We've talked a lot lately about efforts by some of the D. Del. judges to push back against over-redaction of sealed filings. In particular, Judge Andrews has recently made clear that parties must not redact non-confidential information in exhibits—e.g., the parties must make line-by-line redactions instead of just redacting exhibits in their entirety. This increases public access but, obviously, is less convenient for parties and counsel.
Last week, visiting Judge Goldberg addressed whether a third party seeking to seal information was required to make similar line-by-line redactions:
The settlement agreements also contain several non-financial terms, such as the names and addresses of the corporate entities subject to the agreement, definitions, notifications, and general provisions governing confidentiality, assignment, choice of …
I find nothing more pleasing than when the parties dispute the test to be applied. Facts are always messy and disputed, but an argument about the proper test is almost always elegant. Truly it is a beauty fit for a post.
Pictured, refinementAI-Generated, displayed with permission
The particular test at issue in Azurity Pharms., Inc. v. Bionpharma Inc., C.A. No 21-1286-MSG (D. Del. Jan. 6, 2023) (Mem. Op.) whether new patent claims were the “same cause of action” for the purposes of claim preclusion.
The plaintiff argued that the well-worn rule that claim preclusion would apply to later patent claims if "the scope of the asserted patent claims in the two suits is essentially the same." Defendant, however, offered the novel argument that "two patent claims are 'essentially the same' if the second claim would have been obvious to one skilled in the art with knowledge of the first claim."
Judge Goldberg described apparent chain of reasoning thusly:
The parties’ divergent positions stem from the following sentence in the Federal Circuit’s SimpleAir decision: “In applying [the claim preclusion] standard to the particular context here, we conclude that claims which are patentably indistinct are essentially the same.” . . The underlined term “patentably indistinct” is also used in the doctrine of obviousness-type double patenting, where it means that “the [later] claims are obvious over the [earlier] claims.” . . . Bionpharma argues that by using ...
Today, we analyze the District of Delaware's propensity to grant stays pending IPR decisions, as compared to the Western District of Texas. Here are the big takeaways:
Prior to IPR institution, motions to stay are almost always denied in D. Del.;
Judge Albright of W.D. Tex. has denied 40% of motions (i.e. two motions) to stay pending instituted IPRs, but there is not much data available yet;
D. Del. has denied about 28% of motions (i.e. 16 out of 58) to stay pending instituted IPRs in the last four years;
D. Del. receives far more motions to stay pending IPR than W.D. Tex., and grants them just over half the time (~60% in the last 4 years, …
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 …
Over the last couple weeks, I've been tasked with going through the pile of resumes the firm received for various OCI's. Presented with a spreadsheet and 3,000 page pdf of resumes and related ephemera, I diligently set to work ranking the applicants with helpful notes for a second round of review.
At the start of the day, this usually looked something like:
Tier 1, obviously read Plain English For Lawyers and had good grasp of more difficult bluebooking rules, vacationed in Rehoboth as a youth, Likes crabs.
Inevitably, though, as the day wore on, my blood sugar would slowly sink until they looked more like:
Tier 1000, name rhymes with fart, hard pass
This was usually my cue to stop and revise my last couple entries the next day.
A Tale of Rising Spirits
During law school my wife and I would frequently kill a couple hours on a weekend going to tastings at the 100 or so wineries around Ithaca that ranged from "pretty good" to "proof that karma is real and that you were a mosquito in a past life."
One of the rules of a tasting trip is to spend your money fast and early. The farther into the trip you get, the looser the standards. We forgot this rule one summer—returning for a visit after several years—and set out for a 10 winery tour with high spirits.
At the 8th winery, I smelled my glass, thought for a moment, and passed it to my wife.
"what does this smell like to you?"
She sniffed and grimaced, responding, "cat pee?"
"Exactly," I said. "It's not bad otherwise though."
We bought a case, which sits in my basement to this day "aging."
I bring this up not (only) to pad the post, but instead to ask if either phenomena can be observed in the Court. To put a finer point on it—is there some correlation between how many times a given judge has decided a motion, and how likely they are to grant it?
I don't ask this question in a vacuum. The Court's recent round of referrals to visiting judges have caused litigants to consider whether they might be better off with a judge sitting in one of the busiest patent courts in the nation, or a visiting judge with a less extensive track record in patent matters (generally speaking, as you'll see below several of the visiting judges have a huge number of prior patent cases). Naturally, there is some value in having more data points on a judge regardless of any substantive effect, but one wonders: am I better off posing my motion to a judge who's seen the like 1,000 times, or 10?
The methodology here was simple. Pick a fairly common issue (I chose 101 motions) and chart ...
The Federal Judicial Center patent video. I find it exciting to watch, for a moment, because it reminds me the start of a jury trial...Federal Judicial Center
Every once in a while, parties will offer a "patent law expert" with opinions about patent office proceedings, such as patent prosecution. Often, smart opposing counsel will move to exclude that testimony, and it's not unusual for the Court to grant those motions.
A decision last week reminded of this issue. Late last week, Judge Burke granted a motion to preclude some expert testimony about patent prosecution, and excluded expert testimony regarding the patent examiner and plaintiffs' state of mind:
ORAL ORDER: The Court, having reviewed the portion of Plaintiffs' Daubert motion …
If you're invested enough in Delaware litigation to be reading this blog, you will be aware that Judge Stark is slated to leave us soon, and the district has set forth some guidance on what will happen to his cases when he departs. The Court has been reassigning Judge Stark's cases in batches since the beginning of February, and I have arbitrarily decided (because its Friday) that today we have enough data to do a quick rundown of where the cases are going.
As of today, the Court has transferred a mere 26 of Judge Stark's patent cases (counting related cases as a single case),whichhave been distributed as follows:
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.
