A Blog About Intellectual Property Litigation and the District of Delaware


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Judge Andrews Confirms Holding that Barred Full Prosecution History from Jury

Andrew E. Russell, Sept. 16, 2020
FRE 403 FRE

Judge Andrews yesterday issued his opinion denying all post-trial motions in TQ Delta, LLC v. 2Wire, Inc., C.A. No. 13-1835-RGA (D. Del.). The jury had returned a verdict of infringement and no invalidity after a trial in January 2020.

One part of the opinion stands out—Judge Andrews discusses his decision to preclude the defendant from discussing the full prosecution history of the patent before the jury as prejudicial under FRE 403:

I ruled that 2Wire could elicit testimony about what prior art was in front of the patent examiner, but that testimony about a “lengthy history of cancelling claims, adding claims, rejecting claims, [and] rejecting new claims” was inadmissible under Federal Rule of Evidence 403 because …
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No expert? No problem. Maybe.

Andrew E. Russell, Sept. 7, 2020
Litigation Pennypack

Empty Chair
Giorgio Trovato, Unsplash

Sometimes people think that they have to offer expert testimony to rebut the other side's expert on every single issue. That's not true, at least when the other side has the burden of proof.

I've represented a defendant in a jury trial representing where we offered no damages expert at all, and it worked out well (under the circumstances—I'm definitely not saying it's a good general strategy). We poked holes in the opposing expert's theories, and the other side had no way to return fire and no reply report in which the fix the issues.

Judge Andrews addressed something like that last week in an opinion on a motion in limine. Defendant had offered expert …

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Federal Circuit Holds That A Party Cannot Join Its Own Previous IPR Proceeding

Andrew E. Russell, Sept. 4, 2020
IPR

The Federal Circuit's decision is below.

It found that even though the defendant did not receive an identification of asserted claims from the plaintiff until after the statutory IPR deadline, and even though the patents included a total of 830 claims, the statute did not allow the defendant to file a new IPR petition and then join it to its previous IPR proceeding as a way to add claims after the statutory filing deadline.

The Court recognized that the decision would result in wasted efforts by defendants in challenging claims unnecessarily:

We . . . recognize that our analysis here may lead defendants, in some circumstances, to expend effort and expense in challenging claims that may ultimately never be asserted …
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Judge Burke Sets Forth Views on Impermissible Discovery in Trade Secret Actions

Andrew E. Russell, Aug. 28, 2020
Discovery

Restricted Data Notice
"Restricted Data" stamp, RestrictedData, CC BY 2.0

In another part of the opinion mentioned earlier today, Judge Burke set forth his views on the scope of discovery in a trade secret action—an issue that comes up a lot, along with the related issue of the disclosure of the alleged trade secrets:

As to what is not relevant trade secret discovery: what [Plaintiff] is not entitled to do is to set out a claim in Count IX for trade secret misappropriation—i.e., a claim involving a certain set of alleged facts, occurring in a certain alleged time frame, involving a certain referenced set of persons and a certain type of purported misconduct—and then say to [Defendant], “Now that we have …
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The Court: Broad, General Interrogatories Merit Only Broad, General Answers

Andrew E. Russell, Aug. 28, 2020
Interrogatories Discovery

Judge Burke yesterday unsealed a lengthy opinion addressing a range of discovery disputes in a pending trade secret litigation.

In one instance, plaintiff sought to force a further response to a broad interrogatory, and complained that Defendant's broad answer omitted important time periods. The interrogatory asked:

[D]escribe in detail the stage of R&D, design, documentation, clinical work, marketing and/or sales of the [relevant product] at the time [Defendant] or anyone on behalf of [Defendant] was in first contact with any Former [Plaintiff] Employee . . . .

Judge Burke denied the request, noting that the time periods Plaintiff complained about were from before the alleged trade secret theft, and therefore it was not clear why they were relevant. He also …

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Trade Secret Allegations in Sealed Complaint Fail, Judge Andrews Rules

Jeff Castellano, Aug. 18, 2020
DTSA 12(b)(6)

In trade secret litigation, parties often fight bitterly over the level of particularity with which the party asserting misappropriation has described its trade secrets. That dispute frequently plays out in connection with interrogatory responses or other trade secret contentions, served after the initial pleadings are closed.

However, it can arise earlier in the case. In a recent order, Judge Andrews dismissed a federal trade secret misappropriation claim under Rule 12(b)(6) because the complaint identified "large, general areas of information that Plaintiff alleges to have shared with Defendant" but failed to "identify what the trade secrets are within those general areas."

Notably, the order, issued in Lithero, LLC v. Astrazeneca Pharms. LP, C.A. No. 19-2320-RGA (D. Del.), states …

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Chief Judge Stark Explains His Thoughts on Indefiniteness Issues Going to the Jury

Andrew E. Russell, Aug. 17, 2020
Indefiniteness Jury

In his lengthy ruling on the post-trial motions in Pacific Biosciences, Chief Judge Stark also set forth his views on whether indefiniteness may be tried to a jury, an issue that seems to come up repeatedly:

[Defendant] insists that the Supreme Court's decision in Teva vs. Sandoz[, 574 U.S. 318 (2015),] made indefiniteness an issue exclusively for the court to decide. I disagree. I continue to believe that I have discretion to put . . . indefiniteness before the jury where[,] as here, there are subsidiary fact disputes that inform the indefiniteness decision as a matter of law. [Defendant] has cited no contrary Federal Circuit case.
In fact, instead, the Federal Circuit [has] made clear that indefiniteness is …
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No New Trial After Both Sides Cited Coronavirus Benefits of Invention in March Trial

Andrew E. Russell, Aug. 17, 2020
Post-trial Motions COVID-19

On Friday, Chief Judge Stark issued his opinion on post-trial motions in Pacific Biosciences of California, Inc. v. Oxfore Nanopore Tech., Inc., C.A. No. 17-275-LPS-CJB (D. Del.).

You may remember it as the case which made news at the time due in part to the mention of coronavirus in the opening statements.

The trial took place March 9-18, just as the first COVID-19 lock downs were ramping up.

Incredibly, both parties touted coronavirus-related effects of their products in their opening statements at trial. Plaintiff suggested that its product could "help develop a vaccine" for the coronavirus. Defendant went even further:

[Defendant made] a product that is changing lives as we speak. Whether it is helping people …
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Judge Connolly Dismisses "Confusing and Contradictory" Direct Infringement Claims

Andrew E. Russell, Aug. 10, 2020
MTD

Judge Connolly has previously denied a motion to dismiss direct infringement claims where the plaintiff at least recited the claim elements and accused a product of meeting them. Last week, though, he granted a motion to dismiss where the plaintiff did not even go that far.

Even though the patent included only method claims, plaintiff accused only products of infringing, without identifying any accused process or alleging how it is performed by those products.

Even as to those products, plaintiff contradicted itself, identifying smartphones as accused, but also discussing servers, software, and "other devices and technology." Judge Connolly called these allegations "confusing and contradictory."

Judge Connolly did grant leave to amend, and gave them a month to fix their …

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