A Blog About Intellectual Property Litigation and the District of Delaware


RGA
The Honorable Richard G. Andrews

What You Say in Prosecution Can Be Used Against You, Even if the Examiner Disagrees

Jeff Castellano, Dec. 21, 2021
Claim Construction

In a recent order, issued shortly after the Markman hearing in Allergan USA, Inc. v. Aurobindo Pharma Ltd., C.A. No. 19-1727-RGA, Judge Andrews addressed the question of "how much weight should be assigned to a Patent Examiner's statement, in a Notice of Allowance, about the meaning of a claim."

He explained the background as follows:

During prosecution of the '291 Patent, Plaintiffs initially argued that the claimed percentage of mannitol, a well-known filler, should be calculated separately from the claimed percentage of filler. The Examiner disagreed, and, in his Notice of Allowance, indicated that the percentage of mannitol would be included in calculating the percentage of filler.

(emphasis added)

The plaintiffs/patentees urged the Court to ignore their initial statements and arguments, and instead adopt the Examiner's position. Judge Andrews declined to do so...

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Judge Andrews Declines to Adopt Proposed Constructions, Construes Term as Plain Meaning

Andrew E. Russell, Nov. 29, 2021
Plain Meaning

At a claim construction hearing the week before last, Chief Judge Connolly discussed the pitfalls of a party proposing "plain meaning" as a construction without specifying what the plain meaning is, and how that may just end up deferring disputes until later in the case. We'll have a post about that once the transcript is available.

In the meantime, I thought it was interesting that Judge Andrews this month declined to adopt opposing proposed constructions from the parties in an action, and construed the term as "plain and ordinary meaning":

Plaintiffs expert Dr. Robert Ruffolo asserts that a person of ordinary skill in the art would have understood the term "pharmaceutical batch" to incorporate [a] regulatory definition . . . …
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The Beginning of the End for Remote Depositions?

Nathan R. Hoeschen, Nov. 21, 2021
Remote Depositions

Plane in Turbulence
Turbulence, Joshua Hoehne, Unsplash

Perhaps the most facile musing of the late-stage (please) pandemic, is wondering if remote work will become a permanent fixture in our lives. It's become such a common topic for think pieces, that I would not disgrace these hallowed pages with another trite contribution to the ouevre.

I am, however, duty-bound to note a recent development that suggests that remote depositions may not be long for this world. The issue arose before Judge Andrews last week in Takeda Pharms. USA, Inc. v. Mylan Pharms .Inc. C.A. No. 19-2216. The plaintiffs sought to depose the defendant's former counsel, who "purportedly reviewed, drafted, and edited the settlement and license agreements that are at the center of this …

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Court Excludes "Cobbled Together" Damages Theory Days Before Trial; Plaintiff Wins Infringement But No Damages Award

Andrew E. Russell, Nov. 18, 2021
Trial Expert Reports

Ouch.
Ouch. Emil Kalibradov, Unsplash

Back in September we wrote about how Judge Andrews rejected an expert who relied on a 50/50 starting point to show damages in a patent case. We noted at the time that the defendant had moved to strike any follow-up theory by the plaintiff, and it wasn't clear that the Court had ruled on it before trial began.

Now we know what actually happened. Yesterday, the Court released its opinion on the motion to strike. In its opinion, the Court explained that after the plaintiff lost its damages expert, the plaintiff tried to "cobble together" a damages theory from various facts on the Friday before trial. The Court struck that new theory:

[Plaintiff] NexStep …
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When a "Means for" Claim Element Is Not a "Means-Plus-Function" Claim Element

Andrew E. Russell, Nov. 17, 2021
Means-Plus-Function § 112 ¶ 6

CIrcuit Board
Umberto, Unsplash

Most patent litigators are familiar with means-plus-function claims, which are defined by 35 U.S.C. § 112(f) (previously § 112 ¶ 6). They allow a patentee to write a claim limitation as a "means" or "step" for performing a function, which is performed by the corresponding structure (or material, or acts) within the specification.

Section 112 ¶ 6 can be a gold mine for accused infringers. If they successfully argue that a claim element falls under § 112 ¶ 6, they can then argue invalidity based on a lack of corresponding structure, or they can argue non-infringement if there is structure but their products lack any equivalent. Patentees usually don't want to construe their claims as § 112 …

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Numerical Boundaries Not Required to Avoid Indefiniteness

Jeff Castellano, Nov. 9, 2021
Indefiniteness Claim Construction

In a recent claim construction ruling on a single claim term, Judge Andrews rejected an indefiniteness challenge based on the lack of "specific numerical boundaries" in the claim.

The technology at issue in Commscope Technologies LLC v. Rosenberger Site Solutions, LLC, C.A. No. 20-1053, involves antennas used in cell phone towers. The patent-in-suit is directed to solving the problem of distortion in multi-band antennas by "preventing the antenna elements intended to receive high bands from transmitting low band signals."

The defendants argued that the below claim language is indefinite...

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No § 285 Fees Against Counsel

Andrew E. Russell, Nov. 8, 2021
§ 285 Attorney's Fees

Back in August, Judge Hall shot down a plaintiff's attempt to recover its fees from counsel under 35 U.S.C. § 285, which provides for the award of "reasonable attorneys fees" in "exceptional cases." Today, Judge Andrews rejected several objections to Judge Hall's decision.

As set forth by Judge Andrews, the defendants' basic argument was that while earlier cases held that § 285 does not permit fee awards against attorneys, certain dicta in the Supreme Courts more recent Octane Fitness opinion changed that:

Defendants contend that the Magistrate Judge "overlooked" the Supreme Court's Octane Fitness opinion, in which the Court found that § 285 imposed "one and only one constraint on district courts' discretion to award attorney's fees in patent …
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Judge Andrews Rejects Attempt to Introduce Supplemental Expert Report and New Trial Exhibit a Week Before Trial

Andrew E. Russell, Nov. 5, 2021
Trial Trial Procedure

Talk about 11th hour...
Talk about 11th hour... Bryce Barker, Unsplash

The parties in Genentech, Inc., et al. v. Apotex Inc., C.A. No. 19-78-RGA (D. Del.) are set to start a patent bench trial on Monday relating to a method of treating a particular disease, idiopathic pulmonary fibrosis (“IPF”), using the drug pirfenidone.

At the end of last week, plaintiff tried to serve a last-minute supplemental expert report and a new trial exhibit. The report and exhibit involve a newly-released study regarding the treatment of COVID-19. Apparently, according to the defendants, plaintiffs wanted to submit the new evidence on the theory that the COVID-19 treatments may cause IPF, which may be treated using pirfenidone, thus potentially resulting in infringement.

Plaintiff's …

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What Can a Patentee Do When the Court Excludes Its Damages Expert? Maybe Force the Other Side’s Damages Expert to Testify for the Patentee.

Andrew E. Russell, Oct. 29, 2021
Damages Experts

With this case, the hits just keep coming...
With this case, the hits just keep coming... Mitya Ivanov, Unsplash

What do you do when your expert's damages opinion gets excluded, the Court rules you cannot proceed based solely on the factual evidence, and you bear the burden of proof?

According to an opinion from Judge Andrews yesterday, one option is to call the other side’s expert—even if the other side otherwise refuses to put her on the stand.

This Case Again?

We've actually talked about this case, Shure Inc. v. ClearOne, Inc., C.A. No. 19-1343-RGA-CJB (D. Del.), quite a bit at this point, including defendant's efforts to use DJ jurisdiction to keep part of the case out of Delaware, and plaintiff's effort …

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Judge Andrews Strikes Last-Minute Damages Report

David M. Fry, Oct. 27, 2021
Damages Pennypack

When it comes to supplemental expert reports, how late is too late?

In a case that's set for trial next month, Judge Andrews recently addressed the parties' objections to a number of orders and R&Rs issued by Magistrate Judge Burke. In one of those orders, Judge Burke granted a motion to exclude some of the plaintiffs' damages calculations as erroneous and unreliable.

The plaintiffs objected, and in the meantime, they served a supplemental damages report attempting "[t]o correct the flawed analysis" excluded by Judge Burke.

Judge Andrews not only overruled the objections, but also found that the supplemental report was submitted too late:

The report was filed less than three weeks before trial. . . . This is …
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