Here at IPDE, our posts often fall into a few distinct categories. The most common type of post is "look at this interesting opinion that issued! Here is what happened, along with some context and meta-commentary."
(The second most common is probably some variation on "look at this Pennypack decision!" or "here is yet another post about redactions"—but we'll set those aside for now).
My favorite kind of post that we do, though, are our broader discussions that cut across multiple cases or judges, that address a fundamental District of Delaware practices, or that are just helpful tips for attorneys.
You know what to do...AI-Generated, displayed with permission
Many District of Delaware scheduling orders in patent cases include deadlines for both "initial" and "final" infringement and invalidity contentions. In those cases, parties often argue that having a deadline for "final" invalidity contentions means there is no obligation to supplement in the period between initial and final contentions.
The obligation to supplement under Federal Rule of Civil Procedure 26, after all, states that it applies to Rule 26(a) disclosures, interrogatories, RFAs, and RFPs—but not explicitly to "contentions" required by a scheduling order.
I've seen the Court go both ways on this. The judges often seem willing to grant a motion to compel earlier responses, saying that early supplementation is required …
I will speak a truth that many of you have suspected. Sometimes we (well, I) pick a case just because it has a fun name. My original post today was about HQ Specialty Pharma Corp. v. Fresenius Kabi USA, LLC, C.A. No. 21-1714-MN. Honestly the case was too fact intensive to easily convert to a general interest blog post. On the other hand, it contained a great deal of discussion of the testimony of a New Jersey Pharmaceutical executive named Mr. Pizza.
"I'm cooked!"AI-Generated, displayed with permission
The whole thing ended up being just jokes and out of context slices ("Mr. Kelly . . . doubted whether Mr. Pizza 'had any knowledge of the [prior art] references'") …
I'm not sure that this is technically "bait"—much like an order from the Court is not "bait." But we'll run with it.Trophy Technology, Unsplash
I've heard certain kinds of orders from the Court be referred to as "blog bait"—things that you just know we are going to post about. A couple of topics fall into that category: Pennypack decisions, significant decisions on redactions, interesting § 101 opinions, and so on.
The common thread is that these are all things that come up a lot. They happen early in the case, before cases tend to settle or otherwise resolve. And they can have significant implications for the parties and the attorneys involved. You don't want to be the attorney …
There's not a lot of space in a discovery dispute letter to get into the real nitty gritty of the dispute. You've gotta put in the standard, say the word "Pennypack" 20 or 30 times, and work in the phrase "flies in the face of" at least once.
AI-Generated, displayed with permission
A recent opinion from Judge Burke, however, illustrates the folly of briefing disputes in this way, even if it is satisfying.
The defendant in Attentive Mobile Inc. v. Stodge Inc., C.A. No. 23-87, D.I. 400 (D. Del. Oct. 16, 2024) moved for a protective order to prevent the depositions of two employees. The opening letter apparently got quite into the weeds about the nature …
We don't often write about claim construction opinions, because they can be very fact-specific. But Judge Hall's opinion yesterday in Apple Inc. v. Masimo Corporation, C.A. No. 22-1377-JLH (D. Del.) included some generally applicable points worth noting.
Sometimes a Reservation of Rights Actually Works
There's a reason we've all seen countless discovery documents, disclosures, expert reports, and briefs that are larded up with endless reservations of rights: sometimes they work!
This is one of those times. The patentee (Apple) had filed a response to invalidity contentions regarding a design patent in an IPR. In it, Apple described the scope of its patent, but included a reservation stating that it wasn't taking claim …
Here's a scenario that can happen in a patent case: The patentee serves an opening expert report alleging infringement. Your expert responds, detailing every reason why the design documents show non-infringment. The patentee then serves a reply expert report, citing new documents that it says show infringement.
What do you do now? There are at least four answers: (1) move for leave to serve a sur-reply report to address the new docs; (2) just serve a sur-reply report, without leave, and fight the inevitable motion to strike; (3) skip the report but have the expert be prepared to discuss the new papers at deposition, and hope plaintiff asks; or (4) just plan to address the new …
"Please, dear Court, don't strike our new argument that totally prejudices the other side."Lampos Aritonang, Unsplash
It can sometimes be tough to decide whether to ask the Court permission, or to just do something. The answer can vary depending on the thing you are doing and the judge.
But certain things clearly require permission. Say, for example, offering a "supplemental" expert report with a new damages calculation almost two years after the reply expert report, and only 19 days before trial:
There is no dispute that MED-EL failed to disclose Barry Sussman’s most recent damages calculations based on survey results (set forth in Paragraph 11 of his Supplemental Expert Rebuttal Report) during the expert disclosure period. Indeed, the …
The doctrine of equivalents is often treated as the legal equivalent of going "c'mon....c'mon! its all the same."
AI-Generated, displayed with permission
It's not uncommon to see it included in infringement contentions in terms that just note that, to the extent the noodlewiggler (TM) does not literally infringe claim 38 of of the '123 patent, it's insubstantially different, and performs the same function in the same way to achieve the same result, and is lame."
Judge Andrews issued an opinion today that neatly illustrates the problem with that tactic. The defendant in Carrum Techs., LLC v. Ford Motor Comp. C.A. No. 18-1647-RGA (D. Del. Nov. 9, 2023) (Mem. Op.) moved for summary judgment on the basis of a …
Ouch. This week in MED-EL Elektromedizinische Geräte Ges.m.b.H. v. Advanced Bionics LLC, C.A. No. 18-1530-JDW (D. Del. Oct. 30, 2023), Judge Wolson addressed a motion in limine to exclude testimony from both of the accused infringer's witnesses on their prior use defense.
The accused infringer didn't offer expert testimony at all on invalidity, according to the briefing. D.I. 399 at 3. Instead, it asserted a prior use defense in its contentions, presumably intending get it in through fact witness testimony.
The patentee first moved in limine to preclude the defense due to a lack of expert testimony. But the Court held that a party can present an invalidity defense without it—and compared the motion to an improper SJ motion:
The first part of AB’s Motion In Limine #1 is a summary judgment motion in disguise. MED-EL asserts invalidity in this case. If AB had a basis to argue that the absence of expert testimony dooms that claim, then it should have moved for summary judgment on the issue. It didn’t, and it can’t use an in limine motion to dispose of MED-EL’s claim. If AB believes that the lack of expert testimony means that MED-EL cannot meet its burden, then AB can seek relief under Rule 50 at the close of MED-EL’s case at trial.
(We've talked before about the risks of bringing what should be an SJ motion as a MIL.)
In other words, offering no expert testimony could be OK. The accused infringer, however, also failed to ...
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.
