Articles Posted in D. Delaware

Plaintiffs Versata Software, Inc. and Versata Development Group, Inc. (collectively, “Versata”) filed a patent infringement action in July 2012 against defendant Callidus Software, Inc. (“Callidus”) The patents were all characterized as “covered business method patents.”

Callidus filed a challenged to the validity of the patents-in-suit in August 2013, pursuant to the “covered business method” (“CBM”) patent review process provided for under the America Invents Act. As explained by the district court, “[t]he CBM petitions were filed by Callidus some 13 months after suit was filed and after Callidus had instituted a motion practice which included motions to dismiss and/or transfer. On March 4, 2014, the Patent Trial and Appeal Board (“PTAB”) granted review of the patents-in-suit, finding it more likely than not that the challenged claims are directed to non-statutory subject matter and, therefore, unpatentable under 35 U.S.C. § 101.”
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Novartis sought to use the deposition testimony of defendant’s expert at trial under Fed.R.Civ.P. 32(a)(4)(B). As explained by the district court, “the Rule provides that a party may use the deposition of a witness for any purpose” if “the witness is more than 100 miles from the place of hearing or trial or is outside the United States, unless it appears that the witness’s absence was procured by the party offering the deposition.” FED. R. Civ. P. 32(a)(4)(B). “[A] conclusion that a party has procured the absence of a witness requires a finding that the party ‘actively took steps to keep the deponents from setting foot in the courtroom,’ and ‘procuring absence and doing nothing to facilitate presence are quite different things.'” Forrester Envtl. Servs., Inc. v. Wheelabrator Techs., Inc., 2012 WL 1161125, at *2 (D.N.H. Apr. 6, 2012) (quoting Carey v. Bahama Cruise Lines, 864 F.2d 201, 204 (1st Cir. 1988)).

The district court then noted that Dr. Kibbe was an expert witness on obviousness for the defense in a case that went to trial in August 2013. The defendant here, Par, had its case stayed on the morning of trial because Par and Novartis had purportedly reached a settlement agreement. The trial against another defendant then proceeded without Par’s presence, and Dr. Kibbe testified as scheduled.
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Plaintiff Andrulis Pharmaceuticals Corp. (“Andrulis”) filed a patent infringement action against Celgene Corporation (“Celgene”) alleging direct, induced, and contributory infringement. Celgene filed a motion to dismiss arguing that the complaint failed to state a claim.

After Andrulis voluntarily dismissed the contributory infringement claim, the district court analyzed the claims for direct and induced infringement. For direct infringement, Andrulis alleged two factually distinct theories. “The first is that Celgene itself directly infringes the claims because it administers the patented method, which Andrulis refers to as the undivided direct infringement claim. The second is that Celgene is a joint infringer because physicians administer the patented method under Celgene’s direction and control, which Andrulis refers to as the joint direct infringement claim.”
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Plaintiff SecureBuy, LLC (“SecureBuy”) filed a Motion to Stay Proceedings pending resolution of a Covered Business Methods (“CBM”) review at the Patent Trial and Appeals Board (“PTAB”). When the motion was stayed, the PTAB had not yet granted review of the CBM petition.

Before ruling on the stay request, the district court had previously heard argument on defendant’s motion for preliminary injunction or in the alternative for expedited discovery and an expedited trial. The district court denied the preliminary injunction but granted Defendant’s request to expedite the case and scheduled trial for August of 2014. When it opposed the preliminary injunction and expedited trial, SecureBuy made similar arguments as it raised in its motion to say pending the CBM review, which the district court considered when ruling on the previous motion.
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Clouding IP (“Clouding”) filed a patent infringement action against Rackspace, which alleged direct, indirect, and willful infringement of the patents-in-suit. The district court granted defendant Rackspace’s motion to dismiss with respect to indirect infringement, but also granted Clouding leave to amend its complaint. In that ruling, the district court found that Clouding had adequately plead the knowledge requirement for induced infringement, but the district court dismissed Clouding’s claims because the First Amended Complaint “failed to plead facts from which the Court [could] infer intent.”

Clouding filed a second amended complaint, which again alleged claims for inducing infringement. Rackspace moved to dismiss the indirect infringement claims. Rackspace’s motion presented a narrow issue as to whether Clouding failed to sufficiently plead the element of intent for its inducement claims.
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Infinite Data filed twenty-one patent infringement actions against a number of companies, including Amazon.com. Mellanox Technologies sued Infinite Data for a declaratory judgment that its technology does not infringe Infinite Data’s patent and that the patent is invalid. Mellanox also alleged that it had received indemnification requests from “many” of the twenty-one defendants because many of them are users and/or customers of Mellanox’s technology.

All twenty-one defendants filed motions to stay, arguing that each of them use Mellanox’s technology, and that the Court should exercise its discretion to stay their cases while the Mellanox case proceeds. To begin its analysis, the district court noted the standard for a stay: “(1) whether granting the stay will simplify the issues for trial; (2) whether discovery is complete and a trial date is set; and (3) whether granting a stay would cause the non-moving party to suffer undue prejudice from any delay, or a clear tactical disadvantage. See, e.g., Vehicle IP LLC v. Wal-Mart Stores, Inc., 2010 WL 4823393, *1 (D.Del. 2010).”
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Bonutti Skeletal Innovations LLC (“Benutti”) filed a patent infringement action against Conformis, Inc. (“Conformis”). Conformis moved to dismiss on several grounds, including that the complaint asserted an infringement theory based on “joint infringement” and therefore did not state a claim for relief.

In analyzing the claim at issue, the district court first noted that “in order to adequately state a claim for direct infringement of method claims, the complaint must allege that the accused infringer “perform[ed] all the steps of the claimed method, either personally or through another acting under his direction or control.” Akamai Techs., Inc. v. Limelight Networks, Inc., 692 F.3d 1301, 1307 (Fed. Cir. 2012). Where the complaint alleges that the accused infringer personally performed all the steps of the claimed method, Form 18 of the Federal Rules of Civil Procedure provides the pleading standard by which the plaintiff’s allegations are to be measured. See Superior Indus., LLC v. Thor Global Enter. Ltd., 700 F.3d 1287, 1295 (Fed. Cir. 2012); Pragmatus AV, LLC v. Yahoo! Inc., Civ. Action No. 11-902-LPS-CJB, 2012 U.S. Dist. LEXIS 161874, at *9-12 (D. Del. Nov. 13, 2012), adopted by 2013 U.S. Dist. LEXIS 73636 (D. Del. May 24, 2013). Where the complaint implicates a theory of joint infringement, and thus alleges what is known as divided infringement, however, a plaintiff must allege much more than merely the requirements of Form 18. See Pragmatus, 2013 U.S. Dist. LEXIS at *11. Specifically, the complaint must also plead facts sufficient to allow the court to reasonably infer that one party exercises “direction or control” such that performance of every step is attributable to the controlling party. Id. at *15.
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In UbiComm LLC v. Zappos IP Inc., No. 1-13-cv-01029 (D. Del. Nov. 13, 2013), the court dismissed the asserted patent claims as being directed at an abstract idea that was patent ineligible. Plaintiff UbiComm LLC (“UbiComm”) alleged that Zappos IP Inc.’s (“Zappos”) websites infringed method claims of United States Patent No. 5,603,054 (“‘054 patent”). Zappos moved to dismiss the asserted claims as ineligible subject matter.

The patent describes the invention as “a method for superimposing prespecified locational, environmental, and contextual controls on user interactions, including interactions of mobile users, with computational resources of a distributed computer system and with equipment residing on processes running on said system.” Claim 1 of the ‘054 patent, the only independent claim, reads:
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Robocast filed patent infringement actions against Apple and Microsoft. As expert reports were underway, Apple and Microsoft moved to compel undisclosed surveys that were commissioned by one of Robocast’s experts. As the Magistrate Judge explained, “Specifically, I am asked to resolve the parties’ dispute concerning certain undisclosed surveys commissioned by Professor James T. Berger in anticipation of his issuing expert reports vis-a-vis each defendant. Those two reports, in turn, are the foundation upon which another plaintiff’s expert directly relies for the purpose of establishing the scope of damages against the defendants. Robocast’s survey expert actually had preliminary surveys conducted for each of the two defendants, Apple and Microsoft, prior to the surveys which form the basis for his expert reports’ conclusions.”

Robocast resisted to reveling the prior surveys was predicated on the argument that Professor Berger claimed he did not rely upon any of the prior surveys in connection with reaching the conclusions reflected in his final reports concerning each defendant. “Indeed, because the expert deleted the earlier surveys (which had been performed after his retention by the plaintiff) from his computer, he was physically unable to take them into consideration at the time he reviewed and adopted the later-commissioned surveys into his final reports.”
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In this patent infringement action, a number of the defendants moved to stay the case pending an Inter Partes Review (“IPR”) of the patent-in-suit. The district court had previously denied a motion to stay pending a previous reexamination proceeding before the patent office.

In October 2012, shortly after the America Invents Act’s IPR process became available, Kyocera filed an IPR against all asserted claims of the patents-in-suit. The Patent Trial and Appeal Board (“PTAB”) found that Kyocera demonstrated “a reasonable likelihood of prevailing in its challenge” to the asserted claims. Kyocera then moved to stay pending the IPR process and the other defendants filed a motion to stay pending the IPR process as well.
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