A Blog About Intellectual Property Litigation and the District of Delaware


Entries for date: 2024

Longstanding FDA Practice

Nathan R. Hoeschen, Feb. 1, 2024
Subject Matter Jurisdiction

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.

But there was a twist. Bayer was ...

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The Tale of Claims 9 and 9, Part II: Court Says No, You Can't Tell the Jury That the PTAB Invalidated the Independent Claims

Andrew E. Russell, Jan. 31, 2024
Motion in Limine MIL

Shh. They're not
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 …

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The Admission Disappears

Nathan R. Hoeschen, Jan. 30, 2024
Admissions

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 DOOOO
DOOOOO - DO -DO -DO -DO - DA -DO -DO -DO -DO DOODLE-OOODLE DOOOO AI-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.

Judge Bryson ...

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Court Sets Deadline for "Recalcitrant Litigant" to Oppose Permanent Injunction for "Five Minutes after I [Grant] the Pending Motion to Withdraw" as Counsel

Andrew E. Russell, Jan. 29, 2024
Motion to Withdraw

This is a
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 …
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Judge Hall Holds that Magistrate Judge Hall's Order Was Not "Clearly Erroneous and Contrary to Law"

Andrew E. Russell, Jan. 26, 2024
FRCP 72 Objections to R&Rs

Order Approved
AI Generated, displayed with permission

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 …
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Every Body Wants A Piece

Nathan R. Hoeschen, Jan. 25, 2024
Personal Jurisdiction

There are many things to love about Delaware. There's the majestic beauty of the Brandywine. The excitement of tax-free shopping. The award-winning mollusk collection at the natural history museum. The easy train access to other cities with more than 6 restaurants. It is truly a special place.

Living the dream, baby
Living the dream, baby AI-Generated, displayed with permission

All this is to say that, if I was to sue someone, I'd want to do it in Delaware. Sadly, that's not always possible.

Such is the lesson of ACCO Brands USA LLC v. Performance Designed Products LLC, C.A. No 23-437-GBW, D.I. 18 (D. Del. Jan. 17, 2024). ACCO was a downhome Delaware company (*cough* headquartered in Illinois *cough* …

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D. Del. Court Rejects Attempt to Import N.Y. State Court Procedure Permitting Late Cross-Motions for Summary Judgment

Andrew E. Russell, Jan. 24, 2024
Summary Judgment Scheduling Order

The big apple: The home of the Statue of Liberty, the Empire State Building, and (apparently) precedent permitting late-served cross-motions for summary judgment.
The big apple: The home of the Statue of Liberty, the Empire State Building, and (apparently) precedent permitting late-served cross-motions for summary judgment. Michael Discenza, Unsplash

In Fundamental Innovation Systems International LLC v. Anker Innovations Ltd., C.A. No. 21-339-RGA (D. Del.), plaintiff moved for summary judgment of patent eligibility, and defendant filed an answering brief.

At the same time as its answering brief, however, defendant filed a late "cross-motion" for summary judgment, asking the Court to not only deny plaintiff's motion, but to grant summary judgment of ineligibility. Defendant devoted about 9 pages of its 40-answering brief to arguing against plaintiff's motion and in favor of its own affirmative "cross-motion" for a determination of ineligibility.

Plaintiff …

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A Slight Detour

Nathan R. Hoeschen, Jan. 23, 2024
Lanham Act

Today's case is a bit outside our normal ambit here at IP/DE, dealing with the patent-adjacent field of false advertising under the Lanham Act. Since you often see such claims brought alongside patent claims, I think its fair game. Also, you're not the boss of me and none of you can stop me.

THE POWER, THE ABSOLUTE POWER!
THE POWER, THE ABSOLUTE POWER! AI-Generated, displayed with permission

Except any judges who may read this, you are frequently the boss of me.

Anyway.

Our case today is one of those where the Lanham Act claims were brought together with the patent infringement claims, in the charmingly named North Atlantic Imports, LLC v. LoCo Crazy Good Cookers, Inc., C.A. No. 23-999-GBW-SRF (D. Del. Jan. 23, 2024). In fact, the claims were oddly intertwined given that one of the alleged false statements was that the defendant stated that its LoCo Crazy (!) grills contained "patented SmartTemp Technology." Apparently, there is no such patent.

Aside from being hilarious, the interesting facet of this opinion was that the Court found that statements about this made-up patent and some other puffery about LoCo Crazy (!!) innovations, might actually induce buyers to make purchasing decisions - at least enough to survive a motion to dismiss:

the complaint contains fact-based allegations featuring Defendant's actual advertisements to show how those ads highlight Defendant's "patented SmartTemp™" technology to sway customers. The complaint further alleges that Plaintiff and Defendant are direct competitors who sell their products at the same stores, including Lowes and Home Depot. (Id at ,r 29) Construing these allegations in the light most favorable to Plaintiff, it is reasonable to infer that customers would consider Defendant's false advertisements material to their purchasing decisions when faced with two similar, directly competing products. Defendant's position that Plaintiff must plead customer reliance at the time of the purchasing decision is supported by post-judgment case law, as opposed to cases addressing a motion to dismiss the pleading.

Id. at 5

Lesson for Crazy LoCo (!!!!) small business owners out there. Try not to make up patents. A good grill sells itself.

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What Does "Prima Facie" Mean, Anyway?

Andrew E. Russell, Jan. 22, 2024
Privilege Crime/Fraud Exception

Crime
David von Diemar, Unsplash

Today Judge Burke unsealed an opinion with a great discussion of what it takes to make a "prima facie" showing, at least as to the crime/fraud exception to attorney-client privilege (that's something you don't see every day).

According to the Court, the rules require it to hold a hearing on the crime/fraud exception, but only if the plaintiff first makes a prima facie showing that the exception applies.

The Court first reviewed plaintiff's evidence, and found that plaintiff had showed that the exception applied. The Court also found, however, that defendant's additional, different evidence that showed that the exception did not apply. On the whole, the Court sided with the defendant, finding that, in light of all of the evidence, the crime/fraud exception does not apply.

But that wasn't the end! The Court still found that it must hold an evidentiary hearing on the crime/fraud exception. Why? Because none of the defendant's additional evidence matters in determining whether plaintiff made a prima facia showing that a hearing must be held. Instead, the Court must ignore the non-movants' evidence and look just at the movant's evidence:

With the Court having said all of the above, the question then becomes: In resolving the instant Motion, what is the Court’s proper role? Is the Court supposed to look only at the evidence put forward by Plaintiffs and determine whether that evidence, standing alone, would make out a prima facie case? Or is it supposed to take into account all of the evidence provided to it, including that submitted by Defendants, in making a decision on the issue at this stage?
In Haines, the Third Circuit explained that the prima facie case inquiry is one where the court asks “[H]as the party seeking discovery presented evidence which, if believed by the factfinder, supports plaintiff’s theory of fraud?” 975 F.2d at 95 . . . . In doing so, the Haines Court cited approvingly to a decision from the United States Court of Appeals for the Fifth Circuit, which explained that “prima facie evidence” in this context is “[evidence] [s]uch as will suffice until contradicted and overcome by other evidence . . . [a] case which has proceeded upon sufficient proof to that stage where it will support [a] finding if evidence to the contrary is disregarded.” Id. . . .
In the Court’s view, these portions of Haines make clear that in determining whether a movant has made out a prima facie case, the Court must only assess the strength of the evidence presented by the movant. . . . Or, to put it differently, the Court’s job at this point is not to take the movant’s evidence and consider it alongside with any contrary evidence put in the record by the non-movant, and then to make a decision as to whether a prima facie showing has been made (or whether a preponderance of the evidence supports Plaintiffs’ claim).

ECB USA, Inc. v. Savencia, S.A., C.A. No. 19-731-GBW-CJB (D. Del. January 4, 2024).

Fascinating! It's always enlightening when the Court parses the meaning of a term like "prima facie" this closely. I have to wonder if this logic could apply in other contexts, such as a prima facie showing of authenticity at trial.

I'm definitely making a mental note to refer back to this next time I need to make a prima facie showing of something—although we'll have to see if the opinion ends up being cabined exclusively to the crime-fraud exception.

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Watch What You Agree to! Court Holds Plaintiff to Agreement in Scheduling Order That "Hypothetically Allows Defendant to Propose Millions of [Invalidity] Theories"

Andrew E. Russell, Jan. 19, 2024
Scheduling Order Case Narrowing

Watch out for what may be in that draft scheduling order...
Watch out for what may be in that draft scheduling order... AI Generated, displayed with permission

In International Business Machines Corporation v. Zynga Inc., C.A. No. 22-590-GBW (D. Del.), the parties agreed in the scheduling order to a rather vague set of case narrowing provisions:

On November 30, 2023, Plaintiff shall perform a first narrowing of the number of asserted claims. On December 7, 2023, Defendant shall perform a first narrowing of the number of asserted invalidity references.
. . . On February 28, 2024, Plaintiff shall perform a second narrowing of the number of asserted claims. On March 5, 2024, Defendant shall perform a second narrowing of the number of asserted invalidity …
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