Delaware Patent Litigation Report

Delaware Patent Litigation Report

Court awards Rule 11 sanctions but not fees

Posted in Infringement, Sanctions

Vehicle Operation Technologies LLC v. American Honda Motor Co. Inc., et al., C.A. Nos. 13-537 – RGA; 13-538 – RGA; 13-539 – RGA; 13-540 – RGA; 13-541 – RGA; 13-542 – RGA; 13-712 – RGA, September 12, 2014.

Andrews, J. Defendants’ motion for Rule 11 sanctions was granted in part. Oral argument was heard on June 27, 2014.

Plaintiff brought this lawsuit against six automobile manufacturers. BMW obtained leave to file a Rule 11 during the initial scheduling conference based on claim scope disavowal. The court determined that there was a prosecution disclaimer that would read out the accused vehicles’ displays, noting publicly available manuals indicated certain accused displays were not “a dedicated display” as plaintiff contended. The court further ruled that the surrendered subject matter could not be reclaimed under the DOE.  Finally the court found that a reasonable objective pre-suit investigation would have indicated that the present lawsuit was without any merit. Plaintiff’s original outside counsel withdrew prior to the Rule 11 motion being filed and new outside counsel appeared. The court noted that the fact that the new outside counsel did not sign the complaint did not prevent the court from sanctioning them for advocating the unreasonable infringement position, however since the motion was not directed to those attorneys, attorneys’ fees were not awarded.  The sanction entered was dismissal of plaintiff’s lawsuit. It further noted that Rule 11 prevents the court from awarding monetary damages against the party. Local counsel’s culpability is on par with that of out of town counsel and counsel must be familiar enough with the relevant law to satisfy the requirements of Rule 11.However, since they were not on notice of the claims against them, fees were similarly not awarded against local counsel.

Court awards fees in exceptional case

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

Chalumeau Power Systems LLC v. Alcatel-Lucent, et al., C.A. No. 11-1175 – RGA, September 12, 2014.

Andrews, J. Defendants’ motion for fees is granted.

Defendant seeks fees pursuant to section 285 as the prevailing party claiming that the case was exceptional given plaintiff’s frivolous  infringement theories and claim construction positions. Defendant also complains of plaintiff’s overall litigation conduct in opposing defendant’s motion to add a license defense and a late appointment of an expert. The court finds that the pre-suit investigation which lumped many limitations together did not demonstrate an adequate investigation into whether the accused device infringes each and every claim limitation,  Plaintiff’s proposed claim constructions were similarly flawed despite the fact that the court adopted some of plaintiff’s proposed constructions. The court found that plaintiff filed a frivolous lawsuit with the sole purpose of extorting a settlement fee and dropped the case only after realizing defendant would not settle.  Plaintiff’s litigation strategy was to string out the case in the hopes that defendant would incur fees while plaintiff would not, belatedly naming an expert

Claim terms are construed regarding a patented method relating to semiconductor wafers

Posted in Claim Construction

Semcon Tech, LLC v. Micron Technology, Inc., C.A. No. 12-532– RGA, September 9, 2014.

Andrews, J.  A Markman hearing took place on June 26, 2014.

The following claim terms were construed:

  1. Tracked information
  2. Control parameters
  3. Finishing cycle time
  4. In situ finishing information/ in situ process information
  5. Processor to evaluate the in situ process information and the tracked information (not indefinite)
  6. [a multiplicity of] finishing information
  7. Tracked semiconductor wafer
  8. A family of stored information/member [of/in] the family of stored information
  9. Historical performance
  10. A first uniform region/ a second uniform region/ one uniform region
  11. Heterogeneous semiconductor wafer surface/ heterogeneous regions of a semiconductor wafer surface
  12. The lengthy combination terms (These are terms containing term construed above; remainder of long phrases receive their plain and ordinary meaning)

Claims are construed regarding call center technology

Posted in Claim Construction

Pragmatus Telecom, LLC, et al. v. Volkswagen Group of America, Inc., et al., C.A. Nos. 12-1553– RGA; 12-1559 – RGA; 12-1684 – RGA; 13-897 – RGA, September 9, 2014.

Andrews, J. X terms are construed from three patents-in-suit. Oral argument took place on September 4, 2014.

The court construed the following terms:

  1. Remote help option
  2. Help request form/ help request/ and requests for help
  3. Server/ the server
  4. Help request form including the customer IP address
  5. Upon selection of the remote help option, send a help request to the call center
  6. A contact channel
  7. [the call center comprising] means operable to receive the help request and to contact the user of the customer terminal using the contact channel identified in the help request.
  8. The remote help option provides for the selection of one of a plurality of different contact channels
  9. A WWW server comprising “means for providing access by customers to a web page including a help request interface for receiving requests for help from customers
  10. CGI programs
  11. Automated call distribution system
  12. Call center/ call centre
  13. Customer IP address

Court permits intervention, amendments, and severance of ten lawsuits.

Posted in Intervention, Motion to Sever

Intellectual Ventures I LLC, et al. v. AT&T Mobility LLC, et al., C.A. Nos. 12-193-LPS; 13-1631-LPS;13-1634-LPS; 13-1635-LPS; 13-1668-LPS; 13-1669-LPS; 13-1670-LPS; 13-1671-LPS; 13-1672-LPS, September 8, 2014.

Stark, C. J. Non-party’s motions to Intervene are granted; plaintiffs’ motions for leave to amend are granted; defendants’ motion to sever are granted; and Nextel’s unopposed motion to redact is granted.

The court previously severed plaintiffs’ claims 8nto eight separate actions. Non-party Sierra moved to intervene as a matter of right or alternatively as a permissive party based on its manufacture of products for others that are claimed to infringe. The motions are granted. Plaintiff moved to amend its complaint to add additional parties, and Ericsson sought leave to intervene in those actions. Interveners’ motions are timely based on the pre-Markman stage of the proceedings.  The court rejects plaintiff’s argument that intervention as of right is limited to parties who owe an indemnity obligation to defendants or who have a non-economic interest at risk. Also, plaintiff’s proposed limitation on interveners not to the scope of the litigation or joint expert reports is rejected.  Finally, the court exercises its discretion and will sever ten cases for which scheduling orders must be filed. The motion to redact portions of a discovery conference is granted because the proposed redactions contain confidential and sensitive business information.

Motion to strike should be granted for exceeding briefing page limits

Posted in Daubert/Experts, Motion to Strike/Preclude, Summary Judgment

Monec Holding AG v. Motorola Mobility, Inc., et al., C.A. No. 11-798-LPS-SRF, September 5, 2014.

Fallon, M. J. Report and recommendation to grant defendants’ motion to strike plaintiff’s opening summary judgment and Daubert papers.

Defendant moved to strike plaintiff’s opening briefs in support of its motions for summary judgment and to exclude expert testimony.  In support, defendant maintained that plaintiff improperly exceeded the page limits by including factual material, citations, and legal analysis in the attached exhibits.  The Magistrate recommended that the motion be granted.  Defendant is prejudiced by plaintiff’s improper reliance on the exhibit to convey its legal arguments because defendant must respond to the exhibit within the briefing page limits.  Plaintiff may file amended submissions within fourteen (14) days.

Plaintiff granted leave to amend its complaint

Posted in Amendment of Pleadings, Declaratory Judgment, Jurisdiction/Venue/Standing

Takeda Pharmaceuticals U.S.A., Inc. v. Par Pharmaceuticals Companies, Inc.,  C.A. Nos. 13-1524 – SLR; 13-1729 – SLR, September 4, 2014.

Robinson, J. Plaintiff’s motion for leave to file an amended complaint is granted.

On May 30, 2014, plaintiff moved to amend its complaint to seek a declaratory judgment that the defendants’ respective proposed ANDA products contributorily infringe plaintiff’s patent.  The motion was granted.  The scheduling order required all motion to amend the pleadings be filed by August 1, 2014.  Trial is scheduled for August 3, 2015.  Plaintiff alleges in support that physicians will prescribe a drug for “off-label” uses whether or not that indication appears on the generic label.  Defendants maintain that the Court lacks subject matter jurisdiction because their respective ANDAs seek approval to market the drug for a non-patented use.  The issue at bar, according to the Court, is whether the Court is bound by defendants’ representations to the FDA that they will not market their generic drugs for the patented treatment, even when all the realities of the market indicate otherwise.  The Court reasoned that the off-label sale of the generic drugs was likely under the circumstances and, therefore, jurisdiction is proper.

Patent claims are invalid under 35 U.S.C. § 101

Posted in Invalidity, Summary Judgment

Walker Digital, LLC v. Google, Inc., C.A. No. 11-318 – LPS, September 3, 2014.

Stark, C.J. Defendant’s motion for summary judgment of invalidity for lack of patentable subject matter is granted.

Defendant moved for summary judgment of invalidity under 35 U.S.C. § 101.  Briefing was completed May 7, 2014.  The Court held oral argument on August 26, 2014.  Defendants maintain, inter alia, that the claimed invention is directed to nothing more than the abstract idea of an exchange of information about people, long practiced by human matchmakers, simply appended to a general computer system to accelerate the process.  Plaintiff, in turn, asserts that the Court may find the patents invalid for lack of patentable subject matter only if the patents preempt the entire idea of controlled information exchange between anonymous parties.  The Court granted the motion.  The Court reasoned that the claims contain nothing more than the assertion of an abstract idea, implemented in a conventional manner using a general purpose computer.  Thus, they are invalid.

Plaintiffs’ failed to properly plead willful infringement

Posted in Delaware Procedure/Rules, Dismissal, Enhanced Damages, Exceptional Case/Willfulness, Infringement, More Definite Statement, Motion to Sever

Intellectual Ventures I LLC, et al. v. Toshiba Corporation, et al., C.A. No. 13-453 – SLR, September 3, 2014.

Robinson, J. Defendants’ motion to dismiss is denied with respect to joint infringement and granted with respect to willful infringement.  Defendants’ motion to sever is denied.

Defendants moved to dismiss plaintiffs’ claims of joint and willful infringement or, alternatively, for a more definite statement.  They also moved to sever certain claims asserted by the two plaintiffs.  The motion to dismiss the willful infringement claim was granted.  The other motions were denied.  Plaintiffs’ factual allegations with respect to liability based on agency are taken as true at this stage of the proceeding and are thus sufficient to withstand a motion to dismiss.  This is especially true in view of defendants’ general denial of infringement without factual support as to the organizational relationships between the various defendants.  Plaintiffs, however, did not properly plead willful infringement.  General allegations about “discussions” or “a presentation” and providing a notice letter one day before the complaint was filed does not constitute a showing of objective recklessness.  Defendants’ motion for a more definite statement is moot.  Defendants’ motion to sever will be addressed at a more appropriate date.

Patent claim is directed to non-patent-eligible subject matter

Posted in Dismissal

Genetic Technologies Limited v. Laboratory Corporation of America Holdings, et al., C.A. No. 12-1736 – LPS-CJB, September 3, 2014.

Burke, M.J. Report and recommendation to grant motion to dismiss assert claim for failure to state a claim.

Plaintiff’s patent is directed to methods for selecting or matching athletic performance based on specific genes or alterations in genes.  Defendants moved to dismiss the only asserted claim under Fed. R. Civ. P. 12(b)(6) as 35 U.S.C. § 101 non-patent-eligible subject matter.  Plaintiff maintained that the claim is directed to the discovery of a natural law.  The Court recommended that the motion be granted.  The Court reasoned that the dispute centers on whether the claimed method recites merely a patent ineligible law of nature, or instead claims a patent-eligible application of that law of nature.  The Court then held that the claim does recite a law of nature but does not amount to the application of that law of nature to a new and useful end.