Delaware Intellectual Property Law Update
March 1, 2016
Publication| Intellectual Property
Welcome to the latest edition of the electronic Richards, Layton & Finger Patent Law Update. As always, if you have any questions about any of the decisions listed below or the District of Delaware in general, please let us know.
District of Delaware’s Second Bench & Bar Conference May 19 & 20
On May 19 and 20, 2016, the United States District and Bankruptcy Courts for the District of Delaware and the Delaware Chapter of the Federal Bar Association will co-host the District of Delaware’s Second Bench and Bar Conference. This year’s Bench and Bar Conference will be held at the Chase Center on the Riverfront, and will include sessions on intellectual property, bankruptcy, and criminal law.
Judge Andrews Dismisses Induced, Contributory, and Willful Infringement Claims
In Bradium Technologies, LLC v. Microsoft Corp., C.A. No. 15-31-RGA (D. Del. Feb. 2, 2016), Judge Andrews granted in part defendant Microsoft Corporation’s (“Microsoft”) motion to dismiss plaintiff Bradium Technologies, LLC’s (“Bradium”) indirect and willful infringement claims. Microsoft argued that the allegations of the complaint were conclusory, and failed to allege sufficient facts of pre-suit knowledge to support the induced, contributory, and willful infringement claims. Bradium countered that the complaint identified exemplary infringing products, allegations of knowledge of the patents-in-suit, and other factual allegations sufficient to withstand a Rule 12 challenge. Bradium further pointed to a recent patent infringement action filed by Microsoft (filed after Microsoft’s motion here), asserting that that complaint “alleged far less than what Bradium has alleged here” as evidence that “Microsoft’s motion is nothing more than a delay tactic.”
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Judge Andrews Partially Lifts Stay Pending IPR After Institution Decision
In Chestnut Hill Sound Inc. v. Apple Inc., C.A. No. 15-261-RGA (D. Del. Jan. 28, 2016), Judge Andrews granted plaintiff Chestnut Hill Sound Inc.’s (“Chestnut Hill’s”) request to partially lift a stay pending inter partes review. Defendant Apple Inc., which filed two petitions covering all asserted claims of the patents-in-suit, had moved to stay the case before receiving an institution decision from the Patent Trial & Appeal Board on either petition. Although Judge Andrews granted the motion to stay, he noted that “[i]f IPR is instituted on some but not all of the asserted claims, the stay will be continued until the parties submit a joint status report with their respective positions in light of the PTAB’s decision, and the Court makes a decision on how to proceed.”
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Judge Robinson Denies Motion to Dismiss for Lack of Personal Jurisdiction Without Prejudice
In DNA Genotek Inc. v. Spectrum DNA, C.A. No. 15-661 (D. Del. Feb. 4, 2016), Judge Robinson denied a motion to dismiss for lack of personal jurisdiction filed by defendants Spectrum DNA, Spectrum Solutions LLC, and Spectrum Packaging LLC (collectively, “Spectrum”), with leave to renew following jurisdictional discovery. Plaintiff DNA Genotek Inc. (“Genotek”) initiated the patent infringement action against Spectrum for manufacturing an allegedly infringing saliva DNA collection device. Spectrum argued that it had no contacts with Delaware sufficient to establish personal jurisdiction there, but Genotek alleged that Spectrum was subject to Delaware’s long-arm statute under a “dual jurisdiction” or “stream of commerce” theory. Specifically, Genotek argued that Spectrum’s sale of the accused product to Ancestry, a genealogy research service, was sufficient “additional conduct” indicating Spectrum’s “intent or purpose” to serve the Delaware market, since Ancestry subsequently placed Spectrum’s product into the stream of commerce, has nationwide sales that include Delaware, and specifically targets the Delaware market.
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Judge Andrews Denies in Part Defendants’ Motion to Redact Hearing Transcript
In M2M Solutions LLC v. Motorola Solutions Inc., C.A. No. 12-33-RGA (D. Del. Feb. 2, 2016), Judge Andrews denied in part defendants Telit Communications PLC and Telit Wireless Solutions Inc.’s (“Telit”) motion to redact the transcript of a hearing, permitting redactions only to those sections of the transcript discussing a third-party license agreement, profits, and royalties, as well as the entirety of the index. Judge Andrews was not convinced that the disclosure of other material (such as broad sales and pricing information) would cause a well-defined and serious injury to Telit, and he partially denied the motion to redact accordingly.
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Judge Andrews Schedules Separate Infringement and Invalidity Trials
During the Rule 16(b) scheduling conference in a number of related Hatch-Waxman actions filed by AstraZeneca entities (C.A. Nos. 15-999-RGA, 15-1000, 15-1001, 15-1002, 15-1012, 15-1041, 15-1056, 15-1057, 15-1058) (D. Del Feb. 10, 2016), the Court consolidated the cases for the purpose of invalidity, scheduling separate invalidity (one for all defendants) and infringement (one for each defendant) trials. The single-day infringement trials will be scheduled to take place after the invalidity trial.
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Judge Stark Places One-Way Restrictions on In-House Access to Confidential Discovery Material
In Elm 3DS Innovations, LLC v. Samsung Electronics Co., C.A. No. 14-1430-LPS-CJB (D. Del. Feb. 11, 2016), Chief Judge Stark rejected plaintiff Elm 3DS Innovations, LLC’s (“Elm”) request to allow its settlement counsel to review defendants’ confidential information. Elm argued that defendants had a larger amount of confidential information than it, and as a result would have an advantage over Elm in assessing the strengths and weaknesses of the case. Defendants had concerns about the role of Elm’s settlement counsel in competitive decision making, including the licensing and brokerage of patents.
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Judge Andrews Grants Defendant’s Motion for Costs but Not Attorneys’ Fees, Finding the Case “Unexceptional”
In Pragmatus Telecom LLC v. Newegg Inc., C.A. No. 12-1533-RGA (D. Del. Feb. 18, 2016), Judge Andrews granted defendant Newegg Inc.’s (“Newegg”) request for costs but not attorneys’ fees. Plaintiff Pragmatus Telecom LLC (“Pragmatus”) had brought suit against Newegg, a customer of the suppliers of the allegedly infringing technology. After the suppliers settled with Pragmatus, Pragmatus dismissed its claims against Newegg. Newegg then moved for costs and attorneys’ fees, but Judge Andrews denied the requests on the basis that Newegg was not a prevailing party.
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Judge Sleet Grants Stay of Action Filed as “Protective Measure”
In Helsinn Healthcare S.A. v. Hospira, Inc., C.A. No. 15-264-GMS (D. Del. Feb. 19, 2016), Judge Sleet granted plaintiffs Helsinn Healthcare S.A. and Roche Palo Alto’s motion to stay their second-filed Hatch Waxman case pending the outcome of a motion to dismiss for lack of subject matter jurisdiction in their first-filed action. Plaintiffs filed the second action in the District of Delaware to preserve the stay of FDA approval should their first-filed action in the District of New Jersey be dismissed. The same ANDA and patents were involved in each action. Although Judge Sleet stated that concerns about forum shopping were “not unfounded” (and thus causing prejudice to defendant Hospira, Inc.), the wastefulness of parallel proceedings, the early stage of the case, and plaintiffs’ stated intention to move to transfer the action to New Jersey if the court in New Jersey did not grant the pending motion to dismiss persuaded Judge Sleet that the stay was warranted.
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