Judge Andrews issued an interesting opinion on opposing summary judgment motions yesterday in Takeda Pharmaceuticals U.S.A., Inc. v. Mylan Pharmaceuticals Inc., C.A. No. 19-2216-RGA (D. Del.).
The parties settled a patent infringement suit years ago in a way that permitted the defendant to nonetheless launch its drug product if the patent claims were asserted against a third party and found invalid or not infringed.
Some of the claims were asserted against a third party and held invalid or not infringed, and the defendant launched. The plaintiff disagreed that this permitted launch. It sued the defendant for breach of contract and, critically, for patent infringement.
Plaintiffs in the patent game tend to treat prior art references like particular unwelcome guests. There is an obvious level of affront when they arrive, tempered only by what politeness can be mustered. Once they are in the door, there are constant references to how crowded it is, how little air, how maybe we should just call it a night even though its just so much fun to see everyone.
(Eds. Note -- can you tell I'm from the midwest? I was going over this metaphor with one of the many New Yorker's I know and they seemed not to get the dynamic).
Once you finally cajole them our of the house, packed with leftovers and other bribes, it …
Some home-cooked stuffing. Apparently the photo in our Thanksgiving post was uncooked stuffing.Andrew E. Russell, displayed with permission
We're back! I hope you all had a great Thanksgiving. As we'd hoped, the Court issued some interesting decisions last week, including a denial of a motion to strike in Lindis Biotech, GmbH v. Amgen, Inc., C.A. No. 22-35-GBW (D. Del. Nov. 26, 2024).
In that case, the parties had agreed to a case narrowing schedule that required the accused infringer to cut back to 6 prior art references per patent by 14 days before the pretrial order, not including references used to show the state of the art, the knowledge of one skilled in the art, …
Delicious Thanksgiving food made by local attorney Lauren E.M. Russell (who is also the author's wife)Andrew E. Russell
Happy Thanksgiving! Don't forget that both Thursday and Friday of this week are court holidays.
There haven't been a lot of Court orders and opinions in the last week or so, and we've been running a bit short on topics (we're always open to suggestions). Now seems like a good time for a blog break. See you next week!
Both Chief Judge Connolly and Judge Williams require parties to rank their summary judgment motions. This is an effort to deter meritless summary judgment motions. Upon denying a higher-ranked motion, the Court will automatically deny lower-ranked motions as well.
In other words: You had better be careful when ranking your summary judgment motions. But it can be tricky! Do you put the one with the highest chance of success first, even if it's on an issue you don't care as much about? Or do you rank the tougher SJ motion first because it addresses a critical issue first, to ensure that the Court will at least address it?
Judge Burke's decision in CosmoKey Solutions GmbH & Co. KG v. Duo Security, Inc., C.A. No. 18-1477-JLH-CJB (D. Del. Nov. 15, 2024) (Oral Order), deals with a stipulation that encompassed more than intended.
The case began life under the watchful gaze of Chief Judge Connolly. Like all patent cases assigned to him at the time, the scheduling order …
"Loco-Crazy Good Cookers, Inc." wins IP/DE's 2024 Best Company Name Ever award.AI-Generated, displayed with permission
Parties sometimes think that a stay pending an instituted IPR is almost a given. But while a stay is more likely than not, it's not a sure thing.
Last month we saw a even a stipulated stay pending IPRdenied by visiting Judge Choe-Groves (in the time since, by the way, that denial has held firm, and the Court issued a scheduling order).
This week Judge Fallon denied a stay pending an instituted IPR in North Atlantic Imports, LLC v. Loco-Crazy Good Cookers, Inc., C.A. No. 23-999-GBW-SRF (D. Del. Nov. 19, 2024). The Court noted that there were non-patent claims …
Today's post will be the final one for a bit on the subject of indefiniteness rulings at Markman. Long ago, we wrote this post cataloguing which Delaware judges allowed the parties to argue indefiniteness during Markman and which deferred the issue until summary judgment.
At the very bottom of that post, we had a note that Judge Williams had invited indefiniteness argument at a hearing, but we have not yet noted a case where he actually found a claim indefinite.
Until today.
AI-Generated, displayed with permission
Last week, Judge Williams issued his claim construction ruling in Cisco Sys. Inc v. Ramot at Tel Aviv Univ. Ltd., C.A. No. 21-1365-GBW (D. Del. Nov. 12, 2024). In that decision, in addition to construing several terms, Judge Williams found several indefinite:
The Court holds that claims 45-47 and 49-54 of the '998 patent are "invalid for indefiniteness [as] [those] claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention." Nautilus, 572 U.S. at 901. Specifically, with respect to those preceding claims, "the problematic limitation" is the "wherein the N bits of the N bit digital input data word are mapped" clause, which "although not directed to a function performed by a user[,] . . . appear[s] in isolation and [is] not 'specifically tied to structure."' KOM Software, No. CV 18-160-WCB, D.I. 116 at 34 n.6.
Id. at 15-16.
The details are pretty straightforward and not worth recounting here, but there can no longer be any doubt that Judge Williams will kill a claim at Markman.
Artist's interpretation of the Sword of Algorithms piercing the Shield of § 230.AI-Generated, displayed with permission
There has been a lot of political talk lately about § 230 of the Communications Decency Act, 47 U.S.C. § 230, which provides immunity for certain kinds of claims related to user-generated content on social media. It's a hot-button, IP-adjacent topic.
Judge Williams today addressed the question of whether § 230 operates to shield Meta / Facebook from the effects of its algorithms. The case is between former Governer Mike Huckabee and Meta, and involves privacy, publicity, false light, and unjust enrichment claims related to ads Facebook hosted that suggested Governor Huckabee was associated with a CBD product:
You don't have to depose the other parties' experts, and strategically, sometimes it can make sense not to. If you have a good sense that their report(s) are flawed and they may use the deposition to try to add key information to the record (regardless of your questions), it may make sense to avoid the deposition altogether.
That strategy is less common but certainly not unheard of—assuming trial counsel is confident in their positioning and ability to …
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