Delaware Intellectual Property Law Update

November 11, 2015

Publication| Intellectual Property

Welcome to the inaugural edition of the electronic Richards, Layton & Finger Patent Law Update. This update will provide short updates on certain judicial decisions, trends, and notable events in the United States District Court for the District of Delaware, traditionally one of the three busiest jurisdictions for intellectual property litigation. We have had the pleasure of working with many of you on matters filed here, and we hope this update will allow you to stay abreast of the recent developments in Delaware. 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 Decides Motions in Limine

In Reckitt Benckiser Pharms. Inc., et al., v. Watson Labs. Inc., et al., C.A. No. 13-1674-RGA (D. Del. Oct. 26, 2015), Judge Andrews decided two motions in limine directed to: (1) the admissibility of expert testimony that was cumulative of a party’s previously offered expert testimony, and (2) an expert’s reliance on inadmissible hearsay.

Magistrate Judge Burke Recommends Denial of Motion to Dismiss
In Elm 3DS Innovations, LLC v. SK Hynix Inc. et al, C.A. No. 13-1674-RGA (D. Del. Oct. 26, 2015), C.A. No. 14-1432-LPS-CJB (D. Del. Oct. 16, 2015), Magistrate Judge Burke recommended that defendants’ motion to dismiss claims of pre-suit induced infringement be denied in a decision labeled a “very close call.” While defendants argued that plaintiff failed to plead facts sufficient to demonstrate the requisite pre-suit knowledge and intent, the court pointed to (1) the combination of the surrounding circumstances described in plaintiff’s complaint, and (2) allegations that the patent-in-suit was well-known and often referenced in the semiconductor industry as fact, making it plausible that defendants might have been aware of the patent when issued.

Magistrate Judge Fallon Considers Motions to Dismiss and Strike
In Courtesy Prods. LLC v. Hamilton Beach Brands, Inc., C.A. No. 13-2012-SLR-SRF (D. Del. Oct. 20, 2015), Magistrate Judge Fallon considered a motion to dismiss plaintiff’s willful infringement claims and a motion to dismiss defendant’s inequitable conduct defense and counterclaim. Judge Fallon recommended denying defendant’s renewed motion to dismiss plaintiff’s willful infringement claims and granting plaintiff’s motion to dismiss and strike defendant’s inequitable conduct counterclaim and defense (with leave to amend).

Judge Andrews Denies Motion for Attorneys’ Fees
In TruePosition, Inc. v. Polaris Wireless, Inc., C.A. No. 12-646-RGA (D. Del. Oct. 19, 2015), Judge Andrews denied defendant’s 35 U.S.C. § 285 motion for attorneys’ fees. Although defendant, the prevailing party in the underlying case, argued that fees were appropriate because of improper motivation, frivolousness, and objective unreasonableness on the part of plaintiff, the court concluded that the case failed to qualify as “exceptional.”

Magistrate Judge Burke Excludes Expert Testimony
In W.L. Gore and Assoc., Inc. v. C.R. Bard, Inc., C.A. No. 11-515-LPS-CJB (Oct. 23, 2015), Magistrate Judge Burke considered defendants’ motion to exclude certain opinions of plaintiff’s damages expert on the grounds that the expert’s opinion on a reasonable royalty rate was based on a conversation that she had with plaintiffs’ technical expert on infringement. Plaintiff’s damages expert opined that the parties would have come to a 15 percent royalty rate had they negotiated for a license of the patents-in-suit. In arriving at this conclusion, the expert used a previously negotiated royalty rate for a patent (the “Goldfarb patent”) that had a “high degree of comparability” to the patents-in-suit. In her deposition, plaintiff’s damages expert stated that the basis for her conclusion that the Goldfarb patent was similar to the patents-in-suit was a conversation that she had with plaintiff’s technical expert. Defendants argued that because the technical expert had not provided an opinion as to the similarity between the Goldfarb patent and the patents-in-suit in his expert report or deposition, it was improper for the damages expert to base her opinion on the conversation she had with the technical expert on these similarities.

Save the Date
Please save the date for the second Bench and Bar Conference sponsored by the District Court and the Delaware Section of the Federal Bar Association. The event is scheduled for May 19-20, 2016, at the Chase Center in Wilmington, Delaware, and, consistent with last year’s event, we expect many exciting insights from the federal judiciary on intellectual property litigation.

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