Richards Layton & Finger
 

Delaware Intellectual Property Law Update

May 31, 2017

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.

Judge Andrews Denies Motion for Leave to Substitute Claim Terms
In Acceleration Bay LLC v. Activision Blizzard, Inc., C.A. No. 16-453-RGA (D. Del. Apr. 13, 2017), Judge Andrews denied the plaintiff’s motion for leave to update its preliminary election of asserted claims.  In the scheduling order, the parties agreed to a reduction of asserted claims and prior art references where the final reduction of the asserted claims and prior art references would be made from the claims and references initially asserted.    
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Judge Andrews Denies Defendant’s Motion to Withdraw Factually Impossible Admission
In Ansell Healthcare Products LLC v. Reckitt Benckiser LLC, C.A. No. 15-915-RGA (D. Del Apr. 11, 2017), Judge Andrews denied the defendant’s motion to withdraw its admission that its accused product, Durex RealFeel condoms, comprised particles bonded to each other through intra-polyisoprene particle crosslinks and inter-polyisoprene particle crosslinks.  Despite making this admission over a year earlier in response to a request for admission by the plaintiff, the defendant moved the Court for permission to withdraw the admission under Federal Rule of Civil Procedure 36(b).  Specifically, the defendant argued that its admission was factually impossible according to its expert, who had opined that polyisoprene particles could not be bonded to each other through both intra-polyisoprene and inter-polyisoprene particle crosslinks.
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Chief Judge Stark Issues Decisions on Multiple Daubert Motions and Motions in Limine
In Novartis AG v. Actavis Elizabeth LLC, C.A. No. 14-1487-LPS (D. Del. Apr. 17, 2017), Chief Judge Stark issued decisions on the parties’ proposed pretrial order, various motions in limine, Daubert motions and motions for summary judgment. Specifically, the Court denied the plaintiffs’ motion to exclude the testimony of the defendants’ biostatistician expert, noting that his “skill, experience, training, and education are likely to assist the trier of fact” despite the plaintiffs’ argument that the expert did not meet “either parties’ proposed definition of a person of ordinary skill in the art.”  The Court pointed to Dr. John Kornak’s relevant technical expertise as well as his regular consultations with members of research teams evaluating drug treatment efficacy to conclude that he qualified as an expert.     
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Judge Andrews Rules on Summary Judgment Finding No Issue Preclusion
In AVM Technologies, LLC v. Intel Corp., C.A. No. 15-33-RGA (D. Del. Apr. 17, 2017), Judge Andrews granted the plaintiff’s motion for summary judgment of no issue preclusion and denied the defendant’s cross-motion for summary judgment of no damages based on issue preclusion. Both motions were related to previous litigation between the parties before Judge Andrews, in which Judge Andrews granted summary judgment to the defendant, finding that the plaintiff had “no evidence with which to prove damages, and [did] not seek other relief.” The defendant argued that this prior ruling precluded the present plaintiff’s damages theory because the prior lump-sum demand encompassed the current request for “a reasonable royalty payment.” In illustrating its point, the defendant argued that had the plaintiff won damages in the first action, it could not seek damages in the second action for infringement of the same patent.
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Jury Awards $50,313,779 in Damages for Willful Infringement
In Green Mountain Glass, LLC v. Saint-Gobain Containers, Inc. d/b/a Verallia North America, C.A. No. 14-392-GMS (D. Del. Apr. 21, 2017), a jury awarded the plaintiff $50,313,779.04 for its finding of infringement of one patent after a five-day trial.  The jury also found the infringement willful.       
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Judge Andrews Grants Motion to Exclude Plaintiff’s Damages Experts
In AVM Technologies LLC v. Intel Corporation, C.A. No. 15-33-RGA (D. Del. Apr. 27, 2017), Judge Andrews granted the defendant’s motion to exclude testimony of two of the plaintiff’s damages experts as unreliable.  One expert had opined on the speed benefit the defendant’s chips would have realized by allegedly practicing the patent-at-issue.  As part of the expert’s analysis, the expert created five different tech models, relying on four representative circuits—one from each of the defendant’s products.  The defendant argued that the expert’s opinion was unreliable because the expert failed to identify the speed-limiting circuits in his analysis of the slowdown of the chips.  The Court agreed, finding that in order to calculate the degradation in the speed of the chip as a whole, the expert had to know that he was analyzing the speed-limiting circuit.  The expert admitted to not knowing whether the representative circuits were speed-limiting circuits, and the Court found that “at best, [he] guess[ed] as to the amount by which the entire chip is slowed.”  Judge Andrews went on to exclude a second expert’s damages testimony that was based on the unreliable tech models.   
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Judge Andrews Denies Pretrial Motions for Summary Judgment and Daubert Motion
On April 28, 2017, in AVM Technologies LLC v. Intel Corporation, C.A. No. 15-33-RGA (D. Del. Apr. 28, 2017), Judge Andrews issued three pretrial decisions.  First, the Court denied the plaintiff’s motion for partial summary judgment.  The plaintiff argued that the defendant did not produce sufficient evidence to create a dispute of material fact about whether the Pentium Pro anticipated the asserted claims, and also that the defendant did not timely disclose its anticipation theory.  The Court rejected the plaintiff’s argument as to timeliness, finding that the defendant had disclosed the theory in its invalidity contentions and expert report.  As to the merits, Judge Andrews found a genuine dispute of material fact as to anticipation and disagreed with the plaintiff’s interpretation of the Court’s claim construction.  
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Judge Sleet Grants Motion to Transfer Venue to California
In Blackbird Tech LLC d/b/a Blackbird Technologies v. TuffStuff Fitness International, Inc., C.A. No. 16-733-GMS (D. Del. Apr. 27, 2017), Judge Sleet granted the defendant’s motion to transfer the case from the District of Delaware to the Central District of California.  The defendant’s motion had requested that the Court dismiss the suit for lack of personal jurisdiction or, in the alternative, transfer venue to the Central District of California pursuant to 28 U.S.C. § 1404(a).  While the Court did not address the merits of the motion to dismiss, Judge Sleet ultimately granted the defendant’s request to transfer venue because the Jumara factors of defendant’s choice of forum, situs of the claims, convenience to the parties, access to proof and evidence, and congestion in the respective courts all favored transfer.    
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Chief Judge Stark Rules on Motions in Limine and Other Pretrial Matters
In Cosmo Techs. Ltd. v. Actavis Labs. FL, Inc., C.A. No. 15-164-LPS (D. Del. May 4, 2017), Chief Judge Stark ruled on various motions in limine and other pretrial matters in advance of a bench trial.  Chief Judge Stark denied the three pending motions in limine. First, Chief Judge Stark denied the plaintiffs’ motion to preclude an expert from testifying in light of conditions agreed upon by the parties that he would testify only as to certain topics and only if plaintiffs challenged those topics.  Further, were the expert to be called at trial, Alvogen Pine Brook, LLC agreed to make him available for a deposition.  Second, the Court denied the defendants’ motion in limine to preclude the plaintiffs from offering any evidence about secondary considerations. Chief Judge Stark held that “Plaintiffs may ultimately fail to meet their burden to prove a nexus but their showing to date is not so deficient as to warrant depriving them of the opportunity to attempt to prove their case at trial.” Third, the Court denied the defendants’ motion in limine to preclude the plaintiffs from offering portions of the plaintiffs’ rebuttal expert report as an exhibit at trial. The Court found that the residual hearsay exception applied because the expert was in an accident and not available for a deposition or to attend trial. The portions of the expert’s report at issue concerned his personal observations about studies he completed in the 1990s.  The Court found “there [wa]s sufficient trustworthiness to admit the evidence and give it whatever weight it deserve[d].”
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Two Verdicts in Consecutive Jury Trials Before Judge Andrews
In an uncommon course of events, Judge Andrews presided over two jury trials in two weeks.  On May 10, 2017, the jury in AVM Technologies LLC v. Intel Corporation, C.A. No. 15-33-RGA (D. Del. May 10, 2017), entered a unanimous verdict of no patent infringement and no invalidity, leaving the parties with no relief.    
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