The patent claims of this multi-claim lawsuit surrounding 3-D metal printing were bifurcated, and a jury trial on the patent claims was held in late July. The jury returned a verdict finding the two asserted patents valid but not infringed. The remaining trade secret, breach of contract, and unfair competition claims will be tried at a later date.
Following the trial in this case, in which Abhai was found to infringe a pair of Shire’s reissue patents and to have committed litigation misconduct warranting the award of attorneys’ fees (as well as a $30,000 sanction payable to the Court for wasting the Court’s time), Judge Young awarded fees of $1,501,455.32. He cut some time that would have been incurred regardless of the misconduct and for time spent on motions to compel that were not granted, reducing the award by $833k from what Shire had sought. The case will soon be in condition for appeal.
Judge Young denied without prejudice a pair of motions to seal. He noted that the Protective Order entered in the case governs only inter-party disclosures, and cannot provide the basis for filing a document under seal with the court. This case, which involves claims of misappropriation of trade secrets relating to metal 3D printing in connection with the hiring of a former Desktop Metal employee as well as patent infringement claims, was filed in March of 2018, with a motion for preliminary injunction, based on the asserted patents, filed shortly thereafter. In keeping with his typical approach, Judge Young collapsed the motion with an early trial, which he scheduled for July. Markforged then filed counterclaims alleging that Desktop Metal’s founders themselves took Markforged trade secrets with them when they started the company. Desktop Metal sought to bifurcate and try only the patent claims in the July trial, or to allow an expedited hearing on its motion for preliminary injunction, citing the “morass” of additional factual and legal elements from the counterclaims that would make the targeted July trial date unworkable. The motion was denied without prejudice, as was a motion to continue the trial to later in July. A series of motions to dismiss were denied (although Judge Young did note that many of the affirmative defenses seemed to be mere boilerplate, “interposed for the purpose of delay”), meaning a complex litigation involving patents, trade secrets, contractual and other state law claims may well run only four months. One should always be aware that, when appearing before Judge Young, there is a strong chance of a quick trial if preliminary relief is sought.
Judge Young issued findings of fact, rulings of law, and an order for judgment following the bench trial in this litigation involving Abhai’s Abbreviated New Drug Application for a generic version of the extended-release ADHD drug Adderall XR. Judge Young found Abhai infringed Shire’s RE42,096 and RE41,148 patents, and that the patents were valid. He also determined that Abhai had conducted litigation misconduct in failing to reveal errors in its stability dissolution testing or supplement its discovery responses with the corrected data in a timely fashion. Abhai’s 30(b)(6) witness, Dr. Namburi, was deposed in October, 2016, and was questioned at length about the dissolution data, showing how much drug dissolved over time. This questioning triggered concerns in Dr. Namburi’s mind over the veracity of the test results (and thus of his testimony). Over the next several days, he and others at Abhai determined that the testing was conducted improperly, as a result of ambiguities in the written protocol Abhai was using. By the end of the month, the protocols had been revised and the samples retested. Abhai withheld this revised protocol in discovery responses made in November, and Dr. Namburi did not make note of this error when signing an errata report for his deposition that month. Abhai also failed to supplement its prior discovery responses to include the revised protocol or new test data, apparently because no one at Abhai informed Abhai’s attorneys of these errors. Abhai’s attorneys were not notified until March 31, 2017, of the mistakes; the notified the court (and, for the first time, the FDA) the following business day, after five trial days had occurred. Judge Young determined that Dr. Namburi knew of the importance of the dissolution data to the case, as he was central in assisting Abhai’s attorneys in preparing for the trial, and that as a member of Abhai’s management, his actions were attributable to the company as a whole. Judge Young ordered sanctions in the form of attorney’s fees for time Shire spent dealing with the inaccurate data and other alleged litigation misconduct, and for dealing with the revised dissolution data that Abhai sought to introduce mid-trial. He further sanctioned Abhai $30,000 to be paid to the court as a sanction for wasting five days of the court’s valuable time and resources. Finally, he ordered the clerk to send a certified copy of his opinion to the General Counsel of the FDA for their further consideration.