A Blog About Intellectual Property Litigation and the District of Delaware


RGA
The Honorable Richard G. Andrews

No § 285 Fees Against Counsel

Andrew E. Russell, Nov. 8, 2021
§ 285 Attorney's Fees

Back in August, Judge Hall shot down a plaintiff's attempt to recover its fees from counsel under 35 U.S.C. § 285, which provides for the award of "reasonable attorneys fees" in "exceptional cases." Today, Judge Andrews rejected several objections to Judge Hall's decision.

As set forth by Judge Andrews, the defendants' basic argument was that while earlier cases held that § 285 does not permit fee awards against attorneys, certain dicta in the Supreme Courts more recent Octane Fitness opinion changed that:

Defendants contend that the Magistrate Judge "overlooked" the Supreme Court's Octane Fitness opinion, in which the Court found that § 285 imposed "one and only one constraint on district courts' discretion to award attorney's fees in patent …
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Judge Andrews Rejects Attempt to Introduce Supplemental Expert Report and New Trial Exhibit a Week Before Trial

Andrew E. Russell, Nov. 5, 2021
Trial Trial Procedure

Talk about 11th hour...
Talk about 11th hour... Bryce Barker, Unsplash

The parties in Genentech, Inc., et al. v. Apotex Inc., C.A. No. 19-78-RGA (D. Del.) are set to start a patent bench trial on Monday relating to a method of treating a particular disease, idiopathic pulmonary fibrosis (“IPF”), using the drug pirfenidone.

At the end of last week, plaintiff tried to serve a last-minute supplemental expert report and a new trial exhibit. The report and exhibit involve a newly-released study regarding the treatment of COVID-19. Apparently, according to the defendants, plaintiffs wanted to submit the new evidence on the theory that the COVID-19 treatments may cause IPF, which may be treated using pirfenidone, thus potentially resulting in infringement.

Plaintiff's …

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What Can a Patentee Do When the Court Excludes Its Damages Expert? Maybe Force the Other Side’s Damages Expert to Testify for the Patentee.

Andrew E. Russell, Oct. 29, 2021
Damages Experts

With this case, the hits just keep coming...
With this case, the hits just keep coming... Mitya Ivanov, Unsplash

What do you do when your expert's damages opinion gets excluded, the Court rules you cannot proceed based solely on the factual evidence, and you bear the burden of proof?

According to an opinion from Judge Andrews yesterday, one option is to call the other side’s expert—even if the other side otherwise refuses to put her on the stand.

This Case Again?

We've actually talked about this case, Shure Inc. v. ClearOne, Inc., C.A. No. 19-1343-RGA-CJB (D. Del.), quite a bit at this point, including defendant's efforts to use DJ jurisdiction to keep part of the case out of Delaware, and plaintiff's effort …

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Judge Andrews Strikes Last-Minute Damages Report

David M. Fry, Oct. 27, 2021
Damages Pennypack

When it comes to supplemental expert reports, how late is too late?

In a case that's set for trial next month, Judge Andrews recently addressed the parties' objections to a number of orders and R&Rs issued by Magistrate Judge Burke. In one of those orders, Judge Burke granted a motion to exclude some of the plaintiffs' damages calculations as erroneous and unreliable.

The plaintiffs objected, and in the meantime, they served a supplemental damages report attempting "[t]o correct the flawed analysis" excluded by Judge Burke.

Judge Andrews not only overruled the objections, but also found that the supplemental report was submitted too late:

The report was filed less than three weeks before trial. . . . This is …
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Judge Andrews No Longer Referring 12(b)(6) Pleading Motions to Magistrate Judges

David M. Fry, Oct. 6, 2021
MTD 12(b)(6)

We have another entry in the ongoing saga of the adequacy of post-complaint knowledge for indirect and willful infringement.

Judge Andrews started his analysis by acknowledging his own conflicting decisions, noting that "I have certainly done my share to contribute to the disagreement, having been on both sides of the issue."

He ultimately concluded that:

  1. "[T]he plaintiff should be allowed to amend a complaint to allege knowledge since the filing of the original complaint."
  2. "In the usual case, if the plaintiff's original complaint were dismissed for failure to plead pre-suit knowledge [for indirect infringement], then the plaintiff's amended complaint would require only one additional paragraph in order to allege knowledge since the filing of the original complaint."
  3. "I will, …
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Can You Object to an R&R if You Are the Prevailing Party?

Jeff Castellano, Oct. 5, 2021
R&R Objections to R&Rs

We have written about the ways in which a party can, despite its intention to object to a portion of a Magistrate Judge's Report and Recommendation, waive or otherwise fail to properly assert its objections.

However, an even more fundamental issue is whether a party is permitted to object in the first instance (or more specifically, whether a party is entitled to have a Judge rule on the merits of its objections). In a recent decision, Judge Andrews could not find "any reason to consider the merits of Plaintiffs' objections" to an R&R in which the plaintiffs prevailed.

Judge Andrews' decision evokes the general rule that a party cannot appeal from a judgment in its favor. Although Fed. R. Civ. P. 72(b)(2) and 28 U.S.C. § 636(b)(1)(C) - which set out the basic framework for objections to R&Rs on dispositive motions - do not themselves preclude objections by a prevailing party (both discuss objections to the proposed findings and recommendations by "any party"), Judge Andrews suggested that where a party prevails on the substance of the issues before the Magistrate Judge, that party's objections may be "moot."

The Magistrate Judge recommended...

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When Filing a § 101 Motion to Dismiss, Don't Short-Change the Argument About Whether a Claim Is Representative

Andrew E. Russell, Oct. 1, 2021
MTD FRCP 12(b)(6)

You know what they say about eggs in baskets...
You know what they say about eggs in baskets... Natalie Rhea, Unsplash

In a making a motion to dismiss for ineligibility under § 101, the moving party often seeks an ineligibility finding for all claims by attacking a single independent claim and arguing that it is "representative" of the others.

This can be a powerful briefing technique, as it avoids a repetitive slog through multiple asserted claims. Beyond that, it has the practical effect of shifting the burden to the patentee—to some extent—to show that the other asserted claims are different.

A short opinion yesterday by Judge Andrews, however, shows one downside of the representative-claim approach on a § 101 motion to dismiss. If you lose the argument …

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Don't Overlook the Importance of Technological Comparability

David M. Fry, Sept. 29, 2021
Damages

Pop quiz: What's the easiest way to get prior licenses tossed from your reasonable royalty analysis?

Judge Andrews gave the answer today in a lengthy post-trial opinion in a case involving car seat technology. After determining that the asserted patents were valid and not infringed, he turned to damages.

Both parties relied on prior licenses that "deal generally with childcare products" to support their reasonable royalty analyses, including one "related to folding strollers" and one that "involves embedded chips that can alert a parent as a child safety feature[.]"

Judge Andrews disregarded both licenses because there was no evidence of technological comparability:

Neither party has made clear why the folded stroller in Scotty or the chip-based child safety feature of …
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Judge Andrews Rejects 50/50 Starting Point for Hypothetical Negotiation

Jeff Castellano, Sept. 21, 2021
Daubert

Damages experts in patent infringement cases typically rely upon the Georgia-Pacific factors to guide their reasonable royalty analysis. Those factors are designed to predict the result of a hypothetical (and thus, fictional) negotiation between the parties, had the parties been willing participants in such a negotiation. But it is important to remember that the starting point for the application of the Georgia-Pacific factors must be tied to the facts of the case, like the factors themselves.

Late last week, Judge Andrews excluded a plaintiff's damages expert for his use of a 50/50 starting point for the hypothetical negotiation that was not sufficiently linked to the facts, as required by Federal Rule of Evidence 702.

The issue came to Judge Andrews...

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Court Construes Claims as Means-Plus-Function, Holds Them Indefinite for Lack of Structure

Andrew E. Russell, Sept. 10, 2021
Claim Construction

A peloton?
Jonathan Petit, Unsplash

Before § 101 got big in the early-to-mid 2010's, I recall there being a lot more discussion about construing claims—particularly software claims—to be means-plus-function claims, and then trying to get them invalidated under § 112 ¶ 6 for lack of corresponding structure.

Lately that issue seems to be litigated less frequently, but an order from Judge Andrews today shows that it hasn't faded away completely.

He looked at two claim elements:

a [] translator device adapted to translate data between the exercise communication protocol and the computer communication protocol.

and

translator devices are configured to communicatively couple the first and second exercise devices to the means for comparing so as to facilitate communication of data representative …
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