Judge Sue L. Robinson recently granted a defendant’s motion for summary judgment of no remedies. Rosebud LMS, Inc. d/b/a Rosebud PLM v. Adobe Systems Inc., Civ. No. 14-194-SLR (D. Del. Feb. 5, 2015). Because it was undisputed that the plaintiff’s patent issued after the defendant discontinued its accused product, the Court explained that the only remedies potentially available were provisional remedies under 35 U.S.C. § 154(d), based on the publication of the patent application. Id. at 3-4. Here, however, Judge Robinson found that the plaintiff failed to prove that the defendant had actual notice of the published patent application. Specifically, the Court rejected the argument that the defendant had an affirmative duty to search patent applications because of the parties’ litigation history. Id. at 6. The Court also found that the other purported evidence of actual notice showed, at best, constructive notice, which was not sufficient for purposes of awarding provision remedies under § 154(d). Id. at 6-7.
In The Money Suite Company v. 21st Century Insurance and Financial Services, Inc., et al., C.A. No. 13-984-GMS (D. Del. Jan. 27, 2015) and a series of related actions (Nos. 13-986, 13-1747, and 13-1748-GMS), Judge Gregory M. Sleet granted defendants’ joint motion to dismiss (or for judgment on the pleadings), on the basis that the patent-in-suit was invalid as an abstract idea under Section 101. The patent is directed to “a computerized method for generating price quotes for financial products.” Id. at 2.
Citing Alice Corp., the Court concluded that the patent was indeed directed to an abstract idea, noting that the “concept is not dissimilar from those discussed by recent [Section] 101 court cases,” including Alice Corp. Id. at 5. Furthermore, the patent’s “outlined sequence of steps [e.g., “the use of front-end network gateways to allow users to interface with remote servers in order to generate a price quote for financial products,” id. at 7] is neither inventive nor sufficiently narrow to alleviate preemption concerns. The use of front-end network gateways . . . is not new[.]” Id. Further, “[l]eaving open the possibility of practicing the idea of price quoting financial products manually does not save the [patent-in-suit, as plaintiff contended]. This was the very concern underlying the court’s rationale in Alice: monopolizing computerized implementations while allowing the public to practice the idea ‘by hand’ does not comport with [Section] 101.” Id. at 9. The Court also distinguished the patent-in-suit from the patent upheld as valid in DDR Holdings, LLC v. Hotels.com, 773 F.3d 1245 (Fed. Cir. 2014), explaining that the generation of price quotes for financial products was “undeniably a pre-Internet concept,” and thus the asserted claims did “precisely what DDR Holdings explains is fatal to many computer-based patents.” Id. at 10.
As a result, the Court granted the defendants’ joint motion to dismiss based on Section 101 invalidity. Id. at 11.
In Round Rock Research, LLC v. Sandisk Corporation, C.A. No. 12-569-SLR (D. Del. Feb. 4, 2015), Judge Sue L. Robinson considered a number of motions for summary judgment regarding infringement and invalidity based on anticipation.
The Court granted two of plaintiff’s motions for summary judgment of no anticipation, granted defendant’s motion for partial summary judgment of invalidity based on anticipation regarding to other claims, and denied defendant’s motion for partial summary judgment of non-infringement. All of the motions related to one of the five patents-in-suit being litigated at this stage, U.S. Patent No. 6,060,719, entitled “Hybrid Memory Management.”
As to one of plaintiff’s motions for no anticipation, Defendant rebutted with the contention that even if a single limitation was not disclosed by two different references, “both references [still] disclose the missing material through incorporation by reference of various other patents.” Id. at 15. But the Court explained that “[p]roving invalidity through anticipation is a disciplined process that requires showing ‘that the four corners of a single, prior art document describe every element of the claimed invention’ . . . Allowing incorporation by reference for purposes of anticipation in the manner attempted by [defendant] would be contrary to the court’s understanding of accepted litigation practice.” Id. at 18 (citations omitted). Accordingly, the Court concluded that neither reference at issue anticipated the asserted claims, and granted plaintiff’s motion for summary judgment of no anticipation. Plaintiff had also filed a second motion for summary judgment of no invalidity, and because defendant conceded that the reference at issue was a basis for obviousness rather than anticipation, the Court granted this motion as well. Id. at 18 n.6.
As to defendant’s own motion for summary judgment of invalidity, the dispute centered around whether the ‘719 patent was entitled to a priority date that pre-dated a certain reference. Late in the case, Plaintiff attempted to offer an attorney declaration to swear behind this reference , which defendant argued should be stricken as untimely. Id. at 21. The Court agreed, explaining that plaintiff was “proffering through [the] attorney a legal position never identified during discovery.” Id. at 21-22. As plaintiff did not present a substantive rebuttal to defendant’s anticipation argument, the Court granted defendant’s motion. Id. at 23.
As to defendant’s motion of non-infringement, the Court concluded that issues of material fact existed, including disputes between the parties’ expert, and denied the motion. See id. at 13-14.
(Feb. 6, 2015 ) In the second verdict of the day from the District of Delaware, a jury awarded Intellectual Ventures I LLC a sum of $17 million from Symantec Corporation for infringement of two of three asserted patents, in the case of Intellectual Ventures I LLC v. Symantec Corporation, C.A. No. 10-1067-LPS.
In an unrelated patent infringement verdict rendered from the J. Caleb Boggs Federal Building earlier in the day, a jury awarded Sprint $27.6M from Comcast.
(Feb. 6, 2015) Today a jury in the District of Delaware awarded $27.6 million to Sprint Communications Company, L.P. from Comcast Cable Communications, LLC and Comcast IP Phone, LLC for patent infringement of all asserted claims of U.S. Patent Nos. 5,742,605 and 6,108,339. Comcast IP Holdings I LLC v. Sprint Communications Company LP et al., D. Del., 1:12-cv-01013-RGA.
This is the first patent damages award by a Delaware jury in 2015. In 2014, nearly one billion dollars in patent infringement damages were awarded by Delaware juries.
As between the parties to today’s verdict, a jury previously returned a $7.5 million verdict to Comcast from Sprint for patent infringement found in a separate Delaware suit, Comcast IP Holdings I LLC v. Sprint Communications Co. LP et al., D. Del., 1:12-cv-00205-RGA (see https://www.delawareiplaw.com/2014/10/verdict-comcast-ip-holdings-v-sprint-12-205-rga.html), from which counterclaims were previously severed to create the suit just tried.
The Delaware Chapter of the Federal Bar Association announced today that the first District of Delaware Bench and Bar Conference will be held on May 7-8, 2015 at the Hotel DuPont in Wilmington, Delaware. The event will feature judges from the District of Delaware, Third Circuit, and Federal Circuit; as well as other distinguished speakers. More details regarding the program agenda and events, such as dinner at Winterthur, will follow over the next few weeks.
Judge Andrews recently resolved a novel dispute involving anticipation by a prior art patent. On defendant Comcast’s motion for summary judgment of invalidity, Comcast and plaintiff Sprint agreed that the prior art patent in question discloses each of the elements of the asserted patent claims. Sprint Commc’ns Co. v. Comcast IP Holdings, LLC, et al., C.A. No. 12-1013-RGA, Memo. Or. at 4 (D. Del. Jan. 30, 2015). Sprint argued, however, that under section 102(e), anticipation requires a prior art invention “by another.” Because the prior art at issue shared an inventor with the asserted patent, Sprint reasoned, this requirement was not met. Id. at 5. Examining the testimony of this common inventor, however, Judge Andrews determined that “even though [the common inventor] was an inventor of both the [asserted patent] and the [prior art] patent, the two patents do not share a common inventive entity, as there is no evidence from which the factfinder could conclude that [the common inventor] was solely responsible for the asserted claims . . . and the anticipating disclosures . . . .” Id. at 5-6.
Judge Andrews recently granted defendants’ (“Comcast”) motion to exclude two of plaintiff’s (“Sprint”) damages expert opinions, and Sprint’s motion in limine, which sought to preclude Comcast from “offering into evidence, referencing, or eliciting testimony about settlement and license agreements entered into by Comcast relating to comparable technology.” Sprint Communications Co. v. Comcast IP Holdings, LLC, et al., C.A. No. 12-1013-RGA (D. Del. Jan. 29, 2015), (D. Del. Jan. 30, 2015).
As to the motion to exclude, Judge Andrews excluded one damages expert’s opinion pursuant to FRCP 26(a)(2)(B)(i), because that expert concluded that “6.5 to 7% of Comcast’s IMS network related to the patented subject matter, but provided no basis for how he determined which features ‘related to’ the patent.” Judge Andrews explained that “[t]his determination provides the entire basis for [the expert’s] opinion, and thus require[d] at least some explanation.” Judge Andrews also excluded this opinion because the “analysis is not tied to the improvements attributable to the patented invention, and . . . is [therefore] unreliable for purposes of Rule 702.” Judge Andrews also found the other damages expert opinion unreliable despite considering Georgia-Pacific factors, given that it provided “no evidence that ties Comcast’s savings to the claimed invention.”
Addressing plaintiff’s motion in limine, Judge Andrews explained that the motion implicates “the second Georgia-Pacific factor, which looks at ‘[t]he rates paid by the licensee for the use of other patents comparable to the patent in suit.’” Judge Andrews concluded that the four licenses at issue were “not sufficiently comparable to the hypothetical licenses, and, to the extent the lack of comparability could be accounted for, [the expert] has not attempted to do so.” As plaintiff observed, “none of the licenses include the patents in suit, three of the four licenses are with non-practicing entities, and all four licenses grant rights to additional patents and include international rights. Additionally, three of the four licenses occurred a number of years after the hypothetical negotiation dates. Finally, three of the four licenses resulted from the settlement of litigation, and thus do not represent the behavior of two willing licensors, as would be the case in the hypothetical negotiations between Comcast and Sprint.”
In a recent Order, Judge Gregory M. Sleet stayed fifteen related cases pending the inter partes review of U.S. Patent No. 6,978,346 (“the ’346 Patent”). Safe Storage LLC v. Dell Inc., C.A. No. 12-1624-GMS (D. Del. Jan. 22, 2015). While four defendants did not seek a stay of their cases, Judge Sleet sua sponte stayed those cases as well, explaining that those defendants “have put forward no objections, and judicial efficiency favors a stay of all of the cases, rather than allowing [those] four to go forward, perhaps unnecessarily.” Id. at 2 n. 4.
Considering the moving defendants’ motion to stay, Judge Sleet first noted that in “March 2014, the PTAB had initiated IPR proceedings for only seven of the nine claims of the ‘346 Patent” and that “[f]ollowing an additional petition for review filed by [other defendants], the PTAB instituted IPR over all nine claims.” Id. at 1 n. 2. Judge Sleet thus concluded that each of the traditional “factors weigh[ed] in favor of staying proceedings, especially in light of the PTAB’s recent decision to institute review of all of the claims of the ‘346 Patent.” Id. at 2 n. 4.
First, Judge Sleet found that the prejudice to plaintiff, “if any, would be minimal and not undue.” Id. Specifically, Judge Sleet explained that while plaintiff “would undoubtedly prefer a quicker resolution to a slower one, there is no suggestion that time is particularly important.” Id. Judge Sleet noted that although plaintiff “raises concerns about prolonged litigation reducing the value of its patents as licensing assets, . . . the court finds this anxiety to be overstated.” Id. Second, Judge Sleet found that staying the proceedings pending resolution of the IPR “would greatly simplify the issues for trial,” noting that plaintiff’s “initial objection that not all of the claims were under review has been rendered moot now that the PTAB instituted review over all nine claims in December 2014.” Id. Judge Sleet further explained that “[e]ven though the four non-moving Defendants are not similarly estopped, the court is convinced that the IPR findings will simplify some, if not large, aspects of those cases as well.” Id. Judge Sleet finally noted that “these cases are still in their relative infancies.” Id.
In a recent report, Magistrate Judge Christopher J. Burke recommended that a case involving patents related to controlling remote access to corporate resources be transferred to the Northern District of Georgia. Good Technology Corp. v. Airwatch, LLC, C.A. No. 14-1092-LPS-CJB (D. Del. Jan. 21, 2015). Judge Burke’s recommendation was based on a finding that, on balance, the combination of several factors under Jumara v. State Farm Insurance Co., 55 F.3d 873 (3d Cir. 1995) supported the recommended transfer. Id. at 26.
Of note, Judge Burke explained that two other patent infringement cases between the parties, both Delaware entities, had recently been filed in the Northern District of Georgia, id. at 3, and although the patents asserted in those cases were not related to the patents at issue in this case, they could all “generally be described as relating to ‘technologies for controlling remote access to corporate resources[,]’” and appeared “to use some of the same claim terminology.” Id. at 19, 19 n.8. Further, although “AirWatch is a global company, ‘virtually all of AirWatch’s research, design, development, and marketing of the accused AirWatch products took place in Atlanta’ and thus that the ‘foreseeable witnesses with knowledge of the design, development, operation, finances, sales, and marketing of these products reside and work in Atlanta, Georgia.” Id. at 11 (emphasis in original). Finally, Judge Burke agreed that administrative efficiencies could potentially be gained by transferring the case to the Northern District of Georgia where, it was undisputed, the time to trial (at least based on 2013 data) was on average 13.3 months shorter than in the District of Delaware, and where there were only 60 open patent cases (as of June 2014) compared to over 1,400 in the District of Delaware. Id. at 21. But in light of Chief Judge Stark’s recent adoption of new procedures in patent cases filed after July 1, 2014, which Judge Burke explained would “no doubt speed the average time to trial in patent cases like this one[,]” Judge Burke found that the defendant’s argument about administrative efficiencies weighed only slightly in its favor. Id. at 22-23. Nevertheless, considering the weight of all of the Jumara factors, Judge Burke recommended transferring the case.