Delaware IP Law Blog

Sometimes, the footnotes tell the whole story. In this case, that expression is literally true: district judge Eduardo C. Robreno's recitation of the facts and his analysis are contained within one extraordinary footnote. That analysis, moreover, is significant.

In its decision released Tuesday, the Court delineated the scope of pleading, on information and belief, the "deceptive intent" element of the inequitable-conduct defense. In short, the answer is no:

"Even assuming that the Court adopts a liberal interpretation of the inference of intent to deceive, Defendants present no specific facts showing Plaintiff . . . actually possessed any knowledge with respect to the commercial availability of the Components. Absent some particularized showing regarding this knowledge, the Amended Answer does not satisfy the Rule 9(b) pleading requirement in light of [Federal Circuit precedent]."

Inventio AG v Thyssenkrupp Elevator Americas Corp., C.A. No. 08-874-ER (D. Del. Feb. 2, 2010) (Robreno, J., sitting by designation).

In a recent case before Vice Chancellor Parsons of the Delaware Court of Chancery, Plaintiff Great American brought claims against Defendant Cherrydale for, among other things, misappropriation of trade secrets. Great American Opportunities, Inc. v. Cherrydale Fundraising, LLC et al., C.A. No. 3718-VCP (Del. Ch. Jan. 29, 2010). The action stemmed from events that occurred around the acquisition of Kathryn Beich, Inc. (“KB”) by Great American. The trade secrets in question involved a list of sales representatives and their contact information; a list of KB sales representatives ranked by volume of sales; order status reports, which listed contact information and the status of KB orders; and other confidential proprietary reports, customer contact and purchasing information. Id. at 11-14. Cherrydale argued that this information did not constitute trade secrets and were not misappropriated because the “information was used solely by independent contractors whose acts cannot be attributed to Cherrydale.” Id. at 45.

Under the Delaware Uniform Trade Secrets Act, the plaintiff must prove: (1) “that a trade secret exists, i.e., the statutory elements—commercial utility arising from secrecy and reasonable steps to maintain secrecy—have been shown;” (2) “that the plaintiff communicated the trade secret;” (3) “that such communication was made pursuant to an express or implied understanding that the secrecy of the matter would be respected;” and “(4) that the trade secret has been used or disclosed improperly to the plaintiff’s detriment.” Id. at 46-47. After weighing the evidence presented at trial, Vice Chancellor Parsons determined that the information at issue were protected trade secrets. Id. at 48-67. However, because Great American failed to prove the amount of actual damages it was entitled to, Vice Chancellor Parsons awarded Great American compensatory damages only for Cherrydale’s unjust enrichment caused by the misappropriation. Id. at 68-78. Cherrydale’s actions were, however, found to be willful and malicious leading Vice Chancellor Parson’s to double the compensatory damages award. Id. at 82.

Great American Opportunities, Inc. v. Cherrydale Fundraising, LLC et al., C.A. No. 3718-VCP (Del. Ch. Jan. 29, 2010)

5/30: Dish Network Corp., Echostar DBS Corp., Echostar Technologies, LLC, Echosphere, LLC, Dish Network, LLC v. TiVo Inc. (declaratory judgment of patent non-infringement)
6/2: Cephalon, Inc. and CIMA Labs, Inc. v. Watson Pharmaceuticals, Inc., Watson Laboratories, Inc. (patent infringement)
6/4: W. Neudorff GmbH KG v. Falcon Lab LLC (declaratory judgment of patent non-infringement and invalidity)
6/4: LG Electronics USA Inc., LG Electronics Inc., LG Electronics Monterrey Mexico S.A., DE, CV v. Whirlpool Corp., Whirlpool Patents Co., Whirlpool Manufacturing Corp., Maytag Corp. (patent infringement)
6/4: Motivation Innovations, LLC v. DSW, Inc., Value City Department Stores, LLC, Bed, Bath & Beyond, Inc. and Hallmark Cards, Inc. (patent infringement)
6/5: Eli Lilly and Co., The Trustees of Princeton University v. Teva Parenteral Medicines, Inc. (patent infringement)
6/5: Forest Laboratories, Inc., Forest Laboratories Holdings, Ltd., MerzPharma GmbH & Co., KGaA and Merz Pharmaceuticals GmbH v. Apotex Inc. and Apotex Corp. (patent infringement)
6/6: Lannett Co., Inc. v. KV Pharmaceuticals, Drugtech Corp., Ther-RX Corp. (declaratory judgment for patent invalidity, non-infringement, unenforceability and unfair competition)

4/10: Sepracor Inc. , UCB SA and UCB Inc. v. Synthon Pharmaceuticals Inc., Synthon Holding BV, Synthon B.V. and Synthon Laboratories, Inc. (patent infringement)
4/14: Luv N Care Ltd. v. Bamed AG (patent infringement - transferred from Eastern District of Texas)
4/16: Playtex Products Inc. v. Fruit of the Earth Inc. (patent infringement)

The Delaware Chapter of the Federal Bar Association, in conjunction with the District Court of Delaware, will be presenting the first in a series of trial advocacy CLE programs entitled "Federal Practice in the District of Delaware: Openings, Closings and Case Themes" on March 18, 2008 at 1:00 p.m. Registration is currently limited to members of the FBA, however, registration will open up to non-members on Monday, March 10th for anyone else who would like to attend. Space is limited.