Delaware Intellectual Property Law Update

August 18, 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 Denies Motion for Preliminary Injunction in Trademark Case
In Healthbox Global Partners, LLC v. Under Armour, Inc., C.A. No. 16-146-SLR (D. Del. July 19, 2016), a reverse-confusion trademark infringement, unfair competition, and dilution case, Judge Robinson denied the motion for a preliminary injunction filed by the plaintiff, Healthbox Global Partners, LLC (“Healthbox Global”).  Healthbox Global holds the “Healthbox” trademark for use in advisory and funding services in the healthcare industry.  The defendant, Under Armour, Inc. (“Under Armour”), later began using the “UA Healthbox” mark for the marketing and sale of electronic fitness devices packaged in a box, prompting the litigation.

Judge Sleet Denies Motion to Transfer Under Section 1404(A)
In Bristol-Myers Squibb Co. v. Merck & Co., C.A. No. 14-1131 (D. Del. July 13, 2016), Judge Sleet denied plaintiffs Bristol-Myers Squibb Co., E. R. Squibb & Sons, L.L.C., Ono Pharmaceutical Co., Ltd., and Tasuku Honjo’s (collectively, “Movants’”) motion to transfer to Delaware a nonjoinder of inventorship case pending in the District of Massachusetts.  The Massachusetts litigation involved patents at issue in three infringement actions currently pending in the District of Delaware.  Judge Sleet was asked to decide the unique issue when the judge overseeing the Massachusetts litigation had ordered Movants—defendants in the Massachusetts action, but plaintiffs in the Delaware actions—to ask the court in Delaware to resolve their motion to transfer because of the possibility of substantial overlap in the facts among the cases.

Judge Sleet Awards Over $900,000 in Fees for Exceptional Case
In Inventor Holdings, LLC v. Bed Bath & Beyond Inc., C.A. No. 14-448-GMS (D. Del. July 14, 2016), Judge Sleet awarded $931,903.45 in fees to the defendant, Bed Bath & Beyond Inc. (“Bed Bath & Beyond”), over objections of the plaintiff, Inventor Holdings, LLC (“Inventor Holdings”).  The Court had earlier concluded that the case was exceptional under Section 285.

Chief Judge Stark Denies Motion for Summary Judgment of Laches
In W.L. Gore & Associates, Inc. v. C.R. Bard, Inc., C.A. No. 11-515-LPS (D. Del. July 27, 2016), Chief Judge Stark adopted Magistrate Judge Burke’s report and recommendation that C.R. Bard, Inc. and Bard Peripheral Vascular, Inc.’s (collectively, “Bard”) motion for summary judgment of laches be denied.  Judge Burke had concluded that genuine issues of material fact existed to rebut the presumption of laches arising from plaintiff W.L. Gore and Associates, Inc.’s (“Gore”) delay in bringing suit. 

Judge Robinson Partially Grants Request for Costs
In Apeldyn Corp. v. Sony Corp. and Apeldyn Corp. v. Samsung Electronics Co., C.A. Nos. 11-440-SLR/SRF and 11-581-SLR/SRF (D. Del. July 27, 2016), Judge Robinson granted in part the defendants’ motion to review the clerk’s taxation of costs, awarding $28,296.38 in costs for depositions and electronic discovery. 

Judge Robinson Denies Motion to Reconsider Denial of Transfer
In Scientific Telecommunications LLC v. ADTRAN, Inc., C.A. No. 15-647-SLR (D. Del. July 25, 2016), Judge Robinson denied defendant ADTRAN, Inc.’s (“ADTRAN”) motion to reconsider the denial of its motion to transfer venue or to certify the order denying transfer for interlocutory appeal.

Chief Judge Stark Limits Access to Confidential Information to Legal Counsel 
In Cosmo Technologies Ltd. v. Lupin Ltd., C.A. No. 15-669-LPS (D. Del. July 28, 2016), a protective order dispute, Chief Judge Stark adopted the plaintiffs’ definition of “legal personnel” and denied the defendants’ request to extend the default time period under which plaintiffs should search for responsive documents. 

Magistrate Judge Burke and Chief Judge Stark Allow Early Claim Construction of One Term
In Mastercool Inc. v. Irwin Industrial Tool Company, C.A. No. 15-1146-LPS-CJB (D. Del. July 22, 2016), Magistrate Judge Burke granted Irwin Industrial Tool Company’s (“Irwin Industrial”) motion to amend the scheduling order to allow for early claim construction of one term and set a date for an early claim construction hearing with Chief Judge Stark (preceded by ten-page opening briefs and five-page answering briefs).  

Magistrate Judge Burke Compels More Detail in Infringement Contentions
In Princeton Digital Image Corp. v. Konami Digital Entertainment Inc., C.A. No. 12-1461-LPS-CJB (D. Del. Aug. 4, 2016), Magistrate Judge Burke compelled the plaintiff, Princeton Digital Image Corp. (“Princeton Digital”), to supplement its initial infringement contentions to provide greater specificity.  Judge Burke ordered Princeton Digital to serve separate infringement contentions for each of the mobile games accused of infringement and to supplement its initial infringement contentions to “more clearly set out what aspects of the accused products are said to relate to which elements of the referenced portion of the claim that is at issue” within two weeks. 

Judge Sleet Grants Motion for Judgment on the Pleadings Under Alice
In VideoShare LLC v. Google Inc., C.A. No. 13-990-GMS (D. Del. Aug. 2, 2016), Judge Sleet granted the motion for judgment on the pleadings filed by the defendants, Google, Inc. and YouTube, LLC, invalidating the two patents at issue under Section 101 for claiming patent-ineligible subject matter.  

Judge Sleet Sua Sponte Strikes Letter Requesting Teleconference
In Gilead Sciences, Inc. v. AbbVie, Inc., C.A. Nos. 13-2034-GMS, 14-209-GMS, and 14-379-GMS (D. Del. July 22, 2016), Judge Sleet issued an oral order striking a joint letter by the parties requesting a teleconference to discuss the order of proof at trial, stating that “the Court will no longer accept communications of this type from the parties.”

Judge Sleet Notes Challenges in Trying Antitrust and Patent Claims Together
In Nespresso USA, Inc. v. Ethical Coffee Company SA, C.A. No. 16-194-GMS (D. Del. July 20, 2016), Judge Sleet, during a scheduling conference, highlighted the challenges involved in trying antitrust claims with patent claims.  The defendant, Ethical Coffee Company SA, joined by counterclaim-plaintiff Ethical Coffee Corporation, argued that because the antitrust issues were tied to the patent issues due to overlapping technology and parties, proceeding with the infringement claims and antitrust counterclaims together would be more efficient.  Judge Sleet stated that he was reluctant to try the antitrust counterclaims with the patent claims, noting that “[t]he antitrust doctrine is difficult, more inextricably bound up in the fact-finding process, the economic concepts, they are difficult to comprehend . . . even for lawyers sometimes.”  The Court further noted that such claims rarely go to trial. 

  • sign up for our newsletter

    To keep our clients and friends updated on the latest legal news, Richards Layton distributes practice area e-alerts and newsletters. If you are interested in receiving these publications, please subscribe below.