This may seem obvious to practiced litigators, but the pretrial order is no joke. It defines the scope of the claims and defenses at trial, and omitting things from it is a very risky proposition. Be careful.
That's why parties sometimes end up with ridiculously long pretrial orders—they don't expect anyone to read them front to back, but they want to make sure nothing is waived.
We saw another example of this yesterday in In Re: Ozempic (Semaglutide) Patent Litigation, C.A. No. 22-MD-3038-CFC (D. Del.). There, the defendants intentionally omitted their obviousness-type double patenting invalidity defense from the pretrial order, in light of a recent Federal Circuit case clarifying the rules …
"Your honor, we'd like to drop most of our claims." "Ok, but you're not picking them back up."AI-Generated, displayed with permission
True D. Del. patent litigators know that, no matter which side you're on, you're going to have to narrow your claims and defenses before trial. It's just unwise and unworkable to go into a five-day trial with 100 claims, or with 30 prior art references and hundreds (or millions) of potential obviousness combinations. There isn't time to cover it all.
That said, sometimes the parties in patent cases delay case narrowing for a long time. And while the Court will often narrowing, it doesn't do that in every case. Instead, judges sometimes take the approach that …
It's hornbook law that demonstratives are not evidence. Nevertheless, you'll sometimes see parties file some or all of them on the docket, if for no other reason than to explain a portion of the transcript where an expert is otherwise gesturing vaguely at a powerpoint.
AI-Generated, displayed with permission
Unfortunately, there's no rule squarely addressing when it is appropriate to lodge these demonstratives with the Court. Fortunately, Judge Hall gave us all a bit of guidance last week in Ferring Pharms. Inc. v. Finch Therapeutics Group, Inc., C.A. No. 21-1694-JLH, D.I. 494 (D. Del. Aug. 28, 2024).
In that case, both parties filed their trial demonstrative a few weeks after the verdict (via notices of lodging). Just …
There's a patent trial starting on Monday in Ferring Pharmaceuticals Inc. v. Finch Therapeutics Group, Inc., C.A. No. 21-1694-JLH (D. Del.), and filings are flying back and forth across the docket this week. The Court's order on motions in limine included this line, which piqued my interest:
To say that the Court is troubled by the occurrences to date would be an extreme understatement.
What was so troubling? It's tough to decipher exactly what is going on from the docket, which is fragmented and redacted. But it has to do with the parties' actions related to an inventor of certain of the asserted patents.
An eclipse! It's a sign! Time to restart the blog.Andrew E. Russell, displayed with permission
About a month ago we put the blog on hold for our storm of impending trials. Some of those ultimately resolved or moved, and we still have a couple coming up in the next five weeks. But, for now, we're starting the blog up again.
We have a back log of interesting things to address—starting with a post today about Judge Hall's views on summary judgment ranking and page limits. Enjoy!
"Do we want to bring this discovery dispute, or do we want to cross their corporate rep at trial? Choices, choices..."Vladislav Babienko, Unsplash
We've written before about how the Court sometimes sets up escalating obstacles for parties who are insensitive to the Court's time and bring too many discovery disputes. In that case, the Court gave the parties "homework" (writing letters to the Court) after their seventh discovery dispute.
In Apple Inc. v. Masimo Corporation, C.A. No. 22-1377-MN-JLH (D. Del.), the Court referred all pre-trial matters up until dispositive motions to Magistrate Judge Hall.
Judge Hall took action after the parties brought what looks like seven discovery disputes. The docket shows the Court's escalating response to the parties disputes:
June 1 - First teleconference
June 16 - Second teleconference
July 7 - First in-person hearing
July 14 - Second in-person hearing
August 3 - Third in-person hearing
September 1 - Fourth in-person hearing; Court warns that future disputes will be charged to trial time
September 14 - Fifth in-person hearing; Court charges the parties' trial time
Guessing from the docket, it looks like the parties brought a number of rapid-fire discovery disputes starting on June 1. For the third dispute in about a month, the Court increased the friction on the parties by forcing them to come to Delaware to argue the disputes.
That doesn't seem to have slowed them down at all. After three in-person disputes ...
The defendant moved to stay the second trial because nearly all of the patents at issue had been found invalid—or were in danger of being found invalid—during a pending re-exam proceeding. The parties finished briefing, but the Court has not yet ruled or heard oral argument on the motion to stay. …
Artist's rendition of a pretrial order printed without tabsJJ Ying, Unsplash
Oof, this one may have been painful. Last month in Victaulic Company v. ASC Engineered Solutions, LLC, C.A. No. 20-887-GBW-JLH (D. Del.), the defendant apparently asserted at least two non-infringement defenses, one based on a "groove" limitation and one based on a "radius" limitation.
The defendant asserted the groove limitation defense in response to a summary judgment motion. Then, the following series of events occurred:
December 6, 2022: The Court denies the summary judgment motion against which the defendant asserted the groove limitation defense
December 13, 2022: The parties filed their proposed pretrial order. In it, they included a joint statement of uncontested facts. …
In Prolitec Inc. v. ScentAir Technologies, LLC, C.A. No. 20-984-RGA-MPT (D. Del.), the defendant brought counterclaims asserting their own four patents, in addition to the three originally asserted by the plaintiff.
During fact discovery, the plaintiff filed an FRCP 12(c) motion for judgment on the pleadings under § 101. Defendant pushed back, arguing that the motion was untimely—both because it was filed two years into the case (i.e., it was too late), and because of "the Court’s general disfavor of multiple rounds of dispositive motions" (i.e., it was too early). D.I. 115 at 1.
The plaintiff argued that its motion was timely, as FRCP 12(c) just requires the motion to be filed …
Back in May, we wrote about an order by Chief Judge Connolly directing an ANDA plaintiff to cut back to 4 claims prior to trial, or potentially face a more difficult road for injunctive relief.
Plaintiff cut back to 6 claims, apparently dropping five patents from the case, and the bench trial proceeded.
Last month, Chief Judge Connolly issued his post-trial opinion regarding infringement and invalidity, and directed the parties to enter a proposed order. The parties ended up disputing what should happen to those dropped claims from the five dropped patents in the final judgment:
The proposals differ with respect to the disposition …
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