Today was the Federal Bar Association's annual luncheon, an annual event where the Chief Judges give updates on the status of Delaware's District and Bankruptcy courts.
This year's event was the first in-person meeting since the start of the COVID lockdowns. It was great to see everyone again in person!
Attendance was relatively low. Some speculated that this may be due to expiring FBA memberships. My theory is that there may have been an issue with the invitation e-mail (I never received it myself, and I'm a current FBA member).
In any case, I wanted to post some highlights and interesting facts from the speakers today, as we did for the virtual event last year:
IPR estoppel can be kind of terrifying as an accused infringer in a patent action. The statute says that an accused infringer may not assert invalidity on a ground that it could have raised in the IPR; but you can't raise product prior art, so product prior art should be safe, right?
Nope. Courts have sometimes held that product prior art may still be estopped, if there is patent or written prior art that is sufficiently similar. See, e.g., Wasica Fin. GmbH v. Schrader Int’l, 432 F. Supp. 3d 448, 453 (D. Del. 2020) (holding defendant estopped from asserting product art where “all the relevant features” of the art were in a printed publication that could have been raised in an IPR).
As Judge Stark notes in Wasica, courts have gone both ways on this, with some estopping arguments based on product art where similar written or patent art could have been raised in an IPR, and others permitting those arguments.
On Friday, Judge Noreika chose a side in this split: no estoppel for prior art products ...
In patent infringement cases, plaintiffs' claim construction strategy sometimes seems to boil down to "Plain meaning! Construe it later! Everything is in!", while defendants often go for "No plain meaning! Construe it now! Our thing is out!".
Note that, for defendants, it's not necessarily that everything is out of the claim. It's often that there is one specific thing from the specification that is required, and that just happens to be the one thing the defendant's product doesn't have or do.
This strategy doesn't have a great success rate for defendants, but often I feel like the attitude is that "well it's worth a shot." I'm not sure that's always true, because a really bad argument …
Judge Burke had an interesting opinion on Tuesday striking final contentions served after the deadline in the scheduling order.
It's become increasingly common in the district for late-served final contentions to be analyzed under the less forgiving good cause standard of Rule 16 without reference to thePennypack Factors. Even so, it was a bit surprising to see the Court strike contentions which were filed just a month after the deadline, which the Court addressed directly in the Order:
This result might seem harsh in light of the facts here, since Plaintiff submitted the belated contentions at issue only about a month after the filing deadline called for by the Scheduling Order. …
Judge Bryson resolved a large pile of motions in limine this month in IOEngine, LLC v. Paypal Holdings, Inc., C.A. No. 18-452-WCB (D. Del. June 15, 2022). What's a large pile, you say? About nineteen motions in limine total if I'm counting correctly.
The opinion hits a number of the old stand-by MILs, including that the accused infringer cannot call the patentee names like "patent troll" (we've discussed that before), that PTAB and IPR proceedings do not come in and the parties cannot talk about inequitable conduct (common results), and that general evidence about the parties' size/net worth is precluded (also not uncommon).
There were a number of interesting motions, though, …
When expert reports go back and forth in a patent case, it's not uncommon to see complaints from the patentee's expert along the lines of "I understand that the opposing party did not produce information regarding x, so I will instead base my opinions y."
In other words, the expert wants to keep the door open to explain to the jury that he or she would have done a particular analysis if only the other side had given them the information they needed. But, obviously, the other side may object to that testimony.
Judge Connolly addressed a situation like yesterday, and held that the expert cannot just testify to the jury about the other sides alleged …
An embodiment of the claimed "weight-shift controlled personal hydrofoil watercraft"U.S. Patent No. 9,359,044
We don't usually write about claim construction opinions, because they tend to be fact-specific and tough to generalize to other cases.
But there were a few interesting points in a claim construction opinion issued by Judge Andrews on Friday, and I thought it was worth outlining them here:
While the judges are typically somewhat adverse to extrinsic evidence, Judge Andrews askedthe parties to submit letters outlining "textbook[]" style definitions of the a term, "stability," and said that he found the letters helpful. He adopted the construction that "capture[d] the concept of static stability" as set forth in the textbook definitions.
It's easy to fall into the trap of separating rules into "technical" and "substantive" and on that basis to choose which must be followed and which can be safely ignored. Judge Noreika neatly illustrated how foolhardy this practice can be last week, when she issued a brief, two-sentence order denying a summary judgment motion:
WHEREAS, pursuant to the 47 Scheduling Order, a separate concise statement of facts shall be filed with any summary judgment motion; and WHEREAS, Plaintiff did not file such statement with its 194 Motion for Summary Judgment. THEREFORE, IT IS HEREBY ORDERED that the motion is DENIED for failure to comply with this Court's procedures set forth in the Scheduling Order
Just a heads up, since this has to be one of the more common things that counsel do in cases—this week, Judge Connolly denied a stipulation extending the answer deadline as untimely and lacking a reason:
ORAL ORDER: The parties' stipulation (D.I. 16) being untimely and offering no justification for an extension, it is HEREBY DENIED. Defendant has until June 23, 2022 to answer, move, or otherwise respond to the complaint. ORDERED by Judge Colm F. Connolly on 6/21/22. (ntl) (Entered: 06/21/2022)
Wikeshire IP LLC v. TransCore, LP, C.A. No. 22-445-VAC (D. Del.).
It's not clear from the docket why it was untimely. It looks like the answer deadline was originally 4/28/2022, then it was extended by stip to 5/28, then 6/14. Then, on 6/14 (the due date), the parties filed another stipulation extending the answer deadline to 6/28.
So it looks like the Court rejected a stipulation filed on 6/14 to extend a 6/14 due date. It may be that the parties filed after the 6pm filing deadline. Or, it may be that the Court is taking the view that the stipulation must be filed early enough for the Court to "so order" it prior to the deadline—but I haven't seen that in other cases.
Either way, it's probably safest to list a justification for your stip extending the answer deadline, and to file early going forward! Of course, this can be tricky in high-volume NPE cases, where plaintiff's counsel may be unresponsive until the parties are right up against a deadline.
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