A Blog About Intellectual Property Litigation and the District of Delaware


CJB
The Honorable Christopher J. Burke

Does Filing an Amended Complaint Moot Your Preliminary Injunction Motion?

Andrew E. Russell, May 14, 2021
Motion to Stay Preliminary Injunction

david-clode-PMyak6AHT1Y-unsplash.jpg
David Clode, Unsplash

In Reputation.com, Inc. v. Birdeye, Inc., C.A. No. 21-129-LPS (D. Del.), the plaintiff moved for a preliminary injunction.

Judge Stark referred the PI motion to Judge Burke, who held an initial status conference and set a truncated schedule for PI discovery. The scheduling order set deadlines for PI discovery and supplemental briefing to be completed within 4 months.

Shortly after the PI motion, defendant moved to dismiss on § 101 grounds; in response, the plaintiff amended the complaint.

After the amendment, the Court issued an oral order sua sponte denying the motion to dismiss as moot—a common practice among some D. Del. judges (these orders helpfully make explicit that the pending motion …

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Court Reaffirms Denial of Litigation Funding Discovery, But Permits In Camera Review of Litigation Funding Agreement

Andrew E. Russell, April 26, 2021
Litigation Funding Discovery Dispute

Dollar Bills
Sharon McCutcheon, Unsplash

It seems like litigation funding is becoming a more active area for discovery disputes lately—a trend that is likely to continue after Judge Connolly granted a dismissal based on a litigation funding agreement late last year. See Uniloc USA, Inc. v. Motorola Mobility, LLC, C.A. No. 17-1658-CFC, 2020 U.S. Dist. LEXIS 244512, at *25 (D. Del. Dec. 30, 2020).

Last week, Judge Burke confirmed a previous denial of litigation funding discovery, offering some additional thoughts:

ORAL ORDER: The Court, having now reviewed the parties' supplemental letter briefs . . . in which Defendants ask the Court to reconsider its March 2, 2021 Order . . . , hereby notes as follows: . . …
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How Common Is Your Interest?

David M. Fry, April 14, 2021
ANDA Common Interest Privilege

Earlier today, Judge Burke unsealed an interesting order addressing the applicability of the common-interest doctrine to communications between a generic pharmaceutical company and its API manufacturer.

No attorneys directly participated in most of the underlying communications, but the defendants argued that they shared "a common legal interest" with their API manufacturer in avoiding a lawsuit "and that their communications furthered that interest." Although Judge Burke found that this "argument has some initial, superficial appeal[,]" in that "the subject of these communications is in some sense legal in nature[,]" he concluded that any shared legal interest came too late:

when one contextualizes the communications with regard to what was happening in the relevant time period, Defendants have not met …
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14 Discovery Disputes is One Too Many

Andrew E. Russell, April 2, 2021
Discovery Dispute

Tennis Court
Bannon Morrissy, Unsplash

On Wednesday, Judge Burke issued the following order cutting the parties off from further discovery dispute teleconferences—but not discovery disputes—after they brought their fourteenth request for discovery assistance in just over a year:

ORAL ORDER: The Court, having reviewed the parties' . . . request [for] a discovery teleconference . . . hereby notes as follows: (1) since the Court was referred this matter in February 2020 to resolve discovery/protective order disputes, this is the 14th different time that the parties have sought the Court's assistance in that regard; (2) as part of those 14 different requests for Court assistance, the parties have brought the Court a total of 31 different disputed issues to …
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Judge Burke Chides Parties for Time-Wasting Motion to Strike

David M. Fry, March 17, 2021
Motion to Strike Pennypack

We've written several posts about the Pennypack factors and how hard it can be to win a motion to strike in D. Del. The upshot is that it's often better to simply reach agreement on a curative remedy rather than spend time on full-blown motion practice.

Case in point: on Monday, Judge Burke denied a motion to strike a two-page supplemental expert declaration on a patentability issue. Applying the Pennypack factors, he concluded

that having to respond to the supplemental declaration (which, after all, relates to one discrete issue, and is only two pages long) would occasion some great prejudice to Defendants. The issue can be resolved by permitting Defendants to file a supplemental sur-rebuttal expert report on …
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I Don't Object, Your Honor!

Jeff Castellano, March 16, 2021
R&R Section 101

Objections to Reports and Recommendations are something like an appeal. The District Judge is tasked with addressing the alleged errors of the Magistrate Judge de novo only to the extent they are "properly objected to." Fed. R. Civ. P. 72(b)(3). Thus, it is the job of the parties to raise objections to an R&R in a procedurally proper way. If they fail to do so, the District Judge is hamstrung to an extent. This outcome was on display in a recent ruling by Judge Andrews, in which both sides failed to properly object to a portion of the Magistrate Judge's R&R, leaving a patent with "serious" validity problems alive (for now).

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Don't Show Me the Money: Judge Burke Denies Litigation Funding Discovery

David M. Fry, March 3, 2021
Litigation Funding MTC

Money
Pepi Stojanovski, Unsplash

It's a tough scenario: you think your opponent might have assigned away their patent rights, but you aren't exactly sure. And the only way you could know for sure is with information you don't have.

Most of the time in D. Del., disputes like this are addressed in a hearing transcript or an oral order. They don't make headlines, and they never hit Lexis or Westlaw, but they often provide helpful guidance for the future.

Yesterday, Judge Burke issued an oral order denying a request to compel a plaintiff to turn over its litigation funding documents. The defendants knew that the plaintiff had third-party litigation funding (and suspected that there might have been some assignment of …

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Relief from a Protective Order: How to Do It and How NOT to Do It

Andrew E. Russell, Feb. 5, 2021
Sealing Protective Order

Shield of Sir John Smythe (1534–1607)
Shield of Sir John Smythe (1534–1607), The Met

This week judges in the District of Delaware issued two orders regarding discovery disputes seeking relief from protective orders in patent actions. One granted relief, and one denied it. The contrast between the two is a great illustration of how you should and shouldn't argue for relief from a protective order.

How Not to Do It

In the first action, plaintiff Wildcat sought permission to disclose defendant's materials from the district court in a co-pending IPR to support its secondary considerations of non-obviousness. The protective order specifically allowed this:

All Protected Material shall be used solely for the above-captioned cases or any related appellate proceeding and/or proceedings before the United States …
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A Preliminary Injunction Is Never a Shure Thing

David M. Fry, Feb. 3, 2021
Preliminary Injunction Legal Writing

Just a regular microphone
Just a regular microphone Santtu Perkiö, Unsplash

In a design patent dispute between Shure and ClearOne over microphone arrays, Magistrate Judge Burke recently issued an R&R recommending denial of a preliminary injunction.

The denial itself isn't surprising—in D. Del., these motions are denied far more often than not. But the R&R sheds some helpful light on how you can make your motions stronger.

First, make sure your theme matches your facts. Although the plaintiffs claimed that the defendant's sales were "surging," Judge Burke found the opposite. The exact sales numbers are redacted, but they were enough for Judge Burke to conclude that "as of July 2020, it is Shure’s sales that were surging; ClearOne’s were not." You can't …

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The Key to Unlock Sealed Filings

Nathan R. Hoeschen, Jan. 28, 2021
Sealing

Over the last few years, sealing courtrooms, transcripts, and even ordinary filings has become more difficult in Delaware. With unopposed motions to seal being regularly denied in the absence of a strong showing of harm, one might wonder how high the bar would rise if a third party actually requested disclosure.

Judge Burke provided us a glimpse of the answer in ruling on one of these rare requests earlier this week in Integra LifeSciences Corp. v. HyperBranch Med. Tech., Inc., C.A. No. 15-819-LPS-CJB, D.I. 826 (D. Del. Jan 25, 2021)—a case that had previously been closed for more than a year. The parties in that case had filed various documents under seal years ago, …

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