A Blog About Intellectual Property Litigation and the District of Delaware


CFC
The Honorable Colm F. Connolly

New Referral Orders: Magistrate Judge or Visiting Judge, Your Choice

Andrew E. Russell, Dec. 17, 2021
Judges Congestion

Yesterday, Chief Judge Connolly issued nearly identical oral orders across five cases, instituting a new procedure for referral of the case to a magistrate judge:

ORAL ORDER: On or before December 22, 2021, the parties shall either (1) submit to the Clerk of Court an executed Form AO 85 Notice, Consent, and Reference of a Civil Action to a Magistrate Judge, indicating their consent to have a United States Magistrate Judge conduct all proceedings in this case including trial, the entry of final judgment, and post-trial proceedings; or (2) a joint letter indicating that both parties do not consent to a reference of this action to a Magistrate Judge. The letter should not indicate which party or parties did not …
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Judge Fallon Finds "Good Cause" to Amend Infringement Contentions

Jeff Castellano, Dec. 15, 2021
Contentions

Chief Judge Connolly requires that the parties to his cases provide fairly detailed infringement and invalidity contentions early in the schedule, and requires a showing of good cause for any amendments to those contentions.

The question of what constitutes "good cause" is fact-specific, but Judge Connolly's form scheduling order does provide some helpful guidance:

Non-exhaustive examples of circumstances that may, absent undue prejudice to the non-moving party, support a finding of good cause include (a) recent discovery of material prior art despite earlier diligent search and (b) recent discovery of nonpublic information about the Accused Instrumentality which was not discovered, despite diligent efforts, before the service of the Infringement Contentions.

Recently, the plaintiff in Volterra Semiconductor LLC v. Monolithic Power Systems, Inc., C.A. No. 19-2240-CFC-SRF, moved to amend its infringement contentions. The motion was referred to Magistrate Judge Fallon.

The plaintiff (Volterra) had initially accused...

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Chief Judge Connolly Cautions Plaintiffs on the Risks of "Plain and Ordinary Meaning" Constructions, Asks Local Counsel to "Get the Word Out"

Andrew E. Russell, Dec. 1, 2021
Plain Meaning Claim Construction

Caution
Scott Rodgerson, Unsplash

At a claim construction hearing earlier this month, Chief Judge Connolly noted some concerns with parties who offer "plain and ordinary meaning" constructions without explaining what that meaning is:

THE COURT: And going forward, Mr. Oakes, Mr. Russell, I am tempted to say the next time I get this situation [where] one side, the plaintiff[,] says, oh, plain and ordinary meaning and offers no alternative definition and all it does is criticize the defendant['s construction], which there's some actual[ly] support for, [then] I don't hold a hearing. I'm just going with the defendant. I was really tempted to do that in this case. So get the word out.

Volterra Semiconductor LLC v. Monolithic Power Systems, Inc., C.A. No. 19-2240-CFC-SRF, at 22:22-23:7 (D. Del. Nov. 12, 2021) (transcript).

Chief Judge Connolly also pointed out a "new trend" of parties ...

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Chief Judge Connolly Comments on the "Sad Reality" of Certain Magistrate Judge Referrals

Andrew E. Russell, Nov. 27, 2021
Summary Judgment Magistrate Judges

This week, Chief Judge Connolly denied a joint request for leave to present an early SJ motion on damages in a patent action. The parties hoped that resolution of the motion would set the stage for settlement.

Judge Connolly reiterated his rule that he will not permit early SJ motions unless they are going to be the only SJ motions, while also commenting on his case load:

As a general rule, I do not allow for an early summary judgment motion unless the resolution of the motion would be case dispositive and the party seeking to file the motion agrees that it cannot file any other summary judgment motions. In light of my case load, which approaches 600 civil cases …
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Don't Forget That the Reverse Doctrine of Equivalents Exists...

Andrew E. Russell, Oct. 18, 2021
DOE Prosecution History Estoppel

Coffee Equals
Charles "Duck" Unitas, Unsplash

Most patent litigators know that the reverse doctrine of equivalents exists, and provides a way to argue non-infringement even if an accused product meets the literal terms of a claim. But it tends to be one of those issues that floats around in the ether, waiting for the right case, and it is rarely applied in practice.

Judge Connolly had an occasion last week to address the issue, resolving a motion for summary judgment of no reverse DOE, and took the opportunity to dig into some of the history of the reverse doctrine of equivalents. He first quoted the Federal Circuit's description of what the doctrine is:

the reverse doctrine of equivalents . . …
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Anticipation and Obviousness Are Different, Apparently

Nathan R. Hoeschen, Sept. 23, 2021
Anticipation

possessed-photography-miWGZ02CLKI-unsplash.jpg
The Eccentric, Possessed Photography, Unsplash

Anticipation and obviousness naturally have quite a bit in common. You frequently see the defenses listed in the alternative like, "the Velma reference anticipates the '666 Patent, or, in the alternative, The Velma reference in combination with the Daphne, Fred, and Shaggy references renders the '666 patent obvious." Indeed, you see this so commonly, that you might wonder if it's even necessary to specifically include the anticipation argument in your contentions/ expert reports/ pretrial order/ etc., since more or less all of it will be included in the obviousness case.

The answer is yes, you do have to include it. It is, in fact, very bad if you don't.

The defendant in BioDelivery Scis. …

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Chief Judge Connolly Confirms Again that Willfulness Requires Pre-Suit Activity, Grants Summary Judgment

Andrew E. Russell, Sept. 20, 2021
Willfulness Summary Judgment

Nope
Daniel Herron, Unsplash

We've written about how Chief Judge Connolly has taken a stand on willfulness and indirect infringement allegations, ruling unambiguously that a lawsuit itself cannot be the basis for knowledge of infringement to support a claim of willfulness or inducement.

Today, he took it one step further, granting summary judgment of no willfulness even though plaintiff accused new products that were released after the complaint:

Boston Scientific's . . . argument is that summary judgment is precluded because "Nevro was put on notice of Boston Scientific's [#]933 and [#]193 Patents and its infringement of those patents at least as early as December 9, 2016, when Boston Scientific filed its 2016 Complaint," and "[r]ather than make any effort …
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Defendant Gets Summary Judgment Win on Eve of Trial

Jeff Castellano, Sept. 16, 2021
Summary Judgment Section 101

Most summary judgment motions in patent cases are denied. That's one reason Judge Connolly issued a standing order earlier this year requiring that parties rank their summary judgment motions and explaining that in most cases he will not consider a party's summary judgment motion if he has previously denied a summary judgment motion by that party.

Judge Connolly noted that "the complexity, voluminous record, competing expert testimony, and scorched-earth lawyering in the typical patent case make it almost inevitable that a disputed material fact will preclude summary judgment." Nonetheless, he expressed hope "that an effectively managed summary judgment practice can bring about efficiencies and cost savings."

A few days ago, in Chromadex, Inc. v. Elysium Health, Inc., C.A. No. 18-1434-CFC, Judge Connolly granted a motion for summary judgment of invalidity under 35 U.S.C. § 101, just weeks before trial...

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Disappointing Rule 36 Affirmance of Exclusion of Japanese Patent Office Publication - A Missed Opportunity for a Federal Circuit Opinion

Andrew E. Russell, Sept. 13, 2021
§ 102 FRE

JP 1992-136787

Last year, we posted about an interesting result in a Delaware patent trial, where Judge Connolly excluded a Japanese Patent Office Utility Model Publication after the defendant failed to offer sufficient evidence of public accessibility (and actually offered some evidence of inaccessibility).

As we explained at the time, the defendant had tried to avoid IPR estoppel by arguing that it could not have found the reference in a reasonable search, but then argued that the reference was sufficiently publicly accessible to be a prior art reference. The Court rejected that argument, holding that the JPO publication was not publicly accessible and couldn't be used as prior art.

We noted this was a great opportunity for the the Federal Circuit to …

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The ANDA Controls In Infringement Dispute Over ANDA Product's pH

Jeff Castellano, Aug. 31, 2021
ANDA

In a post-trial Hatch-Waxman opinion issued this week, Chief Judge Connolly sided with the defendant regarding the sole infringement dispute: whether the defendant's ANDA product had an infringing pH. The plaintiffs' patents required that the claimed compositions have a pH of between 3.7 and 3.9. The defendant's ANDA undisputedly required that the defendant's generic product have a pH between 3.4 and 3.6. Importantly, the ANDA required that the product stay within the 3.4-3.6 range both upon release and during the stability testing period (24 months).

Given that the ANDA's requirements are binding on the manufacturer of the generic product, and given that the ANDA is the operative document for the purposes of the infringement inquiry in Hatch-Waxman cases, you might think that would be the end of the inquiry. Indeed, Judge Connolly noted that in these circumstances, a judgment of noninfringement "must necessarily ensue."

However, the plaintiffs challenged this conclusion...

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