Written by: Jacob Blumert

In a recent order arising from Segway, Inc. et al. v. Inventist, Inc., Judge Robinson denied a motion to dismiss for lack of jurisdiction, while granting a motion to transfer venue.  No. CV 15-808-SLR (D. Del. April 25, 2016).  Specifically, Judge Robinson held that Inventist, Inc., Defendant, was subject to personal jurisdiction in the District of Delaware, but that a transfer of venue was warranted as litigation in the District of Delaware posed an unreasonable burden on the Defendant.  Id. at 8 and 10.

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Written By: Alyssa M. Pugh

In Pragmatus Telecom LLC v. Newegg Inc., Judge Andrews addressed Newegg’s Motion for Attorneys’ Fees in view of the Supreme Court’s “exceptional case” doctrine set forth in Octane Fitness, LLC v. ICON Health & Fitness, Inc. Judge Andrews ultimately found that this case, one in a wave of infringement suits filed by Pragmatus, did not rise to the level of “exceptional” under the Octane framework.

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Written By: Jacob Blumert

In a report and recommendation for Evolved Wireless, LLC v. Samsung Electronics Co., LTD. and Samsung Electronics America, Inc., Magistrate Judge Sherry R. Fallon recommended the dismissal of Evolved Wireless’s claims for willful infringement and pre-complaint indirect infringement, finding the Evolved “failed to adequately plead” the required elements of each claim. No. CV 15-545-SLR-SRF (D. Del. March 15, 2016).

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Written By: Christopher H. Blaszkowski

In a series of four separate patent infringement actions, each involving plaintiff Rothschild Mobile Imaging Innovations (“RMII”), defendant Mitek Systems (“Mitek”), and one of four bank customers of Mitek’s (“the Bank Defendants”), Judge Sleet granted the Bank Defendants’ motions to sever and stay RMII’s infringement claims against them until the Court resolves those claims against Mitek. Civ. Nos. 14-617, 14-1142, 14-1143, and 14-1144 (D. Del. July 31, 2015).
Id.

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Written By: Jacob Blumert

In Merck & Cie v. Watson Labs., Inc., No. CV 13-1272 (D. Del. Aug. 31, 2015), Judge Andrews analyzed the requirements of the offer for sale bar in the context of pharmaceutical compounds. Merck asserted infringement of U.S. Patent No. 6,441,168 (“‘168 Patent”) in response to Watson’s filing of two ANDAs. Id. at 1-2. Watson asserted that Merck’s patent was invalid for being anticipated, under 35 U.S.C. § 102, for being on-sale or being offered for sale more than one year prior to the filing date of the patent application. Id.

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Written By: Alyssa M. Pugh
In two recent patent infringement actions, the United States District Court for the District of Delaware addressed notice issues arising out of disputes concerning 35 U.S.C. § 287(a). In both actions, the District of Delaware provided clarification regarding the propriety of notice given by patentees to accused infringers.
Id.

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Written By: Andrew J. Koopman & Alyssa M. Pugh

On remand from the Supreme Court, the three judge panel in Akamai Technologies, Inc. v. Limelight Networks, Inc. affirmed the district court’s holding that Limelight Networks, Inc. (“Limelight”) did not directly infringe the patent of Akamai Technologies, Inc. (“Akamai”). In doing so, the Federal Circuit answered the question left open by the Supreme Court’s previous June 2014 Akamai decision relating to the proper statutory scope of direct infringement under 35 U.S.C. § 271(a), and noted that the interpretation proposed by Akamai would render the indirect infringement provisions of §§ 271(b) and 271(c) redundant.

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In Priceplay.com Inc. v. AOL Advertising Inc., Judge Andrews, once again, granted a motion to dismiss on the basis that the patents at issue were invalid under 35 U.S.C. § 101. No. 14 Civ. 92 (D. Del. Mar. 18, 2015).
The asserted patents generally relate to business processes for allowing buyers an opportunity to reduce the price of a product/service within an agreed-upon price range based on the buyer’s performance during a competitive activity, such as a video game, word game, sports bet, card game, or the like. AOL filed a motion to dismiss alleging that the asserted patents were invalid for failing to recite patentable subject matter.

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Courts Continue To Invalidate Patents For Ineligible Subject Matter At The Pleadings Stage

This article appeared in the April 1, 2015 Edition of The Legal Intelligencer
Less than 10 months ago, the Supreme Court issued its landmark decision regarding patent eligibility under 35 U.S.C. § 101 in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014). Since then, the application of Alice by both district courts and the Court of Appeals for the Federal Circuit confirms that the impact of this case extends beyond the substantive aspects of patent eligibility. Alice has procedurally changed patent litigation. Indeed, courts applying Alice are invalidating patents at a previously unheard of (and still growing) rate following motions to dismiss under Fed. R. Civ. P. 12(b)(6) or motions for judgment on the pleadings under Fed. R. Civ. P. 12(c).

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Following the Supreme Court decision regarding patent eligibility in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. __, 134 S.Ct. 2347 (2014), the District of Delaware has found a number of patents invalid as directed to patent ineligible subject matter. The application of Alice shows that the effects of this decision go beyond the substantive aspects of patent eligibility — Alice has also procedurally changed patent litigation. The District (among others throughout the nation) has demonstrated a willingness to invalidate patents for failure to claim patentable subject matter at a much earlier stage in litigation (i.e., without claim construction and pursuant to a motion to dismiss under Fed. R. Civ. P. 12(b)(6)). This most recent series of rulings suggests that Defendants may continue to use this pre-claim construction (and pre-discovery) procedural vehicle to attack patent validity before incurring significant litigation/discovery costs.

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