The Court held a lengthy hearing in the Backertop cases today. These are Mavexar-related actions and, if you recall, they involve a Mavexar attorney and his wife, who he appointed as the sole member of a Mavexar patent assertion entity.
How a Patent Assertion Entity is Born
Some of the Court's questions focused on exactly what Mavexar does, and confirmed that they operate basically as set out in the earlierhearings.
Here, from the lawyer's perspective, Mavexar attorneys reached out and said that Mavexar wanted to start several litigation campaigns, and asked whether the attorney was interested. They said that they would figure out what entity would actually assert the patents later.
Over the last two weeks, Chief Judge Connolly issued orders in about 15 different groups of cases offering the choice between consenting to magistrate judges Burke (in some cases) or Fallon (in other cases), or being referred to a visiting judge:
ORAL ORDER: It is HEREBY ORDERED that on or before June 13, 2023, the parties shall either (1) submit to the Clerk of Court an executed Form AO 85 Notice, Consent, and Reference of a Civil Action to a Magistrate Judge, indicating their consent to have a United States Magistrate Judge conduct all proceedings in this case including trial, the entry of final judgment, and post-trial proceedings; or (2) file a joint letter indicating that …
In almost every case I have as a defendant, there's a moment around claim construction when I'm just sure I've got the plaintiff dead to rights. Under one construction, there's no infringement—under the other, the patent's invalid. I've just gotta turn the crank on the vise until those conniving jerks pop.
I had a different picture here before but it was . . . pretty darkAI-Generated, displayed with permission
More often than not, however, this insoluble dilemma dissolves and I'm left cranking air.
It was thus with noticeable relish that I read Judge Bataillon's post-trial opinion in CR Bard Inc. v. AngioDynamics Inc. C.A. No. 1-15-218-JFB-SRF (D. Del. June 1, 2023)—where this spring was finally sprung.
The trap was—weirdly—in the term "suitable." The patents claimed a method for identifying a medical injection port as one of those "suitable" for high pressure applications such as CT scans (as well as apparatuses for doing the same). Apparently, the wrong sort of ports will explode if you use them for CT scans, so it's important for the doctor to know which kind you have.
The issue that came to the fore at trial was whether a "suitable" port was one that was ...
Judge Andrews issued an interesting order on Friday. Based on the docket, it looks like the parties had fully completed the Markman process (disclosures, meet-and-confer, joint claim chart, and joint brief), and had briefed a total of 16 terms. Judge Andrews then canceled the Markman and "dismissed" the briefing:
ORAL ORDER: The parties have submitted a joint claim construction with the request that I construe at least 16 terms including, for example, comprising and patient. I think that if I postpone the Markman hearing, some of these disputes may fall away. Therefore, the Markman hearing scheduled for June 23 is cancelled. The Markman briefing is dismissed. The …
Last week, the District of Delaware began assigning patent cases to visiting judge J. Nicholas Ranjan of W.D. Pa. As far as I can tell, these are the first D. Del. cases to be assigned to Judge Ranjan.
Following the assignments, Judge Ranjan issued the following order in each case:
ORDER, regarding practices and procedures of Judge Ranjan. I was recently reassigned several patent cases in the District of Delaware. In order to provide some degree of procedural consistency, I intend to follow all local rules and standing orders of the District of Delaware, and I intend to utilize Judge Andrews forms and orders, until further notice. So counsel should comply with all …
It takes a lot to get a legitimate audible laugh out of us at IPDE, but Judge Noreika managed it with one of her orders this week:
On 5/25/2023, the Court issued an Oral Order stating in part that "[t]he Court will not...accept further ex parte emails." Nevertheless, on 5/30/2023, the Court received an ex parte email stating: "We are not attempting to have an ex parte communication entered into the files. By the attached letter, we are attempting to comply with this Court's orders. Will you please provide the Honorable Judge Noreika the attached letter." The Court does not accept ex parte communications. The Court notes, however, that the referenced "attached letter" states that the patents-in-suit are "no longer …
Chief Judge Connolly issued a memorandum order in the Backertop case today. We talked previously about how the plaintiff in Backertop is an LLC whose sole member is a paralegal who is married to an attorney who works at Mavexar, who gets just 5% of the proceeds of litigating the patents owned by the LLC (the rest goes to Mavexar).
Following a hearing last year, the Court ordered production of various documents, and ordered the owner of the LLC to appear again for a hearing on June 8. She asked to attend remotely due to other obligations.
Today, Chief Judge Connolly denied her request, but rescheduled her appearance for July (the June 8 hearing will still …
One of the hardest parts of being a patent litigator is that all of your stories are boring. With enough hand gestures and elbows to the rib you can sometimes get a polite chuckle from a colleague, but normals? Fuhgedaboutit.
Because of this, I've always felt a certain kinship with PTO experts. There is a robust body of law in the district about what exactly they can testify to, but my rule of thumb has always been that the more boring the testimony, the more likely it is to be admissible. Judge Williams had an interesting opinion unsealed today dealing with a pair of Daubert motions directed to both parties experts on patent office procedures. Let's see how my little rule holds up.
Expert the first offered rebuttal expert opinion on inventorship:
Mr. Stoll, who has nearly thirty years of experience at the USPTO . . . refutes Dr. Cooper’s conclusions on inventorship through detailed explanations "related to the ins and outs of internal PTO practices and procedures.” Mr. Stoll’s opinions also include an explanation that the request to correct inventorship and signed statements by the named inventors complied with all of the relevant regulations and guidelines of the USPTO and were properly accepted as such, as is evidenced by the USPTO Director’s issuance of the certificates of correction to inventorship.
Natera, Inc. v. ArcherDX, Inc., C.A. No. 20-125-GBW, at 7 (D. Del. May 2, 2023) (Mem. Order) (cleaned up).
"[I]ns and outs of internal PTO practices," "compliance with the relevant guidelines" -- sounds pretty boring to me. This testimony gets in!
Expert the second, on the other hand, put a bit more of a dramatic spin on his testimony relating to
We talked early last year about how Judge Noreika praised Chief Judge Connolly SJ ranking procedures, and applied them in a case where the parties had filed 11 SJ motions.
As a reminder, under Chief Judge Connolly's procedures, the parties rank their SJ and Daubert motions. The Court addresses them in order, and if it denies one, it then denies the remainder.
Needless to say, it can lead to some significant strategizing prior to filing, where parties try to balance the importance of each motion with its likelihood of success.
This week, Judge Noreika did it again, and I thought it was a good time to remind everyone that this can happen. In VB Assets, LLC v. Amazon.com, Inc. …
Motions to strike are tough in Delaware. Although the reign of Pennypack seems to be slowly entering its dotage, the door remains open for the late-disclosed.
With exclusion so rare, its a bit odd we don't see more of Rule 37's lesser sanction -- fees.
But visiting Judge McCalla gave us one on Monday in Invacare Corp. v. Sunrise Medical (US) LLC, C.A. No. 21-823-JPM (D. Del. May 22, 2023) (Oral Order). The facts there were pretty stark.
The defendant had an inequitable conduct claim based on the patentee's failure to inform the PTO that identical claims had previously been rejected. Plaintiff's prosecution counsel testified that the failure was due to an error in an internal spreadsheet they kept of related applications that omitted the relevant application. Plaintiff had previously withheld the spreadsheet as privileged but eventually waived privilege and produced it.
Unfortunately, it came out during expert discovery that the spreadsheet actually contained the relevant application. This was probably a bad day for a lawyer somewhere. Plaintiff then went back to see if there were other versions of the spreadsheet that did omit the application -- they eventually found and produced some, but by then it was 4 months after the close of fact discovery.
Defendant moved to exclude these new references. Judge McCalla denied the motion but ordered plaintiff to pay what will surely be a hefty sum to cover the ...
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