A Blog About Intellectual Property Litigation and the District of Delaware


Entries for tag: Summary Judgment

Summary Judgement Granted Because Trade Secret Plaintiff Alleged New Misappropriation Theory But Failed to Amend Complaint

Andrew E. Russell, Oct. 14, 2022
Trade Secret Misappropriation SJ

Secret Plan
AI-Generated, displayed with permission

New Judge Williams is on a roll lately, releasing seven new opinions on Wednesday alone. Sadly we can't post about them all—I'd be doing nothing but writing blog posts. But I wanted to take the opportunity to point out an opinion from a rare (in D. Del., at least) trade secret action.

In Zoppas Industries de Mexico, S.A. v. Backer EHP Inc., C.A. No. 18-1693-GBW (D. Del.), the plaintiff accused the defendant of misappropriating its trade secret information about heating elements for appliances.

According to the complaint, plaintiff disclosed its literal secret plan—the "Zoppas Plan"—to appliance manufacturer Whirlpool. The complaint also alleges that the defendant here, Backer, then acquired that secret plan …

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Patent Marking: Better Watch Those Burdens of Proof, or You'll Lose Your Pre-Suit Damages

Andrew E. Russell, Sept. 30, 2022
Summary Judgment Pre-Suit Damages

Here's an AI-generated patentee dealing with the burden of proof on marking.
Here's an AI-generated patentee dealing with the burden of proof on marking. AI-Generated, displayed with permission

My co-blogger Nate wrote yesterday about Magistrate Judge Hall's discussion of prior art estoppel in Innovative Memory Systems Inc. v. Micron Technology Inc., No. 14-1480-RGA (D. Del. Sept. 29, 2022). That was actually just one issue the Court dealt with in a lengthy R&R and Order on a summary judgment and Daubert. I wanted to post about one of the other issues Judge Hall addressed in that opinion: patent marking.

Marking is an important and sometimes underrated issue. It's not uncommon, in patent cases, for the bulk of the damages to have accrued in the years prior to the plaintiff filing suit. These "pre-suit" damages can be at risk, though, if the patentee sold products that practice the patent and failed to mark them under 35 U.S.C. § 287(a). Here is how Judge Hall explained it in Innovative Memory:

[W]hen a plaintiff makes or sells a product practicing its patent, the plaintiff can only recover pre-suit damages from an infringer if (1) the patentee marked its product in the manner specified in § 287(a) or (2) the patentee notified the infringer of its infringement. Even if a plaintiff patentee doesn’t make or sell anything, it cannot recover pre-suit damages (absent providing notice) if a prior owner of the patent failed to mark its products covered by the patent.

One interesting thing about marking, ...

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Judge Noreika Continues Practice of Sometimes Requiring Parties to Seek Leave Before File Daubert Motions

Andrew E. Russell, July 28, 2022
Summary Judgment Congestion

Schedule issues
Towfiqu barbhuiya

We've recently flagged Judge Noreika's evolving practice of sometimes requiring parties to seek leave before filing summary judgment or Daubert motions. It doesn't seem to happen in every case, and so far the Court has often granted leave for at least one summary judgment or Daubert motion in each case. But it's worth keeping in mind if you have a case before Judge Noreika.

Yesterday, we saw a new variation on Judge Noreika's previous orders on this issue. She specifically noted that the trial was a bench trial (it is an ANDA case):

ORAL ORDER re . . . Stipulation and Proposed Order - WHEREAS, the parties have submitted a proposed stipulation that includes, inter alia, new …
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The Golden Rule and Lesser Metals

Nathan R. Hoeschen, June 25, 2022
Summary Judgment

mario-la-pergola-hxCQXj5mB7Y-unsplash
Mario La Pergola, Unsplash

It's easy to fall into the trap of separating rules into "technical" and "substantive" and on that basis to choose which must be followed and which can be safely ignored. Judge Noreika neatly illustrated how foolhardy this practice can be last week, when she issued a brief, two-sentence order denying a summary judgment motion:

WHEREAS, pursuant to the 47 Scheduling Order, a separate concise statement of facts shall be filed with any summary judgment motion; and WHEREAS, Plaintiff did not file such statement with its 194 Motion for Summary Judgment. THEREFORE, IT IS HEREBY ORDERED that the motion is DENIED for failure to comply with this Court's procedures set forth in the Scheduling Order

Board …

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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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Judge Burke Declines to Find Non-Infringement in Daubert Context; Gives Thoughts on Proliferation of Summary Judgment Motions

Andrew E. Russell, March 15, 2022
Summary Judgment Non-Infringement

These dandelions are popping up like SJ motions!
These dandelions are popping up like SJ motions! Jonne Huotari, Unsplash

Today, in Personal Audio v. Google, C.A. No. 17-1751-CFC-CJB (D. Del.), Judge Burke addressed an apparent request for the Court to find non-infringement based on a claim construction issue, which came up for the first time in the context of a Daubert motion to exclude expert testimony.

The Court expressed some initial sympathy for the non-infringement argument, suggesting it may have had some merit:

[T]he Court notes more generally that the issue underlying Defendant’s Motion is Defendant’s assertion that the claim construction for “sequencing file,” . . . requires that “you can’t use a copy of the sequencing file to control playback and respon[d] to …
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New Judge Noreika Procedure Pays Off: After Extra Pre-Trial Claim Constructions, Court Vacates Trial Date and Requests Proposed Form of Judgment

Andrew E. Russell, March 7, 2022
Summary Judgment FRCP 56

Speed
Arthur Poulin, Unsplash

In January, we noticed an interesting new procedure from Judge Norieka where, rather than address the pending motions on eleven grounds in detail, she ordered the parties to file a joint letter ranking their summary judgment motions and identifying any disputes over claim scope.

When the parties identified some "dispositive" claim construction disputes in the letter, the Court ordered briefing on those disputes.

Now, the Court has held its Markman hearing (less than a month after close of briefing), and issued an oral ruling on the new constructions at the hearing. It found for the defendants on all disputes.

The parties then filed a letter, where the plaintiff admitted that, if the Court sticks with …

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What Are Technology Tutorials in Patent Cases, and Are They Worth It?

Andrew E. Russell, March 2, 2022
Technology Tutorial Summary Judgment

Looks like they went with the low-cost version
Looks like they went with the low-cost version Markus Winkler, Unsplash

In the District of Delaware, five of our eight judges use form scheduling orders that provide a deadline for the submission of a "Technology Tutorial" around the time of claim construction.

Former Judge Stark required the parties to submit a tech tutorial in patent cases with the opening claim construction brief. Judge Stark's form order, for example, provided that:

Tutorial Describing the Technology and Matters in Issue. Unless otherwise ordered by the Court, the parties shall provide the Court, no later than the date on which their opening claim construction briefs are due, a tutorial on the technology at issue. In that regard, the parties may separately …
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Court Declines to Adopt Report & Recommendation, Grants Early Summary Judgment of Non-Infringement

Andrew E. Russell, Feb. 1, 2022
SJ Summary Judgment

Clients and co-counsel often ask whether it makes sense to object to an R&R issued by a Magistrate Judge. The answer depends on many factors. For example, why was motion denied? What are the chances it will be reversed? What is the client's commitment level to the case? What is the impact of the motion on the case? Etc.

Sometimes, though, what people really want to know is "would the district judge ever decline to adopt an R&R?" The answer to that is that yes, the court will sometimes declines to adopt an R&R, but it is definitely the less common outcome.

Yesterday, Judge Andrews did just that: he declined to adopt an R&R on a motion …

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Judge Noreika Tries New Summary Judgment Procedure in Light of Trend Towards "Shotgun Theories and Voluminous Submissions"

Andrew E. Russell, Jan. 21, 2022
Summary Judgment FRCP 56

Visualization of the average D. Del. judge's <a href='#' class='abbreviation' data-bs-toggle='tooltip' data-placement='top' title='Summary Judgment'>SJ</a> motion pile (circa 2021, pre-Judge Stark departure)
Visualization of the average D. Del. judge's SJ motion pile (circa 2021, pre-Judge Stark departure) Christa Dodoo, Unsplash

Last month Judge Noreika issued an order praising Chief Judge Connolly's ranking-based summary judgment procedure, and imposing a similar procedure—at least for one case.

Under his SJ procedures, Chief Judge Connolly addresses each party's motions in their ranked order, and if a single motion is denied, he may decline to consider all remaining motions.

Judge Noreika issued her order after the parties in the case, Dali Wireless, Inc. v. Commscope Techs. LLC, C.A. No. 19-952-MN (D. Del.), sought …

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