A Blog About Intellectual Property Litigation and the District of Delaware


Entries for tag: Trial Procedure

Court Holds That Using Prior Art That Was Considered in Post-Grant Proceedings "Opens the Door" for Patentee to Put Evidence of Those Proceedings Before the Jury

Andrew E. Russell, Sept. 4, 2024
Trial Procedure Motion in Limine

When the Court says
When the Court says "unless they open the door," typically you'd want to stay far away from that door. AI-Generated, displayed with permission

There is a lot of precedent in D. Del. regarding when the parties can and can't present evidence from post-grant patent proceedings such as IPRs. Most often, the Court holds that such evidence is inadmissible or constrained, to prevent it from unduly influencing the jury. "We already won this once" can be a powerful argument.

Last week, Judge Williams issued an opinion taking the usual position as to most evidence. But the Court also held that simply asserting a prior art reference that was raised in post-grant proceedings opens the door for the patentee to introduce …

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"To Say That the Court Is Troubled by the Occurrences to Date Would Be an Extreme Understatement."

Andrew E. Russell, Aug. 2, 2024
Trial Deposition

Hmmm
AI-Generated, displayed with permission

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.

As far as I can tell, the allegations are …

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Judge Williams Bifurcates Patent Trial, Separating Willfulness, Damages, and Inducement from Direct Infringement and Invalidity

Andrew E. Russell, Dec. 17, 2022
Trial Practice Trial Procedure

We'll just handle this part first...
We'll just handle this part first... Diliara Garifullina, Unsplash

I always think it's worth paying attention to how the judges handle the presentation of evidence at trial, changes that may seem small (like bifurcation) can have a big impact on how the trial actually goes. A bifurcated trial can obviously lead to a much shorter trial, if the defendant prevails on the first phase. But even if it doesn't, bifurcation really impacts the kinds of trial themes that the plaintiff can put up, for example making it harder to paint the defendant as a bad actor from the start.

Judge Williams recognized that effect earlier this month in his order granting bifurcation of a patent trial—and suggested that restricting plaintiff from presenting those themes favors bifurcation:

The Court finds that a reduction in prejudice to BSC weighs in favor of bifurcation. [Defendant] BSC argues that [plaintiff] UT is " likely to tell a story" that UT " got an important patent and told [BSC] about their technology; [BSC] was greedy, intentionally stole the invention," and profited therefrom; and UT "got nothing." D.I. 248 at 10. That story, BSC argues, has nothing "to do with the objective question of whether the [Accused Products] meet[] all the limitations" of the Asserted Claims of the '296 patent . . . or whether the patent is invalid." Id. UT does not challenge BSC's description of UT's likely trial narrative. . . . Rather, UT argues, the need to present a piecemeal case to the jury will prejudice UT. Id.
. . . UT's description of BSC's alleged willful infringement could encourage a jury to find that BSC infringed the '296 patent for reasons unrelated to a comparison of the Accused Products to the Asserted Claims. The Court also [previously] found that "UT's evidence of post-suit willfulness is limited." . . . That finding increases the risk that UT's willfulness evidence could bias the jury's infringement and invalidity decisions. . . . When the Court weighs the risk of prejudice to BSC against the ability to mitigate that prejudice (e.g., through a jury instruction), the Court finds that the potential to reduce prejudice to BSC weighs in favor of bifurcation.

That's interesting, because (obviously) parties very often try to ...

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Judge Andrews Grants Motions in Limine Regarding Prior Proceedings and Total Revenues—Here's Why These Are Helpful Motions

Andrew E. Russell, Nov. 16, 2022
Trial Practice Trial Procedure

"Sure our damages figure sounds big, but look how big this other number is!" AI-Generated, displayed with permission

This week, Judge Andrews issued an order on the six motions in limine that the parties filed in Sprint Communications Company, L.P. v. Mediacom Communications Corp., C.A. No. 17-1736-RGA (D. Del. Nov. 14, 2022).

The order is short and to the point, and doesn't identify what the MILs relate to. But if the docket shows that there are at least two MILs here worth mentioning, if only because they come up so often.

Prior Proceedings

The defendant first moved to exclude the outcomes of multiple prior cases, as well as pending cases against co-defendants. Plaintiff responded that the prior …

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Chief Judge Connolly Bifurcates Patent Trial: Infringement First, then Invalidity, Damages, and Willfulness

Andrew E. Russell, Feb. 26, 2022
Trial Trial Procedure

Bifurcated Cake
Henry Be, Unsplash

Bifurcation into liability and damages phases used to be common, with former Judge Robinson often splitting liability and damages, at one point saying that “bifurcation is appropriate, if not necessary, in all but exceptional patent cases.” Dutch Branch of Streamserve Dev. AB v. Exstream Software, LLC, C.A. No. 08-343-SLR, 2009 U.S. Dist. LEXIS 76006, at *2 (D. Del. Aug. 26, 2009).

These days, bifurcation still happens here, but it is a bit less common than it was back then.

Earlier this month, though, Chief Judge Connolly raised bifurcation in a way I hadn't heard of, suggesting that the parties split infringement from invalidity and other issues, with jury deliberations in between:

At …
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Judge Andrews Rejects Attempt to Introduce Supplemental Expert Report and New Trial Exhibit a Week Before Trial

Andrew E. Russell, Nov. 5, 2021
Trial Trial Procedure

Talk about 11th hour...
Talk about 11th hour... Bryce Barker, Unsplash

The parties in Genentech, Inc., et al. v. Apotex Inc., C.A. No. 19-78-RGA (D. Del.) are set to start a patent bench trial on Monday relating to a method of treating a particular disease, idiopathic pulmonary fibrosis (“IPF”), using the drug pirfenidone.

At the end of last week, plaintiff tried to serve a last-minute supplemental expert report and a new trial exhibit. The report and exhibit involve a newly-released study regarding the treatment of COVID-19. Apparently, according to the defendants, plaintiffs wanted to submit the new evidence on the theory that the COVID-19 treatments may cause IPF, which may be treated using pirfenidone, thus potentially resulting in infringement.

Plaintiff's …

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A 353-Page-Long Statement of Contested Facts in a Pretrial Order Is "Ridiculous No Matter What"

Andrew E. Russell, Aug. 23, 2021
Trial LR 16.3

353? Ridiculous.
Andrew E. Russell, CC BY 2.0

Judge Andrews gave some strong guidance about the contents of pretrial orders today. District of Delaware local rule 16.3 requires that pretrial orders include a lengthy list of materials, including a "statement of the issues of fact which any party contends remain to be litigated."

These are often disputed. Parties typically file a pretrial order that sets forth each parties' version of the issues of fact, sometimes with a joint section for any issues where the parties agree. (By the way, that's why it's best for the parties to agree on a schedule for pretrial disclosures in advance of the pretrial order—to avoid having to Frankenstein a pretrial order together on the day of …

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How Many Hours of Trial Time Do You Get For a Five-Day Jury Trial? Fewer Than You Might Think

Andrew E. Russell, Aug. 6, 2021
Trial KB

Chalkboard Math
Roman Mager, Unsplash

By default, patent cases in Delaware are typically scheduled for a five-day jury trial in the initial scheduling order. Sometimes, however, it seems that parties don't give any further thought about what the actually means until they need to file a pretrial order much later in the case.

Delaware jury trials are strictly timed. Those who are less familiar with how jury trials typically go may expect that they'll have more time than they really will. A simple back-of-the-envelope calculation by someone who is not in-the-know might be:

40 hours per week / 2 sides = 20 hours per side

That would be wrong. The actual, practical number of hours per side for a five-day patent …

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Judge Stark Resolves Pretrial Disputes About Courtroom Sealing, Cross Exhibits

Jeff Castellano, Jan. 26, 2021
ANDA Trial Procedure

Somewhere between the filing of the pretrial order and the pretrial conference, Judge Stark typically issues an order resolving pretrial disputes and allocating trial time. These orders - while usually short - provide a wealth of insight into his trial practices and preferences, and (often) his views on substantive evidentiary issues. They also serve to remind litigants of longstanding trial management practices (including those codified in his form pretrial order).

On Friday, Judge Stark issued a 3-page pretrial memorandum order in a set of consolidated Hatch-Waxman ("ANDA") actions, Silvergate Pharmaceuticals, Inc. v. Bionpharma, Inc. et al., C.A. Nos. 18-1962, 19-1067, 19-678. The order contained decisions on sealing the courtroom during the bench trial, obviousness proofs, disclosure of exhibits to be used on cross examination, and others.

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