A Blog About Intellectual Property Litigation and the District of Delaware

Entries for date: 2021

End of 2018
Andreas Dress, Unsplash

As we all get ready to drown another pestilential year in champagne and stuffed mushrooms, I thought it might be interesting to look back on how trials have progressed in the district this year as compared to 2020. Without further ado, I present to you the patent trial figures (as near as I can count them being already several mushrooms deep) for 2020 and 2021:

2020 - 8 Bench Trials + 5 Jury Trials = 13 Total Trials

2021 - 10 Bench Trials + 8 Jury Trials = 18 Total Trials

So there you have it folks, things are looking up (at least for patent lawyers who miss their trials), and the many steps the district has taken appear to have paid off.

Happy New Year, dear reader, I raise my next mushroom to your good health and successful trials.

Pawel Czerwinski, Unsplash

Two weeks ago, we wrote about a new set of referral orders in five Chief Judge Connolly cases. These orders offer the parties the choice to either consent to referral to Magistrate Judge Hall, or have their case referred to a visiting judge.

At this point, all parties have responded, and three out of five sets of parties consented to jurisdiction before Magistrate Judge Hall rather than having the case referred to a visiting judge. Seems like a good result! It will be interesting to see whether the Court continues to use these orders going forward.

I didn't see any obvious patterns among the cases that did or did not consent, although five cases is too small …

The Delaware Default Standard for Discovery, discussed on these pages before, contains both patent- and non-patent-specific discovery rules and limits. Among them are a six-year limit on certain discovery in patent cases and a 10-custodian limit for electronic discovery. When the Default Standard is incorporated into the scheduling order (as it often is), its provisions are no longer guidelines or default provisions, but instead are requirements the parties must abide by, and which cannot be changed absent a showing of good cause.

Default Standard
Default Standard Default Standard for Discovery, U.S. District Court for the District of Delaware

Last week, Judge Burke resolved a number of discovery disputes in U.S. v. Gilead Sciences, Inc., C.A. No. 19-2103-MN, using the Default Standard (incorporated by reference into Judge Noreika's scheduling order) to guide his analysis.

First, Judge Burke denied the government's request for documents regarding manufacturing costs and other factors considered by defendant Gilead in pricing decisions in 2004:

The Court's Default Standard for Discovery, Including Discovery of Electronically Stored Information ("ESI") (the "Default Standard") sets a presumption that discovery from six years or more before the case's filing will not be permitted. . . . Here, in the few sentences of argument on this point in its briefing, . . . the Government does not provide enough information to establish the requisite good cause. During the teleconference, the Government suggested that good cause was established because it was only in 2004, and at no time thereafter, that Defendants had extensive discussions relating to the factors contributing to Truvada pricing decisions. However, that assertion is merely attorney argument, as there is no record evidence before the Court supporting such a conclusion.

Judge Burke also limited document discovery regarding Board of Directors meetings where pricing or the patents-in-suit were discussed to six years prior to the complaint, but did permit some discovery on those topics within the six-year period. ...

I wonder when slides like these were last used in district court?
I wonder when slides like these were last used in district court? Jo Gala, Unsplash

Last week, in First Quality Tissue, LLC v. Irving Consumer Products Limited, C.A. No. 19-428-RGA (D. Del.), Judge Andrews issued the following order, apparently sua sponte:

ORAL ORDER: In connection with the argument currently scheduled for January 19, 2022 [regarding pending Daubert and summary judgment motions], the parties shall submit non-argumentative letters by January 4, 2022, specifying, in order of importance to the party, the issues they want to argue, with citations to where the relevant briefing can be found. The parties should not specify more than three issues each. At the argument, the total page limit for each sides …

Last month we wrote about Chief Judge Connolly's comments on the "sad reality" of referrals of SJ motions to a magistrate judge in patent cases:

[T]he sad reality in patent cases filed in this district is that a referral of a summary judgment motion [for an R&R] pursuant to § 636(b)(l)(B) inevitably results in objections to the magistrate judge's report and recommendation, which the district court judge must review de novo. Such a referral therefore ends up doubling the amount of judicial resources needed to resolve the summary judgment motion in question. For that reason, I no longer make § 636(b)(l)(B) referrals of summary judgment motions in patent cases to a magistrate judge.

He noted at the time …

Rodion Kutsaev, Unsplash

Just a reminder that the District of Delaware courthouse is closed on Thursday and Friday of this week, 12/23/2021 and 12/24/2021.

The Court's has already updated its website to display the 2022 holidays, but the 2021 holidays are still available via the Wayback Machine.

Why does this matter? Well, let me quote FRCP 6:

(a) Computing Time. . . .
(3) Inaccessibility of the Clerk’s Office. Unless the court orders otherwise, if the clerk’s office is inaccessible . . . on the last day for filing under Rule 6(a)(1) [a period stated in days or a longer unit], then the time for filing is extended to the first accessible day that is not …

In a recent order, issued shortly after the Markman hearing in Allergan USA, Inc. v. Aurobindo Pharma Ltd., C.A. No. 19-1727-RGA, Judge Andrews addressed the question of "how much weight should be assigned to a Patent Examiner's statement, in a Notice of Allowance, about the meaning of a claim."

He explained the background as follows:

During prosecution of the '291 Patent, Plaintiffs initially argued that the claimed percentage of mannitol, a well-known filler, should be calculated separately from the claimed percentage of filler. The Examiner disagreed, and, in his Notice of Allowance, indicated that the percentage of mannitol would be included in calculating the percentage of filler.

(emphasis added)

The plaintiffs/patentees urged the Court to ignore their initial statements and arguments, and instead adopt the Examiner's position. Judge Andrews declined to do so...

Robert Anasch, Unsplash

As we've discussed at length, judges in the District of Delaware will usually let parties stipulate to reasonable adjustments to the case schedule, within certain limitations (including that stipulating to change the dispositive motion deadline may in some instances lead to the loss of the parties' trial date).

So it's always interesting to see when a stipulation is denied. In Osteoplastics, LLC v. Conformis, Inc., C.A. No. 20-405-MN-JLH (D. Del.), just before the close of fact discovery, the parties stipulated to a roughly 5 month delay in the remainder of the case. As the parties explain in the stip, the purpose of the delay is to provide the Court time to rule …

Yesterday, Chief Judge Connolly issued nearly identical oral orders across five cases, instituting a new procedure for referral of the case to a magistrate judge:

ORAL ORDER: On or before December 22, 2021, the parties shall either (1) submit to the Clerk of Court an executed Form AO 85 Notice, Consent, and Reference of a Civil Action to a Magistrate Judge, indicating their consent to have a United States Magistrate Judge conduct all proceedings in this case including trial, the entry of final judgment, and post-trial proceedings; or (2) a joint letter indicating that both parties do not consent to a reference of this action to a Magistrate Judge. The letter should not indicate which party or parties did not …

Norman Tsui, Unsplash

One of the oddities of beginning a case is the somewhat tortured interaction between Rules 26 and 16. Under Rule 26(d), most discovery can't be served until after the parties have their initial scheduling meet and confer. That conference, discussed in Rule 26(f), should take place "as soon as practicable—and in any event at least 21 days before a scheduling conference is to be held or a scheduling order is due under Rule 16(b)." Rule 16(b), in turn, requires the court to issue the scheduling order:

as soon as practicable, but unless the judge finds good cause for delay, the judge must issue it within the earlier of 90 days after any defendant has been served …