Early case: "No, we're not amending, why are you bugging us?" Late case: "Oh no! There was a deadline to amend?"Eric Rothermel, Unsplash
Rule 16 says that a schedule "may be modified only for good cause and with the judge’s consent." This rule comes up any time a party wants to do something after a deadline set in the scheduling order, which is one of the more common litigation issues.
Parties will often, for example, let the deadline to amend the pleadings pass by, only to later realize that they want to assert an inequitable conduct defense (defendants) or wrap in a related entity (plaintiffs).
Good cause requires diligence, and in practice parties often frame the diligence discussion …
In Charles Smith Enterprises, LLC v. Catapult Sports, Inc., C.A. No. 21-1278-CFC (D. Del.), the parties filed a 60-page joint claim construction brief that included disputes on a number of terms where one party or the other proposed "plain and ordinary meaning" or "no construction necessary" while the other side proposed a specific definition for the terms.
By my count, for every single one of the parties' 15 disputed terms, one side or the other proposed "plain and ordinary meaning" or "no construction necessary" with no alternative construction—before Chief Judge Connolly, no less. These counsel clearly don't readthisblog.
In some instances, the parties just briefed the terms in an odd way. …
Judge Fallon issued an order yesterday recognizing the split in the district court on how the judges handle IPR estoppel—specifically the question of whether IPR estoppel may apply to prior art products that are cumulative of patents or publications that could have been raised in the IPR:
ORAL ORDER . . . IT IS ORDERED that Plaintiff's motion to strike Defendant's amended invalidity contentions based on IPR estoppel is DENIED without prejudice. The parties dispute whether IPR estoppel should apply to Defendant's invalidity theories based on prior art systems, products, and/or knowledge. Under 35 U.S.C. § 315(e)(2), Defendant is barred from asserting an invalidity defense based on "any ground that [Defendant] raised or reasonably could …
I put "getty images" into Stability AI, and it spat this image right out, complete with mangled Getty Images watermark.AI Generated
There was a big complaint filed on Friday in the District of Delaware—Getty Images, a the very-well-known provider of stock images, filed suit against Stability AI over its use of Getty Images stock photos to train its image generation algorithm, which it calls Stable Diffusion.
Stable Diffusion is one of the incredible AI-based image generators making news recently (along with others like Dall-E 2 and Midjourney). These AI models can accept a text prompt and generate a corresponding image. For example, prompted with "an elephant in roller skates," Stable Diffusion generated the following:
AI-Generated
So Why Is Getty Coming After Them?
Broadly speaking—and as alleged in Getty Images' complaint—Stability AI created Stable Diffusion by training a machine learning model to generate output by ...
A while back I wrote a post about the relative success rates of 101 motions before the different Delaware Judges. To prove once and for all that I sometimes ramble, that entire post can be distilled to the chart below:
Chief Judge Connolly - 70% of § 101 motions granted
But that was then, dear reader, before we had a new hotshot on the bench who is batting 1.000. If I knew how to use this site better, I would put Judge Williams at the top of this chart in flashing lights with …
On Thursday, Judge Andrews granted a motion for summary judgment of invalidity for claims that failed to include a limitation from the spec.
In MHL Custom, Inc. v. Waydoo USA, Inc., C.A. No. 21-091-RGA (D. Del. Feb. 2, 2023), the patent at issue described a "passively stable hydrofoil." The hydrofoil is a board that a person can ride in the ocean, with a big fin under the water to keep it stable:
The hydrofoil at issue, from U.S. Pat. No. 9,586,659U.S. Pat. No. 9,586,659
As the Court describes, the whole patent is focused on the board's stability feature:
The specification of the '659 Patent only, and repeatedly, describes the …
Typical day in litigationAI-Generated, displayed with permission
We've talked before about a common question in patent cases: whether parties can (or have to) address indefiniteness during the Markman claim construction process. The answer varies greatly by judge.
The Markman process sometimes occurs early in the case, and parties have to make a call fairly early-on about whether they want to address indefiniteness early in the case, or wait until later.
Plaintiffs usually want to defer indefiniteness for later to keep the case going as long as possible. Defendants, on the other hand, can go either way: Often they want to address indefiniteness early to resolve the action, but sometimes they aren't quite ready and prefer to wait as …
Judge Fallon issued an interesting ruling on a discovery dispute this week that I expect to see cited by many an attorney in high dudgeon over the coming months and years.
The issue was straightforward: Plaintiff had served a 30(b)(6) notice requesting a witness on "[t]he structure, function, and operation of the Accused Instrumentalities and the interoperation, integration, and/or interface between and among the Accused Instrumentalities.” The defendant refused, contending the topic was overbroad and unduly burdensome. Plaintiff then moved to compel.
Judge Fallon denied the motion without a hearing, holding:
Topic 1, which seeks testimony on "[t]he structure, function, and operation of the Accused Instrumentalities and the interoperation, integration, and/or interface between and among the …
Un-bifurcated (but probably not worth $42m)AI-Generated, displayed with permission
We wrote in December about how Judge Williams granted defendant's motion to bifurcate the jury trial in Board of Regents, the University of Texas System v. Boston Scientific Corp., C.A. No. 18-392-GBW (D. Del.).
That trial went forward starting last week, and the trial extended into this week. As we mentioned before, Judge Williams split the trial into two phases:
Direct infringement and invalidity
Willful infringement, damages, knowledge, and intent for induced infringement
Near the conclusion of Phase 1, plaintiff moved to "unbifurcat[e]" the trial. According to the transcript:
MR. SHORE [for plaintiff]: Your Honor, we would like for the Court to consider over the weekend, not …
In the before time, when the green grass grew tall even in the wan Wilmington sun, all scheduling orders had two rounds of contentions, one early in the case and another near the close of fact discovery. A bit over two years ago, Judge Connolly shook things up by introducing a new form order in his cases that included only a single round of contentions early in the case and requiring "good cause" to amend.
AI-Generated, displayed with permission
And so, on this slow news day, I decided to take a look back at how often parties manage to show the requisite good cause to amend their contentions in cases assigned to Judge Connolly (many of these are decided in the first instance by a magistrate judge).
The upshot is, that most of these motions seem to succeed. DocketNavigator shows 10 such motions in cases assigned to Judge Connolly (which strikes me as low, but I'm not a soulless trawling algorithm, so what do I know?). Of those 7 have been granted, and only 3 have been denied. Normally I would put in the percentages here, but I trust you all to do the math on this one.
This brings to mind another question, which I shall raise in a further blog post on another slow day, does Judge Connolly receive fewer motions like these than our judges who don't specifically require good cause? I.e., are parties who would otherwise just file late contentions and take their shot under Pennypack factors deciding not to do so because they know they can't show good cause?!
All this and more on next weeks episode of IPDE! (Batman theme plays)
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