Delaware Patent Litigation Report

Delaware Patent Litigation Report

Court declines to lift stay pending IPR

Posted in Reexamination/Reissue/Interference/inter partes review, Stay

Princeton Digital Image Corporation v. Konami Digital Entertainment Inc., et al., C.A. No. 12-1461-LPS-CJB; Princeton Digital Image Corporation v. Ubisoft Entertainment SA, C.A. No. 13-335-LPS-CJB, January 14, 2015.

Burke, M.J. Plaintiff’s motions to lift stay in both actions are denied.

These cases were filed in November, 2012 and February, 2013. The judge referred all pretrial matters to the magistrate. On November 15, 2013, a request for inter partes review was filed. The court granted a stay on January 15, 2014.  In April, 2014 a second IPR was requested.  Only three of the patent-in-suit’s 23 claims are not currently under review. The court denies the request to lift the stay. It notes that the case for staying these proceedings is even stronger now than when the first order issued since now review has been granted as to all but three claims, and the “simplification of issues” factor is thus stronger.  With respect to the “undue prejudice” factor, the additional delay caused by the additional of the second IPR favors plaintiff’s request to lift the stay. However, mindful of the strength of defendants’ positions as to the other subfactors, the court determines that the “undue prejudice” factor has become neutral.

Registering to do business in Delaware constitutes consent to jurisdiction notwithstanding Daimler

Posted in Discovery, Dismissal, Jurisdiction/Venue/Standing

Acorda Therapeutics, Inc. et al. v. Mylan Pharmaceuticals Inc., et al., C.A. No. 14-935-LPS, January 14, 2015.

Stark, C.J. Defendants’ motion to dismiss for lack of personal jurisdiction is denied and plaintiff’s request for jurisdictional discovery of one defendant is granted.

This is an ANDA case relating to generic dalfampridine extended-release tablets. The court finds, following that the Daimler decision, that neither the parent nor subsidiary defendant are “at home” in Delaware for purposes of general jurisdiction as they are neither Delaware corporation nor do they have their principal place of business in Delaware. The facts that numerous subsidiaries of the parent defendant are incorporated in Delaware, and that the subsidiary defendant is registered to do business in Delaware, are insufficient contacts for general jurisdiction.  The court finds that the subsidiary defendant which is registered to do business in Delaware and has appointed an agent for service of process has consented to general jurisdiction in Delaware.  This conclusion conflicts with the earlier opinion in Astra Zeneca. Since the parent defendant has not registered to do business in Delaware, it has nor similarly consented to jurisdiction in Delaware.  The court also finds specific jurisdiction over the subsidiary defendant that sent a Notice Letter to plaintiff, a Delaware corporation, when plaintiff had already begun litigating patents relating to this suit against another defendant, knowing plaintiff would file suit within 45 days, and would almost certainly sue defendant in Delaware for efficiencies. The court allows jurisdictional discovery to go forward to determine whether there is specific jurisdiction over the parent defendant.

Court denies request to stay damages case pending reexams begun after final judgment of infringement was affirmed by the Federal Circuit.

Posted in Bifurcation/Phasing/Consolidation, Damages, Infringement, Reconsideration/Reargument, Reexamination/Reissue/Interference/inter partes review, Stay

Invista North America S.A.R.L., et al. v. M&G USA Corporation, et al., C.A. No. 11-1007- SLR, January 14, 2015.

Robinson, J. Defendants’ motions to stay and for relief pursuant to Rule 60(b) are denied.

Final judgment was entered in favor of plaintiffs on  April 1, 2014 following a finding by the court of infringement and a jury finding that the patent is not invalid.  Defendants requested reexamination with the PTO on April 29, 2014 and again on September 12, 2014. The Federal Circuit affirmed the final judgment without opinion on October 7, 2014.  Thereafter, on October 23, 2014, the PTO  merged the two reexams and issued a Merged Office Action rejecting all claims of the patent-in-suit.  The court notes that only because damages and willfulness were bifurcated is it possible that defendants’ get another bite at this apple.  The court regrets that its prior practice of bifurcating has led to this need to consider this motion. The court declines to stay proceedings on damages while the proceedings are pending before the PTO. With respect to the Rule 60(b)(2) motion, the newly discovered evidence relied on by defendants includes the PTO’s update to the prosecution history from the reexam proceedings occurring after the entry of final judgment. Additional Rule 60 arguments are rejected. The court will entertain further discussion on whether one or both parties should post bonds.

Final judgment is entered despite Rule 60 motion to set aside verdicts

Posted in Infringement, Invalidity, JMOL/New Trial, Real Party in Interest/Standing/Agency, Sanctions

Power Intergrations, Inc. v. Fairchild Semiconductor International Inc., et al., C.A. No. 08-309-LPS, January 13, 2015.

Stark, C.J. Defendants’ request to enter final judgment is granted; Plaintiff’s motion to set aside verdicts of infringement and validity is denied. Defendant’s request to sanction is denied.

Following a 10-day jury trial in April 2012, the court ruled on the parties’ 13 post-trial motions on March 29, 2013. The court now rejects plaintiff’s request pursuant to Rule 60 filed in November, 2014 as untimely.  The court was not persuaded that defendant in a related case and in an ongoing reexam proceeding is presenting evidence contradictory to what was presented to the jury resulting in the verdict in this case. No exceptional circumstances exist to warrant changing the jury verdict.  Sanctions against plaintiff for bringing the motion are not warranted under the totality of circumstances.

Court rules on curative jury instruction regarding damages

Posted in Damages, Infringement, Jury Issues/Instructions

Transcenic, Inc. v. Google, Inc., C.A. No. 11-582-LPS, January 12, 2015.

Stark, J. Court resolves dispute regarding curative jury instruction relating to damages.

The jury will be instructed twice, before plaintiff’s expert’s damages testimony and at the end of the jury instructions on damages regarding the relevance vel non of defendant’s overall revenue, and requirement that in the event infringement is found, plaintiff must apportion that overall revenue to the part attributable to the use of patented technology.

Claim terms are construed relating to data transfer and storage

Posted in Claim Construction

EMC Corporation, et al. v. Pure Storage, Inc., C.A. No. 13-1985-RGA, January 12, 2015.

Andrews, J. The court considers eighteen terms from five patents following a Markman hearing held on December 16, 2014.  The court permitted oral argument on only ten disputed terms, but construed all eighteen terms submitted in the briefing.

The disputed technology relates to methods and apparatus for transferring and storing data

The court construed the following terms:

  1. Determine/ determined/determining
  2. Probabilistic summary
  3. Identifier[s]
  4. Return/returning
  5. “a” in the phrase “a triggering event.”
  6. Buffer memory
  7. Scheduled
  8. Any available address location
  9. Write operations pending/ pending write operations
  10. Channel adapter
  11. Storage array adapter
  12. Applying
  13. Block(s) of data
  14. Associated with the transmitted blocks of data
  15. Memory board
  16. Memory system
  17. Memory region
  18. Memory segments

Single disputed claim term is considered in pharmaceutical case

Posted in Claim Construction, Estoppel

Merck Sharp & Dohme Corp. v. Xellia Pharmaceuticals ApS, at al., C.A. No. 14-199 – RGA, January 6, 2015.

Andrews, J.  Markman opinion issues following argument held on December 18, 2014.

A single term is disputed: “a pharmaceutically acceptable amount of an acetate buffer effective to provide a pharmaceutically acceptable pH.” The court finds that the plain and ordinary meaning applies.  In addition, the court finds that plaintiff is not judicially estopped from taking the claim construction position it now advocates. It’s proposed claim construction is found not to be inconsistent with the position it took in previous litigation.

Judge decides motions in limine in nonpracticing entity case.

Posted in Evidence, Invalidity

Intellectual Ventures I LLC v. Symantec Corporation, C.A. No. 10-1067-LPS, January 6, 2015.

Stark, C.J.  The parties’ motions in limine are granted in part and denied in part as indicated below.

  1. Defendant may not refer to plaintiff as a “patent troll” or reference “woodshedding.” It may however present evidence that plaintiff does not practice the patents-in-suit since that is relevant to damages.
  2. Plaintiff’s motion to preclude references to reexamination proceedings is granted, however defendant is not precluded from seeking to introduce portions of the proceedings for impeachment.
  3. Plaintiff’s motion to preclude evidence of defendant’s patents is granted.
  4. Plaintiff’s motion to preclude defendant from disparaging or criticizing the PTO is granted, although defendant may argue the PTO is not perfect.
  5. Defendant’s motion to preclude reliance on defendant’s alleged pre-suit knowledge of the patents is granted since no claims of willful infringement, indirect infringement or copying are at issue.

In addition, the court rules that §101 issues will be resolved post-trial. Any related testimony necessary will be presented after trial.

Defendants from a related case are welcome to attend the pretrial conference.

Plaintiff’s request  that the court order defendant to further limit prior art references and obviousness combinations and limit the number of witnesses it will call at trial and defendant’s request to require plaintiff to limit the number of accused products are denied. The parties will make their own decisions how to use the 20-24 hours permitted per side.

Magistrate recommends dismissal based upon unpatentable subject matter

Posted in Invalidity, Summary Judgment, Uncategorized

Tenon & Groove, LLC, et al. v. Plusgrade S.E.C., et al, C.A. No. 12-1118-GMS-SRF, January 6, 2015

Fallon, M.J.  Report and recommendation on Defendants’ motion for summary judgment of invalidity recommends granting motion and dismissing the action.

The disputed technology relates to applications used particularly in the airline industry.  Defendants allege the patents-in-suit are invalid for unpatentable subject matter under § 101.  The court finds that the patents-in-suit do not pass the machine-or-transformation test. Merely using a computer to perform more efficiently what could be accomplished manually does not confer patent-eligibility. Here, the specifications themselves reveal that the processes may be performed manually.  The patents recite at best a general purpose computer and do not therefore become patent eligible. The court further examines the abstract nature of the claims, and concludes that the patents are directed to the unpatentable fundamental concept of using a computer to facilitate negotiations between an airline and its customer that results in an upgrade. Nor is an airline’s capacity to track variables such as preferences of multiple passengers, flight availability, and value for an upgrade option an inventive concept. The claimed concept is furthermore not directed to any specific device or system or limited to a concrete application.  Pursuant to Alice, the recitation of specific hardware elements is insufficient to confer specificity. The court, finding no patentable subject matter, recommends granting defendants’ motion for summary judgment.

Partial summary judgment limiting damages is granted

Posted in Damages, Daubert/Experts, False Marking, Invalidity, More Definite Statement, Summary Judgment, Written description

Flatworld Interactives LLC and Samsung Electronics Co., Ltd, et al., C.A. Nos. 12-804-LPS ; 12-964-LPS, December 31, 2014.

Stark, C.J.  Defendants’ motion for summary judgment of invalidity is denied. Defendants’ motion for partial summary judgment limiting damages to post-complaint activities is granted. Declaration of Plaintiff’s expert in opposition to Defendants’ invalidity motion is stricken. Briefing on defendants’ motion was completed on November 12 and 14, 2013.  Argument was heard with Markman arguments on November 15, 2013.

The disputed technology relates to a system for manipulating images on a display using a touch-sensitive screen. Defendants contended that the patent was invalid based on lack of written description. Defendants move to strike the declaration of Eric J. Gould as improper, erroneous and unnecessary expert testimony.  The court grants the motion to strike without prejudice in light of the denial of the motion for summary judgment of invalidity.  Defendants argued that the inventor did not possess the negative limitation (removing images without leaving a representation)  because the specification does not describe a reason to exclude the limitation. The court concludes that based on its claim construction issued by separate order, which adopted plaintiff’s proposed construction of “representative thereof”), the claims do contain a negative claim limitation. Genuine issues of material fact preclude summary judgment of invalidity.  The court limits damages to past-complaint activities due to a failure to mark the single embodiment of the patent produced in discovery.  Plaintiff’s stated concern was that since reissue proceedings were ongoing, it could not have known whether any claims would be allowed and therefore was not required to mark or risk false marking claims.  The court finds that marking is required under section 287 during reissue proceedings.  The court also found that the de minimus exception to marking did not apply since the entirety of the articles made or sold were unmarked.  Actual notice was also lacking.