Delaware Intellectual Property Law Update

January 5, 2016

Publication| Intellectual Property

In this edition of the electronic 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 any questions about any of the decisions listed below or the District of Delaware in general, please let us know.

Judge Robinson Rules on Motions in Limine

In Takeda Pharmaceuticals USA, Inc. v. Par Pharmaceutical Companies Inc., et al., C.A. Nos. 13-1524-SLR, 13-1279-SLR, 14-268-SLR (D. Del. Nov. 24, 2015), Judge Robinson granted two pretrial motions in limine brought by plaintiff to exclude testimony of defendants’ experts and denied a motion in limine to exclude one of plaintiff’s infringement theories.Read More >>

W.L. Gore & Assocs. v. C.R. Bard, Part One: Chief Judge Stark Rules on Motions in Limine and Pretrial Order Disputes

Chief Judge Stark addressed six motions in limine and various disputes raised in the pretrial order in W.L. Gore & Associates, Inc. v. C.R. Bard, Inc., et al., C.A. No. 11-515-LPS (D. Del. Nov. 24, 2015). Among Chief Judge Stark’s various rulings, the Court held that evidence of the European Patent Office’s rejection of plaintiff’s patent application (related to the patent-in-suit) would be excluded under Federal Rule of Evidence 403… Read More >>

W.L. Gore & Assocs. v. C.R. Bard, Part Two: Chief Judge Stark Rules on Daubert and Summary Judgment Issues

Chief Judge Stark issued an order on a number of related motions, further narrowing the parties’ issues for trial in W.L. Gore & Associates, Inc. v. C.R. Bard, Inc., et al., C.A. No. 11-515-LPS. First, the Court granted in part and denied in part defendants’ motion to strike the supplemental expert report of plaintiff’s technical expert, Dr. Enrique Criado, regarding comparable technologies of the Goldfarb patent and the patents-in-suit. Read More >>

Prejudice Is Key in Judge Andrews’ Decisions on Motions in Limine

In Reckitt Benckiser Pharmaceuticals, Inc., et al. v. Watson Laboratories, Inc. et al., C.A. No. 13-1674-RGA (Cons.) (D. Del. Nov. 25, 2015), Judge Andrews denied a motion in limine by Par Pharmaceutical, Inc. (“Par”) to preclude plaintiffs’ expert testimony on the doctrine of equivalents, which was raised in plaintiffs’ opening expert report in a one-sentence conclusory footnote. Read More >>

Magistrate Judge Thynge Grants Google’s Motion for Summary Judgement of Invalidity Under 35 U.S.C. § 101

In Collarity, Inc. v. Google Inc., C.A. No. 11-1103-MPT (D. Del. Nov. 25, 2015), Magistrate Judge Thynge granted Google Inc.’s motion for summary judgment of invalidity of the asserted claims under 35 U.S.C. § 101, concluding that plaintiff’s asserted claims were directed to a patent-ineligible abstract idea and lacked an inventive concept.Read More >>

Judge Andrews Dismisses Contributory Infringement and Accelerates Infringement Contentions

In Tailstream Technologies LLC v. TeraRecon Inc., C.A. No. 15-625-RGA (D. Del. Nov. 30, 2015), Judge Andrews determined that concerns over the sufficiency of plaintiff’s induced infringement claims would be remedied by the proposed “supplemental” complaint. Read More >>

Judge Andrews Grants Prosecution Bar and Rules on Source Code Issues Raised in Protective Order

Presented with a protective order dispute in Acceleration Bay LLC v. Activision Blizzard, Inc. et al., C.A. No. 15-228-RGA (D. Del. Dec. 1, 2015), regarding the scope of a post-grant prosecution bar and restrictions on source code review, Judge Andrews ruled in a short order that all of defendants’ proposals should be adopted. Read More >>

Judge Andrews Denies Written Description Defense at Motion to Dismiss Stage

In Blackbird Tech LLC v. Service Lighting and Electrical, C.A. No. 15-53-RGA (D. Del. Dec. 1, 2015), Judge Andrews denied defendants’ motion to dismiss on the basis that the claims of the patent-in-suit were invalid for lack of written description. Read More >>

Judge Andrews Denies Motion to Dismiss Under Former Fed. R. Civ. P. Form 18

In Blackbird Tech LLC v. Inc., et al., C.A. No. 15-60-RGA (D. Del. Dec. 3, 2015), Judge Andrews denied defendants’ motion to dismiss that the complaints did not plausibly assert infringement since the accused products (shown by screen shots in the complaint) did not infringe the asserted patent. Read More >>

Magistrate Judge Burke Denies Stay Pending Inter Partes Review

In Toshiba Samsung Storage Technology Korea Corp. v. LG Electronics, Inc., C.A. No. 15-691-LPS-CJB (D. Del. Dec. 3, 2015), Magistrate Judge Burke continued the Court’s trend of declining to grant stays pending inter partes review (“IPR”) until the Patent Trial and Appeal Board (“PTAB”) determined whether to initiate IPR proceedings. Read More >>

Chief Judge Stark Provides Joint Defense Group Access to Plaintiff’s Confidential Information and Equates Plaintiff’s Settlement Counsel with Defendants’ In-House Counsel

In Elm 3DS Innovations, LLC v. Samsung Electronics Co., Ltd., et al., C.A. Nos. 14-1430-LPS-CJB, 14-1431-LPS-CJB, 14-1432-LPS-CJB (D. Del. Dec. 4, 2015), Chief Judge Stark ruled on two protective order disputes. First, he ruled that defendants, who were operating as a joint defense group, could share plaintiff’s confidential information and processes within the group. Read More >>

Judge Robinson Stays Antitrust Counterclaims Pending Patent Infringement Case

In Intellectual Ventures I, LLC, et al. v. Toshiba Corporation, C.A. No. 13-453-SLR-SRF (D. Del. Dec. 9, 2015), Judge Robinson ordered that a stay of defendant’s antitrust counterclaims must remain in place until plaintiffs’ patent infringement claims were resolved. Read More >>

Chief Judge Stark Requires More than “Plain and Ordinary” Claim Constructions

In Data Engine Techs. LLC v. Google Inc., C.A. No. 14-1115-LPS (D. Del. Dec. 10, 2015), Chief Judge Stark issued an oral order requiring that plaintiff supplement its claim construction briefing by submitting “proposed constructions (i.e., not merely an unspecified ‘plain and ordinary meaning’) for each of the disputed claim terms for which it has not already provided a construction.”Read More >>

Chief Judge Stark Denies Motion to Stay Pending Inter Partes Review

In Greatbatch Ltd. v. AVX Corporation et al., C.A. No. 13-723-LPS (D. Del. Dec. 10, 2015), Judge Stark denied defendants’ motion to stay litigation pending: (1) appeal of a final written inter partes review (“IPR”) decision by the Patent Trial and Appeal Board (“PTAB”) that invalidated all but one claim of the patent-in-suit; and (2) resolution of a reissue application for the invalidated patent-in-suit. Read More >>

Chief Judge Stark Adopts Single Claim Construction Brief Format

In Intellectual Ventures I LLC, et al. v. AT&T Mobility LLC, et al., C.A. No. 13-1668-LPS (D. Del. Dec. 11, 2015), Chief Judge Stark by oral order granted the parties’ joint request to file up to 60 pages of opening and responsive Markman briefs per side, for a total of 240 pages, due to the number of patents-in-suit (12) and claim terms to be construed (24). Read More >>

  • 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.