Delaware Patent Litigation Report

Delaware Patent Litigation Report

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.

Defendant is awarded attorney fees based on the court’s inherent powers

Posted in Attorneys' Fees/Costs/Interest, Exceptional Case/Willfulness, Sanctions

Parallel Iron LLC v. NetApp Inc., C.A. No. 12-769 – RGA, September 12, 2014.

Andrews, J. Defendant’s motion for attorney fees is granted. Oral argument took place on June 25, 2014.

Plaintiff originally accused products implementing parallel Network File System (pNFS). Amended disclosures identified accused products only using pNFS. Second amended disclosures were made which failed to adequately identify  the accused products  and served 2,600 pages of infringement contentions.  The case was stayed pending resolution of related cases.  During the stay, Plaintiff licenses  to the asserted patents which included a sublicense for defendant without cost. Defendant was dismissed.  The court finds that defendant was not the prevailing party under section 285 and therefore not entitled to fees under that statute.  It was, however, entitled to fees based upon the court’s inherent powers.  The court found that plaintiff acted in bad faith, vexatiously, and wantonly as it brought this suit without a good faith basis and continued to litigate it via a misleading and prejudicial litigation strategy.

JMOL is granted regarding jury finding of nonobviousness

Posted in JMOL/New Trial

L-3 Communications Corporation v. Sony Corporation, et al..(2) pdf, C.A. No. 10-734 – RGA, September 12, 2014.

Andrews, J. Defendant’s renewed motion for JMOL is granted.  Oral argument was held on August 28, 2014.

The disputed technology relates to a focal plane array imaging device.   Jury found the asserted claims to be not obvious. The parties dispute whether it was obvious to add an in-pixel amplifier to a pixel as set forth in a prior art reference. The court held that the jury’s finding of no obviousness was erroneous, both legally and as unsupported by the evidence.  A POSITA would have been motivated to add an in-pixel amplifier to the prior art design.  Defendant met the burden to show invalidity by clear and convincing evidence.

Form of Final Judgment dispute is resolved

Posted in Final Judgment

L-3 Communications Corporation v. Sony Corporation, et al., C.A. No. 10-734 – RGA, September 12, 2014.

Andrews, J. Contested form of final judgment is resolved

Plaintiff contended that the parties stipulated to judgment of non-infringement with respect to claims conceded after claim construction rulings issued, although no documents reflect that agreement. The court agrees to enter judgment on the conceded claims, however defendant is concerned that the language proposed by plaintiff would prevent it from a challenge on appeal. The court recognizes that the language of a stipulated judgment is important for the appellate court to review the court’s claim construction and avoid an advisory opinion.

Post trial motions and permanent injunction are denied

Posted in Equitable Defenses and Remedies, Infringement, JMOL/New Trial, Motion to Strike/Preclude

Riverbed Technology, Inc. v. Silver Peak Systems, Inc., C.A. No. 11-484 – RGA, September 12, 2014.

Andrews, J. Plaintiff’s JMOL motion and defendant’s motion for a permanent injunction are denied. Plaintiff’s motion to strike witness declarations is denied as moot. Oral argument took place on August 20, 2014.

The disputed patents relates to Wide Area Network technology. The court earlier granted partial summary judgment in favor of plaintiff on infringement, but reserved for trial a determination of the corresponding hardware that contains the infringing software. After a five-day jury trial beginning March 24, 2014, the jury returned a verdict largely in favor of defendant on its asserted patents. The court found that, although it was a very close call, there was a sufficient evidentiary basis to conclude plaintiff had the requisite knowledge and evidence of customer use for indirect infringement, based upon circumstantial evidence. In addition, plaintiff failed to prove invalidity. As for the bid for a permanent injunction,  defendant failed to establish irreparable harm, having failed to link to patented features to consumer demand.

Foreign defendant is dismissed for lack of personal jurisdiction; contributory infringement claims are adequately pled

Posted in Dismissal, Infringement, Jurisdiction/Venue/Standing

Intellectual Ventures I LLC, et al. v. Ricoh Company, Ltd, et al., C.A. No. 13-474 – SLR, September 12, 2014.

Robinson, J. Defendants’ motion to dismiss for lack of personal jurisdiction over defendant RCL is granted. Defendants’ motion to dismiss contributory and joint infringement claims is denied.

RCL is a Japanese company with no offices or registered agents in Delaware, and no control or agency relationship with U.S. subsidiaries. The fact that RCL established distribution channels in the U.S. for the accused products and the fact that RCL maintains a website permitting direct sales inquiries are insufficient for the court to exercise jurisdiction under Delaware’s long-arm statute. The court further denied jurisdictional discovery in the absence of allegation to justify further discovery. Defendants’ knowledge of the asserted patents by means of the complaint in this case and decision to continue its conduct satisfies the knowledge requirement of Global-Tech. The description of the accused representative product with the claim that it is not a staple article of commerce suitable for substantial non-infringing use is sufficiently pled for contributory infringement.