A Blog About Intellectual Property Litigation and the District of Delaware


Entries for tag: mil

Bridge
Jamie Street, Unsplash

Motions in limine can be kind of exciting. The motions and the rulings are typically short, and they are ordinarily filed with the pretrial order just before trial. Unlike most motions, the Court usually rules on them quickly (between the PTO and the trial), sometimes live at the pretrial conference, and the impact is felt almost immediately.

Plus, orders that result from MILs can sometimes have a huge effect on the practical course of the trial by precluding important arguments and evidence, or even by interfering with your trial themes—frequently at the last minute. So it's worth keeping in mind the kinds of things that may come up at the MIL stage.

Last week, Judge Andrews …

Lightbulb
Person Catching Light Bulb, Júnior Ferreira, Unsplash

This week, Judge Andrews dismissed a summary judgment motion on inequitable conduct.

Plaintiff argued—apparently correctly—that the defendant had never pled inequitable conduct at all. And, when the plaintiff moved for summary judgment on inequitable conduct, the defendant did not file any answering brief opposing the motion (although a defendant in a related action filed brief a brief for "all Defendants").

So why was the seemingly unopposed motion dismissed rather than granted? As explained by Judge Andrews:

I do not think I can grant summary judgment against a party on an issue that is neither raised by the pleadings nor asserted by the party in the briefing. Inequitable conduct is not an …

Stealth
Jaroslav Devia, Unsplash

Speaking of MILs, Chief Judge Stark recently denied two motions that were, "in reality, motions for summary judgment" masquerading as MILs. Xcoal Energy & Res. v. Bluestone Energy Sales Corp., C.A. No. 18-819-LPS (D. Del. Aug. 3, 2020).

The motions were framed as MILS to exclude evidence on the defendants' "fraud-based claims and defenses" and their claim for lost profits. But they actually sought "judgment on particular claims and defenses[,]" and they didn't even mention the Federal Rules of Evidence.

The judge denied the motions outright, explaining that:

“[M]otions in limine should not be used as disguised motions for summary judgment.” Brown v. Oakland County, 2015 WL 5317194 at *2 (E.D. …

The reference at issue, JP 1992-136787

Japanese patent publications are typically considered to be fairly safe prior art references, as long as you prove up authenticity and offer sufficient evidence of publication.

But it turns out that that second part—showing publication—is kind of important.

In F'real Foods LLC v. Hamilton Beach Brands, Inc., C.A. No. 16-41-CFC, Judge Connolly excluded a Japanese Patent Office Utility Model Publication on a motion in limine because the defendants failed to show that it was publicly accessible under § 102, based largely on defendants' own position in opposing IPR estoppel.

Couldn't Have Found Reference = No IPR Estoppel

The F'real defendants had previously filed an unsuccessful IPR, and plaintiff moved to exclude the reference based on IPR estoppel. …