"Here is our argument. The rest of the pieces are in our concise statement of facts."T.J. Breshears, Unsplash
Years ago, I wrote a really terrible first draft of a summary judgment brief arguing invalidity of a patent for obviousness.
I wrote it immediately after expert reports, and my draft failed to actually say why the claims were obvious. Instead, the whole draft read like a sur-rebuttal to the patentee's expert: here is why their first argument doesn't work, here is why their second argument doesn't work, and so on. Never "here is why the claims are obvious."
To me, at the time, it looked great. I rebutted all of their arguments! How can we lose! To others, it …
Even occasional Delaware practitioners will be aware of the meet and confer requirement for non-dispositive motions embodied in LR 7.1.1:
. . . every nondispositive motion shall be accompanied by an averment of counsel for the moving party that a reasonable effort has been made to reach agreement with the opposing party on the matters set forth in the motion. Unless otherwise ordered, failure to so aver may result in dismissal of the motion. For purposes of this Rule, “a reasonable effort” must include oral communication that involves Delaware counsel for any moving party and Delaware counsel for any opposing party.
This rule gets an additional piquante twist in the context of discovery disputes, wherein several judges' procedures require …
In AlterWAN, Inc. v. Amazon.com, Inc., C.A. No. 19-1544-MN (D. Del.), the parties stipulated to a judgment of non-infringement after the Court construed certain terms of the patent, and then appealed to the Federal Circuit.
The Federal Circuit vacated the stipulated judgment because it found it was not specific enough, and remanded the case. See AlterWAN, Inc. v. Amazon.com, Inc., 63 F.4th 18, 23 (Fed. Cir. 2023) (“[W]e cannot ‘ascertain the basis for the judgment’ of non-infringement, . . . because the parties did not adequately explain how the claim construction rulings related to the accused systems.”).
It's always good to know where the lines are. Today, Judge Williams awarded attorneys fees after the plaintiff in a Defend Trade Secrets Act action maintained an "objectively specious" argument after the close of fact discovery:
A claim is objectively specious where there is a complete lack of evidentiary proof from the party suing. . . . [T]he Court agrees with [defendant] Backer that [plaintiff] ZIM litigated this matter with knowledge that its claims were objectively specious. While Backer contends that ZIM knew that its claims were objectively baseless when it filed the Complaint, the Court finds that ZIM understood that its claims were objectively specious by the close of fact discovery on January 12, …
The judges' form scheduling orders in D. Del. have deadlines for "substantial completion" of document production. Generally, this deadline is set so that the parties can get most of their documents out and then proceed to depositions.
This tends to be one of the key deadlines in cases, and it often the subject of disputes. We've talked before about how a party cannot withhold a category of documents until after the deadline, and how waiting to produce things until after the deadline can result in exclusion.
Parties typically agree to make "rolling productions" up until that deadline. But, sometimes, the "rolling production" is a trickle, with the bulk of the documents coming just before the deadline—leaving the other side to scramble to review everything in time for depositions.
This week we got some useful precedent from Judge Burke about how that technique is inappropriate, and how parties need to spread their "rolling" production out proportionally:
ORAL ORDER: The Court, having reviewed Plaintiff's discovery dispute motion ("Motion"), (D.I. 73), and the briefing related thereto, (D.I. 70; D.I. 72; D.I. 82), hereby ORDERS that the Motion is GRANTED-IN-PART and DENIED-IN-PART as follows: (1) The Court agrees with Plaintiff that Defendants should make an orderly and proportional production of their ESI discovery, such that they should not be dumping the bulk of those remaining documents on Plaintiff at or near the December 5 substantial completion deadline. But the Court sees that Defendants have begun to move forward with those productions (perhaps spurred by Plaintiff's Motion), and it also agrees with Defendants that it is not in a good position to set an arbitrary number of ESI documents that should be produced each X days on Y dates.; and (2) So the Court will simply order that between now and December 5, Defendants should produce their remaining ESI discovery on a consistent, roughly proportional, rolling basis, such that Plaintiff does not get the bulk of the remaining documents at or near the deadline. Ordered by Judge Christopher J. Burke on 11/6/2023. (mlc) (Entered: 11/06/2023)
State Farm Mutual Automobile Insurance Co. v. Amazon.com, Inc., C.A. No. 22-1447-CJB, D.I. 91 (D. Del. Nov. 6, 2023).
The plaintiff had sought an order compelling the defendant to produce "50,000 documents per week" over the 7 weeks that were then remaining before the substantial completion deadline. The Court rejected that part of the request, possibly because the defendant argued it didn't have all that many documents.
But the order makes clear that the defendant has to roll out what it does have in a "roughly proportional, rolling basis" before the final deadline. Nice!
I've attached the order below so that we can all find it next time this issue comes up in a discovery dispute.
The doctrine of equivalents is often treated as the legal equivalent of going "c'mon....c'mon! its all the same."
AI-Generated, displayed with permission
It's not uncommon to see it included in infringement contentions in terms that just note that, to the extent the noodlewiggler (TM) does not literally infringe claim 38 of of the '123 patent, it's insubstantially different, and performs the same function in the same way to achieve the same result, and is lame."
Judge Andrews issued an opinion today that neatly illustrates the problem with that tactic. The defendant in Carrum Techs., LLC v. Ford Motor Comp. C.A. No. 18-1647-RGA (D. Del. Nov. 9, 2023) (Mem. Op.) moved for summary judgment on the basis of a …
The parties in Stragent, LLC v. Volvo Car USA, LLC, C.A. No. 22-293-JDW (D. Del.) filed a joint appendix of exhibits alongside some supplemental SJ briefing. The defendant filed a motion to seal its SJ brief, which apparently discussed internal software specifications.
The Court granted the motion to seal the SJ brief, but criticized the brief in strong terms:
Volvo seeks to file its supplemental summary judgment brief under seal, but it’s supporting brief doesn’t say much. For example, while Volvo makes generic references to “proprietary commercial, financial and business information” and …
In D. Del., stipulated extensions of the schedule are routine and are normally granted, with occasional exceptions. Usually, when the Court grants them, it results in an unremarkable order like this:
There's really nothing there. Occasionally, though, it results in an order like the below. Can you spot the difference?
Can you see it? It's tiny. The only difference is that the docket number ("52") is a link. I don't blame you if you missed it.
Usually, clicking on that link, you'll find a plain-Jane stamped or signed version of the stip as filed. Nothing remarkable or meaningful at all. It feels wrong to bill .1 hours to a client to click on the stip and look at …
Ouch. This week in MED-EL Elektromedizinische Geräte Ges.m.b.H. v. Advanced Bionics LLC, C.A. No. 18-1530-JDW (D. Del. Oct. 30, 2023), Judge Wolson addressed a motion in limine to exclude testimony from both of the accused infringer's witnesses on their prior use defense.
The accused infringer didn't offer expert testimony at all on invalidity, according to the briefing. D.I. 399 at 3. Instead, it asserted a prior use defense in its contentions, presumably intending get it in through fact witness testimony.
The patentee first moved in limine to preclude the defense due to a lack of expert testimony. But the Court held that a party can present an invalidity defense without it—and compared the motion to an improper SJ motion:
The first part of AB’s Motion In Limine #1 is a summary judgment motion in disguise. MED-EL asserts invalidity in this case. If AB had a basis to argue that the absence of expert testimony dooms that claim, then it should have moved for summary judgment on the issue. It didn’t, and it can’t use an in limine motion to dispose of MED-EL’s claim. If AB believes that the lack of expert testimony means that MED-EL cannot meet its burden, then AB can seek relief under Rule 50 at the close of MED-EL’s case at trial.
(We've talked before about the risks of bringing what should be an SJ motion as a MIL.)
In other words, offering no expert testimony could be OK. The accused infringer, however, also failed to ...
I know the title is for the wrong holiday, but I can only work with what the Court provides. If you want something more appropriate, encourage your local judge to issue opinions on murders most foul and revenge from beyond the grave this time next year. There's still time for opinions on disastrous chimney collapses for the holiday season.
Somehow the reindeed ended up looking more evil than the witchAI-Generated, displayed with permission
Anyway.
Today's case, Midwest Energy Emisions Corp. and MES Inc. v Arthur J. Gallagher & Co., C.A. No. 19-1334-CJB (D. Del. Oct. 26, 2023) (Mem. OP.) has an interesting wrinkle on the distinction between the requirements for induced infringement under 271(b), and contributory infringement under 271(c). The defendants there were all somehow involved in the sales and hauling of coal to various power plants (hence the title). One particular group of defendants was allegedly involved only in the moving of the coal from place to place, but was not alleged to actually make any sales. Accordingly that defendant group (called the "Cert Operations" defendants), moved for summary judgment that they had not induced or contributed to any infringement, despite their logistical role in the process.
Judge Burke granted the motion as to the contributory infringement claims but denied it as to the induced infringement claims, stating:
Plaintiffs’ allegations are that the CERT Operations Companies are liable here because they took steps to “provide” refined coal to power plants . . . —and one can “provide” such coal not only by selling the coal to the plants, but also by playing a role in having the coal delivered to the plants. . . . On this ground then, the Motion is DENIED as to the CERT Operations Companies.
Id. at 4 (cleaned up).
But the Court does not see (and Plaintiffs have not demonstrated) how simply “participating in the operation, production and delivery” of refined coal to a power plant on behalf of a refined coal company, without more, could equate to engaging in the sale of coal from the refined coal company to the power plant. And Section 271(c) requires that these CERT Operations Companies had to have participated in some way in that sales process—a process that involves two parties agreeing to transfer property or title in return for the payment of or promise to pay an agreed-upon price. . . . [P]laintiffs have not demonstrated that any of the CERT Operations Companies advertised the coal for sale, negotiated the terms of sale, collected payment for any sale, received a portion of any sales revenue or in some other meaningful way participated in the actual negotiation and sales process. Thus, summary judgment is GRANTED as to the claims for contributory infringement against the CERT Operations Companies.
Id. at 5-6 (cleaned up).
Its a useful reminder that the language of these two closely related sections is not precisely parallel.
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