A Blog About Intellectual Property Litigation and the District of Delaware


Entries for date: 2023

Don't Waive Your Daubert Motion by Waiting Until the Motion In Limine Stage

Andrew E. Russell, Jan. 30, 2023
FRCP 702 Motion to Strike

Stealth Bomber
Matt Artz, Unsplash

We've talked before about MILs that are really stealth summary judgment motions, but now let's talk about MILs that are stealth Daubert motions and stealth motions to strike!

On Friday, Judge Burke denied a motion in limine to preclude the testimony, holding that it was really a Daubert motion, and the party had waived it by failing to present it by the deadline for Daubert motions:

ORAL ORDER: The Court . . . hereby DENIES [Defendants' Motion in Limine No. 1] for the following reasons: (1) [T]he Scheduling Order in this case provided that "[n]o Daubert motions or motions to strike expert testimony shall be filed unless discussed with the [C]ourt at [the status conference …
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Objection to Dismissal Without Prejudice Gets a Different Standard of Review (Will This Be Our Least-Viewed Post Ever?)

Andrew E. Russell, Jan. 27, 2023
FRCP 72 Standard of Review

Newspaper
AI-Generated, displayed with permission

Ok, ok, I know. No one cares about standards of review. I know. But this is interesting!

Today Judge Andrews ruled on objections to a R&R recommending that the Court deny a motion to dismiss a breach-of-contract claim, and grant a motion to dismiss a trade secret claim, without prejudice.

So far, nothing out of the ordinary. But the interesting part is the standards of review applied.

In reviewing the magistrate judge's recommendation to deny the motion to dismiss on the breach of contract claim, the Court applied the ordinary de novo review standard for dispositive matters under FRCP 72(b).

The defendant, however, also objected to the magistrate judge's decision to dismiss the trade secret claim …

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Signed, Sealed, Refused, It's Fine!

Nathan R. Hoeschen, Jan. 26, 2023
Hague Service

Canada is a hard land. The weather is brutal. The moose, especially fierce. This isn't even touching on the whole hockey thing.

But the harshest part—worse than the indefatigable Mounties or the endless karaoke versions of You Oughta Know—is service.

Serving a Canadian is a real pain in the poutine.

AI-Generated, displayed with permission

Or so I thought.

Those with the misfortune of having to serve a foreign defendant will no doubt be aware of Rule Rule 4(f)(2)(C)(ii) which provides that a foreign individual may be served by "using any form of mail that the clerk addresses and sends to the individual and that requires a signed receipt." This rule applies to foreign corporations by way of Rule 4(h).

The issue I had always seen with service in this manner is that it's trivially easy for the defendant to simply ignore the registered mail. No signature, no return receipt, no service. It seems I was wrong about this.

The patentee in MG FreeSites Ltd. v. Scorpcast, LLC d/b/a HaulStars, C.A. No. 20-1012-MFK -- the "Haulstars"—indisputably had the clerk send the summonses to the foreign defendants (at this point I must admit that most of the defendants were actually Cypriot, but I know more about Canada so that's what I went with) via the ...

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Court Finds That "Javo" and "Javy" Names Are Close Enough to Survive a Trademark-Action Motion to Dismiss Without Further Analysis (Also: Shotgun Pleadings!)

Andrew E. Russell, Jan. 25, 2023
Likelihood of Confusion Trademark Litigation

Judge Andrews issued an opinion today addressing the a motion to dismiss a trademark claim. As the Court explained, to make out a trademark claim, a plaintiff must show a likelihood of confusion. To assess a likelihood of confusion, the Court applies six-factors known as the Lapp factors.

The Court found, though, that when dealing with names as similar as "Javo" and "Javy," the Court can find the allegation of a likelihood of confusion plausible without having to resort to the full test:

I find Plaintiffs allegations of likelihood of confusion to be plausible. Javo and Javy, both made-up words (which might be suggestive of java, a term often used to refer to coffee), could easily be confused. . . . Both sides are in the coffee business. There are additional pleadings that are harder to evaluate at this stage of the case. I do not think assessing the likelihood of confusion from a full-blown Lapp factors analysis is appropriate. Plaintiff does not have to prove its case in its complaint. "[T]he existence of consumer confusion is a fact-intensive analysis that does not lend itself to a motion to dismiss." Applied Underwriters, Inc. v. Lichtenegger, 913 F.3d 884, 897 (9th Cir. 2019) (citation omitted). I agree. The motion to dismiss for failure to plausibly allege likelihood of confusion is denied.

Good to know!

That smoke is from the double-barrelled patent action/§ 1983 claim she just filed
That smoke is from the double-barrelled patent action/§ 1983 claim she just filed William Isted, Unsplash

The opinion also touched on a term you don't hear very often in the patent world: a "shotgun pleading."

Looking at the cases the Court cites—and with help from the internet—a shotgun pleading seems to be one that recites many (possibly jumbled) facts and vague claims in the hope that something sticks:

[A] shotgun complaint shifts onto the defendant and the court the burden of identifying the plaintiff's genuine claims and determining which of those claims might have legal support.

Adger v. Carney, C.A. No. 18-2048-LPS, 2020 U.S. Dist. LEXIS 52533, at *17 (D. Del. Mar. 26, 2020).

Although the narrative text is chronologically organized, it does not set out separate claims but rather ...
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"Something More Akin to a Traffic Violation Than a Felony"

Nathan R. Hoeschen, Jan. 24, 2023
Concise Statement of Facts Summary Judgment

We've talked quite a bit on the blog about navigating the concise statement of facts in summary judgment briefing. Judges Connolly, Noreika, Williams, Burke, and Hall all require one, and it's a common—yet severe!—stumbling block in the district which has hobbled many a fine brief.

Mehmet Turgut Kirkgoz, Unsplash

Indeed, we talk about it so much that you could (almost) be forgiven for thinking that all of our judges require such a statement with their summary judgment briefing.

Judge Andrews, however, has never adopted the practice and actually does not allow parties to submit separate statements of fact (or at least, not ones that otherwise expand the page limits). He made this point quite clearly in an order last week responding to a motion to strike such a statement:

Defendant requests that I strike Plaintiffs rogue statement of uncontested facts, which Plaintiff opposes. (D.I. 197 , 198 ). I expect counsel to know my practices, whether written or unwritten. My practice for summary judgment motions does not permit what Plaintiff did. There is nothing in the scheduling order of this case or the later form order on the Courts website that would serve as encouragement for Plaintiff to do what it did. Neither, however, is there anything expressly prohibiting what Plaintiff did. Plaintiffs statement of facts, which has 12 pages of text, is (by eyeball) about 8 pages of facts that are scattered throughout its opening brief with about 4 pages of citations in support, which are omitted from the opening brief. Thus, Plaintiff has gained a 4-page advantage by committing something more akin to a traffic violation than a felony. I think the proportionate response is ...
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Sword-and-Shield Privilege Argument Succeeds Against Company's "Folklore" of an Implied License

Andrew E. Russell, Jan. 23, 2023
Hearsay Waiver

"Gather 'round, fellow developers, while I tell you the age-old tale of how we we have an implied license to Sprint's patents." AI-Generated, displayed with permission

Here's one I haven't seen before. In Sprint Communications Company L.P. v. WideOpenWest, Inc., C.A. No. 18-361-RGA (D. Del.), the defendant apparently sought to admit company "folklore" in support of its implied license defense.

The Court found that this "folklore" was relevant to the implied license defense:

While arguing for its second motion in limine (D.I. 433), Plaintiff Sprint raised the issue of certain privileged communications. . . . Plaintiffs second motion in limine sought to exclude testimony about company "folklore" regarding a right to practice Sprint's patents. Defendants plan to assert the affirmative defense of implied license, supported by this "folklore" testimony from ...
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No, You Can't Add a Copying Defense to Obviousness Two Weeks Before Trial (And That Is a Good Thing)

Andrew E. Russell, Jan. 20, 2023
Prejudice Obviousness

"I knew we forgot something..." AI-Generated, displayed with permission

Yesterday Judge Williams issued an oral order in Board of Regents, The University of Texas System v. Boston Scientific Corporation, C.A. No. 18-392-GBW (D. Del.) addressing a dispute about whether plaintiffs could offer evidence of copying or other secondary considerations after they failed to disclose those argument until just before trial.

In a lengthy oral order, Judge Williams held that they had waited too long and are now precluded from offering evidence of copying or certain other secondary considerations.

According to the Court, plaintiff had failed to disclose its secondary considerations arguments despite numerous opportunities:

ORAL ORDER: . . . Plaintiff had several prior opportunities to advise [defendant] …
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"With Its First Appearance, Pleading, Petition, Motion, Response, or Other Request"

Nathan R. Hoeschen, Jan. 19, 2023
Disclosure Statement

One of the phrases you least want to see on your docket is "deficiency notice." In the scale of bad docket entries it sits somewhere between "untimely" and "consumed by fire."

Worst of all, consumed by untimely fire
AI-Generated, displayed with permission

But alas, these notices come regardless, and in fact the last few weeks have brought quite a few that I hadn't seen before in Delaware. Example below:

DEFICIENCY NOTICE issued by the Court to defendants Alembic Pharmaceuticals Limited, Alembic Global Holding SA, an Alembic Pharmaceuticals, Inc defendant Nanjing Noratech Pharmaceutical Co., Limited: Pursuant to Fed. R. Civ. P. 7.1 (b)(1), A party must: (1) file the disclosure statement with its first appearance, pleading, petition, motion, response, or other request addressed to the court. Counsel for the defendant is requested to supplement the docket with an appropriate Rule 7.1 Disclosure Statement.

Novartis Pharms. Corp. v. Alembic Pharms. Ltd., C.A. No. 22-1395-RGA (D. Del. Jan 18, 2023).

As noted in the docket entry, Rule 7.1 requires parties to file a corporate disclosure statement with their "first appearance, pleading, petition, motion, response, or other request addressed to the court." This is easy enough to remember for plaintiffs, who usually ...

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Court Gives Parties in 11 Patent Cases the Choice to Consent to Magistrate Judge Burke, or Get a Random Visiting Judge

Andrew E. Russell, Jan. 18, 2023
Visiting Judges Congestion

Roll the Dice
Leon-Pascal Janjic, Unsplash

Since 2021, Judge Connolly has occasionally issued orders asking parties to either consent to a magistrate judge or have their case re-assigned to a visiting judge. The parties in three out of five of that first round of cases consented, and we've seen several rounds of these orders since then.

The Court also offered parties a similar choice in the wake of the departure of Judge Stark, before Judge Williams was confirmed. I haven't seen hard numbers on this, but in May of last year we estimated that around 20% of those cases consented rather than waiting for the new district judge and risking re-assignment to a visiting judge.

These consent-or-visiting-judge referrals have continued through Judge …

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Confirmed: Judge Connolly Does Not Speak Italian

Nathan R. Hoeschen, Jan. 17, 2023
Translation

Prego!
Prego! Krista Stucchio, Unsplash

An interesting note on the importance of translation -- and accurate translation -- from Judge Connolly last week in Doda v. Waste Management, Inc., C.A. No. 17-604-CFC (D. Del. Jan 13, 2022).

The plaintiffs were an Italian engineer and his companies who were doing business with an American firm pursuant to an NDA. The NDA required the parties to mark any confidential information "'Confidential,' 'Proprietary,' or [with] some similar designation." Plaintiffs alleged that defendant breached the agreement by disclosing such confidential information to the patent office, which later published it.

The issue? The "designation" was only in Italian.

In their posttrial Proposed Findings of Fact, Plaintiffs state that this paragraph [below a signature block …
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