W.L. Gore & Associates, Inc. v. C.R. Bard, Inc., et al., C.A. No. 11-515 – LPS, July 27, 2016. (unsealed July 29, 2016)

Stark, C. J. Plaintiff’s motion for sanctions is denied; defendants’ motion for summary judgment of no lost profits and no standing is granted in part and denied in part. Briefing on defendants’ motion was completed on June 6, 2016.

Defendants contend that there was insufficient evidence of a valid assignment of the rights to the patent-in-suit and, even if there were, plaintiff lacked standing to recover lost profits damages before the assignment. The court concludes that the purported assignment to plaintiff was in fact an assignment in writing, and not merely a notice of assignment as defendants claim. Defendants’ claim that there was no consideration did not impact the validity of the assignment since gratuitous assignment of a patent are permissible under Delaware law. This plaintiff has standing to sue. With respect to damages, plaintiff stands in the shoes of assignor, a non-practicing entity, who did not practice the patent. If the patentee is not selling the patent, there can be no lost profits. The court finds that plaintiff is not entitled to recover pre-assignment lost profits damages. Plaintiff moved for sanction due to waiting for years to spring the standing issue on the first day of trial. Plaintiff also contends that counsel for defendants violated a protective order in other litigation by relying on confidential information introduced there in the present case. The court finds that plaintiff’s argument that defendants made intentional misrepresentation to the court is implausible. The court is also not persuaded that defendants violated another judge’s protective order. The court ordered briefing on whether defendants’ request for fees defending serious allegations of misconduct should be granted.