A Blog About Intellectual Property Litigation and the District of Delaware

If you've spent way too much time on the internet lately, you'll likely have seen way too many memes about how kids today don't understand the order of operations. The typical format is some bookface (tm) post along the lines of:

999,999 out of 1,000,000 people get this wrong:
3 + 4(3+2) - 2 X 3 = ?
  1. 17
  2. The darkness at the end of all time
  3. 97
  4. (audible belch)

And then there's someone confidently giving the wrong answer.

"Remras!" Camylla Battani, Unsplash

Of course, the correct answer can only be arrived at by following the prescribed order of operations. This same concept comes up quite often in civil procedure, but the application is often less straightforward than good old PEMDAS.

Judge Jordan's decision today in Novartis Pharms. Corp. v. Accord Healthcare Inc., C.A. No. 18-1043-KAJ (D. Del. Jul. 9, 2023) (Mem. Op.) illustrates quite clearly how even the most careful litigant can be tripped up.

The plaintiff, Novartis, won a preliminary injunction (P, I) early in the case preventing the defendants from launching their generic products at-risk. As part of that ruling, Novartis was required to post a $50 million bond (B).

So far, so good, just P-I-B to remember.

Novartis won at trial (T) and the court entered a permanent injunction (P, I). Defendant then appealed (A) the infringement and validity rulings. After the notice of appeal was filed, the Court granted Novartis' motion to extinguish (E) the preliminary injunction bond. The defendant then successfully moved the Federal Circuit to stay (S) the order extinguishing the bond.

So, P-I-B-P-I-T-A-E-S. Easy. This is where we get to the complicated part.

The defendant did not actually (A) appeal the order extinguishing the bond -- it just moved for the stay I mentioned. The Federal Circuit reversed (R) the trial court's holding that the patent-in-suit was not invalid and the Supreme Court denied Cert. Defendant then moved to collect (C) on the bond.

Judge Jordan denied the motion, holding that defendant PIBPITAESRC'd when they should have PIBPITAESARC'd (as the saying goes)

Because HEC failed to timely appeal the post-judgment PI Bond order, the order is subject to "direct estoppel" or issue preclusion. "Direct estoppel ... governs the preclusive effect of a litigated issue in a separate proceeding within a single suit." Though a district court maintains power to revise an order "at any time before the entry of a [final] judgment[,]" failure to appeal a final judgment "should establish a sound foundation for issue preclusion[.]" The four issue preclusion factors are easily satisfied in this case. Thus, under present circumstances, I am precluded from revisiting the decision extinguishing the bond
HEC's successful attainment of a stay pending its merits appeal does not save its position. A stay merely "halt[s] or postpon[es] some portion of [the proceeding], or ... temporarily divest[s] an order of enforceability." Once the Federal Circuit's mandate was issued, the stay lifted and the order extinguishing the bond was resurrected. At that time, HEC may have been able to appeal the decision, but it failed to do so.

Id. at 5-6 (internal citations omitted).

In case you are wondering -- I was -- the defendant was asking to collect the entire $50 million bond amount. So remember folks - PIBPITAESARC.

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