Articles Posted in D. Delaware

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In this patent infringement action, Microchip accused Aptiv’s Dual Role Hub of infringing several the patents. As the district court explained, the Dual Role Hub is a media module that Aptiv manufactures and sells to automakers for incorporation into a car’s infotainment system through USB peripherals, such as a smart phone. The Dual Role Hub can also perform a more complex function. For example, when an iPhone is connected to the Dual Role Hub to start an Apple CarPlay session, the Hub detects the iPhone and requests that it re-connect as a host device instead of a peripheral device and when that happens, two hosts–the Head Unit and the iPhone—can connect to the same Dual Role Hub, which permits the user to make use of other hub ports while CarPlay is active.

Microchip served an expert report from Stephen Becker, Ph.D., which offered two damages-related opinions. First, he explained that, if Aptiv had not infringed, Microchip would have earned incremental profits of $40.9 million. Second, he determined that Aptiv and Microchip would have agreed to a reasonable royalty of $2 per Dual Role Hub in a hypothetical negotiation. Continue reading

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In this patent infringement action, AT&T filed a motion to compel certain litigation-funding discovery from the plaintiff, United Access Technologies, LLC (“UAT”).  The district court reviewed documents relating to or from third parties regarding potential investments by those third parties in UAT’s lawsuits and communications to and from third parties relating to “quarterly updates” about UAT’s current lawsuits.  In its motion, AT&T contended the information was not privileged and should be produced.  UAT responded that the litigation funding was irrelevant and was protected by the work-product doctrine.

To analyze the issue, the district court explained that “[d]iscoverability of litigation funding materials under Federal Rule of Civil Procedure 26 is a contested issue on which there is no binding precedent in the Third Circuit. See In re Valsartan N-Nitrosodimethylamine (NDMA) Contam. Prod. Liab. Lit., 405 F. Supp. 3d 612, 615 (D.N.J. 2019) (collecting cases and agreeing “with the plethora of authority that holds that discovery directed to a plaintiff’s litigation funding is irrelevant”). Generally, when confronted with this sort of dispute, close consideration of the subject matter in the disputed documents (e.g., through in camera review) is a prudent approach. See, e.g., ART+COM Innovationpool GmbH v. Google, Inc., C.A. 14-217 D.I. 196 (D. Del. Sept. 11, 2015) (finding, after in camera review, agreements with plaintiff’s litigation financiers were irrelevant).” Continue reading

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In this patent infringement action between Guardant and Foundation Medicine (“Foundation”), Foundation moved to exclude the testimony of Guardant’s damage expert, Dr. Becker, on reasonable royalty damages.  In his opinion, Dr. Becker applied on an apportionment factor of 50% in that he asserted the patents contributed at least 50% of the value of the Foundation accused products.  To support this opinion, Dr. Becker relied on a discussion with Dr. Cooper, Guardant’s infringement expert.

Foundation argued that the portions of Dr. Becker’s and Dr. Cooper’s testimony regarding reasonable royalty damages should be excluded because they failed to properly apportion damages to only the patented features of the accused products.  The district court explained that “the central dispute here is whether the 50% apportionment value chosen by Dr. Becker (Guardant’s damages expert) is sufficiently supported by the content of his discussion with Dr. Cooper (Guardant’s infringement expert)—a discussion that provided the exclusive basis for Dr. Becker’s apportionment figure.”  Foundation argued that there was no proper support as Dr. Cooper’s opinions regarding the 50% apportionment value are without “explanation or methodology[.]” Continue reading

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In this patent infringement action, Plaintiff intended to use a damage expert to support a “lost profits” measure of damages and/or a “reasonable royalty” measure of damages. Defendant moved to exclude the lost profits analysis because the damage expert ignored the testimony of Plaintiff’s corporate designee that contradicted his ultimate conclusion.

In the motion to exclude, as explained by the district court, Defendant argued that the damage expert “ignores” testimony from Plaintiff’s corporate designee (Patrick Cox) that purportedly contradicts his ultimate conclusion that, but for Defendant’s infringement, Plaintiff would have realized the sales that Defendant obtained; and (b) Mr. Holzen “lacks information sufficient to reliably determine [Plaintiff]’s profit per call, because that information is based on negotiated customer agreements, which vary by customer.”

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Acceleration Bay LLC (“Acceleration”) filed a patent infringement suit against Activision Blizzard Inc. (“Activision”) alleging that versions of its popular video games, World of Warcraft, Call of Duty, and Destiny infringed certain of its patents. The trial in the action was postponed when it was not clear as to whether Acceleration had a viable, admissible damage theory.

After the district court permitted the plaintiff to submit a new damage report, the plaintiff submitted a new report from a new damage expert. Activision moved to exclude the new damage report on several grounds and Acceleration also moved to exclude Activision’s damage expert as well. In addition to excluding Acceleration’s damage expert report in several respects, the district court also excluded certain aspects of Activision’s damage expert.

With respect to Activision’s expert, the district court noted that “Ms. Lawton’s assumption of non-infringement of earlier versions of the accused products is baseless and must be excluded.” Activision argued that Ms. Lawton did not opine on non-infringing alternatives but instead assumed non-infringement based on Acceleration not pursuing infringement claims prior to 2012. The district court found this explanation unavailing.

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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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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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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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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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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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