A Blog About Intellectual Property Litigation and the District of Delaware


DED
United States District Court for the District of Delaware

Claim Construction: Quasi-Intrinsic Evidence and Carryover Disclaimers

Jeff Castellano, July 9, 2021
Claim Construction

Judge Stark issued a claim construction ruling in a large multi-district ANDA case last week, touching on interesting questions regarding the nature of intrinsic evidence and the impact of disclaimers on child applications.

The parties to In re Entresto (SacubitriWalsartan) Patent Litigation, C.A. No. 20-2930-LPS presented the Court with just a few issues for resolution.

First, the Court considered whether independent claims of two of the patents-in-suit directed to administration of a "combination" of active ingredients should be limited to administering those ingredients as "two separate components“…

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Daubert Time

Nathan R. Hoeschen, July 8, 2021
Scheduling Daubert

Time
Charles Deluvio, Unsplash

Judge Noreika issued an interesting order last week that allows us to pinpoint precisely how much time she requires to consider Daubert motions.

Naturally, we already had some insight into this issue from the Judge's form scheduling orders. For non-ANDA cases (i.e. cases where the parties may file summary judgment motions), Daubert motions are due at the same time as SJ motions -- at least 4 months before the pretrial conference. See Form Scheduling Order [Patent, Non-ANDA], ¶ 8(f)(iii) (D. Del. Apr. 5, 2021) (Noreika, J.).

The form scheduling order for ANDA cases, on the other hand, gives the parties considerably more leeway, simply requiring that any Daubert motion be brought …

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Chief Judge Connolly Trims Claims and Defenses Before Trial

David M. Fry, July 7, 2021
Trial Claim Narrowing

Scissors
Markus Winkler, Unsplash

A few months ago, we wrote about claim narrowing in patent cases, noting that Delaware judges will often set additional limits when a case reaches trial. Because this typically comes up during the pretrial conference, there is often no written record on the docket.

Last Thursday, however, Chief Judge Connolly issued a rare, written order requiring the parties to narrow their claims and defenses before trial:

ORAL ORDER: Per today's call, it is HEREBY ORDERED that the pretrial conference will be held on July 27, 2021, and the trial will be held on August 2, 2021. Plaintiff shall identify for Defendant no later than 5:00 p.m. on July 7, 2021 no more than two patents and …
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Does an Expert Have to Write His Own Report?

Jeff Castellano, July 6, 2021
Expert Reports Daubert

Expert witnesses testifying in federal court are required to provide an expert report under Rule 26(a)(2). Although Rule 26 sets forth some requirements for the content of the report, it does not directly address how the report should be prepared, and in particular how much input the expert (as opposed to the party that has retained the expert, or the party's counsel) should have in preparing the report.

Some experts insist on writing their report in its entirety, while others rely heavily on counsel during the drafting and revising process. Too much reliance on others, however, can lead to a motion to exclude for violation of Rule 26's mandate that the report setting forth the expert's opinions be “prepared and signed by the witness." Judge Andrews recently resolved such a motion in TQ Delta, LLC v. 2Wire, Inc., C.A. No. 13-1835-RGA, finding that while the plaintiff's expert had contradicted some of the reports from his report during deposition, that did not justify...

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Judge Stark Holds Another Remote 101 Day

David M. Fry, July 2, 2021
12(b)(6) 101 Day

We've written several times about Judge Stark's practice of holding "101 days." For the uninitiated, these are day-long hearings in which the court hears argument on multiple 101 motions from unrelated cases in a single, combined hearing. He has continued this practice throughout the pandemic, holding telephonic 101 days roughly once a quarter since July 2020.

He held another one last Friday, and he issued his written rulings earlier today. This time, he addressed three 12(b)(6) motions covering a total of four patents.

F45 Training Pty Ltd. v. Body Fit Training USA Inc. (C.A. No. 20-1194-LPS)

The claims were "directed to the abstract idea of storing, sending, and retrieving information over a network." Judge Stark found that this …

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Judge Burke Also Limits Claim Construction to 10 Terms

Nathan R. Hoeschen, July 1, 2021
10 Terms Claim Construction

tim-collins-B5ox94ZFGgI-unsplash.jpg
Road Block, Tim Collins, Unsplash

As chronicled in this very publication, for the last year or so, Judge Noreika has consistently declined to construe more than 10 terms at Markman.

An Unwritten Rule

This practice, however, has not been memorialized in Judge Noreika's form scheduling order, standing orders, or preferences and procedures. This leads to the question of whether the limit still holds when Judge Noreika refers claim construction to a magistrate.

Having just received our first data point, the answer appears to be "yes."

Judge Burke Limits Construction to 10 Terms

In March, Judge Noreika referred "all pretrial matters" in Commvault Sys., Inc. v. Rubrik, Inc., C.A. No. 20-524-MN-CJB, D.I. 55 (D. Del Mar. 5, …

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When Is a Party "Fully Represented" in an IPR for Purposes of Issue Preclusion?

David M. Fry, June 30, 2021
Collateral Estoppel

Whenever collateral estoppel comes up in a patent case, it usually generates some interesting discussion. Yesterday's decision from Judge Andrews in TQ Delta v. 2Wire is no different.

After the Federal Circuit reversed a PTAB determination of unpatentability on an unasserted claim, the plaintiff moved to estop the defendant from challenging the validity of two related claims in the district court litigation.

Judge Andrews concluded that summary judgment was inappropriate because the defendant adequately "explained how the differences between the [asserted claims] and [the adjudicated claim] alter the invalidity analysis[,]" but he also addressed an interesting question: Is a petitioner "fully represented" in an IPR when another petitioner is taking the laboring oar before the PTAB?

The defendant …

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Chief Judge Stark Delivers Update on D. Del., Passes Chief Judgship to Judge Connolly

Andrew E. Russell, June 29, 2021
FBA Court Announcement

Annual Report 2021
District of Delaware

The Delaware FBA held its annual meeting virtually today. It included really wonderful speeches by the judges, passing along the Chief Judge gavel in both the district court and the bankruptcy court.

The FBA also did a great job presenting the event via Zoom (did anyone else clap while sitting alone in their offices, or was it just me?!).

I won’t try to summarize everything that was said, consistent with our ongoing attempts—and failures—to keep our posts short. But here are some quick highlights that may be particularly relevant to IP/DE readers:

  • Chief Judge Stark passed the gavel of Chief Judge to Judge Connolly, who will be new Chief Judge following the end of Judge Stark’s term …
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Judge Andrews Addresses Infringement By Standard-Compliant Products

Jeff Castellano, June 29, 2021
Summary Judgment Standards Essential

Industry standards can be helpful for a patentee tasked with proving infringement of standard-compliant products. Standards often lay out mandatory features, such that a patentee may be able to use infringement of the standard itself as a shortcut to establish infringement of a standard-compliant product (although there are limits on that type of proof, including that the patent must cover all possible implementations of the standard).

The question of whether infringement by a standard can be used to shortcut infringement proofs for a product recently came up before Judge Andrews on a summary judgment motion by the plaintiff in TQ Delta, LLC v. 2Wire, Inc., C.A. No. 13-1835-RGA.

The defendant's products in TQ Delta were accused of implementing an infringing functionality . . .

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Can a Party Redact "Irrelevant" Information from Relevant Documents in Discovery, on the Basis That It Is a Trade Secret?

Andrew E. Russell, June 28, 2021
Protective Order LR 26.2

Secret
"SECRET" stamp, RestrictedData, CC BY 2.0

The parties in Progressive Sterilization, LLC v. Turbett Surgical LLC, C.A. No. 19-637 (D. Del.) brought a dispute about "excessive" redactions to certain production in their patent action.

The defendant sought information from third parties who were under contract with the plaintiff, including various consultants and a former business partner.

Plaintiff apparently has confidentiality agreements with these people, and tried to filter their document production in the case, redacting information it thought should not be produced to the defendant. According to defendant's letter brief:

[Plaintiff] insisted on reviewing [the] third-party subpoena recipients’ responsive documents and redacting certain non-privileged content . . . prior to their production to Defendants

According …

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