A Blog About Intellectual Property Litigation and the District of Delaware


RGA
The Honorable Richard G. Andrews

12(C)-U-L8er

Nathan R. Hoeschen, Oct. 26, 2023
Judgment on the Pleadings

Timing a 12(c) motion is a bit tricky.

By definition, you raise it after your would normally file a motion to dismiss, as the pleadings are closed. You can file one as late as you want, as long as it's "early enough not to delay trial." Honestly, I'd never seen a motion denied for being too late—until now!

He's a slow reader
He's a slow reader AI-Generated, displayed with permission

The defendant in Ecolab Inc. et al v. DuBois Chemicals, Inc., C.A. No. 21-567-RGA (D. Del. Oct. 25, 2023) filed a motion for judgment on the pleadings at the same time as its SJ and Daubert motions, which was about 5 months before trial. Neither party devoted more than a few of their 40 allotted pages to the 12(c) motion—focusing instead on the SJ and Daubert issues.

(Note—the parties managed to fit the 12(c) motion briefing into their overall page limits for "dispositive motions" in the scheduling order. I think that's probably correct, but I've never seen an opinion actually addressing whether a later-filed 12(c) motion must adhere to those limits. It certainly looks like gamesmanship to give yourself an extra 20 page brief at summary judgment time, but what about a 12(c) motion filed 6 months earlier? Would those pages need to be deducted from a later SJ motion page count? I encourage someone braver than me to give it a try and see how it goes.)

Ahem...

Judge Andrews was having none of it and ...

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Court Dismisses All Claims with Prejudice After IPR—Even Though Some Were Not Invalidated

Andrew E. Russell, Oct. 23, 2023
Voluntary Dismissal MTD

Dart in Target
Silvan Arnet, Unsplash

Both parties in Wrinkl, Inc. v. Meta Platforms Inc., C.A. No. 20-1345-RGA (D. Del.) agreed that the case should be dismissed after the PTAB invalidated 50 of the 54 asserted claims, but disagreed about whether the remaining 4 claims should be dismissed with prejudice.

The plaintiff claimed that it did not intend to assert the remaining claims, but that it should retain the right to, and that it is unaware of caselaw holding that the Court cannot dismiss some claims with prejudice and some without.

The defendant argued that the Court cannot split up the claims, and must dismiss all or nothing with prejudice:

Defendants contend there is no legal support or precedent …
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Court Holds It's All of Nothing When It Comes to Patentee Lexicography

Andrew E. Russell, Oct. 12, 2023
Lexicographer Claim Construction

Corn
Katherine Volkovski, Unsplash

Judge Andrews issued a claim construction opinion today resolving an interesting dispute.

The parties disagreed as to whether the patentee had acted as its own lexicographer. Here is the text from the patent spec:

As used herein, the term “plant” includes reference to whole plants, plant organs (e.g., leaves, stems, roots, etc.), seeds and plant cells and progeny of the same. “Plant cell,” as used herein includes, without limitation, seeds, suspension cultures, embryos, meristematic regions, callus tissues, leaves, roots, shoots, gametophytes, sporophytes, pollen, and microspores.

Pioneer Hi-Bred International, Inc. v. Syngenta Seeds, LLC, C.A. No. 22-1280-RGA, D.I. 72 (D. Del. Aug. 2, 2023).

Seems pretty clear, right?

Not so much, according to the plaintiff. It argued that one of the specification's definitions shouldn't apply to the term as it was used in the claim. Here is ...

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Obviousness Type Duuuhhhhhble Patenting

Nathan R. Hoeschen, Sept. 28, 2023
ODP Obviousness-Type Double Patenting

Judge Andrews appeared to break new ground in ODTP law yesterday with his post-trial opinion in Allergan USA, Inc. v. MSN Labs. Private Ltd., C.A. No. 19-1727-RGA (D. Del. Sept. 27, 2023).

AI-Generated, displayed with permission

(eds. note - I refuse to abbreviate it "Lab'ys." The legal profession has committed more than its fair share of dark linguistic sins, but if Shakespeare wasn't long dead this would have killed him. Actually, check on your favorite author to make sure they survived this edition of the bluebook).

Anyway.

The issue arose in the unusual case where a patent issued and received a term extension of a few hundred days. The patentee filed a continuation which issued a few years later. Because the continuation did not receive a term extension it actually expired before the first patent. Plaintiff (Allergan) submitted this helpful chart with the briefing:

Seriously, it's a nice chart!
Seriously, it's a nice chart! Allergan

Id., D.I. 428 at 4 (Joint Status Report, Plaintiffs' position)

The parties agreed the relevant claims of the two patents were not patentably distinct—the issue was, does ODTP apply in where the first-filed, and first-issued, patent is the one being invalidated?

The Federal circuit had recently answered part of that question in In re Cellect, LLC, 2023 WL 5519716, at *9 (Fed. Cir. Aug. 28, 2023), where it held that OTDP applied to patent term extensions generally. Cellect, however, did not involve ...

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Stipulation (Unexpectedly) Denied

Andrew E. Russell, Sept. 27, 2023

"Could we do it in a few days? Eh, let's stip it out by six weeks." AI-Generated

We've talked before about how, in the District of Delaware, the Court usually grants stipulated extensions of upcoming deadlines, as long as those deadlines don't impact the Court.

Today I noticed an order from last week that goes against that trend. In Mallinckrodt Pharmaceuticals Ireland Ltd. v. Airgas Therapeutics LLC, C.A. No. 22-1648-RGA-LDH (D. Del.), before Judge Andrews, the parties filed a straightforward stipulation extending the deadline to file redacted versions of a number of pleadings:

IT IS HEREBY STIPULATED AND AGREED, by and between the parties hereto, and subject to the approval of the Court that the time for …
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A Really Crummy License

Nathan R. Hoeschen, Sept. 14, 2023
Damages Daubert

Many years ago, before Andrew made me put a picture in EVERY TURTLE-CURSED POST, I wrote a post about the very easiest Daubert motion to win. As a brief refresher, it turned out to be a motion to exclude a damages experts reliance on a jury verdict point as the starting point for a hypothetical negotiation. Both Judge Andrews and Judge Burke were particularly firm on the issue, coming just short of setting a bright-line rule:

A jury verdict does not represent evidence from which a hypothetical negotiation can be reliably determined. A jury verdict represents the considered judgment of twelve (or maybe fewer) random non-experts as to what a hypothetical negotiation would have resulted in for the patent(s) …
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Take That, Boat News!

Nathan R. Hoeschen, Sept. 7, 2023
Prior Art

Casual readers might not be aware, but we at IP/DE have a long-running feud with the Swedish publication, "boat news." They think they're so great just because they're all so tall and they write about cool boats. Well, someone finally had the nerve to tell those ruggedly handsome jerks what for.

Wahhhhhhh! No one reads my boat magazine!
AI-Generated, displayed with permission

That brave soul was Judge Andrews in yesterday's opinion in MHL Custom, Inc. v. Waydoo USA, Inc., C.A. No. 21-92 (D. Del. Sept. 6, 2023) (Mem. Op.).

The defendant, Waydoo, alleged that the asserted patent was anticipated by a paper written by a bunch of Swedish engineering students as part of a project. Unlike the famous thesis in In re Hall, 781 F.2d 897, 228 USPQ 453 (Fed. Cir. 1986), the students project wasn't indexed in a library, but was simply placed on the website for the college course. Apparently, it was downloaded by 17 people.

A dispute thus arose as to whether this paper was "publicly accessible" (and thus prior art). In support of the contention that the paper was accessible, Waydoo noted that Boat News had written an article about the project that included a link to the paper (riveting, I'm sure). Waydoo contended that this article would have led the magazines many readers to the paper.

Judge Andrews, however, noted the obvious flaw ...

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Don’t Miss the Motion for Reargument Deadline

Emily DiBenedetto, Aug. 23, 2023
Reargument Reconsideration

Local Rule 7.1.5 governs motions for reargument, sometimes styled as motions for “reconsideration.” As we’ve noted, the deadline to move for reargument or reconsideration can be easy to miss. The deadline is just 14 days after the order or opinion, and there are no CMECF reminders to flag it for counsel.

What Is a motion for reargument?

A request for “clarification” of the Court’s prior order may be interpreted as a motion for reargument/reconsideration. But a motion for reargument is not a do-over. In fact, you cannot rehash arguments you already made—and you cannot make new arguments you could have raised earlier.

Erasers
Mick Haupt, Unsplash

The scope of a motion for reargument is very narrow, and must show at …

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I Don't Mean No, I Don't Mean Maybe, I'm Indefinite at Claim Construction

Nathan R. Hoeschen, Aug. 22, 2023
Markman Indefiniteness

As we've covered exhaustively in the past, it's becoming increasingly rare for Delaware Judges to consider indefiniteness at Markman, and it's rarer still to see someone get over the hump and knock a patent out.

AI-Generated, displayed with permission

Judge Andrews, however, is still willing to show a patent who's the boss at Markman (even for a non means-plus-function claim) as demonstrated this week in Genzyme Corp. v. Novartis Gene Therapies, Inc., C.A. No. 21-1736-RGA (D. Del. August 18, 2023).

The term at issue was, unsurprisingly, opaque:

Forms intrastrand base pairs such that expression of a coding region of [a] heterologous sequence is enhanced relative to a second rAAV vector that lacks sufficient intrastrand base pairing to …
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"Plaintiffs have forfeited their otherwise winning argument."

Andrew E. Russell, Aug. 14, 2023
Stay Pending IPR Stay

Broken
CHUTTERSNAP, Unsplash

Ouch. That's something you never want to see.

We wrote last week about how Judge Andrews—somewhat surprisingly—declined to lift a stay after the PTAB left just 4 of 83 patents standing, and invalidated the rest.

After that decision, the parties filed a series of letters that clarified that the plaintiff had intended to proceed only on the four valid patents, not the rest, but wanted to check with the Court regarding how they should proceed:

[Plaintiff] Cytiva understood that the litigation would proceed only with regard to the four claims that the PTAB upheld as valid, and until JSR’s submission, was not aware that JSR had a contrary view. Cytiva had no intention, and has no intention, …
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