Articles Posted in D. Delaware

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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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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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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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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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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 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 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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Intellectual Ventures (“IV”) filed a motion to bifurcate and stay discovery of Symantec’s patent misuse defense. The district court agreed with Intellectual Ventures. “While the Court views IV’s motion as essentially two motions one to bifurcate for a separate trial, see F.R.C.P. 42(b), and one to stay discovery, to which the general stay factors may be pertinent, see, e.g., Apotex, Inc. v. Senju Pharm. Co., 921 F. Supp. 2d 308, 313-14 (D. Del. 2013) it finds that the circumstances do not warrant departure from the Federal Circuit’s general guidance that antitrust and related issues be bifurcated in patent cases, and further finds that judicial economy warrants staying discovery related to these issues. See In re Innotron Diagnostics, 800 F.2d 1077, 1084 (Fed. Cir. 1986).”
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In this patent infringement action, the defendant moved to exclude portions of the plaintiff’s (Dr. Bambos’) expert testimony. Defendant argued that Dr. Bambos lacks familiarity with the infringing products, relied too heavily on someone else to provide him with relevant segments of source code to review, and used the district court’s claim construction to determine how the products work.

In analyzing the motion, the district court noted that “Dr. Bambos never used the allegedly infringing products, but his expert opinion was based on ‘thousands of pages of technical manuals, source code, and depositions transcripts.’ (D.I. 221 at p.1) (See D.I. 221-4 at 3-6; D.I. 221-3 at 2-5). Rule 702 requires that expert testimony be based on “sufficient facts or data.” Dr. Bambos need not use the product if, as here, he has familiarized himself with it in other ways. Reviewing source code and other materials can be sufficient.”
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Amazon.com (“Amazon”) filed a motion to dismiss Tuxis Technologies, LLC’s (“Tuxis”) complaint for failure to state a claim. Tuxis alleged infringement of the 6,055,513 (“the ‘513 patent”) against Amazon. As explained by the district court, the ‘513 patent relates to a method of upselling. The term “upsell” is defined in the patent to be “an offer or provision of a good or service which is selected for offer to the customer and differs from the good or service for which the primary contact was made.” The patentee defined “real time” as “during the course of the communication initiated with the primary transaction or primary interaction.”

Amazon moved to dismiss, asserting that the ‘513 patent’s claims are invalid because they do not claim patent-eligible subject matter under 35 U.S.C. § 101. After analyzing the recent case law on section 101 of the Patent Act, including Alice Corp., the district court found that “[i]n applying the framework set out above, it is clear that the claim 1 of the ‘513 patent is drawn to unpatentable subject matter. It claims the fundamental concept of upselling–a marketing technique as old as the field itself. While the additional limitations of the claim do narrow its scope, they are insufficient to save it from invalidity.”
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