A Blog About Intellectual Property Litigation and the District of Delaware


Gotta Be Fast On Your Feet With Those Motions to Supplement

Andrew E. Russell, Oct. 9, 2024
Discovery Dispute Pennypack

Eventually we may run out of penny images for these Pennypack posts. But not yet.
Eventually we may run out of penny images for these Pennypack posts. But not yet. Sebastian Enrique, Unsplash

Yes, this is yet another Pennypack post. I can't resist. It's a tough-to-apply standard that impacts many cases (patent and otherwise). And it can sometimes seem to reward bad behavior by litigants, even—maybe especially—when applied as written.

But not this time! In Prolitec Inc. v. ScentAir Technology, LLC, C.A. No. 20-984-WCB (D. Del. Oct. 2, 2024), the patentee produced documents about a pre-priority-date sale of prior art after fact discovery closed and just five days before opening reports.

Unsurprisingly, the other side's opening expert report five days later did not include invalidity allegations about this sale.

But the …

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No-Look Suit

Nathan R. Hoeschen, Oct. 8, 2024
OCA 285

One of the hallmarks of the Hatch-Waxman Act is the "offer of confidential access," wherein the generic manufacturer must offer the NDA holder, you guessed it, confidential access to the ANDA before the deadline to file suit.

AI-Generated, displayed with permission

One of the lesser explored implications of the OCA is the effect of a patentee declining the offer and bringing suit without reviewing the actual ANDA. In particular, how does that decision effect the attorney's fees inquiry if the NDA holder is ultimately unsuccessful at trial?

This was the question Judge Goldberg addressed on Friday in Silvergate Pharms., Inc. v. Bionpharma Inc., C.A. No. 18-1962-MSG (D. Del. Oct. 4, 2024) (Mem. Op.). Bionpharma had prevailed …

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Court Awards Fees after Patentee Has No Validity Defenses in Competitor Case

Andrew E. Russell, Oct. 7, 2024
Fees Fee Awards

One of these guys forgot to come armed.
One of these guys forgot to come armed. AI-Generated, displayed with permission

Attorneys spend a lot of time threatening fee awards when dealing with an NPE, even though they can be challenging to get. So I always think it's interesting to see what kinds of behavior will support a fee award.

Last week, Judge Williams issued a memorandum order granting fees in Extremity Medical, LLC v. Nextremity Solutions, LLC, C.A. No. 22-239-GBW (D. Del.). The Court listed three bases for its fee award. First, the patentee made zero showing of any pre-suit investigation of invalidity:

[T]here is no dispute that Defendants notified Plaintiff of [prior art references] Marcus and Chandran several years prior to the date …
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How to Retrieve a Document from the Before Times (pre-PACER)

Andrew E. Russell, Oct. 4, 2024
PACER Research

I'm curious how the National Archive pulls a document from storage. I like to imagine that it involves a fork lift.
I'm curious how the National Archive pulls a document from storage. I like to imagine that it involves a fork lift. Elevate, Unsplash

I began practicing law just after the District Court's e-filing systems, CM/ECF and PACER, were implemented—so I didn't get a lot of experience with how attorneys used to manage federal dockets or handle federal filings before you could just instantly file or pull things.

But occasionally, when I'm researching something, I'll find a reference to a document that looks helpful but that was filed before PACER existed, and as such is not available in Lexis or Westlaw. Typically, my response is to look longingly at the citation, and then to continue searching until I find something …

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A Verdict Divided Cannot Stand

Nathan R. Hoeschen, Oct. 3, 2024
JMOL General Verdict

I find all of my best posts in footnotes.

They are the home seemingly idle musings about the scope of the law and arguments that might have been made in a better world.

There is a freedom in the foot.

AI-Generated, displayed with permission

Judge Wolson had a particularly striking footnote in his post-trial opinion in Med-El Elektromedizinisch Gerate GES.M.B.H. v. Adv. Bionics, LLC, C.A. No. 18-1530-JDW (D. Del. Oct. 2, 2024), which dealt with an important issue that I had not seen before in the district.

The plaintiff had gone to trial on both literal infringement and infringement under the doctrine of equivalents and for both induced and contributory infringement. The verdict form, however, did not …

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Tip: Remove CM/ECF Headers When Re-Filing Old Documents

Andrew E. Russell, Oct. 2, 2024
Litigation PACER

When re-filing things that were pulled from PACER, the Court has said that parties should remove the old CM/ECF headers:

CORRECTING ENTRY: The redacted public version of D.I. 157 at D.I. 161 has been replaced with a version that does not contain CM/ECF headers. Counsel is reminded to remove CM/ECF headers from previously-filed documents when filing.

ESCO Group LLC v. Deere & Company, C.A. No. 20-1679-WCB (D. Del. Feb. 9, 2023).

That way, when the document is later pulled from the docket, you don't get the overlapping and unreadable headers at the top.

If you don't redact them, it can end up looking something like this:

I believe it used to be possible to remove these …

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Can You Really Own A Secret?

Nathan R. Hoeschen, Oct. 1, 2024
DTSA Trade Secret Misappropriation

Short answer - yes, obviously.

Long answer - also yes, also obviously, but the timing is important.

AI-Generated, displayed with permission

The issue came to the fore in I-Mab Biopharma v. Inhibrx, Inc., C.A. No. 22-276-CJB (D. Del. Sept. 19, 2024) (Mem. Ord.). I-mAB is a DTSA action alleging the theft of about a dozen separate trade secrets. A few months back, the plaintiff went through a restructuring that resulted in several related entities now owning some or all of the trade secrets. The plaintiff then moved to add these entities as co-plaintiffs. Judge Burke denied the motion due to the potential for delay, given that the case was scheduled for trial int he near future.

Unsurprisingly …

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After Bifurcating Trial, Court Dismisses Portions of Summary Judgment and Daubert Motions That Go to Later Phase

Andrew E. Russell, Sept. 30, 2024
Summary Judgment Bifurcation

A Bifurcated Apple
AI-Generated, displayed with permission

Earlier this year Judge Hall bifurcated the upcoming patent trial in Apple Inc. v. Masimo Corporation, C.A. No. 22-1377-JLH (D. Del.), keeping Apple's patent claims, the related invalidity and unenforceability defenses, and a portion of a Walker Process anti-trust counterclaim—but moving other claims to a later trial:

ORAL ORDER: Having held a case management conference on March 20, 2024, . . . IT IS HEREBY ORDERED that a 5-day jury trial is scheduled beginning October 21, 2024, with a pretrial conference scheduled for October 4, 2024 at 11:00 AM in courtroom 6D. The remaining claims and defenses in C.A. No. 22-1377 and C.A. No. 22-1378 shall be joined and/or bifurcated for trial such …
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Court Denies Defendant's Request to Stay Patent Action After Lead Counsel's Head Injury

Andrew E. Russell, Sept. 27, 2024
IPR Stay

Best wishes and get well soon.
Niklas Ohlrogge, Unsplash

Visiting Judge Murphy decided a stay motion in a patent action yesterday, and included language that could be helpful to any patent plaintiffs who are opposing an early stay.

In Ignite Enterprise Software Solutions, LLC v. NGData, US Inc., C.A. No. 23-1209 (D. Del.), the defendant moved for a 30-day stay after its lead counsel suffered a head injury in a car accident.

The Court moved shockingly fast (for a busy Court), requesting that the plaintiff respond within two days, and then ruling on the motion the same day the plaintiff responded—just two days after the initial paper.

The Court denied the stay due to prejudice to the patentee:

Defendant seeks a 30-day …
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Patent Claims Withdrawn Just Minutes Before Trial Are Gone for Good

Andrew E. Russell, Sept. 26, 2024
JMOL Trial

"Your honor, we'd like to drop most of our claims." "Ok, but you're not picking them back up." AI-Generated, displayed with permission

True D. Del. patent litigators know that, no matter which side you're on, you're going to have to narrow your claims and defenses before trial. It's just unwise and unworkable to go into a five-day trial with 100 claims, or with 30 prior art references and hundreds (or millions) of potential obviousness combinations. There isn't time to cover it all.

That said, sometimes the parties in patent cases delay case narrowing for a long time. And while the Court will often narrowing, it doesn't do that in every case. Instead, judges sometimes take the approach that …

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