A Blog About Intellectual Property Litigation and the District of Delaware


Entries for date: May 2021

Last week, Judge Andrews addressed a serious of motions in limine in Astrazeneca AB v. Zydus Pharms. (USA) Inc., C.A. No. 18-664-RGA (D. Del.). These rulings are often interesting; here, Judge Andrews excluded some former expert testimony as hearsay, rejecting the idea that the testimony was a party admission:

Defendant seeks to exclude testimony and evidence that relate to positions it and its experts took in relation to the patent-in-suit (as prior art) in District of New Jersey litigation involving other patents. . . . The evidence, which is described as trial transcripts, expert reports, invalidity contentions, proposed findings of fact and conclusions of law, and “support documents” (consisting altogether of about fourteen proposed exhibits) is …

Judge Fallon today rejected a motion to stay in Minerva Surgical, Inc. v. Hologic, Inc., C.A. No. 18-217-JFB-SRF (D. Del.), where the defendants tried to rely on COVID-19 opinions as precedent to support a further stay of the August 2021 jury trial.

Not stopping
Jorgen Hendriksen, Unsplash

Defendants tried to argue that the current trial date is tentative and COVID-19 uncertainty supports a further stay:

Although discovery is complete, the trial date is merely tentative and “subject to courtroom availability and the priority of other trials previously scheduled ahead of it.” . . . Moreover, as the Court observed in American Axle, “the ongoing impact of the coronavirus pandemic would render it imprudent to set a trial date at this time.” 2021 WL 616992, at *2; Brit. Telecomms. PLC v. IAC/InterActiveCorp, C.A. No. 18-366-WCB, 2020 WL 5517283, at *5 (D. Del. Sept. 11, 2020) (“[I]n light of the COVID-19 pandemic, it seems highly unlikely that the present schedule will hold. . . . And once trials resume, the district court will be faced with the challenge of dealing with the backlog of civil cases that has built up . . . .”); Order at 3, Pact XPP Schweiz AG v. Intel Corp., C.A. No. 19-1006-JDW, D.I. 277 (D. Del. Nov. 5, 2020) (Ex. 1) (“The Court is also mindful of challenges it and the Parties face due to Covid-19 and corresponding restrictions. If this case were to proceed on its current schedule, the trial would likely be subject to significant delays.”).

Magistrate Judge Fallon rejected this argument outright:

Pursuant to the court's April 5, 2021 Notice, the suspension of civil jury trials has expired ...

danist-8Gg2Ne_uTcM-unsplash.jpg
Construction site birds, 贝莉儿 DANIST, Unsplash

Late last summer, we posted about an interesting order from Judge Noreika rejecting the parties' claim construction chart for including too many terms. As Judge Noreika released a similar order just last week, I though it might be interesting to examine how firm the 10-term limit has been in the months since that first order.

The answer is "very." in the 20-some Markman orders Judge Noreika has issued since that first one, she has never once construed more than 10 terms. 4 times, she has rejected a claim construction chart for including more than 10 (14, 13, 13, and 17 terms were included in those rejected charts). In each case, she has …

Hammock
Mohamed Ajufaan, Unsplash

The most interesting part of a judicial decision is often found in the footnotes.

Case in point: yesterday, Magistrate Judge Burke issued an R&R on a motion to dismiss, recommending dismissal with prejudice of the patentee's contributory infringement claims (but otherwise recommending that the motion be denied).

For the most part, the R&R presents a fairly standard analysis of induced, contributory, and willful infringement claims. But it also contains several interesting footnotes, including a stern word of caution on sloppy pleadings:

As Tonal notes, . . . ICON gets off to a poor start here, since in its counterclaims, ICON did not even bother to state whether it is alleging induced infringement, contributory infringement, or both. …

We wrote previously about Judge Andrews' rejection of a proposed stipulation "that dismisses three patents without prejudice so the other two can be appealed," which he said was "just allowing for what is essentially an interlocutory appeal." At that time, he asked the parties to "submit something, jointly or separately, . . . explaining why I should approve the stipulation as is, or, if the other three patents are just fluff, why the three shouldn’t be dismissed with prejudice."

The parties in Malvern Panalytical, Inc. v. TA Instruments-Waters, LLC, C.A. No. 19-2157-RGA took Judge Andrews up on his invitation: Both sides submitted letters in support of their stipulation and proposed judgment, but yesterday Judge Andrews confirmed his earlier view that the proposed judgment was an impermissible bid for an interlocutory appeal, and he declined to enter it.

As we've mentioned, Judge Connolly uses a different system of patent contentions than the other District of Delaware judges. The other judges generally use the system set forth in the Default Standard, while Judge Connolly's approach is modeled after the more restrictive method used in the Northern District of California.

Because he uses a unique system, parties often wonder just how much (or how little) is needed to offer sufficient contentions in Judge Connolly's view.

Judge Connolly offered some insight on that point today, when he overruled a patentee's objections to an accused infringer's invalidity contentions. Here is one of the contentions at issue:

Claims 1, 2, and 4 of the ’489 patent are invalid under 35 U.S.C. § …

It doesn't happen all that often, but remember that under FRCP 72, a party can object to a non-dispositive order by a magistrate judge:

(a) NONDISPOSITIVE MATTERS. . . . A party may serve and file objections to the order within 14 days after being served with a copy. . . . The district judge in the case must consider timely objections and modify or set aside any part of the order that is clearly erroneous or is contrary to law.

Parties sometimes seem to forget this, because unlike with Report and Recommendations on dispositive matters, the magistrate judges do not typically flag the 14-day objections period in their orders.

Fallen ice cream
Sarah Kilian, Unsplash

And, sometimes, it works out. In 2019, for example, Judge Noreika sustained an objection to one of the magistrate judge's common interest doctrine determinations, reversing an order to compel certain common interest materials. See AgroFresh Inc. v. Essentiv LLC, No. 16-662 (MN), 2019 U.S. Dist. LEXIS 172423, at *13 (D. Del. Oct. 4, 2019).

All of that said, other times, it does not work out well. Today Judge Connolly denied such an objection before the other side had even filed a responsive brief ...

Judge Andrews today released a claim construction regarding several computer bag claims. Six of the claims at issue included elements regarding orientation of the opening in a computer bag:

“[pouch] opening[s] [is/are] . . . oriented in a direction substantially parallel to the planar surface”

U.S. Pat. No. 8,567,578
U.S. Pat. No. 8,567,578 U.S. Pat. No. 8,567,578

He found the claims indefinite because a POSITA would not understand the "orientation" of a bag opening, and the specification and prosecution history offered no hints:

At oral argument, [defendant] Victorinox contended that it is impossible to choose between two plausible views as to how to identify the orientation of the pouch opening; the “planar view” articulated by Victorinox and the direction pointing out of the pouch …