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Patent

Chief Judge Connolly Dismisses Claims on Patents Withdrawn Prior to ANDA Trial with Prejudice

Andrew E. Russell, Oct. 24, 2022
Trial Claim Narrowing

"Do you think 11 patents might be more than we need? Nah" Maciej Ruminkiewicz, Unsplash

Back in May, we wrote about an order by Chief Judge Connolly directing an ANDA plaintiff to cut back to 4 claims prior to trial, or potentially face a more difficult road for injunctive relief.

Plaintiff cut back to 6 claims, apparently dropping five patents from the case, and the bench trial proceeded.

Last month, Chief Judge Connolly issued his post-trial opinion regarding infringement and invalidity, and directed the parties to enter a proposed order. The parties ended up disputing what should happen to those dropped claims from the five dropped patents in the final judgment:

The proposals differ with respect to the disposition …
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Status Communications Between Litigation and Prosecution Counsel Were Not Privileged

Andrew E. Russell, Oct. 19, 2022
Prosecution Prosecution Counsel

Something is missing here.
Something is missing here. Pawel Czerwinski, Unsplash

A recent privilege decision from Judge Fallon became public this week, after the redactions period expired, and it has some interesting conclusions about communications between patent prosecution and patent litigation counsel.

In Huber Engineered Woods LLC v. Louisiana-Pacific Corp., C.A. No. 19-342-GBW-SRF (D. Del.), the defendant accused infringer brought an inequitable conduct counterclaim, alleging that plaintiff knowingly submitted five false "Substitute Statements in Lieue of Oath or Declaration" to the PTO.

As the Court explains, the defendant apparently relied on testimony from the person who signed the statements, and from the inventors, to allege that they were false:

These Substitute Statements, which were signed by [plaintiff] HEW employee Dave …
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"As Pointless as a Motion Can Be"

Andrew E. Russell, Oct. 12, 2022
DOE Motion for Reconsideration

Sad Attorney
AI-Generated, displayed with permission

Here's some interesting language from Judge Andrews yesterday, in an oral order:

In a motion (No. 15-611, D.I. 532) that is as pointless as a motion can be, Plaintiff asks for reconsideration/clarification of an issue that was not decided. Defendants add to the frivolity by writing five pages in opposition (No. 15-611, D.I. 542), while agreeing that I did not decide the issue. Both sides are surely right. Thus, Plaintiffs motion is DISMISSED as moot.

Plaintiff had moved for reconsideration of Judge Andrews' order adopting a special master order that struck a new DOE theory. According to Judge Andrews' original order:

I think TQ . . . advanced a distinctly new DOE theory and …
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Judge Williams Permits Indefiniteness Argument at Markman, Invites Live Witness Testimony

Andrew E. Russell, Oct. 10, 2022
Markman Hearing Markman

Fall. A great time for a Markman hearing with some in-person testimony.
Fall. A great time for a Markman hearing with some in-person testimony. Timothy Eberly, Unsplash

It's helpful to keep in mind that while most D. Del. judges permit indefiniteness arguments at Markman, some have (at least sometimes) precluded it.

This is important since, obviously, the Markman hearing is one of the earlier milestones in a case where a defendant can potentially get rid of some or all of the claims—but that only works if the judge is willing to entertain indefiniteness before the summary judgment stage.

As of late last week, we now have one more data point, for new Judge Williams. In response to an amended joint claim chart where the defendant asserted indefiniteness of every disputed …

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Judge Williams Denies Summary Judgment, But Schedules "Mini-Markman"

Andrew E. Russell, Oct. 7, 2022
Markman Hearing Markman

A miniature attorney, ready for a mini-Markman.
A miniature attorney, ready for a mini-Markman. AI-Generated, displayed with permission

We got another good data point on Judge William's practices this wekk. In Board of Regents, The University of Texas System v. Boston Scientific Co., C.A. No. 18-392-GBW (D. Del.), Judge Williams denied a non-infringement summary judgment motion—but also scheduled a "mini-Markman" to resolve the underlying claim construction issue.

The defendant moved for summary judgment of non-infringment, arguing that the Court's prior construction of a particular term was incorrect, but that regardless, it would not infringe under either the purportedly incorrect construction or what it alleges is the correct construction.

The Court found factual disputes as to both, and easily disposed of the non-infringement motion.

The …

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Bifurcating the License Defense Would Involve Repeating Evidence, So . . . No.

Andrew E. Russell, Oct. 5, 2022
Bifurcation

"Your honor, it's like the movie Groundhog Day, but we're repeating a trial..." AI-Generated, displayed with permission

Judge Williams issued a decision on Monday denying a motion to bifurcate a patent case, rejecting bifurcation where it would increase the total time by three days and involve repeating the same evidence.

The defendant moved bifurcate a five-day patent trial into a three-day jury trial on license issues and then, if necessary, a separate five-day trial on infringement.

The Court did not seem eager to sign up for a three-day trial with a significant risk of a second full trial later—especially one that repeats the same explanations of the technology:

The crux of ASC's position is that a two-day reduction in trial …
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You Can Check In Any Time You Like, But Your Documents Never Leave

Nathan R. Hoeschen, Oct. 4, 2022
Protective Order

Andrew is better at this A.I. thing, mine still appear monstrous
A.I. Generated, displayed with permission

Every protective order I've ever seen has a provision at the end requiring the parties to return or (more likely) destroy any confidential information (with some limited exceptions) from the other party when the case is over. It's generally not a contentious paragraph.

Judge Fallon, however, dealt with a discovery dispute on this issue, that I was surprised had never come up before -- what happens when there are multiple unrelated defendants, as in ANDA cases? Do you destroy the documents when the relevant defendant drops out of the case, or can you keep them until the whole consolidated mess is over and done with?

Per Judge Fallon, the answer is you get to …

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Judge Noreika Rejects Waiver Argument in Case Where Both Parties Agree the Jury Made a Mistake

Andrew E. Russell, Oct. 3, 2022
Jury Objections Jury

Lawyer Objecting
AI-Generated, displayed with permission

At the jury trial in ArcherDX, LLC v. Qiagen Sciences, LLC, C.A. No. 19-1019-MN (D. Del.), the plaintiffs argued for $752,006 in U.S. royalties, and the jury awarded $1,593,762.

The higher number happened to exactly match the $752,006 they asked for for U.S. royalties, plus the lost profits number:

The $1,593,762 U.S. royalty award, however, is much higher than the estimate provided by Plaintiffs’ expert, and, in fact is equivalent to the expert’s suggested award for lost profits ($841,756) plus U.S. royalties ($752,006).

The parties both agreed that it was a mistake, and that the jury had intended to award the $752,006 that plaintiffs had asked for.

Plaintiffs, however, refused to give …

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Patent Marking: Better Watch Those Burdens of Proof, or You'll Lose Your Pre-Suit Damages

Andrew E. Russell, Sept. 30, 2022
Summary Judgment Pre-Suit Damages

Here's an AI-generated patentee dealing with the burden of proof on marking.
Here's an AI-generated patentee dealing with the burden of proof on marking. AI-Generated, displayed with permission

My co-blogger Nate wrote yesterday about Magistrate Judge Hall's discussion of prior art estoppel in Innovative Memory Systems Inc. v. Micron Technology Inc., No. 14-1480-RGA (D. Del. Sept. 29, 2022). That was actually just one issue the Court dealt with in a lengthy R&R and Order on a summary judgment and Daubert. I wanted to post about one of the other issues Judge Hall addressed in that opinion: patent marking.

Marking is an important and sometimes underrated issue. It's not uncommon, in patent cases, for the bulk of the damages to have accrued in the years prior to the plaintiff filing suit. These "pre-suit" damages can be at risk, though, if the patentee sold products that practice the patent and failed to mark them under 35 U.S.C. § 287(a). Here is how Judge Hall explained it in Innovative Memory:

[W]hen a plaintiff makes or sells a product practicing its patent, the plaintiff can only recover pre-suit damages from an infringer if (1) the patentee marked its product in the manner specified in § 287(a) or (2) the patentee notified the infringer of its infringement. Even if a plaintiff patentee doesn’t make or sell anything, it cannot recover pre-suit damages (absent providing notice) if a prior owner of the patent failed to mark its products covered by the patent.

One interesting thing about marking, ...

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Court Permits Reliance on Non-Prior Art Documents as Evidence of Prior Art

Andrew E. Russell, Sept. 28, 2022
FRE 803 Hearsay

AI-generated image of a defendant relying on non-prior art documents as evidence of prior art
AI-generated image of a defendant relying on non-prior art documents as evidence of prior art Andrew 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 …

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