This decision is a bit dense, but it's on an issue that could come up in any case.
The plaintiff in TOT Power Control, S.L. v. Samsung Electronics Co., Ltd., C.A. No. 21-1305-MN (D. Del.) accused several products by name, and also stated in its infringement contentions that it would "seek discovery as to the identity of any [of the defendant's] products with substantially similar designs to the expressly listed accused products." D.I. 131.
The case progressed, and it turns out that the defendant does, indeed, have multiple products with similar names. The Court ultimately granted a motion to compel the defendant to provide financial discovery on each of the alternative products, even …
On Wednesday, Judge Fallon issued a memorandum order in Kurt Morales II v. Sunpath Ltd., C.A. No. 20-1376-JLH-SRF (D. Del.), a class action suit alleging that various defendants are telemarketers who made robocalls violating the Telephone Consumer Protection Act.
More than three years into the litigation, counsel for one of the defendants, Sunpath Ltd., withdrew, and the Court ordered Sunpath Ltd. to retain new counsel. D.I. 232. When it failed to do so, the clerk entered a default against it. Id.
Plaintiff argued that Sunpath defaulted specifically to avoid having to face discovery. D.I. 265 at 1. Plaintiff therefore served a subpoena on Sunpath's e-discovery vendor Everest Discovery, LLC who, unsurprisingly, pushed back. …
As defenses go, there's few better than "I don't infringe." Unfortunately, it's quite difficult to prove at the motion to dismiss stage. It is, after all, the rare complaint that contains the dark seed of its own demise on this front.
mmm . . . dark seedsAI-Generated, displayed with permission
You might think that a motion to dismiss based on non-infringement would be a little bit easier in the ANDA context. After all, you have this giant document listing everything in your product and what it does. You would be wrong.
Such was the lesson of Judge Fallon's opinion in Allergan, Inc. v. Mankind Pharma Ltd., C.A. No. 23-272 (D. Del. Dec. 21, 2023), unsealed last week. The patent there required (amongst dozens of assorted buffers, reagents, uppers, downers, and excipients) a phosphate buffer. The defendant responded by pointing out that none of the 3.2 trillion ingredients listed in their ANDA contained any phosphorus.
(Eds. Note—for the liberal arts majors amongst you, phosphorous is a pretty big part of anything "phosphate")
They thus moved for judgment on the pleadings of no literal infringement, reasoning that the ANDA controlled the infringement inquiry. Judge Fallon denied the motion however, holding that it was possible future evidence might contradict the ANDA:
Mankind Pharma insists that the ANDA specification controls the infringement inquiry. However, the case law cited by Mankind Pharma in support of this proposition explains that the infringement inquiry is based not only on the ANDA filing, but also on "other materials submitted by the accused infringer to the FDA, and other evidence provided by the parties." The Federal Circuit explained "[i]t is ... possible, at least in theory, that other evidence may directly contradict the clear representations of the ANDA and create a dispute of material fact[,]" even if "[s]uch circumstances [are] unlikely to arise in practice[.]" Consistent with this recitation of the applicable standard, each case cited by Mankind Pharma was decided on a fully developed record, either on summary judgment or following a bench trial.
Allergan, Inc. v. Mankind Pharma Ltd., C.A. No. 23-272, at 5-6 (D. Del. Dec. 21, 2023) (internal citations omitted).
This case follows several similar decisions in the district, Novartis Pharmaceuticals Corp. v. Alembic Pharms. Ltd, C.A. No. 22-1395-RGA, 2023 WL 6387975, at *5 (D. Del. Sept. 29, 2023) and InfoRLife SA v. Sun Pharm. Ind. Ltd, C.A. No. 21-1740-WCB, D.I. 153 at 4-5 (D. Del. Nov. 21, 2022), which the opinion discusses at some length. Neither of those cases however were quite as factually stark as the one presented here, where the claims clearly require phosphorus, and the ANDA includes . . . no phosphorus.
We've talked a lot about "plain meaning" constructions, and how our judges havesometimespushedback against parties who offer plain meaning constructions without any indication of what the actual meaning of the term is.
Magistrate Judge Fallon issued an R&R today on an offshoot of this issue. In PPC Broadband, Inc. v. Charles Industries, LLC, C.A. No. 22-1517-GBW-SRF (D. Del. Jan. 8, 2024), the parties disputed the construction of only a single term, "drop cable." Plaintiff proposed not construing the term at all, and offered a generic definition as an alternative. The defendant proposed a specific construction that added limitations to the claim.
The patent at issue is directed towards a wall-mounted box that …
Any time someone moves to withdraw, the question is: Will the client be able to convince the next set of lawyers that the client will pay?Micaela Parente, Unsplash
Having to move to withdraw because a client won't pay is the absolute worst. You have ethical duties to your client, but you can't work for free. You are stuck in a position where you need to tell the Court enough that it will let you out—but you can't tell it everything without violating the ethics rules. The local rules also place some procedural hoops in the way of a motion to withdraw. It's tricky!
Even worse is when the other side opposes your withdrawal, because then you are potentially …
The Delaware bar lately, arguing over redactions to discovery dispute lettersHasan Almasi, Unsplash
Based on the redaction disputes I've seen in couple of cases lately, some of us here in Delaware have forgotten that the high Avandia standards for access to public materials do not apply to discovery dispute letters and their attachments, as Judge Fallon confirmed last month:
[T]he common law right of access does not extend to discovery motions and supporting materials because the "underlying discovery material itself is not a judicial record." Genentech, Inc. v. Amgen, Inc., C.A. No. 17-1407-CFC et al., 2020 WL 9432700, at *3 (D. Del. Sept. 2, 2020) (citing Leucadia, Inc. v. Applied Extrusion Techs., Inc., …
Drug patents are legion, and they are prone to flock together. In ancient times, a patent would describe A molecule that cured . . . the dancing plague (?) and that would be the end of that. But one bright fellow after another came up with new ways to extend the life of a drag patent, from formulation, to method of treatment, to the new hip thing -- interaction patents.
The gist of these patent claims is pretty basic
You've got a drug that you normally give in amount A.
You've got atypical patient with whose taking drug B, or has condition C (these pretty much always have something to do with the liver, don't ask me why, I was …
When a party asks to do something outside of the time limits set by the scheduling order, the Court looks to whether there is "good cause" under FRCP 16(b)(4) to modify the scheduling order. Good cause requires diligence, generally meaning that the movant could not have reasonably met the deadline it's trying to move.
Last week we got two examples of diligence analyses from the Court, one that found that a party was diligent, and one that didn't. I thought it would be interesting to line them up and compare them.
"Immediately" = Good Cause
First, Judge Fallon found good cause where a plaintiff sought to depose a third-party witness after the close of fact discovery, after the …
It begins with a series of interminably long emails. I say that you really should be producing these documents—I cite cases, exhaustively describe the items sought, and cite check the whole thing like it's headed to the Supreme Court. You respond by pointing out that I am just hopelessly misguided, and have perhaps been drinking. You also cite cases.
Eventually everyone gets on the phone to hash things out. Two hours later you agree to take my positions "under advisement" and call it a day.
Meet and confer accomplished.
Why is this one so creepy? It's just supposed to be werewolves shaking handsAI-Generated, displayed with permission
It's not always that bad, but there is definite potential for one or both parties to drag the process out. It's rare to see any consequences to this sort of slow-rolling, as it's usually invisible to the Court.
Every now and then, though, someone gets called out for it, and yesterday was one of those days. The dispute in TwinStrand Biosciences, Inc. v. Guardant Health, Inc., C.A. No. 21-1126-GBW-SRF (D. Del. Apr. 24, 2023) (Oral Order) was your usual request that a party supplement an interrogatory. Judge Fallon granted the motion, but took the unusual step of noting the somewhat tortured history of the parties' correspondence
Guardant's second supplemental response to Interrogatory No. 6 provides some of this information for only one of the Asserted Patents. Guardant represented that it would produce and identify documents responsive to the Interrogatory under Fed. R. Civ. P. 33(d) as discovery continued. Guardant's responses to Plaintiffs' requests for supplementation of Interrogatory No. 6 during the meet and confer process suggest that Guardant may have additional responsive information that has not yet been disclosed. (As of March 17, 2023, Guardant represented it "will provide our position or a supplementation in due course"); (As of April 4, 2023, Guardant was "considering [Plaintiffs'] proposal and hope[s] to have a response soon."). Otherwise, Guardant could have put the matter to rest and avoided burdening the Court by simply confirming that it had no additional information responsive to Interrogatory No. 6.
The phrasing here is not quite a rebuke, but parties generally like to keep their name as far removed from ...
Judge Fallon made an opinion public today that deals with whether a plaintiff can get discovery on unlaunched, abandoned, and future products in the lead up to a preliminary injunction hearing. The Court held that discovery on those products was not proportional to the needs of the case:
Zwift has shown that the document discovery requested by Wahoo is not proportional to the needs of the case at this stage of the proceedings. (D.I. 72) The complaint establishes that Wahoo was aware of Zwift’s unlaunched and abandoned hardware products, yet it did not raise these products in its motion for a preliminary injunction, indicating that the relevance of the requested discovery to the preliminary injunction inquiry …
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