Delaware Intellectual Property Law Update

April 3, 2018

Publication| Intellectual Property

Welcome to the latest edition of the Richards, Layton & Finger Intellectual Property Law Update. As always, if you have questions about any of the decisions listed below or the District of Delaware in general, please let us know.

District of Delaware Bench & Bar Conference Registration Now Open 
The Delaware Chapter of the Federal Bar Association has announced that the District of Delaware Bench & Bar Conference will take place on May 3 and 4, 2018, at the Hotel du Pont.  The conference will feature general plenary programs as well as bankruptcy, criminal, employment, and IP panel discussions.  Speakers and panelists include judges from the United States Courts of Appeal for the Third and Federal Circuits, as well as the United States District Courts for the Districts of Delaware, California, Texas, New Jersey, and Pennsylvania.
Registration Information >>

Magistrate Judge Fallon Denies Request to Re-Assign Case
In Kelly Services, Inc. v. Kelly & Associates Financial Services, Inc., No. 16-408-JFB-SRF (D. Del. Feb. 26, 2018), a trademark case, Magistrate Judge Fallon denied the plaintiffs’ unopposed request to re-assign the case to another judge.  The basis for the plaintiffs’ request was that Judge Fallon had conducted a mediation with the parties in which “substantive” matters had been disclosed.        

Magistrate Judge Burke Grants in Part Motion to Stay Pending Inter Partes Review
In Foundation Medicine, Inc. v. Guardant Health, Inc., No. 17-807-LPS-CJB (D. Del. Feb. 15, 2018), Magistrate Judge Burke granted in part the plaintiff’s motion to stay pending inter partes review of the defendant’s three IPR petitions.  

Chief Judge Stark Finds Patent Not Enabled on Renewed Motion for Judgment as a Matter of Law
In Idenix Pharmaceuticals LLC v. Gilead Sciences, Inc., No. 14-846-LPS (D. Del. Feb. 16, 2018), Chief Judge Stark granted the defendant’s motion for judgment as a matter of law that the asserted patent was not enabled.  The plaintiffs, Idenix Pharmaceuticals LLC and Universita Degli Studi di Cagliari (together, “Idenix”), sued the defendant, Gilead Sciences, Inc., for infringement of a patent covering a treatment for Hepatitis C. 

Judge Andrews Overrules Objections to Special Master’s Order Finding Litigation Financing Communications Not Privileged
In Acceleration Bay LLC v. Activision Blizzard, Inc., No. 16-453-RGA (D. Del. Feb. 9, 2018), Judge Andrews overruled objections to a special master’s order compelling production of emails that had been withheld as privileged between the plaintiff, Acceleration Bay LLC, and a litigation financing company.  Acceleration Bay resisted production on three bases: the work-product doctrine, the common-interest privilege, and relevance.  

Judge Andrews Invalidates Patent Under Section 101
In D&M Holdings Inc. v. Sonos, Inc., No. 16-141-RGA (D. Del. Feb. 20, 2018), Judge Andrews granted summary judgment that one of the patents asserted by the plaintiffs was invalid under 35 U.S.C. § 101 as directed to ineligible subject matter. The patent at issue claimed a method of recalling previous audio preferences when playing a recording.      

Judge Andrews Grants Summary Judgment of No Willful Infringement and No Enhanced Damages
In Ansell Healthcare Products LLC v. Reckitt Benckiser LLC, No. 15-915-RGA (D. Del. Jan. 30, 2018), Judge Andrews granted Reckitt Benckiser LLC’s motion for summary judgment of no willful infringement and no enhanced damages.      

Magistrate Judge Burke Orders Narrowing of Claims and Prior Art
In Thermo Fisher Scientific Inc. v. Agilent Technologies, Inc., No. 17-600-LPS-CJB (D. Del. Feb. 5, 2018), Magistrate Judge Burke ordered the parties to reduce in two stages the number of asserted claims and prior art combinations involving the three asserted patents.    

Chief Judge Stark Orders that Voluntary Dismissal Be with Prejudice
In Wi-Lan Inc. v. Sharp Electronics Corp., No. 15-379-LPS (D. Del. Sept. 22, 2017, unsealed Feb. 15, 2018), Chief Judge Stark denied the plaintiff’s request that its voluntary dismissal under Fed. R. Civ. P. 41(a)(2) of one of the asserted patents be without prejudice and that each party bear its own fees and costs.     

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