A Blog About Intellectual Property Litigation and the District of Delaware


CFC
The Honorable Colm F. Connolly

Court Denies Stipulation Extending Answer Deadline That Was Filed on Due Date as Untimely & Lacking Justificiation

Andrew E. Russell, June 23, 2022
Stipulation Answer

RIP, dear stipulated extension
Mr Xerty, Unsplash

Just a heads up, since this has to be one of the more common things that counsel do in cases—this week, Judge Connolly denied a stipulation extending the answer deadline as untimely and lacking a reason:

ORAL ORDER: The parties' stipulation (D.I. 16) being untimely and offering no justification for an extension, it is HEREBY DENIED. Defendant has until June 23, 2022 to answer, move, or otherwise respond to the complaint. ORDERED by Judge Colm F. Connolly on 6/21/22. (ntl) (Entered: 06/21/2022)

Wikeshire IP LLC v. TransCore, LP, C.A. No. 22-445-VAC (D. Del.).

It's not clear from the docket why it was untimely. It looks like the answer deadline was originally 4/28/2022, then it was extended by stip to 5/28, then 6/14. Then, on 6/14 (the due date), the parties filed another stipulation extending the answer deadline to 6/28.

So it looks like the Court rejected a stipulation filed on 6/14 to extend a 6/14 due date. It may be that the parties filed after the 6pm filing deadline. Or, it may be that the Court is taking the view that the stipulation must be filed early enough for the Court to "so order" it prior to the deadline—but I haven't seen that in other cases.

Either way, it's probably safest to list a justification for your stip extending the answer deadline, and to file early going forward! Of course, this can be tricky in high-volume NPE cases, where plaintiff's counsel may be unresponsive until the parties are right up against a deadline.

View

Plaintiff Can't Back Out After Its Own "On Information and Belief" Representation Results in Dismissal

Andrew E. Russell, May 23, 2022
Standing Orders Diversity Jurisdiction

Broken Egg
Jasmin Egger, Unsplash

Last month, we wrote about Chief Judge Connolly's new standing order for diversity cases, requiring plaintiffs to disclose the citizenship of LLCs on both sides so that the Court can determine whether it has diversity jurisdiction.

Today, Judge Connolly denied a motion to alter or amend a judgment in a diversity action where he had issued a similar order and dismissed the case based on the Plaintiff's own "on information and belief" representation.

In Harbor Associates Limited Partnership v. Micron Devices, LLC, C.A. No. 20-1706-CFC (D. Del.), the Court sua sponte issued an order asking for plaintiffs to identify their members and those of one of the defendants, to ensure that the Court had diversity jurisdiction:

To ensure that the Court has subject matter jurisdiction over this matter, Plaintiffs . . . shall within one week identify the name and citizenship of every member of [a plaintiff LLC], and [defendant] Micron Devices, LLC. If any of [the two LLCs'] members are noncorporate entities, Plaintiffs shall also identity the name and citizenship of every member of those entities, proceeding up the chain of ownership until Plaintiffs have identified the name and citizenship of every individual and corporation with a direct or indirect interest in [the LLCs].

D.I. 24. In response, the plaintiffs identified themselves as Florida entities, D.I. 25, and stated on information and believe that one member of one defendant LLC was also a Florida citizen:

Upon information and belief, Laura Perryman is a member of [defendant] Micron Devices, LLC. . . . Upon information and belief, Ms. Perryman is a citizen of Florida.

D.I. 26. In response, the Court dismissed the case, holding that it lacked jurisdiction:

Consistent with their complaint, Plaintiffs identified Florida as the citizenship of the members of the plaintiff entities. D.I. 25. They also identified Laura Perryman as a member of Defendant Micron Devices, LLC and they say that she too is a citizen of Florida. D.I. 26. This Court therefore lacks diversity jurisdiction over this action.

D.I. 26, 27.

Can We Just . . . Click Undo on That?

Apparently not realizing what was about to happen when they made those statements to the Court, plaintiffs quickly moved for relief ...

View

Chief Judge Connolly Warns ANDA Plaintiff to Cut Back from 16 to 4 Asserted Claims Before Trial or Face Consequences

Andrew E. Russell, May 16, 2022
ANDA Congestion

Four
David Pisnoy, Unsplash

On Friday, Chief Judge Connolly issued an order in the lead-up to an ANDA bench trial compelling the plaintiff to reduce its number of asserted claims by 75% to 4 claims, or face consequences:

ORAL ORDER: WHEREAS, the parties filed the proposed pretrial order (D.I. 225) on May 10, 2022; WHEREAS, the bench trial in this case is 24 days away, and, according to the pretrial order, Plaintiffs are still asserting 15 claims across eight patents . . . ; and WHEREAS, Plaintiffs' assertion of 15 claims across eight patents at this juncture makes clear that Plaintiffs have yet to focus adequately on the relative strength of their various infringement claims, the limited resources of …
View

Judge Connolly Issues New Standing Orders, Including Requirement to Disclose Litigation Funding

Andrew E. Russell, April 18, 2022
Standing ANDA

Standing Stones
Andreas Brunn, Unsplash

Today, Judge Connolly issued four new standing orders. These orders include:

  1. A requirement to disclose third-party litigation funding arrangements on the docket;
  2. A requirement in diversity cases to disclose the name and citizenship of every individual and corporation with a direct or indirect interest in every party;
  3. An order expanding disclosure requirements under Federal Rule of Civil Procedure 7.1 for non-governmental joint ventures, LLCs, partnerships, and LLPs;
  4. A requirement for the defendant in ANDA cases where there was a Paragraph IV certification to produce the ANDA when responding to the complaint;

The above are numbered only for reference below.

Each of these orders explicitly applies only in Chief Judge Connolly cases.

Order 1: Litigation …

View

Chief Judge Connolly Bifurcates Patent Trial: Infringement First, then Invalidity, Damages, and Willfulness

Andrew E. Russell, Feb. 26, 2022
Trial Trial Procedure

Bifurcated Cake
Henry Be, Unsplash

Bifurcation into liability and damages phases used to be common, with former Judge Robinson often splitting liability and damages, at one point saying that “bifurcation is appropriate, if not necessary, in all but exceptional patent cases.” Dutch Branch of Streamserve Dev. AB v. Exstream Software, LLC, C.A. No. 08-343-SLR, 2009 U.S. Dist. LEXIS 76006, at *2 (D. Del. Aug. 26, 2009).

These days, bifurcation still happens here, but it is a bit less common than it was back then.

Earlier this month, though, Chief Judge Connolly raised bifurcation in a way I hadn't heard of, suggesting that the parties split infringement from invalidity and other issues, with jury deliberations in between:

At …
View

Chief Judge Connolly Limits Parties to 10 Claim Terms (Or, Why It's Helpful to Pay Attention to Seemingly-Obscure Precedent)

Andrew E. Russell, Feb. 23, 2022
10 Terms Stipulation

As frequent readers of this blog already know, some judges in Delaware have limited parties to a total of 10 terms for construction across all asserted patents.

We've noted at least one previous instance where Chief Judge Connolly seemed to limit the parties to 10 claim construction disputes. Last week, the Court made an even clearer statement on the issue.

The parties in MG FreeSites Ltd v. ScorpCast, LLC, C.A. No. 20-1012-CFC-JLH (D. Del.) filed their joint claim chart in advance of claim construction, and listed 15 terms in dispute. They also included a footnote smartly noting Chief Judge Connolly's practice not to permit argument on indefiniteness at the claim construction stage.

They then filed a stipulation …

View

On the Dire Consequences of Failing to Follow Standing Orders

Nathan R. Hoeschen, Jan. 27, 2022
Objections to R&Rs

Remember Me!
Sear Greyson, Unsplash

If you only occasionally practice in the district, you might be unaware of an old standing order on the procedure for objecting to R&R's. The unimaginatively titled "October 9, 2013 Standing Order for Objections Filed Under Fed. R. Civ. P. 72" contains requirements for filing objections that do not appear in either the local rules or FRCP 72.

Most of these requirements are simple logistical matters -- the length and timing of briefs, requiring courtesy copies, etc. A recent ruling from Judge Connolly, however, shows the imprtance of following these requirements precisely.

The defendant in In Personal Audio LLC v. Google LLC, C.A. No. 17-1751-CFC-CJB, D.I. 715 (D. Del. Jan 21, 2022) had lost a …

View

Chief Judge Connolly Denies Mostly-Unopposed Stay Pending CBM Review Because Defendant Refused to Consent to Statutory Estoppel

Andrew E. Russell, Jan. 17, 2022
CBM Estoppel

Stop Sign
Luke van Zyl, Unsplash

There are certain situations that come up over and over in patent cases. One of them is that a plaintiff will bring identical infringement suits against multiple defendants, and one of those defendants will then file an IPR or CBM proceeding before the patent office attacking the validity of the patents.

Under the America Invents Act, the filing party and any real party in interest are subject to estoppel. But unrelated defendants are not. The filing party will often move to stay the district court litigation. Generally speaking, parties with an instituted IPR or CBM review of all patents-in-suit often have pretty good chances of getting a stay.

So what happens when the defendants in …

View

No Venue in Delaware for Delaware LLCs?

Andrew E. Russell, Jan. 9, 2022
Jumara Transfer

Delaware Memorial Bridge
Chintan Jani, Unsplash

We didn't post about this Judge Connolly opinion when it came out back in October, but on revisiting it, I thought it was worth noting.

In deciding a transfer motion, Judge Connolly suggested in a footnote that, for Delaware LLCs, venue may not be proper in Delaware unless the individual members of the LLC are citizens of Delaware (which often may not be the case):

It's not clear to me that a Delaware LLC "resides" in Delaware for purposes of § 1400(b). Although residency is not synonymous with citizenship, the terms are related; and an LLC's citizenship for purposes of deciding whether diversity jurisdiction exists "is determined by the citizenship of each of its members," Zambelli Fireworks Mfg. Co., Inc. v. Wood, 592 F.3d 412,418 (3d Cir. 2010). In this case, I am unable to determine Den-Mat's state of citizenship because it has not expressly identified the persons and/or corporations who are its members.

The Court held that the analysis proceeds up the chain of ownership to include everyone with an interest in the LLC—so it sounds like simply being a subsidiary of a Delaware corporation may not be sufficient:

Den-Mat certified in its Rule 7.1 disclosure statement that its "parent company" is an LLC. . . . It seems likely to me that the parent LLC is Den-Mat's sole member, but I can't be sure of that. In any event, Den-Mat did not identify the members of its parent LLC, and to determine the citizenship of an LLC, courts proceed up the chain of ownership until they determine the identity and citizenship of every individual and corporation with a direct or indirect interest in the LLC . . . .

It's worth noting that the entity at issue ...

View

Three Out of Five Parties Receiving the Recent Magistrate Referral Orders Consented to Magistrate Referral

Andrew E. Russell, Dec. 29, 2021
Visiting Judges Case Management

Consent
Pawel Czerwinski, Unsplash

Two weeks ago, we wrote about a new set of referral orders in five Chief Judge Connolly cases. These orders offer the parties the choice to either consent to referral to Magistrate Judge Hall, or have their case referred to a visiting judge.

At this point, all parties have responded, and three out of five sets of parties consented to jurisdiction before Magistrate Judge Hall rather than having the case referred to a visiting judge. Seems like a good result! It will be interesting to see whether the Court continues to use these orders going forward.

I didn't see any obvious patterns among the cases that did or did not consent, although five cases is too small …

View
Newer
Older

Archive