A Blog About Intellectual Property Litigation and the District of Delaware

Lawyers are famously careful. We double-knot our shoes. We check the expiration date on milk, cheese, and even BACOS-brand non-bacon chunks. More than anything, we are famous for hemming and hawing and avoiding a direct response to seemingly simple questions in a transparent attempt to avoid saying something that might later be used against us.

This is a tale of one such admission that turned out alright.

So maybe don't worry so much.

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The initial complaint in Prolitec Inc. v. ScentAir Technologies, LLC, C.A. No. 20-984-WCB (D. Del. Jan. 12, 2024) (Mem. Op.) stated pretty baldly that the defendant infringed claim 9 of the patents-in-suit.

(Eds. note, for no sensible reason it was claim 9 of both patents. I spent about 15 minutes trying to figure out how best to parse that grammatically, briefly toying with "claims 9," like "attorneys general" before realizing I don't get paid for this and giving up).

There were claim charts and everything.

This is normally what you want in a complaint, really. You kind of have to accuse them of infringement after all. The difficulty is that claims the ninth (?) were both invalidated at IPR and so the plaintiff was left to assert various dependent claims. They amended the complaint accordingly, removing any reference to the now-cancelled niners (?).

When it came to trial, defendant wanted to use the earlier complaint as evidence that their own products practiced all but the few extra limitations of the dependent claims, thus bolstering their invalidity and damages cases.

Plaintiff argued that the original complaint could not be used against it because it had been superseded (I sometimes see this called "rendered a nullity" which I quite like) by the amended complaint. Accordingly, they moved in limine to prevent those statements from being used against them at trial.

Judge Bryson granted the motion, noting first that the statements in the complaint did not constitute "binding judicial admissions." Id. at 4. He then went on to note that statements in a superseded complaint could constitute "evidentiary admission[s]." Id. there was a problem, though:

The problem here is that there is an exception to that principle for legal conclusions. As the Third Circuit noted in W.V. Realty, Inc. v. Northern Ins. Co., 334 F.3d 306, 316 (3d Cir. 2003), “legal conclusions may not be used as evidentiary admissions.” . . . The statement reads: “Defendant and Defendant’s customers have directly infringed, and continue to infringe, at least claim 9 of the [’004 and ’976 patents]” . . . . That statement is a conclusion of law. It therefore cannot be treated as an evidentiary admission.

Id. at 4-5.

So don't worry so much. Live life. Use velcro. Eat an old avocado. Carpe diem, quam minimum credula postero.

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