A Blog About Intellectual Property Litigation and the District of Delaware


Entries for date: October 2021

What Can a Patentee Do When the Court Excludes Its Damages Expert? Maybe Force the Other Side’s Damages Expert to Testify for the Patentee.

Andrew E. Russell, Oct. 29, 2021
Damages Experts

With this case, the hits just keep coming...
With this case, the hits just keep coming... Mitya Ivanov, Unsplash

What do you do when your expert's damages opinion gets excluded, the Court rules you cannot proceed based solely on the factual evidence, and you bear the burden of proof?

According to an opinion from Judge Andrews yesterday, one option is to call the other side’s expert—even if the other side otherwise refuses to put her on the stand.

This Case Again?

We've actually talked about this case, Shure Inc. v. ClearOne, Inc., C.A. No. 19-1343-RGA-CJB (D. Del.), quite a bit at this point, including defendant's efforts to use DJ jurisdiction to keep part of the case out of Delaware, and plaintiff's effort …

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Part Man, Part Corporation

Nathan R. Hoeschen, Oct. 28, 2021
Depositions

It can sometimes get messy when someone is deposed both in their individual capacity and as a Rule 30(b)(6) designee. Sometimes the parties specifically call out which sections of the transcript relate to 30(b)(6) topics or otherwise signpost for the record which bits of the deposition are meant to be binding on the corporation—but, frequently, the resulting transcript is less clear than one might hope. A discovery dispute earlier this week showcased an attempt at a novel solution to this problem that, unfortunately, doesn't work.

The defendants in Schwendimann v. Neenah, Inc., C.A. No. 19-361-LPS, noticed a deposition of the plaintiff's corporate head, Jodi Schwendimann, in her personal capacity, and also sent a 30(b)(6) notice for the corporation that …

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Judge Andrews Strikes Last-Minute Damages Report

David M. Fry, Oct. 27, 2021
Damages Pennypack

When it comes to supplemental expert reports, how late is too late?

In a case that's set for trial next month, Judge Andrews recently addressed the parties' objections to a number of orders and R&Rs issued by Magistrate Judge Burke. In one of those orders, Judge Burke granted a motion to exclude some of the plaintiffs' damages calculations as erroneous and unreliable.

The plaintiffs objected, and in the meantime, they served a supplemental damages report attempting "[t]o correct the flawed analysis" excluded by Judge Burke.

Judge Andrews not only overruled the objections, but also found that the supplemental report was submitted too late:

The report was filed less than three weeks before trial. . . . This is …
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Judge Noreika Orders Parties to Submit Joint Claim Chart, Denies Request for Early SJ

Jeff Castellano, Oct. 26, 2021
Early SJ Claim Construction

Leave to file early summary judgment is not often granted in this District. The circumstances in which the Court may permit early SJ are usually narrow: for example, where a question of law appears to be dispositive of the entire action, and/or where the moving party agrees to forego its ability to file a motion on the same grounds later.

It is safe to assume that openly violating the Court's scheduling order right before you ask to file an early motion for summary judgment of invalidity under Section 101 will not increase your chances of success.

Last week in Johnson Controls Technology Company v. BuildingIQ, Inc., C.A. No. 20-521-MN, Judge Noreika forcefully rejected the defendant's request to file such a motion just days after the defendant had stonewalled during the claim construction process, causing the parties to miss the to file the joint claim construction chart deadline.

After the deadline passed, the Court ordered that...

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November Jury Trials

Emily DiBenedetto, Oct. 22, 2021
COVID-19 Trial Calendar

This year's November begins on a Monday.
Theodorus van Hoytema

Remaining October Jury Trials

  • 10/25/2021: Boston Scientific Corp. v. Nevro Corp., C.A. 18-644-CFC-CJB (D. Del.): This patent jury trial is calendared to start on October 25 before Judge Connolly.
  • 10/25/2021: CareDx, Inc. v. Natera, Inc., C.A. 19-662-CFC-CJB (D. Del.): The parties in this trademark case will begin jury trial before Judge Connolly on October 25.

Upcoming November Jury Trials

One patent case has a long-standing trial date that appears intact, but another patent case appears close to settling.

  • 11/01/2021: Novel Drug solutions, LLC v. Harrow Health, Inc., C.A. 18-539-MN (D. Del.): Defendant proposed rescheduling the pretrial conference for an earlier date, to which the Plaintiff agreed (D.I. 368), but Judge Noreika declined the rescheduling. D.I. 369. This contract case is set to proceed for five days on November 1.
  • 11/01/2021: Shure Incorporated v. Clearone, Inc., C.A. 19-1343-RGA-CJB (D. Del.): Judge Andrews has resolved multiple merits issues (D.I. 571; D.I. 619; D.I. 621) after adopting the Magistrate Judge’s recommendations to deny most of the parties' dispositive motions. The case still appears on track to proceed to trial. ...
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Request to Stay Discovery Ruling Pending Objections Denied

Jeff Castellano, Oct. 22, 2021
Magistrate Judges Stay

A few days ago, Magistrate Judge Fallon denied a request to stay her discovery ruling pending the losing party's objections and review by the District Judge. Defendant SXM in Fraunhofer-Gesellschaft Zur Forderung der angewandten Forschung e.V. v. Sirius XM Radio Inc., C.A. No. 17-184-JFB-SRF asked Judge Fallon to follow the parties' "agreed-upon practice" to stay discovery rulings pending objections, a practice the parties had apparently followed in two prior instances.

Or not.
Or not. Erik McLean, Unsplash

On October 7, Judge Fallon ordered that the plaintiff's experts should have access to defendant SXM's confidential information. About a week later, the parties submitted a letter setting forth their respective positions on whether the discovery ruling should be stayed.

Judge Fallon declined to stay her ruling. She noted that...

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Some ANDA Stats for a Slow Week

Nathan R. Hoeschen, Oct. 21, 2021
ANDA Invalidity

isaac-smith-6EnTPvPPL6I-unsplash.jpg
Charting Goals and Progress, Isaac Smith, Unsplash

To give the reader a bit of a peak behind the curtain, it can sometimes be taxing to write 5 blog posts in a week. This is especially true on a week, like this one, where the Court issues fewer decisions than average. All of us at IP/DE have our own strategies for dealing with this -- my preferred method is to dig up some stats that I had always wondered about, but never bothered to figure out.

This week, my focus was on invalidity challenges in ANDA cases. In particular, what are the relative odds of invalidating a composition patent, vs. a method of treatment patent, vs. a formulation patent?

The …

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On the Difficulty of Obtaining Early-Stage Claim Construction

David M. Fry, Oct. 20, 2021
MTD Hatch-Waxman

Judge Noreika just addressed an issue that rarely comes up in D. Del.: whether a patent should be delisted from the Orange Book for non-compliance with the Hatch-Waxman listing requirements. Although the issue itself is uncommon, the decision highlights the difficulty of winning a Rule 12 motion that hinges on early-stage claim construction.

The plaintiff sued "for infringement of five patents, only one of which . . . is listed in the Orange Book." The defendants counterclaimed that the Orange Book patent "must be delisted because it claims a 'system,' not a drug product, or method of using a drug, as required by" the Hatch-Waxman Act. The defendants then moved for judgment on the pleadings on their delisting …

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Spreadsheet of Estimated Damages & Royalties Must Be Produced, Even If Created "to Determine Which Companies to Reach Out to Regarding a Licensing Deal"

Andrew E. Russell, Oct. 19, 2021
Work Product Privilege Log

Not this kind of camera
Not this kind of camera Jakob Owens, Unsplash

Judge Hall issued a detailed privilege opinion last week, finding no privilege or work product protection for a number of documents after an in-camera review (while also finding that some others were privileged).

There are a number of useful holdings in the opinion. Some of the disputes arose in part because the custodian of the documents in question was unavailable, which means that the producing party lacks context for many of the documents.

For that reason, the producing party was unable to defend against production by offering a declaration that a document was prepared in anticipation of litigation, and the opinion resolves many of the disputes based purely on the text …

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Don't Forget That the Reverse Doctrine of Equivalents Exists...

Andrew E. Russell, Oct. 18, 2021
DOE Prosecution History Estoppel

Coffee Equals
Charles "Duck" Unitas, Unsplash

Most patent litigators know that the reverse doctrine of equivalents exists, and provides a way to argue non-infringement even if an accused product meets the literal terms of a claim. But it tends to be one of those issues that floats around in the ether, waiting for the right case, and it is rarely applied in practice.

Judge Connolly had an occasion last week to address the issue, resolving a motion for summary judgment of no reverse DOE, and took the opportunity to dig into some of the history of the reverse doctrine of equivalents. He first quoted the Federal Circuit's description of what the doctrine is:

the reverse doctrine of equivalents . . …
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