Delaware Intellectual Property Law Update

November 3, 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.

Judge Robinson to Take Senior Status
The United States District Court for the District of Delaware has announced that Judge Sue L. Robinson will take senior status starting in February 2017.  Judge Robinson served as a magistrate judge for the District of Delaware from 1988 to 1991, and was appointed as a district judge of the District of Delaware in 1991.  She served as chief judge from June 2000 until June 2007.  

District of Delaware Releases Annual Report to the Federal Bar Association
The U.S. District Court for the District of Delaware released its Annual Report to the Federal Bar Association for 2016.  According to the report, patent cases comprised 49 percent (662 cases) of the total caseload for the district in 2015.  The full report is available HERE.

Chief Judge Stark Denies Motion for Attorneys’ Fees
In Sarif Biomedical LLC v. Brainlab, Inc., C.A. No. 13-846-LPS (D. Del. Sept. 27, 2016), Chief Judge Stark denied a motion for attorneys’ fees under 35 U.S.C. § 285 made by the defendants, Brainlab, Inc., Brainlab AG, Brainlab Medizinische Computersysteme GMBH, and Varian Medical Systems, Inc. (collectively, “Brainlab”).  The parties had stipulated to a final judgment of invalidity and noninfringement after the Court found the claims to be indefinite.

Chief Judge Stark Denies Motion for Attorneys’ Fees a Second Time
In Honeywell Int’l, Inc. v. Nokia Corp., C.A. No. 04-1337-LPS (D. Del. Sept. 16, 2016), Chief Judge Stark, ruling from the bench, denied the defendants’ motion for attorneys’ fees, finding that the case was not exceptional under 35 U.S.C. § 285.  The Federal Circuit had remanded the Court’s earlier denial of a motion for attorneys’ fees to take into account the changed standard and lower burden of proof established by the Supreme Court’s Octane Fitness and Highmark decisions.

Chief Judge Stark Denies Motion for Judgment on the Pleadings of Collateral Estoppel
In United Access Technologies, LLC v. Frontier Communications Corp., C.A. No. 11-341-LPS (D. Del. Sept. 30, 2016), Chief Judge Stark denied Frontier Communications Corp.’s (“Frontier”) motion for judgment on the pleadings that collateral estoppel barred the claim for pre-suit damages made by the plaintiff, United Access Technologies, LLC (“United Access”).  Frontier sought estoppel on the basis of a decision from an earlier litigation in which United Access’s predecessors-in-interest were precluded from recovering pre-suit damages for failure to mark under 35 U.S.C. § 287(a) as of the date that lawsuit was filed (in 2002).    

Judge Andrews Grants Motion for Damages, Fees, and Costs for Breach of Indemnification Agreement
In Seagate Technology (US) Holdings, Inc. v. Syntellect, Inc., C.A. No. 12-1686-RGA (D. Del. September 30, 2016), Judge Andrews awarded damages, fees, and costs to the plaintiff, Seagate Technology (US) Holdings, Inc. (“Seagate”), after granting summary judgment that the defendants were liable for breach of contract.  Seagate brought this breach-of-contract action for the defendants’ alleged failure to defend and indemnify Seagate for its role as defendant in a patent infringement action. 

Chief Judge Stark Denies 101 Motions in Two of Three Decisions Issued in One Day
On the same day, Chief Judge Stark issued opinions denying two out of three motions for judgment on the pleadings on the basis of unpatentability under 35 U.S.C. § 101.  First, Judge Stark denied the defendants’ motion for judgment on the pleadings in Vehicle IP, LLC v. AT&T Mobility LLC, C.A. No. 09-1007-LPS (D. Del. Sept. 29, 2016). The defendants argued that the claims were directed to the abstract idea of calculating a vehicle’s estimated time of arrival to a particular location. Judge Stark disagreed, concluding that although the claims involved making a calculation, “the details of the system or method steps dominate the claims.” The Court pointed to the identification of specialized pieces of equipment and the assignment of particular functions to each as evidence that the claims do more than merely “recite a formula for estimated time of arrival and add the words ‘apply it.’”

Judge Andrews Finds One Patent Not Invalid, Another Patent Obvious in ANDA Case
In Merck Sharp & Dohme Corp. v. Hospira Inc., C.A. No. 14-915-RGA (D. Del. October 7, 2016), an ANDA case, Judge Andrews found one of two patents-in-suit invalid as obvious after trial. The plaintiff, Merck Sharp & Dohme Corp. (“Merck”), had alleged that the defendant, Hospira Inc. (“Hospira”), infringed two patents-in-suit related to an antibiotic.  The Court held a four-day bench trial to address the validity of one patent-in-suit (Hospira had earlier stipulated to infringement of this patent) and infringement and invalidity of the other.

Judge Sleet Denies 101 Motion
In Green Mountain Glass, LLC v. Saint-Gobain Containers, Inc., C.A. No. 14-392-GMS (D. Del. Oct. 11, 2016), Judge Sleet denied a motion for judgment on the pleadings brought by the defendant, Saint-Gobain Containers, Inc. (“Saint-Gobain”), that one of the patents-in-suit, covering glass recycling, was invalid under 35 U.S.C. § 101.

Judge Robinson Denies Motion for Transfer
In Smith International, Inc. v. Baker Hughes Inc., Civ. No. 16-56-SLR/SRF (D. Del. Oct. 19, 2016), Judge Robinson affirmed Magistrate Judge Fallon’s recommendation to deny the motion to transfer filed by the defendant, Baker Hughes, Inc. (“Baker”).  The parties had been involved in litigation in the Southern District of Texas regarding, among other issues, infringement of the two patents-in-suit in the Delaware action; the plaintiff, Smith International, Inc. (“Smith”), voluntarily dismissed that case and filed the present suit in Delaware.

Magistrate Judge Burke Resolves Disputes over Identification of Accused Products and Production of Core Technical Documents
In Tessera, Inc. v. Broadcom Corp., C.A. No. 16-380-LPS-CJB (D. Del. Oct. 19, 2016), Magistrate Judge Burke resolved disputes over identification of accused products and core technical documents.  Specifically, Tessera, Inc. and Tessera Advanced Technologies, Inc. (together, “Tessera”), the plaintiffs, identified products accused of infringing certain patents as those containing materials that display a certain property, but the defendant, Broadcom Corporation (“Broadcom”), stated that it neither knew nor kept records of whether its products contained materials displaying such property, and that the burden of identification should fall on Tessera.  Broadcom also objected to the production of core technical documents because, it argued, Tessera’s identification of accused products could include over 1,000 products.    

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