Chief Judge Connolly issued a memorandum order in the Backertop case today. We talked previously about how the plaintiff in Backertop is an LLC whose sole member is a paralegal who is married to an attorney who works at Mavexar, who gets just 5% of the proceeds of litigating the patents owned by the LLC (the rest goes to Mavexar).
Following a hearing last year, the Court ordered production of various documents, and ordered the owner of the LLC to appear again for a hearing on June 8. She asked to attend remotely due to other obligations.
Today, Chief Judge Connolly denied her request, but rescheduled her appearance for July (the June 8 hearing will still …
One of the hardest parts of being a patent litigator is that all of your stories are boring. With enough hand gestures and elbows to the rib you can sometimes get a polite chuckle from a colleague, but normals? Fuhgedaboutit.
Because of this, I've always felt a certain kinship with PTO experts. There is a robust body of law in the district about what exactly they can testify to, but my rule of thumb has always been that the more boring the testimony, the more likely it is to be admissible. Judge Williams had an interesting opinion unsealed today dealing with a pair of Daubert motions directed to both parties experts on patent office procedures. Let's see how my little rule holds up.
Expert the first offered rebuttal expert opinion on inventorship:
Mr. Stoll, who has nearly thirty years of experience at the USPTO . . . refutes Dr. Cooper’s conclusions on inventorship through detailed explanations "related to the ins and outs of internal PTO practices and procedures.” Mr. Stoll’s opinions also include an explanation that the request to correct inventorship and signed statements by the named inventors complied with all of the relevant regulations and guidelines of the USPTO and were properly accepted as such, as is evidenced by the USPTO Director’s issuance of the certificates of correction to inventorship.
Natera, Inc. v. ArcherDX, Inc., C.A. No. 20-125-GBW, at 7 (D. Del. May 2, 2023) (Mem. Order) (cleaned up).
"[I]ns and outs of internal PTO practices," "compliance with the relevant guidelines" -- sounds pretty boring to me. This testimony gets in!
Expert the second, on the other hand, put a bit more of a dramatic spin on his testimony relating to
Motions to strike are tough in Delaware. Although the reign of Pennypack seems to be slowly entering its dotage, the door remains open for the late-disclosed.
With exclusion so rare, its a bit odd we don't see more of Rule 37's lesser sanction -- fees.
But visiting Judge McCalla gave us one on Monday in Invacare Corp. v. Sunrise Medical (US) LLC, C.A. No. 21-823-JPM (D. Del. May 22, 2023) (Oral Order). The facts there were pretty stark.
The defendant had an inequitable conduct claim based on the patentee's failure to inform the PTO that identical claims had previously been rejected. Plaintiff's prosecution counsel testified that the failure was due to an error in an internal spreadsheet they kept of related applications that omitted the relevant application. Plaintiff had previously withheld the spreadsheet as privileged but eventually waived privilege and produced it.
Unfortunately, it came out during expert discovery that the spreadsheet actually contained the relevant application. This was probably a bad day for a lawyer somewhere. Plaintiff then went back to see if there were other versions of the spreadsheet that did omit the application -- they eventually found and produced some, but by then it was 4 months after the close of fact discovery.
Defendant moved to exclude these new references. Judge McCalla denied the motion but ordered plaintiff to pay what will surely be a hefty sum to cover the ...
IP/DE launched 3 years ago today, with our first post published on May 25, 2020. The site started off as my pandemic project. I'm thrilled that it's still going three years later—and we don't plan to stop posting any time soon.
As I said in that first post, my goal has always been for IP/DE to be a "less formal, just-what-you-need-to-know style of blog"—the kind of legal blog I'd want to read! Something that "covers only the most interesting parts of opinions, orders, transcripts, and news, in the shortest way I can."
We've continued to strive to hit that goal, although our posts are often longer than I'd like, and we sometimes tend to write about …
Today we highlight a decade-old opinion involving an inventor’s death, the reports of which were greatly exaggerated. The moral of the story: trust but verify. Do a Google search, even if you have it on good authority. Question your assumptions.
It's an oddball case that provides the perfect foil for Nate’s article yesterday involving the opposite fact-pattern—a dead expert. Here, an inventor thought expired was “not only alive, but also willing (‘indeed eager’)” to testify in the upcoming trial, scheduled only ten days away.
In an unusual mix-up, plaintiff relied on testimony from the plaintiff’s 30(b)(6) witness, a former high-ranking officer for plaintiff's company, who said that the inventor was deceased. Where'd he get that information? Several of plaintiff’s …
I've got a real oddball fact pattern for you today. I'm not sure there's a takeaway for your everyday litigation life, but please remember to hug your experts -- you'll be glad you did.
The last time the plaintiff in Personal Audio LLC v. Google LLC, C.A. No. 17-1751-CFC (D. Del. May 22, 2023) spoke to their expert was in August 2021 when he submitted a declaration opposing a Daubert motion.
Sadly, he passed the following January.
Unfortunately, no one told the plaintiff.
Amazingly, two months after that the expert consulting firm plaintiff had been working with reached out to see if the expert was still needed. I can only imagine they were hoping …
Stipulations to extend time are a popular, both as a topic on this blog and in how routinely they are filed. Usually, stipulations to extend time are granted without incident, so we highlight the outliers as reminders that sometimes there’s more to it than mere agreement between the parties.
Don’t forget! If you’re stipulating to extend the:
Deadline for discovery completion, or
Postponement of trial
You must include the reasons for the request in your stipulation or motion. And the local rules require you to include either a supporting affidavit by the requesting counsel’s client or a certification that counsel has sent a copy of the request to the client.
This latter requirement reminds me of pre-college: in which students who received sub-optimal test scores needed to get a parental signature to prove to the teacher that the parent had seen the score and reviewed the offending test.
The parties in The Trustees of the University of Pennsylvania v. Genentech, Inc., C.A. 22-145-MN-JLH demonstrated how to correct deficiencies. Earlier this month, Judge Noreika issued an oral order denying their prior ...
On Wednesday, Judge Andrews issued an order in Salix Pharmaceuticals, Ltd. v. Norwich Pharmaceuticals, Inc., C.A. No. 20-430-RGA (D. Del. May 17, 2023) rejecting an attempt to evade judgment in an ANDA action based on the filing of an amended ANDA.
The defendant in the case had won on one method of treatment, and lost on the other. It filed an amended ANDA seeking to remove the infringing treatment from the label:
Defendant filed an ANDA seeking to make and market a drug for two different methods of treatment-the IBS-D indication and the HE indication. I had a bench trial. After trial, I ruled in Defendant's favor on the IBS-D indication (as …
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