This is something we've talkedabout before, but the blog is always picking up new readers, so I figured it's worth revisiting for the newcomers.
Yesterday, Judge Noreika denied a stipulation to extend the page limits for the briefing on a motion to dismiss from the default 20/20/10 (opening/answering/reply) to 30/30/10:
ORAL ORDER re 16 Stipulation Regarding Motion to Dismiss - IT IS HEREBY ORDERED that the stipulation is DENIED. The Court will not extend the page limits. ORDERED by Judge Maryellen Noreika on 11/12/2024. (dlw) (Entered: 11/12/2024)
Advanced Accelerator Applications USA, Inc. v. Curium US LLC, C.A. NO. 24-1161-MN, D.I. 17 (D. Del. Nov. 12, 2024).
The local rules have long admonished parties not to "reserve material for the reply brief which should have been included in a full and fair opening brief." D. Del. LR 7.1.3(c)(2). Although the rule provides no penalty, numerous cases have held that arguments first presented in a reply are waived.
A separate line of cases, unrelated to the Local Rule, similarly hold that arguments presented solely in footnotes are forfeit.
Today's case dealt with a party who dared to secure his pants with both belt and suspenders, as my grandpa would say. Nevertheless, they found themselves undone.
Defendants in Novartis Pharms. Corp. v. MSN Pharms. Inc., C.A. No. 20-1395-RGA (D. Del. Nov. 8, 2024), moved to exclude the plaintiff's infringement expert on various grounds. One such ground was included only in a footnote in the opening brief (the "belt"). The Plaintiff responded in their answering brief, however, and Defendants expanded in the reply, devoting a page or so to the issue (the "suspenders").
The question for Judge Andrews was whether raising the issue in both briefs was sufficient to avoid a forfeiture. It was not.
Finally, in a footnote at the end of their opening brief, Defendants argue Dr. Park should be excluded from testifying because Novartis falsely claimed it did not have possession of Triclinic's glassy solid when requested by Defendants on October 6, 2023. Arguments in footnotes are forfeited. It does not matter that Novartis responded and Defendants addressed the issue more fully in their reply brief. Arguments first made in reply briefs are forfeited.
Monday is Veterans' Day, a federal holiday. Keep that in mind if you have dates calendared for Monday—they may move under FRCP 6.
Of course, if you have a hard November 11, 2024 deadline set in, for example, a scheduling order, that deadline does not move. So also be aware that CM/ECF is also scheduled to be down until 5pm on Monday:
CM/ECF 1.8.1 Update
CM/ECF WILL BE UNAVAILABLE FROM 9 A.M. ON SUNDAY, NOVEMBER 10th, . . . UNTIL 5 P.M. ON MONDAY, NOVEMBER 11th, 2024
The U.S. District Court for the District of Delaware will upgrade its CM/ECF system to version 1.8.1 starting at 9:00 AM on Sunday, November 10th 2024. Please note that CM/ECF will be unavailable, as outlined above, during the upgrade.
To the extent you have a filing due Monday, now might be a good time to discuss an extension until after the Court's 5pm deadline.
We’ll have no post on Monday, since the Court is closed and there haven’t been a lot of opinions this week - see you Tuesday!
This may seem obvious to practiced litigators, but the pretrial order is no joke. It defines the scope of the claims and defenses at trial, and omitting things from it is a very risky proposition. Be careful.
That's why parties sometimes end up with ridiculously long pretrial orders—they don't expect anyone to read them front to back, but they want to make sure nothing is waived.
We saw another example of this yesterday in In Re: Ozempic (Semaglutide) Patent Litigation, C.A. No. 22-MD-3038-CFC (D. Del.). There, the defendants intentionally omitted their obviousness-type double patenting invalidity defense from the pretrial order, in light of a recent Federal Circuit case clarifying the rules …
With the election and all, its a bit of a slow legal news day so I thought I'd give it an update and see if our second newest judge was keeping his streak alive.
In the 20 months or so since we wrote that article, Judge Williams has resolved a further 10 101 motions, bringing his total to 13. The overall breakdown is:
ChatGPT comes through again...AI-Generated, displayed with permission
At the FCBA's 2024 Bench and Bar, some of the speakers mentioned that referrals to visiting judges referrals to should be slowing. I've noticed that that seems to be correct — it feels like there have been fewer referrals to visiting judges lately.
Some basic Docket Navigator searches seem to confirm it. I found zero new referrals to visiting judges in the last three months (not counting related-case referrals). That's the longest gap we've had this year, after batches of visiting referrals in January, February, April, July, and on August 1. But Docket Navigator also says that there were even longer gaps last year, including one from January - May and another …
Before you get too excited, defendants, this case involved a scheduling order using Judge Connolly's form, which provides only a single round of infringement and invalidity contentions, and explicitly requires good cause to amend.
Most District of Delaware scheduling orders include two rounds of contentions (initial and final), with the second round typically coming around the close of fact discovery. It is unlikely to be as difficult to amend in cases like those.
Regardless, I thought this was an interesting result worthy of a post. In Cognipower LLC v. Fantasia Trading, LLC, C.A. No. 19-2293-JLH-SRF (D. Del.), the Court stayed the case …
(Eds. Note -- I was cackling at this headline for quite a while)
I tried for a while to get a public domain image of the Wicker Man, but sadly it does not seem to existAI-Generated, displayed with permission
We've got an interesting fees opinion from Judge Andrews this week, dealing with the prevailing party analysis.
Interactive Games LLC v. DraftKings, Inc. C.A. No. 19-1105-RGA (D. Del. Oct. 29, 2024), had a relatively succinct history, despite its long pendency. The plaintiff sued on several patents, the case was stayed pending settlement discussions and ultimately several IPR's. The PTAB found most of the patents invalid. Plaintiff then appealed, and the Federal Circuit affirmed the invalidity ruling. The Plaintiff then dismissed the District Court case without prejudice -- the defendant having never answered.
The defendant then moved for fees arguing that the patents were exceptionally weak. The Plaintiff countered that the defendant was not the prevailing party, since they had voluntarily dismissed their claims.
Judge Andrews, however, held that while a PTAB decision invalidating the patents might have lacked a sufficient judicial imprimatur to render defendant the prevailing party, the fact that the Federal Circuit affirmed the decisions on appeal changed the calculus:
In the case-in-suit . . . a final court decision did affect the parties' legal relationship. Plaintiff appealed the PTAB' s IPR invalidity decisions to the Federal Circuit and the Federal Circuit affirmed. By invalidating the claims in three of Plaintiffs patents through IPR proceedings, Defendant "successfully rebuffed" Plaintiffs "attempt to alter the parties' legal relationship." The Federal Circuit's affirmance of these invalidations marked Defendant's success with ''judicial imprimatur" . . . Therefore, I find that Defendant is a prevailing party.
Id. at 6 (internal citations omitted).
As often happens, the Court ultimately declined to find the case exceptional and awarded no fees. It's interesting to note however, that the Court clearly distinguished this case from others finding that the defendant was not the prevailing party when they merely prevailed at the PTAB. There is thus, some danger to appealing a PTAB ruling and giving the Federal Circuit an opportunity to grant their judicial imprimatur, and thus allowing for a fee award in an otherwise exceptional case.
AI-generated depiction of Judge Andrews putting down zombie claims for good.AI-Generated, displayed with permission
Former Chief Judge Sleet used to frequently say that "there is no such thing as the law of the district." Genentech, Inc. v. Amgen Inc., No. 17-1407-GMS, 2018 U.S. Dist. LEXIS 9544, at *8 n.3 (D. Del. Jan. 22, 2018) (cleaned up). In other words, one district court judge's ruling is not binding on another.
We saw that yesterday, when Judge Andrews held that claims dropped due to claim narrowing are dropped with prejudice, and recognized that another of our judges had previously held the opposite on similar facts.
In Exeltis USA, Inc. v. Lupin Ltd., C.A. No. 22-434-RGA (D. …
Its not often I got to throw out a reference to A Critique of Pure Reason, so this one goes out to whatever liberal arts majors find themselves reading the blog for some reason.
I spent a good deal of time trying to find an image for this, and I'm now convinced that no artist actually saw him alive, as the many depictions look nothing alike. I have chosen the one with the best cheekbones as I assume he would have wanted.Friedrich Rosmäsler, 1822, from a painting by Todd Schorr
As the aforementioned liberal artists among you may have gathered, today's post deals with the question of representative claims in the 101 analysis. In particular, to what extent can the few exemplary claims listed in the complaint stand in for the larger, inchoate, collection of claims that may ultimately be asserted when deciding a motion to dismiss.
In Redwood Techs., LLC v. Netgear Inc., C.A. No. 22-1272-GBW, D.I. 27 (Oct. 28, 2024), Judge Williams drew the hardest (most Kantian?) line on the issue that I have seen in recent years.
The operative complaint followed the common tactic of accusing the defendant's products of accusing "one or more claims" of several patents and then describing the alleged infringement of one claim per patent "for example." Id., D.I. 14 (Amended complaint).
Defendant moved to dismiss, discussing only those representative claims. Plaintiff opposed, arguing that the defendant "did not meet its burden of demonstrating representativeness," and noting that it "will be asserting additional claims of infringement." Id., D.I. 21 at 1.
Judge Williams was unpersuaded by this potential assertion of as-yet-unidentified claims and treated each of the claims referenced in the patent as representative:
The Court rejects Redwood's attempt to insert new patent claims through its opposition brief, as Redwood put forward only a skeletal argument and "did not file a motion for leave to amend [its] [Operative] Complaint." Redwood "may not amend [its] claims via [its] opposition to the motion[] to dismiss." "[T]he Court will consider only the claim[s] asserted in [Redwood's] [Operative] Complaint."
Thus, as Redwood fails to specifically identify a single, disputed claim left unaddressed by Netgear's motion, there are no "disputes over representativeness" for this Court to resolve.
Id., D.I. 21 at 5 (internal citations omitted).
Given the "skeletal" (spooky!) nature of the Redwood's briefing on this issue, it's not clear if the representativeness argument was doomed by the failure to specifically seek leave to amend, or if it could have passed muster with some additional detail. As an example, I sometimes see briefs that actually say something like "claim 39, which we definitely will be asserting, is totally different for the purposes of this analysis because it also claims a novel perpetual motion machine."
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