By Memorandum Order entered by The Honorable Leonard P. Stark in Pacific Biosciences of California, Inc. v. Oxford Nanopore Technologies, Inc. et al., Civil Action No. 17-275-LPS-CJB (D.Del. February 27, 2020), the Court rendered its rulings on five of the six motions in limine filed by the parties in preparation for the trial scheduled to start on March 9, 2020. By way of example, in granting Plaintiff’s motion in limine number 3, the Court ruled that Defendants were precluded from using pejorative terms such as “non-practicing entity,” “NPE,” and “paper patents” to characterize Plaintiff or its patents and from presenting evidence about the consequences of the litigation to the jury. Id. at *2.

A copy of the Memorandum Order is attached.

By Memorandum Order entered by The Honorable Colm F. Connolly in Genentech, Inc. et al. v. Amgen, Inc., Civil Action No. 17-1407-CFC, Consol. (D.Del. February 12, 2020), the Court denied Defendant’s motion for leave to amend its First Amended Answer, Affirmative Defenses and Counterclaims to add an affirmative defense and counterclaim that U.S. Patent No. 8,574,869 (“the ‘869 Patent”) is unenforceable due to Plaintiff’s inequitable conduct before the United States Patent and Trademark Office (“the PTO”). The Court denied the motion for leave to amend after finding that (1) the “good cause” standard under Federal Rule of Civil Procedure 16(b) applied to the motion to amend as opposed to the standard under Federal Rule of Civil Procedure 15(a); and (2) Plaintiff, by its own admission, had the ability in July 2019 to plead with particularity the alleged inequitable conduct defense and counterclaim but unduly delayed by waiting until September 2019 to seek leave to add that defense and counterclaim. Id. at *2-3. Thus, the Court found that Plaintiff failed to show good cause for its delay and denied the motion. Id.

A copy of the Memorandum Order is attached.

By Order entered by Chief Judge Leonard P. Stark on January 31, 2020, the United States District Court for the District of Delaware added three Delaware attorneys to its Special Masters Panel in complex civil cases. The three Delaware attorneys added are Helena Rychlicki, Chad Stover and Gregory B. Williams (partner at Fox Rothschild LLP and founder and author of Fox Rothschild’s Delaware Intellectual Property Litigation Blog). The three new Special Masters are appointed for four year terms ending on January 31, 2024.

A copy of the Order is attached.

By Memorandum Order entered by The Honorable Leonard P. Stark in Peeble Tide LLC v. Arlo Technologies, Inc., Civil Action No. 19-769-LPS (D.Del. January 31, 2020), the Court granted Defendants’ motions to dismiss in three separate patent infringement cases brought by Plaintiff Peeble Tide LLC after finding that the two patents asserted, U.S. Patent Numbers 10,261,739 and 10,303,411 are invalid under 35 U.S.C. § 101 because they are directed to patent ineligible subject matter under the Alice analysis. The Court also denied different Defendants’ motions to dismiss in five separate patent infringement cases brought by Plaintiff Mimzi, LLC after finding that Defendants could not meet their burden at Step Two of the Alice analysis with respect to the one patent asserted in those actions, U.S. Patent Number 9,128,981. Id. at *4-7.

A copy of the Memorandum Order is attached.

A notable practice point is that the Court noted in its Memorandum Order that it “continues to find its experimental procedure of addressing multiple Section 101 motions from separate cases in one hearing is an efficient use of judicial resources and a beneficial tool for resolving the merits of Section 101 motions.” Id. at *1.

By Memorandum Order entered by The Honorable Colm F. Connolly in CareDx, Inc. v. Natera, Inc., Civil Action No. 19-662-CFC (D.Del. January 24, 2020), the Court adopted the Report and Recommendation of Magistrate Judge Christopher J. Burke recommending that Judge Connolly deny in part and grant part Defendant’s motion to dismiss Plaintiff’s complaint. Defendant filed objections to the Magistrate Judge’s recommendations that Judge Connolly deny the motion to dismiss with respect to Counts One and Three of Plaintiff’s complaint. Id. at *1. Count One purports to allege false advertising under the Lanham Act, 15 U.S.C. § 1125(a) and Count Three purports to allege unfair competition. Id.

 Defendant made two objections in response to the recommendation to deny the motion to dismiss with respect to Count One. First, Defendant asserted that the Magistrate Judge made an error in concluding that the allegations of potential future harm are sufficient to establish the proximate cause element of the Lanham Act claim. Id. at *2. Second, Defendant asserted that the Magistrate Judge made an error in concluding that the complaint “alleges facts that would show that the at-issue statements are false and misleading.” Id. Upon review and evaluation, Judge Connolly was not persuaded by any of Defendant’s arguments that the Magistrate Judge erred in denying Defendant’s motion to dismiss Count I. Id. at *2-5.

With respect to Count Three, Defendant asserted that the Magistrate Judge made an error in not dismissing the unfair competition claim “because the [c]omplaint failed to allege with sufficient particularity ‘a reasonable expectation of entering a valid business relationship, with which the defendant wrongly interferes, and thereby defeats plaintiff’s legitimate expectancy and causes him harm.’” Id. at *5. Upon review and evaluation, Judge Connolly agreed with the Magistrate Judge that the allegations in Count Three of the complaint provided adequate notice to Defendant of the unfair competition claim even though those allegations “could have been more factually robust.” Id.

Accordingly, the Court denied Defendant’s motion to dismiss with respect to Counts One and Three of the complaint.

A copy of the Memorandum Order is attached.

By Memorandum Order entered by The Honorable Leonard P. Stark in Cirba Inc. d/b/a Densify) et al. v. VMware, Inc., Civil Action No. 19-742-LPS (D.Del. January 7, 2020), the Court granted Defendant VMware’s motion to exclude certain testimony of Plaintiffs’ trademark expert, Vincent Mayfield. While the Court rejected VMware’s argument that Mr. Mayfield’s opinions constitute improper expert testimony, it agreed with VMware that Mr. Mayfield lacked the qualifications to offer his expert opinions. Id. at *4.

In so ruling, the Court noted that Mr. Mayfield’s qualifications rested largely on his significant experience as an IT professional. Id. The Court explained that, while practical experience could be grounds for qualifying an expert under Daubert, the “qualifying expert must provide some reliable methodology or principles by which he formed his opinion. Mr. Mayfield has not done so here.” Id. at *4-5.

A copy of the Memorandum Order is attached.

The takeaway is that, in any expert report, a party’s expert should sufficiently set forth his or her qualifications (education, experience, etc.) and the reliable methodology and/or principles on which his or her opinions are based. The more widely accepted and tested the methodology and/or principles are in the particular subject matter, the more difficult any Daubert challenge.

By Memorandum Opinion entered by The Honorable Colm F. Connolly in Orexo AB et al. v. Actavis Elizabeth LLC et al., Civil Action No. 17-205-CFC (D.Del. December 11, 2019), the Court denied Plaintiffs’ Orexo AB and Orexo US, Inc. (collectively, “Orexo”) motion for a new trial, pursuant to Federal Rule of Civil Procedure 59(a), on the issues of infringement, willfulness and damages. Orexo had alleged that Defendants generic versions of the anti-opioid addiction drugs Suboxone® and Subutex® directly and indirectly infringe claim 2 of U.S. Patent No. 8,454,996 (“the ‘996 patent”). Following a five-day trial, the joint verdict form did not ask the jury whether Orexo had proven direct infringement and the jury found that Defendants did not induce or contribute to infringement. Accordingly, the Court entered judgment for Defendants. Id. at *1.

Thereafter, Orexo moved for a new trial arguing that a new trial was warranted because (1) Judge Connolly erred in precluding them from presenting during trial the fact that Judge Sue L. Robinson ruled in a prior patent case (the “Zubsolv® case”) that the ‘996 patent was not invalid and was infringed by the generic version of another anti-opioid addiction drug, and (2) Judge Connolly erroneously “excluded the introduction of Orexo’s patents and published patent applications (other than the ‘996 patent) and other publications.” Id. at *2.

After review and consideration of the record, the Court found that it did not err in either instance. Id. at *28. The Court explained that, with respect to its ruling to preclude Defendants from presenting evidence related to the Zubsolv® case, it made the determination under Federal Rule of Evidence 403 that the admission of such evidence would confuse the jury and unfairly prejudice Defendants. Id. at *5-28. In other words, the degree of unfair prejudice would significantly outweigh the probative value of such evidence. Id. With respect to its second ruling at issue, the Court explained that Defendants could only have known about disclosures in a publication if they were aware of the publication and it ruled during trial that any publication would have been admissible if it was established that a witness of Defendants was aware of the publication. Id. at *27. The Court found that Orexo failed to lay a proper foundation for the introduction of other publications. Id. at *27-28.

A copy of the Memorandum Opinion is attached.

By Memorandum Opinion entered by The Honorable Colm F. Connolly in Boston Scientific Corp. et al. v. Nevro Corp., Civil Action No. 18-0644-CFC (D.Del. November 25, 2019), the Court granted Defendant’s Motion to Dismiss with respect to Plaintiffs’ claims for direct infringement under 35 U.S.C. § 271(a) in Counts I through VII and IX of the Complaint. The Court also granted Defendant’s Motion to Dismiss with respect to the claims for induced and contributory infringement and the claims for enhanced damages in nine counts.

In granting Defendant’s Motion to Dismiss the claims for direct infringement in Counts I through VII and IX of the Complaint, the Court found that the allegations in those counts of Plaintiffs’ Complaint fell short of the Iqbal/Twombly pleading standard because they failed to show how the accused products plausibly read on the asserted claim elements. Id. at *5-9. Although Plaintiffs attempted to attach 144 pages of exhibits to their Complaint to show the basis for their infringement claims, the Court found that they made no attempt to connect specific components of the accused systems to elements of the asserted claims. Id. at *8. The court noted that “[a] defendant should not be required to comb through 144 pages of exhibits to understand the bases of a plaintiff’s claims, and a court should not have to parse 144 pages of exhibits to determine if they state facts sufficient to demonstrate a plaintiff’s entitlement to relief. Id. at *9.

A copy of the Memorandum Opinion is attached.

By Order entered by The Honorable Jennifer L. Hall in Pacific Biosciences of California, Inc. v. Oxford Nanopore Technologies, Inc. et al., Civil Action No. 17-275-LPS (D.Del., November 4, 2019), the Court denied Defendants’ motion to redact portions of the hearing transcript from a discovery teleconference on August 14, 2019. The Court noted that, “although there is no presumptive right of public access to discovery motions and supporting documents filed with the court, the public does have a right of access to hearing transcripts.” Id. at *1.

In denying Defendants’ motion, the Court explained that the party seeking closure of a hearing or sealing of part of the judicial record has the burden to show that the material is the kind of information that courts will protect and its disclosure would result in a “clearly defined and serious injury to the party seeking closure.” Id. In this instance, the Court found that Defendants failed to meet their burden to show that disclosure of the unredacted transcript would result in a “clearly defined and serious injury” to them. Id. at *2. The information that Defendants sought to redact did not contain trade secrets, scientific data, strategic plans or financial information and the Court found that merely stating that the proposed redactions contained discussions of documents marked “Confidential” or “Highly Confidential” was not sufficient for Defendants to meet their burden. Id.

A copy of the Order is attached.

This decision serves as a reminder of the importance the Court places in the public having access to judicial proceedings. Parties and counsel should not assume that the Court will seal information, documents and/or transcripts simply because they are marked Confidential or Highly Confidential and one or more of the parties want them sealed. The required showing to seal the information, documents and/or transcripts is necessary.