Delaware Intellectual Property Law Update

December 15, 2016

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.

Chief Judge Stark Denies Summary Judgment Motions and Motions to Preclude Expert Testimony
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 as an expert, and defendant’s motion to preclude certain opinions of the plaintiff’s damages expert.  Defendant 3M Company (“3M”) argued that the Court should grant summary judgment under the doctrine of laches and equitable estoppel due to discussions that the parties had in the late 1990s and plaintiff Andover Healthcare Inc.’s (“Andover”) subsequent silence.   

Judge Sleet Grants Defendants’ Motion for Leave to File Motion for Summary Judgment of Noninfringement
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 issue for all defendants in three related suits.  

Judge Andrews Denies Parties’ Motions in Limine to Preclude Evidence on Claim Construction
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 Andrews held that the claim terms “coating” or “coated” have “plain and ordinary meaning.”  Judge Andrews further explained that the issue of whether the defendant’s proposed product had a coating or was coated was one on which the experts should opine.  Ruling on the parties’ subsequent motions in limine, Judge Andrews clarified that expert testimony that the specification and prosecution history supported the expert’s view of the plain and ordinary meaning would be impermissible claim construction.

Judge Sleet Grants and Denies in Part Defendant’s Motion to Dismiss
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 claims.    

Judge Robinson Finds One Patent Invalid as Obvious, Another Not Invalid
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. 

Judge Andrews Grants Motion to Compel Discovery
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 by attorney-client privilege.  The parties agreed that U.S. privilege law applied. 

Judge Robinson Grants Motion to Dismiss and Denies Motion for Declaratory Judgment
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 the plaintiff’s product did not infringe.  The defendant also sent the plaintiff a release and covenant not-to-sue letter.

Judge Robinson Denies Defendants’ Motions for Judgment on the Pleadings
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.

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