Last week, Judge Andrews ruled on claims of privilege by Express Mobile ("EM") in Shopify, Inc. v. Express Mobile, Inc., C.A. No. 19-439-RGA, finding that several of the claims were "frivolous," and ordering a revised privilege log and supporting lawyer declarations "so that I know who to blame should Express Mobile continue to baselessly assert claims of privilege."
RGA
The Honorable Richard G. Andrews
In light of the ongoing delays in restarting patent jury trials, and the rising COVID-19 numbers nationwide, it's no surprise to see Judge Andrews recognize that parties may be better served by having a bench trial in the near future rather than waiting an indeterminate time for a jury to be available:
ORAL ORDER: The court doubts that a jury trial will be feasible on Feb. 1. On the other hand, a bench trial would be very feasible. The parties are requested to discuss with each other whether they would mutually agree to a bench trial on Feb. 1, and, if they both do agree, report that fact to the court by no later than Dec. 9. If one …
In Delaware, there are a few hoops to jump through if you want to bring a discovery dispute before the Court. Local Rule 7.1.1 is the most basic, and requires the parties to make "reasonable efforts" to resolve their disputes, including verbal communications between opposing Delaware Counsel.
Next, each Judge has their particular procedures for bringing the dispute, either requiring a joint phone call to chambers (Judges Connolly, Noreika, and Andrews) or a joint letter outlining the issues and confirming that the parties have met and conferred (Judge Stark). In either case, the parties …
A Markman ruling issued by Judge Andrews this week demonstrates how hard it can be to convince the Court that a patentee has disclaimed claim scope. In the MDL In re: Sitagliptin Phosphate ('708 & '921) Patent Litigation, Judge Andrews drew a distinction between the kinds of prosecution activity that can give rise to disclaimer, and those that cannot.
In short, defendants argued that the plaintiff had disclaimed claim scope regarding the nature and purpose of the claimed "surfactant" during prosecution. The Court ultimately agreed in part, finding that "surfactant" had been limited to a "wetting agent" that increases dissolution of sitagliptin.
It is worth noting here that …
In the most recent entry in the case narrowing saga in IPA Techs., Inc. v. Amazon.com, Inc., 16-1266-RGA (previously covered here and here), Judge Andrews addressed defendant Amazon's objection to the reassertion of previously dropped claims.
Earlier this year, Judge Andrews directed IPA to reduce its asserted claims to 30, and it did. Subsequently, nearly half of its asserted claims were invalidated in an IPR. Plaintiff IPA, no longer asserting the invalidated claims, then added (or "reasserted") seven of the previously dropped claims in place of the invalidated claims.
Amazon opposed the addition of the new claims because fact discovery was nearly complete and because it had crafted its invalidity case with the 30 asserted claims in …
Ok, maybe not all people, and not all of the time. But in ranking the kinds of prior art I'd like to be able to assert against a tech patent, off of the top of my head, I'd rank system references pretty low:
- A U.S. Patent: Simple and easy.
- A foreign patent: Proving authenticity and publication is usually easy (but sometimes not).
- A journal publication: You may have to jump through some hoops, but no big deal.
- A Wayback Machine reference: Now one of those hoops is waiting (and waiting...) for a declaration through the Internet Archive's procedures. But it's not hard to get.
- A book. Now you may be dealing with librarian declarations.
- . . . …
This week saw the birth of a novel way to raise a claim narrowing dispute, and it strikes me as rather clever.
Typically the number of claims asserted gets raised as a discovery dispute or as part of the scheduling or status conference.
The plaintiff in TQ Delta, LLC v. Pace Americas, LLC, C.A. No. 13-1835-RGA (D. Del.), though, took a different tack and instead moved for extra pages for summary judgment briefing, explaining that it needed the extra pages because the defendant was asserting 18 invalidity defenses (against plaintiff's 2 asserted claims).
This resulted in the following turn of events:
- Judge Andrews immediately issued an Oral Order requesting defendant …
In Guest Tek Interactive Entertainment, Ltd. v. Nomadix, Inc., C.A. No. 18-1394-RGA (D. Del.), plaintiff sent RFPs for various financial documents, but defendant produced only a single page profit and loss statement for each year, claiming no more was available.
Plaintiff brought a discovery dispute and asked Judge Andrews to order production of any further documents in defendant's possession.
Judge Andrews declined. Instead, he sua sponte suggested that the parties resolve this via a 30(b)(6) deposition about the kinds of financial information that defendant keeps:
[D]o a 30(b)(6) deposition and find out if there are any other documents. And you know, …
Always a bit terrifying:
The [unopposed] motion to redact (see C.A. 19-311-RGA D.I. 96) is DENIED. The redactions are extensive, and the request to redact is unsupported by any statement under oath. I do not think the motion meets the requirements of Avandia Marketing. Ordered by Judge Richard G. Andrews on 10/2/2020.
Merck Sharp & Dohme Corp. v. Anchen Pharmaceuticals, Inc., 19-311-RGA, D.I. 97 (D. Del. Oct. 2, 2020).
If you want your motion to redact to succeed these days, you really need to keep the redactions narrow, and it's safest to offer ample support.
In M2M Solutions LLC, et al. v. Sierra Wireless Am. Inc., C.A. No. 14-1102-RGA (D. Del.), the parties submitted a joint letter last week asking Judge Andrews to delay their December 2020 PTC and January 2021 jury trial until "spring 2021" due to COVID-19.
Judge Andrews quickly declined, via an oral order issued on the same day:
[T]he Court is not now inclined to continue the trial to spring 2021. Circumstances could change for the better; travel restrictions could be lifted. And the pretrial conference, at least, can be done remotely. The parties may submit a letter after Thanksgiving revisiting the issue in light of then−existing circumstances.
