Delaware Intellectual Property Litigation

Judge Robinson Denies Motion to Transfer Venue of Versata's Patent Infringement Action Against Callidus

Gregory B. Williams — Sat, 18 May 2013 04:30:34 -0500

By Memorandum Opinion entered by The Honorable Sue L. Robinson in Versata Software, Inc., et al. v. Callidus Software Inc., Civil Action No. 12-931-SLR (D.Del., May 16, 2013), the Court denied the motion to transfer venue to the Northern District of California of defendant Callidus Software Inc. (“Callidus”). The Court also denied Callidus’ motion to dismiss. Id. at *10.

A complete copy of the Memorandum Opinion is attached.

By way of background, Plaintiffs Versata Software, Inc. and Versata Development Group, Inc. (collectively, “Versata”) are both Delaware corporations with their principal place of business in Texas. Defendant Callidus is also a Delaware corporation but has its principal place of business in California. Id. at *1. Versata filed this action alleging that certain software products of Callidus, including Callidus’ SPM Suite, and specifically including Callidus’ True Comp and TrueProducer products infringe U.S. Patent Nos. 7,958,024 (“the ‘024 patent”), 7,908,304 (“the ‘304 patent”), and 7,904,326 (“the ‘326 patent”). In opposition to the motion to transfer, Callidus alleged the accused products were primarily designed in California, any continued maintenance is done in California, and its internal servers, which contain the technical documents for the accused products, sales and marketing documents and other company documents, are located in California. Id. at *1-2.

After analyzing the Jumara factors and referring to the analytical framework set forth in Helicos, the Court found that Versata chose a legitimate forum which all parties have in common – their state of incorporation (Delaware), the Jumara convenience factors did not weigh in favor of transfer, and the Jumara public interest factors did not weigh in favor of transfer. Id. at *2-6. Thus, the Court denied Callidus’ motion to transfer venue to the Northern District of California. Id. at *10.

Judge Stark Issues Markman Opinion Construing 36 Terms in Dispute in Patent Infringement Action Against Globus Medical

Gregory B. Williams — Sat, 11 May 2013 11:44:37 -0500

By Memorandum Opinion entered in Depuy Synthes Products, LLC v.Globus Medical, Inc., C.A. No. 11-652-LPS (D.Del., May 7, 2013), The Honorable Leonard P. Stark construed thirty-six (36) disputed terms found in U.S. Patent Nos.7,846,207, 7,862,616, and 7,875,076 (collectively, the “patents-in-suit”).

A complete copy of the Memorandum Opinion is attached.

Judge Robinson Denies Golden Bridge Technology, Inc.'s Request for Court to Modify Order Granting Summary Judgment of Non-Infringement In Favor of Apple

Gregory B. Williams — Sat, 27 Apr 2013 08:07:19 -0500

By Memorandum Opinion entered by The Honorable Sue L. Robinson in Golden Bridge Technology, Inc. v. Apple Inc., et al., Civil Action No. 10-428-SLR (D.Del., April 25, 2013), the Court, as a practical matter, denied plaintiff Golden Bridge Technology, Inc.’s motion for reconsideration of the Court’s Order of April 9, 2013 granting summary judgment of non-infringement in favor of defendant Apple. The Court noted that, although it previously granted the motion for reconsideration, it did explain at the time that it was only granting to review the merits of the motion and not to grant the relief sought. The Court apologized for any confusion this may have caused. Id. at *1, fn1. The Court ultimately concluded that, despite plaintiff’s supplemental submissions and citations to the record, there is no expert testimony or evidence of record that raises a genuine issue of material fact to preclude summary judgment under the Court’s claim construction. Id. at 6.

A copy of the Memorandum Opinion is attached.

Judge Sleet Denies Defendant Biopsy's Amended Motion to Transfer Venue in Patent Infringement Action

Gregory B. Williams — Sat, 20 Apr 2013 08:53:40 -0500

By Memorandum Opinion entered by Chief Judge Gregory M. Sleet in Devicor Medical Products, Inc. v. Biopsy Sciences, LLC, Civil Action No. 10-1060-GMS (D.Del., April 15, 2013), the Court denied the amended motion to transfer venue of Defendant Biopsy Sciences, LLC. After analyzing whether the action could have been brought originally in the Middle District of Florida and the Jumara factors, the Court was unable to find that Biopsy had met its burden of showing that the balance of factors tipped strongly in favor of transfer. Id. at 11. Thus, the motion to transfer was denied.

A copy of the Memorandum Opinion is attached.

Judge Robinson Grants Apple's Motion for Summary Judgment of Non-Infringement Against Golden Bridge Technology, Inc.

Gregory B. Williams — Sat, 13 Apr 2013 06:26:56 -0500

By Memorandum Opinion entered by The Honorable Sue L. Robinson in Golden Bridge Technology, Inc. v. Apple Inc., et al., Civil Action No. 10-428-SLR (D.Del., April 9, 2013), the Court granted the motion for summary judgment of non-infringement of defendant Apple, Inc. (“Apple”) as to the asserted claims in U.S. Patent Nos. 6,574,267 C1 (“the ‘267 patent”), as reexamined, and 7,359,427 (“the ‘427 patent”) (collectively, “the patents-in-suit”). In granting Apple’s motion, the Court concluded that “the accused devices do not directly infringe any of the asserted claims because they do not practice the limitation of ‘spreading an access preamble’ or a ‘spread access preamble,’ which is recited in each asserted claim. As there can be no indirect infringement without direct infringement, the accused devices or their methods of operation also do not indirectly infringe any of the asserted claims.” See id. at 17.

A copy of the Memorandum Opinion is attached.

Judge Andrews Grants in Part Defendant's Motion to Exclude Testimony of Plaintiff's Expert in Patent Infringement Action

Gregory B. Williams — Fri, 15 Mar 2013 14:36:09 -0500

By Memorandum Order entered by The Honorable Richard G. Andrews in XpertUniverse, Inc. v. Cisco Systems, Inc., Civil Action No. 09-157-RGA (D.Del., March 7, 2013), the Court granted in part the Daubert motion of defendant Cisco Systems, Inc. to exclude the proposed testimony of plaintiff’s expert on direct infringement and secondary considerations. Specifically, the Court excluded plaintiff expert’s conclusions about whether and how particular customers actually used the accused products and five of six of his opinions about secondary considerations of non-obviousness finding such conclusions and opinions not reliable because they were not the product of the expert’s scientific or call center expertise or his direct knowledge. Id. at 3-7.

A copy of the Memorandum Order is attached.

Magistrate Judge Thynge Recommends Denial of Defendant's Motion to Stay Patent Infringement Action Pending Inter Partes Reexamination

Gregory B. Williams — Sat, 02 Mar 2013 10:53:40 -0500

By Report and Recommendation in Imagevision.net, Inc. v. Internet Payment Exchange, Inc., Civil Action No. 12-054-GMS-MPT (D.Del., February 25, 2013), The Honorable Mary Pat Thynge has recommended denying the motion of defendant Internet Payment Exchange to stay pending the inter partes reexamination of U.S. Patent No. 7,567,925 (“the ‘925 patent”) by the United States Patent and Trade Office (“PTO”). After analyzing the required factors, Judge Thynge concluded that (1) the relative status of the litigation and the reexamination proceedings do not weigh in favor of a stay, (2) the possible simplification of the issues for trial weighs in favor of a stay given that the PTO has preliminary rejected all claims of the ‘925 patent under the heightened reexamination standard of the America Invent’s Act (“AIA”), and (3) the balancing of the undue prejudice to plaintiff if a stay were granted against the hardship or inequity to defendant if a stay were denied weigh in favor of a stay. Id. at 5-16.

A copy of the Report and Recommendation is attached.

Judge Andrews Grants Intel's Daubert Motion to Exclude Testimony of Plaintiff's Expert on Damages in Patent Infringement Action

Gregory B. Williams — Thu, 28 Feb 2013 08:25:00 -0500

By Memorandum Opinion entered by The Honorable Richard G. Andrews in AVM Technologies, LLC v. Intel Corporation, Civil Action No. 10-610-RGA (D.Del., February 21, 2013), the Court granted the Daubert motion of defendant Intel Corporation seeking to exclude the proposed testimony of the expert witness on damages for plaintiff AVM Technologies, LLC. The Court found that such proposed testimony, which was based on the premise that "a reasonable royalty can be established by one litigation settlement agreement involving a different patent", is not reliable. Id. at 1. The Court also excluded most of plaintiff’s proposed inventor testimony concerning damages concluding that it was untimely disclosed and unreliable expert testimony. Id. at 3.

A copy of the Memorandum Opinion is attached.

Judge Robinson Denies Texas Instruments' Motion to Transfer Patent Case to Northern District of Texas

Gregory B. Williams — Fri, 15 Feb 2013 15:49:58 -0500

By Memorandum Opinion entered by The Honorable Sue L. Robinson in Cradle IP, LLC v. Texas Instruments, Inc., Civil Action No. 11-1254-SLR (D.Del., February 13, 2013), the Court denied the motion to transfer venue filed by defendant Texas Instruments, Inc. After analyzing the Jumara factors, the Court found that Texas Instruments had not met its burden of persuading the court by a preponderance of the evidence that the Jumara factors warranted transfer of the patent infringement action to the Northern District of Texas. Id. at 9.

A copy of the Memorandum Opinion is attached.

Chief Judge Sleet Grants Defendant's Motion to Dismiss Declaratory Action Seeking Judgment of Non-Infringement

Gregory B. Williams — Fri, 01 Feb 2013 17:16:25 -0500

By Memorandum Order entered by Chief Judge Gregory M. Sleet in Woodbolt Distribution, LLC v. Natural Alternatives International, Inc., Civil Action No,. 11-1266-GMS (D.Del., January 23, 2013), the Court granted defendant's motion to dismiss the complaint of plaintiff which sought a declaratory judgment of non-infringement and invalidity of U.S. Patent No. 8,067,381. Of particular note was the fact that the same day that plaintiff initiated the declaratory judgment action in the District of Delaware, defendant later filed a patent infringement action in the United States District Court for the Southern District of Texas. Id. at 1. Through its motion, defendant sought to dismiss the declaratory judgment filed in the District of Delaware and have the case transferred to the Southern District of Texas. After analyzing the issues, the Court concluded that, under the circumstances, discretionary dismissal was appropriate in this instance and the 'first-filed rule" did not preclude dismissal. Id. at 2-9.

A complete copy of the Memorandum Order is attached.

Judge Andrews Grants in Substantial Part Defendants' Motion to Dismiss IP Venture's Claims of Indirect Infringement and Willfulness

Gregory B. Williams — Sat, 12 Jan 2013 08:15:41 -0500

By Memorandum Order entered in IPVenture Inc. v. Lenovo Group, Limited, et al., Civil Action No. 11-588-RGA (D.Del., January 8, 2013), the Honorable Richard G. Andrews granted in substantial part the motions of defendant Dell and other defendants seeking the dismissal of the claims of indirect infringement and willfulness asserted in the Second Amended Complaint of plaintiff IPVenture Inc. (“IPVenture”).

A complete copy of the Memorandum Order is attached.

In short, in its Second Amended Complaint, IPVenture asserted that defendants were infringing four patents - all of which concern thermal and power management for computer systems. Although the Second Amended Complaint is 81 pages long, its allegations are in material respects, the same as to all defendants. The Court had previously dismissed similar claims of indirect infringement and willfulness in IPVenture’s First Amended Complaint without prejudice.

Defendants’ asserted four grounds of dismissal in their motions to dismiss: (1) the indirect infringement claims did not properly allege direct infringement by defendants’ customers; (2) the indirect infringement claims did not properly allege defendants’ intent that their customers infringe the patents and knew that their customers actions would constitute infringement; (3) contributory infringement was not properly alleged; and (4) the allegations of willfulness were not sufficient. Id. at 3.

Upon evaluation of defendants’ motions and the factual allegations contained in the Second Amended Complaint, the Court noted that, although the Complaint nearly doubled in size, almost nothing of substance was added. Id. at 5. The Court rejected defendants’ first asserted basis for dismissal noting that the allegations of direct infringement as to defendants’ customer do not have to identify specific customers. Id. at 4. The Court accepted defendants’ remaining bases for dismissal finding insufficient factual allegations of the required knowledge of defendants prior to the filing of the lawsuit and/or that defendants acted in an improper manner despite any required knowledge. Id. at 4-5. Given that the Court had previously dismissed the claims of indirect infringement and willfulness without prejudice, this time the Court dismissed the claims of indirect infringement (except those as to post-filing of Complaint) and willfulness as to three of the asserted patents (except those as to post-filing of Complaint) with prejudice. Id. at 5.

Judge Stark Issues Markman Opinion Construing 7 Terms in Dispute in Patent Infringement Action

Gregory B. Williams — Mon, 31 Dec 2012 15:23:40 -0500

By Memorandum Opinion entered in Enova Technology Corporation v. Initio Corporation, et al., Civil Action No. 10-04-LPS (D.Del., December 28, 2012), the Honorable Leonard P. Stark construed seven disputed terms found in U.S. Patent Nos. 7,136,995 and 7,900,057 (collectively, the “patents-in-suit”).

A complete copy of the Memorandum Opinion is attached.

Judge Stark Issues Markman Opinion Construing 20 Disputed Terms in Patents-In-Suit in Intellectual Ventures Case

Gregory B. Williams — Mon, 17 Dec 2012 15:14:54 -0500

By Memorandum Opinion entered by The Honorable Leonard P. Stark in Intellectual Ventures I LLC v. Check Point Software Technologies Ltd., et al., Civil Action No. 10-1067-LPS (D.Del., December 12, 2012), the Court issued its claim construction opinion construing twenty (20) disputed terms found in U.S. Patent Numbers 6,460,050 (“the ‘050 patent”), 6,073,142 (“the ‘142 patent”), 5,987,610 (“the’610 patent”), and 7,506,155 (“the ’155 patent”).

A copy of the Memorandum Opinion is attached.

Judge Robinson Grants in Part and Denies in Part Defendants' Motion for Judgment on Pleadings in Patent Infringement Action

Gregory B. Williams — Sat, 08 Dec 2012 12:24:10 -0500

By Memorandum Order entered by The Honorable Sue L. Robinson in Senju Pharmaceutical Co., Ltd., et el. v. Lupin Limited, et al., Civil Action No. 11-271-SLR (Consol.) (D.Del., December 7, 2012), the Court granted in part and denied in part defendants Lupin’s Rule 12(c) motion for judgment on the pleadings.

A copy of the Memorandum Order is attached.

Chief Judge Sleet Denies Apple's Motion to Transfer Patent Infringement Action

Gregory B. Williams — Fri, 30 Nov 2012 11:51:35 -0500

By Memorandum Opinion entered by The Honorable Gregory M. Sleet in Smart Audio Technologies, LLC v. Apple, Inc., Civil Action No. 12-134-GMS (D.Del., November 16, 2012), the Court denied Apple’s motion to transfer the action to the Northern District of California. In denying the motion to transfer, the Court explained and examined the differences in the two approaches to analyzing the Jumara factors that have developed in the District of Delaware and referred to those approaches as (1) the “Affymetrix approach” and (2) the “modern approach.” Id. at 3-10. Ultimately, the Court found that the two approaches are quite similar and may not result in any practical difference in the outcome, although it did recognize that there appears to be some double-counting of plaintiff’s forum choice under the modern approach. Id. at 10-11. After analyzing the Jumara factors employing the language of the modern approach, the Court concluded that Apple failed to show that the balance of the factors weighed strongly in favor of transfer. Id. at 21.

A copy of the Memorandum Opinion is attached.

Judge Andrews Denies Dell's Motion to Transfer in Round Rock Patent Infringement Action

Gregory B. Williams — Fri, 30 Nov 2012 09:57:59 -0500

By Memorandum Opinion entered by The Honorable Richard G. Andrews in Round Rock Research, LLC v. Dell, Inc., Civil Action No. 11-976-RGA (D.Del., November 15, 2012), the Court denied defendant Dell, Inc.’s motion to transfer the action to the Northern District of California. In denying the motion to transfer, the Court carefully analyzed and weigned all of the Jumara factors and distinguished the facts of the case from the facts of In re Link_A_Media by highlighting that both parties are Delaware corporations and neither is principally based in the Northern District of California. Id. at 3-9.

A copy of the Memorandum Opinion is attached.

Chief Judge Sleet Adopts Magistrate Judge Thynge's Recommendation to Deny Defendants' Motion to Stay Patent Infringement Action Pending Reexamination by the PTO

Gregory B. Williams — Sat, 17 Nov 2012 06:38:12 -0500

By Memorandum Opinion entered by Chief Judge Gregory M. Sleet in Imagevision.net, Inc. v. Internet Payment Exchange, Inc., Civil Action No. 12-054-GMS-MPT, the Court adopted the ultimate recommendation of Magistrate Judge Mary Pat Thynge and denied the motion of defendant, Internet Payment Exchange, Inc. (“IPX”), requesting a stay pending the conclusion of the inter partes reexamination of the patent-in-suit by the United States Patent and Trademark Office (the “PTO”). IPX had previously filed objections to Judge Thynge’s Report and Recommendation to deny IPX’s motion to stay and, among other things, argued that an incorrect overarching legal standard was applied. Id. at 2.

In adopting Judge Thynge’s ultimate recommendation over IPX’s objections, the Court found that the statement of the applicable legal standard set forth in Judge Thynge’s Report and Recommendation is correct and not contrary to the law, the decision of whether to grant a stay is ultimately left to the court’s discretion, and the decision to deny the stay was not clearly erroneous or contrary to the law. Id. at 9.

A complete copy of the Memorandum Opinion is attached.

Judge Stark Denies Defendants' Motion for Summary Judgment of Invalidity Under 35 U.S.C. § 305

Gregory B. Williams — Fri, 09 Nov 2012 15:47:55 -0500

By Memorandum Opinion entered by The Honorable Leonard P. Stark in Exelis Inc. v. Cellco Partnership, et al., C.A. No. 09-190-LPS (D.Del., November 6, 2012), the Court issued its rulings on several motions for summary judgment and Daubert motions filed by plaintiff and defendants. Among other things, the Court denied defendants’ motion for summary judgment asserting invalidity of U.S. Patent No. 5,365,450 (“the ‘450 patent”) on grounds that plaintiff violated 35 U.S.C. § 305 by pursuing reexamination of the ‘450 patent for an improper purposes. Id. at 8.

In their motion, defendants contended that plaintiff pursued reexamination for the purpose of “fixing” the claim construction ruling rendered by Chief Judge Sleet in a prior action that involved the ‘450 patent. Id. at 7. During that prior action, Chief Judge Sleet issued a claim construction ruling that was later vacated by the Court on joint motion of the parties after the parties reached a settlement. Id. at 2.

In denying defendants’ motion for summary judgment of invalidity under Section 305, the Court found that “no reasonable fact finder could conclude that Plaintiff violated Section 305 by pursuing reexamination of the ‘450 patent for an improper purpose.” Id. at 7. The Court noted that plaintiff identified several proper purposes for seeking reexamination, including to address the prior art asserted in the prior litigation and to correct typographical errors in the original patent claims, and defendants offered no evidence - other than their mere suspicions – to counter plaintiff’s contentions. Id. at 7. Thus, the Court denied defendants’ motion for summary judgment and found that plaintiff was entitled to summary judgment that the reexamination was not filed for an improper purpose. Id. at 8.

A complete copy of the Memorandum Opinion is attached.

U.S. District Court for District of Delaware Implements New Procedure for Filing Documents Under Seal

Gregory B. Williams — Sun, 21 Oct 2012 11:57:47 -0500

A new procedure for filing documents under seal via CM/ECF will begin on November 1, 2012. The new procedure provides that a registered user of CM/ECF will be required to file sealed civil and miscellaneous documents directly into CM/ECF. Sealed documents in Social Security cases shall continue to be filed in paper format only.

A copy of the new procedure effective November 1, 2012 is attached.

Judge Robinson Denies Plaintiff's Motion to Disqualify Expert It Consulted from Serving as Expert for Defendant in Same Action

Gregory B. Williams — Sat, 13 Oct 2012 08:11:58 -0500

By Memorandum Order entered by The Honorable Sue L. Robinson in Butamax Advanced Biofuels LLC v. Gevo, Inc., Civil Action No. 11-54-SLR (D.Del., October 10, 2012), the Court denied Plaintiff Butamax’s request attempting to exclude Dr. Ron Caspi from serving as an expert witness for Defendant Gevo. Butamax claimed that it had entered a confidentiality agreement and consulted with Dr. Caspi in the same action prior to his retention by Gevo and had shared some attorney work-product with him during brief telephone conversations. Id. at 3-5.

In evaluating Butamax’s motion to disqualify, the Court recognized that, although there is no bright line rule for expert disqualification, “courts have generally adopted a two-part inquiry: (1) was it objectively reasonable for the party seeking disqualification to have concluded that a confidential relationship existed with the expert; and (2) was confidential or privileged information actually disclosed to the expert.” Id. at 2. The burden of proof of those factors rests with the party seeking disqualification. Id. at 3.

After analyzing the pertinent factors, the Court found that there was a confidential relationship created between Butamax’s counsel and Dr. Caspi. Id. at 5. However, the Court also found that the comments made to Dr. Caspi by a junior lawyer working on the Butamax legal team in response to the hypothetical posed by Dr. Caspi – which Butamax claimed constituted attorney work-product - did not constitute confidential information sufficient to disqualify Dr. Caspi from consulting for Gevo. Id. at 6.

A complete copy of the Memorandum Order is attached.