Delaware Intellectual Property Law Update

July 11, 2017

Publication| Intellectual Property

Welcome to the latest edition of the Richards, Layton & Finger Intellectual Property Law Update. As always, if you have questions about any of the decisions listed below or the District of Delaware in general, please let us know.

Judge Robinson’s Retirement Celebration
On July 25, 2017, the United States District Court for the District of Delaware and the Delaware chapter of the Federal Bar Association will host an event at the Hotel du Pont to celebrate Judge Robinson’s distinguished career. The evening will include the presentation of Judge Robinson’s official portrait. Registration details for this event can be found HERE.

Judge Andrews Amends Discovery Order to Include Production of Documents from Plaintiff’s Previous Related Patent Infringement Case
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 a previous 2014 patent infringement case to defendant D&M Holdings, Inc. (“D&M”). Specifically, D&M sought: (1) expert reports, declarations, and deposition testimony of three of Sonos’ experts, who were also experts in a 2014 patent infringement case brought against Sonos by a third party; and (2) deposition testimony and declarations of Sonos’ fact witnesses from the same litigation. In making the request, D&M claimed that Sonos’ wireless audio systems, which were accused of infringement in the prior 2014 litigation, were the same products accused of infringement in the 16-141 Case and were the commercial embodiments of the patents asserted in the 14-1330 Case. In response, Sonos argued that the production requested was relevant only to the 16-141 Case and not the 14-1330 Case.

Judge Robinson Grants and Denies Post-Trial Motions
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 license, and prejudgment interest.  The post-trial motions followed a $23,660,000 damages award in favor of SRI.     

Judge Andrews Grants Plaintiff’s Request to Limit Number of Patent Claims for Trial and Dismisses Dropped Claims with Prejudice
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 their prior art obviousness references to no more than three combinations per asserted claim.

Judge Robinson Denies Plaintiff’s Request for Additional Discovery
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 physicians that Mitigare could be prescribed for acute gout flares, thereby inducing infringement of the patent-in-suit.       

Judge Andrews Denies Defendant’s Request to Add New Non-Infringement Defenses Raised for First Time in Pretrial Order
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 the plaintiff’s interrogatories, the defendant had waived its right to contest infringement of certain limitations in the asserted patent claims.  Here, the Court was not persuaded by the defendant’s argument that because a plaintiff bears the burden of proving infringement at trial, it should be permitted to propound new theories of non-infringement or failure of proof on the eve of trial.    

Chief Judge Stark Denies Defendants’ Motion for Reargument on its Order and Contingently Imposes Costs on Defendants
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 point forward if either of two contingencies occurred.  According to the order, the defendants would be liable for costs if either: “(a) their ANDA is rejected due to the ‘major deficiencies’ cited by the FDA or (b) they change the ANDA formulation contrary to repeated representations to the Court that no such alteration is required.”  Ultimately, the Court denied the defendants’ motion for reargument because the defendants did not establish that any of the grounds for granting reargument were applicable.  

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