Delaware Intellectual Property Law Update

March 17, 2016

Publication| Intellectual Property

Welcome to the latest edition of the electronic Richards, Layton & Finger Patent 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.

District of Delaware’s Second Bench & Bar Conference May 19 & 20
Registration is now open for the 2016 District of Delaware Bench & Bar Conference being held on May 19 and 20, 2016.  This year’s Bench and Bar Conference will be held at the Chase Center on the Riverfront.  Confirmed speakers include judges from the United States Court of Appeals for the Third and Federal Circuits; the United States District Courts for the Districts of Delaware, New Jersey, Eastern Pennsylvania, Western Pennsylvania, Eastern Texas, Northern Texas, and California; the United States Bankruptcy Court for the Districts of Delaware and the Southern District of New York; and nationally respected practitioners from public and private practice.  To register for the conference, please CLICK HERE.

Judge Andrews Denies Motion to Dismiss for Lack of Standing
In EMC Corporation, et al. v. Pure Storage, Inc., C.A. No. 13-1985-RGA (D. Del. Feb. 29, 2016), Judge Andrews denied Pure Storage, Inc.’s challenge to EMC Corporation’s (“EMC”) standing to sue for infringement.  Originally, the patents in suit were assigned by the co-inventors to Data Domain, Inc.  EMC acquired Data Domain, Inc. in 2009 (which later became New Data Domain) and engaged in a number of transfers and transactions through which the patents-in-suit were first licensed and assigned to EMC International Company (“EIC”) and subsequently, “all right, title and interest” in New Data Domain’s intellectual property was transferred to plaintiff EMC.

Judge Andrews Applies New Pleading Rules Retroactively to Motion to Dismiss Complaint for Direct Infringement
In RainDance Technologies, et al. v. 10X Genomics Inc., C.A. No. 15-152-RGA (D. Del. Mar. 4, 2016), Judge Andrews dismissed a complaint for patent infringement under “the post-December 1, 2015 direct infringement pleading standard.”  The complaint was filed on February 12, 2015 and amended on April 9, 2015.  The Court found that retroactive applicability of the new Federal Rules was properly within the Court’s discretion and, in this case, application “would be in the interest of justice.” 

Judge Robinson Denies Motion to Transfer And To Strike Preliminary Injunction Motion
In Hologic, Inc. and Cytyc Surgical Products, LLC v. Minerva Surgical, Inc., C.A. No. 15-1031-SLR (D. Del. Feb. 29, 2016), Judge Robinson denied the defendant’s motion to transfer venue and to strike Hologic, Inc.’s (“Hologic”) motion for preliminary injunction. 

Judge Robinson Grants New Trial
In Carrier Corp. v. Goodman Global, Inc. et al., C.A. No. 12-930-SLR (D. Del. Feb. 22, 2016), Judge Robinson “reluctantly” granted a motion for a new trial brought by the defendants (“Goodman”) based on: (1) improper statements made by the plaintiff regarding an indemnity provision in a purchase order between Goodman and the manufacturer of the infringing product; (2) improper statements about copying and comparing the standard for invalidating a patent to that of the termination of parental rights; and (3) conclusory testimony from the plaintiff’s expert that established the infringing product practiced the claim elements.

Judge Thynge Grants Summary Judgment on Defendants’ Licensing Defense
In, LLC v. Cequel Communications LLC et al., C.A. No. 13-855-MPT (D. Del. Mar. 1, 2016), Magistrate Judge Thynge granted summary judgment on the defendants’ license defense, thus barring the plaintiff’s infringement claims.  The defendants, cable operators with cable systems throughout the United States, successfully argued that each of the accused services were expressly licensed under ‘755 method patent at issue, and to any degree that the services was not licensed, the plaintiff’s infringement claims were nonetheless still exhausted in light of the license held by the defendants’ respective suppliers, Cisco and ARRIS.  

Judge Sleet Denies Motion to Dismiss and Comments on Defendants’ Frustrated Attempt to Collect Fees
In f’real Foods LLC v. Hamilton Beach Brands Inc. et al., C.A. No. 14-1270-GMS (D. Del. Feb. 26, 2016), Judge Sleet granted the plaintiff’s motion for voluntary dismissal of counts I-IV in the underlying complaint, and denied the defendants’ motion for partial dismissal for lack of standing.  

Judge Andrews Resolves Jury Instruction Dispute
In EMC Corporation, et al. v. Pure Storage Inc., C.A. No. 13-1985-RGA (D. Del. Feb. 29, 2016), Judge Andrews granted Plaintiffs’ motion for summary judgment of infringement as to certain claims of the ‘015 Patent against Pure Storage Inc. (“Pure”).  In light of disagreements over the proposed jury instruction on the Court’s finding of infringement, the Court ruled on February 26, 2016, that a jury instruction on the infringement would properly be described as “agreed” upon, since in fact Pure had agreed to stipulate to the infringement.  Plaintiffs had argued for a jury instruction that stated that the Court had “determined that Pure’s products directly infringed the asserted claims.”  Judge Andrews decided not to tell the jury that the Court had “ruled against Pure,” as that would not be fair to Pure.  


  • 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.