A Blog About Intellectual Property Litigation and the District of Delaware


Bifurcating the License Defense Would Involve Repeating Evidence, So . . . No.

Andrew E. Russell, Oct. 5, 2022
Bifurcation

"Your honor, it's like the movie Groundhog Day, but we're repeating a trial..." AI-Generated, displayed with permission

Judge Williams issued a decision on Monday denying a motion to bifurcate a patent case, rejecting bifurcation where it would increase the total time by three days and involve repeating the same evidence.

The defendant moved bifurcate a five-day patent trial into a three-day jury trial on license issues and then, if necessary, a separate five-day trial on infringement.

The Court did not seem eager to sign up for a three-day trial with a significant risk of a second full trial later—especially one that repeats the same explanations of the technology:

The crux of ASC's position is that a two-day reduction in trial …
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You Can Check In Any Time You Like, But Your Documents Never Leave

Nathan R. Hoeschen, Oct. 4, 2022
Protective Order

Andrew is better at this A.I. thing, mine still appear monstrous
A.I. Generated, displayed with permission

Every protective order I've ever seen has a provision at the end requiring the parties to return or (more likely) destroy any confidential information (with some limited exceptions) from the other party when the case is over. It's generally not a contentious paragraph.

Judge Fallon, however, dealt with a discovery dispute on this issue, that I was surprised had never come up before -- what happens when there are multiple unrelated defendants, as in ANDA cases? Do you destroy the documents when the relevant defendant drops out of the case, or can you keep them until the whole consolidated mess is over and done with?

Per Judge Fallon, the answer is you get to …

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Judge Noreika Rejects Waiver Argument in Case Where Both Parties Agree the Jury Made a Mistake

Andrew E. Russell, Oct. 3, 2022
Jury Objections Jury

Lawyer Objecting
AI-Generated, displayed with permission

At the jury trial in ArcherDX, LLC v. Qiagen Sciences, LLC, C.A. No. 19-1019-MN (D. Del.), the plaintiffs argued for $752,006 in U.S. royalties, and the jury awarded $1,593,762.

The higher number happened to exactly match the $752,006 they asked for for U.S. royalties, plus the lost profits number:

The $1,593,762 U.S. royalty award, however, is much higher than the estimate provided by Plaintiffs’ expert, and, in fact is equivalent to the expert’s suggested award for lost profits ($841,756) plus U.S. royalties ($752,006).

The parties both agreed that it was a mistake, and that the jury had intended to award the $752,006 that plaintiffs had asked for.

Plaintiffs, however, refused to give …

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Patent Marking: Better Watch Those Burdens of Proof, or You'll Lose Your Pre-Suit Damages

Andrew E. Russell, Sept. 30, 2022
Summary Judgment Pre-Suit Damages Marking

Here's an AI-generated patentee dealing with the burden of proof on marking.
Here's an AI-generated patentee dealing with the burden of proof on marking. AI-Generated, displayed with permission

My co-blogger Nate wrote yesterday about Magistrate Judge Hall's discussion of prior art estoppel in Innovative Memory Systems Inc. v. Micron Technology Inc., No. 14-1480-RGA (D. Del. Sept. 29, 2022). That was actually just one issue the Court dealt with in a lengthy R&R and Order on a summary judgment and Daubert. I wanted to post about one of the other issues Judge Hall addressed in that opinion: patent marking.

Marking is an important and sometimes underrated issue. It's not uncommon, in patent cases, for the bulk of the damages to have accrued in the years prior to the plaintiff …

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A Potential Signpost for Estoppel

Nathan R. Hoeschen, Sept. 29, 2022
Estoppel

The law is littered with reasonable people, and none of them do us much good. We have the reasonable person exercising ordinary caution (negligence). There's the reasonable person who attaches importance to the existence or nonexistence of a fact in determining his choice of action (materiality). Relevant to this blog post, and pictured below, we have the "skilled researcher conducting a diligent search" (estoppel).

Cookie the Pom, Unsplash

For those who haven't encountered this one in a while, this hypothetical skilled researcher is the measuring stick we use to determine whether a given reference could have reasonable been raised in an IPR and thus, whether an accused infringer is estopped from raising it in the district court.

As measuring …

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Court Permits Reliance on Non-Prior Art Documents as Evidence of Prior Art

Andrew E. Russell, Sept. 28, 2022
FRE 803 Hearsay FRE 402 Prior Art FRE 403

AI-generated image of a defendant relying on non-prior art documents as evidence of prior art
AI-generated image of a defendant relying on non-prior art documents as evidence of prior art Andrew E. Russell, displayed with permission

Judge Stark issued an oral order yesterday addressing a motion in limine in Otsuka Pharmaceutical Co., Ltd. v. Zenara Pharma Private Ltd., C.A. No. 19-1938-LPS (D. Del.).

According to the briefing, plaintiff sought to exclude two exhibits that were dated after the priority date of the patent.

The first was a 2005 "review article" published just months after the priority date. According to defendants' brief, "does not present original data" and instead "discusses the information known in the art before the priority date."

The second exhibit was published in 2021 and includes a "history of research …

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Redact, Don't Do It

Nathan R. Hoeschen, Sept. 27, 2022
Redactions

Why did they play this song at my prom? I am not that old, and it is surprisingly hard to dance to
Honey Fangs, Unsplash

For the past year or so, we've been tracking Judge Andrews' new practice of rejecting filings that redact exhibits in their entirety with a docket entry like the below:

The redacted filings (D.I. 453 , 454 , and 458 ) are REJECTED because parts of them are redacted in their entirety. Absent a compelling reason, supported by a statement under oath by a party, redactions in their entirety are impermissible; redactions must be done so as to redact the least possible amount of the materials submitted. Failure to make a good faith attempt at such redactions may result in sanctions, the most common of which would be simply unsealing the entire filing. Redacting in its entirety …
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Court Rejects Parties' Request to Change Trial Scope After Fed. Cir. Vacates Previous Trial Result

Andrew E. Russell, Sept. 26, 2022
Trial Motion in Limine Appeal

Chart

Procedural opinions about post-appeal trials are relatively rare, at least compared to the amount of decisions on motions to dismiss or summary judgment that we see. Most cases settle long before they reach this stage. So I thought it was worth posting about how Judge Bataillon handled a new trial in C R Bard Inc. v AngioDynamics, Inc., C.A. No. 15-218-JFB-SRF (D. Del.) after the Federal Circuit vacated the result of the previous trial.

The parties in the case sought to introduce new information in the new trial, including at least one accused product that was released after the previous trial. The Court rejected that idea, holding that the new trial would be a direct repeat of …

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Plaintiff's "'Cut and Paste' Approach Cannot Be a Viable Pleading Strategy"

Andrew E. Russell, Sept. 23, 2022
Complaint Legal Writing Pleadings

Mel Poole
Mel Poole, Unsplash

Judge Burke issued an oral order earlier this week with some interesting language criticizing the party's attempt at an amended complaint.

In Midwest Energy Emissions Corp. v. Arthur J. Gallagher & Co., C.A. No. 19-1334-CJB (D. Del.), the plaintiff accused a very large number of entities—More than 50, it looks like—with infringement of a number of patents, all in a single combined action.

Earlier this year, it moved to amend its complaint to add additional defendants it alleged were parent companies of defendants who were as acting as the parent companies' "alter egos and agents." Judge Burke granted this request as to one party, for which the complaint included more detailed factual allegations, …

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The Voyage Home

Nathan R. Hoeschen, Sept. 22, 2022
Stay

I really hope this case lasts long enough for us to go through all the titles. I think We have a good shot at
I really hope this case lasts long enough for us to go through all the titles. I think We have a good shot at "Nemesis," but probably won't make it to "the Search for Spock" NASA, Unsplash

More than a year ago, we chronicled the rare tale of a stay that lasted all the way through an appeal to the Supreme Court. Thinking a stay could not possibly last any longer that that, we titled that post "The Final Frontier for Stays."

It turns out that we were right!

But only barely!

The Original Series

When last we saw our embattled litigants in Hologic, Inc. et al. v. Minerva Surgical, Inc., C.A. No. 20-295-SRF, the Federal …

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