A Blog About Intellectual Property Litigation and the District of Delaware


Entries for date: August 2022

An Interesting Wrinkle In Safe Harbor Law

Nathan R. Hoeschen, Aug. 4, 2022
Safe Harbor

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Wind Ira, Unsplash

We've discussed before how difficult it is to successfully invoke the safe harbor provision of 271 at the motion to dismiss stage. This is especially so since a plaintiff generally need not look very hard to find statements from the Defendant that they are, like, totally about to sell eleventy-billion-dollars worth of the drug in question. How then, can a defendant—with all inferences taken against them—show that the otherwise infringing product is "solely for uses reasonably related to the development and submission of information under a Federal law which regulates the manufacture, use, or sale of drugs or veterinary biological products?"

The defendant in Allergan, Inc. v. Revance Therapeutics, Inc., No. 21-1411-RGA, 2022 U.S. Dist. …

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Defendant Succeeds in Limiting Claims Based on the Specification

Andrew E. Russell, Aug. 3, 2022
Claim Construction

View from a fisheye lens
View from a fisheye lens Kevin Grieve, Unsplash

Defendants often want to import limitations from the specification to the claims. It only takes one missing claim element per claim to defeat an allegation of patent infringement (setting aside DOE). And the language of patent specifications is often narrower than the claims themselves, providing ample opportunities to find limitations.

Federal Circuit precedent, of course, says that the Court should avoid importing limitations from the specification into the claims—but using the specification to interpret the meaning of a claim is OK. Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005). As countless courts have recognized, that is a fine line.

As a result, defendants' early-case strategy often …

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The Double Waiver Maneuver

Nathan R. Hoeschen, Aug. 2, 2022
Waiver

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Last summer, Daniel Jensen, Unsplash

We've all spotted a waiver in the other side's papers—some issue that would have been raised earlier or more clearly by a noble opponent in a just world. Normally the issue doesn't merit more than a finger-shaking footnote, but its galling nonetheless.

Forget it Jake, it's Delaware.

An Issue Ignored

This brings us to the convoluted saga of San Rocco Therapeutics, LLC v. Bluebird Bio, Inc. The plaintiff had a license to the patents-in-suit and the parties disputed whether it was sufficient to grant standing. Because that license had an arbitration provision, the defendant moved to stay the case and compel arbitration.

In their opening brief, however, Defendants did not address the threshold …

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Judge Connolly's April 2022 Standing Orders Apply to Existing Cases, Should Not Be Taken Lightly

Andrew E. Russell, Aug. 1, 2022
Standing Orders FRCP 7.1

Hatchet on Log
Andrew E. Russell, CC BY 2.0

We posted earlier this year about Judge Connolly's new standing orders requiring plaintiffs to disclose litigation funding and Rule 7.1 disclosure requirements for certain entities such as LLCs.

In that post, we pointed out that "the language seems to apply to existing cases, but there is no explicit deadline for compliance. Personally, though, I'd probably get moving..."

Apparently, counsel for the parties in VLSI Technology LLC v. Intel Corporation, C.A. No. 18-966 (D. Del.) do not read the blog.

About two weeks ago, the Court issued oral orders in VLSI directing the parties to comply with his standing orders:

ORAL ORDER: It is HEREBY ORDERED that each party shall …
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