A Blog About Intellectual Property Litigation and the District of Delaware


Entries for date: 2023

A Vacated Trial Win May Not Show a Likelihood of Success—Even a $237 Million One

Andrew E. Russell, March 10, 2023
Standing Preliminary Injunction

Photograph of all of plaintiff's likelihood of success arguments securely located in one basket.
Photograph of all of plaintiff's likelihood of success arguments securely located in one basket. Court, Unsplash

Judge Williams ruled on a preliminary judgment motion yesterday in Cirba Inc. v. VMWare, Inc., C.A. No. 19-742-GBW (D. Del. Mar. 9, 2023). In that case, the plaintiff had originally gone to trial back in 2020, and won a $237 million jury verdict, plus a jury finding of willful infringement. Id., D.I. 550 at 6.

The Court previously vacated that win, however, because it turns out that one of the plaintiffs, Cirba Inc., had assigned all rights in the patent at issue to another entity, Cirba IP. The Court held that the re-assignment meant that Cirba Inc. lacked standing such that it should not have been part of the trial, and that including Cirba Inc. in the trial impacted the arguments enough to warrant a new trial. Id. at D.I. 752, 946.

Yesterday, the Court addressed plaintiff's motion for a preliminary injunction pending the new trial. It looks like it was an easy decision for the Court, because plaintiff relied entirely on the previous trial win to show a likelihood of success—despite the fact that the Court had granted a new trial:

Rather than brief why it will likely prove infringement, Cirba summarily states that it "is likely to succeed on the merits of its patent infringement claim because it already has," referring to the vacated verdict from the first trial. . . . This Court, however, granted VMware's motion for a new trial. . . . "[I]t is quite clear, that the order granting the new trial has the effect of vacating the former judgment, and to render it null and void, and the parties are left in the same situation as if no trial had ever taken place in the cause." United States v. Ayres, 76 U.S. 608, 610 (1869). Thus, Cirba has made no "clear showing" that it will likely prove infringement.

It's not hard to see what plaintiff was thinking here. On the surface, the Court ...

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Damages Arcanum

Nathan R. Hoeschen, March 9, 2023
Damages Lost Profits

We try to keep it light here at IP/DE, but sometimes I actually learn something and I feel sort of obliged to pass it on. You know, some real dark arts stuff that I wouldn't have known if I didn't have to read absolutely everything written in the district for this blog.

Why does he have six fingers? Why on only one hand?
AI-Generated, displayed with permission

Today's bit of lore today is about damages, and a split amongst district courts that visiting Judge Bryson has taken a stand on. Can a corporate parent can claim lost profits that would have initially accrued to its subsidiary?

The trite answer to this is "no." The Federal Circuit has squarely held that "a patentee may not claim, as its own damages, the lost profits of a related company." Warsaw Orthopedic, Inc. v. NuVasive, Inc., 778 F.3d 1365, 1375 (Fed. Cir. 2015). However, as Judge Bryson pointed out in his opinion in Kaneka Corp v. Designs For Health, Inc., C.A. No. 21-209 (D. Del. Mar. 3, 2023) (Mem. Op. & Order), several courts have held that lost profits of a subsidiary can still be claimed if they flow "inexorably" from the subsidiary to the parent.

Judge Bryson agreed, stating

To be sure, the Federal Circuit has not expressly recognized that lost profits can be awarded when those profits flow inexorably from a subsidiary to the patentee . . . I find the weight of district court authority on that point to be ...
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Another D. Del. Judge Orders an In-Person Claim Construction Meet-and-Confer, and Cancels Markman (And: Some Thoughts on Claim Construction Meet-and-Confers)

Andrew E. Russell, March 8, 2023
Meet-and-Confer Claim Construction

Andrew E. Russell

Just last week, we wrote about Judge Noreika ordering an in-person meet-and-confer to occur between lead trial counsel regarding claim terms, in the courtroom in Delaware, and "continuing until excused by the Court." In ordering the in-person meet-and-confer, Judge Noreika noted that the parties had "spoke[n] for just 20 minutes about 10 disputed terms" during their meet-and-confer.

Yesterday, Chief Judge Connolly issued an order along similar lines—but outright canceling the Markman hearing. Like Judge Noreika did, the Court noted that the parties had failed to adequately meet-and-confer about a disputed term:

Plaintiffs first made their new proposal [to construe "tangent"] during the "meet and confer" discussion required by paragraph 13 of the Revised Scheduling Order. . . …
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Page Limitless

Nathan R. Hoeschen, March 7, 2023
Page Limits Stipulation

My colleague Andrew wrote a post long ago about all of the things you can stipulate to in D. Del., and all the things you cant. Take a moment to read it—I'll wait.

AI-Generated, displayed with permission

Aaaand we're back. You'll note one of the stipulations listed as "iffy" (legal term) was stipulations to extend page limits. We got a good example of just how iffy those can be last week from Judge Noreika:

IT IS HEREBY ORDERED that the Stipulation is DENIED. The request to extend page limits was filed seven minutes before the over-the-page limit brief was filed. The effect of this was that Plaintiff granted itself an extension without leave of Court and without respect for the Court and its rules. THEREFORE, IT IS FURTHER ORDERED that the Motion for Preliminary Injunction is DENIED for failure to comply with the page limits. Counsel may re-file the motion with a brief that complies with the Court's rules.

Janssen Biotech, Inc. v. Amgen, Inc., C.A. No. 22-1549-MN (D. Del. Mar. 2, 2023) (Oral Order)

Obviously, it didn't help that the parties filed their stip just minutes before the relevant brief, giving the Court no opportunity to act on it. But it led me to wonder just how often these stipulations are denied in ...

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Don't Rely on Pennypack: Judge Williams Easily Strikes Late Contentions

Andrew E. Russell, March 6, 2023
Pennypack Contentions

Is the reign of Pennypack coming to an end?
Is the reign of Pennypack coming to an end? AI-Generated

We talked earlier this year about a decision by Judge Burke that struck a parties' final infringement contentions under a good cause standard, and declined to apply the much looser Pennypack standard.

Today, citing Judge Burke's opinion, Judge Williams likewise declined to rely on Pennypack in striking late-served "Amended Final Invalidity Contentions":

According to the Court's Scheduling Order, Defendants must serve their Final Invalidity Contentions to Chervon by December 17, 2020, which they did so. D.I. 37 if 7(f). On July 27, 2022, Defendants served their Amended Final Invalidity Contentions. D.I. 316 at 1; D.I. 319 at 1. Defendants did not request leave from the Court to amend their Final …
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Court Orders In-Person Claim Construction Meet-and-Confer by Lead Trial Counsel, In the Courtroom in Delaware, Continuing Until Excused

Andrew E. Russell, March 3, 2023
Meet-and-Confer Claim Construction

Unhappy Attorneys
AI-Generated

Judge Noreika is well known at this point for requiring real, substantive meet-and-confers on claim construction. In multiple cases, she has directed parties to further meet-and-confer after finding their initial efforts insufficient.

She issued another such order this week, this time directing the parties to have what appears to be a supervised meet-and-confer, in person in the courtroom:

ORDER . . . The parties did not comply with the Court's February 13, 2023 Oral Order requiring a good-faith meet and confer. Instead, the parties spoke for just 20 minutes about 10 disputed terms, as well as "hearing logistics" and a proposal by MarkForged to request deferral of certain claim constructions until dispositive motions. There is no breakdown indicating …
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Stip Denied: Parties Not Permitted to Stay Pending Resolution of Motions

Andrew E. Russell, March 3, 2023
Stipulation Scheduling

Green Light
Pawel Czerwinski, Unsplash

Parties in D. Del. patent actions frequently stipulate to adjustments of the case schedule, and these typically go through without any issue. So it always catches my eye when a stipulated stay is denied.

In Zogenix, Inc. v. Apotex Inc., C.A. No. 21-1252-RGA (D. Del.), and two related actions, one of the defendants had moved to dismiss one of the asserted patents in a related action, and the plaintiff had moved to amend its complaint to assert additional patents and join additional parties. The motions were filed in September and November, 2022, and remain pending.

The parties in the three actions stipulated to consolidate the actions for the purposes of discovery, and to stay the consolidated action until resolution of the motions to dismiss and amend.

Judge Andrews denied the motion, ordering that the parties instead move forward as if the motions were resolved in the broadest way:

ORAL ORDER: The Stipulation to Consolidate and Stay Case . . . is DENIED. The Court is not willing to stay the cases. The discovery deadlines in the two earlier cases . . . will not be extended. The parties should proceed as though the motion for leave to amend . . . will be granted and the motion to dismiss . . . will be denied. Ordered by Judge Richard G. Andrews on 3/1/2023.

We've noted before that stipulations to stay the entire case can be iffy, and Judge Andrews has previously rejected an attempt ...

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This One's Going To Keep Me Up At Night

Nathan R. Hoeschen, March 2, 2023
Litigation Scary Stories

A lot of things can go wrong in law. Keeping track of the labyrinthine tangle of laws, local rules, standing orders, and judicial preferences, is a daunting task. Checking and re-checking documents to make sure they comply with all of these rules is enough to make a person a bit neurotic. But, with the aid of experience and some hard lessons, you eventually come to grips with things and develop a certain comfort with the systems hard edges.

Until of course you stumble upon something new to worry about, and then you get the shakes all over again.

This cartoon is much darker than I intended, but I'm out of credits for the month
AI-Generated, displayed with permission

To that end, I submit to you this footnote in Cipla USA, Inc. v. Ipsen Biopharms., Inc., C.A. No. 22-552-GBW-SRF (D. Del. Mar. 1, 2023) (R&R), on the dangers of not checking your links:

In support of this assertion, Ipsen cites an "Update to Information Regarding Medicare Payment and Coding for Drugs and Biologics," dated May 18,2007. (D.I. 23 at 4 n.4) A document by the same name and having the same date is referenced in Cipla's complaint. (D.I. 1 at [Paragraph] 5c) To the extent that these documents are, in fact, the same, the court may consider them as "matters incorporated by reference" into the complaint without converting the motion to dismiss to one for summary judgment. See Kickjlip, Inc. v. Facebook, Inc., 999 F. Supp. 2d 677, 682 (D. Del. 2013). In this case, however, there are different hyperlinks associated with the document in the complaint and in Ipsen's reply brief. (Compare D.I. 1 at, 5c with D.I. 23 at 4 n.4) The hyperlink in the complaint functions, whereas the hyperlink in the reply brief does not. Ipsen does not set forth any basis for the court's consideration of the material, and the court cannot independently verify whether this material is the same as the document referenced in the complaint due to the defective hyperlink.

Id. at 7 n.4.

Oof. To Summarize here -- the defendant moved to dismiss and cited a document that was linked in, but not attached to, the complaint. The Court declined to consider it, because the link in the brief was ...

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Judge Wolson Implements New Summary Judgment Policy Requiring Parties to Serve Statement of Facts 28 Days in Advance

Andrew E. Russell, March 1, 2023
Summary Judgment SJ

A visiting judge
AI-Generated

Judge Wolson is a visiting judge with a number of patent cases here in Delaware. His procedures tend to differ a fair bit from Delaware judges in some areas (particularly those involving redactions sealing).

In February, he implemented an interesting new procedure for summary judgment motions. His new procedure requires parties to serve—but not file—their statement of fact in support of the motion 28 days in advance, so that the opposing party can respond on a fact-by-fact basis. The party serving the motion can then respond to that response. The resulting combined statement of facts is then filed with the brief.

This process is intended to result in a single statement of facts that includes the parties' opening, answering, and reply positions as to each fact, in that order and in one document for easy readability:

The result of this process will be a single, consolidated statement of facts that permits Judge Wolson to see each party’s position on each factual assertion in one place. For example, ...
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If You're Gonna Write A Threatening Letter, Really Go For It

Nathan R. Hoeschen, Feb. 28, 2023
Willfulness

Writing a threatening letter is one of life's greatest pleasures. There's lots of things to like about being a lawyer—the fame, the adoration of your fellows, the innumerable health benefits—but my very favorite is the writing of a good threatening letter. To curse the house of my enemies, yea unto the seventh generation, that centipedes may breed in their walls and wasps nest in their eaves.

Oooh, that's a good one
Oooh, that's a good one AI-Generated, displayed with permission

Sometimes you have to make your own fun.

Normally a patentee has no trouble spitting just this sort of hellfire at alleged infringers, so it was interesting to see Judge Burke's order in InQuisient Inc. v. ServiceNow, Inc., C.A. No. 22-900-CHB (D. Del. Feb. 22, 2023) (Oral Order), where the plaintiff took a more reserved approach with unfortunate results.

Before filing suit, the plaintiff (according to the Complaint) sent letters to the defendant that didn't quite accuse them of infringement. Instead, the letters simply discussed the Plaintiff's IP and stated that the plaintiff lacked sufficient information to determine if defendant infringed. Plaintiff ultimately filed suit (Obvs) alleging indirect and willful infringement with the letters serving as notice of the infringement.

Judge Burke granted the defendant's motion to dismiss those claims, stating ...

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