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Judge Sue L. Robinson recently ruled on a defendant’s motion to dismiss for lack of personal jurisdiction or, in the alternative, to transfer to the Western District of Washington.  Segway Inc., et al. v. Inventist, Inc., Civ. No. 15-808-SLR (D. Del. Apr. 25, 2016).  Judge Robinson found that the defendant was subject to personal jurisdiction in Delaware under the “stream-of-commerce” or “dual jurisdiction” framework because (1) the defendant operated a website (including an online store) that broadly promoted the sale of its accused product, including in Delaware (where plaintiff representatives made three online purchases); (2) the defendant’s accused product was available to customers in Delaware through third parties Amazon.com and Brookstone.com; and (3) the defendant’s accused product was advertised as being available through national retail chains that maintain stores in Delaware.  The Court found that these factors supported a finding of personal jurisdiction under the Delaware long-arm statute, and also a finding that an exercise of such jurisdiction would comport with due process.

With respect to the alternative motion to transfer the case to the Western District of Washington, Judge Robinson found that while Delaware was an appropriate forum under the Third Circuit’s Jumara standard, in this case transfer was warranted.  The Court explained, “[a]lthough defendant clearly has global aspirations, those aspirations are more reflected in its promotional materials than its physical or fiscal presence in Delaware.  At this moment, then, I am persuaded that defendant is accurately characterized as a regional enterprise for whom litigating in Delaware will impose an unreasonable burden.”

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Judge Robinson recently considered evidentiary disputes in advance of trial.  SRI Int’l Inc. v. Cisco Sys., Inc., C.A. No. 13-1534-SLR (D. Del. Apr. 22, 2016).  Among other things, Judge Robinson denied Cisco’s request for its expert to provide a supplemental opinion to rebut plaintiff’s expert’s infringement opinion on the “based on the analysis of network data” limitation.  In the Court’s view, such a request was an attempt to reargue claim construction.  Id. at ¶ 2.  Judge Robinson concluded that the request was based on Cisco’s expert’s failure to address plaintiff’s expert’s opinion in the alternative.  Id.  “Under the circumstances, I see no reason to allow Cisco to finally amend its position on the eve of trial with a supplemental expert report.  The issue should be one of claim construction for purposes of appeal.”  Id.

 

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In Walker Digital, LLC v. Google, Inc., C.A. No. 11-318-LPS (D. Del. Apr. 12, 2016), Chief Judge Leonard P. Stark considered Defendant’s Motion for Review Taxation of Costs, where it had requested over $80K but had been awarded less than $3K by the Clerk of Court.  Chief Judge Stark granted the motion, finding the award of costs for depositions, a technology tutorial, conversion to TIFF images in production, and obtaining hearing transcripts to be an appropriate exercise of the Court’s discretion.

As a threshold matter, the Court interpreted Local Rule 54.1 as allowing such a motion by the prevailing party in a case.  Plaintiff argued it was procedurally improper as Defendant was not “the opposing party” to receiving costs, but the Court explained that Defendant “is the aggreived party with respect to the portion of the Clerk’s taxation decision to which [Defendant] has filed its motion.  In this context, then, [Defendant] is ‘the opposing party’ with respect to the Clerk’s decision – even though [Defendant] is not, of course, ‘the opposing party’ with respect to [its] own Bill of Costs.”  Id. at 5.

Also included in the decision is Chief Judge Stark’s discussion of the importance of Markman technology tutorials.  Plaintiff had argued that Defendant’s costs related to the creation of its  technology tutorial were not appropriate because Defendant had not identified how the tutorials had aided the Court.  But Chief Judge Stark, in awarding the costs, observed that “[i]n almost every patent case, the undersigned judge requires the submission of technology tutorials as they aid this Court in understanding the technological context in which particular claim construction disputes must be resolved. In every case in which technology tutorials are ordered and submitted, the Court relies on them, just as it relies on the parties’ claim construction briefing.”  Id. at 10.

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Judge Noel L. Hillman of the United States District for the District of New Jersey, sitting by designation, recently granted Materia Inc.’s (“Materia”) motion to dismiss Evonik Degussa GmbH’s (“Evonik”) counterclaims for inequitable conduct. Evonik Degussa GmbH v. Materia, Inc., C.A. No. 09-636-NHL/JS (D. Del. Apr. 6, 2016). The Court had previously granted Evonik’s motion for partial summary judgment that it does not infringe Materia’s U.S. Patent No. 7,622,590 (“the ’590 Patent”). Id. at 1-2. Following the Court’s decision, Materia provided Evonik with a broad covenant not to sue (“CNS”) on the ’590 Patent. The parties agreed that the “the CNS moots Evonik’s counterclaim for invalidity.” Id. at 2. The specific question before the court was “whether following a partial summary judgment determination as to noninfringement, a CNS covering noninfringement, invalidity, and all future claims moots a counterclaim for inequitable conduct.” Id. at 3. After a review of the “evolving case law” on this topic, Judge Hillman concluded that “Materia’s CNS is sufficiently broad to remove any case or controversy regarding the ’590 Patent and therefore Evonik has failed to meet its burden of showing a substantial controversy exists as to the ’590 Patent.” Id. at 7. Judge Hillman agreed with Materia “that for all intents and purposes the CNS ‘kills the ’590 Patent vis-à-vis Evonik.’” Id. Accordingly, Judge Hillman dismissed the inequitable conduct counterclaims.

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Judge Sue L. Robinson recently ruled on a number of summary judgment and related pre-trial motions in SRI International, Inc. v. Cisco Systems, Inc., Civ. No. 13-1534-SLR (D. Del. Apr. 11, 2016).  Among other rulings, Judge Robinson denied the defendant’s motion for summary judgment of invalidity under 35 U.S.C. § 101, finding that the plaintiff’s patents, which “address the vulnerability of computer networks’ interoperability and sophisticated integration of technology to attack … are … more complex than ‘merely recit[ing] the performance of some business practice known from the pre-Internet world along with the requirement to perform it on the Internet,’ and are better understood as being ‘necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.'”  Id. at 12 (quoting DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014)).  The Court added that “[t]he claims as an ordered combination (in light of the specification) sufficiently delineate ‘how’ the method is performed to ‘improve the functioning of the computer itself,’ thereby providing an inventive concept.”  Id. at 13 (quoting Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S.Ct. 2347, 2354 (2014)).

Also of note, the Court denied the defendant’s motion for summary judgment of anticipation, explaining that “anticipation cannot be based on the multiple layers of supposition created by Cisco to construct its theory of anticipation[] and still meet the requirement that the claimed limitation be immediately apparent.  Although Cisco has attempted to package its anticipation argument in slightly different language than litigants have in prior litigation,[] teh argument fails as a matter of law.”  Id. at 20 (footnotes omitted).  The Court denied the defendant’s motion, and sua sponte entered summary judgment of no anticipation.  Id.

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Judge Sue L. Robinson recently denied defendants’ renewed motion to stay pending reexamination pending since September 14, 2012 and “with no predictable end in sight.”  Carrier Corporation v. Goodman Global, Inc., et al., No. 12-930-SLR (D. Del. Apr. 11, 2016).  In denying the motion, Judge Robinson noted: “Given that it was defendants’ choice to opt for inter partes reexamination rather than inter partes review (available as of September 17, 2012), I see no reason to revisit my prior decision to conclude the litigation.”  Id.  at 1.  Judge Robinson previously granted defendants’ motion for a new trial because of improper statements made by plaintiff’s counsel during closing argument.  For the upcoming new trial, Judge Robinson declined to revisit the Court’s original decision to bifurcate willfulness and damages, noting that “this case is the poster child for bifurcation in terms of the complexity (created by the parties) of the liability issues[.]”  Id. at 2.

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The agenda for the District of Delaware 2016 Bench and Bar Conference has been released and is available below. To register for the conference, please visit this link. To reserve a hotel room at the discounted conference rate, please visit this link. We hope to see you on May 19 and 20!

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In Sunpower Corporation v. PanelClaw, Inc., C.A. No. 12-1633-MPT (D. Del. Apr. 1, 2016), the parties had stipulated to Defendant’s filing of an early motion for summary judgment on limited issues. Id. at 2. To that end, Defendant moved for summary judgment of non-infringement on one patent and invalidity of another patent under Section 112 and/or Section 101. Chief Magistrate Judge Mary Pat Thynge granted the motion as to non-infringement, but denied the motion as to invalidity.

Defendant based its non-infringement defense on the PTAB’s construction of a certain term during the inter partes review. As this patent was expired, the PTAB did not adopt the broadest reasonable construction, instead applying a standard of review similar to that of district courts. Id. at 9-10. The Court found the PTAB’s construction “well-reasoned and persuasive” and adopted it, see id. at 13-14, and then concluded that Defendant’s accused products did not infringe one of the asserted patents, rejecting Plaintiff’s position that it was too early in the case to determine infringement where Defendant’s evidence of non-infringement was taken from Plaintiff’s own infringement contentions. See id. at 15.

Defendant also argued that the second patent-in-suit was invalid as indefinite, citing “certain statements and conclusion the PTAB made [regarding anticipation] in its [] IPR decision, and the testimony of [Plaintiff’s] expert . . . as part of that IPR.” Id. at 17. But the Court agreed that Defendant had not met its burden based on the current record, noting that it was not bound by the PTAB’s discussion and that another district court had successfully construed the portion of the claim that Defendant argued was indefinite. Id. at 19-20. As to Defendant’s enablement, written description and/or inoperability, the Court concluded that its “conclusory” attorney arguments were insufficient. See id. at 24-25.

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In Research Frontiers Incorporated v. E Ink Corporation, et al., C.A. No. 13-1231-LPS (D. Del. Mar. 31, 2016), Magistrate Judge Christopher J. Burke recommended that Defendants’ early motion for partial summary judgment be denied. Defendants argued the asserted claims were anticipated and further contended that Plaintiff’s “own statements regarding [the alleged anticipatory reference], which appear in one of [Plaintiff’s] own European patents, prevent [Plaintiff] from raising a genuine issue of material fact regarding anticipation[.]” Id. at 8. Specifically, Defendants argued that Plaintiff was precluded from arguing that this reference (“the Tada reference”) was not enabling. See id. at 14.

The Court first rejected that the statements by Plaintiff “amount[ed] to a clear concession . . . that Tada is enabling.” Id. at 13-14.  While the statements did “contain unqualified language about what Tada ‘explicitly discloses,’” id. at 15, after reviewing the statements in context – namely, within a “well-developed record of the prosecution” of another patent, the Court concluded that the statements were not necessarily equivalent to an admission that the reference was enabling. See id. at 15-17.

The Court then substantively evaluated whether this reference was enabled such that it could anticipate the asserted claims, but found issues of material fact to remain on this point. Among other things, the Court observed that it was “given pause at the prospect of granting Defendants’ Motion, in significant part because their positions as to enablement are supported by no proffered expert testimony. Instead, they consist of arguments made by Defendants’ attorneys (albeit arguments that cite case law or to portions of the record). With subject matter as complex as that at issue here, it is difficult for the Court, at the summary judgment stage, to recommend that the stated opinion of [Plaintiff’s] expert (that the reference it nonenabling) be overridden based on the argument of a lawyer (who concludes otherwise.” Id. at 23-24 (emphasis in original).

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Judge Christopher J. Burke recently considered defendants’ motion to stay pending IPR of plaintiffs’ patent claiming a “Method for Producing a Drill Assistance Device for a Tooth Implant.”  Sirona Dental Systems GmbH, et al. v. Dental Wings Inc., et al., C.A. No. 14-460-LPS-CJB, C.A. No. 14-540-LPS-CJB, C.A. No. 15-278-LPS-CJB (D. Del. Mar. 22, 2016).  In granting the motion, Judge Burke reviewed the three factors related to whether a stay is appropriate.  Regarding simplification of the issues, Judge Burke noted that significant simplification was possible because the PTAB granted the IPR petitions with respect to all of the claims of the patent-in-suit.  Id. at 9.  If any claims remain following PTAB review, the statutory estoppel requirement would greatly narrow the invalidity issues before this Court.  Id. at 10.  Regarding case status, Judge Burke noted that similar motions to stay in this District have been granted where, like here, the case is in its early stages.  Id. at 13-14.  Finally, with regard to prejudice to the non-moving party, Judge Burke noted that because defendants filed the IPR petitions before the statutory deadline, it would be “hard for the Court to conclude” that doing so “speaks to sharp practice.”  Id. at 16.  Judge Burke noted, however, that it was more concerning that defendants waited six months to seek a stay.  Id.  But, defendants did move for stay within a month of the PTAB’s decision to institute review, and “[t]he Court has recently noted that it has ‘become less and less sure about the merit of granting a stay in favor of an IPR proceeding, when the PTAB has not even weighed in on whether to institute review.'”  Id.  Judge Burke also noted that the status of the IPR proceedings weighed in favor of stay because the PTAB will issue written decisions well before this case was scheduled for trial.  Id. at 19.  In all, the requisite factors weighed in favor of stay, despite the fact that plaintiffs could face some competitive injury.

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