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 …
Lawyers, especially patent lawyers, are artists in the medium of obfuscation. Much of the job is finding the fuzzy areas at the edges of seemingly straightforward language and tugging at them to suit your needs. At best, it leads to moments of mad brilliance that Van Gogh might envy.
So it was in the case (fast becoming one of my favorites in the district) of a Markman dispute in Impossible Foods Inc. v. Motif Foodworks, Inc., C.A. No. 22-311-WCB (D. Del. Aug. 15, 2023).
Person, cow, not cow, camera, tvAI-Generated, displayed with permission
The term in question was "non-animal."
As you probably gathered from the caption, the patent covered various fake meats (Facon, Soysauge, Ham-pty promises) with "non-animal" ingredients.
Being naturally averse to spoilers, I read the opinion until I got to the disputed term, and then stopped to ask myself "what could the dispute possibly be?" before peaking into the parties' arguments. I sat there a full 10 minutes before shaking my head and giving up.
As it happens, it was more reasonable than it looks at first blush. Impossible argued for the definition I'd immediately jumped to—not from an animal (or in the parlance of lawyers "derived from a non-animal source"). Motif's position, however was that the particular ingredients had to be chemicals (here, proteins) that were "not naturally present in animals" as opposed to merely not harvested from animals in this instance.
Judge Bryson ultimately sided with Impossible for boring science and law reasons. But game recognizes game, so I felt obliged to call out this impressive little dispute. I hope you readers are as inspired as I was.
Federal Circuit Judge Bryson sits by designation in a number of D. Del. cases, but I've noticed lately that his opinions rarely hit the District Court's website, for whatever reason.
I found one such opinion today, and I thought it was worth posting about. It issued back in April 2023, but we missed it at the time since it didn't hit the website.
The opinion involves a lengthy and interesting discussion on a preliminary injunction motion in a patent case. Judge Bryson found that the patentee met almost all of the notoriously difficult factors for a preliminary injunction:
Wahoo’s motion presents a close question. Three of the preliminary injunction factors—irreparable harm, the balance of …
Early case: "No, we're not amending, why are you bugging us?" Late case: "Oh no! There was a deadline to amend?"Eric Rothermel, Unsplash
Rule 16 says that a schedule "may be modified only for good cause and with the judge’s consent." This rule comes up any time a party wants to do something after a deadline set in the scheduling order, which is one of the more common litigation issues.
Parties will often, for example, let the deadline to amend the pleadings pass by, only to later realize that they want to assert an inequitable conduct defense (defendants) or wrap in a related entity (plaintiffs).
Good cause requires diligence, and in practice parties often frame the diligence discussion …
10/25/2021: Boston Scientific Corp. v. Nevro Corp., C.A. 18-644-CFC-CJB (D. Del.): This patent jury trial is calendared to start on October 25 before Judge Connolly.
10/25/2021: CareDx, Inc. v. Natera, Inc., C.A. 19-662-CFC-CJB (D. Del.): The parties in this trademark case will begin jury trial before Judge Connolly on October 25.
Upcoming November Jury Trials
One patent case has a long-standing trial date that appears intact, but another patent case appears close to settling.
11/01/2021: Novel Drug solutions, LLC v. Harrow Health, Inc., C.A. 18-539-MN (D. Del.): Defendant proposed rescheduling the pretrial conference for an earlier date, to which the Plaintiff agreed (D.I. 368), but Judge Noreika declined the rescheduling. D.I. 369. This contract case is set to proceed for five days on November 1.
11/01/2021: Shure Incorporated v. Clearone, Inc., C.A. 19-1343-RGA-CJB (D. Del.): Judge Andrews has resolved multiple merits issues (D.I. 571; D.I. 619; D.I. 621) after adopting the Magistrate Judge’s recommendations to deny most of the parties' dispositive motions. The case still appears on track to proceed to trial. ...
We've been following the district court cases holding that a complaint itself cannotestablishknowledge of patent infringement sufficient to support a claim of indirect infringement or willfulness.
On Friday, Judge Hall jumped in, noting that judges in this district have taken views on this issue:
As many have acknowledged, courts—including courts within this district—disagree as to whether a pleading alleging post-suit inducement must allege that the defendant had the requisite knowledge prior to the filing of that particular pleading (or the lawsuit itself). I am also aware that there are courts—including in this district—that appear to hold that in the absence of pre-suit knowledge, a post-suit indirect infringement claim …
Judge Bryson unsealed a discovery dispute opinion last week in Impossible Foods Inc. v. Motif Foodworks, Inc., C.A. No. 22-311-WCB (D. Del.), addressing a motion to supplement infringement contentions after the deadline for final contentions. The patentee argued that it had good cause to supplement because it did so quickly after the accused infringer added a totally new prior art reference in their final invalidity contentions.
There are a couple of interesting things about the opinion, but I wanted to call out one in particular.
The case included a deadlines for final contentions, and then for case narrowing, with the defendant to drop to a list of 10 references. The defendant initially cut …
Maybe it's just me, but pre-trial evidentiary opinions are always fun to read. They often involve rules that don't come up in other written opinions, and all of the rulings tend to be highly impactful for trial (otherwise the parties wouldn't be spending their extremely limited pre-trial time and MILs on the issues).
We got an opinion from Judge Bryson last week on pre-trial evidentiary issues in Acceleration Bay LLC v. Activision Blizzard Inc., C.A. No. 16-453-WCB (D. Del. Apr. 28, 2024). There are a number of interesting rulings in it, but one in particular that is worth calling out involved whether a party can offer evidence of past licenses to prove damages. …
This week, Judge Bryson issued his findings of fact and conclusions of law following trial in Janssen Pharmaceuticals, Inc., v. Tolmar, Inc., C.A. No. 21-1784-WCB (D. Del. Feb. 26, 2024), and ANDA action. The opinion is long and thorough, and I thought the section on enablement was worth noting.
The patent at issue covers a "dosing regimen" for giving an anti-psychotic drug "to a psychiatric patient in need of treatment for psychotic disorder." According to the method, two loading doses of the drug are given, and then a maintenance dose is given between 21 and 38 days later (a "17-day window").
Defendant argued that the patent was not enabled, first because a person of …
This report, produced by the Court, is available on the Court's website. I’d encourage our readers to peruse the full report, but we highlight a few interesting statistics and announcements below.
IP Cases Continue to Dominate the Docket
In 2022, there was an increase in jury trials to 19 in the District of Delaware. Patent/IP cases accounted for 44% of all civil filings in the last 7 years and 43% in 2022 alone.
Nationally, patent filings decreased from 4,037 filings to 3,854. In the District of Delaware in 2022, 685 patent cases were filed, a 23.04 percent decrease from the previous year of 890. Delaware is second in the nation, after …
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