A Blog About Intellectual Property Litigation and the District of Delaware


How to Win a Discovery Dispute

Nathan R. Hoeschen, Aug. 8, 2023
Protective Order Discovery Dispute

Bonjour dear readers! I have missed you all so. The blog vacation has been a real boon for us, and we've got a whole trove of opinions, orders, and shouted comments built up to discuss over the next few weeks.

One of the first that caught my eye was an order from Judge Burke that contained that rarest of gems -- praise for a party to a discovery dispute -- and included a neat primer on what the Court likes to see when ruling on them.

I don't know why, but whenever you ask it to include text it always sort of converts it into a realistic seeming eastern european language
I don't know why, but whenever you ask it to include text it always sort of converts it into a realistic seeming eastern european language AI-Generated, displayed with permission

The dispute in question was pretty standard stuff, with the defendant wanting a supplemental protective order that gave extra protections to design files that it likened to source code. As the party seeking the stricter protective order, they bore the burden which the Court found they met easily:

Defendant did here what too few parties in discovery disputes do: it made a detailed factual record, supported by multiple sworn declarations, that strongly supported its arguments. That is, Defendant has demonstrated that the "highly technical details necessary to fabricate [its] proprietary... lens designs" are, "in effect, the source code of lenses" and "are as commercially sensitive as any other form of source code[,]" such that they should receive the heightened form of protection set out in the SPO.

ImmerVision, Inc. v. Apple Inc., C.A. No 21-1484, D.I. 136 (D. Del. Aug. 4, 2023) (Oral Order).

The "detailed factual record" here was more straightforward [read: achievable] than you might think. The defendant submitted 2 declarations: a 3-pager from ...

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Judge Andrews Declines to Lift Stay After IPR Leaves Just 4 of 83 Claims Standing

Andrew E. Russell, Aug. 7, 2023
Lift Stay Stay Pending IPR

Analog Clock
None, Ocean Ng, Unsplash

On Friday, Judge Andrews addressed what happens when an IPR results in just 4 valid claims—and 79 invalid ones:

ORAL ORDER: I read the letters about lifting the stay. . . . The parties agreed to a stay through PTAB resolution of the IPRs. (D.I. 66 ). The PTAB resolution determined seventy-nine claims unpatentable and four patentable. Both sides have appealed. It does not make much sense to go forward with the overwhelming number of asserted claims likely invalid. I think it is probable that there will be a final decision from the Court of Appeals within a reasonable amount of time. That decision will, one way or another, greatly simplify this case. The …
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We're Back! And We Have a Mavexar Update

Andrew E. Russell, Aug. 6, 2023
Mavexar Contempt

Crab in Net
Andrew Russell, displayed with permission

We're back! Our trial was a success, Nate is back from his travels, and things have cooled down enough for us to resume regular posts this week.

While we were tied up, there was some progress in the Mavexar cases. If you recall, Chief Judge Connolly had ordered the sole member of Backertop, a Mavexar-related LLC, to appear in-person in Delaware to answer for the entities' potential fraud on the Court. She objected, stating that she would not appear.

Since then, the July 20 hearing occurred, and as promised she did not appear—although her counsel, and counsel for Backertop, did show up. The transcript for that hearing is below.

The Court discussed the production …

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Gone Fishin'

Andrew E. Russell, July 19, 2023

These guys forgot to involve their Delaware counsel in the meet-and-confer.
These guys forgot to involve their Delaware counsel in the meet-and-confer. Zdeněk Macháček, Unsplash

Well, we tried to stick it out, but my co-blogger Emily and I have a Lanham Act trial next week, and my other co-blogger Nate is traveling. As I stare down at an ever-growing pile of trial tasks, it's time to hang up the gone fishin' sign.

We may have a few sporadic posts over the next week and a half (I may try to sneak over to the Mavexar hearing tomorrow), but we likely won't resume regular posts the week after next.

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An Interesting Twist On Lanham Act Damages

Nathan R. Hoeschen, July 18, 2023
Damages Lanham Act

Judge Connolly issued a post-trial opinion in a false advertising case this week that contained another interesting bit of damages arcana under the Lanham Act.

AI-Generated, displayed with permission

The trial in CareDx, Inc. v. Natera, Inc., C.A. No. 19-662 (D. Del. July 17, 2023), seemed to go great for the plaintiff with the jury finding 9/10 of the defendant's advertisements were false and awarding $21.2 Million in compensatory damages and $23.7 Million in punitive damages. As we say in Delaware, "that's a lotta crabs"*

It all went tails up in post-trial briefing however, when the defendant moved for JMOL of no damages. The court began by summarizing the elements of a Lanham Act claim in the Third Circuit

1) that the defendant has made false or misleading statements as to his own product [or another's]; 2) that there is actual deception or at least a tendency to deceive a substantial portion of the intended audience; 3) that the deception is material in that it is likely to influence 3 purchasing decisions; 4) that the advertised goods traveled in interstate commerce; and 5) that there is a likelihood of injury to the plaintiff in terms of declining sales, loss of good will, etc.

CareDX, at 3-4 (emphasis added) (quoting Pernod Ricard USA, LLC v. Bacardi U.S.A., Inc., 653 F.3d 241,248 (3d Cir. 2011))

The highlighted factor is the interesting one. You see, actual deception is ...

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Plaintiff Shows Infringement, Irreparable Harm, Balance of Hardships, and Public Interest Factors—But Still Fails to Get Preliminary Injunction

Andrew E. Russell, July 17, 2023
Preliminary Injunction Motivation to Combine

Stop - Do Not Cross
Kai Pilger, Unsplash

Federal Circuit Judge Bryson sits by designation in a number of D. Del. cases, but I've noticed lately that his opinions rarely hit the District Court's website, for whatever reason.

I found one such opinion today, and I thought it was worth posting about. It issued back in April 2023, but we missed it at the time since it didn't hit the website.

The opinion involves a lengthy and interesting discussion on a preliminary injunction motion in a patent case. Judge Bryson found that the patentee met almost all of the notoriously difficult factors for a preliminary injunction:

Wahoo’s motion presents a close question. Three of the preliminary injunction factors—irreparable harm, the balance of …
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District of Delaware Deposition Tips

Andrew E. Russell, July 14, 2023
Depositions KB

"We need to call the Court!" AI Generated, displayed with permission

The Court has been somewhat quiet this week as far as new decisions, so I figured I'd take this opportunity to lay out a few quick thoughts on recurring issues that come up in depositions in the District of Delaware.

This is some (but not all) of what you might hear when asking Delaware counsel "depositions are coming up next month, is there anything I should know?" (Experienced Delaware counsel might also talk about a few more topics, such as how to avoid accidentally making your witness prep materials discoverable—but those are for another post).

Here's the list:

  • When sending a notice of deposition, be sure to leave at …
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What a Successful Equitable Estoppel Defense Looks Like

Andrew E. Russell, July 13, 2023
Equitable Estoppel Affirmative Defenses

I imagine a poor Sirius XM Radio satellite, drifting listlessly through space with nothing to do after 3G and smart phones ate its business model.
I imagine a poor Sirius XM Radio satellite, drifting listlessly through space with nothing to do after 3G and smart phones ate its business model. SpaceX, Unsplash

In answering patent infringement complaints, defendants often do their best to throw in any potentially supportable equitable estoppel / implied license defense they can think of. But in patent actions, these defenses can be hard to prove and are rarely successful. They typically drop off at some point later in the case.

This week we got a great example of what a successful equitable estoppel defense looks like, in an opinion from Judge Bataillon granting summary judgment on that basis.

Basically, it involved lots of incredibly strong facts.

The defendant is Sirius …

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A Mavexar-Related LLC and Its Owner Explicitly Refuse Court Order to Appear for Hearing, Shouting "Come at Me, Bro!"

Andrew E. Russell, July 12, 2023
Mavexar

Come At Me Bro Crab
chanphoto, Unsplash

As I mentioned on Monday, my co-bloggers Nate, Emily, and I are swamped at the moment, with a trial this week and another coming up in a week and a half—so this will be a less fulsome post than I'd like.

But I wanted to pass along the "Notice of Objection to and Non-Participation in Judicial Inquisition" attached below, in which the Mavexar-related entity Backertop Licensing LLC and its owner refuse to appear for the Court's scheduled July 20, 2023 hearing (and to produce any further documents), in direct contravention of an order of the Court:

NOTICE OF OBJECTION TO AND NON-PARTICIPATION IN JUDICIAL INQUISITION
Former Plaintiff Backertop Licensing LLC (“Backertop” or “Plaintiff”) hereby gives …
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Court Rejects Argument that Party Is Bound to Its "Judicial Admissions" After Losing at Trial

Andrew E. Russell, July 11, 2023
Litigation

Reverse
愚木混株 cdd20, Unsplash

It's easy to think that, once an opposing party takes a position on the record as to a legal issue, it can never change that position. Not so.

Today Judge Andrews addressed an argument that defendants who lost at trial were nonetheless bound by their "judicial admissions," thus preventing them from taking a (purportedly) contradictory position after trial. Not surprisingly, the defendants disagreed:

Plaintiff argues that Defendants made representations before and at trial that directly contradict positions that Defendants must take in order to prove an interference-in-fact. . . . Plaintiff notes that Defendants' representations were "judicial admissions." . . . . Therefore, Plaintiff argues, Defendants cannot establish an interference-in-fact between the '537 patent and the '207 patent, and I must dismiss the counterclaim against the '537 patent as moot for lack of subject matter jurisdiction.
Defendants respond that Plaintiff does not invoke estoppel—or any other legal theory—that would support dismissing their claims. . . . Defendants add that, in any case, they are not estopped from abandoning their trial positions, nor from invoking theories that Plaintiff presented at trial, because Plaintiff prevailed over them at trial.

The Court found the the defendants were ...

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