A Blog About Intellectual Property Litigation and the District of Delaware


Entries for date: February 2021

Chief Judge Stark Suggests Requirement for Copyright Infringement Contentions, Similar to Patent Infringement Contentions

Andrew E. Russell, Feb. 12, 2021
Infringement Contentions Copyright

Books
Alfons Morales, Unsplash

In May 2020, West Publishing and Thomson Reuters filed a copyright action against ROSS Intelligence LLC, alleging that ROSS (through a third party) scraped content from WestLaw to start its own Artificial-Intelligence-based legal research platform. (ROSS has since ceased operations but persists solely to litigate this case.)

Down the line, I imagine the case may raise some interesting questions about AI and copyright. For example, what are the copyright implications of ROSS's use of Westlaw's copyrighted compilation of otherwise public domain materials to train an AI? Isn't that fair use (talk about transformative!)? If not, what are the damages? And so on.

For now, ROSS has moved to dismiss on the ground that West failed to …

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How Long Until the Hearing?

Nathan R. Hoeschen, Feb. 11, 2021
Discovery Dispute Scheduling

Red Classic London Double Decker Bus
Dave Kim, Unsplash

As we discussed in our primer on bringing a discovery dispute in Delaware, each judge has their own procedures for scheduling a hearing on discovery disputes. Perhaps because of these different procedures, the time between request and conference varies quite a bit. Because it's sometimes useful to know how long you might expect to wait before receiving a decision on your dispute, I present you, dear reader, with the average time from request to hearing for each of the Article III Delaware Judges as of today (based on their 5 most recent scheduled conferences):

  • Judge Andrews - 21 Days
  • Judge Connolly - 19 days
  • Judge Noreika - 25 Days
  • Judge Stark - 39 Days

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Don't Count on Extra Pages in D. Del.

David M. Fry, Feb. 10, 2021
Page Limits Local Rules

Paper
ron dyar, Unsplash

It's hard to get a significant increase to the normal briefing limits in D. Del., even if both sides agree. Sometimes a judge will grant a small increase (if there's a good reason), but for the most part, they're reluctant to grant requests that will have a large impact on their workload.

Case in point: In a multi-defendant ANDA case that went to trial last month, the parties submitted a post-trial briefing schedule asking Chief Judge Stark to allow "in excess of 500 pages of briefing and an additional almost 500 pages of proposed findings of fact[.]"

Judge Stark quickly rejected the proposal and ordered shorter limits. And although he allowed "[a]ny party that strenuously objects …

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Can You Serve Process on a Foreign Defendant by Email? Maybe.

Jeff Castellano, Feb. 9, 2021
Litigation FRCP 4

Service of process on a foreign defendant can be tricky. If the foreign defendant will not agree to waive service under Rule 4(d), a plaintiff is left with methods of service under Rule 4 that are often complex and time-consuming, and come with no guarantee that the service will ultimately be effective.

And while Rule 4 does not set a deadline for service of process on foreign defendants, as it does for domestic defendants, the time to serve is not unbounded. Helpfully, Rule 4 provides a fallback that opens up the door to other--perhaps less onerous--methods of service, including simply sending an email (in the right circumstances).

When Can You Serve by E-mail?

She just served a defendant in Taiwan
She just served a defendant in Taiwan Brooke Cagle, Unsplash

Last week Magistrate Judge Hall permitted service on a foreign defendant by email pursuant to FRCP 4(f)(3), which provides that, in addition to various other methods of service, service of process may be achieved "by other means not prohibited by international agreement, as the court orders."

As Judge Hall recounted, plaintiff DivX LLC first attempted service by certified mail on Taiwanese defendant Realtek Semiconductor Corp., but Realtek apparently refused to accept the mail delivery. ...

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FRCP 30(b)(6) Amended; Still Doesn't Provide Rules for Objections

Andrew E. Russell, Feb. 8, 2021
Depositions Litigation

FRCP 30 was amended in December 2020 to add a meet-and-confer requirement:

FRCP 30(b)(6) Amendment
U.S. Government Publishing Office

The amendment also suggests (by removing "then") that a party may designate its 30(b)(6) witness as part of the parties' discussions before the notice goes out.

No revised PDF of the rules is available yet, but Cornell's very-frequently-relied-upon page has already been updated.

No Change to Objection Procedures

One issue that commonly arises here in Delaware is that the parties serve an FRCP 30(b)(6) notice but do not receive objections until immediately before the deposition, leaving no time to resolve the issues.

Why is that? Because there is no deadline in the FRCP or the D. Del. local rules for objections to a …

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District of Delaware Formally Cancels All Non-Emergency Jury Trials Until April 5, 2021 Due to COVID-19

Andrew E. Russell, Feb. 5, 2021
Jury Trials Trial Calendar

COVID-19
COVID-19, CDC/Hannah A Bullock; Azaibi Tamin

Today the Court issued a standing order formally cancelling the remaining jury trials scheduled until April 5, 2021. As we noted in our last update, the District of Delaware had already canceled all jury trials through the end of February.

Today's order leaves open the possibility of a jury trial under some circumstances:

discretion . . . remains with each presiding judge to order a jury trial in the event of an emergency or other truly urgent situation . . . .

It's hard to envision, however, what circumstances might lead to an emergency jury trial.

Of course, as the order notes, all other proceedings, including bench trials, have been proceeding smoothly …

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Relief from a Protective Order: How to Do It and How NOT to Do It

Andrew E. Russell, Feb. 5, 2021
Sealing Protective Order

Shield of Sir John Smythe (1534–1607)
Shield of Sir John Smythe (1534–1607), The Met

This week judges in the District of Delaware issued two orders regarding discovery disputes seeking relief from protective orders in patent actions. One granted relief, and one denied it. The contrast between the two is a great illustration of how you should and shouldn't argue for relief from a protective order.

How Not to Do It

In the first action, plaintiff Wildcat sought permission to disclose defendant's materials from the district court in a co-pending IPR to support its secondary considerations of non-obviousness. The protective order specifically allowed this:

All Protected Material shall be used solely for the above-captioned cases or any related appellate proceeding and/or proceedings before the United States …
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A Silent Change to to Chief Judge Stark's Markman Procedures

Nathan R. Hoeschen, Feb. 4, 2021
Markman Briefing Scheduling Orders

Wilmington, <a href='#' class='abbreviation' data-bs-toggle='tooltip' data-placement='top' title='Delaware'>DE</a>
Wilmington, DE Andrew Russell, CC BY 2.0

Markman briefing is often especially dense and time-consuming to absorb, and so traditionally each of the judges has had their own special procedures for Markman briefing set forth in their respective form scheduling orders.

With the additions of Judge Connolly and Noreika to the Delaware bench, however, a consensus formed around Judge Andrews' procedures—with four rounds of briefs that are served but not filed and then incorporated into a joint brief for the Court's review. Judge Stark is now the lone outcast, with his preference for 2 rounds of simultaneous briefing filed with the Court, a procedure that has been enshrined …

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A Preliminary Injunction Is Never a Shure Thing

David M. Fry, Feb. 3, 2021
Preliminary Injunction Legal Writing

Just a regular microphone
Just a regular microphone Santtu Perkiö, Unsplash

In a design patent dispute between Shure and ClearOne over microphone arrays, Magistrate Judge Burke recently issued an R&R recommending denial of a preliminary injunction.

The denial itself isn't surprising—in D. Del., these motions are denied far more often than not. But the R&R sheds some helpful light on how you can make your motions stronger.

First, make sure your theme matches your facts. Although the plaintiffs claimed that the defendant's sales were "surging," Judge Burke found the opposite. The exact sales numbers are redacted, but they were enough for Judge Burke to conclude that "as of July 2020, it is Shure’s sales that were surging; ClearOne’s were not." You can't …

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Two Years In, Section 101 Days Continue

Jeff Castellano, Feb. 2, 2021
Section 101

Nearly two years after the first "Section 101 Day" was held before Judge Stark and Judge Burke, Judges in this District continue to hold multi-motion, multi-case, all-day hearings on patent eligibility under 35 U.S.C. § 101.

When Judge Stark launched the hearings in early 2019, he expressed hope that they would make resolving the unending crush of Section 101 motions faster and more efficient. The hope for efficiency seems to have been borne out.

Judge Stark noted in a December 2020 order (see below) that "the Court continues to find that its experimental procedure of addressing multiple Section 101 motions from separate cases in one hearing is an efficient use of judicial resources and a beneficial tool for resolving …

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