A Blog About Intellectual Property Litigation and the District of Delaware

Entries for tag: Preclusion

Sometimes Arguments Solve Nothing
Sometimes Arguments Solve Nothing Sarah Kilian, Unsplash

It's uncommon to see the Court dismiss an ANDA case before trial. The patents are usually grounded enough to avoid easy 101 issues, infringement is as likely to be conceded as disputed, and any other serious invalidity contentions are normally simply reserved for trial (none of our Delaware judges allow for SJ motions in ANDA cases without leave).

That being the case, Judge Stark's dismissal of the complaint in Almirall, LLC v. Torrent Pharmaceuticals Ltd., C.A No. 20-1373-LPS, D.I. 50 (D. Del. July 13, 2021) ("Almirall II"), via a 12(c) motion is worthy of comment merely because it dismissed an ANDA complaint on the pleadings before Markman. …

Earlier today, Judge Connolly issued a ruling precluding a defendant from pursuing its inventorship theory under 35 U.S.C. § 102(f). The ruling is notable because the request for preclusion came at trial after the defense was included in the parties' pretrial order. Nonetheless, Judge Connolly found that the circumstances justified exclusion.

Ani Kolleshi, Unsplash

Although defendant Sandoz's final contentions had raised an inventorship defense, it was focused on misjoinder as opposed to nonjoinder, Judge Connolly explained.

And although Sandoz included a nonjoinder defense in its portion of the pretrial order, Judge Connolly noted that "given the number of contested facts and issue of law Sandoz identified in the 8,629-page PTO, I would not fault Plaintiffs if they failed …

Plaintiff Estopped as Nearby District Moves to Overtake
Plaintiff Estopped as Nearby District Moves to Overtake Abed Ismail, Unsplash

Judge Noreika had a rare holding estopping a plaintiff from asserting the lone patent-in-suit patent due to collateral estoppel after trial.

The Court held a five-day bench trial in Biogen Int'l GmbH v. Amneal Pharms. LLC, C.A. No 17-823-MN in December 2019, dealing with a host on invalidity issues, including obviousness, enablement, and written description. The parties completed post-trial briefing in March 2020, and and a final opinion was thus expected in the not-too-distant future.

Unfortunately for Biogen, they also sued a different defendant, Mylan, in the Northern District of West Virginia on the same patent. That case went to trial in February 2020, on the sole …