This isn't news for Delaware FBA members, since Delaware FBA president Jeremy Tigan helpfully sent around an e-mail yesterday.
But for anyone who isn't already aware, Judge Stark's investiture will take place on Thursday 10/13 at 3:00 P.M. ET. You can watch it live here. That link should be active about 15 minutes before the event. Congratulations again to Judge Stark!
Here's some interesting language from Judge Andrews yesterday, in an oral order:
In a motion (No. 15-611, D.I. 532) that is as pointless as a motion can be, Plaintiff asks for reconsideration/clarification of an issue that was not decided. Defendants add to the frivolity by writing five pages in opposition (No. 15-611, D.I. 542), while agreeing that I did not decide the issue. Both sides are surely right. Thus, Plaintiffs motion is DISMISSED as moot.
Plaintiff had moved for reconsideration of Judge Andrews' order adopting a special master order that struck a new DOE theory. According to Judge Andrews' original order:
I think TQ . . . advanced a distinctly new DOE theory and …
A while back we did a post speculating that requesting argument on a motion moderately increased the chances of the Court actually holding argument on an issue.
We also speculated about several other effects of requesting argument, but I'll save those for another slow news day. I apologize for nothing.
To test out this theory, I picked a motion that I pegged at about a 50/50 chance of having an argument -- a motion to stay. Taking all of the decisions deciding such motions since the first of the year (and removing some in odd procedural circumstances as well as filtering out identical motions in related cases to clean up …
It's helpful to keep in mind that while most D. Del. judges permit indefiniteness arguments at Markman, some have (at least sometimes) precluded it.
This is important since, obviously, the Markman hearing is one of the earlier milestones in a case where a defendant can potentially get rid of some or all of the claims—but that only works if the judge is willing to entertain indefiniteness before the summary judgment stage.
As of late last week, we now have one more data point, for new Judge Williams. In response to an amended joint claim chart where the defendant asserted indefiniteness of every disputed …
We got another good data point on Judge William's practices this wekk. In Board of Regents, The University of Texas System v. Boston Scientific Co., C.A. No. 18-392-GBW (D. Del.), Judge Williams denied a non-infringement summary judgment motion—but also scheduled a "mini-Markman" to resolve the underlying claim construction issue.
The defendant moved for summary judgment of non-infringment, arguing that the Court's prior construction of a particular term was incorrect, but that regardless, it would not infringe under either the purportedly incorrect construction or what it alleges is the correct construction.
The Court found factual disputes as to both, and easily disposed of the non-infringement motion.
The …
Disqualification motions are tough. In the last 10 years, I count 2 successful motions in Delaware patent cases and 10 losers (although the counting is more complicated than usual as the issue tends to involve an inordinately large number of objections and requests for reargument, and often springs up again as the case evolves).
Still, one can learn things even from a failed attempt. Harbour Antibodies BV v. Teneobio, Inc., C.A. No. 21-1807-MN, for instance, gives us some insight into an issue that I'm surprised doesn't come up more often in this world of multinational megacorps and ultrafirms.
The plaintiff, Harbour, was a plucky little biotech startup that represented by the less little DLA Piper. DLA …
Judge Williams issued a decision on Monday denying a motion to bifurcate a patent case, rejecting bifurcation where it would increase the total time by three days and involve repeating the same evidence.
The defendant moved bifurcate a five-day patent trial into a three-day jury trial on license issues and then, if necessary, a separate five-day trial on infringement.
The Court did not seem eager to sign up for a three-day trial with a significant risk of a second full trial later—especially one that repeats the same explanations of the technology:
The crux of ASC's position is that a two-day reduction in trial …
Every protective order I've ever seen has a provision at the end requiring the parties to return or (more likely) destroy any confidential information (with some limited exceptions) from the other party when the case is over. It's generally not a contentious paragraph.
Judge Fallon, however, dealt with a discovery dispute on this issue, that I was surprised had never come up before -- what happens when there are multiple unrelated defendants, as in ANDA cases? Do you destroy the documents when the relevant defendant drops out of the case, or can you keep them until the whole consolidated mess is over and done with?
Per Judge Fallon, the answer is you get to …
At the jury trial in ArcherDX, LLC v. Qiagen Sciences, LLC, C.A. No. 19-1019-MN (D. Del.), the plaintiffs argued for $752,006 in U.S. royalties, and the jury awarded $1,593,762.
The higher number happened to exactly match the $752,006 they asked for for U.S. royalties, plus the lost profits number:
The $1,593,762 U.S. royalty award, however, is much higher than the estimate provided by Plaintiffs’ expert, and, in fact is equivalent to the expert’s suggested award for lost profits ($841,756) plus U.S. royalties ($752,006).
The parties both agreed that it was a mistake, and that the jury had intended to award the $752,006 that plaintiffs had asked for.
Plaintiffs, however, refused to give …
My co-blogger Nate wrote yesterday about Magistrate Judge Hall's discussion of prior art estoppel in Innovative Memory Systems Inc. v. Micron Technology Inc., No. 14-1480-RGA (D. Del. Sept. 29, 2022). That was actually just one issue the Court dealt with in a lengthy R&R and Order on a summary judgment and Daubert. I wanted to post about one of the other issues Judge Hall addressed in that opinion: patent marking.
Marking is an important and sometimes underrated issue. It's not uncommon, in patent cases, for the bulk of the damages to have accrued in the years prior to the plaintiff filing suit. These "pre-suit" damages can be at risk, though, if the patentee sold products that practice the patent and failed to mark them under 35 U.S.C. § 287(a). Here is how Judge Hall explained it in Innovative Memory:
[W]hen a plaintiff makes or sells a product practicing its patent, the plaintiff can only recover pre-suit damages from an infringer if (1) the patentee marked its product in the manner specified in § 287(a) or (2) the patentee notified the infringer of its infringement. Even if a plaintiff patentee doesn’t make or sell anything, it cannot recover pre-suit damages (absent providing notice) if a prior owner of the patent failed to mark its products covered by the patent.
One interesting thing about marking, ...
