Just imagine the bird is a summary judgment motion.AI-Generated, displayed with permission
Our blog readership remains pretty high these days, and we continue to grow subscribers. But not all District of Delaware attorneys follow the blog—yet.
That may be why, even though we've talkedabouttheseatlength, parties continue to file separate "concise statements of material fact" in support of their summary judgment motions that list non-material facts and do not include pinpoint citations—potentially resulting in denial of their motion.
Here are some guidelines for when you are putting together a concise statement of material facts in support of an SJ motion:
Include only the material facts. If you could still win your motion if a fact …
Last month, we wrote about the Mavexar-related witness who spent about $44,400 and counting just to avoid a trip to Delaware. Our post was prompted by the Federal Circuit affirming Judge Connolly's order imposing sanctions for her failure to appear in-person (even though, oddly, she agreed to appear remotely) for questioning by the Court related to potential misbehavior by her LLC, its attorneys, and Mavexar/IP Edge.
Well, yesterday the Court set a new hearing date, once again ordering the witness to appear for an in-person examination by the Court:
At Wilmington on this Twenty-third day of August in 2024, having received the Federal …
Chief Judge Connolly issued an opinion today addressing whether a claim to a COVID "vaccine" can extend to something that is not a "vaccine," and ultimately calling for the Federal Circuit to address its inconsistent precedent on construction of patent claim preambles.
The claims at issue claimed "[a] vaccine comprising . . ." a certain formulation. They agreed on what a vaccine is, but disagreed as to whether that term in the preamble to the claims should be limiting:
What the parties dispute is whether the term "vaccine" is "limiting" in claims 27 and 28. "Limiting" is patent-speak for "is an element of the claim." . . . Notwithstanding the fact that claim 27 …
In The Estate of Edward Bovee v. Corporal Sam Wilks, C.A. No. 23-192-CFC (D. Del.), the parties' agreed-upon scheduling order included Chief Judge Connolly's normal language requiring concise statements:
Any motion for summary judgment shall be accompanied by a separate concise statement detailing each material fact as to which the moving party contends that there are no genuine issues to be …
Is it such a long flight?AI-Generated, displayed with permission
It's hard to believe it has been almost a year, but last August we wrote about a Mavexar-related witness who refused to travel to Delaware to testify, instead insisting that she would offer testimony only remotely.
The Court fined her $200 per day for contempt of Court. She immediately appealed, arguing that the Court cannot force her to attend as she is outside of the 100-mile subpoena radius permitted under FRCP 45. The Court denied her motion to stay the fine pending appeal.
Yesterday, the Federal Circuit issued an order affirming the contempt sanction (and doing so pretty enthusiastically). The Federal Circuit made clear that the Court's inherent authority absolutely …
In Koninklijke Philips N.V. v. Thales DIS AIS USA LLC, C.A. No. 20-1713 (D. Del.), the plaintiff brought patent infringement claims for several patents, plus a DJ claim seeking a declaratory judgment of no FRAND license defense, citing a previous Delaware case finding no such defense absent a sworn affidavit that the defendant would sign a global FRAND license.
In the alternative, if the defendant submitted a signed affidavit, Plaintiff's complaint sought a "declaratory judgment determining the appropriate worldwide FRAND licensing terms for Philips’ world-wide portfolio of patents under ETSI policies."
With its answer, the defendant included just such a signed affidavit, along with its own DJ counterclaim and breach of contract counterclaim …
"That's Jim. He's been like that since he forgot to mention our fifth non-infringement argument in the JMOL after he was up until 4am doing exhibit objections. Turns out that's the one we needed to preserve."Sabina Music Rich, Unsplash
Rule 50(a) motions are truly the stuff of nightmares. If you are unfamiliar (experienced trial attorneys can skip the next two paragraphs), almost all patent cases involve post-trial briefing, where the losing side seeks judgment as a matter of law on the basis that no reasonably jury could find for the opposing party, even though that's exactly what the jury did.
Post-trial JMOL motions are not throwaway motions. Parties actually win them. And if you don't win your post-trial Rule 50(b) motion, what do you do? Appeal and try again, based on the arguments you preserved in that motion. These motions are critically important—albeit, only if you lose at trial.
But the post-trial Rule 50(b) motion for judgment as a matter of law is actually a renewed motion. To include an issue in your Rule 50(b) motion, you have to first make a 50(a) motion on the issue, and that motion must be made before the case is submitted to the jury. Otherwise, the issue is waived for post-trial briefing.
The problem, of course, is that you have to make your Rule 50(a) motion at the exact moment you are most stressed and concerned about actually winning the trial, when the motion feels like a giant distraction. And you have to do it knowing that you will almost certainly lose the 50(a) motion. The point is to preserve the arguments, not to win.
Trial teams handle this many different ways, but the most common seems to boil down to ...
For attorneys who practice in D. Del., Judge Connolly's opinion yesterday in Pharmacyclics LLC v. Alvogen Pine Brook LLC, C.A. No. 19-434-CFC (D. Del. Apr. 30, 2024) is a real page turner, and well worth reading. If you want to avoid spoilers, go read it now! It's attached below, and it's only 11 pages.
Spoilers below:
It's rare for a judge to conclude that either side—let alone both—misled the Court and litigated vexatiously. But that's just what Judge Connolly found here, after the plaintiff moved for fees under 35 U.S.C. § 285.
In holding that the defendants litigated vexatiously, the Court offered two primary examples of their misdeeds. The first relates to unsupportable allegations …
Power Integrations, Inc. v. Waverly Licensing LLC, C.A. No. 22-1554-CFC (D. Del), is one of my favorite complaints ever. Waverly -- allegedly one of the Mavexar companies -- sued Power Integrations for infringement in Texas right before Judge Connolly held his first hearing in the Mavexar matters in November of 2022.
In a truly inspired move, Power integrations then filed a DJ complaint in Delaware (its state of incorporation) alleging that "Defendants have engaged in a broad and aggressive campaign to harass and threaten many companies, including Power Integrations, with assertions of patent infringement liability . . . ." Id. at D.I. 1. Notably, they managed to get this complaint on file by the end of November 2022.
The complaint is well worth a read, but the best bit is definitely when they point out that Waverly's official address is actually an empty shelf in a Staples:
In an assignment filed with the U.S. Patent and Trademark Office for the ’246 patent, defendant Array IP LLC identified itself as having the same address that defendant Waverly Licensing LLC lists in the Waverly-PI complaint as its principal place of business (3333 Preston Road, Suite 300, Frisco, Texas 75034). (Id.) However, that address is actually a Staples store . . . Moreover, the specific box number that defendant Waverly occasionally lists in its court filings as its “principal place of business” within that “suite” is an open shelf.
Id. at paragraphs 12-13.
There are pictures and everything, it's really great.
This complaint prompted all of the DJ defendants -- which included Waverly, Mavexar itself, and several others -- to ...
Why did physicists refuse to write about the Antitrust Paradox? Because every time they tried to define the relevant market share, the observer effect kicked in, and the monopoly disappeared. (I hope readers who have dual Bork/quark interests enjoyed that.)
Today’s highlighted opinion proceeds from trademark law, crosses into antitrust law, and has implications for patent law. In it, Judge Connolly rejects a plaintiff's attempt to argue that the defendants' prior filing of trademark litigation against competitor gave rise to anti-trust and unfair competition claims.
Noerr-Pennington Precludes Some Tort and Anti-Trust Claims Based on Litigation—Unless It Was Sham Litigation
Judge Connolly explained that the Noerr-Pennington doctrine provides immunity from certain types of claims that a plaintiff …
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