; (10) system integration documents; (11) engineer training documents; (12) system architecture documents, and (13) complete architectural design documents.

Novanta Corporation v. Iradion Laser, Inc., No. 15-1033-SLR-SRF (D. Del. Sept. 16, 2016).  Defendant argued that it complied with the requirements of the Scheduling Order and that the categories of documents identified by plaintiff does not exist.  Id. at 4.

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Judge Gregory Sleet recently denied a motion to dismiss a Hatch-Waxman case filed by Plaintiff AstraZeneca shortly before the case was to begin trial. Certain defendants in the consolidated cases had converted their Paragraph IV certifications to Paragraph III certifications and filed motions to dismiss arguing that “by converting to a Paragraph III certification, [they are] no longer engaged in the highly artificial act of infringement that confers subject matter jurisdiction under 35 U.S.C. § 27l(e)(2) . . . [because they do] not seek approval until the expiration of the [patent-in-suit].” AstraZeneca AB v. Aurobindo Pharma Ltd., et al., C.A. No. 14-664-GMS, Order at 2 n.3 (D. Del. Sept. 15, 2016) (internal citations omitted). Judge Sleet found, however, that “subject matter jurisdiction remains because the conduct at issue is capable of repetition, yet evading review . . . [because] a patent owner would be prevented from fully litigating its claims of infringement if every time a Paragraph IV filer amended its certification from IV to III, or some other designation, the court was determined to be deprived of subject matter jurisdiction.” Id.

Moreover, Judge Sleet found “circumstantial, if not direct, evidence that supports the conclusion that there is a reasonable expectation that the same controversy involving these parties will recur. . . . [including the] amended Paragraph III Certification transmitted to the FDA . . . [which stated that Defendant] ‘Wockhardt Bio AG maintains the already submitted Paragraph IV certification for said patent.’ When taken together, the reasonable inference to be drawn from the cited evidence supports the conclusion that there is a reasonable expectation that Astra Zeneca may well again at some future time be required to assert its interests in the [patent-in-suit].” Id.

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Judge Richard G. Andrews recently granted a motion for judgment on the pleadings of invalidity under § 101.  Callwave Commc’ns, LLC v. AT&T Mobility, et al., C.A. Nos. 12-1701-RGA, 12-1704-RGA, 12-1788-RGA (D. Del. Sept. 15, 2016).  The defendants argued that the ’970 patent at issue, entitled “Location Determination System,” “claim[s] the abstract idea of relating location-related information through an intermediary,” through claims “written so broadly that they could be performed entirely by humans.”  Id. at 8.  The plaintiff countered that the ’970 patent describes “a specific technologic problem that arises in the context of complex location tracking systems, then claims a specific solution to that problem.”  Id. at 8-9.  Under the Mayo/Alice analysis, Judge Andrews found that “the claims are directed to the abstract idea of relaying location information via an intermediary.”  Id. at 9.  The Court added that “adding a vaguely defined intermediary that selectively forwards requests and returns responses does not make the underlying abstract idea any more concrete.”  Id. at 10.  “Unlike in Enfish, the claims . . . do not describe an improvement in any sort of technology.  While plaintiff purports to suggest that the asserted claims solve a specific, technological problem, the claims simply describe a vague method of relaying location information via an intermediary.”  Id. at 12.

The Court proceeded to find that the claims were “devoid of any inventive concept” that could save the patent from invalidation, explaining “[t]he only claim elements that describe something even arguably more than just basic steps of requesting location information and responding with the requested information, are the two limitations that state ‘adapted to determine the location of a respective mobile platform according to a property that is predetermined for each mobile platform’ and ‘determining for each mobile platform one of the remote tracking systems that is capable of locating said mobile platform.’”  Id. at 14.  Judge Andrews explained that these two limitations appear “simply directed to looking at a database to figure out what location tracking service is physically capable of locating a particular mobile platform or type of mobile platform.”  Id.  This “vague notion,” Judge Andrews found, “does not add anything of substance to the claims.”  Id.

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Judge Andrews recently denied a request by a patent-infringement defendant for a new trial date to accommodate a partial scheduling conflict with its expert. The conflict, as stated by Judge Andrews, was due to a mix-up that resulted in “Defendant’s main expert [making] other professional plans for the trial week of January 23, 2017 . . . ‘to attend and speak each day’ of” a conference in Florida. Judge Andrews noted that “Plaintiff’s team seems to have made plans based on the scheduled trial dates” and explained “[w]hile I appreciate that Defendant wants to have its main expert available and present for the entire trial, I have to balance that against the inconvenience moving the trial would cause to Plaintiff. Defendant will be able to have its expert present his testimony, whether it is by live video, deposition, or by missing a day of the conference.” E.I. DuPont de Nemours and Co. v. Unifrax I LLC, C.A. No. 14-1250-RGA, Order at 1-2 (D. Del. Sept. 13, 2016).

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In a recent Order, Judge Richard G. Andrews granted in part defendants’ motion to preclude plaintiffs’ expert. Impax Laboratories Inc. v. Lannett Holdings Inc., C.A. No. 14-984-RGA (D. Del. Sept. 6, 2016) (consolidated). Judge Andrews explained that the expert at issue “is a doctor and a very well-qualified migraine expert. He is not an economist, an accountant, a statistician, or a businessman.” Id. at 2. Judge Andrews found that the expert is “qualified to have an opinion on nexus [related to commercial success], but there is no evidence of any academic or experiential basis that would permit him to express quantitative business opinions.” Id. Judge Andrews therefore concluded that the expert may not testify “to his opinions on commercial success.” Id.

Judge Andrews otherwise denied defendants’ motion to preclude, explaining:

While I acknowledge the “gate-keeper” function of a federal trial judge, it is not so important that it be done pretrial when the trial is a bench trial. Live testimony and cross-examination are much more likely to result in a correct decision from me about whether the experts are giving appropriate scientific testimony. Thus, while I am denying most of the motion for now, Defendants may make (and, indeed, in order to preserve the issue, must make) objections at appropriate times. I expect Plaintiffs will lay appropriate foundation for [their expert] as part of their case. Failure to make a timely appropriate objection will result in the objection being waived. The Court will only consider evidence actually adduced at trial (whether through cross-examination or testimony from other witnesses) in ruling on any renewed motion.

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