Delaware Intellectual Property Law Update

October 5, 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 Grants Motion to Amend Pleadings
In Intellectual Ventures I LLC v. Toshiba Corp., et al., C.A. No. 13-453-SLR (D. Del. Sept. 7, 2016), Judge Robinson granted the defendants’ motion to amend their answers and counterclaims to include a defense of improper inventorship of the patent-in-suit.  The litigation arose from a patent issued to the plaintiff’s predecessor-in-interest.  The subject of the motion was whether a particular inventor, Stephen Pearlman, was one of the inventors of the patent-in-suit.  

Judge Dyk Denies Motion for Relief from Judgment
In ART+COM InnovationPool GMBH v. Google, Inc., C.A. No. 14-217-TBD (D. Del. Sept. 9, 2016), Federal Circuit Judge Dyk, sitting by designation, denied the plaintiff’s motion for relief from judgment.  This motion arose following a jury verdict that Google did not infringe any of the asserted claims of the patent in-suit.

Judge Andrews Grants in Part and Denies in Part Motion to Preclude Expert Testimony at ANDA Bench Trial
In Impax Laboratories Inc. v. Lannett Holdings Inc., C.A. No. 14-984-RGA (D. Del. Sept. 6, 2016), Judge Andrews ruled on Lannett Holdings Inc.’s motion to preclude Impax Laboratories Inc.’s expert, Dr. Rapoport, from testifying at trial.  Lannett moved to exclude Dr. Rapoport’s expert testimony on secondary considerations on five grounds: (1) Dr. Rapoport was unqualified to render the proffered opinions; (2) his opinions on commercial success lacked reliability and fit; (3) his opinions on the failure of others were unreliable because they were neither based on sufficient facts or data nor the product of reliable principles and methods; (4) his opinions on teaching lacked reliability and fit; and (5) his opinions on licensing by others lacked reliability.

Judge Sleet Denies Defendant’s 101 Motion
In JSDQ Mesh Technologies LLC v. Fluidmesh Networks, LLC, C.A. No. 16-212-GMS (D. Del. Sept. 6, 2016), Judge Sleet denied the defendant’s motion to dismiss the complaint, finding insufficient evidence to invalidate the four patents-in-suit under 35 U.S.C. § 101.  Noting that the defendant had argued that one claim was representative of all of the asserted claims in the case, Judge Sleet stated that three questions must be considered.

Magistrate Judge Burke Imposes Deadlines to Narrow Asserted Claims and Invalidity References
In Integra LifeSciences Corp. et al., v. HyperBranch Medical Technology, Inc., C.A. No. 15-819-LPS-CJB (D. Del. Sept. 2, 2016), Magistrate Judge Burke imposed deadlines on both parties to narrow their respective lists of asserted claims and invalidity references.  On the same day he entered the scheduling order, Judge Burke entered an order requiring the plaintiffs to narrow the number of asserted claims (from their previously served infringement contentions) to no more than 36 claims over the four patents-in-suit by September 30, 2016 (the same date that the plaintiffs were required to produce their initial claim chart that compares each known accused product to the asserted claims).    

Judge Sleet Denies Motion to Dismiss for Lack of Subject Matter Jurisdiction
In AstraZeneca AB v. Aurobindo Pharma Ltd., et al., C.A. No. 14-664-GMS (D. Del. Sept. 15, 2016), Judge Sleet denied defendants Wockhardt BIO AG and Wockhardt USA LLC’s (collectively “Wockhardt”) motion to dismiss for lack of subject matter jurisdiction.  In the motion to dismiss, Wockhardt noted that it had amended the certification included in its ANDA submission, converting it from a Paragraph IV certification to a Paragraph III certification.  In light of this amendment, Wockhardt claimed that the parties were no longer engaged in a “highly artificial act of infringement” because Wockhardt only sought approval of its ANDA following the expiration of the patent at issue.  Because Wockhardt was no longer challenging the patent at issue, Wockhardt argued that the Court lacked subject matter jurisdiction over the claims of infringement.

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