A Blog About Intellectual Property Litigation and the District of Delaware


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"Behold, our fulsome and complete damages theory disclosure. I'm sure this won't cause us any problems down the line." Andy Bridge, Unsplash

Parties in patent cases are often tempted to provide bare-bones responses to contention interrogatories, offering just enough to preserve their ability to expand on the arguments later during expert reports. That's easier, obviously, than providing more detailed contentions, and it also maintains flexibility as discovery develops.

Plus, parties simply may not have fully developed their theories at the time contention interrogatories are due. Expert reports are when theories are typically fully fleshed out, after discovery has closed and the universe of information is set, more or less.

But there is another consideration as well, beyond preventing a …

We lawyers move things around all the time. Some due date or another falls on a vacation, an expert gets sick, a bunch of files won't load -- a thousand different minor catastrophes can occur. In Delaware, the result is almost invariably a stipulation to move the relevant dates.

WHEREAS, on the first day the waters turned to blood;
WHEREAS, on the first day the waters turned to blood; AI-Generated, displayed with permission

Typically for little interim deadlines, the Court will grant the stipulation as a matter of course. Deadlines a little closer to trial are a bit trickier. Judge Connolly, for instance, notes in his form scheduling order that "Should the parties later stipulate or otherwise request to have the [SJ and Daubert] reply brief deadline extended, the parties …

Burning Paper Boat
Amin Moshrefi, Unsplash

Discovery agreements are a powerful tool. If you promise to produce to do or not do something during discovery, the Court will typically enforce that:

Litigating parties, represented by able patent counsel, are expected to uphold the agreements they make during a case, and the Court should ordinarily (absent extreme circumstances not present there) enforce such agreements.

The Nielsen Company (US), LLC v. TVision Insights, Inc., C.A. No. 22-057-CJB, D.I. 177 (D. Del. Mar. 8, 2024).

What are the kind of "extreme circumstances" that warrant not enforcing a discovery agreement? We got a hint of that last week in In re: Entresto (Sacubitril/Valsartan) Patent Litigation, C.A. No. 20-2930-RGA, D.I. 1683 (Dec. 5, 2024). …

This train don't stop until the close of fact discovery (... unless the Court stops it)
This train don't stop until the close of fact discovery (... unless the Court stops it) Jed Dela Cruz, Unsplash

The Court issued an oral order in airSlate, Inc. v. Inkit, Inc., C.A. No. 23-1307-RGA-SRF (D. Del.) yesterday, and it's a good reminder of a general rule that frequent D. Del. practitioners already know: once discovery starts, it generally proceeds even while a Rule 12 motion is pending.

The Court's order yesterday described how the defendant in airSlate had objected to producing its source code solely on the basis that a Rule 12 motion for judgment on the pleadings was pending:

Defendant agreed to produce source code in its response to Request for Production …

This suit did not go as planned.
This suit did not go as planned. Kyriacos Georgiou, Unsplash

Judge Andrews issued an interesting opinion on opposing summary judgment motions yesterday in Takeda Pharmaceuticals U.S.A., Inc. v. Mylan Pharmaceuticals Inc., C.A. No. 19-2216-RGA (D. Del.).

The parties settled a patent infringement suit years ago in a way that permitted the defendant to nonetheless launch its drug product if the patent claims were asserted against a third party and found invalid or not infringed.

Some of the claims were asserted against a third party and held invalid or not infringed, and the defendant launched. The plaintiff disagreed that this permitted launch. It sued the defendant for breach of contract and, critically, for patent infringement.

Last year, …

Plaintiffs in the patent game tend to treat prior art references like particular unwelcome guests. There is an obvious level of affront when they arrive, tempered only by what politeness can be mustered. Once they are in the door, there are constant references to how crowded it is, how little air, how maybe we should just call it a night even though its just so much fun to see everyone.

(Eds. Note -- can you tell I'm from the midwest? I was going over this metaphor with one of the many New Yorker's I know and they seemed not to get the dynamic).

Once you finally cajole them our of the house, packed with leftovers and other bribes, it …

Some home-cooked stuffing. Apparently the photo in our Thanksgiving post was uncooked stuffing.
Some home-cooked stuffing. Apparently the photo in our Thanksgiving post was uncooked stuffing. Andrew E. Russell, displayed with permission

We're back! I hope you all had a great Thanksgiving. As we'd hoped, the Court issued some interesting decisions last week, including a denial of a motion to strike in Lindis Biotech, GmbH v. Amgen, Inc., C.A. No. 22-35-GBW (D. Del. Nov. 26, 2024).

In that case, the parties had agreed to a case narrowing schedule that required the accused infringer to cut back to 6 prior art references per patent by 14 days before the pretrial order, not including references used to show the state of the art, the knowledge of one skilled in the art, …

Dominoes
AI-Generated, displayed with permission

Both Chief Judge Connolly and Judge Williams require parties to rank their summary judgment motions. This is an effort to deter meritless summary judgment motions. Upon denying a higher-ranked motion, the Court will automatically deny lower-ranked motions as well.

In other words: You had better be careful when ranking your summary judgment motions. But it can be tricky! Do you put the one with the highest chance of success first, even if it's on an issue you don't care as much about? Or do you rank the tougher SJ motion first because it addresses a critical issue first, to ensure that the Court will at least address it?

And what if a motion is granted, but …

As we've covered in the past, stipulations are hard.

Their very simplicity can lull you into a false sense of security. Their ubiquity obscures their finer details.

(Eds. Note -- this was meant to be a haiku, but I couldn't make it work. Please prepare your own legal haiku for submission to our annual contest.)

Wei Feng, Unsplash

Judge Burke's decision in CosmoKey Solutions GmbH & Co. KG v. Duo Security, Inc., C.A. No. 18-1477-JLH-CJB (D. Del. Nov. 15, 2024) (Oral Order), deals with a stipulation that encompassed more than intended.

The case began life under the watchful gaze of Chief Judge Connolly. Like all patent cases assigned to him at the time, the scheduling order …

"Loco-Crazy Good Cookers, Inc." wins IP/DE's 2024 Best Company Name Ever award. AI-Generated, displayed with permission

Parties sometimes think that a stay pending an instituted IPR is almost a given. But while a stay is more likely than not, it's not a sure thing.

Last month we saw a even a stipulated stay pending IPR denied by visiting Judge Choe-Groves (in the time since, by the way, that denial has held firm, and the Court issued a scheduling order).

This week Judge Fallon denied a stay pending an instituted IPR in North Atlantic Imports, LLC v. Loco-Crazy Good Cookers, Inc., C.A. No. 23-999-GBW-SRF (D. Del. Nov. 19, 2024). The Court noted that there were non-patent claims …