A Blog About Intellectual Property Litigation and the District of Delaware


I Don't Mean No, I Don't Mean Maybe, I'm Indefinite at Claim Construction

Nathan R. Hoeschen, Aug. 22, 2023
Markman Indefiniteness

As we've covered exhaustively in the past, it's becoming increasingly rare for Delaware Judges to consider indefiniteness at Markman, and it's rarer still to see someone get over the hump and knock a patent out.

AI-Generated, displayed with permission

Judge Andrews, however, is still willing to show a patent who's the boss at Markman (even for a non means-plus-function claim) as demonstrated this week in Genzyme Corp. v. Novartis Gene Therapies, Inc., C.A. No. 21-1736-RGA (D. Del. August 18, 2023).

The term at issue was, unsurprisingly, opaque:

Forms intrastrand base pairs such that expression of a coding region of [a] heterologous sequence is enhanced relative to a second rAAV vector that lacks sufficient intrastrand base pairing to …
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Chief Judge Connolly Holds Mavexar-Related Witness in Contempt, Fines Her $200 Per Day Until She Appears

Andrew E. Russell, Aug. 21, 2023
Mavexar Contempt

Better $200/day than cell block 200, I suppose.
Better $200/day than cell block 200, I suppose. Kenny Eliason, Unsplash

When we last wrote about Mavexar, Chief Judge Connolly had held a civil contempt hearing after he ordered the sole member of Backertop, a Mavexar-related LLC, to appear in-person in Delaware and she failed to appear (she instead initiated a head-on challenge to the authority of the Court). She likewise failed to appear for her contempt hearing.

Today, the Court issued its opinion and order, holding the witness in contempt. It handily dispatched with each of the witness' arguments against the hearing.

It easily rejected their first argument—that the Court lacks jurisdiction after the entity, Backertop Licensing LLC, dismissed it's complaint. The Court reiterated the same ruling it made last time.

Next, the Court easily rejected the idea that civil contempt is "meant to benefit the complainant," citing multiple U.S. Supreme Court opinions to the contrary. It also rejected the idea that a party can re-litigate the underlying order in context of a contempt proceeding.

I found the Court's discussion of the alleged Fifth Amendment violation interesting, particularly when the Court attempts to identify exactly which Fifth Amendment right it could possibly have ...

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The Court Gives No Weight to the Patent Office's Eligibility Determination

Andrew E. Russell, Aug. 20, 2023

Airplane
Pascal Meier, Unsplash

Judge Andrews granted a motion to dismiss on § 101 grounds on Friday in Aviation Capital Partners v. SH Advisors, LLC, C.A. No. 22-1556-RGA (D. Del.).

The case involved a patent that the patent office had determined was patent eligible, after he examiner addressed and ultimately rejected patent ineligibility under § 101.

Judge Andrews was undeterred from re-examining eligibility:

I give no weight to the Patent Office's overall determination that the patent was eligible (which determination the PTO makes either expressly or impliedly for every issued patent), even if the PTO considered the cases being cited here.
* * *
[As to the presence of an inventive concept] I again give …
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Giving Up More than You Intend

Nathan R. Hoeschen, Aug. 17, 2023
Stipulation Obviousness

AI-Generated, displayed with permission

Often times the hard part of a stipulation is just convincing everyone that they're not secretly giving up the farm. Lawyers are used to looking for hidden hooks in every proffered bite, and it's hard to convince us that this one is just tasty fish. We've all heard some scary store about a stipulation that gave away too much and changed the course of a case.

This is one of those stories . . .

But it turns out fine in the end.

UCB, Inc. et al v. Annora Pharma Private Ltd., C.A. No. 20-987-CFC (D. Del. Aug. 16, 2023), dealt with a patent for an anti-seizure drug compound. The defendants conceded infringement, …

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Judge Williams: Rule 30(b)(6) Topics on the Location of Documents Are Improper "Discovery on Discovery"

Andrew E. Russell, Aug. 16, 2023
Discovery on Discovery Discovery

annie-spratt-AFB6S2kibuk-unsplash
Annie Spratt, Unsplash

It's not uncommon to see discovery requests and 30(b)(6) topics asking about the location of documents. In fact, up until 2015, Rule 26 specifically provided for this kind of discovery:

Parties may obtain discovery regarding any nonprivileged matter that is relevant to any party's claim or defense--including the existence, description, nature, custody, condition, and location of any documents or other tangible things . . . .

FRCP 26 (2014).

In 2015, in a (highly commendable) effort to shorten Rule 26, that example was dropped. Now it just reads:

Parties may obtain discovery regarding any nonprivileged matter that is relevant to any party's claim or defense and proportional to the needs of the case . . …
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Here Are Some of Judge Connolly's Mechanical Filing Preferences

Andrew E. Russell, Aug. 15, 2023

Preferences
OpenClipart

An e-mail circulated late last month passing along that Judge Connolly set forth some of his filing preferences at a hearing. I haven't seen the transcript, but I understand he asked local counsel to get the word out (it wouldn't be the first time).

Here is what I heard:

  • When exhibits are filed with a document, he prefers that they be in separate PDFs, not all in one PDF. Note that the judges vary on this.
  • When courtesy copies are sent to the Court, the D.I. number should be written on each document.
  • Thought should be given to how exhibits are presented, i.e. minuscripts are hard to read.

It's always good to know chambers' preferences. I've heard that …

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"Plaintiffs have forfeited their otherwise winning argument."

Andrew E. Russell, Aug. 14, 2023
Stay Pending IPR Stay

Broken
CHUTTERSNAP, Unsplash

Ouch. That's something you never want to see.

We wrote last week about how Judge Andrews—somewhat surprisingly—declined to lift a stay after the PTAB left just 4 of 83 patents standing, and invalidated the rest.

After that decision, the parties filed a series of letters that clarified that the plaintiff had intended to proceed only on the four valid patents, not the rest, but wanted to check with the Court regarding how they should proceed:

[Plaintiff] Cytiva understood that the litigation would proceed only with regard to the four claims that the PTAB upheld as valid, and until JSR’s submission, was not aware that JSR had a contrary view. Cytiva had no intention, and has no intention, …
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How Far Can an Expert Stray from Their Report at Trial?

Andrew E. Russell, Aug. 11, 2023

Michał Mancewicz, Unsplash

One of the more common issues to come up at trial is whether an to what degree an expert can exceed what is in their report. I've heard varying opinions on this from judges in Delaware and elsewhere. Some judges hold experts pretty tightly to their report; others apply something more akin to notice pleading, where the expert merely has to stay within the broad outline of what was addressed.

If you're going to have an expert on either side at trial, it's a good idea to know where your judge stands on this issue beforehand. We got a data point from Judge Andrews on this last week, when he issued a memorandum order on a …

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A New Markman Hearing Procedure from Judge Burke

Andrew E. Russell, Aug. 10, 2023
Markman Hearing Claim Construction

Six
Arisa Chattasa, Unsplash

Here's another interesting order from when we were out. In it, Judge Burke notes a new procedure where he hears oral argument on only six claim terms at the Markman hearing:

ORAL ORDER: The Court hereby ORDERS as follows with respect to the upcoming Markman hearing: (1) The Court will adopt the parties' prior proposal with respect to the length and order of argument. . . . (2) However, it has been the Court's recent practice to hear argument on only six terms/term sets ("terms"). So, by no later than August 11, 2023, the parties shall submit a joint letter telling the Court which terms will be taken on the papers and which six terms will …
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Judge Fallon's New Discovery Dispute Procedures: What Changed?

Andrew E. Russell, Aug. 9, 2023
Discovery Disputes Procedures

Artist's rendition of a typical discovery dispute letter, where counsel did not excerpt the exhibits.
Artist's rendition of a typical discovery dispute letter, where counsel did not excerpt the exhibits. ron dyar, Unsplash

We're still catching up from our two-week break here at IP/DE, and this is another item on our list. Last month Magistrate Judge Fallon issued updated discovery dispute procedures (attached below).

The most common question when these come out is: what changed? The judges don't usually issue redlines, and of course, the old procedures normally disappear from the website immediately (although they are usually available via the Wayback Machine).

Here, the procedures are largely the same, with some minor additions:

  • The required proposed order must list relief for each dispute.
  • Each party should attach only the relevant pages of cited …
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