Articles Posted in Richard G. Andrews

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In TQ Delta LLC v. Pace PLC, et al., C.A. No. 13-1835-RGA (D. Del. Jan. 5, 2017), Judge Richard G. Andrews recently resolved the parties’ dispute with regard to the use of conflicts counsel for Plaintiff, which had been ordered by the Court in connection with taking certain third-party discovery. Having summarized the few relevant cases on this topic cited by the parties, the Court ordered that conflicts counsel was to be walled off from Plaintiff’s lead counsel, but not its Delaware counsel. Among other parameters, conflicts counsel could receive unredacted filings, discovery served to date, infringement and validity contentions, and Plaintiff’s expert opinions, but conflicts counsel could not receive “any tutorial” from the lead counsel and would not receive any draft discovery directed to the third party. Conflicts counsel could provide discovery from the third party to Delaware counsel, who could then provide the discovery to lead counsel.

The Court ruled that this wall would continue at least through the close of discovery, but may need to be “relaxed at some point before trial,” the details to be determined at a later date. However, any examination of the third party’s witnesses at trial would need to be done by conflicts counsel.

TQ Delta LLC v. Pace PLC, et al., C.A. No. 13-1835-RGA (D. Del. Jan. 5, 2017)

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Judge Richard G. Andrews recently denied, in large part, a motion to redact the transcript of a pretrial conference.  Delaware Display Group LLC v. LG Elecs. Inc., C.A. No. 13-2109 (D. Del. Dec. 22, 2016).  The Court explained that “[s]imply because the parties have designated the information as ‘restricted – attorneys’ eyes only,’ or with some lesser designation under a protective order is almost irrelevant to the present issue, that is, whether the information should be redacted from a judicial transcript.”  That is because once the information is “disclosed in a judicial proceeding, it is in the public interest to be able to understand the proceedings before a judge, and redaction of the transcript hinders that public interest.”  The Court acknowledged that the interest in preserving confidentiality of commercially sensitive information will at time justify redacting such information from the public record.  In this case, Judge Andrews found no justification to redact references in the transcript to “license agreements, settlement agreements, and indemnification agreements . . . with little specificity other than the identification of the parties to the agreements.”  The Court did, however, find that reference to “two numbers” was appropriate.

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In a recent Memorandum Opinion, Judge Richard G. Andrews affirmed Magistrate Judge Thynge’s September 27, 2016 oral order denying plaintiff’s motion to impose discovery sanctions for defendant’s “failure to produce IDV data.” AVM Technologies, LLC v. Intel Corporation, C.A. No. 15-33-RGA-MPT (D. Del. Dec. 19, 2016). Specifically, Judge Thynge denied plaintiff’s request that (1) defendant be precluded from “making any arguments that its timing analyses and any simulations that are based on UPF [pre-fabrication] models do not accurately reflect the manufactured products”; and (2) “a negative inference be drawn in Plaintiff’s favor due to Defendant’s failure to produce the IDV data.” Id. at 1.

Plaintiff argued that Judge Thynge’s ruling was incorrect under the Pennypack factors because plaintiff was prejudiced by defendant’s failure to produce the IDV data. Id. at 2. Specifically, plaintiff argued that that the IDV data is the “‘only evidence that definitively addresses’ Defendant’s argument that its pre-fabrication modeling results are not correlated to the manufactured products.” Id. Judge Andrews disagreed, noting that Judge Thynge found that defendant “produced data responsive to Plaintiff’s discovery request and that data provides the information Plaintiff needs.” Id. Accordingly, “there is no prejudice to Plaintiff for Defendant’s failure to produce the IDV data, which does not provide the information Plaintiff needs for verification of the modeling results.” Id. Because plaintiff failed to provide evidence that Judge Thynge’s factual findings were clearly erroneous, Judge Andrews affirmed Judge Thynge’s order. Id.

AVM Technologies, LLC v. Intel Corporation, C.A. No. 15-33-RGA-MPT (D. Del. Dec. 19, 2016)

 

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In a recent order, Judge Richard G. Andrews ruled on various motions in limine. Delaware Display Group LLC v. LG Electronics Inc., C.A. No. 13-2109-RGA (D. Del. Dec. 1, 2016). Notably, plaintiffs sought to prevent defendants from providing “any comparison between the accused products and alleged prior art.” Id. at 2. Judge Andrews granted and denied plaintiffs’ request in part, without prejudice to timely object to specific testimony at trial. Id.

As Judge Andrews explained, the parties agreed that “‘practicing the prior art’ is not a defense to infringement” and therefore defendants “may not make that argument.” Id. at 2-3. Defendants cited three cases to support their position that they may “argue that Plaintiffs’ patents are invalid because they would prohibit [Defendants] from practicing the prior art.” Id. at 3. Judge Andrew found that “[t]o the extent Defendants are saying, the patents are no different than the prior art, of course, they can argue that.” Id. On the other hand, “[t]o the extent they are saying something more, such as, Defendants’ products practice the prior art, they have a problem.” Id. Judge Andrews noted that the Federal Circuit decision defendants cited did not help their position, and both district court decisions “agree that Defendants cannot compare an accused product to the prior art for purposes of establishing invalidity or non-infringement.” Id.

Judge Andrews granted and denied other motions in limine, some in part, and postponed ruling on another.

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In a recent Order, Judge Richard G. Andrews granted disclosure of four documents of defendants’ “Indian ‘in-house counsel’ or subordinates of ‘in-house counsel’” after determining that the attorney-client privilege did not protect those documents. Reckitt Benckiser Pharmaceuticals v. Dr. Reddy’s Laboratories SA, C.A. No. 14-1451-RGA (D. Del. Nov. 4, 2016).

As Judge Andrews explained, the “dispositive issue is whether under U.S. privilege law, the three Indian in-house employees constitute ‘a member of the bar of a court, or his subordinate.’” Id. at 3. To resolve this issue, Judge Andrews relied on the opinion of Retired Justice Srikrishna, who previously “opined on the role of Indian in-house counsel in the context of the Indian legal system and whose opinion was requested by Circuit Judge Jordan.” Id. (citing Shire Dev. Inc. v. Cadila Healthcare Ltd., C.A. No. 10-581-KAJ (D.I. 209) (D. Del. June 28, 2012)). Judge Andrews explained:

According to Retired Justice Srikrishna’s opinion, there is “only one class of legal practitioners known as advocates” in India. Only advocates are “entitled to practice the profession of law.” Advocates have the “right to practice throughout the territories of India in all courts, before any tribunal or person legally authorized to take evidence or before any other authority . . . .” Generally, only advocates are “entitled to practice in any court or before any authority or person . . . .” “[I]n-house counsel would not come within the definition of ‘advocate.’” “[A] person who is in full time employment of an employer ceases to be an advocate.”

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The Defendants in this case requested a stay pending the Federal Circuit’s decision on a patent-in-suit from a related case, and Judge Andrews denied the motion. In considering the motion to stay, Judge Andrews recognized that the Federal Circuit’s decision “may make this case moot, or otherwise simplify whatever issues would remain on this patent. Depending on what the decision is, it might also cause a scramble over whether a preliminary injunction should issue, which would involve issues in addition to the trial issues. Thus, on the whole, this factor favors granting the stay, but it does not heavily weigh in favor of granting the stay.” Sanofi, et al. v. Lupin Atlantis Holdings SA, et al., C.A. No. 15-415-RGA, Order at 1 (D. Del. Oct. 14, 2016). Judge Andrews also pointed out that the “case is ready for expert discovery, which is due to begin next week, and trial is set for April 24, 2017 . . . [which] argues against granting the stay.” Id. Finally, Judge Andrews found that a stay may cause some undue prejudice to Plaintiffs, the non-moving party, because “[i]f a stay is granted, Plaintiffs have to prepare for the possibility of a preliminary injunction, which would be an extra expense. In all likelihood, Defendants too would prepare for the possibility of a preliminary injunction. The prejudice to Plaintiffs may be that I would not grant a preliminary injunction, whereas if Plaintiffs win on a trial on the merits, they will get their injunction by virtue of the trial. Thus, it may be that a trial is an easier route for Plaintiffs to get the relief they are seeking. I think consideration of this factor suggests some possibility of tactical advantage to Defendants if a stay is granted.” Id. at 1-2.

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The Defendant sought leave to file an amended answer and counterclaims adding a claim of inequitable conduct based on an allegedly undisclosed inventor. The motion for leave was filed several months after the December 15, 2015 scheduling order deadline for amendment of pleadings, meaning that the Defendant needed to show “good cause” for the amendment. Although the allegedly undisclosed inventor, Dr. Chu, had initial been disclosed as a person who may have knowledge of products embodying the asserted patent in early 2015, Dr. Chu was not issued a subpoena or deposed until over a year later in May and June of 2016. Judge Andrews found it “fair to say that the [February 2015] ‘initial disclosures’ do not suggest Dr. Chu as a person who as involved in the invention.” E.I. DuPont de Nemours & Co. v. Unifrax I LLC, C.A. No. 14-1250-RGA, Memo. Or. at 1-2 (D. Del. Oct. 7, 2016).

The Plaintiff pointed to several documents that were produced in June 2015 and would have allegedly shown the Defendant at that time that Dr. Chu was involved in product development. But Judge Andrews reviewed the documents and found “they did not show anything that would suggest Dr. Chu was an inventor” but rather only “Dr. Chu being involved in testing and experimentation at Plaintiff’s direction and request.” Id. at 2-3. Therefore, Judge Andrews concluded:

I would tend to agree with Plaintiff that the cited documents do not support the proposed counterclaim. Perhaps this will be a problem for Defendant down the road, but, at this juncture, it does support Defendant’s argument that Defendant has good cause not to have asserted the counterclaim until Dr. Chu was deposed, and provided the basis upon which Defendant now relies. I do not think the cited documents put Defendant on notice that Dr. Chu was an important witness. Defendant’s motion for leave to amend followed without undue delay after Dr. Chu’s deposition was concluded. Therefore, I find good cause and will grant Defendant’s motion.

Id. at 3.

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In a recent Order, Judge Richard G. Andrews denied plaintiff Ansell Healthcare Products LLC’s (“Ansell”) request that defendant Reckitt Benckiser LLC (“Reckitt”), be precluded from disclosing Ansell’s Protected Information, as defined in the parties’ Protective Order, to Reckitt’s consulting expert, Dr. William H. Potter, until after he testifies in a parallel proceeding in Australia involving the parties. Ansell Healthcare Products LLC v. Reckitt Benckiser LLC, C.A. No. 15-915-RGA, D.I. 82 (D. Del. Oct. 5, 2016); see also id., D.I. 76, 81. Although acting as only a consulting expert in the instant action, Ansell explained that Dr. Potter would testify as to noninfringement and invalidity in the Australian action, which is set to go to trial in mid-December 2016. (D.I. 76 at 1-2.) Ansell noted that far more confidential and highly confidential documents were produced in the instant action as compared to the Australian action, and Ansell questioned Dr. Potter’s “ability to separate the information that he may gain from Ansell’s Protected Information produced in this case from the information properly available in the Australian proceeding.” Id. at 1-3. Ultimately denying Ansell’s request, Judge Andrews observed:

The Court’s main concern, based on comity, would be not to do something that would interfere with the Australian proceedings, including circumventing Australian discovery limitations. Like everyone else, I take Dr. Potter’s honesty as a given. I recognize that it is hard for one person to segregate information in the person’s own mind. Regardless of how successful Dr. Potter is at doing this, any danger of inadvertent violation of the protective order is minimized since the documents provided to him in connection with this litigation will not be available in the Australian proceedings. I do think Defendant needs its expert to be fully informed if he is to be of maximum utility to it. Plaintiff has not shown good cause for preventing the disclosure.

To the extent Dr. Potter needs to sign a different acknowledgement form than the one he has already signed, he needs to do that before any “highly confidential – attorneys’ eyes only” documentation is provided to him.

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In Varentec, Inc. v. Gridco, Inc., et al., C.A. No. 16-217-RGA (D. Del. Oct. 3, 2016), Judge Richard G. Andrews denied Plaintiff’s motion for a preliminary injunction that it has filed two months after filing its Complaint. Id. at 1.

As to likelihood of success on the merits, the Court concluded that Plaintiff had not carried its burden to show it will likely prove infringement of the asserted claims. While it concluded that the accused product likely did satisfy one limitation under the doctrine of equivalents based on part on expert testimony offered, it also concluded that the product did not likely satisfy another limitation in the asserted claims. See id. at 9-15. Having concluded this factor was not met, the Court did not address the other preliminary injunction factors, and denied the motion. Id. at 15.

Varentec, Inc. v. Gridco, Inc., et al., C.A. No. 16-217-RGA (D. Del. Oct. 3, 2016)

 

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In a recent claim construction order, Judge Richard G. Andrews found preamble language limiting because it provided meaning to terms in two claims and antecedent basis for another claim term.  Sanofi v. Lupin Atlantis Holdings S.A., C.A. No. 15-415-RGA (D. Del. Oct. 3, 2016).  The preamble language at issue was, for claims 1 and 6, “a method of reducing a risk of cardiovascular hospitalization in a patient” and, for claim 9, “a method of reducing a risk of hospitalization for atrial fibrillation in a patient.”  The Court found that the preamble language for claims 1 and 6 gave meaning to the claim term “effective amount” because reading the body of claims 1 and 6 (“administering to said patient an effective amount of dronedrone or a pharmaceutically acceptable salt thereof…”) on its own, without the preamble language, “begs the question, effective for what?”  Id. at 6.  With respect to claim 9, the Court found that the preamble language provided an antecedent basis for the claim term “patient in need of reduction of said risk.”  Id. at 7.  The Court explained that “[w]ithout the phrase ‘reducing a risk of cardiovascular hospitalization,’ the phrase ‘a patient in need of reduction of said risk’ would not have a proper antecedent basis.”  Id. at 8.        Continue reading

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