Often times the hard part of a stipulation is just convincing everyone that they're not secretly giving up the farm. Lawyers are used to looking for hidden hooks in every proffered bite, and it's hard to convince us that this one is just tasty fish. We've all heard some scary store about a stipulation that gave away too much and changed the course of a case.
This is one of those stories . . .
But it turns out fine in the end.
UCB, Inc. et al v. Annora Pharma Private Ltd., C.A. No. 20-987-CFC (D. Del. Aug. 16, 2023), dealt with a patent for an anti-seizure drug compound. The defendants conceded infringement, …
It's not uncommon to see discovery requests and 30(b)(6) topics asking about the location of documents. In fact, up until 2015, Rule 26 specifically provided for this kind of discovery:
Parties may obtain discovery regarding any nonprivileged matter that is relevant to any party's claim or defense--including the existence, description, nature, custody, condition, and location of any documents or other tangible things . . . .
In 2015, in a (highly commendable) effort to shorten Rule 26, that example was dropped. Now it just reads:
Parties may obtain discovery regarding any nonprivileged matter that is relevant to any party's claim or defense and proportional to the needs of the case . . …
We wrote last week about how Judge Andrews—somewhat surprisingly—declined to lift a stay after the PTAB left just 4 of 83 patents standing, and invalidated the rest.
After that decision, the parties filed a series of letters that clarified that the plaintiff had intended to proceed only on the four valid patents, not the rest, but wanted to check with the Court regarding how they should proceed:
[Plaintiff] Cytiva understood that the litigation would proceed only with regard to the four claims that the PTAB upheld as valid, and until JSR’s submission, was not aware that JSR had a contrary view. Cytiva had no intention, and has no intention, …
One of the more common issues to come up at trial is whether an to what degree an expert can exceed what is in their report. I've heard varying opinions on this from judges in Delaware and elsewhere. Some judges hold experts pretty tightly to their report; others apply something more akin to notice pleading, where the expert merely has to stay within the broad outline of what was addressed.
If you're going to have an expert on either side at trial, it's a good idea to know where your judge stands on this issue beforehand. We got a data point from Judge Andrews on this last week, when he issued a memorandum order on a …
Here's another interesting order from when we were out. In it, Judge Burke notes a new procedure where he hears oral argument on only six claim terms at the Markman hearing:
ORAL ORDER: The Court hereby ORDERS as follows with respect to the upcoming Markman hearing: (1) The Court will adopt the parties' prior proposal with respect to the length and order of argument. . . . (2) However, it has been the Court's recent practice to hear argument on only six terms/term sets ("terms"). So, by no later than August 11, 2023, the parties shall submit a joint letter telling the Court which terms will be taken on the papers and which six terms will …
Bonjour dear readers! I have missed you all so. The blog vacation has been a real boon for us, and we've got a whole trove of opinions, orders, and shouted comments built up to discuss over the next few weeks.
One of the first that caught my eye was an order from Judge Burke that contained that rarest of gems -- praise for a party to a discovery dispute -- and included a neat primer on what the Court likes to see when ruling on them.
I don't know why, but whenever you ask it to include text it always sort of converts it into a realistic seeming eastern european languageAI-Generated, displayed with permission
The dispute in question was pretty standard stuff, with the defendant wanting a supplemental protective order that gave extra protections to design files that it likened to source code. As the party seeking the stricter protective order, they bore the burden which the Court found they met easily:
Defendant did here what too few parties in discovery disputes do: it made a detailed factual record, supported by multiple sworn declarations, that strongly supported its arguments. That is, Defendant has demonstrated that the "highly technical details necessary to fabricate [its] proprietary... lens designs" are, "in effect, the source code of lenses" and "are as commercially sensitive as any other form of source code[,]" such that they should receive the heightened form of protection set out in the SPO.
ImmerVision, Inc. v. Apple Inc., C.A. No 21-1484, D.I. 136 (D. Del. Aug. 4, 2023) (Oral Order).
The "detailed factual record" here was more straightforward [read: achievable] than you might think. The defendant submitted 2 declarations: a 3-pager from ...
On Friday, Judge Andrews addressed what happens when an IPR results in just 4 valid claims—and 79 invalid ones:
ORAL ORDER: I read the letters about lifting the stay. . . . The parties agreed to a stay through PTAB resolution of the IPRs. (D.I. 66 ). The PTAB resolution determined seventy-nine claims unpatentable and four patentable. Both sides have appealed. It does not make much sense to go forward with the overwhelming number of asserted claims likely invalid. I think it is probable that there will be a final decision from the Court of Appeals within a reasonable amount of time. That decision will, one way or another, greatly simplify this case. The …
We're back! Our trial was a success, Nate is back from his travels, and things have cooled down enough for us to resume regular posts this week.
While we were tied up, there was some progress in the Mavexar cases. If you recall, Chief Judge Connolly had ordered the sole member of Backertop, a Mavexar-related LLC, to appear in-person in Delaware to answer for the entities' potential fraud on the Court. She objected, stating that she would not appear.
Since then, the July 20 hearing occurred, and as promised she did not appear—although her counsel, and counsel for Backertop, did show up. The transcript for that hearing is below.
Judge Connolly issued a post-trial opinion in a false advertising case this week that contained another interesting bit of damages arcana under the Lanham Act.
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The trial in CareDx, Inc. v. Natera, Inc., C.A. No. 19-662 (D. Del. July 17, 2023), seemed to go great for the plaintiff with the jury finding 9/10 of the defendant's advertisements were false and awarding $21.2 Million in compensatory damages and $23.7 Million in punitive damages. As we say in Delaware, "that's a lotta crabs"*
It all went tails up in post-trial briefing however, when the defendant moved for JMOL of no damages. The court began by summarizing the elements of a Lanham Act claim in the Third Circuit
1) that the defendant has made false or misleading statements as to his own product [or another's]; 2) that there is actual deception or at least a tendency to deceive a substantial portion of the intended audience; 3) that the deception is material in that it is likely to influence 3 purchasing decisions; 4) that the advertised goods traveled in interstate commerce; and 5) that there is a likelihood of injury to the plaintiff in terms of declining sales, loss of good will, etc.
CareDX, at 3-4 (emphasis added) (quoting Pernod Ricard USA, LLC v. Bacardi U.S.A., Inc., 653 F.3d 241,248 (3d Cir. 2011))
The highlighted factor is the interesting one. You see, actual deception is ...
"We need to call the Court!"AI Generated, displayed with permission
The Court has been somewhat quiet this week as far as new decisions, so I figured I'd take this opportunity to lay out a few quick thoughts on recurring issues that come up in depositions in the District of Delaware.
This is some (but not all) of what you might hear when asking Delaware counsel "depositions are coming up next month, is there anything I should know?" (Experienced Delaware counsel might also talk about a few more topics, such as how to avoid accidentally making your witness prep materials discoverable—but those are for another post).
Here's the list:
When sending a notice of deposition, be sure to leave at …
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