Fox Rothschild LLP congratulates its partner, Greg Williams, for being included on the 2018 list of the “Most Influential Black Lawyers” by Savoy Magazine. This was Greg’s second time being selected to the prestigious list.

Greg is a trailblazer, trial attorney and litigator at Fox Rothschild LLP with more than 23 years of experience representing clients in business, intellectual property and real estate litigation. Greg is a former President of the Delaware State Bar Association, a former President of the Barristers’ Association of Philadelphia, Inc., and former Chair and member of the Delaware Judicial Nominating Commission. Greg also is the former Office Managing Partner of Fox Rothschild’s Wilmington Office and was the first African-American to serve as an Office Managing Partner and the first African-American to serve as a Member of the firm’s Executive Committee – the firm being more than 100 years old.

As author of the firm’s Delaware Intellectual Property Litigation blog, Greg analyzes and discusses intellectual property decisions rendered by the U.S. District Court for the District of Delaware.

Greg is a graduate of Villanova University School of Law and Millersville University.

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By Memorandum and Order entered by The Honorable Richard G. Andrews in AVM Technologies, LLC v. Intel Corp., Civil Action No. 15-0033-RGA-MPT (D.Del. August 14, 2018), the Court denied Defendant’s Motion for Judgment as a Matter of Law on the Issue of Invalidity, Plaintiff’s Renewed Motion for Judgment as a Matter of Law or in the Alternative a New Trial on the Issue of Infringement, and Plaintiff’s Motion for a New Trial on the Issue of Damages. In denying the motions, the Court did not disturb the jury’s verdict.

Copies of the Memorandum and Order are attached.

The Honorable Colm F. Connolly and The Honorable Maryellen Noreika both were sworn in as District Judges on the United States District Court for the District of Delaware this week.  They became the 26th and 27th individuals in the history of the Court to be appointed as District Judges.

The Court announced that Judges Connolly and Noreika will begin to be assigned new cases on August 15, 2018.  The Court will be eliminating the Vacant Judgeship (“VAC”) docket.  VAC cases that are currently assigned to a Magistrate Judge without consent of the parties to the jurisdiction of the Magistrate Judge will be reassigned to a District Judge – primarily Judges Connolly and Noreika.  The Court also will be phasing out the regular assignment of cases to Visiting Judges.  Cases that are currently assigned to a Visiting Judge will remain with the assigned Visiting Judge or may be reassigned to a Delaware District Judge – primarily Judges Connolly and Noreika.

The Court also announced that Senior Judge Sleet will be retiring from the bench at the end of September.  All cases assigned to Judgle Sleet (“GMS”) will be reassigned primarily to Judges Connolly and Noreika by a date on or around Judge Sleet’s retirement.  With the addition of Judges Connolly and Noreika, the Court is back to full strength.

A full copy of the Court’s Announcement is attached hereto.

By Memorandum entered by The Honorable Leonard P. Stark in Westinghouse Air Brake Technologies Corp. v. Siemens Industry Inc., Civil Action No. 17-1687-LPS (D.Del. August 2, 2018), the Court denied Plaintiff Westinghouse Air Brake Technologies Corporation’s (d/b/a Wabtec Corporation) Motion for Preliminary Injunction to enjoin Defendant Siemens Industry, Inc. (“Siemens”) from infringing claims 4, 6 and 24 of U.S. Patent No. 8,478,463 (“the ‘463 patent”) by selling the on-board unit component of Siemens’ positive training control (“PTC”) system, known as Trainguard, in the United States. Following a full evidentiary hearing, the Court denied Wabtec’s Motion for Preliminary Injunction upon concluding that, although Wabtec demonstrated that it will likely prove infringement, Siemens established that it is more likely than not to prove by clear and convincing evidence that the ‘463 patent is invalid in light of the Kull prior art reference. Id. at *2. The Court also concluded that the public interest and the balance of harms weigh more in favor of denying the requested injunctive relief – “as an injunction might cause Siemens to lose the benefit of its substantial investment in developing a competing technology, and because of the harm that would result from altering the status quo of a two-player market.” Id. at *2-3.

A copy of the Memorandum is attached.

By Memorandum and Order entered by The Honorable Gregory M. Sleet in Rothschild Mobile Imaging Innovations, LLC v. Mitek Systems, Inc. et al., Civil Action No. 14-617-GMS (D.Del. July 27, 2018), the Court denied defendant Mitek Systems, Inc.’s motion for attorneys’ fees and expenses pursuant to 35 U.S.C. § 285, 28 U.S.C. § 1927, and the court’s inherent power. Although the parties did not dispute and the Court recognized that Mitek is the prevailing party as required by 35 U.S.C. § 285, the Court denied the motion because it did not find the case to be exceptional. Id. at *6-12. The Court also refused to grant attorneys’ fees or impose sanctions against the losing plaintiff under 28 U.S.C. § 1927, or the court’s inherent power for the same reasons it found the case to not be exceptional. Id. at *12.

Copies of the Memorandum and Order are attached.

By Memorandum Opinion entered by U.S. Magistrate Judge Sherry R. Fallon in Fraunhofer-Gesellschaft Zur Forderung Der Angewandten Forschung E.V. v. Sirus XM Radio Inc., Civil Action 17-184-JFB-SRF (D.Del. July 20, 2018), plaintiff Fraunhofer’s motion for leave to amend its patent infringement complaint pursuant to Federal Rule of Civil Procedure 15(a)(2) was denied. Although Fraunhofer was able to establish good cause for its failure to seek leave to amend the complaint prior to the expiration of the December 14, 2017 deadline set forth in the scheduling order, the Court concluded that Fraunhofer’s proposed amended complaint would be futile under Federal Rule of Civil Procedure 15(a) because Fraunhofer’s proposed amended complaint does not remedy the dispositive deficiency of the original complaint by pleading that SXM’s predecessors failed to fulfill their obligations under the sublicense agreement. Id. at *5-12.

A copy of the Memorandum Opinion is attached.

Given that the Memorandum Opinion was issued by a U.S. Magistrate Judge pursuant to 28 U.S.C. § 636, Federal Rule of Civil Procedure 72(a) and D.Del. LR 72.1(a)(2), the parties may serve and file written objections to the Memorandum Opinion within fourteen (14) days after being served with a copy of the Memorandum Opinion.

By Memorandum Order entered by The Honorable Leonard P. Stark in North Atlantic Operating Co., Inc. et al. v. Dunhuang Group/d/b/a DHgate et al., Civil Action No. 18-154-LPS (D.Del. July 11, 2018), the Court granted in part Petitioners North Atlantic Operating Company, Inc. and National Tobacco Company, L.P.’s Motion to Compel Non-Party Dunhung Group d/b/a DHgate, DHlink, DHport, and DHpay to Comply with Plaintiffs’ Subpoena Duces Tecum (“Motion to Compel”) to the extent it requested the Court to transfer the Motion to Compel to the United States District Court for the Eastern District of Michigan. In so ordering, the Court found that “extraordinary circumstances exist in this case, such that transfer is warranted so as to not disrupt the issuing court’s management of the Underlying Action.” Id. at *3.

A copy of the Memorandum Order is attached.

By Memorandum Opinion entered by The Honorable Richard G. Andrews in Novartis Pharmaceuticals Corp. et al. v. Mylan Pharmaceuticals Inc., Civil Action No. 17-389-RGA (D.Del. June 29, 2018), the Court rendered its Markman ruling construing three (3) terms in dispute in the asserted claims of U.S. Patent Nos. 8,778,962 (“the ‘962 patent”) and 8,617,598 (“the ‘598 patent”).

A copy of the Memorandum Opinion is attached.

By Memorandum Order entered by The Honorable Leonard P. Stark in Siemens Industry, Inc. v. Westinghouse Air Brake Tech. Corp. et al., Civil Action No. 16-284-LPS (D.Del. June 20, 2018), the Court denied Plaintiff Siemens Industry, Inc.’s motion asking the Court to reconsider its construction of the terms “vital” and “safety critical” provided in the Court’s Memorandum Opinion and Order dated November 6, 2017. Defendants opposed the motion. Id. at *1.

Siemens argued that “reconsideration is required to correct certain factual and legal errors in the Court’s interpretation of the intrinsic and extrinsic evidence of record that resulted in erroneous constructions.” Id. at *2. Among other things, Siemens argued that, when the Court’s constructions are substituted for “vital” and “safety critical” in the claims, the claims no longer make grammatical sense. Id. at *3.

“Pursuant to Local Rule 7.1.5, motions for reconsideration should be granted ‘sparingly.’” Id. at *1. The Court noted that motions for reconsideration may be granted only if the movant can show one of the following: (i) there has been an intervening change in controlling law; (ii) new evidence is available that was not available when the court made its decision; and (iii) there is a need to correct a clear error of law or fact to prevent manifest injustice. Id. at *2. The Court did not find any reason warranting reconsideration and, therefore, denied Siemen’s motion. Id. at *3-4.

A copy of the Memorandum Order is attached.

By Memorandum Opinion entered by The Honorable Richard G. Andrews in TQ Delta, LLC v. ZyXel Communications, Inc. et al., Civil Action No. 13-02013-RGA (D.Del. June 12, 2018), the Court denied Defendants’ Motion for Expedited Consideration of a Preliminary Injunction seeking to enjoin Plaintiff from pursuing an action in the High Court of Justice of London, England against ZyXel UK and ZyXel Communications A/S (incorporated in Denmark) for infringement of two European patents. One of the two patents in suit in the UK action is the counterpart to the claims in the Family 5 patents asserted in the instant action. Id. at *2.

In denying Defendants’ motion, the Court explained that the Third Circuit has adopted the restrictive approach as a test for determining whether an anti-suit injunction should be entered to restrain the advancement of a foreign parallel proceeding. Id. at *3. Under the restrictive approach, anti-suit injunctions against foreign proceedings are rarely granted. Id. District courts may appropriately enjoin “foreign parallel proceedings only to protect jurisdiction or an important public policy.” Id. The Third Circuit’s jurisprudence instructs that, although comity is a consideration in federal and state litigation, comity should weigh even more heavily in the court’s analysis of anti-suit injunction in the international context. Id. Domestic and foreign parallel proceedings may ordinarily proceed simultaneously “at least until one has reached the stage where its ruling becomes res judicata.” Id.

Applying the restrictive approach to the circumstances in the instant action, the Court found that the UK action will not usurp this Court’s jurisdiction or threaten an important public policy. Id. at *4-8. Thus, the UK action should proceed parallel to the instant action, and an injunction is not warranted. Id.

A copy of the Memorandum Opinion is attached.