Discovery agreements are a powerful tool. If you promise to produce to do or not do something during discovery, the Court will typically enforce that:
Litigating parties, represented by able patent counsel, are expected to uphold the agreements they make during a case, and the Court should ordinarily (absent extreme circumstances not present there) enforce such agreements.
The Nielsen Company (US), LLC v. TVision Insights, Inc., C.A. No. 22-057-CJB, D.I. 177 (D. Del. Mar. 8, 2024).
What are the kind of "extreme circumstances" that warrant not enforcing a discovery agreement? We got a hint of that last week in In re: Entresto (Sacubitril/Valsartan) Patent Litigation, C.A. No. 20-2930-RGA, D.I. 1683 (Dec. 5, 2024).
Judge Andrews issued an interesting opinion on opposing summary judgment motions yesterday in Takeda Pharmaceuticals U.S.A., Inc. v. Mylan Pharmaceuticals Inc., C.A. No. 19-2216-RGA (D. Del.).
The parties settled a patent infringement suit years ago in a way that permitted the defendant to nonetheless launch its drug product if the patent claims were asserted against a third party and found invalid or not infringed.
Some of the claims were asserted against a third party and held invalid or not infringed, and the defendant launched. The plaintiff disagreed that this permitted launch. It sued the defendant for breach of contract and, critically, for patent infringement.
Plaintiffs in the patent game tend to treat prior art references like particular unwelcome guests. There is an obvious level of affront when they arrive, tempered only by what politeness can be mustered. Once they are in the door, there are constant references to how crowded it is, how little air, how maybe we should just call it a night even though its just so much fun to see everyone.
(Eds. Note -- can you tell I'm from the midwest? I was going over this metaphor with one of the many New Yorker's I know and they seemed not to get the dynamic).
Once you finally cajole them our of the house, packed with leftovers and other bribes, it …
You don't have to depose the other parties' experts, and strategically, sometimes it can make sense not to. If you have a good sense that their report(s) are flawed and they may use the deposition to try to add key information to the record (regardless of your questions), it may make sense to avoid the deposition altogether.
That strategy is less common but certainly not unheard of—assuming trial counsel is confident in their positioning and ability to …
(Eds. Note -- I was cackling at this headline for quite a while)
I tried for a while to get a public domain image of the Wicker Man, but sadly it does not seem to existAI-Generated, displayed with permission
We've got an interesting fees opinion from Judge Andrews this week, dealing with the prevailing party analysis.
Interactive Games LLC v. DraftKings, Inc. C.A. No. 19-1105-RGA (D. Del. Oct. 29, 2024), had a relatively succinct history, despite its long pendency. The plaintiff sued on several patents, the case was stayed pending settlement discussions and ultimately several IPR's. The PTAB found most of the patents invalid. Plaintiff then appealed, and the Federal Circuit affirmed the invalidity ruling. The Plaintiff then dismissed the District Court case without prejudice -- the defendant having never answered.
The defendant then moved for fees arguing that the patents were exceptionally weak. The Plaintiff countered that the defendant was not the prevailing party, since they had voluntarily dismissed their claims.
Judge Andrews, however, held that while a PTAB decision invalidating the patents might have lacked a sufficient judicial imprimatur to render defendant the prevailing party, the fact that the Federal Circuit affirmed the decisions on appeal changed the calculus:
In the case-in-suit . . . a final court decision did affect the parties' legal relationship. Plaintiff appealed the PTAB' s IPR invalidity decisions to the Federal Circuit and the Federal Circuit affirmed. By invalidating the claims in three of Plaintiffs patents through IPR proceedings, Defendant "successfully rebuffed" Plaintiffs "attempt to alter the parties' legal relationship." The Federal Circuit's affirmance of these invalidations marked Defendant's success with ''judicial imprimatur" . . . Therefore, I find that Defendant is a prevailing party.
Id. at 6 (internal citations omitted).
As often happens, the Court ultimately declined to find the case exceptional and awarded no fees. It's interesting to note however, that the Court clearly distinguished this case from others finding that the defendant was not the prevailing party when they merely prevailed at the PTAB. There is thus, some danger to appealing a PTAB ruling and giving the Federal Circuit an opportunity to grant their judicial imprimatur, and thus allowing for a fee award in an otherwise exceptional case.
AI-generated depiction of Judge Andrews putting down zombie claims for good.AI-Generated, displayed with permission
Former Chief Judge Sleet used to frequently say that "there is no such thing as the law of the district." Genentech, Inc. v. Amgen Inc., No. 17-1407-GMS, 2018 U.S. Dist. LEXIS 9544, at *8 n.3 (D. Del. Jan. 22, 2018) (cleaned up). In other words, one district court judge's ruling is not binding on another.
We saw that yesterday, when Judge Andrews held that claims dropped due to claim narrowing are dropped with prejudice, and recognized that another of our judges had previously held the opposite on similar facts.
In Exeltis USA, Inc. v. Lupin Ltd., C.A. No. 22-434-RGA (D. …
"A POSITA would be motivated to combine cocktail sauce and raspberry jam, as both are red-colored foodstuffs safe for human consumption that come in glass containers with metal, screw-on lids."AI-Generated, displayed with permission
Judge Andrews issued a lengthy summary judgment and Daubert opinion on Thurday in Acceleration Bay, LLC v. Amazon Web Services, Inc., C.A. No. 22-904-RGA (D. Del.). The opinion hits multiple interesting issues, and we may have a couple of posts on it this week.
But the one ruling that jumped out to me was the Court's rejection of the fairly typical, low-effort motivation-to-combine language that many experts rely on in their obviousness opinions.
Motivation to combine is often an afterthought. I've seen many initial contentions that address it only in a short paragraph that basically just lists characteristics of each reference (same field, same problem, etc.). Expert reports sometimes uncritically adopt paragraphs like that no elaboration.
If you've ever been involved in reading or writing invalidity contentions, you've probably seen motivation-to-combine paragraphs just like this one, from Thursday's opinion:
As those charts show, [the first reference] ATT Maxemchuk builds upon [the second reference] ’882 Maxemchuk and informs a POSITA of additional details related to ’882 Maxemchuk’s grid-based mesh network. A POSITA would be motivated to combine these references for several reasons. Both references are in the network architecture field and are directed to improving mesh networks. Both teach the simplification of routing of data that arises from the grid-based mesh network. And both disclose the same grid-based mesh network. In addition, ATT Maxemchuk includes additional implementation details for the grid-based mesh network that ’882 Maxemchuk describes.
The paragraph gives just four one-sentence reasons for its statement that a person of skill in the art would combine the references. Three of the reasons are about general similarities between the references.
The fourth sentence is a bit more helpful, and says that the first reference provides "additional implementation details" for part of the second reference.
The Court found that this paragraph—which the parties agreed was representative—simply could not provide support for a motivation to combine the references. The Court granted summary judgment of no obviousness:
Mr. Greene “fails to explain why a person of ordinary skill in the art would have combined elements from specific references in the way the claimed invention does.” . . . His opinion does nothing more than explain why the prior art references are analogous to each other and to the claimed invention. . . . Plaintiff’s “assertions that the references were analogous art, . . . without more, is an insufficient articulation for motivation to combine.” . . .
As Defendant’s invalidity contentions rely on Mr. Greene’s testimony, Mr. Greene’s failure to opine on a POSA’s motivation to combine the asserted prior art references proves fatal to Defendant’s obviousness theory. I grant summary judgment of nonobviousness as to all asserted obviousness defenses.
Acceleration Bay, LLC v. Amazon Web Services, Inc., C.A. No. 22-904-RGA, at 37-38 (D. Del. Sept. 12, 2024).
Wilmington, DE. Who wouldn't want to litigate here? These guys, obviously.Andrew Russell, CC BY 2.0
We've talked a lot about how the Jumara factors, which govern how courts in the Third Circuit exercise their discretion on motions to transfer, are pretty tough on plaintiffs. Patent cases seems to stick more often than not, but plaintiffs with other claims, such as false advertising, may not be so lucky.
Judge Andrews granted a motion to transfer in a false advertising case on Friday. Here's how the factors broke down:
Plaintiff's Choice of Forum: This always favors plaintiff, and …
Patent lawyers often lament their clients' casual correspondence, which sometimes read like the villains monologue that might close the first act of an early 80's Disney Movie.
"Steal? Of course I stole, the work is lucky I left him hands grovel or eyes to cry."AI-Generated, displayed with permission
Today's case, Jackson v. NuVasive, Inc., C.A. No. 21-53-RGA, D.I. 309 (D. Del. Aug. 2, 2024), is the rare case where those casual communications are helpful to the case.
You see, NuVasive had a prior agreement with Dr. Jackson that included a covenant not "assert . . . any claim that the development, manufacture . . . or exploitation of any NuVasive prodect . . . infringes and of the Jackson Group's rights" in a variety of defined IP categories. So, when Dr. Jackson sued for infringement of various patents not specifically listed in the agreement, the parties naturally disputed whether they fell within the terms of the covenant.
This leads us to an internal email from one of NuVasive's IP attorneys who worked on the agreement which helpfully stated, "I just want to ensure we’re as clear as possible that we’re FOREVER FREE FROM JACKSON (and any down-stream licensees/assignees) based on the rights we originally obtained and are now obtaining.”
Plaintiff moved in limine to exclude this email as hearsay, arguing that NuVasive would use it to prove the truth of the statement that they "were obtaining" rights that would leave them "FOREVER FREE" of Jackson.
Judge Andrews, however, found that the statement could be admitted subject to a limiting instruction:
Mr. Spangler's live testimony about what he wanted to achieve in the 2014 Agreement is not hearsay. The email clearly expresses Mr. Spangler's goal in the negotiations, which is evidence of his motive, intent, and plan. See Fed. R. Evid. 803(3). His motive, intent, and plan, in conjunction with other evidence, appear to be relevant to proving two of Defendant's counterclaims . . . I agree with Defendant that if Mr. Spangler's testimony were challenged, as it seems almost certainly likely to be, at least impliedly, the email would not be hearsay if offered in response to that challenge. Fed. R. Evid. 801(d)(l)(B) . . . . Thus, I will admit the email. The motion (D.I. 293) is DENIED. There is a bit of hearsay within the email. If Plaintiff wants me to give a limiting instruction in connection with that bit, Plaintiff is ORDERED to submit any such proposal before the pretrial conference is held.
Id. at 3-4.
I for one find it amusing that this rare example of a communication helpful to a case was authored by an attorney. It's probably good advice to all you in-house folks out there—send the occasional email to your buds explaining that you're totally in the right. It might turn out to be important one day.
It's usually risky to send long, unsolicited letters to the Court seeking relief, particularly with extensive argument. Generally you are well served to keep letters short and limited or you may annoy the Court.
The Court frequently says that it prefers parties to make requests for relief by motion rather than letter. This is even included most (maybe all) of the judges' form scheduling orders:
Applications by Motion. Except as otherwise specified herein, any application to the Court shall be by written motion. Any non-dispositive motion should contain the statement required by Local Rule 7.1.1 [that the parties have verbally met-and-conferred with local counsel on the line].
But the Court doesn't always enforce this. It's not …
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