"What do you mean, attorney argument! This is unbiased expert testimony about how awesome our positions are."Braydon Anderson, Unsplash
Well, this is a new one for me. In Wirtgen America, Inc. v. Caterpillar, Inc., C.A. No. 17-770-JDW-MPT (D. Del. Jan. 16, 2024), the plaintiff had previously brought an action in the ITC against the defendant, and won—achieving an exclusion order that stood up (in part) on appeal.
Now, in a District of Delaware action on the same patents, plaintiff argues willfulness based in part on the previous ITC ruling. Defendant tried to offer an expert who would testify about how great its defenses were at the ITC:
Caterpillar offers Mr. Bartkowski to opine on how …
The privileges of working in the gig economy are too numerous to recount here. There's the freedom to set your own hours, the joy of being constantly rated on how cheerful (yet obsequious) you appear, and avoiding all of the complicated headaches that go with having health insurance and a retirement plan.
Hold it together Hoeschen, if you cry on the job again its back in the chokeyAI-Generated, displayed with permission
Well I have even more good news for you! Judge McCalla held just last week that at least some of you also enjoy the attorney-client privilege.
The defendant in Torvent LLC v. Techtronic Industries Co., Ltd. C.A. No. 21-853-JPM, D.I. 208 (D. Del. Jan. 11, 2024) was a startup with only a token staff of actual employees. In lieu of a permanent staff, they retained a large number of contractors for "various accounting and secretarial functions" and "consultants relat[ing] to licensing and damages issues." Id. at 6.
The dispute here arose because the defendant claimed privilege over a few thousand communications with these contractors. The plaintiff argued that these communications were not privileged because these were with third parties, rather than employees. The parties agreed that many of these contractors were functionally identical to employees. They disputed whether communications with these "functional equivalents" are entitled to the same privilege protections as actual employees.
Last year, the District of Delaware implemented a policy prohibiting most people who do not have a bar card from using personal electronics to the courthouse.
Notably, as of this month, Delaware phased out physical bar cards in favor of a printable version. I've had no trouble getting in with the printed bar card, so far, but I've heard secondhand that others may have had issues.
But what happens when out-of-town attorneys don't have a bar card at all, and need to use their personal electronics during the hearing? They must file a motion (or stipulation) and ask for an exemption from the rule.
So far, the Court has generally been willing to grant exceptions to …
A motion for attorneys' fees is a tough row to hoe. The shoddiest AI lawyer could pull together 8 paragraphs of quotes from the Supreme Court, the Federal Circuit, Blackstone, and Hammurabi's code, warning that fees are an extreme sanction to be used only sparingly, lest their mysterious power be depleted.
And he works for peanuts!AI-Generated, displayed with permission
As Judge Williams' opinion in BearBox LLC v. Lancium LLC, C.A. No. 21-534-GBW (D. Del. Jan 9, 2024) shows, you can even lose a motion for fees if the Court previously held the other party acted in bad faith.
The opinion in Bearbox, contains a healthy recitation of losses by the plaintiff at various stages of the case, culminating in an unsuccessful trial on the merits. Its' not worth rehashing the whole thing for our purposes—
(Eds. note - what is our purpose? sound off in the comments, but know in advance that I will not read anything by a philosopher or anyone else with a fuller beard than I possess)
—but the big takeaway is that the defendant's failure to win the case at summary judgment effectively scuttled any argument that the plaintiffs' claims were objectively baseless and unreasonable:
Moreover, while the Court adopted Defendants' proposed claim constructions, the Court denied Defendants' motion for summary judgement because the Court found that there existed genuine issues of material fact regarding who conceived of the '433 patent's subject matter. Thus, Plaintiffs' decision to continue litigating the sole inventorship claim after receiving the Court's claim constructions was not sufficiently unreasonable to warrant a finding that this case is exceptional . . .
The Court, in denying Defendants' motion for summary judgement, rejected Defendants' argument that no reasonable juror could find that Mr. Storms was the sole inventor of the '433 patent. Thus, even considering the '632 patent application, Plaintiffs' position that Mr. Storms was the sole inventor of the '433 patent was not meritless.
Id. at 4, 6-7 (internal citations omitted).
The one issue where they seemed to get some traction was in a successful motion to strike filed earlier in the case. The plaintiff had apparently served a new expert report, without leave, in order to conform their expert's opinion to a the Court's claim construction. Defendants successfully moved to strike the report. In its decision, the Court applied the Pennypack factors and actually found that the plaintiffs' actions indicated bad faith.
Nevertheless, in ruling on the § 285 motion, Judge Williams found that this act of bad faith was not enough to make the case exceptional:
Accordingly, even though the Court found Plaintiffs' timing indicative of bad faith, the Court finds that, in this instance, Plaintiffs' desire to supplement Dr. McClellan's expert report to ensure consistency with the Court's claim construction order did not render this an exceptional case.
Id. at 5.
So take heart, those have shown bad faith. You may yet find yourselves sufficiently redeemed to avoid fees.
"Counsel, go stand in the corner until you figure out what 'collegiality' means."Mag Pole, Unsplash
Several District of Delaware judges have discovery dispute procedures that require parties to first file a letter stating that the parties have met and conferred but are unable to resolve some disputes, and list the disputes.
This usually works out well, but a few issues can occasionally come up with this procedure. For example:
One party refuses to meet-and-confer, forcing the other side to file solo.
The parties have met and conferred to death, but one party refuses to sign the the joint letter anyway (or just refuses to respond), solely for the purpose of delay.
As defenses go, there's few better than "I don't infringe." Unfortunately, it's quite difficult to prove at the motion to dismiss stage. It is, after all, the rare complaint that contains the dark seed of its own demise on this front.
mmm . . . dark seedsAI-Generated, displayed with permission
You might think that a motion to dismiss based on non-infringement would be a little bit easier in the ANDA context. After all, you have this giant document listing everything in your product and what it does. You would be wrong.
Such was the lesson of Judge Fallon's opinion in Allergan, Inc. v. Mankind Pharma Ltd., C.A. No. 23-272 (D. Del. Dec. 21, 2023), unsealed last week. The patent there required (amongst dozens of assorted buffers, reagents, uppers, downers, and excipients) a phosphate buffer. The defendant responded by pointing out that none of the 3.2 trillion ingredients listed in their ANDA contained any phosphorus.
(Eds. Note—for the liberal arts majors amongst you, phosphorous is a pretty big part of anything "phosphate")
They thus moved for judgment on the pleadings of no literal infringement, reasoning that the ANDA controlled the infringement inquiry. Judge Fallon denied the motion however, holding that it was possible future evidence might contradict the ANDA:
Mankind Pharma insists that the ANDA specification controls the infringement inquiry. However, the case law cited by Mankind Pharma in support of this proposition explains that the infringement inquiry is based not only on the ANDA filing, but also on "other materials submitted by the accused infringer to the FDA, and other evidence provided by the parties." The Federal Circuit explained "[i]t is ... possible, at least in theory, that other evidence may directly contradict the clear representations of the ANDA and create a dispute of material fact[,]" even if "[s]uch circumstances [are] unlikely to arise in practice[.]" Consistent with this recitation of the applicable standard, each case cited by Mankind Pharma was decided on a fully developed record, either on summary judgment or following a bench trial.
Allergan, Inc. v. Mankind Pharma Ltd., C.A. No. 23-272, at 5-6 (D. Del. Dec. 21, 2023) (internal citations omitted).
This case follows several similar decisions in the district, Novartis Pharmaceuticals Corp. v. Alembic Pharms. Ltd, C.A. No. 22-1395-RGA, 2023 WL 6387975, at *5 (D. Del. Sept. 29, 2023) and InfoRLife SA v. Sun Pharm. Ind. Ltd, C.A. No. 21-1740-WCB, D.I. 153 at 4-5 (D. Del. Nov. 21, 2022), which the opinion discusses at some length. Neither of those cases however were quite as factually stark as the one presented here, where the claims clearly require phosphorus, and the ANDA includes . . . no phosphorus.
We mentioned back in October that Judge Hall was confirmed to the District of Delaware. Today, the Court started re-assigning cases from existing judges to Judge Hall. These arrive as a simple one-sentence docket entry:
Case Reassigned to Judge Jennifer L. Hall. Please include the initials of the Judge (JLH) after the case number on all documents filed.
The re-assignments involve cases at multiple stages, including past the close of fact discovery, and cases where Judge Hall was not previously involved as a magistrate judge.
One common question I see is "why did our case get re-assigned"? We can all speculate, but I'm not sure it's safe to read anything into a re-assignment like this beyond "our case was re-assigned …
We've talked a lot about "plain meaning" constructions, and how our judges havesometimespushedback against parties who offer plain meaning constructions without any indication of what the actual meaning of the term is.
Magistrate Judge Fallon issued an R&R today on an offshoot of this issue. In PPC Broadband, Inc. v. Charles Industries, LLC, C.A. No. 22-1517-GBW-SRF (D. Del. Jan. 8, 2024), the parties disputed the construction of only a single term, "drop cable." Plaintiff proposed not construing the term at all, and offered a generic definition as an alternative. The defendant proposed a specific construction that added limitations to the claim.
The patent at issue is directed towards a wall-mounted box that …
I have no idea what picture would go with this post. Enjoy some nice, royalty-free antelope.NEOM, Unsplash
Years ago, Judge Stark added language to his form scheduling order to resolve a common dispute: can an expert submit a declaration in support of summary judgment?
The language requires the parties to agree in advance, at the start of the case, whether they will permit this:
Expert Report Supplementation. The parties agree they [will] [will not] [CHOOSE ONE] permit expert declarations to be filed in connection with motions briefing (including case-dispositive motions).
Judge Stark has since moved up, but several D. Del. judges still use this language in their scheduling orders, including Judges Noreika, Hall, Burke, and …
The ITC is just, constantly issuing opinions. It's always "import this" and "don't export that." Frankly, I don't have the time for it.
That sands through the hourglass, so are the [copyrighted material redacted]Nathan Dumlao, Unsplash
On this historic day, however, Judge Wolson struck back against the relentless tide of ITC opinions. An act for which we at IP/DE will forever be grateful.
The issue came up in the context of a summary judgment opinion in Wirtgen America, Inc. v. Caterpillar, Inc., C.A. No. 17-770-JDW-MPT (D. Del. Jan 4, 2024) (Mem). The plaintiff there had previously prevailed at the ITC on one of the patents, and the ITC had issued (sigh) an exclusion order.
The plaintiff then moved for summary judgment of infringement, citing in support only the ITC's written decision. Judge Wolson, denied the motion:
The ITC’s decision is not factual evidence. It is, instead, a decision that weighs evidence and applies the law. Wirtgen’s reliance on the ITC decision as the sole evidence to support its argument means that I could deny the motion just for a failure of proof. But there are other problems as well.
Even if I treated the ITC’s decision as evidence, it would not suffice to carry Wirtgen’s burden. The decision is not binding on me. And the decision came in a different procedural posture. The ITC weighed the parties’ evidence and reached a conclusion, much like I would do after a bench trial. But, at this stage of the proceedings, I can’t weigh the evidence. Instead, I have to credit any contrary evidence that Caterpillar offers, and it has offered evidence . . .
Wirtgen, C.A. No. 17-770-JDW-MPT, at 10.
Let this serve as a reminder that we all have to keep fighting the good fight.
(Eds. Note - the ITC is actually pretty cool by the standards of IP courts and practitioners)
This blog is for general informational purposes. It is not an offer to perform legal services, and should not be considered a substitute for legal advice. Nothing in this blog should be construed as forming an attorney-client relationship. If you have legal questions, please consult counsel in your jurisdiction.
![That sands through the hourglass, so are the [copyrighted material redacted]](https://bd6f.s3.amazonaws.com/media/images/nathan-dumlao-5Hl5reICevY-unsplash.max-640x360.webp)
