A Blog About Intellectual Property Litigation and the District of Delaware


Courts Stays Patent Case Filed Six Weeks After PTO Granted Ex Parte Reexamination

Andrew E. Russell, Nov. 7, 2022
Motion to Stay

"What do you mean, I can't talk to the defendant risk-free for an indefinite period of time prior to bringing suit?" AI-Generated, displayed with permission

Often, patentees will file suit before ever talking to the accused infringers, for a number of reasons. First, obviously, that lets them control where suit is filed. If a patentee says the wrong things to an accused infringer prior to suit, they could inadvertently create declaratory judgment jurisdiction and the accused infringer could file in their home jurisdiction. Patentees don't want that.

Filing suit before speaking also shows that the patentee means business. They aren't just going to go away, and they are willing to pay at least the cost of drafting a complaint and the filing fee.

But there are other reasons as well, and today's ruling in TTI Consumer Power Tools, Inc. v. Lowe's Home Centers LLC, C.A. No. 22-673-CFC (D. Del.) shows one of them.

There, the patentee apparently reached out to the defendant long before it intended to file suit. It's not clear exactly how long before, but it was enough time for the future-defendant to inform the plaintiff of the prior art and to file a request for an ex parte reexamination, and for the PTO to grant that request—and then for six weeks to pass after that!

So it must have been no surprise to the patentee that the Court found that all of the stay factors favored a stay, and stayed the case. The theme of the patentee's arguments against a stay were that it shouldn't be penalized for taking time to resolve the issue without litigation—but the Court disagreed ...

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A Wild Hearing: Chief Judge Connolly Flips Over Rock, Finds Mavexar LLC Crawling Around, Controlling Patent Litigation and Giving Hapless Patent Owners Just 5-10%

Andrew E. Russell, Nov. 4, 2022
FRCP 7.1 Litigation Funding

Under Rock
AI-Generated, displayed with permission

Wow.

I flagged on Wednesday that Chief Judge Connolly planned to hold an evidentiary hearing today regarding compliance with his litigation funding and entity ownership orders in three cases. Well, I went, and it was one of the most remarkable hearings I've seen in a patent case.

The purpose of the hearing was to dig into whether the parties complied with Chief Judge Connolly's standing orders regarding litigation funding and entity ownership.

But the Court's statements at the hearing offered some insight into what motivated those orders in the first place: Chief Judge Connolly believes (as he has said before) that the District Court is not a "star chamber," and that the public has …

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A Note on Footnotes

Nathan R. Hoeschen, Nov. 3, 2022
Waiver Footnotes

DALL·E 2022-11-03 10.27.28 - a pen held in a foot writing a note
AI-Generated, displayed with permission

One thing I noticed, but failed to mention, in discussing Judge Williams' opinion in Cirba IP, Inc. v. VMware, Inc., C.A. No. 19-742-GBW, week was the following passage on footnotes in briefing:

[T]he Court ultimately needs not address this footnote argument because "arguments raised in passing (such as, in a footnote), but not squarely argued, are considered waived. "

Cirba, at 4 n.3 (quoting Samsung Elecs. Co. v. Netlist, Inc. , C.A. No. 21-1453-RGA, 2022 WL 3027312, at *5 (D. Del. Aug. 1, 2022))

This is a policy we've touched on occasionally on the blog, most notably from Judge Andrews.

Where it gets interesting, is that Judge Williams issued another order with …

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Update on Chief Judge Connolly's Evidentiary Hearings Regarding Compliance with His Litigation Funding and Disclosure Orders—First Hearing is Friday November 4 at 10am

Andrew E. Russell, Nov. 2, 2022
Litigation Funding Standing Orders

These patent plaintiffs may have rough seas ahead.
AI-Generated

It seems there has been a lot of interest in Chief Judge Connolly's evidentiary hearings about compliance with his standing orders regarding disclosure of litigation funding and entity ownership, which are now scheduled in over 20 cases.

I've had a few questions about when the hearings are going forward, so here is an update.

Here Is When the Hearings Are Scheduled

Here is when the hearings are set for, at least as of today:

  • Friday, November 4, 2022, at 10 am in Courtroom 4B: Cases involving Mellaconic IP, Lamplight Licensing LLC, and Nimitz Technologies LLC are set for hearings regarding compliance with the Court's third-party litigation funding order. See C.A. Nos. 22-244, 22-541, 22-418, 22-1017, 21-1247, 21-1362, 21-1855, …
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What's In A Name?

Nathan R. Hoeschen, Nov. 1, 2022
Caption Substitution of Parties

Still feeling spooky
Annie Spratt, Unsplash

I've filed my fair share of motions to amend a case caption. Indeed, I recall my very first one.

It was a cold February morn, and the winds whipped through the loose boards that were all that stood between the library and the nor'easter steeping outdoors. Volume after volume was chosen and discarded as I searched for any guidance on what a motion to amend the caption should include -- what standard must be met? What oaths must be sworn?

Indeed, I recall the the sum total of the guidance on the issue in the federal rules was contained in Rule 10(a), which helpfully states:

[e]very pleading must have a caption with the court's name, a …
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Disagreement With the Substance of Infringement Contentions Does Not Mean Those Contentions Are Inadequte—And Can't Be the Basis to Withhold Discovery

Andrew E. Russell, Oct. 31, 2022
Motion to Strike MTC

"I'm a motion to strike, not a stealth motion for summary judgment" Braydon Anderson, Unsplash

One of the more common District of Delaware questions you get as local counsel is "can we move to strike opposing counsel's (infringement or invalidity) contentions?"

That may seem like a simple question, but the answer depends many things, like: What is wrong with those contentions? How were our contentions in comparison? Which judge is this in front of? How long ago did they serve them? (And, sometimes, things like: Why are you asking this now, when we are two weeks from trial?)

Challenging contention disclosures can be tough even if you have what seem like fairly good arguments. The Court is generally not …

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Judge Noreika Transfers Trademark and False Advertising Case Out of Delaware. Are Patent Case Transfers Coming?

Andrew E. Russell, Oct. 28, 2022
28 U.S.C. § 1404(a) Jumara

Artist's depiction of the <a href='#' class='abbreviation' data-bs-toggle='tooltip' data-placement='top' title='Jumara v. State Farm Ins. Co., 55 F.3d 873 (3d Cir. 1995)'>Jumara</a> factors in action
Artist's depiction of the Jumara factors in action Nick Fewings, Unsplash

Yesterday, Judge Noreika transferred a trademark, false advertising, false designation of origin, and unfair competition case to the Northern District of Illinois. See Rockwell Automation, Inc. v. EU Automation, Inc., C.A. No. 21-1162-MN (D. Del. Oct. 27, 2022).

This is interesting because, to my knowledge, Judge Noreika has transferred few if any patent cases out of the District of Delaware—including when both parties are have strong ties to the transferee forum.

I thought it would be interesting to see how the Jumara factors played out in this trademark case compared to …

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A Narrow Doctrine

Nathan R. Hoeschen, Oct. 27, 2022
Privilege

Douglas Lopez, Unsplash

How, in the 8,000 year history of law, have we not come up with a better name than the "at issue" doctrine? I hesitate to call it the shame of our profession, but it's firmly in the running.

I pose some alternatives below. To make it clear, any highlighted words refer to the doctrine formerly known as "at issue." Feel free to use going forward -- creative commons or whatever.

This Will Go On For Longer Than You Think

Judge Burke had an interesting case regarding the sneaky peak doctrine. In Sensormatic Electronics, LLC v. Genetec (USA) Inc., the issue arose in the context of an inequitable conduct allegation, where defendants sought evidence about what exactly …

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Reminder: "The ABA’s Model Rules of Professional Conduct, Not the Delaware Rules of Professional Conduct, Set the Standards for Professional Conduct" in the District of Delaware

Andrew E. Russell, Oct. 26, 2022
MRPC DRPC

Caution Tape
Hiroshi Kimura, Unsplash

If you're briefing on an ethical issue in the District of Delaware, consider the local rules before relying exclusively on the Delaware Lawyers’ Rules of Professional Conduct (DLRPC):

(d) Standards for Professional Conduct. Subject to such modifications as may be required or permitted by federal statute, court rule, or decision, all attorneys admitted or authorized to practice before this Court, including attorneys admitted on motion or otherwise, shall be governed by the Model Rules of Professional Conduct of the American Bar Association (“Model Rules”), as amended from time to time.

D. Del. Local Rule 83.6(d). According to the Judge Jordan, back in 2004:

[T]he ABA’s Model Rules of Professional Conduct, not the Delaware Rules of …
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Judge Williams' New Form Scheduling Order Adopts Chief Judge Connolly's Ranking Procedures for Summary Judgment Motions—But Not for Daubert Motions

Andrew E. Russell, Oct. 26, 2022
Scheduling Orders Scheduling Order

System Update
Clint Patterson, Unsplash

Judge Williams issued a new form scheduling order last week. Updating his previous orders, he primarily added text mirroring Judge Connolly's procedures that require parties to rank summary judgment motions (where if any motion is denied, lower-ranked motions will not be considered):

(d) Ranking of Summary Judgment Motions. Any party that files more than one summary judgment motion shall number each motion to indicate the order in which the party wishes the Court to review its pending motions. The first motion the party wishes the Court to consider shall be designated #1,the second motion shall be designated #2, and so on. The Court will review the party's summary judgment motions in the order designated by …
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