Intellectual Property – Motions to Dismiss
November 8, 2013
Publication| Intellectual Property
Judge Stark Denies Defendant’s Motion to Dismiss Complaint Alleging Antitrust Violations and Grants in Part Plaintiff’s Motion to Strike
In Kickflip, Inc. v. Facebook, Inc., C.A. No. 12-1369-LPS (D. Del. Sept. 27, 2013), Judge Stark denied defendant Facebook, Inc.’s motion to dismiss a complaint alleging antitrust violations and tortious interference for failure to state a claim and lack of standing. In denying defendant’s motion to dismiss, Judge Stark determined that plaintiff satisfied its burden of alleging an event causing injury, that plaintiff sufficiently defined the markets for virtual-currency service and social-game networks, and that the complaint adequately alleged facts that supported a plausible inference that defendant had monopoly power in the relevant markets. Further, plaintiff requested that the Court strike all materials relied upon by defendant in support of its motion to dismiss that were outside of the pleadings. Judge Stark denied most of plaintiff’s motion to strike but struck two of the statements in defendant’s brief because such statements were not anchored to an integral part of the complaint.
Magistrate Judge Fallon Recommends that the Court Grant a Motion to Dismiss for Lack of Subject Matter Jurisdiction and Deny a Motion for Leave to File a Sur-Reply as Moot
In Mayfair Wireless LLC v. Celico Partnership, et al., C.A. No. 11-772-SLR-SRF (D. Del. Aug. 30, 2013), Magistrate Judge Fallon recommended that the Court grant defendants’ motion to dismiss for lack of subject matter jurisdiction and deny as moot plaintiff’s motion to file a sur-reply in opposition to the motion to dismiss. The Court examined three purported gaps in the chain of title of the patent-in-suit and concluded that two of the three alleged gaps constituted breaks in the chain of title. The Court, therefore, recommended that defendants’ motion to dismiss be granted because plaintiff did not have standing as a valid assignee to bring the suit.
Judge Andrews Grants in Part and Denies in Part a Motion to Dismiss for Lack of Personal Jurisdiction and Denies a Motion to Transfer
In Round Rock Research LLC v. ASUSTeK Computer Inc., et al., C.A. No. 11-978-RGA (D. Del. Aug. 20, 2013), Judge Andrews granted in part and denied in part defendants’ motion to dismiss for lack of personal jurisdiction and denied their motion in the alternative to transfer to the Northern District of California. Defendant ASUSTeK Computer Inc. is a Taiwanese company that has no physical presence in the United States. Defendant ASUS Computer International, Inc., a wholly owned subsidiary of ASUSTeK, is a California corporation with its principal place of business also in California. ASUSTeK produces ASUS brand computers and computer-related products.
Judge Andrews concluded that ASUS conceded specific personal jurisdiction over it for the claims involving eight of the ten patents and, accordingly, denied the motion to dismiss as to those claims. With respect to the remaining two patents, the Court concluded that plaintiff met its burden of establishing specific personal jurisdiction. Judge Andrews then addressed plaintiff’s argument that there is specific jurisdiction and “dual jurisdiction” over ASUSTeK in Delaware. The Court concluded that there is no jurisdiction over ASUSTek because it does not transact any business, perform any work, contract to do anything, or sell or offer to sell any computers in Delaware. The Court also declined to recognize “dual jurisdiction,” that is, jurisdiction under a blend of 10 Del. C. § 3104(c)(1) and (c)(4). The Court also rejected plaintiff’s argument that there is jurisdiction over ASUSTeK because ASUS is its agent. The Court found that the mere parent-subsidiary relationship is not sufficient to make the subsidiary the agent of its parent for purposes of jurisdictional analysis. Since plaintiff did not offer evidence that ASUSTeK runs the day-to-day activities of ASUS, the Court did not consider the due process analysis.
Judge Andrews denied defendants’ motion to transfer to the Northern District of California. Aside from plaintiff’s Delaware incorporation and its choice of Delaware, which was accorded some deference, the Court also found that plaintiff’s contemporaneously suing three other computer manufacturers in Delaware marginally favored not transferring the case. The other factors did not show that the balance of convenience tipped strongly enough in favor of transferring the case.
Judge Robinson Grants a Motion to Dismiss Counterclaim for Attorneys’ Fees under Section 285
In Technology Innovations, LLC v. Amazon.com, Inc., C.A. No. 11-690-SLR (D. Del. Aug. 15, 2013), Judge Robinson granted plaintiff’s motion to dismiss defendant’s counterclaim for attorneys’ fees under 35 U.S.C. § 285. The Court declined to decide whether a request under Section 285 may be raised as a counterclaim but concluded, nevertheless, that Section 285 sanctions were not appropriate in this case because attorneys’ fees pursued under Section 285 can only be awarded after the substantive issues in the case have been resolved and the prevailing party has been determined. Judge Robinson, however, did permit defendant to renew its motion for Rule 11 sanctions against plaintiff.
Judge Robinson Denies Motion to Dismiss Indirect Infringement Claims
In Telecomm Innovations, LLC v. Ricoh Company, Ltd., et al., C.A. No. 12-1277-SLR (D. Del. Aug. 6, 2013), Judge Robinson denied defendants’ motion to dismiss plaintiff’s indirect infringement claims. The Court concluded that plaintiff sufficiently alleged that defendants induced direct infringement after the filing of the complaint. Plaintiff’s allegation that defendants’ customers and others have infringed and continue to infringe the patent-in-suit was sufficient to allow an inference that at least one direct infringer exists. Plaintiff also sufficiently alleged that defendants had knowledge of the patent-in-suit for purposes of post-complaint relief because it alleged that defendants received notice of the patent-in-suit as least as early as the filing of the complaint. Finally, plaintiff’s factual allegations that defendants provided technical support and instructions to their customers on how to use the products in such a way as to infringe the patented invention were sufficient to allege that defendants induced direct infringement after the filing of the complaint.
Judge Robinson Denies a Motion to Dismiss for Lack of Subject Matter Jurisdiction or, in the Alternative, to Strike the Amended Complaint
In Nexans Inc., et al. v. Belden Inc., et al., C.A. No. 12-1491-SLR (D. Del. Aug. 6, 2013), Judge Robinson denied defendants’ motion to dismiss for lack of subject matter jurisdiction. Following settlement negotiations between the parties and after expiration of a standstill agreement, plaintiff filed the instant declaratory judgment action in Delaware, alleging non-infringement and invalidity of three of defendants’ patents as well as infringement of one of plaintiff’s patents. Two days later, defendants filed two suits in the Southern District of Indiana, one against plaintiff and a separate action against different defendants, each alleging infringement of four of defendants’ patents, including the same three at issue in the instant action. Plaintiff in this suit later filed an amended complaint to add the fourth patent to its claims for declaratory judgment.
Plaintiff moved to enjoin defendants from prosecuting the action against it in the Southern District of Indiana. Defendants in turn moved to dismiss the declaratory judgment claims in favor of that related action and also moved to dismiss for lack of subject matter jurisdiction or, in the alternative, to strike the amended complaint. In denying the motion to dismiss, Judge Robinson rejected defendants’ argument that the case or controversy with respect to the fourth patent did not arise until Belden’s filing of the Indiana action. The Court concluded that the general dispute between the parties gave rise to the specific controversy over the fourth patent. With respect to the motion to enjoin and cross-motion to dismiss the declaratory judgment claims, Judge Robinson concluded that the Delaware action was first-filed and that no exceptions to that rule applied. Accordingly, the Court granted the motion to enjoin and denied the cross-motion to dismiss the declaratory judgment claims.
Judge Stark Denies Motion to Dismiss
In United Access Technologies, LLC v. AT&T Corp., et al., C.A. No. 11-338-LPS (D. Del. July 26, 2013), Judge Stark denied defendants’ motion to dismiss for failure to state a claim. Defendants moved to dismiss on the basis that laches barred plaintiff’s claims. Judge Stark concluded that the defense of laches was not clear on the face of the complaint and that discovery would be necessary before the Court could fairly evaluate a laches defense.
Judge Robinson Grants a Motion to Dismiss Direct, Joint, and Indirect Infringement Claims
In Gevo, Inc. v. Butamax™ Advanced Biofuels LLC, et al., C.A. No. 12-1724-SLR (D. Del. July 8, 2013), Judge Robinson granted defendant BP’s motion to dismiss direct, joint, and indirect infringement claims. Plaintiff asserted in its complaint that Butamax is a joint venture of DuPont and a subsidiary of BP. Judge Robinson found that plaintiff failed to plead sufficiently that BP controls the activities of its subsidiary or the subsidiary’s joint venture, and therefore plaintiff’s allegations did not sufficiently tie BP to the alleged act of infringement. The Court also concluded that plaintiff’s allegations of infringement as to its provisional patent rights were insufficient under the statutory requirement that an accused infringer have “actual notice of the published patent application” because plaintiff’s assertion of “knowledge” “on information and belief” was not supported by any specific facts. The Court therefore dismissed plaintiff’s claims for direct infringement. The Court also dismissed plaintiff’s claim for joint infringement, finding that plaintiff failed to plead sufficiently that BP controlled its subsidiary or the subsidiary’s joint venture. The Court dismissed plaintiff’s claim for induced infringement for the same reason. With respect to plaintiff’s claim for contributory infringement, Judge Robinson concluded that plaintiff did not plead that BP sold, offered to sell, or imported a component of the infringing product into the United States, and therefore the claim for contributory infringement must be dismissed. Finally, the Court dismissed plaintiff’s claim for willful infringement because the plaintiff did not provide sufficient facts to support its allegation of pre-suit knowledge of the patents-in-suit.