Filing the complaint is often one of your earliest interactions with a new client. Don't mess it up!AI-Generated, displayed with permission
It's time for another in our series of knowledge base posts. This time: Filing a patent complaint in the District of Delaware.
It's honestly not all that difficult to file a complaint. But, still, when I do it, I sometimes wonder: Am I forgetting anything?
I thought I'd post a non-exhaustive checklist of items that should be included when filing a complaint, with some light commentary.
But first, a disclaimer! This is a non-exhaustive list, and it may contain errors. Consult your counsel, particularly your Delaware counsel. Do not treat this as legal advice for your particular situation. …
We've talked about how, when deciding whether a late disclosure should result in waiver, the Court applies the Third Circuits rather forgivingPennypack factors.
We've also discussed how you really ought to have a reason for a late disclosure.
On Friday, we saw another example of that in Natera, Inc. v. CareDX, C.A. No. 20-038, D.I. 392 (D. Del. Oct. 6, 2023). Magistrate Judge Burke rejected the idea that a party can just not bother to provide an explanation for its late disclosure:
ORAL ORDER: The Court, having reviewed Plaintiff's motion to strike certain [expert] opinions . . . hereby GRANTS the remaining …
Wow! This is something you don't see every day. The defendant in Truinject Corp. v Galderma S.A., C.A. No. 19-592-GBW (D. Del.) filed—and won—five motions for summary judgment.
Impressively, each of the five motions had its own grounds. This isn't an instance where one winning argument resolved five motions.
Here are the five motions:
Breach of Contract: No damages. The Court granted summary judgment that because the alleged harm was not actually caused by the breach, there can be no damages.
Trade Secret Misappropriation: No misappropriation. Plaintiff showed that misappropriation could have happened—because employees had access and worked on defendant's product—but offered no evidence that it did happen.
So much in our world is phrased in dire, and certain, terms. "No Running," "High Voltage," "Angry Birds"—
Bellini looks evil, but she wants you to know that she loves you and she is just as fluffy as she appearsMe, displayed with permission
It can be hard to differentiate between those warnings that are merely distant precautions (check engine), and those that represent an understanding of a dark and heartless fate (again, angry birds). An example may help to illustrate this point.
I give you the following passage in Judge Connolly's form scheduling order on the use of pincites:
Pinpoint citations are required in all briefing, letters and concise statements of facts. The Court will ignore any assertions of uncontroverted facts and controverted legal principles not supported by a pinpoint citation . . .
Scheduling Order [Non-Patent Case], Para. 4 (Rev. March 2, 2020)
Looking at that, one might think there was some wiggle room. One would be incorrect.
We know this courtesy of a recent teleconference in In re: Seroquel XR Antitrust Litigation, C.A. No. 20-1076-CFC (D. Del. Oct. 4, 2023) (Hearing Tr.). One of the plaintiff groups had submitted briefing in support of their motion for cert and attached 466 pages of expert reports without any pincites. The defendants filed a later complaining about the issue as well as the general attachment of entire reports and transcripts rather than exhibits.
Generally Delaware counsel are downright accommodating when it comes to granting extension requests. One common refrain is that "if we don't grant it, they'll just move, and the Court will grant it."
Often that's true—I've seen multiple successful emergency motions to extend deadlines after opposing counsel unreasonably denied an extension. Typically these seek a short extension (a few days, or sometimes 30 days for a response to a complaint) and are backed by good reasons.
Uh Oh - An Emergency Extension Motion Fails
That's why I thought it was interesting to see an "emergency" attempt at extending a deadline fail, in Speyside Medical, LLC v. Medtronic Corevalve, LLC, C.A. No. 20-361-GBW-CJB (D. Del.). …
As you may recall, the witness initially attempted to appear via teleconference, citing financial concerns and responsibilities at home and at work. Judge Connolly denied the request, and she ultimately failed to appear for the hearing. Thus began a running fine of $200 per day (that the Court is open) until she appears.
AI-Generated, displayed with permission
Shortly thereafter, Backertop moved to stay enforcement of the order pending appeal. Judge Connolly denied that motion in a short opinion today noting that success on appeal was unlikely:
I think it unlikely that Backertop and Ms. LaPray will prevail in their appeal. Indeed, were Ms. LaPray's reading of Rule 45 to be adopted by the Federal Circuit, a resident of Hawaii (which is more than 100 miles from any other federal judicial district) could form a shell LLC, give the LLC no assets except for a questionable patent, assert the patent in frivolous infringement lawsuits filed under the LLC' s name in the other 93 federal judicial districts, and have the LLC engage in fraudulent and sanctionable conduct through the course of those suits with impunity
Backertop Licensing LLC v. Canary Connect, Inc., C.A. No. 22-572-CFC, D.I. 62 at 5-6 (D. Del. Oct 3, 2023)
Given the track record of Mavexar appeals so far, this seems a fair assessment.
And so the fine continues to pick up steam. By my count, it has currently been building for 31 taxable days. for a total of $6,200 smackeroos.
I wanted to call out the interesting quote in the title, which comes from an opinion Judge Noreika issued on Friday granting-in-part post-trial motions in a patent case.
The quote is in the context of a motion for JMOL of no post-suit indirect infringement because the accused infringer didn't encourage users to infringe. The Court was very disappointed in the parties' briefing:
[T]he Court must still address Defendants’ remaining complaint as to indirect infringement. Defendants argue that there was no evidence at trial to suggest that they encourage others to infringe the ’502 and ’386 Patents, which is required for a finding of inducement liability. On this point, …
The scope of IPR estoppel is a tricky issue that courts have gone different ways on. Everyone agrees that a party cannot argue invalidity in an IPR based on a prior art product (as opposed to reference), and that IPR estoppel extends to art the petitioner "reasonably could have raised" during the IPR.
Courts have gone different ways, however, when it comes to whether a party can assert invalidity at trial based on a product that embodies a reference that was asserted or could have been asserted at an IPR. In D. Del., as we've discussed, Judge Stark held that a …
Judge Andrews appeared to break new ground in ODTP law yesterday with his post-trial opinion in Allergan USA, Inc. v. MSN Labs. Private Ltd., C.A. No. 19-1727-RGA (D. Del. Sept. 27, 2023).
AI-Generated, displayed with permission
(eds. note - I refuse to abbreviate it "Lab'ys." The legal profession has committed more than its fair share of dark linguistic sins, but if Shakespeare wasn't long dead this would have killed him. Actually, check on your favorite author to make sure they survived this edition of the bluebook).
Anyway.
The issue arose in the unusual case where a patent issued and received a term extension of a few hundred days. The patentee filed a continuation which issued a few years later. Because the continuation did not receive a term extension it actually expired before the first patent. Plaintiff (Allergan) submitted this helpful chart with the briefing:
Seriously, it's a nice chart!Allergan
Id., D.I. 428 at 4 (Joint Status Report, Plaintiffs' position)
The parties agreed the relevant claims of the two patents were not patentably distinct—the issue was, does ODTP apply in where the first-filed, and first-issued, patent is the one being invalidated?
The Federal circuit had recently answered part of that question in In re Cellect, LLC, 2023 WL 5519716, at *9 (Fed. Cir. Aug. 28, 2023), where it held that OTDP applied to patent term extensions generally. Cellect, however, did not involve ...
"Could we do it in a few days? Eh, let's stip it out by six weeks."AI-Generated
We've talked before about how, in the District of Delaware, the Court usually grants stipulated extensions of upcoming deadlines, as long as those deadlines don't impact the Court.
Today I noticed an order from last week that goes against that trend. In Mallinckrodt Pharmaceuticals Ireland Ltd. v. Airgas Therapeutics LLC, C.A. No. 22-1648-RGA-LDH (D. Del.), before Judge Andrews, the parties filed a straightforward stipulation extending the deadline to file redacted versions of a number of pleadings:
IT IS HEREBY STIPULATED AND AGREED, by and between the parties hereto, and subject to the approval of the Court that the time for …
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.
