Delaware Intellectual Property Law Update
April 28, 2016
Publication| Intellectual Property
Welcome to the latest edition of the electronic Richards, Layton & Finger Patent Law Update. As always, if you have any questions about any of the decisions listed below or the District of Delaware in general, please let us know.
District of Delaware’s Second Bench & Bar Conference May 19 & 20
The agenda for Delaware’s Bench & Bar Conference being held on May 19 and 20, 2016 was recently released. To view the agenda, please CLICK HERE.
This year’s Bench and Bar Conference will be held at the Chase Center on the Riverfront in Wilmington. Confirmed speakers include judges from the United States Court of Appeals for the Third and Federal Circuits; the United States District Courts for the Districts of Delaware, New Jersey, Eastern Pennsylvania, Western Pennsylvania, Eastern Texas, Northern Texas, and California; the United States Bankruptcy Court for the Districts of Delaware and the Southern District of New York; and nationally respected practitioners from public and private practice. For registration, please CLICK HERE.
Judge Sleet Denies Motion to Dismiss Citing Factual Dispute on Patent-Eligibility of Subject Matter
In Bristol-Myers Squibb Co., et al. v. Merck & Co., Inc., et al., C.A. No. 15-560-GMS (D. Del. Mar. 17, 2016), Judge Sleet denied the defendants’ 12(b)(6) motion to dismiss the patent infringement suit for failure to state a claim. After considering the defendants’ argument that the patent claimed ineligible subject matter under 35 U.S.C. § 101, the Court permitted the suit to continue, concluding that the defendants failed to prove that the patent-in-suit was invalid on its face.
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Judge Andrews Denies Renewed Motion for Judgment as a Matter of Law and Motion for New Trial Following Jury Verdict
In InterDigital Communications Inc. et al v. ZTE Corporation et al., C.A. No. 13-009-RGA (D. Del. Mar. 18, 2016), Judge Andrews denied the defendants’ renewed motion for judgment as a matter of law or, in the alternative, for a new trial with respect to patents ‘966 and ‘847. Judge Andrews alternatively postponed deciding the defendants’ motion regarding the ‘244 patent in light of an appeal on the patent’s validity pending in the Federal Circuit.
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Judge Stark Grants Summary Judgment and Discovery Sanctions
In Robert Bosch LLC v. Alberee Products, Inc., C.A. No. 12-574-LPS, Chief Judge Stark granted the motions for summary judgment filed by the defendant Costco Wholesale Corporation (“Costco”) as to non-infringement of some of the patents-in-suit and stayed the case pending briefing on a motion to dismiss the plaintiff’s (“Bosch”) complaint as a sanction for Bosch’s discovery violations. Costco argued that summary judgment of non-infringement was appropriate because Bosch had licensed its “side-lock wiper system” in the United States, and Costco’s use of parts covered by the patents-in-suit were for the repair of parts in that wiper system. Thus, Costco contended that the “doctrine of permissible repair” applied. The Court agreed that this doctrine applied and granted Costco’s motion for summary judgment.
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Judge Andrews Limits Number of Custodians for Electronic Discovery
In Bradium Technologies LLC v. Microsoft Corporation, C.A. No. 15-031-RGA, Judge Andrews entered an electronic discovery order limiting the number of custodians and requiring the parties to serve separate requests for production directed to e-mail. First, the parties disagreed on the number of custodians that the parties should designate, with the plaintiff (Bradium) proposing ten custodians and the defendant (Microsoft) proposing five. The Court determined that the parties would designate 10 custodians, and thereafter, Bradium could pick its “top five.” If the custodians were not designated in the top five, the defendants were not required to treat them as custodians.
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Judge Sleet Construes Claims as Plain and Ordinary Meaning
In Ioengine, LLC v. Interactive Media Corp. d/b/a Kanguru Solutions et al., C.A. No. 14-1571-GMS, Judge Sleet construed all disputed terms of the patent-in-suit as having plain and ordinary meaning. In construing the last of four claim terms, the Court declined to “construe terms that are already evident from reading the entire claim.” The Court found that “injecting additional limitations for particular terms independently will likely confuse the jury”; rather, these claim terms should be read and “considered in the context of the entire claim.”
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Judge Andrews Grants in Part Motion to Compel Discovery
In Delaware Display Group LLC v. LG Electronics Inc., C.A. No. 13-2109-RGA (D. Del. Mar. 29, 2016), Judge Andrews granted the defendants’ motion to compel discovery in part, requiring that the plaintiff supplement its responses to two requests for production and produce “at least one piece of paper documenting the purchase of each of the 200 or so charted [accused products].” This narrowed the defendants’ original request of “all invoices/purchase orders for the models of the defendants’ accused products” listed on the plaintiff’s infringement charts in addition to “all non-privileged communications related to the purchase of such models, to the extent they exist.”
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Chief Judge Stark Permits Sur-Rebuttal Expert Report with Costs in Lieu of Striking Untimely Reports
In Andover Healthcare, Inc. v. 3M Company, C.A. No. 13-0843-LPS (D. Del. Mar. 25, 2016), Chief Judge Stark denied the defendant’s motion to strike the plaintiff’s untimely expert reports. The defendant moved to strike three of the plaintiff’s rebuttal reports because they were untimely (served two weeks after the set deadlines despite the defendant’s objection to any extension and without leave of the Court). Judge Stark found that the expert reports were untimely under the scheduling order and the delay prejudiced the defendant. However, Judge Stark also found that the content of the reports was proper rebuttal, and the plaintiff and its experts were diligent in preparing the reports.
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Judge Sleet Rules on Post-Trial Motions and Allows “Legally Unsupportable” Verdict to Stand
In EMC Corporation v. Zerto, Inc., C.A. No. 12-956-GMS (D. Del. Mar. 31, 2016), Judge Sleet denied all of the defendant’s post-trial motions, partially granted the plaintiff’s renewed motion for judgment as a matter of law, denied the plaintiff’s motion for a permanent injunction, and partially granted the plaintiff’s motion to amend the judgment. The case involved infringement allegations related to five patents. After a 10-day jury trial, a complicated but unanimous verdict was reached through which the plaintiff was awarded $585,783.00 in damages. The defendant filed three post-trial motions: (1) for a finding that three of the patents were unenforceable due to inequitable conduct; (2) for a new trial and to alter or amend the judgment due to an inconsistent verdict; and (3) a renewed motion for judgment as a matter of law. The plaintiff also filed three post-trial motions: (1) a renewed motion for judgment as a matter of law; (2) a motion for permanent injunction; and (3) a motion to amend the judgment.
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Judge Robinson Grants Motion for Attorneys’ Fees
In Joao Bock Transaction Systems, LLC v. Jack Henry & Associates, Inc., C.A. No. 12-1138-SLR (D. Del. Mar. 31, 2016), Judge Robinson granted the defendant’s motion for attorneys’ fees but denied its motion for supplemental attorneys’ fees (including appeal-related fees), finding the case exceptional under Section 285. The plaintiff asserted claims against the defendant for direct infringement of one patent, to which the defendant asserted counterclaims for declaratory judgment of invalidity. The defendant’s motion for summary judgment of invalidity and non-infringement was granted, and judgment was entered in its favor. Judge Robinson stated that the posture of the case “stands out from other cases” and highlighted the following: (1) the plaintiff moved to dismiss the defendant’s counterclaims and defenses, which were sufficiently pled; (2) the plaintiff asserted a substantial number of accused products (and delayed in narrowing the field for over a year); (3) the plaintiff “turned the principles of claim construction on their head” during claim construction; and (4) the plaintiff lacked a coherent infringement theory, as “evidenced by its shifting infringement positions.”
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Judge Robinson Denies Motion for Attorneys’ Fees
In Adeldyn Corp. v. Sony Corp., C.A. No. 11-440-SLR (D. Del. Mar. 31, 2016), Judge Robinson denied the defendants’ motion for attorneys’ fees, finding that the case was not exceptional. The plaintiff asserted claims of direct and induced infringement of one patent and alleged that such infringement was willful. After two unsuccessful motions to dismiss the inducement and willful infringement claims, the defendants’ motion for summary judgment on non-infringement (due to collateral estoppel) and invalidity was granted, and judgment was entered in the defendants’ favor. While Judge Robinson noted that the patent at issue faced an unfavorable summary judgment ruling in a prior suit brought by the plaintiff, she also recognized that the defendants had opposed early summary judgment practice and decided to proceed to discovery.
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