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Morris James Blogs

Defendants are awarded additional costs for depositions and e-discovery

Apeldyn Corporation v. Sony Corporation, et al., C.A. Nos. 11-440 – SLR-SRF; 11-581-SLR-SRF, July 27 2016.

Robinson, J. Defendants’ motion to review taxation of costs is granted in part and denied in part.

Delaware Local Rule 54.1 provides guidance as to how the court generally exercises it discretion to award costs. The court retains discretion to award costs beyond those limitations or not to award costs at all. The burden is on the party seeking costs to prove entitlement.  The court rules that the taxation of costs with respect to certain depositions is amended to include $6,783.05. The mathematical precision used by the clerk to assess whether depositions were “necessarily used”  in a case to resolve a material issue is a reasonable starting point for the clerk but is not always the best barometer.  The depositions were cited as important considerations in granting summary judgment and the court concludes that the depositions were necessarily and substantially used to resolve material issues.  Costs associated with videotaping should not be reimbursed. The videotape was not used in the motion practice, and it is rare for an expert not to testify live at trial. Defendants had no reasonable basis to incur this cost.  The court further concludes that defendants should recover some, but not all, costs of electronic discovery.  It awards 25% of defendants’ e-discovery costs, noting that defendants opposed an early resolution and elected to proceed with discovery.

Resolution of laches defense is left for trial

W.L. Gore & Associates, Inc. v. C.R. Bard, Inc., et al.,  C.A. No. 11-515 – LPS, July 27, 2016.

Stark, C. J.  Defendants’ objections to the magistrate’s report and recommendation are overruled.

The magistrate earlier recommended finding that defendants’ motion for summary judgment of laches be denied. He found genuine issues of material fact sufficient to rebut a presumption of laches.  After a de novo review, the court overrules the objections.

Motions to dismiss for failure to state a claim are granted in part and denied in part

Nexeon Limited v. EaglePicher Technologies, LLC, et al., C.A. No. 15-955 – RGA-MPT, July 26, 2016.

Thynge, C. M. J. Report and recommendation recommending that defendants’ motion to dismiss for failure to state a claim be granted in part and dismissed in part.

The disputed technology relates to methods of fabricating silicon particles for use in lithium rechargeable batteries.  The court concludes that direct infringement is adequately pled under Form 18.  Induced infringement with respect to one U.S. defendant is adequately pled in that the complaint alleges that the defendant provided instruction on how to engage in an infringing use. With respect to contributory inducement, plaintiff has not adequately pled facts demonstrating a lack of substantial non-infringing uses. The court recommends dismiss in this claim.

Nondisclosure agreement is not retroactive to earlier communications

Scientific Telecommunications LLC v. ADTRAN, Inc., C.A. No. 15-647-SLR, July 25, 2016.

Robinson, J. Plaintiff’s motion to dismiss count III of counterclaim is granted.

Count III alleges breach of a nondisclosure agreement.  The dispute in this counterclaim centers on whether the nondisclosure agreement is applicable to defendant’s knowledge of the patents-in-suit prior to its execution. The court finds no basis for applying the nondisclosure agreement to communications that took place prior to its execution and therefore finds it is not retroactive.

Motion to reconsider denial of transfer is denied

Scientific Telecommunications LLC v. ADTRAN, Inc., C.A. No. 15-647-SLR, July 25, 2016.

Robinson, J. Defendant’s motion to reconsider its denial of transfer is denied.

Defendant requests the court to reconsider its decision not to transfer this case in light of the Federal Circuit opinion in In re Link-a-Media Devices Corp.  Unlike that case, where both parties were headquartered in the transferee forum, here the plaintiff’s principal place of business is in Delaware. Both parties are Delaware corporations. The court further declines to certify the denial for an interlocutory appeal.

Court denies summary judgment after claim construction

Cronos Technologies, LLC v. Expedia, Inc., et al., C.A. Nos. 13-1538-LPS; 13-1541-LPS; 13-1544-LPS, July 22, 2016.

Stark, C. J. Claim construction opinion issues regarding three terms from one patent. Defendants’ motion for summary judgment is deferred pending the filing of a status report.

The disputed technology relates to website remote ordering systems. The following terms were considered:

  1. “Item Code”/ “identifying code”
  2. “data entry device for providing said terminal with said ... item codes"
  3. “user inputting said identifying code"

 Plaintiff contends that hyperlinks implemented in defendants’ websites are infringing item codes, The court concludes that defendants have met their burden of showing no genuine issue of material fact that their websites do not infringe. However, the court acknowledges that actual claim constructions are only being provided with this opinion and concludes that plaintiff should be permitted to consider new infringement theories even if it is unlikely it court persuade the court to allow them with the pretrial conference just a week away.   The parties are directed to meet and confer and to provide their positions on whether summary judgment of non-infringement should be entered.

Motion for summary judgment based on intervening rights is denied as are Daubert motions

MobileMedia Ideas, LLC v. Apple Inc., C.A. No. 10-258 - SLR, July 21, 2016.

Robinson, J. Defendant’s motion for summary judgment regarding damages is denied. The parties’ Daubert motions are also denied.

The disputed patents relate to cell phone technology. The patent-in-suit contains reexamined claims. The court considered whether intervening rights applied during the time between the date of issuance of the original claims and that of the reissued claims.  The court finds that the scope of the claims remained substantially identical such that intervening rights do not apply in this case. The court decides that the patentee bears the burden of satisfying the marking requirement where there is a question as to whether the patentee ever marketed a product in the United States that practices the asserted patent. Defendant moved to exclude the testimony of Dr. Gareth Loy, who holds a Doctor of Musical Arts degree focusing on computer science, digital signal processing and computer systems as having no expertise in the pertinent field of navigation technology. The court finds that this expert’s experience with embedded systems and information processing is sufficient and denied the motion. Defendant’s motion to exclude the testimony of damages expert John Jarosz based on royalty rates from prior litigation is likewise denied. The court finds that and disagreements as to the factual assumptions and conclusions can be addressed on cross examination. A request to exclude certain survey results is denied. Finally, Plaintiff’s motion to exclude evidence of non-infringing alternatives is denied in that empirical evidence is not mandatory and courts generally accept opinion evidence.

Court declines to recommend dismissing induced infringement claims

GlaxoSmithKline LLC, et al. v. Teva Pharmaceuticals USA, Inc., C.A. No. 14-878 – LPS-CJB, July 20, 2016.

Burke, M. J. Report and recommendation recommending that defendant’s motion to dismiss plaintiff’s induced infringement claim be denied.  Oral argument took place on March 1, 2016.

The disputed technology relates to generic carvedilol tablets.  Defendant amended its ANDA to carve out an indication for the use of the drug for decreasing mortality caused by congestive heart failure. Plaintiff brought claims of indirect infringement and defendant successfully moved to dismiss both induced infringement and contributory infringement claims, which led to the filing of a second amended complaint. Defendant asserts that the claims of induced infringement for the period of time when its label carved out the CHF indication.  The court finds support for induced infringement due to defendant’s active promotion of its generic tablets prior to and during the relevant time period.  Defendant’s promotion of its product as AB rated is insufficient by itself to support a claim of specific intent to infringe. Press releases dated before the patent issued might bear on the mindset of the defendant after the patent issues as long as there was an inducing act performed in that post-issuance period. Defendant’s label also bears an instruction relating to symptomatic heart failure which is similar enough to the carved out indication such that consumers could be misled to practice the claimed method. Finally defendant was aware that its generic tablets were not suitable for substantial non-infringing use. Defendant’s motion to dismiss is denied.

Court rules on privilege log disputes

Idenix Pharmaceuticals, Inc., et al. v. Gilead Sciences, Inc., C.A. Nos. 13-1987- LPS; 14-109-LPS; 14-846-LPS, July 20, 2016. (Redacted July 26, 2016)

Stark, C. J. After a discovery teleconference held on March 4, 2016, the court resolves privilege disputes for documents reviewed in camera.

The parties submitted documents from the opposing party’s privilege log for in camera review on April 28, 2016. After another review of the approximately 30,000 entries on its privilege log, defendant produced nearly 300 previously-withheld documents. Plaintiff selected 10 documents still withheld as privileged for review by the court.  Defendant withdrew the claim of privilege with respect to two on the list and produced additional documents. The court finds that 4 of the 10 documents submitted are privileged. A draft patent application reflecting edits by a co-inventor may not be withheld because of disclosure to third parties identified on the email.  Emails reflecting general subject matters of clients’ representations are not privileged. With respect to the ten document selected for review from plaintiff’s privilege log referencing about 3,000 documents, seven may be withheld as privileged. Documents seeking advice on non-legal matters are not properly withheld as privileged.

Judgment in favor of patentee after invalidity trial

Bayer Pharma AG, et al. v. Watson Laboratories, Inc., C.A. No. 12-1726 – LPS,  July 18, 2016 (Unsealed on July 20, 2016).

Stark, C. J. Judgment in favor of plaintiff.

The disputed technology relates to a regimen and method for oral contraception  containing estradiol valerate and dienogest. A 4-day bench trial took place in December 2014 and post-trial briefing was completed on July 1, 2015.  The court found that defendant failed to prove by clear and convincing evidence that the asserted claims were invalid due to obviousness-type double patenting in that there are differences between the claims between the patent-in-suit and a prior patent.  Further, a POSA would not have found the claims in the patent-in-suit obvious, and secondary considerations favor the plaintiff.

Stay pending IPR is granted

Contour Holding, LLC, et al. v. GoPro, Inc., C.A. No. 15-1108 – LPS-CJB, July 14, 2016.

Burke, M. J. Defendant’s motion to stay pending IPR is granted.  Briefing was completed on February 29, 2016 and oral argument was heard on April 19, 2016. A scheduling conference took place after the oral argument.

The court finds that the potential for simplifying issues, the current early status of the litigation and the amount of undue prejudice all favor a stay of this action.

Court denies motion to transfer to Massachusetts

Bristol-Myers Squibb Co., et al., v. Merck & Co., Inc., et al., C.A. Nos. 14-1131 – GMS; 15-560-GMS; 15-572-GMS, July 13, 2016.

Sleet, J. Plaintiff’s motion to transfer is denied.

The disputed product is pembrolizumab. This Delaware litigation involves invalidity defenses.  There is related litigation in the District of Massachusetts involving an inventorship challenge.  That court had ordered plaintiffs in this case to file a motion in Delaware requesting a decision on a transfer motion they had made in Massachusetts. This court finds that transfer under 24 U.S.C. section 1404(a) is permissible and questions whether there is sufficient overlap for the first-filed rule to control. The court finds that the requisite relationship between the Massachusetts and Delaware cases does not exist in order to confer personal jurisdiction over two of the parties.  Because this court would not have had personal jurisdiction over two of the parties involved in the transferee forum, transfer under section 1404(a) is improper.

Motion for Rule 11 sanctions is denied

Dragon Intellectual Property, LLC v. Charter Communications, Inc., et al., C.A. No. 13-2061 – RGA; 13-2062 – RGA; 13-2063 – RGA; 13-2064 –RGA; 13-2065 – RGA 13-2068 – RGA; 13-2069 – RGA SLR, July 12, 2016.

Andrews, J. Defendants’ motion for Rule 11 sanctions is denied.  Oral argument took place on June 24, 2016.

Defendants asserted that plaintiff’s infringement contentions did not support a claim of infringement, noting that prosecution history estoppel foreclosed a doctrine of equivalents basis for infringement.  The court denied defendants’ request to file summary judgment motion and the case proceeded to a Markman hearing. In the opinion following that hearing the court noted that it had only once seen a clearer case of prosecution disclaimer.  Plaintiff’s counsel thereafter sought leave to withdraw. Defendants filed their Rule 11 motions. New counsel was substituted for Plaintiff, and a stipulation of non-infringement was filed and judgment entered in favor of defendants.  The court denied the motion for sanctions as untimely. Defendants had waited over a year to serve the rule 11 motions, and therefore did not serve their motion “as soon as practicable” after discovering the rule 11 violation. The court also noted that it would be improper to award sanctions which relate entirely to legal issues.

Court finds that the asserted claims in milnacipran patents are valid and infringed.

Posted In Infringement

Forest Laboratories Holdings Ltd., et al. v. Mylan Inc., et al., C.A. No. 13-1602 - SLR, July 11, 2016.

Robinson, J. Court issues opinion following trial that the asserted claims in the patents-in-suit are valid and infringed.

The disputed products are milnacipran hydrochloride tablets, generic versions of Savella® used in the treatment of fibromyalgia.  A 6-day bench trial took place in this ANDA case from January 19 – 26, 2016. The 30-month stay of FDA final approval expires on July 14, 2016. The court finds that defendants induce infringement of one patent because the proposed label instructs users to perform the patented method. It is irrelevant that some users may not specifically perform that method. With respect to invalidity, the court notes that there appears to be no clear understanding of the causes of fibromyalgia and the teaching of the art has been multidirectional, with no clear course of treatment or motivation to pursue milnacipran as an effective treatment for fibromyalgia. The inventors’ development of treating this condition with milnacipran was the antithesis of anticipation and obviousness.

Induced and contributory infringement and willfulness claims are insufficiently plead

Varian Medical Systems, Inc. v. Elekta AB, et al., C.A. No. 15-871 - LPS, July 11, 2016.

Burke, M. J. Report and recommendation recommending that defendants motions to dismiss be granted with leave to amend.

All defendants move to dismiss induced and contributory infringement claims.  The U.S. defendants further move to dismiss willful infringement claims. The disputed technology relates to radiation treatment devices.  The court disagrees with plaintiff that the complaint adequately alleges that a third party has directly infringed the patent-in-suit. Also, the complaint does not sufficiently allege how the accused product infringes the asserted claims.  As for willfulness, plaintiff does not explain how defendants’ conduct amounts to an egregious case of infringement under Halo. The court recommends dismissing these claims with leave to file an amended complaint.