We've talked before about how asserting invalidity based on system prior art (as opposed to written publications, for example) can be tricky, because accused infringers can face all kinds of sometimes-unexpected difficulties with proving up the prior art.
Parties often get into sticky evidentiary questions about exactly what kinds of evidence are sufficient to show that the relevant prior art was on sale before the priority date, and how the prior art functioned—and whether that all of that evidence has authenticity or hearsay issues.
On Friday, Magistrate Judge Burke issued a long oral report and recommendation to grant summary judgment of no invalidity based on a system prior art reference. In the case, the defendants relied …
Last month, we wrote about Chief Judge Connolly's new standing order for diversity cases, requiring plaintiffs to disclose the citizenship of LLCs on both sides so that the Court can determine whether it has diversity jurisdiction.
Today, Judge Connolly denied a motion to alter or amend a judgment in a diversity action where he had issued a similar order and dismissed the case based on the Plaintiff's own "on information and belief" representation.
In Harbor Associates Limited Partnership v. Micron Devices, LLC, C.A. No. 20-1706-CFC (D. Del.), the Court sua sponte issued an order asking for plaintiffs to identify their members and those of one of the defendants, to ensure that the Court had diversity jurisdiction:
To ensure that the Court has subject matter jurisdiction over this matter, Plaintiffs . . . shall within one week identify the name and citizenship of every member of [a plaintiff LLC], and [defendant] Micron Devices, LLC. If any of [the two LLCs'] members are noncorporate entities, Plaintiffs shall also identity the name and citizenship of every member of those entities, proceeding up the chain of ownership until Plaintiffs have identified the name and citizenship of every individual and corporation with a direct or indirect interest in [the LLCs].
D.I. 24. In response, the plaintiffs identified themselves as Florida entities, D.I. 25, and stated on information and believe that one member of one defendant LLC was also a Florida citizen:
Upon information and belief, Laura Perryman is a member of [defendant] Micron Devices, LLC. . . . Upon information and belief, Ms. Perryman is a citizen of Florida.
D.I. 26. In response, the Court dismissed the case, holding that it lacked jurisdiction:
Consistent with their complaint, Plaintiffs identified Florida as the citizenship of the members of the plaintiff entities. D.I. 25. They also identified Laura Perryman as a member of Defendant Micron Devices, LLC and they say that she too is a citizen of Florida. D.I. 26. This Court therefore lacks diversity jurisdiction over this action.
D.I. 26, 27.
Can We Just . . . Click Undo on That?
Apparently not realizing what was about to happen when they made those statements to the Court, plaintiffs quickly moved for relief ...
Judge Wolson of the Eastern District of Pennsylvania has taken a number of patent cases as a visiting judge in the District of Delaware over the past few years, including at least one that has gone to trial recently.
One aspect of practice before Judge Wolson that may be unexpected for regular Delaware practitioners is how he handles sealing of documents.
Sealing Materials Is Typically Easy in the District of Delaware (Maybe Too Easy)
Normally, in Delaware, parties are used to just filing things under seal, and then filing a redacted version seven days later. No motion to seal is generally required and, depending on the judge, there is little risk that a redacted version will …
More and More, case narrowing has become a fact of life in Delaware. What was once an ad-hoc process recorded in a handful of unpublished orders has become more formal, and the various by-laws and codicils that govern it are congealing into something knowable, citable, and inevitable.
But we're not there yet, and even I can still be surprised by a novel ruling on the intricacies of the process. Such was the case in Tonal Systems, Inc. v. iFIT Inc., C.A. No. 20-1197-VAC-CJB, D.I. 100 (D. Del. May 16, 2022). Following an earlier dispute on the schedule for narrowing, The parties there were set to narrow of both claims and prior art, following the disclosure of initial infringement and invalidity contentions. So far, normal.
The wrinkle was that the narrowing schedule left more than 30 days between the service of Defendant's initial invalidity contentions and the deadline by which they had to narrow their prior art. They thus took the clever step of serving a rog requesting plaintiffs validity contentions -- a response to which would have been due before Defendant had to pick their prior art arguments. Plaintiffs objected, stating "[t]he Court ordered [Defendant] to narrow its Section 102/103 invalidity case to no more than 50 prior art references
Delaware's Default Standard requires defendants to produce "core technical documents" on the accused products, even absent discovery requests from the plaintiff.
These core technical documents "includ[e] but [are] not limited to operation manuals, product literature, schematics, and specifications." Often parties interpret this as a relatively light production of just the core non-public material that a plaintiff needs to make out its infringement contentions.
Sometimes, however, plaintiffs will push back and demand production of source code, saying that a defendant must produce source code as part of its core technical documents.
This is a recurring issue, so I thought it was worth noting that, in Judge Fallon's discovery dispute order that we discussed earlier, she also …
One of the first questions that a patent plaintiff faces in bringing suit is "what do we have to include in the complaint?"
It's common in the District of Delaware for a patent plaintiff to list only a small number of asserted claims from each asserted patent, against a small number of accused products—often just one claim against one product.
Of course, listing more asserted claims may increase the chances that a court finds that the plaintiff stated a plausible claim of infringement in the event of a motion to dismiss. But many plaintiffs are fine with that risk, knowing that they can amend to avoid any motion to dismiss (usually) .
The Court normally permits parties to later add or remove asserted claims or accused products as ...
Yesterday, the Court denied three Daubert motions in a short pretrial order in the lead up to a bench trial in a patent action, citing the Third Circuit's conclusion that Daubert motions in a bench trial may waste judicial time, and also noting that the issues are better addressed the judge in context at trial:
WHEREAS, “[w]hen the role of the gatekeeper to admit or exclude evidence (the judge) and the role of the factfinder to assess and weigh the evidence . . . (the jury) are one and the same, the judge who becomes the factfinder as well as the gatekeeper . . . should not be required to waste judicial time.” In re Unisys, 173 F.3d 145, 155–58 (3d Cir. 1999).
WHEREAS, having reviewed the motions to preclude, the Court has determined that it can better address the issues in context at trial when the Court can hear testimony and better understand the bases for the experts’ opinions;
. . .
THEREFORE, IT IS HEREBY ORDERED that
1) the motions to preclude (D.I. 222, 223, 224) are DENIED with leave to renew during trial to the extent appropriate. . . .
The Court also suggested that the parties could present their evidence at trial and then, potentially, ...
On Friday, Chief Judge Connolly issued an order in the lead-up to an ANDA bench trial compelling the plaintiff to reduce its number of asserted claims by 75% to 4 claims, or face consequences:
ORAL ORDER: WHEREAS, the parties filed the proposed pretrial order (D.I. 225) on May 10, 2022; WHEREAS, the bench trial in this case is 24 days away, and, according to the pretrial order, Plaintiffs are still asserting 15 claims across eight patents . . . ; and WHEREAS, Plaintiffs' assertion of 15 claims across eight patents at this juncture makes clear that Plaintiffs have yet to focus adequately on the relative strength of their various infringement claims, the limited resources of …
We don't see too many DTSA cases here (at least in comparison to patent cases), but this one is interesting.
In Peloton Interactive v. iFIT Inc., C.A. No. 20-1535-RGA (D. Del.), a mechanic at defendant iFIT had a childhood friend who was working as a freelance prop man helping shoot some commercials for iFIT competitor Peloton.
According to the Court, the iFIT mechanic found out about his friend's work and, despite allegedly knowing the scripts for the commercials were under an NDA, convinced his friend the prop man to forward him the scripts, which he did (along with a note "Dont [sic] forward or show my name.").
The iFIT mechanic then forwarded the scripts to the hero of this story, an iFIT Vice President of Product Development, referred to in the opinion as "Mr. Willardson." Mr. Willardson immediately shut down the idea of using the competitor's information and involved in-house counsel:
On October 26, 2020, after returning to the office, Mr. Chambers printed a copy of the Scripts from his email. . . . After reading a portion of the Scripts, Mr. Chambers brought the document to his immediate supervisor, Mr. Willardson, VP of Product Development. . . . Mr. Willardson quickly flipped through the Scripts and told Mr. Chambers not to share the document with anyone. . . . Mr. Willardson then put the Scripts in a sealed envelope and gave the envelope to iFIT's in-house counsel. . . . Mr. Chambers and Mr. Willardson have both testified that they never disseminated the Scripts.
JNOV's (JMOL's after a jury verdict for lawyers of a newer vintage) are always longshots. To prevail on such a motion "a party must show that the jury’s findings, presumed or express, are not supported by substantial evidence or, if they were, that the legal conclusion(s) implied by the jury’s verdict cannot in law be supported by those findings." Pannu v. Iolab Corp., 155 F.3d 1344, 1348 (Fed. Cir. 1998) (cleaned up). It's always noteworthy (or so we bloggers tell ourselves) when one succeeds.
This is especially true in NexStep, Inc. v. Comcast Cable Communications, LLC, C.A. No. 19-1031-RGA, D.I. 371 ( …
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