By Memorandum Opinion entered in Conformis, Inc. v. Medacta USA, Inc., Civil Action No. 19-1528-RGA (D.Del. March 4, 2021), The Honorable Richard G. Andrews construed the remaining terms in dispute in the four (4) patents-in-suit, U.S. Patent Nos. 8,377,129 (“the ‘129 patent”), 8,460,304 (“the ‘304 patent”), 9,186,161 (“the ‘161 patent”), and 9,295,482 (“the ‘482 patent”), in an infringement action involving patents on surgical tools and implants used in joint replacement surgeries and joint arthroplasties.

A complete copy of the Memorandum Opinion is attached.

 

By Memorandum entered by The Honorable Richard G. Andrews in Viatech Technologies, Inc. v. Microsoft Corp., Civil Action No. 17-570-RGA (D.Del. February 19, 2021), the Court granted Defendant’s motion to strike barring Plaintiff from asserting, and its expert from opining on (1) any theory under the doctrine of equivalents (“DOE”) other than for the terms “user system” and “range of tolerance” and (2) any theory of infringement relying on the graphical user interface (“GUI”) of third party products or generated by server software.  The Court granted Defendant’s motion to strike after finding that Plaintiff’s stricken theories under the DOE and Plaintiff’s GUI literal infringement theory were not timely disclosed in its infringement contentions and during fact discovery; rather, these new infringement theories were disclosed for the first time in Plaintiff’s opening expert report.  Id. at *3-9.  The Court found that the Pennypack factors favored exclusion of the portions of Plaintiff’s expert report that related to the untimely disclosed infringement theories.  Id.

In its Memorandum, the Court noted that “[n]o court likes to say that a party acted in bad faith.”  Id. at *9.  That being said, the Court went on to note that it did “not understand how Plaintiff’s experienced lawyers could have thought that springing clearly new theories on a defendant in opening expert reports was in compliance with the scheduling order, the Rules, or expected standards of practice.”  Id.  Although the Court stopped short of finding that Plaintiff acted in bad faith, the Court noted that “[Plaintiff’s] actions approach that standard.”  Id.

Certainly a situation wise practitioners want to avoid in the future by disclosing all infringement theories in a timely manner.  Copies of the Memorandum and Order are attached.

Due to the pandemic, the District Court entered an Order today cancelling all criminal and civil jury trials in the United States District Court for the District of Delaware until on or after April 5, 2021.  Each presiding judge has the discretion to order a jury trial in an emergency or urgent situation.  A copy of the Order is attached.

By Memorandum Order entered by The Honorable Leonard P. Stark in 3Shape A/S v. Align Technology, Inc., Civil Action No. 18-886-LPS (D.Del. February 1, 2021), the Court overruled the objections of Plaintiff 3Shape contending that Judge Hall misapplied the Pennypack factors when she, by Oral Order dated January 9, 2021, denied 3Shape’s requests to (i) strike two paragraphs of Dr. Singh’s expert report and (ii) preclude Defendant Align’s use of two documents at trial.

In overruling 3Shape’s objections and adopting Judge Hall’s Order, the Court found that “Judge Hall appropriately applied the Pennypack factors” and noted that “[t]here is nothing close to an abuse of discretion here.”  Id. at *1.  The Court further explained that Align did not raise a previously-undisclosed invalidity theory based on the documents at issue and any potential prejudice could be cured by inspection of source code, deposition of experts and rebuttal expert reports.  Id. at *2.  The Court further noted that none of the forgoing actions to cure would be particularly burdensome and would not disrupt trial which has yet to be scheduled.  Id.

A takeaway the Court provided litigants going forward is that, “[w]hen a decision of a magistrate judge is going to be reviewed under a deferential abuse of discretion standard – and particularly when it has been the subject of briefing consisting of short letter briefs – parties should carefully consider whether it is a wise use of resources (theirs, opposing counsel’s and the Court’s) to file 10-page briefs seeking a district judge’s review.”

A copy of the Memorandum Order is attached.

 

By Memorandum Order and Amended Judgment by The Honorable Maryellen Noreika in Cignex Datamatics, Inc. v. Lam Research Corporation, Civil Action No. 17-320-MN (D.Del. January 21, 2021), the Court granted with modification Plaintiff’s motion to alter or amend the judgment by adding to the original judgment of $232,039.71 in favor of Plaintiff in the breach of contract action (1) an additional amount of pre-judgment interest in the amount of $60,564.56, calculated as simple interest based on the Delaware legal rate of 5.75% as a fixed rate at the time liability for interest began to accrue, and (2) post-judgment interest at the rate of 0.17% of the entire amount included in the amended judgment to compound annually from the date the amended judgment was entered until the judgment is paid.

In explaining how pre- and post-judgment interest are calculated in federal court contract actions in Delaware based on diversity jurisdiction, the Court explained that pre-judgment interest is awarded as a matter of right and is governed by Delaware law.  Under Delaware law, if there is no expressed contract rate, the legal rate of interest is calculated as set forth in 6 Del. C. Ann. § 2301(a) –  5% over the Federal Reserve discount rate including any surcharge as of the time from which interest is due.  Id. at *3.  The Court explained that the issue of whether prejudgment interest should be compound or simple is a matter within the Court’s discretion, although Delaware courts have traditionally disfavored compound interest.  Id.  On the other hand, awards of post-judgment interest in federal court contract actions in Delaware based on diversity jurisdiction are governed by 28 U.S.C. § 1961.  Id. at *5.  Under §1961(a) the rate of post-judgment interest is the weekly average one year constant maturity Treasury yield for the week preceding entry of the judgment and is compounded annually.  Id. at *6.  In this instance, the post-judgment interest rate was calculated at 0.17% compounded annually.  Id.  The Court explained that post-judgment interest is calculated on the entire amount included in the judgment, which includes prejudgment interest.  Id.

Copies of the Memorandum Order and Amended Judgment are attached.

By Memorandum Opinion entered in Allergan USA, Inc. et al. v. Aurobindo Pharma Ltd., et al., Civil Action No. 19-1727-RGA (D.Del. January 11, 2021), The Honorable Richard G. Andrews construed the five (5) remaining terms in dispute in the six (6) patents-in-suit, U.S. Patent Nos. 8,691,860 (“the ‘860 patent”), 9,115,091 (“the ‘091 patent”), 9,364,489 (“the ‘489 patent”), 9,789,125 (“the ‘125 patent”), 9,675,587 (“the ‘587 patent”) and 10,188,632 (“the ‘632 patent”), in a Hatch-Waxman action concerning Plaintiffs’ VIBERZI® brand (eluxadoline) products for the treatment of irritable bowel syndrome with diarrhea.

A complete copy of the Memorandum Opinion is attached.

By Memorandum Order entered by The Honorable Colm F. Connolly, in Amgen Inc. et al. v. Hospira, Inc. et al., Civil Action No. 20-0561-CFC (D.Del. January 7, 2021), the Court granted in part the motion of Defendants Hospira, Inc. and Pfizer, Inc. to stay Civil Action No. 20-0561 until 14 days after resolution of Amgen Inc. et al. v. Hospira, Inc. et al., Civil Action No. 18-1064-CFC (D.Del. 2018).

In granting the motion, the Court found that all three factors weighed in favor of a stay.  Id. at *3.  Specifically, the Court found that (1) a stay of the action would simplify the issues in question and trial of the case; (2) no discovery had yet started in Civil Action No. 20-0561 and no trial date has been scheduled; whereas, by contrast in Civil Action No. 18-1064-CFC, fact and expert discovery is nearly complete and set to close in less than three weeks, and a jury trial is scheduled for May 17, 2021; and (3) a stay of Civil Action No. 20-0561-CFC pending resolution of Civil Action No. 18-1064-CFC would neither unduly prejudice nor provide a clear tactical disadvantage to the Amgen Plaintiffs.  Id. at *3-5.  The Court did deny the motion in part with respect to Defendants’ request that the stay period include the final resolution of all appeals in Civil Action No. 18-1064-CFC.  Id. at *5.  The Court did not go that far.  Id.

A copy of the Memorandum Order is attached.

 

By Memorandum Opinion entered by The Honorable Colm F. Connolly in ChromaDex, Inc. et al. v. Elysium Health, Inc., Civil Action No. 18-1434-CFC-JLH (D.Del. December 17, 2020), the Court granted in part and denied in part Defendant Elysium Health’s Rule 12(b)(1) motion to dismiss Plaintiff ChromaDex’s patent infringement claims after finding that (1) ChromaDex lacked standing to allege that Elysium infringed the asserted patents after March 13, 2017 – the effective date of the Restated License Agreement; and (2) ChromaDex had standing to allege its infringement claims based on Elysium’s conduct occurring between July 13, 2012 and March 12, 2017.  Id. at *2-12.

In reaching its findings, the Court recognized that the Restated License Agreement granted ChromaDex and Healthspan the ability to sublicense the asserted patents as of March 13, 2017.  Id.at *9-12.  “Because Healthspan had the right to give Elysium a license to practice the asserted patents as of March 13, 2017, ChromaDex did not have the right to exclude Elysium from practicing the patents from that date forward.”  Id.at *11-12.  Thus, ChromaDex lacked standing to allege that Elysium infringed the asserted patents on or after March 13, 2017.  Id. at *12.  There was no evidence and Elysium did not argue that ChromaDex was not an exclusive licensee under the Original License Agreement which became effective on July 13, 2012.  Thus, ChromaDex had standing to allege its infringement claims based on Elysium’s conduct occurring between July 13, 2012 and March 12, 2017.  Id.

A copy of the Memorandum Opinion is attached.