Don't let your discovery motions sit! We got another opinion this month denying a discovery motion in part due to a party's delay, this time from visiting Judge Bibas of the Third Circuit:
ORAL ORDER: I DENY Vertex's motion to strike, D.I. 178 . I apply the Pennypack factors: (1) the surprise or prejudice to Vertex; (2) the ability of Vertex to cure the prejudice; (3) the likelihood of disruption of trial; (4) the bad faith or willfulness involved in not complying with the disclosure rules; and (5) the importance of the evidence sought to be excluded. Meyers v. Pennypack Woods Home Ownership Ass'n, 559 F.2d 894, 90405 (3d Cir. 1977). Lupin had disclosed enough that …
Just an update: the parties and the Court made it part way through the Rein Techhearing today, but it ultimately had to be adjourned, to be rescheduled at a later time. We'll likely post another update on the substantive protective order violation issues—which are fascinating—after the rescheduled hearing.
We've been following a series of hearings in Rein Tech, Inc. v. Mueller Systems, LLC, C.A. No. 18-1683-MN (D. Del.), a now-dismissed case where the inventor attempted to serve the expert witness but was excluded due to protective order violations.
The defendant later alleged that the same inventor again violated the protective order by continuing to prosecute another patent application in the same field, despite a prosecution bar.
In response, counsel for the inventor argued that the inventor did sign the prosecution document, but did not "prosecute" the patent:
Although signed by [the inventor], he did not prosecute the ‘454 patent application [Request for Continued Examination] and response that was submitted . . …
It's not just you. Multiple firms in town have been experiencing issues with the Court's PACER system since yesterday. Most parts of the website work fine, and you can still make filings. But one of the most critical part of the site, pulling a list of docket items in a case, appears to be down. Others report that it's still working.
This feature is something I use multiple times per day. When I'm making a request of the Court, I like to check the docket to make sure I have the most up-to-date info about what's going on in the case. I also like to use exactly the same documents thatthe Court sees. Plus, it's helpful …
Typically, final judgment is the end of the road for a patent case. It's right there in the name. Sometimes, however, it is just a further maneuver in a forever war which the parties have little hope of resolving in their lifetimes.
There are, of course, only limited legal avenues for keeping the fires burning after final judgment. Today's case (oddly, the same as yesterday's case) deals with contempt.
The prompt was "the very embodiment of contempt." I think the bot has some personal issues to resolve.AI-Generated, displayed with permission
As we discussed yesterday, BioDelivery Sciences International, Inc. v. Alvogen Pb Research & Development LLC, C.A. No. 18-1395-CFC-CJB (D. Del.) had proceeded to judgment years ago, with the plaintiff generally prevailing.
Like most ANDA cases, the judgment contained a clause enjoining the defendant from making/selling/using the "ANDA Products" until after the expiration of the infringed patents. D.I. 308.
Years later, the defendant filed a new ANDA based on the same listed drug, apparently reformulated to design around the relevant patents. The Plaintiff, in addition to filing a new ANDA case against this ANDA, brought a motion to enforce the judgment.
Judge Connolly denied the motion, finding that it was procedureally improper:
I need not decide whether the products covered by ANDA No. 220582 are an "ANDA Product" covered by paragraph 7's injunction because I agree that the motion is procedurally improper, and I will deny it for that reason . . .
I agree that to the extent BDSI seeks to enforce the injunction in paragraph 7, it must do so by way of a contempt motion. An injunction is "an equitable decree compelling obedience under the threat of contempt[.]" And thus "injunctions are enforced through the district court's civil contempt power." Accordingly, "[i]f a party contends that another party is violating an injunction, the aggrieved party should move the court for an order to show cause why the other party should not be held in civil contempt."
D.I. 423 at 9-10 (internal citations omitted).
It's not clear from the opinion whether the door is technically open for a further motion for contempt. However, given that the Court took the parties to task for the "waste of judicial resources" and "obstreperous behavior by both sides to a degree I have rarely experienced as a judge" I would not be at all surprised if the plaintiff just let it lie and continued with the new case. Only time shall tell.
As my daughter is fond of saying after some minor catastrophe, "whoopsy doodles!"NOAA, Unsplash
Well, this is a new one. Apparently, in BioDelivery Sciences International, Inc. v. Alvogen Pb Research & Development LLC, C.A. No. 18-1395-CFC-CJB (D. Del.), the defendant found out just a little bit too late that their expert had an ethical conflict because he had previously represented the plaintiff.
It's hard to tell exactly what the circumstances were here, because it looks like the relevant motion and all related briefing is fully sealed, with no redacted versions available.
But from what I can see, the plaintiff received a judgment in its favor on some of its claims back in 2022. (D.I. 308). …
On this, the 213th year of the blog, you will have noticed that we tend to take off a few weeks this time of year. The more perceptive of you may have gathered the reason. For legal purposes, I cannot definitively confirm the rumors. Let’s just say that we here at IP/DE have a very busy couple days coming up, with significant world travel. I encourage each of you to bear with us and to leave out the appropriate offerings of cookies and milk.
Just a heads up for D. Del. practitioners: The Court announced today that it will be closed on Friday of this week, 12/26/2025, in addition to being closed on Wednesday and Thursday as previously scheduled. This is due to an executive order issued last week. Be sure to consider whether this impacts any of your deadlines!
I couldn't find a recognizable image of a time machine that wouldn't potentially subject us to copyright issues, so you get this lovely clock instead.Matt Seymour, Unsplash
The Wayback Machine can be incredibly helpful in all kinds of cases. It allows you to pull previous copies of a website, seeing how it looked months or years ago. You can pull old local rules from circa 2007 and see the actual PDF; you can find out if that prior art product was on sale back in 2010; you can you can see exactly when the opposing party started (or stopped) marking their products.
But can the Court take judicial notice of a Wayback machine page? Judge Fallon addressed that …
I wrote last week about how December tends to be a fairly dull month for litigators, with the many holidays cutting into time that would normally be spent squabbling amongst ourselves and submitting mountains of paper for the Court's seasonal enjoyment.
AI-Generated, displayed with permission
But of course, there are always exceptions. Take, for instance, Harmony Biosciences, LLC et al v. Lupin Limited, C.A. No. 23-1286-JLH-SRF. As discovery closed in that case, the parties had raised about half a dozen discovery disputes in 60 days. The Court had already decided two such disputes in December.
Add Dauberts on top of all this and things were pretty busy all around.
Perhaps because of this history, things went a bit differently …
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