A Blog About Intellectual Property Litigation and the District of Delaware


CFC
The Honorable Colm F. Connolly

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...

View

Amended Complaints Fail to Save Patents From Section 101

Jeff Castellano, Aug. 24, 2021
MTD Amended Complaint

Server
electronic wire lot photo, Massimo Botturi, Unsplash

Given the liberal amendment standard in federal court, it is not surprising that plaintiffs faced with § 101 challenges to their asserted patents may attempt to introduce factual issues through amended pleadings to avoid a dismissal.

Judge Connolly recently permitted the plaintiff in the consolidated Realtime Data litigation to amend its complaints after he had twice found plaintiff's patents (involving data compression) invalid under § 101. RealTime Data LLC v. Array Networks Inc., C.A. No. 17-800-CFC.
But the amendments were not enough to save plaintiff's patents, and Judge Connolly walked through the amendments to explain why.

First, the amended complaints asserted that certain claims were not representative of others, and that different limitations "must be considered separately for for the purposes of § 101." But these statements were deemed "conclusory," and in any event, the plaintiff failed to "explain why these limitations are relevant to subject-matter eligibility."

Second, he found that all but one of the "new" claim construction positions were already before the Court, and the remaining proposal (to construe "data accelerator" as "hardware or software with one or more compression ...

View

Heads Up, D. Del. Practitioners: The Free Ride on Redacting Sealed Exhibits May Be Ending

Andrew E. Russell, Aug. 17, 2021
Protective Order Star Chamber

Is the dam about to break on over-redaction of filings?
Is the dam about to break on over-redaction of filings? Thomas Dumortier, Unsplash

Most patent cases involve a protective order, and the parties tend mark documents other than prior art as confidential or attorney's eyes only. As a result, many of the more substantive filings—particularly discovery motions, summary judgment motions, and pretrial orders—are filed under seal.

Unlike some other jurisdictions, particularly the Northern District of California, the District of Delaware's procedure for filing under seal is not burdensome. Once a protective order is entered, no motion is required to file a document under seal, and the parties simply file redactions within seven days.

Over time, parties have become more and more liberal with their redactions, often heavily redacting sealed …

View

Chief Judge Connolly Declines to Apply First-to-File Rule

David M. Fry, July 30, 2021
MTD

Chief Judge Connolly issued an interesting opinion on Friday, denying a motion to dismiss a DJ complaint in favor of an earlier-filed infringement action in the Western District of Texas.

The DJ case is the second Delaware action between these parties. After Judge Connolly found the claims in the first case invalid under § 101, the patentee brought an infringement action in Texas on a "virtually identical" continuation patent.

Although the Texas case was filed first, Judge Connolly declined to apply the first-to-file rule. He based his decision not only on judicial economy (i.e., he had already devoted substantive attention to the earlier, "virtually identical" patent), but also on the patentee's "litigation gamesmanship":

Second, SmileDirectClub' …
View

Chief Judge Connolly Dismisses NPE Complaint for Inadequate Detail

Andrew E. Russell, July 28, 2021
MTD FRCP 12(b)(6)

March of the Trolls
Paulo O, CC BY 2.0

Continuing our theme, another subject that often comes up in defending NPE complaints is whether the NPE's often-lackluster complaint may be vulnerable to an FRCP 12(b)(6) motion to dismiss (and whether that motion can be brought economically).

Judge Connolly today dismissed a complaint by Swirlate IP, an (alleged) IP Edge entity, because the complaint mostly parroted the language of the claims and offered an unspecific website URL.

Here is an example of a typical paragraph from the complaint, which mirrors the claim language but also offers slightly more:

21. Upon information and belief, the Accused Instrumentality performs the step of performing the second transmission by transmitting the second data symbols over a …
View

Claim Construction Argument Costs Defendants Credibility

Jeff Castellano, July 27, 2021
IPR Claim Construction

In a short ruling issued in Deere & Co. v. AGCO Corp., 18-827-CFC, Judge Connolly rejected the defendants' motion for additional claim construction after IPR. The defendants had asked the Court to conduct further claim construction proceedings on three groups of terms, to account for allegedly inconsistent positions taken by the plaintiff during IPR proceedings on 8 of the 11 asserted patents. Judge Connolly explained that he entertained the motion for more claim construction "based on Defendants' repeated and emphatic representations that Plaintiff Deere & Company maintained . . . positions on claim construction [during IPR] that were 'diametrically opposed' to and 'fundamentally inconsistent' with positions Deere took during claim construction before me."

Judge Connolly, however, did not agree . . .

View

Chief Judge Connolly Trims Claims and Defenses Before Trial

David M. Fry, July 7, 2021
Trial Claim Narrowing

Scissors
Markus Winkler, Unsplash

A few months ago, we wrote about claim narrowing in patent cases, noting that Delaware judges will often set additional limits when a case reaches trial. Because this typically comes up during the pretrial conference, there is often no written record on the docket.

Last Thursday, however, Chief Judge Connolly issued a rare, written order requiring the parties to narrow their claims and defenses before trial:

ORAL ORDER: Per today's call, it is HEREBY ORDERED that the pretrial conference will be held on July 27, 2021, and the trial will be held on August 2, 2021. Plaintiff shall identify for Defendant no later than 5:00 p.m. on July 7, 2021 no more than two patents and …
View

On the Importance of Claim Construction Meet and Confers

David M. Fry, June 16, 2021
Claim Construction

We've written in the past about the ongoing struggle to reduce disputed claim terms. Judge Connolly's form scheduling order requires parties to meet and confer to try to reduce disputes before the Markman hearing, and Judge Noreika frequently imposes a similar requirement after briefing is complete.

Some parties treat this process as a formality, believing that they can comply with a short, perfunctory phone call and a letter stating that the parties couldn't agree. This is a dangerous approach to claim construction meet-and-confers, and it doesn't comply with the letter (or the spirit) of the judges' orders.

Judge Connolly drove this point home in a recent oral order, issued the day before a Markman hearing:

Having reviewed the claim construction …
View

Judge Connolly Rejects Effort to Assert Indirect Infringement Based on Post-Complaint Knowledge

David M. Fry, June 9, 2021
Willfulness R&R

Stop Sign
Luke van Zyl, Unsplash

Back in March, we noted Judge Connolly's adoption of a bright-line rule regarding reliance on post-complaint knowledge for indirect and willful infringement allegations:

[I]n the absence of binding authority to the contrary from the Federal Circuit and Supreme Court, I will adopt the rule that the operative complaint in a lawsuit fails to state a claim for indirect patent infringement where the defendant's alleged knowledge of the asserted patents is based solely on the content of that complaint or a prior version of the complaint filed in the same lawsuit. And I conclude that the operative complaint in a lawsuit fails to state a claim for willfulness-based enhanced damages under § 284 where the …
View

A Clarification of an Old Standard

Nathan R. Hoeschen, May 27, 2021
Default Standard

New Tricks?
New Tricks? Go to Charles Deluvio's profile Charles Deluvio, Unsplash

The Delaware Default Standard for Discovery, which has been around in its present form for about a decade now, applies to some extent in every Delaware patent case. Given how frequently discovery issues are litigated in Delaware, I was somewhat surprised to see a new ruling from Judges Connolly and Hall clarifying a bit of the Default Standard that I don't believe has ever come up before.

In addition to describing the initial exchange of contentions and the format for ESI production, the Default Standard also sets a presumptive limit on the time period for discovery:

Absent a showing of good cause, follow-up discovery shall be limited to a term of 6 years before the filing of the complaint, except that discovery related to asserted prior art or the conception and reduction to practice of the inventions claimed in any patent-in-suit shall not be so limited.

Default Standard Section 4(e)

The question that arose this month in LEO Pharma A/S et al v. Glenmark Pharmaceuticals Ltd., C.A No. 20-1359-CFC-JLH, D.I. 60 (D. Del. May 25, 2021), was what is "follow-up discovery"? ...

View
Newer
Older

Archive