There's not a lot of space in a discovery dispute letter to get into the real nitty gritty of the dispute. You've gotta put in the standard, say the word "Pennypack" 20 or 30 times, and work in the phrase "flies in the face of" at least once.
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A recent opinion from Judge Burke, however, illustrates the folly of briefing disputes in this way, even if it is satisfying.
The defendant in Attentive Mobile Inc. v. Stodge Inc., C.A. No. 23-87, D.I. 400 (D. Del. Oct. 16, 2024) moved for a protective order to prevent the depositions of two employees. The opening letter apparently got quite into the weeds about the nature …
The patentee's TRO attempt worked out about as well as this (unmanned) rocket's attempt to reach orbit.Tim Mossholder, Unsplash
Ouch. In Nivagen Pharmaceuticals, Inc. v. Amneal Pharmaceuticals Inc., C.A. No. 24-846-GBW (D. Del.), the patentee plaintiff filed suit to stop a competitor from launching a drug that it says would infringe its patents, after the competitor received FDA approval.
(Because this was not an ANDA, there was no automatic stay.)
The plaintiff filed a TRO motion on August 13, shortly after its complaint. For at least two of the …
(Eds. Note -- The title took significantly longer to write than the article. You're welcome)
The Foman factors are about as ubiquitous and well known as any test in the law, coming down as they do from a sixty-some year old Supreme Court case, and relating to one of the most common possible motions. A check of Lexis shows a little under 40,000 cites.
As a quick refresher for any of you law students who have been assigned the blog by a particularly devious and brilliant professor, Foman v. Davis, 371 U.S. 178, 182 (1962) held that "In the absence of any apparent or declared reason -- such as undue delay, bad faith or dilatory motive on the part of …
Each of our judges in Delaware has one or more form scheduling orders that sets limits on things like the number of motions in limine (typically 3), pages limits for summary judgment and Daubert motions (typically 40/40/20 or 50/50/25), and discovery dispute procedures.
Here is a scenario I've seen a couple of times:
The parties agree to change the limits in the form scheduling order to give themselves more pages, more motions, etc.
The change is visually small and not particularly noticeable (e.g., "three" MILs becomes "five" MILs, "forty" pages becomes "eighty" pages, etc.).
The Court so-orders the undisputed proposed scheduling order.
When the time comes to actually file the extra MILs or extra-long briefs, …
We don't often write about claim construction opinions, because they can be very fact-specific. But Judge Hall's opinion yesterday in Apple Inc. v. Masimo Corporation, C.A. No. 22-1377-JLH (D. Del.) included some generally applicable points worth noting.
Sometimes a Reservation of Rights Actually Works
There's a reason we've all seen countless discovery documents, disclosures, expert reports, and briefs that are larded up with endless reservations of rights: sometimes they work!
This is one of those times. The patentee (Apple) had filed a response to invalidity contentions regarding a design patent in an IPR. In it, Apple described the scope of its patent, but included a reservation stating that it wasn't taking claim …
Deadline extensions are perhaps the most common of all requests to the Court. I have seen requests granted for medical reasons, conflicts with deadlines in other cases, prescheduled vacations, and the need to enact a dark ritual which can only take place when the moon fears to rise (we'll have a post about that one on the future, assuming the ritual is unsuccessful and does not result in all things returning to dust beneath the sacred ash and the profane oak).
Today's post, however, is a tale of an extension denied. The defendant in Purdue Pharma LP v. Accord Healthcare Inc., C.A. No. 22-913-WCB, D.I. 111 (D. Del. Oct. 2, 2024) had prevailed on its obviousness defense following a bench trial and filed a timely motion for fees 14 days after the Court entered final judgment.
The plaintiff, however, apparently intended to appeal the invalidity determination and thus requested that the defendant stipulated to defer briefing on fees until after the resolution of that appeal. When the defendant refused to stipulation, plaintiff moved to defer briefing until after the appeal and requesting expedited consideration of the motion (as the clock was already ticking on its 2-weeks to file a responsive fees brief).
Unlike in the true to life examples listed at the start of the blog, the plaintiffs motion was not based in any particular conflict with client or counsel. Instead, the deferment was based on the general proposition that "the appeal may impact or otherwise refute the bases for Accord’s motion." Id., D.I. 108 at 2. The defendant filed a short opposition to the motion, noting that this logic would apply to essentially any motion for fees.
Judge Bryson denied the motion to defer the briefing in a short order:
The motion to defer briefing on Accord's motion for attorneys fees 108 is denied. The court will determine when to rule on Accord's motion for attorneys fees after the briefing is complete.
We'll keep a watch out for that fees opinion and let you know if it comes before or after the appeal.
Yes, this is yet another Pennypack post. I can't resist. It's a tough-to-apply standard that impacts many cases (patent and otherwise). And it can sometimes seem to reward bad behavior by litigants, even—maybe especially—when applied as written.
But not this time! In Prolitec Inc. v. ScentAir Technology, LLC, C.A. No. 20-984-WCB (D. Del. Oct. 2, 2024), the patentee produced documents about a pre-priority-date sale of prior art after fact discovery closed and just five days before opening reports.
Unsurprisingly, the other side's opening expert report five days later did not include invalidity allegations about this sale.
One of the hallmarks of the Hatch-Waxman Act is the "offer of confidential access," wherein the generic manufacturer must offer the NDA holder, you guessed it, confidential access to the ANDA before the deadline to file suit.
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One of the lesser explored implications of the OCA is the effect of a patentee declining the offer and bringing suit without reviewing the actual ANDA. In particular, how does that decision effect the attorney's fees inquiry if the NDA holder is ultimately unsuccessful at trial?
This was the question Judge Goldberg addressed on Friday in Silvergate Pharms., Inc. v. Bionpharma Inc., C.A. No. 18-1962-MSG (D. Del. Oct. 4, 2024) (Mem. Op.). Bionpharma had prevailed …
One of these guys forgot to come armed.AI-Generated, displayed with permission
Attorneys spend a lot of time threatening fee awards when dealing with an NPE, even though they can be challenging to get. So I always think it's interesting to see what kinds of behavior will support a fee award.
Last week, Judge Williams issued a memorandum order granting fees in Extremity Medical, LLC v. Nextremity Solutions, LLC, C.A. No. 22-239-GBW (D. Del.). The Court listed three bases for its fee award. First, the patentee made zero showing of any pre-suit investigation of invalidity:
[T]here is no dispute that Defendants notified Plaintiff of [prior art references] Marcus and Chandran several years prior to the date …
I'm curious how the National Archive pulls a document from storage. I like to imagine that it involves a fork lift.Elevate, Unsplash
I began practicing law just after the District Court's e-filing systems, CM/ECF and PACER, were implemented—so I didn't get a lot of experience with how attorneys used to manage federal dockets or handle federal filings before you could just instantly file or pull things.
But occasionally, when I'm researching something, I'll find a reference to a document that looks helpful but that was filed before PACER existed, and as such is not available in Lexis or Westlaw. Typically, my response is to look longingly at the citation, and then to continue searching until I find something …
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