When the Court says "unless they open the door," typically you'd want to stay far away from that door.AI-Generated, displayed with permission
There is a lot of precedent in D. Del. regarding when the parties can and can't present evidence from post-grant patent proceedings such as IPRs. Most often, the Court holds that such evidence is inadmissible or constrained, to prevent it from unduly influencing the jury. "We already won this once" can be a powerful argument.
Last week, Judge Williams issued an opinion taking the usual position as to most evidence. But the Court also held that simply asserting a prior art reference that was raised in post-grant proceedings opens the door for the patentee to introduce …
We'd all like to win the war in one decisive strike. Just have a trial by stone and knock the whole thing out without needing to go to the time and expense of a trial . . . by law.
(Eds. note—has nobody else seen The Dark Crystal? I thought this was a universal reference, but it appears to be just another exhibit in the case for my being quite old)
AI-Generated, displayed with permission
Where was I? Anyway.
It's always tempting to take a big swing at summary judgment on validity or infringement in the hopes of knocking out the whole case. This urge, however, must be tempered by the knowledge that these big motions are harder to win. With limited pages and various judicial policies effectively limiting the number of SJ motions that can be brought, a more winnable motion on a small issue is often a good choice.
But an issue can be too small.
That was the lesson of Northwestern Univ. v. Universal Robots A/S, C.A. No. 21-149-JLH, D.I. 327 (D. Del. Aug. 28, 2024). The defendant filed a couple big SJ motions on 101 and noninfringement, but also moved for ...
I hope the Third Circuit one day revisits the Pennypack factors, which are what it directs the lower courts to apply to determine whether late disclosures are subject to sanctions such as preclusion.
The factors can be lenient on parties that are very late in disclosing critical facts. Pennypack sets up a system where, oddly, the more critical the late-disclosed fact is, the later the party can be, and the less likely it is to be excluded. Isn't that backwards?
In practice, the factors often seem to turn on whether there is incurable prejudice, and that can be hard to establish. But a rule that "you …
Long slumbering, but always alert, the Mavexar saga moved step closer to its inevitable conclusion today when Chief Judge Connolly issued a memorandum order in Swirlate IP LLC v. Quantela, Inc., C.A. No. 22-235-CFC (D. Del. Aug. 29, 2024) (Mem. Order).
This order dealt with a pair of cases that have largely flown under the radar, being stayed during the pendency of the Nimitz appeals. But the story here is similar in the broad strokes to that in Backertop and Nimitz. The putative plaintiff is an LLC with a sole owner who was assigned the patent in suit by IP Edge or Mavaxar. The attorneys in the case largely communicated …
It was tough to find an image for this. Just imagine each lego head is a proposed claim construction.Wu Yi, Unsplash
The District of Delaware supports contention interrogatories generally (but not contention 30(b)(6) topics). I remember that, back before the Court adopted the Default Standard in 2011, contention interrogatories were the main way to define and limit the scope of the case during fact discovery.
But contention interrogatories are not without limits. On Friday, in LeFebvre v. Extrabux, Inc., C.A. No. 23-167 (D. Del.), Judge Burke issued a decision on a discovery dispute about a contention interrogatory seeking claim construction positions. He held that a party can't just ask the opposing party for its …
Wilmington, DE. Who wouldn't want to litigate here? These guys, obviously.Andrew Russell, CC BY 2.0
We've talked a lot about how the Jumara factors, which govern how courts in the Third Circuit exercise their discretion on motions to transfer, are pretty tough on plaintiffs. Patent cases seems to stick more often than not, but plaintiffs with other claims, such as false advertising, may not be so lucky.
Judge Andrews granted a motion to transfer in a false advertising case on Friday. Here's how the factors broke down:
Plaintiff's Choice of Forum: This always favors plaintiff, and …
Last month, we wrote about the Mavexar-related witness who spent about $44,400 and counting just to avoid a trip to Delaware. Our post was prompted by the Federal Circuit affirming Judge Connolly's order imposing sanctions for her failure to appear in-person (even though, oddly, she agreed to appear remotely) for questioning by the Court related to potential misbehavior by her LLC, its attorneys, and Mavexar/IP Edge.
Well, yesterday the Court set a new hearing date, once again ordering the witness to appear for an in-person examination by the Court:
At Wilmington on this Twenty-third day of August in 2024, having received the Federal …
Money—Exactly the thing that this accused infringer may not actually wind up collectingGiorgio Trovato, Unsplash
We're back! During our brief intermission, the Court issued an exceptional case finding in Wireless Discovery LLC v. eHarmony, Inc., C.A. No. 22-480-GBW (D. Del.), and awarded fees.
I always like reading these opinions both (1) as a guide on what not to do and (2) to figure out how to better threaten NPEs with the risk of fee awards. I'm not sure this one is going to be particularly helpful in those regards, because there were some exceptional facts.
First, the patentee filed a patent that asserted previously invalidated claims. Worse, after the accused infringer called them …
Patent lawyers often lament their clients' casual correspondence, which sometimes read like the villains monologue that might close the first act of an early 80's Disney Movie.
"Steal? Of course I stole, the work is lucky I left him hands grovel or eyes to cry."AI-Generated, displayed with permission
Today's case, Jackson v. NuVasive, Inc., C.A. No. 21-53-RGA, D.I. 309 (D. Del. Aug. 2, 2024), is the rare case where those casual communications are helpful to the case.
You see, NuVasive had a prior agreement with Dr. Jackson that included a covenant not "assert . . . any claim that the development, manufacture . . . or exploitation of any NuVasive prodect . . . infringes and of the Jackson Group's rights" in a variety of defined IP categories. So, when Dr. Jackson sued for infringement of various patents not specifically listed in the agreement, the parties naturally disputed whether they fell within the terms of the covenant.
This leads us to an internal email from one of NuVasive's IP attorneys who worked on the agreement which helpfully stated, "I just want to ensure we’re as clear as possible that we’re FOREVER FREE FROM JACKSON (and any down-stream licensees/assignees) based on the rights we originally obtained and are now obtaining.”
Plaintiff moved in limine to exclude this email as hearsay, arguing that NuVasive would use it to prove the truth of the statement that they "were obtaining" rights that would leave them "FOREVER FREE" of Jackson.
Judge Andrews, however, found that the statement could be admitted subject to a limiting instruction:
Mr. Spangler's live testimony about what he wanted to achieve in the 2014 Agreement is not hearsay. The email clearly expresses Mr. Spangler's goal in the negotiations, which is evidence of his motive, intent, and plan. See Fed. R. Evid. 803(3). His motive, intent, and plan, in conjunction with other evidence, appear to be relevant to proving two of Defendant's counterclaims . . . I agree with Defendant that if Mr. Spangler's testimony were challenged, as it seems almost certainly likely to be, at least impliedly, the email would not be hearsay if offered in response to that challenge. Fed. R. Evid. 801(d)(l)(B) . . . . Thus, I will admit the email. The motion (D.I. 293) is DENIED. There is a bit of hearsay within the email. If Plaintiff wants me to give a limiting instruction in connection with that bit, Plaintiff is ORDERED to submit any such proposal before the pretrial conference is held.
Id. at 3-4.
I for one find it amusing that this rare example of a communication helpful to a case was authored by an attorney. It's probably good advice to all you in-house folks out there—send the occasional email to your buds explaining that you're totally in the right. It might turn out to be important one day.
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