District Of Delaware Denies Defendants’ Motion For Judgment On The Pleadings In Patent Infringement Action

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By Memorandum Opinion entered by The Honorable Maryellen Noreika in SIPCO, LLC v. Aruba Networks, LLC et al., Civil Action No. 20-537-MN (D.Del. June 9, 2021), the Court denied Defendants’ motion for judgment on the pleadings on Counts III and IV of Plaintiff’s Complaint pursuant to Rule 12(c) of the Federal Rules of Civil Procedure after concluding that Defendants failed to show that there are no material issues of fact and they are entitled to judgment as a matter of law.

By way of background, Plaintiff SIPCO is a research, development and technology company that was assigned various patents by its founder, T. David Petite, relating to moving data over wired and wireless networks.  On February 13, 2020, SIPCO advised defendant Aruba, a subsidiary of defendant Hewlett Packard Enterprise Company, in writing that, it infringed certain SIPCO patents through Aruba’s sale of certain products.  Id. at *1.  After receiving no response from Aruba, SIPCO filed its Complaint asserting that Aruba infringed certain SIPCO patents, including U.S. Patent Numbers 8,335,304 (“the ‘304 patent”) (Count III) and 8,924,587 (“the ‘587 patent”) (Count IV).  Id.  Defendants answered SIPCO’s Complaint and, thereafter, filed their partial motion for judgment on the pleadings asking the Court to dismiss Counts III and IV with prejudice.  Id.

In their motion, Defendants argued that the Court should grant judgement on the pleadings as to Counts III and IV on two bases.  First, Defendants asserted that SIPCO lacked standing to assert the ‘304 patent and the ‘587 patent.  Id. at *2.  Second, Defendants asserted that SIPCO failed to plead that it or any of its licensees complied with the notice by marking requirement of 35 U.S.C. § 287(a) with respect to the ‘304 patent and, thus, SIPCO cannot recover damages for the alleged infringement of the ‘304 patent.  Id.

After evaluating both of Defendants’ arguments, the Court found that Defendants failed to show that SIPCO lacked standing to assert the ‘304 patent and/or the ‘587 patent.  Id. at *3-5.  Instead, the public filings showed that SIPCO was assignee throughout the lifetime of the asserted patents and had standing to sue for any infringement of the patents.  Id.  The Court also found that Defendants did not establish that SIPCO was required to mark and failed to do.  Id. at *5-6.  SIPCO asserted that Defendants infringed at least claim 7 of the ‘304 patent.  Claim 7 is a method claim and, thus, the marking requirement of 35 U.S.C. § 287(a) did not apply because, as the Federal Circuit has held, for a claimed method or process there is nothing to mark to provide notice of infringement.  In fact, the Federal Circuit has “held that 35 U.S.C. § 287(a) did not apply where the patentee only asserted the method claims of a patent which included both method and apparatus claims.”  Id. at *6 (quoting Crown Packaging Tech., Inc. v. Reexam Beverage Can Co., 559 F.3d 1308, 1316-17 (Fed. Cir. 2009).  Accordingly, Defendants’ motion for judgment on the pleadings as to Counts III and Count IV of Plaintiff’s Complaint was denied.

A copy of the Memorandum Opinion is attached.

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