A Blog About Intellectual Property Litigation and the District of Delaware

Entries for tag: 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.

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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Plaintiff argued that the original complaint could not be used against it because it had been superseded (I sometimes see this called "rendered a nullity" which I quite like) by the amended complaint.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 ...

Judge Andrews issued an interesting opinion last week, in another case that breaks new ground on reconsideration. The (extremely) abridged and expurgated procedural history in MirTech, Inc. et al v. AgroFresh, Inc., C.A. No. 20-1170-RGA (D. Del. June 14, 2023) (Mem. Op.) is as follows:

  • Agrofresh moved for summary judgment on one of its counterclaims alleging breach of a settlement agreement requiring the plaintiffs to assign them several foreign patent applications
  • The plaintiffs responded by arguing that Agrofresh had actually dropped most of these claims. In support, they cited an RFA objection where Agrofresh argued that "[n]o claim or defense at issue in this lawsuit . . . relates to [the allegedly dropped applications]."
  • The Court denied …