Delaware Intellectual Property Law Update

February 9, 2017

Publication| Intellectual Property

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

District Court Announces New Case Assignment Procedure in Light of Judge Robinson’s Senior Status
As a result of Judge Robinson taking senior status, the Court has announced new case assignment practices that are now in effect.  New civil matters will no longer be assigned to Judge Robinson; instead, a new “Vacant Judgeship” docket will be created in her place.  Civil cases assigned to the Vacant Judgeship will be referred to Chief Magistrate Judge Thynge or Magistrate Judges Burke or Fallon, who will have full authority to the extent permitted by law to manage the case, including ruling on non-dispositive matters and issuing recommendations on dispositive motions.  Full details of the new case assignment procedure are available HERE.

Third Circuit Bench & Bar Conference Announced
Registration is now open for the 73rd Judicial Conference of the United States Court of Appeals for the Third Circuit, which will take place April 19 to 21, 2017, at the Lancaster Marriott at Penn Square in Lancaster, Pennsylvania.  Panels include “Pay for Delay Today – The Still-Developing Law on Reverse Payment Settlements” and “Technology and Individual Rights: Friends or Foes?”  For more information, visit the conference webpage.

Judge Andrews Adopts Procedure for Use of Conflicts Counsel
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 which the plaintiff, TQ Delta LLC (“TQ Delta”), issued a subpoena directly to Broadcom.  Because TQ Delta’s lead counsel had previously represented Broadcom in another matter, Broadcom moved to disqualify the counsel.

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

Judge Robinson Grants Motion for Summary Judgment of Non-Infringement Based on Collateral Estoppel
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 of no infringement and invalidity of a reissue patent related to the asserted patent in this later litigation. The plaintiffs, ArcelorMittal and ArcelorMittal Atlantique et Lorraine (together, “ArcelorMittal”), then filed the instant action, asserting infringement of the related patent.  AK Steel moved for summary judgment based on collateral estoppel.    

Judge Andrews Grants Motion to Dismiss for Failure to State a Claim but Permits Leave to Amend
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 to allege sufficient facts to state a claim. 

Judge Andrews Denies Defendants’ Motions for Fees
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 argued that, as the prevailing parties, they were entitled to fees under Section 285 because the positions taken Acceleration Bay regarding standing, as well as its decision to file the lawsuits, were objectively unreasonable.  Although Acceleration Bay purported to own the rights to the asserted patent based on an assignment from Boeing, the patent purchase agreement did not reflect that Acceleration Bay had actually acquired the right to practice the patents.  The defendants further argued that Acceleration Bay failed to timely produce the patent purchase agreement, and pursued the case even after being notified of the standing problem. 

Magistrate Judge Burke Finds No Statutory Estoppel Based on IPR
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 and denied in part.

Judge Sleet Grants Summary Judgment of Non-Infringement Following Claim Construction
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.”

Judge Andrews Denies Motion to Exclude the Testimony of Damages Expert
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 the expert failed to apportion between patented and unpatented features, improperly attributed 100% of incremental profit to the licensor, and improperly used a royalty rate based on a portfolio license covering unasserted patents.

Judge Andrews Denies Plaintiff’s Request to Enter Rule 54(b) Judgment
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.    

  • sign up for our newsletter

    To keep our clients and friends updated on the latest legal news, Richards Layton distributes practice area e-alerts and newsletters. If you are interested in receiving these publications, please subscribe below.