A Blog About Intellectual Property Litigation and the District of Delaware


Stipulation, Smipulation

Nathan R. Hoeschen, June 18, 2024
ANDA Judgment

In a modern patent case—with dozens of claims and zillions of similar accused products—there are innumerable possible permutations of infringement and invalidity outcomes.

This can make it pretty difficult to craft a stipulation on undisputed issues.

The image generator I was using is now behind a paywall so I'm trying out new ones. Expect some more cursed illustrations like this for the next little while
The image generator I was using is now behind a paywall so I'm trying out new ones. Expect some more cursed illustrations like this for the next little while AI-Generated, displayed with permission

This was the hard lesson in Janssen Pharms, Inc. v. Tolmar, Inc., C.A. No. 21-1784-WCB, D.I. 198 (D. Del. June 13, 2024). In that ANDA case, the defendant had stipulated that "if any of claims 1–7, claim 15, and claims 17–21 (as dependent from claims 1 and 4) of the ’906 patent are not found to be invalid in this Action, Tolmar will agree to entry of a judgment of infringement and order pursuant to 35 U.S.C. 271(e)(4)(A) with respect to such claim.” Id. at 7 (quoting D.I. 86).

The whole thing went to trial and all of those claims were found not to be invalid. However, each of the above claims required a specific dosage strength, while Tolmar's ANDA covered several other doses in addition to the claimed ones. So, after trial they amended their ANDA to remove the infringing dosage and subsequently moved to amend the judgment to all the FDA to approve the amended ANDA for the (allegedly) non-infringing dosages.

Judge Bryson denied the motion however, holding that ...

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Reminder: You Must Ask to Seal the Hearing or Teleconference When Either Side Discloses Confidential Information

Andrew E. Russell, June 17, 2024
Sealing Motion to Seal

Secret
Paolo Chiabrando, Unsplash

Given how easy it is to seal information on the docket in Delaware, parties often don't think too much about the fact that they are going to discuss confidential information at a hearing, and may not want to interrupt the process to seek to seal the courtroom. And parties rarely seek to seal teleconferences, if only the parties are on.

But recent orders have made clear that if you may need to later seek to seal the transcript of a teleconference, hearing, or trial, the only safe thing to do is to request to seal the proceeding. This is true even if you are certain that only the parties are on the line.

We saw this …

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Court Rejects Argument That Searching with Search Terms Absolves Accused Infringer of Production of "All" Technical Documents—Including Those that Don't Hit on Terms

Andrew E. Russell, June 15, 2024
Default Standard Document Production

Source Code
Markus Spiske, Unsplash

Over 10 years ago, the District of Delaware adopted its "Default Standard" for discovery, which sets forth several basic rules for discovery, particularly in patent actions.

One of the rules is the requirement to produce "core technical documents" early in the case:

Within 30 days after receipt of the [list of accused products and asserted patents], each defendant shall produce to the plaintiff the core technical documents related to the accused product(s), including but not limited to operation manuals, product literature, schematics, and specifications.

Pretty quickly after its adoption, the Court held that this includes non-public documents, after parties started trying to skirt the rule by dumping user manuals on the patentee.

These days, …

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5-Body Problem

Nathan R. Hoeschen, June 13, 2024
Meet-and-Confer Discovery Dispute

Bringing a discovery dispute is a bit of a 3-body problem. At any given time, you've probably got a half dozen complaints with what the other side is doing. When one boils over into a dispute you have to grapple with whether you should just bring all of them—and risk looking unreasonable—or just address the most pressing and risk having to raise serial disputes, which might look even worse. The push and pull can quickly become insoluble.

Guillermo Ferla, Unsplash

Luckily, we got an Order from Judge Burke this week that should make this calculus slightly easier going forward.

The defendants in Bardy Diagnostics, Inc. v. Vital Connect, Inc., C.A. No. 22-351-CFC-CJB, D.I. 97 (D. Del. June 11, 2024) (Oral Order) brought the first discovery dispute of the case (by either party) via judge Burkes usual procedure of filing a letter listing the disputes.

The disputes read as the usual humdrum list of custodians not searched and rogs insufficiently answered. The only thing out of the ordinary, is that there were 5 of them included in the letter.

Judge Burke responded to the request for a teleconference the next day with ...

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An Exceptionally Polite Opinion

Nathan R. Hoeschen, June 11, 2024
Daubert

We got an interesting Daubert opinion from judge Burke yesterday. It's actually not in a patent case, but the issue was neat enough that I'm willing to make an exception to our usual rule.

(Eds. note—I really hate that Daubert is always italicized because its a case name, but the pronunciation is not at all French. I see italics and I get all excited to roll some R's or whatever and then I just sound like the midwesterner I am).

The issue: can an expert report be too polite?

They've always struck me as a very polite-looking creature, despite the whole cannibalism thing
They've always struck me as a very polite-looking creature, despite the whole cannibalism thing David Clode, Unsplash

The case involved various disclosures in a business transaction, and the expert in question was an accounting professor opining on whether certain financial disclosures were deficient. Reading through the statements, they do strike me as unusual for an expert report:

“I am uneasy about the fact that there were no disclosures [in the financial statements] about Schratter’s ability to continue to operate as a going concern.”
“I was surprised that the financial statements did not make any mention of a possible impairment of goodwill. . . . Given the financial condition of Schratter in 2014 and its recent financial performance, I would have expected to see some disclosures about an impairment test for goodwill and why no impairment was recorded.”

ECB USA, Inc. v. Savencia, S.A., C.A. No. 19-731-GBW-CJB (D. Del. June 10, 2024) (Mem. Order) (quoting expert report of Ricky Lee Antle).

I mean, you see it right? This sort of language—both personal and measured—is the sort you might expect to hear from your own deeply disappointed accountant, rather than in an expert report. Still, it's tough to say what exactly would be objectionable about it.

The tack defendants chose was to challenge these statements as ...

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Court Finds Case Exceptional, Awards Fees Against Plaintiff

Andrew E. Russell, June 10, 2024
Exceptional Case Finding § 285

"Did . . . did he just end our case with deposition testimony? Ah, I'm sure it will be fine." AI-Generated, displayed with permission

The Court unsealed a memorandum order yesterday in Sensormatic Electronics, LLC v. Genetec (USA) Inc., C.A. No. 20-760-GBW (D. Del. Mar. 27, 2024), where Judge Williams found a patent case exceptional, and awarded fees against the patentee plaintiff.

The Court previously held that one of the asserted patents, the '652 patent, was invalid because it was offered for sale after it was reduced to practice and more than a year before when the inventor applied for a patent.

In this order, the core cause of the exceptional case finding was that, after a …

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Judge Burke Strikes Report, Elaborates on Proper Scope of Expert Testimony at Trial

Andrew E. Russell, June 7, 2024
Trial Practice Expert Reports

Lawyers and an expert in an oasis
AI-Generated, displayed with permission

Here's a scenario that can happen in a patent case: The patentee serves an opening expert report alleging infringement. Your expert responds, detailing every reason why the design documents show non-infringment. The patentee then serves a reply expert report, citing new documents that it says show infringement.

What do you do now? There are at least four answers: (1) move for leave to serve a sur-reply report to address the new docs; (2) just serve a sur-reply report, without leave, and fight the inevitable motion to strike; (3) skip the report but have the expert be prepared to discuss the new papers at deposition, and hope plaintiff asks; or (4) just plan to address the new …

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Zone Of Interest

Nathan R. Hoeschen, June 6, 2024
Prejudgment Interest

Still thinking about my plums! It's the season baby!
Still thinking about my plums! It's the season baby! Svitlana, Unsplash

Its easy to forget about prejudgment interest. You only need to address after the trial is over when you're putting together the final judgment, but the seeds of victory or defeat are oft planted in the fertile loam of pretrial submissions and expert reports.

Case in point, Judge Williams' decision this week in Board of Regents, the Univ. of Texas Sys. v. Boston Sci. Corp., C.A. No. 18-392-GBW (D. Del. June 5, 2024) (Mem. Op.). At trial, the plaintiff prevailed on all counts and the Jury awarded a verdict of $42,000,000.

Here's the form:

Court

You'll notice the verdict says nothing about whether the royalty …

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Court Dismisses Case Without Prejudice, Holding That Spending "Millions" Defending Co-Pending ITC Action Does Not Require With-Prejudice Dismissal

Andrew E. Russell, June 5, 2024
With Prejudice Dismissal

Dollar Bills
Sharon McCutcheon, Unsplash

In DivX, LLC v. Realtek Semiconductor Corp., C.A. No. 20-1202-JLH (D. Del.), the parties disputed whether the case should be dismissed with or without prejudice after the plaintiff moved to dismiss its own case.

The defendant responded, opposing dismissal without prejudice and arguing that a with-prejudice dismissal was warranted under a four-factor test used in previous cases (which focuses mainly on effort and expense of the present and potential future litigation, progress of the present litigation, and diligence in moving to dismiss). Id., D.I. 74 at 9.

The defendant argued that plaintiff had filed an ITC action against it, resulting in millions of dollars in fees. Id. at 12.

The Court didn't …

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