A Blog About Intellectual Property Litigation and the District of Delaware


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United States District Court for the District of Delaware

101 Stats Redux

Nathan R. Hoeschen, Dec. 12, 2024
101

Sadly, today's post will be an update to one of my more popular posts. So there will be no stories of childhood pets, and scarcely any amusing bon mots. Instead, we're sticking to the facts today and asking in 2024 C.E. who do you want deciding your 101 motion?

AI-Generated, displayed with permission

The rules from last time have been modified slightly. I once again took the last 10 opinions from each of our current active Article III judges as the data set (for Judge Hall, this required including some R&Rs from her time as a magistrate). This includes Rule 12 motions and motions for summary judgment (generally less common) but does not include post-trial motions. To get some more …

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Patentee's Own Weak Interrogatory Responses Cause Denial of Its Motion to Strike Opposing Party's Late Expert Argument

Andrew E. Russell, Dec. 11, 2024
Expert Discovery Expert Reports

"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 …

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Time Is All We Have

Nathan R. Hoeschen, Dec. 10, 2024
Stipulation Scheduling Order

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 …

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Court Declines to Enforce Discovery Agreement, Suggests Client Overruled Its Outside Attorneys

Andrew E. Russell, Dec. 9, 2024
Discovery Discovery Agreement

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). …

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You Can't Withhold Discovery—Including Source Code—Pending a Rule 12 Motion in D. Del.

Andrew E. Russell, Dec. 6, 2024
Source Code FRCP 12

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 …
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Whoops! "Good Faith" Belief in Opposing Party's Breach of Settlement Agreement Insufficient to Permit New Patent Suit

Andrew E. Russell, Dec. 4, 2024
Breach of Contract Settlement Agreements

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, …

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The Unwelcome Guest

Nathan R. Hoeschen, Dec. 3, 2024
Claim Narrowing Contentions

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 …

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Court Declines to Strike § 282 Notice Disclosing Nearly 200 Prior Art References, Despite Stipulated Narrowing

Andrew E. Russell, Dec. 2, 2024
§ 282 Case Narrowing

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, …

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Court Denies Lower-Ranked SJ Motions After Denial-in-Part

Andrew E. Russell, Nov. 22, 2024
Ranking Summary Judgment

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 …

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A Thin Reed, To Be Sure

Nathan R. Hoeschen, Nov. 21, 2024
Stipulation

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 …

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