Chief Judge Stark Construes Claim Terms and Denies Motion to Amend Pleading to Allege Inequitable Conduct

February 9, 2017

Publication| Intellectual Property

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’s recommendation that the defendant, Illumina, Inc. (“Illumina”), be permitted to amend its pleadings to allege inequitable conduct.

On the former, Judge Stark sustained Cornell’s objections to the magistrate judge’s construction of two sets of terms and adopted Cornell’s proposed constructions. The remaining constructions were adopted.

Because the parties disagreed on the standard of review for objections to a report and recommendation for a motion to amend, Judge Stark held that motions to amend were non-dispositive motions and that factual findings would thus be reviewed for clear error and legal conclusions reviewed de novo. As Cornell objected to the recommendation’s legal analysis of futility of amendment, Judge Stark reviewed the proposed amendment de novo.

According to Judge Stark, Illumina’s inequitable conduct allegations were based on “a single inartful sentence in the prosecution history” of the patent-in-suit, and concluded that “it is not reasonable to infer from the applicants’ statement that the applicants intended to mislead or deceive the PTO[.]” Because the Court found that it would be unreasonable to infer deceptive intent on this basis, the proposed amendment would be futile, and the Court denied the motion to amend.

Key Points:  Parties should pay close attention to the proper standard of review for challenging decisions of magistrate judges; the most recent amendments to the Local Civil Rules for the District of Delaware require that the standard of review be recited in any objections.

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