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.
In Magnetar Technologies Corp., et al. v. Six Flags Theme Parks Inc., et al., C.A. No. 07-127-LPS-MPT (D. Del. Aug. 2, 2017), Chief Magistrate Judge Mary Pat Thynge recommended the grant of Plaintiffs’ motion to correct inventorship, under Section 256, that was filed after the Court had ruled that the patents-in-suit were invalid, in part due to failure to name all inventors. The Court had thenentered judgment for Defendants and against Plaintiffs, also due to its findings of noninfringement. The Court’s rulings had been affirmed by the Federal Circuit.
Defendants presented three arguments in opposition: the motion was futile as Plaintiffs lacked legal title to the interest in the invention held by the inventor they sought to add; Plaintiffs had no procedural vehicle through which to seek relief because final judgment had already been entered; and the motion was moot because the patent at issue had been found invalid for reasons in addition to incorrect inventorship. The Court rejected these arguments. As to futility, the Court concluded that Section 256 requires no showing of ownership in the patent on those seeking to invoke it. Id. at 7-8. As to the procedural vehicle for hearing the motion, the Court concluded that Section 256 itself sufficed. Id. at 9. It also concluded that the motion was proper because final judgment had not been entered “as to plaintiffs’ right to correct inventorship.” Id. Finally, as to mootness, the Court pointed to the fact that the outcome of the motion could impact Defendants’ attorney fee requests and would remove the invalidity of certain claims of the patent-in-suit. Id. at 10.
Having rejected these arguments, the Court then recommended that the motion to correct inventorship be granted. Id. at 11. In light of its rulings, the Court also recommended denial of Defendant’s request for attorneys’ fees in connection with Plaintiffs’ motion. Id. at 12-13.
Judge Richard G. Andrews recently denied a defendant’s request to renew its venue-based motion to dismiss. Invidior Inc. v. Mylan Tech., No. 15-1016 (RGA) (D. Del. July 28, 2017). Quoting Davis v. Smith, 253 F.2d 286, 288 (3d Cir. 1958), the Court explained, “[a] litigant waives its right to contest venue when ‘the litigant performs some act which indicates to the court that [it] elects not to raise [its] privilege of venue.'” Here, the defendant had earlier filed a motion to dismiss for lack of venue, but then asked the Court to reserve ruling on the motion while it appealed a personal jurisdiction ruling in another case (an appeal which it subsequently lost). The Court noted that instead of renewing its venue-based motion to dismiss at that point, the defendant engaged in a “flurry of litigation activity . . . including participating in claim construction and discovery, and entering a consent decree for one of the patents at issue in the case.” Judge Andrews found that the defendant’s renewal of the motion to dismiss for lack of venue, which came over a year after the unsuccessful appeal of the personal jurisdiction issue in the other case, came too late. “Having actively participated in litigation here for so long, Defendant has communicated its consent to venue here in the District of Delaware.”
Judge Gregory M. Sleet recently found that four patents relating to the matchmaking of participants in internet chat rooms claimed unpatentable subject matter under § 101. Jedi Techs., Inc. v. Spark Networks, Inc., et al., C.A. No. 16-1055-GMS (D. Del. Aug. 3, 2017). The Court found that the lead patent rested upon “the notion of human compatibility and matchmaking, where an individual learns about the personalities and interests of two different individuals and, based upon a certain criteria, determines whether the individuals are compatible.” This, the Court found, was an abstract idea under Alice, despite the plaintiff’s insistence that “the articulation of the abstract idea fails to account for specific requirements of the independent and dependent claims” — i.e. claimed “automatically prompting,” “collecting pre-existing data that is publicly available,” and “processing user data” steps. The Court found that these steps were routine data gathering or output steps that could not save the patent claims from being found an abstract idea. As Judge Sleet explained, “[e]ven if matchmakers traditionally have not relied on the Internet, the mere application of modern technology to the field of ‘invention’ does not somehow transform or otherwise change the character of the abstract idea.”
Under the second prong of Alice, Judge Sleet found no inventive concept sufficient to render the patent claims patent-eligible. As the Court explained, “the generic computer system contemplated by the patent could be replaced with a human matchmaker who compares two individuals based on submitted or publicly available information, and then sends both chatters a message which prompts their meeting. . . . While the use of a machine might improve the efficiency of the process, this improvement is not the ‘significantly more’ contemplated by Alice that ‘ensure[s] that the patent in practice’ truly adds to the invention.
The Court next found that three other asserted patents, which built upon the lead patent, merely used conventional technology to do additional tasks related to the chat room matchmaking idea that a human otherwise could do. These patents, like the lead patent, were found to claim unpatentable subject matter.
Judge Sleet denied the defendants’ request for attorneys’ fees under § 285, explaining that “the mere fact that one side’s arguments prevailed over its opponent’s does not make a § 285 award appropriate. Furthermore, the Alice analysis is not straightforward, particularly when it comes to software patents such as the patents at issue.”
Chief Judge Leonard P. Stark recently considered the parties’ summary judgment and Daubert motions in Intel Corporation v. Future Link Systems, LLC, No. 14-377-LPS (July 31, 2017). Regarding Future Link’s motions, Judge Stark granted summary judgment that RAND licensing requirements did not attach to the asserted claims of the relevant patents, and as to Intel’s equitable estoppel and uneforceability defenses. Id. at 3-8, 11-12. Judge Stark also granted Future Link’s Daubert motion, to the extent the experts’ opinions improperly expanded the scope of the claims. Id. at 23-24
Regarding Intel’s Motions, Judge Stark denied summary judgment as to indefiniteness and non-infringement, finding disputed issues of material fact, but granted-in-part Intel’s motion for summary judgment of no willfulness and no unclean hands. Regarding willfulness, Judge Stark held that, while “[i]t may be difficult to see how a reasonable factfinder would view the panoply of conduct
alleged by Future Link (if proven) to be ‘egregious … wanton, bad-faith, deliberate, consciously wrongful, flagrant, or – indeed- characteristic of a pirate'”; at this stage the Court could not grant summary judgment of no willful infringement. Id. at 28-29 (quoting Halo Elecs., Inc. v. Pulse Elecs., Inc., 136 S. Ct. 1923, 1932 (2016)). Judge Stark found, however, that summary judgment of no unclean hands was appropriate because Future Link had failed to come forward with sufficient evidence to support a finding that Intel acted with unclean hands. Id. at 29.
Chief Judge Leonard P. Stark recently issued a memorandum order analyzing waiver of attorney client privilege and work product protection. At issue was the plaintiff patentee’s corporate representative, who had not answered certain questions during a deposition, and certain documents withheld from discovery and interrogatory responses. The defendant argued that the all of this discovery should be made available both because the plaintiff put its “state of mind at the time it filed the underlying infringement suits” at issue and because the plaintiff had “selectively disclosed some attorney-client communications and documents prepared in anticipation of litigation, thereby waiving privilege with respect to communications and documents related to the same subject matter.” Judge Stark found that “this combination – [the plaintiff’s] contention that it brought and litigated the infringement actions in good faith, along with [its] selective use of privileged materials to support that assertion – waives privilege.” Princeton Digital Image Corp. v. Office Depot Inc., C.A. No. 13-239-LPS, Memo. Or. at 1-2 (D. Del. Aug. 1, 2017).
Judge Jordan recently issued an opinion denying an exceptional case finding after having entered partial summary judgment against the plaintiff and excluding the plaintiff’s direct infringement damages theory. “Viewed in its totality,” Judge Jordan found, the plaintiff’s “conduct over the course of this case does not qualify as exceptional . . . [the plaintiff] succeeded in obtaining discovery that it demanded, worked to narrow the issues in the case, and presented at least one claim that withstood summary judgment.” Parallel Networks Licensing, LLC v. Int’l Bus. Machs. Corp., C.A. No. 13-2072-KAJ, Memo. Op. at 3- (D. Del. July 31, 2017). Moreover, the plaintiff’s “claims were not entirely and objectively baseless . . . [the plaintiff’s] representations . . . are sufficient to show that the pre-suit investigation was enough to avoid the imposition of fees” and the plaintiff did not pursue and case and discovery solely to drive up costs for the defendant. Id. at 4-6.
Judge Richard G. Andrews recently granted Purdue Pharma L.P.’s motion to file an amended and supplemental complaint to add a patent from the same family already at issue in the case. Purdue Pharma L.P. v. Epic Pharma, LLC, No. 16-87-RGA (D. Del. Jul. 27, 2017). In doing so, Judge Andrews also permitted plaintiff to plead allegations of “exceptional case,” but cautioned Purdue Pharma “that I will not allow discovery into those allegations simply because they are stated in the Complaint. If Plaintiffs become a prevailing party, that would the appropriate time to consider whether to allow any discovery in whether this is an exceptional case.” Id. at 1.
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.”
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.