"Your honor, it's like the movie Groundhog Day, but we're repeating a trial..."AI-Generated, displayed with permission
Judge Williams issued a decision on Monday denying a motion to bifurcate a patent case, rejecting bifurcation where it would increase the total time by three days and involve repeating the same evidence.
The defendant moved bifurcate a five-day patent trial into a three-day jury trial on license issues and then, if necessary, a separate five-day trial on infringement.
The Court did not seem eager to sign up for a three-day trial with a significant risk of a second full trial later—especially one that repeats the same explanations of the technology:
The crux of ASC's position is that a two-day reduction in trial …
Every protective order I've ever seen has a provision at the end requiring the parties to return or (more likely) destroy any confidential information (with some limited exceptions) from the other party when the case is over. It's generally not a contentious paragraph.
Judge Fallon, however, dealt with a discovery dispute on this issue, that I was surprised had never come up before -- what happens when there are multiple unrelated defendants, as in ANDA cases? Do you destroy the documents when the relevant defendant drops out of the case, or can you keep them until the whole consolidated mess is over and done with?
At the jury trial in ArcherDX, LLC v. Qiagen Sciences, LLC, C.A. No. 19-1019-MN (D. Del.), the plaintiffs argued for $752,006 in U.S. royalties, and the jury awarded $1,593,762.
The higher number happened to exactly match the $752,006 they asked for for U.S. royalties, plus the lost profits number:
The $1,593,762 U.S. royalty award, however, is much higher than the estimate provided by Plaintiffs’ expert, and, in fact is equivalent to the expert’s suggested award for lost profits ($841,756) plus U.S. royalties ($752,006).
The parties both agreed that it was a mistake, and that the jury had intended to award the $752,006 that plaintiffs had asked for.
Here's an AI-generated patentee dealing with the burden of proof on marking.AI-Generated, displayed with permission
My co-blogger Nate wrote yesterday about Magistrate Judge Hall's discussion of prior art estoppel in Innovative Memory Systems Inc. v. Micron Technology Inc., No. 14-1480-RGA (D. Del. Sept. 29, 2022). That was actually just one issue the Court dealt with in a lengthy R&R and Order on a summary judgment and Daubert. I wanted to post about one of the other issues Judge Hall addressed in that opinion: patent marking.
Marking is an important and sometimes underrated issue. It's not uncommon, in patent cases, for the bulk of the damages to have accrued in the years prior to the plaintiff filing suit. These "pre-suit" damages can be at risk, though, if the patentee sold products that practice the patent and failed to mark them under 35 U.S.C. § 287(a). Here is how Judge Hall explained it in Innovative Memory:
[W]hen a plaintiff makes or sells a product practicing its patent, the plaintiff can only recover pre-suit damages from an infringer if (1) the patentee marked its product in the manner specified in § 287(a) or (2) the patentee notified the infringer of its infringement. Even if a plaintiff patentee doesn’t make or sell anything, it cannot recover pre-suit damages (absent providing notice) if a prior owner of the patent failed to mark its products covered by the patent.
AI-generated image of a defendant relying on non-prior art documents as evidence of prior artAndrew E. Russell, displayed with permission
Judge Stark issued an oral order yesterday addressing a motion in limine in Otsuka Pharmaceutical Co., Ltd. v. Zenara Pharma Private Ltd., C.A. No. 19-1938-LPS (D. Del.).
According to the briefing, plaintiff sought to exclude two exhibits that were dated after the priority date of the patent.
The first was a 2005 "review article" published just months after the priority date. According to defendants' brief, "does not present original data" and instead "discusses the information known in the art before the priority date."
The second exhibit was published in 2021 and includes a "history of research …
Procedural opinions about post-appeal trials are relatively rare, at least compared to the amount of decisions on motions to dismiss or summary judgment that we see. Most cases settle long before they reach this stage. So I thought it was worth posting about how Judge Bataillon handled a new trial in C R Bard Inc. v AngioDynamics, Inc., C.A. No. 15-218-JFB-SRF (D. Del.) after the Federal Circuit vacated the result of the previous trial.
The parties in the case sought to introduce new information in the new trial, including at least one accused product that was released after the previous trial. The Court rejected that idea, holding that the new trial would be a direct repeat of …
Judge Burke issued an oral order earlier this week with some interesting language criticizing the party's attempt at an amended complaint.
In Midwest Energy Emissions Corp. v. Arthur J. Gallagher & Co., C.A. No. 19-1334-CJB (D. Del.), the plaintiff accused a very large number of entities—More than 50, it looks like—with infringement of a number of patents, all in a single combined action.
Earlier this year, it moved to amend its complaint to add additional defendants it alleged were parent companies of defendants who were as acting as the parent companies' "alter egos and agents." Judge Burke granted this request as to one party, for which the complaint included more detailed factual allegations, …
We've written a lot about how there is asplit in the District of Delaware about whether a complaint itself can establish knowledge of infringement sufficient to support a claim of post-filing willfulness or induced infringement.
Early this week, visiting Judge Kennelly weighed in, siding with the judges who say that a complaint can establish knowledge, in a short opinion:
A claim for willful infringement of a patent requires the plaintiff to establish—or at this point in the case, to plausibly allege—that the accused infringer had knowledge of or was willfully blind to the patent and that its conduct constituted, induced, or contributed to infringement. . . . Similarly, a claim of induced or contributory infringement …
As we've mentioned in the past, in D. Del. patent cases, the Court often sets deadlines for submission of a "status report" (or, sometimes, a "joint status report" or "interim status report").
These orders can be somewhat vague. The Court doesn't always request "a joint status report regarding xyz." Instead, at times, it will issue a generic request for a status report, like this:
ORAL ORDER - IT IS HEREBY ORDERED that, on or before 9/23/2022, the parties shall submit a joint status report. ORDERED by Judge Maryellen Noreika on 9/16/2022.
To which the natural human response is "a status report about what?" Usually, though, it's pretty obvious from the docket. In the case above, C.A. No. 21-459-MN, the case is stayed pending appeal of another case, and the order follows a more than year-long delay with no action. The Court probably wants to know the status of the appeal.
The next question is often "how much detail does the Court want?" The answer seems to vary depending on the context. It's usually safe to assume that the Court does not want disputes or argument from the parties, and that it likely appreciates a concise statement of only what the Court needs to know to take action. But it can be hard to say for sure ...
Judge Williams has now posted his form scheduling orders on the District of Delaware website.
I took a look through his non-ANDA scheduling order, and it will be extremely familiar to Delaware practitioners. It mostly tracks Judge Noreika's form order.
Judge Williams' form order does, however, pull in portions from other Delaware judges' form scheduling orders. Here are some changes in Judge Williams' new form order as compared to Judge Noreika's form:
Discovery disputes and motions to amendor strike use language from Judge Stark's form scheduling order.
Parties sometimes get tripped up on this, and forget that motions to amend or strike have special rules—so keep that in mind if you have a Judge …
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