I know which one I'd prefer.AI-Generated, displayed with permission
Because cases tend to go away rapidly over time, either through settlement or on the merits, attorneys tend to be less experienced with motions that come up later in the case, particularly things that come up after the judgment (other than post-trial motions), or even after appeal.
One example is a motion to alter or amend a judgment under FRCP 59(e). You just don't see them that often. So I thought it was worth talking about a Rule 59(e) motion that the Court addressed last week.
In The United States of America v. Gilead Sciences, Inc., C.A. No. 19-2103 (D. Del.), the plaintiff argued that the …
Judge Noreika issued an interesting order yesterday denying a § 101 motion to dismiss. According to the docket, shortly after the defendant filed its motion to dismiss—and contrary to what we found when we last looked at this—the Court directed the parties to meet-and-confer on a proposed schedule.
While the motion to dismiss was pending, the Court held a scheduling conference and issued a scheduling order. In it, the parties agreed to a real case narrowing proposal (without court intervention!), with plaintiff to initially cut back to 20 asserted claims per patent and 50 total by initial contentions, and then further cut back to 25 total just before final contentions.
Motions for attorneys' fees are generally a longshot in the district. It is, after all, especially hard to show that your case "stands out from the others."
Unless, of course you are obviously the cutest little baby ever, in which case you easily stand our from the othersNate Hoeschen, displayed with permission
Accordingly, I see a lot of these motions that reach well back into the case for evidence of vexatious conduct. One of the more common ones is dropping of asserted claims or defenses, which is generally put forward with the suggestion that those claims or defenses were necessarily meritless.
In denying a motion for fees yesterday, Judge Noreika gave her thoughts on the issue:
It is hardly uncommon that, during the course of litigation, parties make concessions or drop claims in order to focus their cases or preserve their resources. Indeed, Defendant also made concessions, dropping its invalidity counterclaims approximately two months before trial. The Court generally views such efforts as positive developments and will not penalize (either side) for streamlining the issues in an appropriate manner.
CMP Development LLC v. Amneal Pharms. LLC, C.A. No. 21-549-MN, D.I. 151 (D. Del. May 7, 2024).
For those curious, the relevant claims were dropped a few months before trial, around the time the pretrial order was filed—fairly late as these things go.
The opinion was otherwise pretty standard—noting that the issue (DOE infringement) was closer than the defendant made it sound and denying the request.
Last month we wrote about how delay is a motion killer. Procrastination is a problem most of us litigators share. But if you want your discovery motion granted, it's best to move now not later. Keep up the pressure.
We got another example of that yesterday in Tot Power Control, S.L. v. LG Electronics Inc., C.A. No. 21-1304-MN (D. Del. Apr. 23, 2024) (unsealed May 7, 2024). Tot is an opinion by Judge Fallon on several discovery motions, and two of them were denied due to delay.
First, the Court denied a request to compel plaintiff to produce communications related to valuations it received. Back in June 2023, the plaintiff had agreed …
Writing this blog, I sometimes feel like an especially jaded film critic. Having seen so much, I can no longer get a thrill from from a well-constructed plot and competent acting. I can only be excited by Croatian claymation about murderous cetaceans, or a silent black and white documentary about a cat who eats figs.
All this is that I love a novel theory, and by Jove I've got one for you today.
In Samsung Elecs. Co., Ltd. v. Technical Consumer Prods., Inc., C.A. No. 23-186-JNR (D. Del. May 2, 2024), Samsung sued both the overseas manufacturer and seller of allegedly infringing products in one action. The seller moved to sever and stay the claims against it under the "customer suit" exception, arguing that the manufacturer was the "true defendant," while its role was "merely peripheral."
This was a bit odd, because the customer suit exception normally applies to cases where the actions are proceeding in different venues:
[C]ustomer-suit exception cases “typically arise” in the context of forum-shopping, “when related patent infringement actions are pending in different jurisdictions[.]” Basically, courts have concluded that the normal first-filed priority will give way when a suit against the re-seller was the first one filed. . . .Though courts have applied the exception when the manufacturer and re-seller are defendants in the same suit, they still do so with principles of forum selection in mind. For example, the customer-suit exception would apply if it would mean staying the case as to the re-seller to then transfer the case to a different and more appropriate venue for the lawsuit against the manufacturer.
Id. at 2-3 (internal citations omitted).
Judge Ranjan denied the motion, finding that the customer-suit exception did not provide a "general exception to a lawsuit against a manufacturer and re-seller":
The circumstances of this case don’t concern dueling lawsuits or forum selection issues, as there are no separate competing lawsuits, and no Defendant has contested venue or jurisdiction or would seek transfer to a different venue. Moreover, HGC and TCP are represented by the same counsel, so the inefficiencies created by forcing a “true defendant” and an unrelated “peripheral defendant,” such as one among many customers of the “true defendant,” to litigate together are absent here. In short, HGC hasn’t proffered a reason for the Court to grant its motion that furthers the spirit of the customer-suit exception.
Id. at 3.
Well it was a nice try anyway. The whole opinion is worth a read and goes into greater depth on the efficiencies that might be gained or lost by severance in similar situations.
"Our data is still data, much like this car is technically still a car."Robert Bagramov, Unsplash
On Friday, the Court issued an opinion rejecting a Daubert motion where the expert relied on third-party data to calculate damages, even though arguably better data was available from the parties.
I don't think there is anything particularly surprising about this ruling, but it's concisely put and a good reminder of a basic fact of expert reports: expert's don't have to use the best data, they only have to have "good grounds":
Defendants do not challenge the methodology that [plaintiff's expert] Ms. Bennis employs, but rather assert that the bases of that methodology are so far removed from the case as to …
We post often about how the Court handles Markman, and how much leeway the judges will give parties in seeking to construe terms (hint: it's usually10termsorless—and, these days, that's the total number, not the 10 terms per patent of old.).
This week, after parties in a case before Judge Hall sought construction of 18 terms, the Court vacated the Markman hearing and briefing schedule, and deferred all construction to the case dispositive motions stage (seemingly without additional pages):
ORAL ORDER: The parties have submitted a joint claim chart (D.I. 105 ) with 18 terms in dispute including, for example, "calculate" and "random." Defendants contend that 9 of the 18 disputed …
As we've mentioned previously, it has been Judge Andrews' practice for the past couple years to summarily reject filings that seal exhibits in their entirety, with an order like the following:
The redacted filings (D.I. 453 , 454 , and 458 ) are REJECTED because parts of them are redacted in their 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 …
For attorneys who practice in D. Del., Judge Connolly's opinion yesterday in Pharmacyclics LLC v. Alvogen Pine Brook LLC, C.A. No. 19-434-CFC (D. Del. Apr. 30, 2024) is a real page turner, and well worth reading. If you want to avoid spoilers, go read it now! It's attached below, and it's only 11 pages.
Spoilers below:
It's rare for a judge to conclude that either side—let alone both—misled the Court and litigated vexatiously. But that's just what Judge Connolly found here, after the plaintiff moved for fees under 35 U.S.C. § 285.
In holding that the defendants litigated vexatiously, the Court offered two primary examples of their misdeeds. The first relates to unsupportable allegations …
Working in patent law for as long as I have, I've developed a fair collection of dictionaries I can turn to when I'm working on a Markman brief and require a bit of support.
(Eds. Note - It's also useful for playing especially cutthroat games of scrabble!)
You can tell whoever took this picture has never actually played scrabble.Brett Jordan, Unsplash
Perusing these tomes has given me an appreciation for the subtle art of the dictionary and the intense (bordering on worrisome) logophilia of those who create them. I am a particular fan of the OED's practice of including quotations featuring the usage of the word, beginning with the first extant, and showing its varying usages throughout history.
(Eds. Note—I swear, I'm not as lame as this post makes me sound. I just think writing a dictionary would be fun . . . .)
The lesson of todays case, Astellas Pharma Inc. v. Lupin Ltd., C.A. No. 23-819-JFB-CJB, D.I. 200 (D. Del. Apr. 19, 2024) (R&R), is that such artistry is best left for the dictionaries.
The patent in Astellas required treatment with a controlled release formulation "such that the treating is with a reduced food effect." The defendant (opposing a request for preliminary injunction) argued that "reduced" food effect was an indefinite term of degree. In support they pointed to a passage in the specification that seemed to provide several possible definitions for "reduced":
The wording “the effects by food are reduced” as used herein means, for example, a reduction by 10% or more, a reduction by 20% or more in another embodiment, and a reduction by 30% or more in still another embodiment, in comparison with Cmax of a conventional formulation. Alternatively, the term means, for example, a reduction of 10% or more with respect to the rates of decrease of Cmax and AUC in administration after food intake, in comparison with Cmax and AUC in administration in the fasted 15 state, a reduction of 20% or more in another embodiment, and a reduction of 30% or more in still another embodiment.
Astellas at 14 (quoting '451 patent, col. 7:57-67)
Judge Burke found this inconsistency persuasive, noting that ...
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