Delaware IP Law Blog

The U.S. Supreme Court’s much anticipated decision in Association for Molecular Pathology, et al. v. Myriad Genetics, Inc., et al., 569 U.S. ___, issued June 13, 2013. In short, the Supreme Court analyzed whether an isolated DNA sequence is patent eligible in light of the fundamental principle that laws of nature, natural phenomena, and abstract ideas are not patentable. The Supreme Court held that mere isolation of an otherwise naturally occuring genetic sequence of DNA is not patent eligible but that a non-naturally occuring DNA sequence may be subject matter eligible for patenting, so long as the other conditions for patenting are met (e.g., novelty, non-obviousness, written description).

While many divergent views are forming on the impact this decision will have on the biotech industry, its impact on patent litigation in Delaware is broadly predictable. In appropriate circumstances, new patent validity challenges can be anticipated against DNA sequence claims asserted in this District and new litigation may flow from the entry of several new competitors expected to offer genentic tests for various diagnostics, some of which will undoubtedly be the subject of a patent controversy within Delaware’s jurisdiction.

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Continue reading "Supreme Court: Mere isolation of naturally occurring DNA segment is not patent eligible. AMP v Myriad Genetics, 569 U.S. _ (June 13, 2013)" »

Dear Colleague,

Managing IP, in association with Delaware IP Law Blog, invites you to attend the second annual US Patent Forum March 19, 2013 at the Willard InterContinental in Washington D.C. www.managingip.com/USPatentForum2013

Free for in-house patent counsel, academics and R&D professionals.

One year on from the AIA, we will assess the patent landscape in the United States and look at strategies to achieve maximum value from your patent portfolio.

On the agenda:

• Two keynote addresses by USPTO’s Teresa Stanek Rea and WIPO’s James Pooley
• AIA and NPEs: one year on
• Lessons from Canadian reforms
• Monetization of patents: strategies for deriving maximum value from your patent portfolio
• Life sciences & ITC industries focus
• Doing business in China: how to ensure your patented assets in China are making you money

Speakers:

• James Pooley, deputy director general for innovation and technology, World Intellectual Property Organization
• Teresa Stanek Rea, acting director general, United States Patent & Trademark Office
• Jim Crowne, director of legal affairs, AIPLA
• Paul R Michel, Chief Circuit Judge (retired)
• Vanessa Bailey, IPR litigation, Nokia Siemens Networks
• Richard Rainey, executive counsel and IP litigation, GE
• David L Marcus, VP, deputy general counsel, Comcast Cable Communications
• Joseph G Contrera, patent counsel, Johns Hopkins Technology Transfer
• Andrew Hirsch, general counsel, Fuelcor
• Heather Boussios, senior intellectual property counsel, Emergent BioSolutions
• Henry Hadad, VP, deputy general counsel, IP, Bristol-Myers Squibb Company
• Vaishali Udupa, IP litigation counsel, Hewlett-Packard
• Camille-Remy Bogliolo, lawyer, international legal affairs, European Patent Office
• Raymond Niro, senior partner, Niro Haller & Niro
• Sherry Knowles, principal, Knowles Intellectual Property Strategies

For more details, visit http://www.managingip.com/stub.aspx?stubid=20311

Testimonials:

"Excellent overviews of AIA from those who wrote it, those who will implement it, and those who must live with it" - Graham Douglas, IDDEX (2012)

"Assessments and points of view you won't find any place else" - Jim Farmer, Georgetown University (2012)

You will network with:

Accuray Inc, Americas Bankers Association, Boeing Company, CIENA, Department of Homeland Security, Eldelman, El Cap Ventures, Eli Lilly & Company, Embassy of Canada, Emergent BioSolutions, Ex-Nokia, George Washington University, Google, IC2 Institute - University of Texas, Intel, Intellectual Property Owners Association, INVISTA, IPXI, JDSU Corporation, JLG Industries, Johns Hopkins Technology Transfer, Johns Hopkins University, Magna International, Nestle, Nokia Siemens Networks, Palo Alto Research Center, Panasonic, Personalized Media Communications, Privaris, Sharp, Siemens Enterprise Communications, Supernus Pharmaceuticals, Tredegar Corporation, USPTO, US International Trade Commission, US International Trade Commission, Widener Law School and many more.
________________________________________
EASY WAYS TO REGISTER:
Register online: http://www.euromoneysecure.com/orders/gen/start.asp?cIndex=1731
Email: mfabri@euromoneyplc.com
________________________________________

We look forward to meeting you on March 19.

Kind regards,

James Nurton
Managing editor
www.managingip.com

Pilar Kraman
Managing editor
www.delawareiplaw.com

Continue reading "Managing IP's U.S. Patent Forum, March 19, 2013 in Washington D.C." »

Managing editor and co-author of Delaware IP Law Blog, Pilar G. Kraman, is a featured author in the latest issue of Managing IP’s, Intellectual Property Focus. This special “Americas IP Focus 2012” showcases commentary and analysis from IP lawyers throughout the Western Hemisphere, and is distributed to IP Owners and IP lawyers around the world. The publication will also be distributed to attendees of major IP conferences in October including: the AIPLA annual meeting; the LES US & Can annual meeting; and the AIPPI world congress. You can read Pilar’s article below, “Trends in Delaware post-Twombly,” which discusses recent developments in the District of Delaware regarding the sufficiency of pleadings alleging indirect and direct patent infringement.

Continue reading "Trends in Delaware post-Twombly" »

Dear Colleague,

As a supporter of the event, Delaware IP Law Blog invites you to attend the US Patent Reform Forum on March 27th in Washington D.C.

** Limited complimentary places left **

New speaker additions at the forum include Douglas Graham, executive director of IDDEX. Douglas is a fervent IP expert and author of books and many articles on Intellectual Assets. He also has had three patents granted and has two further patents pending. Douglas will be giving insight into the ways in which SME's will be affected by the reforms, confronting an issue which often doesn't see much coverage but which will affect many business owners and their counsel.

You will also be hearing from Teresa Stanek Rea, deputy under secretary of commerce for intellectual property and deputy director of the USPTO. Teresa will be giving the rule making overview and delivering perspective of the USPTO in a discussion which is to be chaired by the AIPLA's Todd Dickinson.

The forum’s exciting finale will consist of a debate between Daniel McCurdy and Raymond P. Niro who will be discussing the contentious topic of NPEs or Patent Trolls. Going head to head and engaging directly with this matter from opposing perspectives, these charismatic speakers will provide a unique opportunity to hear from both sides of the fence in the wake of the AIA.

Dan McCurdy, CEO of PatentFreedom, is devoted to the protection of companies against NPEs. His conviction in this defence against the trolls passionate and Dan plays a key role in collating and sharing relevant intelligence with the ‘operating companies’ which he strives to defend.

Conversely, Raymond Niro is known to some as an ‘Original Troll’. Raymond is devoted with equal fervour to the advancement of the NPE cause and can speak with charm and eloquence on the controversial stance which he takes. Together these men will offer a unique opportunity to scrutinise the issues at stake allowing time for audience participation and discussion with the floor also. This is an opportunity not to be missed.

Other speakers include:

• David Kappos, undersecretary of commerce for intellectual property and director, USPTO
• Judge Paul Michel
• Gary Griswold, president and chief intellectual property counsel, 3M Innovative Properties Company and former chairman, 21st Century Patent Reform
• Bob Stoll, former commissioner, USPTO and partner, Drinker Biddle & Reath
• Robert Armitage, senior VP and general counsel, Eli Lilly
• Steven Wood, patent licensing associate, Brookhaven National Laboratory
• Phil Johnson, chief intellectual property counsel, Johnson & Johnson
• Sherry Knowles, principle, Knowles Intellectual Property Strategies
• David T. Beck, Patent Attorney, JDS Uniphase Corporation
• F. Scott Kieff, professor of law, George Washington University
• Brent Bellows, Knowles Intellectual Property Strategies
• Steven I. Weisburd, partner, Dickstein Shapiro
• Gene Quinn, president & founder, IPWatchdog, Inc

For more information about the agenda, please see the brochure here: http://www.managingip.com/pdfs/USPatentForum.pdf.

Easy ways to register
Visit www.managingip.com/USPatentforum2012
Email mfabri@euromoneyplc.com
Call +1 212 901 3828

* Please note that complimentary places are allocated on a first come, first served basis.

We look forward to meeting you on March 27th.

Kind regards,

James Nurton
Managing editor
www.managingip.com

Pilar Kraman
Managing editor
www.delawareiplaw.com

Continue reading "Managing IP's US Patent Reform Forum, Washington, D.C. March 27, 2012" »

Yesterday, the District Court adopted new default standards, the Default Standard for Discovery, including Discovery of Electronically Stored Information ("ESI"), and the Default Standard for Access to Source code.

Default Standard for Discovery, Including Discovery of Electronically Stored Information

Default Standard for Access to Source Code

On December 2, 2011,the Federal Circuit granted a petition for a writ of mandamus reversing the District of Delaware’s denial of a motion to transfer venue. In re Link_A_Media Devices Corp., Misc. Doc. No. 990 (Fed. Cir. Dec. 2, 2011). The Court of Appeals ordered the District Court to transfer the case to the Northern District of California, finding that the exacting standard for a writ of mandamus had been satisfied.

In Marvell Int’l v. Link_A_Media Devices, C.A. No. 10-869-SLR (D. Del. June 8, 2011), a Bermuda plaintiff brought suit against a defendant incorporated in Delaware. The District Court denied defendant Link_A_Media Devices’ motion to transfer. The court found that transfer was not warranted in part because “the plaintiff’s choice of forum is still of paramount consideration.” Id. at 3. The court also stated that “because [the defendant] is a Delaware corporation, it has no reason to complain about being sued in Delaware” and noted that it was not “persuaded by [the defendant’s] arguments regarding convenience.” Id. at 4-5. (Read more about Judge Robinson’s denial of the motion to transfer here.) The Federal Circuit, however, granted mandamus and ordered transfer. The Federal Circuit specifically held that “the district court placed far too much weight on the plaintiff’s choice of forum.” In re Link_A_Media Devices Corp., Misc. Doc. No. 990, at 4 (Fed. Cir. Dec. 2, 2011). The Federal Circuit also found that the district court’s “heavy reliance on the fact that [the defendant] was incorporated in Delaware was similarly inappropriate” and that the “district court also erred when it found that consideration of the public interest factors did not favor either forum.” Id. at 5-6.

Earlier this year, the Federal Circuit denied a petition for a writ of mandamus in In re Xoft, Inc., Misc. Doc. No. 983 (Fed. Cir. Aug. 19, 2011). In that case, New York and German plaintiffs brought suit against a defendant incorporated in Delaware. Judge Stark accepted Magistrate Judge Thynge’s report recommending that defendant Xoft’s motion to transfer to the Northern District of California be denied. Carl Zeiss Meditec, Inc. v. Xoft, Inc., C.A. No. 10-308-LPS-MPT (D. Del. Mar. 30, 2011). Judge Thynge found that the scales were not sufficiently tipped in favor of transfer where Delaware was the plaintiff’s choice of forum, the defendant was incorporated in Delaware, and the location of witnesses and evidence were neutral or weighed only slightly in favor of transfer. Judge Stark agreed with this recommendation and rejected Xoft’s “proposition that Judge Thynge placed too much weight on the fact that Xoft is incorporated in Delaware and too little weight on the fact that Zeiss’s headquarters is in Northern California.” Id. at 2. Judge Stark found that “Judge Thynge thoughtfully explained that the convenience of witnesses and location of sources of proof -which are considered only to the extent that they are ‘unavailable’ - were either ‘neutral’ or weighed ‘only slightly in favor of transfer’” and “made clear that, in the Third Circuit, a plaintiff s choice of forum -which Xoft concedes is a ‘paramount consideration’ - should not be lightly disturbed.” Id. at 3. (Read more about Judge Thynge’s denial of the motion to transfer here.) The Federal Circuit considered the argument that “the district court placed too much emphasis on the plaintiff’s choice of forum” and refused to grant mandamus. See In re Xoft, Inc., Misc. Doc. No. 983, at 3 (Fed. Cir. Aug. 19, 2011). The Federal Circuit specifically ruled that “[i]n the Third Circuit, that choice is afforded considerable weight and should not be lightly disturbed. The district court properly considered the relevant factors for a transfer motion and determined that the factors did not strongly favor transfer.” Id.

Continue reading "Recent Mandamus Rulings from the Federal Circuit in Delaware Cases" »

On November 3, 2011 the District of Delaware judges signed an Order Relating to Utilization of Magistrate Judges. Among other things, the Order kicked off a one year Pilot Project “to evaluate Magistrate Judge utilization.” As part of the Pilot Project, the Clerk of the Court will randomly assign cases to Magistrate Judges. These matters will not initially be assigned to a District Judge and the Magistrate Judge will "be responsible for all pretrial management of the case, including determination of all nondispositive motions and scheduling." Within 60 days from assignment of the Magistrate Judge, the parties may consent to Magistrate Judge jurisidiction by filing Form AO85. If they consent, the case will remain assigned to the Magistrate Judge for all purposes, including trial. After 60 days, if the parties do nothing, or if a case dispositive motion is filed within that time, the case will be randomly re-assigned to a District Judge. These cases, however, will be eligible for referral back to a Magistrate Judge for discovery purposes, ADR or for case management through case dispositve motions. There are categories of cases that will not be assigned to a Magistrate Judge as part of this Pilot Project, including patent cases in which one or more “related” case is pending. See Standing Order, section D. As always, parties to a matter not directly assigned to a Magistrate Judge may also consent to Magistrate Judge’s jurisdiction by filing the Consent Form (Form AO85).

The Standing Order also clarified the procedure for objecting to Magistrate Judge Rulings and Recommendations. See Standing Order, section C.

Continue reading "New Standing Order Regarding Utilization of Magistrate Judges" »

Today, the U.S. Senate confirmed Richard Andrews as the newest U.S. District Judge for the District of Delaware. For more information, a press release from Senator Chris Coons is available here.

Earlier this month, the ABA Journal began accepting nominations for its annual list of the 100 best legal blogs (“blawg”). They are accepting “Amici Forms” where you can nominate a blog that you read regularly and you think others should know about. The form is extremely simple and aside from some information about the person making the nomination, asks only “Why are you a fan of this Blawg?” Nominations must be submitted by Friday, September 9.

The Delaware IP Law Blog was the first IP Blog in Delaware and we work to keep you up to date with the latest decisions and news from the district court in an unbiased, yet informative way. Although our blog covers only a specific region, our readers span the globe and share one thing – an interest in some of the most interesting and important decisions in intellectual property.

A link to the amici form is provided below.

http://www.abajournal.com/blawgs/blawg100_submit/

Yesterday, Christopher J. Burke was officially appointed as the newest U.S. Magistrate Judge for the District of Delaware. The full order is below.

Continue reading "Magistrate Judge Burke Appointed on August 4, 2011" »