Delaware Intellectual Property Law Update

March 29, 2019

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.

District Court Selects New Magistrate Judge 
The U.S. District Court for the District of Delaware has selected Jennifer L. Hall, currently the chief of the Civil Division of the United States Attorney’s Office for the District of Delaware, to fill the newly created fourth magistrate judge position in the District. 

Judge Noreika Adds Undisputed Facts Requirement to Dispositive Motions
Judge Noreika has updated her form of scheduling order to require the submission of a concise statement of numbered, material facts with dispositive motions.  The responding party must separately admit or deny each fact, and may submit its own concise statement of facts.  The requirement applies to all pending civil cases.  The updated scheduling order can be found HERE.

Chief Judge Stark Rules that Patent Agent-Client Privilege Not Applicable to Documents Withheld from Production
In Onyx Therapeutics, Inc. v. Cipla Ltd., No. 16-988-LPS (D. Del. Feb. 15, 2019), Chief Judge Stark rejected the plaintiff’s claim that certain documents withheld from production were protected by the patent agent-client privilege.  The ruling followed the Court’s review in camera of documents identified in privilege log entries selected by the parties as representative of their disputes.  

Chief Judge Stark Denies Request to Defer Entry of Judgment Pending Final Completion of IPR Proceedings
In Siemens Mobility, Inc. v. Westinghouse Air Brake Technologies Corp., No. 16-284-LPS (D. Del. Feb. 25, 2019), Chief Judge Stark denied the defendants’ request to defer entry of judgment on two patents subject to inter partes review proceedings.  The plaintiff had prevailed at a jury trial on infringement of eight patents, which the jury also found to be not invalid.  

Magistrate Judge Burke Denies Motions to Compel Production of Documents from Related Companies
In Confluent Surgical, Inc. v. HyperBranch Medical Technology, Inc., No. 17-688-LPS-CJB (D. Del. Feb. 6, 2019), Magistrate Judge Burke denied the plaintiffs’ motion to compel the production of documents in the control of an executive of the defendant’s parent corporation.  The defendant responded that as a subsidiary it could not demand emails held by an executive of its parent and, in any event, the custodian identified by the plaintiffs was not responsible for the product line at issue in the lawsuit.

Chief Judge Stark Holds that U.S. Agent of Foreign Company Does Not “Submit” ANDA Under Section 271(e)
In Adverio Pharma GmbH v. Alembic Pharmaceuticals Ltd., No. 18-73-LPS (D. Del. Feb. 13, 2019), a Hatch-Waxman case, Chief Judge Stark granted defendant INC Research, LLC’s motion to dismiss for failure to state a claim.  The plaintiff sued the defendants for submitting an ANDA for a generic version of the plaintiff’s brand drug.  The complaint alleged that INC Research was a U.S. FDA agent for one of its co-defendants, an India-based pharmaceuticals company.  

Chief Judge Stark and Magistrate Judge Burke Hold Omnibus Section 101 Hearing
In three unrelated sets of cases, Chief Judge Stark and Magistrate Judge Burke jointly presided over an omnibus hearing on pending motions for unpatentability under 35 U.S.C. § 101.  At the conclusion of the hearing, Chief Judge Stark ruled from the bench, granting six motions to dismiss on grounds of no patentable subject matter and denying one motion to reconsider an earlier finding of no patentable subject matter.  

Chief Judge Stark Invalidates Patent for Claiming Ineligible Subject Matter
In Citrix Systems, Inc. v. AVI Networks, Inc., No. 17-1843-LPS (D. Del. Feb. 13, 2019), Chief Judge Stark granted the defendant’s motion to dismiss claims for infringement of two of the four patents-in-suit on the basis that those patents claimed ineligible subject matter.  

Magistrate Judge Burke Recommends Denial Without Prejudice of Section 101 Motion
In TrustID, Inc. v. Next Caller, Inc., No. 18-172-LPS (D. Del. Feb. 25, 2019), Magistrate Judge Burke recommended that the Court deny the defendant’s motion to dismiss the patent infringement claims of the complaint for claiming ineligible subject matter.  

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