Cirba Inc. et al v. VMware, Inc.

Filing 1626

MEMORANDUM ORDER re 1238 MOTION for Injunctive Relief filed by Cirba Inc. is DENIED. Signed by Judge Gregory B. Williams on 3/9/23. (ntl)

Case 1:19-cv-00742-GBW Document 1626 Filed 03/09/23 Page 1 of 10 PageID #: 131928

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
CIRBA INC. (d/b/a DENSIFY) and
CIRBA IP, INC. ,
Plaintiffs/Counter-Defendants,
C.A. No. 19-742-GBW

V.

VMWARE, INC. ,
Defendant/Counter-Plaintiff.

MEMORANDUM ORDER
Pending before the Court is Plaintiff and Counter-Defendant Cirba Inc. d/b/a Densify 's
("Cirba") 1 Motion for Injunctive Relief. DJ. 123 8. Cirba requests the following relief:
An Order reinstating the jury verdict of January 24, 2020 (DJ. 549, 550); and
a. An Order permanently ENJOINING and RESTRAINING Defendant
VMware, Inc. ("VMware") and its successors, assigns, officers, agents, servants,
employees, attorneys, and those in active concert or participation with them from
servicing, selling or offering for sale any products that the jury found to infringe or
software not colorably different; or, in the alternative,
b. An Order preliminarily ENJOINING and RESTRAINING VMware and
its successors, assigns, officers, agents, servants, employees, attorneys, and those
in active concert or participation with them from servicing, selling or offering for
sale any products that the jury found to infringe or software not colorably different.

Id. Defendant and Counter-Plaintiff VMware, Inc. ("VMware") opposes the Motion for Injunctive
Relief. DJ. 1318. The Court considered the parties' briefing, DJ. 1239, 1318, 1336, and finds a

1

This Court previously denied Cirba' s request to update the case caption to reflect the
amalgamation of Cirba Inc. d/b/a Densify and Cirba IP, Inc. into one entity. See DJ. 1396.

1

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hearing on the Motion for Injunctive Relief is unnecessary. For the reasons below, the Court
DENIES Cirba's Motion for Injunctive Relief. 2

I.

LEGAL ST AND ARD
a. Motion for Reconsideration
Motions for reconsideration are governed by Delaware Local Rule 7.1.5. See, e.g. , Helios

Software, LLC v. Awareness Techs. , Inc., C.A. Nos. 11-1259 & 12-081, 2014 WL 906346, at *1
(D. Del. Mar. 5, 2014 ). The purpose of a motion for reconsideration is "to correct manifest errors
oflaw or fact or to present newly discovered evidence." Max's Seafood Cafe ex rel. Lou-Ann, Inc.
v. Quinteros, 176 F.3d 669, 677 (3d Cir. 1999) (internal quotations and citation omitted). While
the decision to grant a motion for reconsideration is within the discretion of the district court, see
Dentsply Int '!, Inc. v. Kerr Mfg. Co., 42 F. Supp. 2d 385,419 (D. Del. 1999); Brambles USA, Inc.
v. Blocker, 735 F. Supp. 1239, 1241 (D. Del. 1990), such motions are "sparingly granted." D. Del.
L.R. 7.1.5; see also TQ Delta LLC v. Time Warner Cable Inc., C.A. No. 15-615, D.I. 540 (D. Del.
Nov. 22, 2022). "These types of motions are granted only if the Court has patently misunderstood
a party, made a decision outside the adversarial issues presented by the parties, or made an error
not of reasoning but of apprehension." AgroFresh Inc. v. Essentiv LLC, C.A. No. 16-662, 2019
WL 2745723, at *1 (D. Del. July 1, 2019) (citations omitted). "A motion for reconsideration is
not properly grounded on a request that a court rethink a decision already made." Smith v. Meyers,
C.A. No. 9-814, 2009 WL 5195928, at * 1 (D. Del. Dec. 30, 2009).

"A party may seek

reconsideration only if it can show at least one of the following: (i) there has been an intervening
change in controlling law; (ii) the availability of new evidence not available when the court made

2

The Court writes for the benefit of the parties and assumes their familiarity with this action.
2

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its decision; or (iii) there is a need to correct a clear error of law or fact to prevent manifest
injustice." AgroFresh, 2019 WL 2745723 , at *1 (citing Max 's Seafood Cafe, 176 F.3d at 677).

b. Preliminary Injunction
Preliminary injunctive relief is an "extraordinary" remedy appropriate only in "limited
circumstances." Kos Pharms. , Inc. v. Andrx Corp., 369 F.3d 700, 708 (3d Cir. 2004) (citation
omitted); see also Intel Corp. v. ULSI Sys. Tech. , Inc., 995 F.2d 1566, 1568 (Fed. Cir. 1993) (" [A]
preliminary injunction is a drastic and extraordinary remedy that is not to be routinely granted.")
(citations omitted); accord Cordis Corp. v. Medtronic, Inc., 780 F.2d 991, 996 (Fed. Cir. 1985)
("Only a viable threat of serious harm which cannot be undone authorizes exercise of a court' s
equitable power to enjoin before the merits are fully determined.") (internal quotations and
citations omitted). However, the Patent Act expressly provides that courts "may grant injunctions
in accordance with the principles of equity to prevent the violation of any right secured by patent,
on such terms as the court deems reasonable." 35 U.S.C. § 283 .
A movant for a preliminary injunction pursuant to 35 U.S.C. § 283 must establish: "(1) a
reasonable likelihood of success on the merits; (2) irreparable harm if an injunction is not granted;
(3) a balance of hardships tipping in its favor; and (4) the injunction' s favorable impact on the
public interest." Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1350 (Fed. Cir.
2001) (citation omitted). No one of these factors is dispositive; '" rather, the district court must
weigh and measure each factor against the other factors and against the form and magnitude of the
relief requested."' Id (quoting Hybritech, Inc. v. A bbott Labs. , 849 F.2d 1446, 1451 (Fed. Cir.
1988)). However, "a movant cannot be granted a preliminary injunction unless it establishes both
of the first two factors, i.e., likelihood of success on the merits and irreparable harm. " Id
(emphasis in original) (citations omitted). Moreover, " [w]hile granting a preliminary injunction

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requires analysis of all four factors, [] a trial court may ... deny a motion based on a patentee's
failure to show any one of the four factors-especially either of the first two-without analyzing
the others[.]" Jack Guttman, Inc. v. KopyKake Enters., Inc., 302 F.3d 1352, 1356 (Fed. Cir. 2002)
(citations omitted); see also Chrysler Motors Corp. v. Auto Body Panels of Ohio, Inc., 908 F .2d
951, 953 (Fed. Cir. 1990) ("If the injunction is denied, the absence of an adequate showing with
regard to any one factor may be sufficient, given the weight or lack of it assigned the other factors,
to justify the denial.").

II.

DISCUSSION
a. Motion for Reconsideration
The first half of Cirba's Motion for Injunctive Relief briefing is essentially a motion for

reconsideration. See D.I. 1239 at 15 ("[Cirba], of course, recognizes this Court's prior no-standing
ruling. But courts retain the power to revisit rulings, especially when it comes to matters of Article
III standing" (citations omitted)); D.I. 1336 at 6 ("There is especially good reason to revisit the
prior [standing] ruling here ... "); D.I. 1319-2, Ex. 26 ("Cirba Inc. intends to file a motion for a
preliminary injunction [and] ... [a]s part of the motion, it intends to revisit the standing ruling in
light of the Federal Circuit's order."); but see D.I. 1239 at 15-16 ("Although Inc. does not agree
this issue should be considered under the reconsideration standard ... ."). Cirba' s briefing amounts
to a request that this Court reconsider both its conclusion that Inc. lacked Article III standing, and
that VMware did not forfeit objecting to Inc.'s lack of standing on statutory grounds. 3 For the
reasons stated below, the Court finds Cirba has failed to show that reconsideration is warranted.

3

This Court and the Federal Circuit have previously held Inc. lacked Article III standing. See D.I.
752 at 3 (dismissing Inc. for lack of standing); D.I. 946 at 6 (denying motion for reconsideration
or reargurnent ofD.I. 752); D.I. 1045 at 12 (denying Inc.'s petition for a writ of mandamus). As
to the question of whether VMware forfeited its objections to any statutory objections, this Court
previously found that "VMware's challenge to the standing of Cirba Inc .. .. was timely even if it
4

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First, Cirba has failed to point to any new intervening change in controlling case law since
the Court's June 3, 2020 Memorandum Order (D.I. 752). See generally D.I. 1239, 1336. Cirba
contends that decisions in Lexmark International, Inc. v. Static Control Components, Inc., 572
U.S. 118 (2014), Lone Star Silicon Innovations LLC v. Nanya Technology Corp. , 925 F.3d 1225
(Fed. Cir. 2019), and Schwendimann v. Arkwright Advanced Coating, Inc., 959 F.3d 1065 (Fed.
Cir. 2020) provide intervening changes in controlling case law. D.I. 1336 at 5. Cirba also argues
there is "good reason" to revisit the Court' s prior ruling "in light of the intervening Federal Circuit
mandamus decision, the emerging clarity of the law from courts around the country, and the
enormous saving of judicial resources if Inc. had Article III standing all along." Id at 6.
Cirba cannot prevail on these arguments. Lexmark, Lone Star, and Schwendimann are not
new and issued before this Court issued its June 3, 2020 Memorandum Order. See Lexmark, 572
U.S . at 188 (2014); Lone Star, 925 F.3d at1225 (2019); Schwendimann, 959 F.3d at 1065 (2020). 4
"The availability of [Lexmark, Lone Star, and Schwendimann] before the Court ruled on the earlier
motion means that [Lexmark, Lone Star, and Schwendimann] cannot be a change in the controlling
law" to support reconsideration. Search & Soc. Media Partners v. Facebook, Inc., C.A. No. 17-

was a statutory challenge and not a constitutional challenge." D.I. 994 at 44:24-45 :1; see also id
at 44:9-15 ("Densify failed to make the argument that VMware's objections to standing were
statutory and not constitutional until after I granted VMware's motion to dismiss. And there is, in
my view, no good reason for Densify to have waited to make that argument. So I think Densify' s
arguments were untimely and forfeited."). On appeal, the Federal Circuit addressed the forfeiture
issue and concluded that it "cannot say that the record before us compels a finding of forfeiture of
a statutory objection." D.I. 1045 at 9. This Court finds that the Federal Circuit's discussion, id. at
9-12, did not disturb this Court's forfeiture finding. Thus, the Federal Circuit's mandamus
decision is not controlling law for reconsideration purposes.
4

Schwendimann issued on May 13, 2020 "two days before the Court heard argument on
VMWARE' s motion to dismiss," D.I. 946 at 4, and 21 days before the Court issued its June 3,
2020 Memorandum Order (D.I. 752).

5

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1120, 2019 WL 581616, at *7 (D. Del. Feb. 13, 2019). 5 The Federal Circuit's mandamus decision
did not change controlling case law, see D.I. 1045 at 8-9, the "emerging clarity" from other district
courts are not intervening controlling authority, and saving judicial resources is not relevant to
whether a Court should grant a motion for reconsideration. See AgroFresh, 2019 WL 2745723 , at
* 1 (citing Max 's Seafood Cafe, 176 F.3d at 677).
Second, Cirba has failed to show newly discovered evidence. Reconsideration may be
appropriate when "new factual matters not previously obtainable have been discovered since the
issue was submitted to the Court." Brambles, 735 F. Supp. at 1241. The amendment to the License
Agreement or the merger do not satisfy the standard. See ChromaDex, Inc. v. Elysium Health,

Inc., C.A. No. 18-1434, 2021 WL 1648596, at *1 (D. Del. Apr. 27, 2021) (denying motion for
reconsideration because amendment to contract and dissolution of a non-party after dismissal for
lack of subject matter jurisdiction were "not previously obtainable").
Third, Cirba has failed to show that "the conclusion that Inc. lacks Article III standing is
'manifest error"' or there is a need to correct a clear error of law. D.I. 1239 at 16. Cirba argues
that Lexmark, Lone Star, and Schwendimann "make clear that only injury-in-fact, not a violation
of exclusionary rights, is necessary for Article III standing." D.I. 1336 at 5. The Federal Circuit,
however, addressed this issue and ultimately found that Lexmark, Lone Star, and Schwendimann
did not necessitate altering any precedent. D.I. 1045 at 8-9. The Federal Circuit wrote:
It is not clear, however, that Lexmark and Lone Star also require us to alter our
precedent holding (as the district court summarized it) that "the touchstone of
constitutional standing in a patent infringement case is whether a party can establish
5

Cirba also argues that it was prejudiced by VMware ' s forfeiture of any statutory deficit under
35 U.S.C. § 281. D.I. 1239 at 16 ("Had a statutory challenge been identified pre-trial, Inc. and IP
would have fixed the scrivener' s error in the 2016 License, which always was intended to be
exclusive, see, e.g. , Smith Deel. ,r,r 4--15, and the trial would have proceeded as it did, with the
same outcome."). This issue, however, is not relevant to the Court's analysis when determining
whether to grant a motion for reconsideration.
6

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that it has an exclusionary right in a patent that, if violated by another, would cause
the party holding the exclusionary right to suffer legal injury." Cirba, 2020 WL
2992348, at *2 (citing WiAV, 631 F .3d at 1265). Lexmark and Lonestar warn
against conflating statutory requirements with jurisdictional/standing requirements.
These cases do not answer the question of whether an injury must be both "legally
cognizable" and "concrete" or simply "concrete" for Article III standing. The same
is true of Schwendimann v. Arkwright Advanced Coating, Inc., 959 F.3d 1065 (Fed.
Cir. 2020), also relied on by Inc.
Id.

As correctly pointed out by VMware, the Federal Circuit's decision "forecloses Cirba' s

argument that clear error warrants reconsideration." D .I. 1318 at 8. For the reasons stated above,
Cirba has failed to show that reconsideration is warranted because there is no intervening change
in controlling law, no new evidence, or a need to correct a clear error of law or fact to prevent
manifest injustice. See Max 's Seafood Cafe, 176 F.3d at 677.6

b. Preliminary Injunction
For the reasons below, the Court finds that Cirba is not entitled to preliminary injunctive
relief as it has not met its burden of proving a likelihood of success on the merits and that it will
suffer irreparable harm in the absence of a preliminary injunction. Thus, the motion is DENIED. 7

6

Cirba also requests the Court to reconsider its new trial order (D.I. 946) to reinstate the jury
verdict. D.I. 1239 at 17-18. Cirba argues:
Even without revisiting the Article III ruling, the jury' s verdict should be reinstated
because the principal basis for the new trial order no longer makes sense. That order
was based on the notion that, with Inc. no longer in the case, the evidence of
competitive harms at the second trial would have been different. Now that Inc. and
IP have been amalgamated into a single entity, the evidence of harm would be
identical to what the first jury heard.
D.I. 1336 at 6-7. Cirba, however, mischaracterizes the Court' s new trial order. See D.I. 946.
While the Court' s new trial ruling was based in part on its standing ruling, id. at 11, the Court was
clear that its decision for a new trial "is not based on any singular event at the January trial" and it
was "the accumulation of events" that ultimately persuaded the Court to grant a new trial. Id. at
13-14 (emphasis added). Accordingly, the Court declines to issue an Order reinstating the jury
verdict of January 24, 2020.
7

Cirba previously filed a Motion for Preliminary Injunction on May 6, 2019. D.I. 11. This Court
denied the motion on August 6, 2019. See D.I. 138 at 191 :8-10.
7

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i. Likelihood of Success
When seeking a preliminary injunction in an infringement suit, the patentee "must show
that it will likely prove infringement, and that it will likely withstand challenges, if any, to the
validity of the patent." Titan Tire Corp. v. Case New Holland, Inc., 566 F.3d 1372, 1376 (Fed.
Cir. 2009). As noted above, " [i]t frequently is observed that a preliminary injunction is an
extraordinary and drastic remedy, one that should not be granted unless the movant, by a clear
showing, carries the burden of persuasion." Mazurek v. Armstrong, 520 U.S. 968, 972 (1997)
(quoting 1 lA C. Wright, A. Miller, & M. Kane, Federal Practice and Procedure§ 2948, pp. 129130 (2d ed. 1995)) (emphasis deleted). "To make such a ' clear showing,' the moving party must
put forth evidence supporting its claims, and neither attorney argument nor the allegations in the
complaints suffice." Vertigo Media, Inc. v. Earbuds Inc., C.A . No. 21-120, 2021 WL 4806410, at
*5 (D. Del. Oct. 14, 2021).
Rather than brief why it will likely prove infringement, Cirba summarily states that it "is
likely to succeed on the merits of its patent infringement claim because it already has," referring
to the vacated verdict from the first trial. D.I. 123 9 at 18; see also D.I. 1336 at 7 n.6 ("Inc. also
noted that the fact that it prevailed in the previous trial establishes a likelihood of success on the
merits."). This Court, however, granted VMware' s motion for a new trial. See D.I. 946 at 17.
" [I]t is quite clear, that the order granting the new trial has the effect of vacating the former
judgment, and to render it null and void, and the parties are left in the same situation as if no trial
had ever taken place in the cause." United States v. Ayres, 76 U.S. 608, 610 (1869). Thus, Cirba
has made no "clear showing" that it will likely prove infringement. In fact, this Court previously
found that Cirba' s "evidence of infringement was, at best, weak." D.I. 946 at 11 (Memorandum
Order granting VMware's motion for a new trial). Although the Court denied without prejudice

8

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VMware's motion seeking judgment of non-infringement as a matter of law, it remarked that "it
remains skeptical" whether the trial record contains sufficient evidence to support the infringement
verdicts. Id. at 12. Thus, Cirba has failed to persuade the Court that it is likely to succeed in
proving infringement.
ii. Irreparable Harm
"A party seeking a preliminary injunction must establish that it is likely to suffer irreparable
harm if the preliminary injunction is not granted and there is a causal nexus between the alleged
infringement and the alleged harm." Meta/craft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358,
1368 (Fed. Cir. 2017) (citation omitted). Here, Cirba has failed to make a showing of irreparable
harm.
Cirba argues that VMware's alleged infringement "has ravaged [Cirba's] business and
decimated its client list and employees" and the "dismantling of [Cirba's] business and customer
relationships cannot be repaired with monetary damages alone." D.I. 1239 at 18, 19; see also id.
at 19 ("For [Cirba], the effect is clear: plummeting revenues, devastating layoffs, and a
disappearing future.").
The Court finds Cirba's harms are speculative. One of Cirba's 30(b)(6) witnesses testified
that the "quarterly revenue for 2022" for Cirba "is similar to Q2 of2016." D.I. 1319-1, Ex. 16 at
156: 23-25. Although Cirba states that it has had "devastating layoffs," Cirba is "hiring right now."

See, e.g., D.I. 1319-2, Ex. 25 at 272:9. "A party seeking a preliminary injunction must establish
that it is likely to suffer irreparable harm without an injunction. [] The mere possibility or
speculation of harm is insufficient." Koninklijke Philips NV v. Thales DIS AIS USA LLC, 39 F.4th
1377, 1380 (Fed. Cir. 2022) (citations omitted) (emphasis in original). Thus, the Court finds that

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Cirba has failed to meet its burden of establishing that it is likely to suffer irreparable harm without
an injunction.
iii. Remaining Factors

The Court need not address the other two factors-the balance of hardships and whether
an injunction is in the public interest-given Cirba' s failure to establish the likelihood of success
on the merits factor and the irreparable harm factor. "(A] trial court need not make findings
concerning the third and fourth factors if the moving party fails to establish either of the first two
factors. " Polymer Techs., Inc. v. Bridwell, l 03 F.3d 970, 973-74 (Fed. Cir. 1996).
III.

CONCLUSION

JA_,..
('1\

WHEREFORE, at Wilmington this

_i_

V

\

day of March, 2023, IT IS HEREBY

ORDERED that Cirba' s Motion for Injunctive Relief (D.I. 1238) is DENIED. IT IS ALSO
HEREBY ORDERED that, no later than Tuesday, March 14, 2023 , the parties shall meet and

confer and file a joint status report summarizing the pending issues that the Court must resolve
prior to the April 2023 trial. This joint status report shall also summarize how the parties' Joint
Stipulation and Order to sever and stay claims related to U.S. Patent Nos. 10,523 ,492 ('" 492
patent) and 10,951 ,459 ('"459 patent") (D.I. 1583) impacts the Court's adjudication of any pending
motions.

GREGORY B. WILLIAMS
UNITED STATES DISTRICT JUDGE