AI-generated image of a defendant relying on non-prior art documents as evidence of prior artAndrew E. Russell, displayed with permission
Judge Stark issued an oral order yesterday addressing a motion in limine in Otsuka Pharmaceutical Co., Ltd. v. Zenara Pharma Private Ltd., C.A. No. 19-1938-LPS (D. Del.).
According to the briefing, plaintiff sought to exclude two exhibits that were dated after the priority date of the patent.
The first was a 2005 "review article" published just months after the priority date. According to defendants' brief, "does not present original data" and instead "discusses the information known in the art before the priority date."
The second exhibit was published in 2021 and includes a "history of research …
Procedural opinions about post-appeal trials are relatively rare, at least compared to the amount of decisions on motions to dismiss or summary judgment that we see. Most cases settle long before they reach this stage. So I thought it was worth posting about how Judge Bataillon handled a new trial in C R Bard Inc. v AngioDynamics, Inc., C.A. No. 15-218-JFB-SRF (D. Del.) after the Federal Circuit vacated the result of the previous trial.
The parties in the case sought to introduce new information in the new trial, including at least one accused product that was released after the previous trial. The Court rejected that idea, holding that the new trial would be a direct repeat of …
Judge Burke issued an oral order earlier this week with some interesting language criticizing the party's attempt at an amended complaint.
In Midwest Energy Emissions Corp. v. Arthur J. Gallagher & Co., C.A. No. 19-1334-CJB (D. Del.), the plaintiff accused a very large number of entities—More than 50, it looks like—with infringement of a number of patents, all in a single combined action.
Earlier this year, it moved to amend its complaint to add additional defendants it alleged were parent companies of defendants who were as acting as the parent companies' "alter egos and agents." Judge Burke granted this request as to one party, for which the complaint included more detailed factual allegations, …
We've written a lot about how there is asplit in the District of Delaware about whether a complaint itself can establish knowledge of infringement sufficient to support a claim of post-filing willfulness or induced infringement.
Early this week, visiting Judge Kennelly weighed in, siding with the judges who say that a complaint can establish knowledge, in a short opinion:
A claim for willful infringement of a patent requires the plaintiff to establish—or at this point in the case, to plausibly allege—that the accused infringer had knowledge of or was willfully blind to the patent and that its conduct constituted, induced, or contributed to infringement. . . . Similarly, a claim of induced or contributory infringement …
As we've mentioned in the past, in D. Del. patent cases, the Court often sets deadlines for submission of a "status report" (or, sometimes, a "joint status report" or "interim status report").
These orders can be somewhat vague. The Court doesn't always request "a joint status report regarding xyz." Instead, at times, it will issue a generic request for a status report, like this:
ORAL ORDER - IT IS HEREBY ORDERED that, on or before 9/23/2022, the parties shall submit a joint status report. ORDERED by Judge Maryellen Noreika on 9/16/2022.
To which the natural human response is "a status report about what?" Usually, though, it's pretty obvious from the docket. In the case above, C.A. No. 21-459-MN, the case is stayed pending appeal of another case, and the order follows a more than year-long delay with no action. The Court probably wants to know the status of the appeal.
The next question is often "how much detail does the Court want?" The answer seems to vary depending on the context. It's usually safe to assume that the Court does not want disputes or argument from the parties, and that it likely appreciates a concise statement of only what the Court needs to know to take action. But it can be hard to say for sure ...
Judge Williams has now posted his form scheduling orders on the District of Delaware website.
I took a look through his non-ANDA scheduling order, and it will be extremely familiar to Delaware practitioners. It mostly tracks Judge Noreika's form order.
Judge Williams' form order does, however, pull in portions from other Delaware judges' form scheduling orders. Here are some changes in Judge Williams' new form order as compared to Judge Noreika's form:
Discovery disputes and motions to amendor strike use language from Judge Stark's form scheduling order.
Parties sometimes get tripped up on this, and forget that motions to amend or strike have special rules—so keep that in mind if you have a Judge …
At this point it's clear that Chief Judge Connolly's standing orders regarding initial disclosures and litigation funding are no joke, and plaintiffs need to comply with them or risk consequences.
Today, the Court took the further step of requiring the owners of plaintiff entities in at least 14 cases to appear in-person for evidentiary hearings regarding compliance with his standing orders.
The orders today generally took the following form:
Whereas the amended corporate disclosure forms Plaintiff filed in the above-captioned cases identify [owner name(s)] as Plaintiff s owner; and
Whereas the Court has concerns about whether Plaintiff has complied with the Court's standing order regarding third-paty litigation funding [or about the accuracy of the …
Last week Magistrate Judge Burke ruled on a core technical documents dispute in The Nielsen Company (US), LLC v. TVision Insights, Inc., C.A. No. 21-1592 (D. Del.). The defendants sought to avoid production of core technical documents for a product that was accused but that could not infringe. Judge Burke rejected that position:
Defendant shall produce core technical documents for the Logitech-based system. . . . [I]f the Court did not allow discovery of properly-accused products every time a defendant said that its product did not infringe the patent-in-suit, there would be little to no discovery permitted in the patent cases in this Court.
He suggested that the infringement allegation here was not completely baseless, and that whether the product meets the claims depends on claim construction:
The real dispute here appears to be about whether a product can infringe the relevant patent if it contains a two-dimensional and three-dimensional sensor that are implemented in one piece of hardware. . . . It strikes the Court that that issue may get resolved via claim construction, or, if not, then pursuant to a later dispute (perhaps at summary judgment) regarding infringement. But those steps in the case are still to come.
In a pair of orders last week in Shopify Inc. v. Express Mobile, Inc., C.A. No. 19-439-RGA (D. Del.), Judge Andrews set out guidelines for the trial testimony of two fact witnesses, who will offer testimony at trial regarding some prior art references (among other things).
The procedural background here is surprising. The patentee moved in limine to exclude the testimony of these witnesses, and the Court addressed the motion at a pre-trial status conference. There, the Court directed that the parties depose the witnesses and that the accused infringer submit proffers of the testimony that will be offered at trial.
Federal Circuit on the left vs. Federal Circuit on the right. Will we get to see round 2?Charl Folscher, Unsplash
We talked a couple of days ago about how, in Longbeam Technologies LLC v. Amazon.com, Inc., C.A. No. 21-1559-CFC (D. Del.), Chief Judge Connolly stayed the action after raising plaintiff's inadequate disclosures at a § 101 hearing.
But, at the same hearing, plaintiff actually prevailed on the § 101 motion—and Chief Judge Connolly made some notable comments about how the Federal Circuit has responded to his previous § 101 decisions, and what that means for cases going forward.
Case 1, Universal Secure: Affirmed
The first case, Universal Secure Registry LLC v. Apple Inc., …
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