A Blog About Intellectual Property Litigation and the District of Delaware


Entries for date: January 2021

District of Delaware Issues New Guidance on "Highly Sensitive Information"; Should Not Impact Typical IP Cases

Andrew E. Russell, Jan. 29, 2021
Sealing Standing Orders

Lock Boxes
Tim Evans, Unsplash

The District of Delaware today issued guidance on the submission of "highly sensitive documents" today, following the recent breaches of government computer systems by malicious intruders. Similar orders have been issued across the country.

The procedures indicate that parties must file a motion for a document to be treated as including highly sensitive information, and the motion must be granted before the procedures are used. Once granted, the documents must be submitted in paper or via a secure drive.

Luckily, these new procedures address only a sub-category of sealed information, and do not impact current procedures other than for documents with highly sensitive information. Highly sensitive information is defined as follows:

HSI generally refers …
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The Key to Unlock Sealed Filings

Nathan R. Hoeschen, Jan. 28, 2021
Sealing

Over the last few years, sealing courtrooms, transcripts, and even ordinary filings has become more difficult in Delaware. With unopposed motions to seal being regularly denied in the absence of a strong showing of harm, one might wonder how high the bar would rise if a third party actually requested disclosure.

Judge Burke provided us a glimpse of the answer in ruling on one of these rare requests earlier this week in Integra LifeSciences Corp. v. HyperBranch Med. Tech., Inc., C.A. No. 15-819-LPS-CJB, D.I. 826 (D. Del. Jan 25, 2021)—a case that had previously been closed for more than a year. The parties in that case had filed various documents under seal years ago, …

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Be Careful About Doubling Down on Motions to Dismiss

David M. Fry, Jan. 27, 2021
MTD 12(b)(6)

Blackjack
Markus Spiske, Unsplash

How many amended complaints does it take before your infringement claims are dismissed with prejudice? As it turns out, it might only be two.

Last July, Magistrate Judge Fallon issued an R&R recommending partial dismissal of a patentee's amended complaint under Twombly and Iqbal (the complaint was amended in response to an earlier motion to dismiss). The plaintiff sought leave to amend its complaint a second time, which the court granted.

But instead of correcting the problems with the first amended complaint, Judge Fallon found that the plaintiff simply repeated them—bringing allegations that were "conclusory" and "lack[ed] any plausible facts supporting such a conclusion."

Perhaps an even bigger issue, though, was the fact that the plaintiff …

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Judge Stark Resolves Pretrial Disputes About Courtroom Sealing, Cross Exhibits

Jeff Castellano, Jan. 26, 2021
ANDA Trial Procedure

Somewhere between the filing of the pretrial order and the pretrial conference, Judge Stark typically issues an order resolving pretrial disputes and allocating trial time. These orders - while usually short - provide a wealth of insight into his trial practices and preferences, and (often) his views on substantive evidentiary issues. They also serve to remind litigants of longstanding trial management practices (including those codified in his form pretrial order).

On Friday, Judge Stark issued a 3-page pretrial memorandum order in a set of consolidated Hatch-Waxman ("ANDA") actions, Silvergate Pharmaceuticals, Inc. v. Bionpharma, Inc. et al., C.A. Nos. 18-1962, 19-1067, 19-678. The order contained decisions on sealing the courtroom during the bench trial, obviousness proofs, disclosure of exhibits to be used on cross examination, and others.

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All January and February Jury Trials in the District of Delaware Have Now Been Canceled

Andrew E. Russell, Jan. 25, 2021
Trial Calendar

Calendar
Adam Tinworth, Unsplash

At this point, every trial listed in our last jury trial update has been continued or delayed, almost all due to coronavirus concerns. Here is the breakdown:

  • January 25, 2021: Novel Drug Solutions, LLC et al v. Harrow Health, Inc., C.A. No. 18-539-MN (D. Del.) (Noreika, J.): After a joint request to delay trial due in part to coronavirus issues, this trial was "continued to dates TBD."
  • February 17, 2021: U.S. v. Joanna L. Crane, C.A. No. 20-51-CFC (D. Del.) (Connolly, J.): This trial was continued for reasons unrelated to COVID-19.
  • February 22, 2021: U.S. v. Davine Boyce, C.A. No. 20-43-CFC (D. Del.) (Connolly, J.): Delayed …
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What Are the "Usual Discovery Dispute Procedures" in the District of Delaware?

Andrew E. Russell, Jan. 25, 2021
KB Discovery Dispute

Le Duel a l'Épée et au Poignard (The Duel with the Sword and Dagger)
Le Duel a l'Épée et au Poignard (The Duel with the Sword and Dagger), Jacques Callot

After we talked last week about an unsuccessful effort to bypass the Court's discovery dispute procedures, I thought it might be interesting to talk about what those procedures are, for people who don't practice here day in and day out.

A discovery dispute is a special procedure that allows the parties to receive a (relatively) quick hearing to resolve issues that arise during discovery. Bringing a discovery dispute is the only way the Court allows the parties to address these kinds of discovery issues in a typical District of Delaware case (including both patent and non-patent cases).

Is This in the Rules or What?

Discovery disputes are not mentioned in the local rules, but all of the judges have discovery dispute procedures in their form scheduling orders. ...

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Judge Andrews Strikes Two-Reference Anticipation Opinion

Andrew E. Russell, Jan. 22, 2021
Anticipation Litigation

When one prior art reference incorporates another, parties often prefer to argue that they form a single reference under an anticipation analysis, rather than asserting them as an obviousness combination. After all, who wants to deal with motivation to combine and secondary considerations of non-obviousness if they don't have to?

But there is a risk. The primary reference truly has to incorporate—not just cite—the secondary reference, which not the most common situation. If the first reference merely cites the second, the court will likely find that they cannot be treated as a single reference.

Judge Andrews addressed that situation this week, when faced with a Daubert motion to strike an expert opinion that treated two references as one in its …

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The Trend Towards Granting Stays Marches On

Nathan R. Hoeschen, Jan. 21, 2021
IPR Stay

Hang in there baby
Hang in there baby The Fall of Icarus, John Doyle

We discussed last month how it has, in Judge Andrews' words, become fairly routine for the Court to grant stays following IPR institution. With the recent increase in granted stays, one can see how a litigant might be tempted to fly even closer to the sun, and extend a stay through an appeal to the Federal Circuit.

Judge Connolly gave those gallant dreamers a bit of hope on Tuesday when he granted just such a motion in DDR Holdings, LLC v. Priceline.com LLC, et al., C.A. No. 17-498-CFC, D.I. 101 (D. Del. Jan 19, 2021). In that case, the parties had stipulated to a stay pending resolution of an IPR. When the IPR concluded, some of the asserted claims had been upheld and others had been invalidated, and the plaintiff was appealing the invalidated claims to the Federal Circuit. Plaintiff wanted to move forward with the remaining claims against some of the defendants, while the defendants argued that the stay should continue.

Judge Connolly ...

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Judge Burke Warns Against Gambling on Self-Help Measures

David M. Fry, Jan. 20, 2021
Motion to Strike Pennypack

Casino
Heather Gill, Unsplash

It's a common dilemma in expert discovery: the other side's expert says something new in an opening report, you move to strike it, and you get a hearing date after the deadline for your rebuttal report. Do you have your expert respond (and weaken your prejudice arguments)? Or do you double down on your motion to strike (and risk losing the ability to respond altogether)?

In D. Del., the second option is a huge gamble. Yes, it's possible to persuade our judges to strike late-disclosed expert opinions (even under the Third Circuit's lenient Pennypack factors). But if you won't get a ruling before your responsive report is due, ignoring the new material can …

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Razor's Edge: Practicing the Prior Art and the Nose of Wax

Jeff Castellano, Jan. 19, 2021
Experts Daubert

Yesterday, Judge Andrews excluded testimony by an expert that improperly advanced a "practicing the prior art" defense. It has been firmly established that "practicing the prior art" is not a defense to literal infringement, and thus is not a proper subject for expert testimony. It is acceptable, however, for litigants to argue that if a patentee interprets a claim broadly for infringement purposes, the claim will read on the prior art ("that which infringes, if later, would anticipate, if earlier," the corollary of the proverbial "nose of wax" principle that prohibits parties from taking one view of claim scope for infringement purposes and another for invalidity).

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