Judge Richard G. Andrews recently stayed two cases pending inter partes review. MiiCs & Partners Am. Inc. v. Toshiba Corp., et al., C.A. Nos. 14-803-RGA, 14-804-RGA (D. Del. Aug. 11, 2015). Judge Andrews found that inter partes review “has the potential to simplify the issues for trial . . . the law of probabilities makes it almost certain that the PTAB will grant at least some of the petitions, and that some of the claims will eventually be rejected or modified, and others of them, even if neither rejected nor modified, will garner additional prosecution history that may be relevant to claim construction.” Id. at 2. The Court added that the case was still relatively early in the schedule, with no depositions yet conducted, and expert discovery a long way off. Finally, the plaintiffs were non-practicing entities, such that “[i]t does not appear that they will suffer any undue prejudice if the motion is granted.” Id. at 3. Overall, the Court found that “this seems pretty close to the classic case for granting a stay pending inter partes review.” Id.
In a recent opinion, Judge Richard G. Andrews granted defendants’ motion to dismiss plaintiff’s claims of direct and indirect infringement. M2M Solutions LLC v. Telit Communication, C.A. No. 14-1103-RGA (D. Del. Aug. 5, 2015). As to plaintiff’s allegations of direct infringement, Judge Andrews observed that plaintiff’s decision to lump two defendants together in addressing its direct infringement claim cannot pass muster under Form 18, which also requires the identification of the accused product, process or method for each defendant. Indeed, Plaintiff’s complaint does not identify which particular defendant or defendants are responsible for which allegedly infringing products, process or method.” Id. at 6. Plaintiff argued that it was appropriate to group “Telit UK and Telit US under an umbrella term” based on “Telit UK’s public representations suggesting its actual control over Telit US.” Id. Judge Andrews found, however, that although “Plaintiff allege[d] the existence of a parent-subsidiary relationship” it failed to “present facts that demonstrate the parent’s effective control over the subsidiary.” Id. at 7.
As to inducement, Judge Andrews found that plaintiff failed to sufficiently plead knowledge that the infringer’s acts constituted infringement. Specifically, plaintiff asserted in its complaint that “[u]pon information and belief, Telit has performed the acts that constitute inducement of infringement with the knowledge or willful blindness that the acts induced thereby would constitute direct infringement by its customers.” Id. at 8. Judge Andrews reasoned that plaintiff’s assertion was based “on no factual allegations [and therefore] cannot pass muster under the plausibility standards.” Id. Further, Judge Andrews also found that plaintiff failed to sufficiently plead a “specific intent to infringe” because it “fus[ed] the two Defendants as one.” Id. at 9. Specifically, Judge Andrews explained that when articulating inducement allegations, plaintiff has to identify “which particular Defendant or Defendants are said to have disseminated the training or instructional materials at issue.” Id. at 10. Judge Andrews also dismissed plaintiff’s contributory infringement claim because plaintiff “lump[ed]” the defendants together, and because “[t]he contributory infringement claim [was] factually too conclusory to state a claim.” Id. at 10 & n.5, 11.
Judge Richard G. Andrews recently granted a motion for judgment on the pleadings that seven asserted patents claimed subject matter that is not patent-eligible under 35 U.S.C. § 101. Personalized Media Commc’ns, LLC v. Amazon.com, Inc., et al., C.A. No. 13-1608-RGA (D. Del. Aug. 10, 2015). Each of the patents was directed generally to “the use of control and information signals embedded in electronic media content to generate output for display that is personalized and relevant to a user.” Judge Andrews found that the patents were not patent-eligible under § 101, because they claimed, respectively, the abstract ideas of: “using personal information to create a customized presentation,” “updating operating instructions,” “decryption,” “completing partial instructions,” “promoting programming,” “receiving instructions for ordering,” and “providing personalized recommendations.”
Judge Robinson recently granted a motion to dismiss a Hatch-Waxman case for lack of personal jurisdiction because the defendant had almost no connection to Delaware. Although Defendant currently conducts drug and business development only in Massachusetts and New York and is incorporated in Virginia, Plaintiff “point[ed] to [Defendant’s] long-standing former incorporation in the State of Delaware . . . from 2002 to 2014” in support of jurisdiction. Purdue Pharma L.P., et al. v. Collegium Pharm., Inc., C.A. No. 15-260-SLR, Memo. Op. at 7-8 (D. Del. Aug. 6, 2015). Recognizing that “the traditional grounds for exercising general jurisdiction over drug company defendants in Hatch-Waxman litigation have been narrowed” recently, Judge Robinson granted the motion to dismiss because there was no general jurisdiction: “[Defendant] is not currently incorporated in Delaware, nor is Delaware its principal place of business.” Id. at 8-9. Further, “the grounds for establishing specific jurisdiction asserted at bar are not compelling . . . . [Defendant] did not send its Paragraph IV Notice Letter to [Plaintiff] in Delaware; [Defendant] is not registered to do business in Delaware; [Plaintiff] did not prepare its NDA in Delaware. Although [Defendant] worked with a Delaware corporation to conduct clinical trials for its NDA submission, there is no indication of record that the trials themselves took place in Delaware. Likewise, although oxycodone, the API used in [Defendant’s proposed] product, is manufactured in Wilmington, Delaware . . . oxycodone is a basic API that is the subject of numerous patents and is commercially available in at least two dosage forms. Even if such a contact were held to satisfy Delaware’s long-arm statute, the court concludes that it would not pass constitutional muster.” Id. at 10.
Having found that the Court lacked jurisdiction, Judge Robinson next had to decide between transfer to the Southern District of New York, where Defendant had consented to jurisdiction and favored transfer, and the District of Massachusetts, where Plaintiff had filed a “back-up action” and favored: “There is no doubt that jurisdiction can be exercised over [Defendant] in Massachusetts, where [Defendant] continues to be headquartered and to engage in drug and business development and investment activities. . . . [A] straightforward venue like Massachusetts is the most reasonable solution to the parties’ dispute in this regard.” Id. at 11-12.
Judge Richard G. Andrews recently considered Defendant Micron Technology Inc.’s motion to exclude plaintiff Semcon Tech LLC’s damages expert who estimated a reasonable royalty “for a method claim for a manufacturing process.” Semcon Tech LLC v. Micron Technology Inc., C.A. No. 12-532-RGA (D. Del. Aug. 5, 2015). Judge Andrews determined that he could not determine “based on the briefing” whether the expert’s methodology was sound or “whether his estimates include any required effort at apportionment.” Id. at 1. Therefore, Judge Andrews scheduled a Daubert hearing at which the expert would testify “subject to cross-examination.” Id. Judge Andrews also requested Micron advise the Court if it intended to provide an alternative theory of an appropriate reasonable royalty and to submit a letter explaining such theory. Id. at 2.
Chief Judge Leonard P. Stark recently granted a plaintiff’s request for an order compelling supplemental responses to contention interrogatories relating to the plaintiff’s license agreements with non-party patentees. Intel Corp. v. Future Link Sys., LLC, C.A. No. 14-377-LPS (D. Del. Aug. 5, 2015). The Court noted that the defendant spent “the vast majority of its preliminary responsive contentions to complain about Plaintiff’s allegedly deficient document production and discovery responses[,]” but explained that “Defendant ‘may not avoid its obligations under the Court’s schedule by arguing, generically, that Intel has not “met its burden” to prove it is licensed . . . . [Defendant] needs to explain why.’” Id. at 2 (emphasis in original ). The Court also rejected the Defendant’s argument that Intel’s license claim “is not suitable for early summary judgment. On the contrary, Plaintiff has identified specific license provisions, products, and arguments for why it thinks five of the patents-in-suit are licensed. . . . Certain of the issues likely to be presented on summary judgment – for example, the applicability of certain license provisions to the five patents-in-suit – are questions of law (contract interpretation).” Id. at 3.
In a recent Memorandum Order, Judge Richard G. Andrews denied plaintiffs’ motion for reargument as to the court’s order severing defendant Nokia Corporation for a separate trial. Interdigital Communications, Inc. v. Nokia Corp., C.A. No. 13-10-RGA (D. Del. Jul. 29, 2015). Judge Andrews noted that plaintiffs requested reargument on the ground that the court’s decision to sever was “sua sponte and there was no opportunity for briefing.” Id. at 2. Judge Andrews explained, however, that “Nokia Corporation no longer makes or imports the accused products,” and that there is “no relief [the court] could grant against Nokia Corporation.” Id. Further, Judge Andrews pointed to the fact “there is a significant likelihood of juror confusion between Nokia, Inc. and Nokia Corporation.” Id. Finally, Judge Andrews noted that “Nokia Corporation’s presence would serve only to confuse the jury and potentially result in multiple opening arguments and examinations.” Id.
In a recent Order, Judge Gregory M. Sleet granted defendants’ motion for leave to amend its answer to include allegations that the asserted patents are unenforceable due to inequitable conduct. Lifeport Sciences LLC v. Endologix, Inc., C.A. No. 12-1791-GMS (D. Del. Jul. 29, 2015). Judge Sleet noted that plaintiff opposed the amendment on the grounds that “defendant unduly delayed in filing the motion” and that “it would [be] prejudiced if the court were to allow the amendment at this stage of litigation.” Id. at 1. Judge Sleet rejected plaintiff’s arguments, explaining that “the parties specifically built into their scheduling order a deadline . . . to amend the pleadings to allege inequitable conduct, whether by affirmative defense or in a counterclaim,” and that defendant filed its motion by the deadline in the scheduling order. Id. at 2. Judge Sleet added that “[e]ven assuming the plaintiff is correct that the defendant could have filed it[s] motion sooner, the court cannot say the delay was undue or that the plaintiff will be prejudiced when this was explicitly contemplated as a possibility.” Id.
In Lambda Optical Solutions, LLC v. Alcatel-Lucent USA Inc., et al., C.A. No. 10-487-RGA-CJB (D. Del. July 31, 2015), Magistrate Judge Christopher J. Burke recommended denial of Defendants’ motion for summary judgment of invalidity based on anticipation and obviousness. The Court first recommended denial as to anticipation because it concluded that issues of material fact remained as to whether the claimed anticipatory references (printed publications) were enabling. The Court first concluded, as to whether there is a presumption of enablement of prior art publications, that it was in agreement with other decisions of the District Court that it should presume a printed publication is enabled. Id. at 11-12. However, the Court ultimately found that there were genuine issues of material fact as to enablement of the prior art based on how long it took between publications of those articles sand when Defendants introduced an applicable commercial product. See id. at 13-14. As to obviousness, the Court also found issues of material fact remained upon review of the record, including expert testimony. As to objective indicia of non-obviousness, the Court accepted Plaintiff’s position that the uncontested commercial success of Defendants’ accused products was relevant and contributed to the defeat of summary judgment: “[w]hile [Defendants] may later prove that all of its products that are at issue at trial do not infringe . . . the evidence put forth by [Plaintiff] as to such products may be considered at the summary judgment stage.” Id. at 20.
Update: On September 30, 2015, Judge Richard G. Andrews adopted the Report and Recommendation as to its obviousness findings, but denied and returned to the Magistrate Judge’s consideration the issue of anticipation. The Court rejected the recommended disposition that the motion for summary judgment as to anticipation be denied given the lack of expert testimony on the issue of enablement of certain prior art. Id. at 3-5. Instead, the Court concluded that “the dispositive issue for purpose of ruling on the objections is what sort of showing Plaintiff raised about lack of enablement to create a disputed factual issue,” noting that the parties had not focused on this issue in their briefing and “without any relevant expert opinion on enablement, what the records shows in argument about possibly relevant facts. . . . The subject matter is complex, and I do not think, under the circumstances of this case, that attorney argument is an adequate substitute for an analysis by a qualified expert. Expert testimony is, without a doubt, needed on the ultimate issue, should we get there, but I think it is also needed to raise the issue.” Id. at 3-4, 5. As a result, the Court “return[ed] the matter to the Magistrate Judge, for such handling as he deems appropriate. One possibility would be to consider the enablement challenge resolved, and proceed to the merits of the anticipation arguments. Another possibility would be to allow the parties to amend their expert reports to address the enablement issue.” Id. at 6.
In Butamax Advanced Biofuels LLC v. Gevo, Inc., C.A. Nos. 12-1036-SLR; 12-1200-SLR; 12-1300-SLR (D. Del. Aug. 3, 2015), Judge Sue L. Robinson considered the parties’ various dispositive motions on infringement and invalidity. The Court granted Defendants’ motion as to invalidity for one patent, based on indefiniteness, as well as their motion for summary judgment of no willfulness.
As to one patent, the Court concluded that the asserted claims’ “% identity” language was indefinite. See id. at 4-13. It therefore granted summary judgment as to invalidity and did not consider infringement, as the indefiniteness of the claims prevented a “meaningful infringement analysis.” Id. at 13.
As to another group of patents, however, the Court found issues of material fact remained as to validity and infringement. As to questions of enablement and written description, it noted that “[t]he art in the case at bar is generally unpredictable. The disagreement between the experts on whether one of ordinary skill could practice the invention without undue experimentation and whether the inventors had possession of the invention present genuine disputes of material fact better left to the province of the jury.” Id. at 18. Similarly, as to infringement, it concluded that “the expert opinions are in direct conflict, therefore, there are genuine issues of material fact as to” infringement, and thus denied Plaintiff’s motion for summary judgment of infringement. Id. at 19.
As to willful infringement, the Court granted Defendants’ motion, noting that the Court had granted their motion as to indefiniteness one one patent, and Defendants had “at minimum . . . credible and reasonable theories supported by expert testimony” for invalidity and non-infringement as to the other patents. Id. at 20-21. Additionally, while “[t]he court recognize[d] [Plaintiff’s] arguments against summary judgment of no willfulness based on the concurring opinions in both Halo Elecs., Inc. v. Pulse Elecs.,Inc., 769 F.3d 1371, 1383 (Fed.Cir.2014) (O’Malley, J., concurring), and Bard Peripheral Vascular, Inc. v. W.L. Gore & Associates, Inc., 776 F.3d 837, 847 (Fed. Cir. 2015) (Hughes, J., concurring), calling for a review of the willfulness jurisprudence. . . . the court decline[d] to depart from the application of the controlling law, Seagate’s two-part test, until such time as the Federal Circuit does so.” Id. at 21 n.18.