A Blog About Intellectual Property Litigation and the District of Delaware

Raúl Nájera, Unsplash

The District of Delaware is extremely busy. Sometimes clients and out-of-town counsel are surprised that they probably won't get rulings on their motions in the very-short-term. This often prompts questions like "Can we call the Court and ask them to rule on our motion?"—the answer to which is "no."

But in some instances parties really do need to alert the Court to a situation on the ground in the case that is impacted by a pending motion. The answer then is often to file a letter, which sometimes works.

We saw another successful letter this week. In Bataan Licensing LLC v. DentalEZ, Inc., C.A. No. 22-238-GBW (D. Del.), the defendant …

AI-Generated, displayed with permission

Interesting opinion from Judge Burke today on indirect infringement allegations, and what constitutes an "active step" to encourage the direct infringement.

The defendants in Midwest Energy Emissions Corp. v. Arthur J. Gallagher & Co., C.A. No. 19-1334-CJB (D. Del. Jan. 12, 2023) (Mem. Order) sold a sort of refined coal that was a necessary agreement in an allegedly infringing process performed by power plants. They moved to dismiss the complaint for indirect infringement, arguing that, while they knew it was likely to be used in an infringing manner, they did not communicate with the end users in any way that actively induced infringement. I.e., they did not take any active steps.

Judge Burke …

This. This is what you need to include with your motion to amend.
This. This is what you need to include with your motion to amend. Andrew E. Russell

Yesterday, Judge Andrews issued an opinion denying a motion to amend a complaint for failure to follow Local Rule 15.1, which requires a party moving to amend to attach the amended pleading and a redline.

This is something parties often mess up, as we've mentioned.

Here, the moving party attached the pleading and redline to a declaration submitted with the reply brief, but the Court found that was insufficient, because it occurred after the answering brief and left the Court without useful briefing on the motion to amend:

Defendants' first argument for denying Plaintiffs' motion was the failure to comply with the Local …

I find nothing more pleasing than when the parties dispute the test to be applied. Facts are always messy and disputed, but an argument about the proper test is almost always elegant. Truly it is a beauty fit for a post.

Pictured, refinement
Pictured, refinement AI-Generated, displayed with permission

The particular test at issue in Azurity Pharms., Inc. v. Bionpharma Inc., C.A. No 21-1286-MSG (D. Del. Jan. 6, 2023) (Mem. Op.) whether new patent claims were the “same cause of action” for the purposes of claim preclusion.

The plaintiff argued that the well-worn rule that claim preclusion would apply to later patent claims if "the scope of the asserted patent claims in the two suits is essentially the same." Defendant, however, offered the novel argument that "two patent claims are 'essentially the same' if the second claim would have been obvious to one skilled in the art with knowledge of the first claim."

Judge Goldberg described apparent chain of reasoning thusly:

The parties’ divergent positions stem from the following sentence in the Federal Circuit’s SimpleAir decision: “In applying [the claim preclusion] standard to the particular context here, we conclude that claims which are patentably indistinct are essentially the same.” . . The underlined term “patentably indistinct” is also used in the doctrine of obviousness-type double patenting, where it means that “the [later] claims are obvious over the [earlier] claims.” . . . Bionpharma argues that by using ...

Judge Andrews
Wikipemedia Commons

We're a little bit slow on the draw on this one. But for anyone who hasn't heard, the District of Delaware announced on Friday that Judge Andrews will take senior status in December 2023. The announcement notes that Judge Andrews will maintain a full caseload:

The United States District Court for the District of Delaware announces that Judge Andrews informed the President on January 5, 2023 that he intends to take senior status at the end of December 2023. Judge Andrews expects to continue with a full caseload once he becomes a Senior Judge.
Judge Andrews is an exemplary judge and colleague, and the Court is extremely grateful that he will continue to serve this institution and the public as a Senior Judge.

The District of Delaware hasn't had a judge on senior status for some time. To the extent that a new judge is appointed and Judge Andrews maintains a full caseload while on senior status, that's akin to a fifth judgeship for D. Del.—a 25% increase in the number of available judges.

The Law360 article on the announcement has some more details, including some very nice comments by Chief Judge Connolly.

Interior. Daytime. Camera zooms in on a series of bound documents lazing on a judge's desk.

Narrator: At one time, this courthouse would have been full of sealed filings. Flitting about through the hallways, their quiet calls echoing to one another as they played amongst the corridors.

[Music turns more somber, two smaller briefs seem to cling to a larger one with "DENIED" written in large red letters on the cover. despite their plaintiff cries, the larger brief does not stir]

I know, it's a pretty rough pun.
Karlheinz Eckhardt, Unsplash

Narrator: (continuing) Following years of habitat destruction, however, these beasts—once as common as pigeons or garden slugs—are on the verge of extinction.

[Music swells, as camera focuses on sealed papers being seemingly fed into a furnace; then we turn to a verdant valley where things seem brighter, ink flows in a peaceful stream and a jaunty fiddle tune takes over]

Narrator: But one hidden nook remains, untouched by the changes of recent years where a sealed filing can expect to live a long life in the the quiet secrecy that is its true home. That ancestral home is ...

Photograph of a damages expert report involving the Georgia-Pacific factors, the Panduit test, apportionment, convoyed sales, non-infringing alternatives, marking . . .
Photograph of a damages expert report involving the Georgia-Pacific factors, the Panduit test, apportionment, convoyed sales, non-infringing alternatives, marking . . . Luca J, Unsplash

It seems like people are always messing up with patent damages experts. There are just a lot of ways to get tripped up on damages, and—obviously—big incentives to take risks to drive damages numbers up or down.

We had another example of that on Monday, when visiting Judge McCalla granted a Daubert motion and excluded testimony from an expert who applied a later date for the start of infringing sales for the royalty calculation, and an earlier date for the hypothetical negotiation. The expert apparently used a December 2014 date for his royalty calculation:

Wonderland argues that neither Evenflo nor Mr. Peterson presented evidence of any manufacture or testing that occurred at the dates that Mr. Peterson suggested. . . . Wonderland supports its assertion by pointing to sections of Mr. Peterson’s report and deposition in which Mr. Peterson . . . uses December 2014 and not an earlier date as the starting point for calculating royalty damages based on his hypothetical rate. . . .

But the expert used an earlier date for the reasonably royalty calculation, arguing that the earlier date is when the infringement actually began:

When using a hypothetical negotiation to assess damages, “the date of the hypothetical negotiation is the date that the infringement began.” . . . Mr. Peterson asserts that a date falling between December 2013 and April 2, 2014 “more naturally aligns with the actual date of first infringement.” . . .

But the Court found that the party had failed to put forth evidence of the earlier date, and ...

OK Nate, you win. Mavexar is a crab now.
OK Nate, you win. Mavexar is a crab now. AI-Generated, displayed with permission

We posted last month about two more mandamus petitions regarding Chief Judge Connolly's recent efforts to enforce his standing orders regarding disclosure requirements in his cases.

The Mavexar saga is getting a bit complicated, so here is a quick recap of the mandamus petitions:

  • Chief Judge Connolly scheduled hearings in several cases regarding various plaintiffs' compliance with his standing orders
  • In two of the hearings, the plaintiffs explained that an entity called Mavexar recruited the plaintiffs and took up to 95% of their proceeds
  • The Court ordered some of the Mavexar entities to produce a broad range of communications among the plaintiffs, Mavexar, and their attorneys
  • One …

So, my new year's resolution was not to write any more about the Mavexar hearings until we got something really juicy. Unfortunately, due to the holidays there hasn't been much else to write about these last few weeks. I made it almost 3 days though, which is a personal best for resolutions of this sort.

Howdy Crab Monsters!
Howdy Crab Monsters! AI-Generated, displayed with permission

One of the more interesting aspects of the Mavexar hearings has been the general lack of participation from the opposing parties in the hearings, many of whom have already been dismissed. This unique state of affairs has left me to imagine what the papers might look like if a defendant really went to town on the issue.

Last …

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愚木混株 cdd20, Unsplash

We got a good "what not to do" example today, relayed in an opinion by Judge Williams.

In the opinion, the Court addressed objections to a magistrate judge ruling on a privilege issue (remember—you can object to non-dispositive magistrate judge rulings in addition to R&Rs. Good luck.).

As the Court explained, the defendants initially argued to the magistrate judge that Third Circuit law governed, and that Federal Circuit law was grounded in the same principles as Third Circuit law anyway. The magistrate judge agreed:

In briefing submitted to the Magistrate Judge, Defendants state that, "Federal Circuit [law] does not differ [from Third Circuit law] in that it 'is grounded in principles of fairness. '" D.I. 224 at 3. The Magistrate Judge credited Defendants' argument to conclude Third Circuit law applies. See D.I. 232 at 3 n.2 ("Because Defendants themselves initially relied on Third Circuit caselaw here (as did Plaintiff) and because Defendants assert that the Third Circuit's approach to this issue is no different from that of the Federal Circuit, the Court will herein apply Third Circuit law regarding the 'at issue' doctrine to this patent case." ).

Then, in objecting to the magistrate judge's ruling, the defendants apparently reversed position, arguing that Federal Circuit law differed, and that the magistrate judge had erred by relying on