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District Court Holds that Document Retention and Destruction Policies Are Privileged under Court's Default Discovery Standard

September 29, 2016

In this patent infringement action, the plaintiff sought production of the defendant's document retention and document destruction policies. The defendant asserted that the request sought information protected by work product and attorney-client privilege. The plaintiff argued that the documents were merely corporate policies that could not be privileged.

The district court analyzed the issue by reviewing the court's Default Discovery Standards and concluded that these policies are protected under those standards.

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District Court Precludes Damage Expert from Using a Settlement Agreement to Derive a Reasonable Royalty Calculation Where Expert Employed a Likelihood of Liability Estimate Based Solely on a Study That Patent Holders Prevail Approximately 40 Percent

September 8, 2016

MAX Encryption Technologies ("MAZ") filed a patent infringement action against Blackberry for patent entitled "Method of Transparent Encryption and Decryption for an Electronic Document Management System," U.S. Patent No. 6,185,681 (the "'681 patent"). As the case progressed toward trial, Blackberry filed a motion to exclude the testimony of MAZ' damages expert, Chase Perry.

As explained by the district court, "[i]n reaching his baseline estimate for damages, Mr. Perry relied on a previous license agreement involving the patent-in-suit. The previous license agreement, however, was made in the context of settling a litigation dispute, and thus did not reflect the royalty the parties would have reached 'just before infringement began.' Therefore, the damages amount arrived at in the settlement agreement had to be translated into a damages number that the same parties would have arrived at just before infringement began had they, instead, assumed that the patent was infringed and valid. This implies that the amount of the previous settlement would need to be increased to arrive at the royalties that would have been agreed to in a hypothetical negotiation.'

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Sprint v. Comcast: District Court Denies Request for Attorney's Fees Pending Appeal to the Federal Circuit

August 30, 2016

Plaintiff Sprint Communications Company brought suit against Defendants Comcast Cable Communications, LLC and Comcast IP Phone, LLC alleging infringement of six of its patents related to telecommunications and data networking. After the district court denied summary judgment, Sprint prevailed in a jury trial on some of the patents and Sprint was award $27.6 million in damages. Subsequently, the district court granted Comcast's motion for judgment as a matter of law and Sprint appealed.

Comcast requested attorney's fees under 35 U.S.C. § 285. Sprint argued that the district court should defer ruling on the motion until the appeal was determined and asserted that the Federal Circuit's decision may moot the motion, or may clarify some issues relating to it. Comcast opposed Sprint's request and encouraged a "swift resolution" with the idea that the Federal Circuit may be able to decide both issues at once.

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District Court Denies Leave to Amend to Add Implied License Affirmative Defense Where Motion for Leave Was Filed Just Two Months Prior to Fact Discovery Cut-Off

July 5, 2016

Google, Inc. and YouTube, LLC (collectively "Google") filed a motion for leave to amend their answer to include an implied license affirmative defense. Because Google filed the motion to amend its answer more than two months after the district court's scheduling order's deadline to amend the pleadings, Google had to show good cause for the district court to grant its motion.

The district court noted that Google did not file its present motion to amend until December 22, 2015, near the end of the fact discovery deadline of February 26, 2016. The district court also noted that "[t]he basis of Google's implied license defense is VideoShare's June 21, 2013 covenant not to sue for infringement of U.S. Patent No. 7,987,492. Nonetheless, Google failed to include the implied license defense in its pleadings for a year and a half after VideoShare entered the covenant not to sue. Google has made no attempt to explain its delay in presenting this defense. Google does not contend that it lacked sufficient information to meet the amendment deadline, or that it discovered new information that could not be timely pled. Therefore, Google has not demonstrated why its amended defense could not have been sought in a timely manner."

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After a Jury Trial Determining that the Defendant Infringed Several Valid Patents, the District Court Certified the Partial Judgment for Appeal Prior to a Trial on Damages Because the PTAB Had Found One of the Patents Invalid

June 15, 2016

Plaintiffs asserted that defendants infringed several patents. The district court bifurcated liability and damages for all four patent infringement claims. After a jury trial, the jury concluded that the patents were valid and infringed. Subsequently, after an inter partes review proceeding, the Patent Trial and Appeal Board ("PTAB") issued a Final Written Decision that found all asserted claims of one of the patents-in-suit unpatentable.

The district court denied the defendants' post-trial motions with respect to most of the patents, but withheld any decision on any issues pertaining to the '244 patent, which was the subject of the PTAB proceeding and a pending appeal from the PTAB decision. The defendants then filed a motion for certification of partial final judgment on the patent infringement claims pursuant to Fed. R. Civ. P. 54(b).

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District Court May Preclude Evidence from Parent Company Where Parent Company Was Dismissed from Case and Then Refused to Provide Discovery

June 2, 2016

When this patent infringement action began, the plaintiff explained that it was concerned that it would not be able to obtain important discovery if Ricoh Company Ltd. ("RCL"), which is the parent company of the defendants, Ricoh Electronics, Inc. ("REI") and Ricoh Americas Corp. ("RAC") were dismissed as a party. When they moved for dismissal, the defendants represented that: "IV identifies no information exclusively within the possession of RCL that is germane to its infringement case. On the other hand, it would be unreasonable and a hardship on RCL to force it to participate in litigation halfway around the world, particularly when RAC and REI are able and willing to contest IV's claims."

As explained by the district court, after the dismissal of RCL, REI and RAC stated that the technical documents sought by IV were not in their possession or control, but might be obtained from RCL. RCL then refused to provide the documents voluntarily. Unable to obtain the discovery from REI and RAC, IV sought discovery from RCL through international Letters Rogatory. That request was denied by the Japanese Ministry of Foreign Affairs.

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As Part of Protective Order, District Court Orders Prosecution Bar and Covenant Not to Sue for New Patents Acquired by Patent Holder

May 31, 2016

In this patent infringement action, a dispute arose between Plaintiff Blackbird Tech LLC ("Blackbird") and the defendants over the terms of proposed protective orders to govern the use of confidential information produced. Although the parties agreed that a protective order was appropriate, they disagreed on the level of access by Blackbird's in-house counsel and the scope of a patent prosecution bar.

The district court explained that the protective order presented a unique circumstance given Blackbird's business, which was described as "a new model for individual inventors and small companies to monetize their intellectual property." "Blackbird achieves this goal by acquiring patents and litigating on behalf of itself, using experienced patent litigators that are directly employed by Blackbird instead of outside counsel, at a great cost savings." Blackbird also described the acquisition of patents as being "essential" to its business. An important part of Blackbird's business model is to maintain "a diverse portfolio of patents and not to be concentrated in one technological area."

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District Court Precludes Evidence of Patent Trial and Appeal Board's Denial of Institution of Inter Partes Review at Trial

May 25, 2016


As this patent infringement action proceeded to trial, Google filed a motion in limine to exclude evidence of Google's petitions for Inter Partes Review ("IPR") of claims of the patent-in-suit and the Patent Trial and Appeal Board's ("PTAB") denial of institution of those petitions. Google had previously filed petitions with the PTAB seeking to invalidate the patent-in-suit and the PTAB had declined to institute review of the petitions.

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Cisco v. Sprint: Declaratory Judgment Action Dismissed Where Cisco Could Not Show Case or Controversy Based on Suits Against Customers and Aggressive Litigation and Licensing Tactics

March 2, 2016

Plaintiff Cisco Systems, Inc. ("Cisco") filed two declaratory judgment actions against Sprint seeking to invalidate six Sprint patents and seeking a declaration of non-infringement of seven Sprint patents. Cisco is a corporation organized and existing under the laws of the State of California, with its principal place of business in San Jose, California. Sprint is a limited partnership organized and existing under the laws of the State of Delaware, with its principal place of business in Overland Park, Kansas.

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District Court Declines to Modify Claim Construction Based on PTAB Denial of IPR

December 23, 2015

Adidas AG ("Adidas"), filed a patent infringement action against Under Armour, Inc. ("Under Armour") and MapMyFitness, Inc. ("MapMyFitness") alleging that they infringed over a dozen patents. After Under Armour and MapMyFitness filed answers and counterclaims, the district court held a Markman Hearing and issued a claim construction order.

After the claim construction order, the defendants filed a motion to modify the district court's claim construction. The defendants requested that the district court modify its construction of the term "route path" based on actions taken by the Patent Trial and Appeal Board ("PTAB"). Prior to the claim construction order, Under Armour filed a Petition for inter partes review ("IPR") of one of the patents-in-suit.

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After Granting Motion for Summary Judgment on Issue of Non-Infringement, District Court Orders Parties to Proceed to Bench Trial on Inequitable Conduct Defense to Avoid the Potential of Parties Preparing for Trial a Second Time

October 19, 2015

The District Court granted Transcend's motion for summary judgment on the issue of non-infringement and denied the patent owner's, Glaukos', motion on the issue of inequitable conduct. The District Court then set a bench trial on the issue of inequitable conduct.

In light of these rulings, Glaukos argued that the inequitable conduct trial should be postponed because the infringement ruling resolved the gravamen of the dispute between the parties and a trial on the inequitable conduct issue would be a waste of resources and potentially unnecessary in the event that the infringement ruling is affirmed on appeal.

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District Court Stays Patent Infringement Action Pending Inter Partes Review Prior to Institution of Review by Patent Trial and Appeal Board

June 17, 2015

The plaintiff CRFD Research, Inc. ("CRFD") filed a patent infringement action defendants Dish Network Corporation, Dish DBS Corporation, Dish Network L.L.C., Echostar Corporation, and Echostar Technologies L.L.C. (collectively, "Dish Network"). CRFD also filed separate actions against defendants Hulu, LLC ("Hulu"), Netflix, Inc. ("Netflix"), and Spotify USA Inc. ("Spotify"). CRFD alleges that each of the above-captioned defendants infringe U.S. Patent No. 7,191,233 ("the '233 Patent").

Certain of the defendants, Hulu, Netflix, and Spotify, filed a petition for inter partes review ("IPR") of the '233 Patent with the Patent Trial and Appeal Board ("PTAB"). Those same defendants then filed a motion to stay the proceeding pending the review by the PTAB, even though the PTAB had not yet accepted the petition for hearing. Dish Network then filed a separate petition for IPR and also filed a motion to join the other defendants' Joint Motion to Stay.

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District Court Orders Submission of Expert Reports on Damages to Determine Proper Usage of Entire Market Value Rule

May 18, 2015

Invista North America S.A. R.L. ("Invistia") filed a patent infringement action against M&G USA Corporation ("M&G"). As the case progressed toward trial, both parties exchanged expert reports on damages, which implicated the entire market value rule.

As explained by the Federal Circuit, the entire market value rule is derived from Supreme Court precedent requiring that the patentee 'must in every case give evidence tending to separate or apportion the defendant's profits and the patentee's damages between the patented feature and unpatented features, and such evidence must be reliable and tangible, and not conjectural or speculative.' Astrazeneca AB v. Apotex Corp., --- F.3d. ---, 2015 WL 1529181 at *11 (Fed. Cir. April 7, 2015).

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Fairchild v. Power Integrations: Because of Right to Appeal, District Court Precludes Reference to Pending Reexamination Proceedings Even Though PTO Had Rejected All Claims

May 4, 2015

Fairchild Semiconductor Corp. and Fairchild (Taiwan) Corp.'s
(collectively, "Fairchild") moved in limine to preclude any reference to any pending reexamination proceeding or any completed reexamination proceeding of any asserted patent. Defendant Power Integrations, Inc. ("PI") asserted that the fact the PTO finally rejected all asserted claims of the patent "is central to the 'specific intent' element (or the lack thereof) of Fairchild's inducement claim" and also negated Fairchild's proof of intent with respect to willful infringement.

The district court disagreed with PI. Noting that the Federal Circuit "has often warned of the limited value of actions by the PTO when used for" the purpose of "negating the requisite intent for inducement," the district court stated that the "[t]he pending reexamination of Fairchild's asserted patent is not final, as Fairchild has appellate rights. Pursuant to Federal Rule of Evidence 403, the limited probative value of evidence of the reexamination' is substantially outweighed by the risk of unfair prejudice to Fairchild, especially the risk of confusion and the need to educate jurors on administrative proceedings governed by different standards and on the potential for reversal of the PTO on appeal."

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Rosebud v. Adobe: District Court Grants Summary Judgment of No Remedies Where Plaintiff Could Not Prove Actual Notice of Patent Application

February 17, 2015

Rosebud filed a patent infringement action Adobe and Adobe moved for summary judgment arguing that Rosebud had no remedy for its patent against Adobe. Adobe based its summary judgment motion on the argument that the patent-in-suit did not issue until after Adobe's accused product was discontinued.

As set out by the district court, the parties did not dispute that the accused feature of Adobe's product (Collaborate Live) was discontinued and could not have been used after January 2013. As the '280 patent issued on November 5, 2013, Rosebud could not recover post-issuance damages. Instead, Rosebud sought to recover provisional remedies under 35 U.S.C. § 154(d), based on the publication of the '280 patent application on December 29, 2011, which requires the defendant to have actual knowledge of the published patent application.

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