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Delaware Judge Charles H. Toliver, IV Joins Morris James LLP

Posted In News
Morris James LLP is pleased to announce that Judge Charles H. Toliver, IV will join the firm in June, 2014, at the completion of his second 12-year term as Judge of the Delaware Superior Court. Judge Toliver was initially appointed to the bench in 1990 by Delaware Governor Michael N. Castle and reappointed in 2002 by Governor Thomas R. Carper. Judge Toliver will be a partner in the Litigation Practice and a member of the firm’s Alternative Dispute Resolution Group. Judge Toliver's practice will center upon civil, corporate and domestic relations mediation, arbitration and case analysis. David H. Williams, Morris James’ Managing Partner, stated, “We are extremely pleased to have Judge Toliver join the firm after his distinguished service on the Superior Court. His choice of Morris James among all the opportunities surely presented to him upon retiring from the bench is a sparkling reflection upon our attorneys and our firm. We look forward to his contributions to the firm and the growth of our alternative dispute resolution practice.” More › Share

Superior Court: Action May Proceed Against Licensor Despite First-Filed Actions

STMicroelectronics N.V. v. Agere Sys., Inc., C.A. No. 08C-09-099 MMJ (Del. Super. May 19, 2009) (applying New York law per choice of law provision)

This case illustrates the series of events that may arise when a subsidiary is party to a licensing agreement, but its parent is not.

Here, the licensor sued the parent company for patent infringement in the Eastern District of Texas and before the International Trade Commission.  In response, the parent and subsidiary brought this action in Delaware, claiming that the filing of the patent infringement actions, though only naming the non-signatory parent, violated the licensing agreement’s covenant not to sue.

The Superior Court permitted the claim to move forward, denying the defendant-licensors’ McWane motion on the basis that the Delaware action did not present the same legal and factual issues as the first-filed proceedings.  Further, the Court denied the defendants’ motion to dismiss for failure to state a claim and for lack of standing on the basis that additional discovery was necessary to resolve those issues.

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Licensor's Action to Recover Royalties Overcomes Motion to Dismiss in Superior Court

Boyce Thompson Institute For Plant Research v. MedImmune, Inc., C.A. No. 07C-11-217 JRS (Del. Super. May 19, 2009) (applying New York law per choice of law provision)

This opinion discusses some interesting contractual interpretation and jurisdictional issues arising out of a licensing agreement.  The dispute arose because the licensees denied any obligation to pay royalties to the licensor for products they are manufacturing in a country where, they claim, the licensor does not hold a patent.

The Superior Court found that the contract was ambiguous on whether “covered” products included those that were protected by the licensor anywhere or only those that were protected by a patent in the locations where they were manufactured.  In any case, the Court denied the licensees’ motion to dismiss on the basis that there was no evidence presented to rule out the possibility that the licensees are, in fact, infringing on the patent by their acts in this other country.

The Court also raised the issue of whether it had subject matter jurisdiction to decide the case.  While the Court deferred resolution of the issue, it noted that, if the contract claim requires the Court to determine whether the patent was infringed, then it would likely follow that patent law is a “necessary element” of the breach of contract claim and the federal courts have exclusive subject matter jurisdiction.

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