A Blog About Intellectual Property Litigation and the District of Delaware


Happy World IP Day!

Emily S. DiBenedetto, April 26, 2022

No really. It’s a real holiday.

While most of us may not be celebrating with cake or a gift exchange of valuable patents, copyrights, and trademarks, this is a great opportunity to reflect on the important field to which this blog is dedicated. This year’s theme was “IP and Youth: Innovating for a Better Future”. Various IP organizations including WIPO, USPTO, ChIPs, LES, and many others hosted webinar panels, shared articles, and sponsored student competitions to highlight the importance of young innovators.

This theme was a great excuse to check the record-books: did you know that Benjamin Franklin invented flippers at the age of 11? More recently, Sydney Dittman is credited with being possibly the …

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Refusal to Narrow the Number of Asserted Claims Results in Reduced Relief in Narrowing Invalidity Contentions

Emily S. DiBenedetto, April 25, 2022
Claim Narrowing Contentions

Upturned Nose
Zayn Shah, Unsplash

As we’ve said before, sufficiency of each parties’ contentions can vary a bit by judge, and holdings are difficult to research because they usually appear in discovery dispute teleconference transcripts that are not posted to the dockets.

However, we saw a written decision issued by Judge Burke last week that illuminated one of the Court’s potential approaches to a dispute over invalidity contentions. The Court proposed that, if Plaintiff would agree to narrow its claims, the Court would require defendants to reduce the number of combinations. When Plaintiffs refused, they still received relief, but it wasn’t as strong or as specific as the relief they might have gotten had they adopted the Court’s proposal.

Plaintiffs complained that Defendants’ response to a contention interrogatory was unduly vague and insufficiently fulsome. The interrogatory sought invalidity contentions under § 103 obviousness, and the response incorporated Defendants’ Joint Initial Invalidity Contentions, so the Court focused on the Initial Invalidity Contention document itself for its analysis.

The Court found that the Initial Invalidity Contentions were sufficient in most respects:

In general, they provide real detail, including significant specificity as to ...
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Defendant's Own Importation Cannot Serve as the Basis for an Inducement Claim

Andrew E. Russell, April 22, 2022
Importation Motion to Amend

Monkey inducing itself to infringe
Andre Mouton, Unsplash

In rejecting a motion to amend a complaint almost two weeks ago (while we were indisposed), Judge Andrews held that a defendant's own importation under 35 USC 271(g) cannot serve as a basis for induced infringement:

Defendant argues Plaintiffs’ proposed amendment to assert induced infringement is futile, because Plaintiffs do not plausibly allege any of the three elements required for a claim of induced infringement – direct infringement, knowledge, and specific intent. . . . I find that because Plaintiffs have not alleged any acts of direct infringement by a third party in the United States, Plaintiffs have not stated a claim of induced infringement under § 271(b). . . . Plaintiffs’ argument that their …
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Court Denies Motion to Strike Bare-Bones Infringement Contentions, Suggests Motion to Strike Later Expert Reports Instead

Andrew E. Russell, April 21, 2022
Infringement Pennypack

Bare Bones
Mathew Schwartz, Unsplash

Sufficiency of each parties' contentions is one of the most common issues in patent cases in Delaware. Both sides tend to want to know exactly what the other side plans to argue—ideally before claim construction. That way the parties can construe the terms that actually matter, and have straightforward dispute about whether the accused product and the prior art meets the claim elements.

Beyond that, both parties typically want the other side to be held to what they disclosed in their contentions. The rules generally prohibit a party from disclosing one thing and then arguing something else later, for no reason (although Third Circuit law can be remarkably soft on this point).

Having a reasonable idea …

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Judge Andrews: 25-Reference Obviousness Analysis Without Specific Combinations Is Not a Daubert Problem

Andrew E. Russell, April 20, 2022
Expert Witness Obviousness

"Pick a card, any card . . . that's our secondary obviousness reference." Aditya Chinchure, Unsplash

Judge Andrews issued a short memorandum order today denying two Daubert motions based on an obviousness analysis where an expert identified a main reference and 24 additional references, without listing specific combinations.

The analysis apparently sorted the prior art into categories:

The main point of both motions is the assertion that Dr. Lepore has not identified specific combinations of prior art for his obviousness analysis. Defendants have referred to a portion of Dr. Lepore’s report where he lists categories of references. . . . [T]he expert has one reference as the “lead compound.” The expert has three additional categories of references: (1) four that show “c-Met’s role in various Cancers,” (2) six references “related to selecting a lead compound,” and (3) fourteen references “related to modifying the lead compound.”

As the Court explained, a usual case may involve a multiple-reference "state of the art" or motivation to combine analysis, so this is not a Daubert issue:

My view is that, in the usual case, an obviousness combination requires the identification of two or sometimes three references that disclose the requisite claim elements, and (usually) additional references, which can be ...
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Chief Judge Connolly's New Form Patent-Case Scheduling Orders: Phased Trials and More

Andrew E. Russell, April 19, 2022
Markman Briefing Scheduling Order

Order
Brett Jordan, Unsplash

Yesterday, Chief Judge Connolly issued new form scheduling orders for non-Hatch Waxman patent cases.

As always, they are worth reviewing in full, but here are some of the highlights.

Phased Trials

First and foremost, in cases where infringement is alleged, the new form scheduling order defaults to a phased trial with infringement first:

26. Willfulness and Damages. Unless otherwise agreed to by the parties and the Court, the trial will be phased such that the issues of willful infringement and damages will be tried only if there is a finding of infringement.

We noted back in February that Judge Connolly had done this in one trial, and we wondered if it might become a trend. Turns …

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Here Is the New Nominee for the District of Delaware: Gregory B. Williams

Emily S. DiBenedetto, April 18, 2022
Congestion Vacant Judgship

Into Focus

Change is afoot in the District of Delaware! Last week, President Biden nominated Gregory B. Williams, a partner in Fox Rothschild LLP’s Wilmington office, to fill Judge Stark’s vacancy in the District of Delaware. (See Judge Stark’s confirmation history here.)

About the Nominee

The White House provided a helpful and succinct summary of Mr. Williams' qualifications: “Gregory B. Williams is a partner in the Wilmington, DE office of Fox Rothschild LLP. He joined the firm in 1995 as an associate and was elevated to partner in 2003. He has served as special master in complex civil cases for the District of Delaware since 2020. From 1986 to 1992, Mr. Williams served in the U.S. Army Reserve. He received his …

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Judge Connolly Issues New Standing Orders, Including Requirement to Disclose Litigation Funding

Andrew E. Russell, April 18, 2022
Standing ANDA

Standing Stones
Andreas Brunn, Unsplash

Today, Judge Connolly issued four new standing orders. These orders include:

  1. A requirement to disclose third-party litigation funding arrangements on the docket;
  2. A requirement in diversity cases to disclose the name and citizenship of every individual and corporation with a direct or indirect interest in every party;
  3. An order expanding disclosure requirements under Federal Rule of Civil Procedure 7.1 for non-governmental joint ventures, LLCs, partnerships, and LLPs;
  4. A requirement for the defendant in ANDA cases where there was a Paragraph IV certification to produce the ANDA when responding to the complaint;

The above are numbered only for reference below.

Each of these orders explicitly applies only in Chief Judge Connolly cases.

Order 1: Litigation …

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Aaaaand . . . We’re Back!

Andrew E. Russell, April 18, 2022

Typical post-trial pile of unread e-mail
Typical post-trial pile of unread e-mail Andrew E. Russell, CC BY 2.0

We’re back! Our firm survived five trials over the course of three and a half weeks, including one week where we had a separate trial in front of each of the three sitting Article III judges in Delaware, simultaneously! We’ve also learned quite a lot about trial in front of visiting Judge Wolson.

There really was no time for blogging these last few weeks. As most of our readers know, going to trial in even just one case can keep you busy—especially if you’re acting as good Delaware counsel should, doing things like helping on the merits and strategy (or even taking witnesses), drafting motions and bench …

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Closed for Trial

Andrew E. Russell, March 26, 2022
Trial Litigation

This guy knows how to go to trial
This guy knows how to go to trial Henry Hustava

Just a blog service announcement: We'll be going on a bit of a blogging hiatus for the next week or two. Our firm handled a trial last week before Judge Andrews as local counsel, and we're set for three simultaneous trials this week before Judges Connolly, Andrews, and Noreika. Then we have yet another trial the week after, before visiting Judge Wolson.

If you're adding them up, that's five trials in three weeks as local counsel! So we're up to our necks in prep work, with about a dozen visiting co-counsel and staff using our offices as trial space, and we're going to have to slow down a bit on …

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