A Blog About Intellectual Property Litigation and the District of Delaware


Entries for date: June 2022

Former D. Del. Chief Judge Stark Wrote a Federal Circuit Opinion Last Week—Then Issued Eleven District Court Opinions This Week

Andrew E. Russell, June 15, 2022
Fed. Cir. Congestion

On Friday, former District of Delaware Chief Judge Stark authored what I believe is his first Federal Circuit opinion as a sitting Federal Circuit judge: In re A. Zeta S.R.L., No. 2022-1178, 2022 U.S. App. LEXIS 15992, at *1 (Fed. Cir. June 10, 2022) (affirming a PTAB trademark decision).

Note—before you e-mail to say I'm wrong!—Judge Stark has sat by designation at the Federal Circuit many times before, and has authored at least one Federal Circuit opinion as a district judge. See, e.g., Mortg. Grader, Inc. v. First Choice Loan Servs., 811 F.3d 1314 (Fed. Cir. 2016). But I think this is his first written opinion since his nomination.

Interestingly, ever since moving to the Federal Circuit, …

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Delaware's Default Standard for Electronic Discovery Can Block Discovery re: Litigation Hold Notices & Preservation

Andrew E. Russell, June 14, 2022
Default Standard Motion to Compel

People still use paper documents?!?
People still use paper documents?!? Wesley Tingey, Unsplash

Magistrate Judge Fallon addressed a discovery dispute last week, and denied a motion to compel a response to interrogatories regarding efforts to preserve documents in anticipation of litigation:

ORAL ORDER: Having reviewed the parties' discovery dispute letter submissions . . . , IT IS HEREBY ORDERED that: . . . (3) Defendant's request to compel Plaintiff to supplement its responses to Interrogatory Nos. 16-17 and Request for Production Nos. 104-05 is DENIED. Discovery regarding efforts undertaken by Plaintiff to preserve documents in anticipation of litigation is barred under the Court's Default Standard for Discovery of ESI and Fed. R. Civ. P. 26(b)(3)(A) and (B), particularly in the absence of a credible …
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Can a "Patent Law Expert" Testify at Trial? Sometimes.

Andrew E. Russell, June 13, 2022
Expert Witness Exclusion

The Federal Judicial Center patent video. I find it exciting to watch, for a moment, because it reminds me the start of a jury trial...
The Federal Judicial Center patent video. I find it exciting to watch, for a moment, because it reminds me the start of a jury trial... Federal Judicial Center

Every once in a while, parties will offer a "patent law expert" with opinions about patent office proceedings, such as patent prosecution. Often, smart opposing counsel will move to exclude that testimony, and it's not unusual for the Court to grant those motions.

A decision last week reminded of this issue. Late last week, Judge Burke granted a motion to preclude some expert testimony about patent prosecution, and excluded expert testimony regarding the patent examiner and plaintiffs' state of mind:

ORAL ORDER: The Court, having reviewed the portion of Plaintiffs' Daubert motion …
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Judge Fallon Stays Action Involving IPR on Just One of Two Asserted Patents

Andrew E. Russell, June 10, 2022
Stay Pending IPR IPR

There go the patentee's chances to oppose a stay....
Saad Chaudhry, Unsplash

In an oral order today, Judge Fallon stayed an action where there was an IPR on just one of two asserted patents:

ORAL ORDER: Having reviewed Defendant's letter motion to stay the case pending issuance of the PTAB's final written decision in the IPR proceedings . . . IT IS HEREBY ORDERED that: (1) Defendant's motion to stay is GRANTED because Defendant has satisfied the three stay factors. See IOENGINE, LLC v. PayPal Holdings, Inc., C.A. No. 18-452-WCB et al., 2019 WL 3943058, at *2 (D. Del. Aug. 21, 2019). First, the stay will simplify the issues for trial because the PTAB's final written decision is likely to resolve prior art-based invalidity …
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The Emergency Option

Nathan R. Hoeschen, June 9, 2022
Vacant Judgship

jason-leung-N2JUQtT5i40-unsplash.jpg
Jason Leung, Unsplash

So your case has been assigned to the VAC docket.

It's Okay

It happens fairly often in this grey world we all live in following Judge Stark's departure. Per the standing order creating the vacant judgeship, you can consent to a magistrate judge, in which case things should proceed more or less as they would under one of our Article III judges.

What's that? You're one of the surprising number of cases where the parties cannot agree on magistrate consent?

You Walk A Particularly Dark Road

Per that same standing order, you a will be assigned a visiting judge. Unfortunately, that assignment can occur any time before trial, and a cursory review of cases …

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Judge Fallon Grants Motion to Preclude Indefiniteness Arguments from Upcoming Markman Hearing

Andrew E. Russell, June 8, 2022
Markman Briefing Markman

It's summer! The perfect time for Markman briefing, obviously
It's summer! The perfect time for Markman briefing, obviously Aleksandr Eremin, Unsplash

As we've mentioned, with the exception of Judge Connolly, most current D. Del. district judges permit argument regarding indefiniteness during Markman.

But what about the magistrate judges? Magistrate Judge Fallon this week granted a motion to preclude oral argument at Markman regarding indefiniteness, noting that there is no requirement for the Court to address indefiniteness during claim construction:

ORAL ORDER re D.I. 54 Motion to Amend/Correct Scheduling Order: Having reviewed Plaintiff's partially opposed motion to amend the provisions of the scheduling order governing briefing on claim construction (D.I. 54), IT IS HEREBY ORDERED that Plaintiff's motion is GRANTED-IN-PART. Plaintiff's motion is GRANTED to the extent …
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How Long Does a Markman (Claim Construction) Hearing Usually Go in the District of Delaware?

Andrew E. Russell, June 7, 2022
Markman Hearing Markman

Analog Clock
None, Ocean Ng, Unsplash

A recurring question here in D. Del. is "how long should we request for the Markman hearing?" (when such a request is required under the scheduling order).

Parties often request around 2-3 hours, depending on the number of terms. But I was curious how much time judges actually order for Markman, so we collected some statistics. Here is how many minutes each judge has permitted for Markman oral argument, on average, over the last year:

  • Judge Stark: 91 minutes on average (7 hearings)
  • Judge Andrews: 92 minutes on average (9 hearings
  • Judge Noreika: 102 minutes on average (18 hearings)
  • Magistrate Judge Burke: 170 minutes (9 hearings)
  • Magistrate Judge Hall …
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Recent Denials of Early-Case Extensions in D. Del.

Andrew E. Russell, June 6, 2022
Stipulation FRCP 16

Do Not Enter Wrong Way
Tim Mossholder, Unsplash

Judge Andrews on Friday denied a fairly typical stipulation extending time for the briefing on a motion to dismiss:

ORAL ORDER: There is a pending motion of a routine nature. Each side is represented by multiple attorneys, at least some of whom on both sides are known to me to be more than competent. Summer schedules and other professional obligations are not a reason to add more than two months to the briefing schedule for this motion. The stipulation (D.I. 15 ) is DENIED. Ordered by Judge Richard G. Andrews on 6/3/2022. (nms) (Entered: 06/03/2022)

Robocast, Inc. v. Netflix, Inc., C.A. No. 22-305-RGA, D.I. 16 (D. Del. June 3, 2022).

I've noticed two similar orders lately as well, denying early-case extensions or stays and citing Federal Rule of Civil Procedure 16(b)(2), both from Chief Magistrate Judge Thynge. First, with regard to a stipulation to extend time to submit a scheduling order:

ORAL ORDER re 18 STIPULATION TO EXTEND TIME to submit a scheduling order to 6/1/2022 filed by IP Power Holdings Limited: . . . By the time of the Rule 16 conference scheduled for 6/6/2022, this matter will have been pending for ...
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Who Have You Been Using to Mediate Patent Cases in the District of Delaware? Let Us Know!

Andrew E. Russell, June 3, 2022
Mediation IPDE

Who Are You
Brett Jordan, Unsplash

As I mentioned in our other post today, the District Court's mediation program has filled the need for local patent mediators until recently. But with the suspension of that program, it occurs to me that it might be helpful for us all to have a list of currently-practicing patent mediators in the District of Delaware who may be helpful when some of the usual suspects are conflicted or unavailable.

So if you have patent, IP, or complex commercial cases in the District of Delaware and feel comfortable sharing who you've been using as mediators (anonymously or otherwise), or if you are a practiced mediator yourself and want to get your name out there, send me an e-mail.

If enough people share names, I'll do a post with those names and some of the others we've used or considered.

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With Mediation Program Inactive, Court Forces Parties in Patent Action to Private Mediation Days Before Trial

Andrew E. Russell, June 3, 2022
Mediation Congestion

Peace Talks
Markus Winkler, Unsplash

This week, after a series of sealed letters from the parties in Evertz Microsystems Ltd. v. Lawo Inc., C.A. No. 19-302-MN-JLH (D. Del.) apparently indicating settlement is imminent, Judge Noreika issued the following order:

ORAL ORDER . . . Having reviewed the parties' letter stating that they have failed to settle the case and the parties' proposal that they engage in mediation with Judge Andrea L. Rocanelli "in the event settlement cannot be reached by close of business tomorrow," IT IS HEREBY ORDERED that the parties' proposal is REJECTED. For weeks, the parties have represented to the Court that settlement is imminent. Trial is set to commence on June 6, 2022 …
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