A Blog About Intellectual Property Litigation and the District of Delaware


Entries for tag: mil

JP 1992-136787

Last year, we posted about an interesting result in a Delaware patent trial, where Judge Connolly excluded a Japanese Patent Office Utility Model Publication after the defendant failed to offer sufficient evidence of public accessibility (and actually offered some evidence of inaccessibility).

As we explained at the time, the defendant had tried to avoid IPR estoppel by arguing that it could not have found the reference in a reasonable search, but then argued that the reference was sufficiently publicly accessible to be a prior art reference. The Court rejected that argument, holding that the JPO publication was not publicly accessible and couldn't be used as prior art.

We noted this was a great opportunity for the the Federal Circuit to …

Ref
Nathan Shively, Unsplash

We've written several times about the Pennypack factors—the Third Circuit standard for determining whether to exclude late-disclosed evidence. Although the standard itself is fairly lenient (focusing on prejudice and whether it can be cured), the D. Del. judges have shown an increasing willingness to exclude evidence under Pennypack in recent years.

Earlier today, for example, Judge Stark applied Pennypack to preclude four witnesses from testifying at an upcoming jury trial (two from each side). The witnesses were disclosed months after the close of fact discovery, and Judge Stark refused to force the parties to use their limited trial prep time for clean-up discovery: "there is not sufficient time in the 12 remaining days before trial …

Last week, Judge Andrews addressed a serious of motions in limine in Astrazeneca AB v. Zydus Pharms. (USA) Inc., C.A. No. 18-664-RGA (D. Del.). These rulings are often interesting; here, Judge Andrews excluded some former expert testimony as hearsay, rejecting the idea that the testimony was a party admission:

Defendant seeks to exclude testimony and evidence that relate to positions it and its experts took in relation to the patent-in-suit (as prior art) in District of New Jersey litigation involving other patents. . . . The evidence, which is described as trial transcripts, expert reports, invalidity contentions, proposed findings of fact and conclusions of law, and “support documents” (consisting altogether of about fourteen proposed exhibits) is …

Arrows on Sign
Adrià Tormo, Unsplash

In another ruling from the In Re ChanBond litigation as it approaches trial, Judge Andrews today issued an in-depth opinion granting a motion in limine to exclude reference to prior expert testimony from a related IPR proceeding, on the grounds that the testimony is hearsay.

Plaintiff sought to admit the material as former testimony under FRE 804(b)(1), because it is helpful to its infringement case. The rule requires, however, that the former testimony was offered against the parties' predecessor who had "an opportunity and similar motive to develop it."

Here, Judge Andrews found that an IPR petitioner's motive in developing expert testimony to show invalidity is different from a defendant's motive developing its non-infringement position:

I …

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. …