A Blog About Intellectual Property Litigation and the District of Delaware


RGA
The Honorable Richard G. Andrews

A Play in Which Lawyers Argue About What an "Argument" Is

Nathan R. Hoeschen, Feb. 22, 2021
Claim Narrowing

Continuing in the vein of last week's discussion of claim narrowing, Judge Andrews issued an interesting opinion on Friday discussing the number of invalidity arguments a defendant was allowed to present at trial.

Although we still occasionally see orders in the district limiting the number of prior art references a defendant is allowed to assert, it has become increasingly common in recent years to see the Court limit the number of prior art arguments or combinations or defenses an accused infringer can assert -- either instead of, or in addition to, a set number of references.

The question of how to count "arguments" has generated a fair amount of opinions in the district, with slightly varying results. Judge Burke gave …

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Don’t Waive Your R&R Objections!

David M. Fry, Feb. 17, 2021
R&R Indirect Infringement

Judge Andrews just issued some tough guidance for parties thinking about filing R&R objections in D. Del.

The entire order is worth a read, but the most interesting tidbit is in the first footnote. Magistrate Judge Burke issued an R&R on a motion to dismiss, where he recommended dismissing the plaintiff's indirect infringement claims (without prejudice) and denying the defendant's § 101 motion.

Judge Andrews wasted no time overruling the plaintiff's objection to the dismissal of its indirect infringement claims, noting that:

Plaintiff’s argument has no impact on this case; Defendant wisely did not waste paper filing a response.

Although Judge Andrews spent more time discussing the defendant's objections, he quickly dispatched several arguments that were raised only …

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Early Summary Judgment or "Pig in a Poke"?

Jeff Castellano, Feb. 16, 2021
FRCP 56 ANDA

Pigs
Kenneth Schipper Vera, Unsplash

Judge Andrews recently rejected the requests of several defendants in a Hatch-Waxman (or "ANDA") case to file an early motion for summary judgment, calling the request a "pig in a poke."

Judge Andrews, like most judges in this District, does not as a matter of course permit dispositive motions in ANDA cases or early dispositive motions in general. Nonetheless, two defendants in Astrazeneca AB v. Alembic Pharms. Ltd., C.A. No. 20-202-RGA, sought leave to file an early motion for summary judgment of no infringement under the doctrine of equivalents (plaintiff's only infringement theory).

Judge Andrews made short work of the request, first noting that the

defendants do not make a …
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Judge Andrews Strikes Two-Reference Anticipation Opinion

Andrew E. Russell, Jan. 22, 2021
Anticipation Litigation

When one prior art reference incorporates another, parties often prefer to argue that they form a single reference under an anticipation analysis, rather than asserting them as an obviousness combination. After all, who wants to deal with motivation to combine and secondary considerations of non-obviousness if they don't have to?

But there is a risk. The primary reference truly has to incorporate—not just cite—the secondary reference, which not the most common situation. If the first reference merely cites the second, the court will likely find that they cannot be treated as a single reference.

Judge Andrews addressed that situation this week, when faced with a Daubert motion to strike an expert opinion that treated two references as one in its …

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Razor's Edge: Practicing the Prior Art and the Nose of Wax

Jeff Castellano, Jan. 19, 2021
Experts Daubert

Yesterday, Judge Andrews excluded testimony by an expert that improperly advanced a "practicing the prior art" defense. It has been firmly established that "practicing the prior art" is not a defense to literal infringement, and thus is not a proper subject for expert testimony. It is acceptable, however, for litigants to argue that if a patentee interprets a claim broadly for infringement purposes, the claim will read on the prior art ("that which infringes, if later, would anticipate, if earlier," the corollary of the proverbial "nose of wax" principle that prohibits parties from taking one view of claim scope for infringement purposes and another for invalidity).

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Another Redaction Request Denied...

David M. Fry, Jan. 14, 2021
Sealing Redactions

As we've recently pointed out, you need more than a boilerplate motion with generic arguments to overcome the presumption of public access in D. Del. It also helps to submit a declaration. But even if you do, don't be surprised if your request is denied.

On Monday, Judge Andrews denied a Hatch-Waxman defendant's unopposed motion to redact a hearing transcript on a motion to dismiss. This was "not a boilerplate motion" and it "was accompanied by an Affidavit."

The defendant also made the kinds of arguments that have sometimes succeeded in the past:

The gist of the underlying motion to dismiss is that Sandoz has lost its API supplier and that Sandoz will not be able to …
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Words, Words, Words

Jeff Castellano, Dec. 29, 2020
Page Limits KB

Longstanding practice in the District of Delaware, pursuant to the Court's local rules and the Judges' form scheduling orders and other standing orders, mandated page limits for briefing.
For example, the Court's local rules set limits of 20 pages for opening, briefs 20 pages for answering briefs, and 10 pages for reply briefs, all in 12 point font. See LR 7.1.3(a)(4); LR 5.1.1(a). However, since about mid-2019, some Judges here have permitted or required word limits in lieu of page limits for some types of documents.

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You Still Can't Serve Contention Topics in D. Del.

David M. Fry, Dec. 23, 2020
Depositions Motion to Compel

For decades, judges in D. Del. have enforced a general rule that you can’t serve 30(b)(6) topics on a party’s contentions. The rationale is simple: it just isn’t fair to burden a single witness with that much information. Contention interrogatories can achieve the same the same goal, without forcing a 30(b)(6) witness to sit for the most stressful memory test of their life.

In a discovery order on Friday, Judge Andrews highlighted an important corollary to this rule: you can’t get around it by framing your contention topic as a request for “all facts” about a party’s contentions. The judge found that all four of these examples were improper contention topics:

  • Investigations, tests, studies, surveys, interviews, reviews, analyses and …
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Public Access Wins Again

Jeff Castellano, Dec. 22, 2020
Sealing

Consistent with the trend in this District, Judge Andrews recently rejected a defendant's unopposed request to seal the [virtual] courtroom and exhibits for a preliminary injunction hearing, despite the defendant's assertions that its presentation might include trade secrets and other highly confidential technical and financial information, and that it would be "prevented from effectively offering its arguments" if the proceedings were not sealed.

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No, You Cannot Call the Plaintiff a "Patent Troll" at Trial (and Other Recent In Limine Results)

Andrew E. Russell, Dec. 21, 2020
Trial Trial Calendar

Bridge
Jamie Street, Unsplash

Motions in limine can be kind of exciting. The motions and the rulings are typically short, and they are ordinarily filed with the pretrial order just before trial. Unlike most motions, the Court usually rules on them quickly (between the PTO and the trial), sometimes live at the pretrial conference, and the impact is felt almost immediately.

Plus, orders that result from MILs can sometimes have a huge effect on the practical course of the trial by precluding important arguments and evidence, or even by interfering with your trial themes—frequently at the last minute. So it's worth keeping in mind the kinds of things that may come up at the MIL stage.

Last week, Judge Andrews …

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