Ouch. In Nivagen Pharmaceuticals, Inc. v. Amneal Pharmaceuticals Inc., C.A. No. 24-846-GBW (D. Del.), the patentee plaintiff filed suit to stop a competitor from launching a drug that it says would infringe its patents, after the competitor received FDA approval.
(Because this was not an ANDA, there was no automatic stay.)
The plaintiff filed a TRO motion on August 13, shortly after its complaint. For at least two of the …
If you've spent way too much time on the internet lately, you'll likely have seen way too many memes about how kids today don't understand the order of operations. The typical format is some bookface (tm) post along the lines of:
999,999 out of 1,000,000 people get this wrong:
3 + 4(3+2) - 2 X 3 = ?
And then there's someone confidently giving the wrong answer.
Of course, the correct answer can only be arrived at by following the prescribed order of operations. This same concept comes up quite often in civil procedure, but the application is often less straightforward than good old …
Federal Circuit Judge Bryson sits by designation in a number of D. Del. cases, but I've noticed lately that his opinions rarely hit the District Court's website, for whatever reason.
I found one such opinion today, and I thought it was worth posting about. It issued back in April 2023, but we missed it at the time since it didn't hit the website.
The opinion involves a lengthy and interesting discussion on a preliminary injunction motion in a patent case. Judge Bryson found that the patentee met almost all of the notoriously difficult factors for a preliminary injunction:
Wahoo’s motion presents a close question. Three of the preliminary injunction factors—irreparable harm, the balance of …
Judge Williams ruled on a preliminary judgment motion yesterday in Cirba Inc. v. VMWare, Inc., C.A. No. 19-742-GBW (D. Del. Mar. 9, 2023). In that case, the plaintiff had originally gone to trial back in 2020, and won a $237 million jury verdict, plus a jury finding of willful infringement. Id., D.I. 550 at 6.
The Court previously vacated that win, however, because it turns out that one of the plaintiffs, Cirba Inc., had assigned all rights in the patent at issue to another entity, Cirba IP. The Court held that the re-assignment meant that Cirba Inc. lacked standing such that it should not have been part of the trial, and that including Cirba Inc. in the trial impacted the arguments enough to warrant a new trial. Id. at D.I. 752, 946.
Yesterday, the Court addressed plaintiff's motion for a preliminary injunction pending the new trial. It looks like it was an easy decision for the Court, because plaintiff relied entirely on the previous trial win to show a likelihood of success—despite the fact that the Court had granted a new trial:
Rather than brief why it will likely prove infringement, Cirba summarily states that it "is likely to succeed on the merits of its patent infringement claim because it already has," referring to the vacated verdict from the first trial. . . . This Court, however, granted VMware's motion for a new trial. . . . "[I]t is quite clear, that the order granting the new trial has the effect of vacating the former judgment, and to render it null and void, and the parties are left in the same situation as if no trial had ever taken place in the cause." United States v. Ayres, 76 U.S. 608, 610 (1869). Thus, Cirba has made no "clear showing" that it will likely prove infringement.
It's not hard to see what plaintiff was thinking here. On the surface, the Court ...
Bay Materials, LLC v. 3M Company, C.A. No. 21-1610-RGA (D. Del.) is a competitor patent infringement case where a smaller company is trying to prevent a larger competitor—3M—from allegedly copying its "flagship product," a "multilayer polymer sheet material" called "Zendura™ FLX."
The plaintiff moved for a preliminary injunction immediately upon filing the case, and the parties filed a stipulation agreeing to a discovery and briefing schedule. The parties disputed whether the defendant should be able to take an FRCP 30(b)(6) deposition of the plaintiff as part of the preliminary injunction discovery.
Defendant sought the 15-topic FRCP 30(b)(6) deposition to prevent plaintiffs' witnesses from "claim[ing] a lack of knowledge about relevant topics." Plaintiff argued that the notice was …
We wrote last week about an accused infringer's attempt to secure a TRO to force the patentee to undo their efforts to get the infringer's product de-listed from Amazon.
Judge Stark swiftly ruled on the TRO, ultimately denying it for failure to show a likelihood of success on the merits:
ORAL ORDER: Having considered all the briefing and other relevant materials . . . and having heard short oral argument yesterday, IT IS HEREBY ORDERED that [accused infringer] EIS's motion for a temporary restraining order and preliminary injunction (D.I. 139) is DENIED. EIS has not shown a likelihood of success on the merits. EIS's noninfringement argument (D.I. 140 at 7−9) turns on construction of the …
Here's one I haven't seen before. In EIS, Inc. v. Intihealth GER GmbH, C.A. No. 19-1227-LPS (D. Del.), the counterclaim-defendant filed a motion for a TRO to force the patentee defendant to withdraw infringement notices it provided to Amazon.com regarding the counterclaim-defendant's products, and to force them to request that Amazon restore the product's ranking and reviews on the site:
Plaintiff EIS Inc. (“EIS”) respectfully moves the Court to grant a temporary restraining order to enjoin Defendants, requiring them to withdraw their patent infringement notice(s) to Amazon that reference EIS’s “Satisfyer” products, and ordering that the withdrawal shall request that Amazon restore EIS’s product listings with the same rankings and customer reviews …
Preliminary injunction motions are—in most cases—filed before substantial discovery has occurred. Nonetheless, a plaintiff seeking a preliminary injunction must support its motion (including both its assertion that it is likely to succeed on the merits an its assertion that it will be irreparably harmed absent an injunction) with evidence.
In Vertigo Media, Inc. v. Earbuds Inc., C.A. No. 21-120-MN, a patent case involving mobile phone apps that permit users "to send music that is simultaneously synchronized with the audience’s individual music streaming platform (Spotify, Apple Music, etc.) and played from audience members’ devices," Judge Noreika recently denied a preliminary injunction motion because plaintiffs had provided "scant" evidence of irreparable harm, and had likewise failed to substantiate their patent infringement arguments.
The Judge first rejected plaintiffs' argument that they had shown irreparable harm as a result of price erosion:
Plaintiffs have offered no concrete evidence of price erosion, let alone evidence that damage caused by any such price erosion could not be quantified. Instead, Plaintiffs allege “complete price erosion” because Defendant markets its products for free. But Plaintiffs do not offer any evidence suggesting that they were planning to offer their product as a paid service or that the price has eroded at all.
Plaintiffs did present evidence that they had unsuccessfully contacted competitors with offers to license rights to their technology, but ...
Oral argument is never guaranteed in D. Del. This means you need to be careful in paring back your briefs—anything that ends up on the cutting room floor might never see the light of day.
Case in point: On Friday, Judge Stark issued an order denying a motion for a preliminary injunction in a competitor case (seeking to require the defendant to withdraw several pending IPR petitions). Both sides requested oral argument, and the plaintiff requested an expedited hearing.
Instead of holding argument, Judge Stark summarily denied the motion on the papers. In a single paragraph, he held that the plaintiff "failed to persuade the Court" on any of the preliminary injunction factors, and noted that a full …
In Reputation.com, Inc. v. Birdeye, Inc., C.A. No. 21-129-LPS (D. Del.), the plaintiff moved for a preliminary injunction.
Judge Stark referred the PI motion to Judge Burke, who held an initial status conference and set a truncated schedule for PI discovery. The scheduling order set deadlines for PI discovery and supplemental briefing to be completed within 4 months.
Shortly after the PI motion, defendant moved to dismiss on § 101 grounds; in response, the plaintiff amended the complaint.
After the amendment, the Court issued an oral order sua sponte denying the motion to dismiss as moot—a common practice among some D. Del. judges (these orders helpfully make explicit that the pending motion …
