Beyond these measures effecting official court business, the Chief Judges also announced that Court personnel have been instructed to adopt cold and flu season hygiene practices. Further, Court personnel have been asked to exercise extra precautions such as staying home from work if they’re feeling ill and telecommuting if possible, consistent with Court policies. The Court urged practitioners to follow similar procedures.

The Chief Judges’ full announcement is available here.

Ms. Hall has served in the United States Attorney’s Office for the District of Delaware for eight years, and currently serves as the Chief of the Civil Division. Prior to the United States Attorney’s Office, Ms. Hall was a patent litigator at the Wilmington office of Fish & Richardson P.C. Ms. Hall holds a B.S. in Biochemistry from the University of Minnesota, a M.Phil. and Ph.D. in Molecular Biophysics and Biochemistry from Yale University, and a J.D. from the University of Pennsylvania. After law school, she clerked for both the Honorable Sharon Prost, Chief Judge of the Court of Appeals for the Federal Circuit, and the Honorable Kent A. Jordan of the Court of Appeals for the Third Circuit.

The Court’s full announcement is available here.

Onyx Therapeutics, Inc. v. Cipla Limited, C.A. No. 16-988-LPS, Memo. Or. (D. Del. Feb. 15, 2019).

In November 2012, Plaintiff PDI filed infringement actions in the District of Delaware alleging infringement of one patent-in-suit. Defendants in the infringement actions filed three petitions for inter partes review of certain claims of the patent-in-suit. The PTAB instituted review on certain claims of certain IPR petitions with the net result that claims 14, 19, and 20 of the patent-in-suit were never instituted by the PTAB. As to all other claims of the patent-in-suit, however, the PTAB eventually made a finding of invalidity.

After conclusion of the IPR, the district court actions resumed and PDI asserted only claim 14, 19, and 20. The Defendants asserted counterclaims for declaratory judgment of invalidity, and PDI moved to dismiss based on estoppel pursuant to 35 U.S.C. § 315(e)(2). In 2017, PDI moved to dismiss the counterclaim and Judge Burke denied the motion because there was no Final Written Decision as to claims 14, 19, or 20.

PDI later filed a motion for summary judgment that Defendant Ubisoft was estopped based on SAS, which was issued in April 2018. PDI argued that “(1) because Ubisoft SA’s 2014 IPR petition had sought review of claims 14, 19 and 20, and (2) because the PTAB ultimately instituted review in the Ubisoft SA IPR proceeding in 2014 as to certain claims as to that petition (though not claims 14, 19 or 20), then (3) had SAS been the law back in 2014, the PTAB would have been required to have also instituted review of claims 14, 19 and 20. From there, PDI argues that Ubisoft should now be estopped from asserting that claims 14, 19 and 20 are invalid on any ground that Ubisoft SA raised or reasonably could have raised in the Ubisoft SA IPR.” Princeton Digital Image Corp. v. Ubisoft Entertainment SA, et al., C.A. No. 13-335-LPS-CJB, Report and Recommendation at 4 (D. Del. Feb. 1, 2019).

But Judge Burke found that this argument for estoppel failed because “of course, SAS was not the law back in 2014, and claims 14, 19 and 20 were not actually addressed in a Final Written Decision in the Ubisoft SA IPR proceeding. In fact, there was no actual PTAB trial or final determination on those claims in that proceeding. Thus, Ubisoft SA did not then have the ability to argue or challenge any invalidity ground in the Ubisoft SA IPR proceeding as to those claims. The Court cannot proceed here, for purposes of applying Section 315(e)(2)’s estoppel provisions, as if these things did happen, when in fact they did not.” Id. at 5. Further, Judge Burke “disagree[d] with PDI’s argument that ‘the IPR statute does not state that a claim must be addressed in the final written decision’ for estoppel to apply as to invalidity arguments regarding that claim. Section 315(e)(2) requires that a patent claim (i.e., claims 14, 19 and 20) has to actually have been a part of the IPR proceeding for estoppel to apply, as such claims are the only ones as to which it can be said that the petitioner ‘raised or reasonably could have raised’ arguments regarding invalidity ‘during that inter partes review.'” Id.

Princeton Digital Image Corp. v. Ubisoft Entertainment SA, et al., C.A. No. 13-335-LPS-CJB, Report and Recommendation (D. Del. Feb. 1, 2019).

Per the Public Notice, funds are only available to maintain normal operations of the District Court through next Friday, January 25. As the Court has determined that all its judicial officers and staff are essential personnel, after that day all District of Delaware employees will continue to report to work. The operations of the Clerk’s Office, including the acceptance and processing of new civil and criminal cases, will also remain in effect.

In terms of active cases, “[t]o the extent possible, the Court will be open and operational without disruption, including by conducting jury trials and other criminal and civil proceedings.” Any proceeding regarding the potential deprivation of an individual’s liberty will be deemed the most essential of all judicial functions. The Court will then determine, on a case-by-case basis, action required on its remaining pending civil and criminal matters. It “remains within the discretion of each judge to manage his or her own docket, which may or may not include granting requests for stays or other relief.”

Both the Public Notice and Shutdown Order are subject to modification at any time.

The full Public Notice and Shutdown Order can be accessed via the following links: Public Notice of District Court Operations During Lapse in Appropriations | Shutdown Order

Although discovery was directed to the “regular and established place of business” inquiry under the second prong of § 1400(b), Judge Stark’s decision addressed both prongs of § 1400(b). Under the first prong—“where the defendant resides”—Plaintiff BMS argued that Delaware was the proper venue, despite the parties agreeing that MPI is incorporated in West Virginia. Specifically, BMS argued that the Delaware incorporation of a separate Mylan entity could be imputed to MPI as a corporate affiliate that had disregarded corporate formalities of separateness. Memo. Op. at 3-5.

Judge Stark “agree[d] with BMS that residency may be imputed under the first prong of the venue statute,” id. at 5, but emphasized that the “Court is not holding that one entity necessarily is a resident of two places . . . [i]nstead, the Court is allowing for the possibility that, for the purposes of venue in patent cases, there are circumstances under which it is appropriate to impute the residence of one entity to another entity – where there is an alter ego relationship or piercing of the corporate veil – and in those circumstances the law allows the Court to treat one entity as if it were a resident in a second district.” Id. at 6.

On the record before the Court, however, Judge Stark found that BMS had not met its burden of showing an alter ego relationship. The evidence “received over several months of discovery” showed “a close relationship between MPI and Mylan Securitization” but was “insufficient to pierce the corporate veil.” Id. at 8. More specifically, establishing an alter ego relationship would require more than showing that the Delaware entity “(1) is wholly-owned by MPI; (2) does not have its own employees, revenue, profits, Delaware tax filings, or facilities; (3) is represented by the same counsel as MPI in transactions with MPI; (4) has ‘tiny’ costs of operations; and (5) shares one overlapping director with MPI.” Id. “Even considering all of these factors together and in the light most favorable to BMS, they do not support disregarding MPI’s separate corporate status, as Plaintiffs have not shown any evidence of fraud, unfairness, or injustice.” Id. at 9.

Judge Stark also rejected BMS’s contention that the general venue statute of 28 U.S.C. § 1391 applied rather than the patent venue statute of § 1400 because “the text of § 1400(b), uses of the term ‘civil action for patent infringement’ elsewhere in the U.S. Code, the patent venue statute’s legislative history, the structure of and policy behind the Hatch-Waxman Act, and general policy considerations all ‘support treating Hatch-Waxman actions as different from traditional infringement actions for venue purposes.’” Id. at 11. Judge Stark explained, however, that not only had BMS waived this argument, but the TC Heartland decision had “clearly articulated that ‘the patent venue statute alone should control venue in patent infringement proceedings,’” and BMS’s Hatch-Waxman action unquestionably was a patent infringement proceeding. Id. at 11-12.

Finally, Judge Stark found that any further venue discovery was “unwarranted” in light of the substantial discovery that had already occurred, which led the Court to the conclusion that further discovery “could amount to a fishing expedition, and might not soon end nor ever satisfy Plaintiffs.” Id. at 10.

Bristol-Myers Squibb Co., et al. v. Mylan Pharmaceuticals Inc., et al., C.A. No. 17-379-LPS (D. Del. Oct. 18, 2018).

District of Delaware Welcomes Judges Connolly and Noreika

The United States District Court for the District of Delaware is pleased to welcome the Honorable Colm F. Connolly and the Honorable Maryellen Noreika as United States District Court Judges.

Judge Connolly and Judge Noreika both took the oath of office this week. They become the 26th and 27th individuals in the history of the Court to be appointed as District Judges.

The new Judges will begin to be assigned new cases on August 15. From that point forward, all four of the Court’s active District Judges will receive an approximately equal share of new cases, consistent with the case assignment practices that were in place when the Court was last at full strength, on February 3, 2017.

The Court will be eliminating the Vacant Judgeship (“VAC”) docket. VAC cases that are currently assigned to a Magistrate Judge will – absent consent of the parties to the jurisdiction of the Magistrate Judge – be reassigned to a District Judge, principally Judges Connolly and Noreika.

The Court will also be phasing out the regular assignment of cases to Visiting Judges. Cases that are currently assigned to a Visiting Judge will either remain with such Visiting Judge or may alternatively be reassigned to a Delaware District Judge, principally to Judges Connolly and Noreika.

Senior Judge Sleet will be retiring from the bench at the end of September. All GMS cases will be reassigned, by a date on or around Judge Sleet’s retirement, principally to Judges Connolly and Noreika.

The case reassignment plans announced here are likely to take many weeks to complete.

Public investiture ceremonies for the new Judges will be held in the coming months. Further details will be provided when available.

Colm Connolly is a partner with the law firm of Morgan, Lewis & Bockius LLP, where he manages the Wilmington office as a member of the firm’s litigation and intellectual property practice groups. He joined Morgan Lewis in 2009, after serving eight years as the United States Attorney for the District of Delaware. Before his confirmation as United States Attorney, Mr. Connolly spent more than two years as a partner in the Wilmington law firm Morris, Nichols, Arsht & Tunnell LLP. Prior to joining Morris Nichols, Mr. Connolly served for seven years as an Assistant United States Attorney for the District of Delaware and as a law clerk to Judge Walter K. Stapleton of the U.S. Court of Appeals for the Third Circuit. Mr. Connolly earned his B.A., with honors, from the University of Notre Dame, his M.Sc. from the London School of Economics, and his J.D., with honors, from the Duke University School of Law.

Maryellen Noreika is a partner in the Wilmington law firm of Morris, Nichols, Arsht & Tunnell LLP where she began her career as an associate upon graduation from law school in 1993. During her 24 years at Morris Nichols, Ms. Noreika has served as counsel in more than 500 cases, while specializing in patent law, and representing parties in cases involving biotechnology, chemistry, consumer products, computer science, medical devices, and pharmaceuticals. Ms. Noreika earned her B.S. from Lehigh University, her M.A. in biology from Columbia University, and her J.D., magna cum laude, from the University of Pittsburgh, where she was inducted into the Order of the Coif, and served as a member of the University of Pittsburgh Law Review.

The nominees’ answers to the Questionnaire for Judicial Nominees can be accessed below:

Connolly:
https://www.judiciary.senate.gov/imo/media/doc/Connolly%20SJQ.pdf

Noreika:
https://www.judiciary.senate.gov/imo/media/doc/Noreika%20SJQ.pdf

The primary areas of the practice will include:

Prevention of Loss of Trade Secrets and Goodwill

• Trade Secret and Employee Protection Programs. Our team works with clients to adopt human resources and employment policies designed to eliminate the misappropriation of confidential information and trade secrets. This includes the creation and implementation of enforceable noncompetition and confidentiality agreements to prevent or limit the loss of client goodwill.
• Joint Ventures/Mergers & Acquisitions Protections.  Our team works with clients who are involved in negotiations involving mergers and acquisitions or joint ventures to ensure that they have taken the appropriate measures to protect goodwill and proprietary information exchanged during those transactions.
• Employee On/Off Boarding.  Our team guides clients through the hiring process for new hires with post-employment restrictions so as to avoid disputes with prior employers.  We also counsel clients on effective termination procedures to ensure former employees do not become new competitors.

Investigation of Employee Misappropriation

• Investigation of Employee Misuse or Misappropriation.  Should a breach of confidentiality occur, our team quickly investigates the severity of the potential loss and develops a plan to remedy any harm.  This includes the use of forensics to identify and prevent potential further trade secret usage or disclosure.

Trade Secret and Restrictive Covenant Litigation

• Litigation.  Our multi-practice team litigates disputes in courts all around the Mid-Atlantic region. Delaware in particular has become a forum of choice for those seeking to protect their intellectual and competitive interests. We have significant experience litigating issues related to trade secrets, non-competition agreements, and non-solicitation agreements before the Delaware Court of Chancery, Delaware Superior Court and District Court for the District of Delaware. We routinely handle expedited cases involving temporary restraining orders, preliminary injunctions, as well as choice of law and venue issues as they relate to efforts to enforce out-of-state agreements.