A Blog About Intellectual Property Litigation and the District of Delaware


Defendant Hands Over Cash to Plaintiff's Attorney at Pretrial Conference in Failed Attempt to Destroy Patent Jury Trial Right

Andrew E. Russell, Oct. 21, 2024
Seventh Amendment Jury Trials

ChatGPT's images are getting pretty good. But this DOES NOT show Judge Hall, the attorneys, a real courtroom, or anything that actually happened. Please don't sue us.
ChatGPT's images are getting pretty good. But this DOES NOT show Judge Hall, the attorneys, a real courtroom, or anything that actually happened. Please don't sue us. AI-Generated, displayed with permission

Well this is a new one. In Apple Inc. v. Masimo Corp., C.A. No. 22-1377-JLH (D. Del.), the parties dispute whether the patentee, Apple, has a right to a jury trial. That hinges on whether Apple is seeking damages—if it can only get an injunction, it has no right to a jury trial. Id., D.I. 745 at 5.

The Court found that Apple had, in fact, asked for a total of $250 in damages for infringement of four design patents and five utility patents, and that it was therefore entitled to a jury trial. That's two-hundred and fifty dollars—you're not missing any zeros or a "k" afterwards.

(By my math, assuming at least five attorneys and two paralegals are involved, I'd guess that Apple's total damages figure is equal to the cost of about four minutes of trial time by Apple's trial team, or less. It's probably less.)

Apparently, Apple's damages figure results from the fact that $250 is the statutory minimum damages for infringement of a design patent under 35 USC § 289. According to the Court, Apple's experts testified that the $250 statutory minimum for the design patents under $289 also constituted the entire damages award for the utility patents under § 284. Id., D.I. 745 at 4-5 n.1. Apple also wants the Court to treble that to $750. Id.

But Masimo really doesn't want a jury trial here. It pushed hard for a bench trial, to the point where its counsel apparently brought $900 in cash to court and ...

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Why Is Your District Court Jury Verdict Sealed, and When Will It Be Un-Sealed?

Andrew E. Russell, Oct. 18, 2024
KB

Sealed
Cristi Ursea, Unsplash

Most readers already know the answer to the question in the title. This post is, honestly, mainly for newer attorneys and people who search for this question.

But it's something that comes up a lot! When a jury first issues a verdict on a verdict form, it shows up on the docket like this:

285 [SEALED] JURY VERDICT. (nms) (Entered: 09/27/2024)

Acceleration Bay, LLC v. Amazon Web Services, Inc., C.A. No. 22-904, D.I. 285 (D. Del. Sept. 27, 2024).

Often, there will be a panicked question from (typically) a newer associate on the case, along the lines of "Why is the verdict sealed? Are we not allowed to tell the client? What can we send them?"

Fear not! The verdict sheet is sealed because it has the juror names/signatures, and the Court typically issues a redacted version the same day that can be shared with the client or anyone else. The docket entry will look like this:

286 REDACTED VERSION of 286 Sealed Jury Verdict. (nms) (Entered: 09/27/2024)

Id., D.I. 286.

Until then, a verdict announced in open court is not sealed and can normally be shared. The only sealed item is the verdict form containing the juror's names.

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Be Specific B-E-Specific (Claps Hands And Stomps Foot)

Nathan R. Hoeschen, Oct. 17, 2024
Discovery Dispute

There's not a lot of space in a discovery dispute letter to get into the real nitty gritty of the dispute. You've gotta put in the standard, say the word "Pennypack" 20 or 30 times, and work in the phrase "flies in the face of" at least once.

Now that's flying in the face of something!
AI-Generated, displayed with permission

A recent opinion from Judge Burke, however, illustrates the folly of briefing disputes in this way, even if it is satisfying.

The defendant in Attentive Mobile Inc. v. Stodge Inc., C.A. No. 23-87, D.I. 400 (D. Del. Oct. 16, 2024) moved for a protective order to prevent the depositions of two employees. The opening letter apparently got quite into the weeds about the nature …

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Patentee Plaintiff Wins Temporary Restraining Order and Preliminary Injunction—But Then Fails to Post Bond and Loses It All

Andrew E. Russell, Oct. 16, 2024
Preliminary Injunction Temporary Restraining Order

The patentee's <a href='#' class='abbreviation' data-bs-toggle='tooltip' data-placement='top' title='Temporary Restraining Order'>TRO</a> attempt worked out about as well as this (unmanned) rocket's attempt to reach orbit.
The patentee's TRO attempt worked out about as well as this (unmanned) rocket's attempt to reach orbit. Tim Mossholder, Unsplash

Ouch. In Nivagen Pharmaceuticals, Inc. v. Amneal Pharmaceuticals Inc., C.A. No. 24-846-GBW (D. Del.), the patentee plaintiff filed suit to stop a competitor from launching a drug that it says would infringe its patents, after the competitor received FDA approval.

(Because this was not an ANDA, there was no automatic stay.)

The plaintiff filed a TRO motion on August 13, shortly after its complaint. For at least two of the …

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To Boldly Go Where Fo-Man Has Gone Before

Nathan R. Hoeschen, Oct. 15, 2024
Amended Complaint

(Eds. Note -- The title took significantly longer to write than the article. You're welcome)

The Foman factors are about as ubiquitous and well known as any test in the law, coming down as they do from a sixty-some year old Supreme Court case, and relating to one of the most common possible motions. A check of Lexis shows a little under 40,000 cites.

As a quick refresher for any of you law students who have been assigned the blog by a particularly devious and brilliant professor, Foman v. Davis, 371 U.S. 178, 182 (1962) held that "In the absence of any apparent or declared reason -- such as undue delay, bad faith or dilatory motive on the part of …

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Changing the Court's Defaults in a Scheduling Order May Be Risky

Andrew E. Russell, Oct. 14, 2024
Scheduling Conference Scheduling Order

But it seems so pretty
AI-Generated, displayed with permission

Each of our judges in Delaware has one or more form scheduling orders that sets limits on things like the number of motions in limine (typically 3), pages limits for summary judgment and Daubert motions (typically 40/40/20 or 50/50/25), and discovery dispute procedures.

Here is a scenario I've seen a couple of times:

  • The parties agree to change the limits in the form scheduling order to give themselves more pages, more motions, etc.
  • The change is visually small and not particularly noticeable (e.g., "three" MILs becomes "five" MILs, "forty" pages becomes "eighty" pages, etc.).
  • The Court so-orders the undisputed proposed scheduling order.
  • When the time comes to actually file the extra MILs or extra-long briefs, …
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Some Takeaways From a Design Patent Markman Opinion (or: Sometimes a Reservation of Rights Actually Works)

Andrew E. Russell, Oct. 11, 2024
Summary Judgment Claim Construction

Reservation of Rights
AI-Generated, displayed with permission

We don't often write about claim construction opinions, because they can be very fact-specific. But Judge Hall's opinion yesterday in Apple Inc. v. Masimo Corporation, C.A. No. 22-1377-JLH (D. Del.) included some generally applicable points worth noting.

Sometimes a Reservation of Rights Actually Works

There's a reason we've all seen countless discovery documents, disclosures, expert reports, and briefs that are larded up with endless reservations of rights: sometimes they work!

This is one of those times. The patentee (Apple) had filed a response to invalidity contentions regarding a design patent in an IPR. In it, Apple described the scope of its patent, but included a reservation stating that it wasn't taking claim …

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Time Enough For Fees

Nathan R. Hoeschen, Oct. 10, 2024
Extension Stipulation

Deadline extensions are perhaps the most common of all requests to the Court. I have seen requests granted for medical reasons, conflicts with deadlines in other cases, prescheduled vacations, and the need to enact a dark ritual which can only take place when the moon fears to rise (we'll have a post about that one on the future, assuming the ritual is unsuccessful and does not result in all things returning to dust beneath the sacred ash and the profane oak).

Paul Robert, Unsplash

Today's post, however, is a tale of an extension denied. The defendant in Purdue Pharma LP v. Accord Healthcare Inc., C.A. No. 22-913-WCB, D.I. 111 (D. Del. Oct. 2, 2024) had prevailed on its obviousness defense following a bench trial and filed a timely motion for fees 14 days after the Court entered final judgment.

The plaintiff, however, apparently intended to appeal the invalidity determination and thus requested that the defendant stipulated to defer briefing on fees until after the resolution of that appeal. When the defendant refused to stipulation, plaintiff moved to defer briefing until after the appeal and requesting expedited consideration of the motion (as the clock was already ticking on its 2-weeks to file a responsive fees brief).

Unlike in the true to life examples listed at the start of the blog, the plaintiffs motion was not based in any particular conflict with client or counsel. Instead, the deferment was based on the general proposition that "the appeal may impact or otherwise refute the bases for Accord’s motion." Id., D.I. 108 at 2. The defendant filed a short opposition to the motion, noting that this logic would apply to essentially any motion for fees.

Judge Bryson denied the motion to defer the briefing in a short order:

The motion to defer briefing on Accord's motion for attorneys fees 108 is denied. The court will determine when to rule on Accord's motion for attorneys fees after the briefing is complete.

We'll keep a watch out for that fees opinion and let you know if it comes before or after the appeal.

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Gotta Be Fast On Your Feet With Those Motions to Supplement

Andrew E. Russell, Oct. 9, 2024
Discovery Dispute Pennypack

Eventually we may run out of penny images for these Pennypack posts. But not yet.
Eventually we may run out of penny images for these Pennypack posts. But not yet. Sebastian Enrique, Unsplash

Yes, this is yet another Pennypack post. I can't resist. It's a tough-to-apply standard that impacts many cases (patent and otherwise). And it can sometimes seem to reward bad behavior by litigants, even—maybe especially—when applied as written.

But not this time! In Prolitec Inc. v. ScentAir Technology, LLC, C.A. No. 20-984-WCB (D. Del. Oct. 2, 2024), the patentee produced documents about a pre-priority-date sale of prior art after fact discovery closed and just five days before opening reports.

Unsurprisingly, the other side's opening expert report five days later did not include invalidity allegations about this sale.

But the …

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No-Look Suit

Nathan R. Hoeschen, Oct. 8, 2024
OCA 285

One of the hallmarks of the Hatch-Waxman Act is the "offer of confidential access," wherein the generic manufacturer must offer the NDA holder, you guessed it, confidential access to the ANDA before the deadline to file suit.

AI-Generated, displayed with permission

One of the lesser explored implications of the OCA is the effect of a patentee declining the offer and bringing suit without reviewing the actual ANDA. In particular, how does that decision effect the attorney's fees inquiry if the NDA holder is ultimately unsuccessful at trial?

This was the question Judge Goldberg addressed on Friday in Silvergate Pharms., Inc. v. Bionpharma Inc., C.A. No. 18-1962-MSG (D. Del. Oct. 4, 2024) (Mem. Op.). Bionpharma had prevailed …

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