A Blog About Intellectual Property Litigation and the District of Delaware


Entries for date: 2020

Judge Andrews Gives Parties Homework to Discourage Discovery Disputes

Nathan R. Hoeschen, Dec. 3, 2020
Discovery Dispute Sanctions

Excellent, now set it on fire . . . the hoop
Excellent, now set it on fire . . . the hoop Border Collie jumping through the hoop at NZDAC Gore New Zealand, Andrea Lightfoot, Unsplash

In Delaware, there are a few hoops to jump through if you want to bring a discovery dispute before the Court. Local Rule 7.1.1 is the most basic, and requires the parties to make "reasonable efforts" to resolve their disputes, including verbal communications between opposing Delaware Counsel.

Next, each Judge has their particular procedures for bringing the dispute, either requiring a joint phone call to chambers (Judges Connolly, Noreika, and Andrews) or a joint letter outlining the issues and confirming that the parties have met and conferred (Judge Stark). In either case, the parties …

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Judge Connolly Rejects Joint Request for Video Hearing

David M. Fry, Dec. 2, 2020
COVID-19

Phone Booth
Phone booth in London city centre, Katarzyna Pracuch, Unsplash

Sometimes it's better to be heard than seen. Although most of the D. Del. judges have been holding hearings by video since March, Judge Connolly has consistently held his hearings and conferences by telephone.

Yesterday, the parties in one of his cases filed a joint request to hold a Markman hearing by video instead of by phone. They explained their rationale (to "allow for more effective and efficient presentations" and help direct the court's "attention to exhibits and demonstratives"), and offered to handle all of the logistics.

The court was not interested. Judge Connolly issued a one-sentence oral order the same day, saying only that "the Markman hearing will be held by telephone."

What's the takeaway? It's been almost nine months since the court issued its first COVID-related standing order, and the judges have had plenty of time to hone their procedures. It might not hurt to ask, but don't expect them to change what's been working.

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Chief Judge Stark Confirms $137m Damages Award on 65% Royalty Theory, But Reverses Jury Finding of Willfulness

Andrew E. Russell, Nov. 30, 2020
Damages Willfulness

Dollar Bills
Sharon McCutcheon, Unsplash

Chief Judge Stark today released his opinion on post-trial motions in Roch Diagnostics Co. v. Meso Scale Diagnostics, LLC, C.A. No. 17-189-LPS (D. Del.), following a jury trial last year that resulted in a $137m verdict and a finding of willfulness.

Damages Award on 65% Royalty Theory Confirmed

The Court denied a post-trial motion to undo the jury's damage finding, which equated to an approximately 65% royalty rate (or more, depending on the royalty base).

Interestingly, the jury awarded damages after a one-sided royalty rate presentation by Roche, the accused infringer. The Court had previously excluded the patentee's damages expert's opinion as to the royalty rate, because it used the wrong date …

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Here's a Spreadsheet That Forecasts IPR Deadlines and Timing Based on the Filing Date

Andrew E. Russell, Nov. 23, 2020
KB IPR Timing Estimator

IPR Timing Estimator Screenshot
Andrew E. Russell

It can be kind of a pain to estimate the schedule of an inter partes review proceeding beforehand, because the dates are relative (e.g., "30 days after x"), and because the deadlines are set in a number of different places (e.g., the U.S. Code, the Code of Federal Regulations, the PTAB's Trial Practice Guide).

A few years ago, I put together a spreadsheet that automatically estimates the timing and deadlines of an IPR based on the filing date. I've updated it a couple of times since then.

A spreadsheet like this can be a great help when you need to figure out the timing of an IPR so that you can do …

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Trials? Maybe?

Nathan R. Hoeschen, Nov. 20, 2020
COVID-19

anastasiia-chepinska-OBmBHmrc3pw-unsplash.jpg
Local business closed during the coronavirus covid-19 quarantine, Anastasiia Chepinska, Unsplash

Like the rest of the nation, Delaware is presently descending into an apocalyptic vortex of pestilence and despair. As we've chronicled in numerous posts, this is having no small effect on the business of conducting trials. Thankfully, however, a few orders out this week suggest that there's still some hope that trials scheduled in the very near time might yet go forward.

The first of these was in Guardant Health, Inc. v. Foundation Medicine, Inc., C.A. No. 17-1616-LPS-CJB. This case had been set to be Judge Stark's first post-pandemic patent jury trial before being mysteriously continued earlier this month.

Today, however, the Court issued an …

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We Three Agree — Me, Myself, and I (Or: Court Strikes Expert's Opinion That Secretly Relied On His Own Anonymous Writing)

Emily DiBenedetto, Nov. 19, 2020
Rule 37 Sanctions

Mirrored
Mirrored Alex Iby, Unsplash

Last month, Judge Burke struck "a substantial portion" of an expert's infringement report after the expert relied on his own anonymous peer review to prove infringement, without disclosing that he had been the author.

The truth did not come out until the deposition.

The Expert Secretly Relied On His Own Prior Anonymous Writing

Plaintiffs in this action allege infringement only via the doctrine of equivalents, arguing that the differences between the accused drug and the claimed drug are insubstantial. Defendant argues that the differences are substantial, relying in part on a 2016 article showing that the accused drug performs significantly better than the claimed drug.

Plaintiffs' expert reports criticized the 2016 article based on two …

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UPDATE: First Post-Coronavirus Jury Trial in Delaware Continued Due to Coronavirus Concerns

Andrew E. Russell, Nov. 18, 2020
COVID-19 Trial Calendar

According to the docket, USA v. Davis proceeded to jury selection on Monday, but the trial was then continued:

Minute Entry for proceedings held before Judge Leonard P. Stark - Jury Selection as to Aaron Davis held on 11/16/2020 (Court Reporter B. Gaffigan.) (etg) (Entered: 11/17/2020)
ORDER: IT IS HEREBY ORDERED that the Jury Trial is CONTINUED. The government shall file a joint status report due by 11/30/2020. A Telephone Conference is set for 12/1/2020 at 01:45 PM before Judge Leonard P. Stark. Time is excluded from 11/17/2020 until 12/1/2020. Signed by Judge Leonard P. Stark on 11/17/2020. (etg) (Entered: 11/17/2020)

The order states only that the trial was continued "for the reasons stated in court November 16, 2020," …

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Disclaimer – Nice, If You Can Get It

Jeff Castellano, Nov. 17, 2020
Disclaimer Claim Construction

A Markman ruling issued by Judge Andrews this week demonstrates how hard it can be to convince the Court that a patentee has disclaimed claim scope. In the MDL In re: Sitagliptin Phosphate ('708 & '921) Patent Litigation, Judge Andrews drew a distinction between the kinds of prosecution activity that can give rise to disclaimer, and those that cannot.

Surfactants at work
Surfactants at work Soap bubbles_3, Daniele Levis Pelusi, Unsplash

In short, defendants argued that the plaintiff had disclaimed claim scope regarding the nature and purpose of the claimed "surfactant" during prosecution. The Court ultimately agreed in part, finding that "surfactant" had been limited to a "wetting agent" that increases dissolution of sitagliptin.

It is worth noting here that …

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Delaware State Courts Revert to Phase 2 of Reopening Plan

Andrew E. Russell, Nov. 16, 2020
COVID-19 Trial Calendar

COVID-19
CDC / Alissa Eckert, MS; Dan Higgins, MAMS

Just as the District of Delaware restarts its jury trials, the Delaware state courts announced today that they are reverting back to Phase 2 of their reopening plan, after just moving to Phase 3 on October 5.

Under Phase 2, there are no jury trials, but the court houses will stay open, and grand jury proceedings, bench trials, and hearings will continue.

I haven't heard of any COVID-19 outbreaks in the jury trials in Delaware state courts, but Law360 today reported that there was a COVID-19-positive juror in a trial in the Eastern District of Texas, and that seven people involved in the trial have have now tested positive. …

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