Delaware Intellectual Property Law Update

September 1, 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 Andrews Grants Motion for Judgment on the Pleadings Under Section 101
In Two-Way Media Ltd. v. Comcast Cable Communications, LLC, et al., C.A. Nos. 14-006 and 14-1212 (D. Del. Aug. 15, 2016), Judge Andrews granted in part the defendants’ motion for judgment on the pleadings pursuant to 35 U.S.C. § 101, finding four of the five patents-in-suit ineligible and dismissing as moot the fifth patent due to a stipulation of dismissal by the parties as to that patent.  The Court rejected the plaintiff’s argument that claim construction must occur prior to deciding a motion on Section 101 grounds, and held that resolution of a Section 101 motion at the pleading stage is appropriate if claim construction is unnecessary or if “no reasonable construction” would bring the claims within patent eligible subject matter.  For purposes of the motion, Judge Andrews adopted the plaintiff’s proposed constructions.  

Chief Judge Stark Clarifies His Order Granting Summary Judgment of Non-Infringement
In Cronos Technologies LLC v. Expedia Inc., C.A. No. 13-1538-LPS (D. Del. Aug. 15, 2016), Chief Judge Stark clarified the reasoning for his order granting Expedia’s motion for summary judgment of non-infringement.  The Court initially granted the motion for summary judgment on July 22, 2016, following briefing, oral argument, and supplemental briefing addressing claim construction.  In his July 22 Order, Chief Judge Stark construed the terms at issue and then, based upon those constructions, found that Cronos did not have sufficient evidence from which a reasonably jury could find infringement.  The Court recognized, however, that it was possible that Cronos could persuade the Court that it should be permitted to present new evidence or theories in light of the Court’s new constructions.

Chief Judge Stark Issues Post-Trial ANDA Decision
In UCB, Inc. v. Accord Healthcare, Inc., C.A. No. 13-1206-LPS (D. Del. Aug. 12, 2016), Chief Judge Stark issued a post-trial decision following an ANDA trial held in December 2015.  The Court began its 96-page opinion setting forth 54 pages of findings of fact.  The Court noted that Accord Healthcare, Inc. had stipulated to infringement and relied solely on a defense of invalidity.  Accord sought to prove at trial that the asserted claims were invalid for obviousness-type double patenting, obviousness, anticipation, indefiniteness, and/or improper reissue.  Chief Judge Stark found that Accord failed to prove that any of the asserted claims of the patents-in-suit were invalid.  Regarding obviousness-type double patenting, the Court recognized that it was an appropriate challenge, due to the patents having the same inventor and the earlier patent not serving as prior art for the latter, but held that the claims were “patentably distinct” and not invalid due to double patenting.

Judge Robinson Denies Summary Judgment but Grants Adverse Inference Regarding Infringement
In Intellectual Ventures I LLC v. Ricoh Americas Corp., C.A. No. 13-474-SLR/SRF (D. Del. Aug. 17, 2016), Judge Robinson issued an order in response to the parties’ ongoing dispute about documents held by Ricoh’s Japanese parent company and on cross-motions for summary judgment.  Intellectual Ventures had tried—unsuccessfully—to collect the parent company’s documents; first, by asking that Ricoh voluntarily produce them and, when they were denied access, by issuing Letters Rogatory, which were denied by the Japanese Ministry of Foreign Affairs.  After undertaking these efforts, Ricoh disclosed to Intellectual Ventures that it had a Technical Assistance Agreement (the “TAA”) with its Japanese parent, which mandated that the parties share information that will assist in the defense of lawsuits, such as the Delaware action. 

Chief Judge Stark Denies Parties’ Motions to Strike Expert Reports
In Masimo Corp. v. Phillips North America Electronics Corp., et al., C.A. Nos. 09-80 and 11-742 (D. Del. Aug. 15, 2016), Chief Judge Stark denied both parties’ motions to strike various expert reports.  First, the Court denied the plaintiff’s motion to strike portions of the defendants’ reply expert report.  The plaintiff argued that the defendants had violated a previous order of the Court that permitted the defendants to submit a reply report in response to a revised disclosure of the plaintiff’s expert, Kiani.  While Chief Judge Stark concluded that the reply report was actually a response to another of the plaintiff’s experts, McNames, he concluded that, because McNames had relied on the revised Kiani disclosure, it was “not entirely unreasonable” for the defendants to wait until service of that disclosure before serving the reply expert report.  

Judge Andrews Denies Motions to Exclude Expert Witnesses in a Bench Trial
In Novartis Pharmaceuticals Corp. & Novartis AG v. Breckenridge Pharmaceutical Inc., et al., C.A. Nos. 14-1043, 14-1196, and 14-1289 (D. Del. Aug. 18, 2016), Judge Andrews denied the parties’ motions to exclude each other’s expert witnesses.  Noting that a judge’s role as a “gatekeeper” is not as critical in a bench trial, Judge Andrews found that “[l]ive testimony and cross-examination are much more likely to result in a correct decision from me about whether the experts are giving appropriate scientific testimony.”  Thus, Judge Andrews reserved both side’s rights to renew their objections to the expert testimony at the appropriate time during trial.

Chief Judge Stark Denies Plaintiff’s Motion for Sanctions 
In W.L. Gore & Associates, Inc. v. C.R. Bard Inc. and Bard Peripheral Vascular, Inc., C.A No. 11-515 (D. Del. July 27, 2016), Chief Judge Stark denied the plaintiff’s motion for sanctions against the defendants.  In its motion, the plaintiff alleged that, on the morning of trial, the defendants contended that they had recently found a previously unknown and potentially relevant report (the “Teece Report”) from a Maryland and Missouri tax proceeding involving the plaintiff.  The uncovering of this report led to a continuance of trial.  Upon further investigation, the plaintiff found that the defendants had prior knowledge of the Teece Report and had in fact used the Teece Report in a case against the plaintiff in 2009 in an Arizona federal court. 

Judge Andrews Dismisses Request for Attorneys’ Fees Without Prejudice
In Sprint Commc’ns Co. L.P. v. Comcast Cable Commc’ns, LLC, et al., C.A. No. 12-1013-RGA (D. Del. Aug. 18, 2016), Judge Andrews dismissed without prejudice the defendants’ motion to declare the case exceptional and extended the deadline for the defendants to file a renewed motion to 30 days from the Federal Circuit’s decision on the pending appeal of the underlying patent infringement suit.  Although the jury in the underlying litigation entered a verdict for the plaintiffs, finding that the defendants infringed the patents at issue and awarding the plaintiffs $27.6 million in damages, the Court later granted the defendants’ motion for judgment as a matter of law.  The plaintiffs subsequently appealed to the Federal Circuit.  

Judge Robinson Denies Motion to Dismiss for Lack of Personal Jurisdiction
In Pfizer Inc., et al. v. Mylan Inc., et al., C.A. No. 15-960-SLR (D. Del. Aug. 12, 2016), Judge Robinson denied the defendants’ motion to dismiss for lack of personal jurisdiction as to defendants Mylan Pharmaceuticals (“MPI”) and Mylan Laboratories Ltd. (“MLL”) and denied the motion to dismiss without prejudice for improper venue and failure to state a claim.  Judge Robinson granted the plaintiffs’ request for jurisdictional discovery as to defendants Mylan Inc. and Mylan N.V. in light of the plaintiffs’ claims that the two defendants were subject to personal jurisdiction under an agency theory. 

Chief Judge Stark Rules from the Bench on Certain Case Dispositive Motions and Motion for Sanctions, Reserves Decision on Others
In MAZ Encryption Techs. LLC v. BlackBerry Corp., C.A. No. 13-304-LPS (D. Del. Aug. 17, 2016), Chief Judge Stark heard oral argument on several case dispositive motions, a Daubert motion, and a motion for sanctions.  After a brief recess, he ruled from the bench on several of the motions.  First, Chief Judge Stark denied BlackBerry’s motion for summary judgment of invalidity due to obviousness.  He found there was a genuine issue of material fact as to whether a person of ordinary skill in the art would have had motivation to combine two prior art references (from which all claim elements allegedly were disclosed) and whether such a person would have a reasonable expectation of success.  He noted that the obviousness defense was “quite strong” but that the factfinder (the jury) should be given the chance to decide those issues.  

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