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Morris James Blogs

Motion to dismiss based on lack of personal jurisdiction fails

Godo Kaisha IP Bridge 1 v. TCL Communication Technology Holdings Limited, et al., C.A. No. 16-634 – SLR-SRF, August 17, 2016.

Fallon, M. J. Report and recommendation recommending that defendants’ motion to dismiss for lack of personal jurisdiction be denied.

Defendants seek dismissal of the Chinese and Hong Kong defendants. The remaining defendant is a Delaware corporation. Any factual discrepancies between the declarations and evidence supplied by plaintiff are resolved in favor of plaintiff. The evidence suggests that both moving defendants made direct sales of the accused products to Delaware through their websites, satisfying subsection (c)(3) od the Delaware long-arm stature.  The Hong Kong defendant’s intent to distribute products throughout the US is sufficient to establish intent to serve the Delaware market specifically.  The Hong Kong defendant is not subject to general jurisdiction based on a representation in a previous litigation in another jurisdiction regarding its corporate status. Exercising jurisdiction comports with due process because defendant placed the accused products in the stream of commerce knowing the likely destination of the products and should have reasonably anticipated being brought into court in Delaware.

Default judgment in intervention action is set aside; fees are awarded intervenor

Princeton Digital Image Corporation v. Nordstrom.com LLC, et al., C.A. No. 13-408 – LPS, August 16, 2016.

Stark, C. J. Plaintiff’s motion to set aside a default judgment relating to a complaint in intervention is granted.

Defendant is a customer of Adobe, who moved to intervene due to a request from defendant to indemnity. Plaintiff filed an answer to Adobe’s motion to intervene in related cases, but not in this action.  Plaintiff’s conduct was culpable in that its refusal to answer the complaint was inexcusable. The court agrees with Adobe to impose monetary sanctions for fees and costs associated with all default-related filings.

The patents-in-suit are patent ineligible

Two-Way Media Ltd., v. Comcast Cable Communications, LLC, et al., C.A. No. 14-1006 – RGA; 14-1212-RGA, August 15, 2016.

Andrews, J. Defendants’ motion for judgment on the pleadings is granted in part with respect to the asserted claims in four patents-in-suit and dismiss in part as moot with respect to the asserted claims of a fifth patent. Oral argument took place on October 29, 2015.

Defendants claim the patents-in-suit are patent ineligible pursuant to section 101, Alice and Mayo. Plaintiff contends that motion is premature because claim construction is needed. Defendants do not dispute that the court should consider plaintiff’s proposed constructions, but argue that they do not alter the analysis. The motion is not converted to a summary judgment motion where only the non-moving party has submitted evidentiary exhibits outside the pleadings. The disputed technology relates to a method of transmitting message packets over a communications network. The court finds that even if it accepts that the architecture described in the specification is designed to solve the technological problems of load, bottlenecking, and inadequate records, the claims do not recite the mechanism by which these problems are solved.  They therefore do not supply the inventive concept. Another patent-in-suit likewise fail to disclose an inventive concept sufficient to render the claims patent eligible.  The claims are directed to monitoring the delivery of real-time information to users, a concept the Federal Circuit has found to be abstract. Nothing in the claims requires anything other than conventional computer and network components operating according to their ordinary functions. The final patent is directed to a method for metering real-time streaming media for commercial purposes. Measuring the delivery of information is analogous to the abstract idea of collecting and analyzing information. No inventive concept is disclosed sufficient to render the claims patent eligible.

Summary judgment of noninfringement is granted after supplemented discovery

Cronos Technologies, LLC v. Expedia, Inc. et al., C.A. No. 13-1538 – LPS; 13-1541-LPS; 13-1544-LPS, August 15, 2016.

Stark, C. J. Defendants’ motion for summary judgment of non-infringement is denied.

The court previously granted summary judgment on July 22, 2016, but allowed the parties to conduct supplemental expert discovery to permit the experts to apply the court’s new claim constructions. Based on those submissions the court concludes that no reasonable jury could find that defendants’ accused systems infringe. Doctrine of equivalents arguments also fail. In light of this decision, remaining pending motions are denied as moot.

Motions to strike expert reports are denied

Masimo Corporation v. Philips Electronic North America Corporation, et al., C.A. No. 09-80 – LPS-MPT; 11-742-LPS-MPT, August 15, 2016.

Stark, C. J. The court reserves ruling on a motion to file an amended complaint and rules on various expert issues.

Plaintiff’s motion to strike a reply invalidity expert report of Dr. Dyro is denied. It was not unreasonable for defendant to wait until a disclosure, and plaintiff is not prejudiced. The court declines to strike either party’s expert relating to non-infringing alternatives due to the importance of the issue, the lack of prejudice, and the totality of the circumstances such that the trial date is not disrupted.  Defendants’ motion to strike the reply expert of Dr. Quill relating to reasonable royalty factors is denied. The report was responsive to Defendants’ expert and was timely served. There is nothing per se improper in using a different expert in a reply report.

Motion to dismiss for lack of personal jurisdiction is denied as to 2 defendants; jurisdictional discovery is allowed as to 2 defendants

Pfizer Inc., et al. v. Mylan Inc., et al., C.A. No. 15-960 – SLR, August 12, 2016.

Robinson, J. Defendants’ motion to dismiss for lack of personal jurisdiction, improper venue, and failure to state a claim is denied in part and stayed in part.

The disputed generic drug in this ANDA case relates to an injectable tigecycline product. The court finds that it does not have general jurisdiction over defendants.  Plaintiffs have conceded that in light of the Delaware Supreme Court decision in Genuine Parts, consent is no longer a basis for personal jurisdiction when premised solely on Delaware’s registration statute.  Defendant’s ANDA filings constitute formal acts that reliably indicate plans to engage in marketing of generic drugs. It is undisputable that Delaware is a state where defendants will engage in that marketing if the NDA is approved.  The court further imputes contacts of the NDA filer defendant to a related corporation and allows jurisdictional discovery as to the two other related defendants. Venue is proper in Delaware.

Judgment for plaintiff in Vimpat® dispute

UCB, Inc. et al. v. Accord Healthcare, Inc., et al., C.A. No. 13-1206-LPS, August 12, 2016 (unsealed on August 15, 2016).

Stark, C. J. The court rules the patents-in-suit are not invalid. Defendants had stipulated to infringement of the asserted claims. Parties are to submit a proposed order final judgment in favor of plaintiff and against defendants.

The disputed product is an anti-epilectic drug with the active ingredient lacosamide.  Defendants failed to prove that the disputed claims are invalid for obviousness-type double patenting, obviousness, anticipation, indefiniteness, or improper reissue.

Claims are construed in cellular phone technology case

Intellectual Ventures I LLC 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; 14-1229-LPS;  14-1230-LPS; 14-1231-LPS; 14-1232-LPS; 14-1233-LPS, August 12, 2016.

Stark, C. J.   Claim construction opinion issues regarding seventeen terms from five patents.  A Markman hearing took place on April 4, 2016.

The disputed technology relates to cell phone communication technology. The following terms were considered:

  1. “identifying changes in signal drop-out characteristics”
  2. “encoding packets into packet blocks”
  3. “encoder for combining and varying the number of packets transmitted in each of the packet blocks”
  4. “frequency hopping”
  5. “a structure for allocating ones of baseband outputs from a digital channelizer to ones o logical inputs of digital signal processors and allocating ones of baseband inputs of a digital combiner to ones of logical outputs of said digital signal processors according to said mapping signal”
  6. “allocating resources”/ “allocating bandwidth resource” / “allocates resources”
  7. “application aware resource allocator at the MAC layer” / “application-aware media access control (MAC) layer”
  8. “a module operative to recognize an application type of said software application associated with IP flow” / “ identifying means for identifying an application type of a software application associated with an IP flow”
  9. “allocating means for allocating resources to said IP flow…so as to optimize end user application IP QoS requirement of said software application”
  10. “allocating a proportion of said total number of data packets to a number of the tiers of service to allow individual packet data queues on a number of tires to share a communication resource”
  11. “means for allocating a tier of service for each of a plurality of individual packet data queues, wherein the means for allocating allocates different weights to each tier of service based on a number of user requiring access to the available communication resource”
  12. “means for determining a total number of data packets that can use a n available communication resource”
  13. “Scheduling means to provide said communication  resource to queued packet data users on a tier-by-tier basis, such that said resource is made available to all users”
  14. “means ... for allocating a proportion of said total number of data packets to a number of the users of service to allow individual packet data queues on a number of tiers to share a communication resource"
  15. “primary preamble sufficient to enable radio operations”
  16. “an autocorrelation having a large correlation peak with respect to side lobes; a cross or relation with other primary preambles having small cross-correlation coefficient with respect to power of other primary preambles; and  small peak-to average ratio; and wherein a large number of primary preamble sequences exhibit the properties”
  17. “wherein the core-band is substantially centered at an operation center frequency

Court recommends denying transfer to Minnesota

Posted In Transfer

Husqvarna AB, et al. v. The Toro Company, C.A. No. 15-856 – SLR-SRF, August 11, 2016.

Fallon, M. J. Report and recommendation recommending that defendant’s motion to transfer be denied.

Defendant seeks to transfer to Minnesota.  The patentee is a Swedish company and its U.S. subsidiary is a Delaware corporation with its principal place of business located in North Carolina. Defendant is a Delaware corporation with its principal place of business in Minnesota. The disputed technology relates to all wheel drive lawnmowers. Plaintiff’s choice of Delaware is a legitimate forum and weighs against transfer. Defendant’s choice of an alternate forum while a Delaware corporation weighs only slightly in favor of transfer. The fact that the accused products are sold in Delaware weighs against transfer. The convenience of the parties weighs against transfer. The convenience of the witnesses weighs slightly in favor of transfer. The location of books and records factor is neutral. Practical considerations weigh against transfer, and the other public factors are neutral. The court recommends denying the motion to transfer.

Pre-suit willfulness claims are dismissed

DermaFocus LLC v. Ulthera, Inc., C.A. No. 15-654 - SLR, August 11, 2016.

Robinson, J. Defendant’s motion to dismiss for failure to state a claim is granted in part and denied in part.

The disputed technology relates to a method and apparatus for therapeutic treatment of skin with ultrasound. The court concludes that plaintiff has adequately plead a plausible claim for direct infringement.  Furthermore, the allegations contain facts from which it is plausible to infer that defendant knew its conduct would induce infringement by its customers and had the specific intent to make it so.  Contributory infringement is likewise adequately plead. The complaint is dismissed as it relates to pre-suit willfulness. The court allows post-filing willfulness claims to withstand the motion to dismiss.

Court recommends denying transfer to Texas

Posted In Transfer

Smith International, Inc. v. Baker Hughes Incorporated, C.A. No. 16-56 – SLR-SRF, August 10, 2016.

Fallon, M. J. Report and recommendation recommending that defendant’s motion to transfer be denied.

The parties are both Delaware corporations with their principal places of business in Texas. Defendant seeks to transfer to Texas.  The disputed technology relates oil and gas drilling equipment. Plaintiff’s choice of Delaware weighs against transfer. The court declines to elevate defendant’s choice of an alternate forum over plaintiff’s choice. The fact that the accused products are sold and used nationwide weighs against transfer. The convenience of the parties weighs against transfer. The convenience of the witnesses is neutral. Practical considerations are neutral, as are other public factors. The court recommends denying the motion to transfer.

Certain affirmative defenses are stricken

Sonos, Inc. v. D&M Holdings, Inc. et al., C.A. No. 14-1330 – RGA-MPT, August 10, 2016.

Thynge, C.M. J. Report and recommendation recommending that plaintiff’s motion to strike be granted as to the 4th, 5th, 6th (patent misuse) and 10th defenses and denied as to 1st and 6th (patent exhaustion/ First sale doctrine defenses.

The disputed technology relates to wireless speakers for home audio equipment. A motion to strike is dispositive, and a 7.1.1 certificate is not required.  Defense 1, failure to state a claim, is sufficiently plead. Defense 4 based on section 288 is stricken. An unclean hands defense is insufficiently plead as are waiver and acquiescence. Defenses of patent exhaustion and first sale doctrine are not stricken. The defenses of prosecution latches and patent misuse are insufficiently plead.

Declaratory judgment relief is available to redress violations of (8)(A)

Amgen Inc., et al. v. Hospira, Inc., C.A. No. 15-839 - RGA, August 5, 2016.

Andrews, J. Defendant’s motion to dismiss Count I of the amended complaint is denied. Oral argument took place on February 17, 2016.

42 U.S.C. section 262(1)(8)(A) requires notice to a subsection (k) applicant 180 days before commercial marketing.  Plaintiff contends that the Federal Circuit has held that such notice is not effective until after the FDA has licensed the product. The court finds that declaratory judgment relief is available for injunctive relief for violations of (8)(A) and therefore declines to dismiss Count I.

Claims are construed in methods technology case

Alstom Grid LLC v. Certified Measurement, LLC, C.A. No. 15-72 – LPS-CJB, August 3, 2016.

Burke, M. J.   Claim construction opinion issues regarding two terms from three patents.  A Markman hearing took place on July 22, 2016.

The disputed technology relates to technology to secure measurement acquisition and certification. The following terms were considered:

  1. “certifiable measurement”
  2. “certified measurement”

Claims are construed in electronics case

AVM Technologies, LLC v. Intel Corporation, C.A. No. 15-33 - RGA, August 3, 2016.

Andrews, J. Claim construction opinion issues regarding six terms from one patent.  A Markman hearing took place on June 21, 2016.

The disputed technology relates to transistor circuits. The following terms were considered:

  1. “clock signal”
  2. “clock signal node”
  3. “ the clock signal”
  4. “between the dynamic logic block and the precharge transistor”
  5. “input transistors”
  6. “input transistors all couples in parallel”