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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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Judge Richard G. Andrews recently granted summary judgment of non-infringement and invalidity relating to a patent claiming a system for locating and identifying portable devices using ultrasonic base stations.  Centrak, Inc. v. Sonitor Technologies, Inc., C.A. No. 14-183-RGA (D. Del. Aug. 30, 2017).  The plaintiff’s infringement theory was based on the defendant’s “making and using” a system covered by U.S. Patent No. 8,604,909, in this case by “installing” the system at customer hospitals.  Judge Andrews found, however, that while the defendant was involved in the installation in various ways (e.g., evaluating the appropriate system to install based on the customer hospital’s layout, providing the customer hospital with network infrastructure requirements, and working with the hospital customer, post-installation, to troubleshoot the system), there was no evidence in the record that “Defendant makes the system.  The testimony cited indicates that Defendant does not itself install the system.  Furthermore, Plaintiff has not provided any evidence of contracts entered into between Defendant and third party installers that would indicate that the installation is done at Defendant’s direction or behest.”  The plaintiff next argued that even if the defendant does not actually install the system, “the customer’s actions in making the claimed invention are attributable to” the defendant.  Id. at 10.  Judge Andrews rejected this argument, explaining that the Federal Circuit’s Centillion decision “is still good law and applies to the system claims in this case.  Plaintiff must prove that Defendant makes or uses the entire system, including all claimed elements, in order to prove infringement.  Id. at 11.  While the troubleshooting allegations could give rise to a “use” infringement claim, Judge Andrews found that the vague record evidence relating to the troubleshooting did not demonstrate that the entire system was “used” during testing.

Judge Andrews also found that all asserted claims of the ‘909 patent were invalid for failure to satisfy the written description requirement.  The specification disclosed radio frequency and infrared base stations, but only “contemplated” ultrasonic base stations.  Judge Andrews explained that “[m]ere contemplation . . . is not sufficient to meet the written description requirement. . . . [I]t seems clear to me that electromagnetic radiation and sound waves are not simply two species of the same genus; rather these are two completely different types of phenomena.”  Id. at 15.  The Court agreed with the defendant that the practical difference between using ultrasonic base stations instead of infrared base stations is substantial, and therefore the patent failed to provide written description support for the use of the former.  Id. at 15-16.

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In this litigation involving implantable power-injectable port products, Judge Fallon addressed several motions to compel, primarily brought by the Defendant. Judge Fallon first ruled that Plaintiff Bard need not produce “documentation of Bard’s Vortex power injection testing” because Bard had already produced all documents regarding testing of Vortex port products and the documents sought do not exist. Because Judge Fallon found the evidence cited “fails to affirmatively establish that Bard possesses [such] documentation,” “Bard cannot be compelled to produce that which it does not have [but to] the extent that Bard’s representations prove to be inaccurate in the future, the court may take appropriate action at that time.” C.R. Bard, Inc., et al. v. Angiodynamics, Inc., C.A. No. 15-218-SLR-SRF, Memo. Or. at 4-5 (D. Del. July 31, 2017). Based on similar reasoning, Judge Fallon denied in part a request to produce documents related to a merger between Bard and a third party that Bard represented never existed: Her Honor granted the request with respect to the merger agreement and documents exchanged during merger negotiations, but denied it with respect to documents which were subject to the common interest privilege between the parties to the merger. Id. at 11-13.

Judge Fallon next addressed a motion to compel Bard to produce documents and prepare a 30(b)(6) witness regarding an interference proceeding over whether claims in a non-asserted patent could properly claim priority to an earlier application. The defendant argued that this application was relevant both because it was incorporated by reference in the patents-in-suit and because the plaintiff had relied on the application during claim construction. Judge Fallon denied the request to produce documents because Bard had “consistently represented that it produced all non-privileged documents responsive” to that request and because it was “not apparent from the current record that a privilege log [which Bard did not produce] would advance AngioDynamics’ discovery efforts on this subject in a manner proportional to the needs of the case.” Judge Fallon granted, however, the request for a 30(b)(6) witness on this topic. Id. at 5-9.

Judge Fallon also denied a motion to compel Bard to produce nondisclosure agreements related to “pre-launch market survey activities for Bard’s PowerPort products” because Bard had already produced some such NDAs, was continuing to search for similar NDAs, and had not suggested that it planned to withhold the requested NDAs. Id. at 5. And Her Honor granted a motion to compel Bard to produce foreign regulatory filings “including applications and correspondence regarding the structure, function, and operation of Bard’s products to rebut the testimony of certain Bard witnesses who allegedly attempted to disavow the accuracy of Bard’s FDA submissions.” Id. at 9-11.

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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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Plaintiff Ethicon filed a motion for limited expedited discovery, stating that it “intends to file a preliminary injunction motion against [defendant] Intuitive’s . . . products, but it first needs a limited set of materials to confirm infringement” by products which are not yet sold publicly, but which Ethicon believed were about to be commercially launched. Ethicon LLC, et al. v. Intuitive Surgical, Inc., et al., C.A. No. 17-871-LPS-CJB, Memo. Or. at 1-2 (D. Del. Aug. 16, 2017). Magistrate Judge Christopher Burke denied the motion, noting that no answer or Rule 12 motion had been filed, no motion for preliminary injunction had been filed, and “the majority of courts have held [that failure to file a motion for preliminary injunction] weigh[s] against allowing [a] plaintiff’s motion for expedited discovery.” Id. at 3. Moreover, although the requested discovery may be helpful in proving likelihood of success and causal nexus when Ethicon does file a motion for preliminary injunction, “normally, a party that accuses another of patent infringement is first required to articulate a basis for such allegations in a pleading–without getting the prior opportunity to force access to its opponent’s confidential documents, all in order to ‘confirm’ whether its assertions are well-founded,” which would cause prejudice to defendant Intuitive. Id. at 5-6.

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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.

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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 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.

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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.

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