Delaware Intellectual Property Law Update

July 12, 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 Clarifies Specifics of Fee Award under Section 285
In Vehicle Interface Technologies, LLC v. Jaguar Land Rover North America, LLC, C.A. No. 12-1285-RGA (D. Del. June 15, 2016), Judge Andrews analyzed the total fee amount requested by the prevailing party, Jaguar (whom he already determined was entitled to fees under 35 U.S.C. § 285), in light of the following five objections raised by Vehicle Interface (“VIT”): (1) fees incurred before Jaguar’s filing of summary judgment should not be recovered; (2) the fees should be limited to the forum rate; (3) the fees are unreasonable and include unrecoverable amounts; (4) recovery of costs is not authorized under Section 285; and (5) recovery of expert fees is not authorized under Section 285.

Judge Robinson Accepts in Part and Rejects in Part the Magistrate Judge’s Opinion on Motions to Dismiss
In Pfizer Inc. v. Mylan Inc., C.A. No. 15-26-SLR/SRF (D. Del. June 15, 2016), Judge Robinson mostly accepted Magistrate Judge Fallon’s Report and Recommendation on the defendants’ motion to dismiss, denying the motion as to the Mylan defendants (with leave to renew after jurisdictional discovery) and denying the motion as to defendant Agila with prejudice.  The defendants had moved to dismiss the ANDA action against them for lack of personal jurisdiction and failure to state a claim.  Although noting that “jurisdictional analysis in ANDA cases presents unique challenges,” Magistrate Judge Fallon found, and Judge Robinson agreed, that the court had specific jurisdiction over Agila because it “filed the ANDA and plans to market and sell its generic product throughout the United States, including in Delaware.”  As to the Mylan defendants, Magistrate Judge Fallon found that the complaint did not contain enough factual support to find jurisdiction over either as purported agents to Agila.  However, Magistrate Judge Fallon found that jurisdictional discovery should be permitted.  Judge Robinson agreed.  Further, Judge Robinson agreed with Magistrate Judge Fallon that the complaint contained sufficient factual allegations to state a claim for relief.

Judge Andrews Adopts Special Master’s Ruling on Motions to Strike
In Callwave Communications LLC v. AT&T Mobility, LLC, et al., C.A. No. 12-1701-RGA (D. Del. June 16, 2016), Judge Andrews adopted Special Master Yvonne Saville’s Report and Recommendation denying the parties’ cross-motions to strike the testimony of each other’s experts.  The plaintiff moved to strike the defendants’ invalidity expert from testifying regarding a theory first disclosed in the reply expert report.  Likewise, the defendants moved to strike the plaintiff’s infringement expert regarding a theory first disclosed in the reply expert report.  Judge Andrews began the opinion by finding that, as opposed to a procedural issue that would be reviewed for an abuse of discretion, this issue was nonprocedural because it involved the exclusion of evidence at trial; thus, the special master’s ruling would be reviewed de novo.  Judge Andrews then considered the plaintiff’s objections to the special master’s ruling, noting that the objections primarily discussed a “pattern of behavior” by the defendants and an “incurable prejudice” if the expert testimony was permitted. 

Judge Andrews Grants Request to Intervene
In MiiCs & Partners America, Inc., et al., v. Toshiba Corporation, et al., C.A. No. 14-803-RGA (D. Del. June 15, 2016), Judge Andrews granted the request by third party Samsung Display Company (“SDC”) to intervene.  SDC moved to intervene on the grounds that it was the manufacturer of modules contained in many of the defendants’ accused products and, if the defendants were found to have infringed, SDC would have to indemnify the defendants.  The plaintiffs objected to the motion to intervene on two grounds: (1) SDC’s interests were adequately represented by the existing defendants; and (2) SDC’s motion was untimely. 

Judge Sleet Grants Motion to Dismiss
In Teva Pharm. USA, Inc. v. Forest Labs., Inc., C.A. No. 13-2002-GMS (D. Del. June 16, 2016), Judge Sleet granted the plaintiffs’ motion to dismiss the defendants’ counterclaims and affirmative defenses, which the defendants had included for the first time in their answer to the plaintiffs’ first amended complaint.  Almost two years after filing the initial complaint, the plaintiffs filed their first amended complaint, adding Forest Pharmaceuticals as a defendant.  In response to the first amended complaint, the defendants added counterclaims and affirmative defenses for invalidity.  The plaintiffs argued that the defendants had “significantly amend[ed] its answer” after fact discovery had closed without seeking leave from the court.  Judge Sleet held that a response to an amended pleading could be filed without leave only where the amended complaint changed the scope of the case.  

Judge Sleet Denies Request to Reconsider Claim Construction
In NCR Corp. v. Documotion Research, Inc., C.A. No. 14-395-GMS (D. Del. June 16, 2016), Judge Sleet denied the defendant’s request to reconsider the construction of the term “single column” as having a plain and ordinary meaning, finding the request to be “an improper motion for reconsideration.”  Voicing his concern with the defendant’s “lack of regard for the court’s local rules,” Judge Sleet explained that the purpose of a motion for reconsideration was to “correct manifest errors of law or fact or to present newly discovered evidence.”

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