A Blog About Intellectual Property Litigation and the District of Delaware


Needs Must When Markman Drives

Nathan R. Hoeschen, April 18, 2023
Extension Stay

As a peak behind the curtain, I don't normally tell muggles (non-patent folk) that I write a blog. I can't help but put myself in their shoes and imagine myself at a party talking to a man in a polo shirt who writes a blog about . . . cured meats? I see myself pressed firmly against a wall while my eyes dart madly for help that I know will not come. On his shirt - pastrami.

You see, it's in the temperature of the cure—too long, and you've lost yourself a brisket
You see, it's in the temperature of the cure—too long, and you've lost yourself a brisket AI-Generated, displayed with permission

I don't want to be that man.

But today my wife told me that she's started reading the blog. Her favorite is the one with the crab. I am ever so pleased and am inspired to maintain the commitment to the craft of blogging which has made IP/DE the bulwark of modern culture it is.

[Insert seamless transition to legal analysis here, then remember to delete this before posting]

This brings us to a novel argument to (essentially) stay 101 briefing, which Judge Williams soundly rejected yesterday. The defendant in SurgeTech, LLC v. Uber Techs. Inc., C.A. No. 22-882-GBW (D. Del. Apr. 17, 2023) (Oral Order), moved for judgment on the pleadings on 101 grounds a bit later than usual -- just after the submission of the joint claim construction chart.

The plaintiff then moved for a 5 week extension of its deadline to respond, ...

View

Judge Burke Applies "Motion Day" Procedure to non-§ 101 Motions

Andrew E. Russell, April 17, 2023
§ 101 Days

Two birds with one stone—Or three, I suppose.
Two birds with one stone—Or three, I suppose. Dulcey Lima, Unsplash

As we've discussed, starting last decade some of our judges have dealt with the influx of § 101 motions by setting "§ 101 motion days" and addressing multiple § 101 motions in multiple cases at the same time and in the same oral argument, with attorneys for each party required to attend the full argument.

These days seem to have been a success, because today Judge Burke issued an order applying the same procedure to a new type of motion—motions to dismiss or strike inequitable conduct allegations:

WHEREAS, the Court has received numerous motions challenging the accused infringer’s counterclaims and/or affirmative defenses relating to inequitable conduct (hereafter, …
View

Another Reason to Bring Non-Infringement / Invalidity Counterclaims

Andrew E. Russell, April 14, 2023
Counterclaims

To keep the patent assertion entity from coming back from dead, kill it with counterclaims
To keep the patent assertion entity from coming back from dead, kill it with counterclaims AI-Generated, displayed with permission

One recurring question in patent cases is whether to bring non-infringement and invalidity counterclaims.

For a while (over the last decade), it seemed like parties were backing off on counterclaims a bit, for a couple of reasons:

  • While counterclaims are generally low-cost, they are not free and still involve some work.
  • They increase the risk that the defendant, who is now a counterclaim-plaintiff, will have to bring some subset of its witnesses to Delaware for deposition.
  • They may have little impact on how the case progresses.

These days, however, the pendulum seems to be swinging back to some extent, with parties …

View

What's The Worst That Could Happen?

Nathan R. Hoeschen, April 13, 2023
Sealing Redactions

DALL·E 2023-04-13 15.54.57 - 35 MM photo of smiling dentist holding bloody wrench and giving thumbs up
AI-Generated, displayed with permission

Motions for reargument are notoriously hard. Winning one is the legal equivalent of the going to the dentist and hearing that you really ought to take it easy and stop brushing so much.

Nevertheless, you see them filed all the time. I imagine the thinking is that, even if the odds are low, you've already lost the motion so things can't get any worse.

But they can!

Things can always get worse!

You could tell he was just trying to hold it in in the last photo
You could tell he was just trying to hold it in in the last photo AI-Generated, displayed with permission

This was the lesson in Carrum Techs., LLC v. Ford Motor Co., C.A. No. 18-1647 (D. Del. Apr. 11, 2023). A couple of weeks ago, the defendant filed a motion to seal one of its briefs. The motion was short and unaccompanied by a declaration, so Judge Andrews denied it in a one-sentence Oral Order.

Now it's unclear why exactly the Defendant filed a motion to seal in this instance, as the parties had previously filed many documents under seal without a motion in accordance with CM/ECF procedures. The defendant thus moved for reargument on the motion to seal, largely arguing that it hadn't needed to file the motion in the first place:

Over the course of this litigation, various other pleadings have been filed under seal by agreement of the parties. Ford did not intend to request different treatment of its Memorandum and Exhibits than prior sealed filings in this litigation. Rather, Ford proceeded in a manner ...
View

Heads Up: Check Your Calendars for Sept. 21-22 Deadlines in D. Del. The Court May Have Just Moved Them.

Andrew E. Russell, April 12, 2023
Bench and Bar DED

I'll fix that for you...
Sasun Bughdaryan, Unsplash

The Court issued an order today clearing all of our calendars for the District of Delaware's Bench and Bar, which is set for September 21-22, 2023.

The order says that it moves all filing and service deadlines to the following Monday:

WHEREAS, the Court having announced that it will host its biennial District of Delaware Bench and Bar Conference on September 21 and 22, 2023, and the
Court wishing to promote the participation of as many members of the Bar as possible;
IT IS HEREBY ORDERED that all members of the court - District, Magistrate, and Bankruptcy Judges - will, to the greatest extent possible, cancel and refrain from scheduling court proceedings and filing deadlines on …
View

Judge Williams Refuses to "So Order" Stipulation to Take Depositions After Close of Fact Discovery—Because It Is Unnecessary

Andrew E. Russell, April 12, 2023
Stipulation Scheduling Order

Stop Sign
Luke van Zyl, Unsplash

We've talked about how it's generally understood that parties can agree to modify certain deadlines in the District of Delaware without a stipulation, such as discovery response deadlines, deposition dates before the close of fact discovery, or deadlines under the Default Standard.

We were careful to exclude depositions occurring after the close of fact discovery from that list. After all, the fact discovery deadline is set by court order. Thus, parties often stipulate to take fact depositions after the close of fact discovery.

An opinion from Judge Williams yesterday held that these stips are unnecessary, and the parties can take depositions after the close of fact discovery without any stip to that effect:

ORAL ORDER: The Court has reviewed the Stipulation to take deposition outside fact discovery ...
View

I've Got a Hantz We'll Be Seeing This Case Cited More

Nathan R. Hoeschen, April 11, 2023

A couple weeks ago the Federal Circuit issued a short opinion in Hantz Software, LLC v. Sage Intacct, Inc., No. 2022-1390, 2023 WL 2569956 (Fed. Cir. Mar. 20, 2023) that I suspect may have an outsized affect on 101 practice in Delaware.

Oh, what a delicious pun, IPDE you are the very soul of wit
Oh, what a delicious pun, IPDE you are the very soul of wit AI-Generated, displayed with permission

The complaint in Hantz, alleged that the defendant infringed "one or more" claims of the asserted patents and attached claim charts for 8 particular claims. Defendant filed a 12(b)(6) motion on 101 grounds which the court granted, finding all of the claims of the asserted patents unpatentable. Plaintiff appealed the ruling to the extent it invalidated claims other than those specifically charted in the complaint.

The Federal Circuit vacated judgment on the other claims, stating:

[W]e agree that the operative complaint asserted infringement of only claims 1 and 31–33 of each asserted patent, and because Sage did not file any counterclaim of its own (instead, it simply moved to dismiss Hantz’s complaint), we conclude that the ineligibility judgment should apply to only claims 1 and 31–33 of the asserted patents.

Hantz, 2023 WL 2569956, at *1

The Federal Circuit took pains to note that ...

View

Chief Judge Connolly Cancels the April 11 Litigation Funding & Disclosure Hearings

Andrew E. Russell, April 10, 2023
Litigation Funding Standing Orders

I don't know if Air Canada actually flies here.
I don't know if Air Canada actually flies here. John McArthur, Unsplash

There were two litigation-funding related hearings set forth tomorrow in Chief Judge Connolly cases. Both were canceled today.

The first was in the Nimitz cases, C.A. Nos. 21-1362, 21-1855, and 22-413. As we discussed last week, the Court set this hearing after Nimitz failed to produce the broad formation- and funding-related discovery that the Court required from it.

Later last week, the plaintiff in that case produced the required documents. Today, the Court canceled the hearing so that it would have time to review the recent production:

ORAL ORDER: Whereas (1) on Thursday, April 6, 2023 at 4:23 p.m., Mr. Pazuniak submitted to the Court documents …
View

A Mavexar Refresher

Emily DiBenedetto, April 7, 2023
Mavexar Litigation Funding

Litigation funding has become a popular topic this year, deserving of its own synopsis. For those who missed out on the recent blow-by-blow events as they happened, relive the saga below.

This is a bit lengthy. You've been warned. Pour yourself a cup of tea first and get comfortable.

Story Plot Points
Emily DiBenedetto

The Exposition: Discovery on Litigation Funding is a Mixed Bag

To set the stage, let's discuss litigation funding disputes in the District of Delaware before the most recent developments. Over the past few years, discovery disputes regarding litigation funding issues have produced mixed results. The Court sometimes grants motions to compel litigation funding materials, and other times denies them, and may (rarely) conduct an in camera review to evaluate …

View

Clear and Unmistakable

Nathan R. Hoeschen, April 6, 2023
Claim Construction

I was trolling though recent opinions in search of a blog post topic (you're welcome) when I stumbled upon a recent Markman order discussing disclaimer. Now normally Markman orders aren't the most fecund ground for a post. But seeing the pro forma language about how prosecution history disclaimer required a "clear and unmistakable" disavowal I had to ask myself—"do they ever find that?"

I don't know why I asked for it to be Baron Harkonnen, but I did and now you have to see it too
AI-Generated, displayed with permission

The answer, is "not really, no." Frequent readers will know that I normally do the last 10 opinions, because I have forgotten all the math I used to know and its easy to calculate the percentages. Here though, I looked through the last 10 and was still at 0. So I pressed on until we hit a winner at the 15th oldest decision. For those with calculators, that's a 6.7% success rate.

What really surprised me about this number was that I only had to go back 2 months to find 15 cases where a defendant had alleged disclaimer, given the abysmal success rate. I'll update this post the next time we get a winner to see if we can piece together a unified theory of what makes these arguments work.

View
Newer
Older

Archive