Patent Litigators in Delaware May Get Outside Judges

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By Dana A. Elfin

Patent litigators expecting to try cases before federal district court judges in Delaware could instead wind up appearing before a Nebraska district court judge.

Because of current and impending judicial retirements, the court’s resources are strained, and it’s calling on several visiting judges to help handle its busy docket, including eight just to handle the overflow of patent cases.

For patent litigators, the impact is potentially having a case in front of a judge who doesn’t usually hear patent cases. In contrast, Delaware district court judges are comfortable with handling a large docket of sophisticated patent cases, including Hatch-Waxman litigation. Bristol Meyers Squibb & Co., Genentech Inc., Pfizer, Sanofi-Aventis, and Shire Plc are just a few of the branded drug companies who have sued generic drug companies for patent infringement in Delaware federal district court over the past year.

Former Chief Judge Gregory M. Sleet, is retiring this fall and long-time judge Sue L. Robinson retired in 2017, straining the court’s ability to handle cases, including patent matters. In the past year, Sleet presided over 148 patent cases, according to Bloomberg Law analytics. In addition, the fallout from the U.S. Supreme Court’s May 17 ruling in the TC Heartland case restricting where patentholders may bring infringement suits is increasing the number of such cases filed in the U.S. District Court for the District of Delaware.

Eight visiting judges on the court’s list are scheduled to handle overflow patent cases. One of them, Senior Judge Joseph Bataillon is with the U.S. District Court for the District of Nebraska. Four of the other judges on the list, Mitchell Goldberg, Gerald McHugh, Mark Kearney, and Senior Judge Eduardo Robreno, hail from the Eastern District of Pennsylvania. The list also includes William J. Bryson, of the U.S. Court of Appeals for the Federal Circuit, and two current judges from the U.S. Court of Appeals for the Third Circuit, D. Brooks Smith and Chief Judge Kent A. Jordan, who used to sit on the Delaware district court bench.

The visiting judges are slated to handle case-dispositive issues--which include motions to dismiss or patent claim construction matters that could wind up terminating the case.

Delaware has consistently been a popular jurisdiction for patent case filings because many corporations have a Delaware connection, with more than 50 percent of publicly traded companies in the U.S. incorporated there.

Uncertain Situation

The chance of drawing a visiting judge instead of one of the currently sitting Delaware federal district court judges “creates tremendous uncertainty in a process—litigation—that already has considerable uncertainty to it,” James K. Stronski of Crowell & Moring LLP in New York told Bloomberg Law in a Feb. 14 phone call. Stronski is an intellectual property litigator whose practice includes representing generic drug companies in patent litigation under the Hatch-Waxman Amendments to the Federal Food, Drug & Cosmetic Act, as well as biosimilar applicants under the Biologics Price Competition and Innovation Act (BPCIA).

Under the Hatch-Waxman Act, a drug patent holder sues to defend its patent after a generic manufacturer tries to enter the market by asserting that patent is invalid or its generic drug will not infringe it. The BPCIA created a faster approval process for biosimilars, which are less expensive versions of complex, FDA-approved biologic drugs.

In addition, lawyers, particularly in the Hatch-Waxman area, may wind up before a judge who’s not as conversant in that specific area of patent law as the Delaware bench.

“People are familiar with Delaware and have a comfort level with it,” Stronski said. Plus, for Hatch-Waxman litigators, the Delaware bench has the advantage of being “very familiar with Hatch-Waxman litigation and the FDA regulations the litigation is driven by,” he said.

Relief Coming

In any event, relief may be in sight because the two nominees to fill the vacant or soon-to-be vacant judgeships appeared in confirmation hearings before the Senate Judiciary Committee Feb. 14.

Maryellen Noreika, a well-known patent litigator with Morris, Nichols, Arsht & Tunnell LLP in Wilmington, has been nominated for the Sleet vacancy. Colm F. Connolly, a former U.S. Attorney now the managing partner of the Wilmington office of Morgan Lewis, has been tapped for Robinson’s slot.

Connolly’s practice includes intellectual property and complex commercial litigation, white collar criminal matters, and corporate investigations.

“Votes have not yet been scheduled on these nominees,” Taylor Foy, majority press secretary for the Senate Judiciary Committee, told Bloomberg Law in a Feb. 14 email.

New Judges by June?

“We’re hoping to get them on the bench by June,” Denise Seastone Kraft, a patent litigator with DLA Piper in Wilmington, told Bloomberg Law in a Feb. 14 phone call.

In the meantime, Kraft said, some lawyers’ worries about the impact of the judicial vacancy and Sleet’s impending retirement on the Delaware district court may be misplaced. According to Kraft, the district court has been keeping up with all its deadlines even with the visiting judges.

“It’s been business as usual,” she said.

And she said patent litigators probably don’t need to worry about traveling to Nebraska. Kraft, whose firm has some patent cases assigned to Nebraska Judge Bataillon, said Batallion has “given every indication that he’s going to make himself present in Delaware for those cases.”

Cases Outsourced Before

The last time the Delaware court outsourced cases to visiting judges was back in 2006, when, for a five-year period, that court used visiting judges to assist with its caseload because of a shortage of district judges.

At that time, the visiting judges were given the option of keeping the cases or sending them back to Delaware, Karen Keller of Shaw Keller LLP in Wilmington, Del., told Bloomberg Law in a Feb. 14 phone call. “It is unclear what will happen this time,” Keller said. “The court has not yet issued any guidance as to whether the cases will remain with the visiting judges or will be sent back to the dockets of the Delaware judges.”

Keller’s practice primarily focuses on intellectual property and complex commercial litigation in district courts across the country at at the International Trade Commission.

To contact the reporter on this story: Dana A. Elfin in Washington at delfin@bloomberglaw.com

To contact the editor responsible for this story: Randy Kubetin at rkubetin@bloomberglaw.com

For More Information

The list of visiting judges is at http://src.bna.com/wp7.

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