Richards Layton & Finger
 

Delaware Intellectual Property Law Update

August 30, 2017

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.

Magistrate Judge Burke Grants Motion to Transfer Venue 
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 neutral.  The complaint had stated that Delaware was selected as a forum due to its convenience for what was then the co-plaintiff, but the co-plaintiff was subsequently dismissed from the suit.
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Senior Judge Robinson Denies Motion for Attorneys’ Fees
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, a decision affirmed on appeal.
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Senior Judge Robinson Finds Broad Subject Matter Waiver Related to Opinions of Counsel
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.     
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Judge Andrews Grants Motion to Amend Complaint
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 of the parties.
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Chief Judge Stark Provides “Inclinations” on Post-Trial Motions
In GlaxoSmithKline LLC v. Teva Pharmaceuticals USA, Inc., C.A. No. 14-878-LPS (D. Del. July 27, 2017), Chief Judge Stark set forth his tentative views of the parties’ potential post-trial motion in a post-trial letter to counsel.  The Court hoped that his communication to the parties would “make briefing and resolution of those motions more efficient.”         
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Judge Andrews Denies Motion to Renew Motion to Dismiss
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.    
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Chief Judge Stark Orders Bellwether Trial
In Intel Corporation v. Future Link Systems, LLC, C.A. No. 14-377-LPS (D. Del. July 31, 2017), Chief Judge Stark ordered a “bellwether” jury trial to determine liability and damages on three of the twelve asserted patents.   The Court explained that this procedure would “have the virtue of giving the parties a near-term opportunity to obtain certainty . . . as to the value of a substantial subset of their disputes.”    
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Judge Andrews Grants in Part and Denies in Part Motion for Protective Order
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 President was a competitive decision maker.    
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Chief Judge Stark Grants Motion to Disqualify Expert
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, including information about the prosecution of patents cited in the asserted patents.   
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Visiting Judge Kearney Denies Motion to Dismiss
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 patent owner’s specific claims alleged “upon information and belief” were accurate.    
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