On April 13, 2017, the United States Court for the District of Delaware announced that The Honorable Gregory M. Sleet will take senior status as of May 1, 2017.  Judge Sleet has served as a District Judge for the District of Delaware since 1998.  He served as Chief Judge for the District of Delaware from 2007 to 2014.

The Court’s announcement notes that Judge Sleet has handled one of the busiest, most complex dockets in the nation during his nearly 19 years on the bench and has served with great distinction.  The Court’s announcement also notes that Judge Sleet intends to render substantial judicial service as a Senior Judge.

Given the announcement earlier this year that Senior Judge Sue Robinson will retire in August, the District of Delaware will have two District Judge vacancies as of May 1, 2017.  The Court hopes to fill the vacancies in a timely manner.

A copy of the Court’s announcement is attached.

By Memorandum Order entered by The Honorable Leonard P. Stark in Beijing Sinotau Medical Research Co., Ltd. v. Navidea Biopharmaceuticals, Inc., et al., Civil Action No. 17-110-LPS-MPT (D.Del. March 1, 2017), the Court granted defendants’ joint motion to stay the action filed by plaintiff in the District of Delaware pursuant to the “first-filed” rule. In granting the motion, the Court explained that (1) defendant Navidea had filed an action against plaintiff Beijing Sinotau in the Southern District of Ohio the day before plaintiff Beijing Sinotau filed the instant action in the District of Delaware; and (2) both actions relate to the same Asset Purchase Agreement between Navidea and Cardinal and the same Exclusive Licensing and Distribution Agreement relating to Beijing Sinotau and Navidea. Id. at *2.

The first-filed rule provides that “in all cases of federal concurrent jurisdiction, the court which first has possession of the subject must decide it.” Id. at*1-2. The rule “encourages sound judicial administration and promotes comity among federal courts of equal rank. It gives a court the power to enjoin the subsequent prosecution of proceedings involving the same parties and the same issues already before another district court.” Id. at *2.

A copy of the Memorandum Order is attached.

The United States District Court for the District of Delaware announced that, effective February 3, 2017, the Honorable Sue L. Robinson, transitioned to Senior Judge.  In the announcement, the Court also set forth certain changes to its case assignment practices given Judge Robinson’s transition to a Senior United States District Judge.  In short, Judge Robinson will not be assigned any new criminal cases or new civil cases.  Until the vacancy is filled, all new criminal cases will be assigned to Chief Judge Stark, Judge Sleet and Judge Andrews.  Until the vacancy is filled, all new civil cases will be assigned to Chief Judge Stark, Judge Sleet, Judge Andrews and a new docket referred to as “Vacant Judgeship” or “VAC”.  The cases assigned to VAC will also be referred to one of the Magistrate Judges – Judge Thynge (“MPT”), Judge Burke (“CJB”), and Fallon (“SRF”).

A copy of the Court’s Announcement is attached.

By Memorandum Order entered by The Honorable Sue L. Robinson in Takeda Pharmaceuticals U.S.A., Inc. v. West-Ward Pharmaceutical Corp., Civil Action No. 14-1268-SLR (D.Del., December 14, 2016), the Court granted plaintiff Takeda Pharmaceuticals U.S.A., Inc.’s motion filed pursuant to Rules 59(e) and 15(a) of the Federal Rules of Civil Procedure seeking to (1) reopen the judgment of dismissal of the action previously entered under Rule 12(b)(6) for failure to state a claim and (2) to amend the complaint.

In evaluating Takeda’s motion, the Court recognized that, “[w]hen a plaintiff files a Rule 59(e) motion accompanied by a Rule 15(a) motion after the dismissal of a complaint under Rule 12(b)(6), ‘the appropriate manner to dispose of th[e] issue is to consider the motions together and determine what outcome is permitted by consideration of the Rule 15(a) factors.’” Id. at *1-2 (quoting Burtch v. Milberg Factors, Inc., 662 F.3d 212, 231 (3d Cir. 2011)). Under Rule 15(a), leave to amend a complaint is freely granted in the absence of undue delay, bad faith, dilatory motive, unfair prejudice, or futility of amendment. Id. at *2.

In applying the applicable standard, the Court found that Takeda’s motion was timely, and that there was no evidence of bad faith or dilatory motive. Id. at *4. The Court also explained that, although the proposed second amended complaint[1] did not contain all of the who, what, when and where’s of the communications identified therein for Takeda’s asserted claim against Hikma for induced infringement, given the Third Circuit’s standard for reviewing the sufficiency of a complaint that rests upon “information and belief” and given that Hikma would be the actual source of the requisite factual information, the proposed second amended complaint did contain sufficiently detailed allegations to plausibly give rise to a claim for inducement of patent infringement and did give Hikma fair notice of such claim. Id. at *5. Thus, the Court found that amendment of the complaint was not futile. Id. Lastly, because the action had not progressed past the initial pleading, the Court found that there was no undue prejudice to Hikma. Id. Therefore, the Court granted Takeda’s motion.

A copy of the Memorandum Order is attached.

[1] In addition to having previously dismissed Takeda’s original complaint, the Court had previously dismissed Takeda’s first amended complaint after concluding, among other things, that Takeda’s first amended complaint failed to satisfy the pleading standard found in Twombly and Iqbal – i.e., Takeda had failed to provide adequate factual allegations to state a plausible claim for induced infringement. Id. at *3.

Through Order entered by Chief Judge Leonard P. Stark and pursuant to the authority vested in the Court by Rule 83 of the Federal Rules of Civil Procedure, the United States District Court for the District of Delaware amended its Local Rules of Civil Practice and Procedure. The revised Local Rules become effective on August 1, 2016.

Copies of the Revised Local Rules of Civil Practice and Procedure of the United States District Court for the District of Delaware and the implementing Order are attached.

By Memorandum Order entered by The Honorable Leonard P. Stark in Greatbatch Ltd. v. AVX Corp., et al., Civil Action No. 13-723-LPS (D.Del., December 10, 2015), the Court denied the motion to stay of Defendants AVX Corporation and AVX Filters Corporation pending (1) appeal of a final written decision by the Patent Trial and Appeal Board (“PTAB”) in an inter partes review (“IPR”) proceeding related to U.S. Patent No. 5,905,627 (“the ‘627 patent”) and (2) resolution of proceedings related to an application for reissue of the ‘627 patent. After evaluating and weighing the three factors the Court typically considers when deciding a motion to stay, the Court found that those factors did not favor granting the motion to stay.

A copy of the Memorandum Order is attached.

By Memorandum Opinion entered by The Honorable Leonard P. Stark in Masimo Corp. v. Philips Electronics North America Corp., et al., Civil Action No. 09-80-LPS (D.Del., December 1, 2015) (consolidated), the Court rendered its Markman Opinion construing ten (10) disputed terms in U.S. Patent Nos. 6,157,850 (“the ‘850 patent”), 7,509,154 (“the ‘154 patent”), 8,019,400 (“the ‘400 patent”), and 5,337,745 (“the ‘745 patent”). The patents disclose methods and devices for measuring the concentration of oxygen in blood. The Memorandum Opinion adopts in part the recommendations contained in Chief Magistrate Judge Thynge’s Report and Recommendation.

A copy of the Memorandum Opinion is attached.

By Memorandum Opinion and Order entered by The Honorable Sue L. Robinson in AstraZeneca AB, et al. v. Camber Pharmaceuticals, Inc., Civil Action No. 15-927-SLR (D.Del., November 19, 2015), the Court granted the AstraZeneca plaintiffs’ motion for a preliminary injunction against defendant Camber Pharmaceuticals thereby enjoining defendant from selling its generic esomeprazole product (a purple-colored generic version of Nexium®), subject to the narrow exception set forth in paragraph 3 of the Court’s Order.

Weighing all of the factors discussed in the preliminary injunctive relief analysis in the “totality of the circumstances” as set forth in Kos. Pharms., Inc. v. Andrx Corp., 369 F.3d 700, 711 (3d Cir. 2004), the Court concluded that AstraZeneca had carried its burden to prove that it would likely succeed on the merits of the case pursuant to the Lapp factors analysis, that it would likely suffer “irreparable harm” if the requested relief was not granted, and that the balance of hardships and the public interest weigh in its favor.  Id. at 5-14.

Copies of the Memorandum Opinion and Order are attached.

Gregory B. Williams, a partner in the Wilmington, DE and Philadelphia, PA offices of Fox Rothschild, has been named to Delaware Today’s Top Lawyer List for 2015 for Civil Litigation.  Greg, an experienced litigator and trial attorney with more than 20 years of experience, has a diverse practice focused on commercial, intellectual property and other business litigation for a wide range of clients, including manufacturers, technology companies, financial institutions, retailers, government entities, educational institutions, and faith-based organizations.  Greg, the former office managing partner of Fox Rothschild’s Wilmington office and the first African-American to serve on the firm’s Executive Committee in the firm’s more than 100 years history is also a former President of the Delaware State Bar Association and a former President of the Barristers’ Association of Philadelphia.