A Blog About Intellectual Property Litigation and the District of Delaware

The Honorable Richard G. Andrews

"We didn't need that joint brief anyway ... (sob)" Jeff Kingma, Unsplash

Judge Andrews issued an interesting order on Friday. Based on the docket, it looks like the parties had fully completed the Markman process (disclosures, meet-and-confer, joint claim chart, and joint brief), and had briefed a total of 16 terms. Judge Andrews canceled the Markman and "dismissed" the briefing:

ORAL ORDER: The parties have submitted a joint claim construction with the request that I construe at least 16 terms including, for example, comprising and patient. I think that if I postpone the Markman hearing, some of these disputes may fall away. Therefore, the Markman hearing scheduled for June 23 is cancelled. The Markman briefing is dismissed. The parties …

Undo Button
Sergi Kabrera, Unsplash

On Wednesday, Judge Andrews issued an order in Salix Pharmaceuticals, Ltd. v. Norwich Pharmaceuticals, Inc., C.A. No. 20-430-RGA (D. Del. May 17, 2023) rejecting an attempt to evade judgment in an ANDA action based on the filing of an amended ANDA.

The defendant in the case had won on one method of treatment, and lost on the other. It filed an amended ANDA seeking to remove the infringing treatment from the label:

Defendant filed an ANDA seeking to make and market a drug for two different methods of treatment-the IBS-D indication and the HE indication. I had a bench trial. After trial, I ruled in Defendant's favor on the IBS-D indication (as …

A few weeks ago, Andrew wrote a post on a case where Judge Connolly denied objections to a magistrate's order for failing to identify the standard of review. Well, don't call it a comeback, but it happened again, this time in a case before Judge Andrews.

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AI-Generated, displayed with permission

The objection in question actually failed under the rules on two counts—both failing to cite the relevant standard of review, and failing to include the certification that new arguments were not being raised. Judge Andrews found both failures fatal:

The first question on review is, what is the standard of review? The Local Rules recognize this: "Objections . . . shall identify the appropriate standard of review." I note that requiring the statement of a standard of review is helpful to the reviewing court. It might also help the disappointed party to consider whether it should even file objections. Barry does not identify a standard of review. . . . Barry did not comply with the Standing Order. His objections are thus overruled. I need proceed no further. . .
The Court has a standing order that states: "Any party filing objections . . . must include . . . a written statement either certifying that the objections do not raise new legal/factual arguments, or identifying the new arguments and describing the good cause for failing to previously raise [them] before the Magistrate Judge." Barry did not file such a written statement with his objections. Seaspine pointed this out. . . . Seaspine asserts that Barry has raised arguments that he did not raise before the Magistrate Judge. Had Barry filed the required statement, I would know what his position on Seaspine's assertion is. Even after Seaspine raised the issue, Barry did not seek leave to file a statement providing the required information. This is not some arcane requirement. It is a practical one, designed to make referrals to magistrate judges as efficient as the referral system can be. Barry' s objections are thus overruled. I need proceed no further

Barry v. Stryker Corporation, C.A. No. 20-1787-RGA (D. Del. May 4, 2023) (Mem. Order)

At this time, the bloggers code of ethics requires me to call this a trend. Stay safe out there.

Today I noticed for the first time what may be a new move in the redaction game. I neither like nor understand chess (the two may be related), but it feels like I witnessed the birth of the French defense.

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AI-Generated, displayed with permission

As we've discussed ad nauseum, it has become standard practice for Judge Andrews to reject filings that redact exhibits in their entirety (or nearly so) with an oral order like the following:

ORAL ORDER: The redacted filing (D.I. 163 ) is REJECTED because parts of it are redacted in its entirety. Absent a compelling reason, supported by a statement under oath by a party, redactions in their entirety are impermissible; redactions must be done so as to redact the least possible amount of the materials submitted. Failure to make a good faith attempt at such redactions may result in sanctions, the most common of which would be simply unsealing the entire filing. Redacting in its entirety a document or parts of it that contains publicly available materials is prima facie evidence of bad faith. A revised redacted filing is DUE within five business days.

Vertex Pharms. Inc. v. Sun Pharm. Ind. Ltd., C.A. No. 20-988-RGA (D. Del. Apr. 12, 2023).

Despite this repeated refrain, I still see at least a couple such orders every month. This week, however, was the first time I saw a party take the step of submitting "a statement under oath by a party" at the same time it submitted its redactions, rather than waiting for them to first be rejected.

Interestingly, the statement itself was fairly light on detail stating only that it was redacting "the proprietary formulation contained in its ANDA" and describing ...

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Motions for reargument are notoriously hard. Winning one is the legal equivalent of the going to the dentist and hearing that you really ought to take it easy and stop brushing so much.

Nevertheless, you see them filed all the time. I imagine the thinking is that, even if the odds are low, you've already lost the motion so things can't get any worse.

But they can!

Things can always get worse!

You could tell he was just trying to hold it in in the last photo
You could tell he was just trying to hold it in in the last photo AI-Generated, displayed with permission

This was the lesson in Carrum Techs., LLC v. Ford Motor Co., C.A. No. 18-1647 (D. Del. Apr. 11, 2023). A couple of weeks ago, the defendant filed a motion to seal one of its briefs. The motion was short and unaccompanied by a declaration, so Judge Andrews denied it in a one-sentence Oral Order.

Now it's unclear why exactly the Defendant filed a motion to seal in this instance, as the parties had previously filed many documents under seal without a motion in accordance with CM/ECF procedures. The defendant thus moved for reargument on the motion to seal, largely arguing that it hadn't needed to file the motion in the first place:

Over the course of this litigation, various other pleadings have been filed under seal by agreement of the parties. Ford did not intend to request different treatment of its Memorandum and Exhibits than prior sealed filings in this litigation. Rather, Ford proceeded in a manner ...

This is the kind of engine that has structure.
This is the kind of engine that has structure. Markus Spiske, Unsplash

There are only so many ways to get rid of claims early in the case. One of them is arguing indefiniteness at claim construction, for the judges who permit that.

Indefiniteness at Markman typically invoves either a Nautilus-style argument about a term lacking reasonable certainty, or a § 112 ¶ 6 argument that a means-plus-function term lacks corresponding structure in the specification.

Today, Judge Andrews addressed such a § 112 ¶ 6 argument, and found both that software terms reciting an "engine" were means-plus-function terms, and that the terms lacked corresponding structure in the specification. First, he found that "engine" is a "nonce word" that doesn't refer to a specific structure—breaking with at least one case that found the opposite:

I agree with Defendant that “analysis engine” is a means-plus-function limitation. Defendant has overcome the presumption that “analysis engine” is not subject to § 112, ¶ 6 by showing the claim fails to “recite sufficiently definite structure.” . . . The parties agree that an “engine” in this context refers to a program or part of a program to perform a function or manages data. . . . “Engine” appears to be synonymous with “module,” which is recognized as a common “nonce” word. Williamson, 792 F.3d at 1350 (finding “module” to mean “a generic description for software or hardware that performs a specified function” to be a “well-known nonce word”); see also Parity Networks, LLC v. ZyXEL Commc'ns, Inc., 2020 WL 8569299, at *6 (C.D. Cal. Dec. 22, 2020) (finding “engine” was a nonce word in the term “multicast engine”). But see Stragent, LLC v. Amazon.com, Inc., 2011 WL 13152568, at *4 (E.D. Tex. June 27, 2011) (finding “engine” conveyed structure and was not subject to § 112, ¶ 6).

The argument that the "analysis engine" was part of the novelty of the patent was not enough to save it—and that argument may have even hurt the plaintiff ...

Green Light
Pawel Czerwinski, Unsplash

Parties in D. Del. patent actions frequently stipulate to adjustments of the case schedule, and these typically go through without any issue. So it always catches my eye when a stipulated stay is denied.

In Zogenix, Inc. v. Apotex Inc., C.A. No. 21-1252-RGA (D. Del.), and two related actions, one of the defendants had moved to dismiss one of the asserted patents in a related action, and the plaintiff had moved to amend its complaint to assert additional patents and join additional parties. The motions were filed in September and November, 2022, and remain pending.

The parties in the three actions stipulated to consolidate the actions for the purposes of discovery, and to stay the consolidated action until resolution of the motions to dismiss and amend.

Judge Andrews denied the motion, ordering that the parties instead move forward as if the motions were resolved in the broadest way:

ORAL ORDER: The Stipulation to Consolidate and Stay Case . . . is DENIED. The Court is not willing to stay the cases. The discovery deadlines in the two earlier cases . . . will not be extended. The parties should proceed as though the motion for leave to amend . . . will be granted and the motion to dismiss . . . will be denied. Ordered by Judge Richard G. Andrews on 3/1/2023.

We've noted before that stipulations to stay the entire case can be iffy, and Judge Andrews has previously rejected an attempt ...

Even the dullest 1L can tell you that rule 12(b) sets the timing for motions to dismiss:

A motion asserting any of [the 12(b)] defenses must be made before pleading if a responsive pleading is allowed.

However, pursuant to 12(h), the defenses listed in 12(b)(2)-12(b)(5) are not actually waived as long as you include them as an affirmative defense in your answer (12(b)(1) and (b)(6) have separate rules).

A party waives any defense listed in Rule 12(b)(2)–(5) by . . failing to either:(i) make it by motion under this rule; or include it in a responsive pleading or in an amendment allowed by Rule 15(a)(1) as a matter of course

So then, if these defenses aren't waived, when can you …

Here is something you don't see everyday.

On Thursday, Judge Andrews granted a motion for summary judgment of invalidity for claims that failed to include a limitation from the spec.

In MHL Custom, Inc. v. Waydoo USA, Inc., C.A. No. 21-091-RGA (D. Del. Feb. 2, 2023), the patent at issue described a "passively stable hydrofoil." The hydrofoil is a board that a person can ride in the ocean, with a big fin under the water to keep it stable:

The hydrofoil at issue, from U.S. Pat. No. 9,586,659
The hydrofoil at issue, from U.S. Pat. No. 9,586,659 U.S. Pat. No. 9,586,659

As the Court describes, the whole patent is focused on the board's stability feature:

The specification of the '659 Patent only, and repeatedly, describes the …

Typical day in litigation
Typical day in litigation AI-Generated, displayed with permission

We've talked before about a common question in patent cases: whether parties can (or have to) address indefiniteness during the Markman claim construction process. The answer varies greatly by judge.

The Markman process sometimes occurs early in the case, and parties have to make a call fairly early-on about whether they want to address indefiniteness early in the case, or wait until later.

Plaintiffs usually want to defer indefiniteness for later to keep the case going as long as possible. Defendants, on the other hand, can go either way: Often they want to address indefiniteness early to resolve the action, but sometimes they aren't quite ready and prefer to wait as …