I have no idea what the accused product looks like, but here is a "viral whole-genome sequencing experiment."National Cancer Institute, Unsplash
Last month, Judge Williams granted a permanent injunction in Natera Inc. v. ArcherDX, Inc., C.A. No. 20-125-GBW (D. Del. Nov. 21, 2023). The Court unsealed the opinion on Friday, and I thought there were enough interesting things about it to warrant a short post.
The Court granted the injunction only in part, and permitted the defendant to continue using the personalized cancer monitoring product, referred to as "PCM," for "ongoing clinical trials, for updating old studies undergoing peer review, and for limited quality control." The parties also agreed that the injunction should exclude use …
Is 3.5 hours enough time for a battle of the experts?AI-Generated
Parties often offer expert declarations during the claim construction process.
These declarations can be of varying utility. Sometimes, parties offer a detailed and helpful explanation of how the technology works. Other times, parties offer a useless, conclusory expert declaration that says little more than "a person of ordinary skill in the art would understand the term to mean [whatever construction the attorneys who hired me proposed]."
But, while declarations are common, in my experience live testimony from experts during a Markman hearing is pretty rare in D. Del. That's why I thought it was worth noting that, this week, Judge Burke granted an opposed request to permit …
Many things find their way onto an exhibit list that are not clearly admissible, or even exhibits in the quotidian sense. The rules are often vague about the propriety of presenting things like prior pleadings and discovery responses, much less the mechanism for doing so, and thus its fairly common to see all these and the kitchen sink placed on an exhibit list. Once there, they mostly molder, unremarked upon, until they happen to become relevant enough to spark a dispute.
I'm usually pretty harsh on the quality of these AI drawings, but I think this one is a bangerAI-Generated, displayed with permission
Last week (whilst I was on vacation acquiring a flu that dogs my every step like grim death) Judge Williams set forth a pretty clear rule prohibiting the inclusion of privilege logs on an exhibit list:
The Court grants-in-part Milwaukee's motion to exclude the privilege logs, but denies the remainder of Milwaukee's motion without prejudice. The privilege logs are not relevant because the logs make no material fact more or less likely. Even if Milwaukee were to have waived privilege with respect to its clearance program, the privilege logs would not be relevant because the mere assertion of privilege is "unremarkable and irrelevant."
Persawvere, Inc. v. Milwaukee Elec. Tool, Corp., C.A. No. 21-400-GBM, at 6 (D. Del. Nov. 21, 2023) (Mem. Ord).
The parties raised the issue via a MIL seeking to remove the log from the exhibit list and to prohibit the playing of any testimony wherein deponents had claimed privilege. The whole thing was part of a larger dispute about waiver of privilege over testing of the accused products. Judge Williams granted the motion as to the privilege log itself (by my quick search, the first ruling on the issue in Delaware) but denied it as to the testimony, noting If the [testing] is put at-issue at trial, Persawvere's introduction of deposition testimony that includes a deponent asserting privilege may become relevant." Id.
We've written before about the risks of a deponent consulting with counsel during a deposition. This week, visiting Judge Wolson ordered a deposition reopened after counsel did just that:
AND NOW, this 27th day of November, 2023, upon consideration of Stragent’s Motion For Sanctions Against VCUSA Pursuant To Fed. R. Civ. P. Rule 30(d)(2) For VCUSA’s Violation Of Local Rule 30.6 And Established Law (D.I. 100), and for the reasons set forth on the record during a hearing with the Parties, it is ORDERED that the Motion is GRANTED IN PART and DENIED IN PART as follows:
1. The Motion is GRANTED, to the extent Stragent seeks to reopen the deposition of [the deponent] …
We all know what ellipses (". . .") mean, right? It means that something in a quote was omitted. According to Bluebook Rule 5.3:
“Omissions of a word or words is generally indicated by the insertion of an ellipsis, three periods separated by spaces and set off by a space before the first and after the last period (“♦.♦.♦.♦”), to take the place of the word or words omitted. Note that “♦” indicates a space.”
In yesterday's lengthy Mavexar opinion, however, Chief Judge Connolly pointed out that ellipses in a transcript can mean something else entirely. They are to be used to
reflect the fact [that the witness] trailed off and was silent for a …
Here you can see Mavexar, IP Edge, and their counsel after yesterday's opinion.Mae Mu, Unsplash
Wow! Today, in the Mavexar cases, Chief Judge Connolly issued a huge, 102-page opinion referring plaintiffs' counsel to the Texas Supreme Court's Unauthorized Practice of Law Committee, the PTO, and the Department of Justice to determine whether counsel violated various rules—or federal laws:
As it appears that [three Mavexar employees] engaged in the unauthorized practice of law, I will refer them to the Texas Supreme Court's Unauthorized Practice of Law Committee.
* * *
I believe it appropriate to bring these matters to the attention of the PTO and the Department of Justice to allow them to conduct further inquiry into whether the PTO's rules or [18 U.S.C.] § 1001 were violated. The Department may also deem it appropriate to investigate whether the strategy employed by IP Edge to hide from the defendants in these cases and the Court real parties in interest, including France Brevets, violated any federal laws.
Nimitz Technologies LLC, v. CNET Media, Inc., C.A. No. 21-1247-CFC, D.I. 34 at 98, 100 (D. Del. Nov. 27, 2023).
If you're not familiar with them, Mavexar appears to be an entity that recruits people to serve as the sole members of shell LLCs that assert patents. The recruited individuals may not fully understand what is going on, and may get something like 5-10% of the proceeds of the patent infringement suits in exchange for accepting all of the risk. It looks like Mavexar sets up the entities, hires the attorneys, and does the work of selecting targets and even drafting claim charts.
The opinion goes through exactly what these entities and attorneys did—at least, as far as the Court can tell from the factual record and their production, which was apparently full of holes.
In short, the attorneys acted as if they were attorneys for Mavexar and IP edge rather than their nominal clients (the LLCs asserting the patents). They generally didn't communicate with their clients until Chief Judge Connolly started pressing them, which was months after they had been asserting and settling these cases.
Instead, the Court describes how they worked almost exclusively with Mavexar / IP Edge employees. Given that Mavexar ...
"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, …
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