Yesterday, Judge Andrews excluded testimony by an expert that improperly advanced a "practicing the prior art" defense. It has been firmly established that "practicing the prior art" is not a defense to literal infringement, and thus is not a proper subject for expert testimony. It is acceptable, however, for litigants to argue that if a patentee interprets a claim broadly for infringement purposes, the claim will read on the prior art ("that which infringes, if later, would anticipate, if earlier," the corollary of the proverbial "nose of wax" principle that prohibits parties from taking one view of claim scope for infringement purposes and another for invalidity).
RGA
The Honorable Richard G. Andrews
As we've recently pointed out, you need more than a boilerplate motion with generic arguments to overcome the presumption of public access in D. Del. It also helps to submit a declaration. But even if you do, don't be surprised if your request is denied.
On Monday, Judge Andrews denied a Hatch-Waxman defendant's unopposed motion to redact a hearing transcript on a motion to dismiss. This was "not a boilerplate motion" and it "was accompanied by an Affidavit."
The defendant also made the kinds of arguments that have sometimes succeeded in the past:
The gist of the underlying motion to dismiss is that Sandoz has lost its API supplier and that Sandoz will not be able to …
Longstanding practice in the District of Delaware, pursuant to the Court's local rules and the Judges' form scheduling orders and other standing orders, mandated page limits for briefing.
For example, the Court's local rules set limits of 20 pages for opening, briefs 20 pages for answering briefs, and 10 pages for reply briefs, all in 12 point font. See LR 7.1.3(a)(4); LR 5.1.1(a). However, since about mid-2019, some Judges here have permitted or required word limits in lieu of page limits for some types of documents.
For decades, judges in D. Del. have enforced a general rule that you can’t serve 30(b)(6) topics on a party’s contentions. The rationale is simple: it just isn’t fair to burden a single witness with that much information. Contention interrogatories can achieve the same the same goal, without forcing a 30(b)(6) witness to sit for the most stressful memory test of their life.
In a discovery order on Friday, Judge Andrews highlighted an important corollary to this rule: you can’t get around it by framing your contention topic as a request for “all facts” about a party’s contentions. The judge found that all four of these examples were improper contention topics:
- Investigations, tests, studies, surveys, interviews, reviews, analyses and …
Consistent with the trend in this District, Judge Andrews recently rejected a defendant's unopposed request to seal the [virtual] courtroom and exhibits for a preliminary injunction hearing, despite the defendant's assertions that its presentation might include trade secrets and other highly confidential technical and financial information, and that it would be "prevented from effectively offering its arguments" if the proceedings were not sealed.
Motions in limine can be kind of exciting. The motions and the rulings are typically short, and they are ordinarily filed with the pretrial order just before trial. Unlike most motions, the Court usually rules on them quickly (between the PTO and the trial), sometimes live at the pretrial conference, and the impact is felt almost immediately.
Plus, orders that result from MILs can sometimes have a huge effect on the practical course of the trial by precluding important arguments and evidence, or even by interfering with your trial themes—frequently at the last minute. So it's worth keeping in mind the kinds of things that may come up at the MIL stage.
Last week, Judge Andrews …
In a short order, Judge Andrews recently laid out his reasoning for denying a motion for reconsideration of a prior summary judgment ruling, and in doing so provided helpful guidance for litigants briefing summary judgment and litigants considering filing a motion to reconsider.
In an opinion last Thursday, Judge Andrews struck a defendants' prior art arguments as to two references, after it offered them for the first time in an opening expert report served nearly two years after final infringement contentions.
The Court found that the prior art arguments were intentionally withheld, because the defendant used the same expert as other parties in another case on the same patents, and those parties had asserted invalidity based on the relevant references (through the expert) nine months or more before the expert did so here:
[T]here is no explanation why Defendant did nothing to alert Plaintiff of its new theories in the nine months or more before the expert …
Judge Andrews, in granting a motion to dismiss a patentee's willfulness allegations:
The allegations could charitably be described as bare-bones. There is nothing to suggest any pre-suit knowledge of the two asserted patents. Thus, Plaintiff’s position is that failure of the Defendant to concede after a suit is filed automatically converts a non-willfulness case into a willfulness case. I disagree. Thus, I will grant the motion as to willfulness.
In the same short order, he set out his view on the difference in pleading standards between willfulness and indirect infringement:
As to indirect infringement, I think the allegations make out a case for post-December 2014 indirect infringement. (I do not think Plaintiff is arguing that there was any pre-December 2014 indirect infringement, and, in any event, there are no allegations that would provide any basis for such a theory.). I do not think the requirements in regard to state of mind for indirect infringement are as great as they are for willfulness. Thus, I will deny the motion as to indirect infringement.
This week, Judge Andrews dismissed a summary judgment motion on inequitable conduct.
Plaintiff argued—apparently correctly—that the defendant had never pled inequitable conduct at all. And, when the plaintiff moved for summary judgment on inequitable conduct, the defendant did not file any answering brief opposing the motion (although a defendant in a related action filed brief a brief for "all Defendants").
So why was the seemingly unopposed motion dismissed rather than granted? As explained by Judge Andrews:
I do not think I can grant summary judgment against a party on an issue that is neither raised by the pleadings nor asserted by the party in the briefing. Inequitable conduct is not an …
