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The District of Delaware today announced the selection of Jennifer L. Hall to become a United States Magistrate Judge. Ms. Hall will fill the fourth Magistrate Judge seat in the District of Delaware, which was recently created by the Judicial Conference of the United States. Ms. Hall has been selected after a process that included screening dozens of applications, and she will begin later this year after completion of an FBI background investigation.

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.

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In a Memorandum Order unsealed on February 19, Chief Judge Stark addressed disputes over Plaintiff Onyx’s privilege log. Before making rulings on specific documents reviewed in camera, Judge Stark ruled generally as to the extent of the applicable privilege. Judge Stark first recognized that the Federal Circuit has recognized a privilege between non-attorney patent agents and their clients, but that such a privilege is narrow. Onyx Therapeutics, Inc. v. Cipla Limited, C.A. No. 16-988-LPS, Memo. Or. at 3 (D. Del. Feb. 15, 2019) (citing In re Queen’s U at Kingston, 820 F.3d 1287, 1301-02 (Fed. Cir. 2016)). Although it is clear that privilege attaches only to communications that are “reasonably necessary and incident to the prosecution of patents,” the caselaw on this point is “sparse.” Id. “In the instant case, the circumstances the Court confronts appear to involve scientists who identified potential alternative formulations and – before finalizing a research plan, before undertaking testing or viability studies, before reducing their ultimate invention to practice, and well before they committed to having claims drafted so a patent application could be prosecuted – consulted a patent agent for guidance, evidently for assistance in understanding the patent landscape in order to direct their efforts toward results that were not already the subject of prior art claims. In the Court’s view, based on the record before it, such communications with a patent agent are not ‘reasonably necessary and incident to’ the ultimate patent prosecution. While such communications would almost certainly be within the scope of attorney-client privilege, here they are not protected by the narrower patent-agent privilege.” Id.

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

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This Report and Recommendation by Magistrate Judge Burke addresses a factual scenario that may apply in several cases in the wake of the Supreme Court’s decision in SAS Inst. Inc. v. Iancu, 138 S.Ct. 1348 (2018).

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.

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Today the District of Delaware issued a Public Notice and Order regarding its anticipated continued operations during the federal government shutdown.

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.”

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In September 2017, Chief Judge Stark denied a motion filed by Mylan Pharmaceuticals Inc. (MPI) to dismiss for lack of proper venue in light of TC Heartland LLC v. Kraft Foods Group Brands LLC, 137 S. Ct. 1514, 1519 (2017). That dismissal was without prejudice because Judge Stark found that he could not determine whether venue was proper on the record before him. Accordingly, the Court ordered expedited, venue-related discovery into whether MPI had a “regular and established place of business,” as required by 28 U.S.C. § 1400(b). After expedited discovery, including three hearings of various discovery disputes, MPI renewed its motion to dismiss. On October 18, Judge Stark issued his decision on the renewed motion.

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.

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Today the Court has released an announcement regarding the assignment of existing and new cases to District Judges and a modified plan for the utilization of magistrate judges. The announcement is available here.

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The United States District Court for the District of Delaware today released the following announcement:

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.

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On August 1, 2018, the Senate confirmed Colm F. Connolly and Maryellen Noreika as the District of Delaware’s newest District Judges. Connolly will fill the seat vacated by the retirement of Judge Sue L. Robinson, and Noreika will fill the seat vacated by Senior Judge Gregory M. Sleet. These confirmations return the District of Delaware to a full complement of District Judges.

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

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Young Conaway Stargatt & Taylor, LLP recently unveiled the formation of its Trade Secret and Employee Mobility practice.   Our practice is comprised of a team of intellectual property, employment, corporate, and business litigation specialists who have a wide range of experience with internal investigations, employee mobility counseling, and prosecuting and defending expedited cases in various courts in and around the Mid-Atlantic region, including the Delaware Court of Chancery, Delaware Superior Court and District Court for the District of Delaware.

The primary areas of the practice will include:

Prevention of Loss of Trade Secrets and Goodwill
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Registration is now open for the 2018 District of Delaware Bench and Bar Conference. Please visit https://defba.org/bench-and-bar/ to register. The agenda for the Conference is available here. We hope to see you on Mary 3 and 4.

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