The most recent session of the Delaware General Assembly witnessed the passage of a few clean-up bills related to Delaware real estate mortgages. One, Senate Bill 32, was signed by Governor John Carney on August 30, 2017. This legislation requires that a mortgagee or assignee file a notification with the applicable recorder of deeds if the…

In Contour IP Holding, LLC v. GoPro, Inc., C.A. No. 15-1108-LPS-CJB (D. Del. July 6, 2017), Magistrate Judge Burke granted the defendant’s motion to transfer venue to the Northern District of California, the location of its principal place of business. In analyzing the transfer factors, the Court first found that the plaintiff’s choice of forum was…

This update provides short updates on 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.

In Prowire LLC v. Apple, Inc., C.A. No. 17-223-MAK (D. Del. Aug. 9, 2017), visiting Judge Kearney denied the defendant’s motion to dismiss for failure to state a claim, in part, because the defendant’s arguments focused on information within its sole possession. The Court ordered that the parties proceed with expedited disclosures and determine whether the…

In MorphoSys AG v. Janssen Biotech, Inc., C.A. No. 16-221-LPS-CJB (D. Del. Aug. 7, 2017), Chief Judge Stark, by oral order, granted the plaintiff’s request to disqualify the defendants’ expert. The Court found that there was a confidential relationship between the plaintiff and the expert, in which the expert was exposed to confidential and privileged material,…

In Forest Laboratories, LLC v. Teva Pharmaceuticals USA, Inc., C.A. No. 16-1114-RGA (D. Del. Aug. 3, 2017), Judge Andrews denied without prejudice one defendant’s request to provide the plaintiffs’ highly confidential information to the defendant’s “Vice President and Head IPR.” Relying on the description of the Vice President’s job duties, the Court held that the Vice…

In Indivior Inc. v. Mylan Technologies Inc., C.A. No. 15-1016-RGA (D. Del. July 28, 2017), Judge Andrews denied the defendant’s motion to renew its motion to dismiss for improper venue. The defendant had originally moved to dismiss for lack of venue as well as lack of jurisdiction and failure to state a claim. Before the Court…

In Purdue Pharma L.P. v. Epic Pharma, LLC, C.A. No. 16-87-RGA (D. Del. July 27, 2017), Judge Andrews granted the plaintiffs’ motion to amend their complaint to include an additional patent. The Court found that adding the patent “ma[de] sense” because the patent came from the same family and its addition would be efficient for all…

In The Johns Hopkins University v. Alcon Laboratories, Inc., C.A. No. 15-525-SLR/SRF (D. Del. July 14, 2017), Senior Judge Robinson addressed the plaintiff’s objections to Magistrate Judge Fallon’s order defining the scope of a privilege waiver arising from the defendants’ reliance on advice of counsel. Although Judge Fallon ordered that the defendants produce “any additional documents…

In Stephenson v. Game Show Network, LLC, C.A. No. 12-614-SLR (D. Del. July 11, 2017), Judge Robinson denied the defendants’ motion for an exceptional case finding and attorneys’ fees under 35 U.S.C. § 285. Judgment had been entered against the plaintiff after the Patent Trial and Appeal Board found all claims of the asserted patent invalid,…