A Blog About Intellectual Property Litigation and the District of Delaware


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Earlier today, Judge Burke unsealed an interesting order addressing the applicability of the common-interest doctrine to communications between a generic pharmaceutical company and its API manufacturer.

No attorneys directly participated in most of the underlying communications, but the defendants argued that they shared "a common legal interest" with their API manufacturer in avoiding a lawsuit "and that their communications furthered that interest." Although Judge Burke found that this "argument has some initial, superficial appeal[,]" in that "the subject of these communications is in some sense legal in nature[,]" he concluded that any shared legal interest came too late:

when one contextualizes the communications with regard to what was happening in the relevant time period, Defendants have not met …

In response to early Section 101 motions, plaintiffs often assert that claim construction is necessary before a ruling on patent eligibility can occur. For plaintiffs looking for quick settlements and dismissals, avoiding an early ruling on Section 101 is a win. In most cases, successfully arguing that claim construction is required pushes the timeline out for resolution of Section 101 issues substantially. That is not always the case, however. Judge Stark recently ordered an "expedited Markman proceeding" on terms the plaintiff had identified during Section 101 briefing, short-circuiting the usual process and setting up a possible second round of Section 101 motions.

High Five
High Five Jonas Vincent, Unsplash

Judge Connolly put this oral order on the docket on Thursday:

ORAL ORDER: The Court has read Plaintiffs' April 7 letter . . . . The Court understood Mr. Groombridge's response to be in substance what Plaintiffs outline in their letter. The Court asked an imprecise question. But the Court had in mind what Mr. Groombridge had in mind. Mr. Groombridge has appeared before the Court on numerous occasions and the Court appreciates and respects his practice of conceding points he should concede and getting to the heart of the disputed matters before the Court. All counsel would do well to follow his lead in that regard.

Amgen Inc. v. Hospira, Inc., C.A. …

Just as Delaware gears up to resume jury trials, Judge Stark has released his post-trial opinion for his first fully remote trial of the pandemic in AO Smith Corp. v. Bradford White Corp., C.A. No. 18-412-LPS.

The opinion -- long in the manner of all post-trial opinions -- is worth a read in full. But for my money the main takeaway is how large a roll witness credibility appeared to play in the final outcome, as the difficulty in assessing these things has long been an argument against fully remote trials.

As often happens, the infringement case amounted to a battle of the experts, and there does not appear to be any dispute about who won. Somewhat unusually, the …

Compass
Jamie Street, Unsplash

Pop quiz: What's the easiest way to get your SJ motion denied in a single page? Answer: Tell the judge that a disputed fact is material to your motion.

Several of the D. Del. judges require parties to include a concise statement of material facts with their summary judgment motions. This is exactly what it sounds like: a statement of each fact that the moving party contends is (a) essential to resolve the motion and (b) undisputed.

Judge Noreika, Judge Connolly, and Magistrate Judge Hall each require a concise statement to be filed with the opening brief, as well as a responsive statement with the answering brief. Judge Noreika and Magistrate Judge Hall also require …

Despite a 2020 change in the law designed to make obtaining a preliminary injunction easier for plaintiffs in trademark cases, Judge Stark denied a trademark plaintiff's motion for preliminary injunction, finding that the defendant had effectively rebutted the statutorily-imposed presumption of irreparable harm.

Bad news for these guys perhaps.
Bad news for these guys perhaps. green insect, horror by numbers, Unsplash

In Nichino America, Inc. v. Valent U.S.A., LLC, C.A. No. 20-704-LPS, the plaintiff sought preliminary injunctive relief, arguing that the defendant's use of the Senstar mark in connection with an insecticide product was infringing its Centaur mark, also used to market insecticides. After applying the ten-factor Lapp test, Judge Stark concluded that the plaintiff had shown a likelihood of confusion and thus …

I heard today from one of the magistrate judges (with permission to pass along) that, going forward, the District of Delaware is permitting in-court mediations again, at the discretion of each individual magistrate judge and on a case-by-case basis. The expectation is that the judges will limit the number of people attending the mediations, and that virtual proceedings will remain an option. It is also expected that the change may primarily benefit local cases, as patent cases often involve attorneys or client representatives traveling to Delaware from locations that may still have travel restrictions.

Form Scheduling Order
The Honorable Maryellen Noreika

Judge Noreika updated her form scheduling order yesterday. Here are the changes:

  • Separate deadlines for fact and expert discovery cut offs. Judge Noreika's old form orders, and several other judges' form scheduling orders, set a cut off date for "all" discovery and a deadline for substantial document production. But parties often also set a separate deadline for fact discovery, so that there is a clear delineation for when fact depositions and any remaining document production need to end before expert reports occur. This resolves that issue.
  • Joint claim chart changes. Intrinsic evidence must now be submitted in an appendix rather than with the joint claim chart. This may help with the common issue that …

COVID-19
CDC / Alissa Eckert, MS; Dan Higgins, MAMS

Today, the District of Delaware formally lifted its jury trial ban:

The Standing Order RE: Criminal and Civil Jury Trial Suspension issued February 5, 2021[,] expires today, April 5, 2021. Based on current conditions and after consultation with the Court’s Reopening Committee, the Court has decided that it will not, at this time, extend the order. Whether and when any particular case will proceed to trial is left to the discretion of each individual judge of the Court.

There is a jury trial scheduled for today in JHL Pharmaceuticals, LLC v. PuraCap Laboratories, LLC, C.A. No. 18-553-MN (D. Del.), although it's not clear yet from the …

Tennis Court
Bannon Morrissy, Unsplash

On Wednesday, Judge Burke issued the following order cutting the parties off from further discovery dispute teleconferences—but not discovery disputes—after they brought their fourteenth request for discovery assistance in just over a year:

ORAL ORDER: The Court, having reviewed the parties' . . . request [for] a discovery teleconference . . . hereby notes as follows: (1) since the Court was referred this matter in February 2020 to resolve discovery/protective order disputes, this is the 14th different time that the parties have sought the Court's assistance in that regard; (2) as part of those 14 different requests for Court assistance, the parties have brought the Court a total of 31 different disputed issues to …