Delaware Intellectual Property Law Update
May 3, 2017
Publication| Intellectual Property
Welcome to the latest edition of the Richards, Layton & Finger Intellectual Property Law Update. As always, if you have questions about any of the decisions listed below or the District of Delaware in general, please let us know.
Chief Judge Stark, Judge Andrews, and Magistrate Judge Burke Deny Redaction Requests
In Noven Pharmaceuticals Inc. v. Actavis Laboratories UT Inc., C.A. No. 15-249-LPS (D. Del. Mar. 24, 2017), Chief Judge Stark denied the parties’ joint motion to redact portions of the trial transcripts, deposition testimony, trial demonstratives, and trial exhibits. According to the Court, the request to redact certain witness testimony, deposition designations, and the entirety of the trial transcript indices appeared overbroad and without sufficient explanation. The Court emphasized the public’s right of access to judicial proceedings and that parties must show good cause to prevent disclosure of court documents.
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Magistrate Judge Burke Rules Infringement Contentions Are Not Confidential Information of Plaintiff
In Bright House Networks, LLC v. Mobile Telecommunications Technologies, LLC, C.A. No. 16-277-LPS-CJB (D. Del. Mar. 30, 2017), Magistrate Judge Burke granted the movants’ request that the infringement contentions of patentee Mobile Telecommunications Technologies, LLC (“Mobile Telecomm”) were not properly designated confidential under the protective order. Judge Burke found that the contentions did not fall under the definition of “Protected Material” in the protective order insofar as the infringement allegations were not material that was “maintain[ed] in confidence in the ordinary course of business,” and that the movants had sufficiently alleged harm if the contentions were treated as confidential.
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Senior Judge Robinson Denies Motion to Transfer
In Godo Kaisha IP Bridge 1 v. OmniVision Technologies, Inc., C.A. No. 16-290-SLR (D. Del. Mar. 29, 2017), Senior Judge Robinson denied OmniVision Technologies, Inc.’s (“OmniVision”) motion to transfer the case from the District of Delaware to the Northern District of California, where OmniVision is headquartered.
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Magistrate Judge Burke Denies Motion to Transfer
In Tessera, Inc. v. Broadcom Corporation, C.A. No. 16-379-LPS-CJB and 16-380-LPS-CJB (D. Del. Mar. 21, 2017), Magistrate Judge Burke denied Broadcom Corporation’s (“Broadcom”) motion to transfer these related cases from the District of Delaware to the Northern District of California.
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Senior Judge Robinson Denies Motions for Relief from Judgment
In Cloud Satchel LLC v. Amazon.com, Inc., C.A. No. 13-941-SLR and 13-942-SLR (D. Del. Mar. 30, 2017), Senior Judge Robinson denied a motion for relief from judgment filed by Cloud Satchel, LLC (“Cloud Satchel”) in these related cases. The Court had earlier ruled on summary judgment that the subject matter of the patents-in-suit was patent ineligible under Section 101, a ruling affirmed by the Federal Circuit.
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Chief Judge Stark Rules on Effect of Estoppel Following IPR
In Princeton Digital Image Corp. v. Konami Digital Entertainment Inc., C.A. No. 12-1461-LPS-CJB (D. Del. Mar. 30, 2017), Chief Judge Stark overruled objections to Magistrate Judge Burke’s recommendation to deny Princeton Digital Image Corp.’s (“Princeton Digital”) motion to dismiss the defendants’ counterclaim for declaratory judgment of invalidity. Judge Burke had concluded that the defendants, Digital Entertainment Inc., Harmonix Music Systems, Inc., and Electronic Arts, Inc., were not estopped from asserting invalidity based on prior art that was or could have been raised in earlier inter partes review proceedings, since no final written decision as to the challenged claims existed.
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Judge Sleet Grants in Part and Denies in Part Motion to Dismiss for Failure to State a Claim
In IP Communication Solutions, LLC v. Viber Media (USA) Inc., C.A. No. 16-134-GMS (D. Del. Apr. 5, 2017), Judge Sleet granted in part and denied in part the defendant’s motion to dismiss for failure to state a claim. In its amended complaint, the plaintiff, IP Communications Solutions, LLC, alleged literal and indirect (induced) infringement, and included a claim chart and exemplary evidence from the website of the defendant, Viber Media (USA) Inc. (“Viber”). Viber moved to dismiss on the basis that the amended complaint failed to satisfy the pleading standard for direct or induced infringement.
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Judge Sleet Denies Motion to Stay Pending Inter Partes Review Without Prejudice
In Koninklijke Philips N.V. v. ASUSTek Computer Inc., C.A. No. 15-1125-GMS (D. Del. Mar. 30, 2017), and related cases, Judge Sleet denied the defendants’ motion to stay the case pending inter partes review without prejudice. Although the Court recognized that petitions for IPR of six of the eleven patents asserted in this case were pending, the Court denied the defendants’ motion to stay because the Patent Trial & Appeal Board has not yet decided whether to grant the petitions.
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Chief Judge Stark Invalidates Patents as Obvious
In Acorda Therapeutics, Inc. v. Roxane Laboratories, Inc., C.A. No. 14-882-LPS (D. Del. Mar. 31, 2017), a post-trial decision, Chief Judge Stark held that the asserted claims of four of the asserted patents (referred to in the decision as the “Acorda” patents) relating to sustained-release drugs used to treat multiple sclerosis were invalid for obviousness, but that the defendants, Apotex Corp., Apotex, Inc., Teva Pharmaceuticals USA Inc., Roxane Laboratories, Inc., and Mylan Pharmaceuticals Inc., failed to prove by clear and convincing evidence that the asserted claims of the fifth asserted patent (referred to as the “Elan” patent) were obvious.
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