The 2023 District of Delaware Bench and Bar wrapped up today. It was really great to see everyone in person again. It's hard to believe it, but the last D. Del. Bench and Bar conference was back in May 2018 - over five years ago!
Everyone seems to agree the conference was a huge success. Thank you to the organizers and the Court, who put in a ton of work to make it happen!
Notes
The conference is conducted under the Chatham House Rule—which, honestly, we had forgotten. That means we "are free to use the information received, but neither the identity nor the affiliation …
I imagine all of our Delaware readers already know this, but the District of Delaware Bench and Bar conference starts tomorrow and runs through Friday.
The District of Delaware bench-and-bar is an excellent event that runs all day tomorrow (Thursday) and Friday, including an evening event on Thursday. It is the product of a huge amount of work put in by the District of Delaware FBA as well as many other attorneys, judges, and staff member, for which we are all thankful!
As we mentioned earlier this year, the Court has already issued an order modifying case deadlines that would otherwise fall tomorrow and Friday:
IT IS HEREBY ORDERED that all members of the court - District, Magistrate, and …
One of the early questions in many cases (particularly NPE cases) is whether the defendant can move to dismiss the complaint under 12(b)(6) for lacking sufficient detail under Twombly/Iqbal.
The answer is yes: You can, as long as there is insufficient detail. But what is the cutoff? How bad does it have to be?
We got an example of that on Monday, when Chief Judge Connolly dismissed a complaint for lacking detail. According to the Court, all the plaintiff did was say that the defendant's product infringes the claim:
"[A] plaintiff cannot assert a plausible claim for infringement under the Iqbal/Twombly standard by reciting the claim elements and merely concluding that the accused …
Inequitable conduct is, in my humble opinion, the most disappointing claim. Whenever I see it in a pleading, I have a fleeting moment of excitement—maybe the patentee kidnapped the examiner's dog, maybe hypnotism will play a roll, maybe just a classic honeypot?
Roof of rife!AI-Generated, displayed with permission
But it's never that. 9 times out of 10, its a reference that wasn't disclosed, but it probably should have been disclosed, yadda, yadda, yadda.
Despite the high standard for pleading IC (and how boring I find it), the claim tends to be fairly resilient. A quick look at recent opinions shows that Delaware Courts have denied the last 7 motions for summary of judgment of no inequitable conduct. You have to go all the way back to February of 2022 to find a success (Extang Corp. v. Truck Accessories Group, LLC, C.A. No. 19-923-KAJ (D. Del. Feb. 8, 2022) (Order)).
Judge Williams' decision last month (unsealed last week) in EIS, Inc. v. Intihealth Ger GmbH, C.A. No. 19-1227-GBW (D. Del Aug. 23, 2023), shows just hard it can be to get rid of inequitable conduct. The inequitable conduct claim there was based on the failure to effectively disclose an allegedly material reference. The reference was in a foreign language, but the applicant had only translated the abstract for the examiner.
The plaintiff moved for summary judgment of no inequitable conduct alleging all of the usual grounds—insufficient evidence of intent to deceive, lack of materiality, all the elements. The argument on lack of materiality was particularly strong because ...
"Do we want to bring this discovery dispute, or do we want to cross their corporate rep at trial? Choices, choices..."Vladislav Babienko, Unsplash
We've written before about how the Court sometimes sets up escalating obstacles for parties who are insensitive to the Court's time and bring too many discovery disputes. In that case, the Court gave the parties "homework" (writing letters to the Court) after their seventh discovery dispute.
In Apple Inc. v. Masimo Corporation, C.A. No. 22-1377-MN-JLH (D. Del.), the Court referred all pre-trial matters up until dispositive motions to Magistrate Judge Hall.
Judge Hall took action after the parties brought what looks like seven discovery disputes. The docket shows the Court's escalating response to the parties disputes:
June 1 - First teleconference
June 16 - Second teleconference
July 7 - First in-person hearing
July 14 - Second in-person hearing
August 3 - Third in-person hearing
September 1 - Fourth in-person hearing; Court warns that future disputes will be charged to trial time
September 14 - Fifth in-person hearing; Court charges the parties' trial time
Guessing from the docket, it looks like the parties brought a number of rapid-fire discovery disputes starting on June 1. For the third dispute in about a month, the Court increased the friction on the parties by forcing them to come to Delaware to argue the disputes.
That doesn't seem to have slowed them down at all. After three in-person disputes ...
After reading the decision in Nate's post yesterday, it occurred to me that we haven't addressed a common question in cases in the District of Delaware: When will the Court decide the parties' summary judgment motions?
This is a question that comes up a lot. I think that sometimes, in clients' minds, summary judgment motions are something that is resolved quickly. The parties brief their motions, the Court immediately turns to them, and then an opinion should come out in a week or two. Right?
No. That's not true in any U.S. district court I've practiced in, and the District of Delaware is no different. The Court is extremely hardworking but also overwhelmingly busy.
Many years ago, before Andrew made me put a picture in EVERY TURTLE-CURSED POST, I wrote a post about the very easiest Daubert motion to win. As a brief refresher, it turned out to be a motion to exclude a damages experts reliance on a jury verdict point as the starting point for a hypothetical negotiation. Both Judge Andrews and Judge Burke were particularly firm on the issue, coming just short of setting a bright-line rule:
A jury verdict does not represent evidence from which a hypothetical negotiation can be reliably determined. A jury verdict represents the considered judgment of twelve (or maybe fewer) random non-experts as to what a hypothetical negotiation would have resulted in for the patent(s) …
Judge Bryson recently unsealed his opinion in Janssen Pharmaceuticals Inc. v. Tolmar, Inc., C.A. No. 21-1784-WCB (D. Del. Sept. 8, 2023), in which he grants summary judgment of no anticipation by a reference under (Pre-AIA) § 102(a).
As a reminder, pre-AIA § 102(a) covers prior art that was available "before the invention" of the patent.
Here, the plaintiff argued that it had reduced the invention to practice before the date of the prior art. The defendant responded that, sure, they reduced an embodiment to practice before the prior art, but they didn't conceive of the invention's full scope:
Tolmar does not appear to dispute that the June 2007 clinical trials practiced …
Defendants are often looking for ways to resolve cases early—§ 101 motions to dismiss, motions for judgment on the pleadings, early summary judgment motions, and so on. Sometimes these can succeed, but it can vary a lot depending on the judge and the circumstances.
Here is one I haven't seen before: In Ravgen, Inc. v. Biora Therapeutics, Inc., C.A. No. 20-1734-RGA-JLH (D. Del.), the defendant moved for the Court to schedule a one-day bench trial on inequitable conduct just after the close of expert discovery, and before the summary judgment deadline—around 7-10 months before trial.
An attorney's view after many a deposition—if you're lucky enough to catch a flight back that night.Eva Darron, Unsplash
This On Friday, Judge Wolson addressed—and rejected—an effort by an ANDA defendant to limit deposition discovery on the basis that discovery is, in its view, just not that important in an ANDA action. As set they put it:
This is an ANDA case. Black letter law holds that the infringement issues in an ANDA case are controlled by the ANDA itself. . . . Months ago, Defendants produced the ANDA and ANDA product samples from which the relevant infringement analysis must be derived. Plaintiff has now noticed the deposition of both Defendants and seven individuals. But the information that …
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