Delaware Patent Litigation Report

Delaware Patent Litigation Report

Morris James Leads Delaware Today “Top Lawyers” Edition with 25 Recognitions

Posted in News

Morris James LLP is pleased to congratulate the lawyers listed below, who were most recommended by their professional peers in a survey of Delaware attorneys conducted by Delaware Today magazine. Morris James received more “top lawyer” peer recognitions and had more “top vote-getters” than any other law firm. Top vote-getters are listed in bold below and a number following a name indicates the number of recognitions this year. Continue Reading

TRO is granted with respect to colchicine products indicated for prophylaxis of gout flares

Posted in Evidence, Infringement, Sanctions, TRO

Takeda Pharmaceuticals USA, Inc. v. West-Ward Pharmaceutical Corporation, et al., C.A. No. 14-1268-SLR, October 9, 2014.

Robinson, J.  Plaintiff’s motion for a temporary restraining order is granted.

Defendants have launched a branded product, Mitigare, and intended to launch a generic version, for prophylaxis of gout. Defendants had not filed an ANDA with the FDA.  Defendants’ product has the same active ingredient, route of administration, and strength as plaintiff’s patented product.  Defendants omitted from their label mention of uses for which plaintiff has patent protection.  The court concludes that it is not limited to patented uses approved by the FDA but may consider the realities of the marketplace in which the parties compete.  In particular, the court considers the permissive attitude of the FDA toward the promotion of off-label uses of drugs. The court found there was sufficient evidence to allege direct and induced infringement. There is also sufficient evidence that a generic launch will significantly impact plaintiff’s market share. The balance of hardships weighs in plaintiff’s favor because defendants have “effectively side-stepped the ANDA regime in an effort to get its generic product to market without appropriate legal underpinnings.”

Claim construction R & R issues in ANDA case relating to Natazia©

Posted in Claim Construction, Indefiniteness

Bayer Pharma AG, et al. v. Watson Laboratories, Inc., C.A. No. 12-1726 – LPS- CJB, September 30, 2014.

Burke, M. J. Report and recommendation regarding claim construction. Five terms are construed, and the court finds two disputed claims are not indefinite.

The Magistrate construed the following terms:

1. “multiphase product”

2. “multiphase oral contraception product”

3. “phase”

4. “daily dosage units”

5. “daily oral dosage units”

In addition, the court also recommended that defendant’s request for an order finding claims 1 and 2 invalid as indefinite be denied.

Claim construction opinion issues regarding display screen technology

Posted in Claim Construction, Indefiniteness

Grpahics Properties Holdings, Inc. v. ASUS Computer International, Inc., et al., C.A. Nos. 12-210 – LPS; 12-213 – LPS; 12-214 – LPS; 12-1394 – LPS; 12-1395 – LPS; 12-1397 – LPS; 13-864 – LPS, September 29, 2014.

Stark, C. J.  The court construes 30 terms from 6 patents after a Markman hearing held on April 24, 2014 with one term found to be indefinite.

The parties submitted technology tutorials and expert reports in addition to claim construction briefing, which was completed on March 7, 2014.  The following terms were construed:

  1. Hardwired
  2. hardwired supercomputer
  3. instruction fetch means for providing an instruction stream of two

parcel items in sequence, wherein each two parcel item has a bit length of 2n

  1. instruction decode means responsive to each two parcel item for determining in one clock cycle whether the two parcel item is a single two parcel instruction having a bit length of 2n bits or two one parcel instructions, each having a bit length of n bits
  2. one clock cycle
  3. said one clock cycle
  4. instruction issue means responsive to the instruction decode means for issuing each two parcel instruction for execution during said one clock cycle, and for issuing one then the other of the two one parcel instructions for execution in sequence during said one clock cycle and the next succeeding clock cycle
  5. rasterization circuit
  6. rasterization process which operates on a … floating point format
  7. frame buffer
  8. color
  9. per-fragment operations
  10. logic
  11. geometry processor
  12. scan converter
  13. large area
  14. optical compensation film
  15. air gap
  16. monitor
  17. digital computer system/information originating source
  18. high resolution
  19. high information content [indefinite]
  20.  gamma profile
  21. gray scale resolution
  22. software controller
  23. adjustment circuit
  24. gamma value
  25. grayscale resolution
  26. graphics controller
  27. image data

Court finds personal jurisdiction based on stream of commerce theory

Posted in Jurisdiction/Venue/Standing

Robert Bosch LLC v. Alberee Products, Inc., et al., C.A. No. 12-574 – LPS, September 29, 2014.

Stark, C. J. Defendants’ motions to dismiss for lack of jurisdiction over the person are denied; plaintiff’s request for jurisdictional discovery with defendant API is granted.

The disputed technology relates to windshield wiper components. Plaintiff asserts personal jurisdiction exists under a dual jurisdiction or stream of commerce theory pursuant to Delaware’s long-arm statute 10 Del. C. § 3104(c)(1) and (4). The court concludes that the Delaware Supreme Court would hold that the stream of commerce theory provides a basis for personal jurisdiction although not expressly authorized under the long-arm statute. A non-resident’s intent to serve the U.S. market is sufficient unless there is intent to exclude.

Factual issues prevent patent misuse claim from being summarily resolved

Posted in Motion for Judgment on the Pleadings, Patent misuse, Summary Judgment

Intellectual Ventures I LLC, et al. v. Symantec Corp., C.A. No. 13-440 – LPS, September 24, 2014.

Stark, C. J.  Plaintiffs’ motions for judgment on the pleadings and for leave to file motion for summary judgment regarding patent-misuse defense are denied.

Defendant alleges that plaintiffs have monopolized relevant markets for patent portfolios that it asserts are indispensable for making, selling, and using Internet security, antivirus, storage, monitoring, and replication products.  The patent misuse claim stems from plaintiffs’ aggregation in the relevant market, which patents are asserted against alleged infringers in order to maintain a monopoly with anticompetitive results.  The court finds that whether these allegations can be proven under a rule of reason analysis requires resolution of factual and legal questions and can not be resolved at this stage. Similarly, there is a factual dispute as to whether plaintiffs improperly tied licensing the patents-in-suit with unrelated patents, making the issue not amenable to summary judgment at this time.

Willfulness claim is adequately plead; court requires complete assignment agreements for lack of standing claim

Posted in Dismissal, Exceptional Case/Willfulness, Jurisdiction/Venue/Standing

IIntellectual Ventures I LLC, et al. v. AT&T Mobility LLC, et al., C.A. Nos. 13-1668 – LPS; 13-1669 – LPS; 13-1670 – LPS; 13-1671 – LPS; 13-1672– LPS , September 24, 2014.

Stark, C. J.  Defendants’ motions to dismiss for lack of subject matter jurisdiction and failure to state a claim are denied with respect to willfulness and denied without prejudice with respect to plaintiffs’ lack of standing.

The disputed patents relate to methods and systems for determining and distributing resources over a digital communication network. Plaintiffs claim defendants’ use of LTE wireless technology willfully infringes the patents-in-suit. The court finds the willfulness allegations sufficiently plead since the defendant referenced the asserted patents as prior art for its own patents. Also it is alleged that defendant has no policy in place to obtain rights from patent holders to use LTE technology.  With respect to lack of standing, the defendants have not provided the court with the complete assignment agreements and amendments and therefore that motions is denied without prejudice.

Daubert and various summary judgment motions are decided

Posted in Amendment of Pleadings, Damages, Daubert/Experts, Estoppel/res judicata, Evidence, Exceptional Case/Willfulness, Indefiniteness, Infringement, Invalidity, More Definite Statement, Motion to Strike/Preclude, Obviousness, Summary Judgment, Written description

Helios Software, LLC, et al. v. Spectorsoft Corporation, C.A. No. 12-081 – LPS, September 18, 2014,(unsealed September 25, 2014).

Stark, C. J.  Plaintiffs’ motion to exclude opinions from Geoff A. Cohen is denied; Defendant’s motion to exclude damages opinions of Scott Weingust is granted. Defendant’s motion for partial summary judgment of non-infringement of two patents is granted and denied as to a third patent. Defendant’s motion for partial summary judgment of no willfulness is granted, and limitations on damages are granted in part and denied in part. Defendant’s invalidity motion is denied. Defendant’s motion regarding prosecution history estoppel, lack of patentable subject matter, and lack of written description, non-enablement and indefiniteness is granted in part and denied in part.

Plaintiffs seek to exclude Cohen’s opinions regarding testing first disclosed in the reply report. The court found the testing was done in response to the rebuttal report, and permitted limited additional discovery. The court excluded Weingust’s damages testimony for failure to satisfy the apportionment requirement or the entire market value rule in his analysis. Since no trial date has yet been set, the court permits a supplemental report and a short deposition of this expert.  Prosecution history estoppel results in summary judgment of non-infringement for one patent. Summary judgment of non-infringement as to a second patent is denied due to factual issues in dispute. Summary judgment of non-infringement with respect to certain products was granted over objection that those claims had been dropped during discovery. Defendant had not agreed to dismissal and had filed a counterclaim. Plaintiffs provided no evidence of willfulness. Damages for induced and contributory infringement were limited as to time. Disputed facts preclude summary judgment of invalidity. The court finds that the patent drawn to remotely monitoring data associated with an Internet session and controlling network access is not drawn to an impermissible abstract idea. Defendant’s indefiniteness arguments are unsupported and untimely. Motion to amend the complaint is denied as moot.

Inequitable conduct counterclaim is dismissed

Posted in Amendment of Pleadings, Dismissal, Equitable Defenses and Remedies

Goodman Manufacturing Company, L. P. v. Carrier Corporation, C.A. No. 13-2014 – SLR, September 23, 2014.

Robinson, J.  Defendant’s motion to dismiss plaintiff’s counterclaim of inequitable conduct is granted. Plaintiff’s motion for supplemental briefing is denied as moot.

Plaintiff filed this complaint seeking a declaratory judgment of inequitable conduct relating to two patents – 7,243,004 and 7,775,452.  In related litigation, plaintiff had sought leave to file amended answers including inequitable conduct counterclaims.  Subsequently, the parties dismissed the claims relating to the ‘452 patent in that related case. The court later denied plaintiff’s motion for leave to file amended answers in that case. The court finds that the inequitable conduct counterclaims at issue in the current action are compulsory counterclaims, and the plaintiff may not circumvent the denial of leave to amend by filing a separate action. The court further finds a lack of subject matter jurisdiction due to the absence of an actual controversy given the dismissal of the ‘452 patent.

Magistrate recommends that induced, contributory and willfulness claims be dismissed without prejudice

Posted in Amendment of Pleadings, Dismissal, Exceptional Case/Willfulness, Infringement

Neology, Inc. v. Kapsch Trafficcom IVHS, Inc., C.A. No. 13-2052 – LPS, September 19, 2014.

Burke, M.J.  Report and recommendation that Defendants’ motions to dismiss induced, contributory and willful infringement claims be granted.

The six patents-in-suit relate to radio frequency identification transponders and/or readers. With respect to induced infringement, the court finds there is insufficient pleading with respect to both pre- and post-suit knowledge of infringement. Likewise, the factual allegations fail to adequately set forth specific intent to infringe. Grouping defendants together in broadly alleging induced infringement provides insufficient information as to what each one is accused of doing. Similarly, plaintiff fails to adequately plead contributory infringement, having failed to knowledge of how the accused products infringe. Willfulness allegations are similarly insufficient.  Even where knowledge of the patents is alleged, plaintiff fails to demonstrate a link between the allegations of knowledge and

the allegations that the risks of infringement were known or obvious.