A Blog About Intellectual Property Litigation and the District of Delaware


DED
United States District Court for the District of Delaware

Last week, Judge Andrews addressed a serious of motions in limine in Astrazeneca AB v. Zydus Pharms. (USA) Inc., C.A. No. 18-664-RGA (D. Del.). These rulings are often interesting; here, Judge Andrews excluded some former expert testimony as hearsay, rejecting the idea that the testimony was a party admission:

Defendant seeks to exclude testimony and evidence that relate to positions it and its experts took in relation to the patent-in-suit (as prior art) in District of New Jersey litigation involving other patents. . . . The evidence, which is described as trial transcripts, expert reports, invalidity contentions, proposed findings of fact and conclusions of law, and “support documents” (consisting altogether of about fourteen proposed exhibits) is …

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Construction site birds, 贝莉儿 DANIST, Unsplash

Late last summer, we posted about an interesting order from Judge Noreika rejecting the parties' claim construction chart for including too many terms. As Judge Noreika released a similar order just last week, I though it might be interesting to examine how firm the 10-term limit has been in the months since that first order.

The answer is "very." in the 20-some Markman orders Judge Noreika has issued since that first one, she has never once construed more than 10 terms. 4 times, she has rejected a claim construction chart for including more than 10 (14, 13, 13, and 17 terms were included in those rejected charts). In each case, she has …

We wrote previously about Judge Andrews' rejection of a proposed stipulation "that dismisses three patents without prejudice so the other two can be appealed," which he said was "just allowing for what is essentially an interlocutory appeal." At that time, he asked the parties to "submit something, jointly or separately, . . . explaining why I should approve the stipulation as is, or, if the other three patents are just fluff, why the three shouldn’t be dismissed with prejudice."

The parties in Malvern Panalytical, Inc. v. TA Instruments-Waters, LLC, C.A. No. 19-2157-RGA took Judge Andrews up on his invitation: Both sides submitted letters in support of their stipulation and proposed judgment, but yesterday Judge Andrews confirmed his earlier view that the proposed judgment was an impermissible bid for an interlocutory appeal, and he declined to enter it.

As we've mentioned, Judge Connolly uses a different system of patent contentions than the other District of Delaware judges. The other judges generally use the system set forth in the Default Standard, while Judge Connolly's approach is modeled after the more restrictive method used in the Northern District of California.

Because he uses a unique system, parties often wonder just how much (or how little) is needed to offer sufficient contentions in Judge Connolly's view.

Judge Connolly offered some insight on that point today, when he overruled a patentee's objections to an accused infringer's invalidity contentions. Here is one of the contentions at issue:

Claims 1, 2, and 4 of the ’489 patent are invalid under 35 U.S.C. § …

It doesn't happen all that often, but remember that under FRCP 72, a party can object to a non-dispositive order by a magistrate judge:

(a) NONDISPOSITIVE MATTERS. . . . A party may serve and file objections to the order within 14 days after being served with a copy. . . . The district judge in the case must consider timely objections and modify or set aside any part of the order that is clearly erroneous or is contrary to law.

Parties sometimes seem to forget this, because unlike with Report and Recommendations on dispositive matters, the magistrate judges do not typically flag the 14-day objections period in their orders.

Fallen ice cream
Sarah Kilian, Unsplash

And, sometimes, it works out. In 2019, for example, Judge Noreika sustained an objection to one of the magistrate judge's common interest doctrine determinations, reversing an order to compel certain common interest materials. See AgroFresh Inc. v. Essentiv LLC, No. 16-662 (MN), 2019 U.S. Dist. LEXIS 172423, at *13 (D. Del. Oct. 4, 2019).

All of that said, other times, it does not work out well. Today Judge Connolly denied such an objection before the other side had even filed a responsive brief ...

Judge Andrews today released a claim construction regarding several computer bag claims. Six of the claims at issue included elements regarding orientation of the opening in a computer bag:

“[pouch] opening[s] [is/are] . . . oriented in a direction substantially parallel to the planar surface”

U.S. Pat. No. 8,567,578
U.S. Pat. No. 8,567,578 U.S. Pat. No. 8,567,578

He found the claims indefinite because a POSITA would not understand the "orientation" of a bag opening, and the specification and prosecution history offered no hints:

At oral argument, [defendant] Victorinox contended that it is impossible to choose between two plausible views as to how to identify the orientation of the pouch opening; the “planar view” articulated by Victorinox and the direction pointing out of the pouch …

In a new standing order today, Judge Connolly announced a new procedure for SJ motions in patent cases. Going forward, he will require parties in all patent cases (current and future) to rank their summary judgment motions, and if any motion is denied, he will generally deny all lower-ranked motions as well:

1. A party that files more than one summary judgment motion shall number each motion to make clear the order the party wishes the Court to consider the motions in question. The first motion the party wishes the Court to consider shall be designated #1, the second motion shall be designated #2, and so on.
2. The Court will review the party’s summary judgment motions in the …

Pixelated Game Over screen on an oversized PAC-MAN arcade machine
Sigmund, Unsplash

Being a notorious font of local wisdom, I am often asked whether Judge X or Y will entertain indefiniteness at Markman. Well here you have it faithful readers—everything you need to know about raising indefiniteness at Markman in Delaware

Every Judge Will Allow Briefing and Argument on Indefiniteness at Markman

Judge Sleet rather famously did not entertain indefiniteness arguments at Markman, considering it “an attempt at an end-run around the court's scheduling order regarding the filing of dispositive motions [that] will not be sanctioned.” Pharmastem Therapeutics, Inc. v. Viacell, Inc., No. 02-148 GMS, 2003 WL 124149, at *1 n.1 (D. Del. Jan. 13, 2003). He frequently referred to this prohibition as "the …

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Gavel, Bill Oxford, Unsplash

Last week, we asked whether jury trials in Delaware had finally arrived. After a long period of fits and starts, the answer is yes!

Judge Andrews successfully held a jury trial in a criminal case this week, culminating in a "not guilty" verdict today. Everything seems to have gone off without a hitch, with jury selection, preliminary instructions, opening statements, and multiple witness examinations taking place in a single day.

There's a huge backlog of jury trials in D. Del., and the court is still only equipped to hold one jury trial at a time (with a separate courtroom serving as the public observation area). But this is a big step …

Late last year, we posted about a decision from Judge Connolly dismissing an action by Chromadex because Chromadex had licensed the patent to another party along with the right to sublicense, making the licensee a required party, but had failed to join that party in the complaint.

To remedy the situation, Chromadex apparently executed a new license agreement to provide Chromadex with standing to bring a complaint alone. The licensee was dissolved.

Chromadex then moved for reconsideration. Judge Connolly denied the motion. He pointed out that a plaintiff cannot rely on evidence arising after the original decision to support a motion for reconsideration:

"newly discovered evidence" within the purview of Rule 60(b )(2) . . . refers to evidence of …