(Eds. note—my therapist (an avid reader of the blog) tells me that the title of this post is inaccurate and indicative of an "unhelpful" worldview.)
(Second Eds. Note—My therapist has asked that I not quote her in the blog. Apparently it "demeans us both.")
What can you do.
Today's tale is of a stipulation, born of hope and an honest desire to streamline a case, that ended in acrimony and pain.
The parties in Roger P. Jackson, M.D. v. NuVasive, Inc., C.A. No. 21-53-RGA, D.I. 431 (D. Del. Feb 21, 2025), had long ago stipulated to several representative products for the purposes of infringement and invalidity across an otherwise vast swath of accused products.
Come summary judgment, Judge Andrews found that several products were licensed and thus, ordinarily, could not infringe. The issue is that most of these products were not representative products. Defendant, then, moved to exclude these products from the damages calculations. Plaintiff countered that, per the terms of the representative products stipulation, it did not matter whether non-representative products were licensed -- as long as the representative product infringed, the group as a whole was "deemed to also infringe" Id., D.I. 169.
Judge Andrews ultimately ruled that, under the plain terms of the stipulation, the plaintiff could recover damages for the licensed products so long as the relevant representative product was not licensed:
A licensed product does not infringe. 35 U.S.C. § 271 (infringement limited to those who act "without authority"). There is no reason why the determination that a representative product is not licensed and therefore could infringe if it practices the patent shouldn't carry over to the products it represents.
Id., D.I. 431 at 3.
The Court went on to analyze whether the defendant should be released from the stipulation, but ultimately decided against it:
I do not think that there is a "manifest injustice." Both sides in this case are represented by sophisticated, experienced counsel. There is no manifest injustice in holding them to their bargain. By Defendant's logic, any time subsequent events made the bargain look like a bad bargain for one side, that side could get released from the bargain. That cannot be right.
Id. at 4-5.
Looking at the stipulation, it does seem that it would have been possible to craft it to avoid the issue—perhaps by changing "deemed to infringe" to something like "deemed to practice the claims." Of course, that would require one to see ahead to this fairly remote chain of events, which would have been no mean feat. Thankfully, we have this example to light our way so that we can avoid similar traps ourselves.
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