Pretrial motions are decided before trial

Helios Software, LLC, et al. v. Spectorsoft Corporation, C.A. No. 12-81-LPS -MPT, May 22, 2015

Stark, C. J. The court makes various pretrial rulings in advance of a June 15, 2015 jury trial. 

Among the pretrial issues decided were the following:

  1. Each side is allotted 10-12 hours for its trial presentation;
  2. Laches will be tried as part of a consolidated bench trial with inequitable conduct, and evidence relating solely to laches will not be permitted at the jury trial;
  3. Neither side may read to the jury the other side’s responses to requests for admission;
  4. Written notice requirement regarding witnesses expected to testify live shall not prevent calling additional witnesses from that side’s witness lit based on evidence presented at trial;
  5. Evidence that plaintiff’s expert was permitted to supplement his report will not be permitted at trial. No reference may be made to the fact that there were court rulings and the reasoning;
  6. Evidence relating to related litigation is precluded as it relates to different products and is not probative;
  7. Evidence relating solely to inequitable conduct is precluded;
  8. Expert opinions not timely disclosed or that contradict the claim construction or other court order is precluded;
  9. Infringement and damages evidence with respect to new products at trial is granted;
  10. No evidence regarding designing around will be permitted;

Inequitable conduct and laches trial will be held on October 16, 2015 with a maximum of 3 ½ hours allotted to each side.

Motion to join additional party comes too late

StrikeForce Technologies, Inc. v. PhoneFactor, Inc., et al., C.A. No. 13-490 RGA-MPT, May 26, 2015

Thynge, C.M. J. Magistrate recommends that plaintiff’s motion to amend its complaint to add infringement claims against non-party Microsoft be denied.

Plaintiff sought to join Microsoft in November, 2014, which it accuses of infringing through its Azure product, with this action filed in March 2013.  Plaintiff contends that defendant PhoneFactor was acquired by MicroSoft and may no longer exist independently. The court finds that plaintiff does not adequately explain its delay in seeking to join Microsoft as a defendant.  The court also substantially agrees with defendant’s argument regarding the disruption of the current schedule as a reason to deny plaintiff’s motion. Plaintiff acknowledges its ability to bring a separate action against Microsoft.  Consequently, plaintiff’s motion should be denied  as prejudicial to defendant.

Stay pending IPR is denied

Intellectual Ventures I LLC, et al. v. Toshiba
Corporation, et al., C.A. No. 13-453-SLR-SRF, May 15, 2015

Robinson, J. Defendants’ motion for partial stay pending inter partes review is denied.

Defendant petitioned for IPR for five of the ten patents-in-suit. The PTAB has instituted review of 4 of the 5 patents-in-suit. The request for review was filed after an initial wave of motion practice and a scheduling conference was set.  The court finds that a stay will not simplify the issues in question and trial because the NAND flash memory technology is at issue in both the IPR and other patents-in-suit not subject to IPR. IPR determinations are expected before claim construction in this case. Defendant is now precluded from litigating validity on any ground raised or which could reasonably have been raised in the IPR. Furthermore, because there is a difference between the administrative and judicial proceedings, precise duplication of effort does not occur.  The court further discusses the impact of the AIA on the resolution of patent disputes.

Post-trial JMOL and new trial motions are granted in part

Intellectual Ventures I LLC, et al. v. Canon Inc., et al., C.A. No. 11-792-SLR, May 18, 2015

Robinson, J.  Defendant’s JMOL and new trial motions regarding the ‘081 and ‘686 patents is denied. Its JMOL and new trial motion relating to the second trial is granted in part and denied in part. Plaintiff’s JMOL motion as to the second trial is denied as moot, and its motion for a new trial is granted. 

The disputed technology relates to the manufacture and use of digital cameras.  A 5-day trial regarding two patents was followed by a 6-day trial on two patents in April and May, 2014.  Defendant moved for JMOL of non-infringement but did not move on the basis of invalidity. The court found that defendant waived the right to JMOL on obviousness. The jury could properly credit the testimony of plaintiff’s experts and denies defendant’s infringement motion. In the second trial, defendant moved for JMOL as to anticipation but did not raise obviousness and therefore the obviousness motion was denied. Because plaintiff’s interpretation of “digital image magnification” is inconsistent with the court’s construction, defendant’s JMOL anticipation motion is granted.  Plaintiff’s motion for a new trial regarding the ‘960 and ‘348 patents is granted. Plaintiff accused defendant of induced infringement, and the jury returned a verdict of no infringement under both patents.  The court finds that defendant’s counsel played the role of expert witness and took improper liberties in arguing that the accused devices did not meet certain limitations of the claims.  The court’s curative instructions, upon further reflection, were insufficient and the court orders a new trial and does not therefore consider plaintiff’s alternative motion for JMOL.

Dismissal for failure to state a claim for joint infringement is recommended

Two-Way Media Ltd. v. Verizon Communications Inc., et al., C.A. No. 14-1212 RGA-MPT, May 18, 2015

Thynge, C.M. J.  .  Report and recommendation that defendants’ motion to dismiss for failure to state a claim of joint infringement be granted.

The disputed technology relates to multicasting method and apparatus and methods and systems for playing media.  Defendants offer apps that gather statistics which are transmitted to and used by third parties.  Defendants, in combination with one or more third parties, are alleged to infringe one or more claims of the three patents-in-suit by streaming TV channels through subscription services, dubbed TC Everywhere.  Plaintiff is required to plead with respect to a joint infringement claim that various parties perform all of the claimed steps of a method patent, and one party exercises the requisite control such that performance of every step is attributable to the controlling party.  The court finds that plaintiff did not establish a reasonable inference of one party’s direction and control.  The court therefore recommends that the motions to dismiss be granted. 

Motion to disqualify law firm is granted

Innovative Memory Solutions, Inc. v. Micron Technology, Inc., C.A. No. 14-1480-RGA, May 15, 2015

Andrews, J.  Defendant’s motion to disqualify Tensegrity Law Group is granted.

Plaintiff accuses defendant’s NAND flash products of infringing eight patents. Two of the attorneys in that firm were previously employed by Weil Gotshal & Manges where the represented defendant in seven patent cases and a trade secret case focused on NAND flash technology.  The court finds that the current representation is substantially related to the prior NAND flash and trade secret cases. The law firm is disqualified.

Post-trial motions are denied

Masimo Corporation v. Philips Electronic North America Corporation, et al., C.A. No. 09-80 LPS, May 18, 2015

Stark, C. J.  Defendants’ motion for JMOL and/or for a new trial is denied.

The disputed invention relates to measure-through-motion technology.  Defendant conceded infringement of two patents-in-suit in light of claim construction before trial. A 10-day trial was held in August, 2014.  The jury found for plaintiff with respect to every issue, including non-infringement of defendant’s patent-in-suit and no invalidity as to plaintiff’s patents. Defendant failed to prove inadequate written description of two claims. Without any evidence of what a non-correlation canceling technique is the jury’s verdict was reasonable. As for lack of enablement, defendant failed to address the Wand factors and offered a definition of “ordinary experimentation” different from the jury instruction. A Federal Circuit decision rejecting an indefiniteness challenge to the same claim based on the same construction does not prevent defendant from challenging the validity anew, but stare decisis supports the challenge in this case.  The jury’s verdict in other respects is supported by substantial evidence.  The motion for a new trial on the basis that plaintiff’s reference to the infringement concession was prejudicial was denied. However the court found attorney misconduct in multiple references to other litigation relating to the same patents. The court before trial had ruled on the permissible evidence that could be put before the jury. Curative instructions were read, and the court concludes that the misconduct that occurred does not warrant a new trial. Additionally, a new trial based on damages or remittitur was not warranted. 

Fourteen Morris James Attorneys Recognized in Chambers USA 2015

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Morris James LLP is pleased to announce that fourteen attorneys in six separate practice areas have been ranked among the leading Delaware lawyers in the 2015 edition of Chambers USA: America's Leading Lawyers for Business.  The Chancery, Intellectual Property and Labor & Employment practice areas also received recognition from Chambers USA. More ›

Foreign defendant is dismissed for lack of personal jurisdiction

Polar Electro Oy v Suunto Oy, et alC.A. No. 11-1100-GMS, May 12, 2015

Sleet, J.  Finnish defendant’s motion to dismiss for lack of personal jurisdiction is granted. More ›

Claims are construed regarding synthetic elastomers

Andover Healthcare, Inc. v 3M CompanyC.A. No. 13-843-LPS, May 11, 2015

Stark, C.J.  Claim construction opinion issues regarding 6 terms from one patent.  A Markman hearing and tutorial took place on March 6, 2015.

The court construed the following terms:

  1. Cohesive
  2. Synthetic
  3. Comprising / comprises (parties agree to “including but not limited to” instruction)
  4. An elastomer having an inherently crystalline structure / elastomer inherently capable of crystallization / inherently crystalline elastomer
  5. Crystalline structure / crystalline
  6. A cohesive elastomeric solid