As to the prosecuting attorney, Judge Andrews found that Volcano failed to plead adequate facts to allow the Court to "reasonably infer" that the attorney withheld documents with the specific intent to deceive the PTO. Id. As to the inventors, Judge Andrews found that Volcano failed to "sort out the specific facts and attribute them to a particular individual." Id. at 4. Volcano was granted leave to amend, as to the inventors, and instructed to: (1) "individually identify whose actions constitute affirmative misconduct or were contrary to the duty of candor, and material to the issuance of the [patent in suit], on particular dates, with the intent to deceive the PTO"; and (2) "plead facts explaining why the omitted references are not cumulative of other prior art reviewed during prosecution[.]" Id.

The defendants argued “essentially that D. Del. LR 54.1 imposes requirements for taxation of costs that are not present in Section 1920, rendering the Local Rule impermissibly narrower than the statute.” For example, defendants pointed out that § 1920 makes transcript and copy costs taxable if they are “necessarily obtained for use in the case,” but the local rule requires transcripts to be “requested by the Court or prepared pursuant to stipulation” and copies to be “attached to a document required to be filed and served” or “admitted into evidence.” Id. at 10. As Judge Stark explained, however, LR 54.1 is a “proper exercise of the Court’s discretion, discretion which is recognized in Section 1920.” Because § 1920 states that “the Court ‘may’ tax costs to the losing party,” the local rule “provides guidance to counsel and litigants as to how this Court has chosen, as a general matter, to exercise its discretion with respect to taxation of costs.” Id. Further, the local rule limits on the items which the Clerk “shall” tax, without limiting the items that the Court might tax, and the Court has greater discretion in taxing costs than the Clerk. Id. at 10-11. Judge Stark therefore found that LR 54.1 was not in conflict with § 1920.

Turning to the specific taxation requests at issue, Judge Stark first found that the defendants had provided “adequately detailed and clear support for the costs,” including “four declarations, attaching in excess of 600 pages of invoices, bills, and summaries of work.” Although Honeywell sought to impose a high standard on the bill of costs to clearly describe each item, Judge Stark noted that “[i]n the context of complex patent litigation, it would be unreasonable to require a party to track and articulate the relevance of each specific document produced in discovery, each deposition noticed, and each exhibit designated for use at trial.” Id. at 12-13. His Honor then considered each category of costs individually, in some cases affirming and in other cases reversing the Clerk’s determinations.

Interestingly, Judge Stark also noted the Supreme Court’s recent decisions in Octane Fitness and Highmark when he mentioned in passing the defendants’ previously-denied motions for an exceptional case finding. Judge Stark indicated that he would order the parties to submit a joint status report regarding whether the Court “can and/or should reevaluate its prior ruling with respect to attorneys fees in light of the recent Supreme Court rulings.” Id. at 4 n.6.

- "[L]ayout"
- "[S]tore"
- "[S]tore layout"
- "[D]escription page[s] ... comprising information related to said corresponding store"

Judge Robinson also assigned the term “series of maps” its plain and ordinary meaning.

As a threshold matter, Judge Sleet noted that the action could have been brought in the Eastern District of Washington. Id. at 2. Turning to the Jumara private interest factors, Judge Sleet noted that plaintiff’s “choice of Delaware as a forum is entitled to less than the paramount deference that would ordinarily be due because [plaintiff’s] principal place of business is California.” Id. Further, addressing “where the claims arose,” Judge Sleet found that the products at issue were manufactured outside of Delaware, which weighed in favor of transfer. Id. As to the convenience of the parties, Judge Sleet explained that defendant’s “employees who have knowledge of this matter are located in both South Carolina and Washington, while [plaintiff] is a non-practicing entity with only a single employee located to California.” Id. at 3. Accordingly, while “both parties may be able to litigate in Delaware,” Judge Sleet found it was “clear” that “litigation costs would be lowered if the parties and [defendant’s] employees did not have to travel to Delaware.” Id. Judge Sleet also found the location of books and records to weigh in favor of transfer, given that all of defendant’s relevant records were in Washington. Id.

As to the Jumara public interest factors, Judge Sleet explained that at the outset, “the court considers practical considerations that could make the trial easy, expeditious, or inexpensive.” Id. at 3-4. Judge Sleet explained that the dispute here is “between two companies, none of which are physically located in Delaware, involving accused products, none of which were designed or manufactured in Delaware.” Id. at 4. Additionally, as Judge Sleet explained, “the bulk of the records and witnesses” will be defendant’s, and “these are not located in Delaware either.” Id. Judge Sleet also noted that “the six-month shorter time to trial in the Eastern District of Washington and the five times greater number of cases per judge in the District of Delaware counsel that this case should be tried in Washington.” Id. at 4.

The following claim term from U.S. Patent No. 5,774,170 was construed: "[T]argeting advertisements . . . using code comparison in a control device [at [a/the] [display/viewing] site]:” While the plaintiff argued for a broad construction that would reach internet advertising, Judge Robinson construed the term to apply only to television advertising since "the specification consistently refers to 'cable TV,' 'television,' and 'VCR' . . . [and] the figures . . . represent TV systems and more particularly cable television." Id. at 5-6.

The Court also construed from U.S. Patent No. 6,002,393 the claim terms “[H]ead end system:” and "[D]ownloading the [instruction/command signal] . . . to command the control device[s] to select [an/the] advertisement from the head end system:”.

The claim construction order was issued in the CBS Interactive case, as well as in cases filed against Google Inc. and YouTube LLC (Civ. No. 13-429), Bravo Media LLC, NBC Entertainment and Universal Television Networks (Civ. No. 13-430), Fox Broadcasting Co., et al. (Civ. No. 13-431), DirecTV Group Inc. (Civ. No. 13-432), ESPN, Inc., et al. (Civ. No. 13-433), Cartoon Interactive Group Inc., et al. (Civ. No. 13-434), Univision Interactive Media, Inc. (Civ. No. 13-435), Vevo LLC (Civ. No. 13-436), Viacom Int'l Inc. (Civ. No. 13-437), Yahoo! Inc. (Civ. No. 13-438), Blip Networks Inc. (Civ. No. 13-962), and uStream Inc. (Civ. No. 13-965).

The Court explained that it was also “not persuaded that Defendants are not seeking an unfair tactical advantage, and Defendants have articulated no persuasive grounds for finding they will be prejudiced by proceeding to trial on essentially the schedule they themselves very recently proposed, further disfavoring a stay. Plaintiffs would be prejudiced from a stay, given the possibility of additional trials and the consequent delay in achieving resolution of this litigation.”

After trial, the Court instructed the parties to meet and confer regarding settlement. The parties did that, resulting in the exchange of a draft settlement and license agreement, exchanged while Mylan awaited final management approval of Endo's offer. Id. at 12. The parties communicated this to the Court during a status conference held a few days prior to the Court issuing its post-trial opinion and order. Id. at 13. Shortly after the status conference, Mylan received final approval to accept Endo's offer. Mylan contacted Endo via telephone and formally accept the offer, but 20 minutes later the Court issued its opinion and order. At that time, Endo informed Mylan that "nothing had been reduced to writing, and, in [Endo's] view, they did not have an enforceable agreement." Id. at 18.

Regarding Mylan's Rule 60(b) motion, Judge Bumb found that Mylan "established extraordinary circumstances justifying relief from final judgment" because the parties "entered into an oral settlement agreement prior to entry of the Court's judgment." Id. at 20. Judge Bumb found that the parties entered into an oral settlement agreement based on the following facts: (1) Endo made a "final" offer of settlement to Mylan, proposing three terms; (2) Endo never withdrew or amended its offer; and (3) Mylan accepted the offer, reciting the three terms, to which Endo responded "that's great." Id. at 24. Judge Bumb found that these facts demonstrated an intent to be bound "as it reflects [Endo's] understanding that an agreement had been reached as to the three terms[.]" Id. at 24-25. Endo argued that the oral agreement could not be enforced because the parties intended the agreement to be formalized in a written contract. Id. at 27. Judge Bumb disagreed. "Although the parties clearly intended that a written contract would ultimately be drafted, the record contains no evidence indicating that the parties made a settlement contingent upon the execution of a written agreement." Id. at 28. The Court also determined that the agreement was enforceable because the three key terms agreed to were the "essential terms" required by the parties, even though other terms had not been completely worked out. Id. at 29-37.

Judge Andrews first discussed the Supreme Court’s recent decisions finding the Federal Circuit’s test for attorney’s fees under 35 U.S.C. § 285 too rigid. As Judge Andrews explained, the Supreme Court defines an “exceptional case” under § 285 as “simply one that stands out from others with respect to the substantive strength of a party’s litigating position (considering both the governing law and the facts of the case) or the unreasonable manner in which the case was litigated.” (citing Octane Fitness, LLC v. ICON Health & Fitness, 134 S. Ct. 1749 (2014) and Highmark Inc. v. Allcare Health Mgmt. Sys., Inc., 134 S. Ct. 1744 (2014)) (emphasis added). Judge Andrews further explained that the Supreme Court’s more flexible standard permits district court judges to exercise their discretion on case-by-case basis and to consider the totality of the circumstances when considering an award of attorney’s fees. Judge Andrews found that neither definition of an “exceptional case” set forth by the Supreme Court was satisfied. Id. at 2-3.

Specifically, Judge Andrews found that EON did not litigate the case unreasonably. Id. at 4. According to Judge Andrews, the “main thrust of FLO TV's argument appears to be that EON should have dropped the case, or entered into a settlement, because the potential recovery from FLO TV would be dwarfed by the costs of litigation.” Id. Judge Andrews had outlined in detail how plaintiff EON Corp. IP Holdings, LLC’s (“EON”) prospect of “obtaining a large monetary judgment from FLO TV steadily declined as the case progressed.” Id. at 1-2. Nevertheless, Judge Andrews found FLO TV’s argument to fail for at least two reasons. First, arguments by both sides “regarding the size of the potential recovery [were] speculative and [could not] form the basis for an award of attorney's fees,” given that liability and damages were bifurcated, and no discovery had been conducted with respect to damages. Id. at 4. Second, Judge Andrews noted that the Court is “unaware of any de minimis exception for infringement.” Id. That is, “[i]t cannot be the case that a plaintiff may be subjected to monetary sanctions for failing to drop a case against a defendant if the cost of litigation exceeds the potential recovery.” Id. Judge Andrews did leave open the possibility, however, that “a party's approach to settlement [may be] so unreasonable as to justify an ‘exceptional’ finding.” Id.

While it did not appear that FLO TV made any arguments to this end, Judge Andrews also noted that “[t]he substantive strength of EON’s case was not so conspicuously deficient as to justify the award of attorney's fees.” Id. at 3. As Judge Andrews explained, the case “turned on a complex and evolving area of law-the construction of computer-implemented means-plus-function terms,” and that the decision “was not an easy one.” Id. In this regard, Judge Andrews noted that the Court “heard oral argument, scheduled a supplemental evidentiary hearing, and ordered post-trial briefing on the issue.” Id. Additionally, the fact that EON is appealing the Court’s decision to the Federal Circuit suggested to Judge Andrews that EON “maintains faith in the strength of its position.” Id.