Most of the judges in the District of Delaware have settled on page limits for summary judgment and Daubert motions in patent cases of 250 total pages: 50 pages opening, 50 pages answering, and 25 pages reply—per side.
The "per side" part is important, and it can have a significant impact on cases with multiple unrelated defendants or defendant groups.
The Court has usually resisted expanding these limits, and in many cases, has instead experimented with ways of reducing the burden on the Court. Judge Noreika, for example, has sometimesrequired parties to seek leave before filing summary judgment motions.
Goodbye, 93-page joint claim construction briefAI-Generated, displayed with permission
Judge Andrews' form scheduling order for patent cases requires a joint claim chart. In that chart, in addition to listing the constructions, the Court requires the parties to explain why the parties are seeking construction of each term:
The Joint Claim Construction Chart should include an explanation of why resolution of the dispute makes a difference.
Judge Andrews added this requirement in early 2023. I haven't seen much activity on his dockets related to it—until last week.
In Belden Canada ULC v. CommScope, Inc., C.A. No. 22-782-RGA (D. Del.), the parties filed a joint claim construction chart. The chart included 21 terms and, each time, the parties …
This week, Judge Bryson issued his findings of fact and conclusions of law following trial in Janssen Pharmaceuticals, Inc., v. Tolmar, Inc., C.A. No. 21-1784-WCB (D. Del. Feb. 26, 2024), and ANDA action. The opinion is long and thorough, and I thought the section on enablement was worth noting.
The patent at issue covers a "dosing regimen" for giving an anti-psychotic drug "to a psychiatric patient in need of treatment for psychotic disorder." According to the method, two loading doses of the drug are given, and then a maintenance dose is given between 21 and 38 days later (a "17-day window").
Defendant argued that the patent was not enabled, first because a person of …
The text of the District of Delaware Local Rules require non-pro se parties to meet-and-confer on every non-dispositive motion:
RULE 7.1.1. Statement Required to be Filed with Nondispositive Motions.
Except for civil cases involving pro se parties or motions brought by nonparties, every nondispositive motion shall be accompanied by an averment of counsel for the moving party that a reasonable effort has been made to reach agreement with the opposing party on the matters set forth in the motion. Unless otherwise ordered, failure to so aver may result in dismissal of the motion. For purposes of this Rule, “a reasonable effort” must include oral communication that involves Delaware counsel for any moving party and Delaware …
Look, I get it. We write about redactions alot. Andrew wrote about redactions yesterday. I begged him not to, but he was like "shut up, I do what I want" before threatening me with the broken end of a bottle.
Actual reenactmentAI-Generated, displayed with permission
But alas, I have lived long enough to see myself become the villain of this blog. Judge Andrews issued an opinion the other day that had some guidance on redactions that was too helpful not to share (if a bit disheartening for the budding redactors). Both parties in Regenxbio Inc. f/k/a ReGenX v. Sarepta Therapeutics, Inc., C.A. No. 20-1226, D.I. 249 (D. Del Feb 22, 2024) (Oral Order) filed timely notices of …
Once you stop groaning, you can use this image of "sealing the courtroom" to help you remember to move to seal next time.AI-Generated, displayed with permission
Most filings in the District of Delaware can be made under seal without a motion. The Court requires a motion to seal certain things, however, including hearing transcripts—and the burden on those motions can be high.
I've noticed that out-of-town counsel sometimes forgets just how involved it is to file a motion to seal. It's not a form motion that you can draft up quickly. It's a substantive filing, that also requires a meet-and-confer, and that is best supported by a client declaration.
Visiting Judge Wolson, of the Eastern District of Pennsylvania, reminded …
In Exeltis USA, Inc. v. Lupin Ltd., C.A. No. 22-434-RGA-SRF (D. Del.), plaintiff asserted infringement of claims from six patents. Back in July, 2023, Judge Andrews ordered the plaintiff to narrow its case to seven asserted claims across all of the patents prior to trial, which is set for Monday, February 26, 2024.
On Tuesday of this week, the Court issued its ruling on several pre-trial claim construction disputes. Plaintiff lost some of the disputes and, apparently, decided that it needed to stipulate to non-infringement of that claim.
With one of its seven claims out of the case, and with less than a week to go before trial, Plaintiff sought leave to re-assert one …
Goodbye, inconvenient 30(b)(6) testimonyAI-Generated, displayed with permission
FRCP 30(b)(6) allows a party to notice the deposition of a corporation or other organization on a list of topics. That organization then presents one or more designees to testify on its behalf at deposition. The designee's testimony is treated as that of the corporation.
At trial, it's not unusual for a party to want to play the 30(b)(6) deposition testimony of an opposing party, even if the designee who gave the testimony also happens to be testifying as a fact witness.
Why? Because, often times, the party got exactly what they wanted out of the 30(b)(6) witness on some topic, and if they play the video they can be assured that …
Judge Burke addressed a situation yesterday in BT Americas, Inc. v. Palo Alto Networks, Inc., C.A. No. 22-01538-CJB (D. Del.) where a defendant moved to stay pending IPR, but the patent-in-suit wasn't actually part of the IPR.
You may be thinking—huh? How did that situation come up?
The plaintiff apparently brought suit on two patents, and the defendant moved for IPRs on both. The PTAB instituted on the first one, and declined to institute on the second. When the defendant notified plaintiff of their intent to request a stay, the plaintiff immediately dismissed the first patent with prejudice—leaving only the second patent, which was not the subject of any IPR.
The defendant nonetheless charged ahead with its motion to stay, arguing that it should get a stay anyway:
A stay of the suit pending resolution of PAN’s instituted IPR petition on the ’641 patent will streamline the issues in this case, even if the ’641 patent is dismissed. . . . Regarding the ’237 patent [which is not subject to an IPR], a stay is appropriate regardless of whether the ’641 patent is dismissed because there is substantial overlap between the two Asserted Patents. Both patents share an identical specification and the claims of the ’237 patent substantially overlap with the claims of the ’641 patent. . . . Indeed, during motion to dismiss briefing, the parties and the Court treated claims 14 and 18 of the ’237 patent as representative of all asserted claims of both patents. . . . Even BT’s infringement contentions are replete with internal cross-references, repeatedly relying on the “mapping” of representative ’237 patent claims to argue infringement of the ’641 patent. . . . The PTAB’s institution decision on the ’641 patent relies on the same evidence to demonstrate a reasonable likelihood of success as the PTAB’s decision on the ’237 patent for corresponding claim limitations.
. . .
Because of this significant overlap, the PTAB’s final written decision as to the ’641 patent could dramatically simplify the case or, at the very least, would be highly instructive as to the ’237 patent. The reasoning and written record from the PTAB on the instituted IPR will be relevant to at least claim construction and invalidity of both Asserted Patents. Accordingly, a stay will remove the possibility of onerous, redundant, and potentially inconsistent rulings, and narrow the issues in this case. . . . A stay will thus conserve judicial and party resources as to validity of the Asserted Patents.
Judge Williams dealt with an interesting indefiniteness argument this week, which doesn't appear to have been previously addressed by the Federal Circuit or a Delaware Court.
The issue arose in construing the term "real-time"—which is the sort of term that frequently sees an indefiniteness challenge. The defendant in B.E. Tech., L.L.C. v. Twitter, Inc., C.A. No. 20-621-GBW (D. Del. Feb 13, 2024) (Mem. Op) made all the usual arguments that the scope of the term was unclear—did it include something happening minutes later, hours, years!?—which Judge Williams rejected citing numerous cases successfully construing "real-time."
The defendant also raised the novel (to Delaware) argument that the term, which appeared only in a dependent claim, was indefinite because it was not clear what it added to the independent claim.
The independent claim was your classic software gobbledy-gook complete with "one or more servers" and selections "based at least on information." I won't bore you with it, but the thrust was that you use cookies to send targeted ads.
The gist of the defendant's argument was that this independent claim necessarily involved "real-time" ad-service. So, a person seeing a dependent claim that added "real-time" would be confused, hence, indefiniteness.
Judge Williams disagreed, finding the claim term not indefinite:
Defendants provide no authority supporting the proposition that a Court should find a dependent claim indefinite when it claims overlapping subject matter with either an independent claim or another dependent claim. Indeed, the Court has found no authority supporting this proposition, and voluminous authority rebutting it. The Court follows this line of authority: that two claims may have the same meaning does not inherently render them indefinite. Thus, Defendants' primary argument fails as a matter of law.
Id. at 5-6 (internal citations omitted).
Although unsuccessful here, it's a neat argument that I was surprised I hadn't seen before. We'll keep you in the loop if it comes up again.
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