I hope the Third Circuit one day revisits the Pennypack factors, which are what it directs the lower courts to apply to determine whether late disclosures are subject to sanctions such as preclusion.
The factors can be lenient on parties that are very late in disclosing critical facts. Pennypack sets up a system where, oddly, the more critical the late-disclosed fact is, the later the party can be, and the less likely it is to be excluded. Isn't that backwards?
In practice, the factors often seem to turn on whether there is incurable prejudice, and that can be hard to establish. But a rule that "you …
It was tough to find an image for this. Just imagine each lego head is a proposed claim construction.Wu Yi, Unsplash
The District of Delaware supports contention interrogatories generally (but not contention 30(b)(6) topics). I remember that, back before the Court adopted the Default Standard in 2011, contention interrogatories were the main way to define and limit the scope of the case during fact discovery.
But contention interrogatories are not without limits. On Friday, in LeFebvre v. Extrabux, Inc., C.A. No. 23-167 (D. Del.), Judge Burke issued a decision on a discovery dispute about a contention interrogatory seeking claim construction positions. He held that a party can't just ask the opposing party for its …
Wilmington, DE. Who wouldn't want to litigate here? These guys, obviously.Andrew Russell, CC BY 2.0
We've talked a lot about how the Jumara factors, which govern how courts in the Third Circuit exercise their discretion on motions to transfer, are pretty tough on plaintiffs. Patent cases seems to stick more often than not, but plaintiffs with other claims, such as false advertising, may not be so lucky.
Judge Andrews granted a motion to transfer in a false advertising case on Friday. Here's how the factors broke down:
Plaintiff's Choice of Forum: This always favors plaintiff, and …
Last month, we wrote about the Mavexar-related witness who spent about $44,400 and counting just to avoid a trip to Delaware. Our post was prompted by the Federal Circuit affirming Judge Connolly's order imposing sanctions for her failure to appear in-person (even though, oddly, she agreed to appear remotely) for questioning by the Court related to potential misbehavior by her LLC, its attorneys, and Mavexar/IP Edge.
Well, yesterday the Court set a new hearing date, once again ordering the witness to appear for an in-person examination by the Court:
At Wilmington on this Twenty-third day of August in 2024, having received the Federal …
Money—Exactly the thing that this accused infringer may not actually wind up collectingGiorgio Trovato, Unsplash
We're back! During our brief intermission, the Court issued an exceptional case finding in Wireless Discovery LLC v. eHarmony, Inc., C.A. No. 22-480-GBW (D. Del.), and awarded fees.
I always like reading these opinions both (1) as a guide on what not to do and (2) to figure out how to better threaten NPEs with the risk of fee awards. I'm not sure this one is going to be particularly helpful in those regards, because there were some exceptional facts.
First, the patentee filed a patent that asserted previously invalidated claims. Worse, after the accused infringer called them …
Patent lawyers often lament their clients' casual correspondence, which sometimes read like the villains monologue that might close the first act of an early 80's Disney Movie.
"Steal? Of course I stole, the work is lucky I left him hands grovel or eyes to cry."AI-Generated, displayed with permission
Today's case, Jackson v. NuVasive, Inc., C.A. No. 21-53-RGA, D.I. 309 (D. Del. Aug. 2, 2024), is the rare case where those casual communications are helpful to the case.
You see, NuVasive had a prior agreement with Dr. Jackson that included a covenant not "assert . . . any claim that the development, manufacture . . . or exploitation of any NuVasive prodect . . . infringes and of the Jackson Group's rights" in a variety of defined IP categories. So, when Dr. Jackson sued for infringement of various patents not specifically listed in the agreement, the parties naturally disputed whether they fell within the terms of the covenant.
This leads us to an internal email from one of NuVasive's IP attorneys who worked on the agreement which helpfully stated, "I just want to ensure we’re as clear as possible that we’re FOREVER FREE FROM JACKSON (and any down-stream licensees/assignees) based on the rights we originally obtained and are now obtaining.”
Plaintiff moved in limine to exclude this email as hearsay, arguing that NuVasive would use it to prove the truth of the statement that they "were obtaining" rights that would leave them "FOREVER FREE" of Jackson.
Judge Andrews, however, found that the statement could be admitted subject to a limiting instruction:
Mr. Spangler's live testimony about what he wanted to achieve in the 2014 Agreement is not hearsay. The email clearly expresses Mr. Spangler's goal in the negotiations, which is evidence of his motive, intent, and plan. See Fed. R. Evid. 803(3). His motive, intent, and plan, in conjunction with other evidence, appear to be relevant to proving two of Defendant's counterclaims . . . I agree with Defendant that if Mr. Spangler's testimony were challenged, as it seems almost certainly likely to be, at least impliedly, the email would not be hearsay if offered in response to that challenge. Fed. R. Evid. 801(d)(l)(B) . . . . Thus, I will admit the email. The motion (D.I. 293) is DENIED. There is a bit of hearsay within the email. If Plaintiff wants me to give a limiting instruction in connection with that bit, Plaintiff is ORDERED to submit any such proposal before the pretrial conference is held.
Id. at 3-4.
I for one find it amusing that this rare example of a communication helpful to a case was authored by an attorney. It's probably good advice to all you in-house folks out there—send the occasional email to your buds explaining that you're totally in the right. It might turn out to be important one day.
Chief Judge Connolly issued an opinion today addressing whether a claim to a COVID "vaccine" can extend to something that is not a "vaccine," and ultimately calling for the Federal Circuit to address its inconsistent precedent on construction of patent claim preambles.
The claims at issue claimed "[a] vaccine comprising . . ." a certain formulation. They agreed on what a vaccine is, but disagreed as to whether that term in the preamble to the claims should be limiting:
What the parties dispute is whether the term "vaccine" is "limiting" in claims 27 and 28. "Limiting" is patent-speak for "is an element of the claim." . . . Notwithstanding the fact that claim 27 …
I couldn't find a picture for this. Just imagine each leaf is an individual claim construction oral order.Erol Ahmed, Unsplash
I've noticed that, since November of last year, Judge Burke has been issuing claim construction opinions in some cases in the form of a series of oral orders on the docket, rather than a formal memorandum opinion or an order with footnotes. I thought I'd flag this so that people know what may happen if you have claim construction in a case before Judge Burke.
I first saw the Court construe terms via oral orders on the docket in November 2023, in The Nielsen Company (US), LLC v. TVision Insights, Inc., C.A. No. 22-057, D.I. 140-141 ( …
"By careful review of literally just the face of the patent, we have determined that the conception date is no later than the 2/3/2017 filing date. You're welcome."AI-Generated, displayed with permission
I admit, sometimes I write about things because I want to be able to find them next time I need them. This is one of those posts.
As we've discussed before, most patent cases involve an interrogatory to the patentee asking for the date of conception. Patentees often give a low-effort initial response along the lines of "no later than x," where x is the date of filing or some other easy-to-identify date. Then they wait to see whether they need an earlier date, and supplement if so.
This has two benefits for the patentee: (1) it makes it hard for the accused infringer to weigh the relative merits of the prior art, because it has to hit a moving target, and (2) it's super easy, because the patentee doesn't have to review any of the materials. Thus, it's a common response.
The Court has rejected this response in the past, including the idea that "[a patentee] has no obligation to investigate whether the patent-in-suit is entitled to an earlier priority date at least until Defendant has provided its invalidity contentions." The Court in that transcript forced the patentee to actually respond to the interrogatory—making it a handy transcript for accused infringers.
There's a patent trial starting on Monday in Ferring Pharmaceuticals Inc. v. Finch Therapeutics Group, Inc., C.A. No. 21-1694-JLH (D. Del.), and filings are flying back and forth across the docket this week. The Court's order on motions in limine included this line, which piqued my interest:
To say that the Court is troubled by the occurrences to date would be an extreme understatement.
What was so troubling? It's tough to decipher exactly what is going on from the docket, which is fragmented and redacted. But it has to do with the parties' actions related to an inventor of certain of the asserted patents.
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