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.
Judge Kearney, sitting by designation from the Eastern District of Pennsylvania, recently considered declaratory judgment-defendant Nuseed Americas Inc.’s motion to dismiss for lack of subject matter jurisdiction. BASF Plant Science LP v. Nuseed Americas Inc., No. 17-421 (D. Del. Aug. 17, 2017). The motion presented the issue of the scope of authority given to agents authorized by a patent owner to negotiate terms of a license agreement with a potential infringer. Id. at 1. In other words:
When, as here, we address an apparent impetuous impasse in patent license negotiations between a potential infringer and a company negotiating on the patent owner’s behalf, we must scrutinize whether there is a real and immediate threat of a patent infringement action by the named defendant against the potential infringer. If not, we lack subject matter jurisdiction and must enter the accompanying Order dismissing the declaratory judgment action against the agent defendant mindful the potential infringer may seek a declaration from a court with personal jurisdiction over the patent owner or another party with the legal right to sue it for infringement.
Id. Judge Kearney determined that dismissal was warranted because BASF sued the agent with whom it was negotiating, but did not join the patent owners. Id. at 8-10. “We appreciate BASF’s immediate attempt to seek declaratory relief against the agent with whom it negotiated. But the agent presented no real and imminent threat of suing BASF for patent infringement.” Id. at 10.
In Prowire LLC v. Apple, Inc., C.A. No. 17-223-MAK (D. Del. Aug. 9, 2017), Judge Mark A. Kearney denied Defendant’s motion to dismiss based on allegedly insufficient allegations of infringement as well as is motion to dismiss for improper venue, where Defendant argued that Plaintiff had not shown it has “regular and established place of business” in Delaware.
In finding Plaintiff’s complaint sufficient, the Court was guided by case law from this District holding that a complaint must provide sufficient information to allow the court to “determine plausibility and  defendant to respond to the complaint,” rejected the premise that the complaint must always be detailed, and declined to reach the question of whether a complaint must plead infringement of every element/limitation of a patent’s claim. Id. at 4-5. The Court also rejected Defendant’s argument that it should disregard allegations made “on information and belief.” Id. at 6-7.
As to venue, the Court’s opinion focused on the argument that Defendant had no regular and established place of business in Delaware. Defendant did “not dispute [Plaintiff’s] allegation it has a retail store in Delaware, it argues one retail store is not enough to establish a ‘permanent and continuous presence.’ We disagree; [Defendant’s] retail store is a permanent and continuous presence where it sells the alleged infringing technology to consumers on a daily basis. [Defendant] does not meet its burden of showing it does not have ‘a regular and established place of business’ in this District.” Id. at 9.
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.
Magistrate Judge Sherry R. Fallon recently considered plaintiff’s motion to compel defendants to cross-produce their Long Term Evolution (“LTE”) Licenses across the six related cases filed by plaintiff. Evolved Wireless, LLC v. Apple Inc., et al., No. 15-542-SLR-SRF, et al. (D. Del. July 26, 2017). The protective order in these cases permitted cross-production of defendants’ confidential information only with the express written consent of the defendants. Id. at 3. Plaintiff argued that the licenses were relevant to the related cases because they provide “industry data about the value of the LTE standard generally, as well as the value of individual patents essential to the standard.” Id. at 5. Defendants, on the other hand, argued that “broad, third-party portfolio license agreements are not relevant or proportional to the analysis of a FRAND royalty rate because they do not involve the same patents-in-suit, parties, or accused products.” Id. Judge Fallon agreed with defendants and denied the motion, finding that “the relevance of the LTE license agreements to the calculation of damages is not sufficiently proportional to the needs of the case, given the highly confidential nature of the LTE license agreements and the harm that could result from the dissemination of the license agreements.” Id. Moreover, “the license agreements sought by [plaintiff] do not cover the patents-in-suit or the accused products” and so, “provide little insight as to the value of the specific patents-in-suit in the present case to the LTE standard.” Id. at 5-6.
Judge Hillman, sitting by designation, recently considered plaintiff Evonik Degussa GmbH’s motion for permanent injunction filed following a jury trial after which the jury found in favor of Evonik and awarded damages for past infringement. Evonik Degussa GmbH v. Materia, Inc., No. 09-636-NLH-JS (Aug. 9, 2017). Judge Hillman found that, on balance, the four eBay factors supported an injunction, based on facts including:
- Defendant Materia and Evonik “are direct and primary competitors” for “olefin metathesis catalysts” in the “pharmceutical, oleochemical, fine chemical, and polymer industries.” Id. at 3, 6.
- Evonik has never licensed the patented technology to its competitors. Id. at 3, 6.
Chief Judge Leonard P. Stark recently considered the parties’ motions in limine in advance of the trial between Princeton Digital Image Corporation and intervenor Adobe Systems Inc. Princeton Digital Image Corproation v. Office Depot Inc., et al., No. 13-239-LPS (August 9, 2017). For example, Judge Stark denied Adobe’s MIL to preclude a Princeton witness from testifying “about his belief that images appearing on the websites of Adobe’s customers were dynamically generated ‘on the fly.'” Id. at 1. Judge Stark found that the testimony was admissible because Princeton did not seek to admit the testimony to prove that defendants’ websites “actually work in a particular way[,]” but offered the testimony to establish why Princeton “believed it had a viable infringement claim” and therefore did not breach a “covenant-not-to-sue in good faith[.]” Id. Judge Stark also denied Princeton’s MIL to exclude exhibits relating to settlement because Adobe offered the exhibits “to support its claim that [Princeton] breached the covenant-not-to sue by bring and maintaining suits against Defendants and did so in bad faith[.]” Id. 3.
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.