Delaware Patent Litigation Report

Delaware Patent Litigation Report

Attorney’s fees are awarded

Posted in Attorneys' Fees/Costs/Interest, Equitable Defenses and Remedies, Sanctions

Parallel Iron LLC v. NetApp, Inc, C.A. No. 12-769-RGA, March 25, 2015.

Andrews, J.  Defendant’s request for attorney’s fees is granted in part.  Defendant is instructed to submit a joint proposed order reflecting the award. Defendant’s request for discovery and an injunction are denied.

This suit was filed in June, 2012 alleging infringement of three patents which accused by way of example products implementing parallel Network File System (pNFS).  Subsequent amended disclosures identified only the use pNFS as the basis for alleging infringement.  In May, 2013, plaintiff served 2,600 pages of infringement contentions naming specific products with no mention of pNFS.  In August 2013, plaintiff confirmed it was no longer accusing pNFS.  The court granted a stay pending resolution of related cases.  In January 2014, Plaintiff granted a license with a sublicense to defendant with no payment obligation by defendant.  In March, 2014, the court granted defendant’s motion for fees under its inherent powers rather than section 285 since the case resolved by means of a license and not a decision on the merits.  The court then conducted an in camera review and determined that plaintiff initiated the suit without a good-faith belief that the accused instrumentalities implemented pNFS in an infringing manner.  Plaintiff strung defendant along for over a year before finally stating they had no intention of accusing products implementing pNFS.  The court agrees with defendant that local counsel fees do not have a bearing on the overall reasonableness of the fee request because that cost was shared by more than 20 defendants.  The court further finds defendant did not violate rule 408 by referring to settlement discussions.  Defendant is further entitled to fees incurred in bringing the fee motion.  The court took issue with the hourly rate billed by New York counsel.  The relevant rate is the prevailing rate in the forum.  The $594,162 amount requested must be modified by multiplying by a fraction consisting of the blended hourly rate of Delaware attorneys involved as the numerator and the blended rate of the attorneys involved as the denominator.  “Blended hourly rate” is based on the hourly rates of the attorneys taking into account the proportion of work the attorneys did.  The numerator should be based on the AIPLA Report of the Economic Survey.  Defendant’s request for discovery of assets is denied as premature under Rule 69(a)(2) and injunctive relief is denied as speculative.

Patent directed to “upselling” is invalid

Posted in Dismissal, Invalidity

Tuxis Technologies, LLC v., Inc., C.A. No. 13-1771-RGA, March 25, 2015.

Andrews, J.  Defendant’s motion to dismiss for failure to state a claim under section 101 is granted as to all asserted claims.  Oral argument was held on May 23, 2014.  A prior motion to dismiss was granted with respect to claim 1, and after additional briefing and consideration of supplemental authority all claims are dismissed.

The disputed technology is directed to “upselling,” which the court finds is an abstract idea with a longstanding commercial practice.  Plaintiff claims that the particular ways to implement the upselling is novel.  Applying the Alice framework, the court finds that the fact that the upselling occurs remotely and/or over the Internet does not make the claimed subject matter non-abstract.  The court finds that the negative limitations in the claims are well-understood, routine, conventional activity.  The routine steps in the claims do not transform the abstract idea of upselling into patent-eligible subject matter.

Stay pending trial in related case is granted; request to enjoin defendant from seeking post-grant relief is denied

Posted in Equitable Defenses and Remedies, Reexamination/Reissue/Interference/inter partes review, Stay

Helios Software, LLC, et al. v. SpectorSoft Corporation, C.A. No. 15-20–LPS-CJB, March 25, 2015.

Burke, M. J.  Defendant’s motion to stay pending entry of judgment in a related case is granted.  Plaintiff’s request to enjoin defendant from initiating post-grant review is denied.

A 5-day trial in the related case is set to begin on June 15, 2015.  The patent in this case is a continuation of the patent-in-suit in the related case.  Thus, a stay could provide some degree of simplification, such as invalidity issues.  Plaintiffs do not contest a stay is warranted until some time after that June trial.  This case, in its infancy, also supports a stay.  The parties dispute the termination of the stay.  Plaintiffs argue for a date certain after the trial concludes, and defendant argues for a time after judgment has been entered.  The court is unwilling to stay for an indeterminate length of time.  The stay will extend to August 28, 2015, and the parties are to file by July 24 a joint letter to advise the court whether either party intends to move to extend the stay at that point.  Plaintiff’s request to enjoin defendant from initiating post-grant review is defective as it violates Local Rule 7.1.2 and plaintiff has provided no authority indicating the court has power to grant that request.

Daubert motions are granted in part; relative value allocation approach to apportionment is unreliable

Posted in Daubert/Experts

Fairchild Semiconductor Corporation, et al. v. Power Integrations, Inc, C.A. No. 12-540 – LPS, March 20, 2015.

Stark, C. J.  Defendant’s Daubert motion is granted in part and the remaining part remains pending.  Plaintiff’s motion to preclude testimony is denied in part and granted in part.  Experts whose testimony was excluded may serve revised supplemental reports as is the opposing party’s experts, and both sides’ experts are to be made available for depositions. Oral argument was held on March 3, 2015.

Defendant claims that plaintiff’s damages expert for induced infringement should not be allowed to testify because he used the wrong date for the hypothetical negotiation. Plaintiff contends that defendant’s expert used the same incorrect date, which fact was not contested.  The court sua sponte precluded experts from both sides from offering opinions based on the incorrect date. The court disagrees with plaintiff’s argument that Defendant’s expert’s analysis on infringement and invalidity is improper for importing new limitation on terms and for failure to provide an adequate elaboration of his opinion. Plaintiff also challenges the opinions of a second expert on the grounds that his “relative value allocation” approach to apportionment is unreliable and contains a fatal mathematical error, relying on defendant’s products in his apportionment analysis rather than the accused products. The court finds that reliance to be proper. The court agrees that defendant’s reliance on a “rule of thumb” that 80% of value may be attributable to intellectual property is improper because the analysis improperly deals with high-tech companies rather than high-tech products, and is therefore unreliable. The mathematical error regarding the sales price of one accused product is conceded and should be corrected before trial.

Patents are invalidated due to section 101 unpatentable subject matter.

Posted in Appeal of Magistrate Report and Recommendation, Invalidity, Summary Judgment

Tenon & Grove, LLC, et al. v. Plusgrade S.E.C., et al., C.A. No. 12-1118-GMS-SRF, March 11, 2015.

Sleet, J.  Defendant’s motion for summary judgment is granted.  The Magistrate had issued a R&R on January 6, 2015, after which plaintiff filed objections.  The court overrules plaintiff’s objections.

The patents are found to be invalid based on §101 unpatentability.  The patents-in-suit relate to computer implemented methods for dynamic pricing.  Following Alice, the court agrees with the magistrate that the patents lack an inventive concept.  Here, the claims recite generic computer implementation.

Plaintiff may not recover damages predating certificates of correction

Posted in Damages, Motion for Judgment on the Pleadings

Parallel Networks Licensing, LLC v. International Business Machines Corporation, C.A. No. 13-2072- SLR, March 17, 2015.

Robinson, J.  Defendant’s motion for partial judgment on the pleadings is granted.

This lawsuit was filed on December 20, 2013. Both patents were placed into reexam in 2007 after which prior claims were cancelled and new claims were added and determined to be patentable. The disputed technology relates to computer-implemented methods relating to dynamic Web pages.  Plaintiff has asserted infringement of corrected claims, but seeks damages occurring prior to the date of correction. The PTO was not granted authority to correct claims retroactively.  Plaintiff asks the court to correct retroactively.  The court, while recognizing the harsh result to plaintiff, concludes it cannot correct the errors in the patents-in-suit; therefore plaintiff may not recover damages occurring prior to the issuance of the certificates of correction.

Two California state law claims are dismissed with prejudice

Posted in Dismissal, Inventor Issues, Motion to Strike/Preclude, State Law Claims

Gilead Sciences, Inc., et al. v. Abbott Laboratories, Inc., et al, C.A. No. 13-2034-GMS, March 13, 2015.

Sleet, J.  Defendant’s motion to strike counts 9 and 10 under California’s Anti-SLAPP Stature is granted with prejudice. Defendant’s motion to dismiss counts 9-11 is denied in part and granted in part. Plaintiff’s motion to file a surreply is denied.

The disputed technology relates to a therapy for the treatment of hepatitis C virus.  The California anti-SLAPP statute allows courts to promptly expose and dismiss meritless and harassing claims seeking to chill protected expression. The court finds that plaintiff has not sufficiently pled an injury in fact, pecuniary loss as a result of slander. However, with respect to count 11 relating to violation of trade secret law, the court finds that it is plausible to infer that information disclosed was used in furtherance of patent applications and not for weighing the potential acquisition of Pharmasset.  The motion to dismiss count 11 is denied.

Preliminary injunction is granted

Posted in Equitable Defenses and Remedies, Infringement, Invalidity

Cryolife, Inc. v. C.R. Bard, Inc., et al., C.A. No. 14-559-SLR, March 10, 2015.

Robinson, J.  Defendant Medafor’s motion for a preliminary injunction is granted.

This is a declaratory judgment action.  The disputed technology relates to topically applied clotting material.  The court finds that defendant has shown a likelihood of success on infringement since the constructions offered by defendant for “Porous particles” and “allowing said porous particles to remain in contact with the blood while clotting initiates” are consistent with the specification and plaintiff has not offered non-infringement arguments consistent with these constructions.  Defendant has also shown likelihood of success on validity, and carried its burden on the remaining prerequisites for preliminary injunctive relief.  The balance of hardships weighs in favor of defendant because the parties’ products compete and are targeted to the same customers and hospitals.

The judge further noted in a footnote that citations to a chart with abbreviations added to the court’s burden and citations in accordance with D.Del. LR 7.1.3(a)(6) should be followed.

Claim construction opinion issues regarding wireless technology

Posted in Claim Construction, Daubert/Experts, Delaware Procedure/Rules, Sanctions

Interdigital Communications, Inc., et al. v. ZTE Corporation, et al., C.A. Nos. 13–009–RGA; 13-010–RGA, March 6, 2015.

Andrews, J.  The court construed four terms from two patents relating to communication with wireless networks.

A 6-day trial resulted in a jury finding that 3 patents-in-suit were valid and infringed by defendant.  A mistrial was declared as to the 4th patent-in-suit.  The court granted the defendant in a related case leave to make additional arguments with respect to 2 terms from one of the patents previously tried and found in the first trial to be valid and infringed.  The disputed technology relates to cellular transceivers and communication with a wireless network.  The following terms were construed:

  1. Maintain a communication session with the wireless network;
  2. Assigned physical channels;
  3. A same physical downlink control channel; and
  4. Both downlink channel assignment information and uplink channel assignment information being received via the same physical downlink control channel.

The court reminds parties to advise experts that giving testimony about what a claim construction “means” is improper.  It will give due consideration to the possibility of sanctions if it happens again.

Magistrate recommends denying motion to allow Rule 54(b) appeal

Posted in Delaware Procedure/Rules, Dismissal, Invalidity

TruePosition, Inc. v. Polaris Wireless, Inc, C.A. No. 12-646 – RGA-MPT, March 3, 2015.

Thynge, M.J.  Magistrate recommends denying Plaintiff’s motion for  allowance of a 54(b) interlocutory appeal or voluntary dismissal of one claim.

The disputed technology relates to equipment and software for locating mobile devices. A request to stay pending IPR was denied. The court thereafter found in a Report and Recommendation two claims invalid as indefinite on February 2, 2014.  Plaintiff filed objections and the case was stayed pending resolution of those objections.  The Patent Office found those claims to be definite. An IPR hearing based on anticipation and obviousness took place in July, 2014. On August 26, 2014 the Judge found the claims to be indefinite.  On November 5, 2014, the Patent Office found the claims to be obvious and anticipated. While invalidity of these two claims has been resolved for purposes of appeal, one additional claim has not.  The court finds that (1) plaintiff’s infringement claim is not final within the meaning of Rule 54(b), and (2) fact discovery regarding that third claim having been conducted on the third claim, dismissal without prejudice of that claim should be denied.