A Blog About Intellectual Property Litigation and the District of Delaware


Entries for date: January 2021

Judge Connolly Rejects Attempt to Use "Emergency Motion" to Bypass Discovery Dispute Procedures

Andrew E. Russell, Jan. 18, 2021
Emergency Motion Discovery Dispute

The Boy Who Cried Wolf
The Boy Who Cried Wolf Francis Barlow

Most Delaware attorneys tend to hesitate before filing an "emergency" motion, because they know how busy the Court is. The Court takes emergency motions seriously. It may defer work on other pressing issues to assist the parties with a true emergency.

I don't think anyone would want be standing before the judge (or on a conference call, or a video conference) explaining why they unnecessarily disturbed the Court's management of its docket.

Last week, Judge Connolly issued an opinion showing what may happen when a party files an unwarranted "emergency" motion.

In FinancialApps, LLC v. Envestnet, Inc., C.A. No. 19-1337-CFC-CJB (D. Del.), a trade secret and contract action, the Court …

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Come See "the Most De Minimis Claim of Willful Infringement in This Court’s History" (and More!)

Andrew E. Russell, Jan. 16, 2021
Willfulness MTD

Robin Hood, taking on some rogue non-practicing entities
Robin Hood, taking on some rogue non-practicing entities Reginald Heade

Here is some colorful writing from Magistrate Judge Burke of the District of Delaware, recommending dismissal of a claim for willfulness that failed to plead knowledge, and which relied on—at most—possible knowledge for a 15-hour period between when the complaint was served on an unknown person and when the patent expired:

From the docket, it appears that someone who is in some way affiliated with [defendant] Robinhood was served with the FAC at 9:08 a.m. on July 30, 2019. . . . But, as it turns out, the '633 patent expired on July 30, 2019—that same day. The Court guesses that, in light of all of this, it might be theoretically possible for Plaintiff to pursue what would have to go down as the most de minimis claim of willful infringement in this Court’s history. But whether such a claim—revolving around whether Robinhood knew of the patent and its infringement thereof, during a roughly 15-hour time period on July 30, 2019—would even be plausible would depend on exactly who got served with the Complaint on July 30, 2019 and what their relationship with Robinhood is. Yet the record provides little information on that front. Thus, in the Court’s view, the best course is to grant Robinhood’s Motion as to willful infringement, and if Plaintiff believes it can (and should) pursue such a claim here, then in a further amended pleading, it can attempt to set out the factual basis for such a claim.

But that's not all ...

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Let's Talk About Conception, Baby

Nathan R. Hoeschen, Jan. 14, 2021
Invention Date Conception

When should a patentee have to disclose the date of invention? The defendant would prefer a date before invalidity contentions so they don't waste time vetting reams of recent prior art only to have the plaintiff produce the inventor's 4th grade journal showing conception in the early 1930's. The plaintiff, on the other hand, would prefer not to go digging through lab notebooks to try and prove a conception date, only to find that all of the relevant prior art was carved on stone tablets by cabal of renaissance alchemists long before the inventor was born.

No Answer In The Rules

Neither the Delaware Default Standard for Discovery, nor the form scheduling orders of any of our judges address when …

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Another Redaction Request Denied...

David M. Fry, Jan. 14, 2021
Sealing Redactions

As we've recently pointed out, you need more than a boilerplate motion with generic arguments to overcome the presumption of public access in D. Del. It also helps to submit a declaration. But even if you do, don't be surprised if your request is denied.

On Monday, Judge Andrews denied a Hatch-Waxman defendant's unopposed motion to redact a hearing transcript on a motion to dismiss. This was "not a boilerplate motion" and it "was accompanied by an Affidavit."

The defendant also made the kinds of arguments that have sometimes succeeded in the past:

The gist of the underlying motion to dismiss is that Sandoz has lost its API supplier and that Sandoz will not be able to …
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Judge Stark's 50-Hour ANDA Trial

Jeff Castellano, Jan. 12, 2021
ANDA Trial Scheduling

Trials in ANDA cases (also known as Hatch-Waxman cases) are usually very efficient matters. There is no jury, and the judges, lawyers, and witnesses that regularly try and participate in ANDA cases are well-practiced at maximizing the amount of evidence presented in each trial day (even where the issues are quite complicated and the parties numerous). So ANDA trials are often short, sometimes just a few days from start to finish.

Occasionally, however, even ANDA cases are too complicated to fit into a one-week-or-less trial. For example, Judge Stark recently stated that he may allocate up to 25 hours per side in an ANDA case set to go to trial later this week.

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Which Magistrate Judge Will You Get in a District of Delaware Case?

Andrew E. Russell, Jan. 11, 2021
KB Magistrate Judges

Wilmington, <a href='#' class='abbreviation' data-bs-toggle='tooltip' data-placement='top' title='Delaware'>DE</a>
Wilmington, DE Andrew Russell, CC BY 2.0

In the District of Delaware, the district court judges often refer substantive issues to the magistrate judges, even absent consent of the parties. This is one way that the judges manage the incredible load of the patent docket here.

When dealing with substantive referrals (not referrals for mediation/ADR), the Court uses an assignment system, where particular district court judges tend to refer cases and motions only to their assigned magistrate judges (with occasional exceptions).

The most recent announcement of magistrate judge assignments that I know of was made at a Federal Bar Association lunch back in September 2019:

  • Magistrate Judges Thynge …
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Update on Upcoming D. Del. Jury Trials

Andrew E. Russell, Jan. 10, 2021
Jury Trials Trial Calendar

Calendar
Adam Tinworth, Unsplash

It has been a while since we posted an update on upcoming jury trials in the District of Delaware.

The most recent news from the Court is that Chief Judge Stark still believes that jury trials are feasible, using the Court's enhanced jury trial procedures, and the Court intends to proceed with trials as they come up.

[UPDATE: If you arrived here via a Google search, make sure to check out our latest posts on this issue here.]

The next jury trial is set for January 25, and then there are multiple trials scheduled for mid- to late-February:

  • January 25, 2021: Judge Noreika has a jury trial scheduled in a breach of contract action, …
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On the Perils of Not Agreeing to a Reasonable Case Management Request

Andrew E. Russell, Jan. 7, 2021
Expert Discovery Litigation

Caution Tape
Hiroshi Kimura, Unsplash

I came across this case today, and I thought it was a good example of why, in Delaware, it can be dangerous to be seen as acting unreasonably, particularly when it comes to things like discovery disputes and case management.

Plaintiffs filed a first case in 2018, asserting infringement of a single patent. Earlier this year, it filed a second case against the same defendant for a newly-issued patent relating to the same subject matter.

Plaintiffs sought to consolidate the two cases because they involved similar facts:

[The cases involve] identical parties, identical accused acts of infringement, the same accused process, and related patents with identical inventors, materially identical specifications, and overlapping claim terms.

Defendants opposed …

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Is There No Safe Harbor

Nathan R. Hoeschen, Jan. 7, 2021
Safe Harbor

Honestly, it's not a very safe harbor
Honestly, it's not a very safe harbor Youngje Park, Unsplash

Judge Burke faced an interesting hypothetical last week regarding the rarely invoked safe harbor provision of 35 U.S.C. § 271(e)(1). For those unfamiliar, the safe harbor provision provides that:

It shall not be an act of infringement to make, use, offer to sell, or sell within the United States or import into the United States a patented invention . . . solely for uses reasonably related to the development and submission of information under a Federal law which regulates the manufacture, use, or sale of drugs or veterinary biological products.

The Sole Use Question

The issue in Wilson Wolf Manufacturing Corp. v. Sarepta Therapeutics, Inc., C.A. No. 19-2316-RGA-CJB, …

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Judge Connolly Orders a Markman Do-Over

David M. Fry, Jan. 6, 2021
10 Terms Claim Construction

In a case that's been pending for years, Judge Connolly just ordered the parties to redo their three-year-old Markman briefs.

Although the parties briefed and argued claim construction at the end of 2017, Judge Sleet granted an IPR stay before a Markman opinion was issued. While the stay was in place, Judge Sleet retired and the case was reassigned to Judge Connolly.

The parties were set to argue claim construction again this week, with 18 disputed terms from the plaintiffs' patents and 26 disputed terms from the defendant's patents. But on Monday, Judge Connolly issued an oral order cancelling the Markman hearing and ordering the parties to substantially narrow their disputes (to 10 limitations for each side's patents).

He also …

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