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Chief Judge Leonard P. Stark recently ruled on Daubert motions in Greatbatch Ltd. v. AVX Corp., C.A. No. 13-723-LPS (D. Del. July 20, 2017).  Of note, the Court granted a Daubert motion to preclude an expert from testifying “that ‘no reasonable metallurgist’ would relay on certain data,” explaining that such testimony would “improperly usurp[] the Court’s gatekeeping function of determining reasonable reliance.”

The Court also granted-in-part a motion to preclude a plaintiff expert from testifying as to the defendant-employees’ state of mind and intent, explaining that “[s]uch statements are improper legal conclusions based on unscientific interpretation.”  The same expert also was precluded from offering an opinion that the defendant’s earlier products (as well as its current products) infringe, because the expert “offers no analysis to support this opinion and, to the contrary, acknowledged the difference the [earlier] primer could have.”

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In advance of the pre-trial conference in Greatbatch Ltd. v. AVX Corporation, et al., C.A. No. 13-723-LPS, and in addition to resolving a number of rulings regarding disputes over the pre-trial order and trial logistics, Chief Judge Leonard P. Stark ruled on the parties’ motions in limine.  Greatbatch Ltd. v. AVX Corporation, et al., C.A. No. 13-723-LPS (D. Del. July 20, 2017).  The Court first granted Plaintiff’s motion to preclude Defendants from presenting the testimony of a certain witness by deposition.  This witness had been deposed by Plaintiff, but prior to trial Defendants had terminated the relationship with the witness, he was unavailable, and Defendants never had an opportunity to question the witness as to the circumstances of his termination, “which appears to have been related to conduct that may be probative of issues that are the subject of the forthcoming trial.” Id. at 3-4.  To allow the deposition testimony “would leave [Plaintiff] with no fair opportunity to allow the jury to evaluate [his] credibility.” Id. at 4.

The Court granted Defendants’ motion to preclude “evidence or argument concerning indemnification or damages” because damages and indirect infringement were not at issue in the upcoming trial, and the evidence’s minimal probative value was thus outweighed by the risk of juror confusion and unfair prejudice. Id. at 6.  The Court also granted Defendants’ motion to preclude evidence or argument of “infringement or copying of patents or by product not at issue at the forthcoming trial, concluding that “[s]uch evidence is not relevant [infringement]. There is no need for the jury to learn of the fact that the 2016 trial occurred nor its outcome. Even were there some relevance to the evidence at issue in this motion, it would be substantially outweighed by the risk of unfair prejudice to [Defendants], particularly as it would create the possibility of the August 2017 jury deferring to the conclusion of the January 2016 jury that AVX is an infringer, and of confusing the jury.” Id. at 6-7.  On the other hand, the Court would later consider Plaintiff’s arguments for why the same evidence should be admitted during the willfulness portion of the trial, should that phase be necessary. Id. at 7 n.5.

The Court also denied several of the parties’ motions to preclude evidence that it concluded was relevant to infringement, finding that the evidence’s probative value was not outweighed by the potential for prejudice or juror confusion. See id. at 5-7.

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In John H. Stephenson v. Game Show Network, LLC, et al., C.A. No. 12-614-SLR (D. Del. July 11, 2017), Judge Sue L. Robinson denied Defendants’ motion requesting an exceptional case finding and for attorneys’ fees. Defendants essentially argued the case was exceptional due to Plaintiff’s litigation conduct where Defendants’ “initial evaluation of the [patent-in-suit] as invalid was ultimately determined to be correct by the PTAB.” Id. at 4. But the Court found the case and the conduct of Plaintiff to be typical among patent cases. Id. at 5. In fact, it was Defendants who had “filed every motion on the docket.” Id. In sum, “[t]he fact that defendants maintained from the outset that the [patent-in-suit] was invalid does not change this modest case into an exceptional one.” Id.

John H. Stephenson v. Game Show Network, LLC, et al., C.A. No. 12-614-SLR (D. Del. July 11, 2017)

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Nespresso USA file a declaratory judgment complaint against Ethical Coffee Company requesting judgment that Nespresso does not infringement ECC’s patent.  Nespresso USA, Inc. v. Ethical Coffee Company SA, No. 16-194-GMS (D. Del. July 13, 2017).  In response, ECC filed a counterclaim against Nespresso, as well as three additional defendants which are Switzerland corporations.  The Swiss Defendants moved to dismiss for lack of personal jurisdiction.   Judge Sleet granted the motion.  In doing so, Judge Sleet found that general jurisdiction was not present because “there [were] no ties between the companies and Delaware that render them essentially at home in this state[.]”  Id. at 5.  Regarding specific jurisdiction, Judge Sleet found that the Swiss Defendants were not subject to personal jurisdiction under the stream of commerce theory because they did not “did not introduce the Nespresso machines into the stream of commerce,” therefore ECC could not demonstrate that they “placed–or otherwise influenced the placement of–the Nespresso machines into either the United States market generally or the Delaware market specifically.”  Id. at 6-7.  Nor could the Swiss Defendants be held responsible for the actions of their subsidiary, Nespresso, because the mere ownership of a subsidiary or a patent, without more, does not justify the assertion of personal jurisdiction on the parent/foreign patentee. Id.at 7.  Judge Sleet also found a lack of evidence to support personal jurisdiction under an agency theory.  Id.at 8-9.  Because of the “bare assertions” in this case, Judge Sleet denied ECC’s request for jurisdictional discovery.  Id. at 14.

Nespresso USA, Inc. v. Ethical Coffee Company SA, No. 16-194-GMS

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Judge Robinson recently denied a motion to dismiss under Section 101, finding that the invention in question was not directed to an abstract idea. The claim in question, claim 17 of U.S. Patent No. 7,058,524, reads as follows:

A method of measuring power consumption information on a power line comprising:
measuring current fluctuations in the power line;
calculating power consumption information from the current fluctuations in a processor;
converting the power consumption information into IP-based power consumption information in the processor; and
transmitting the IP-based power consumption information from the processor to a destination autonomously in IP format over an external power line network.

The defendant advanced several arguments that each aspect of this claim was directed to an abstract idea of “measuring and transmitting power consumption information that has been performed for years by human meter readers” and “measure[ing] and transmit[ting] power consumption information using admittedly conventional technologies.” Specifically, the defendant argued that “(1) the steps of claim 17 ‘do not involve any scientific or technical innovation, but merely recite a way of measuring and transmitting power consumption information;’ (2) ‘[p]ower utility companies have measured power consumption information for decades using human meter readers;’ [and] (3) ‘the specification expressly acknowledges that the claimed invention could be performed by a meter-reading human’ which is ‘an indication that the claimed invention is directed to an abstract idea.’” Smart Meter Techs. Inc. v. Duke Energy Corp., C.A. No. 16-208-SLR, Memo. Or. at 4-8 (D. Del. July 11, 2017). Judge Robinson rejected these arguments, finding that the specification supports a broader reading of the claim than these characterizations that includes a number of embodiments and possible benefits of the invention, only one of which is replacing human meter readers, and “a claim is not ‘directed to’ a specific embodiment when multiple embodiments are potentially covered by the claim limitations.” Id. at 8-9.

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Judge Robinson has issued an order denying a motion for preliminary injunction in a case under the Patent Act, the Defend Trade Secrets Act, and Delaware state law. The case involves a dispute over “hair styling products in the newly-created ‘bond builder’ market category.” The Plaintiffs developed this product and “revenues quickly grew to the tens of millions of dollars.” Defendant L’Oréal then expressed interested in purchasing Plaintiff Olaplex, but eventually withdrew that interest and launched competing products. Plaintiffs brought suit alleging that L’Oréal’s new products infringe the patent-in-suit. Liqwd, Inc., et al. v. L’Oréal USA, Inc., et al., C.A. No. 17-14-SLR, Memo. Or. at 2-3 (D. Del. July 6, 2017).

Addressing possible irreparable harm, Judge Robinson concluded, crediting the testimony of Plaintiffs’ expert over that of Defendants’ expert, that “defendants are [Plaintiff] Olaplex’s direct competitor in what is a two-player national market. . . . [t]he record shows that Olaplex will continue to face price pressures and declining revenues based upon competition by the accused products. . . . As the ‘bond builder’ market category is new and growing, it is likely that plaintiffs will be harmed by direct competition in their primary market. . . . Therefore, irreparable harm weighs in favor of plaintiffs.” Id. at 13-14. Judge Robinson also concluded that the balance of equities favored Plaintiffs, considering that “Olaplex is a one-product company focused on a specific market category from which it derives all of its revenues [while] Defendants are elements of a multinational corporate entity, and the accused products account for a small percentage of revenues.” Id. at 14.

Addressing the likelihood of success injunction factor, on the other hand, Judge Robinson concluded that “[w]ere the court inclined to accept plaintiffs’ contention that applicant acted as its own lexicographer, the court would most likely conclude that claim 1 is indefinite.” Id. at 3-8. Judge Robinson concluded that the Plaintiffs had not demonstrated a likelihood of success in proving infringement due to possible indefiniteness and because “the specification does not support the meaning plaintiffs now assert” under plain and ordinary meaning or the patentee’s lexicon. Moreover, Plaintiffs did not satisfy the knowledge prong of providing induced infringement. Id. at 9-10. Because “plaintiffs have not demonstrated a likelihood of success on the merits with respect to induced patent infringement . . . the public interest [factor also] weighs against an injunction.” Id. at 14. The Defendants, however, did not demonstrate a likelihood of prevailing on invalidity. Id. at 10-12. For these reasons, Judge Robinson declined to issue a preliminary injunction.

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Judge Richard G. Andrews recently considered motions in limine filed in advance of the bench trial in Novartis Pharmaceuticals Corporation v. West-Ward Pharmaceuticals International Limited, No. 15-474-RGA (D. Del. Jun. 30, 2017).  Plaintiffs moved to exclude certain “points” of Defendant’s invalidity experts disclosed during deposition.  Judge Andrews ordered that  Plaintiffs could serve limited reports responding to those points and then Defendants could serve limited reports in reply.  Id. at 1-2.  Judge Andrews denied Defendant’s motion in limine seeking to limit Plaintiffs’ expert’s testimony on “unexpected results” because it was conclusory.  “If the testimony turns out to be conclusory, it will carry no weight in the final analysis; but, whether it is conclusory is something I will better understand after hearing it.”  Id.at 2.  Defendant also sought to preclude “Plaintiffs from responding to Defendant’s obviousness arguments with what it calls ‘post art,’ that is, art which is after the relevant dates . . . for considering the state of the art for obviousness analysis.”  Id. at 2-3.  Judge Andrews denied the motion noting that while “post art” has limitations, it is possible that it may be offered for a purpose that is relevant and appropriate, such as “to show circumstantially what was know or unknown earlier[.]”  Id.at 3.

Novartis v. West-Ward, No. 15-474-RGA (D. Del. Jun. 30, 2017)

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In a series of related actions brought by Enzo Life Sciences, Chief Judge Leonard P. Stark denied all Defendants’ motion for summary judgment of invalidity of the patent-in-suit for lack of written description, but granted certain Defendants’ motion for summary judgment of invalidity of that patent for nonenablement. The patent-in-suit related to nucleic acid hybridization technology involving non-porous solid supports. E.g., Enzo Life Sciences, Inc. v. Gen-Probe Incorporated, C.A. No. 12-104-LPS (D. Del. June 28, 2018).

As to the written description motion, the Court found that genuine disputes of material fact existed that precluded summary judgment. See id. at 8, 10. But as to nonenablement, the Court concluded that the patent was invalid. Defendants argued that the specification lacked “any meaningful disclosure . . . on how to make and use the vast number of phosphate-labeled polynucleotides covered by the asserted claims.” Id. at 11 (alteration in original) (citations and quotation marks omitted). Observing that the claims were “extremely broad,” the Court agreed that the patent was nonenabling, agreeing with Defendants’ comparison to Federal Circuit authority. See id. at 14-17.

E.g., Enzo Life Sciences, Inc. v. Gen-Probe Incorporated, C.A. No. 12-104-LPS (D. Del. June 28, 2018)

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In Omeros Corporation v. Par Sterile Products, LLC, et al., C.A. No. 15-773-RGA (D. Del. June 22, 2017) (“June 22 Order”), Judge Richard G. Andrews considered several of Plaintiff’s motions in limine in advance of the pre-trial conference and, following the conference, issued a subsequent ruling on one of the motions.  C.A. No. 15-773-RGA (D. Del. June 29, 2017) (“June 29 Order”).

The Court granted-in-part a motion to exclude expert testimony regarding EPO practices. The Court observed that the expert’s potential “minimal knowledge about how the EPO posts and indexes documents, his testimony about how the EPO works, including when and how filings with it become public, could possibly be helpful.” June 22 Order at 1.  But the Court granted the motion to exclude testimony “about whether and when EPO filings in general become prior art, and whether the particular EPO filing in this case is prior art, [as this] is a legal question that [the Court] will decide, and his opinion on that would not be helpful.” Id.

The Court deferred decision on Plaintiff’s motion to exclude an SEC document filed by Plaintiff that contained statements Defendants wished to use as prior art, observing that “neither party’s papers cited any cases dealing with an analogous situation, that is, relevant art discussion cleverly concealed in an irrelevant document from a completely unrelated field of endeavor. . . . before making a final ruling on this, [the Court would] give each side [leave] to file a supplemental letter with any results of a search for cases with closer facts to those presented here.” Id. at 2.  In the subsequent ruling, the Court declined to exclude the document, noting that “Defendants cited two cases . . . that seem . . . to support their position. If a press release can be prior art, see In re Morsa, 713 F .3d 104, 109 (Fed. Cir. 2013), why not a SEC filing? While the Federal Circuit has not addressed the question, the District Court for the District of New Jersey accepted, over objection, an Annual Report filed with the SEC as prior art.”  June 29 Order at 1.

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Judge Robinson recently considered the parties’ briefing in connection with submission of the final judgment, staying defendant’s declaratory judgment claim of non-infringement for the remaining claim at issue pending appeal.  Quest Integrity USA, LLC v. Cokebusters USA Inc., No. 14-1483-SLR (D. Del. Jun. 30, 2017).  Judge Robinson previously denied defendants’ motions for summary judgment as to invalidity and non-infringement, but upon a motion for reconsideration, granted defendant’s motion as to invalidity.  Id.at 1-2.  At the pretrial conference, the parties indicated they preferred not to go to trial on the remaining issues, instead appealing the Court’s summary judgment rulings, but the parties could not agree to a form of judgment.  Id.at 2-3.  Judge Robinson bifurcated and stayed non-infringement of the remaining claim at issue, but indicated that the appeal should include non-infringement of the other claim (as well as invalidity).  Id. at 3-4.  Judge Robinson ordered the parties to submit a final judgment consistent with those rulings.

Quest Integrity USA, LLC v. Cokebusters USA Inc., No. 14-1483-SLR (D. Del. June 30, 2017)

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