A Blog About Intellectual Property Litigation and the District of Delaware


RGA
The Honorable Richard G. Andrews

Judge Andrews Confirms Holding that Barred Full Prosecution History from Jury

Andrew E. Russell, Sept. 16, 2020
FRE 403 FRE

Judge Andrews yesterday issued his opinion denying all post-trial motions in TQ Delta, LLC v. 2Wire, Inc., C.A. No. 13-1835-RGA (D. Del.). The jury had returned a verdict of infringement and no invalidity after a trial in January 2020.

One part of the opinion stands out—Judge Andrews discusses his decision to preclude the defendant from discussing the full prosecution history of the patent before the jury as prejudicial under FRE 403:

I ruled that 2Wire could elicit testimony about what prior art was in front of the patent examiner, but that testimony about a “lengthy history of cancelling claims, adding claims, rejecting claims, [and] rejecting new claims” was inadmissible under Federal Rule of Evidence 403 because …
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Fact Issues Fail to Hold Back Motions to Dismiss Under 101

Nathan R. Hoeschen, Sept. 10, 2020
§ 101

Judge Andrews issued two new decisions invalidating patents under § 101 on motions to dismiss. The patents at issue in B# On Demand LLC v. Spotify Technology SA, C.A. No. 19-2077-RGA, D.I. 24 (D. Del. Sept, 8, 2020) and Aegis 11 SA v. Belkin International, Inc., C.A. No. 19-1161-RGA, D.I. 24 (D. Del. Sept. 9, 2020) were the computer-centric sort that one might have expected to be invalidated at some point in the case, it was surprising to see them decided at a motion to dismiss stage—especially in light of Judge Connolly's decision earlier this week granting yet another motion to dismiss on 101 grounds.

Aren't § 101 Motions to Dismiss Supposed to Be …

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No expert? No problem. Maybe.

Andrew E. Russell, Sept. 7, 2020
Litigation Pennypack

Empty Chair
Giorgio Trovato, Unsplash

Sometimes people think that they have to offer expert testimony to rebut the other side's expert on every single issue. That's not true, at least when the other side has the burden of proof.

I've represented a defendant in a jury trial representing where we offered no damages expert at all, and it worked out well (under the circumstances—I'm definitely not saying it's a good general strategy). We poked holes in the opposing expert's theories, and the other side had no way to return fire and no reply report in which the fix the issues.

Judge Andrews addressed something like that last week in an opinion on a motion in limine. Defendant had offered expert …

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Judge Andrews Is Allowing Only Two Attorneys Per Side for In-Person Trials

Andrew E. Russell, Sept. 4, 2020
COVID-19

Judge Andrews noted this week that he is currently allowing only two attorneys per side for in-person bench trials, including for a trial scheduled to start on Sept. 14th, and that he "may insist on this practice for some time." Sprint Communications Co., L.P. v. Charter Communications, Inc., C.A. No. 17-1734-RGA, D.I. 545 at 2 (D. Del. September 2, 2020).

He also said that he "anticipate[s] a jury could be assembled for an October 5 trial," but did not want the first post-COVID-19 civil jury trial to be one that involves primarily out-of-town attorneys and personnel.

The trial at issue was ultimately delayed for other reasons, including the fact that there are still nine pending motions, and …

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Judge Andrews Cites Size of Latham & Watkins in Denying Schedule Extension After Change in Counsel

Andrew E. Russell, Aug. 21, 2020
Litigation Scheduling

Stopwatch
Stopwatch Veri Ivanova, Unsplash

In First Quality Tissue, LLC v. Irving Consumer Products Ltd., C.A. No. 19-428-RGA (D. Del.), defendant swapped its previous counsel, Michael Best, for Latham and Watkins, and sought a twelve-week extension of the schedule.

The parties agreed that some kind of extension was needed regardless of the change in counsel, with numerous pending disputes, 24 noticed depositions, and only 3 days left in discovery. Plaintiff proposed a 4-week extension. Even with four weeks, the parties would likely have to dual-track the depos to get them done in time.

Judge Andrews, however, did not buy the idea that a change in counsel warrants a large schedule extension, and held that the responsibility for …

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Always Be Supplementing

Nathan R. Hoeschen, Aug. 20, 2020
Expert Discovery Deposition

Unusually Spry Expert Rushes to Supplement Report
Unusually Spry Expert Rushes to Supplement Report Man Holding Handbag, Andy Beales, Unsplash

Judge Andrews recently granted a motion in limine precluding a party from presenting expert opinions that were not disclosed until the expert's deposition -- without analyzing the Pennypack factors.

The correct procedure for challenging a late disclosure of theories or evidence has long been a matter of some debate in Delaware. There are cases suggesting that the party seeking to update its contentions should move for leave to do.

More commonly, a party will simply serve updated contentions or expert reports that the opposing party moves to strike. Regardless, the motions are generally analyzed under the demanding Pennypack factors, with the usual result that the …

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Trade Secret Allegations in Sealed Complaint Fail, Judge Andrews Rules

Jeff Castellano, Aug. 18, 2020
DTSA 12(b)(6)

In trade secret litigation, parties often fight bitterly over the level of particularity with which the party asserting misappropriation has described its trade secrets. That dispute frequently plays out in connection with interrogatory responses or other trade secret contentions, served after the initial pleadings are closed.

However, it can arise earlier in the case. In a recent order, Judge Andrews dismissed a federal trade secret misappropriation claim under Rule 12(b)(6) because the complaint identified "large, general areas of information that Plaintiff alleges to have shared with Defendant" but failed to "identify what the trade secrets are within those general areas."

Notably, the order, issued in Lithero, LLC v. Astrazeneca Pharms. LP, C.A. No. 19-2320-RGA (D. Del.), states …

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Judge Andrews "Really Doubts A Jury Trial Is Feasible" in September Due To Travel Concerns

Nathan R. Hoeschen, Aug. 14, 2020
Jury Trials COVID-19

Artist's Rendering of Delaware Courtroom in September
Artist's Rendering of Delaware Courtroom in September Jean Wimmerlin, Unsplash

Judge Andrews recently postponed another patent jury trial that had been scheduled for September 21, 2020.

The ruling in Baxalta Incorporated v. Bayer Healthcare LLC, C.A. No. 17-1316-RGA, D.I. 529 (D. Del. Aug 12, 2020) followed the submission of a joint status report where the plaintiffs suggested the case should go forward, citing prejudice to them if the case remains unresolved for the foreseeable future.

The defendant responded by pointing to the obvious difficulties of holding a trial when "no witness resides in Delaware" and lead counsel and their "entourages" are from out of state.

Judge Andrews notably stated that he believed it would be possible …

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Judge Andrews Construes "Comprising" as "Consisting Essentially of" Based On Disclaimer

Andrew E. Russell, Aug. 9, 2020
Claim Construction

Pill Bottle
Sharon McCutcheon, Unsplash

Judge Andrews on Friday accepted a defendant's argument that, during prosecution, the applicant had so clearly and unambiguously disclaimed the prior art that it warranted construing "comprising" as used in a claim element to mean "consisting essentially of"—a major narrowing of claim scope.

The claim involved an oral tablet that delivered multiple drugs, with a "barrier layer" between them. The barrier layer claim element included the word "comprising":

a barrier layer comprising hydroxyl propyl methyl cellulose 2910, polyoxyethylene glycol 400, polysorbate 80, and titanium dioxide . . .

The portion after "comprising" in the claim element matches the composition of a commercially-available barrier layer called "Opadry ®White (YS-1-7003)."

The Court found disclaimer based on …

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