Richards Layton has one of the most active and respected intellectual property litigation practices in Delaware, with particular experience serving as lead or Delaware counsel in large-scale patent and trademark infringement matters in the Delaware District Court, one of the leading venues for IP litigation in the United States. Our lawyers represent both plaintiffs and defendants, and we are nationally recognized for tackling some of the most difficult IP matters that emerge in the Delaware District Court, including significant patent infringement disputes in all major industries.
Delaware Laws & Programs Affecting Business – 2024 Edition
2024
Delaware Laws & Programs Affecting Business presents an introduction to Delaware and an overview of the laws and programs relating to doing business in the state. Our economy is diverse, and our legal framework is intentionally crafted to foster robust business activity. Our widely copied business laws lead the nation in clarity and predictability. Government…
The CRE Lender’s Guide To Being Prepared
Delaware Banker | Spring 2023
In an increasingly complex and rapidly evolving economic climate, commercial real estate (CRE) lenders need to be prepared to take action to protect existing loan portfolios from broader macroeconomic conditions. A confluence of events culminated in the current state of the market, starting with coronavirus business closures, stay-at-home orders, supply-chain disruption, pandemic work-from-home and, most recently,…
Laura D. Hatcher Sworn in as District of Delaware Magistrate Judge
May 4, 2023
On April 28, 2023, Laura D. Hatcher was sworn in as a Magistrate Judge for the United States District Court for the District of Delaware. She succeeds Chief Magistrate Judge Mary Pat Thynge, who retired on March 31, 2023. Before her appointment, Magistrate Judge Hatcher served as the chief of the civil division of the United…
Judge Andrews to Take Senior Status at the End of 2023
January 6, 2023
The U.S. District Court for the District of Delaware has announced today that Judge Andrews will take senior status at the end of December of 2023, although he intends to retain a full caseload. The notice is available here.…
Delaware Intellectual Property Law Update
November 11, 2022
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 discussed below or the District of Delaware in general, please let us know. Judge Noreika Excludes Expert Damages Testimony for Failure to Apportion Value in LicenseIn Rex Medical L.P. v.…
Judge Andrews Adopts Magistrate Judge Recommendation to Dismiss Claim on Grounds of Claim Preclusion
November 11, 2022
In Sanofi-Aventis U.S. LLC v. Apotex Corp., No. 20-804-RGA (Sept. 15, 2022), Judge Andrews adopted the recommendation of Magistrate Judge Hall that claim preclusion should bar the plaintiff’s assertion of infringement of one of the asserted patents. The parties had litigated the patent at issue in an earlier case, after which the plaintiff had amended claims…
Judge Williams Denies Motion to Bifurcate Trial into Contract and Patent Infringement Phases
November 11, 2022
In Victaulic Company v. ASC Engineered Solutions, LLC, No. 20-887-GBW (Oct. 3, 2022), Judge Williams denied the defendant’s request under Fed. R. Civ P. 42(b) first to try the parties’ contract dispute and separately to try their patent infringement dispute later only if needed. The plaintiff alleged that the defendant manufactured products that fell outside the…
Judge Williams Strikes Lack of Written Description Defenses as Untimely
November 11, 2022
In Sysmex Corp. v. Beckman Coulter, Inc., No. 19-1642-GBW (Oct. 12, 2022), newly appointed Judge Williams granted the plaintiffs’ motion to strike one of the defendant’s lack of written description defenses. As part of the narrowing of prior art references and invalidity defenses before trial, the court had granted the plaintiffs’ request to require the defendant…
Judge Noreika Excludes Expert Damages Testimony for Failure to Apportion Value in License
November 11, 2022
In Rex Medical L.P. v. Intuitive Surgical, Inc., No. 19-0005-MN (Oct. 13, 2022), Judge Noreika excluded under Daubert the reasonable royalty testimony of the plaintiff’s damages expert. To determine the starting point for the hypothetical negotiation, the expert relied on a lump-sum royalty license that the plaintiff had entered into with third-party Covidien as part of…
Delaware Intellectual Property Law Update
September 7, 2022
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 discussed below or the District of Delaware in general, please let us know. U.S. District Court for the District of Delaware Releases Annual ReportThe U.S. District Court for the District…
September 7, 2022
In Rockwell Automation, Inc. v. EU Automation, Inc., No. 21-1162-MN (Aug. 19, 2022), a trademark case, Judge Noreika overruled objections to a magistrate judge report filed by one of the defendants (referred to in the decision as “EU Illinois”). The magistrate judge had recommended that EU Illinois’s motion to dismiss for lack of personal jurisdiction be…
September 7, 2022
In TQ Delta, LLC v. Comcast Cable Communications LLC, No. 15-611-RGA (Aug. 11, 2022), and related patent actions, Special Master Gregory B. Williams partially granted the defendants’ motion to strike as untimely certain damages theories. Earlier, the special master had ordered the plaintiff to supplement its Fed. R. Civ. P. 26 disclosures and damages interrogatory responses…
September 7, 2022
In Sight Sciences, Inc. v. Ivantis, Inc., No. 21-1317-VAC-SRF (Aug. 16, 2022) (oral order), a patent case, Magistrate Judge Fallon denied the plaintiff’s request to exclude in-house counsel from having access to discovery designated attorneys’ eyes only, which would have prevented an in-house attorney of the defendant from viewing such discovery. According to the court, a…
U.S. District Court for the District of Delaware Releases Annual Report
September 7, 2022
The U.S. District Court for the District of Delaware has released its 2022 Annual Report. The report notes that from 2014 to 2021, intellectual property cases have made up 46% of the court’s civil caseload; for 2021, that figure was 49%, nearly all of which were patent cases. The report is available here.…
District of Delaware Sets 5 PM Filing Deadline and Makes Plans to Welcome New Judge
August 16, 2022
District Court of Delaware Announces New 5 PM Filing Deadline On August 16, 2022, the United States District Court for the District of Delaware announced a revision to its Revised Administrative Procedures Governing Filing and Service by Electronic Means to reflect a new filing and service deadline of 5:00 p.m. Eastern Time. The revision is effective…
Delaware Laws & Programs Affecting Business – 2020 Edition
2020
Delaware Laws & Programs Affecting Business presents an introduction to Delaware and an overview of the laws and programs relating to doing business in the State. Our economy is diverse, and our legal framework is intentionally crafted to foster robust business activity. Our widely copied business laws lead the nation in clarity and predictability. Government…
Standing Out: Section 285 Attorney Fees in the District of Delaware
ABA | September 15, 2020
Is the Force Majeure With You?
ABA | July 6, 2020
District Court Adopts Re-Opening Guidelines
June 15, 2020
The U.S. District Court for the District of Delaware has issued an Order adopting a set of Re-Opening Guidelines. The Guidelines provide for four phases, each with a different level of restrictions and permissible courtroom and courthouse activity, culminating in the resumption of normal operations in Phase Four. In Phase One, which begins on June 17,…
Litigating Intellectual Property Rights Created in Response to COVID-19
Bar Journal | May 2020
As companies race to develop vaccines, medical products, and other treatments to combat the COVID-19 pandemic, these advances will likely engender litigation related to the protection of intellectual property rights. Given the District of Delaware’s national prominence as a preeminent patent litigation venue, a sizeable portion of such litigation may proceed in a Delaware courtroom. A…
Life in the Fast Lane: How Delaware’s Rapid Arbitration Act Can Resolve Licensing Disputes
ABA | March 26, 2020
Intellectual property licenses do not come in one shape and size. Rather, they are often customized based on deliberate decisions of the contracting parties. For example, a patentee may grant a nonexclusive license to commercialize but may restrict the rights granted in another license to research and development activities. Although sublicensing may be permissible, any sublicensee…
March 23, 2020
The U.S. District Court for the District of Delaware has announced that the J. Caleb Boggs Courthouse and Federal Building re-opened today, Monday, March 23, 2020, after a deep-cleaning that took place this weekend. Other than the Court’s March 19, 2020 Closure Order, all prior orders and notices relating to the COVID-19 virus remain in effect.…
District Court Closes Temporarily Due to Coronavirus Exposure
March 19, 2020
Having been informed that an attorney who recently appeared before the Court has tested positive for COVID-19, the U.S. District Court for the District of Delaware has closed the J. Caleb Boggs U.S. Courthouse and Federal Building until further notice. The Court’s Case Management/Electronic Case Filing remains available. The order can be found here.…
District of Delaware Issues Standing Orders for Court Procedures During COVID-19 Outbreak
March 19, 2020
In light of the exigent circumstances created by COVID-19, the U.S. District Court for the District of Delaware has issued standing orders regarding Court operations and access. Key points of the orders include: The District of Delaware will remain open. All case deadlines set by Federal or Local Rule or Court Order remain in effect, although…
Chief Judge Stark Partially Grants Motion for Exceptional Case and Attorneys’ Fees
June 5, 2019
In Cosmo Technologies Ltd. v. Actavis Laboratories FL, Inc., No. 15-164-LPS (Mar. 27, 2019), and related case, Chief Judge Stark granted the defendants’ motion to declare the cases exceptional and to award attorneys’ fees. At trial, the Court granted the defendants’ motion for judgment of non-infringement on partial findings under Fed. R. Civ. P. 52(c) at…
Delaware Intellectual Property Law Update
June 5, 2019
This update provides short updates on judicial decisions, trends, and notable events in the United States District Court for the District of Delaware, traditionally one of the three busiest jurisdictions for intellectual property litigation.
Judge Connolly Grants Motion to Dismiss for Lack of Subject Matter Jurisdiction
June 5, 2019
In HIP, Inc. v. Hormel Foods Corp., No. 18-802-CFC (Mar. 28, 2019), Judge Connolly dismissed the plaintiff’s infringement claims for lack of subject matter jurisdiction. In one of its counts, the plaintiff sought an order of correction under 35 U.S.C. § 256 that its president be named the sole inventor and owner of the asserted patent…
Chief Judge Stark Denies Motion to Stay Pending Arbitration
June 5, 2019
In Dorco Co. v. Gillette Co., No. 18-1306-LPS-CJB (Mar. 14, 2019), Chief Judge Stark denied the defendant’s motion to stay pending arbitration (brought both under the Federal Arbitration Act and as a matter of judicial discretion) and denied as moot the plaintiff’s motion to enjoin arbitration. The parties agreed that an earlier settlement agreement between them…
Judge Noreika Denies Motion for Temporary Restraining Order
June 5, 2019
In Abbott Cardiovascular Systems, Inc. v. Edwards Lifesciences Corp., No. 19-149-MN (Mar. 5, 2019), Judge Noreika denied the plaintiffs’ motion for a temporary restraining order. The plaintiffs initially moved to preliminarily enjoin the defendants’ accused mitral valve repair system from infringing the asserted patents. After some initial discovery, the plaintiffs additionally moved for a temporary restraining…
Magistrate Judge Fallon Denies Motion for Exceptional Case
June 5, 2019
In Fraunhofer-Gesellschaft zur Förderung der Angewandten Forschung e.V. v. Sirius XM Radio Inc., No. 17-184-JFB-SRF (Mar. 8, 2019), Magistrate Judge Fallon denied the defendant’s motion to declare the case exceptional. The defendant had prevailed on a license defense. Judge Fallon found that the plaintiff’s position on the merits was not objectively unreasonable. According to the Court,…
Judge Andrews Grants Motions for Exceptional Case and Attorneys’ Fees
June 5, 2019
In Finnavations LLC v. Payoneer, Inc., No. 18-444-RGA (Mar. 18, 2019), and a related case, Judge Andrews granted the defendants’ motions for exceptional case and attorneys’ fees. The defendants sought fees following the Court’s finding that the asserted patent was directed to the abstract idea of bookkeeping and lacked an inventive concept. Judge Andrews stated that…
Judge Connolly Holds that Validity Is Not a Single Issue for Purposes of Preclusion
June 5, 2019
In Orexo AB v. Actavis Elizabeth LLC, No. 17-205-CFC (Mar. 12, 2019), Judge Connolly denied the plaintiffs’ motion for summary judgment to preclude the defendants from challenging the invalidity of the asserted patent. In an earlier case, the plaintiffs had accused one of the defendants here of infringing the same patent, but by a different product.…
Judge Andrews Denies Motion to Dismiss for Unpatentable Subject Matter
June 5, 2019
In RICPI Communications LLC v. JPS Interoperability Solutions, Inc., No. 18-1507-RGA (Mar. 18, 2019), Judge Andrews denied the defendant’s motion to dismiss for claiming unpatentable subject matter under 35 U.S.C. § 101. The challenged patent concerned radio-over-internet protocol. The defendant argued that the challenged claims were directed to the abstract idea of “establishing a two-way connection…
Chief Judge Stark Denies Motion to Dismiss Hatch-Waxman Claim
June 5, 2019
In Belcher Pharmaceuticals, LLC v. International Medication Systems, Ltd., No. 18-960-LPS-CJB (Mar. 31, 2019), Chief Judge Stark denied the defendant’s motion to dismiss for failure to state a claim. The defendant had filed a new drug application under 21 U.S.C. § 355(b)(2) with a Paragraph IV certification that the patent-in-suit was invalid, prompting the litigation. The…
Judge Connolly Issues New Form Patent Scheduling Orders
April 22, 2019
Today, Judge Connolly issued new form patent scheduling orders requiring detailed early disclosure of infringement and invalidity contentions (along with related document productions), which contentions can only be modified for good cause. In doing so, Judge Connolly created two separate scheduling orders—one for cases in which infringement is alleged, and one for cases in which only…
Magistrate Judge Burke Recommends Denial Without Prejudice of Section 101 Motion
March 29, 2019
In TrustID, Inc. v. Next Caller, Inc., No. 18-172-LPS (D. Del. Feb. 25, 2019), Magistrate Judge Burke recommended that the Court deny the defendant’s motion to dismiss the patent infringement claims of the complaint for claiming ineligible subject matter. For the purposes of Alice Step 1, the Court assumed that the patents were directed to…
Chief Judge Stark Invalidates Patent for Claiming Ineligible Subject Matter
March 29, 2019
In Citrix Systems, Inc. v. AVI Networks, Inc., No. 17-1843-LPS (D. Del. Feb. 13, 2019), Chief Judge Stark granted the defendant’s motion to dismiss claims for infringement of two of the four patents-in-suit on the basis that those patents claimed ineligible subject matter. The challenged claims concerned methods for determining when a network service is available.…
Chief Judge Stark and Magistrate Judge Burke Hold Omnibus Section 101 Hearing
March 29, 2019
In three unrelated sets of cases,1 Chief Judge Stark and Magistrate Judge Burke jointly presided over an omnibus hearing on pending motions for unpatentability under 35 U.S.C. § 101. At the conclusion of the hearing, Chief Judge Stark ruled from the bench, granting six motions to dismiss on grounds of no patentable subject matter and denying…
Delaware Intellectual Property Law Update
March 29, 2019
This update provides short updates on judicial decisions, trends, and notable events in the United States District Court for the District of Delaware, traditionally one of the three busiest jurisdictions for intellectual property litigation.
March 29, 2019
In Adverio Pharma GmbH v. Alembic Pharmaceuticals Ltd., No. 18-73-LPS (D. Del. Feb. 13, 2019), a Hatch-Waxman case, Chief Judge Stark granted defendant INC Research, LLC’s motion to dismiss for failure to state a claim. The plaintiff sued the defendants for submitting an ANDA for a generic version of the plaintiff’s brand drug. The complaint alleged…
Magistrate Judge Burke Denies Motions to Compel Production of Documents from Related Companies
March 29, 2019
In Confluent Surgical, Inc. v. HyperBranch Medical Technology, Inc., No. 17-688-LPS-CJB (D. Del. Feb. 6, 2019), Magistrate Judge Burke denied the plaintiffs’ motion to compel the production of documents in the control of an executive of the defendant’s parent corporation. The defendant responded that as a subsidiary it could not demand emails held by an executive…
March 29, 2019
In Siemens Mobility, Inc. v. Westinghouse Air Brake Technologies Corp., No. 16-284-LPS (D. Del. Feb. 25, 2019), Chief Judge Stark denied the defendants’ request to defer entry of judgment on two patents subject to inter partes review proceedings. The plaintiff had prevailed at a jury trial on infringement of eight patents, which the jury also…
March 29, 2019
In Onyx Therapeutics, Inc. v. Cipla Ltd., No. 16-988-LPS (D. Del. Feb. 15, 2019), Chief Judge Stark rejected the plaintiff’s claim that certain documents withheld from production were protected by the patent agent-client privilege. The ruling followed the Court’s review in camera of documents identified in privilege log entries selected by the parties as representative…
Judge Noreika Adds Undisputed Facts Requirement to Dispositive Motions
March 29, 2019
Judge Noreika has updated her form of scheduling order to require the submission of a concise statement of numbered, material facts with dispositive motions. The responding party must separately admit or deny each fact, and may submit its own concise statement of facts. The requirement applies to all pending civil cases. The updated scheduling order can…
District Court Selects New Magistrate Judge
March 29, 2019
The U.S. District Court for the District of Delaware has selected Jennifer L. Hall, currently the chief of the Civil Division of the United States Attorney’s Office for the District of Delaware, to fill the newly created fourth magistrate judge position in the District. Ms. Hall earned a B.S. in Biochemistry from the University of Minnesota,…
Delaware Intellectual Property Law Update
August 24, 2018
This update provides short updates on judicial decisions, trends, and notable events in the United States District Court for the District of Delaware, traditionally one of the three busiest jurisdictions for intellectual property litigation.
Magistrate Judge Burke Recommends Finding that Venue Defense Was Forfeited
August 24, 2018
In Princeton Digital Image Corp. v. Ubisoft Entertainment SA, No. 13-335-LPS-CJB (D. Del. June 25, 2018), Magistrate Judge Burke recommended that the Court deny defendant Ubisoft Inc.’s motion to dismiss for improper venue. Ubisoft argued that venue was improper since it was incorporated elsewhere, it had no physical presence in Delaware, and none of the allegedly…
Chief Judge Stark Grants Motion to Supplement Complaint After Certificate of Correction
August 24, 2018
In Ethicon LLC v. Intuitive Surgical, Inc., No. 17-871-LPS (D. Del. June 28, 2018), Chief Judge Stark granted the plaintiffs’ motion to file a second supplemental complaint prompted by the issuance of a certificate of correction to one of the asserted patents. The Court concluded as a general matter that it was not impermissible to supplement…
Judge Andrews Denies Daubert Motion
August 24, 2018
In Purdue Pharma L.P. v. Amneal Pharmaceuticals, LLC, No. 15-1152-RGA (D. Del. July 6, 2018), Judge Andrews denied the plaintiffs’ Daubert motion to exclude testimony of the defendant’s expert. According to the Court, whether the expert was opining beyond the scope of his expertise would be better addressed during trial, since the case would be…
Judge Andrews Denies Motion in Limine Regarding Reference’s Status as Prior Art
August 24, 2018
In AstraZeneca L.P. v. Sigmapharm Laboratories, LLC, No. 15-1000-RGA (D. Del. July 6, 2018), Judge Andrews denied the plaintiffs’ motion in limine to exclude from trial an obviousness reference alleged to be prior art under 35 U.S.C. § 102(d), but reserved the ability to revisit the issue after trial. The parties disputed whether the reference,…
Chief Judge Stark Rules that Invalidity Expert Cannot View Highly Confidential Information
August 24, 2018
In Gillette Co. v. Dollar Shave Club, Inc., No. 15-1158-LPS-CJB (D. Del. July 23, 2018), Chief Judge Stark denied the defendants’ request to overrule the plaintiffs’ objection to the disclosure of their highly confidential information to the defendants’ invalidity expert. According to the Court, the invalidity expert had recently been employed by a competitor of the…
Judge Andrews Denies Motion to Dismiss Amended Complaint for Failure to State a Claim
August 24, 2018
In F2VS Technologies, LLC v. Ruckus Wireless, Inc., No. 17-756-RGA (D. Del. July 31, 2018), Judge Andrews denied the defendant’s motion to dismiss the plaintiff’s second amended complaint for failure to state a claim. The Court stated that it was “apparent” from Disc Disease Solutions Inc. v. VGH Solutions, Inc., 888 F.3d 1256 (Fed. Cir. 2018),…
Chief Judge Stark Denies Motion for Preliminary Injunction
August 24, 2018
In Westinghouse Air Brake Technologies Corp. v. Siemens Industry, Inc., No. 17-1687-LPS (D. Del. Aug. 2, 2018), Chief Judge Stark denied the plaintiff’s motion to preliminarily enjoin the defendant from selling a component for a train control system alleged to infringe the patent-in-suit. Although the Court concluded that the plaintiff was likely to prevail on its…
Chief Judge Stark Denies Motion for Preliminary Injunction to Prevent Launch of Generic Product
August 24, 2018
In Noven Pharmaceuticals, Inc. v. Mylan Technologies Inc., No. 17-1777-LPS (D. Del. Aug. 20, 2018), Chief Judge Stark declined to preliminarily enjoin the defendants from launching a generic version of the plaintiff’s pharmaceutical product but granted a temporary restraining order that would expire within two days unless additional relief was granted by the Court or the…
District of Delaware Welcomes Judges Connolly and Noreika
August 10, 2018
The Honorable Colm F. Connolly and the Honorable Maryellen Noreika have been sworn in as United States District Judges for the District of Delaware and will be assigned cases beginning on August 15. Please see the full announcement from the District Court here.…
Connolly and Noreika Confirmed as United States District Judges for the District of Delaware
August 2, 2018
On August 1, 2018, the United States Senate confirmed the nominations of Colm F. Connolly and Maryellen Noreika to be United States District Judges for the District of Delaware. The nominations had been pending since December of 2017. Connolly and Noreika will fill the judicial vacancies created by now-retired Judge Sue L. Robinson’s taking of senior…
Delaware Intellectual Property Law Update
June 14, 2018
This update provides short updates on judicial decisions, trends, and notable events in the United States District Court for the District of Delaware, traditionally one of the three busiest jurisdictions for intellectual property litigation.
Judge Stark Consolidates Pending Litigation with Lawsuit Transferred to District of Delaware
June 14, 2018
In SZ DJI Technology Co. v. Autel Robotics USA LLC, No. 16-706-LPS (D. Del. Mar. 14, 2018), Chief Judge Stark granted the defendants’ motion to consolidate this action with a case transferred from the Western District of Washington. The plaintiffs argued in opposition that the two cases concerned distinct inventions with little overlap, but Chief Judge…
Magistrate Judge Fallon Denies Motion to Quash for Lack of Standing
June 14, 2018
In Takeda Pharmaceuticals U.S.A. Inc. v. West-Ward Pharmaceutical Corp., No. 14-1268-RGA-SRF (D. Del. Apr. 12, 2018), Magistrate Judge Fallon denied the defendants’ motion to quash a subpoena noticed by the plaintiff, Takeda Pharmaceuticals U.S.A., Inc. One of the defendants had earlier noticed the 30(b)(6) deposition of the subpoena recipient, and the defendants argued that Takeda’s subpoena…
Chief Judge Stark Orders Production of Defendants’ Sales Data
June 14, 2018
In Interface Linx, LLC v. Onkyo USA Corp., No. 17-1099-LPS (D. Del. April 13, 2018), and related actions, Chief Judge Stark ordered the defendants to produce sales data for the accused products dating back to six years before the date of the suit. The defendants had resisted production of the sales information on grounds of relevance,…
Judge Sleet Grants Motions to Dismiss Declaratory Judgment Claim
June 14, 2018
In Genentech, Inc. v. Amgen Inc., No. 17-1407-GMS (D. Del. Apr. 17, 2018), and related action, Judge Sleet granted Amgen Inc.’s motions to dismiss the plaintiffs’ declaratory judgment claim for failure to state a claim and for lack of subject matter jurisdiction. According to the decision, during the pre-litigation BPCIA “patent dance,” Amgen had stated that…
Chief Judge Stark Grants Leave to Assert Inequitable Conduct Defense and Counterclaim
June 14, 2018
In MorphoSys AG v. Janssen Biotech, Inc., No. 16-221-LPS (D. Del. Apr. 19, 2018), Chief Judge Stark granted the defendants’ motion to amend their pleadings to assert inequitable conduct. The Court found that the proposed amended answers and counterclaims sufficiently alleged that certain individuals having a duty of candor failed to disclose information material to patentability…
Magistrate Judge Fallon Denies Motions to Stay
June 14, 2018
In Boston Scientific Corp. v. Edwards Lifesciences Corp., No. 16-275-JFB-SRF (Apr. 20, 2018), Magistrate Judge Fallon denied without prejudice the defendants’ motion to stay the plaintiff’s patent infringement claim pending the final resolution of IPR proceedings. The PTAB had issued a final written decision invalidating the patent asserted by the plaintiff. The plaintiff opposed the motion…
June 14, 2018
In Princeton Digital Image Corp. v. Ubisoft Entertainment SA, No. 13-335-LPS-CJB (D. Del. Apr. 20, 2018), Magistrate Judge Burke granted the plaintiff’s request to compel defendant Ubisoft Inc. to produce summary sales, licensing, costs, and profit information relating to the accused video games and make available a Rule 30(b)(6) witness to testify regarding the requested information.…
Chief Judge Stark Grants in Part Motion to Dismiss
June 14, 2018
In Interface Linx, LLC v. Haier America Co., No. 17-1098-LPS (D. Del. Apr. 26, 2018), and related cases, Chief Judge Stark, ruling from the bench, granted in part the defendants’ motion to dismiss the direct, indirect, and willful infringement claims of the plaintiff, Interface Linx, LLC. The asserted patent covered, inter alia, an HDMI plug and…
Chief Judge Stark Denies Request to Compel Defendant to Produce Documents from Third Parties
June 14, 2018
In Wi-LAN Inc. v. Sharp Electronics Corp., No. 15-379-LPS (D. Del. May 14, 2018), Chief Judge Stark denied the requests of the plaintiff, Wi-LAN Inc., to compel defendant Sharp Electronics Corp. to produce documents from a subsidiary and a parent corporation. First, Sharp Electronics argued that it had already produced documents from the subsidiary, a manufacturing…
Delaware Intellectual Property Law Update
May 9, 2018
This update provides short updates on judicial decisions, trends, and notable events in the United States District Court for the District of Delaware, traditionally one of the three busiest jurisdictions for intellectual property litigation.
Magistrate Judge Burke Recommends Granting Motion for Summary Judgment of No Infringement
May 9, 2018
In Integra LifeSciences Corp. v. Hyperbranch Medical Technology, Inc., No. 15-819-LPS-CJB (D. Del. Feb. 20, 2018), Magistrate Judge Burke recommended that the Court grant Hyperbranch Medical Technology, Inc.’s motion for summary judgment of non-infringement of one of the five patents asserted by the plaintiffs, Integra LifeSciences Corp., Integra LifeSciences Sales LLC, Confluent Surgical, Inc. and Incept…
Chief Judge Stark Denies Motion to Enter Final Judgment
May 9, 2018
In Fairchild Semiconductor Corp. v. Power Integrations, Inc., C.A. No. 12-540-LPS (D. Del. March 16, 2018), Chief Judge Stark denied Power Integrations, Inc.’s motion for entry of final judgment. After an eight-day jury trial in 2015, in which the parties asserted patents against each other, the jury found that, inter alia, the plaintiffs, Fairchild Semiconductor Corporation…
May 9, 2018
In Evolved Wireless, LLC v. Apple Inc., No. 15-542-JFB-SRF (D. Del. Feb. 16, 2018), and related actions, Magistrate Judge Fallon denied Evolved Wireless, LLC’s motion to compel defendants in these cases to produce communications with third party Qualcomm, Inc. regarding topics on which Qualcomm had been deposed. Defendants in these actions had earlier raised a license…
Chief Judge Stark Invalidates Patent Under Section 101
May 9, 2018
In American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, No. 15-1168-LPS (D. Del. Feb. 27, 2018), Chief Judge Stark granted the defendants’ motion for summary judgment of invalidity, holding that two representative claims of the patent at issue were not directed to patentable subject matter. The patent at issue was directed to damping various types…
Magistrate Judge Burke Permits Deposition of Claim Construction Declarant
May 9, 2018
In Astellas Pharma Inc. v. Actavis Elizabeth LLC, No. 16-905-JFB-CJB (D. Del. Feb. 27, 2018), Magistrate Judge Burke granted the defendants’ request to depose an expert who submitted a declaration regarding indefiniteness (among other issues) in support of the plaintiffs’ opening claim construction brief. The defendants sought to depose the expert before submitting their sur-reply claim…
May 9, 2018
In Oil Lift Technology Inc. v. Millennium Oilflow Systems & Technology Inc., No. 17-1212-LPS-CJB (D. Del. Apr. 10, 2018), Chief Judge Stark denied Oil Lift Technology Inc.’s motion for a preliminary injunction against the defendants, Millennium Oilflow Systems & Technology Inc. and MOST Oil USA Inc., and granted in part the defendants’ motion to dismiss claims…
Chief Judge Stark Orders that Voluntary Dismissal Be with Prejudice
April 3, 2018
In Wi-Lan Inc. v. Sharp Electronics Corp., No. 15-379-LPS (D. Del. Sept. 22, 2017, unsealed Feb. 15, 2018), Chief Judge Stark denied the plaintiff’s request that its voluntary dismissal under Fed. R. Civ. P. 41(a)(2) of one of the asserted patents be without prejudice and that each party bear its own fees and costs. The plaintiff…
Magistrate Judge Burke Orders Narrowing of Claims and Prior Art
April 3, 2018
In Thermo Fisher Scientific Inc. v. Agilent Technologies, Inc., No. 17-600-LPS-CJB (D. Del. Feb. 5, 2018), Magistrate Judge Burke ordered the parties to reduce in two stages the number of asserted claims and prior art combinations involving the three asserted patents. The plaintiffs first were ordered to reduce the number of asserted claims to 40, then…
Delaware Intellectual Property Law Update
April 3, 2018
This update provides short updates on judicial decisions, trends, and notable events in the United States District Court for the District of Delaware, traditionally one of the three busiest jurisdictions for intellectual property litigation.
Judge Andrews Grants Summary Judgment of No Willful Infringement and No Enhanced Damages
April 3, 2018
In Ansell Healthcare Products LLC v. Reckitt Benckiser LLC, No. 15-915-RGA (D. Del. Jan. 30, 2018), Judge Andrews granted Reckitt Benckiser LLC’s motion for summary judgment of no willful infringement and no enhanced damages. The plaintiff, Ansell Healthcare Products LLC, argued that Reckitt’s alleged infringement was willful because it sold the accused products even though it…
Judge Andrews Invalidates Patent Under Section 101
April 3, 2018
In D&M Holdings Inc. v. Sonos, Inc., No. 16-141-RGA (D. Del. Feb. 20, 2018), Judge Andrews granted summary judgment that one of the patents asserted by the plaintiffs was invalid under 35 U.S.C. § 101 as directed to ineligible subject matter. The patent at issue claimed a method of recalling previous audio preferences when playing a…
April 3, 2018
In Acceleration Bay LLC v. Activision Blizzard, Inc., No. 16-453-RGA (D. Del. Feb. 9, 2018), Judge Andrews overruled objections to a special master’s order compelling production of emails that had been withheld as privileged between the plaintiff, Acceleration Bay LLC, and a litigation financing company. Acceleration Bay resisted production on three bases: the work-product doctrine, the…
Chief Judge Stark Finds Patent Not Enabled on Renewed Motion for Judgment as a Matter of Law
April 3, 2018
In Idenix Pharmaceuticals LLC v. Gilead Sciences, Inc., No. 14-846-LPS (D. Del. Feb. 16, 2018), Chief Judge Stark granted the defendant’s motion for judgment as a matter of law that the asserted patent was not enabled. The plaintiffs, Idenix Pharmaceuticals LLC and Universita Degli Studi di Cagliari (together, “Idenix”), sued the defendant, Gilead Sciences, Inc., for…
Magistrate Judge Burke Grants in Part Motion to Stay Pending Inter Partes Review
April 3, 2018
In Foundation Medicine, Inc. v. Guardant Health, Inc., No. 17-807-LPS-CJB (D. Del. Feb. 15, 2018), Magistrate Judge Burke granted in part the plaintiff’s motion to stay pending inter partes review of the defendant’s three IPR petitions. Among the three petitions, the deadlines for the Patent Trial & Appeal Board’s final written decisions ranged from one…
Magistrate Judge Fallon Denies Request to Re-Assign Case
April 3, 2018
In Kelly Services, Inc. v. Kelly & Associates Financial Services, Inc., No. 16-408-JFB-SRF (D. Del. Feb. 26, 2018), a trademark case, Magistrate Judge Fallon denied the plaintiffs’ unopposed request to re-assign the case to another judge. The basis for the plaintiffs’ request was that Judge Fallon had conducted a mediation with the parties in which “substantive”…
Chief Judge Stark Denies Motion to Dismiss Hatch-Waxman Complaint
March 6, 2018
In Insys Therapeutics, Inc. v. Alkem Laboratories Ltd., No. 17-1419-LPS (D. Del. Jan. 23, 2018), Chief Judge Stark denied the defendants’ motion to dismiss the complaint for lack of subject matter jurisdiction and for failure to state a claim. The defendants, Alkem Laboratories Ltd. and S&B Pharma, Inc. (together, “Alkem”), argued that the plaintiffs, Insys Therapeutics…
Delaware Intellectual Property Law Update
March 6, 2018
This update provides short updates on judicial decisions, trends, and notable events in the United States District Court for the District of Delaware, traditionally one of the three busiest jurisdictions for intellectual property litigation.
Judge Burke Denies Motion to Transfer
March 6, 2018
In Genedics, LLC v. Meta Company, No. 17-1062-CJB (D. Del. Jan. 8, 2018), Magistrate Judge Burke denied Meta Company’s motion to transfer this case to the Northern District of California on grounds of convenience. Genedics, LLC (a Massachusetts company with its principal place of business in that state) accused Meta (a Delaware corporation with offices only…
Magistrate Judge Burke Recommends Dismissal of Indirect and Willful Infringement Claims
March 6, 2018
In Valmont Industries, Inc. v. Lindsay Corp., No. 15-042-LPS-CJB (D. Del. Jan. 22, 2018), Magistrate Judge Burke recommended that the Court grant in part Lindsay Corp.’s motion to dismiss the direct, induced, contributory, and willful infringement claims of Valmont Industries, Inc.’s amended complaint. Although Valmont accused of infringement the combination of devices such as a tablet…
Magistrate Judge Burke Recommends Granting Motion to Dismiss with Prejudice
March 6, 2018
In Amgen Inc. v. Coherus Biosciences Inc., No. 17-546-LPS-CJB (D. Del. Dec. 7, 2017), Magistrate Judge Burke recommended that the Court grant with prejudice Coherus Biosciences Inc.’s motion to dismiss for failure to state a claim. The plaintiff, Amgen Inc., had accused Coherus’ manufacturing process of infringing the asserted patent, all the claims of which included…
Magistrate Judge Burke Compels Supplemental Depositions of Inventors
March 6, 2018
In Integra LifeSciences Corp. v. HyperBranch Medical Technology, Inc., No. 15-819-LPS-CJB (D. Del. Jan. 24, 2018), Magistrate Judge Burke denied the plaintiffs’ emergency motion to quash, and for a protective order to prevent, supplemental depositions of two inventors, instead granting the defendant’s request to compel the depositions. To resolve an earlier discovery dispute regarding the timeliness…
Senior Judge Sleet Denies Motion to Transfer BPCIA Actions
March 6, 2018
In Genentech, Inc. v. Amgen Inc., No. 17-1407-GMS (D. Del. Jan. 22, 2018), and related action, Senior Judge Sleet denied Amgen Inc.’s motion to transfer two BPCIA patent infringement actions brought by Genentech, Inc. and City of Hope (together, “Genentech”) to the Central District of California, where a declaratory judgment action filed by Amgen regarding the…
Chief Judge Stark Denies Motion to Strike Infringement Contentions
March 6, 2018
In Wi-LAN Inc. v. VIZIO, Inc., No. 15-788-LPS (D. Del. Jan. 26, 2018), and related action, Chief Judge Stark denied the defendants’ motion to strike the plaintiff’s final infringement contentions. The defendants argued that the contentions did not explain how the excerpts of source code from the accused products related to the limitations of the asserted…
Chief Judge Stark Denies Motion to Reconsider Stricken Infringement Contentions
March 6, 2018
In Galderma Laboratories, L.P. v. Amneal Pharmaceuticals, LLC, No. 16-207-LPS (D. Del. Jan. 22, 2018), Chief Judge Stark denied the plaintiffs’ motion to reconsider the Court’s decision to strike their supplemental contentions of literal infringement, which were served after the close of fact discovery. According to the plaintiffs, reconsideration was appropriate because, after the motion to…
Senior Judge Sleet Announces Retirement and Court Announces Case Assignment Plan Revisions
February 7, 2018
The U.S. District Court for the District of Delaware has announced that Senior Judge Sleet, who took senior status last year, will retire in the fall of 2018. Judge Sleet will continue to be assigned new civil cases, but certain cases on his docket have begun to be reassigned to other judges. According to the announcement,…
Delaware Intellectual Property Law Update
January 30, 2018
This update provides short updates on judicial decisions, trends, and notable events in the United States District Court for the District of Delaware, traditionally one of the three busiest jurisdictions for intellectual property litigation.
January 30, 2018
In Morphosys AG v. Janssen Biotech, Inc., No. 16-221-LPS-CJB (D. Del. Oct. 26, 2017), Chief Judge Stark ordered the defendant Janssen Biotech Inc. to produce materials previously withheld as privileged. Janssen had relied on advice of counsel as a defense to willful infringement, but the parties disputed the scope of the resulting waiver. The plaintiff, Morphosys…
Judge Sleet Denies Motion for Judgment on the Pleadings and Motion for Sanctions
January 30, 2018
In Amgen Inc. v. Alkem Laboratories Ltd., C.A. No. 17-CV-815-GMS (D. Del. Dec. 19, 2017), Judge Sleet denied a motion for judgment on the pleadings and a motion for sanctions filed by two defendants in this consolidated Hatch-Waxman Act litigation. According to the Court, the movants alleged that their proposed ANDA product, lacking excipients required by…
Magistrate Judge Burke Strikes Damages Theory as Untimely
January 30, 2018
In Integra Lifesciences Corp. v. Hyperbranch Medical Technology, Inc., No. 15-819-LPS-CJB (D. Del. Nov. 14, 2017), Magistrate Judge Burke granted in part the defendant’s motion to strike the plaintiffs’ price erosion and market-share apportionment damages theory as untimely. During discovery, the defendant had sought the plaintiffs’ damages theories and underlying facts. According to the Court, the…
Chief Judge Stark Denies Request for Interlocutory Appeal
January 30, 2018
In Princeton Digital Image Corp. v. Konami Digital Entertainment Inc., No. 12-1461-LPS-CJB (D. Del. Dec. 11, 2017), Chief Judge Stark denied Princeton Digital Image Corp.’s request to certify an interlocutory appeal of the Court’s denial of its motion to dismiss invalidity counterclaims. Several related lawsuits filed by Princeton Digital had been stayed during the pendency of…
Chief Judge Stark Dismisses Defendant for Improper Venue
January 30, 2018
In Koninklijke KPN N.V. v. Kyocera Corp., No. 17-87-LPS-CJB (D. Del. Dec. 18, 2017), Chief Judge Stark denied defendant Kyocera Corp.’s motion to dismiss for lack of personal jurisdiction, but granted defendant Kyocera International, Inc.’s motion to dismiss for improper venue. The Court first found that Kyocera International’s venue defense was neither waived (since the Federal…
Chief Judge Stark Denies Motion to Stay Pending Inter Partes Review
January 30, 2018
In President & Fellows of Harvard College v. Micron Tech., Inc., No. 17-1729-LPS-SRF (D. Del. Jan. 8, 2018), Chief Judge Stark denied the defendant’s motion to stay pending inter partes review. Although six claims among the two asserted patents were under inter partes review, the PTAB declined to institute review of the seventh claim…
Delaware Intellectual Property Law Update
December 19, 2017
This update provides short updates on judicial decisions, trends, and notable events in the United States District Court for the District of Delaware, traditionally one of the three busiest jurisdictions for intellectual property litigation.
Chief Judge Stark Denies Motion to Strike Invalidity Contentions
December 19, 2017
In IBM Corp. v. Groupon, Inc., No. 16-122-LPS (D. Del. Nov. 1, 2017), Chief Judge Stark denied the plaintiff’s motion to strike certain of the defendant’s invalidity contentions, since the references were disclosed before or on the deadline for the close of fact discovery and sufficient time remained to cure any prejudice without disrupting the trial…
Judge Andrews Strikes Motion for Summary Judgment
December 19, 2017
In Janssen Pharmaceutica, N.V. v. Mylan Pharmaceuticals, Inc., No. 15-760-RGA-SRF (D. Del. Nov. 1, 2017), a Hatch-Waxman litigation, Judge Andrews struck the defendants’ motion for summary judgment of non-infringement. Judge Andrews stated that it is his practice not to permit motions for summary judgment in Hatch-Waxman cases without leave. The defendants argued that the scheduling order…
December 19, 2017
In Plastic Omnium Advanced Innovation & Research v. Donghee America, Inc., C.A. No. 16-187-LPS (D. Del. Oct. 27, 2017), Chief Judge Stark denied the defendants’ motion to stay the case pending inter partes review of several asserted patents. The Court noted that no IPR had yet been instituted, and at least one asserted patent was…
Judge Andrews Denies Request to Produce Settlement Agreement
December 19, 2017
In B. Braun Melsungen AG v. Becton, Dickinson & Co., C.A. No. 16-411-RGA (D. Del. Oct. 24, 2017), Judge Andrews denied the plaintiffs’ request to compel the defendants to produce a settlement agreement from an earlier litigation. Although the defendants argued that the settlement agreement was not responsive to any discovery requests, the plaintiffs claimed that…
Judge Andrews Stays Case Pending ex Parte Re-Examination
December 19, 2017
In Waters Technologies Corp. v. Aurora SFC Systems, Inc., No. 11-708-RGA (D. Del. Nov. 13, 2017), Judge Andrews granted the defendant’s motion to stay pending ex parte re-examination. A scheduling conference had taken place a week before this decision, the motion was filed before the trial date was put in place, and the examiner’s finding…
Magistrate Judge Burke Recommends Denial of Motion to Dismiss for Invalidity Under Section 101
December 19, 2017
In Triplay, Inc. v. WhatsApp Inc., No. 13-1703-LPS-CJB (D. Del. Nov. 20, 2017), Magistrate Judge Burke recommended that the Court deny the defendant’s motion to dismiss two of the asserted electronic, cross-platform messaging patents as invalid under Section 101. The parties had agreed on representative claims from the two patents for the Section 101 analysis, and…
Magistrate Judge Fallon Denies Motion to Dismiss as Moot
December 19, 2017
In Telebrands Corp. v. 1ByOne Products Inc., No. 17-997-JFB-SRF (D. Del. Nov. 21, 2017), Magistrate Judge Fallon denied the defendant’s motion to dismiss for failure to state a claim as moot. After moving to dismiss, the defendant answered the complaint and asserted counterclaims for a declaratory judgment of invalidity and non-infringement of the two asserted patents…
Chief Judge Stark Denies Motion for Judgment on the Pleadings of Invalidity Under Section 101
December 19, 2017
In IBM v. Groupon, Inc., No. 16-122-LPS-CJB (D. Del. Nov. 17, 2017), Chief Judge Stark denied Groupon, Inc.’s motion for judgment on the pleadings that half of the asserted patents, covering the display of information from local storage, were invalid under Section 101. In a separate litigation, the Court had previously found under the first …
Magistrate Judge Fallon Recommends Court Transfer Action Because of Improper Venue
December 19, 2017
In Treehouse Avatar LLC v. Valve Corp., No. 15-427-JFB-SRF (D. Del. Nov. 20, 2017), Magistrate Judge Fallon recommended that the Court grant the defendant’s motion to dismiss or transfer the action to the Western District of Washington, where the defendant, Valve Corp., is incorporated and maintains its headquarters. Valve alleged that venue was improper in the…
Chief Judge Stark Rules on Proceedings for Venue Discovery
December 19, 2017
In Bristol-Myers Squibb Co. v. Aurobindo Pharma USA Inc., No. 17-374-LPS (D. Del. Nov. 28, 2017), and Bristol-Myers Squibb Co. v. Mylan Pharmaceuticals Inc., No. 17-379-LPS (D. Del. Nov. 28, 2017), Chief Judge Stark set forth the procedures for venue-related discovery on defendant Mylan Pharmaceuticals Inc.’s motion to dismiss for improper venue. The Court ordered Mylan…
December 19, 2017
In Javelin Pharmaceuticals, Inc. v. Mylan Laboratories Ltd., No. 16-224-LPS (D. Del. Dec. 1, 2017), Chief Judge Stark denied a motion to dismiss or transfer for improper venue filed by the defendants, Mylan Laboratories Limited, Mylan, Inc., and Mylan Pharmaceuticals Inc. (collectively, “Mylan”), but with leave to renew after the plaintiffs, Javelin Pharmaceuticals, Inc., Hospira, Inc.,…
Judge Andrews Denies Request to Strike Daubert Briefing
December 19, 2017
In B. Braun Melsungen AG v. Becton, Dickinson & Co., No. 16-411-RGA (D. Del. Dec. 5, 2017), Judge Andrews refused a request to strike the plaintiffs’ Daubert briefing for having an excessive number of pages. The plaintiffs had filed three Daubert motions, each accompanied by a 20-page brief. Judge Andrews acknowledged that he has…
Delaware Intellectual Property Law Update
November 13, 2017
This update provides short updates on judicial decisions, trends, and notable events in the United States District Court for the District of Delaware, traditionally one of the three busiest jurisdictions for intellectual property litigation.
Judge Sleet Orders Parties to Clarify Claim Construction Terms in Dispute
November 13, 2017
In F’Real Foods LLC v. Hamilton Beach Brands, Inc., C.A. No. 16-41-GMS (D. Del. Oct. 6, 2017), Judge Sleet ordered the parties to file a revised joint claim construction chart containing the final 15 claim terms they intend to argue at the Markman hearing. The parties’ original claim construction chart indicated that 20 terms were…
Judge Burke Orders Parties to Reduce Number of Asserted Claims and Prior Art Grounds
November 13, 2017
In Integra LifeSciences Corp. v. Hyperbranch Medical Technology, Inc., C.A. No. 15-819-LPS-CJB (Oct. 2, 2017), Magistrate Judge Burke ordered the plaintiffs to reduce the number of asserted claims to 12, drawn from the 6 asserted patents, within a month; the defendant was ordered to reduce its asserted prior art grounds to 16 within 6 days of…
Magistrate Judge Fallon Grants Leave to Amend Complaint
November 13, 2017
In LEO Pharma A/S, LEO Laboratories Limited v. Perrigo UK Finco Limited Partnership, C.A. No. 16-430-JFB-SRF (D. Del. Sept. 20, 2017), Magistrate Judge Fallon granted leave to amend the complaint, holding that the amended complaint would not cause undue delay or be futile. Plaintiffs LEO Pharma A/S, LEO Laboratories Limited, and LEO Pharma, Inc. (collectively, “LEO”)…
Judge Andrews Denies Without Prejudice Motion to Vacate Summary Judgment of Invalidity
November 13, 2017
In CallWave Communications LLC v. AT&T Mobility LLC, C.A. No. 12-1701-RGA (D. Del. Oct. 10, 2017), and related cases, Judge Andrews denied the plaintiff’s motion to vacate the Court’s claim construction of a particular term and the Court’s grant of summary judgment that certain claims of an asserted patent were invalid under 35 U.S.C. § 101.…
Judge Sleet Appoints Special Master to Hear Protective Order Dispute
November 13, 2017
In Orexo AB v. Actavis Elizabeth LLC, C.A. No. 17-205-GMS (D. Del. Oct. 10, 2017), in response to the defendants’ motion to strike or dismiss the complaint, Judge Sleet appointed a special master to hear the defendants’ allegation that the plaintiffs had misused confidential information in preparing their case. The Court selected Judge Charles H. Toliver,…
November 13, 2017
In Tabletop Media, LLC v. AMI Entertainment Network, LLC, C.A. No. 16-1121-RGA-MPT (D. Del. Oct. 10, 2017), Chief Magistrate Judge Thynge recommended that the Court deny AMI Entertainment Network, LLC’s motion to dismiss for lack of subject matter jurisdiction this action for a declaratory judgment of non-infringement filed by Tabletop Media, LLC, the plaintiff. In pre-litigation…
Judge Andrews Invalidates Patent on Section 101 and Anticipation Grounds
November 13, 2017
In Broadsoft, Inc. v. CallWave Communications, LLC, C.A. No. 13-711-RGA (D. Del. Oct. 1, 2017), a declaratory judgment action, Judge Andrews granted Broadsoft, Inc.’s motion for judgment on the pleadings and for summary judgment that the patents asserted by the defendant, CallWave Communications, LLC, were unpatentable and anticipated. To decide Broadsoft’s motion for judgment on the…
Judge Jordan Denies Renewed Motion for Judgment as a Matter of Law
November 13, 2017
In Parallel Networks Licensing, LLC v. Microsoft Corp., C.A. No. 13-2073-KAJ (D. Del. Sept. 26, 2017), Circuit Judge Kent A. Jordan, sitting by designation, denied Parallel Networks LLC’s renewed motion for judgment as a matter of law of infringement and motion for a new trial. At trial, the Court granted Parallel’s motion for judgment as a…
Delaware Intellectual Property Law Update
October 12, 2017
This update provides short updates on judicial decisions, trends, and notable events in the United States District Court for the District of Delaware, traditionally one of the three busiest jurisdictions for intellectual property litigation.
Chief Judge Stark Denies Request for Enhanced Damages
October 12, 2017
In Indenix Pharmaceutical LLC and Universita Degli Studi di Cagliari v. Gilead Sciences, Inc., C.A. No. 14-846-LPS (D. Del. Sept. 22, 2017), Chief Judge Stark considered a motion for enhanced damages filed by Indenix Pharmaceuticals LLC after a jury found Gilead Sciences, Inc. liable for infringement. The jury awarded Indenix $2.54 billion, and the Court awarded…
October 12, 2017
In Bristol-Myers Squibb Co. and Pfizer v. Mylan Pharmaceuticals Inc., C.A. No. 17-379-LPS (D. Del. Sept. 11, 2017), Chief Judge Stark considered a motion to dismiss for improper venue. Mylan Pharmaceuticals Inc. (“MPI”) was sued by Bristol-Myers Squibb Co. and Pfizer Co. (collectively, “BMS”) for patent infringement after its ANDA filing for a generic version of…
Judge Andrews Denies Motion to Dismiss
October 12, 2017
In Acceleration Bay LLC v. Activision Blizzard, Inc., C.A. No. 16-453-RGA (D. Del Aug. 29, 2017), Judge Andrews denied the defendants’ motion to dismiss the plaintiff’s patent infringement claims. In their motion to dismiss, the defendants argued that all claims of the patents at issue were invalid for lack of patent-eligible subject matter under 35 U.S.C.…
Chief Judge Stark Denies Defendants’ Motion to Strike
October 12, 2017
In Cosmo Technologies Limited v. Lupin Ltd., C.A. No. 15-669-LPS (D. Del. Sept. 14, 2017), Chief Judge Stark denied the defendants’ motion to strike portions of the plaintiffs’ expert reports. The defendants argued that they were not on notice of the information provided in the expert reports, including the expert’s visual observations, and that the expert…
Chief Judge Stark Grants Defendants’ Motion to Transfer Venue Following TC Heartland
October 12, 2017
In Boston Scientific Corporation and Boston Scientific SciMed, Inc. v. Cook Group Incorporated and Cook Medical LLC, C.A. No. 15-980-LPS-CJB, Chief Judge Stark granted the defendants’ motion to transfer venue, holding that the defendants did not have a regular and established place of business in Delaware. Plaintiffs Boston Scientific Corporation and Boston SciMed, Inc. initiated this…
Chief Judge Stark Decides Four Motions for Summary Judgment on a Variety of Patent Issues
October 12, 2017
In Intellectual Ventures I, LLC v. T-Mobile USA Inc., et al., C.A. No. 13-1632-LPS (D. Del. Aug. 29, 2017), Chief Judge Stark decided four summary judgment motions on various issues. This group of six patent infringement actions involved plaintiffs Intellectual Ventures I and Intellectual Ventures II (collectively, “IV”), and defendants T-Mobile USA, Inc., T-Mobile US, Inc.,…
September 13, 2017
Visiting Judge Kearney Denies Motion to Dismiss
August 30, 2017
In Prowire LLC v. Apple, Inc., C.A. No. 17-223-MAK (D. Del. Aug. 9, 2017), visiting Judge Kearney denied the defendant’s motion to dismiss for failure to state a claim, in part, because the defendant’s arguments focused on information within its sole possession. The Court ordered that the parties proceed with expedited disclosures and determine whether the…
Chief Judge Stark Grants Motion to Disqualify Expert
August 30, 2017
In MorphoSys AG v. Janssen Biotech, Inc., C.A. No. 16-221-LPS-CJB (D. Del. Aug. 7, 2017), Chief Judge Stark, by oral order, granted the plaintiff’s request to disqualify the defendants’ expert. The Court found that there was a confidential relationship between the plaintiff and the expert, in which the expert was exposed to confidential and privileged material,…
Judge Andrews Grants in Part and Denies in Part Motion for Protective Order
August 30, 2017
In Forest Laboratories, LLC v. Teva Pharmaceuticals USA, Inc., C.A. No. 16-1114-RGA (D. Del. Aug. 3, 2017), Judge Andrews denied without prejudice one defendant’s request to provide the plaintiffs’ highly confidential information to the defendant’s “Vice President and Head IPR.” Relying on the description of the Vice President’s job duties, the Court held that the Vice…
Chief Judge Stark Orders Bellwether Trial
August 30, 2017
In Intel Corporation v. Future Link Systems, LLC, C.A. No. 14-377-LPS (D. Del. July 31, 2017), Chief Judge Stark ordered a “bellwether” jury trial to determine liability and damages on three of the twelve asserted patents. The Court explained that this procedure would “have the virtue of giving the parties a near-term opportunity to obtain certainty…
Delaware Intellectual Property Law Update
August 30, 2017
This update provides short updates on judicial decisions, trends, and notable events in the United States District Court for the District of Delaware, traditionally one of the three busiest jurisdictions for intellectual property litigation.
Judge Andrews Denies Motion to Renew Motion to Dismiss
August 30, 2017
In Indivior Inc. v. Mylan Technologies Inc., C.A. No. 15-1016-RGA (D. Del. July 28, 2017), Judge Andrews denied the defendant’s motion to renew its motion to dismiss for improper venue. The defendant had originally moved to dismiss for lack of venue as well as lack of jurisdiction and failure to state a claim. Before the Court…
Chief Judge Stark Provides “Inclinations” on Post-Trial Motions
August 30, 2017
In GlaxoSmithKline LLC v. Teva Pharmaceuticals USA, Inc., C.A. No. 14-878-LPS (D. Del. July 27, 2017), Chief Judge Stark set forth his tentative views of the parties’ potential post-trial motion in a post-trial letter to counsel. The Court hoped that his communication to the parties would “make briefing and resolution of those motions more efficient.” With…
Judge Andrews Grants Motion to Amend Complaint
August 30, 2017
In Purdue Pharma L.P. v. Epic Pharma, LLC, C.A. No. 16-87-RGA (D. Del. July 27, 2017), Judge Andrews granted the plaintiffs’ motion to amend their complaint to include an additional patent. The Court found that adding the patent “ma[de] sense” because the patent came from the same family and its addition would be efficient for all…
Senior Judge Robinson Finds Broad Subject Matter Waiver Related to Opinions of Counsel
August 30, 2017
In The Johns Hopkins University v. Alcon Laboratories, Inc., C.A. No. 15-525-SLR/SRF (D. Del. July 14, 2017), Senior Judge Robinson addressed the plaintiff’s objections to Magistrate Judge Fallon’s order defining the scope of a privilege waiver arising from the defendants’ reliance on advice of counsel. Although Judge Fallon ordered that the defendants produce “any additional documents…
Senior Judge Robinson Denies Motion for Attorneys’ Fees
August 30, 2017
In Stephenson v. Game Show Network, LLC, C.A. No. 12-614-SLR (D. Del. July 11, 2017), Judge Robinson denied the defendants’ motion for an exceptional case finding and attorneys’ fees under 35 U.S.C. § 285. Judgment had been entered against the plaintiff after the Patent Trial and Appeal Board found all claims of the asserted patent invalid,…
Magistrate Judge Burke Grants Motion to Transfer Venue
August 30, 2017
In Contour IP Holding, LLC v. GoPro, Inc., C.A. No. 15-1108-LPS-CJB (D. Del. July 6, 2017), Magistrate Judge Burke granted the defendant’s motion to transfer venue to the Northern District of California, the location of its principal place of business. In analyzing the transfer factors, the Court first found that the plaintiff’s choice of forum was…
Delaware Intellectual Property Law Update
July 11, 2017
This update provides short updates on judicial decisions, trends, and notable events in the United States District Court for the District of Delaware, traditionally one of the three busiest jurisdictions for intellectual property litigation.
July 11, 2017
In UCB, Inc. v. Watson Laboratories, Inc., C.A. No. 14-1083-LPS-SRF (D. Del. May 19, 2017), Chief Judge Stark denied the defendants’ motion for reargument of the Court’s December 5, 2016 order, in which the Court denied the plaintiffs’ request for a stay, but held that the defendants were liable for the costs of litigation from that…
July 11, 2017
In Orexigen Therapeutics, Inc. v. Actavis Laboratories FL, Inc., C.A. No. 15-451-RGA (D. Del. May 31, 2017), Judge Andrews denied the defendant’s request to add new non-infringement defenses raised for the first time in the pretrial order. In a prior opinion, the Court had found that by not including these non-infringement defenses in its responses to…
Judge Robinson Denies Plaintiff’s Request for Additional Discovery
July 11, 2017
In Takeda Pharmaceuticals U.S.A., Inc. v. Hikma Pharmaceuticals PLC, C.A. No. 14-1268-SLR (D. Del. June 2, 2017), Judge Robinson denied the plaintiff’s request for additional discovery and agreed with the limited discovery plan suggested by the defendants. The Court had previously granted the plaintiff limited discovery consistent with its allegations that representatives of the defendants told…
July 11, 2017
In Omeros Corp. v. Par Sterile Products, LLC, C.A. No. 15-773-RGA (D. Del. June 6, 2017), Judge Andrews granted the plaintiff’s request to proceed with twelve claims across the six patents-in-suit. Judge Andrews noted that the plaintiff had agreed to drop four claims from one of the patents-in-suit in exchange for the defendants’ agreement to limit…
Judge Robinson Grants and Denies Post-Trial Motions
July 11, 2017
In SRI International, Inc. v. Cisco Systems, Inc., C.A. No. 13-1534-SLR (D. Del. May 25, 2017), Judge Robinson denied defendant Cisco Systems Inc.’s (“Cisco”) post-trial motions for judgment as a matter of law, new trial, remittitur, and to supplement the record, and granted plaintiff SRI International Inc.’s (“SRI”) post-trial motions for attorneys’ fees, enhanced damages, compulsory…
July 11, 2017
In Sonos Inc. v. D&M Holdings, Inc., C.A. No. 14-1330-RGA (D. Del. June 2, 2017) (the “14-1330 Case”), and related case D&M Holdings, Inc., et al. v. Sonos Inc., C.A. No. 16-141-RGA (D. Del. June 2, 2017) (the “16-141 Case”), Judge Andrews issued an amended discovery order requiring plaintiff Sonos, Inc. (“Sonos”) to produce materials from…
Delaware Intellectual Property Law Update
May 31, 2017
This update provides short updates on judicial decisions, trends, and notable events in the United States District Court for the District of Delaware, traditionally one of the three busiest jurisdictions for intellectual property litigation.
Two Verdicts in Consecutive Jury Trials Before Judge Andrews
May 31, 2017
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. On May…
Chief Judge Stark Rules on Motions in Limine and Other Pretrial Matters
May 31, 2017
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…
Judge Sleet Grants Motion to Transfer Venue to California
May 31, 2017
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…
Judge Andrews Denies Pretrial Motions for Summary Judgment and Daubert Motion
May 31, 2017
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…
Judge Andrews Grants Motion to Exclude Plaintiff’s Damages Experts
May 31, 2017
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…
Jury Awards $50,313,779 in Damages for Willful Infringement
May 31, 2017
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. There were two patents-in-suit, U.S. Patent No. 5,718,737 (“’737 Patent”)…
Judge Andrews Rules on Summary Judgment Finding No Issue Preclusion
May 31, 2017
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,…
Chief Judge Stark Issues Decisions on Multiple Daubert Motions and Motions in Limine
May 31, 2017
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…
Judge Andrews Denies Defendant’s Motion to Withdraw Factually Impossible Admission
May 31, 2017
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…
Judge Andrews Denies Motion for Leave to Substitute Claim Terms
May 31, 2017
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…
District Court of Delaware Assigns Cases to Visiting Judges
May 26, 2017
Due to the vacancies in the United States District Court for the District of Delaware, the Court announced today that it will be reassigning a portion of Senior Judge Robinson’s civil cases to visiting judges, effective immediately. The roster of visiting judges includes four from the Eastern District of Pennsylvania: Judge Mitchell Goldberg, Judge Gerald McHugh,…
May 22, 2017
Today, the United States Supreme Court issued an opinion in TC Heartland LLC v. Kraft Foods Group Brands LLC, unanimously reversing and remanding the Federal Circuit’s denial of a petition of writ of mandamus from the District of Delaware’s underlying decision denying a motion to transfer venue. In so holding, the Court held “that a domestic…
Chief Judge Stark Invalidates Patents as Obvious
May 3, 2017
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…
Delaware Intellectual Property Law Update
May 3, 2017
This update provides short updates on judicial decisions, trends, and notable events in the United States District Court for the District of Delaware, traditionally one of the three busiest jurisdictions for intellectual property litigation.
Judge Sleet Denies Motion to Stay Pending Inter Partes Review Without Prejudice
May 3, 2017
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…
Judge Sleet Grants in Part and Denies in Part Motion to Dismiss for Failure to State a Claim
May 3, 2017
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…
Chief Judge Stark Rules on Effect of Estoppel Following IPR
May 3, 2017
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…
Senior Judge Robinson Denies Motions for Relief from Judgment
May 3, 2017
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…
Magistrate Judge Burke Denies Motion to Transfer
May 3, 2017
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. Judge Burke rejected Broadcom’s argument that, because the plaintiffs in these two cases—all incorporated in Delaware—had…
Senior Judge Robinson Denies Motion to Transfer
May 3, 2017
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. According to Judge Robinson, and viewing the Third Circuit’s …
Magistrate Judge Burke Rules Infringement Contentions Are Not Confidential Information of Plaintiff
May 3, 2017
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…
Chief Judge Stark, Judge Andrews, and Magistrate Judge Burke Deny Redaction Requests
May 3, 2017
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…
Delaware Intellectual Property Update And Judge Sleet to Take Senior Status
April 13, 2017
This update provides short updates on judicial decisions, trends, and notable events in the United States District Court for the District of Delaware, traditionally one of the three busiest jurisdictions for intellectual property litigation.
Judge Sleet Denies Requests for Leave to File Motions for Summary Judgment
April 13, 2017
In Green Mountain Glass, LLC et al. v. Saint-Gobain Containers, Inc., C.A. No. 14-392-GMS (D. Del. February 24, 2017), Judge Sleet denied the plaintiffs’ request for leave to file four partial motions for summary judgment and the defendant’s request for leave to file a motion for summary judgment. The plaintiffs sought leave to file: (1) a…
April 13, 2017
In Intellectual Ventures I LLC v. AT&T Mobility LLC et al., C.A. No. 13-1668-LPS (Feb. 14, 2017), Chief Judge Stark decided the defendants’ motions to strike portions of the plaintiff’s infringement contentions, granting the motion as applied to the plaintiff’s final infringement contentions and doctrine of equivalents (“DOE”) contentions for the ‘248 patent, but denying the…
Judge Robinson Denies Motion for Sanctions Despite Confirmed Wiped Computers and Shredded Documents
April 13, 2017
In Air Products & Chemicals, Inc. v. Eric P. Wisemann et al., C.A. No. 14-1425-SLR (Feb. 27, 2017), Judge Robinson denied the defendants’ motion to sanction plaintiff Air Products and Chemicals, Inc. (“Air Products”) based on alleged spoliation of evidence. Although the defendants originally filed the motion for sanctions before trial, the Court held the motion…
Delaware Intellectual Property Law Update
March 7, 2017
This update provides short updates on judicial decisions, trends, and notable events in the United States District Court for the District of Delaware, traditionally one of the three busiest jurisdictions for intellectual property litigation.
Judge Sleet Denies Motion for Temporary Restraining Order and Preliminary Injunction
March 7, 2017
In CrowdStrike, Inc. v. NSS Labs., Inc., C.A. No. 17-146-GMS (D. Del. Feb. 13, 2017), Judge Sleet denied plaintiff CrowdStrike, Inc.’s motion for a temporary restraining order and preliminary injunction. The plaintiff had engaged defendant NSS Labs., Inc. to privately test the plaintiff’s software for its strength in the face of cyber attacks. After a few…
Judge Andrews Grants Motion to Enforce Settlement After Finding of Invalidity
March 7, 2017
In CallWave Communication LLC v. Verizon Services Corp., C.A. No. 12-1704-RGA (D. Del. Feb. 13, 2017), Judge Andrews granted plaintiff CallWave Communication LLC’s (“Callwave”) motion to enforce a settlement agreement with Telecommunication Systems Inc. (“TCS”). The settlement arose from patent litigation between Callwave and defendants Verizon Services Corp. (“Verizon”) and Google Inc. (“Google”). TCS was the…
Magistrate Judge Burke Grants and Denies in Part Proposals to Protective Order
March 7, 2017
In Boston Scientific Corporation v. Cook Group Incorporated, C.A. No. 15-980-LPS-CJB (D. Del. Feb. 10, 2017), Magistrate Judge Burke granted and denied in part the parties’ proposed modifications to the inter partes review (“IPR”) provision of the protective order. The Court denied the defendant’s proposal requiring the plaintiff’s outside counsel to withdraw from representing the…
Judge Robinson Rejects Obviousness Argument
March 7, 2017
In Endo Pharmaceuticals Solutions, Inc. v. Paddock Laboratories, LLC, C.A. No. 14-1422-SLR (D. Del. Feb. 10, 2017), Judge Robinson held that the testosterone injection patents at issue were not invalid for obviousness under 35 U.S.C. § 103. This decision followed an ANDA bench trial on invalidity. Although Judge Robinson credited the defendant with “successfully identif[ying] the…
Judge Sleet Holds Patent Not Invalid for Obviousness
March 7, 2017
Following a bench trial in AstraZenca AB v. Aurobindo Pharma Ltd., C.A. No. 14-664-GMS (D. Del. Feb. 2, 2017), Judge Sleet determined that the asserted claims of the patent-in-suit were not invalid for obviousness under 35 U.S.C. § 103. In light of the trial testimony, Defendant Aurobindo Pharma Ltd. (“Aurobindo”) argued that the asserted claims were…
Chief Judge Stark Requires Plaintiff to Produce Documents Withheld on Purported Privilege Grounds
March 7, 2017
In Intel Corp. v. Future Link Systems, LLC, C.A. No. 14-377-LPS (D. Del. Jan. 27, 2017), Chief Judge Stark ruled on a number of disputes concerning the parties’ privilege logs. After the initial teleconference, the Court “instructed the parties to ‘pick ten specific entries from the other side’s privilege log’ and then meet and confer regarding…
March 7, 2017
In Intellectual Ventures I LLC v. AT&T Mobility LLC, C.A. Nos. 12-193-LPS, 13-1632-LPS, 13-1633-LPS, 13-1635-LPS, 13-1636-LPS, 13-1637-LPS, 15-799-LPS, 15-800-LPS (D. Del. Jan. 31, 2017), Chief Judge Stark ruled on four motions to strike portions of expert reports and plaintiff Intellectual Ventures I LLC’s (“IV”) request for reconsideration of the Court’s invalidity ruling in light of recent…
Judge Andrews Rules on Motions in Limine
March 7, 2017
In Endo Pharmaceuticals Inc. v. Actavis Inc., C.A. No. 14-1381-RGA (D. Del. Feb. 8, 2017), Judge Andrews granted one, and denied two, pretrial motions in limine brought by the defendants and denied another filed by the plaintiffs. The Court granted the defendants’ motion in limine prohibiting the plaintiffs’ expert from testifying to commercial success…
Chief Judge Stark Denies Defendant’s Motion to Dismiss Based on Discovery Violations
March 7, 2017
In Robert Bosch LLC v. Alberee Products, Inc., C.A. No. 12-574-LPS (D. Del. Jan. 24, 2017), Chief Judge Stark denied defendant Costco Wholesale Corporation’s (“Costco”) motion to dismiss under Federal Rule of Civil Procedure 37(b)(2), but granted Costco alternative relief by way of attorneys’ fees, additional discovery and evidentiary relief. In opposition to Costco’s motion, Robert…
Chief Judge Stark Grants in Part Defendants’ Motion for Attorneys’ Fees
March 7, 2017
In W.L. Gore & Associates Inc. v. C.R. Bard, Inc., C.A. No. 11-515-LPS (D. Del. Feb. 8, 2017), Chief Judge Stark granted in part the defendants’ motion for attorneys’ fees incurred in responding to the plaintiff’s motion for sanctions under 28 U.S.C. § 1927. The plaintiff filed the motion for sanctions after, on the morning of…
Judge Andrews Denies Defendant’s Motion to Dismiss
March 7, 2017
In Sanofi v. Lupin Atlantis Holdings SA, C.A. No. 15-415-RGA (D. Del. Jan. 26, 2017), Judge Andrews denied defendant Sandoz Inc.’s (“Sandoz”) motion to dismiss the plaintiff’s ANDA infringement action for lack of subject matter jurisdiction. The motion arose from Sandoz’s filing of a Paragraph IV certification, which it later, during expert discovery, changed to a…
Chief Judge Stark Denies Defendant’s Request for Supplemental Infringement Contentions
March 7, 2017
In a rare order on the sufficiency of contentions, Chief Judge Stark denied the defendant’s motion to compel supplemental infringement contentions. In Takeda Pharmaceutical Company Limited v. Teva Pharmaceuticals USA, Inc., C.A. No. 16-246-LPS (D. Del. Jan. 31, 2017), defendant Teva Pharmaceuticals USA, Inc. (“Teva”) claimed that the plaintiffs’ contentions failed to describe how its ANDA…
Delaware Intellectual Property Law Update
February 9, 2017
This update provides short updates on judicial decisions, trends, and notable events in the United States District Court for the District of Delaware, traditionally one of the three busiest jurisdictions for intellectual property litigation.
Judge Andrews Denies Plaintiff’s Request to Enter Rule 54(b) Judgment
February 9, 2017
In Sound View Innovations, LLC v. Facebook, Inc., C.A. 16-116-RGA (D. Del. Jan. 17, 2017), Judge Andrews denied a motion for entry of final judgment under Fed. R. Civ. P. 54(b) filed by the plaintiff, Sound View Innovations, LLC (“Sound View”), after one of the seven patents-in-suit was invalidated for lack of patentable subject matter. Sound…
Judge Andrews Denies Motion to Exclude the Testimony of Damages Expert
February 9, 2017
In Delaware Display Group LLC v. Lenovo Holding Co., C.A. No. 13-2108-RGA (D. Del. Jan. 18, 2017), and related actions, Judge Andrews denied the various defendants’ motion to exclude the opinions of the damages expert for the plaintiffs, Delaware Display Group LLC and Innovative Display Technologies, LLC (together, “Delaware Display”), as unreliable. The defendants argued that…
Judge Sleet Grants Summary Judgment of Non-Infringement Following Claim Construction
February 9, 2017
In Quest Licensing Corp. v. Bloomberg LP, C.A. No. 14-561-GMS (D. Del. Jan. 19, 2017), a consolidated action, Judge Sleet granted the defendants’ motion for summary judgment of non-infringement in light of the construction of the term “changing information.” All of the asserted claims required the receipt or provision of “changing information,” construed by the Court…
Magistrate Judge Burke Finds No Statutory Estoppel Based on IPR
February 9, 2017
In Princeton Digital Image Corp. v. Harmonix Music Systems Inc., C.A. No. 12-1461-LPS-CJB (D. Del. Jan. 19, 2017), Magistrate Judge Burke recommended that Princeton Digital Image Corp.’s (“Princeton”) motion to dismiss defendants Konami Digital Entertainment Inc., Harmonix Music Systems, Inc., and Electronic Arts, Inc.’s counterclaims for declaratory judgments of invalidity and noninfringement be granted in part…
Judge Andrews Denies Defendants’ Motions for Fees
February 9, 2017
In Acceleration Bay LLC v. Activision Blizzard Inc., C.A. No. 15-228-RGA (D. Del. Jan. 10, 2017), Judge Andrews denied from the bench a motion for fees brought by a number of defendants in related actions after the Court dismissed the patent infringement actions filed by Acceleration Bay LLC (“Acceleration Bay”) for lack of standing. The defendants…
Judge Andrews Grants Motion to Dismiss for Failure to State a Claim but Permits Leave to Amend
February 9, 2017
In SIPCO, LLC v. Streetline, Inc., C.A. No. 16-830-RGA (D. Del. January 20, 2017), Judge Andrews granted a motion to dismiss for failure to state a claim filed by the defendants, Streetline, Inc. and Kapsch TrafficCom Holding Corp. (together, “Streetline”). Streetline argued that the complaint, which alleged infringement of ten patents against the two defendants, failed…
Judge Robinson Grants Motion for Summary Judgment of Non-Infringement Based on Collateral Estoppel
February 9, 2017
In ArcelorMittal v. AK Steel Corp., C.A. No. 13-685-SLR (D. Del. January 19, 2017), Judge Robinson granted the motion for summary judgment of non-infringement filed by the defendant, AK Steel Corp. (“AK Steel”). In an earlier action between the parties, Judge Robinson had also granted summary judgment of non-infringement in AK Steel’s favor, and entered judgment…
February 9, 2017
In Cornell University v. Illumina, Inc., C.A. No. 10-433-LPS-MPT (D. Del. January 10, 2017), Chief Judge Stark sustained the objections made by the plaintiffs, Cornell University, Cornell Research Foundation, Inc., Life Technologies Corp., and Applied Biosystems, LLC (collectively, “Cornell”), to certain of Chief Magistrate Judge Thynge’s claim constructions, as well as Cornell’s objections to the magistrate…
Judge Andrews Adopts Procedure for Use of Conflicts Counsel
February 9, 2017
In TQ Delta LLC v. Pace PLC, C.A. No. 13-1835-RGA (D. Del. Jan. 5, 2017), and related actions, Judge Andrews outlined the function of conflicts counsel ordered to undertake discovery of a third party to the lawsuit. Third party Broadcom Corp. (“Broadcom”) had permitted one of the defendants to produce sensitive documents containing Broadcom’s information, after…
Delaware Intellectual Property Law Update
January 13, 2017
This update provides short updates on judicial decisions, trends, and notable events in the United States District Court for the District of Delaware, traditionally one of the three busiest jurisdictions for intellectual property litigation.
Judge Robinson Grants and Denies Pre-Trial Motions
January 13, 2017
In Intellectual Ventures I LLC, et al. v. Toshiba Corporation, et al., C.A. No. 13-453-SLR, 2016 WL 7341713 (D. Del. Dec. 19, 2016), Judge Robinson granted and denied multiple motions by the plaintiffs (“IV”) and defendants (“Toshiba”). The case involved infringement allegations related to five patents. Toshiba filed five pre-trial motions: (1) for partial summary judgment…
Judge Andrews Denies Motion to Continue
January 13, 2017
In Endo Pharmaceuticals Inc., et al. v. Actavis Inc., et al., C.A. No. 14-1381-RGA (D. Del. Dec. 8, 2016) (ORDER), Judge Andrews denied the plaintiffs’ motion to continue trial. The plaintiffs sought to continue trial so they could plead claim and issue preclusion, take discovery, move for summary judgment, and add Teva Pharmaceuticals (“Teva”) as a…
Chief Judge Stark Denies Motion to Vacate and Rules on Disputes in a Joint Status Report
January 13, 2017
In Greatbatch Ltd. v. AVX Corp., C.A. No. 13-723-LPS, 2016 WL 7217625 (D. Del. Dec. 13, 2016), Chief Judge Stark denied plaintiff Greatbatch Ltd.’s motion to vacate the summary judgment finding of no willful infringement and ruled on numerous other disputes. Greatbatch had moved to vacate the Court’s summary judgment decision of no willfulness because the…
Judge Andrews Affirms Magistrate Judge’s Order Denying Discovery Sanctions
January 13, 2017
In AVM Technologies, LLC v. Intel Corp., C.A. No. 15-0033-RGA-MPT, 2016 WL 7374537 (D. Del. Dec. 19, 2016), Judge Andrews affirmed Magistrate Judge Thynge’s oral order denying plaintiff AVM Technologies, LLC’s motion for discovery sanctions. AVM requested that the defendant, Intel Corp., “be precluded from ‘making any arguments that its timing analyses and any simulations .…
Judge Burke Grants Motion to Stay Pending Motion to Dismiss
January 13, 2017
In North Star Innovations Inc. v. Sharp Corp., C.A. No. 16-351-LPS-CJB (D. Del. Dec. 12, 2016) (ORAL ORDER), Magistrate Judge Burke granted defendant Sharp’s motion to stay pending resolution of its motion to dismiss. The defendant filed the motion to stay in the midst of briefing on the motion to dismiss—purportedly in response to the Court’s…
Judge Robinson Denies Defendants’ Motions for Judgment on the Pleadings
December 15, 2016
In Evolved Wireless, LLC v. Apple, Inc. et al., C.A. No. 1-542-SLR (October 31, 2016), Judge Robinson denied the four defendants’ motions for judgment on the pleadings. The defendants argued that two of the five patents in the litigation claimed patent-ineligible subject matter under 35 U.S.C. § 101. Judge Robinson determined that the patents claimed patent-eligible…
Judge Robinson Grants Motion to Dismiss and Denies Motion for Declaratory Judgment
December 15, 2016
In Pride Manufacturing Co. v. Evolve Golf, Inc., C.A. No. 15-1034-SLR (Oct. 31, 2016), Judge Robinson granted the defendant’s motion to dismiss for lack of subject matter, and denied the plaintiff’s motion for declaratory judgment of noninfringement. The plaintiff brought an action for declaratory judgment of noninfringement and invalidity. In its answer, the defendant admitted that…
Delaware Intellectual Property Law Update
December 15, 2016
This update provides short updates on judicial decisions, trends, and notable events in the United States District Court for the District of Delaware, traditionally one of the three busiest jurisdictions for intellectual property litigation.
Judge Andrews Grants Motion to Compel Discovery
December 15, 2016
In Reckitt Benckiser Pharmaceuticals Inc. et al. v. Teva Pharmaceuticals USA, Inc., C.A. No. 14-1451-RGA (Nov. 4, 2016), Judge Andrews granted the plaintiffs’ motion to compel discovery of four documents. The documents were authored by three individuals who were either Indian in-house counsel or reported to in-house counsel. The defendants argued that the documents were protected…
Judge Robinson Finds One Patent Invalid as Obvious, Another Not Invalid
December 15, 2016
In Orexo AB v. Actavis Elizabeth LLC, Civ. No. 14-829-SLR (Nov. 15, 2016), an ANDA case, Judge Robinson found one of the two patents-in-suit invalid as obvious after trial. The Court held a five-day bench trial to address the issues of infringement and validity. The patents relate to a drug used to treat opioid dependence. Regarding…
Judge Sleet Grants and Denies in Part Defendant’s Motion to Dismiss
December 15, 2016
In Koninklijke Philips N.V. et al. v. ASUSTeK Computer Inc. et al., C.A. No. 15-1126-GMS (D. Del. Oct. 25, 2016), Judge Sleet denied the defendants’ motion to dismiss for failure to state a claim of direct infringement and granted the motion to dismiss for failure to state a claim with respect to the plaintiffs’ contributory infringement…
Judge Andrews Denies Parties’ Motions in Limine to Preclude Evidence on Claim Construction
December 15, 2016
In Ferring Pharmaceuticals Inc. et al. v. Par Pharmaceutical, Inc., C.A. No. 15-173-RGA (D. Del. Oct. 28, 2016), Judge Andrews denied the plaintiffs’ and the defendant’s motions in limine to preclude evidence relating to the meaning of a disputed claim term as impermissible claim construction. During the Markman hearing held in January 2016, Judge…
December 15, 2016
In Quest Licensing Corporation v. Bloomberg L.P. et al., C.A. No. 14-561-GMS (Nov. 15, 2016), Judge Sleet granted the defendants’ motion for leave to file a motion for summary judgment of noninfringement. In their motion for leave, the defendants asserted that the claim term “changing information,” found in every asserted claim, presented a single, discrete, case-dispositive…
Chief Judge Stark Denies Summary Judgment Motions and Motions to Preclude Expert Testimony
December 15, 2016
In Andover Healthcare, Inc. v. 3M Company, C.A. No. 13-843-LPS (D. Del. Oct. 18, 2016), Chief Judge Stark denied the parties’ cross-motions for summary judgment on the defendant’s laches and equitable estoppel defenses, as well as the defendant’s motion for summary judgment of indefiniteness, noninfringement and willfulness, defendant’s motion to preclude the plaintiff’s CEO from testifying…
Delaware Intellectual Property Law Update
November 3, 2016
This update provides short updates on judicial decisions, trends, and notable events in the United States District Court for the District of Delaware, traditionally one of the three busiest jurisdictions for intellectual property litigation.
November 3, 2016
In Tessera, Inc. v. Broadcom Corp., C.A. No. 16-380-LPS-CJB (D. Del. Oct. 19, 2016), Magistrate Judge Burke resolved disputes over identification of accused products and core technical documents. Specifically, Tessera, Inc. and Tessera Advanced Technologies, Inc. (together, “Tessera”), the plaintiffs, identified products accused of infringing certain patents as those containing materials that display a certain property,…
Judge Robinson Denies Motion for Transfer
November 3, 2016
In Smith International, Inc. v. Baker Hughes Inc., Civ. No. 16-56-SLR/SRF (D. Del. Oct. 19, 2016), Judge Robinson affirmed Magistrate Judge Fallon’s recommendation to deny the motion to transfer filed by the defendant, Baker Hughes, Inc. (“Baker”). The parties had been involved in litigation in the Southern District of Texas regarding, among other issues, infringement of…
November 3, 2016
In Green Mountain Glass, LLC v. Saint-Gobain Containers, Inc., C.A. No. 14-392-GMS (D. Del. Oct. 11, 2016), Judge Sleet denied a motion for judgment on the pleadings brought by the defendant, Saint-Gobain Containers, Inc. (“Saint-Gobain”), that one of the patents-in-suit, covering glass recycling, was invalid under 35 U.S.C. § 101. Judge Sleet found that Saint-Gobain’s challenge…
Judge Andrews Finds One Patent Not Invalid, Another Patent Obvious in ANDA Case
November 3, 2016
In Merck Sharp & Dohme Corp. v. Hospira Inc., C.A. No. 14-915-RGA (D. Del. October 7, 2016), an ANDA case, Judge Andrews found one of two patents-in-suit invalid as obvious after trial. The plaintiff, Merck Sharp & Dohme Corp. (“Merck”), had alleged that the defendant, Hospira Inc. (“Hospira”), infringed two patents-in-suit related to an antibiotic. The…
Judge Andrews Grants Motion for Damages, Fees, and Costs for Breach of Indemnification Agreement
November 3, 2016
In Seagate Technology (US) Holdings, Inc. v. Syntellect, Inc., C.A. No. 12-1686-RGA (D. Del. September 30, 2016), Judge Andrews awarded damages, fees, and costs to the plaintiff, Seagate Technology (US) Holdings, Inc. (“Seagate”), after granting summary judgment that the defendants were liable for breach of contract. Seagate brought this breach-of-contract action for the defendants’ alleged failure…
Chief Judge Stark Denies 101 Motions in Two of Three Decisions Issued in One Day
November 3, 2016
On the same day, Chief Judge Stark issued opinions denying two out of three motions for judgment on the pleadings on the basis of unpatentability under 35 U.S.C. § 101. First, Judge Stark denied the defendants’ motion for judgment on the pleadings in Vehicle IP, LLC v. AT&T Mobility LLC, C.A. No. 09-1007-LPS (D. Del. Sept.…
Chief Judge Stark Denies Motion for Judgment on the Pleadings of Collateral Estoppel
November 3, 2016
In United Access Technologies, LLC v. Frontier Communications Corp., C.A. No. 11-341-LPS (D. Del. Sept. 30, 2016), Chief Judge Stark denied Frontier Communications Corp.’s (“Frontier”) motion for judgment on the pleadings that collateral estoppel barred the claim for pre-suit damages made by the plaintiff, United Access Technologies, LLC (“United Access”). Frontier sought estoppel on the basis…
Chief Judge Stark Denies Motion for Attorneys’ Fees a Second Time
November 3, 2016
In Honeywell Int’l, Inc. v. Nokia Corp., C.A. No. 04-1337-LPS (D. Del. Sept. 16, 2016), Chief Judge Stark, ruling from the bench, denied the defendants’ motion for attorneys’ fees, finding that the case was not exceptional under 35 U.S.C. § 285. The Federal Circuit had remanded the Court’s earlier denial of a motion for attorneys’ fees…
Chief Judge Stark Denies Motion for Attorneys’ Fees
November 3, 2016
In Sarif Biomedical LLC v. Brainlab, Inc., C.A. No. 13-846-LPS (D. Del. Sept. 27, 2016), Chief Judge Stark denied a motion for attorneys’ fees under 35 U.S.C. § 285 made by the defendants, Brainlab, Inc., Brainlab AG, Brainlab Medizinische Computersysteme GMBH, and Varian Medical Systems, Inc. (collectively, “Brainlab”). The parties had stipulated to a final judgment…
Judge Robinson to Take Senior Status
November 3, 2016
The United States District Court for the District of Delaware has announced that Judge Sue L. Robinson will take senior status starting in February 2017. Judge Robinson served as a magistrate judge for the District of Delaware from 1988 to 1991, and was appointed as a district judge of the District of Delaware in 1991. She…
Delaware Intellectual Property Law Update
October 5, 2016
This update provides short updates on judicial decisions, trends, and notable events in the United States District Court for the District of Delaware, traditionally one of the three busiest jurisdictions for intellectual property litigation.
Judge Sleet Denies Motion to Dismiss for Lack of Subject Matter Jurisdiction
October 5, 2016
In AstraZeneca AB v. Aurobindo Pharma Ltd., et al., C.A. No. 14-664-GMS (D. Del. Sept. 15, 2016), Judge Sleet denied defendants Wockhardt BIO AG and Wockhardt USA LLC’s (collectively “Wockhardt”) motion to dismiss for lack of subject matter jurisdiction. In the motion to dismiss, Wockhardt noted that it had amended the certification included in its ANDA…
Magistrate Judge Burke Imposes Deadlines to Narrow Asserted Claims and Invalidity References
October 5, 2016
In Integra LifeSciences Corp. et al., v. HyperBranch Medical Technology, Inc., C.A. No. 15-819-LPS-CJB (D. Del. Sept. 2, 2016), Magistrate Judge Burke imposed deadlines on both parties to narrow their respective lists of asserted claims and invalidity references. On the same day he entered the scheduling order, Judge Burke entered an order requiring the plaintiffs to…
Judge Sleet Denies Defendant’s 101 Motion
October 5, 2016
In JSDQ Mesh Technologies LLC v. Fluidmesh Networks, LLC, C.A. No. 16-212-GMS (D. Del. Sept. 6, 2016), Judge Sleet denied the defendant’s motion to dismiss the complaint, finding insufficient evidence to invalidate the four patents-in-suit under 35 U.S.C. § 101. Noting that the defendant had argued that one claim was representative of all of the asserted…
October 5, 2016
In Impax Laboratories Inc. v. Lannett Holdings Inc., C.A. No. 14-984-RGA (D. Del. Sept. 6, 2016), Judge Andrews ruled on Lannett Holdings Inc.’s motion to preclude Impax Laboratories Inc.’s expert, Dr. Rapoport, from testifying at trial. Lannett moved to exclude Dr. Rapoport’s expert testimony on secondary considerations on five grounds: (1) Dr. Rapoport was unqualified to…
Judge Dyk Denies Motion for Relief from Judgment
October 5, 2016
In ART+COM InnovationPool GMBH v. Google, Inc., C.A. No. 14-217-TBD (D. Del. Sept. 9, 2016), Federal Circuit Judge Dyk, sitting by designation, denied the plaintiff’s motion for relief from judgment. This motion arose following a jury verdict that Google did not infringe any of the asserted claims of the patent in-suit. In support of its motion,…
Judge Robinson Grants Motion to Amend Pleadings
October 5, 2016
In Intellectual Ventures I LLC v. Toshiba Corp., et al., C.A. No. 13-453-SLR (D. Del. Sept. 7, 2016), Judge Robinson granted the defendants’ motion to amend their answers and counterclaims to include a defense of improper inventorship of the patent-in-suit. The litigation arose from a patent issued to the plaintiff’s predecessor-in-interest. The subject of the motion…
Delaware Intellectual Property Law Update
September 1, 2016
This update provides short updates on judicial decisions, trends, and notable events in the United States District Court for the District of Delaware, traditionally one of the three busiest jurisdictions for intellectual property litigation.
September 1, 2016
In MAZ Encryption Techs. LLC v. BlackBerry Corp., C.A. No. 13-304-LPS (D. Del. Aug. 17, 2016), Chief Judge Stark heard oral argument on several case dispositive motions, a Daubert motion, and a motion for sanctions. After a brief recess, he ruled from the bench on several of the motions. First, Chief Judge Stark denied BlackBerry’s…
Judge Robinson Denies Motion to Dismiss for Lack of Personal Jurisdiction
September 1, 2016
In Pfizer Inc., et al. v. Mylan Inc., et al., C.A. No. 15-960-SLR (D. Del. Aug. 12, 2016), Judge Robinson denied the defendants’ motion to dismiss for lack of personal jurisdiction as to defendants Mylan Pharmaceuticals (“MPI”) and Mylan Laboratories Ltd. (“MLL”) and denied the motion to dismiss without prejudice for improper venue and failure to…
Judge Andrews Dismisses Request for Attorneys’ Fees Without Prejudice
September 1, 2016
In Sprint Commc’ns Co. L.P. v. Comcast Cable Commc’ns, LLC, et al., C.A. No. 12-1013-RGA (D. Del. Aug. 18, 2016), Judge Andrews dismissed without prejudice the defendants’ motion to declare the case exceptional and extended the deadline for the defendants to file a renewed motion to 30 days from the Federal Circuit’s decision on the pending…
Chief Judge Stark Denies Plaintiff’s Motion for Sanctions
September 1, 2016
In W.L. Gore & Associates, Inc. v. C.R. Bard Inc. and Bard Peripheral Vascular, Inc., C.A No. 11-515 (D. Del. July 27, 2016), Chief Judge Stark denied the plaintiff’s motion for sanctions against the defendants. In its motion, the plaintiff alleged that, on the morning of trial, the defendants contended that they had recently found a…
Judge Andrews Denies Motions to Exclude Expert Witnesses in a Bench Trial
September 1, 2016
In Novartis Pharmaceuticals Corp. & Novartis AG v. Breckenridge Pharmaceutical Inc., et al., C.A. Nos. 14-1043, 14-1196, and 14-1289 (D. Del. Aug. 18, 2016), Judge Andrews denied the parties’ motions to exclude each other’s expert witnesses. Noting that a judge’s role as a “gatekeeper” is not as critical in a bench trial, Judge Andrews found that…
Chief Judge Stark Denies Parties’ Motions to Strike Expert Reports
September 1, 2016
In Masimo Corp. v. Phillips North America Electronics Corp., et al., C.A. Nos. 09-80 and 11-742 (D. Del. Aug. 15, 2016), Chief Judge Stark denied both parties’ motions to strike various expert reports. First, the Court denied the plaintiff’s motion to strike portions of the defendants’ reply expert report. The plaintiff argued that the defendants had…
Judge Robinson Denies Summary Judgment but Grants Adverse Inference Regarding Infringement
September 1, 2016
In Intellectual Ventures I LLC v. Ricoh Americas Corp., C.A. No. 13-474-SLR/SRF (D. Del. Aug. 17, 2016), Judge Robinson issued an order in response to the parties’ ongoing dispute about documents held by Ricoh’s Japanese parent company and on cross-motions for summary judgment. Intellectual Ventures had tried—unsuccessfully—to collect the parent company’s documents; first, by asking that…
Chief Judge Stark Issues Post-Trial ANDA Decision
September 1, 2016
In UCB, Inc. v. Accord Healthcare, Inc., C.A. No. 13-1206-LPS (D. Del. Aug. 12, 2016), Chief Judge Stark issued a post-trial decision following an ANDA trial held in December 2015. The Court began its 96-page opinion setting forth 54 pages of findings of fact. The Court noted that Accord Healthcare, Inc. had stipulated to infringement and…
Chief Judge Stark Clarifies His Order Granting Summary Judgment of Non-Infringement
September 1, 2016
In Cronos Technologies LLC v. Expedia Inc., C.A. No. 13-1538-LPS (D. Del. Aug. 15, 2016), Chief Judge Stark clarified the reasoning for his order granting Expedia’s motion for summary judgment of non-infringement. The Court initially granted the motion for summary judgment on July 22, 2016, following briefing, oral argument, and supplemental briefing addressing claim construction. In…
Judge Andrews Grants Motion for Judgment on the Pleadings Under Section 101
September 1, 2016
In Two-Way Media Ltd. v. Comcast Cable Communications, LLC, et al., C.A. Nos. 14-006 and 14-1212 (D. Del. Aug. 15, 2016), Judge Andrews granted in part the defendants’ motion for judgment on the pleadings pursuant to 35 U.S.C. § 101, finding four of the five patents-in-suit ineligible and dismissing as moot the fifth patent due to…
Delaware Intellectual Property Law Update
August 18, 2016
This update provides short updates on judicial decisions, trends, and notable events in the United States District Court for the District of Delaware, traditionally one of the three busiest jurisdictions for intellectual property litigation.
Judge Sleet Notes Challenges in Trying Antitrust and Patent Claims Together
August 18, 2016
In Nespresso USA, Inc. v. Ethical Coffee Company SA, C.A. No. 16-194-GMS (D. Del. July 20, 2016), Judge Sleet, during a scheduling conference, highlighted the challenges involved in trying antitrust claims with patent claims. The defendant, Ethical Coffee Company SA, joined by counterclaim-plaintiff Ethical Coffee Corporation, argued that because the antitrust issues were tied to the…
Judge Sleet Sua Sponte Strikes Letter Requesting Teleconference
August 18, 2016
In Gilead Sciences, Inc. v. AbbVie, Inc., C.A. Nos. 13-2034-GMS, 14-209-GMS, and 14-379-GMS (D. Del. July 22, 2016), Judge Sleet issued an oral order striking a joint letter by the parties requesting a teleconference to discuss the order of proof at trial, stating that “the Court will no longer accept communications of this type from the…
Judge Sleet Grants Motion for Judgment on the Pleadings Under Alice
August 18, 2016
In VideoShare LLC v. Google Inc., C.A. No. 13-990-GMS (D. Del. Aug. 2, 2016), Judge Sleet granted the motion for judgment on the pleadings filed by the defendants, Google, Inc. and YouTube, LLC, invalidating the two patents at issue under Section 101 for claiming patent-ineligible subject matter. The plaintiff, VideoShare, LLC (“VideoShare”), alleged infringement of two…
Magistrate Judge Burke Compels More Detail in Infringement Contentions
August 18, 2016
In Princeton Digital Image Corp. v. Konami Digital Entertainment Inc., C.A. No. 12-1461-LPS-CJB (D. Del. Aug. 4, 2016), Magistrate Judge Burke compelled the plaintiff, Princeton Digital Image Corp. (“Princeton Digital”), to supplement its initial infringement contentions to provide greater specificity. Judge Burke ordered Princeton Digital to serve separate infringement contentions for each of the mobile games…
Magistrate Judge Burke and Chief Judge Stark Allow Early Claim Construction of One Term
August 18, 2016
In Mastercool Inc. v. Irwin Industrial Tool Company, C.A. No. 15-1146-LPS-CJB (D. Del. July 22, 2016), Magistrate Judge Burke granted Irwin Industrial Tool Company’s (“Irwin Industrial”) motion to amend the scheduling order to allow for early claim construction of one term and set a date for an early claim construction hearing with Chief Judge Stark (preceded…
Chief Judge Stark Limits Access to Confidential Information to Legal Counsel
August 18, 2016
In Cosmo Technologies Ltd. v. Lupin Ltd., C.A. No. 15-669-LPS (D. Del. July 28, 2016), a protective order dispute, Chief Judge Stark adopted the plaintiffs’ definition of “legal personnel” and denied the defendants’ request to extend the default time period under which plaintiffs should search for responsive documents. The defendants opposed the proposed definition of “legal…
Judge Robinson Denies Motion to Reconsider Denial of Transfer
August 18, 2016
In Scientific Telecommunications LLC v. ADTRAN, Inc., C.A. No. 15-647-SLR (D. Del. July 25, 2016), Judge Robinson denied defendant ADTRAN, Inc.’s (“ADTRAN”) motion to reconsider the denial of its motion to transfer venue or to certify the order denying transfer for interlocutory appeal. ADTRAN asked the Court to reevaluate its decision in light of In re…
Judge Robinson Partially Grants Request for Costs
August 18, 2016
In Apeldyn Corp. v. Sony Corp. and Apeldyn Corp. v. Samsung Electronics Co., C.A. Nos. 11-440-SLR/SRF and 11-581-SLR/SRF (D. Del. July 27, 2016), Judge Robinson granted in part the defendants’ motion to review the clerk’s taxation of costs, awarding $28,296.38 in costs for depositions and electronic discovery. Under Section 1920(2), the District of Delaware Local…
Chief Judge Stark Denies Motion for Summary Judgment of Laches
August 18, 2016
In W.L. Gore & Associates, Inc. v. C.R. Bard, Inc., C.A. No. 11-515-LPS (D. Del. July 27, 2016), Chief Judge Stark adopted Magistrate Judge Burke’s report and recommendation that C.R. Bard, Inc. and Bard Peripheral Vascular, Inc.’s (collectively, “Bard”) motion for summary judgment of laches be denied. Judge Burke had concluded that genuine issues of material…
Judge Sleet Awards Over $900,000 in Fees for Exceptional Case
August 18, 2016
In Inventor Holdings, LLC v. Bed Bath & Beyond Inc., C.A. No. 14-448-GMS (D. Del. July 14, 2016), Judge Sleet awarded $931,903.45 in fees to the defendant, Bed Bath & Beyond Inc. (“Bed Bath & Beyond”), over objections of the plaintiff, Inventor Holdings, LLC (“Inventor Holdings”). The Court had earlier concluded that the case was exceptional…
Judge Sleet Denies Motion to Transfer Under Section 1404(A)
August 18, 2016
In Bristol-Myers Squibb Co. v. Merck & Co., C.A. No. 14-1131 (D. Del. July 13, 2016), Judge Sleet denied plaintiffs Bristol-Myers Squibb Co., E. R. Squibb & Sons, L.L.C., Ono Pharmaceutical Co., Ltd., and Tasuku Honjo’s (collectively, “Movants’”) motion to transfer to Delaware a nonjoinder of inventorship case pending in the District of Massachusetts. The Massachusetts…
Judge Robinson Denies Motion for Preliminary Injunction in Trademark Case
August 18, 2016
In Healthbox Global Partners, LLC v. Under Armour, Inc., C.A. No. 16-146-SLR (D. Del. July 19, 2016), a reverse-confusion trademark infringement, unfair competition, and dilution case, Judge Robinson denied the motion for a preliminary injunction filed by the plaintiff, Healthbox Global Partners, LLC (“Healthbox Global”). Healthbox Global holds the “Healthbox” trademark for use in advisory and…
Judge Sleet Denies Request to Reconsider Claim Construction
July 12, 2016
In NCR Corp. v. Documotion Research, Inc., C.A. No. 14-395-GMS (D. Del. June 16, 2016), Judge Sleet denied the defendant’s request to reconsider the construction of the term “single column” as having a plain and ordinary meaning, finding the request to be “an improper motion for reconsideration.” Voicing his concern with the defendant’s “lack of regard…
Judge Sleet Grants Motion to Dismiss
July 12, 2016
In Teva Pharm. USA, Inc. v. Forest Labs., Inc., C.A. No. 13-2002-GMS (D. Del. June 16, 2016), Judge Sleet granted the plaintiffs’ motion to dismiss the defendants’ counterclaims and affirmative defenses, which the defendants had included for the first time in their answer to the plaintiffs’ first amended complaint. Almost two years after filing the initial…
Delaware Intellectual Property Law Update
July 12, 2016
This update provides short updates on judicial decisions, trends, and notable events in the United States District Court for the District of Delaware, traditionally one of the three busiest jurisdictions for intellectual property litigation.
Judge Andrews Grants Request to Intervene
July 12, 2016
In MiiCs & Partners America, Inc., et al., v. Toshiba Corporation, et al., C.A. No. 14-803-RGA (D. Del. June 15, 2016), Judge Andrews granted the request by third party Samsung Display Company (“SDC”) to intervene. SDC moved to intervene on the grounds that it was the manufacturer of modules contained in many of the defendants’ accused…
Judge Andrews Adopts Special Master’s Ruling on Motions to Strike
July 12, 2016
In Callwave Communications LLC v. AT&T Mobility, LLC, et al., C.A. No. 12-1701-RGA (D. Del. June 16, 2016), Judge Andrews adopted Special Master Yvonne Saville’s Report and Recommendation denying the parties’ cross-motions to strike the testimony of each other’s experts. The plaintiff moved to strike the defendants’ invalidity expert from testifying regarding a theory first disclosed…
July 12, 2016
In Pfizer Inc. v. Mylan Inc., C.A. No. 15-26-SLR/SRF (D. Del. June 15, 2016), Judge Robinson mostly accepted Magistrate Judge Fallon’s Report and Recommendation on the defendants’ motion to dismiss, denying the motion as to the Mylan defendants (with leave to renew after jurisdictional discovery) and denying the motion as to defendant Agila with prejudice. The…
Judge Andrews Clarifies Specifics of Fee Award under Section 285
July 12, 2016
In Vehicle Interface Technologies, LLC v. Jaguar Land Rover North America, LLC, C.A. No. 12-1285-RGA (D. Del. June 15, 2016), Judge Andrews analyzed the total fee amount requested by the prevailing party, Jaguar (whom he already determined was entitled to fees under 35 U.S.C. § 285), in light of the following five objections raised by Vehicle…
Delaware Intellectual Property Law Update
June 8, 2016
This update provides short updates on judicial decisions, trends, and notable events in the United States District Court for the District of Delaware, traditionally one of the three busiest jurisdictions for intellectual property litigation.
Judge Sleet Partially Grants Motion for Fees and Costs under Section 285
June 8, 2016
In Inventor Holdings LLC v. Bed Bath & Beyond Inc., C.A. No. 14-448-GMS (D. Del. May 31, 2016), Judge Sleet granted the defendant’s motion for attorneys’ fees and costs but denied its motion for expert fees and costs. Following dismissal of the plaintiff’s complaint under Alice, affirmed by the Federal Circuit on appeal, the defendant moved…
Judge Andrews Invalidates Defendant’s Patent-in-Suit as Directed to an Abstract Idea
June 8, 2016
In Visual Memory LLC v. NVIDIA Corporation, C.A. No. 15-789-RGA (D. Del. May 27, 2016), Judge Andrews granted the defendant’s motion to dismiss and invalidated the plaintiff’s patent under 35 U.S.C. § 101 as containing unpatentable subject matter. The patent-in-suit purported to claim the storage of certain data types by use of “[a] computer memory system…
Judge Sleet Appoints Special Master for Motion to Disqualify Counsel
June 8, 2016
In INO Therapeutics LLC, et al. v. Praxair Distribution Inc., et al., C.A. No. 15-170-GMS (D. Del. May 24, 2016), Judge Sleet appointed a special master to hear the plaintiffs’ motion to disqualify the defendants’ counsel. Prior to plaintiffs filing their motion, the parties filed a stipulation agreeing that the briefing on the motion to disqualify…
June 8, 2016
In Yodlee, Inc. v. Plaid Technologies Inc., C.A. No. 14-1445-LPS (D. Del. May 23, 2016), Magistrate Judge Burke issued a report and recommendation granting in part the defendant’s motion to dismiss under 35 U.S.C. § 101. Although the defendant’s motion was filed prior to the Court’s claim construction order, Judge Burke noted that “[w]hen a Rule…
June 8, 2016
In Intellectual Ventures I LLC v. Ricoh Americas Corporation, et al., C.A. No. 13-474-SLR (D. Del. May 23, 2016), Judge Robinson accepted Magistrate Judge Fallon’s report and recommendation that plaintiff Intellectual Ventures I LLC’s (“IV”) motion to compel defendants Ricoh Americas Corporation (“RAC”) and Ricoh Electronics, Inc. (“REI”) to produce documents and Rule 30(b)(6) testimony be…
June 8, 2016
In Blackbird Tech LLC v. Service Lighting and Electrical Supplies, Inc., et al., C.A. No. 15-53-RGA (D. Del. May 18, 2016), Judge Andrews imposed restrictions on the information that a non-practicing entity plaintiff’s in-house counsel, who also served as its executives, could view. The defendants sought to impose a prosecution bar that would exclude the plaintiff’s…
Judge Robinson Grants Section 101 Motion to Dismiss for Unpatentable Subject Matter
June 8, 2016
In Device Enhancement LLC v. Amazon.com, Inc., C.A. No. 15-762-SLR (D. Del. May 17, 2016), Judge Robinson granted the defendant’s motion to dismiss the plaintiff’s claims of infringement of its computer programming patent under Fed. R. Civ. P. 12(b)(6) and 35 U.S.C. § 101. Judge Robinson summarized the current two-step Alice framework for determining patentability…
Judge Andrews Strikes Unused Exhibits From the Trial Record
June 8, 2016
In EMC Corporation, et al. v. Pure Storage Inc., C.A. No. 13-1985-RGA (D. Del. May 13, 2016), Judge Andrews considered a motion to seal evidence at trial and struck two financial exhibits from the record as improvidently admitted into evidence. The exhibits were large spreadsheets admitted on CD-ROMs and unusable by the jury. Judge Andrews also…
Judge Andrews Denies in Part Parties’ Request to Redact a Hearing Transcript
June 8, 2016
In Delaware Display Group LLC v. Lenovo Holding Company Inc., C.A. No. 13-2108-RGA (D. Del. May 10, 2016), Judge Andrews granted in part the parties’ motion to redact a discovery conference transcript, but denied the proposal to redact certain pages where the parties did not show a “clearly defined and serious injury” that would arise from…
Judge Andrews Denies Motion for Summary Judgment, Citing Patent’s Inventive Concept
May 12, 2016
In ART+COM Innovationpool GmbH v. Google Inc., C.A. No. 14-217-RGA (D. Del. Apr. 28, 2016), Judge Andrews denied defendant Google, Inc.’s (“Google”) motion for summary judgment under 35 U.S.C. § 101. The plaintiff, ART+COM Innovationpool GmbH (“ACI”), alleged that Google infringed a patent describing a software method for representing “space-related data, particularly geographical data of flat…
May 12, 2016
In YYZ, LLC v. Pegasystems, Inc., C.A. No. 13-581-SLR (D. Del. May 2, 2016), after granting the defendant’s motion for summary judgment that the plaintiff’s patents-in-suit were invalid under 35 U.S.C. § 101, Judge Robinson denied the defendant’s motion for attorneys’ fees under 35 U.S.C. § 285. Judge Robinson rejected the defendant’s first argument—that the plaintiff…
May 12, 2016
In Segway, Inc. v. Inventist, Inc., C.A. No. 15-808-SLR (D. Del. Apr. 25, 2016), Judge Robinson denied a motion to dismiss for lack of personal jurisdiction filed by the defendant, Inventist, Inc. (“Inventist”), a Washington corporation, but granted Inventist’s motion to transfer. In concluding that the Court could exercise personal jurisdiction over Inventist, the Court highlighted…
Judge Burke Declines to Assert Personal Jurisdiction over Texas LLC
May 12, 2016
In Fidelity National Information Services, Inc. v. Plano Encryption Technologies, LLC, C.A. No. 15-777-LPS-CJB (D. Del. Apr. 25, 2016), a declaratory judgment action, Magistrate Judge Burke concluded in a report and recommendation that the Court did not have personal jurisdiction over the defendant, Plano Encryption Technologies, LLC, a Texas limited liability company (“Plano”). The plaintiff argued…
Judge Robinson Denies Delaware Corporation’s Motion to Transfer
May 12, 2016
In Scientific Telecommunications LLC v. ADTRAN, Inc., C.A. No. 15-647-SLR (D. Del. Apr. 25, 2016), Judge Robinson denied defendant ADTRAN, Inc.’s (“ADTRAN”) motion to transfer the case to the Northern District of Alabama. ADTRAN argued that the case should be transferred to Alabama because its headquarters, approximately 1346 employees, and business records were all located in…
May 12, 2016
In Intellectual Ventures I LLC v. Toshiba Corp., C.A. No. 13-453-SLR (D. Del. Apr. 20, 2016), Judge Robinson scheduled an in-person hearing to ensure that the parties were proceeding through expert discovery with a “discrete set of accused products and the sales figures” at issue. Judge Robinson was concerned that the parties may not have reached…
Delaware Intellectual Property Law Update
May 12, 2016
This update provides short updates on judicial decisions, trends, and notable events in the United States District Court for the District of Delaware, traditionally one of the three busiest jurisdictions for intellectual property litigation.
Delaware Intellectual Property Law Update
April 28, 2016
This update provides short updates on judicial decisions, trends, and notable events in the United States District Court for the District of Delaware, traditionally one of the three busiest jurisdictions for intellectual property litigation.
Judge Robinson Denies Motion for Attorneys’ Fees
April 28, 2016
In Adeldyn Corp. v. Sony Corp., C.A. No. 11-440-SLR (D. Del. Mar. 31, 2016), Judge Robinson denied the defendants’ motion for attorneys’ fees, finding that the case was not exceptional. The plaintiff asserted claims of direct and induced infringement of one patent and alleged that such infringement was willful. After two unsuccessful motions to dismiss the…
Judge Robinson Grants Motion for Attorneys’ Fees
April 28, 2016
In Joao Bock Transaction Systems, LLC v. Jack Henry & Associates, Inc., C.A. No. 12-1138-SLR (D. Del. Mar. 31, 2016), Judge Robinson granted the defendant’s motion for attorneys’ fees but denied its motion for supplemental attorneys’ fees (including appeal-related fees), finding the case exceptional under Section 285. The plaintiff asserted claims against the defendant for direct…
Judge Sleet Rules on Post-Trial Motions and Allows “Legally Unsupportable” Verdict to Stand
April 28, 2016
In EMC Corporation v. Zerto, Inc., C.A. No. 12-956-GMS (D. Del. Mar. 31, 2016), Judge Sleet denied all of the defendant’s post-trial motions, partially granted the plaintiff’s renewed motion for judgment as a matter of law, denied the plaintiff’s motion for a permanent injunction, and partially granted the plaintiff’s motion to amend the judgment. The case…
Chief Judge Stark Permits Sur-Rebuttal Expert Report with Costs in Lieu of Striking Untimely Reports
April 28, 2016
In Andover Healthcare, Inc. v. 3M Company, C.A. No. 13-0843-LPS (D. Del. Mar. 25, 2016), Chief Judge Stark denied the defendant’s motion to strike the plaintiff’s untimely expert reports. The defendant moved to strike three of the plaintiff’s rebuttal reports because they were untimely (served two weeks after the set deadlines despite the defendant’s objection to…
Judge Andrews Grants in Part Motion to Compel Discovery
April 28, 2016
In Delaware Display Group LLC v. LG Electronics Inc., C.A. No. 13-2109-RGA (D. Del. Mar. 29, 2016), Judge Andrews granted the defendants’ motion to compel discovery in part, requiring that the plaintiff supplement its responses to two requests for production and produce “at least one piece of paper documenting the purchase of each of the 200…
Judge Sleet Construes Claims as Plain and Ordinary Meaning
April 28, 2016
In Ioengine, LLC v. Interactive Media Corp. d/b/a Kanguru Solutions et al., C.A. No. 14-1571-GMS, Judge Sleet construed all disputed terms of the patent-in-suit as having plain and ordinary meaning. In construing the last of four claim terms, the Court declined to “construe terms that are already evident from reading the entire claim.” The Court found…
Judge Andrews Limits Number of Custodians for Electronic Discovery
April 28, 2016
In Bradium Technologies LLC v. Microsoft Corporation, C.A. No. 15-031-RGA, Judge Andrews entered an electronic discovery order limiting the number of custodians and requiring the parties to serve separate requests for production directed to e-mail. First, the parties disagreed on the number of custodians that the parties should designate, with the plaintiff (Bradium) proposing ten custodians…
Judge Stark Grants Summary Judgment and Discovery Sanctions
April 28, 2016
In Robert Bosch LLC v. Alberee Products, Inc., C.A. No. 12-574-LPS, Chief Judge Stark granted the motions for summary judgment filed by the defendant Costco Wholesale Corporation (“Costco”) as to non-infringement of some of the patents-in-suit and stayed the case pending briefing on a motion to dismiss the plaintiff’s (“Bosch”) complaint as a sanction for Bosch’s…
Judge Sleet Denies Motion to Dismiss Citing Factual Dispute on Patent-Eligibility of Subject Matter
April 28, 2016
In Bristol-Myers Squibb Co., et al. v. Merck & Co., Inc., et al., C.A. No. 15-560-GMS (D. Del. Mar. 17, 2016), Judge Sleet denied the defendants’ 12(b)(6) motion to dismiss the patent infringement suit for failure to state a claim. After considering the defendants’ argument that the patent claimed ineligible subject matter under 35 U.S.C. §…
April 28, 2016
In InterDigital Communications Inc. et al v. ZTE Corporation et al., C.A. No. 13-009-RGA (D. Del. Mar. 18, 2016), Judge Andrews denied the defendants’ renewed motion for judgment as a matter of law or, in the alternative, for a new trial with respect to patents ‘966 and ‘847. Judge Andrews alternatively postponed deciding the defendants’ motion…
Judge Andrews Resolves Jury Instruction Dispute
March 17, 2016
In EMC Corporation, et al. v. Pure Storage Inc., C.A. No. 13-1985-RGA (D. Del. Feb. 29, 2016), Judge Andrews granted Plaintiffs’ motion for summary judgment of infringement as to certain claims of the ‘015 Patent against Pure Storage Inc. (“Pure”). In light of disagreements over the proposed jury instruction on the Court’s finding of infringement, the…
Delaware Intellectual Property Law Update
March 17, 2016
This update provides short updates on judicial decisions, trends, and notable events in the United States District Court for the District of Delaware, traditionally one of the three busiest jurisdictions for intellectual property litigation.
Judge Sleet Denies Motion to Dismiss and Comments on Defendants’ Frustrated Attempt to Collect Fees
March 17, 2016
In f’real Foods LLC v. Hamilton Beach Brands Inc. et al., C.A. No. 14-1270-GMS (D. Del. Feb. 26, 2016), Judge Sleet granted the plaintiff’s motion for voluntary dismissal of counts I-IV in the underlying complaint, and denied the defendants’ motion for partial dismissal for lack of standing. Over a year into this patent infringement action, the…
Judge Robinson Grants New Trial
March 17, 2016
In Carrier Corp. v. Goodman Global, Inc. et al., C.A. No. 12-930-SLR (D. Del. Feb. 22, 2016), Judge Robinson “reluctantly” granted a motion for a new trial brought by the defendants (“Goodman”) based on: (1) improper statements made by the plaintiff regarding an indemnity provision in a purchase order between Goodman and the manufacturer of…
Judge Thynge Grants Summary Judgment on Defendants’ Licensing Defense
March 17, 2016
In FutureVision.com, LLC v. Cequel Communications LLC et al., C.A. No. 13-855-MPT (D. Del. Mar. 1, 2016), Magistrate Judge Thynge granted summary judgment on the defendants’ license defense, thus barring the plaintiff’s infringement claims. The defendants, cable operators with cable systems throughout the United States, successfully argued that each of the accused services were expressly licensed…
March 17, 2016
In RainDance Technologies, et al. v. 10X Genomics Inc., C.A. No. 15-152-RGA (D. Del. Mar. 4, 2016), Judge Andrews dismissed a complaint for patent infringement under “the post-December 1, 2015 direct infringement pleading standard.” The complaint was filed on February 12, 2015 and amended on April 9, 2015. The Court found that retroactive applicability of the…
Judge Andrews Denies Motion to Dismiss for Lack of Standing
March 17, 2016
In EMC Corporation, et al. v. Pure Storage, Inc., C.A. No. 13-1985-RGA (D. Del. Feb. 29, 2016), Judge Andrews denied Pure Storage, Inc.’s challenge to EMC Corporation’s (“EMC”) standing to sue for infringement. Originally, the patents in suit were assigned by the co-inventors to Data Domain, Inc. EMC acquired Data Domain, Inc. in 2009 (which later…
Judge Robinson Denies Motion to Transfer And To Strike Preliminary Injunction Motion
March 17, 2016
In Hologic, Inc. and Cytyc Surgical Products, LLC v. Minerva Surgical, Inc., C.A. No. 15-1031-SLR (D. Del. Feb. 29, 2016), Judge Robinson denied the defendant’s motion to transfer venue and to strike Hologic, Inc.’s (“Hologic”) motion for preliminary injunction. First, the Court rejected Minerva Surgical, Inc.’s (“Minerva”) motion to transfer venue to the Northern District of…
Delaware Intellectual Property Law Update
March 1, 2016
This update provides short updates on judicial decisions, trends, and notable events in the United States District Court for the District of Delaware, traditionally one of the three busiest jurisdictions for intellectual property litigation.
Judge Andrews Partially Lifts Stay Pending IPR After Institution Decision
March 1, 2016
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…
March 1, 2016
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…
Judge Stark Places One-Way Restrictions on In-House Access to Confidential Discovery Material
March 1, 2016
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…
Judge Andrews Schedules Separate Infringement and Invalidity Trials
March 1, 2016
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)…
Judge Andrews Denies in Part Defendants’ Motion to Redact Hearing Transcript
March 1, 2016
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,…
Judge Sleet Grants Stay of Action Filed as “Protective Measure”
March 1, 2016
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…
Judge Robinson Denies Motion to Dismiss for Lack of Personal Jurisdiction Without Prejudice
March 1, 2016
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…
Judge Andrews Dismisses Induced, Contributory, and Willful Infringement Claims
March 1, 2016
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…
Delaware Intellectual Property Law Update
February 3, 2016
This update provides short updates on judicial decisions, trends, and notable events in the United States District Court for the District of Delaware, traditionally one of the three busiest jurisdictions for intellectual property litigation.
Judge Sleet Agrees to Handle Markman at Trial in ANDA Case
February 3, 2016
In Bayer Pharma AG v. Alembic Pharmaceuticals Limited, C.A. No. 15-832-GMS (D. Del. Jan. 7, 2016), the parties submitted competing scheduling proposals in an ANDA case. The plaintiffs requested that any claim construction issues be addressed in the context of trial or post-trial briefing. The plaintiffs contended that claim construction issues were already handled in a…
Judge Robinson Allows Plaintiffs to Add Inducement Claim
February 3, 2016
In Teijin Limited v. Roxane Labs, Inc., C.A. No. 14-189-SLR (D. Del. Jan. 14, 2016), Judge Robinson granted the plaintiffs’ motion for leave to file a first amended complaint to add allegations of induced infringement. The defendants opposed any amendment, arguing that the amendment would be futile since, contrary to the new claims, the defendants did…
Judge Stark Considers Indefiniteness at Markman and Refuses to Strike Claim Construction Brief
February 3, 2016
In Forest Laboratories, Inc. v. Teva Pharmaceuticals USA, Inc., C.A. No. 14-121-LPS (D. Del. Jan 5, 2016), Judge Stark issued a memorandum opinion construing the terms in eight patents. Before addressing the disputed terms, Judge Stark began by denying the plaintiffs’ motion to strike the defendants’ reply claim construction brief and supporting declaration. The plaintiffs argued…
Judge Robinson Invalidates Patent
February 3, 2016
In Motivation Innovations, LLC v. Petsmart, Inc., C.A. No. 13-957-SLR (D. Del. Jan. 12, 2016), Judge Robinson granted the defendant’s motion for judgment on the pleadings and declared the plaintiff’s patent invalid under 35 U.S.C. § 101. In holding the patent invalid, Judge Robinson found that the patent was directed toward the abstract idea of “using…
Judge Robinson Denies Defendant’s Motion to Transfer Venue and Motion to Dismiss
February 3, 2016
In CR Bard Inc. et al v. AngioDynamics Inc., C.A. No. 1-15-cv-00218 (D. Del. Jan. 12, 2016), Judge Robinson denied the defendant’s motion to transfer to the District of Utah. Even though the defendant was incorporated in Delaware, the defendant argued that Delaware was not “home turf” for either party, and that the District of Utah…
February 3, 2016
In M2M Solutions LLC v. Motorola Solutions, Inc., et al., C.A. No. 12-33-RGA, (D. Del. Jan. 6, 2016), Judge Andrews granted the defendants’ motion for summary judgment related to damages, but denied the defendants’ motions for summary judgment of non-infringement and invalidity. On the issue of infringement, Judge Andrews rejected the defendants’ argument that the patent-in-suit…
Delaware Intellectual Property Law Update
January 5, 2016
In this edition of the electronic Richards, Layton & Finger Patent Law Update, we discuss decisions and hearings of note from the District of Delaware from the past few weeks. If you have any questions about any of the decisions listed below or the District of Delaware in general, please let us know.
Chief Judge Stark Adopts Single Claim Construction Brief Format
January 5, 2016
In Intellectual Ventures I LLC, et al. v. AT&T Mobility LLC, et al., C.A. No. 13-1668-LPS (D. Del. Dec. 11, 2015), Chief Judge Stark by oral order granted the parties’ joint request to file up to 60 pages of opening and responsive Markman briefs per side, for a total of 240 pages, due to the number…
Chief Judge Stark Denies Motion to Stay Pending Inter Partes Review
January 5, 2016
In Greatbatch Ltd. v. AVX Corporation et al., C.A. No. 13-723-LPS (D. Del. Dec. 10, 2015), Judge Stark denied defendants’ motion to stay litigation pending: (1) appeal of a final written inter partes review (“IPR”) decision by the Patent Trial and Appeal Board (“PTAB”) that invalidated all but one claim of the patent-in-suit; and (2) resolution…
Judge Robinson Stays Antitrust Counterclaims Pending Patent Infringement Case
January 5, 2016
In Intellectual Ventures I, LLC, et al. v. Toshiba Corporation, C.A. No. 13-453-SLR-SRF (D. Del. Dec. 9, 2015), Judge Robinson ordered that a stay of defendant’s antitrust counterclaims must remain in place until plaintiffs’ patent infringement claims were resolved. Judge Robinson found that defendant’s antitrust counterclaims hinged on the allegation that plaintiffs’ patent portfolio was…
January 5, 2016
During a discovery dispute teleconference in Elm 3DS Innovations, LLC v. Samsung Electronics Co., Ltd., et al., C.A. Nos. 14-1430-LPS-CJB, 14-1431-LPS-CJB, 14-1432-LPS-CJB (D. Del. Dec. 4, 2015), Chief Judge Stark ruled on two protective order disputes. First, he ruled that defendants, who were operating as a joint defense group, could share plaintiff’s confidential information and processes…
Judge Andrews Denies Motion to Dismiss Under Former Fed. R. Civ. P. Form 18
January 5, 2016
On December 3, 2015, in Blackbird Tech LLC v. LEDwholesalers.com Inc., et al., C.A. No. 15-60-RGA (D. Del. Dec. 3, 2015), Judge Andrews denied defendants’ motion to dismiss that the complaints did not plausibly assert infringement since the accused products (shown by screen shots in the complaint) did not infringe the asserted patent. The Court found…
Judge Andrews Denies Written Description Defense at Motion to Dismiss Stage
January 5, 2016
In Blackbird Tech LLC v. Service Lighting and Electrical, C.A. No. 15-53-RGA (D. Del. Dec. 1, 2015), Judge Andrews denied defendants’ motion to dismiss on the basis that the claims of the patent-in-suit were invalid for lack of written description. Rejecting defendants’ argument that it was proper to decide whether a patent was invalid for…
Judge Andrews Grants Prosecution Bar and Rules on Source Code Issues Raised in Protective Order
January 5, 2016
Presented with a protective order dispute in Acceleration Bay LLC v. Activision Blizzard, Inc. et al., C.A. No. 15-228-RGA (D. Del. Dec. 1, 2015), regarding the scope of a post-grant prosecution bar and restrictions on source code review, Judge Andrews ruled in a short order that all of defendants’ proposals should be adopted. In so…
Prejudice Is Key in Judge Andrews’ Decisions on Motions in Limine
January 5, 2016
In Reckitt Benckiser Pharmaceuticals, Inc., et al. v. Watson Laboratories, Inc. et al., C.A. No. 13-1674-RGA (Cons.) (D. Del. Nov. 25, 2015), Judge Andrews denied a motion in limine by Par Pharmaceutical, Inc. (“Par”) to preclude plaintiffs’ expert testimony on the doctrine of equivalents, which was raised in plaintiffs’ opening expert report in a one-sentence conclusory…
Chief Judge Stark Requires More than “Plain and Ordinary” Claim Constructions
January 5, 2016
On December 10, 2015, in Data Engine Techs. LLC v. Google Inc., C.A. No. 14-1115-LPS (D. Del. Dec. 10, 2015), Chief Judge Stark issued an oral order requiring that plaintiff supplement its claim construction briefing by submitting “proposed constructions (i.e., not merely an unspecified ‘plain and ordinary meaning’) for each of the disputed claim terms for…
Magistrate Judge Burke Denies Stay Pending Inter Partes Review
January 5, 2016
In Toshiba Samsung Storage Technology Korea Corp. v. LG Electronics, Inc., C.A. No. 15-691-LPS-CJB (D. Del. Dec. 3, 2015), Magistrate Judge Burke continued the Court’s trend of declining to grant stays pending inter partes review (“IPR”) until the Patent Trial and Appeal Board (“PTAB”) determined whether to initiate IPR proceedings. First, Judge Burke stated that, as…
Judge Andrews Dismisses Contributory Infringement and Accelerates Infringement Contentions
January 5, 2016
In Tailstream Technologies LLC v. TeraRecon Inc., C.A. No. 15-625-RGA (D. Del. Nov. 30, 2015), Judge Andrews determined that concerns over the sufficiency of plaintiff’s induced infringement claims would be remedied by the proposed “supplemental” complaint. However, neither the original complaint nor the proposed supplemental complaint sufficiently alleged contributory infringement; as such, the “boilerplate” contributory…
January 5, 2016
In Collarity, Inc. v. Google Inc., C.A. No. 11-1103-MPT (D. Del. Nov. 25, 2015), Magistrate Judge Thynge granted Google Inc.’s motion for summary judgment of invalidity of the asserted claims under 35 U.S.C. § 101, concluding that plaintiff’s asserted claims were directed to a patent-ineligible abstract idea and lacked an inventive concept. Despite plaintiff’s argument…
January 5, 2016
On December 2, 2015, Chief Judge Stark issued an order on a number of related motions, further narrowing the parties’ issues for trial in W.L. Gore & Associates, Inc. v. C.R. Bard, Inc., et al., C.A. No. 11-515-LPS. First, the Court granted in part and denied in part defendants’ motion to strike the supplemental expert…
Judge Robinson Rules on Motions in Limine
January 5, 2016
In Takeda Pharmaceuticals USA, Inc. v. Par Pharmaceutical Companies Inc., et al., C.A. Nos. 13-1524-SLR, 13-1279-SLR, 14-268-SLR (D. Del. Nov. 24, 2015), Judge Robinson granted two pretrial motions in limine brought by plaintiff to exclude testimony of defendants’ experts and denied a motion in limine to exclude one of plaintiff’s infringement theories. Defendant Amneal…
January 5, 2016
On November 24, 2015, Chief Judge Stark addressed six motions in limine and various disputes raised in the pretrial order in W.L. Gore & Associates, Inc. v. C.R. Bard, Inc., et al., C.A. No. 11-515-LPS (D. Del. Nov. 24, 2015). Among Chief Judge Stark’s various rulings, the Court held that evidence of the European Patent Office’s…
Product Liability Desk Reference, Daller, ed., Delaware chapter
2016
The Product Liability Desk Reference, 2016 Edition is a comprehensive resource that provides the most recent statutory and case law developments on product liability laws for each of the fifty states and the District of Columbia.…
Effects of Federal Circuit’s Decision on Standard for Joint Infringement
Delaware Business Court Insider | December 2, 2015
In Akamai Technologies v. Limelight Networks, 793 F.3d 1020 (2015), a unanimous U.S. Court of Appeals for the Federal Circuit clarified the standard for joint infringement by finding the defendant liable because it directed or controlled the actions of a third party that performed one or more steps of a claimed method. The Federal Circuit found…
Judge Jordan Denies Request for Attorneys’ Fees
December 1, 2015
In St. Clair Intellectual Property Consultants, Inc. v. Toshiba Corp., C.A. No. 09-354-KAJ (Nov. 23, 2015), Judge Jordan denied a motion for attorneys’ fees filed by the defendants, Toshiba Corporation, Toshiba America Information Systems, Inc., and Toshiba America, Inc. (“Toshiba”), against the plaintiff, St. Clair Intellectual Property Consultants, Inc. (“St. Clair”). Toshiba first argued that St.…
December 1, 2015
In Orexo AB v. Actavis Elizabeth LLC, C.A. No. 14-829-SLR/SRF (D. Del. Nov. 20, 2015), Judge Robinson overruled the plaintiffs’ objections to Magistrate Judge Fallon’s ruling regarding a discovery dispute. The plaintiffs had requested samples of the raw materials used to make the defendant’s product and intermediate samples of the product during formulation. Magistrate Judge Fallon…
Chief Judge Stark Grants Defendants’ Request to Increase Number of Prior Art References
December 1, 2015
In Enzo Life Sciences, Inc. v. Life Technologies Corp., C.A. No. 12-105-LPS (D. Del. Nov. 5, 2015), Chief Judge Stark granted the defendants’ request to increase the number of prior art references from six to twelve per asserted claim as to one of the patents-in-suit. According to the Court, the plaintiff’s lack of clarity over the…
Judge Andrews Rules on Disputed Terms of Proposed Protective Order
December 1, 2015
In Two-way Media Ltd. v. Comcast Cable Communications, LLC, C.A. No. 14-1006 (D. Del. Nov. 17, 2015), Judge Andrews ruled on disputed terms in the parties’ proposed protective order, prohibiting the plaintiff from sharing highly confidential information received from one defendant with defendants in the related cases, but refusing to extend the prosecution bar to cover…
Judge Andrews Adopts Report and Recommendation Invalidating Patent on Section 101 Grounds
December 1, 2015
In Endo Pharmaceuticals Inc. v. Actavis Inc., C.A. No. 14-1381-RGA (D. Del. Nov. 17, 2015), Judge Andrews overruled objections to a report and recommendation concluding that the patent-in-suit should be found invalid due to lack of patent-eligible subject matter. The patent was directed to a method for treating renally impaired patients with a dosage of oxymorphone.…
Judge Andrews Grants Motion to Withdraw but Retains Jurisdiction for Potential Sanctions
December 1, 2015
In Dragon Intellectual Property, LLC v. Apple, Inc., C.A. No. 13-2058-RGA (D. Del. Nov. 13, 2015), Judge Andrews granted a motion for withdrawal filed by counsel for the plaintiff, Dragon Intellectual Property, LLC (“Dragon”), in a number of related patent infringement actions, but only after the moving counsel first satisfied concerns raised by the defendants. The…
Judge Andrews Denies Motion for Attorneys’ Fees
November 11, 2015
Discussion In TruePosition, Inc. v. Polaris Wireless, Inc., C.A. No. 12-646-RGA (D. Del. Oct. 19, 2015), Judge Andrews denied defendant’s 35 U.S.C. § 285 motion for attorneys’ fees. Although defendant, the prevailing party in the underlying case, argued that fees were appropriate because of improper motivation, frivolousness, and objective unreasonableness on the part of plaintiff, the…
Magistrate Judge Burke Excludes Expert Testimony
November 11, 2015
Discussion In W.L. Gore and Assoc., Inc. v. C.R. Bard, Inc., C.A. No. 11-515-LPS-CJB (Oct. 23, 2015), Magistrate Judge Burke considered defendants’ motion to exclude certain opinions of plaintiff’s damages expert on the grounds that the expert’s opinion on a reasonable royalty rate was based on a conversation that she had with plaintiffs’ technical expert on…
Magistrate Judge Fallon Considers Motions to Dismiss and Strike
November 11, 2015
Discussion In Courtesy Prods. LLC v. Hamilton Beach Brands, Inc., C.A. No. 13-2012-SLR-SRF (D. Del. Oct. 20, 2015), Magistrate Judge Fallon considered a motion to dismiss plaintiff’s willful infringement claims and a motion to dismiss defendant’s inequitable conduct defense and counterclaim. Judge Fallon recommended denying defendant’s renewed motion to dismiss plaintiff’s willful infringement claims and granting…
Magistrate Judge Burke Recommends Denial of Motion to Dismiss
November 11, 2015
Discussion In Elm 3DS Innovations, LLC v. SK Hynix Inc. et al, C.A. No. 13-1674-RGA (D. Del. Oct. 26, 2015), C.A. No. 14-1432-LPS-CJB (D. Del. Oct. 16, 2015), Magistrate Judge Burke recommended that defendants’ motion to dismiss claims of pre-suit induced infringement be denied in a decision labeled a “very close call.” While defendants argued that…
Delaware Intellectual Property Law Update
November 11, 2015
This update provides short updates on judicial decisions, trends, and notable events in the United States District Court for the District of Delaware, traditionally one of the three busiest jurisdictions for intellectual property litigation.
District Court Considers Post-Octane Fitness Fee Awards
Delaware Business Court Insider | October 22, 2014
In Octane Fitness LLC v. ICON Health & Fitness, the U.S. Supreme Court evaluated the language in 35 U.S.C. Section 285, a statute that allows for the award of attorney fees to prevailing parties in “exceptional” patent infringement cases, and rejected a restrictive interpretation of the statute by the U.S. Court of Appeals for the Federal Circuit.
The Delaware District Court Clarifies Its Order on E-Filing
October 15, 2014
Chief Judge Stark provided clarification regarding the Delaware District Court’s new filing and service deadline of 6:00 p.m., effective October 16.
New E-Filing and Service Deadline of 6:00 p.m. in District Court
October 2, 2014
Effective October 16, 2014, all electronic transmissions of documents to the U.S. District Court for the District of Delaware (including motions, briefs, appendices, and discovery responses), with the exception of initial pleadings, must be completed by 6:00 p.m. Eastern Time in order to be considered timely filed and served that day.
U.S. Supreme Court Adopts New Indefiniteness Standard
Delaware Business Court Insider | June 25, 2014
In a decision that will doubtless lead to more patent claims being challenged as indefinite, the U.S. Supreme Court in Nautilus v. Biosig Instruments, unanimously held that a claim is indefinite if it fails to inform one of ordinary skill in the art of the scope of the invention with reasonable certainty.
Judge Stark Issues New Procedures for Patent Cases
June 18, 2014
Judge Stark of the United States District Court for the District of Delaware has today issued a new form of scheduling order and pretrial order for patent cases, as well as revised procedures for management of patent cases and a checklist of items for counsel to discuss before the initial case management conference.
Delaware’s Business Courts: Recent Developments and Best Practices
May 16, 2014
Mike Cochran and Fred Cottrell spoke at this CLE-accredited event at the Chase Center on the Riverfront in Wilmington, Delaware. Fred gave the “Introductions and Overview” of the program, and Mike spoke on “The Complementary Nature of the Court of Chancery and the Superior Court Complex Commercial Litigation Division and Selection of Venue.”…
Judge Robinson Issues New Form Scheduling Order as a Result of Feedback from the Patent Study Group
March 26, 2014
On Monday, March 24, Judge Robinson issued two new form Orders: (i) an Order directing the parties to confer on certain matters prior to a Scheduling Conference and (ii) a form Scheduling Order.
Legislation Would Address Abusive Patent-Litigation Tactics
Delaware Business Court Insider | February 26, 2014
On the heels of the Leahy-Smith America Invents Act, Congress is currently considering a number of bills designed to address abusive patent-litigation tactics associated with nonpracticing entities, often referred to as “patent trolls.”
Intellectual Property – Motions to Dismiss
November 8, 2013
Judge Stark Denies Defendant’s Motion to Dismiss Complaint Alleging Antitrust Violations and Grants in Part Plaintiff’s Motion to Strike In Kickflip, Inc. v. Facebook, Inc., C.A. No. 12-1369-LPS (D. Del. Sept. 27, 2013), Judge Stark denied defendant Facebook, Inc.’s motion to dismiss a complaint alleging antitrust violations and tortious interference for failure to state a claim…
Intellectual Property – Miscellaneous
November 8, 2013
Judge Stark Finds Patent Claims Ineligible for Patent Protection under 35 U.S.C. § 101 and Grants Motion for Judgment on the Pleadings In Buysafe, Inc. v. Google, Inc., C.A. No. 11-1282-LPS (D. Del. July 29, 2013), Judge Stark concluded that the asserted claims were not eligible for patent protection under 35 U.S.C. § 101 and granted…
Intellectual Property – Injunctions
November 8, 2013
Judge Robinson Denies Temporary Injunction but Grants Stay Pending Appeal In Senju Pharmaceutical Co., Ltd., et al. v. Lupin Limited, et al., C.A. No. 11-271-SLR (cons.) (D. Del. Aug. 26, 2013), Judge Robinson denied plaintiffs’ motion for a temporary injunction pending appeal, but granted a stay until the time for appeal had passed or, if plaintiffs…
Intellectual Property – Post-Trial
November 8, 2013
Judge Sleet Denies Post-Trial Motions and Declines to Award Attorneys’ Fees In Finjan, Inc. v. Symantec Corp. et al., C.A. No. 10-593-GMS (D. Del. Sept. 19, 2013), Chief Judge Sleet denied certain post-trial motions on infringement and validity and declined to award attorneys’ fees pursuant to 35 U.S.C. § 285. The Court concluded that the jury’s…
Intellectual Property – Discovery
November 8, 2013
Judge Stark Grants in Part and Denies in Part a Motion for Protective Order In Intellectual Ventures I LLC, et al. v. Altera Corp., et al., C.A. No. 10-1065-LPS (D. Del. July 12, 2013), Judge Stark granted in part and denied in part a motion for protective order. Specifically, Judge Stark barred defendants from taking supplemental…
Delaware Intellectual Property Law Update
November 8, 2013
The United States District Court for the District of Delaware has recently issued a number of decisions of note in the intellectual property area.
Intellectual Property – Summary Judgment
November 8, 2013
Judge Robinson Grants in Part Defendant’s Motions for Summary Judgment, Denies Defendant’s Daubert Motion, and Construes Claims In Netgear, Inc. v. Ruckus Wireless, Inc., C.A. No. 10-999-SLR (D. Del Sept. 30, 2013), Judge Robinson decided several motions and cross-motions for summary judgment, including plaintiff’s summary judgment motion of infringement and for validity of the patents-in-suit,…
Intellectual Property – Requests for Stay
November 8, 2013
Judge Stark Grants Defendants’ Motion to Stay Pending Inter Partes Review In Softview LLC v. Apple Inc., et al., C.A. Nos. 12-989-LPS; 10-389-LPS (Consolidated) (D. Del. Sept. 4, 2013), Judge Stark granted defendants’ motion to stay pending inter partes review. Judge Stark found that the three stay factors favored granting the motion. Judge…
Intellectual Property – Motions to Transfer
November 8, 2013
Magistrate Judge Burke Recommends Transfer to the Northern District of Illinois In Alan J. Ross, et al. v. Institutional Longevity Assets LLC, C.A. No. 12-102-LPS-CJB (D. Del. Sept. 20, 2013), Magistrate Judge Burke recommended granting defendant’s motion to transfer to the Northern District of Illinois. Plaintiff Alan J. Ross was an individual residing in Newton, Massachusetts.…
Nonpracticing Entities: Come to Delaware
The Federal Lawyer | Oct/Nov 2013
While the District of Delaware historically has been a preferred venue for patent litigation, it now faces a new wave brought by a relatively new type of plaintiff.
Intellectual Property – Motions to Transfer
July 31, 2013
Magistrate Judge Fallon Recommends Denying Motion to Transfer In Sensus USA Inc. v. Nxegen, LLC, C.A. No. 11-1000-SLR-SRF (D. Del. June 14, 2013), Magistrate Judge Fallon recommended that the Court deny the defendants’ motion to transfer and motion to dismiss. First, the Court concluded that since a Connecticut action filed on July 29, 2011 and the…
Intellectual Property – Motions to Dismiss
July 31, 2013
Judge Robinson Dismisses for Lack of Subject Matter JurisdictionIn Walker Digital, LLC v. Expedia, Inc., et al., C.A. No. 11-313-SLR (and related C.A. Nos. 12-140-SLR, 12-141-SLR and 12-142-SLR) (D. Del. June 19, 2013), Judge Robinson granted certain defendants’ motion to dismiss for lack of subject matter jurisdiction. The settlement agreement of an earlier action between plaintiff…
Intellectual Property – Miscellaneous
July 31, 2013
Judge Robinson Rules on Motions to Strike or ExcludeIn Invista North America S.A.R.L. et al. v. M&G USA Corporation et al., C.A. No. 11-7007-SLR-CJB (D. Del. June 25, 2013), Judge Robinson ruled on three pending motions to strike or exclude testimony. First, the Court granted in part and denied in part the plaintiffs’ motion to strike…
Delaware Intellectual Property Law Update
July 31, 2013
In the last few months, the United States District Court for the District of Delaware has issued a number of decisions of note in the intellectual property area.
Intellectual Property – Summary Judgment
July 31, 2013
Magistrate Judge Thynge Recommends Grant of Defendants’ Motion for Summary Judgment on Willful Infringement and Denial of Motion for Summary Judgment on Lost Profits DamagesIn Masimo Corp. v. Philips Electronics North American Corp. and Philips Medizen Systeme Boblingen GMBH, C.A. No. 09-80-LPS-MPT (D. Del. June 14, 2013), Magistrate Judge Thynge recommended that the defendants’ motion for…
Intellectual Property – Discovery
July 31, 2013
Chief Judge Sleet Orders Production of Attorney-Client Privileged Documents Under the Crime-Fraud Exception In Shelbyzyme, LLC v. Genzyme Corporation, C.A. No. 09-768-GMS (D. Del. May 22, 2013), Chief Judge Sleet ordered the plaintiff to produce privileged documents dated between November 2001 and February 2002 related to the revival of a U.S. patent application under the crime-fraud…
Intellectual Property – Post-Trial
July 31, 2013
Judge Stark Issues His Findings of Fact and Conclusions of Law After a Bench TrialIn Power Integrations, Inc. v. Fairchild Semiconductor International, Inc., et al., C.A. No. 08-309-LPS (D. Del. Apr. 25, 2013) (unsealed on May 3, 2013), after the Court held a bench trial on inequitable conduct and post-trial briefs were filed, Judge Stark issued…
Intellectual Property – Requests for Stay
July 31, 2013
Chief Judge Sleet Denies Defendant’s Motion to Stay Pending Inter Partes ReviewIn Davol, Inc. v. Atrium Medical Corporation, C.A. No. 12-958-GMS (D. Del. June 17, 2013), Chief Judge Sleet denied the defendant’s motion to stay pending inter partes review, finding that the three stay factors, taken together, weighed against a stay. Specifically, the…
Intellectual Property – Pleadings
June 6, 2012
Judge Robinson Rules on Motions Arising from Pleadings in Related Cases In CyberFone Systems, LLC v. Cellco Partnership, C.A. Nos. 11-827 through 835 (D. Del. Apr. 30, 2012), Judge Robinson ruled on a number of motions brought by defendants in these related cases. Judge Robinson denied a motion to sever for improper joinder brought on the…
Delaware Intellectual Property Law Update
June 6, 2012
In the last few months, the United States District Court for the District of Delaware has issued a number of decisions of note in the intellectual property area.
Intellectual Property – Timing of Claim Construction Rulings
June 6, 2012
Magistrate Judge Burke Issues a Report and Recommendation for Disputed Claim Construction TermsIn Virgin Atlantic Airways Ltd. v. Delta Airlines, Inc., C.A. No. 11-61-LPS-CJB (D. Del. Apr. 27, 2012), Judge Burke issued a report and recommendation on disputed claim construction terms in an action filed by plaintiff Virgin Atlantic Airways Limited against Defendant Delta Airlines, Inc.…
Intellectual Property – Summary Judgment
June 6, 2012
Magistrate Judge Burke Recommends Denial of Summary Judgment MotionIn Wyeth Holdings Corp. v. Sandoz, Inc., C.A. No. 09-955-RGA-CJB (D. Del. Apr. 5, 2012), Magistrate Judge Burke recommended that Judge Andrews deny defendant’s motion for summary judgment of invalidity of the ’828 patent for obviousness-type double patenting in light of claim 97 of the ’183 patent. The…
Intellectual Property – Discovery
June 6, 2012
Magistrate Judge Burke Denies Plaintiffs’ Motion to Compel and Requires Plaintiffs to Narrow Requests for Documents In Medicis Pharmaceutical Corp., et al. v. Actavis Mid Atlantic LLC, C.A. No. 11-409-LPS-CJB (D. Del. Apr. 30, 2012), Magistrate Judge Burke denied plaintiffs’ motion to compel production of documents because plaintiffs’ requests were “substantially overbroad.” Plaintiffs argued that the…
Intellectual Property – Transfer
June 6, 2012
Judge Andrews Grants Severance And Denies Motion to TransferIn Investpic, LLC, v. SAS Institute, Inc., C.A. No. 10-1028-RGA (D. Del. May 15, 2012), Judge Andrews denied a motion to transfer and granted a motion to sever. Plaintiff had originally filed a complaint against 15 defendants for patent infringement. First, Judge Andrews concluded that the movant had…
Intellectual Property – Miscellaneous
June 6, 2012
Judge Stark Denies Plaintiff’s Request to Reargue Its Motion in LimineIn ICU Medical, Inc. v. Rymed Technologies, Inc., C.A. No. 07-468-LPS (D. Del. May 4, 2012), Judge Stark denied plaintiff’s motion requesting reargument of its motion in limine to preclude non-infringement arguments and evidence on elements already deemed literally present in the modified product.…
Intellectual Property – Post-Trial
June 6, 2012
Judge Robinson Rules that Patents Are Not Invalid In OSI Pharmaceuticals, Inc. v. Mylan Pharmaceuticals Inc., C.A. No. 09-185-SLR (D. Del. May 1, 2012), Judge Robinson concluded after a bench trial that defendant Mylan Pharmaceuticals, Inc. failed to prove that the patents-in-suit, which concerned a compound for treating a particular kind of lung cancer, were invalid.…
District of Delaware Swears in Third Magistrate Judge
May 2, 2012
On April 25, 2012 in a private ceremony, Sherry Ruggiero Fallon was sworn in as the third Magistrate Judge for the United States District Court for the District of Delaware.
District Court Releases New Default Discovery Standards
December 9, 2011
On Thursday, December 8, the District Court released a new Default Standard for Discovery, Including Discovery of Electronically Stored Information, which each of the District Judges is expected to use.
District of Delaware Begins Magistrate Judge Pilot Program
November 14, 2011
The United States District Court for the District of Delaware has begun a pilot project by which the clerk of the court will randomly select a discrete number of cases for direct assignment to a magistrate judge in place of one of the district judges for pretrial case management.
Andrews Confirmed to the Delaware District Court
November 3, 2011
Delaware Superior Court’s Complex Commercial Litigation Division
U.S. Law Week | October 4, 2011
In the October 4, 2011 edition of U.S. Law Week, C. Malcolm Cochran and Jason Rawnsley discuss the scope, procedures, and caseload of the Delaware Superior Court’s Complex Commercial Litigation Division, including its implications for the separation of law and equity in Delaware.
The IP Legal Browser | Fall 2011
It is well established that liability for direct infringement does not depend on the knowledge or intent of the infringer, but that indirect infringement under 35 U.S.C. § 271(c) requires that the accused infringer have knowledge of the infringed patent.
Andrews Nomination to Delaware District Court Advances to Senate Vote
September 9, 2011
The Senate Judiciary Committee this week voted unanimously to forward the nomination of Richard G. Andrews to the full Senate for confirmation.
Delaware Laws & Programs Affecting Business – 2011 Edition
July 2011
This guide presents an introduction to Delaware and an overview of the laws and programs relating to doing business in the State.
Intellectual Property – Post-Trial
May 27, 2011
Chief Judge Sleet Denies Majority of Post-Trial Motions In Edwards Lifesciences AG, et al. v. CoreValve, Inc., et al., C.A. No. 08-91-GMS (D. Del. Feb. 7, 2011), plaintiffs Edwards Lifesciences AG and Edwards Lifesciences LLC (together, “Edwards”) alleged that a medical device manufactured by defendants CoreValve, Inc. and Medtronic CoreValve, LLC (together, “CoreValve”) infringed claim…
Intellectual Property – Timing of Claim Construction Rulings
May 27, 2011
Judge Stark Construes Claims Four and a Half Months After Markman Hearing In Wyeth, LLC v. Intervet, Inc., C.A. No. 09-161-LPS (D. Del. Mar. 22, 2011), Judge Stark issued his claim construction opinion four and a half months after the Markman hearing. No trial date was scheduled at the time. Judge Stark Construes…
Delaware Intellectual Property Law Update
May 27, 2011
In the last few months, the United States District Court for the District of Delaware has issued a number of decisions of note in the intellectual property area.
Intellectual Property – Miscellaneous
May 27, 2011
Judge Stark Denies Intervenor’s Motion for Reconsideration or Reargument In LD Display Co., Ltd. V. AU Optronics Corporation, et al., C.A. No. 06-726-LPS (D. Del. Feb. 14, 2011), Judge Stark denied intervenor Anvik Corporation’s motion to reconsider an order that denied its request to modify the protective order to allow Anvik access to certain sealed…
May 27, 2011
On Wednesday, May 11, 2011, President Obama nominated Richard G. Andrews to fill the vacancy in the United States District Court for the District of Delaware.
Intellectual Property – Transfer
May 27, 2011
Chief Judge Sleet Denies Defendants’ Motion to Transfer Venue In Apple Inc. v. High Tech Computer Corp., et al., C.A. No. 10-544-GMS (D. Del. Jan. 18, 2011), Apple Inc. filed a patent infringement action against High Tech Computer Corp., a/k/a HTC Corp., HTC (B.V.I.) Corp., HTC America, Inc. and Exedea, Inc. (collectively, “HTC”) alleging that…
Intellectual Property – Motions to Dismiss
May 27, 2011
Judge Stark Rules on Motions to Strike and Dismiss In Southco, Inc. v. Penn Engineering & Manufacturing Corp., C.A. No. 10-03-LPS (D. Del. Mar. 7, 2011), Judge Stark denied plaintiff Southco, Inc.’s motion to strike and dismiss, denied defendant Penn Engineering & Manufacturing Corp.’s (“PEM”) motion to strike and dismiss counterclaims, and denied PEM’s motion…
Intellectual Property – Requests for Stay
February 22, 2011
Judge Robinson Denies Motion to Stay In Belden Technologies, Inc. & Belden CDT (Canada) Inc. v. Superior Essex Communications LP & Superior Essex Inc., C.A. No. 08-63-SLR (D. Del. Sept. 2, 2010), Judge Robinson denied Defendants’ motion to stay. After this action was commenced, Defendants filed requests for reexamination of many of the patents-in-suit, and the…
Intellectual Property – Summary Judgment
February 22, 2011
Judge Robinson Denies Motion for Summary Judgment of Infringement In Intermec Technologies Corp. v. Palm Inc., C.A. No. 07-272-SLR (D. Del. Sept. 14, 2010), Judge Robinson denied Intermec Technologies’ motion for summary judgment of infringement, but granted summary judgment of validity against most of Palm Inc.’s anticipation defenses. Intermec sued Palm for infringing two groups of…
Intellectual Property – Miscellaneous
February 22, 2011
Magistrate Judge Thynge Allows Plaintiff’s Trial Counsel to Participate in Amending Plaintiff’s Claims on Reexamination In Xerox Corp. v. Google, Inc., C.A. No. 10-136-LPS (D. Del. Sept. 8, 2010), Magistrate Judge Thynge adopted Plaintiff’s proposed language for a permanent protective order and held that Plaintiff’s trial counsel, who had previous exposure to Defendants’ confidential information, could…
Local Practices for Electronic Discovery
The Federal Lawyer | February, 2011
The shift from paper to electronic communication and storage has transformed every step of litigation, from initial case assessment to discovery and even trial.
Judge Stark Sworn in as Judge for the District of Delaware
August 16, 2010
On August 16, 2010, Leonard P. Stark was sworn in as a U.S. District Court Judge for the District of Delaware.
Turning Ideas to Dollars: Marketing Intellectual Property
June 5, 2010
Director Robert Whetzel will speak at this University of Delaware Forum & Reunion Weekend session in Newark, Delaware.
“A Conversation with the United States Patent and Trademark Office”
May 24, 2010
Director Frederick L. Cottrell will be a panelist at this Wilmington, Delaware CLE program co-sponsored by the U.S. District Court and the Federal Bar Association.
Delaware Courts Add Another Venue for Business and Commercial Litigation
April 27, 2010
On April 26, 2010, President Judge James T. Vaughn, Jr., of the Superior Court of Delaware issued Administrative Directive No. 2010-3 creating a Complex Commercial Litigation Division within the Delaware Superior Court.
Intellectual Property – Discovery
March 25, 2010
Judge Farnan Grants Plaintiff’s Motion to Compel TestimonyIn WebXchange Inc. v. FedEx Corp., et al., C.A. No. 08-133-JJF (D. Del. Jan. 20, 2010), Judge Farnan granted plaintiff’s motion to compel testimony and denied defendants’ motion to strike a supplemental response to its interrogatory, for a protective order, and for leave to file a surreply in opposition…
Intellectual Property – Pleadings and Motions to Dismiss
March 25, 2010
Judge Farnan Grants Defendants’ Motion for Leave to Amend AnswerIn WebXchange Inc. v. Dell Inc., C.A. No. 08-132-JJF (D. Del. Jan. 20, 2010), and WebXchange Inc. v. FedEx Corp., et al., C.A. No. 08-133-JJF (D. Del. Jan. 20, 2010), Judge Farnan granted defendants’ motion for leave to amend their answers. Defendants wished to file a second…
Intellectual Property Developments in Delaware
March 25, 2010
In the last few months, the United States District Court for the District of Delaware has issued a number of decisions of note in the intellectual property area.
Intellectual Property – Sanctions and Attorneys’ Fees
March 25, 2010
Magistrate Judge Thynge Awards Attorneys’ Fees for Failure to Provide Appropriate Rule 30(b)(6) Witness In Innovative Patents, L.L.C. and Forcefield, LLC v. Brain-Pad, Inc., C.A. No. 07-680-MPT (D. Del. Nov. 4, 2009), Magistrate Judge Thynge granted in part and denied in part defendant’s motion for fees and costs. Defendant…
March 25, 2010
On March 17, 2010, President Obama nominated Magistrate Judge Leonard P. Stark to fill the vacancy created by the elevation of the Honorable Kent A. Jordan to the United States Court of Appeals for the Third Circuit. Magistrate Judge Stark earned his undergraduate degree from the University of Delaware and his Juris Doctor from Yale Law…
Intellectual Property – Transfer
March 25, 2010
Judge Farnan Denies Defendant’s Motion to Transfer ANDA ActionIn Pfizer Inc., et al. v. Sandoz, Inc., C.A. No. 09-742-JJF (D. Del. Jan. 20, 2010), Judge Farnan denied defendant’s motion to transfer and reserved decision on plaintiffs’ motion to enjoin defendant from proceeding with a later-filed action. A day after filing the Delaware action, plaintiffs filed an…
Intellectual Property – Post-Trial
March 25, 2010
Judge Robinson Holds Patent Unenforceable for Laches and Inequitable ConductIn Cancer Research Technology, et al. v. Barr Laboratories, Inc., et al., C.A. No. 07-457-SLR (D. Del. Jan. 26, 2010), Judge Robinson issued an opinion approximately nine months after trial and concluded that the patent was unenforceable due to prosecution laches because of sufficiently egregious conduct, including…
Intellectual Property – Judge Joseph J. Farnan Jr. Announces Retirement
January 27, 2010
In a January 26, 2010 notice posted on the United States District Court of Delaware’s website, it was announced that Judge Joseph J. Farnan Jr. will retire from the bench effective July 31, 2010.
Delaware Uniform Common Interest Ownership Act
November 13, 2008
On October 31, 2008, Governor Minner signed into law the Delaware Uniform Common Interest Ownership Act.
Delaware Intellectual Property Update
April 1, 2008
In the last few months, the United States District Court for the District of Delaware has issued a number of decisions of note in the intellectual property area.
Simon & Schuster, Inc. v. Advanced Marketing Services, Inc.
January 23, 2007
Delaware Bankruptcy Court Denies Reclamation Claimant’s Request for Temporary Restraining Order Due to Lender’s Lien on Reclaimed Goods
Recent Intellectual Property Developments in Delaware
December 21, 2006
In the last few months, the United States District Court for the District of Delaware has issued a number of decisions of note in the intellectual property area.
September 29, 2006
In the last few months, the United States District Court for the District of Delaware has issued a number of decisions of note in the intellectual property area.