Delaware Intellectual Property Law Update

May 12, 2016

Publication| Intellectual Property

Welcome to the latest edition of the Richards, Layton & Finger Intellectual Property Law Update.  As always, if you have any questions about any of the decisions listed below or the District of Delaware in general, please let us know.

Judge Robinson Orders Hearing to Determine Whether the Parties Have Identified the Accused Products in the Case
In Intellectual Ventures I LLC v. Toshiba Corp., C.A. No. 13-453-SLR (D. Del. Apr. 20, 2016), Judge Robinson scheduled an in-person hearing to ensure that the parties were proceeding through expert discovery with a “discrete set of accused products and the sales figures” at issue.  Judge Robinson was concerned that the parties may not have reached an agreement on this “basic information required in a patent case.”  The parties were ordered to bring witnesses knowledgeable about these subjects to the hearing to testify if needed.

Judge Robinson Denies Delaware Corporation’s Motion to Transfer
In Scientific Telecommunications LLC v. ADTRAN, Inc., C.A. No. 15-647-SLR (D. Del. Apr. 25, 2016), Judge Robinson denied defendant ADTRAN, Inc.’s (“ADTRAN”) motion to transfer the case to the Northern District of Alabama.  ADTRAN argued that the case should be transferred to Alabama because its headquarters, approximately 1346 employees, and business records were all located in Alabama, making it a more convenient forum.  The defendant also argued that “administrative difficulty from court congestion” in Delaware supported transferring the case to Alabama.

Judge Burke Declines to Assert Personal Jurisdiction over Texas LLC
In Fidelity National Information Services, Inc. v. Plano Encryption Technologies, LLC, C.A. No. 15-777-LPS-CJB (D. Del. Apr. 25, 2016), a declaratory judgment action, Magistrate Judge Burke concluded in a report and recommendation that the Court did not have personal jurisdiction over the defendant, Plano Encryption Technologies, LLC, a Texas limited liability company (“Plano”). 

Judge Robinson Finds Personal Jurisdiction over Washington Company but Grants Motion to Transfer Due to Undue Burden
In Segway, Inc. v. Inventist, Inc., C.A. No. 15-808-SLR (D. Del. Apr. 25, 2016), Judge Robinson denied a motion to dismiss for lack of personal jurisdiction filed by the defendant, Inventist, Inc. (“Inventist”), a Washington corporation, but granted Inventist’s motion to transfer. 

Judge Robinson Denies Motion for Attorneys’ Fees after Invalidating Patents-in-Suit under Section 101
In YYZ, LLC v. Pegasystems, Inc., C.A. No. 13-581-SLR (D. Del. May 2, 2016), after granting the defendant’s motion for summary judgment that the plaintiff’s patents-in-suit were invalid under 35 U.S.C. § 101, Judge Robinson denied the defendant’s motion for attorneys’ fees under 35 U.S.C. § 285.  Judge Robinson rejected the defendant’s first argument—that the plaintiff had admitted that the inventive concepts contained in the patents-in-suit were already in the prior art—as a rehash of the defendant’s Section 101 argument.  Noting that the Court “expended considerable effort to reach its invalidity determination” and that “the § 101 analysis is an evolving state of the law and a difficult exercise, which does not lend itself to, e.g., shifting fees,” Judge Robinson found the plaintiff’s position that the patents-in-suit were not invalid was not so “reckless” as to warrant an award of fees.

Judge Andrews Denies Motion for Summary Judgment, Citing Patent’s Inventive Concept
In ART+COM Innovationpool GmbH v. Google Inc., C.A. No. 14-217-RGA (D. Del. Apr. 28, 2016), Judge Andrews denied defendant Google, Inc.’s (“Google”) motion for summary judgment under 35 U.S.C. § 101.  The plaintiff, ART+COM Innovationpool GmbH (“ACI”), alleged that Google infringed a patent describing a software method for representing “space-related data, particularly geographical data of flat or physical objects.”  Google moved for summary judgment on the basis that the patent at issue was directed to patent-ineligible subject matter: the abstract idea of “storing image data, then repeatedly requesting specific data, which is then stored and displayed.”  According to Google, this subject matter was patent-ineligible since it was merely an electronic variation of a long-standing, common human activity: visiting a library and viewing an atlas containing maps with different resolutions.  

Upcoming Events

District of Delaware’s Second Bench & Bar Conference May 19 & 20
This year’s Bench and Bar Conference will be held at the Chase Center on the Riverfront in Wilmington.  Confirmed speakers include judges from the United States Court of Appeals for the Third and Federal Circuits; the United States District Courts for the Districts of Delaware, New Jersey, Eastern Pennsylvania, Western Pennsylvania, Eastern Texas, Northern Texas, and California; the United States Bankruptcy Court for the Districts of Delaware and the Southern District of New York; and nationally respected practitioners from public and private practice.  For registration, please CLICK HERE.

The agenda for the Bench & Bar can be viewed HERE.

Judge Robinson to Be Honored at NJIPLA Jefferson Medal Dinner
The New Jersey Intellectual Property Law Association will honor Judge Robinson at its 2016 Jefferson Medal Dinner on June 10, 2016.  Information about the event can be found HERE.


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