A Blog About Intellectual Property Litigation and the District of Delaware


CFC
The Honorable Colm F. Connolly

Last month, we took a look at how the different judges handle indefiniteness at Markman, a question that comes up a lot.

We reported that every judge will hear argument about indefiniteness issues at Markman. But in the Judge Connolly specific section, we noted that he has never held a term indefinite in a Markman opinion, and has instead deferred ruling on the issue until summary judgment (citing two examples). See the full post for details.

Yesterday, at a hearing, Judge Connolly mentioned a blog post and stated that the post was incorrect in suggesting that he considers indefiniteness at Markman. He clarified that he does not permit indefiniteness argument at Markman. Instead, he might entertain early …

In a recent Daubert ruling in CareDx, Inc. v. Natera, Inc., C.A. No. 19-662-CFC-CJB, Judge Connolly excluded the opinion of the plaintiff's expert regarding "corrective advertising damages," in part because it was based on "vague, undocumented, and back-of-the-envelope . . . estimates" by the plaintiff's CEO. The Judge granted the defendant's motion to exclude the expert's testimony under both Rule 702 and Rule 403, indicating that not only did the expert's opinion fail to satisfy the Daubert hallmarks for admissible expert testimony, it would also confuse the jury and be prejudicial because it "would essentially place the imprimatur of an expert on [the CEO] Maag's undocumented and dubious damages calculation."

As we've mentioned, Judge Connolly uses a different system of patent contentions than the other District of Delaware judges. The other judges generally use the system set forth in the Default Standard, while Judge Connolly's approach is modeled after the more restrictive method used in the Northern District of California.

Because he uses a unique system, parties often wonder just how much (or how little) is needed to offer sufficient contentions in Judge Connolly's view.

Judge Connolly offered some insight on that point today, when he overruled a patentee's objections to an accused infringer's invalidity contentions. Here is one of the contentions at issue:

Claims 1, 2, and 4 of the ’489 patent are invalid under 35 U.S.C. § …

It doesn't happen all that often, but remember that under FRCP 72, a party can object to a non-dispositive order by a magistrate judge:

(a) NONDISPOSITIVE MATTERS. . . . A party may serve and file objections to the order within 14 days after being served with a copy. . . . The district judge in the case must consider timely objections and modify or set aside any part of the order that is clearly erroneous or is contrary to law.

Parties sometimes seem to forget this, because unlike with Report and Recommendations on dispositive matters, the magistrate judges do not typically flag the 14-day objections period in their orders.

Fallen ice cream
Sarah Kilian, Unsplash

And, sometimes, it works out. In 2019, for example, Judge Noreika sustained an objection to one of the magistrate judge's common interest doctrine determinations, reversing an order to compel certain common interest materials. See AgroFresh Inc. v. Essentiv LLC, No. 16-662 (MN), 2019 U.S. Dist. LEXIS 172423, at *13 (D. Del. Oct. 4, 2019).

All of that said, other times, it does not work out well. Today Judge Connolly denied such an objection before the other side had even filed a responsive brief ...

In a new standing order today, Judge Connolly announced a new procedure for SJ motions in patent cases. Going forward, he will require parties in all patent cases (current and future) to rank their summary judgment motions, and if any motion is denied, he will generally deny all lower-ranked motions as well:

1. A party that files more than one summary judgment motion shall number each motion to make clear the order the party wishes the Court to consider the motions in question. The first motion the party wishes the Court to consider shall be designated #1, the second motion shall be designated #2, and so on.
2. The Court will review the party’s summary judgment motions in the …

Late last year, we posted about a decision from Judge Connolly dismissing an action by Chromadex because Chromadex had licensed the patent to another party along with the right to sublicense, making the licensee a required party, but had failed to join that party in the complaint.

To remedy the situation, Chromadex apparently executed a new license agreement to provide Chromadex with standing to bring a complaint alone. The licensee was dissolved.

Chromadex then moved for reconsideration. Judge Connolly denied the motion. He pointed out that a plaintiff cannot rely on evidence arising after the original decision to support a motion for reconsideration:

"newly discovered evidence" within the purview of Rule 60(b )(2) . . . refers to evidence of …

In a summary judgment opinion issued on April 20, Judge Connolly found claims of two patents indefinite because they included a limitation directed to applying a composition "in an amount effective to enhance the condition of the skin." Judge Connolly reasoned that whether he applied the plain meaning of the term or the meaning ascribed to the term by the specification, "the determination of whether a person's skin is enhanced provides a paradigmatic example of indefiniteness." As he pointed out, "Beauty . . . is 'in the eyes of the beholder.'"

High Five
High Five Jonas Vincent, Unsplash

Judge Connolly put this oral order on the docket on Thursday:

ORAL ORDER: The Court has read Plaintiffs' April 7 letter . . . . The Court understood Mr. Groombridge's response to be in substance what Plaintiffs outline in their letter. The Court asked an imprecise question. But the Court had in mind what Mr. Groombridge had in mind. Mr. Groombridge has appeared before the Court on numerous occasions and the Court appreciates and respects his practice of conceding points he should concede and getting to the heart of the disputed matters before the Court. All counsel would do well to follow his lead in that regard.

Amgen Inc. v. Hospira, Inc., C.A. …

Compass
Jamie Street, Unsplash

Pop quiz: What's the easiest way to get your SJ motion denied in a single page? Answer: Tell the judge that a disputed fact is material to your motion.

Several of the D. Del. judges require parties to include a concise statement of material facts with their summary judgment motions. This is exactly what it sounds like: a statement of each fact that the moving party contends is (a) essential to resolve the motion and (b) undisputed.

Judge Noreika, Judge Connolly, and Magistrate Judge Hall each require a concise statement to be filed with the opening brief, as well as a responsive statement with the answering brief. Judge Noreika and Magistrate Judge Hall also require …

As we pointed out last July, Judge Connolly has publicly questioned (several times) whether post-complaint knowledge is enough to state a claim for willfulness or indirect infringement. Today, he answered that question with a resounding no.

In nearly two full pages of footnotes, Judge Connolly collected the conflicting authority across the nation—and within the district—on whether an infringement complaint, by itself, is enough to support the knowledge element of willful and indirect infringement claims.

He went on to explain his own views:

ZapFraud has identified, and I know of, no area of tort law other than patent infringement where courts have allowed a plaintiff to prove an element of a legal claim with evidence that the plaintiff filed …