Why did physicists refuse to write about the Antitrust Paradox? Because every time they tried to define the relevant market share, the observer effect kicked in, and the monopoly disappeared. (I hope readers who have dual Bork/quark interests enjoyed that.)
Today’s highlighted opinion proceeds from trademark law, crosses into antitrust law, and has implications for patent law. In it, Judge Connolly rejects a plaintiff's attempt to argue that the defendants' prior filing of trademark litigation against competitor gave rise to anti-trust and unfair competition claims.
Noerr-Pennington Precludes Some Tort and Anti-Trust Claims Based on Litigation—Unless It Was Sham Litigation
Judge Connolly explained that the Noerr-Pennington doctrine provides immunity from certain types of claims that a plaintiff …
Visiting Judge Wolson of the Eastern District of Pennsylvania issued a colorful opinion on Monday. It starts with a joke:
Economists love assumptions. One joke recites that a physicist, a chemist, and an economist find themselves on a desert island with a single can of food. The physicist offers to calculate the force needed to use a coconut to open the can. The chemist offers to make a solution that will eat through the can’s top. The economist tells them they are making it too complicated and just to assume a can opener.
Wirtgen America, Inc. v. Caterpillar, Inc., C.A. No. 17-770-JDW, at 1 (D. Del. Feb 5, 2024).
Certain districts are famous for being better for plaintiffs. Your Texan districts immediately spring to mind.
There's always been a bit of a dearth in data to support the idea that those districts represent greener (read: more full of defendants' money) pastures than our own Delaware.
Stereotypical Average Texan PlaintiffMathieu Stern, Unsplash
With that in mind, I decided to dig into the most easily ascertainable, and thus best, stat on win rates in our own Delaware. To that end, I submit the win rates for plaintiffs in patent jury trials before each of our 4 sitting judges over the last 2 years (I use Judge Andrews here because Judge Hall does not have a statistically significant number of jury …
Last month, after her elevation to the bench as a district judge, Judge Hall issued a revised form scheduling order.
I think it's worth paying attention to what changes, even if the changes may not directly apply in your case, because it shows what the judges are focused on and thinking about.
Plus, it usually doesn't hurt to comply with a judge's newest procedures even if they are not required by the (outdated) scheduling order in your case.
So, what's new?
Stating the Meaning of "Plain and Ordinary Meaning"
Judge Hall adopted a set of additional requirements for joint claim construction briefs. Like all of our current judges, she uses Judge Andrews' procedure of a joint claim construction brief. But …
Judge Burke issued an interesting R&R denying a motion to dismiss this week, in Parus Holdings Inc. v. Amazon.com, Inc., C.A. No. 23-190-GBW-CJB (D. Del.).
The defendant moved to dismiss based on a license defense, attaching the license. The plaintiff responded, itself attaching and relying on the license, as well as on other materials, such as a declaration from its CEO.
The Court rejected the motion—not because the defendant isn't licensed, but because it cannot even reach that issue on a motion to dismiss:
In resolving motions to dismiss under Rule 12(b)(6), . . . courts generally consider only the allegations in the complaint, exhibits attached to the complaint, matters of public …
Administrative law is famously labyrinthine. And not the fun kind of labyrinth with awesome bull-headed dudes.
"You totally rule Asterion" "I totally already know that"AI-Generated, displayed with permission
Today's case deals with an FDA practice -- not even a regulation! -- that had an outsized effect on an ANDA.
Mylan Pharmaceuticals Inc. v. Bayer Intellectual Property GMBH, C.A. No. 23-556-RGA (D. Del. Jan. 31, 2024) (R&R) was a declaratory judgment action spawned from an earlier ANDA dispute. In that earlier case, Mylan had filed given a Paragraph IV certification as to several of Bayer's orange book patents for Xarelto, and a Paragraph III certification as to another.
(Eds. Note - if you're wondering what a paragraph IV certification is, you should probably just stop here, this one gets pretty weedsy and the jokes are mostly over).
When all was said and done in that earlier case, one of the patents was invalid, and another Bayer never sued on at all, apparently conceding the product did not infringe. Mylan thus should have been able to launch as soon as the paragraph III patent expired.
Shh. They're not "invalid," they're "canceled" and "in the public domain"Kristina Flour, Unsplash
Yesterday Nate wrote about Judge Bryson's opinion that a plaintiff was not bound by its prior allegation that a product infringed two claims, because plaintiff's statement deals with an issue of law, not fact.
Today, I think it's worth discussing another aspect of the same decision, where Judge Bryson addressed a motion by plaintiff to preclude the defendant from discussing the same two invalid claims, claims 9 & 9 of the two asserted patents.
The the PTAB canceled claims 9 and 9 in an IPR, and plaintiff now asserts only claims that depend on those two canceled claims. It moved to prevent defendant from …
Lawyers are famously careful. We double-knot our shoes. We check the expiration date on milk, cheese, and even BACOS-brand non-bacon chunks. More than anything, we are famous for hemming and hawing and avoiding a direct response to seemingly simple questions in a transparent attempt to avoid saying something that might later be used against us.
This is a tale of one such admission that turned out alright.
So maybe don't worry so much.
DOOOOO - DO -DO -DO -DO - DA -DO -DO -DO -DO DOODLE-OOODLE DOOOOAI-Generated, displayed with permission
The initial complaint in Prolitec Inc. v. ScentAir Technologies, LLC, C.A. No. 20-984-WCB (D. Del. Jan. 12, 2024) (Mem. Op.) stated pretty baldly that the defendant infringed claim 9 of the patents-in-suit.
(Eds. note, for no sensible reason it was claim 9 of both patents. I spent about 15 minutes trying to figure out how best to parse that grammatically, briefly toying with "claims 9," like "attorneys general" before realizing I don't get paid for this and giving up).
There were claim charts and everything.
This is normally what you want in a complaint, really. You kind of have to accuse them of infringement after all. The difficulty is that claims the ninth (?) were both invalidated at IPR and so the plaintiff was left to assert various dependent claims. They amended the complaint accordingly, removing any reference to the now-cancelled niners (?).
When it came to trial, defendant wanted to use the earlier complaint as evidence that their own products practiced all but the few extra limitations of the dependent claims, thus bolstering their invalidity and damages cases.
Plaintiff argued that the original complaint could not be used against it because it had been superseded (I sometimes see this called "rendered a nullity" which I quite like) by the amended complaint. Accordingly, they moved in limine to prevent those statements from being used against them at trial.
This is a "weight-shift controlled personal hydrofoil watercraft"U.S. Patent No. 9,359,044
Here at IP/DE, we try to have substantive, funny posts where we can all learn something about litigation in DE while being mildly amused.
Sometimes, though, all we get to be is mildly amused. This will be one of those posts.
Just look at this oral order:
ORAL ORDER: The deadline for Waydoos brief in opposition to the Motion for Permanent Injunction is extended to five minutes after I resolve the pending motion to withdraw (assuming I permit withdrawal) or until a date to be set (assuming I deny permission to withdraw). I note that the record to date appears to support the conclusion that Waydoo is …
Plaintiff in Applied Biokinetics LLC v. KT Health, LLC, C.A. No. 22-638-RGA-JLH (D. Del.) had some bad luck this month.
Late last month, Magistrate Judge Hall denied their motion to strike an expert report that they argued exceeded the bounds of the parties' contentions.
Shortly thereafter, Plaintiff objected to Magistrate Judge Hall's order, appealing to Judge Andrews to reverse the order because it is unsupported:
ABK would be unfairly prejudiced if KT were permitted to use its previously-undisclosed invalidity theories because ABK properly relied on KT’s invalidity contentions, discovery responses, and case narrowing during fact discovery. . . . The Magistrate Judge’s decision to not strike any portion of KT’s invalidity report …
This blog is for general informational purposes. It is not an offer to perform legal services, and should not be considered a substitute for legal advice. Nothing in this blog should be construed as forming an attorney-client relationship. If you have legal questions, please consult counsel in your jurisdiction.
