A Blog About Intellectual Property Litigation and the District of Delaware


Entries for tag: Trial

Be Careful with That Joint Statement of Uncontested Facts. You Might Not Be Able to Walk It Back

Andrew E. Russell, Jan. 16, 2023
Trial Trial Practice Pretrial Order

Artist's rendition of a pretrial order printed without tabs
Artist's rendition of a pretrial order printed without tabs JJ Ying, Unsplash

[UPDATE: Thank you to all who flagged the typo in the original title. No, the irony is not lost on me that we had a typo in the word "careful"!]

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 …
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Judge Andrews Splits Counterclaim Patents into Separate Trial

Andrew E. Russell, Dec. 21, 2022
Trial Case Dispositive Motions Bifurcation Trial Practice FRCP 12(c)

Kiwi Split in Half
engin akyurt, Unsplash

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 …

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Chief Judge Connolly Dismisses Claims on Patents Withdrawn Prior to ANDA Trial with Prejudice

Andrew E. Russell, Oct. 24, 2022
Trial Claim Narrowing Case Narrowing

"Do you think 11 patents might be more than we need? Nah" Maciej Ruminkiewicz, Unsplash

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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Court Rejects Parties' Request to Change Trial Scope After Fed. Cir. Vacates Previous Trial Result

Andrew E. Russell, Sept. 26, 2022
Trial Motion in Limine Appeal

Chart

Procedural opinions about post-appeal trials are relatively rare, at least compared to the amount of decisions on motions to dismiss or summary judgment that we see. Most cases settle long before they reach this stage. So I thought it was worth posting about how Judge Bataillon handled a new trial in C R Bard Inc. v AngioDynamics, Inc., C.A. No. 15-218-JFB-SRF (D. Del.) after the Federal Circuit vacated the result of the previous trial.

The parties in the case sought to introduce new information in the new trial, including at least one accused product that was released after the previous trial. The Court rejected that idea, holding that the new trial would be a direct repeat of …

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Judge Andrews Puts Accused Infringer on Notice that "If It Causes a Mistrial by Poor Preparation or Poor Judgment in Questioning [Certain Witnesses], It Will, at a Minimum, Have to Pay [the Patentee's] Attorney Fees"

Andrew E. Russell, Aug. 22, 2022
Expert Witness Trial Sanctions Expert Testimony Witness Preparation

Be Careful
Josh Frenette, Unsplash

In a pair of orders last week in Shopify Inc. v. Express Mobile, Inc., C.A. No. 19-439-RGA (D. Del.), Judge Andrews set out guidelines for the trial testimony of two fact witnesses, who will offer testimony at trial regarding some prior art references (among other things).

The procedural background here is surprising. The patentee moved in limine to exclude the testimony of these witnesses, and the Court addressed the motion at a pre-trial status conference. There, the Court directed that the parties depose the witnesses and that the accused infringer submit proffers of the testimony that will be offered at trial.

That a Lot of Briefing

The parties then filed a stipulation setting …

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Can You Show the Jury a 10 Minute Video of the Other Side's Expert Just Saying "I Don't Know"?

Andrew E. Russell, April 26, 2022
Trial Video Deposition

Question Marks
Véronique Debord-Lazaro, CC BY-SA 2.0

It's great that we are getting to point of having frequent jury trials again here in Delaware. Trial is the most dynamic and interesting part of the litigation process. It's where you get to address classic questions like "Can we get this admitted into evidence even though it's not on our exhibit list?", "Where was THAT in his expert report?", and "Can we show the jury this video of the other side's expert saying 'I don't know' for ten minutes straight?"

Luckily, on that last question, we now have some precedent. According to Judge Andrews last week:

I agree with First Quality that Dr. Mitton's availability does not make the deposition inadmissible. But I nevertheless …
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Closed for Trial

Andrew E. Russell, March 26, 2022
Trial Litigation IPDE

This guy knows how to go to trial
This guy knows how to go to trial Henry Hustava

Just a blog service announcement: We'll be going on a bit of a blogging hiatus for the next week or two. Our firm handled a trial last week before Judge Andrews as local counsel, and we're set for three simultaneous trials this week before Judges Connolly, Andrews, and Noreika. Then we have yet another trial the week after, before visiting Judge Wolson.

If you're adding them up, that's five trials in three weeks as local counsel! So we're up to our necks in prep work, with about a dozen visiting co-counsel and staff using our offices as trial space, and we're going to have to slow down a bit on …

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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 Bifurcation

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 point 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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Court Excludes "Cobbled Together" Damages Theory Days Before Trial; Plaintiff Wins Infringement But No Damages Award

Andrew E. Russell, Nov. 18, 2021
Trial Expert Reports Damages Pennypack

Ouch.
Ouch. Emil Kalibradov, Unsplash

Back in September we wrote about how Judge Andrews rejected an expert who relied on a 50/50 starting point to show damages in a patent case. We noted at the time that the defendant had moved to strike any follow-up theory by the plaintiff, and it wasn't clear that the Court had ruled on it before trial began.

Now we know what actually happened. Yesterday, the Court released its opinion on the motion to strike. In its opinion, the Court explained that after the plaintiff lost its damages expert, the plaintiff tried to "cobble together" a damages theory from various facts on the Friday before trial. The Court struck that new theory:

[Plaintiff] NexStep …
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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 Infringement Evidence

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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