A Blog About Intellectual Property Litigation and the District of Delaware


Entries for date: 2021

Judge Andrews Rejects 50/50 Starting Point for Hypothetical Negotiation

Jeff Castellano, Sept. 21, 2021
Daubert

Damages experts in patent infringement cases typically rely upon the Georgia-Pacific factors to guide their reasonable royalty analysis. Those factors are designed to predict the result of a hypothetical (and thus, fictional) negotiation between the parties, had the parties been willing participants in such a negotiation. But it is important to remember that the starting point for the application of the Georgia-Pacific factors must be tied to the facts of the case, like the factors themselves.

Late last week, Judge Andrews excluded a plaintiff's damages expert for his use of a 50/50 starting point for the hypothetical negotiation that was not sufficiently linked to the facts, as required by Federal Rule of Evidence 702.

The issue came to Judge Andrews...

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Chief Judge Connolly Confirms Again that Willfulness Requires Pre-Suit Activity, Grants Summary Judgment

Andrew E. Russell, Sept. 20, 2021
Willfulness Summary Judgment

Nope
Daniel Herron, Unsplash

We've written about how Chief Judge Connolly has taken a stand on willfulness and indirect infringement allegations, ruling unambiguously that a lawsuit itself cannot be the basis for knowledge of infringement to support a claim of willfulness or inducement.

Today, he took it one step further, granting summary judgment of no willfulness even though plaintiff accused new products that were released after the complaint:

Boston Scientific's . . . argument is that summary judgment is precluded because "Nevro was put on notice of Boston Scientific's [#]933 and [#]193 Patents and its infringement of those patents at least as early as December 9, 2016, when Boston Scientific filed its 2016 Complaint," and "[r]ather than make any effort …
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Defendant Gets Summary Judgment Win on Eve of Trial

Jeff Castellano, Sept. 16, 2021
Summary Judgment Section 101

Most summary judgment motions in patent cases are denied. That's one reason Judge Connolly issued a standing order earlier this year requiring that parties rank their summary judgment motions and explaining that in most cases he will not consider a party's summary judgment motion if he has previously denied a summary judgment motion by that party.

Judge Connolly noted that "the complexity, voluminous record, competing expert testimony, and scorched-earth lawyering in the typical patent case make it almost inevitable that a disputed material fact will preclude summary judgment." Nonetheless, he expressed hope "that an effectively managed summary judgment practice can bring about efficiencies and cost savings."

A few days ago, in Chromadex, Inc. v. Elysium Health, Inc., C.A. No. 18-1434-CFC, Judge Connolly granted a motion for summary judgment of invalidity under 35 U.S.C. § 101, just weeks before trial...

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A Modest Proposal

Nathan R. Hoeschen, Sept. 16, 2021
Page Limits

jay-wennington-BxNVcWPRcbU-unsplash.jpg
Jay Wennington, Unsplash

There's rarely enough pages to include everything you want to in a brief. Asking for more pages can also be rather fraught, and its difficult to convincingly explain why your case is more complicated -- i.e. more deserving of the court's limited time -- than any of the other complex and high-dollar cases moving through the district.

Because of this, it can be especially galling to leave pages on the table. This can happen, for instance, when briefing motions in limine before judge Noreika, whose standard scheduling order allows a party to brief no more than 3 MIL's with opening and answering briefs limited to 3 pages each and one page replies.

But what if …

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Judge Bibas: "Equivalent" Doesn't Imply "Bioequivalent"

David M. Fry, Sept. 15, 2021
MTD Twombly

Drugs
freestocks, Unsplash

Sitting by designation in D. Del., Circuit Judge Bibas recently issued an interesting 12(b)(6) opinion on false-advertising claims in the pharma context. These opinions tend to fly under the radar, but they often contain helpful practice tips.

The parties "both sell a medical cream, each with the same active ingredients in the same strength." Although the defendant's cream "is not an FDA-approved generic and has not been tested for bioequivalence[,]" it was listed in a database of pharmaceutical products "as an 'Equivalent Drug[.]'"

Judge Bibas found that this statement was neither false nor misleading:

Yet Sebela insists that “equivalent” implies more: bioequivalence and FDA approval. . . . The FDA has not approved TruPharma’s cream. But …
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Judge Goldberg Weighs in on Redactions of Confidential Information

Andrew E. Russell, Sept. 14, 2021
Redactions

We've talked a lot lately about efforts by some of the D. Del. judges to push back against over-redaction of sealed filings. In particular, Judge Andrews has recently made clear that parties must not redact non-confidential information in exhibits—e.g., the parties must make line-by-line redactions instead of just redacting exhibits in their entirety. This increases public access but, obviously, is less convenient for parties and counsel.

Last week, visiting Judge Goldberg addressed whether a third party seeking to seal information was required to make similar line-by-line redactions:

The settlement agreements also contain several non-financial terms, such as the names and addresses of the corporate entities subject to the agreement, definitions, notifications, and general provisions governing confidentiality, assignment, choice of …
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Disappointing Rule 36 Affirmance of Exclusion of Japanese Patent Office Publication - A Missed Opportunity for a Federal Circuit Opinion

Andrew E. Russell, Sept. 13, 2021
§ 102 FRE

JP 1992-136787

Last year, we posted about an interesting result in a Delaware patent trial, where Judge Connolly excluded a Japanese Patent Office Utility Model Publication after the defendant failed to offer sufficient evidence of public accessibility (and actually offered some evidence of inaccessibility).

As we explained at the time, the defendant had tried to avoid IPR estoppel by arguing that it could not have found the reference in a reasonable search, but then argued that the reference was sufficiently publicly accessible to be a prior art reference. The Court rejected that argument, holding that the JPO publication was not publicly accessible and couldn't be used as prior art.

We noted this was a great opportunity for the the Federal Circuit to …

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Court Construes Claims as Means-Plus-Function, Holds Them Indefinite for Lack of Structure

Andrew E. Russell, Sept. 10, 2021
Claim Construction

A peloton?
Jonathan Petit, Unsplash

Before § 101 got big in the early-to-mid 2010's, I recall there being a lot more discussion about construing claims—particularly software claims—to be means-plus-function claims, and then trying to get them invalidated under § 112 ¶ 6 for lack of corresponding structure.

Lately that issue seems to be litigated less frequently, but an order from Judge Andrews today shows that it hasn't faded away completely.

He looked at two claim elements:

a [] translator device adapted to translate data between the exercise communication protocol and the computer communication protocol.

and

translator devices are configured to communicatively couple the first and second exercise devices to the means for comparing so as to facilitate communication of data representative …
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Take What You Want and Pay for It

Nathan R. Hoeschen, Sept. 9, 2021
Fees

alexander-mils-lCPhGxs7pww-unsplash.jpg
Girl holding American Dollar Bills, Alexander Mils, Unsplash

Those with a habit of perusing these posts (thank you, persons of class and distinction) may recall the interesting case of Almirall, LLC v. Torrent Pharmaceuticals Ltd., C.A No. 20-1373-LPS, D.I. 50 (D. Del. July 13, 2021) where Judge Stark granted a 12(c) motion after ruling that the plaintiff had waived various arguments by failing to raise them until oral argument.

I, for one, expected that to be the last we heard of that case for some time. Last Friday, however, Judge Stark granted Almirall's motion to amend the complaint to reassert these same claims, based on new allegations similar to those the Court previously found waived. Judge …

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Judge Andrews Strikes Opening Brief for Non-Compliance with Local Rules

David M. Fry, Sept. 8, 2021
Legal Writing Local Rules

You're drafting a brief in D. Del., and you're not sure what it's supposed to look like. You're in luck! The local rules tell you exactly what sections you need to include in an opening or answering brief (see LR 7.1.3(c)(1) for more detail):

  1. Two tables (a table of contents and a table of authorities).
  2. "A statement of the nature and stage of the proceedings."
  3. "A summary of argument, setting forth in separately numbered paragraphs the legal propositions upon which the party relies."
  4. "A concise statement of facts, with supporting references to the record, presenting the background of the questions at issue."
  5. "An argument" with "appropriate headings distinctly setting forth separate points."
  6. "A short …
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