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Judge Gregory M. Sleet recently considered defendants’ motion to stay pending inter partes review of six of the eleven patents-in-suit.  Koninklijke Philips N.V., et al. v. ASUSTek Computer Inc., et al., Nos. 15-1125-GMS, 15-1126-GMS, 15-1127-GMS, 15-1128-GMS, 15-1130-GMS, 15-1131-GMS, 15-1170-GMS (D. Del. Mar. 30, 2017).  Judge Sleet denied the motion without prejudice to renew upon institution of the petitions by the U.S. Patent and Trademark Office.  Id. at 1 n.1.

Koninklijke Philips N.V. v. ASUSTek Computer Inc., No. 15-1125-GMS

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Magistrate Judge Christopher J. Burke recently denied two co-pending motions to transfer venue to the Northern District of California. Applying the Third Circuit’s Jumara factors in considering whether all relevant factors strongly favored transfer, Judge Burke found that transfer was not warranted. Tessera, Inc., et al. v. Broadcom Corp., C.A. No. 16-379-LPS-CJB, Memo. Op. at 25-26 (D. Del. Mar. 21, 2017).

The plaintiffs’ principal place of business was in the Northern District of California, and the defendants also had significant operations in the Northern District of California, but the plaintiffs were incorporated in Delaware, weighing against transfer. Id. at 7-10. Judge Burke also explained that it was difficult to assess “where the alleged infringement has occurred” because of uncertainty as to the relevant facts and the parties’ unclear submissions on this point. Accordingly, this factor only slightly favored transfer. Id. at 11-14. The convenience of the parties, the convenience of the witnesses, the location of books and records, and practical considerations that could make the trial easy, expeditious, or inexpensive weighed slightly in favor of transfer. All other Jumara factors were neutral. Id. at 14-25.

Judge Burke concluded that “This is, as Broadcom notes, a ‘dispute between California entities.’ And in balancing the Jumara factors, the Court acknowledges that Broadcom has pointed to a number of connections between the Northern District of California and the facts or people involved in this case. This has, in tum, resulted in a greater number of Jumara factors tipping Broadcom’s way, as opposed to Plaintiffs’ way. And yet a close examination of most of the factors favoring Broadcom shows that they do not have much of a practical impact. Had Broadcom been able to make a stronger showing even as to any one of the factors that only slightly tipped in its favor, the outcome may have been different. . . . But Broadcom did not make any such showing. As a result, any inconvenience it faces in trying the case in this District does not seem pronounced. After careful review, the Court is prepared to say that the balance of convenience is in favor of Broadcom. But it cannot conclude that this balance ‘is strongly in favor of’ Broadcom.” Id. at 26.

The case also presented an interesting procedural issue. Judge Burke’s decision addressed two separate civil actions, each of which involved a motion to transfer, which the parties agreed should be resolved together. One civil action, however, was stayed pending an ITC investigation, while the other action was not stayed. As Judge Burke pointed out, the “parties to the action agree that it is proper for the Court to resolve the transfer of venue issue in [the stayed case], even while this stay is pending, and they have cited to case law in support. The Court agrees with the logic set out in the cited cases, and, as a result, will proceed to address the Motions in both cases.” Id. at 5 n.3 (citations omitted).

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In a recent Memorandum Order, Judge Sue L. Robinson granted defendant’s motion for costs. Quest Integrity USA, LLC v. Cokebusters USA, Inc., C.A. No. 14-1483-SLR (D. Del. Mar. 28, 2017). Defendant had issued a subpoena to a third party after plaintiff indicated that it did not have documents related to a particular issue. Id. at 1. Plaintiff responded to the subpoena by filing a motion to quash on the ground that the subpoena was “overbroad, asked for irrelevant materials, and placed a burden on plaintiff by having to review additional [third-party] documents.” Id. Rather than respond plaintiff, defendant moved to compel the third party. Id. Judge Robinson found that because plaintiff had no standing to file the motion to quash, defendant was entitled to costs associated with its motion to compel. Id. at 2. However, because defendant did not provide the court a basis for its costs and because plaintiff made the “reasonable decision to withdraw its motion to quash” after defendant filed its motion to compel, Judge Robinson granted defendant less than total costs it requested. Id. at 2-3.

In the same Memorandum Order, Judge Robinson granted defendant’s motion for leave to amend its affirmative defenses related to FRAND licensing. Id. at 2-4. Judge Robinson noted, however, that “[t]he court is concerned . . . about the addition of such a complex issue to an already complicated, aggressively litigated case, whether the issue of  FRAND licensing be directed to defendant’s equitable defenses to be tried to the court or its damages theories to be tried to the jury.” Id. at 3.  Accordingly, Judge Robinson ruled that “damages and defendant’s equitable defenses shall be tried separately from the liability trial.” Id. at 3-4.

Quest Integrity USA, LLC v. Cokebusters USA, Inc., C.A. No. 14-1483-SLR (D. Del. Mar. 28, 2017)

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Judge Andrews recently found the asserted claims of one asserted patent invalid for obvious-type double patenting after a four day trial on three asserted patents. Novartis Pharmaceuticals Corp. v. Breckenridge Pharmaceutical, Inc., et al., C.A. Nos. 14-1043-RGA, 14-1196-RGA, and 14-1289-RGA (D. Del. Apr. 3, 2017).  The Court found that the earlier-expiring post-URAA patent (the ‘990 patent) could serve as a double patenting reference for a later-expiring pre-URAA patent (the asserted ‘772 patent), relying on the BPIA decision in Ex Parte Pfizer, Inc. Patent Owner & Applicant, 2010 WL 532133, at *6 (Bd. Pat. App. & Interf. Feb. 12, 2010) (cited in Gilead Sciences, Inc. v. Natco Pharma Ltd., 753 F.3d 1208, 1212 (Fed. Cir. 2014)), as well as several other district court decisions.  Judge Andrews found that the defendants failed to meet their burden to invalidate the other two asserted patents, which the plaintiffs proved were infringed.

Novartis Pharma Corp. v. Breckenridge Pharma Inc., C.A. No. 14-1043-RGA (D. Del. Mar. 30, 2017)

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Senior Judge Sue L. Robinson recently considered the parties’ summary judgment motions in Quest Integrity USA, LLC v. Clean Harbors Industrial Services, Inc., et al., No. 14-1482-SLR, 14-1483-SLR (D. Del. Mar. 28, 2017).  Judge Robinson granted defendants’ motion for summary judgment that claims 1, 11, 12, 13, 24, 25, 27, 28, 30, 33, and 37 of U.S. Patent No. 7,542,874 are invalid as anticipated under 35 U.S.C. § 102(b) based on plaintiff’s sale to Orion Norco Refining.  Id. at 8-42.  Judge Robinson also granted defendant Clean Harbors’ motion for summary judgment of non-infringement; and granted-in-part defendant Cokebusters’ motion for summary judgment of non-infringement.  Judge Robinson denied the remaining motions.  Id. at 47-48.

Quest 14-1482

UPDATE:  On April 7, 2017, Judge Robinson considered defendant’s limited motion to reconsider denial of defendant’s summary judgment motion of invalidity as to one claim (the Court previously granted summary judgment as to the other claims of the patent-in-suit).  Quest Integrity USA, LLC v. Cokebusters USA Inc., No. 14-1483-SLR (D. Del. Apr. 7, 2017).  Judge Robinson granted the motion, invalidating claim 40 as anticipated by the Norco sale under 35 U.S.C. § 102(b).

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In Mitchell Ellis Products, Inc. v. Agrinomix LLC, C. A. No. 16-367-SLR (D. Del. Mar. 16, 2017), Judge Sue L. Robinson granted a motion to transfer of a defendant that, while a Delaware company, only had operations and advertisement in Ohio and had not sold any accused products in Delaware.  The Court, as in other opinions, found the location of potential witnesses and books and records, as well as court congestion, to be neutral factors in the Jumara analysis, and observed that transfer would often be denied where a defendant was a Delaware company and did “business on a national scale, including Delaware.” Id. at 3-4.  Here, based on the averment of Defendant’s Managing Member and President, the latter factor was not present: “[t]here is no evidence of record — despite the intervening discovery and further briefing on this and related motion — that [Defendant] has sold or even advertised the accused devices in Delaware. Transfer of the above-captioned case to the United States District Court for the Northern District of Ohio, therefore, is appropriate.” Id. at 4.

Mitchell Ellis Products, Inc. v. Agrinomix LLC, C. A. No. 16-367-SLR (D. Del. Mar. 16, 2017)

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In a recent Report and Recommendation, Chief Magistrate Judge Mary P. Thynge granted defendants’ renewed motion for attorneys’ fees. Magnetar Technologies, Corp. v. Six Flags Theme Parks, Inc., C.A. No. 07-127-LPS-MPT (D. Del. Mar. 13, 2017). Previously, on July 21, 2015, Judge Thynge issued a Report and Recommendation finding that, in view of the totality of the circumstances, the case was exceptional based on plaintiffs’ objectively unreasonable position on inventorship of U.S. Patent No.  5,277,125 (“the ‘125 patent”) and plaintiffs’ reliance on Mark T. Hanlon’s expert report with respect to infringement of the ‘125 patent. On September 30, 2015, having considered plaintiffs’ objections to that Report and Recommendation and defendants’ subsequent response, Chief Judge Leonard P. Stark returned the issue of attorneys’ fees to Judge Thynge for additional findings.  On November 31, 2015, defendants filed the instant renewed motion for attorneys’ fees. See id. at 6.

In granting the renewed motion, Judge Thynge first reaffirmed the court’s conclusion “that plaintiffs’ position on the issue of inventorship was objectively unreasonable and defendants are entitled to fees incurred following the depositions in late July 2011” that demonstrated incorrect inventorship. Id. at 17-18. Judge Thynge also reaffirmed the court’s conclusion that plaintiffs’ reliance on Hanlon’s expert report was objectively unreasonable. Id. at 19.

Judge Thynge further found that attorneys’ fees in this action were “warranted to deter parties from continuing to maintain claims based on objectively unreasonable positions,” and “to compensate the defendants in this case for the expenses in defending claims that should not have been maintained.” Id. at 29. As Judge Thynge explained, “[p]laintiffs’ continued litigation of the ‘125 patent after the Chung and Staehs depositions revealed the inventorship issue with that patent improperly increased defendants’ litigation expenses by forcing them to continue to defend against the infringement claim and pursuing a ruling that the patent was invalid.” Id. at 29-30.

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Judge Gregory M. Sleet recently considered defendants’ motion to stay pending inter partes review of one patent in suit.  f’Real Foods, LLC v. Hamilton Beach Brands, Inc., No. 16-41-GMS (D. Del. Mar. 9, 2017).  Judge Sleet denied the motion, finding that the plaintiff would suffer undue prejudice and because the litigation at issue “will be minimally simplified.”  Id. at 2.  Judge Sleet importantly noted that the parties are direct competitors and that the Patent Trial and Appeal Board instituted inter partes review on only one claim of one of the patents in suit.  Id. at 2, n.3.  Further, there were many issues in the litigation  that would not be impacted by the inter partes review, namely “the litigation of the two patents-in-suit for which Defendants have not sought IPR, trademark infringement issues, and Defendants inequitable conduct and antitrust counterclaims.”  Id. at 3, n.4 (internal quotations omitted).

f’Real Foods, LLC v. Hamilton Beach Brands, Inc., No. 16-41-GMS (D. Del. Mar. 9, 2017)

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Judge Richard G. Andrews recently denied a motion for judgment on the pleadings that the plaintiff’s volume control patents and pairing patents claimed unpatentable subject matter under 35 U.S.C. § 101.  Sonos, Inc. v. D&M Holdings Inc., C.A. No. 14-1330-RGA (D. Del. Mar. 13, 2017).  The defendants argued that the “Volume patents are directed to the abstract idea of ‘controlling audio settings for multiple audio devices,'” a “very basic” concept.  Id. at 8.  Judge Andrews disagreed, though, and explained that “the invention as claimed in each of the Volume patents represents a substantial improvement over the existing technology – the invention described in the patents allows for the audio devices to be grouped and regrouped in real time simply using a user interface to select the desired members of the groups without the need for altering any hard wiring in the physical system.  This is not simply a ‘more efficient’ method of doing something already done by humans.  It is a method that provides for capabilities far beyond what a traditional hardwired system offers.”  Id. at 12.   The Court also rejected the argument that the pairing patents were no more than an abstract idea, explaining “the Pairing patents claim methods that involve specific devices (playback devices and controllers) that are described in the specification.”  Id. at 15.  Further, “the claimed methods do not simply represent an automation of something done manually. . . . This simply is not the kind of method that could be performed manually, and, even if it were, automating the method as claimed represents a substantial improvement to the functionality of the specific device.”  Id.

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In Boston Scientific Corporation, et al. v. Edwards Lifesciences Corporation, C.A. No. 16-275-SLR-SRF (D. Del. Feb. 28, 2017), Magistrate Judge Sherry R. Fallon granted defendant and counterclaim/third-party plaintiff (collectively, “Edwards”)’s motion for leave to amend their answer to add a prior use defense pursuant to 35 U.S.C. § 273.

Evaluating the proposed amendment under Rule 15, the Court concluded that the proposed affirmative defense was “factually sufficient” for this stage of the proceedings, where Plaintiffs had not pointed to any authority requiring a heightened pleading standard for affirmative defenses – rather, affirmative defenses are not held to the same pleading standard as claims or counterclaims. Id. at 3-4.  The Court also held that the new defense would not cause undue delay where the motion was filed prior to the case’s deadline for amendment of pleadings and where the case was in its early stages, with fact discovery closing in spring 2017. Id. at 4.  As to prejudice, although Plaintiffs “claim[] that [they] did not anticipate the addition of Edwards’ prior use defense when [they] negotiated the discovery limits in the scheduling order, [Plaintiffs] acknowledged the possibility of an amended answer by stipulating to the deadline for amended pleadings in the scheduling order at the time of discovery negotiations.” Id. at 5.

However, “[t]o the extent [Plaintiffs] would be prejudiced by the need to obtain additional discovery directed to the prior use defense, a limited grant of additional discovery [was] warranted.” Id. Accordingly, the Court granted Plaintiffs’ request for an increase in their limits on discovery requests and an extension to serve new document requests, but did not provide Plaintiffs with the full requested increase, as “[i]n view of the unused requests available to [Plaintiffs] under the scheduling order . . . the number of additional requests sought by [Plaintiffs] is unnecessary.” Id. at 6.

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