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.
Behold, our claim chart. Look upon it and despair!AI-Generated, displayed with permission
Parties in patent cases often fight about the sufficiency of infringement and invalidity contentions. Parties may offer broad initial contentions, keeping their options open as the case develops and avoiding the cost of detailed contentions. The opposing party, though, may want detailed contentions to narrow and explain the case and to tie parties to their positions.
Often, one side or the other moves to compel more detailed contentions knowing that, if they lose and if the opposing party refuses to supplement, they will be better positioned to exclude the more detailed contentions inevitably offered later.
The defendant in Almondnet, Inc. v. Viant Technology LLC, C.A. No. …
Sometimes you see a group of patents, and you just know there's a story there. The first patent will be something benign like an "apparatus for getting to stuff stuck in the back of the drawer." Then, a few years later, there's a new patent from the same inventors for "an apparatus for catching the very large spiders that are sometimes also in the back of the drawer." Some time later, their heirs will file a patent for "a system for automatically extinguishing the towering inferno resulting from the SRS (Spider Retention System)."
AI-Generated, displayed with permission
This brings us to last week's opinion in Evonik Ops. GmbH v. Air Prods. and Chem., Inc., C.A. No. 22-1543-JPM, D.I. 58 (D. Del. July 24, 2024). The first patent there was an elaborate system for separating gases in a mixture. One of those stages required a specific gas stream to account for less than 60% of the total stream by volume. Then, years later, they were granted a near-identical patent on a system for separating gases where that same stream had to account for more than 60% of the total volume.
The defendants moved to dismiss the direct infringement claims as to one of the patents, arguing that the system, by definition, could only infringe one or the other (i.e., the gas could either be more or less than 60%, not both).
In The Estate of Edward Bovee v. Corporal Sam Wilks, C.A. No. 23-192-CFC (D. Del.), the parties' agreed-upon scheduling order included Chief Judge Connolly's normal language requiring concise statements:
Any motion for summary judgment shall be accompanied by a separate concise statement detailing each material fact as to which the moving party contends that there are no genuine issues to be …
Parties stipulate to drop various claims and defenses all of the time. Sometimes, the parties simply bargain with each other to winnow down the scope of the case for trial. Other times, a defense or claim may be dropped to avoid some especially harsh discovery burden. Sometimes you just hate a patent claim sooo much.
Always there are dangers. For one rule is supreme in the realm of stipulations.
No takebacks.
AI-Generated, displayed with permission
Such was the lesson this week in Allergan, Inc. v. Mankind Pharma Ltd., C.A. No. 23-272-JFM, D.I. 126 (D. Del. July 24, 2024). The defendant, Mankind, had stipulated to drop all invalidity defenses as to one patent "because it would streamline the case and would allow them to avoid answering discovery requests" and because "the 504 patent had been unsuccessfully challenged in the past and the invalidity theories that remained were weak." Id. at 4.
A bit later Judge Andrews issued is opinion in Allergan USA, Inc. v. MSN Labs. Private Ltd., C.A. No. 19-1727-RGA (D. Del. Sept. 27, 2023), which we covered previously on the blog. TL;DR Judge Andrews held (for the first time in the district) that OTDP applied when the first-filed, and first-issued, patent was the one being invalidated.
All of a sudden, the defendant realized that they might have a real humdinger of a defense and so they moved to "vacate" the earlier stipulation in anticipation of the Federal Circuit affirming the decision in MSN.
Visiting Judge Murphy, however, held that this ...
A short post today to flag another interesting aspect of Judge Williams' opinion in Upsher-Smith Laboratories, LLC v. Zydus Pharmaceuticals (USA) Inc., C.A. No. 21-1132-GBW (D. Del. July 18, 2024) which Andrew wrote about last week.
The Plaintiff there moved in limine to preclude the defendants' expert from testifying under rule 403 (and most other rules of evidence). The only problem was that this was a bench trial, where 403 is something of an awkward fit, as noted by Judge Williams in denying the motion:
While Rule 403 permits the Court to exclude relevant evidence if its relevance is outweighed by the potential for "unfair prejudice, confusing the …
It's usually risky to send long, unsolicited letters to the Court seeking relief, particularly with extensive argument. Generally you are well served to keep letters short and limited or you may annoy the Court.
The Court frequently says that it prefers parties to make requests for relief by motion rather than letter. This is even included most (maybe all) of the judges' form scheduling orders:
Applications by Motion. Except as otherwise specified herein, any application to the Court shall be by written motion. Any non-dispositive motion should contain the statement required by Local Rule 7.1.1 [that the parties have verbally met-and-conferred with local counsel on the line].
But the Court doesn't always enforce this. It's not …
An AI rendering of an object that is both a sword and a shield. I can't argue with it.AI-Generated, displayed with permission
There are certain exclusion arguments that stand out as tending to work more often than others—things like a Rule 702 motion for failure to apportion, a motion to exclude a Doctrine of Equivalents argument offered for the first time in a reply expert report, or a motion to exclude an exhibit not on the exhibit list. It's not that they win every single time, but parties often seem to have an uphill battle against them.
Another argument on that list is "using privilege as a sword and a shield." It's not uncommon for a party to get …
Eds. Note -- I had this whole 10 line joke song about means plus function claims to the tune of conjunction junction, then I lost power for a second and its all gone. Just imagine it was groundbreaking stuff. Hug your generators folks.
Is it such a long flight?AI-Generated, displayed with permission
It's hard to believe it has been almost a year, but last August we wrote about a Mavexar-related witness who refused to travel to Delaware to testify, instead insisting that she would offer testimony only remotely.
The Court fined her $200 per day for contempt of Court. She immediately appealed, arguing that the Court cannot force her to attend as she is outside of the 100-mile subpoena radius permitted under FRCP 45. The Court denied her motion to stay the fine pending appeal.
Yesterday, the Federal Circuit issued an order affirming the contempt sanction (and doing so pretty enthusiastically). The Federal Circuit made clear that the Court's inherent authority absolutely …
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