Delaware Intellectual Property Law Update

January 13, 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.

Judge Burke Grants Motion to Stay Pending Motion to Dismiss
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 oral order requiring counsel to meet and confer and propose a scheduling order within 30 days.  The defendant also filed a letter request to stay the scheduling order deadlines while the motion to stay was pending.  These requests were referred to Magistrate Judge Burke, who granted both.  First, Magistrate Judge Burke granted the conditional stay of the scheduling order deadlines until a decision was rendered on the motion to stay.  Magistrate Judge Burke then set a briefing schedule on the motion to stay, shortening the page limits to ten pages for the answering brief and five pages for the reply.   

Judge Andrews Affirms Magistrate Judge’s Order Denying Discovery Sanctions
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 . . . do not accurately reflect the manufactured products’; . . . and [have] a negative inference . . . drawn in Plaintiffs favor due to Defendant’s failure to produce” certain data.  Id. at *1.  Magistrate Judge Thynge denied that motion during a discovery hearing, AVM filed objections, Intel responded, and Judge Andrews reviewed the decision under an abuse of discretion standard.  

Chief Judge Stark Denies Motion to Vacate and Rules on Disputes in a Joint Status Report
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 decision was issued under Seagate’s “objective prong,” which was abrogated by the Supreme Court’s Halo Electronics decision.  Chief Judge Stark agreed with Greatbatch that the change in legal standard made “it necessary to reconsider the Willfulness Order,” but found that Halo did not, “in this case, require vacating the prior determination that Greatbatch is unable to prove willfulness.”  Id. at *1.

Judge Andrews Denies Motion to Continue
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 defendant.  Teva had acquired the defendant, Actavis Inc. (“Actavis”), and the two companies filed ANDAs for generic drugs that purportedly infringed the plaintiffs’ patents.    

Judge Robinson Grants and Denies Pre-Trial Motions
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 for claim priority as to the ‘270 patent, (2) for summary judgment of invalidity of the ‘788 patent, (3) for summary judgment of noninfringement of the patents-in-suit, (4) to exclude opinions and testimony of one of IV’s damages experts, and (5) for stay of proceedings with respect to the ‘819 patent.  IV filed five motions: (1) for summary judgment of no available noninfringing alternatives to the five patents-in-suit, (2) for partial summary judgment of no invalidity of the five patents-in-suit, (3) for partial summary judgment of statutory estoppel of the ‘819 patent, (4) to exclude one of Toshiba’s damages experts, and (5) for certain discovery relief. 

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