Delaware Intellectual Property Law Update

February 3, 2016

Publication| Intellectual Property

In this edition of the Richards, Layton & Finger Patent Law Update, we discuss decisions and hearings of note from the District of Delaware from the past few weeks.  If you have questions about any of the decisions listed below or the District of Delaware in general, please let us know.

Judge Andrews Grants Defendants’ Summary Judgment Motion on Damages but Denies Summary Judgment Motions of Non-Infringement and Invalidity
In M2M Solutions LLC v. Motorola Solutions, Inc., et al., C.A. No. 12-33-RGA, (D. Del. Jan. 6, 2016), Judge Andrews granted the defendants’ motion for summary judgment related to damages, but denied the defendants’ motions for summary judgment of non-infringement and invalidity. On the issue of infringement, Judge Andrews rejected the defendants’ argument that the patent-in-suit failed to properly claim functional capability. The defendants argued that the patent covered only “structures” not inherently contained within the product and required “method steps” that the plaintiff could not prove occurred. The defendants pointed to the inclusion of language such as “sent from” and “received by” in the processing module limitation of claim 1 as evidence that the claims only covered events that are necessary before claim limitations are met.

Judge Robinson Denies Defendant’s Motion to Transfer Venue and Motion to Dismiss
In CR Bard Inc. et al v. AngioDynamics Inc., C.A. No. 1-15-cv-00218 (D. Del. Jan. 12, 2016), Judge Robinson denied the defendant’s motion to transfer to the District of Utah.  Even though the defendant was incorporated in Delaware, the defendant argued that Delaware was not “home turf” for either party, and that the District of Utah should be the preferred forum for the lawsuit in light of a similar case already pending there.  The defendant also asserted that the relative finances of each party favored transfer, as well as the amount of product sold in Utah and the location of the witnesses and evidence.

Judge Robinson Invalidates Patent
In Motivation Innovations, LLC v. Petsmart, Inc., C.A. No. 13-957-SLR (D. Del. Jan. 12, 2016), Judge Robinson granted the defendant’s motion for judgment on the pleadings and declared the plaintiff’s patent invalid under 35 U.S.C. § 101.  In holding the patent invalid, Judge Robinson found that the patent was directed toward the abstract idea of “using coupons to provide discounts.”  Judge Robinson rejected the plaintiff’s attempt to add limitations to how the patented method worked, finding that the limitations did not detract from the fact that the ultimate function of the patent is the “use and redemption of coupons.” 

Judge Stark Considers Indefiniteness at Markman and Refuses to Strike Claim Construction Brief
In Forest Laboratories, Inc. v. Teva Pharmaceuticals USA, Inc., C.A. No. 14-121-LPS (D. Del. Jan 5, 2016), Judge Stark issued a memorandum opinion construing the terms in eight patents.  Before addressing the disputed terms, Judge Stark began by denying the plaintiffs’ motion to strike the defendants’ reply claim construction brief and supporting declaration.  The plaintiffs argued that the brief and declaration contained new opinions and arguments that were not present in the defendants’ opening brief, and the declaration contained issues that were outside the scope of the stipulation entered into by the parties to only include “expert witness issues” in the reply claim construction briefs.   Judge Stark found that “both sides delayed in providing their full arguments to one another during the process leading to the claim construction hearing” and denied the plaintiffs’ motion to strike but allowed plaintiffs to file a surreply. 

Judge Robinson Allows Plaintiffs to Add Inducement Claim
In Teijin Limited v. Roxane Labs, Inc., C.A. No. 14-189-SLR (D. Del. Jan. 14, 2016), Judge Robinson granted the plaintiffs’ motion for leave to file a first amended complaint to add allegations of induced infringement.  The defendants opposed any amendment, arguing that the amendment would be futile since, contrary to the new claims, the defendants did not infringe the patent, they could not induce infringement under “settled Federal Circuit precedent,” and the patent claimed unpatentable subject matter.  Further, the defendants argued that the plaintiffs unduly delayed (for 20 months) in seeking to amend.

Judge Sleet Agrees to Handle Markman at Trial in ANDA Case
In Bayer Pharma AG v. Alembic Pharmaceuticals Limited, C.A. No. 15-832-GMS (D. Del. Jan. 7, 2016), the parties submitted competing scheduling proposals in an ANDA case.  

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