A Blog About Intellectual Property Litigation and the District of Delaware


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United States District Court for the District of Delaware

Court Orders Production of Expert's Annotations of Opposing Expert's Report

Andrew E. Russell, Nov. 10, 2021
Expert Witness Expert Reports

What's the worst they could say?
What's the worst they could say? Andrew E. Russell

It's easy to forget that, before the 2010 amendments to the Federal Rules of Civil Procedure, attorney communications with testifying experts and drafts of expert reports were often discoverable by the other side.

The amended Federal Rules offer more protection to those kinds of materials. But since the change, some attorneys have become much more open in their communication with testifying experts, and some experts have become much less sensitive to avoiding written records.

But post-2010 Rule 26 does not protect everything relating to a testifying expert's work. In fact, it has gaping holes, and protects only two things: "drafts of any report or disclosure" and "communications between the party's attorney …

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Numerical Boundaries Not Required to Avoid Indefiniteness

Jeff Castellano, Nov. 9, 2021
Indefiniteness Claim Construction

In a recent claim construction ruling on a single claim term, Judge Andrews rejected an indefiniteness challenge based on the lack of "specific numerical boundaries" in the claim.

The technology at issue in Commscope Technologies LLC v. Rosenberger Site Solutions, LLC, C.A. No. 20-1053, involves antennas used in cell phone towers. The patent-in-suit is directed to solving the problem of distortion in multi-band antennas by "preventing the antenna elements intended to receive high bands from transmitting low band signals."

The defendants argued that the below claim language is indefinite...

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No § 285 Fees Against Counsel

Andrew E. Russell, Nov. 8, 2021
§ 285 Attorney's Fees

Back in August, Judge Hall shot down a plaintiff's attempt to recover its fees from counsel under 35 U.S.C. § 285, which provides for the award of "reasonable attorneys fees" in "exceptional cases." Today, Judge Andrews rejected several objections to Judge Hall's decision.

As set forth by Judge Andrews, the defendants' basic argument was that while earlier cases held that § 285 does not permit fee awards against attorneys, certain dicta in the Supreme Courts more recent Octane Fitness opinion changed that:

Defendants contend that the Magistrate Judge "overlooked" the Supreme Court's Octane Fitness opinion, in which the Court found that § 285 imposed "one and only one constraint on district courts' discretion to award attorney's fees in patent …
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Judge Andrews Rejects Attempt to Introduce Supplemental Expert Report and New Trial Exhibit a Week Before Trial

Andrew E. Russell, Nov. 5, 2021
Trial Trial Procedure

Talk about 11th hour...
Talk about 11th hour... Bryce Barker, Unsplash

The parties in Genentech, Inc., et al. v. Apotex Inc., C.A. No. 19-78-RGA (D. Del.) are set to start a patent bench trial on Monday relating to a method of treating a particular disease, idiopathic pulmonary fibrosis (“IPF”), using the drug pirfenidone.

At the end of last week, plaintiff tried to serve a last-minute supplemental expert report and a new trial exhibit. The report and exhibit involve a newly-released study regarding the treatment of COVID-19. Apparently, according to the defendants, plaintiffs wanted to submit the new evidence on the theory that the COVID-19 treatments may cause IPF, which may be treated using pirfenidone, thus potentially resulting in infringement.

Plaintiff's …

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To Plan A Trial

Nathan R. Hoeschen, Nov. 4, 2021
Trial Calendar Trial Scheduling

It's no secret that Delaware, like essentially everywhere else, has a huge number of trials scheduled for the coming months with many of our judges double and triple-booked with trials. As the pandemic backlog finally begins to clear, I thought it might be interesting to see if this congestion was having any effect on when trials were being scheduled for new cases., compared to our historical average. To that end, below is the current average time from scheduling order to trial for each of our Article 3 judges based on their 5 most recent schedules:

  • ANDREWS - 23.8 Months
  • CONNOLLY - 24.1 Months
  • NOREIKA - 25.3 Months
  • STARK - 24.2 Months

I was a bit surprised that these figures were …

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Judge Stark to Be Nominated for the Federal Circuit

Andrew E. Russell, Nov. 3, 2021
Congestion 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

Big news! The White House announced today that Judge Leonard P. Stark of the District of Delaware is set to be nominated to the Federal Circuit.

Assuming he is confirmed, Judge Stark will actually be the second judge to be elevated to an appellate court from the District of Delaware in recent memory, following The Honorable Kent A. Jordan's elevation to the Third Circuit in 2006.

Congratulations to Judge Stark!

Another Judicial Vacancy? No problem.

Despite its enormous patent case load, the District of Delaware remains a small court, with just four district court judges (although the Judicial Conference …

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Judge Burke Rejects Challenge to Emmy-Nominated Expert in VR and Immersive Content

Jeff Castellano, Nov. 2, 2021
Daubert

In a recent Daubert ruling, Judge Burke offered some helpful reminders regarding the threshold for expert testimony under Fed. R. Evid. 702. In particular, Judge Burke's ruling highlights the principle that an expert's qualifications need not be supported by advanced degrees or decades of experience, if the other requirements of Rule 702 are met.

In 360Heroes, Inc. v. GoPro, Inc., 17-1302-LPS-CJB, a case in which Judge Burke has been assigned all pretrial matters, the plaintiff moved to exclude the defendant's expert Ryan Thomas, an Emmy-nominated video content creator. Mr. Thomas was retained by the defendant to offer opinions on products available to 360 video content creators from 2015 to the present, including commercially acceptable alternatives to the plaintiff's patented products.

filip-havlik-lP5bWEhf4nA-unsplash (1).jpg
man in black jacket wearing black helmet photo, Filip Havlik, Unsplash

The plaintiff sought to exclude Mr. Thomas' entire opinion, on two grounds - his qualifications and the reliability of his opinions - neither of which Judge Burke found persuasive.

First, the plaintiff asserted that Mr. Thomas was not qualified to serve as an expert under Rule 702 because...

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What Can a Patentee Do When the Court Excludes Its Damages Expert? Maybe Force the Other Side’s Damages Expert to Testify for the Patentee.

Andrew E. Russell, Oct. 29, 2021
Damages Experts

With this case, the hits just keep coming...
With this case, the hits just keep coming... Mitya Ivanov, Unsplash

What do you do when your expert's damages opinion gets excluded, the Court rules you cannot proceed based solely on the factual evidence, and you bear the burden of proof?

According to an opinion from Judge Andrews yesterday, one option is to call the other side’s expert—even if the other side otherwise refuses to put her on the stand.

This Case Again?

We've actually talked about this case, Shure Inc. v. ClearOne, Inc., C.A. No. 19-1343-RGA-CJB (D. Del.), quite a bit at this point, including defendant's efforts to use DJ jurisdiction to keep part of the case out of Delaware, and plaintiff's effort …

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Judge Andrews Strikes Last-Minute Damages Report

David M. Fry, Oct. 27, 2021
Damages Pennypack

When it comes to supplemental expert reports, how late is too late?

In a case that's set for trial next month, Judge Andrews recently addressed the parties' objections to a number of orders and R&Rs issued by Magistrate Judge Burke. In one of those orders, Judge Burke granted a motion to exclude some of the plaintiffs' damages calculations as erroneous and unreliable.

The plaintiffs objected, and in the meantime, they served a supplemental damages report attempting "[t]o correct the flawed analysis" excluded by Judge Burke.

Judge Andrews not only overruled the objections, but also found that the supplemental report was submitted too late:

The report was filed less than three weeks before trial. . . . This is …
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Judge Noreika Orders Parties to Submit Joint Claim Chart, Denies Request for Early SJ

Jeff Castellano, Oct. 26, 2021
Early SJ Claim Construction

Leave to file early summary judgment is not often granted in this District. The circumstances in which the Court may permit early SJ are usually narrow: for example, where a question of law appears to be dispositive of the entire action, and/or where the moving party agrees to forego its ability to file a motion on the same grounds later.

It is safe to assume that openly violating the Court's scheduling order right before you ask to file an early motion for summary judgment of invalidity under Section 101 will not increase your chances of success.

Last week in Johnson Controls Technology Company v. BuildingIQ, Inc., C.A. No. 20-521-MN, Judge Noreika forcefully rejected the defendant's request to file such a motion just days after the defendant had stonewalled during the claim construction process, causing the parties to miss the to file the joint claim construction chart deadline.

After the deadline passed, the Court ordered that...

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