A Blog About Intellectual Property Litigation and the District of Delaware


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Intellectual Property

In Forcing Witness to Attend Hearing in Mavexar-Related Case, Chief Judge Connolly Sets Out His Views on Post-COVID Remote Hearings

Andrew E. Russell, May 31, 2023
Mavexar COVID-19

TV
Possessed Photography, Unsplash

Chief Judge Connolly issued a memorandum order in the Backertop case today. We talked previously about how the plaintiff in Backertop is an LLC whose sole member is a paralegal who is married to an attorney who works at Mavexar, who gets just 5% of the proceeds of litigating the patents owned by the LLC (the rest goes to Mavexar).

Following a hearing last year, the Court ordered production of various documents, and ordered the owner of the LLC to appear again for a hearing on June 8. She asked to attend remotely due to other obligations.

Today, Chief Judge Connolly denied her request, but rescheduled her appearance for July (the June 8 hearing will still …

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Reminder: File Too Many SJ Motions with Judge Noreika, and You May Have to Rank Them—And Likely Lose Some

Andrew E. Russell, May 26, 2023
Summary Judgment FRCP 56

Stick Figure Bonk

We talked early last year about how Judge Noreika praised Chief Judge Connolly SJ ranking procedures, and applied them in a case where the parties had filed 11 SJ motions.

As a reminder, under Chief Judge Connolly's procedures, the parties rank their SJ and Daubert motions. The Court addresses them in order, and if it denies one, it then denies the remainder.

Needless to say, it can lead to some significant strategizing prior to filing, where parties try to balance the importance of each motion with its likelihood of success.

This week, Judge Noreika did it again, and I thought it was a good time to remind everyone that this can happen. In VB Assets, LLC v. Amazon.com, Inc. …

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Court Rejects "Unprecedented" Request to Modify Judgment Based on Amended ANDA

Andrew E. Russell, May 19, 2023
ANDA FRCP 60

Undo Button
Sergi Kabrera, Unsplash

On Wednesday, Judge Andrews issued an order in Salix Pharmaceuticals, Ltd. v. Norwich Pharmaceuticals, Inc., C.A. No. 20-430-RGA (D. Del. May 17, 2023) rejecting an attempt to evade judgment in an ANDA action based on the filing of an amended ANDA.

The defendant in the case had won on one method of treatment, and lost on the other. It filed an amended ANDA seeking to remove the infringing treatment from the label:

Defendant filed an ANDA seeking to make and market a drug for two different methods of treatment-the IBS-D indication and the HE indication. I had a bench trial. After trial, I ruled in Defendant's favor on the IBS-D indication (as …
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No Pendent Venue for Patent Claims

Andrew E. Russell, May 17, 2023
Venue Transfer

Visualization of pendent venue
Visualization of pendent venue Chris Linnett, Unsplash

Today Chief Judge Connolly addressed a motion to dismiss a combined trade dress, federal unfair competition, copyright infringement, and design patent infringement action.

The parties apparently agreed that the defendant in the action did not meet the TC Heartland venue test for the patent portion of the action:

Argento is a New York corporation with its principal place of business in New York. . . . It is undisputed that Argento does not own, rent, or maintain any offices, physical property, addresses, or bank accounts in Delaware and does not employ any Delaware-based employees, agents, or representatives. It is also undisputed that venue of Globefill's patent claim against Argento does not lie …
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Judge Williams Is Not Kidding When It Comes to His 3-Motion-in-Limine Limit. Beware...

Andrew E. Russell, May 5, 2023
Ranking Sorting

Split Cup
Tania Melnyczuk, Unsplash

Most judges in the District of Delaware limit the parties to three motions in limine per side. Visiting judges sometimes permit more, but I get the sense that this limit is something native D. Del. judges generally don't want the parties to change when submitting a proposed scheduling order.

But I can't recall a patent case where the parties did not use all of their motions in limine, and want more (even if they didn't ask the Court). These evidentiary issues can just have a large effect on trial. Plus, with a mountain of work bearing down on you in the leadup to trial, it's great to think you might knock out some opposing …

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Counting By Argument, Rather Than By Claim, When Narrowing Claims

Andrew E. Russell, May 1, 2023
Claim Narrowing § 112

Abacus
Sami, CC BY 2.0

There was an interesting oral order from Judge Burke last week in Natera, Inc. v. CareDX, Inc., C.A. No. 20-38 (D. Del. Apr. 28, 2023). Defendant apparently asserted a large number of § 112 defenses based on lack of enablement or written description. The Court held that the defendant had to narrow it's defenses.

The parties further disputed whether the parties should count § 112 arguments by limitation or by claim. The Court held that they should be counted by claim limitation, not by claim:

With respect to the parties' dispute as to whether an argument that a claim is invalid under section 112 based on a particular claim limitation counts …
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Court Strikes Key Infringement Argument Where Party Had No Good Explanation for Late Disclosure

Andrew E. Russell, April 24, 2023
Infringement Contentions Pennypack

"Did I remember to disclose my infringement counter-arguments? Ah well, I'll just argue that they're responsive." Tim Bogdanov, Unsplash

Judge Williams unsealed a detailed Pennypack decision Friday, where he struck an expert's infringement argument after the party failed to disclose it in their contentions.

The motion and brief provide some helpful context here. The defendant moved to strike material in the expert's opening report that apparently responded for the first time to arguments made in the defendant's non-infringement contentions. Cirba Inc. v. VMWare, Inc., C.A. No. 19-742-GBW, D.I. 1460 at 1 (D. Del. Nov. 28, 2022); Id., D.I. 1461 at 2-3.

The Court rejected an attempt to argue that the argument was "responsive" to a filing …

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Judge Williams: Evidence of Plaintiff's Investors and Litigation Funding is Admissible at Trial

Andrew E. Russell, April 19, 2023
Litigation Funding MIL

"Your honor, we move to turn the apple, so that the jury can only see the side that's not rotten." Giuseppe CUZZOCREA, Unsplash

Yesterday, Judge Williams issued an opinion ruling on motions in limine for the trial starting next week in Cirba Inc. (d/b/a DENSIFY) v. VMWare, Inc., C.A. No. 19-742-GBW (D. Del.) (a case we've discussed several times before).

In it, he addressed several MILs. These opinions are always interesting, but given all of the recent discussion of litigation funding, I thought Judge Williams' order on the plaintiff's litigation funding MIL is worth noting.

Plaintiffs in the case moved in limine to preclude reference to their litigation funding arrangements:

With respect to Plaintiffs …
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Judge Burke Applies "Motion Day" Procedure to non-§ 101 Motions

Andrew E. Russell, April 17, 2023
§ 101 Days

Two birds with one stone—Or three, I suppose.
Two birds with one stone—Or three, I suppose. Dulcey Lima, Unsplash

As we've discussed, starting last decade some of our judges have dealt with the influx of § 101 motions by setting "§ 101 motion days" and addressing multiple § 101 motions in multiple cases at the same time and in the same oral argument, with attorneys for each party required to attend the full argument.

These days seem to have been a success, because today Judge Burke issued an order applying the same procedure to a new type of motion—motions to dismiss or strike inequitable conduct allegations:

WHEREAS, the Court has received numerous motions challenging the accused infringer’s counterclaims and/or affirmative defenses relating to inequitable conduct (hereafter, …
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Another Reason to Bring Non-Infringement / Invalidity Counterclaims

Andrew E. Russell, April 14, 2023
Counterclaims

To keep the patent assertion entity from coming back from dead, kill it with counterclaims
To keep the patent assertion entity from coming back from dead, kill it with counterclaims AI-Generated, displayed with permission

One recurring question in patent cases is whether to bring non-infringement and invalidity counterclaims.

For a while (over the last decade), it seemed like parties were backing off on counterclaims a bit, for a couple of reasons:

  • While counterclaims are generally low-cost, they are not free and still involve some work.
  • They increase the risk that the defendant, who is now a counterclaim-plaintiff, will have to bring some subset of its witnesses to Delaware for deposition.
  • They may have little impact on how the case progresses.

These days, however, the pendulum seems to be swinging back to some extent, with parties …

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