A Blog About Intellectual Property Litigation and the District of Delaware


Entries for date: 2022

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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Update: After Testimony, Judge Andrews Permits Damages Theory Capturing 100% of Difference in Net Profit

Andrew E. Russell, June 2, 2022
Damages Daubert

Red Phone
Miryam León, Unsplash

We wrote back in February of an uncommon Daubert opinion from Judge Andrews where he asked for a hearing with testimony from the expert, and for an additional round of briefing on Daubert.

Judge Andrews' concerns stemmed from an apparent lack of apportionment in the damages analysis—something that often trips up damages experts:

No one would sell the [accused] product without its numerous necessary parts. But it does not follow that the value of each necessary part is the same as the value of the whole. And yet that is what it appears that Dr. Mangum is doing.

After hearing testimony from the expert, however, Judge Andrews today issued an opinion finding that is not …

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Magistrate Judges in Vacant Judgeship Cases Cannot Resolve Motions to Strike

Andrew E. Russell, June 1, 2022
Motion to Strike Discovery

Magnifying Glass
Agence Olloweb, Unsplash

Since the Court's announcement of the current vacant judgeship program, there have been some lingering questions about what a magistrate judge in a vacant judgeship case can and cannot decide.

We got some insight on that question yesterday in Huber Engineered Woods LLC v. Louisiana-Pacific Corporation, C.A. No. 19-342-VAC-SRF (D. Del.). The referral order in that case is typical of VAC cases—it says that the magistrate judge can resolve only a limited scope of disputes:

this case is referred to Magistrate Judge Sherry R. Fallon solely for the following purposes: (1) to adjudicate discovery (including fact and expert discovery) and protective order disputes; (2) to issue or modify a scheduling order; (3) to …
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Summary Execution

Nathan R. Hoeschen, May 31, 2022
Summary Judgment

This Photo Is Great
This Photo Is Great Artem Kniaz, Unsplash

Continuing our discussion of trends in summary judgment practice from last week, today we will be checking in on a practice Judge Noreika has been using recently to limit summary judgment motions in her cases.

All the way back in January, we noted that Judge Noreika had issued an opinion in Gentex Corp. v. Galvion Ltd., C.A. No. 19-921-MN, D.I. 163 (D. Del. Dec. 16, 2021), eliminating the standard summary judgment procedures in the scheduling order and instead requiring the parties to move for leave before filing any summary judgment or Daubert motion. In the intervening months, this practice has not yet been memorialized in a standing …

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How Do You Drop Claims in a Patent Action, and Are They Withdrawn with Prejudice?

Andrew E. Russell, May 27, 2022
Claim Narrowing Case Narrowing

Drop
Andrew E. Russell, CC BY 2.0

In my experience, parties in patent actions in the District of Delaware (and elsewhere) routinely drop claims in the lead up to trial. "Dropping claims" includes withdrawing asserted claims (e.g. "Claim 1"), whole asserted patents (e.g., "the '123 patent"), infringement contentions (e.g., "direct infringement" or "infringement by product A"), and other claims (including non-patent claims).

Most often, in practice, this is accomplished via an e-mail to the other side or, if the parties want something on the docket, by stipulation. I don't know of a case where the Court here insisted that a plaintiff not drop claims (of course, a defendant may also have counterclaims).

Are the Claims Withdrawn with Prejudice?

But parties rarely …

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Stemming the Remorseless Tide

Nathan R. Hoeschen, May 26, 2022

Ivan Bandura, Unsplash

A bit more than a year ago, Chief Judge Connolly issued his Standing Order for Summary Judgment Practice in Patent Cases Assigned to Judge Connolly (D. Del. Apr. 30, 2021), with the explicit purpose of "deter[ring] parties from filing meritless motions."

Rather than let this anniversary pass totally unmarked, I thought it might be fruitful to examine the effect this procedure has had on the number and, to the extent it can be measured, the quality of the summary judgment motions brought before Chief Judge Connolly. To that end I've gathered the following interesting tidbits—note that this data does not include motions brought in odd procedural postures (e.g., early motions where leave was requested or those specifically invited by the Court), or cases that have not yet been decided:

  • Prior to Standing Order
    • Average # of SJ motions filed - 4.4 (total from both parties)
    • The Most filed in any case - 11
    • Percentage of SJ motions granted - 17% (including those granted only in part)
    • Percentage of cases where at least one SJ Motion was granted - 50%

  • After Standing Order
    • Average # of SJ motions filed - 4.5 (total from both parties)
    • The Most filed in any case - 8
    • Percentage of SJ motions granted ...
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Special Master Williams, Nominated to Replace Judge Stark, Strikes Late Infringement Contentions

Andrew E. Russell, May 25, 2022
DOE Motion to Strike

Special Master Williams quoted Judge Andrews' recent holding that a new <a href='#' class='abbreviation' data-bs-toggle='tooltip' data-placement='top' title='Doctrine of Equivalents'>DOE</a> argument
Special Master Williams quoted Judge Andrews' recent holding that a new DOE argument "creates a new balgame." Caitlin Conner, Unsplash

Yesterday, Special Master Gregory B. Williams, who has been nominated to replace Judge Stark, issued an order granting a motion to strike late Doctrine of Equivalents contentions.

In TQ Delta, LLC v. Comcast Cable Communications LLC, C.A. No. 15-611-RGA, D.I. 455 (D. Del. May 24, 2022), plaintiff served a new DOE theory over two months after final contentions were due, after it found—following non-infringement contentions received from the defendants—that its original DOE theory would fail.

Special Master Williams rejected …

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