Delaware Patent Litigation Report

Delaware Patent Litigation Report

Case is transferred to the Eastern District of Missouri

Posted in Jurisdiction/Venue/Standing, Transfer

Endeavor Meshtech, Inc. v. Aclara Technologies LLC, C.A. No. 13-1618- GMS, February 25, 2015.

Sleet, J.  Defendant’s motion to transfer to the Eastern District of Missouri is granted.

Plaintiff is a Delaware corporation with principal place of business in California at the time the complaint was filed.  Its current address is in New York. Defendant is an Ohio LLC with its principal place of business in Missouri.  Plaintiff conducts no business in Delaware, thus its choice of forum is entitled to heightened but not paramount consideration.  The fact that accused products are marketed from Misssouri weighs slightly in favor of transfer. The convenience of the parties Jumara factor weighs in favor of transfer since Missouri is more convenient than Delaware.  The convenience of the witnesses is neutral since no witnesses have been identified who are  available in one district versus the other.  The location of books and records factor weighs slightly in favor of transfer despite the easing of burden of shipping evidence due to modern technology. As for public interest factors, there were  four co-pending cases filed by plaintiff in Delaware. One has been transferred and another dismissed. Three more have been filed so that there are now five, including this matter.  Plaintiff’s argument about inconsistent judgments rings hollow since its predecessor filed lawsuits involving the same patent in four other districts.  This factor weighs minimally against transfer.Court congestion weighs slightly in favor of transfer, the median times to trial and overall disposition being shorter in Missouri.  The local interest factor is neutral since patent cases do not implicate local interests.

Magistrate recommends denying motion to dismiss based on lack of personal jurisdiction

Posted in Delaware Procedure/Rules

Forest Laboratories, Inc. et al. v. Amneal Pharmaceuticals LLC, C.A. No. 14-508 LPS, February 26, 2015.

Burke, M.J.  Magistrate recommends denying defendant’s motion to dismiss for lack of personal jurisdiction in a Report and Recommendation.

Defendant moves to dismiss for lack of personal jurisdiction in this ANDA litigation in light of the decision in Daimler.  In one other Delaware case the court found that compliance with Delaware’s registration statute did not constitute consent to personal jurisdiction.  However, Judge Stark came to the opposite conclusion in another case.  An appeal is pending on that point.  This judge agrees with the reasoning in the previous opinion from Judge Stark and recommends denying the motion to dismiss.  The magistrate further notes that the parties submitted several notices of supplemental authority which go beyond citing supplemental authority and therefore were in violation of District of Delaware Local Rule 7.1.2(b).  He therefore did not consider those submissions.

Court denies request for documents

Posted in Discovery

Shelbyzyme, LLC v. Genzyme Corporation, C.A. No. 09-768-GMS, February 25, 2015.

Thynge, M.J.  Court denies defendant’s request that documents relating to a prior application be produced.

Defendant seeks documents on the basis of the crime-fraud exception relating to abandonment and revival of a patent application which eventually issued.  The court had previously found defendant had met its burden to demonstrate a prima facie case of fraud with respect to a particular time period and required production.  Defendant complains that documents were withheld as having already been produced or as not relevant.  The judge reviews documents in camera and denies further production.

Court precludes expert’s lost profits testimony

Posted in Damages, Daubert/Experts, Invalidity, Unfair Competition

Immersion Corporation v. HTC Corporation, et al., C.A. No. 12-259-RGA, February 24, 2015.

Andrews, J.  Defendants’ motion to preclude plaintiff’s expert’s testimony is granted with respect to lost profits and denied with respect to reasonable royalty.  The court took testimony and held oral argument on January 30, 2015.

Defendants seek to preclude the testimony of plaintiff’s damages expert James Pampinella.  The reasonable royalty analysis is primarily based on a 2012 settlement agreement with a third party covering the same patents.  Part of the analysis included the value attributable to the patents-in-suit.  Defendants accuse the expert of cherry-picking, not factoring in other licenses he had considered.  The court finds that the arguments go to the weight to be afforded and does not preclude the reasonable royalty testimony.  With respect to lost profits, the court finds the analysis is based on a faulty legal premise and excludes that testimony.  The revenue comes from unpatented software with no functional relationship with the patents.  Also, case law is based on an analysis where the infringing sales did not occur, but this expert opined based on the defendant licensing the patent.  The court finds this theory unviable.

Software claim is held unpatentable; disputed terms are not indefinite

Posted in Indefiniteness, Invalidity

Intellectual Ventures I, LLC, et al. v. Motorola Mobility LLC, C.A. No. 11-908-SLR, February 24, 2015.

Robinson, J. Defendant’s motion for summary judgment of invalidity and indefiniteness is granted in part and denied in part.

Following a 9-day jury trial, a mistrial was declared due to a hung jury. The court granted JMOL with respect to invalidity of certain claims. New trial dates were set for remaining claims, and the court addresses here defendant’s supplemental submission regarding patent eligibility and indefiniteness. The disputed technology relates to distributing updates of computer software, a quality of service aware wireless point-to-multi-point transmission systems, and file transfers between computers. With respect to § 101 invalidity, defendant asserts that certain claims are directed to the abstract idea of “distributing software updates to a computer.” The court agrees, and further finds that the recitation of specific hardware elements is insufficient to confer the requisite specificity under Alice. With respect to claims relating to coupling generic stations over a shared bandwidth and then allocating bandwidth, the court finds that step 2 of the Alice framework is satisfied because the invention does more than claim an abstract idea and say “apply it with a computer.” The inventive concept is found in the limitation of using packet headers to allocate the bandwidth.  The court finds that the terms “wireless bandwidth” and “unique transaction identifier” are not indefinite.

Magistrate declines to recommend dismissal of state law counterclaims

Posted in Dismissal, Infringement, Invalidity, State Law Claims, Unfair Competition

GPNE Corp. v. Fleetmatics USA, LLC, C.A. No. 13-2049-SLR-SRF, February 20, 2015.

Fallon, M.J. Magistrate’s Report and Recommendation recommends denying plaintiff’s motion to dismiss state law counterclaims.

The disputed technology relates to pagers.  Defendant alleges bad faith regarding plaintiff’s asserting infringement claims without an objectively reasonable basis following a claim construction from the Northern District of California. Defendant alleges plaintiff had knowledge of invalidating prior art references and reexamination proceedings while pursuing its infringement allegations.  The court finds that federal preemption does not bar defendant’s counterclaims.  In addition, the court finds that the state law counterclaims of tortious interference with contract, tortious interference with business opportunity, violation of the Delaware Uniform Deceptive Trade Practices Act, and common law unfair competition are sufficiently pled.

Magistrate recommends certain declaratory judgment claims of non-infringement be dismissed with leave to amend

Posted in Amendment of Pleadings, Declaratory Judgment, Dismissal, Indemnification, Infringement

Intel Corporation v. Future Link Systems, LLC, C.A. No. 14-377-LPS, February 12, 2015.

Burke, M.J. Magistrate issues a Report and Recommendation, recommending that defendants’ motion to dismiss for lack of subject matter jurisdiction be granted in part and denied in part. Oral argument was heard on November 20, 2014.

Plaintiff seeks a declaratory judgment that it does not infringe defendant’s patents. Defendant asserts that plaintiff lacks standing, that direct and indirect non-infringement claims fail to state a claim, and the case should be dismissed. Plaintiff asserts subject matter jurisdiction exists based upon due to infringement allegation made against plaintiff’s customers. The court disagrees with defendant’s argument that a supplier plaintiff can never have standing to sue a patentee for direct non-infringement. Plaintiff, by making allegedly infringing computer components and selling them to customers would perform its own independent acts of infringement, assuming infringement.  The court finds no actual controversy however with respect to method claims since there are no allegations how the steps of the method are to be performed.  No actual controversy exists with respect to induced infringement in the absence of allegations that plaintiff encouraged infringement. In addition, The contributory infringement claims are insufficiently pled  in the absence of allegations that its products cannot be used in a non-infringing manner.  No subject matter jurisdiction exists for the remaining patents owned by defendant. Jurisdiction based on an obligation to indemnify the customers is insufficiently plead where the complaint alleges merely that request for indemnification have been made.  The Magistrate recommends that the court grant plaintiff leave to amend.


Claim construction ruling issues regarding touch screen technology

Posted in Claim Construction

Immersion Corporation v. HTC Corporation, et al., C.A. No. 12-259-RGA, February 11, 2015.

Andrews, J. The court considers 13 claim terms from four patents. A Markman hearing took place on November 25, 2014 with respect to some terms, and arguments relating to the remaining terms were submitted on the papers.

This case had been stayed from 4/12/12 to 5/1/13 due to an ITC investigation. The court now construes the following terms:

  1. Touch input device
  2. Touch screen
  3. Cursor
  4. Haptic sensation
  5. Haptic effect
  6. Force information
  7. Outputting a force directly on said touch input device
  8. Impart a first force directly to the touch screen
  9. At least one other region provides a signal that is used by said computer to control a different function
  10. At least one other non-overlapping control region not related to cursor positioning
  11. Data set
  12. One (in the context of “associated with one software application)
  13. Application program

Actual notice of patent application is required for provisional remedies

Posted in Damages, Summary Judgment

Rosebud LMS, Inc. d/b/a Rosebud PLM v. Adobe Systems Incorporated, C.A. No. 14-194-SLR, February 5, 2015.

Robinson, J. Defendant’s motion for summary judgment of no remedies is granted.

The parties do not dispute that the accused feature of defendant’s product was discontinued and could not have been used after January 2013 when the patent-in-suit issued.  Plaintiff therefore cannot recover post-issuance damages.  Plaintiff seeks to recover provisional remedies under 35 U.S.C. § 154(d) based on the publication of the patent application in 2011.  The plain language of §154 requires that the alleged infringer have actual notice of the published patent application.  None of the evidence relied on by plaintiff identifies the patent application by name.  At best it provides constructive notice which is insufficient as a matter of law.

Five out of six disputed claims are anticipated in dispute relating to hybrid memory patents

Posted in Evidence, Invalidity, Motion to Strike/Preclude, Summary Judgment

Round Rock Research, LLC v. Sandisk Corporation, C.A. No. 12-569-SLR, February 4, 2015.

Robinson, J. Defendant’s motion for partial summary judgment of non-infringement of the ‘719 patent is denied.  Plaintiff’s motion for summary judgment of no anticipation with respect to disputed claims of the ‘719 patent with respect to certain prior art is granted.  Defendant’s motion for summary judgment that disputed claims of the ‘719 patent is anticipated by a patent application is granted.  Plaintiff’s motion for summary judgment that claim 31 of the ‘719 patent is not anticipated is granted.

Of five patents at issue in this case, two are at issue here due to staggered schedules for the other 3 patents.  The disputed technology relates to methods and apparatuses for managing data storage in hybrid memory devices.  Summary judgment of non-infringement is inappropriate because the experts dispute whether the accused products use the number of actual or predicted operations to determine where data is stored.  With respect to anticipation, a missing portion of a claim limitation cannot be incorporated by reference without detailed particularity as to what portion is incorporated.  Therefore plaintiff’s motion of no anticipation is granted with respect to certain prior art.  Defendant’s motion for summary judgment of anticipation of five out of 6 disputed claims based on a patent application is granted.  The parties’ dispute centered on whether that reference predated the priority date.  The court found that plaintiff did not adequately disclose its theory of constructive reduction to practice until filing the instant motion.  The declaration with corroborating evidence of diligence is stricken as untimely and the prior art qualifies as a 102(e) reference.