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Confirmed: Judge Connolly Does Not Speak Italian

Nathan R. Hoeschen, Jan. 17, 2023
Translation

Prego!
Prego! Krista Stucchio, Unsplash

An interesting note on the importance of translation -- and accurate translation -- from Judge Connolly last week in Doda v. Waste Management, Inc., C.A. No. 17-604-CFC (D. Del. Jan 13, 2022).

The plaintiffs were an Italian engineer and his companies who were doing business with an American firm pursuant to an NDA. The NDA required the parties to mark any confidential information "'Confidential,' 'Proprietary,' or [with] some similar designation." Plaintiffs alleged that defendant breached the agreement by disclosing such confidential information to the patent office, which later published it.

The issue? The "designation" was only in Italian.

In their posttrial Proposed Findings of Fact, Plaintiffs state that this paragraph [below a signature block …
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Be Careful with That Joint Statement of Uncontested Facts. You Might Not Be Able to Walk It Back

Andrew E. Russell, Jan. 16, 2023
Trial Trial Practice

Artist's rendition of a pretrial order printed without tabs
Artist's rendition of a pretrial order printed without tabs JJ Ying, Unsplash

Oof, this one may have been painful. Last month in Victaulic Company v. ASC Engineered Solutions, LLC, C.A. No. 20-887-GBW-JLH (D. Del.), the defendant apparently asserted at least two non-infringement defenses, one based on a "groove" limitation and one based on a "radius" limitation.

The defendant asserted the groove limitation defense in response to a summary judgment motion. Then, the following series of events occurred:

  • December 6, 2022: The Court denies the summary judgment motion against which the defendant asserted the groove limitation defense
  • December 13, 2022: The parties filed their proposed pretrial order. In it, they included a joint statement of uncontested facts. …
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Lawyer Files Letter Asking Court to Rule on Their Motion; Court Immediately Grants Motion; Client Cheers

Andrew E. Russell, Jan. 13, 2023
Motion to Stay Congestion

Danger
Raúl Nájera, Unsplash

The District of Delaware is extremely busy. Sometimes clients and out-of-town counsel are surprised that they probably won't get rulings on their motions in the very-short-term. This often prompts questions like "Can we call the Court and ask them to rule on our motion?"—the answer to which is "no."

But in some instances parties really do need to alert the Court to a situation on the ground in the case that is impacted by a pending motion. The answer then is often to file a letter, which sometimes works.

We saw another successful letter this week. In Bataan Licensing LLC v. DentalEZ, Inc., C.A. No. 22-238-GBW (D. Del.), the defendant …

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A Simple Sale

Nathan R. Hoeschen, Jan. 12, 2023
Inducement Indirect Infringement

AI-Generated, displayed with permission

Interesting opinion from Judge Burke today on indirect infringement allegations, and what constitutes an "active step" to encourage the direct infringement.

The defendants in Midwest Energy Emissions Corp. v. Arthur J. Gallagher & Co., C.A. No. 19-1334-CJB (D. Del. Jan. 12, 2023) (Mem. Order) sold a sort of refined coal that was a necessary agreement in an allegedly infringing process performed by power plants. They moved to dismiss the complaint for indirect infringement, arguing that, while they knew it was likely to be used in an infringing manner, they did not communicate with the end users in any way that actively induced infringement. I.e., they did not take any active steps.

Judge Burke …

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Judge Andrews Offers Guidance for Delaware Counsel—But Can They Do It?

Andrew E. Russell, Jan. 11, 2023
FRCP 15 FRCP 16

This. This is what you need to include with your motion to amend.
This. This is what you need to include with your motion to amend. Andrew E. Russell

Yesterday, Judge Andrews issued an opinion denying a motion to amend a complaint for failure to follow Local Rule 15.1, which requires a party moving to amend to attach the amended pleading and a redline.

This is something parties often mess up, as we've mentioned.

Here, the moving party attached the pleading and redline to a declaration submitted with the reply brief, but the Court found that was insufficient, because it occurred after the answering brief and left the Court without useful briefing on the motion to amend:

Defendants' first argument for denying Plaintiffs' motion was the failure to comply with the Local …
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Judge Andrews Taking Senior Status at the End of 2023—But Continuing with Full Caseload

Andrew E. Russell, Jan. 9, 2023
Congestion DED

Judge Andrews
Wikipemedia Commons

We're a little bit slow on the draw on this one. But for anyone who hasn't heard, the District of Delaware announced on Friday that Judge Andrews will take senior status in December 2023. The announcement notes that Judge Andrews will maintain a full caseload:

The United States District Court for the District of Delaware announces that Judge Andrews informed the President on January 5, 2023 that he intends to take senior status at the end of December 2023. Judge Andrews expects to continue with a full caseload once he becomes a Senior Judge.
Judge Andrews is an exemplary judge and colleague, and the Court is extremely grateful that he will continue to serve this institution and the public as a Senior Judge.

The District of Delaware hasn't had a judge on senior status for some time. To the extent that a new judge is appointed and Judge Andrews maintains a full caseload while on senior status, that's akin to a fifth judgeship for D. Del.—a 25% increase in the number of available judges.

The Law360 article on the announcement has some more details, including some very nice comments by Chief Judge Connolly.

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Federal Circuit Denies Mandamus Petitions, Says Court Can Act After Dismissal

Andrew E. Russell, Jan. 4, 2023
Mavexar Mandamus

OK Nate, you win. Mavexar is a crab now.
OK Nate, you win. Mavexar is a crab now. AI-Generated, displayed with permission

We posted last month about two more mandamus petitions regarding Chief Judge Connolly's recent efforts to enforce his standing orders regarding disclosure requirements in his cases.

The Mavexar saga is getting a bit complicated, so here is a quick recap of the mandamus petitions:

  • Chief Judge Connolly scheduled hearings in several cases regarding various plaintiffs' compliance with his standing orders
  • In two of the hearings, the plaintiffs explained that an entity called Mavexar recruited the plaintiffs and took up to 95% of their proceeds
  • The Court ordered some of the Mavexar entities to produce a broad range of communications among the plaintiffs, Mavexar, and their attorneys
  • One …
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On the Importance of Consistency

Andrew E. Russell, Dec. 30, 2022
Privilege Objections to R&Rs

Up Down Arrow
愚木混株 cdd20, Unsplash

We got a good "what not to do" example today, relayed in an opinion by Judge Williams.

In the opinion, the Court addressed objections to a magistrate judge ruling on a privilege issue (remember—you can object to non-dispositive magistrate judge rulings in addition to R&Rs. Good luck.).

As the Court explained, the defendants initially argued to the magistrate judge that Third Circuit law governed, and that Federal Circuit law was grounded in the same principles as Third Circuit law anyway. The magistrate judge agreed:

In briefing submitted to the Magistrate Judge, Defendants state that, "Federal Circuit [law] does not differ [from Third Circuit law] in that it 'is grounded in principles of fairness. '" D.I. 224 at 3. The Magistrate Judge credited Defendants' argument to conclude Third Circuit law applies. See D.I. 232 at 3 n.2 ("Because Defendants themselves initially relied on Third Circuit caselaw here (as did Plaintiff) and because Defendants assert that the Third Circuit's approach to this issue is no different from that of the Federal Circuit, the Court will herein apply Third Circuit law regarding the 'at issue' doctrine to this patent case." ).

Then, in objecting to the magistrate judge's ruling, the defendants apparently reversed position, arguing that Federal Circuit law differed, and that the magistrate judge had erred by relying on

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Finding Short Meet-and-Confer Did Not Show Good Faith, Judge Noreika Orders In-Person Meet-and-Confer by Lead Trial Counsel

Andrew E. Russell, Dec. 28, 2022
Meet-and-Confer Claim Construction

Attorneys at Table
AI-Generated, displayed with permission

This is an interesting order from earlier this month that we never had a chance to post about.

In Ecobee, Inc. v. EcoFactor, Inc., C.A. No. 21-323-MN (D. Del.), the parties had a Markman hearing scheduled for December 8. As she often does, in the leadup to the hearing, Judge Noreika issued an order directing lead counsel for the parties to meet-and-confer to reduce the number of disputes:

ORAL ORDER . . . IT IS HEREBY ORDERED that, on or before 12/1/2022, local and lead counsel (i.e., those attorneys that will be leading trial) for the parties shall meet and confer and file an amended joint claim construction chart that sets forth the …
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A Perilous Route to Personal Jurisdiction

Nathan R. Hoeschen, Dec. 27, 2022
Personal Jurisdiction

As a lawyer, I am used to reaching into my stocking on Christmas eve to find yet another lump of sumptuous coal. Hard and black as my own cynical heart, it is but fuel for engine of my enemies' destruction.

Season's Greetings!
Season's Greetings! AI-Generated, displayed with permission

This year, however, I was presently surprised to return to the office after spending the entire holiday sick in bed to find a new opinion to discuss on the blog. Everyone wins today.

IBM Corp. v. Rakuten, Inc., C.A. No. 21-461 (D. Del. Dec. 22, 2022) presents an interesting issue of personal Jurisdiction I hadn't seen before. The plaintiff, IBM, sued Rakuten a Japanese corporation (and seller of cool Japanese goods) along with its U.S. subsidiary Ebates. After suit was filed, Rakuten transferred several patents in its portfolio to Ebates, who then asserted them against IBM as permissive counterclaims. All the while, Rakuten maintained that the Court lacked personal Jurisdiction (Ebates conceded jurisdiction).

Judge Williams, however, found the maneuver of shuffling the patents off to Ebates sufficient to confer ...

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