Judge Hall today issued an R&R on attorneys fees in In Re Kerydin (Tavaborole) Topical Solution 5% Patent Litigation, MDL No. 19-md-2884-RGA (D. Del. June 23, 2021), an ANDA case.
There, the plaintiff filed suit on four patents even though the PTAB had previously found an earlier patent in the family invalid in an IPR, and even though IPRs were pending on each of the four patents-in-suit.
Filing suit triggered the 30-month stay of FDA approval. Shortly after the suit was filed, one of the defendants moved to stay; plaintiff did not oppose, and actually filed a cross-motion to stay its own action against the other defendants (who opposed).
In a trade secret dispute over THC remediation processes, Judge Hall recently denied a hemp processing company's motion for a preliminary injunction. The redacted version of her opinion came out yesterday, and it gives some helpful guidance for parties litigating trade secret disputes. It also touches on an important tip for legal writers everywhere.
As usual, one of the key questions was whether the plaintiff adequately identified the trade secrets at issue. This requires a careful balancing act—the trade secret needs to be broad enough to cover what the defendant is doing, but narrow enough to qualify for trade secret protection in the first place.
In trying to walk this line, lawyers are often tempted to …
In Delaware, Local Rule 7.1.2(b) sets deadlines for responding to motions, and states that
Except for the citation of subsequent authorities, no additional papers [other than the opening, answering, and reply briefs] shall be filed absent Court approval.
Based on this rule, parties file "notices of subsequent authorities" to present after-arising citations (and sometimes other content) to the Court.
But some attorneys disagree about just how much argument can accompany the "citation[s]" a notice of subsequent authority. The authority is mixed.
In some cases, the Court has declined to consider notices containing argument that are filed without leave. See, e.g., Forest Labs., Inc. v. Amneal Pharm. LLC, C.A. No. 14-508-LPS, 2015 U.S. Dist. LEXIS 23215, at *51 …
This week brought to light yet another unexpected side effect of COVID-19 -- it's now harder to win a motion to bifurcate.
This interesting tidbit came to light in Judge Hall's opinion in Evertz Microsystems Ltd. v. Lawo Inc., C.A. No. 19-302, D.I. 259 (D. Del. Feb. 23, 2021). The defendant there moved to bifurcate the infringement and damages cases into separate trials near the close of fact discovery. In denying the motion, Judge Hall noted that the prejudice to the plaintiff, and strain on the Court, of holding two separate trials was greater than it would normally be because it was unlikely the second trial could be scheduled for years:
As the parties both know, this Court currently has an extremely congested docket. It would be difficult to schedule an additional trial in this action; thus, Evertz would likely have to wait additional years to have full resolution of its claims.
Id. at 3.
Its also worth noting that Judge Hall called out the "fairly litigious" nature of the case, with the parties "raising numerous discovery disputes before the Court" leading to concerns that "bifurcating and staying the issue of damages will result in (1) duplicate discovery requests and disputes as those already resolved and (2) new disputes over what is appropriately part of the liability phase versus the damages phase" that would further tax the Court." ...
Service of process on a foreign defendant can be tricky. If the foreign defendant will not agree to waive service under Rule 4(d), a plaintiff is left with methods of service under Rule 4 that are often complex and time-consuming, and come with no guarantee that the service will ultimately be effective.
And while Rule 4 does not set a deadline for service of process on foreign defendants, as it does for domestic defendants, the time to serve is not unbounded. Helpfully, Rule 4 provides a fallback that opens up the door to other--perhaps less onerous--methods of service, including simply sending an email (in the right circumstances).
When Can You Serve by E-mail?
Last week Magistrate Judge Hall permitted service on a foreign defendant by email pursuant to FRCP 4(f)(3), which provides that, in addition to various other methods of service, service of process may be achieved "by other means not prohibited by international agreement, as the court orders."
As Judge Hall recounted, plaintiff DivX LLC first attempted service by certified mail on Taiwanese defendant Realtek Semiconductor Corp., but Realtek apparently refused to accept the mail delivery. ...
This week judges in the District of Delaware issued two orders regarding discovery disputes seeking relief from protective orders in patent actions. One granted relief, and one denied it. The contrast between the two is a great illustration of how you should and shouldn't argue for relief from a protective order.
How Not to Do It
In the first action, plaintiff Wildcat sought permission to disclose defendant's materials from the district court in a co-pending IPR to support its secondary considerations of non-obviousness. The protective order specifically allowed this:
All Protected Material shall be used solely for the above-captioned cases or any related appellate proceeding and/or proceedings before the United States …
Since the early 2000's, the District of Delaware local rules have prohibited talking to a witness about the subject matter of their deposition testimony during a deposition:
RULE 30.6. Depositions Upon Oral Examination.
From the commencement until the conclusion of deposition questioning by an opposing party, including any recesses or continuances, counsel for the deponent shall not consult or confer with the deponent regarding the substance of the testimony already given or anticipated to be given, except for the purpose of conferring on whether to assert a privilege against testifying or on how to comply with a court order.
It's not uncommon for visiting counsel defending depositions in Delaware cases to not know this rule. …
Magistrate Judge Hall recently issued a report and recommendation examining the issue of timeliness of service of process on foreign defendants via the Hague Convention. Although Judge Hall denied the foreign defendants' motion to dismiss, the discussion of timeliness is worth noting.
This blog is for general informational purposes. It is not an offer to perform legal services, and should not be considered a substitute for legal advice. Nothing in this blog should be construed as forming an attorney-client relationship. If you have legal questions, please consult counsel in your jurisdiction.