Articles Posted in Richard G. Andrews

Published on:

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.”

Published on:

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.

Continue reading

Published on:

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.

Continue reading

Published on:

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.

Published on:

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)

 

Published on:

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

Published on:

In a recent Memorandum Opinion, Judge Richard G. Andrews granted defendant’s motion to dismiss plaintiffs’ complaint for failure to state a claim, on the ground that plaintiffs’ asserted patent , U.S. Patent No. 8,976,955 (“the ’955 patent”), fails to claim patentable subject matter under 35 U.S.C. § 101. Nice Systems Ltd. v. Clickfox, Inc., C.A. No. 15-743-RGA (D. Del. Sept. 15, 2016). The ’955 patent is directed to a “system and method of tracking user web interactions and using that information to generate real-time recommendations when a contact center agent is later contacted by that user.” Id. at 2. Under step one of the Mayo/Alice analysis, Judge Andrews found that “the claims are directed to the abstract idea of cross-channel customer service, i.e., gathering customer information from one communication channel and using it to engage the customer via another communication channel.” Id. at 7. Under step two, Judge Andrews concluded that the “claims . . . do not add any inventive concept to the abstract idea of cross-channel customer service.” Id. at 12. As Judge Andrews explained, “Plaintiffs’ arguments—focusing on the fact that the claims require automatic, real-time analysis—confirm that the claims are merely directed to using generic computer components to add efficiency and speed to the abstract idea of cross-channel customer service.” Id. at 12-13. Judge Andrews also noted that “unlike in DDR Holdings, the problem the ’955 patent purportedly addresses is not itself inherently limited to the specific technological environment claimed by the patentee.” Id. at 14.

Nice Systems Ltd. v. Clickfox, Inc., C.A. No. 15-743-RGA (D. Del. Sept. 15, 2016).

Published on:

Judge Richard G. Andrews recently granted a motion for judgment on the pleadings of invalidity under § 101.  Callwave Commc’ns, LLC v. AT&T Mobility, et al., C.A. Nos. 12-1701-RGA, 12-1704-RGA, 12-1788-RGA (D. Del. Sept. 15, 2016).  The defendants argued that the ’970 patent at issue, entitled “Location Determination System,” “claim[s] the abstract idea of relating location-related information through an intermediary,” through claims “written so broadly that they could be performed entirely by humans.”  Id. at 8.  The plaintiff countered that the ’970 patent describes “a specific technologic problem that arises in the context of complex location tracking systems, then claims a specific solution to that problem.”  Id. at 8-9.  Under the Mayo/Alice analysis, Judge Andrews found that “the claims are directed to the abstract idea of relaying location information via an intermediary.”  Id. at 9.  The Court added that “adding a vaguely defined intermediary that selectively forwards requests and returns responses does not make the underlying abstract idea any more concrete.”  Id. at 10.  “Unlike in Enfish, the claims . . . do not describe an improvement in any sort of technology.  While plaintiff purports to suggest that the asserted claims solve a specific, technological problem, the claims simply describe a vague method of relaying location information via an intermediary.”  Id. at 12.

The Court proceeded to find that the claims were “devoid of any inventive concept” that could save the patent from invalidation, explaining “[t]he only claim elements that describe something even arguably more than just basic steps of requesting location information and responding with the requested information, are the two limitations that state ‘adapted to determine the location of a respective mobile platform according to a property that is predetermined for each mobile platform’ and ‘determining for each mobile platform one of the remote tracking systems that is capable of locating said mobile platform.’”  Id. at 14.  Judge Andrews explained that these two limitations appear “simply directed to looking at a database to figure out what location tracking service is physically capable of locating a particular mobile platform or type of mobile platform.”  Id.  This “vague notion,” Judge Andrews found, “does not add anything of substance to the claims.”  Id.

Continue reading

Published on:

Judge Andrews recently denied a request by a patent-infringement defendant for a new trial date to accommodate a partial scheduling conflict with its expert. The conflict, as stated by Judge Andrews, was due to a mix-up that resulted in “Defendant’s main expert [making] other professional plans for the trial week of January 23, 2017 . . . ‘to attend and speak each day’ of” a conference in Florida. Judge Andrews noted that “Plaintiff’s team seems to have made plans based on the scheduled trial dates” and explained “[w]hile I appreciate that Defendant wants to have its main expert available and present for the entire trial, I have to balance that against the inconvenience moving the trial would cause to Plaintiff. Defendant will be able to have its expert present his testimony, whether it is by live video, deposition, or by missing a day of the conference.” E.I. DuPont de Nemours and Co. v. Unifrax I LLC, C.A. No. 14-1250-RGA, Order at 1-2 (D. Del. Sept. 13, 2016).

Continue reading

Published on:

In a recent Order, Judge Richard G. Andrews granted in part defendants’ motion to preclude plaintiffs’ expert. Impax Laboratories Inc. v. Lannett Holdings Inc., C.A. No. 14-984-RGA (D. Del. Sept. 6, 2016) (consolidated). Judge Andrews explained that the expert at issue “is a doctor and a very well-qualified migraine expert. He is not an economist, an accountant, a statistician, or a businessman.” Id. at 2. Judge Andrews found that the expert is “qualified to have an opinion on nexus [related to commercial success], but there is no evidence of any academic or experiential basis that would permit him to express quantitative business opinions.” Id. Judge Andrews therefore concluded that the expert may not testify “to his opinions on commercial success.” Id.

Judge Andrews otherwise denied defendants’ motion to preclude, explaining:

While I acknowledge the “gate-keeper” function of a federal trial judge, it is not so important that it be done pretrial when the trial is a bench trial. Live testimony and cross-examination are much more likely to result in a correct decision from me about whether the experts are giving appropriate scientific testimony. Thus, while I am denying most of the motion for now, Defendants may make (and, indeed, in order to preserve the issue, must make) objections at appropriate times. I expect Plaintiffs will lay appropriate foundation for [their expert] as part of their case. Failure to make a timely appropriate objection will result in the objection being waived. The Court will only consider evidence actually adduced at trial (whether through cross-examination or testimony from other witnesses) in ruling on any renewed motion.

Contact Information