"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 IPRdenied 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 …
This may seem obvious to practiced litigators, but the pretrial order is no joke. It defines the scope of the claims and defenses at trial, and omitting things from it is a very risky proposition. Be careful.
That's why parties sometimes end up with ridiculously long pretrial orders—they don't expect anyone to read them front to back, but they want to make sure nothing is waived.
We saw another example of this yesterday in In Re: Ozempic (Semaglutide) Patent Litigation, C.A. No. 22-MD-3038-CFC (D. Del.). There, the defendants intentionally omitted their obviousness-type double patenting invalidity defense from the pretrial order, in light of a recent Federal Circuit case clarifying the rules …
Before you get too excited, defendants, this case involved a scheduling order using Judge Connolly's form, which provides only a single round of infringement and invalidity contentions, and explicitly requires good cause to amend.
Most District of Delaware scheduling orders include two rounds of contentions (initial and final), with the second round typically coming around the close of fact discovery. It is unlikely to be as difficult to amend in cases like those.
Regardless, I thought this was an interesting result worthy of a post. In Cognipower LLC v. Fantasia Trading, LLC, C.A. No. 19-2293-JLH-SRF (D. Del.), the Court stayed the case …
AI-generated depiction of Judge Andrews putting down zombie claims for good.AI-Generated, displayed with permission
Former Chief Judge Sleet used to frequently say that "there is no such thing as the law of the district." Genentech, Inc. v. Amgen Inc., No. 17-1407-GMS, 2018 U.S. Dist. LEXIS 9544, at *8 n.3 (D. Del. Jan. 22, 2018) (cleaned up). In other words, one district court judge's ruling is not binding on another.
We saw that yesterday, when Judge Andrews held that claims dropped due to claim narrowing are dropped with prejudice, and recognized that another of our judges had previously held the opposite on similar facts.
In Exeltis USA, Inc. v. Lupin Ltd., C.A. No. 22-434-RGA (D. …
As we've noted in the past, it's fairly routine to stay cases once an IPR is instituted. But the Court has at least once denied a stipulated stay where the IPRs were not yet instituted.
Last week the visiting Judge Choe-Groves denied a stipulated stay where the PTAB had instituted an IPR for two out of three patents-in-suit—leaving one patent not subject to an IPR, as the parties explained in the stip:
WHEREAS, Teladoc filed three petitions for inter partes review (“IPR”) (Nos. IPR2024-00618, IPR2024-00616; and IPR2024-00617) of the Asserted Patents;
WHEREAS, the Patent Trial and Appeal Board (“PTAB”) instituted IPRs on the ’554 and ’142 Patents on September 16, 2024 and September 17, 2024; …
ChatGPT's images are getting pretty good. But this DOES NOT show Judge Hall, the attorneys, a real courtroom, or anything that actually happened. Please don't sue us.AI-Generated, displayed with permission
Well this is a new one. In Apple Inc. v. Masimo Corp., C.A. No. 22-1377-JLH (D. Del.), the parties dispute whether the patentee, Apple, has a right to a jury trial. That hinges on whether Apple is seeking damages—if it can only get an injunction, it has no right to a jury trial. Id., D.I. 745 at 5.
The Court found that Apple had, in fact, asked for a total of $250 in damages for infringement of four design patents and five utility patents, and that it was therefore entitled to a jury trial. That's two-hundred and fifty dollars—you're not missing any zeros or a "k" afterwards.
(By my math, assuming at least five attorneys and two paralegals are involved, I'd guess that Apple's total damages figure is equal to the cost of about four minutes of trial time by Apple's trial team, or less. It's probably less.)
Apparently, Apple's damages figure results from the fact that $250 is the statutory minimum damages for infringement of a design patent under 35 USC § 289. According to the Court, Apple's experts testified that the $250 statutory minimum for the design patents under § 289 also constituted the entire damages award for the utility patents under § 284. Id., D.I. 745 at 4-5 n.1. Apple also wants the Court to treble that to $750. Id.
But Masimo really doesn't want a jury trial here. It pushed hard for a bench trial, to the point where its counsel apparently brought $900 in cash to court and ...
The patentee's TRO attempt worked out about as well as this (unmanned) rocket's attempt to reach orbit.Tim Mossholder, Unsplash
Ouch. In Nivagen Pharmaceuticals, Inc. v. Amneal Pharmaceuticals Inc., C.A. No. 24-846-GBW (D. Del.), the patentee plaintiff filed suit to stop a competitor from launching a drug that it says would infringe its patents, after the competitor received FDA approval.
(Because this was not an ANDA, there was no automatic stay.)
The plaintiff filed a TRO motion on August 13, shortly after its complaint. For at least two of the …
We don't often write about claim construction opinions, because they can be very fact-specific. But Judge Hall's opinion yesterday in Apple Inc. v. Masimo Corporation, C.A. No. 22-1377-JLH (D. Del.) included some generally applicable points worth noting.
Sometimes a Reservation of Rights Actually Works
There's a reason we've all seen countless discovery documents, disclosures, expert reports, and briefs that are larded up with endless reservations of rights: sometimes they work!
This is one of those times. The patentee (Apple) had filed a response to invalidity contentions regarding a design patent in an IPR. In it, Apple described the scope of its patent, but included a reservation stating that it wasn't taking claim …
Yes, this is yet another Pennypack post. I can't resist. It's a tough-to-apply standard that impacts many cases (patent and otherwise). And it can sometimes seem to reward bad behavior by litigants, even—maybe especially—when applied as written.
But not this time! In Prolitec Inc. v. ScentAir Technology, LLC, C.A. No. 20-984-WCB (D. Del. Oct. 2, 2024), the patentee produced documents about a pre-priority-date sale of prior art after fact discovery closed and just five days before opening reports.
Unsurprisingly, the other side's opening expert report five days later did not include invalidity allegations about this sale.
One of these guys forgot to come armed.AI-Generated, displayed with permission
Attorneys spend a lot of time threatening fee awards when dealing with an NPE, even though they can be challenging to get. So I always think it's interesting to see what kinds of behavior will support a fee award.
Last week, Judge Williams issued a memorandum order granting fees in Extremity Medical, LLC v. Nextremity Solutions, LLC, C.A. No. 22-239-GBW (D. Del.). The Court listed three bases for its fee award. First, the patentee made zero showing of any pre-suit investigation of invalidity:
[T]here is no dispute that Defendants notified Plaintiff of [prior art references] Marcus and Chandran several years prior to the date …
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