Ouch. That's something you never want to see.
We wrote last week about how Judge Andrews—somewhat surprisingly—declined to lift a stay after the PTAB left just 4 of 83 patents standing, and invalidated the rest.
After that decision, the parties filed a series of letters that clarified that the plaintiff had intended to proceed only on the four valid patents, not the rest, but wanted to check with the Court regarding how they should proceed:
[Plaintiff] Cytiva understood that the litigation would proceed only with regard to the four claims that the PTAB upheld as valid, and until JSR’s submission, was not aware that JSR had a contrary view. Cytiva had no intention, and has no intention, of litigating claims that have been found to be unpatentable. We assumed that JSR understood that, but admittedly, we never raised the issue explicitly with JSR, and JSR never asked.
While Cytiva has not taken action with regard to the 79 claims determined to be unpatentable, that is because we anticipated discussing at the status conference what would happen to those claims. For example, should those claims be formally dismissed, and if so, what form should that take? To be clear, however, if dismissal of the invalidated claims with prejudice is a condition to lifting the stay and proceeding ahead with the case on the four valid claims, Cytiva is prepared to work with JSR on an appropriate stipulation to effectuate that dismissal. Accordingly, we request that the stay be lifted and that Cytiva be permitted to proceed on the four claims that the PTAB upheld.
Cytiva Bioprocess R&D AB, v. JSR Corporation, C.A. No. 21-310-RGA, D.I. 89 (D. Del. Aug. 9, 2023).
Judge Andrews set out that this would have been a winning argument for plaintiff—had they made it:
Plaintiffs claimed, though they had not expressly told Defendants or me . . . , that they only intended to proceed on the four valid claims, and they had anticipating discussing that at the scheduled conference. . . . I accept that explanation. Had they made clear in their first letter what they were making clear by their last letter, I would very likely have ruled in their favor. See footnote 1. But they did not.
. . .
In my view, Plaintiffs have forfeited their otherwise winning argument. I decline to lift the stay.
Cytiva Bioprocess R&D AB, v. JSR Corporation, C.A. No. 21-310-RGA, D.I. 90 (D. Del. Aug. 11, 2023).
Footnote one suggests that the Court was unimpressed by what it viewed as an attempt by plaintiff to see how far they could push it:
Plaintiffs' opening letter was filed July 31, 2023. . . . My intuition (before I received Plaintiffs' explanation) was that Plaintiffs wanted to see which way the wind was blowing in terms of how much they would have to give up in order for me to lift the stay. Coincidentally, the same day, I entered an order in a different case with essentially the same scenario. The order showed exactly which way the wind was blowing. "If [the plaintiff] chooses to drop the two likely invalid patents with prejudice, and is willing to proceed only on the two likely not proven invalid patents, then the Court will lift the stay." eBuddy Tech. BY v. LinkedIn Corp., No. 20-cv1501-RGA, D.I. 152 (D. Del. July 31, 2023).
(Side note: As of July 31, the blog was still out of commission because we were in trial and—sadly—we did not post about the eBuddy decision.)
Judge Andrews went on to discuss why he has parties write letters, and give some guidance on these letters going forward:
The reason I typically have parties write short letters before a discovery conference is so that I can read them in advance, understand what their best arguments are, decide whether I actually need the conference, and, if I do, go into the conference with an understanding of the issues and at least a tentative idea of how I expect to rule. When a party does not put its best arguments forward in a clear manner, it wastes my time (and, in this case, also wasted Defendants' time).
Oof. I think we'll all be putting our best arguments forward in initial letters to Judge Andrews from now on.
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