A Blog About Intellectual Property Litigation and the District of Delaware


Entries for search: Bryson

"Remember That Time a Plaintiff Tried to Serve 23,668 RFAs?"

Andrew E. Russell, May 10, 2022
RFAs Discovery Dispute

"Our RFAs will blot out the sun!" Possessed Photography, Unsplash

I have a feeling that, when the question of "how many RFAs can we serve if there is no limit" comes up going forward, we are all going to remember this case.

In FG SRC LLC v. Xilinx, Inc., C.A. No. 20-601-WCB (D. Del.), plaintiff apparently served 23,688 RFAs on the defendant, each one requesting an admission that a document produced by the defendant was authentic.

You may be thinking "Was this all in one set of RFAs?? Did they type this all out?!?" and it appears that the answer is "yes." According to the Court, the plaintiff served a "3,604-page document entitled 'First Requests for Admission of Authenticity.'" That's 9.1 RFAs per page.

I have to imagine they used a computer script or something similar to draft these. I hope they didn't condemn a poor associate or paralegal to their office for a week to type these out.

In any case, the defendant—shockingly!—objected that having to respond to 23,668 individual RFAs was "abusive, unreasonable, and oppressive." Judge Bryson ...

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Information, Belief, Lies

Nathan R. Hoeschen, Nov. 2, 2023
Willfulness Twombly

When you think about it, pleading on the basis of "information and belief" is sort of funny. What else are you going to plead on? Hopes? Dreams? The lost souls of wayward lawyers past?

I just can't get the timing right on these Halloween posts . . .
I just can't get the timing right on these Halloween posts . . . AI-Generated, displayed with permission

In any case, its something you see all the time, and it usually goes unchallenged. Today though, Judge Bryson issued an opinion explaining the situations where such pleading is appropriate, and those where doing so is grounds for dismissal.

The test boils down to, are the facts you plead "on information and belief" uniquely within the defendant's possession, or are supported by other factual allegations (plead not on information and belief, but on immutable and unchallengeable fact known amongst the plaintiff's brood for countless generations, all hail facts, all hail allegations)?

The use of “information and belief” pleading in the complaint is consistent with the purposes previously approved by the Third Circuit and other courts. The “information and belief” allegations relate to limitations that address the process for manufacturing the accused products, information to which DSM is not privy, or details regarding the composition of Honeywell’s products that may be difficult to ascertain by testing the finished products, but which would be readily known to the manufacturer. Those allegations are therefore made in circumstances in which the factual information in question is peculiarly within the defendant’s knowledge or control. Moreover, the various other allegations that are not made on information and belief, such as the allegation that the SPECTRA Blue products exhibit characteristics substantially similar to the characteristics of the multi-filament yarns of the ’532 patent, constitute factual allegations that make DSM’s “theoretically viable claim plausible.”

DSM IP Assets, B.V. et al v. Honeywell International, Inc., C.A. No. 23-675-WCB, 10 (D. Del. Nov. 2, 2023) (Mem. Op.).

The Court also made a note that pleading willfulness on information and belief is ...

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Time Enough For Fees

Nathan R. Hoeschen, Oct. 10, 2024
Extension Stipulation

Deadline extensions are perhaps the most common of all requests to the Court. I have seen requests granted for medical reasons, conflicts with deadlines in other cases, prescheduled vacations, and the need to enact a dark ritual which can only take place when the moon fears to rise (we'll have a post about that one on the future, assuming the ritual is unsuccessful and does not result in all things returning to dust beneath the sacred ash and the profane oak).

Paul Robert, Unsplash

Today's post, however, is a tale of an extension denied. The defendant in Purdue Pharma LP v. Accord Healthcare Inc., C.A. No. 22-913-WCB, D.I. 111 (D. Del. Oct. 2, 2024) had prevailed on its obviousness defense following a bench trial and filed a timely motion for fees 14 days after the Court entered final judgment.

The plaintiff, however, apparently intended to appeal the invalidity determination and thus requested that the defendant stipulated to defer briefing on fees until after the resolution of that appeal. When the defendant refused to stipulation, plaintiff moved to defer briefing until after the appeal and requesting expedited consideration of the motion (as the clock was already ticking on its 2-weeks to file a responsive fees brief).

Unlike in the true to life examples listed at the start of the blog, the plaintiffs motion was not based in any particular conflict with client or counsel. Instead, the deferment was based on the general proposition that "the appeal may impact or otherwise refute the bases for Accord’s motion." Id., D.I. 108 at 2. The defendant filed a short opposition to the motion, noting that this logic would apply to essentially any motion for fees.

Judge Bryson denied the motion to defer the briefing in a short order:

The motion to defer briefing on Accord's motion for attorneys fees 108 is denied. The court will determine when to rule on Accord's motion for attorneys fees after the briefing is complete.

We'll keep a watch out for that fees opinion and let you know if it comes before or after the appeal.

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Stipulation, Smipulation

Nathan R. Hoeschen, June 18, 2024
Judgment

In a modern patent case -- with dozens of claims and zillions of similar accused products -- there are innumerable possible permutations of infringement and invalidity outcomes.

This can make it pretty difficult to craft a stipulation on undisputed issues.

The image generator I was using is now behind a paywall so I'm trying out new ones. Expect some more cursed illustrations like this for the next little while
The image generator I was using is now behind a paywall so I'm trying out new ones. Expect some more cursed illustrations like this for the next little while AI-Generated, displayed with permission

This was the hard lesson in Janssen Pharms, Inc. v. Tolmar, Inc., C.A. No. 21-1784-WCB, D.I. 198 (D. Del. June 13, 2024). In that ANDA case, the defendant had stipulated that "if any of claims 1–7, claim 15, and claims 17–21 (as dependent from claims …

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From Coal, Diamonds

Nathan R. Hoeschen, April 16, 2024
Stay Pending IPR Stay

Motions to stay are common as dirt, and about as interesting.

The factors are exactly what you expect them to be, and the Court has broad discretion to apply them. Most of these motions could be reduced to a checklist:

  • Is the IPR on:
    • All the patents?
    • Most?
    • Some?
    • Any!?
  • Are You competitors?
    • Like Pepsi and Coke?
    • Like Pepsi and LaCroix?
    • Like Pepsi and SPAM?
  • Is trial scheduled for:
    • Tomorrow?
    • Next Year?
    • Long after man has thrown off his corporeal form, and Pepsi is a but a bittersweet chord in the song we sing of long ago?

(Eds. Note - at this point Nate walked to the fridge and got himself the Pepsi he had been thinking about. There …

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À La Recherche Du Counterclaims Perdu

Nathan R. Hoeschen, Feb. 20, 2024
Twombly

I want you to take a deep breath and imagine yourself in the heady days of 2015. Every night you enjoy the newly released Doritos' loco taco. Every morning you practice the harlem shake. Game of Thrones has so much promise. Life is good.

This was really my peak
This was really my peak AI-Generated, displayed with permission

For the patent litigator (e.g., everyone reading this), the law is in an interesting place. Form 18 is about to be abolished, and there is a great deal of of hemming and hawing about how much detail will need to be included in a complaint for patent infringement. Yours truly even jumped on the hype train and wrote an article on it for Landslide (other than the Alice Cooper reference in the title, which I think went largely unnoticed, it bears little resemblance to the current blog).

For defendants, things were trickier still. The question of what level of detail was required for pleading the usual counterclaims of noninfringement and invalidity was even more up in the air. Several Delaware decisions even held that greater particularity was required for counterclaims than infringement claims. For instance, Judge Robinson made the following statement in dismissing invalidity counterclaims in Senju Pharm. Co. v. Apotex, Inc., 921 F. Supp. 2d 297, 302 (D. Del. 2013):

the fact that Form 18 (rather than Twombly and Iqbal) remains the standard for pleading infringement claims is an insufficient justification for deviating from Twombly and Iqbal for pleading other causes of action . . . Therefore, the court concludes that the pleading standards set forth in Twombly and Iqbal apply to counterclaims of invalidity.

Thankfully these seas ...

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The Tale of Claims 9 and 9, Part II: Court Says No, You Can't Tell the Jury That the PTAB Invalidated the Independent Claims

Andrew E. Russell, Jan. 31, 2024
Motion in Limine MIL

Shh. They're not
Shh. They're not "invalid," they're "canceled" and "in the public domain" Kristina Flour, Unsplash

Yesterday Nate wrote about Judge Bryson's opinion that a plaintiff was not bound by its prior allegation that a product infringed two claims, because plaintiff's statement deals with an issue of law, not fact.

Today, I think it's worth discussing another aspect of the same decision, where Judge Bryson addressed a motion by plaintiff to preclude the defendant from discussing the same two invalid claims, claims 9 & 9 of the two asserted patents.

The the PTAB canceled claims 9 and 9 in an IPR, and plaintiff now asserts only claims that depend on those two canceled claims. It moved to prevent defendant from …

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The Admission Disappears

Nathan R. Hoeschen, Jan. 30, 2024
Admissions

Lawyers are famously careful. We double-knot our shoes. We check the expiration date on milk, cheese, and even BACOS-brand non-bacon chunks. More than anything, we are famous for hemming and hawing and avoiding a direct response to seemingly simple questions in a transparent attempt to avoid saying something that might later be used against us.

This is a tale of one such admission that turned out alright.

So maybe don't worry so much.

DOOOOO - DO -DO -DO -DO - DA -DO -DO -DO -DO DOODLE-OOODLE DOOOO
DOOOOO - DO -DO -DO -DO - DA -DO -DO -DO -DO DOODLE-OOODLE DOOOO AI-Generated, displayed with permission

The initial complaint in Prolitec Inc. v. ScentAir Technologies, LLC, C.A. No. 20-984-WCB (D. Del. Jan. 12, 2024) (Mem. Op.) stated pretty baldly that the defendant infringed claim 9 of the patents-in-suit.

(Eds. note, for no sensible reason it was claim 9 of both patents. I spent about 15 minutes trying to figure out how best to parse that grammatically, briefly toying with "claims 9," like "attorneys general" before realizing I don't get paid for this and giving up).

There were claim charts and everything.

This is normally what you want in a complaint, really. You kind of have to accuse them of infringement after all. The difficulty is that claims the ninth (?) were both invalidated at IPR and so the plaintiff was left to assert various dependent claims. They amended the complaint accordingly, removing any reference to the now-cancelled niners (?).

When it came to trial, defendant wanted to use the earlier complaint as evidence that their own products practiced all but the few extra limitations of the dependent claims, thus bolstering their invalidity and damages cases.

Plaintiff argued that the original complaint could not be used against it because it had been superseded (I sometimes see this called "rendered a nullity" which I quite like) by the amended complaint. Accordingly, they moved in limine to prevent those statements from being used against them at trial.

Judge Bryson ...

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Clever Procedural Maneuver Fails—But Reverses SJ Loss

Andrew E. Russell, Oct. 16, 2023
FRCP 12(c)

Speaking of clever procedural manuevers, here's the
Speaking of clever procedural manuevers, here's the "fish tank" my loving wife got me when I asked for one Andrew E. Russell, displayed with permission

Judge Bryson issued an opinion today in Michael R. Cahill, Trustee of the Hunt Irrevocable Trust v. Air Medical Group Holdings, Inc., C.A. No. 21-679-WCB (D. Del. Oct. 16, 2023). In it, he describes a clever procedural maneuver that failed, but resulted in a positive outcome anyway.

The case involves an breach of contract claim affirmative claim and counter-claim. The Court granted summary judgment for the plaintiff on their affirmative claim, holding that it was time-barred under a provision of the contract that set out a time for bringing claims.

The defendant …

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A Patentee Need Not Conceive of the Full Scope of an Invention That They Reduced to Practice

Andrew E. Russell, Sept. 13, 2023
Reduction to Practice Conception

Full Scope
Patrick Hendry, Unsplash

Judge Bryson recently unsealed his opinion in Janssen Pharmaceuticals Inc. v. Tolmar, Inc., C.A. No. 21-1784-WCB (D. Del. Sept. 8, 2023), in which he grants summary judgment of no anticipation by a reference under (Pre-AIA) § 102(a).

As a reminder, pre-AIA § 102(a) covers prior art that was available "before the invention" of the patent.

Here, the plaintiff argued that it had reduced the invention to practice before the date of the prior art. The defendant responded that, sure, they reduced an embodiment to practice before the prior art, but they didn't conceive of the invention's full scope:

Tolmar does not appear to dispute that the June 2007 clinical trials practiced …
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