Delaware Intellectual Property Law Update

December 19, 2017

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.

Judge Andrews Denies Request to Strike Daubert Briefing 
In B. Braun Melsungen AG v. Becton, Dickinson & Co., No. 16-411-RGA (D. Del. Dec. 5, 2017), Judge Andrews refused a request to strike the plaintiffs’ Daubert briefing for having an excessive number of pages.  The plaintiffs had filed three Daubert motions, each accompanied by a 20-page brief.

Chief Judge Stark Denies Motion to Dismiss for Improper Venue with Leave to Renew Following Venue Discovery
In Javelin Pharmaceuticals, Inc. v. Mylan Laboratories Ltd., No. 16-224-LPS (D. Del. Dec. 1, 2017), Chief Judge Stark denied a motion to dismiss or transfer for improper venue filed by the defendants, Mylan Laboratories Limited, Mylan, Inc., and Mylan Pharmaceuticals Inc. (collectively, “Mylan”), but with leave to renew after the plaintiffs, Javelin Pharmaceuticals, Inc., Hospira, Inc., and Janssen Pharmaceutica N.V. (collectively, “Janssen”), have the opportunity to take venue discovery.

Chief Judge Stark Rules on Proceedings for Venue Discovery
In Bristol-Myers Squibb Co. v. Aurobindo Pharma USA Inc., No. 17-374-LPS (D. Del. Nov. 28, 2017), and Bristol-Myers Squibb Co. v. Mylan Pharmaceuticals Inc., No. 17-379-LPS (D. Del. Nov. 28, 2017), Chief Judge Stark set forth the procedures for venue-related discovery on defendant Mylan Pharmaceuticals Inc.’s motion to dismiss for improper venue.       

Magistrate Judge Fallon Recommends Court Transfer Action Because of Improper Venue
In Treehouse Avatar LLC v. Valve Corp., No. 15-427-JFB-SRF (D. Del. Nov. 20, 2017), Magistrate Judge Fallon recommended that the Court grant the defendant’s motion to dismiss or transfer the action to the Western District of Washington, where the defendant, Valve Corp., is incorporated and maintains its headquarters.  

Chief Judge Stark Denies Motion for Judgment on the Pleadings of Invalidity Under Section 101
In IBM v. Groupon, Inc., No. 16-122-LPS-CJB (D. Del. Nov. 17, 2017), Chief Judge Stark denied Groupon, Inc.’s motion for judgment on the pleadings that half of the asserted patents, covering the display of information from local storage, were invalid under Section 101. In a separate litigation, the Court had previously found under the first Alice step that the patents challenged here were directed to an abstract idea, but deferred ruling on whether they contained an inventive concept until after claim construction.

Magistrate Judge Fallon Denies Motion to Dismiss as Moot
In Telebrands Corp. v. 1ByOne Products Inc., No. 17-997-JFB-SRF (D. Del. Nov. 21, 2017), Magistrate Judge Fallon denied the defendant’s motion to dismiss for failure to state a claim as moot. After moving to dismiss, the defendant answered the complaint and asserted counterclaims for a declaratory judgment of invalidity and non-infringement of the two asserted patents as well as of a third patent.  

Judge Andrews Stays Case Pending ex Parte Re-Examination
In Waters Technologies Corp. v. Aurora SFC Systems, Inc., No. 11-708-RGA (D. Del. Nov. 13, 2017), Judge Andrews granted the defendant’s motion to stay pending ex parte re-examination. A scheduling conference had taken place a week before this decision, the motion was filed before the trial date was put in place, and the examiner’s finding that all asserted claims of one asserted patent were unpatentable was on appeal to the PTAB.  

Magistrate Judge Burke Recommends Denial of Motion to Dismiss for Invalidity Under Section 101
In Triplay, Inc. v. WhatsApp Inc., No. 13-1703-LPS-CJB (D. Del. Nov. 20, 2017), Magistrate Judge Burke recommended that the Court deny the defendant’s motion to dismiss two of the asserted electronic, cross-platform messaging patents as invalid under Section 101. The parties had agreed on representative claims from the two patents for the Section 101 analysis, and the plaintiff identified three elements located throughout the representative claims that it believed rendered the subject matter patent-eligible.

Judge Andrews Denies Request to Produce Settlement Agreement
In B. Braun Melsungen AG v. Becton, Dickinson & Co., C.A. No. 16-411-RGA (D. Del. Oct. 24, 2017), Judge Andrews denied the plaintiffs’ request to compel the defendants to produce a settlement agreement from an earlier litigation. Although the defendants argued that the settlement agreement was not responsive to any discovery requests, the plaintiffs claimed that the settlement agreement fell within the scope of discovery requests for documents “relating to Defendants’ licensing polices” and “relating to any license” concerning comparable technology.  

Chief Judge Stark Denies Defendants’ Motion to Stay and Plaintiff’s Motion for Leave to File a Seconded Amended Complaint
In Plastic Omnium Advanced Innovation & Research v. Donghee America, Inc., C.A. No. 16-187-LPS (D. Del. Oct. 27, 2017), Chief Judge Stark denied the defendants’ motion to stay the case pending inter partes review of several asserted patents. The Court noted that no IPR had yet been instituted, and at least one asserted patent was not challenged in any IPR. 

Judge Andrews Strikes Motion for Summary Judgment
In Janssen Pharmaceutica, N.V. v. Mylan Pharmaceuticals, Inc., No. 15-760-RGA-SRF (D. Del. Nov. 1, 2017), a Hatch-Waxman litigation, Judge Andrews struck the defendants’ motion for summary judgment of non-infringement. Judge Andrews stated that it is his practice not to permit motions for summary judgment in Hatch-Waxman cases without leave.  

Chief Judge Stark Denies Motion to Strike Invalidity Contentions
In IBM Corp. v. Groupon, Inc., No. 16-122-LPS (D. Del. Nov. 1, 2017), Chief Judge Stark denied the plaintiff’s motion to strike certain of the defendant’s invalidity contentions, since the references were disclosed before or on the deadline for the close of fact discovery and sufficient time remained to cure any prejudice without disrupting the trial schedule. 

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