A Blog About Intellectual Property Litigation and the District of Delaware

The Honorable Gregory B. Williams

I have no idea what the accused product looks like, but here is a
I have no idea what the accused product looks like, but here is a "viral whole-genome sequencing experiment." National Cancer Institute, Unsplash

Last month, Judge Williams granted a permanent injunction in Natera Inc. v. ArcherDX, Inc., C.A. No. 20-125-GBW (D. Del. Nov. 21, 2023). The Court unsealed the opinion on Friday, and I thought there were enough interesting things about it to warrant a short post.

The Court granted the injunction only in part, and permitted the defendant to continue using the personalized cancer monitoring product, referred to as "PCM," for "ongoing clinical trials, for updating old studies undergoing peer review, and for limited quality control." The parties also agreed that the injunction should exclude use …

Many things find their way onto an exhibit list that are not clearly admissible, or even exhibits in the quotidian sense. The rules are often vague about the propriety of presenting things like prior pleadings and discovery responses, much less the mechanism for doing so, and thus its fairly common to see all these and the kitchen sink placed on an exhibit list. Once there, they mostly molder, unremarked upon, until they happen to become relevant enough to spark a dispute.

I'm usually pretty harsh on the quality of these AI drawings, but I think this one is a banger
I'm usually pretty harsh on the quality of these AI drawings, but I think this one is a banger AI-Generated, displayed with permission

Last week (whilst I was on vacation acquiring a flu that dogs my every step like grim death) Judge Williams set forth a pretty clear rule prohibiting the inclusion of privilege logs on an exhibit list:

The Court grants-in-part Milwaukee's motion to exclude the privilege logs, but denies the remainder of Milwaukee's motion without prejudice. The privilege logs are not relevant because the logs make no material fact more or less likely. Even if Milwaukee were to have waived privilege with respect to its clearance program, the privilege logs would not be relevant because the mere assertion of privilege is "unremarkable and irrelevant."

Persawvere, Inc. v. Milwaukee Elec. Tool, Corp., C.A. No. 21-400-GBM, at 6 (D. Del. Nov. 21, 2023) (Mem. Ord).

The parties raised the issue via a MIL seeking to remove the log from the exhibit list and to prohibit the playing of any testimony wherein deponents had claimed privilege. The whole thing was part of a larger dispute about waiver of privilege over testing of the accused products. Judge Williams granted the motion as to the privilege log itself (by my quick search, the first ruling on the issue in Delaware) but denied it as to the testimony, noting If the [testing] is put at-issue at trial, Persawvere's introduction of deposition testimony that includes a deponent asserting privilege may become relevant." Id.

Dollar Bills
Sharon McCutcheon, Unsplash

It's always good to know where the lines are. Today, Judge Williams awarded attorneys fees after the plaintiff in a Defend Trade Secrets Act action maintained an "objectively specious" argument after the close of fact discovery:

A claim is objectively specious where there is a complete lack of evidentiary proof from the party suing. . . . [T]he Court agrees with [defendant] Backer that [plaintiff] ZIM litigated this matter with knowledge that its claims were objectively specious. While Backer contends that ZIM knew that its claims were objectively baseless when it filed the Complaint, the Court finds that ZIM understood that its claims were objectively specious by the close of fact discovery on January 12, …

No Stopping
Ben Tofan, Unsplash

Where IPRs are concerned, post-institution stays are fairly routine. But there are also instances where cases are not stayed, and it can lead to surprising results. For example, we talked last year about a case where where a defendant won on invalidity in an IPR, but had to proceed to trial anyway—and faced estoppel on their prior art.

We saw an order in a somewhat similar category this week, when Judge Williams denied a post-trial motion to stay following the invalidation of the asserted claims by the PTO in an ex parte reexamination:

ORAL ORDER: Having reviewed the Joint Status Report, D.I. 1856, filed by the parties on October 23, 2023, the Court …

Jason Leung, Unsplash

Generally Delaware counsel are downright accommodating when it comes to granting extension requests. One common refrain is that "if we don't grant it, they'll just move, and the Court will grant it."

Often that's true—I've seen multiple successful emergency motions to extend deadlines after opposing counsel unreasonably denied an extension. Typically these seek a short extension (a few days, or sometimes 30 days for a response to a complaint) and are backed by good reasons.

Uh Oh - An Emergency Extension Motion Fails

That's why I thought it was interesting to see an "emergency" attempt at extending a deadline fail, in Speyside Medical, LLC v. Medtronic Corevalve, LLC, C.A. No. 20-361-GBW-CJB (D. Del.). …

We're running out of good
We're running out of good "the court is split" images. Alice Yamamura, Unsplash

The scope of IPR estoppel is a tricky issue that courts have gone different ways on. Everyone agrees that a party cannot argue invalidity in an IPR based on a prior art product (as opposed to reference), and that IPR estoppel extends to art the petitioner "reasonably could have raised" during the IPR.

Courts have gone different ways, however, when it comes to whether a party can assert invalidity at trial based on a product that embodies a reference that was asserted or could have been asserted at an IPR. In D. Del., as we've discussed, Judge Stark held that a …

Today, I present a gift to the many patent law professors that read this blog every morning (presumably). I give you a truly odd fact pattern that can be inserted neatly into your next exam, and which is guaranteed to annoy your students. All I ask in return is that you require those students to subscribe to the blog in perpetuity, on penalty of failure.

AI-Generated, displayed with permission

Deal? Deal.

The issue here was the on-sale bar. As a quick refresher, that's this bit of 102:

A person shall be entitled to a patent unless—
(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or

The patents in W.R. Grace & Co. v. Elysium Health, Inc., C.A No. 20-1098-GBW (D. Del. Aug 30, 2023) covered distinct crystal forms of a compound called "NCRI." Shortly before the critical date of July 24, 2013, the patentee had agreed to sell some NCRI to a customer. There was a PO and ...

I'm not sure if
I'm not sure if "Ddrops" stands for "dew drops." But this is a nice picture regardless. Aaron Burden, Unsplash

We've talked about how pre-institution stays can be tough (but not impossible) to achieve, and about how Judge Burke has sometimes responded to a pre-institution motion to stay by asking for a status report and abbreviated briefing after the institution decision:

Therefore, no later than five business days after the PTAB rules on whether it will institute IPR as to the last of the petitions at issue, the parties shall provide the Court with a status report of no more than two single-spaced pages, indicating the outcome of the petitions and whether Defendant wishes to renew its Motion. If Defendant does wish to renew the Motion then, the Court will set a further (truncated) briefing schedule.

eBuddy Technologies B.V. v. LinkedIn Corporation, C.A. No. 20-1501-RGA-CJB, D.I. 108 (D. Del. Mar. 4, 2022) (Burke, J.).

Last week, Judge Williams adopted a similar view, denying a pre-institution motion to stay but offering to revisit the issue after the institution decision—and to take the previous briefing into account:

ORAL ORDER: Having reviewed Defendant MOM Enterprises, LLC's ("MOM") Motion to Stay Pending Inter Partes Review ("IPR") . . . , IT IS HEREBY ORDERED that the Motion is DENIED WITHOUT PREJUDICE to renew the request if the IPR is instituted. A court has discretionary authority to grant a motion to stay. . . . Because no institution decision has yet been issued, the Court will decline to stay the case until it hears from the PTAB. . . . By no later than five (5) business days after the PTAB issues its institution decision as to the IPR petition relating to the asserted patent, the parties shall file a joint letter updating the Court on the results of the PTAB's decision. If the PTAB grants the IPR petition, and if MOM then wishes to renew its Motion, MOM should include in the joint letter a statement that it intends to renew its Motion. The Court will then set a letter briefing schedule on the renewed Motion. When reviewing the renewed Motion, the Court will take into account the briefs already filed as to the instant Motion. ORDERED by Judge Gregory B. Williams on 8/25/2023.

Ddrops Company v. MOM Enterprises, LLC, C.A. No. 22-332-GBW, D.I. 108 (D. Del. Aug. 25, 2023). This mirrors Judge Burke's previous order, although Judge Williams' order doesn't state whether the later briefing will be truncated—that may depend on the circumstances.

Judge Williams' practice is useful to know because, obviously, it affects the calculus of whether it is worthwhile to bring a pre-institution stay motion at all.

Annie Spratt, Unsplash

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 . . . .

FRCP 26 (2014).

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 . . …

Markus Spiske, Unsplash

We've noted before that parties routinely stipulate to extend the deadline to answer in D. Del. cases. You may have wondered—is there a limit to the number of times the parties can stipulate to extend the answer deadline?

Now we have the answer: Yes, at least for Judge Williams. Here is how he reacted when parties filed their ninth stipulation to extend the answer deadline:

ORAL ORDER: There have been nine (9) Stipulation and Proposed Orders entered in this case granting Defendant an extension of time for it to answer, move, or otherwise respond to the Complaint. See D.I. 20; D.I. 21; D.I. 22; D.I. 23; D.I. 24; D.I. 25; D.I. 26; D.I. 27; D.I. …