A Blog About Intellectual Property Litigation and the District of Delaware


JLH
The Honorable Jennifer L. Hall

Divide
Crack on white concrete surface, Brina Blum, Unsplash

We've been following the district court cases holding that a complaint itself cannot establish knowledge of patent infringement sufficient to support a claim of indirect infringement or willfulness.

On Friday, Judge Hall jumped in, noting that judges in this district have taken views on this issue:

As many have acknowledged, courts—including courts within this district—disagree as to whether a pleading alleging post-suit inducement must allege that the defendant had the requisite knowledge prior to the filing of that particular pleading (or the lawsuit itself). I am also aware that there are courts—including in this district—that appear to hold that in the absence of pre-suit knowledge, a post-suit indirect infringement claim …

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Girl holding American Dollar Bills, Alexander Mils, Unsplash

An interesting fees issue was decided earlier this week in a Report and Recommendation by Judge Hall—can a prevailing defendant recover attorney's fees under § 285 for work done on a successful IPR petition?

The answer, apparently, is no.

Given the prevalence of IPR petitions, I was somewhat surprised to see that there was no authority on the issue from either the Federal Circuit or Delaware. Judge Hall found the text of § 285 decisive:

The text of 35 U.S.C. § 285 says nothing about giving the district court the ability to award fees incurred by a prevailing party in a separate administrative proceeding. The statute simply states that “[t]he …

Pills
Christina Victoria Craft, Unsplash

Magistrate Judge Hall issued an R&R today recommending that the Court deny a motion to dismiss an inducement claim against a health insurer relating to a method-of-use claim for a generic drug.

The complaint alleges that, despite knowing that the plaintiff had a method-of-use claim for a specific treatment, the insurer nonetheless covered the patented treatment at a lower cost to patients than treatment with the name-brand drug:

The thrust of the allegations against [the insurer] Health Net are (1) that it provides coverage and payment for [co-defendant] Hikma’s generic product even in cases where Health Net actually knows that a particular beneficiary is using the generic version for an unapproved—and allegedly infringing . . …

Ridesharing
Brecht Denil, Unsplash

Magistrate Judge Hall issued a § 101 R&R today in Rideshare Displays, Inc. v. Lyft, Inc., C.A. No. 20-1629-RGA-JLH (D. Del.), recommending denial of defendant Lyft's motion to dismiss based on § 101.

The Court found that the patent was not directed to an abstract idea—though it noted that it was a close call—and that, regardless, the invention contained an inventive concept under Step 2 of Alice.

We've all read about dozens (or more) of § 101 opinions over the last few years, but here are a few points of interest from Judge Hall's opinion:

  • Judge Hall closely examined the representativeness of the alleged representative claim, and rejected it as unrepresentative. Choose …

Pills
HalGatewood.com, Unsplash

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).

The Court granted the …

Plants
Matthew Brodeur, Unsplash

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 …

Artists rendition of the author patiently awaiting the return of jury trials
Artists rendition of the author patiently awaiting the return of jury trials We Don’t Deserve Dogs, Marten Bjork, Unsplash

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?

She just served a defendant in Taiwan
She just served a defendant in Taiwan Brooke Cagle, Unsplash

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. ...

Shield of Sir John Smythe (1534–1607)
Shield of Sir John Smythe (1534–1607), The Met

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 …