A Blog About Intellectual Property Litigation and the District of Delaware


Entries for date: 2023

Be Careful with That Joint Statement of Uncontested Facts. You Might Not Be Able to Walk It Back

Andrew E. Russell, Jan. 16, 2023
Trial Trial Practice

Artist's rendition of a pretrial order printed without tabs
Artist's rendition of a pretrial order printed without tabs JJ Ying, Unsplash

Oof, this one may have been painful. Last month in Victaulic Company v. ASC Engineered Solutions, LLC, C.A. No. 20-887-GBW-JLH (D. Del.), the defendant apparently asserted at least two non-infringement defenses, one based on a "groove" limitation and one based on a "radius" limitation.

The defendant asserted the groove limitation defense in response to a summary judgment motion. Then, the following series of events occurred:

  • December 6, 2022: The Court denies the summary judgment motion against which the defendant asserted the groove limitation defense
  • December 13, 2022: The parties filed their proposed pretrial order. In it, they included a joint statement of uncontested facts. …
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Lawyer Files Letter Asking Court to Rule on Their Motion; Court Immediately Grants Motion; Client Cheers

Andrew E. Russell, Jan. 13, 2023
Motion to Stay Congestion

Danger
Raúl Nájera, Unsplash

The District of Delaware is extremely busy. Sometimes clients and out-of-town counsel are surprised that they probably won't get rulings on their motions in the very-short-term. This often prompts questions like "Can we call the Court and ask them to rule on our motion?"—the answer to which is "no."

But in some instances parties really do need to alert the Court to a situation on the ground in the case that is impacted by a pending motion. The answer then is often to file a letter, which sometimes works.

We saw another successful letter this week. In Bataan Licensing LLC v. DentalEZ, Inc., C.A. No. 22-238-GBW (D. Del.), the defendant …

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A Simple Sale

Nathan R. Hoeschen, Jan. 12, 2023
Inducement Indirect Infringement

AI-Generated, displayed with permission

Interesting opinion from Judge Burke today on indirect infringement allegations, and what constitutes an "active step" to encourage the direct infringement.

The defendants in Midwest Energy Emissions Corp. v. Arthur J. Gallagher & Co., C.A. No. 19-1334-CJB (D. Del. Jan. 12, 2023) (Mem. Order) sold a sort of refined coal that was a necessary agreement in an allegedly infringing process performed by power plants. They moved to dismiss the complaint for indirect infringement, arguing that, while they knew it was likely to be used in an infringing manner, they did not communicate with the end users in any way that actively induced infringement. I.e., they did not take any active steps.

Judge Burke …

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Judge Andrews Offers Guidance for Delaware Counsel—But Can They Do It?

Andrew E. Russell, Jan. 11, 2023
FRCP 15 FRCP 16

This. This is what you need to include with your motion to amend.
This. This is what you need to include with your motion to amend. Andrew E. Russell

Yesterday, Judge Andrews issued an opinion denying a motion to amend a complaint for failure to follow Local Rule 15.1, which requires a party moving to amend to attach the amended pleading and a redline.

This is something parties often mess up, as we've mentioned.

Here, the moving party attached the pleading and redline to a declaration submitted with the reply brief, but the Court found that was insufficient, because it occurred after the answering brief and left the Court without useful briefing on the motion to amend:

Defendants' first argument for denying Plaintiffs' motion was the failure to comply with the Local …
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Basically the Same Thing

Nathan R. Hoeschen, Jan. 10, 2023
Collateral Estoppel Claim Preclusion

I find nothing more pleasing than when the parties dispute the test to be applied. Facts are always messy and disputed, but an argument about the proper test is almost always elegant. Truly it is a beauty fit for a post.

Pictured, refinement
Pictured, refinement AI-Generated, displayed with permission

The particular test at issue in Azurity Pharms., Inc. v. Bionpharma Inc., C.A. No 21-1286-MSG (D. Del. Jan. 6, 2023) (Mem. Op.) whether new patent claims were the “same cause of action” for the purposes of claim preclusion.

The plaintiff argued that the well-worn rule that claim preclusion would apply to later patent claims if "the scope of the asserted patent claims in the two suits is essentially the same." Defendant, however, offered the novel argument that "two patent claims are 'essentially the same' if the second claim would have been obvious to one skilled in the art with knowledge of the first claim."

Judge Goldberg described apparent chain of reasoning thusly:

The parties’ divergent positions stem from the following sentence in the Federal Circuit’s SimpleAir decision: “In applying [the claim preclusion] standard to the particular context here, we conclude that claims which are patentably indistinct are essentially the same.” . . The underlined term “patentably indistinct” is also used in the doctrine of obviousness-type double patenting, where it means that “the [later] claims are obvious over the [earlier] claims.” . . . Bionpharma argues that by using ...
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Judge Andrews Taking Senior Status at the End of 2023—But Continuing with Full Caseload

Andrew E. Russell, Jan. 9, 2023
Congestion DED

Judge Andrews
Wikipemedia Commons

We're a little bit slow on the draw on this one. But for anyone who hasn't heard, the District of Delaware announced on Friday that Judge Andrews will take senior status in December 2023. The announcement notes that Judge Andrews will maintain a full caseload:

The United States District Court for the District of Delaware announces that Judge Andrews informed the President on January 5, 2023 that he intends to take senior status at the end of December 2023. Judge Andrews expects to continue with a full caseload once he becomes a Senior Judge.
Judge Andrews is an exemplary judge and colleague, and the Court is extremely grateful that he will continue to serve this institution and the public as a Senior Judge.

The District of Delaware hasn't had a judge on senior status for some time. To the extent that a new judge is appointed and Judge Andrews maintains a full caseload while on senior status, that's akin to a fifth judgeship for D. Del.—a 25% increase in the number of available judges.

The Law360 article on the announcement has some more details, including some very nice comments by Chief Judge Connolly.

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The Last Bastion of Sealed Filings

Nathan R. Hoeschen, Jan. 8, 2023
Sealing Redactions

Interior. Daytime. Camera zooms in on a series of bound documents lazing on a judge's desk.

Narrator: At one time, this courthouse would have been full of sealed filings. Flitting about through the hallways, their quiet calls echoing to one another as they played amongst the corridors.

[Music turns more somber, two smaller briefs seem to cling to a larger one with "DENIED" written in large red letters on the cover. despite their plaintiff cries, the larger brief does not stir]

I know, it's a pretty rough pun.
Karlheinz Eckhardt, Unsplash

Narrator: (continuing) Following years of habitat destruction, however, these beasts—once as common as pigeons or garden slugs—are on the verge of extinction.

[Music swells, as camera focuses on sealed papers being seemingly fed into a furnace; then we turn to a verdant valley where things seem brighter, ink flows in a peaceful stream and a jaunty fiddle tune takes over]

Narrator: But one hidden nook remains, untouched by the changes of recent years where a sealed filing can expect to live a long life in the the quiet secrecy that is its true home. That ancestral home is ...

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No, You Can't Use One Date for a Royalty Calculation and Another for the Hypothetical Negotiation, Without Evidence of Earlier Infringement

Andrew E. Russell, Jan. 5, 2023
Expert Witness Damages

Photograph of a damages expert report involving the Georgia-Pacific factors, the Panduit test, apportionment, convoyed sales, non-infringing alternatives, marking . . .
Photograph of a damages expert report involving the Georgia-Pacific factors, the Panduit test, apportionment, convoyed sales, non-infringing alternatives, marking . . . Luca J, Unsplash

It seems like people are always messing up with patent damages experts. There are just a lot of ways to get tripped up on damages, and—obviously—big incentives to take risks to drive damages numbers up or down.

We had another example of that on Monday, when visiting Judge McCalla granted a Daubert motion and excluded testimony from an expert who applied a later date for the start of infringing sales for the royalty calculation, and an earlier date for the hypothetical negotiation. The expert apparently used a December 2014 date for his royalty calculation:

Wonderland argues that neither Evenflo nor Mr. Peterson presented evidence of any manufacture or testing that occurred at the dates that Mr. Peterson suggested. . . . Wonderland supports its assertion by pointing to sections of Mr. Peterson’s report and deposition in which Mr. Peterson . . . uses December 2014 and not an earlier date as the starting point for calculating royalty damages based on his hypothetical rate. . . .

But the expert used an earlier date for the reasonably royalty calculation, arguing that the earlier date is when the infringement actually began:

When using a hypothetical negotiation to assess damages, “the date of the hypothetical negotiation is the date that the infringement began.” . . . Mr. Peterson asserts that a date falling between December 2013 and April 2, 2014 “more naturally aligns with the actual date of first infringement.” . . .

But the Court found that the party had failed to put forth evidence of the earlier date, and ...

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Federal Circuit Denies Mandamus Petitions, Says Court Can Act After Dismissal

Andrew E. Russell, Jan. 4, 2023
Mavexar Mandamus

OK Nate, you win. Mavexar is a crab now.
OK Nate, you win. Mavexar is a crab now. AI-Generated, displayed with permission

We posted last month about two more mandamus petitions regarding Chief Judge Connolly's recent efforts to enforce his standing orders regarding disclosure requirements in his cases.

The Mavexar saga is getting a bit complicated, so here is a quick recap of the mandamus petitions:

  • Chief Judge Connolly scheduled hearings in several cases regarding various plaintiffs' compliance with his standing orders
  • In two of the hearings, the plaintiffs explained that an entity called Mavexar recruited the plaintiffs and took up to 95% of their proceeds
  • The Court ordered some of the Mavexar entities to produce a broad range of communications among the plaintiffs, Mavexar, and their attorneys
  • One …
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Mavexar Goes On Tour

Nathan R. Hoeschen, Jan. 3, 2023
Mavexar Litigation Funding

So, my new year's resolution was not to write any more about the Mavexar hearings until we got something really juicy. Unfortunately, due to the holidays there hasn't been much else to write about these last few weeks. I made it almost 3 days though, which is a personal best for resolutions of this sort.

Howdy Crab Monsters!
Howdy Crab Monsters! AI-Generated, displayed with permission

One of the more interesting aspects of the Mavexar hearings has been the general lack of participation from the opposing parties in the hearings, many of whom have already been dismissed. This unique state of affairs has left me to imagine what the papers might look like if a defendant really went to town on the issue.

Last …

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