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The Trend Towards Granting Stays Marches On

Nathan R. Hoeschen, Jan. 21, 2021
IPR Stay

Hang in there baby
Hang in there baby The Fall of Icarus, John Doyle

We discussed last month how it has, in Judge Andrews' words, become fairly routine for the Court to grant stays following IPR institution. With the recent increase in granted stays, one can see how a litigant might be tempted to fly even closer to the sun, and extend a stay through an appeal to the Federal Circuit.

Judge Connolly gave those gallant dreamers a bit of hope on Tuesday when he granted just such a motion in DDR Holdings, LLC v. Priceline.com LLC, et al., C.A. No. 17-498-CFC, D.I. 101 (D. Del. Jan 19, 2021). In that case, the parties had stipulated to a stay pending resolution of an IPR. When the IPR concluded, some of the asserted claims had been upheld and others had been invalidated, and the plaintiff was appealing the invalidated claims to the Federal Circuit. Plaintiff wanted to move forward with the remaining claims against some of the defendants, while the defendants argued that the stay should continue.

Judge Connolly ...

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Judge Burke Warns Against Gambling on Self-Help Measures

David M. Fry, Jan. 20, 2021
Motion to Strike Pennypack

Casino
Heather Gill, Unsplash

It's a common dilemma in expert discovery: the other side's expert says something new in an opening report, you move to strike it, and you get a hearing date after the deadline for your rebuttal report. Do you have your expert respond (and weaken your prejudice arguments)? Or do you double down on your motion to strike (and risk losing the ability to respond altogether)?

In D. Del., the second option is a huge gamble. Yes, it's possible to persuade our judges to strike late-disclosed expert opinions (even under the Third Circuit's lenient Pennypack factors). But if you won't get a ruling before your responsive report is due, ignoring the new material can …

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Razor's Edge: Practicing the Prior Art and the Nose of Wax

Jeff Castellano, Jan. 19, 2021
Experts Daubert

Yesterday, Judge Andrews excluded testimony by an expert that improperly advanced a "practicing the prior art" defense. It has been firmly established that "practicing the prior art" is not a defense to literal infringement, and thus is not a proper subject for expert testimony. It is acceptable, however, for litigants to argue that if a patentee interprets a claim broadly for infringement purposes, the claim will read on the prior art ("that which infringes, if later, would anticipate, if earlier," the corollary of the proverbial "nose of wax" principle that prohibits parties from taking one view of claim scope for infringement purposes and another for invalidity).

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Judge Connolly Rejects Attempt to Use "Emergency Motion" to Bypass Discovery Dispute Procedures

Andrew E. Russell, Jan. 18, 2021
Emergency Motion Discovery Dispute

The Boy Who Cried Wolf
The Boy Who Cried Wolf Francis Barlow

Most Delaware attorneys tend to hesitate before filing an "emergency" motion, because they know how busy the Court is. The Court takes emergency motions seriously. It may defer work on other pressing issues to assist the parties with a true emergency.

I don't think anyone would want be standing before the judge (or on a conference call, or a video conference) explaining why they unnecessarily disturbed the Court's management of its docket.

Last week, Judge Connolly issued an opinion showing what may happen when a party files an unwarranted "emergency" motion.

In FinancialApps, LLC v. Envestnet, Inc., C.A. No. 19-1337-CFC-CJB (D. Del.), a trade secret and contract action, the Court …

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Come See "the Most De Minimis Claim of Willful Infringement in This Court’s History" (and More!)

Andrew E. Russell, Jan. 16, 2021
Willfulness MTD

Robin Hood, taking on some rogue non-practicing entities
Robin Hood, taking on some rogue non-practicing entities Reginald Heade

Here is some colorful writing from Magistrate Judge Burke of the District of Delaware, recommending dismissal of a claim for willfulness that failed to plead knowledge, and which relied on—at most—possible knowledge for a 15-hour period between when the complaint was served on an unknown person and when the patent expired:

From the docket, it appears that someone who is in some way affiliated with [defendant] Robinhood was served with the FAC at 9:08 a.m. on July 30, 2019. . . . But, as it turns out, the '633 patent expired on July 30, 2019—that same day. The Court guesses that, in light of all of this, it might be theoretically possible for Plaintiff to pursue what would have to go down as the most de minimis claim of willful infringement in this Court’s history. But whether such a claim—revolving around whether Robinhood knew of the patent and its infringement thereof, during a roughly 15-hour time period on July 30, 2019—would even be plausible would depend on exactly who got served with the Complaint on July 30, 2019 and what their relationship with Robinhood is. Yet the record provides little information on that front. Thus, in the Court’s view, the best course is to grant Robinhood’s Motion as to willful infringement, and if Plaintiff believes it can (and should) pursue such a claim here, then in a further amended pleading, it can attempt to set out the factual basis for such a claim.

But that's not all ...

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Let's Talk About Conception, Baby

Nathan R. Hoeschen, Jan. 14, 2021
Invention Date Conception

When should a patentee have to disclose the date of invention? The defendant would prefer a date before invalidity contentions so they don't waste time vetting reams of recent prior art only to have the plaintiff produce the inventor's 4th grade journal showing conception in the early 1930's. The plaintiff, on the other hand, would prefer not to go digging through lab notebooks to try and prove a conception date, only to find that all of the relevant prior art was carved on stone tablets by cabal of renaissance alchemists long before the inventor was born.

No Answer In The Rules

Neither the Delaware Default Standard for Discovery, nor the form scheduling orders of any of our judges address when …

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Another Redaction Request Denied...

David M. Fry, Jan. 14, 2021
Sealing Redactions

As we've recently pointed out, you need more than a boilerplate motion with generic arguments to overcome the presumption of public access in D. Del. It also helps to submit a declaration. But even if you do, don't be surprised if your request is denied.

On Monday, Judge Andrews denied a Hatch-Waxman defendant's unopposed motion to redact a hearing transcript on a motion to dismiss. This was "not a boilerplate motion" and it "was accompanied by an Affidavit."

The defendant also made the kinds of arguments that have sometimes succeeded in the past:

The gist of the underlying motion to dismiss is that Sandoz has lost its API supplier and that Sandoz will not be able to …
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Judge Stark's 50-Hour ANDA Trial

Jeff Castellano, Jan. 12, 2021
ANDA Trial Scheduling

Trials in ANDA cases (also known as Hatch-Waxman cases) are usually very efficient matters. There is no jury, and the judges, lawyers, and witnesses that regularly try and participate in ANDA cases are well-practiced at maximizing the amount of evidence presented in each trial day (even where the issues are quite complicated and the parties numerous). So ANDA trials are often short, sometimes just a few days from start to finish.

Occasionally, however, even ANDA cases are too complicated to fit into a one-week-or-less trial. For example, Judge Stark recently stated that he may allocate up to 25 hours per side in an ANDA case set to go to trial later this week.

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Which Magistrate Judge Will You Get in a District of Delaware Case?

Andrew E. Russell, Jan. 11, 2021
KB Magistrate Judges

Wilmington, <a href='#' class='abbreviation' data-bs-toggle='tooltip' data-placement='top' title='Delaware'>DE</a>
Wilmington, DE Andrew Russell, CC BY 2.0

In the District of Delaware, the district court judges often refer substantive issues to the magistrate judges, even absent consent of the parties. This is one way that the judges manage the incredible load of the patent docket here.

When dealing with substantive referrals (not referrals for mediation/ADR), the Court uses an assignment system, where particular district court judges tend to refer cases and motions only to their assigned magistrate judges (with occasional exceptions).

The most recent announcement of magistrate judge assignments that I know of was made at a Federal Bar Association lunch back in September 2019:

  • Magistrate Judges Thynge …
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Update on Upcoming D. Del. Jury Trials

Andrew E. Russell, Jan. 10, 2021
Jury Trials Trial Calendar

Calendar
Adam Tinworth, Unsplash

It has been a while since we posted an update on upcoming jury trials in the District of Delaware.

The most recent news from the Court is that Chief Judge Stark still believes that jury trials are feasible, using the Court's enhanced jury trial procedures, and the Court intends to proceed with trials as they come up.

[UPDATE: If you arrived here via a Google search, make sure to check out our latest posts on this issue here.]

The next jury trial is set for January 25, and then there are multiple trials scheduled for mid- to late-February:

  • January 25, 2021: Judge Noreika has a jury trial scheduled in a breach of contract action, …
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