After reading the decision in Nate's post yesterday, it occurred to me that we haven't addressed a common question in cases in the District of Delaware: When will the Court decide the parties' summary judgment motions?
This is a question that comes up a lot. I think that sometimes, in clients' minds, summary judgment motions are something that is resolved quickly. The parties brief their motions, the Court immediately turns to them, and then an opinion should come out in a week or two. Right?
No. That's not true in any U.S. district court I've practiced in, and the District of Delaware is no different. The Court is extremely hardworking but also overwhelmingly busy.
Judge Bryson recently unsealed his opinion in Janssen Pharmaceuticals Inc. v. Tolmar, Inc., C.A. No. 21-1784-WCB (D. Del. Sept. 8, 2023), in which he grants summary judgment of no anticipation by a reference under (Pre-AIA) § 102(a).
As a reminder, pre-AIA § 102(a) covers prior art that was available "before the invention" of the patent.
Here, the plaintiff argued that it had reduced the invention to practice before the date of the prior art. The defendant responded that, sure, they reduced an embodiment to practice before the prior art, but they didn't conceive of the invention's full scope:
Tolmar does not appear to dispute that the June 2007 clinical trials practiced …
Defendants are often looking for ways to resolve cases early—§ 101 motions to dismiss, motions for judgment on the pleadings, early summary judgment motions, and so on. Sometimes these can succeed, but it can vary a lot depending on the judge and the circumstances.
Here is one I haven't seen before: In Ravgen, Inc. v. Biora Therapeutics, Inc., C.A. No. 20-1734-RGA-JLH (D. Del.), the defendant moved for the Court to schedule a one-day bench trial on inequitable conduct just after the close of expert discovery, and before the summary judgment deadline—around 7-10 months before trial.
Motions in limine can feel like some of the most impactful-feeling motions in the case. Unlike most motions in our busy federal courts, they are typically addressed very quickly, and almost always by the judge handling trial. They are also normally addressed immediately prior to trial. As such, even if the MIL is denied, the issues presented in the MIL may remain at the top of the judge's mind and can influence the direction of the trial (and make subsequent objections easier).
We got an example of that yesterday in Personal Audio, LLC, v. Google LLC, C.A. No. 17-1751-CFC (D. Del. Sept. 5, 2023). In that case, Chief Judge Connolly granted a post-trial JMOL …
In Candid Care Co., v. SmileDirectClub, LLC, C.A. No. 21-1180-CFC (D. Del.), SmileDirectClub sued Candid Care—its competitor—for patent infringement of a single patent. Chief Judge Connolly dismissed the case, holding that the patent was patent ineligible under § 101.
The next day, SmileDirectClub sued Candid Care on a second patent in the same family, this time in the Western District of Texas.
But the Western District of Texas transferred the case back to Delaware—and, because it is related to the previous case, it was assigned to Chief Judge Connolly again. Shortly thereafter (perhaps to avoid its second patent suffering a similar fate under § 101), SmileDirectClub granted …
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.
When we last wrote about Mavexar, Chief Judge Connolly had held a civil contempt hearing after he ordered the sole member of Backertop, a Mavexar-related LLC, to appear in-person in Delaware and she failed to appear (she instead initiated a head-on challenge to the authority of the Court). She likewise failed to appear for her contempt hearing.
Today, the Court issued its opinion and order, holding the witness in contempt. It handily dispatched with each of the witness' arguments against the hearing.
It easily rejected their first argument—that the Court lacks jurisdiction after the entity, Backertop Licensing LLC, dismissed it's complaint. The Court reiterated the same ruling it made last time.
Next, the Court easily rejected the idea that civil contempt is "meant to benefit the complainant," citing multiple U.S. Supreme Court opinions to the contrary. It also rejected the idea that a party can re-litigate the underlying order in context of a contempt proceeding.
I found the Court's discussion of the alleged Fifth Amendment violation interesting, particularly when the Court attempts to identify exactly which Fifth Amendment right it could possibly have ...
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 …
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