A Blog About Intellectual Property Litigation and the District of Delaware


Entries for date: April 2023

Defendants' Promise to Give Up a Throw-Away Argument Fails to Persuade Court to Stay Action

Andrew E. Russell, April 28, 2023
Ex Parte Reexamination Stay

Trash Cans
Lucas Beck, Unsplash

The defendants in Corteva Agriscience LLC v. Monsanto Company, C.A. No. 22-1046-GBW (D. Del. Apr. 27, 2023) moved to stay after a third party initiated an ex parte reexamination of the patents-in-suit.

To meet the "simplification" factor in moving to stay, defendants offered to drop their obviousness-type double patenting defense:

The first factor—whether granting the stay will simplify the issues for trial—disfavors a stay. Defendants assert a stay would simplify the case. First, Bayer claims it will agree to not argue that the '555 Patent is invalid for obvious-type double patenting ("OTDP") on the basis of U.S. Patent No. 11,149,283 ("the '238 patent" ) and that dropping this argument will simplify the issues for trial. D.I. 41 at 9.

The Court quickly dispatched with that idea, noting that it was essentially a throw-away argument:

However, Defendants recognize that Corteva can overcome the OTDP argument if Corteva files a terminal disclaimer. 3 Id. at 9-10. Because it is likely that this OTDP argument will not make it to trial anyway, the Court does not find that Bayer's offer to drop the argument will simplify the case.

The Court found that the factors did not favor a stay, especially considering the plaintiff had added two additional patents in the time since defendants filed their motion, and those two patents are not subject to re-examination. Beyond that, a stay would likely preclude injunctive relief (due to a patent expiration).

All told, it's not clear how they could have prevailed on this motion at all after the plaintiff asserted the two additional patents.

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Terminated With Extreme Prejudice

Nathan R. Hoeschen, April 27, 2023
Claim Narrowing Withdrawal

I usually don't expect a fight about withdrawing a claim. Adding one? sure. Striking one? Also Sure. Squishing two of them together and pretending they're dancing? Definitely.

Go Ninja, Go Ninja, Go!
Go Ninja, Go Ninja, Go! AI-Generated, displayed with permission

Generally though, the voluntary withdrawal of a claim makes life easier for the parties and the Court and passes from the case without comment or concern. That said, you can see why the withdrawal in MirTech, Inc. v. AgroFresh, Inc, C.A. No. 20-1170-RGA (D. Del. Mar. 23, 2023) (Mem. Op.) was more contentious.

The case had been pending for almost two years when Judge Andrews "encouraged the parties to avoid the over-litigation that [he] thought was happening in th[e] case." This "encouragement" took place about a week before the Defendant moved for SJ on several topics. plaintiff filed its opposition brief a month after that.

The defendant then took the unusual step of withdrawing one of the claims it had moved on—nominally without ...

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Check the Docket Before Failing to Appear for a Hearing

Emily DiBenedetto, April 25, 2023
Stipulation Meet-and-Confer

Broken Communication
Reid Naaykens, Unsplash

Parties can freely stipulate to many things in the District of Delaware, and often stipulations to extend deadlines are filed close to the last minute, especially where the parties are working toward agreement but ultimately cannot agree on the final filing in time (or else are having trouble connecting with the other side).

However, stipulations filed close to the Delaware witching hour (5:00PM EST) can be fraught with risk of the Court's denial, as we’ve seen in past heart-stopping examples. We’ve warned before that requests to move Court-scheduled conferences are in the “iffy” category, and combined with last minute filing, can end in disappointment for everyone, as shown in an oral order from Judge Noreika last week in Neurocrine Biosciences, Inc. v. Lupin Limited et al., C.A. 21-1042, D.I. 197 (D. Del. Jul. 16, 2021):

On April 17, 2023, the Court instructed the parties to talk to each other about their disputes so that a follow-up call with the Court (set for April 21, 2023) would be more productive than the prior call. On April 21, 2023, a few hours before the set call, the parties submitted a stipulation requesting the April 21 call be delayed. After further inquiries, it became clear that, in the five days after the Court directed the parties to TALK, they did not do so. The Court intended to address that during the April 21 call, but no counsel appeared for the call (notwithstanding that the Court had not granted the request for a delay). THEREFORE, IT IS HEREBY ORDERED that, should the parties not inform the Court that they have resolved their dispute in full by Tuesday April 25, 2023, lead trial counsel SHALL appear in person in Courtroom 4A on April 26, 2023 at 3:00 p.m. ORDERED by Judge Maryellen Noreika on 4/21/2023.

Judge Noreika previously indicated frustration with the magnitude of this particular discovery dispute (on search methods to find responsive documents), so the parties were on thin ice long before ...

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I Don't Wanna Wait, For Our Cases To Be Oveeerrrrrrr

Nathan R. Hoeschen, April 25, 2023
Discovery Dispute

It begins with a series of interminably long emails. I say that you really should be producing these documents—I cite cases, exhaustively describe the items sought, and cite check the whole thing like it's headed to the Supreme Court. You respond by pointing out that I am just hopelessly misguided, and have perhaps been drinking. You also cite cases.

Eventually everyone gets on the phone to hash things out. Two hours later you agree to take my positions "under advisement" and call it a day.

Meet and confer accomplished.

Why is this one so creepy? It's just supposed to be werewolves shaking hands
Why is this one so creepy? It's just supposed to be werewolves shaking hands AI-Generated, displayed with permission

It's not always that bad, but there is definite potential for one or both parties to drag the process out. It's rare to see any consequences to this sort of slow-rolling, as it's usually invisible to the Court.

Every now and then, though, someone gets called out for it, and yesterday was one of those days. The dispute in TwinStrand Biosciences, Inc. v. Guardant Health, Inc., C.A. No. 21-1126-GBW-SRF (D. Del. Apr. 24, 2023) (Oral Order) was your usual request that a party supplement an interrogatory. Judge Fallon granted the motion, but took the unusual step of noting the somewhat tortured history of the parties' correspondence

Guardant's second supplemental response to Interrogatory No. 6 provides some of this information for only one of the Asserted Patents. Guardant represented that it would produce and identify documents responsive to the Interrogatory under Fed. R. Civ. P. 33(d) as discovery continued. Guardant's responses to Plaintiffs' requests for supplementation of Interrogatory No. 6 during the meet and confer process suggest that Guardant may have additional responsive information that has not yet been disclosed. (As of March 17, 2023, Guardant represented it "will provide our position or a supplementation in due course"); (As of April 4, 2023, Guardant was "considering [Plaintiffs'] proposal and hope[s] to have a response soon."). Otherwise, Guardant could have put the matter to rest and avoided burdening the Court by simply confirming that it had no additional information responsive to Interrogatory No. 6.

The phrasing here is not quite a rebuke, but parties generally like to keep their name as far removed from ...

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Court Strikes Key Infringement Argument Where Party Had No Good Explanation for Late Disclosure

Andrew E. Russell, April 24, 2023
Infringement Contentions Pennypack

"Did I remember to disclose my infringement counter-arguments? Ah well, I'll just argue that they're responsive." Tim Bogdanov, Unsplash

Judge Williams unsealed a detailed Pennypack decision Friday, where he struck an expert's infringement argument after the party failed to disclose it in their contentions.

The motion and brief provide some helpful context here. The defendant moved to strike material in the expert's opening report that apparently responded for the first time to arguments made in the defendant's non-infringement contentions. Cirba Inc. v. VMWare, Inc., C.A. No. 19-742-GBW, D.I. 1460 at 1 (D. Del. Nov. 28, 2022); Id., D.I. 1461 at 2-3.

The Court rejected an attempt to argue that the argument was "responsive" to a filing …

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Another Reminder Not to Push the Court Past Its Breaking Point

Andrew E. Russell, April 21, 2023
Trial Practice Litigation

Words to live by when thinking about whether you need to go to the Court on your nth dispute this week.
Words to live by when thinking about whether you need to go to the Court on your nth dispute this week. George Pagan III, Unsplash

It's easy, especially at trial or in the lead-up to trial, to feel like you need to bring every dispute to the Court. The stakes in patent cases tend to be high, clients want to see progress, and sometimes every little dispute ends up feeling critical (particularly if the outcome impacts your trial plans).

Beyond that, sometimes more junior associates are tasked with handling disputes as trial approaches—and may be given the implicit authority to raise disputes, but not to resolve them. Shockingly, disputes can then multiply pretty quickly.

What happens when you start …

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Staying Ahead of the Game

Nathan R. Hoeschen, April 20, 2023
Redactions

Today I noticed for the first time what may be a new move in the redaction game. I neither like nor understand chess (the two may be related), but it feels like I witnessed the birth of the French defense.

DALL·E 2023-04-20 17.34.27 - painting of two dogs playing chess while wearing berets in the style of dogs playing poker
AI-Generated, displayed with permission

As we've discussed ad nauseum, it has become standard practice for Judge Andrews to reject filings that redact exhibits in their entirety (or nearly so) with an oral order like the following:

ORAL ORDER: The redacted filing (D.I. 163 ) is REJECTED because parts of it are redacted in its entirety. Absent a compelling reason, supported by a statement under oath by a party, redactions in their entirety are impermissible; redactions must be done so as to redact the least possible amount of the materials submitted. Failure to make a good faith attempt at such redactions may result in sanctions, the most common of which would be simply unsealing the entire filing. Redacting in its entirety a document or parts of it that contains publicly available materials is prima facie evidence of bad faith. A revised redacted filing is DUE within five business days.

Vertex Pharms. Inc. v. Sun Pharm. Ind. Ltd., C.A. No. 20-988-RGA (D. Del. Apr. 12, 2023).

Despite this repeated refrain, I still see at least a couple such orders every month. This week, however, was the first time I saw a party take the step of submitting "a statement under oath by a party" at the same time it submitted its redactions, rather than waiting for them to first be rejected.

Interestingly, the statement itself was fairly light on detail stating only that it was redacting "the proprietary formulation contained in its ANDA" and describing ...

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Judge Williams: Evidence of Plaintiff's Investors and Litigation Funding is Admissible at Trial

Andrew E. Russell, April 19, 2023
Litigation Funding MIL

"Your honor, we move to turn the apple, so that the jury can only see the side that's not rotten." Giuseppe CUZZOCREA, Unsplash

Yesterday, Judge Williams issued an opinion ruling on motions in limine for the trial starting next week in Cirba Inc. (d/b/a DENSIFY) v. VMWare, Inc., C.A. No. 19-742-GBW (D. Del.) (a case we've discussed several times before).

In it, he addressed several MILs. These opinions are always interesting, but given all of the recent discussion of litigation funding, I thought Judge Williams' order on the plaintiff's litigation funding MIL is worth noting.

Plaintiffs in the case moved in limine to preclude reference to their litigation funding arrangements:

With respect to Plaintiffs …
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Needs Must When Markman Drives

Nathan R. Hoeschen, April 18, 2023
Extension Stay

As a peak behind the curtain, I don't normally tell muggles (non-patent folk) that I write a blog. I can't help but put myself in their shoes and imagine myself at a party talking to a man in a polo shirt who writes a blog about . . . cured meats? I see myself pressed firmly against a wall while my eyes dart madly for help that I know will not come. On his shirt - pastrami.

You see, it's in the temperature of the cure—too long, and you've lost yourself a brisket
You see, it's in the temperature of the cure—too long, and you've lost yourself a brisket AI-Generated, displayed with permission

I don't want to be that man.

But today my wife told me that she's started reading the blog. Her favorite is the one with the crab. I am ever so pleased and am inspired to maintain the commitment to the craft of blogging which has made IP/DE the bulwark of modern culture it is.

[Insert seamless transition to legal analysis here, then remember to delete this before posting]

This brings us to a novel argument to (essentially) stay 101 briefing, which Judge Williams soundly rejected yesterday. The defendant in SurgeTech, LLC v. Uber Techs. Inc., C.A. No. 22-882-GBW (D. Del. Apr. 17, 2023) (Oral Order), moved for judgment on the pleadings on 101 grounds a bit later than usual -- just after the submission of the joint claim construction chart.

The plaintiff then moved for a 5 week extension of its deadline to respond, ...

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